Ex Parte Beams et al

Board of Patent Appeals and Interferences

Jul 27, 2012

09934924 (B.P.A.I. Jul. 27, 2012)

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.
09/934,924 08/22/2001 Brian R. Beams 05222.00184 9686
29638 7590 07/30/2012
BANNER & WITCOFF, LTD.
ATTORNEYS FOR CLIENT NO. 005222
10 S. WACKER DRIVE, 30TH FLOOR
CHICAGO, IL 60606
EXAMINER
SALAD, ABDULLAHI ELMI
ART UNIT PAPER NUMBER
2456
MAIL DATE DELIVERY MODE
07/30/2012 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
________________

Ex parte BRIAN R. BEAMS and SCOTT B. HARRIS
________________

Appeal 2010-003702
Application 09/934,924
Technology Center 2400
________________

Before MAHSHID D. SAADAT, DAVID M. KOHUT, and
LARRY J. HUME, Administrative Patent Judges.

HUME, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2010-003702
Application 09/934,924

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This is a decision on appeal under 35 U.S.C. § 134(a) of the final
rejection of claims 20-38. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
STATEMENT OF THE CASE 1
The Invention
The present invention relates to education systems and
more particularly to a rule based tutorial system that utilizes a
virtual consultant.
Spec. p. 1, ll. 5-6, “Field of the Invention”.
Exemplary Claim
Exemplary independent claim 20 reads as follows (emphasis added to
disputed limitation):
20. A method for providing one or more virtual instructors,
comprising the steps of:
(a) connecting a server and one or more users and a first
virtual instructor;
(b) selecting a destination within the server to interact with
the one or more users;
(c) coupling the one or more users through the server based
on the selected destination;
(d) establishing interaction parameters for the one or more
users based on the selected destination; and
(e) dynamically adding a second virtual instructor with the
first virtual instructor and the one or more users.

