Ex Parte Maron et al

Board of Patent Appeals and Interferences

May 29, 2012

10397303 (B.P.A.I. May. 29, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
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.
10/397,303 03/27/2003 Mel Maron MARON-1 8533
7590 05/29/2012
H. JAY SPIEGEL
P.O. Box 444
Mount Vernon, VA 22121
EXAMINER
MOSSER, KATHLEEN MICHELE
ART UNIT PAPER NUMBER
3715
MAIL DATE DELIVERY MODE
05/29/2012 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
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte MEL MARON AND TROY E. HOWE
____________

Appeal 2010-002415
Application 10/397,303
Technology Center 3700
____________

Before PHILLIP J. KAUFFMAN, WILLIAM V. SAINDON, and
MICHAEL C. ASTORINO, Administrative Patent Judges.

ASTORINO, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
The Appellants appeal under 35 U.S.C. § 134 from the Examiner’s
decision rejecting claims 1 and 3-23. We have jurisdiction over the appeal
under 35 U.S.C. § 6(b). The Appellants’ representative presented oral
argument for this appeal on February 23, 2012.
We AFFIRM-IN-PART.
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REJECTIONS1
Claims 1, 3-6, 8-15, 17-20 and 22-23 are rejected under 35 U.S.C.
§ 103(a) as unpatentable over Dunk (US 2004/0157203 Al, pub. Aug. 12,
2004) and Appellants Admitted Prior Art, Specification at page 4, line 7
through page 5, line 5, (hereinafter “AAPA”). Ans. 3-5.
Claims 7, 16, and 21 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Dunk, AAPA, and Martinez (US 5,211,564, iss. May 18,
1993). Ans. 5.
Claims 1 and 3-23 are rejected under 35 U.S.C. § 102(f) because the
Applicant did not invent the claimed subject matter. Ans. 5-8.

CLAIMED SUBJECT MATTER
Claims 1 and 13 are the independent claims on appeal. Claim 1 is
illustrative of the subject matter on appeal, and is reproduced below with
formatting changes.
1. A method of automated grading of formula-
based multi-step problems using a Computer
Algebra System (CAS) based computer program,
including the steps of:
a) providing (1) a memory means for storing
said problems along with one or more formulas for
solving steps of said problems, and (2) data to
enable and facilitate assessment of correctness of
said steps of said problems, said steps of said
problems including a first or prior step and at least
one subsequent or later step;

1 The Examiner does not reject claims 1, and 3-23 under 35 U.S.C. § 101.
Ans. 8. As such, the Appellants explanation concerning patent subject
matter eligibility of the appealed claims (App. Br. 12-14) is not at issue.
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b) storing at least one multi-step problem in
said memory means along with one or more
formulas for obtaining one or more later-step
answers from prior-step answers that have been
obtained for said problem;
c) providing said CAS based computer
program that can grade sets of simultaneously
submitted answers to any or all steps of said at
least one multi-step problem;
d) providing a user interface with selective
access to said memory means and said computer
program;
e) providing a global computer network with
which said user interface can be connected to said
memory means and said grading program; and
f) wherein a correct answer to one or more
steps of said at least one multistep problem can be
obtained by any of one or more of said stored
formulas, possibly involving different prior-step
answers and possibly resulting in different values
for which at least partial credit can be given.

