Ex Parte Dinger et al

Board of Patent Appeals and Interferences

Jun 19, 2009

10738829 (B.P.A.I. Jun. 19, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
________

Ex parte THOMAS J. DINGER and JONATHAN T. ZEMPEL
____________

Appeal 2008-004608
Application 10/738,829
Technology Center 3700
___________

Decided:1 June 19, 2009
__________

Before JOSEPH L. DIXON, ST. JOHN COURTENAY III, and
THU A. DANG, Administrative Patent Judges.

DIXON, Administrative Patent Judge.

DECISION ON APPEAL

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, begins to run from the decided date
shown on this page of the decision. The time period does not run from the
Mail Date (paper delivery) or Notification Date (electronic delivery).

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I. STATEMENT OF THE CASE
A Patent Examiner rejected claims 3-6 and 10-11. The Appellants
appeal therefrom under 35 U.S.C. § 134(a). We have jurisdiction under 35
U.S.C. § 6(b). We AFFIRM.

INVENTION
The invention at issue on appeal relates to a pluggable simple
sequencing machine in a learning technology system (LTS) to process
simple sequencing operations through a information model defined
externally to the simple sequencing engine (Spec. [0023], Fig. 1).

ILLUSTRATIVE CLAIMS
Claims 3 and 10, which further illustrate the invention, follow.

3. A pluggable simple sequencing engine comprising:

a plurality of behavioral operations implementing a sequencing
behavioral model;

a mapping of said behavioral operations to navigation requests;
and,

an interface both for receiving in said simple sequencing engine
data implementing a sequencing informational model which has
been defined externally to said simple sequencing engine, and
also for returning to an external calling object sequencing
information produced by processing said data in said behavioral
operations.

10. A machine readable storage having stored thereon a
computer program for simple sequencing, the computer
program comprising a routine set of instructions which when
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executed by the machine cause the machine to perform the steps
of:
receiving in the engine a navigation request comprising a
desired behavioral operation and data implementing an
informational model defined in a coupled content delivery
application;
extracting said desired behavioral operation from said
navigation request;
mapping said desired behavioral operation to a method
call in the engine;
passing said data to said method call for processing; and,
returning a result produced by said method call to said
coupled content delivery application.

REFERENCES
The Examiner relies on the following reference as evidence:
Van Schaack 6,652,283 B1 Nov. 25, 2003
(filed Dec. 30, 1999)

REJECTION
Claims 3-6 have been rejected under 35 U.S.C. § 102(e) as being
anticipated by Van Schaack. Claims 10-11 have been rejected under 35
U.S.C. § 103(a) as being unpatentable over Van Schaack.

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II. ISSUES
Based upon our review of the administrative record, we have
determined that the following issues are dispositive in this appeal:
Have Appellants shown that the Examiner erred in finding that Van
Schaack teaches “an interface… for receiving in the simple sequencing
engine data implementing a sequencing informational model which has been
defined externally to the simple sequencing engine,” as recited in claim 3?
(App. Br. 4, Reply Br. 2-3).
Have Appellants shown that the Examiner erred in determining that
Van Schaack teaches or fairly suggests “receiving in the engine a navigation
request comprising a desired behavioral operation and data implementing an
informational model defined in a coupled content delivery application,” as
recited in claim 10? (App. Br. 6).

III. PRINCIPLES OF LAW
PRIMA FACIE CASE OF UNPATENTABILITY
The allocation of burdens requires that the USPTO produce the factual
basis for its rejection of an application under 35 U.S.C. §§ 102 and 103. In
re Piasecki, 745 F.2d 1468, 1472 (Fed. Cir. 1984) (citing In re Warner, 379
F.2d 1011, 1016 (CCPA 1967)). The one who bears the initial burden of
presenting a prima facie case of unpatentability is the Examiner. In re
Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992). Appellants have the
opportunity on appeal to the Board to demonstrate error in the Examiner’s
position. See In re Kahn, 441 F.3d 977, 985-86 (Fed. Cir. 2006).

