Ex Parte Timbadia et al

Patent Trial and Appeal Board

Mar 25, 2013

10712938 (P.T.A.B. Mar. 25, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte DARSHAN TIMBADIA, STEVE HENDERSHOTT, and
KEN BERGER
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Appeal 2010-002877
Application 10/712,938
Technology Center 3700
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Before STEVEN D. A. MCCARTHY, EDWARD A. BROWN, and
WILLIAM V. SAINDON, Administrative Patent Judges.

BROWN, Administrative Patent Judge.

DECISION ON APPEAL
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STATEMENT OF THE CASE
Darshan Timbadia et al. (Appellants) appeal under 35 U.S.C. § 134(a)
from the decision of the Examiner rejecting claims 1, 13, and 20. App. Br.
6. Claims 2-12, 14-19, and 21-27 were canceled. Id. at 2. We have
jurisdiction over this appeal under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.

CLAIMED SUBJECT MATTER
Claims 1, 13, and 20 are independent. Claim 1, reproduced below, is
illustrative:
1. A system for administering an examination
comprising:
one or more testing stations, configured to
receive a plurality of test items, to display the test
items to a user, to record state information
comprising time elapsed from the start of the
examination, identification of test items displayed
to the user, and user interactions with the testing
stations, and to transmit changes to the state
information at the same time that the state
information is recorded including when the user
provides responses to the test items;
a first server computer system in
communication with the one or more testing
stations, wherein the first server computer system
is configured to electronically transmit the test
items to the one or more testing stations, receive
user information and responses to the test items
from the one or more testing stations, receive the
state information from the one or more testing
stations, and electronically store the state
information at the same time that the state
information is received; and
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a second server computer system in
communication with the first server computer
system, wherein the second server computer
system is configured to receive user information
and responses to the test items from the first server
computer system and to deliver test packages to
the first server computer system,
wherein upon failure of the testing station,
an initial state object and changed state objects
stored on the server are used to recreate the
examination on the testing station at the point in
the examination where the failure occurred, and
wherein the user will not be penalized for the time
that questions are not available.

REJECTION
Claims 1, 13, and 20 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Kershaw (US 5,565,316; iss. Oct. 15, 1996) and Ashley
(US 2004/0229199 A1; pub. Nov. 18, 2004).