OPINION
Rejection of claims 1, 3-6, 8-15, 17-20 and 22-23 as unpatentable over Dunk
and AAPA
Claims 1, 3, 4, 5, 11, 13, 14, 15, 18, and 20
The Examiner finds Dunk discloses steps for computerized grading of
mathematical problems. Ans. 3. Dunk’s mathematical problems include
multi-step questions, e.g., question 207 in Figure 2, and Dunk’s
computerized grading provides credit for the final answer to a problem. See
para. [0037], Reply Br. 7-8. The Examiner also finds that Dunk’s system
also “teaches that it is well known in the art to computerize actions
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otherwise performed by hand.” Ans. 4. However, Dunk does not disclose
giving partial credit for the mathematical problems. See Ans. 4. To remedy
the deficiency of Dunk’s disclosure with respect to independent claims 1 and
13, the Examiner relies on AAPA. The AAPA is provided in the
Background of the Invention section of the Specification, and recites:
By contrast, effective hand-grading of
formula-based multi-step problems uses two
shortcut-type strategies, referred to herein as the
Prior-Answer Strategy and the Later-Answer
Strategy:
(1) The Prior-Answer Strategy looks for
correct intermediate or final answers,
which when found give full credit for all
relevant prior answers used to get it.
If an incorrect intermediate answer is found, an
experienced hand-grader will use the second
strategy;
(2) The second strategy is the Later-Answer
Strategy in which subsequent steps are
examined and subjective credit is given for
answers that are incorrect, but which appear
to have been obtained correctly based upon
incorrect but reasonable answers to earlier
steps.
When hand-graders apply these two
strategies combined with the innate human ability
to recognize and accept more than one correct
formula for using prior answers to obtain later
answers, the student obtains the maximum credit
deserved for problem steps that were correctly
performed. The prior art fails to teach or suggest
any computerized system that incorporates these
grading strategies used by effective hand-graders
to fairly and fully grade problems.
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Spec. 4, l.7 –p. 5, l. 5 (italics added). AAPA’s disclosure of (1) the Prior-
Answer Strategy and (2) the Later-Answer Strategy is evidence of providing
partial credit to multi-step problems.
The Examiner concludes that:
it would have been prima facie obvious to one of
ordinary skill in the art at the time of invention to
modify the system of Dunk et al with the
inherently known solution formulas conventional
to the paper based grading of the multi-step
problems because such a modification would have
represented the mere use on [sic of] known grading
formulas in a grading system adapted for use with
grading formulas and would have enabled the
grading of multi-step problems[.]
Ans. 4-5. Additionally, the Examiner determines that the “modification
would further yield the predict[t]able result of allowing for the automated
grading of multi-step problems, in which said grading applies the well-
known strategies used in hand grading of the problems.” Ans. 10-11.
We have considered the Appellants’ arguments for this ground of
rejection and do not find them persuasive.
The Appellants contend, among other things, that Dunk does not
disclose six elements recited in the claims. App. Br. 16. The six elements
are directed to claim limitations present in claims 1, 3, 4, 5, 11, 13, 14, 15
and 18. App. Br. 16. However, the Examiner does not find that Dunk
discloses these six elements, but relies on the disclosure in the AAPA to
disclose the six elements with the exception of computerized techniques.
Ans. 9. As for the computerized techniques, the Examiner further finds that
Dunk discloses “the use of computers for the grading of problems was
known and that programming of such was within the ordinary skill in the art
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at the time the invention was made.” Ans. 9. As such, the Appellants’
contention is not persuasive.
The Appellants also contend that “the fact that it is generally known to
seek to computerize manual functions does not render it obvious to do so in
this specific case” and that the Examiner’s rejection does not cite a prior art
reference that teaches “automating a hand grading process that includes the
provision of enabling the granting of partial credit.” Reply Br. 17. The
Appellants point out that Dunk’s mathematical problems include multi-step
questions, and that Dunk does not give partial credit for intermediate steps in
a problem, only the final answer. Reply Br. 7-8. Further, the Appellants
contend that the Examiner’s rejection provides reasoning why one of
ordinary skill in the art could modify Dunk as suggested but not why one
would modify Dunk as suggested. See Reply Br. 16. However, as cited by
the Examiner (Ans. 9), the AAPA provides a clear reason why one would
have provided partial credit to a multi-step problem, so that “the student