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CLAIM INTERPRETATION
During prosecution before the USPTO, claims are to be given their
broadest reasonable interpretation, and the scope of a claim cannot be
narrowed by reading disclosed limitations into the claim. See In re Morris,
127 F.3d 1048, 1054 (Fed. Cir. 1997). The Office must apply the broadest
reasonable meaning to the claim language, taking into account any
definitions presented in the specification. In re Am. Acad. of Sci. Tech Ctr.,
367 F.3d 1359, 1364 (Fed. Cir. 2004) (citing In re Bass, 314 F.3d 575, 577
(Fed. Cir. 2002)).
“Giving claims their broadest reasonable construction ‘serves the
public interest by reducing the possibility that claims, finally allowed, will
be given broader scope than is justified.’” Id. (quoting In re Yamamoto, 740
F.2d 1569, 1571 (Fed. Cir. 1984)). “Construing claims broadly during
prosecution is not unfair to the applicant . . . because the applicant has the
opportunity to amend the claims to obtain more precise claim coverage.” Id.

ANTICIPATION
"[A]nticipation of a claim under § 102 can be found only if the prior
art reference discloses every element of the claim . . . ." In re King, 801
F.2d 1324, 1326 (Fed. Cir. 1986) (citing Lindemann Maschinenfabrik
GMBH v. American Hoist & Derrick Co., 730 F.2d 1452, 1457 (Fed. Cir.
1984)). "[A]bsence from the reference of any claimed element negates
anticipation." Kloster Speedsteel AB v. Crucible, Inc., 793 F.2d 1565, 1571
(Fed. Cir. 1986).
“A claim is anticipated only if each and every element as set forth in
the claim is found, either expressly or inherently described, in a single prior
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art reference.” Verdegaal Bros., Inc. v. Union Oil Co. of California, 814
F.2d 628, 631 (Fed. Cir. 1987). Analysis of whether a claim is patentable
over the prior art under 35 U.S.C. § 102 begins with a determination of the
scope of the claim. We determine the scope of the claims in patent
applications not solely on the basis of the claim language, but upon giving
claims their broadest reasonable construction in light of the Specification as
it would be interpreted by one of ordinary skill in the art. In re Am. Acad. of
Sci. Tech. Ctr., 367 F.3d at 1364. The properly interpreted claim must then
be compared with the prior art.
In rejecting claims under 35 U.S.C. § 102, “[a] single prior art
reference that discloses, either expressly or inherently, each limitation of a
claim invalidates that claim by anticipation.” Perricone v. Medicis Pharm.
Corp., 432 F.3d 1368, 1375 (Fed. Cir. 2005) (citation omitted).
For a prior art reference to anticipate in terms of 35 U.S.C. § 102,
every element of the claimed invention must be identically shown in a single
reference. However, this is not an “ipsissimis verbis” test. In re Bond, 910
F.2d 831, 832 (Fed. Cir. 1990).

OBVIOUSNESS
In rejecting claims under 35 U.S.C. § 103, “[w]hat matters is the
objective reach of the claim. If the claim extends to what is obvious, it is
invalid under § 103.” KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 419
(2007). The question of obviousness is resolved on the basis of underlying
factual determinations including (1) the scope and content of the prior art,
(2) any differences between the claimed subject matter and the prior art, and
(3) the level of skill in the art. Graham v. John Deere Co., 383 U.S. 1, 17-
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18 (1966). The combination of familiar elements according to known
methods is likely to be obvious when it does no more than yield predictable
results. KSR, 550 U.S. at 416.

IV. FINDINGS OF FACT
In our analysis infra, we will rely on the following findings of fact
(FF) that are supported by a preponderance of the evidence:
Van Schaack
1. Van Schaack discloses a system, apparatus and method for
interactively learning that has a main engine 20 with a Learn Module (21),
Review Module 22, and Test Module 23 (Fig. 1, col. 12, ll. 44-65). The
Learn Module is operated to generate a sequence of items to be learned, such
as the sequence shown in Fig. 16 at step 700 (Fig. 7, step 700, col. 32, ll. 18-
30). The Test Module also generates a sequence to be viewed by the user
(Fig. 10 step 1006, col. 36, ll. 3-4).
2. Van Schaack also discloses an interface
that makes the system extremely streamlined and progressively
easier to use each time a user operates any of the modules of the
system. The system preferably prompts a new user for
identification information such as a password or other textual,
graphical, physiological or other identifying data that identifies
each user. Then, the adaptive interface determines the pattern of
usage, and with what level of skill that particular user has
operated the system. Based on this information, the system
adapts to the user's familiarity level with the system and
changes the presentation of information to the user to make it
easier and quicker to use the system.

