13792203 (P.T.A.B. Nov. 28, 2017)

Ex Parte Yu

Patent Trial and Appeal BoardNov 28, 2017

13792203 (P.T.A.B. Nov. 28, 2017)

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. 13/792,203 03/11/2013 Steven Sounyoung Yu 6251 65881 7590 11/28/2017 STEVEN YU 9810 Cresence Way Fairfax, VA 22032 EXAMINER GILBERT, WILLIAM V ART UNIT PAPER NUMBER 3649 MAIL DATE DELIVERY MODE 11/28/2017 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 PATENT TRIAL AND APPEAL BOARD ____________________ Ex parte STEVEN SOUNYOUNG YU ____________________ Appeal 2016-0051361 Application 13/792,2032 Technology Center 3600 ____________________ Before NINA L. MEDLOCK, CYNTHIA L. MURPHY, and MATTHEW S. MEYERS, Administrative Patent Judges. MEYERS, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s final rejection of claims 1 and 21–39. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE and enter a NEW GROUND of rejection pursuant to 37 C.F.R. § 41.50(b). 1 Our decision references Appellant’s Appeal Brief (“Appeal Br.,” filed August 28, 2015) and Reply Brief (“Reply Br.,” filed April 16, 2016), the Examiner’s Answer (“Ans.,” mailed February 16, 2016), and Final Office Action (“Final Act.,” mailed April 2, 2015). 2 Appellant identifies “[t]he real party in interest” as “Steven Yu, who is the inventor on this patent application” (Appeal Br. 3). Appeal 2016-005136 Application 13/792,203 2 CLAIMED INVENTION Appellant’s claims “relate[] to residential housing” (Spec. 1, l. 9). Claim 1 is the only independent claim on appeal. Claim 1 reproduced below, with minor formatting changes and added bracketed notations, is illustrative of the subject matter on appeal: 1. A residential housing complex comprising: [a] a condominium building comprising multiple housing units; and [b] a primary and/or secondary private school that uses a combination of machine-guided and face-to-face teaching, the school being inside or attached to the condominium building such that the school is structurally integrated with the condominium building; [c] wherein both the multiple homes and the school are or were built under the direction of the same developer or development team; [d] wherein both the multiple homes and the school are or were built according to the same development plan. REJECTIONS Claims 1, 22–24, 26, 27, 29–31, 33, and 37–39 are rejected under 35 U.S.C. § 103(a) as unpatentable over Olson (US 2010/0161495 A1, pub. June 24, 2010), Hester (US 7,779,585 B2, iss. Aug. 24, 2010), and Packard (US 7,210,938 B2, iss. May 1, 2007). Claims 21, 25, 28, 32, 34 and 33–36 are rejected under 35 U.S.C. § 103(a) as unpatentable over Olson, Hester, Packard, and Houghton (US 6,591,573 B2, iss. July 15, 2003). Appeal 2016-005136 Application 13/792,203 3 ANALYSIS Independent claim 1 and dependent claims 22–24, 26, 27, 29–31, 33, and 37–39 We are persuaded by Appellant’s argument that the Examiner erred in rejecting independent claim 1 under 35 U.S.C. § 103(a) because the combination of Olson, Hester, and Packard does not disclose or suggest “a primary and/or secondary private school that uses a combination of machine-guided and face-to-face teaching, the school being inside or attached to the condominium building such that the school is structurally integrated with the condominium building,” as recited by limitation [b] of independent claim 1 (see Appeal Br. 5–6; see also Reply Br. 2–4). The Examiner maintains that the rejection is proper, and cites paragraph 9 of Olson, a general citation to Hester, and column 1, lines 10–15 of Packard, as disclosing the argued limitation (see Final Act. 3–4; see also Ans. 2–3). Olson is directed to “an online system that manages bids for components of a construction project and allows a registered user to search aggregated unit pricing data” (Olson ¶ 8). Olson discloses that a “bidder or a solicitor may search construction cost information to obtain product and job-specific pricing” (id.). Olson further discloses that “[t]he solicitor may post a project to solicit bids by inputting a location of the project; a building type, such as, for example, commercial, industrial, institutional, residential multi-family, residential single family and/or retail” (id. ¶ 9). Hester is directed “to an improved combined shopping center and apartment building and more particularly to an improved multilevel building having at least one level of living units, or apartments, constructed integral with and above a shopping center, with access from each apartment to a Appeal 2016-005136 Application 13/792,203 4 system of common corridors” (Hester, col. 1, ll. 7–14). Hester discloses that its building structure provides access “from the apartment levels directly to the shopping