obtains the maximum credit deserved for problem steps that were correctly
performed.” Spec. 5: 1-3; see also Ans. 9. Thus, the Examiner’s rejection
has rational underpinning. See In re Kahn, 441 F.3d 977, 988 (Fed. Cir.
2006) (“[R]ejections on obviousness grounds [require] some articulated
reasoning with some rational underpinning to support the legal conclusion of
obviousness”) (cited with approval in KSR Int’l Co. v. Teleflex, Inc., 550
U.S. 398, 418 (2007)); see also KSR, 550 U.S. at 416 (“The combination of
familiar elements according to known methods is likely to be obvious when
it does no more than yield predictable results.”); Leapfrog Enterprises, Inc.,
v. Fisher-Price, Inc., 485 F.3d 1157, 1161 (Fed. Cir. 2007)
(“Accommodating a prior art mechanical device . . . to modern electronics
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would have been reasonably obvious to one of ordinary skill . . . .” and “has
been commonplace in recent years.”); Western Union Co. v. MoneyGram
Payment Systems, 626 F.3d 1361, 1370 (Fed. Cir. 2010) (holding obvious
“routine modifications that are a part of adapting a new technology to an
existing system”). Further, the Appellants presented no evidence that
proposed combination would have been “uniquely challenging or difficult
for one of ordinary skill in the art” or “represented an unobvious step over
the prior art.” Leapfrog Enter., Inc. v. Fisher-Price, Inc., 485 F.3d 1157,
1161-62 (Fed. Cir. 2007) (citing KSR Int’l Co. v. Teleflex Inc., 550 U.S.
398, 418-419 (2007)). Using automation for manually-operated methods is
commonplace and uses the common sense of an ordinarily skilled artisan.
Id. at 1161.
To the extent that the Examiner further supported the rejection under
35 U.S.C. § 103(a) upon the ability of one having ordinary skill in the art to
have the skill to program a computer based on the Declaration under 37
C.F.R. § 1.132 of Mel Maron, filed January 23, 2007 (Ans. 9-10), this
evidence is not needed to sustain the Examiner’s rejection. The Examiner’s
finding that Dunk discloses “the use of computers for the grading of
problems was known and that programming of such was within the ordinary
skill in the art at the time the invention was made” (Ans. 9) provides
adequate support for the Examiner’s conclusion of obviousness.
Nonetheless, even if relied upon as additional support we do not find that the
Examiner confuses the enablement requirement of 35 U.S.C. § 112, first
paragraph, with the criteria for establishing obviousness under 35 U.S.C.
§ 103(a). Contra Reply Br. 4-8.
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For the foregoing reasons, the Examiner’s rejection of independent
claims 1 and 13 has rational underpinning to support the legal conclusion of
obviousness. Thus, the Examiner’s rejection of claims 1 and 13 under 35
U.S.C. § 103(a) as unpatentable over Dunk and AAPA is sustained.
As for dependent claims 3, 4, 5, 11, 14, 15, 18, and 20, the Appellants
reiterate a similar contention as discussed supra, that “Dunk fails to even
contemplate intermediate solutions, much less a prior answer strategy.”
App. Br. 25-26; see App. Br. 25-27. As discussed supra, the Examiner does
not find that Dunk discloses a correctness assessment of intermediate steps
of a problem. However, the aforementioned is disclosed by the AAPA with
the exception of the computerized techniques, and the Examiner further
finds that Dunk discloses “the use of computers for the grading of problems
was known and that programming of such was within the ordinary skill in
the art at the time the invention was made.” Ans. 9. As such, the
Appellants’ reiterated arguments remain unpersuasive.
Thus, the Examiner’s rejection of claims 3, 4, 5, 11, 14, 15, 18, and 20
under 35 U.S.C. § 103(a) as unpatentable over Dunk and AAPA is sustained.
Claim 6
Claim 6 calls for “[t]he method of Claim 1, wherein said step of
providing said user interface includes the step of displaying an answer entry
window including areas to display information relevant to solving a said
problem.” The Appellants contend that Dunk’s Figure 5 discloses only
whether a final answer is correct or incorrect, i.e., there is no disclosure of
grading intermediate steps or partial credit. Reply Br. 17. As discussed
supra, the Examiner does not find that Dunk discloses a correctness
assessment of steps of the problem, such is disclosed by AAPA. Further,
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Dunk’s Figure 5 depicts a user interface including an answer entry window,
and areas to display information relevant to solving said problem (Ans. 3),
which is evidence that “the use of computers for the grading of problems
was known and that programming of such was within the ordinary skill in
the art at the time the invention was made.” Ans. 9.
Thus, the Examiner’s rejection of claim 6 under 35 U.S.C. § 103(a) as
unpatentable over Dunk and AAPA is sustained.
Claims 8, 17, and 22
Claim 8 calls for “[t]he method of claim 1, wherein said storing step
for at least one said problem includes the step of providing data to enable
