Ex Parte Brooks Rix

Patent Trial and Appeal Board

Jul 17, 2014

10861912 (P.T.A.B. Jul. 17, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte LINDA BROOKS RIX
__________

Appeal 2012-007339
Application 10/861,912
Technology Center 3600
____________

Before MURRIEL E. CRAWFORD, HUBERT C. LORIN, and
ANTON W. FETTING, Administrative Patent Judges.

LORIN, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Linda Brooks Rix (Appellant) seeks our review under 35 U.S.C. § 134
of the final rejection of claims 1-26. We have jurisdiction under 35 U.S.C.
§ 6(b) (2002).
SUMMARY OF DECISION
We REVERSE.1

1 Our decision will make reference to the Appellant’s Appeal Brief (“App.
Br.,” filed Jan. 12, 2012) and Reply Brief (“Reply Br.,” filed Apr. 2, 2012),
and the Examiner’s Answer (“Ans.,” mailed Feb. 2, 2012).
Appeal 2012-007339
Application 10/861,912

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THE INVENTION
Claim 1, reproduced below, is illustrative of the subject matter on
appeal.
1. A method for assessing academic qualifications, comprising the
steps of:
providing an electronic employment application, wherein the
employment application is generated by software executable on a
computer for generating an employment application file;
presenting to an applicant in the electronic employment
application a resume portion in which the applicant may identify their
education history;
providing in said resume portion a computerized listing of
educational institutions from which the applicant may select an
institution to add to the employment application file, wherein the
providing of the computerized listing of educational institutions
includes:
requesting the applicant enter information regarding a
type of educational institution from which the applicant has received
academic credit or a degree;
if the applicant indicates an educational institution of a
type other than a secondary school, displaying a plurality of categories
of academic institutions for the type indicated, sorted according to a
predetermined criterion, for selection of a category by the applicant;
and
upon selection of a category by the applicant, displaying
a listing of educational institutions of the type indicated which are
contained in the selected category;
further providing in said resume portion a section for entry of
information identifying educational institutions not included in the list
of educational institutions; and
highlighting automatically for review any applicant-identified
educational institution not included in the list of educational
institutions.

Appeal 2012-007339
Application 10/861,912

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THE REJECTIONS
The Examiner relies upon the following as evidence of
unpatentability:
McCall
Stolakis
Menschik
Rosen
Geldermann

US 2002/0059228 A1
US 2003/0149639 A1
US 2004/0034550 A1
US 2004/0186852 A1
US 7,263,491 B1
May 16, 2002
Aug. 7, 2003
Feb. 19, 2004
Sep. 23, 2004
Aug. 28, 2007
“Shopping for a vocational career,” Oakland Post, Oct. 1, 1975, Vol.
11, Issue 95, pg. 4. (“Oakland Post”)

Otho Allen Ezell Jr., “Diploma Mills - past, present, and future,”
American Association of Collegiate Registrars and Admissions
Offices, Winter 2002, Vol. 77, Issue 3, pg. 39. (“Ezell”)

The following rejections are before us for review:
1. Claims 1-6 and 19-22 are rejected under 35 U.S.C. §103(a) as being
unpatentable over Rosen, Geldermann, McCall, Oakland Post, Ezell,
and Menschik.
2. Claims 7, 13, and 23-26 are rejected under 35 U.S.C. §103(a) as being
unpatentable over Rosen, Geldermann, Ezell, and Menschik.
3. Claims 8 and 14 are rejected under 35 U.S.C. §103(a) as being
unpatentable over Rosen, Geldermann, Ezell, Menschik, McCall, and
Oakland Post.
4. Claims 9-12 and 15-18 are rejected under 35 U.S.C. §103(a) as being
unpatentable over Rosen, Geldermann, Ezell, Menschik, McCall,
Oakland Post, and Stolakis.

Appeal 2012-007339
Application 10/861,912

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ISSUE
Has a prima facie case of obviousness been made out for the claimed
subject matter over the combination of the cited prior art disclosures?

FINDINGS OF FACT
We rely on the Examiner’s factual findings stated in the Answer.
Additional findings of fact may appear in the Analysis below.