1 Throughout this Decision, we refer to the Appeal Brief (App. Br.) filed
May 18, 2009; the Reply Brief (Reply Br.) filed Jan. 5, 2010; the originally-
filed Specification (Spec.); the Final Office Action (FOA) mailed Nov. 26,
2008; and the Examiner’s Answer (Ans.) mailed Nov. 10, 2009.
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Prior Art
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Daniels US 5,310,349 May 10, 1994
Cook US 6,427,063 B1 Jul. 30, 2002 (35 U.S.C. §371 date: Nov.
22, 1999 based on PCT/US97/08685 filed
May 22, 1997)
Rejection on Appeal
The Examiner has rejected claims 20-38 under 35 U.S.C § 103(a) as
being unpatentable over Daniels in view of Cook. (Ans. 3-7).
GROUPING OF CLAIMS
Based upon Appellants’ arguments directed to the above-highlighted
limitation that is common to all claims on appeal, we select representative
method claim 20 to decide this appeal. (See App. Br. 22-24).
We have only considered those arguments that Appellants actually
raised in the Briefs. Arguments Appellants could have made but chose not
to make in the Briefs have not been considered and are deemed to be
waived. See 37 C.F.R. § 41.37(c)(1)(vii)(2009).
PRINCIPLES OF LAW
When it is necessary to select elements of various teachings in order
to form the claimed invention, we ascertain whether there is any suggestion
or motivation in the prior art to make the selection made by applicant.
Interconnect Planning Corp. v. Feil, 774 F.2d 1132, 1143 (Fed. Cir. 1985).
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In KSR, the Court held the following:
Often, it will be necessary for a court to look to interrelated
teachings of multiple patents; the effects of demands known
to the design community or present in the marketplace; and
the background knowledge possessed by a person having
ordinary skill in the art, all in order to determine whether
there was an apparent reason to combine the known
elements in the fashion claimed by the patent at issue. To
facilitate review, this analysis should be made explicit. See
In re Kahn, 441 F. 3d 977, 988 (C.A. Fed. 2006)
(“[R]ejections on obviousness grounds cannot be sustained
by mere conclusory statements; instead, there must be some
articulated reasoning with some rational underpinning to
support the legal conclusion of obviousness”). As our
precedents make clear, however, the analysis need not seek
out precise teachings directed to the specific subject matter
of the challenged claim, for a court can take account of the
inferences and creative steps that a person of ordinary skill
in the art would employ.
KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007).
APPELLANTS’ CONTENTIONS
1. Appellants contend that the Examiner has erred by asserting
that the combination of Daniels and Cook suggests the feature of
“dynamically adding a second virtual instructor with the first virtual
instructor and the one or more users.” (App. Br. 22; Reply Br. 4).
2. Appellants go on to contend that “[r]egarding independent
claim 20, the Office Action admits [. . .] Daniels is silent regarding:
dynamically adding second virtual instructor with the first virtual instructor
and the one or more users.” (App. Br. 22-23).
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3. Appellants also contend that “[w]hile Cook may discuss a
virtual tutor of student 101 that is supported by agent software 108, Cook
fails to discuss any thing [sic] about a second virtual tutor and consequently
fails to suggest the feature of ‘dynamically adding a second virtual instructor
with the first virtual instructor and the one or more users.’ For example,
agent software 108, in reference to fig. 1, interacts with student data object
109 (corresponding to student 101); however, Cook fails to even suggest
interaction of agent 108 with a second agent.” (App. Br. 23).
4. Appellants further contend that “Cook merely discusses agent
software 108 that becomes a virtual tutor and that directly controls materials
engine 102 through arrow 111 in the presentation of materials data to student
101. (Column 11, line 49-column 12, line 45.) Consequently, agent
software 108 and materials engine 102 function as a single entity. Cook
fails to suggest anything about a second virtual tutor.” (Ans. 24).
5. Finally, Appellants contend in response to the Examiner’s
“Response to Arguments” that “there is a lack of motivation to combine
Cook in order to ‘provide individualized guidance’ because Daniels already
provides ‘a customized sequence of appropriate events for each student.’
Thus, the combination of Daniels and Cook is improper.” (Reply Br. 6).
ISSUES
Issue 1: Did the Examiner err in finding that Daniels in combination
with Cook teaches or suggests all the claimed limitations of claim 20,
specifically the limitation that recites “dynamically adding a second virtual
instructor with the first virtual instructor and the one or more users?”
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Issue 2: Did the Examiner err in asserting that a person of ordinary
skill in the art would be motivated to combine Daniels with Cook in order to
“provide individualized guidance to the students of the system of Daniels?”
ANALYSIS
Issue 1: We have reviewed the Examiner’s rejections in light of
Appellants’ arguments that the Examiner has erred. We disagree with
Appellants’ conclusions with respect to claims 20-38, and we adopt as our
own (1) the findings and reasons set forth by the Examiner in the action
from which this appeal is taken and (2) the reasons and rebuttals set forth by
the Examiner in the Examiner’s Answer (Ans. 3, 4, 7-9) in response to
Appellants’ Arguments (App. Br. 22-24; Reply Br. 4-6).
We concur with the conclusions reached by the Examiner, particularly
that Daniels in combination with Cook teaches “[a]method for providing one
or more virtual instructors, comprising the steps of [. . .] dynamically adding
