10772081 (B.P.A.I. Jan. 11, 2012)

Ex Parte Bohle

Board of Patent Appeals and InterferencesJan 11, 2012

10772081 (B.P.A.I. Jan. 11, 2012)

UNITED STATES PATENT AND TRADEMARKOFFICE 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. 10/772,081 02/03/2004 Holger Bohle 09282.0044-00 1661 60668 7590 01/11/2012 SAP / FINNEGAN, HENDERSON LLP 901 NEW YORK AVENUE, NW WASHINGTON, DC 20001-4413 EXAMINER SENSENIG, SHAUN D ART UNIT PAPER NUMBER 3629 MAIL DATE DELIVERY MODE 01/11/2012 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 BOARD OF PATENT APPEALS 4 AND INTERFERENCES 5 ___________ 6 7 Ex parte HOLGER BOHLE 8 ___________ 9 10 Appeal 2010-008038 11 Application 10/772,081 12 Technology Center 3600 13 ___________ 14 15 16 Before HUBERT C. LORIN, ANTON W. FETTING, and 17 JOSEPH A. FISCHETTI, Administrative Patent Judges. 18 FETTING, Administrative Patent Judge. 19 DECISION ON APPEAL 20 21 Appeal 2010-008038 Application 10/772,081 2 STATEMENT OF THE CASE1 1 Holger Bohle (Appellant) seeks review under 35 U.S.C. § 134 (2002) of 2 a final rejection of claims 1-16, the only claims pending in the application on 3 appeal. We have jurisdiction over the appeal pursuant to 35 U.S.C. § 6(b) 4 (2002). 5 The Appellant invented to a computer program product, tangibly 6 embodied in an information carrier, for use with a curriculum management 7 system that manages a curriculum comprised of at least a course. 8 (Specification 1:17-19). 9 An understanding of the invention can be derived from a reading of 10 exemplary claim 1, which is reproduced below [bracketed matter and some 11 paragraphing added]. 12 1. A computer program comprising a memory device storing 13 instructions that, when executed by a processor, 14 cause the processor to perform a method for managing a 15 curriculum, 16 the method comprising the steps performed by the processor of: 17 [1] scheduling a booking of a course to be taken by a learner, 18 wherein the scheduling comprises generating an 19 attendance link 20 that associates the learner with the course, 21 the attendance link identifying whether the course is 22 associated with a corresponding curriculum; 23 [2] receiving input from the learner 24 1 Our decision will make reference to the Appellant’s Appeal Brief (“App. Br.,” filed January 11, 2010) and Reply Brief (“Reply Br.,” filed April 26, 2010), and the Examiner’s Answer (“Ans.,” mailed April 14, 2010). Appeal 2010-008038 Application 10/772,081 3 requesting a modification to the booking; 1 [3] determining whether the booking represents 2 an individual booking or 3 a curriculum booking 4 based on the generated attendance link; 5 and 6 [4] processing the modification to the booking 7 based on at least whether the booking represents an 8 individual booking or a curriculum booking. 9 The Examiner relies upon the following prior art: 10 11 The Columbia Institute, e-Campus School Policy Manual, November 12 2002 (3 pages) 13 Claims 1-6 and 9-14 stand rejected under 35 U.S.C. § 103(a) as 14 unpatentable over Schloss. 15 Claims 7 and 15 stand rejected under 35 U.S.C. § 103(a) as unpatentable 16 over Schloss and Columbia. 17 Claims 8 and 16 stand rejected under 35 U.S.C. § 103(a) as unpatentable 18 over Schloss and Papadopoulos. 19 ISSUE 20 The issue of obviousness turns on whether there is evidence as to the 21 predictability of using a link to determine whether a booking represents an 22 individual booking or a curriculum booking as required by limitations [1], 23 [3], and [4]. 24 Schloss US 5,692,125 Nov. 25, 1997 Papadopoulos US 6,099,320 Aug. 8, 2000 Alcorn US 6,988,138 B1 Jan. 17, 2006 Appeal 2010-008038 Application 10/772,081 4 FACTS PERTINENT TO THE ISSUES 1 The following enumerated Findings of Fact (FF) are believed to be 2 supported by a preponderance of the evidence. 