Ex Parte Bagley et al

Patent Trial and Appeal Board

Aug 9, 2018

11314984 (P.T.A.B. Aug. 9, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
11/314,984 12/21/2005
46321 7590 08/13/2018
CRGOLAW
STEVEN M. GREENBERG
7900 Glades Road
SUITE 520
BOCA RATON, FL 33434
FIRST NAMED INVENTOR
Elizabeth V. Bagley
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
LOT920050111US1 (021) 1558
EXAMINER
LIN, SHEW FEN
ART UNIT PAPER NUMBER
2166
NOTIFICATION DATE DELIVERY MODE
08/13/2018 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
docketing@crgolaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ELIZABETH V. BAGLEY, FRANK McGRATH,
PAMELA A. NESBITT, and WILLIAM C. TOBIN
Appeal2017-010885
Application 11/314,984
Technology Center 2100
Before MAHSHID D. SAADAT, CAROLYN D. THOMAS, and
BRUCE R. WINSOR, Administrative Patent Judges.
WINSOR, Administrative Patent Judge.
DECISION ON APPEAL
Appellants 1 appeal under 35 U.S.C. § 134(a) from the final rejection
of claims 1, 2, and 23-27, which constitute all the claims pending in this
application. We have jurisdiction under 35 U.S.C. § 6(b ). Claims 3-22 are
cancelled. App. Br. 16.
We affirm.
1 The real party in interest identified by Appellants is International Business
Machines Corporation. App. Br. 2.
Appeal2017-010885
Application 11/314,984
RELATED PROCEEDINGS
The instant application was the subject of Appeal 2009-014819,
decided December 14, 2011, in which the Examiner's rejection of claim 1
was affirmed, the Examiner's rejection of claims 2-5, and new grounds of
rejection were designated or entered for claims 1-5. App. Br. 2; see
generally '819 Dec'n. The instant application was subsequently the subject
of Appeal 2013-010914, decided October 20, 2015, in which the Examiner's
rejection of claims 1-3, 5, and 15-22 was affirmed. App. Br. 2; see
generally '914 Dec'n.
STATEMENT OF THE CASE
Appellants' disclosed invention relates to e-learning and dynamically
invoking e-learning services. See Spec. ,r 1. Claim 1, which is illustrative,
reads as follows:
1. A method for on-demand work-embedded learning
compnsmg:
trapping a pre-configured event for an application
executing in a host computing platform in an event handler
separate from the application;
identifying a context for the pre-configured event, the
context indicating the application, a task indicating an active
task for the application, and also a user interface control
indicating a selected user interface control for the task in the
application;
retrieving e-learning content corresponding to the
identified context from a learning management system
comprising generating a search string based upon the
application, the task, and also the user interface control,
transmitting the search string to the learning management
system over a computer communications network, and
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receiving e-leaming content corresponding to the search string
from the learning management system; and,
rendering the retrieved e-leaming content in an e-leaming
content view which is separate from a view for the application
in the host computing platform.
The Examiner relies on the following prior art in rejecting the claims:
Potts et al. us 5,627,958 May 6, 1997
("Potts")
Baff es et al. US 6,292,792 Bl Sept. 18, 2001
("Baff es")
Lannert et al. US 6,549,893 Bl Apr. 15, 2003
("Lannert")
Leban et al. US 7,490,133 Bl Feb. 10,2009
("Leban") filed June 18, 2003
Claims 1, 2, and 26 stand rejected under 35 U.S.C. § I03(a)2 as being
unpatentable over Baff es and Lannert. See Final Act. 3-7,
Claim 23 stands rejected under 35 U.S.C. § I03(a) as being
unpatentable over Baff es, Lannert, 3 and Leban. See Final Act. 7-8.
Claims 24 and 25 stand rejected under 35 U.S.C. § I03(a) as being
unpatentable over Baff es, Lannert, 4 and Applicant Admitted Prior Art
("AAPA"). See Final Act. 8.
2 All rejections are under the provisions of 35 U.S.C. in effect prior to the
effective date of the Leahy-Smith America Invents Act of 2011 ("pre-AIA").
Final Act 2.
3 Although not explicitly mentioned in the respective summary grounds of
rejection (Final Act. 7-9), claims 23-25 and 27 each depend from claim 1,
which was rejected, in part, over Lannert (Final Act. 3). Therefore, we read
the grounds of rejection for claims 23-25 and 27 as implicitly including the
citation to Lannert found in the rejection of claim 1. See Ans. 6-7.
