Ex Parte Bazigos et al

Patent Trial and Appeal Board

Mar 4, 2014

12112963 (P.T.A.B. Mar. 4, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
12/112,963 04/30/2008 Michael N. Bazigos YOR920070679US1 1139
59144 7590 03/04/2014
CAHN & SAMUELS, LLP
1100 17th STREET, NW
SUITE 401
WASHINGTON, DC 20036
EXAMINER
OFORI-AWUAH, MAAME
ART UNIT PAPER NUMBER
3629
MAIL DATE DELIVERY MODE
03/04/2014 PAPER
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE 1
___________ 2
3
BEFORE THE PATENT TRIAL AND APPEAL BOARD 4
___________ 5
6
Ex parte MICHAEL N. BAZIGOS and PETER J. MITCHELL 7
___________ 8
9
Appeal 2011-011797 10
Application 12/112,963 11
Technology Center 3600 12
___________ 13
14
15
Before HUBERT C. LORIN, ANTON W. FETTING, and 16
THOMAS F. SMEGAL, Administrative Patent Judges. 17
FETTING, Administrative Patent Judge. 18
DECISION ON APPEAL 19
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STATEMENT OF THE CASE1 1

1 Our decision will make reference to the Appellants’ Appeal Brief (“App.
Br.,” filed February 3, 2011) and the Examiner’s Answer (“Ans.,” mailed
April 28, 2011).
Michael N. Bazigos and Peter J. Mitchell (Appellants) seek review under 2
35 U.S.C. § 134 of a final rejection of claims 1-32, the only claims pending 3
in the application on appeal. We have jurisdiction over the appeal pursuant 4
to 35 U.S.C. § 6(b). 5
The Appellants invented an interactive computer based system for 6
strategic career guidance, planning, transition and workforce management 7
(Specification para 0001). 8
An understanding of the invention can be derived from a reading of 9
exemplary claim 1, which is reproduced below [bracketed matter and some 10
paragraphing added]. 11
1. A method for career guidance and planning comprising the 12
steps of: 13
[1] receiving 14
through a computer network 15
an electronic request 16
for guidance relating to procuring a job role 17
in a particular job category; 18
[2] retrieving data 19
relating to the said electronic request 20
in the form of documented qualifications 21
with a computer, 22
[3] retrieving data 23
from a computer storage device 24
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relating to required qualifications necessary, 1
including at least one value skill indicator, 2
for at least one job role 3
in said particular job category; 4
[4] comparing 5
said documented qualifications, 6
weighted by said at least one value skill indicator, 7
with 8
said required qualifications necessary 9
for the at least one target job role 10
in said particular job category 11
with a computer; 12
[5] determining the differences between 13
said documented qualifications 14
and 15
said required qualifications necessary 16
for the at least one job role 17
with a computer; 18
[6] displaying at least one difference between 19
said documented qualifications 20
and 21
said required qualifications necessary 22
for the at least one job role; 23
[7] retrieving 24
from a computer storage device 25
data relating to any training necessary 26
to address any skill gap between 27
said documented qualifications 28
and 29
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said required qualifications necessary 1
for the at least one job role; 2
and 3
[8] providing 4
through a computer interface 5
at least one strategy and recommendation response to 6
said electronic request 7
addressing any skill gap between 8
said documented qualifications 9
and 10
the at least one target job role; 11
[9] wherein said at least one strategy and recommendation in 12
response to said electronic request 13
includes a strategic order of skill set acquisition and 14
training activities. 15
The Examiner relies upon the following prior art: 16
D'Elena US 2003/0182178 A1 Sep. 25, 2003
Savitsky US 2005/0114203 A1 May 26, 2005
Mitchell US 2007/0059671 A1 Mar. 15, 2007
Claims 1-17, 31, and 32 stand rejected under 35 U.S.C. § 103(a) as 17
unpatentable over Mitchell, Savitsky, and D'Elena. 18
Claims 18-21 stand rejected under 35 U.S.C. § 103(a) as unpatentable 19
over Mitchell and D'Elena. 20
Claims 22-30 stand rejected under 35 U.S.C. § 103(a) as unpatentable 21
over Savitsky and D'Elena. 22
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ISSUES 1
The issues of obviousness turn primarily on whether limitation [8] of 2
“providing through a computer interface at least one strategy and 3
recommendation response” provides information discernible only to the 4
human mind, and as such is given no patentable weight, and if it is given 5
weight, whether D'Elena’s described “an ordered list of skills and mentoring 6
activities, listed in steps in order to obtain the required skills” is within the 7
scope. 8
FACTS PERTINENT TO THE ISSUES 9
The following enumerated Findings of Fact (FF) are believed to be 10
supported by a preponderance of the evidence. 11
Facts Related to the Prior Art 12
Mitchell 13
01. Mitchell is directed to performing a career analysis for a 14
candidate. Mitchell para 0001. 15
02. Mitchell retrieves data regarding the skills required for a job 16
and the skills an applicant possess, and compares those two sets of 17
data. Mitchell paras 0004-0008. 18
03. Mitchell’s career analysis tool may determine a skills delta 19
between job related skills associated with a job held by the 20
candidate and required skills necessary to obtain a desired position 21
(i.e., required skills missing from the candidate's current job). The 22
career analysis tool may determine a training program for the 23
