Ex Parte Brown

Patent Trial and Appeal Board

Nov 22, 2013

11614302 (P.T.A.B. Nov. 22, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte STEPHEN J. BROWN
____________

Appeal 2011-012205
Application 11/614,302
Technology Center 3700
____________

Before: JENNIFER D. BAHR, WILLIAM A. CAPP and
BEVERLY M. BUNTING, Administrative Patent Judges.

CAPP, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellant seeks our review under 35 U.S.C. § 134 of the final
rejection of claims 1-18. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
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THE INVENTION
Appellant’s invention relates to educational systems. Spec. 8.
Claim 1, reproduced below, is illustrative of the subject matter on appeal.
1. A system for providing content automatically
customized to an individual using a server computer connected
to at least one communication network, said server computer
having access to a database, said database comprising a
plurality of general content data segments and each general
content data segment comprising an identification code, said
system comprising:
a profile generator configured to generate a profile based
on (i) information about an individual previously stored in said
server computer and (ii) responses to a series of questions
received from said individual over said communication
network, wherein said series of questions comprises (a) a first
category of questions that request information about one or
more medical parameters measured by instruments (b) a second
category of questions that request information about one or
more symptoms being experienced by said individual, and (c) a
third category of questions for determining a motivational
driver, said motivational driver comprising a value placed by
said individual on one or more motivating factors for modifying
behavior of said individual;
a translator configured to generate a profile code based
on said profile, said profile including said motivational driver;
and
a content generator configured to (i) generate a first
content, wherein (a) said first content comprises specific data
segments selected for said individual from said general content
data segments and (b) said specific data segments are selected
based on matching said profile code with said identification
code of said general content data segments and selecting the
general content data segment associated with said identification
code and (ii) transmit said first content over said
communication network for presentation to said individual.

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THE REJECTIONS
The Examiner relies upon the following as evidence in support of the
rejections:

The following rejections are before us for review:
1. Claims 1-3, 5-7 and 9-15 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Lee and Bond.
2. Claim 8 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Lee, Bond and Dewey.
3. Claims 4 and 16 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Lee, Bond and Siefert.
4. Claims 17 and 18 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Lee, Bond and Brown.

OPINION
Unpatentability of Claims 1-3, 5-7 and 9-15
Appellant argues claims 1-3, 5-7 and 9-15 as a group. App. Br. 10-17.
We select claim 1 as representative. See 37 C.F.R. § 41.37(c)(1)(vii) (2011).
In traversing the rejection of claim 1, Appellant does not challenge the
Examiner’s determination that Lee and Bond can be combined or that a
person of ordinary skill in the art at the time the invention was made would
have combined them. Instead, Appellant advances numerous arguments that
each and every respective limitation of claim 1 is missing from Lee and
Dewey
Brown
Lee
Siefert
Bond
US 5,084,819
US 5,307,263
US 5,788,508
US 5,904,485
US 6,177,940 B1
Jan. 28, 1992
Apr. 26,1994
Aug. 4, 1998
May 18, 1999
Jan. 23, 2001
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Bond, whether taken alone or in combination. App. Br. 15. We do not find
any of Appellant’s arguments to be persuasive.
Initially, Appellant assigns legal error to the Examiner’s
determination that functional limitations of a claim may be satisfied by prior
art structures that are capable of performing a claimed function. App.
Br. 12.1 This argument is contrary to long and well-established authority. In
the case of In re Schreiber, 128 F.3d 1473, 1478 (Fed. Cir. 1997), our
reviewing court upheld an Examiner’s rejection based on a finding that prior
art structure was inherently capable of performing the claimed functions of
Schreiber’s invention.
... the absence of a disclosure relating to function does not
defeat the Board's finding of anticipation. It is well settled that
the recitation of a new intended use for an old product does not
make a claim to that old product patentable . . . Schreiber’s
contention that his structure will be used to dispense popcorn
does not have patentable weight if the structure is already
known, regardless of whether it has ever been used in any way
in connection with popcorn.
Schreiber, at 1477, citing In re Spada, 911 F.2d 705, 708 (Fed.Cir.1990)
(other internal citations omitted).2
Appellant next argues that Lee’s content data segments do not have
identification codes. App. Br. 15. In response, the Examiner finds that Lee
generates content that is assigned to the student based on the student’s
progress. Ans. 15-16. The Examiner further finds that the text associated

