Ex Parte 7,249,372 et al

Patent Trial and Appeal Board

Sep 27, 2013

90011434 (P.T.A.B. Sep. 27, 2013)

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.
90/011,434 04/04/2011 7,249,372 ESP.1487 6626
22885 7590 09/30/2013
MCKEE, VOORHEES & SEASE, P.L.C.
801 GRAND AVENUE
SUITE 3200
DES MOINES, IA 50309-2721
EXAMINER
CAMPBELL, JOSHUA D
ART UNIT PAPER NUMBER
3992
MAIL DATE DELIVERY MODE
09/30/2013 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 TARGET TRAINING INTERNATIONAL, LTD.
Patent Owner and Appellant
____________________

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Technology Center 3900

____________

Before HOWARD B. BLANKENSHIP, KEVIN F. TURNER, and
BRUCE R. WINSOR, Administrative Patent Judges.

BLANKENSHIP, Administrative Patent Judge.

DECISION ON APPEAL

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STATEMENT OF THE CASE
The Patent Owner appeals under 35 U.S.C. § 134(b) from the final
decision of the Examiner to reject claims 1-15, 23, 25, 33, 38, 47, 49-51, 55,
and 56. We have jurisdiction under 35 U.S.C. § 306. Oral hearing was on
May 29, 2013.
We affirm.

Invention
The '372 patent relates to a method of distributing documents that
includes displaying the documents on a web site. Responses to the
documents are accepted on the web site. After the responses have been
accepted, they are processed into a report and the report is returned to an
interested party. '372 patent col. 2, ll. 24-28.

Claims
Claims 1-11 are original patent claims. Claims 1-15, 23, 25, 33, 38,
47, 49-51, 55, and 56 stand rejected. Claims 18-22, 24, 26, 27, 29-32, 34-
37, 41-46, 48, 69, 70, and 72-76 are indicated as patentable and/or
confirmed. Claims 16, 17, 28, 39, 40, 52-54, 57-68, and 71 have been
canceled. See Advisory Action mailed Sept. 18, 2012 (“Advisory Action”).

Claim 1, reproduced below, is representative.
1. A method for managing distribution of assessment
documents over a wide area comprising:
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(a) providing an assessment instrument for completion
by respondents;

(b) assigning a password for an entity having a level of
rights;

(c) initializing permissions relative to the password based
on the level of rights for the entity, said permissions including
at least one respondent password having permissions based on
the level of rights for a respondent;

(d) allowing the entity access to a web site on a global
computer network and enabling the initialized permissions for
the entity;

(e) providing an assessment instrument to the respondent
which gauges an individual potential employee's suitability with
regards to a particular job, an individual existing employee's
suitability or performance with regards to a particular job, or an
individual boss‟s performance with regards to a particular job;

(f) receiving responses from the respondent to the
assessment instrument;

(g) processing the responses into an assessment report;

(h) sending the assessment report to one or more
locations authorized by the permissions.

Owner’s Contentions
Owner contends that the Examiner erred in rejecting claims 1-15, 23,
25, 33, 38, 47, 49-51, 55, and 56 as being anticipated under 35 U.S.C.
§ 102(e) by Sonnenfeld (US 6,112,049).

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ANALYSIS
Assessment Instrument
Claim language in this proceeding should be read 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). The
Office must apply the broadest reasonable meaning to the claim language,
taking into account any definitions presented in the specification. Id. (citing
In re Bass, 314 F.3d 575, 577 (Fed. Cir. 2002)).
According to Appellant, the term “assessment instrument” has a
special meaning “within the assessment industry” that is not the same as the
tests described in Sonnenfeld. App. Br. 11. Appellant contends that
Sonnenfeld describes subject matter tests that have “correct” and “incorrect”
answers, where there are no “correct” or “wrong” answers with assessment
instruments. Sonnenfeld thus refers to “correct answer” tests such as the
ACT, MCAT, and LSAT. Id. at 12-13. As evidence in support of the
assertion, Appellant refers to the declaration submitted by Dr. Russell J.
Watson (Evidence Appendix) and to US 6,594,668 B1 (Hudy), which was
cited by the Examiner during prosecution of the '372 patent. Id. at 11-12.
The Examiner responds that the ACT, MCAT, and LSAT are
assessment instruments to those of ordinary skill in the art, providing
assessment of one‟s potential to succeed in undergraduate studies, medical
school and the medical profession, and law school and the legal profession.
Ans. 2. The Examiner finds the Watson Declaration unpersuasive. Id. at 3-
4. The Examiner acknowledges that a patent (US 5,551,880) that the '372
patent incorporates by reference describes an “assessment instrument” in
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accordance with the meaning urged by Appellant. However, the Examiner
notes that the '372 patent specifically refers to the '880 patent as an
“example” of the type of surveys or reports that may be presented to
respondents. Ans. 5; '372 patent col. 4, ll. 37-41.
The '372 patent‟s written description and drawings do not provide a
definition for “assessment instrument” and, as the Examiner indicates, do
not even contain the term.
The Watson Declaration does not say whether the declarant has any
financial interest in the outcome of this proceeding, nor whether any
compensation was received for submitting the declaration. Nor does the
declaration state what present relationship the declarant may have with the
Patent Owner, although the declarant testifies he has “consulted for” and
assisted in development work for the entity. Watson Decl. ¶ 3.
In any event, Dr. Watson testifies:
The term “assessment instrument” as used in this art, and
as those of ordinary skill in the art know, refers to instruments
of self-appraisal for behaviors, values, and attributes,
sometimes referred to academically as “ipsative” tests. These
can be described as forced choice instruments requiring one to
choose between best or worst, most liked or least liked, etc. and
are distinctly different than correct answer right or wrong tests
of the academic knowledge type of appraisal such as used, for
example, in the ACT, MCAT, or the LSAT.