4 See n.3 supra.
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Application 11/314,984
Claim 27 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Baff es, Lannert, 5 and Potts. See Final Act. 9.
Claims 1, 2, and 23-27 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Baffes and Potts. See Final Act. 10-17.
Rather than repeat the arguments here, we refer to the Briefs ("App.
Br." filed Mar. 14, 2017; "Reply Br." filed Aug. 21, 2017) for the
Appellants' positions; the Final Office Action ("Final Act." mailed Sept. 29,
2016) and Examiner's Answer ("Ans." mailed June 20, 2017) for the
Examiner's reasoning, findings, and conclusions; and the Specification
("Spec." filed Dec. 21, 2005, amended Dec. 4, 2015). Only those arguments
actually made by Appellants have been considered in this decision.
Arguments that Appellants did not make in the Briefs have not been
considered and are deemed to be waived. See 37 C.F.R. § 4I.37(c)(l)(iv)
(2016).
ISSUES
The issues presented by Appellants' arguments are as follows:
Is the unpatentability of claim 1 over Baff es and Lennart a matter of
res judicata?
Does the Examiner err by entering undesignated new ground of
rejection for claims 23-25 and 27?
Does the combination of Baff es and Lennart teach or suggest
identifying a context for the pre-configured event, the context
indicating the application, a task indicating an active task for the
application, and also a user interface control indicating a selected
user interface control for the task in the application; [and]
5 See n.3 supra.
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Application 11/314,984
... generating a search string based upon the application, the
task, and also the user interface control
(the "context" limitation), as recited in claim 1?
Does the combination of Baff es and Potts teach or suggest the context
limitation, as recited in claim 1?
ANALYSIS
Res Judicata
Relying on our prior '914 Decision, the Examiner finds that the
patentability of claim 1 is a matter of res Judi cat a because the rejection of
then-pending claim 1, and its dependent claims 3 and 5, 6 was sustained by
the Patent Trial and Appeal Board. Final Act. 16; Ans. 4--5; see '914 Dec'n
8 ("[W]e sustain the rejection of [representative] claim 1 and claims 2, 3,
[5,] and 15-22, which fall with representative claim 1."). The Examiner
explains that now-pending claim 1 is "patentably indistinct" from the claims
affirmed by the '914 Decision because then-pending clam 1 was amended to
include parts of then-pending claims 3 and 5. Final Act. 16 ( citing MANUAL
OF PATENT EXAMINING PROCEDURE (MPEP) § 706.03(w) ("Res judicata may
constitute a proper ground for rejection .... A patent owner or applicant is
precluded from seeking a claim that is not patentably distinct from a claim
that was finally refused or canceled during an administrative trial.").
We disagree. The text of claim 1 now before us is substantially
different from the text that we considered in the '914 Decision (compare
App. Br. 15-16, with '914 Dec'n 2) and includes limitations added pursuant
6 Claim 3 depended from claim 1 ; claim 5 depended from claim 3 and, thus,
ultimately from claim 1.
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Application 11/314,984
to a Request for Continuing Examination ("RCE") filed December 4, 2015.
Pursuant to that RCE, prosecution was re-opened. See Non-Final Office
Action 2 (Apr. 26, 2016) (citing 37 C.F.R. § 1.114).
In the '914 Appeal, Appellants only argued the patentability of then-
pending claim 1, which we designated as representative of all pending
claims for purposes of the '914 Appeal. '914 Dec'n 3--4. Because we found
that Appellants had not shown the Examiner erred in rejecting then-pending
claim 1, we held that claims 3 and 5 "fall with representative claim 1." Id. at
8. We did not substantively consider the effect the language of then-pending
claims 3 and 5 would have on patentability. 7
We need not, and do not, enunciate a general rule as to when res
judicata applies. Under the circumstances presented in this record, where
neither of the prior decisions substantively considered all of the language of
the now-pending claims at issue, it would be unfair, and inconsistent with
RCE practice, 8 to reject now-pending claim 1, or any of its dependent
claims, solely on resjudicata 9 grounds over the '914 Decision. See also In
7 We note that in the '819 Appeal a different panel of this Board's
predecessor Board (the Board of Patent Appeals and Interferences) reversed
the Examiner's rejection of claims 3 and 5 for anticipation by Lannert based
on the ultimate dependency of those claims from claim 1, without
considering the separate effect the language of claims 3 and 5 would have on
patentability. See '819 Dec'n 3-7.