ANALYSIS
The rejection of claims 1-6 and 19-22 under 35 U.S.C. §103(a) as being
unpatentable over Rosen, Geldermann, McCall, Oakland Post, Ezell, and
Menschik.
The Examiner found that:
1. Rosen discloses the claim steps:
 providing an electronic employment application, wherein the
employment application is generated by software executable on a
computer for generating an employment application file;
 presenting to an applicant in the electronic employment application
a resume portion in which the applicant may identify their
education history;
 further providing in said resume portion a section for entry of
information identifying educational institutions not included in the
list of educational institutions; and,
 highlighting automatically for review any applicant-identified
educational institution not included in the list of educational
institutions.
(Ans. 5).
2. Geldermann “discloses a ‘school selection’ menu that consists of a
drop-down listing of all participating educational institutions.” Ans.
5.
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3. McCall “discloses an applicant indicating the type of education
received, including high school.” Ans. 6.
4. “Oakland Post discloses a directory of postsecondary schools which
lists schools by occupational categories.” Ans. 6.
5. “Ezell teaches that education credentials from ‘diploma mills’ are
presented fraudulently to employers.” Ans. 6.
6. “Menschik discloses a system where unknown or new patients (i.e.,
patients not already existing in the database (i.e., not included on a
list) are flagged for manual review.” Ans. 7.
The Examiner found that it would have been obvious to combine these
disclosures and reach the claimed invention. Ans. 5-7.
The Appellant argues that “the Rosen reference on the ground that
Rosen does not teach or suggest all of the features of the present invention
for which it is cited.” App. Br. 5. The Appellant disputes that Rosen
discloses the claim limitation “highlighting automatically for review any
applicant-identified educational institution not included in the list of
educational institutions” as the Examiner allegedly found. Id..
According to the Examiner, said claim limitation is disclosed at ¶¶ 43
and 65-68.
(P[0043]: job and educational references are verified by the system;
P[0065]: In addition to adding “existing/verified references” the
“applicant may also add new references to be verified”; P[0066]: once
a reference is verified, it may be used on additional profiles (thus, a
verified reference is not re-verified each time it is presented); P[0067]:
Each reference is flagged as verified or unverified; P[0068]: the
operator performs the review of the references and updates the status
of the reference; therefore, when applicant adds a new reference, the
reference is automatically flagged as unverified and the operator
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Application 10/861,912

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checks the reference. As an existing reference is already verified, it is
not re-verified.)
Ans. 5.
The Appellant argues that “the entire Rosen system is based on human
manual review and verification of the data input by the applicant: i.e., that
there is no teaching of automatic highlighting of educational institutions in
Rosen, let alone a teaching of selective highlighting of non-accredited
institutions.” App. Br. 9 (emphasis original).
¶¶ 43 and 65-68 of Rosen are reproduced below.
[0043] Only job and educational references will be carried out by this
system. Subjective and personal references are not part of this system's
work.

[0065] When an applicant creates a profile, he/she adds references and
subjective text into a resume. The applicant may add from
existing/verified references and existing subjective text blocks. The
applicant may also add new references to be verified, as well as new text
blocks. There are two template styles that this information may be
assembled into: (from top-to-bottom) textblock, references, textblock,
textblock; or reference, textblock, reference, textblock. There may only
be as many textblocks per profile as there are references.

[0066] Once a reference is verified, it may be used on up to 4 different
profiles.

[0067] Each reference has a status of: new, pending, and complete. It is
also flagged as verified or unverified. A profile has a status of: new,
pending, completed, active, or inactive.

[0068] The operator checks each reference, updating its status as
verification is completed. When there is a reference that cannot be
verified, the applicant is notified, and given the opportunity to supply
further information for a reinvestigation of that reference. A profile is
flagged as completed when all its associated references have been
verified to the best of the operator's ability. The applicant is informed of
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this status change and is asked to activate the profile, marking it as
active. Should there be any reference that was unverifiable, the applicant
may use the subjective text area to comment on that reference. An
applicant may update a profile's active/inactive status at any time after it
has been defined. Only those references that have been completed will be
displayed upon employer viewing. Applicants will have an "employer's
view" review screen allowing them to see the profile as it looks to the
employer/recruiter.