1 “The Examiner has provided no citation to support ignoring
significant portions of the claims under the apparent “ability to do so”
theory.” Id.
2 See also In re Sinex, 309 F.2d 488, 492 (CCPA 1962) (statement of
intended use in an apparatus claim failed to distinguish over the prior art
apparatus).
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with each lesson has a number and a title/description of the lesson. Ans. 16.
The Examiner finds that the number and/or title/description of each such
lesson constitutes an identification code within the meaning of claim 1. Id.
Lee discloses that lesson assignments can be determined solely on the
basis of each student’s progress. Lee, col. 5, ll. 22-23. Lee further discloses
that the process of assigning lesson segments to a student is controlled by the
CPU of the teacher’s station and that the lesson segments may be selected by
a system program. Lee, col. 5, ll. 30-36. Appellant offers neither evidence
nor technical reasoning to challenge the soundness of the Examiner’s finding
that this automated selection process is related to an identification code in
the form of a lesson number, title, or description.
Next, Appellant argues that Lee fails to disclose a user profile based
on three categories of questions. App. Br. 15-16. Appellant also argues that
Lee does not engage in questions and answers (“Q&A”) with a user to
determine a motivational driver. App. Br. 16. Appellant further argues that
Bond fails to cure this alleged deficiency in Lee. Id.
In response, the Examiner finds that both Lee and Bond engage the
user in Q&A. Ans. 17. The Examiner further finds that Bond’s Q&A is
categorized. Id. (citing Bond, Fig. 17). The Examiner further finds that
both Lee and Bond are inherently capable of performing the recited function
of engaging in categorized Q&A. Id. Finally, the Examiner finds that the
subjective interpretation of the type of information requested, i.e.,
“motivational,” does not patentably distinguish the invention over the prior
art. Ans. 8.
Lee discloses an interactive computer aided learning method and
apparatus. Lee, Abstract. Lee delivers learning content to a student in data
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segments and engages the student in Q&A to determine the student’s
learning progress and to select the next lesson in the learning curriculum.
Lee, Fig. 5. Bond discloses a system for data input and storage in a
healthcare environment. Bond, Abstract, col. 3, ll. 28-47. Bond obtains
patient data directly from a patient using questionnaires. Id. Bond’s
questionnaires present questions organized in categories. Bond, Fig. 17.
Appellant presents neither evidence nor technical reasoning to rebut the
Examiner’s finding that the result of engaging the user in Q&A in both Lee
and Bond, respectively, inherently produces a “user profile” within the
meaning of claim 1. Ans. 18.
With respect to Appellant’s contention that a third category of
questions that determines a “motivational driver” patentably distinguishes
the invention from the prior art, we disagree. Appellant’s invention engages
the user in Q&A and then selects data segments of learning material based
on the user’s answers. The specific content of the answers to the
motivational questions is merely information that is processed by the
computer in selecting which learning material will be presented. The
specific answers given by the user do not affect the method of how the
system selects the learning material. Thus, the particular content of the third
category of questions constitutes non-functional descriptive matter that does
not impart patentability to the invention. See Ex Parte Nehls, 88 U.S.P.Q.2d
1883, 1887-90 (BPAI 2008) (non-functional descriptive material cannot
render nonobvious an invention that would have otherwise been obvious).
Here, the Examiner declined to give patentable weight to the particular
content of the categories of questions in the user profile and was correct in
doing so.
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Next, Appellant argues that Lee and Bond each lack a translator that is
configured to generate a profile code. App. Br. 16. In response, the
Examiner observes that Lee engages a student in Q&A and then selects
learning curriculum based on the outcome of such Q&A. Ans. 5-6, 15-18.
The Examiner finds that, in order to accomplish this result, the structural
elements of Lee must be inherently capable of the recited function. Ans. 18.
Appellant disagrees with, but does not attempt to disprove, the Examiner’s
finding of inherency. Reply Br. 5.
Claim 1 contains three elements: (1) a profile generator; (2) a
translator; and (3) a content generator. Clms. App’x. Each of the respective
elements is further described in terms of functional language following the
words – “configured to.” Id. Although there is nothing intrinsically wrong
with defining something by what it does rather what it is, it is well settled
that choosing to define an element functionally carries with it a risk.
Schreiber, at 1478.
[W]here the Patent Office has reason to believe that a functional
limitation asserted to be critical for establishing novelty in the
claimed subject matter may, in fact, be an inherent
characteristic of the prior art, it possesses the authority to
require the applicant to prove that the subject matter shown to
be in the prior art does not possess the characteristic relied on.
In re Swinehart, 439 F.2d 210, 213 (CCPA 1971). Lee determines the
learning progress of a student by means of engaging the student in Q&A.
Lee uses the result of that Q&A to select additional lesson materials.
According to the Examiner, this necessarily involves translating the outcome
of Q&A into a profile code. Ans. 18.3 We think that this is sufficient to