8 See, e.g., 37 C.F .R. § 1.114( d) ("If an applicant timely files a submission
and fee set forth in § 1.17 ( e ), the Office will withdraw the finality of any
Office action and the submission will be entered and considered.").
9 We note that as to claim language present in then-pending claim 1 as
considered in the '914 Decision, the doctrine of issue preclusion may apply.
See generally, Ex Parte Ditzak, Appeal 2018-000087 (PTAB Mar. 2, 2018)
(informative).
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Application 11/314,984
re Ackermann, 444 F.2d 1172, 1176 (CCPA 1971) (reversing the application
of res judicata where the claim has been modified so as to sufficiently alter
the issues of patentability).
That said, Appellants contention that the Examiner's reliance on res
judicata, without more, to rebut Appellants arguments made during
prosecution amounts to an acceptance of Appellants' arguments is
unavailing. Such matters relate to the conduct of prosecution rather than the
decision itself, and are reviewable by petition to the Director of the US
Patent and Trademark Office or as delegated by the Director. See 37 C.F.R.
§ 1.181 et seq.; see also MPEP § 1201 ("The Board will not ordinarily hear a
question that should be decided by the Director on petition ... "). The
Examiner has set forth the grounds of rejection in the Final Office Action
(Final Act. 2-17), which we consider in light of Appellants' contentions and
arguments. Ex parte Frye, 94 USPQ2d 1072, 107 5 (BP AI 2010)
(precedential).
Undesignated New Grounds of Rejection
Appellants contend that the omission of Lannert from the statements
of the grounds of rejection for claim 23-25 and 27 in the Final Office Action
(see Final Act. 7-9) amounts to the "Examiner inherently admit[ ting] that
the combination of Baff es and Leban [ ( claim 23), AAP A ( claims 24--26) or
Potts ( claim 2 7)] is deficient in all [the] claimed teachings" of the respective
dependent claims. App. Br. 12 (discussing claim 23) (emphasis omitted);
see also nn. 3-5 supra.
In the Examiner's Answer, the Examiner clarifies that the rejections
of the dependent claims should be read as incorporating the Examiner's
findings with regard to the applicability of Lannert to the limitations of
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claim 1 incorporated into the respective dependent claims. Ans. 6-7. We
agree with the Examiner's clarification. To the extent Appellants were
misled or confused by the omission of explicit mention of Lannert from the
statement of rejection of claims 23-25 and 27 (see Reply Br. 15) the
Examiner's clarification in the Answer cured any such possible confusion
and afforded the Appellants a full and fair opportunity to respond
substantively in the Reply Brief.
Appellants' contend that the Examiner's clarification amounts to
improper undesignated new grounds of rejection. Reply Br. 15 (citing 37
C.F.R. § 4I.39(a)(2)). We note that Appellants did not file a petition under
37 C.F.R. § 1.181 to the Director requesting that the Examiner's clarification
in the Answer be designated as new ground of rejection. See 37 C.F.R.
§ 4I.40(a); see also Frye, 94 UPSQ2d at 1077-78; In re Berger, 279 F.3d
975, 984--85 (Fed. Cir. 2002) (petitionable issues are not subject to review
by the Board); MPEP § 1207.03. Therefore, the question of whether the
Examiner's clarification amounts to an undesignated new ground of
rejection is not before us on appeal.
The Combination of Baffes and Lannert
Appellants contend the combination of Baff es and Lannert does not
teach or suggest the context limitation. App. Br. 4; Reply Br. 2-3. We have
previously determined that Baff es, with or without Lannert, discloses
"identifying a context for the pre-configured event" and that the combination
of Baff es and Lannert teaches "generating a search string" for the identified
context. See '914 Dec'n 4--8; see also '819 Dec'n 11-12, accord Ans. 3.
We do not re-visit these findings and conclusions here. The crux of the issue
to be resolved, then, is whether the combination of Baff es and Lannert
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Application 11/314,984
teaches or suggests a context that "indicat[ es] the application, . . . an active
task for the application, and ... a selected user interface control for the task
in the application" and that the generation of the search string is based on all
three of "the application, the task, and ... the user interface control."