(col. 9, ll. 12-23; Fig. 29).

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3. Van Schaak also discloses an Input Module external to the main
engine (col. 13, ll. 48-50).
The Input Module 100 may be adapted to receive
information that is transmitted overtly or covertly from the user.
The Input Module 100 can also be used by an administrator of
the system such as a teacher. The Input Module 100 can also
receive input information from objects or any other source of
information existing in the real world. The Input Module 100 is
configured to allow a user, administrator, or other party or
source of information to input any information that may affect
operation of the modules of the main engine 20 or other
modules in the system 10. Such input information may include
information about which of the main engine modules is desired
to be operated, changes in scheduling of learning, reviewing or
testing, user performance with the system 10, the type and
difficulty of the items to be learned, reviewed and tested, real
world feed back which affect the learning, reviewing and
testing, and any other information that is relevant to the overall
operation of the system 10 and the modules contained in the
main engine 20 and outside of the main engine.
Furthermore, the Input Module 100 can be configured to
receive information as to the performance of the user of the
system 10 through quantitative measurements such as time
required to input various responses requested, ability of user to
meet and adhere to schedule set up by the system 10, and the
user's level of interest and arousal in learning which can be
measured by such physiological characteristics as perspiration,
pupil diameter, respiration, and other physiological reactions.
As will be described in more detail below, the system 10
accepts and obtains various input information through the
Input Module 100 and the future operation of the various
modules of the system 10 modified based on this input
information. In this way, the system is adaptive to the user's
abilities and performance, and other input information so as to
constantly and continuously adapt to provide maximum
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effectiveness and efficiency of learning, retaining and retrieving
of knowledge or skills.
(Col. 13, l. 57 to col. 14, l. 27, emphasis added, bolding omitted; Fig. 1).
4. Van Schaack also discloses:
The system, apparatuses and methods of preferred
embodiments of the present invention may be used to perform
learning, reviewing and testing of any type of knowledge and
skills in any format. The information including knowledge or
skills to be learned, reviewed and tested, referred to as
"content," can be obtained from any source including but not
limited to a text source, an image source, an audible sound
source, a computer, the Internet, a mechanical device, an
electrical device, an optical device, the actual physical world,
etc. Also, the content may already be included in the system or
may be input by a user, an administrator or other source of
information. While the knowledge or skills to be learned,
reviewed and tested may be presented in the form of a cue and
response or question and answer in preferred embodiments of
the present invention, other methods and formats for presenting
items to be learned, reviewed and tested may be used.
More specifically, the content is preferably arranged in
paired-associate (cue and response) format for ease of learning.
The paired-associates may be presented visually, auditorily,
kinesthetically or in any other manner in which knowledge or
skills can be conveyed. The content may be also arranged in a
serial or non-serial procedural order for skill-based learning.
Any other arrangements where there is any form of a cue with
an explicit or implicit paired response or responses are
appropriate for use in the systems, methods and apparatuses of
preferred embodiments of the present invention.
(Col. 7, ll.1-28, emphasis added).
FIG. 30 shows a Preview Window display which is
presented in response to a user selecting a Lesson such as
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Lesson 1. In one preferred embodiment of the present invention,
if a user taps twice on the display at the location of the title
"Lesson 1" in rapid succession, the display presents
information about that lesson including the lesson's title, the
author of the lesson, the date of creation of the lesson, and
description/instructions for learning that lesson. In addition, the
user can tap the Preview button to see the contents of the lesson.
Tapping the Close button takes the user back to the Main
Window display shown in FIG. 29.
(Col. 45, ll. 22-33, emphasis added, bolding omitted; Figs 29 and 30).
5. Van Schaack further discloses:
FIG. 31 is a display showing operation of the Learn
Module 21 including the presentation of a cue. In this preferred
embodiment of the present invention, when a lesson is selected
as described above and the Learn button shown in FIG. 29 is
tapped, the Learn Module 21 is initiated. FIG. 31 shows the
display corresponding to T3 in FIG. 17.
FIG. 32 is a display showing a further operation of the
Learn Module 21 including the presentation of a response to the
cue shown in FIG. 31 corresponding to T4 in FIG. 17.
FIG. 33 is a display showing a further operation of the
Learn Module 21 including e presentation of a prompt asking
the user whether he wants to proceed Faster or Slower. FIG. 33
shows the window displayed after the user has determined that
he knows the unknown item being presented and has
interrupted the sequence of presentation of this particular
unknown item.
FIG. 34 shows the display that is provided after the user
has completed the entire process of learning a lesson.
FIG. 35 shows another operation of the Learn Module 21
according to a preferred embodiment of the present invention in
which a user is asked if he wants to learn a new item. FIG. 35
shows the window displayed when a user has reached a point in
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the presentation sequence when no user interrupt is given, but a
predetermined time or presentation value has been reached. The
user determines whether he wants to learn a new item or
continue learning the item that is currently being presented for
learning. If the user chooses "Yes," the next unknown item is
presented. If the user chooses "No," the presentation sequence
for the item currently being learned is started over again.
(Col. 45, ll. 34-63, bolding omitted; Figs 17 and 30-35).

