Ex Parte Smothers

Patent Trial and Appeal Board

Nov 17, 2014

11945744 (P.T.A.B. Nov. 17, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte CANDACE SMOTHERS
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Appeal 2012–008567
Application 11/945,744
Technology Center 3700
____________________

Before MICHAEL J. STRAUSS, JOHN A. EVANS,
and ROBERT L. KINDER, Administrative Patent Judges.

KINDER, Administrative Patent Judge.

DECISION ON APPEAL
Appellant seeks our review under 35 U.S.C. § 134(a) of the
Examiner’s Non-Final Rejection of claims 1–24. App. Br. 1. We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
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STATEMENT OF THE CASE
Appellant’s Invention
Appellant’s claims generally relate to a method for teaching
mathematics by presenting one or more mnemonic tools including an icon
that are non-arbitrarily associated with a module of information covering a
particular mathematics concept. Spec., Abstract; Claim 1. The mnemonic
tool may be presented on a presentation medium with a set of equations for
teaching the mathematical concept based on the effect of a common
recurring number found in the set of equations. Id.

Claims on Appeal
Claims 1–24 are the claims on appeal. Because Appellant does not
argue for the separate patentability of any of the claims on appeal, we select
independent claim 1 as representative and base our decision on claim 1
alone. See 37 C.F.R. § 41.37(c)(1)(vii) (2011); App. Br. 18 (“Further,
because claims 2–24 are dependent on and further define claim 1, claims 2–
24 are also patentable over the cited art.”). Claim 1 recites:
1. A method using a presentation medium to display a
mnemonic tool visually reminiscent of a number recurring in
each equation of a specific set of equations in order to teach a
mathematic concept based on the effect of the presence of the
recurring number in each of the equations, the method
comprising the steps of:

providing a presentation medium including a computer
for displaying one or more mnemonic tools, each mnemonic
tool including an icon that is visually of a common recurring
number found in a particular set of equations; and

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running a program on the computer including one or
more learning modules configured to display specific
information on the presentation medium at specific times;

displaying a first mnemonic tool on the presentation
medium at least temporarily with a set of at least eight
equations for the purpose of teaching a first mathematic
concept, wherein the first mathematic concept is based on the
effect of the presence of a common recurring number found in
each of the equations in the set of at least eight equations
wherein the set of at least eight equations is selected from the
group consisting of:

a(l). 2+2=4, 2+3=5, 2+4=6, 2+5=7, 2+6=8, 2+7=9,
2+8=10, and 2+9=11;

b(1). 4-2=2, 5-2=3, 6-2=4, 7-2=5, 8-2=6, 9-2=7, 10-2=8,
and 11-2=9;

c(1). 2x2=4, 3x2=6, 4x2=8, 5x2=10, 6x2=12, 7x2=14,
8x2=16, and 9x2=18;

d(1). 2÷2=1, 4÷2=2, 6÷2=3, 8÷2=4, 10÷2=5, 12÷2=6,
14÷2=7; 16÷2=8, and 18÷2=9;

e(l). 9x2=18, 9x3=27, 9x4=36, 9x5=45, 9x6=54, 9x7=63,
9x8=72, and 9x9=81;

and

f(1). 18÷9=2, 27÷9=3, 36÷9=4, 45÷9=5, 54÷9=6,
63÷9=7, 72÷9=8, and 81÷9=9.

App. Br. 19, Claims Appendix.

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Evidence Considered
Patel US 4,971,560 Nov. 20, 1990
Burtness US 7,077,654 B2 July 18, 2006

Examiner’s Rejections
Appellant seeks review of the rejections of claims 1–24 based upon
the findings that the claims are: (i) directed to non-statutory subject matter
under 35 U.S.C. § 101, (ii) fail to comply with 35 U.S.C. § 112, and (iii)
unpatentable over Patel and Burtness under 35 U.S.C. § 103(a). App. Br.
10.

Withdrawn Rejections
Rejections made by the Examiner pursuant to 35 U.S.C. §§ 1011 and
112 were withdrawn in the Examiner’s Answer. Ans. 7. As such, our
review is limited to the remaining rejections under 35 U.S.C § 103.

Issues on Appeal
The dispositive issue on appeal is whether the Examiner erred in
finding that Patel and Burtness teach or suggest the limitations of “providing
a presentation medium including a computer for displaying one or more

1 Although Section 101 was considered by the Examiner and withdrawn,
should there be further prosecution of this Application (including any review
for allowance), the Examiner may wish to review claims 1–24 for
compliance under 35 U.S.C. § 101 in light of intervening guidance. See
“Preliminary Examination Instructions in view of the Supreme Court
Decision in Alice Corporation Pty. Ltd. v. CLS Bank International, et al.,”
Memorandum to the Examining Corps, June 25, 2014.
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mnemonic tools, each mnemonic tool including an icon that is visually of a
common recurring number found in a particular set of equations.” Claim 1.