3 “ . . . the intended use is in regards to what the translator is intended
to perform . . . what was discussed previously shows and proves that the
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shift the burden to Appellant to demonstrate that Lee’s selection process
does not necessarily entail use of a profile code. Swinehart, 439 F.2d at 213,
see also In re Spada, 911 F.2d 705, 708 (Fed.Cir.1990). Appellant has not
met this burden. Therefore, the Examiner’s fact finding based on principles
of inherency is deemed to be established.
Next, Appellant argues that Lee is silent with respect to generating a
first content by selecting specific data segments from general content data
segments. App. Br. 17. This argument is factually unsupportable in view of
the teaching disclosure of Lee previously discussed in this opinion.
Finally, Appellant argues that Lee is silent concerning the selection of
data segments based on matching a user’s profile code with the identification
code of data segments. App. Br. 17. The Examiner responds that Lee
delivers content based on the student’s progress demonstrated by
performance on Q&A sessions. Ans. 15-16, 19-20. The Examiner
previously pointed out that Q&A outcomes necessarily and inherently are
translated into profile codes. Ans. 18, discussed supra. The Examiner also
states that Lee’s data segments have identification codes in the form of
numbers and/or title/descriptions of a lesson. Ans. 16, 20. The Examiner’s
finding that Lee selects data segments by matching a user profile code with a
data segment identification code is supported by a preponderance of the
evidence. Ans. 19-20.
We sustain the Examiner’s unpatentability rejection of claims 1-3, 5-7
and 9-15.

structural elements are inherently capable of performing that function.”
Ans. 18.
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Unpatentability of Claim 4
Claim 4 depends from claim 1 and adds the limitation: “a second
source configured to present a second content to be sent over the at least one
communication network in response to a request from said server computer.”
Clms. App’x. The Examiner acknowledges that Lee and Bond do not
disclose the dependent limitation. Ans. 10. The Examiner relies on Siefert
as disclosing a second source configured to present a second content. Id.
In traversing the rejection, Appellant argues that Siefert fails to cure
the “second source” deficiency of Lee and Bond acknowledged by the
Examiner. App. Br. 19. Appellant’s argument is not persuasive. Siefert
discloses that educational data segments may reside on a plurality of
“repositories.” Siefert, Fig. 1, col. 5, l. 44 – col. 6, l. 63. Siefert uses an
Intelligent Administrator to select educational material for a student from
this plurality of repositories. Id. Siefert’s plurality of repositories in
conjunction with its Intelligent Administrator satisfies the limitations in
claim 4 directed to a first source configured to deliver a first content and a
second source configured to deliver a second content.
We sustain the Examiner’s unpatentability rejection of claim 4.
Unpatentability of Claims 8 and 16-18
Claims 8 and 16-18 depend, directly or indirectly, from claim 1.
These claims stand rejected as being unpatentable over Lee and Bond in
combination with additional references. Ans. 8-11. In traversing the
rejection of these claims Appellant cites to the same arguments presented for
the patentability of claim 1. App. Br. 18-21.
In addition, Appellant recites each of the respective dependent
limitations in each of claims 8 and 16-18 followed by a blanket, conclusory
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statement that the Examiner’s proposed combination fails to teach or suggest
the invention as claimed. Appellant’s brief does not rise to the level of
presenting a substantive argument for patentability of these claims. Our
rules and interpretative case authorities explain that statements that merely
point out what a claim recites are not considered to present an argument for
separate patentability of the claim. 37 C.F.R. § 41.37(c)(1)(vii); see also In
re Lovin, 652 F.3d 1349 (Fed. Cir. 2011) (Rule 41.37 requires more than
recitation of the claim elements and a naked assertion that the elements are
not found in the prior art).
For the reasons discussed with respect to claim 1, we are not
persuaded that the Examiner has erred and we sustain the rejection of claims
8, 17 and 18.

DECISION
The decision of the Examiner to reject claims 1-18 is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED

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