a second virtual instructor with the first virtual instructor and the one or
more users.” (See Ans. 4, citing Cook at least at col. 10, ll. 25-67).
We further find that Appellants’ arguments are not commensurate
with the scope of the claims as presented on appeal. For example,
Appellants argue that “Cook fails to even suggest interaction of agent 108
with a second agent.” (App. Br. 23, emphasis ours). In footnote 1 to this
assertion, Appellants go on to quote Cook as follows:
For example, Cook recites "In view of these objects and
advantages, FIG. 1 illustrates the principal actors and the
principal functional components in an ABI System. These
include, generally, materials engine 102, agent software 108,
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and student data object 109, all of which interact with student
101 and with teachers and administrators 106 via a computer
network described below in conjunction with FIG. 2 to create a
virtual tutor of student 101. Student 101 is typically one of
many students enrolled in a school or similar institution.
Central to the ABI System is the virtual tutor individualized to
each student, which formed by the functioning of agent
software 108 with student data object 109, which stores
characteristics of student 101 and assignments and standards set
by teachers and administrators 106. Other actors not shown in
FIG. 1 can be relevant in particular applications, for example,
parents in the case of primary and secondary education."
(Column 10, lines 25-40.)
See App. Br., fn 1, spanning pp. 23-24 (emphasis ours).
In support of the Examiner’s claim interpretation under the broadest
reasonable interpretation standard, we find that the portion of Cook relied
upon by the Examiner (see Ans. 4) teaches one or more users interacting
with virtual instructors. Although not dispositive to our decision, it appears
that Daniels may also be interpreted in a similar manner, i.e., multiple users
and multiple instructors using the system.
However, the scope of the claims on appeal do not require
interaction between the first and second virtual instructors as argued by
Appellants, nor does the claim scope require that both the first and second
virtual instructors be dedicated to a particular student, as Appellants urge
in their arguments. We find nothing in either Daniels or Cook that precludes
simultaneous operation of a number of virtual instructors with the claimed
“one or more users,” whether dedicated to a particular student or not.
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Thus, we agree with the Examiner, and find that the combination of
the cited art discussed above teaches or suggests the limitation at issue in
claim 20.
In addition, we note that Appellants have presented assertions
focusing on the alleged shortcomings of the teachings of Daniels with
respect to the rejection of various dependent claims, e.g., claim 21 (App. Br.
29-32); claim 23 (App. Br. 32-33); claim 24 (App. Br. 33); claim 25 (App.
Br. 34); claim 27 (App. Br. 34-35); claim 28 (App. Br. 35); claim 31 (App.
Br. 35-38); claim 32 (App. Br. 38); claim 33 (App. Br. 39); claim 34 (App.
Br. 39-40); claim 35 (App. Br. 40); claim 37 (App. Br. 40-41); and claim 38
(App. Br. 41-42).
To the extent that these above-cited conclusory statements are to be
considered arguments, we find them to be unpersuasive since Appellants
have solely directed their attention to Daniels, without any substantive
mention of Cook; the reference relied upon by the Examiner to teach the
dependent claim limitations at issue in these claims.
Thus, since the Examiner has identified the relevant portions of Cook
for disclosing the features of the above-identified dependent claims, which
remain unrebutted by Appellants, we agree with the Examiner, and find that
the combination of the cited art discussed above teaches or suggests the
limitations of these claims.
Issue 2: We have reviewed the Examiner’s stated basis for
motivation to modify the teachings of Daniels with the teachings of Cook.
We disagree with Appellants’ conclusions with respect to the combinability
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of the references as suggested by the Examiner, and we adopt as our own
(1) the findings and reasons set forth by the Examiner in the action from
which this appeal is taken and (2) the reasons and rebuttals set forth by the
Examiner in the Examiner’s Answer (Ans. 4 and 8) in response to
Appellants’ Arguments (App. Br. 22-24).
The Examiner has set forth a detailed statement of motivation to
modify the teachings of Daniels with Cook (Ans. 4, 8; FOA 4) which we
find meets the requirements of KSR cited above, i.e., the Examiner has
provided an “articulated reasoning with some rational underpinning to
support the legal conclusion of obviousness.” It was not until the Reply
Brief that Appellants first presented the new argument that modifying
Daniels by the teachings of Cook would not be obvious.
This new argument is entitled to no consideration because it is not
responsive to a new point in the Answer in which the grounds of rejection of
claim 14 are included from the final Office action. See Ex parte Borden,
93 USPQ2d 1473, 1473-74 (BPAI 2010) (“informative”2) (absent a showing
of good cause, the Board is not required to address an argument newly
presented in the Reply Brief that could have been presented in the principal
Brief on Appeal).
Accordingly, we sustain the Examiner’s rejection of claims 20-38.

2 Designated as “Informative Opinion” at
http://www.uspto.gov/ip/boards/bpai/decisions/inform/index.jsp.
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DECISION
The decision of the Examiner to reject claims 20-38 under 35 U.S.C.
§ 103(a) as being obvious over Daniels and Cook is affirmed.
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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