3 Facts Related to the Prior Art 4 Schloss 5 01. Schloss is directed to computer scheduling of events and event 6 groups that allows a scheduler to schedule events at a schedule 7 time and to account for changing external data and conditions that 8 occur between the schedule time and an event performance time. 9 The computer scheduling of events and event groups allows a 10 scheduler to schedule partially defined events and/or groups of 11 events. Schloss 2:16-25. 12 Alcorn 13 02. Alcorn is directed to a way of exchanging information between 14 instructors and students in an education context. Alcorn 1:17-19. 15 ANALYSIS 16 We are persuaded by the Appellant’s argument that 17 The Examiner conceded that Schloss "does not explicitly 18 disclose wherein a link is created to associate the user with the 19 event and event information ... [and] does not explicitly 20 disclose using the link to determine whether the booking 21 represents an individual booking or a curriculum booking." 22 Final Office Action, pp. 5-6. However, the Examiner then 23 alleged that "it would have been obvious to one of ordinary skill 24 in the art, at the time of the invention to have included" the 25 above-noted features. See Final Office Action, pp. 5-6. As 26 support for this allegation, the Examiner cited the KSR 27 Appeal 2010-008038 Application 10/772,081 5 decision, quoting that "[t]he combination of familiar elements 1 according to known methods is likely to be obvious when it 2 does no more than yield predictable results." Final Office 3 Action, p. 5 and p. 6. However, the proposition cited by the 4 Examiner is not applicable, for at least the reason that the 5 Examiner has not demonstrated that the elements sought to be 6 combined are "known." 7 Appeal Br. 13-14. The Examiner found that 8 Schloss does not explicitly disclose using the link to determine 9 whether the booking represents an individual booking or a 10 curriculum booking, however, it would have been obvious to 11 one of ordinary skill in the art, at the time of the invention to 12 have included using the link to determine whether the booking 13 represents an individual booking or a curriculum booking in 14 order to increase efficiency by using already established 15 information to ensure that unnecessary or repetitive activity is 16 minimized (See KSR [127 S Ct. at 1739] "The combination of 17 familiar elements according to known methods is likely to be 18 obvious when it does no more than yield predictable results."), 19 since doing so could be performed readily and easily by any 20 person of ordinary skill in the art, with neither undue 21 experimentation, nor risk of unexpected results. 22 Ans. 5. The Examiner then went on in the Response section to draw in 23 Alcorn for evidentiary support. Ans. 13. As the Appellant further argued in 24 response to this new evidence, however, 25 the "hyperlink" of Alcorn is a hyperlink provided on a web 26 page, linking to other information such as announcements, 27 instructors, etc. By clicking a hyperlink, the user can view 28 various information. See, e.g., Alcorn, col. 4, I. 56 - col. 5, I. 29 15. The "hyperlink" of Alcorn is not an "attendance link that 30 associates the learner with the course" as recited in claim 1 31 (emphasis added). Therefore, Schloss and Alcorn, whether 32 taken alone or in combination, still fail to teach or suggest "an 33 attendance link that associates the learner with the course, the 34 attendance link identifying whether the course is associated 35 with a corresponding curriculum" as recited in claim 1. 36 Appeal 2010-008038 Application 10/772,081 6 Reply Br. 5. 1 Both of the only 2 independent claims contain this same limitation. 2 CONCLUSIONS OF LAW 3 The rejection of claims 1-6 and 9-14 under 35 U.S.C. § 103(a) as 4 unpatentable over Schloss is improper. 5 The rejection of claims 7 and 15 under 35 U.S.C. § 103(a) as 6 unpatentable over Schloss and Columbia is improper. 7 The rejection of claims 8 and 16 under 35 U.S.C. § 103(a) as 8 unpatentable over Schloss and Papadopoulos is improper. 9 DECISION 10 The rejection of claims 1-16 is reversed. 11 12 REVERSED 13 14 15 16 MP 17