ANALYSIS
Rejection under 35 U.S.C. § 103(a)
Appellant’s claims recite a method of using a presentation medium to
display a mnemonic tool visually reminiscent of a number recurring in each
equation of a specific set of equations in order to teach a mathematic concept
based on the effect of the presence of the recurring number. Claim 1.
Appellant argues the prior art makes no mention of using a mnemonic tool
that is visually reminiscent of a common recurring number found in a
particular set of equations. App. Br. 17. In the Reply Brief, Appellant
refines this argument in response to the Answer by further arguing the
mnemonic tool must include an icon and the prior art does not teach or
suggest using an icon as the mnemonic tool. Reply Br. 8. Appellant argues
“[t]he term ‘icon’ is commonly understood and defined as ‘a usually
pictorial representation; a sign (as a word or graphic symbol) whose form
suggests its meaning.’ See Merriam-Webster dictionary.” Reply Br. 4.
Appellant continues by arguing the “icon would have to be visually
reminiscent of, for example, the number ‘8’. Colors are not icons------use of
color alone is not pictorial in nature and is not visually reminiscent of any
particular color on its own.” Reply Br. 4. After contending the color and
grouping mnemonic tools of Patel do not teach or suggest an icon, Appellant
notes that the “Examiner relies on Burtness to fill in this gap,” but Appellant
offers no explanation as why Burtness does not teach icons except to
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contend “even with the combination of Burtness, the sum of these references
is still deficient . . . .” Reply Br. 5.
The Examiner relies upon the combination of Patel and Burtness for
teaching the claimed “computer for displaying one or more mnemonic tools,
each mnemonic tool including an icon that is visually of a common recurring
number found in a particular set of equations.” Claim 1; Ans. 5–6, 8. The
Examiner interprets “mnemonic tool” as “anything that assists in memory.”
Ans. 8. The Examiner relies on the color and equation grouping schemes of
Patel, “which clearly can be mnemonic tools.” Id. The Examiner explains
other mnemonic tools in Patel include the visual presentation of the column
grouping structure or the presentation of the sequential grouping of the
numbers. Id. The Examiner continues by noting each of the above are
visually reminiscent of a common recurring number found in a set of
equations. Id.
The Examiner did not have the opportunity to address Appellant’s
arguments related to “icons” because these arguments were raised for the
first time in Appellant’s Reply Brief. However, because Appellant’s
arguments related to “icons” are responsive to the Examiner’s Answer and
discussion of the scope of “mnemonic tools,” we consider these arguments.
See 37 C.F.R. § 41.41(b)(2); compare section below excluding other
arguments raised for the first time in the Reply Brief.
We find Appellant’s arguments unpersuasive. Appellant adopts an
overly narrow interpretation of the claim terms “each mnemonic tool
including an icon,” which is inconsistent with the scope of the terms set
forth in the Specification. In our determination, we will accord the claims
their broadest reasonable interpretation consistent with the Specification. In
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re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1369 (Fed. Cir. 2004). The
Specification explains that icons may be visual representations of adding
two units to a base unit (¶ 41) or an image of a lollipop to represent the Arabic
numeral 9 (¶ 42) for example. Contrary to Appellant’s arguments, the
Specification explains a mnemonic tool icon “does not necessarily have to bear a
resemblance to the Arabic numeral.” Spec. ¶ 43. The Specification describes a
“third icon contains elements in its design that symbolize, remind, and/or illustrate
the thought process and/or series of steps leading to the solution of a problem
involving the third mathematic concept.” Spec. ¶ 45. The Specification
repeatedly discloses the icon need not resemble the Arabic numeral but, instead,
an icon may be a grouping of objects such as “an image of a group of eight
children walking in a straight line with six of them being the same height
and the last two being shorter.” Id.
Based on this broad but reasonable interpretation of the disputed
limitation “each mnemonic tool including an icon,” consistent with
Appellant’s Specification, we agree with the Examiner that Patel and
Burtness teach and/or suggest the limitations challenged by Appellant. Both
the color scheme (Figure 1, element 13) and grouping structure of Patel
provide a mnemonic tool including an icon because the color scheme and
grouping structure are visually representative of a common recurring number
and set of equations. See, e.g., Patel, Fig. 1 (elements 18A, 18B, 18C, each
contain a grouping structure with a common recurring number). As
explained in Patel, the color coding and grouping structure “can be useful for
memorization of multiplication facts.” Col. 5, ll. 12–13; see also, col. 4, ll.
46–65, col. 5, ll. 4–18, claim 10. Further, Patel teaches the same set of
equations and common recurring numbers as claimed by Appellant.
Compare Patel, Fig. 1 (element 18B common recurring number of “2” in a
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set of equations of 2x1=2 through 2x10=20) to Claim 1, element c(1)
(common recurring number of “2” in a set of equations of 2x2=4 through
9x2=18).
We further find Appellant’s argument that Patel displays all the
equations at once unpersuasive because nothing in Appellant’s claims
prevents such a display and because one of skill in the art would understand
that the sets of equations and color coding of Patel could be presented in any
logical grouping display. See Patel col. 4, ll. 50–53 (“or additional columns
and cut out portions as may be required to cover a logically related set or
group of equations”); see also Patel, claim 1 (claiming a single set of
completed equations).
We also find that Burtness teaches “each mnemonic tool including an
icon,” because the graphical representations of familiar objects taught by
Burtness correspond to Arabic numerals. See Figs. 1A, 1B. Compare
Appellant’s claimed icons in Figure 1 of the Specification to Figures 1A and
1B of Burtness. Appellant offers insufficient persuasive reasoning
explaining why the icons of Burtness do not teach the claimed limitation
(see Reply Br. 5), or why such icons would not be combinable with Patel as
explained and concluded by the Examiner. See Ans. 6. Likewise, Burtness
teaches the claimed “presentation medium including a computer for
displaying one or more mnemonic tools.” Claim 1. Burtness discloses a
visual math teaching method using a computer and program to display items.
Ans. 6 (citing Burtness, col. 4 ll. 44–54, and col. 6 ll. 22–37). We agree
with the Examiner that it would have been obvious to one having ordinary
skill in the art to combine the mnemonic teaching device of Patel with a
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computer to display the mnemonic tools for the reasons explained by the
Examiner. Ans. 6.
Arguments Raised for the First Time in Reply
In opening briefing, Appellant made two contentions arguing the
combination of prior art does not teach or suggest the claimed invention:
(i) Patel makes no mention whatsoever of using a mnemonic tool
that is visually reminiscent of a common recurring number
found in a particular set of equations, and displaying such tool
with the specific set of equations on a presentation medium
including a computer [and]