center level for safety and convenience of the apartment dwellers and to encourage their use of the shopping center facilities” (id. at col. 1, ll. 21–25). Hester further discloses “[t]he advantages obtained by constructing the dwelling units above commercial space such as shopping centers, grocery stores, or the like, which are normally constructed as single level building structures, enables more economical land use particularly in urban areas where available land is scarce and very expensive” (id. at col. 4, ll. 55–60). Hester also identifies that “[t]he dwelling floors, or at least a portion of them, may be modified by providing other common areas such as meeting rooms for resident assemblies, arts and crafts, or the like” (id. at col. 5, ll. 7–9). Packard is directed to a system for providing “an Internet-based elementary and secondary school, which is committed to offering a complete and comprehensive education to all pupils–no matter where they live, what kind of school they attend, or their financial status” (Packard, col. 1, ll. 20– 25). Packard discloses that its system “integrate[s] on-line and off-line instructional materials for a well-rounded learning experience” (id. at col. 1, ll. 35–36; see also id. at col. 1, ll. 37–54). We have reviewed the cited portions of Olson, Hester, and Packard, and agree with Appellant that none of the cited portions of Olson, Hester, and Packard discloses or suggests the argued limitation. Although we agree with the Examiner that Hester discloses “a single structure that incorporates two different functions[, i.e.,] a residence and shopping [center]” (Final Act. 3; see also Ans. 20), we cannot agree with the Examiner that Hester’s Appeal 2016-005136 Application 13/792,203 5 disclosure regarding a building constructed above a shopping center (see, e.g., Hester, col. 1, ll. 7–14) in view of Olson’s disclosure regarding different types of buildings such as “institutional” buildings, and further in view of Packard’s disclosure regarding an Internet-based school system, discloses or suggests the argued limitation when given its broadest reasonable interpretation in light of the Specification. To address the “primary and/or secondary private school . . . being inside or attached to the condominium building such that the school is structurally integrated with the condominium building,” as recited by limitation [b] of independent claim 1,” the Examiner takes the position that Hester teaches a single structure that incorporates two different functions: here a residence and shopping. It would have been obvious at the time the invention was made to a person having ordinary skill in the art to have an educational facility structurally integrated with the residence in order to provide an ease of access of the residents to and from the educational facility in order to avoid the outside elements. (Final Act. 3–4). In the Answer, the Examiner further reasons that “[n]o limitations are provided within the claim to structurally define what constitutes ‘a primary and/or secondary private school’” (Ans. 19), and as such, the Examiner finds that Olson’s disclosure regarding “institutional” buildings (id. at 20) “can be reasonably interpreted to include educational facilities, including a primary and/or secondary private school” (id.). We cannot agree. Instead, we agree with Appellant that the Examiner’s interpretation is unreasonably broad and inconsistent with the Specification (see Reply Br. 2– 4). The Federal Circuit described recently the inquiry we should follow to determine the broadest reasonable construction: Appeal 2016-005136 Application 13/792,203 6 The correct inquiry in giving a claim term its broadest reasonable interpretation in light of the specification is not whether the specification proscribes or precludes some broad reading of the claim term adopted by the examiner. And it is not simply an interpretation that is not inconsistent with the specification. It is an interpretation that corresponds with what and how the inventor describes his invention in the specification, i.e., an interpretation that is consistent with the specification. In re Smith, 871 F.3d 1375, 1383–84 (Fed. Cir. 2017). Here, as Appellant points out, the Specification describes the term “primary and/or secondary private school” as: [t]he school may include any or all primary school and/or secondary school grade levels, which may correspond with different terminologies in different parts of the United States, including K–12 grade levels, or preschool, kindergarten, elementary school (e.g. kindergarten and grade levels 1–5), middle school (e.g. grade levels 6–8), intermediate school, high school (e.g. 30 grade levels 9–12), junior