We do not see in these passages any disclosure of “automatic
highlighting of educational institutions” as claimed and as the Examiner
allegedly found. The discussion is directed to applicant profiles, references
added to said profiles, and their subsequent verification. We agree with the
Appellant that the Rosen passages relied upon do not disclose automatic
highlighting of educational institutions, let alone “highlighting automatically
for review any applicant-identified educational institution not included in the
list of educational institutions” (claim 1). Accordingly, we do not find that
Rosen would lead one of ordinary skill in the art to an applicant-identified
educational institution not included in a computerized listing of educational
institutions from which an applicant may select an institution to add to an
employment application file provided in a resume portion being
automatically highlighted for review as claimed in claim 1.
For the foregoing reasons, the preponderance of the evidence does not
support the finding that Rosen discloses “highlighting automatically for
review any applicant-identified educational institution not included in the list
of educational institutions” (claim 1). Accordingly, a prima facie case of
obviousness for the subject matter of claim 1, and claims 2, 3, 19 and 20
dependent thereon, has not been made out in the first instance.
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The other independent claim here rejected – claim 4 – also includes a
claim limitation to automatically highlighting an applicant-identified
educational institution not included in a list of educational institutions. The
Examiner’s position is the same: ¶¶ 43 and 65-68 of Rosen are alleged to
disclose it. Ans. 5. For the foregoing reasons, the preponderance of the
evidence does not support said finding. Accordingly, a prima facie case of
obviousness for the subject matter of claim 4, and claims 5, 6, 21 and 22
dependent thereon, has not been made out in the first instance.
The rejection is not sustained.

The rejection of claims 7, 13, and 23-26 under 35 U.S.C. §103(a) as being
unpatentable over Rosen, Geldermann, Ezell, and Menschik.
Independent claims 7 and 13 include a claim limitation to
automatically highlighting an applicant-identified educational institution not
included in a list of educational institutions. The Examiner’s position is the
same: ¶¶ 43 and 65-68 of Rosen is alleged to disclose it. Ans. 8. For the
foregoing reasons, the preponderance of the evidence does not support said
finding. Accordingly, a prima facie case of obviousness for the subject
matter of claims 7 and 13, and claims 23 and 24 and claims 25 and 26 that
depend from claims 7 and 13, respectively, has not been made out in the first
instance.
The rejection is not sustained.
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Application 10/861,912

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The rejection of claims 8 and 14 under 35 U.S.C. §103(a) as being
unpatentable over Rosen, Geldermann, Ezell, Menschik, McCall, and
Oakland Post.
The rejection of claims 9-12 and 15-18 under 35 U.S.C. §103(a) as being
unpatentable over Rosen, Geldermann, Ezell, Menschik, McCall, Oakland
Post, and Stolakis.
Claims 8-12 and 14-18 depend from independent claims 7 and 13,
respectively.
For the reasons already discussed with respect to the independent
claims, we will not sustain the rejections of claims 8-12 and 14-18 over the
cited prior art. Cf. In re Fritch, 972 F.2d 1260, 1266 (Fed. Cir. 1992)
("[D]ependent claims are nonobvious if the independent claims from which
they depend are nonobvious.").

CONCLUSIONS
The rejection of claims 1-6 and 19-22 under 35 U.S.C. §103(a) as
being unpatentable over Rosen, Geldermann, McCall, Oakland Post, Ezell,
and Menschik is not sustained.
The rejection of claims 7, 13, and 23-26 under 35 U.S.C. §103(a) as
being unpatentable over Rosen, Geldermann, Ezell, and Menschik is not
sustained.
The rejection of claims 8 and 14 under 35 U.S.C. §103(a) as being
unpatentable over Rosen, Geldermann, Ezell, Menschik, McCall, and
Oakland Post is not sustained.
The rejection of claims 9-12 and 15-18 under 35 U.S.C. §103(a) as
being unpatentable over Rosen, Geldermann, Ezell, Menschik, McCall,
Oakland Post, and Stolakis is not sustained.

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Application 10/861,912

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DECISION
The decision of the Examiner to reject claims 1-26 is reversed.

REVERSED

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