The Examiner relies on Lannert, when combined with Baff es, to teach
the application, task, and user interface elements of the context limitation.
Final Act. 4 (citing Lannert, col. 29, 11. 14--31, col. 43, 11. 11-21, Fig. 11), 5
(citing Lannert, col. 32, 1. 61---col. 33, 1. 4, col. 41, 11. 18-37, col. 101, 11. 15-
17),
The Examiner explains as follows:
Lannert explicitly teaches that the context indicating the
application, the task and the user interface control as wherein
Intelligent Coaching Agent Tool identifies the specific interface
control's ID, i.e. associated user interface control for the
application. In addition, the learning environment in Lannert
allows the user to accomplish real world tasks, i.e. identifying an
identity for a task within an application. [The] Examiner reads
identifying an application identity to be inherent within the
process of receiving an identified application's task and
receiving an identified application's interface control (See
Lannert Col. 43, line 11-21, Col. 29, [l]ine 14--31 & Fig. 11).
For example, a GBS training application in which new finance
professionals are taught the fundamentals of finance
management. A student has a toolbar to navigate and also to
access some of the application-level features of the application
"application". The toolbar is the L-shaped object across the top
and left of the interface. The top section of the toolbar allows the
user to navigate to tasks within the current Activity "active task
for the application". The left section of the toolbar allows the
student to access other features of the application, including
feedback. The student can have his deliverables analyzed and
receive feedback by clicking on a team button "selected user
interface control" (see Lannert Col. 35, lines 41-50).
Ans. 3--4.
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Application 11/314,984
Appellants contend, inter alia, as follows:
[W]hile the [Goal-Based Scenario (GBS)] toolbar does permit
the user to navigate tasks of an activity, and also to access other
application features, the GBS toolbar does not show any
functionality pertaining to the identification of a context that
indicates an application, an active task of the application and a
selected [User Interface (UI)] contro 1 for the task itself-especially
in so far as the context must be identified in accordance with
Appellants' claim language in connection with a "pre-configured
event". Locating piecemeal in different references the receipt of
a pre-configured event in one reference and an indication of a
context that indicates an application, task for the application and
selected UI control for the task, is not sufficient to account for
the claimed, "identifying a context for the pre-configured event".
Indeed, Examiner has yet to account for the identification of
anything in a pre-configured event. Rather, with respect to the
rejections reliant upon Baffes and Lennart [sic], at best
Appellants believe Examiner only has located disjoint teachings
of a string and an application task for an application with a UI
control.
Reply Br. 9. We agree with Appellants.
Lannert discloses "[an] application, a task indicating an active task for
the application, and also a user interface control indicating a selected user
interface control for the task in the application," as recited in claim 1 (see
Lannert Fig. 1 ), and also discloses the use of search strings to retrieve
content (id. col. 35, 11. 40-50; see also '914 Dec'n 7 ("As used in
Appellants' Specification, a 'search string' is no more than the parameters
needed to search for and retrieve e-leaming content from a learning
management system.")). However, we find no teaching in the cited passages
of Lannert that the "the application, the task, and ... the user interface
control" are actually identified to form a basis for creating a search string
that is used to retrieve content.
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Any judgment on obviousness is in a sense necessarily a
reconstruction based upon hindsight reasoning, but so long as it
takes into account only knowledge which was within the level of
ordinary skill at the time the claimed invention was made and
does not include knowledge gleaned only from applicant's
disclosure, such a reconstruction is proper.
In re McLaughlin, 443 F.2d 1392, 1313-14 (CCPA 1971). On this record,
we conclude the Examiner has engaged in the sort of piecemeal
reconstruction, using Appellants' claim and disclosure as a road map, that
amounts to impermissible hindsight.
For emphasis only, we note that the Examiner has also made an
inherency finding (Ans. 4 ("[The] Examiner reads identifying an application
identity to be inherent within the process of receiving an identified
application's task.")) without explaining why the allegedly inherent fact
necessarily follows from Lannert's disclosure. "Inherency ... may not be
established by probabilities or possibilities." In re Robertson, 169 F.3d 743,
745 (Fed. Cir. 1999). To support a finding of inherency, the Examiner must
establish that the element not expressly disclosed is necessarily present in
the reference. See Rosco, Inc. v. Mirror Lite Co., 304 F.3d 1373, 1380 (Fed.
Cir. 2002). The Examiner has not made such determinations.