high school, and senior high school (e.g. grade levels 10–12). (Spec. 7, ll. 26–30; see also id. at 7, ll. 4–7). Although, this portion of the Specification by itself does not necessarily preclude the Examiner’s broad reading of “primary and/or secondary private school” (see Ans. 20), the Specification further discloses that “[t]he residential housing complex of the present invention may also include commercial, industrial, office, institutional, or other land uses” (id. at 7, ll. 21–22), and as such, distinguishes “institutional” uses from “a primary and/or secondary private school,” as limitation [b] requires. Thus, we agree with Appellant that the combination of Olson, Hester, and Packard fails to disclose or suggest “a primary and/or secondary private school that uses a combination of machine-guided and face-to-face teaching, the school being inside or attached to the condominium building such that the school is structurally Appeal 2016-005136 Application 13/792,203 7 integrated with the condominium building,” as recited by limitation [b] of independent claim 1. In view of the foregoing, we do not sustain the Examiner’s rejection of independent claim 1 under 35 U.S.C. § 103(a) as unpatentable over Olson, Hester, and Packard. For the same reasons, we also do not sustain the Examiner’s rejection of dependent claims 22–24, 26, 27, 29–31, 33, and 37–39 which depend from independent claim 1. Dependent claims 21, 25, 28, 32, 34 and 33–36 Claims 21, 25, 28, 32, 34 and 33–36 depend from independent claim 1. The Examiner’s rejection of claims 21, 25, 28, 32, 34 and 33–36 under 35 U.S.C. § 103(a) based on Houghton, in combination with Olson, Hester, and Packard, does not cure the deficiency in the Examiner’s rejection of independent claim 1. Therefore, we do not sustain the Examiner’s rejection of claims 21, 25, 28, 32, 34 and 33–36 under 35 U.S.C. § 103(a) for the same reasons set forth above with respect to independent claim 1. NEW GROUNDS Pursuant to 37 C.F.R. § 41.50(b), we newly reject independent claim 1 under 35 U.S.C. § 102(b) as anticipated by “cityofsound: Linked Hybrid by Steven Holl Architects, and designing for the occupation of space in contemporary Beijing,” dated April 12, 2011, http://www.cityofsound.com/blog/2011/04/linked-hybrid-beijing-steven- holl.html (hereinafter, “Linked Hybrid”).3 We also rely on a webpage from 3 Retrieved from Internet Archive https://web.archive.org/web/20110414013024/http://www.cityofsound.com/ blog/2011/04/linked-hybrid-beijing-steven-holl.html, dated April 14, 2011. Appeal 2016-005136 Application 13/792,203 8 the American Montessori Society (hereinafter “AMS”) to explain the meaning of a “Montessori school,” as the term is used in Linked Hybrid (see MPEP 2131.01).4 FINDINGS OF FACT FF 1. The term “condominium” is generally understood to mean “an apartment house, office building, or other multiple-unit complex, the units of which are individually owned, each owner receiving a recordable deed to the individual unit purchased, including the right to sell, mortgage, etc., that unit and sharing in joint ownership of any common grounds, passageways, etc.”5 FF 2. The Specification discloses that “[e]xamples of residential buildings include condominiums (providing multiple condominium units), apartment buildings (providing multiple apartment units)” (Spec. 4, ll. 11– 12). FF 3. The Specification discloses that “[t]he school of the present invention is not intended to be a daycare” (Spec. 8, l. 23), and is “not intended to encompass a boarding school or a college/university setting” (Spec. 8, ll. 28–29). FF 4. The Specification discloses that “[t]he school has a real physical setting (i.e. is ‘brick-and-mortar,’ not completely virtual) and has at 4 Retrieved from Internet Archive https://web.archive.org/web/20110313075832/http://www.amshq.org:80/en/ Montessori%20Education/Introduction%20to%20Montessori/Montessori%2 0Schools.aspx, dated March 13, 2011. 5 “Condominium,” in Dictionary.com Unabridged. Source location: Random House, Inc. http://www.dictionary.com/browse/condominium. Available: http://www.dictionary.com/ (last visited on November 20, 2017). Appeal 2016-005136 Application 13/792,203 9 least one instructor who is not a parent or legal guardian of the students” (Spec. 9, ll. 4–6). FF. 5 The Specification further discloses [t]he school of the present invention is not intended to be a public school. The meaning of “public school” is as conventionally understood, i.e., directly paid for by or dependent upon government funding or taxpayer contributions, and/or administered by a government body (e.g. local, state, or federal). Public schools include charter schools, magnet schools, or other types of