V. ANALYSIS
From our review of the Examiner’s stated rejections, we find the
Examiner’s showing to set forth a prima facie case of obviousness.
Therefore, we look to Appellants’ Briefs to show error in the proffered
prima facie case.
At the outset, we note that neither Appellants nor the Examiner
expressly discussed the scope of the argued limitations present in the claims
under review. Thus, we start our review by first determining the appropriate
scope of the argued limitations in independent claims 3 and 10.
First, both claim 3 and claim 10 are not in the form of means plus
function language, thus, we will not interpret the claims to read on only the
structures or materials disclosed in the Specification. In addition, the claims
themselves do not define the argued terms. Therefore, we have the
obligation to construe the terms with broad yet reasonable interpretations.
In light of the breadth of Appellants’ Specification, we broadly but
reasonably construe the claimed “simple sequencing engine” as a sequencing
engine executed for any flow of learning activities or sequencing. We
broadly but reasonably construe the claimed “sequencing informational
model” as any model providing the instructions for determining which
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learning activity to be next presented to the learner. Also, the claim
language has required that the sequencing informational model is not
included in the simple sequencing engine, i.e., “external to the engine.”
Regarding independent claim 10, the claim does not expressly define
the information model, the engine, or coupled content delivery application.
The claim also does not mention simple sequencing engine or sequencing
informational model. Hence, in light of the breadth of Appellants’
Specification, we broadly but reasonably construe the claimed “coupled
content delivery application” as a learning system with delivered content for
users to review and “desired behavioral operation” as the operation of
determining what next activity to call for, such as, the navigation,
termination, selection, etc.
We now address the merits of the contentions of Appellants.