On this record, we are constrained to conclude the Examiner erred in
rejecting claim 1 over Baffes and Lannert. Accordingly we do not sustain
the rejection over Baff es and Lannert of claim 1 or claims 2 and 23-27,
which depend from claim 1. See In re Fine, 837 F.2d 1071, 1076 (Fed. Cir.
1988) ("Dependent claims are nonobvious under section 103 if the
independent claims from which they depend are nonobvious.").
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The Combination of Baffes and Potts
Appellants contend the combination of Barres and Potts does not
teach or suggest the context limitation. App. Br. 11; Reply Br. 11-12.
The Examiner relies on Potts when combined with Baffes, 10 to teach
the context limitation. Final Act. 10-12 (citing Baffes col. 24, 11. 22--44, col.
25, 11. 5-17, Figs. 1, 37 A; Potts col. 2, 11. 1--4, col. 3, 11. 44--49, col. 4, 11. 3-
12, col. 18, 11. 50-53, col. 21, 11. 1-9, 23-34); see also Ans. 5---6 (making
additional findings and additionally citing Potts col. 11, 11. 7-15, col. 16, 11.
7-35).
Appellants argue in the Appeal Brief as follows:
Potts relates to computer-based training system (CBT) having
one or more Application Translation Units (ATUs), a message
engine, and a script engine. [T]he cited portions of Potts show
"applications links" that are "established with individual
controls" that include menu items, button controls, dialog boxes,
etc. Help information also is provided that provides help and
tutorial information. Finally, an information continuum window
object or interface is provided when the screen cursor is in
proximity to a screen object of interest in a target application.
This action may be triggered automatically, such as when the
cursor approaches a minimum distance from the screen object of
interest, or in response to a user event.
Plainly, nothing contained in the cited portion of Potts
relates to the claimed, "context indicating the application, a task
indicating an active task for the application, and also a user
interface control indicating a selected user interface control for
the task in the application" because the "application links" of
Potts are not taught to indicate each of the application, a task
10 Appellants incorrectly assert that the Examiner relies on Potts alone to
teach the context limitation. App. Br. 10; Reply Br. 12; but see Final Act.
10 ("Baff es teaches ... identifying a context for the pre-configured
event.").
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indicating an active task for the application and a user interface
control that indicates a selected user interface control for the task.
So much is required by Appellants' claim language, though.
Accordingly, it is not correct to assert that the combination of
Baff es and Potts accounts for each claimed aspect of claim 1.
App. Br. 10-11.
We agree with the Examiner that Appellants' argument "amount[ s] to
a general allegation that the claims define a patentable invention without
specifically pointing out how the language of the claims patentably
distinguishes them from the references." Ans. 5 (citing 37 C.F.R. § 1.ll(b)).
Appellants' arguments amount to little more than quoting the claim and
describing the prior art and stating, without more, that they are not the same.
See 37 C.F.R. § 4I.37(c)(iv) ("A statement which merely points out what a
claim recites will not be considered an argument for separate patentability of
the claim."); see also In re Lovin, 652 F.3d 1349, 1357 (Fed. Cir. 2011)
("[W]e hold that the Board reasonably interpreted [a previous version ofJ
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."); cf In re Baxter
Travenol Labs., 952 F.2d 388, 391 (Fed. Cir. 1991) ("It is not the function of
this court to examine the claims in greater detail than argued by an appellant,
looking for [patentable] distinctions over the prior art.").
Responding to additional findings by the Examiner in the Answer,
Appellants present further arguments in the Reply Brief, but those
arguments, inter alia, quote and purport to refute the Examiner's reliance on
column 5, lines 3-12 of Potts, a passage not relied on by the Examiner.
Further, Appellants' arguments fail to address the Examiner's reliance on
various other passages of Potts and Baff es.
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For the foregoing reasons, Appellants' arguments are insufficient to
demonstrate Examiner error. Accordingly, we sustain the rejections over
Baff es and Potts of claim 1 and claims 2 and 23-27, which depend from
claim 1 and were not separately argued with particularity.
DECISION
The decision of the Examiner to reject claims 1, 2, and 23-27 is
affirmed.
No time period for taking any subsequent action in connection with
this appeal maybe extended under 37 C.F.R. § 1.136(a)(l). See 37 C.F.R.
§§ 41.50(±), 4I.52(b) (2013).
AFFIRMED
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