ANALYSIS
Claims 1 and 13 – Written Description Support
Claim 1 recites the limitations: (1) “wherein upon failure of the testing
station, an initial state object and changed state objects stored on the server
are used to recreate the examination on the testing station” (“First Feature”)
and (2) “wherein the user will not be penalized for the time that questions
are not available” (“Second Feature”). Claim 13 recites substantially similar
claim features. The Examiner found that Provisional Application
60/425,740 (“the provisional application”), from which Appellants claim
priority, does not provide adequate written description support under 35
U.S.C. § 112, first paragraph, for these two features. Final Rej. 2. Thus, the
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Examiner determined that claims 1 and 13 are not entitled to the benefit of
the filing date of the provisional application (i.e., November 13, 2002),
which predates the earliest effective filing date of Ashley (i.e., April 16,
2003). Id.
Appellants contend that the invention recited in claims 1 and 13 is
entitled to a priority date of the provisional application, and therefore Ashley
does not qualify as prior art for the purposes of 35 U.S.C. § 103(a). App. Br.
7.
For claims 1 and 13 of the present, non-provisional application to
obtain the benefit of the filing date of the provisional application,
the specification of the provisional must ‘contain a
written description of the invention and the manner
and process of making and using it, in such full,
clear, concise, and exact terms,’ 35 U.S.C. § 112 ¶
1, to enable an ordinarily skilled artisan to practice
the invention claimed in the non-provisional
application.
New Railhead Mfg., L.L.C. v. Vermeer Mfg. Co., 298 F.3d 1290, 1294 (Fed.
Cir. 2002). To satisfy the written description requirement, the specification
of Appellants’ provisional application must describe the claimed invention
in sufficient detail that one skilled in the art can reasonably conclude that the
inventor had possession of the claimed subject matter as of the filing date of
the application. See Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555, 1562-63
(Fed. Cir. 1991). Specifically, the specification of Appellants’ provisional
application must describe the claimed invention in a manner understandable
to a person of ordinary skill in the art and show that the inventor actually
invented the claimed invention. See id. The claimed invention need not be
recited in haec verba in the original specification to satisfy the written
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description requirement. Ariad Pharm., Inc. v. Eli Lilly and Co., 598 F.3d
1336, 1352 (Fed. Cir. 2010) (en banc).
First Feature
The Examiner determined that the provisional application provides
support for reconstruction of an examination based upon state objects stored
on a server, but that “one of those objects being ‘an initial state object’ is not
taught.” Ans. 6. The Examiner found that the initial state object as
described in the non-provisional application is created at a central server and
transmitted to the testing station, and that this is the exact opposite of the
initial state object as described in the provisional application, which is a
transmission from the testing station to the server. Id. at 7.
Appellants contend that it is irrelevant that the creation of the initial
state object is described differently in the non-provisional application than in
the provisional application, because claims 1 and 13 do not contain any
limitations regarding where the initial state object originates from. Reply
Br. 4. Thus, Appellants contend that the Examiner is improperly reading
limitations from the Specification into claims 1 and 13. Id. at 4-5.
The provisional application describes a method for performing state
management in which “the testing station 130a transmits the test state,
including an elapsed time which may be zero and the user’s answers if any,
at the beginning of the test and periodically thereafter.” Provisional
Application Spec., p. 10, ll. 29-31. Appellants contend that a test state
transmission with an elapsed time of zero and no user’s answers at the
beginning of the test provides support for an “initial state object” as claimed
in claims 1 and 13. App. Br. 10-11. The non-provisional application
describes a method for performing state management in which “[t]he service
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center…creates an initial state object…and stores the initial state object on a
data storage device. The initial state object is delivered from the service
center to the testing station.” Non-Provisional Application Spec., p. 12,
para. [0032].
As noted supra, the issue is whether the description provided in the
provisional application allows a person of ordinary skill in the art to
recognize and reasonably conclude that the inventors had possession of the
initial state object as recited in claims 1 and 13. The initial state object as
defined in claims 1 and 13 is stored on a server and, upon testing station
failure, is used to recreate an exam. The Examiner made no finding that the
provisional application fails to provide support for an initial state object
having these characteristics. Additionally, Appellants correctly contend that
claims 1 and 13 do not recite any limitation as to where the initial state
object is created. The Examiner also found that the method of performing
state management as shown in Figure 2 of the non-provisional application
includes significant modifications as compared to Figure 2 of the provisional
application. Ans. 7-8. However, the Examiner did not find that these
modifications in the non-provisional application were relied on by
Appellants in defining the first feature recited in claims 1 and 13. See Reply
Br. 4-5.
Accordingly, Appellants’ contention that a person of ordinary skill in
the art would read the provisional application as supporting the First Feature
as defined in claims 1 and 13 is persuasive.
Second Feature
The Examiner also found that the provisional application lacks
support for the Second Feature as recited in claims 1 and 13. Ans. 9. The
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Examiner acknowledged that this language in claims 1 and 13 appears word-
for-word in the provisional application, but concluded that this disclosure
only demonstrates a broad-ranging concept, and does not demonstrate that
Appellants had possession of the narrower concept of not penalizing
students for time lost during the fault recovery process. Id. As support for
this conclusion, the Examiner found that the provisional application only
describes a specific example of not penalizing a student for time lost due to
latency in the transmission of questions to the student during the
examination. Id.
Appellants contend that the provisional application describes using a
test state to recover an exam after testing station failure, the test state
including an elapsed test time that takes into consideration any amount of
time that a test is unavailable to the user. App. Br. 12. We agree.
The Examiner’s interpretation of what the provisional application
describes in regard to the Second Feature is unreasonably narrow. The
provisional application states that, after testing station failure, the user
resumes the test “starting from the state of the test at the time of failure.”
Provisional Application Spec., p. 10, l. 11. The test state includes an elapsed
test time, which takes into account any time the test is unavailable to the
user. Id. at p. 10, ll. 13-15. A person of ordinary skill in the art reading the
provisional application specification, as a whole, would conclude that
recreating the test based on the state of the test at the time of a testing station
failure would require not penalizing the user for time lost due to this failure.
Thus, Appellants’ contention that a person of ordinary skill in the art would
read the provisional application as also supporting the Second Feature as
defined in claims 1 and 13 is persuasive.
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We conclude that the subject matter recited in claims 1 and 13 is
entitled to a priority date of the provisional application, and therefore Ashley
does not qualify as proper prior art. Thus, the rejection of claims 1 and 13 is
not sustained.
Claim 20 – Written Description Support
The Examiner found that the provisional application does not provide
adequate written description support under 35 U.S.C. § 112, first paragraph
for claim 20. Claim 20 recites the feature “restarting the examination
following failure of the testing station wherein the initial state object and the
changes to the initial state object stored on the server computer are used to
recreate the examination on the testing station.” Appellants’ contentions
(App. Br. 15-16; Reply Br. 2) and the Examiner’s findings and conclusions
(Ans. 5) regarding this feature are the same as those discussed supra
regarding the First Feature of claims 1 and 13. However, claim 20 defines
“an initial state object” differently from claims 1 and 13, and thus, requires
different analysis.
Particularly, claim 20 recites the steps of “creating an initial state
object on the server computer” and “delivering the initial state object to the
one or more testing stations.” As discussed supra, the Examiner found that
an initial state object created on a server and transmitted to a testing station
lacks support in the provisional application, and can only be supported by
the non-provisional application. Ans. 6-9. Appellants responded that
“[c]laim 1 does not contain any limitations regarding from where the initial
state object originates.” Reply Br. 4. However, unlike claim 1, claim 20
requires the initial state object to originate on the server computer. The only
part of the provisional application that Appellants cite to as providing
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support for the concept of an initial state object describes an initial test
transmission originating from the testing station. App. Br. 10-11. As such,
we conclude that a person of ordinary skill in the art would read the
provisional application as not supporting an initial state object as defined in
claim 20, and thus that this claim is not entitled to the benefit of the filing
date of the provisional application.
Claim 20 – Rejection over Kershaw and Ashley1
Ashley
The Examiner found that the computer based testing system disclosed
in Ashley teaches the feature “delivering changes to the initial state
object…at the same time that each user interaction occurs” as recited in
claim 20. Ans. 4. Appellants contend that Ashley teaches that the student
responses saved on a local disk are simultaneously transmitted to a server,
but provides no teaching as to when the student responses are saved to the
local disk in relation to when the student responses are provided. App. Br.
14. Appellants conclude that the Examiner is mistaken to assume that, in
Ashley, the students’ responses are transmitted to the satellite server at the
same time the student provides responses to the test items. Id.
The Examiner responds that Appellants are attacking the references
individually and disregarding the teachings of Kershaw. Ans. 10. The
Examiner found that Kershaw discloses that student responses are recorded