Section 102 rejection of claims 3-6
With respect to the independent claim 3, Appellants contend that
“there is no mention of any notion of a ‘simple sequencing engine’ or a
‘sequencing informational model’ anywhere in Van Schaack” (Reply Br. 2)
and the “Examiner ignores the plain meaning of ‘simple sequencing engine’
and instead applies the Examiner’s own definition of an engine including a
learn module, a review module and a test module.” (Reply Br. 4).
The Examiner states that “[t]he sequencing engine (test, learn and
review) is interpreted as being the same as the main engine.” (Ans. 3)
We agree with the interpretation of the claim terminology by the
Examiner. Van Schaack teaches a main engine in a learning system that
generates sequences or flow of learning activities for a user to learn (FF 1).
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Thus, the main engine of Van Schaack is read on the claimed term, simple
sequencing engine, under our construction of the claimed term.
Appellants further contend that “the Examiner failed to show exactly
where within Van Schaack it was taught that the sequencing engine includes
‘an interface both receiving in the simple sequencing engine data
implementing a sequencing informational model which has been defined
externally to the simple sequencing engine.” (App. Br. 4). In particular,
Appellants contend that the Examiner failed to teach or suggest the language
in claim 3 that “explicitly requires that the sequencing informational model
is defined externally to the simple sequencing engine.” (App. Br. 5).
Appellants also contend that the Connection Module of Van Schaack is a
general program module providing for the input of information to the main
engine, allowing multiple users to use the system, and allowing a plurality of
systems or engines to be connected. Thus, the Connection Module can not
be read as a sequencing informational model (Reply Br. 2).
The Examiner maintains that “the Schedule module of Van Shaack,
which goes from one module to another as being the same as the interface,”
(Ans. 3) and “Van Schaack teaches that a connect module may be provided
external to the main engine that operatively connect other external systems
(col. 8, lines 40-52).” (Ans. 5).
We disagree with those interpretations of the Examiner because the
Schedule module may not function as an interface and the Connection
Module, even though it is external to the main engine, does not provide the
instructions for determining which learning activity to be next presented to
the learner. While we disagree with the Examiner’s expressed findings, we
find that Van Schaack discloses an adaptive interface allowing the user to
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operate any module of the learning system (FF 2). We also find that Van
Schaack discloses an Input Module connected externally to the main engine.
The Input Module receives and transmits the information about which of the
main engine modules is desired to be operated, the change in scheduling of
learning, reviewing or testing , and the future modified operations of the
various modules of the system 10 based on this input information. (FF 3).
In other words, the Input Module provides the instructions for determining
which learning activity is to be next presented to the learner. Thus, the Input
Module of Van Schaack can be read on the term “sequencing informational
model” according to our construction of the claim terminology.
Therefore, based on the record before us, we find Appellants have not
shown that the Examiner erred in determining that Van Schaack discloses a
“an interface both for receiving in the simple sequencing engine data
implementing a sequencing informational model which has been defined
externally to the simple sequencing engine,” as required by claim 3.
Accordingly, we sustain the Examiner’s rejection of representative
claim 3 as being anticipated by Van Schaack under 35 U.S.C. § 102, and
claims 4-6 which fall therewith.

Section 103 rejection of claims 10-11
With respect to the independent claim 10, Appellants further contend
that “the Examiner failed to show exactly where within Van Schaack it was
taught that a navigation request is received in the engine that includes a
desired behavioral operation and data implementing an informational model
defined in a coupled content delivery application.” (App. Br. 6).
The Examiner maintains that
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[a]lthough Schaack’s informational model is not explicitly
defined in a “coupled content delivery application’, it is defined
in a content distribution application (as defined in applicant’s
specification and in his figure 1) and it performs the same
function. It would have been an obvious matter of design choice
to use any desired format/style of delivery of his application.

(Ans. 5). The Examiner further maintains that “the content distribution
application can be an LTS, or any other application type.” (Ans. 5).
We agree with the Examiner’s interpretation of “coupled content
delivery application” because Van Schaack teaches a knowledge learning
system that delivers the contents for a user to review or learn (FF 4). We
also find that Van Schaack teaches that a navigation request through the
Input Module (FF 3) such as learning lesson 1 (a desired behavioral
operation of navigation) is received by the main engine (Learn Module). In
addition, the Input Module and the Learn Module are coupled together to
deliver or navigate the lesson 1 for the user to learn (FF 5).
Therefore, based on the record before us, we find Appellants have not
shown that the Examiner erred in determining that Van Schaack discloses
“receiving in the engine a navigation request comprising a desired
behavioral operation and data implementing an informational model defined
in a coupled content delivery application,” as required by claim 10.
Accordingly, we sustain the Examiner’s rejection of representative
claim 10 as being unpatentable over Van Schaack under 35 U.S.C. § 103,
and claim 11 which falls therewith.

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VI. CONCLUSION
For the aforementioned reasons, we conclude that Appellants have not
shown that the Examiner erred finding that the proffered anticipation
rejection teaches “an interface both for receiving in the simple sequencing
engine data implementing a sequencing informational model which has been
defined externally to the simple sequencing engine,” as recited in claim 3.
We also conclude that Appellants have not shown that the Examiner erred in
finding that the proffered obviousness rejection teaches or fairly suggests
“receiving in the engine a navigation request comprising a desired
behavioral operation and data implementing an informational model defined
in a coupled content delivery application,” as recited in claim 10.

VII. ORDER
We affirm the anticipation rejection of claims 3-6 and the obviousness
rejection of claims 10-11.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).

AFFIRMED

msc

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