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candidate for obtaining the missing required skills determined by 1
the skills delta. Mitchell para 0050. 2
Savitsky 3
04. Savitsky is directed to a career planning tool. Savitsky para 4
0001. 5
05. Savitsky generates a training recommendation based on the 6
career path. Savitsky compares a set of qualification data included 7
in role information for a role in the career path with a set of 8
qualification data included in the user information, and identifying 9
a qualification included in the first set of qualification data but not 10
in the second set of qualification data. Savitsky generates a 11
training recommendation by determining an association between 12
the qualification and a training program. The career path may 13
include a set of intermediate roles between the current role and the 14
second role. Savitsky provides a list of roles from the set of roles. 15
Savitsky para 0004. 16
06. FIG. 11 illustrates a screen shot of a user interface for a 17
development plan accessed by the user by clicking on button. The 18
career planning tool generates a development plan for the user 19
based on the current role, desired role, and qualifications included 20
in the background for the particular user. A development plan 21
provides an employee with a list of suggestions for improving 22
particular skills or competencies needed for desired role or for 23
another role selected from the career path. The development plan 24
includes a list of competencies, action steps, and review dates. The 25
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development plan user interface includes a hyper-link to job 1
openings. The development plan bases action step 2
recommendations on skills, competencies, and certifications 408 3
in the skill set of the desired role. The career planning tool 4
suggests various types of action steps and categorizes the action 5
steps according to general types of training available. An action 6
step categorized in the training and development section to help 7
the user improve this competency suggests the user to take a 8
management program through the learning services. Savitsky 9
paras 0051-0052. 10
D'Elena 11
07. D'Elena is directed to acquiring skill proficiencies and 12
customizing an employee skill development strategy 13
corresponding to the employee's work routine and optimum 14
learning style. D'Elena para 0002. 15
08. Employee skill profiles are compared with job roles to 16
determine the required skills for the employee to develop. Skill 17
maps are generated which correspond to the skill to be developed. 18
A skill map includes five main sections that are a description 19
section, a proficiencies section, an education section, a mentoring 20
section, and an "other" section. The description section describes a 21
skill to be developed, such as "support data mining activities." The 22
proficiencies section includes a list of what an employee should be 23
proficient, such as "load and manage data from flat files or 24
relational databases." The proficiencies section may also be used 25
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for skill assessment and to track skill acquisition progress. 1
D'Elena para 0011. 2
09. The education section, mentoring section, and "other" section 3
include ways to obtain proficiency of the corresponding skill. The 4
education section includes in-house and offsite class offerings and 5
may be configured to only show local classes. The mentoring 6
section includes information about mentoring programs that an 7
employee may participate. The mentoring program may include a 8
list of objectives, such as "build a data mining base, perform data 9
preparation, select and carry out appropriate analytical techniques 10
and interpret output." The "other" section includes other methods 11
for an employee to develop a skill. For example, the "other" 12
section may include books or articles to read, or may include web 13
pages corresponding to an online tutorial. D'Elena para 0012. 14
10. FIG. 11 is a diagram showing a skill map window that allows 15
employees to customize skill development. Skill maps allow 16
employees to take a non-traditional approach to skill development. 17
Employees may have multiple ways to develop a skill instead of 18
being limited in their ability to develop the skill. Skill map 19
window includes five main areas which are description, 20
proficiencies, education, mentoring, and other. Description 21
describes the skill to be developed, such as "support data mining 22
activities." Proficiencies includes a list of what an employee 23
should be proficient, such as "load and manage data from flat files 24
or relational databases." Proficiencies may be used for skill 25
assessment and to track skill acquisition progress. Ways to obtain 26
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proficiency of a particular skill are included in education, 1
mentoring, and other. Mentoring includes information about a 2
mentoring program the employee has the option of participating. 3
The mentoring program may include a list of objectives, such as 4
"build a data mining base, perform data preparation, select and 5
carry out appropriate analytical techniques and interpret output." 6
D'Elena paras 0100-0104. 7
11. An analysis is performed to determine which employee is best 8
suited to become a banking infrastructure designer. Table 960 9