specialized public schools” (Spec. 9, ll. 14–18). FF 6. Linked Hybrid is a webpage discussing “the MOMA building, aka the Linked Hybrid, by Steven Holl Architects et al.” (Linked Habitat 2). FF 7. Linked Hybrid discloses “[t]he 220,000 square meter pedestrian-oriented Linked Hybrid complex . . . promotes interactive relations and encourages encounters in the public spaces that vary from commercial, residential, and educational to recreational” (Linked Hybrid 2). FF 8. Linked Hybrid further discloses “[t]he entire complex is a three-dimensional urban space in which buildings on the ground, under the ground and over the ground are fused together” (Linked Hybrid 2). FF 9. Linked Hybrid discloses “[o]n the intermediate level of the lower buildings, public roofs gardens offer tranquil green spaces, and at the top of the eight residential towers private roof gardens are connected to the penthouses” (Linked Hybrid 9). FF 10. Linked Hybrid also discloses “[a]ll public functions on the ground level[] – including a restaurant, hotel, Montessori school, kindergarten, and cinema – have connections with the green spaces surrounding and penetrating the project” (Linked Hybrid 9). Appeal 2016-005136 Application 13/792,203 10 FF 11. AMS discloses that “[m]ore than 4,000 Montessori schools dot the American landscape, offering a unique educational model to families nationwide. Thousands more bring the Montessori method to every corner of the world” (AMS 1). FF 12. AMS further discloses that “[l]ike other private schools, most independently owned Montessori schools are funded by tuition revenue. Some schools provide scholarships for families in need of assistance, and many offer reduced tuition when parents enroll more than one child” (AMS 1). FF13 AMS also identifies that “Montessori is a presence in more than 400 U.S. public schools, including neighborhood, magnet, and charter schools” (AMS 1). ANALYSIS Claim 1 is rejected under 35 U.S.C. § 102(b) as being anticipated by Linked Hybrid (with reference to AMS to explain the meaning of a “Montessori school,” as the term is used in Linked Hybrid), with corresponding mapped findings, as follows: 1. A residential housing complex comprising (see FF 6, 7): [a] a condominium building comprising multiple housing units [(see FF 6, 7, 8, 9; cf. FF 2)]; and [b] a primary and/or secondary private school that uses a combination of machine-guided and face-to-face teaching (see FF 7, 10, 11, 12, 13; cf. FF 3, 4, 5). We note that Linked Hybrid does not explicitly disclose that its structurally integrated Montessori school is a private school, however, AMS explains that Montessori schools are “[l]ike other private schools” (see Appeal 2016-005136 Application 13/792,203 11 FF 12), the school being inside or attached to the condominium building such that the school is structurally integrated with the condominium building (see FF 8); [c] wherein both the multiple homes and the school are, or were, built under the direction of the same developer or development team (see FF 6, 7, 8; cf. Spec. 6, ll. 9–15); [d] wherein both the multiple homes and the school are, or were, built according to the same development plan (see FF 6, 7, 8; cf. Spec. 6, ll. 9– 15). We have entered the new grounds only for independent claim 1, and leave it to the Examiner to determine whether a rejection of the other claims is warranted in view of this reference alone or in combination with other newly found or previously cited references. DECISION The decision of the Examiner to reject claims 1 and 21–39 is REVERSED. We enter a NEW GROUND of rejection of independent claim 1 as anticipated over Linked Hybrid (with reference to AMS to explain the meaning of a “Montessori school,” as the term is used in Linked Hybrid) pursuant to our authority under 37 C.F.R. § 41.50(b). This decision contains a new ground of rejection pursuant to 37 C.F.R. § 41.50(b). “A new ground of rejection pursuant to this paragraph shall not be considered final for judicial review.” 37 C.F.R. § 41.50(b) also provides that the Appellants, WITHIN TWO MONTHS FROM THE DATE OF THE DECISION, must exercise one of the following two options with Appeal 2016-005136 Application 13/792,203 12 respect to the new grounds of rejection to avoid termination of the appeal as to the rejected claims: (1) Reopen prosecution. Submit an appropriate amendment of the claims so rejected or new evidence relating to the claims so rejected, or both, and have the matter reconsidered by the Examiner, in which event the proceeding will be remanded to the Examiner. (2) Request rehearing. Request that the proceeding be reheard under 37 C.F.R. § 41.52 by the Board upon the same record. REVERSED; 37 C.F.R. § 41.50(b)