correctness assessment of said steps of said problem entirely in a CAS
readable form.” Claims 17 and 22 are substantially similar to claim 8. See
also Reply Br. 18.
The Appellants contend that Dunk’s paragraph [0036] “reveals no
disclosure whatsoever concerning enabling correctness assessment of steps
of the problem.” Reply Br. 18. As discussed supra, the Examiner does not
find that Dunk discloses correctness assessment of steps of the problem,
such is disclosed by AAPA. Further, Dunk discloses in paragraph [0036]
that the “[c]orrectness being based upon a ‘computer-algebra-system’
readable form (claims 8, 17 and 22) is shown in paragraph 36 as the
response being submitted as either expressions or equations” (Ans. 3), which
is evidence that “the use of computers for the grading of problems was
known and that programming of such was within the ordinary skill in the art
at the time the invention was made.” Ans. 9.
Thus, the Examiner’s rejection of claims 8, 17, and 22 under 35
U.S.C. § 103(a) as unpatentable over Dunk and AAPA is sustained.
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Claim 9
Claim 9 calls for “[t]he method of Claim 1, further including the step
of providing an authoring tool to test data provided to enable correctness
assessment for a problem for correctness and robustness under actual or
simulated grading conditions before said enabling data is stored.” The
Appellants contend that such is not disclosed in paragraph [0021] of Dunk as
found by the Examiner. Reply Br. 19; see also Ans. 3. We agree. Dunk’s
paragraph [0021] discloses the use of an authoring tool, but not an authoring
tool as called for in claim 9. More specifically, Dunk discloses a teacher
equation editor application, i.e., an authoring tool, that stores inputted
questions and answers, receives and corrects answers, and provides a
learning reinforcement signal to a student computer. Dunk, para. [0021].
However, Dunk does not disclose in paragraph [0021] that the teacher
equation editor application “test[s] data provided to enable correctness
assessment for a problem for correctness and robustness under actual or
simulated grading conditions before said enabling data is stored” as recited
for by claim 9.
Thus, the Examiner’s rejection of claim 9 under 35 U.S.C. § 103(a) as
unpatentable over Dunk and AAPA is not sustained.
Claims 10 and 23
Claims 10 and 23 call for “the step of providing formula data to
enable assessment of correctness of a said problem, said enabling data then
being used to create further stored data to facilitate said assessment.”
The Examiner finds that “[d]ata is provided for enabling the
assessment of correctness of the problem and is used to create further stored
data to facilitate said assessment (claims 10 and 23), as is shown in
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paragraphs 40-41, wherein the further data is the reinforcement signal.”
Ans. 3-4. The Appellants contend, “[w]hile this may correspond to the
recited ‘formula data,’ Appellant is at a loss to understand how this meets
the terms of the independent claims concerning ‘data to enable ... assessment
of correctness of said steps of said problems ...’.” Reply. Br. 18 (italics
added). The Appellants’ contention is based upon the arguments presented
for independent claims 1 and 13, which, as discussed supra, are not
persuasive.
Thus, the Examiner’s rejection of claims 10 and 23 under 35 U.S.C.
§ 103(a) as unpatentable over Dunk and AAPA is sustained.
Claims 12 and 19
Claims 12 and 19 call for the problem, recited in claims 1 and 13
respectively, to include at least one parameter that can vary the problem by
being assigned values that are mathematical expressions.
The Examiner finds Dunk’s disclosure in paragraphs [0052]-[0058]
evidence a problem that includes at least one parameter that can vary the
problem by being assigned values that are mathematical expressions. Ans.
4. The Appellants contend that Dunk’s disclosures in paragraphs [0052]-
[0058] “relate to student entry of symbolic expressions,” while claims 12
and 19 “are directed to mathematical expressions that may be used to vary
the problem, and not to the entry of mathematical expressions by students.”
Reply Br. 19. However, if the answer to a question is a symbolic
expression, such is adequate evidence of a mathematical expression being an
assigned value(s) used to vary a problem. See also, Dunk, Fig. 5.
Thus, the Examiner’s rejection of claims 12 and 19 under 35 U.S.C.
§ 103(a) as unpatentable over Dunk and AAPA is sustained.
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Rejection of claims 7, 16, and 21 as unpatentable over Dunk, AAPA, and
Martinez
The Appellants reiterate arguments presented for independent claims
1 and 13, for claims 7, 16, and 21. See App. Br. 20, 26, 27, 28-29. For the
reasons provided above, those arguments are not persuasive. Thus, the
rejection under 35 U.S.C. § 103(a) of claims 7, 16, and 21 as unpatentable
over Dunk, AAPA, and Martinez is sustained.