Watson Decl. ¶ 6. However, the declarant does not refer to any objective
evidence in support of the opinion, such as a definition provided in a text
that is in the alleged “art of assessment instruments.” Id., ¶ 4. We find the
expert testimony concerning a special meaning for “assessment instrument”
to be entitled to little weight.
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Hudy uses the term “assessment instrument,” notably at column 3:
Any new assessment instrument has no predetermined
standards of “passing” or “failing”. For example, one may be
looking for leadership qualities in an organization. This may be
done so that the most appropriate people can be culled and
trained for leadership positions. In order to do this an effective
instrument to measure leadership must be provided.

Hudy col. 3, ll. 61-67.
Although Hudy uses the term in question, that patent is not directed to
forming an “assessment instrument,” or any instrument, but to normalizing
test scores. See, e.g., patent Title, “Auto-Norming Process and System.”
Immediately prior to the mention of “assessment instrument” at column 3,
Hudy states that “[i]t is useful to examine what norms are in somewhat
greater detail before proceeding.” Hudy col. 3, ll. 59-60. “Raw scores on
any assessment instrument are essentially meaningless. For example, to say
that a person has a total raw score of 14 on the „critical thinking‟
competency assessment conveys little or no information about his or her
standing in this area.” Id. at col. 4, ll. 19-23. Thus, Appellant has produced
one prior U.S. patent that uses the term “assessment instrument,” but the
patent does not provide any useful definition for the term. If, on the other
hand, one regards Hudy as defining an “assessment instrument” as an
instrument that has no predetermined standards of passing or failing (col. 3,
ll. 61-67), such a definition is not the same as that proffered by Appellant in
the Watson Declaration. Nor does the Declaration explain the discrepancy.
A test that includes right or wrong answers such as the ACT, MCAT, or
LSAT is used to assess the likelihood of the success of an applicant at an
appropriate school as compared with other applicants. That is, there is no
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practical passing or failing raw or normalized score; an applicant‟s score is
compared with that of other applicants. Appellant objects to the Examiner‟s
citation to a non-prior art ACT web site (Reply Br. 3-4) but does not dispute
the widely known, long-standing, and well established uses of the ACT,
MCAT, and LSAT tests. Hudy does not support the assertion that
“assessment instrument” refers to “instruments of self-appraisal for
behaviors, values, and attributes” that are “distinctly different” from “correct
answer right or wrong tests of the academic knowledge type of appraisal.”
Watson Decl. ¶ 6.
Appellant also refers to a Markman order in a District Court
proceeding. App. Br. 12; Evidence Appendix, Target Training
International, Ltd. v. Extended Disc North America, Inc, Civil Action No. H-
10-3350, D.C. SD Tex. (“Markman Order”). The Order considered terms
that include “assessment instrument” as used in claims 1, 6, and 9 of the '372
patent. The Court determined that the term does not require construction,
but is to be attributed its plain and ordinary meaning. Markman Order 7-8.
When the claims are read in context, the terms (e.g., “assessment
instrument”) express a plain and ordinary meaning in the art. Id. at 8.
In light of the evidence before us, we agree with the District Court
that “assessment instrument” expresses a plain and ordinary meaning in the
art, requiring no construction. An “assessment instrument” is an instrument
that may be used for assessment. The claims provide the context with
respect to the relevant assessment. Claim 1, for example, recites in part
providing an assessment instrument to the respondent “which gauges an
individual potential employee‟s suitability with regards to a particular job.”
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The plain meaning of the recitation is to provide an instrument to the
respondent that may be used for assessment; specifically, for gauging an
individual potential employee‟s suitability with regards to a particular job.
In other words, “„the instrument measures what it says . . . .‟” Markman
Order 7.