(ii) Applicant’s method is drawn to teaching a user to associate in
his or her mind the effect a particular recurring number has on a
specific set of equations and tying such effect and set of
equations to a particular mnemonic tool . . . .
(App. Br. 17.)
In reply briefing, Appellant makes new arguments not presented in the
initial briefing and not responsive to the Examiner’s Answer. See Reply Br.
4–7. Specifically, Appellant argues “Burtness specifically teaches away
from both Patel and Applicant’s disclosure” (Reply Br. 7) and Patel
“presents multiple groups of equations, the whole of which do not include
the same recurring number,” (id. at 6). See also Reply Br. 6 (arguing for the
first time the prior art does not teach the limitation of claim 1 “running a
program on the computer including one or more learning modules
configured to display specific information on the presentation medium at
specific times”). Appellant failed to raise these arguments in the initial
briefing – Appellant even acknowledges this by setting forth a section of the
Reply entitled “Responses to Specific Arguments made In the Examiner’s
Answer,” which presents certain arguments responsive to the Answer.
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Reply Br. 7. The initial briefing mentions nothing of Burtness teaching
away, the references not being combinable, Patel presenting multiple groups
of equations, or the running a program on the computer limitation.
Likewise, we do not find these arguments responsive to the Examiner’s
Answer. See Ans. 7–8. We therefore consider these arguments waived
pursuant to 37 C.F.R. § 41.41(b)(2) because Appellant has not explained
why, nor is it apparent that, these arguments were necessitated by a new
point in the Examiner’s Answer or any other circumstance constituting
“good cause” for its belated presentation. See Ex parte Borden, 93 USPQ2d
1473, 1474 (BPAI 2010) (Informative) (“[T]he reply brief [is not] an
opportunity to make arguments that could have been made in the principal
brief on appeal to rebut the Examiner’s rejections, but were not.”). As
discussed above, we have considered Appellant’s newly raised “icon”
arguments because we find these arguments responsive to the Examiner’s
discussion of the term “mnemonic tools.”
Because Appellant’s arguments appealing the rejection of claims 1–24
are unpersuasive, we sustain the Examiner’s rejection of those claims
pursuant to 35 U.S.C. § 103(a).

CONCLUSION
On the record before us, we conclude that the Examiner has not erred
in rejecting claims 1–24 pursuant to 35 U.S.C. § 103(a).

DECISION
We AFFIRM the Examiner’s rejection of claims 1–24.
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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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