Ex Parte Hollingsworth et al

Patent Trial and Appeal Board

Aug 31, 2016

11253021 (P.T.A.B. Aug. 31, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
111253,021 10/18/2005
79980 7590 09/02/2016
Keohane & D'Alessandro
1881 Western Avenue Suite 180
Albany, NY 12203
FIRST NAMED INVENTOR
John F. Hollingsworth
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
END920050074US 1 9062
EXAMINER
CASLER, TRACI
ART UNIT PAPER NUMBER
OPQA
NOTIFICATION DATE DELIVERY MODE
09/02/2016 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address( es):
drubbone@kdiplaw.com
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PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JOHN F. HOLLINGSWORTH and JEFFREY W. MERSEREAU
Appeal2014-008149 1
Application 11/253,021 2
Technology Center 3600
Before BIBHU R. MOHANTY, JAMES A. WORTH, and
MATTHEWS. MEYERS, Administrative Patent Judges.
WORTH, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's
Final rejection of claims 1-16 and 18-20. We have jurisdiction under
35 U.S.C. §§ 134 and 6(b).
We AFFIRM.
1 Our decision refers to the Appellants' Appeal Brief ("Appeal Br.," filed
Apr. 29, 2014) and Reply Brief ("Reply Br.," filed July 18, 2014), and the
Examiner's Final Office Action ("Final Act.," mailed Dec. 10, 2013) and
Answer ("Ans.," mailed May 20, 2014).
2 According to Appellants, the real party in interest is International Business
Machines Corporation (Appeal Br. 2).
Appeal2014-008149
Application 11/253,021
Introduction
Appellants' disclosure relates to "a method for identifying educational
content and skill requirements," and more particularly, to "identifying and/or
developing educational content required for implementing a new business
initiative or a new business technique" (Spec. 1, 11. 1--4 ).
Claims 1, 10, and 15 are the independent claims on appeal. Claim 1,
reproduced below, is illustrative of the subject matter on appeal:
1. A method for identifying educational content, the
method comprising:
defining, by a computing device, a business
initiative having a framework with a plurality of progressively
refined predefined levels of skill for implementing said
business initiative by a plurality of skilled workers, wherein an
initial overview level of skill defines a required plurality of
skills commonly shared by each of the plurality of skilled
workers across a plurality of different professions for
implementing said business initiative;
associating, by the computing device, each of said
progressively refined predefined plurality of skill levels to an
anticipated level of educational content to be given to a set of
skilled workers of said plurality of skilled workers;
for each of said predefined levels of skill,
identifying, by the computing device, one or more standard
skills required for each of said plurality of skilled workers;
for each of said one or more standard skills
identified for said each of said plurality of skilled workers,
determining, by the computing device, whether any business
initiative specific skills are required by any of said plurality of
skilled workers who will be implementing said business
initiative, wherein said any business initiative specific skills are
derived from and further refine said one or more standard skills
identified for each of said plurality of skilled
workers for each of said predefined levels of skill; and
identifying, by the computing device, at least one
education module required to provide education for said any
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Appeal2014-008149
Application 11/253,021
business initiative specific skills determined to be required by at
least one of said plurality of skilled workers for implementing
said business initiative.
(Appeal Br., Claims App.)
Rejection on Appeal
The Examiner maintains, and the Appellants appeal, the following
rejection:
Claims 1-16 and 18-20 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over McGovern (US 5,918,207, iss. June 29, 1999),
Clark (US 5,164,897, iss. Nov. 17, 1992), and Moore (US 2002/0194101
Al, pub. Dec. 19, 2002).
ANALYSIS
Independent claim 1 and dependent claims 2-9
We are unpersuaded by Appellants' argument that the prior art relied
on by the Examiner fails to disclose an "initial overview level of skill" with
"a required plurality of skills commonly shared," as recited in independent
claim 1, i.e.,
defining, by a computing device, a business initiative having a
framework with a plurality of progressively refined predefined
levels of skill for implementing said business initiative by a
plurality of skilled workers, wherein an initial overview level
of skill defines a required plurality of skills commonly shared
by each of the plurality of skilled workers across a plurality of
different professions for implementing said business initiative
(Appeal Br. 12-14, emphasis added). Appellants assert that Moore is
limited to listing a single professional title, i.e., engineer, rather than a
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Appeal2014-008149
Application 11/253,021
plurality of skills (id. at 13-14). However, one cannot show non-
obviousness by attacking references individually when the rejection is based
on a combination of references. See In re Merck & Co., 800 F .2d 1091,
1097 (Fed. Cir. 1986). The Examiner instead relies on McGovern for the
teaching that everyone in an organization must have the technical skills to
meet customer requirements (Final Act. 3 (citing (col. 4, 11. 23-25; col. 4, 11.
38-52, and col. 2, 11. 41---60)). Indeed, McGovern (col. 2, 11. 41---60, col. 4, 11.
34--38) discloses that a business strategy must properly train personnel to
meet the skill level required by customers and that customers may have
various kinds of computer platforms. The skills required for the several
kinds of computer platforms, as disclosed, constitute a "plurality of skills,"
as recited by independent claim 1.
The Examiner relies on Moore (and Clark), inter alia, for the teaching
that the identification of skill sets may be refined over time, as further
required by independent claim 1 (see Final Act. 3--4). We agree with the
Examiner's conclusion that it would have been obvious to a person of
ordinary skill in the art to combine Moore's strategic planning process with
McGovern's predictive resource planning because, as stated by the
Examiner, the advantage of the one falls within the advantage of the other
(see Final Act. 3--4). We also agree with the Examiner that it would have
been obvious to combine Clark's teachings of refinements for the reasons
stated in McGovern, as explained by the Examiner (id.). We, therefore,
sustain the Examiner's rejection under 35 U.S.C. § 103(a) of independent
claim 1.
Although placed under a separate heading, Appellants do not argue the
patentability of claims 2-9 separately from claim 1, from which they each
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Appeal2014-008149
Application 11/253,021
depend. We, therefore, sustain the Examiner's rejection under 35 U.S.C.
§ 103 (a) of claims 2-9, for similar reasons as for independent claim 1.
Independent claims 10 and 15 and dependent claims 11-14, 16, and
18-20
Appellants' arguments made with respect to independent claims 10
and 15 are similar to those made with respect to independent claim 1, and we
find them unpersuasive for similar reasons. We, therefore, sustain the
Examiner's rejection under 35 U.S.C. § 103(a) of independent claims 10 and
15, for similar reasons as for independent claim 1.
Although placed under a separate heading, Appellants do not argue the
patentability of claims 11-14, 16, and 18-20 separately from claims 10 and
15, from which they each depend. We, therefore, sustain the Examiner's
rejection under 35 U.S.C. § 103(a) of claims 11-14, 16, and 18-20, for the
same reason as for independent claims 10 and 15.
DECISION
The Examiner's decision to reject claims 1-16 and 18-20 under 35
U.S.C. § 103(a) 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)(l )(iv).
AFFIRMED
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