Claims 1, 6, and 11
Appellant submits arguments in defense of independent claims 1, 6,
and 11. App. Br. 11-17. The arguments are based on an improper
interpretation of “assessment instrument” and fail to demonstrate error in the
Examiner‟s rejection over Sonnenfeld.
Appellants submit that “[a]s Dr. Watson testified in his Declaration,
Sonnenfeld primarily describes correct answer type academic knowledge
testing, not assessment instruments of the ipsative type (Watson, ¶ 7).” App.
Br. 11. As the Examiner notes, however, the word “ipsative” is not found in
the '372 patent. Nor do the claims qualify the “assessment instrument” as an
assessment instrument “of the ipsative type.” Moreover, the testimony that
Sonnenfeld “primarily” describes correct answer type academic knowledge
testing is a hedging statement that suggests Sonnenfeld describes more than
“correct answer type academic knowledge testing.” The hedging seemed to
be confirmed at the oral hearing. Appellant‟s representative offered, “I can
explain to you why the word „primarily‟ is used. It is because Dr. Watson is
a cautious man, and he is very precise, and he was afraid that in reading 76
columns, that he maybe missed something.” Hearing Trans. 7. Testimony
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that a reference “primarily” describes things outside the alleged scope of the
claims has little probative value when the rejection is for anticipation.
1

Appellant also submits semantic-based arguments that are not
commensurate with the broad terms of the claims nor supported by evidence
in the record. Appellant acknowledges that Sonnenfeld describes using test
results to screen job applicants. App. Br. 15. Appellant argues that is not
“gauging” an individual potential employee‟s suitability with regards to a
particular job because gauging “requires a gradient of job or person
suitability based upon a profile not obtainable by correct answer tests.” Id.
Yet, in the Reply Brief Appellant admits that, according to an online
dictionary, “gauging” means merely to estimate or judge. Reply Br. 4.
Appellant fails to explain how one might screen a job applicant based on test
results without estimating or judging the applicant‟s suitability with respect
to the job at issue.
Under the heading of “The Dependent Claim Limits” (App. Br. 17),
Appellant submits that the independent claims link the sending of
assessment reports to password-enabled permissions, which can vary for
different parties. It is unclear to what findings of the Examiner Appellant
may refer -- the “Office Action at bottom of page 16 to top of page 17” --
since neither the Final Rejection nor the Advisory Action discusses the
limitations at the pages that are indicated. In any event, Appellant submits
that “there is no disclosure that the locations to send reports are controlled

1
We also observe that the inventor‟s declaration provided in the Appeal
Brief‟s Evidence Appendix, which alleges secondary considerations tending
to show non-obviousness, is not germane to a rejection for anticipation and
thus not responsive to the rejection that is before us.
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by passwords.” App. Br. 18. We agree with the Examiner that the claims do
not require that the password dictates where the reports are to be sent.
Sonnenfeld provides more than adequate support for the Examiner‟s findings
with respect to how the reference describes “permissions” (not passwords)
that control sending of the assessment report. Ans. 9-10.
We have considered all of Appellant‟s arguments that are timely but
we are not persuaded of error in the Examiner‟s finding of anticipation, as
set out in the Final Rejection, Advisory Action, and Examiner‟s Answer.
We sustain the Examiner‟s rejection of claims 1, 6, and 11.

Dependent Claims
Appellant provides headings listing dependent claims and remarks
under the headings. App. Br. 19-22. The remarks consist of no more than
statements of what the claims recite and assertions that the recitations are not
found in Sonnenfeld. Merely pointing out what a claim recites followed by
a naked assertion that there is no corresponding step or structure in the
reference is not a substantive argument as to the separate patentability of the
claims. See 37 C.F.R. § 41.37(c)(1)(iv) (“A statement which merely points
out what a claim recites will not be considered an argument for separate
patentability of the claim.”).
The Examiner set forth the § 102(e) rejection of claims as being
anticipated by Sonnenfeld, citing to specific disclosure (columns and lines)
in Sonnenfeld on which the findings were based. Final Rej. 25-60. The
Examiner entered Appellant‟s amendments after the final rejection and
explained why the claims were rejected as being anticipated by Sonnenfeld,
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again pointing out specific disclosure. Advisory Action 3-44. Yet,
Appellant‟s remarks offered in support of the dependent claims make bare
assertions of patentability that do not address the factual bases for the
rejection for anticipation that are identified by the Examiner. Appellant has
not provided substantive arguments for separate patentability with respect to
any of the dependent claims. See In re Lovin, 652 F.3d 1349, 1357 (Fed.
Cir. 2011) (reasonable to interpret Rule 41.37 to require more substantive
arguments in an appeal brief than a mere recitation of the claim elements and
a naked assertion that the corresponding elements were not found in the
prior art). The dependent claims fall with the independent claims.

Conclusion
Appellant‟s arguments in defense of independent claims 1, 6, and 11
rely on an unduly narrow interpretation for terms such as “assessment
instrument.” Further, Appellant has not demonstrated error in the
Examiner‟s findings in support of the rejection. We sustain the Examiner‟s
§ 102(e) rejection over Sonnenfeld.

DECISION
The Examiner‟s decision to reject claims 1-15, 23, 25, 33, 38, 47, 49-
51, 55, and 56 is affirmed.
Extensions of time for taking any subsequent action in connection
with this appeal are governed by 37 C.F.R. § 1.550(c). See 37 C.F.R.
§ 41.50(f).

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AFFIRMED

Pl: peb

Third Party Requester:

ZIEGLER IP LAW GROUP, LLC
518 RIVERSIDE AVENUE
BUILDING B (SYNERGY)
WESTPORT, CT 06880

PATENT OWNER:

MCKEE, VOORHEES & SEASE, P.L.C.
801 GRAND AVENUE
SUITE 3200
DES MOINES, IA 50309-2721