1 The Examiner’s “Grounds of Rejection” states that claims 1, 13, and 20 are
rejected over Kershaw in view of Ashley. Ans. 2-3. However, as discussed
infra, the Examiner also relied on Official Notice for a claim feature found
missing from both Kershaw and Ashley. Id. at 4. Accordingly, we treat the
rejection as being over the combination of Kershaw, Ashley, and Official
Notice.
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in a log, and saved in an examinee file simultaneously to them being
provided by a user. Id. The Examiner found that Kershaw does not transmit
these saved logs to a server when they are created, but that Ashley discloses
that any time information is stored to a local disk, this information is
simultaneously transmitted to a local server. Id. at 10-11. Thus, the
Examiner concluded that the combined teachings of Kershaw and Ashley
suggest the simultaneous transmission feature of claim 20. Id. at 11.
Appellants do not apprise us of any error in the Examiner’s findings
or conclusion regarding what the combined teachings of Kershaw and
Ashley would have suggested to a person of ordinary skill in the art, or in
the Examiner’s rationale for combining these teachings.
Official Notice
The Examiner also found that Kershaw and Ashley fail to disclose the
limitation “wherein the user will not be penalized for the time that questions
are not available,” as recited in claim 20. Ans. 4. The Examiner took
Official Notice that this feature is well known in the art of standardized
testing, and concluded that it would have been obvious to include this
feature within the inventions of Kershaw and Ashley to ensure that the
student is given the entirety of the time allotted for completion of the test.
Id.; Final Rej. 4.
Appellants traverse that Examiner’s use of Official Notice. Reply Br.
6. Particularly, Appellants state:
Here, the examiner and applicant are debating the
"wherein" clause of claims 1, 13, and 20, both
from the standpoint of what the prior art teaches
and what applicants' provisional application
discloses. The examiner purports to rely upon
official notice for a feature, for which the cited
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prior art is silent, while contending that applicants'
provisional application containing textual support
for the feature is insufficient to establish a priority
date. The examiner's use of official notice is
unquestionably being used as principle evidence in
the rejection and, as such, is facially improper.
Reply Br. 8. We understand that the basis of the traversal is that there is an
inconsistency in the Examiner taking Official Notice of a claimed feature,
while also finding that the provisional application lacked support for the
same claimed feature.
An adequate traversal to a finding of Official Notice must “contain
adequate information or argument” to create on its face “a reasonable doubt
regarding the circumstances justifying the … notice” of what is well known
to an ordinarily skilled artisan. In re Boon, 439 F.2d 724, 728 (CCPA
1971). To adequately traverse a finding of Official Notice, an applicant
must specifically point out the supposed errors in the Examiner’s action,
which would include stating why the noticed fact is not considered to be
common knowledge or well-known in the art. See Manual of Patent
Examining Procedure § 2144.03(C) (Eighth Ed., Rev. 9, Aug. 2012).
Appellants’ traversal does not, however, explain why the noticed fact
is not considered to be common knowledge or well-known in the art.
Additionally, Appellants have not provided persuasive argument as to why
the Examiner’s findings are inconsistent. A claimed feature that is common
knowledge in the art must nevertheless have adequate written description
support in the specification to demonstrate to a person of ordinary skill in the
art that the inventors had possession of the claimed invention at the time of
the filing of the application. See Vas-Cath at 1562-63. Moreover, we
determined supra that the Second Feature, which was the subject of the
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Official Notice, was properly supported in the provisional application, thus
resolving any alleged inconsistency in the Examiner’s positions.
Consequently, we find that Appellants’ traversal of the Examiner’s use of
Official Notice to be non-persuasive.

DECISION
The Examiner’s rejection of claim 20 is AFFIRMED, and the
rejection of claims 1 and 13 is REVERSED. 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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