Rejection of claims 1 and 3-23 because the Applicant did not invent the
claimed subject matter
Claims 1 and 3-12
Inventorship of this patent application consists of Mel Maron and
Troy E. Howe. Final Office Action, dated September 10, 2010, p. 2; see
Response including Request to Correct Inventorship under 37 C.F.R.
§ 1.48(a), and Declaration for Utility or Design Patent Application (37 CFR
1.63), filed Jun. 30, 2010. The Examiner finds that one of the inventors, Mel
Marion, declared in the Declaration under 37 C.F.R. § 1.132 of Mel Maron
from US Patent Application number 11/080,566 (hereinafter “Marion
Declaration II”), filed March 30, 2009 at paragraph 9, that:
“I conceived of and provided the inventive
contribution to the following aspects of the joint
invention disclosed and claimed in the earlier
application . . .
e. Administering a test requiring the user to
submit, possibly repeatedly, sets of submitted
answers into a user interface, with the sets of
submitted answers including at least one
answer to at least one step to solve at least one
problem.”

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The Examiner determined, inter alia, that the preceding statement in
paragraph 9 and 9.e. corresponds to claim 1, limitation d), which recites
“providing a user interface with selective access to said memory means and
said computer program” (italics added). Ans. 6. The Appellants contend
that the Examiner’s finding with respect to limitation d) is incorrect. Reply
Br. 3.
The scope of claims in a patent application is determined by giving
claims “their broadest reasonable interpretation consistent with the
specification” and “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
1359, 1364 (Fed. Cir. 2004). Limitation d) is supported by, inter alia, the
Specification at page 35, lines 9-17, (App. Br. 3) which states:
The Grading Module has three critical CAS
components, herein referred to as prepare (),
getCRO (), and grade (). In describing them, it is
assumed that the Student Client has performed the
initial "handshaking" [viz., verify the student's ID
for the course, then ask for a gradable activity
(homework, tutorial, quiz/exam, etc.), a desired
problem for the activity, and perhaps whether the
student wishes to see the problem statement
displayed], and has queried the system database to
get the data that is needed to grade the problem as
described above.
(Italics added). It is apparent from the preceding paragraph that the
performance of “handshaking” is an example of “selective access” as
required by the claim 1. As such, in light of the Specification, we
understand “selective access” to require conditional access to the user
interface prior to submitting answers to a user interface, e.g., by verification
of a student’s ID for a course.
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The Marion Declaration II, stating that “e. Administering a test
requiring the user to submit, possibly repeatedly, sets of submitted answers
into a user interface, with the sets of submitted answers including at least
one answer to at least one step to solve at least one problem” does not
support a finding that Mel Marion is the only inventor of the step of
“providing a user interface with selective access to said memory means and
said computer program” because it does not offer evidence of a condition
required to be satisfied prior to submitting answers to a user interface, i.e.,
selective access. Hence, the Examiner’s finding that Dr. Marion’s
contribution includes the entirety of claim 1 limitation d) is not adequately
supported. See also Reply Br. 3-4.
Claims 13-23
The Examiner performed a limitation-by-limitation analysis of claims
1 and 3-12, and then stated that claims 13-23 recited the same components.
Ans. 5-8. This is inaccurate because independent claim 13 recites,
“providing a global computer network to which said memory means may be
selectively connected” while claim 1 which recites, “providing a user
interface with selective access to said memory means and said computer
program.” Given this unaddressed distinction, we agree with the Appellants
that the Examiner has not demonstrated that every limitation of claims 13-23
is the result of Dr. Maron’s inventive contribution. Reply Br. 4.
For the reasons provided above, we do not sustain the rejection of
claims 1 and 3-23 under 35 U.S.C. § 102(f).

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DECISION
We AFFIRM the rejections of: claims 1, 3-6, 8, 10-15, 17-20 and 22-
23 under 35 U.S.C. § 103(a) as unpatentable over Dunk and AAPA; and
claims 7, 16, and 21 under 35 U.S.C. § 103(a) as unpatentable over Dunk,
AAPA, and Martinez.
We REVERSE the rejections of: claim 9 under 35 U.S.C. § 103(a) as
unpatentable over Dunk and AAPA; and claims 1 and 3-23 under 35 U.S.C.
§ 102(f).
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).

AFFIRMED-IN-PART

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