shows the cost and time for IT Architect 930 to obtain the skills 10
needed to meet the new job role requirements. D'Elena para 11
0091. 12
ANALYSIS 13
With regard to claim 1, we are not persuaded by the Appellants’ 14
argument that 15
D'Elena discloses, at best, that a training activity that has 16
already been accomplished may be indicated as accomplished 17
on a display. D'Elena, at ¶ [103], states that "if an employee has 18
already taken a class that class may be "grayed out." Appellants 19
respectfully submit that this simply indicates classes that have 20
been completed and does not disclose or constitute the 21
limitation of providing at least one strategy and 22
recommendation response including "a strategic order of skill 23
set acquisition and training activities" as required by the claim. 24
Accordingly, Appellants respectfully submit that the proposed 25
combination of Mitchell in view of Savitsky and further in view 26
of D'Elena fails to disclose the limitation of "wherein said at 27
least one strategy and recommendation in response to said 28
electronic request includes a strategic order of skill set 29
acquisition and training activities." 30
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App. Br. 12. First, this limitation [8] of “providing through a computer 1
interface at least one strategy and recommendation response” provides 2
information discernible only to the human mind, and as such is given no 3
patentable weight. 4
In a recent non-precedential decision, our reviewing court reminded 5
us of the applicability of the precedential In re Gulack, 703 F.2d 1381 (Fed. 6
Cir. 1983), In re Bernhart, 417 F.2d 1395 (CCPA 1969) and In re Lowry, 32 7
F.3d 1579 (Fed. Cir. 1994) decisions. 8
We have held that patent applicants cannot rely on printed 9
matter to distinguish a claim unless “there exists [a] new and 10
unobvious functional relationship between the printed matter 11
and the substrate.” In re Gulack, 703 F.2d 1381, 1386 12
(Fed.Cir.1983). . . . 13
14
. . . . 15
. . . [T]he Board did not create a new “mental 16
distinctions” rule in denying patentable weight . . . . On the 17
contrary, the Board simply expressed the above-described 18
functional relationship standard in an alternative formulation—19
consistent with our precedents—when it concluded that any 20
given position label’s function . . . is a distinction “discernable 21
only to the human mind.” . . . ; see In re Lowry, 32 F.3d 1579, 22
1583 (Fed.Cir.1994) (describing printed matter as “useful and 23
intelligible only to the human mind”) (quoting In re Bernhart, 24
. . . 417 F.2d 1395, 1399 (CCPA 1969)). 25
26
In re Xiao, 462 Fed. Appx. 947, 950-52 (Fed. Cir. 2011) (Non-27
precedential). Thus non-functional descriptive material, being useful and 28
intelligible only to the human mind, is given no patentable weight. See also 29
In re Ngai, 367 F.3d 1336, 1339 (Fed. Cir. 2004). 30
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Second, the Examiner found that D'Elena described “an ordered list of 1
skills and mentoring activities, listed in steps in order to obtain the required 2
skills.” Ans. 6-7. We agree with Examiner that D'Elena describes this 3
limitation. FF 10. Appellants do not contest that D'Elena describes 4
“providing through a computer interface at least one strategy and 5
recommendation response” per se, but only argue that D'Elena does so 6
retrospectively only. App. Br. 12. Appellants point to one sentence in 7
D'Elena para 0103 that if an employee has already taken a class that is 8
displayed, the class may be "grayed out." When read in context, it is 9
immediately apparent that this simply recites a feature of D'Elena that 10
provides feedback regarding present accomplishments in addition to 11
providing prospective strategic and recommended advice. 12
Claim 18 is argued on the same basis as claim 1. 13
With regard to claims 22 and 23, reciting the use of learning factors to 14
generate estimated learning times and costs, the Examiner applied Savitsky 15
as showing learning services, implying factors behind those services. The 16
Examiner applied D'Elena to show the known need to estimate learning 17
times and costs. Ans. 22-24. See FF 06and 11. 18
We are not persuaded by the Appellants’ argument that 19
the relevant sections of Savitsky fail to disclose a learning 20
factor associated "with each difference between said 21
documented qualification and projected skill set requirement for 22
said future job role". 23
App. Br. 14-15. Savitsky’s career planning tool generates a 24
development plan for the user based on the current role, desired role, and 25
qualifications included in the background for the particular user. This 26
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implicitly relies on the differences between what qualifications are needed 1
and which are already possessed. 2
CONCLUSIONS OF LAW 3
The rejection of claims 1-17, 31, and 32 under 35 U.S.C. § 103(a) as 4
unpatentable over Mitchell, Savitsky, and D'Elena is proper. 5
The rejection of claims 18-21 under 35 U.S.C. § 103(a) as unpatentable 6
over Mitchell and D'Elena is proper. 7
The rejection of claims 22-30 under 35 U.S.C. § 103(a) as unpatentable 8
over Savitsky and D'Elena is proper. 9
DECISION 10
The rejection of claims 1-32 is affirmed. 11
No time period for taking any subsequent action in connection with this 12
appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. 13
§ 1.136(a)(1)(iv) (2011). 14
15
AFFIRMED 16
17
Vsh 18