Ex Parte Collier

Patent Trial and Appeal Board

Jul 22, 2016

13477269 (P.T.A.B. Jul. 22, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/477,269 05/22/2012
37945 7590 07/26/2016
DUKEW, YEE
YEE AND AS SOCIA TES, P.C.
P.O. BOX 802333
DALLAS, TX 75380
FIRST NAMED INVENTOR
James Patrick Collier II
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.
END920060096US2 1087
EXAMINER
CARLOS, ALVIN LEABRES
ART UNIT PAPER NUMBER
3715
NOTIFICATION DATE DELIVERY MODE
07/26/2016 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):
ptonotifs@yeeiplaw.com
mgamez@yeeiplaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JAMES PA TRICK COLLIER II
Appeal2014-006263
Application 13/477,269
Technology Center 3700
Before WILLIAM A. CAPP, GEORGE R. HOSKINS, and
BRANDON J. WARNER, Administrative Patent Judges.
HOSKINS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
James Patrick Collier II ("Appellant") 1 appeals under 35 U.S.C. § 134
from the Examiner's decision rejecting, under 35 U.S.C. § 103(a), claims 1-
10 and 13-19 as unpatentable over Draper (US 2004/0133437 Al, pub.
July 8, 2004) and Murray (US 2002/0106615 Al, pub. Aug. 8, 2002), and
claims 11 and 12 as unpatentable over Draper, Murray, and Subramanyan
(US 2002/0178181 Al, pub. Nov. 28, 2002). The Board has jurisdiction
over the appeal under 35 U.S.C. § 6(b).
We REVERSE.
1 The Appeal Brief identifies International Business Machines Corporation
as the real party in interest. Appeal Br. 2.
Appeal2014-006263
Application 13/477,269
CLAIMED SUBJECT MATTER
Claims 1, 13, and 16 are independent. Claim 1 illustrates the subject
matter on appeal, and it recites:
1. A computer implemented method for developing training
for a client organization, the computer implemented method
being executed by a computer and comprising steps of:
the computer identifying training delivery requirements
for the client organization;
the computer gathering assessment information;
the computer developing a training curriculum based on
the training delivery requirements and the assessment
information;
the computer estimating an amount of time required to
complete the training based on the training curriculum to form a
delivery estimate;
the computer translating the delivery estimate into an
estimate of resources required for development of training
materials for the training; and
the computer verifying that the client organization
receives the training materials, for delivery to an end user, that
are necessary to implement the training by the client
organization.
Appeal Br. 23 (Claims App.).
ANALYSIS
A. Obviousness based on Draper and Murra~
Claims 1-10and13-19
In rejecting claim 1 as obvious over Draper and Murray, the Examiner
finds Draper discloses, inter alia, the claimed "translating [a] delivery
estimate into an estimate of resources required for development of training
materials." Final Act. 2-3 (emphasis added). In that regard, the Examiner
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Application 13/477,269
finds Draper discloses "scheduling tools are used to manage the materials
needed to teach the course." Id. at 3 (citing Draper i-fi-1 46-48).
Appellant argues the Examiner errs in finding Draper discloses
determining an estimate of resources required for "development" of training
materials, as claimed. Appeal Br. 9-11. In particular, Appellant asserts
Draper's paragraphs 46-48 "describe three sub-sub-processes: (i) a delivery
support plan process, (ii) a forecast demand process, and (iii) a schedule
process." Id. at 11. Appellant contends the delivery support plan process of
paragraph 46 is limited to delivery of ''previously developed learning
content," as opposed to the claimed development of training materials. Id.
at 9, 11. Appellant contends the forecast demand process of paragraph 4 7
similarly "is used to align the 'delivery' of course content with business
objectives ... , as part of the process to prioritize the 'delivery' of an
organization's learning," rather than the claimed development of training
materials. Id. at 9-10, 11. Appellant contends the schedule process of
paragraph 48 does not concern course development, as it "describes a
mechanism to manage the delivery of already developed training materials."
Id. at 10, 11.
The Examiner responds that "this developing step [of claim 1] does
not necessarily require developing yet-to-be-developed training materials."
Final Act. 11. The Examiner adds "the feature of 'developing a training
curriculum ... ' would reasonably be interpreted to Draper's managing
delivery of already developed training materials." Id.
Appellant's argument is persuasive. We do not agree with the
Examiner's construction of the claim term "development" to refer to
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Application 13/477,269
managing delivery of already-developed training materials, without regard to
actual development of training materials.
[U]nder the broadest reasonable interpretation, the Board's
construction "cannot be divorced from the specification and the
record evidence," In re NTP, Inc., 654 F.3d 1279, 1288 (Fed. Cir.
2011 ), and "must be consistent with the one that those skilled in
the art would reach," In re Cortright, 165 F.3d 1353, 1358 (Fed.
Cir. 1999). A construction that is "unreasonably broad" and
which does not "reasonably reflect the plain language and
disclosure" will not pass muster.
Microsoft Corp. v. Proxyconn, Inc., 789 F.3d 1292, 1298 (Fed. Cir. 2015)
(quoting In re Suitco Surface, Inc., 603 F.3d 1255, 1260 (Fed. Cir. 2010)).
The Examiner's construction of the term "development" is not
consistent with Appellant's Specification. The Specification describes
"development time" as "the estimated number of hours needed to develop a
single hour of delivered training." Spec. i-f 80 (describing Fig. 1 lE). The
Specification further indicates such development times may range, for
example, from 40 hours (for "low" instructor-led training) to 300 hours (for
"high" web-based training). Id. Fig. 1 lE. These and several other portions
of the Specification indicate training material "development" refers to the
creation or gathering of the training materials, prior to the delivery (i.e., the
distribution or presentation) of the training materials to trainees. See Spec.
i-fi-140, 43--44, 46, 55, 57, 70, 77-78 (Fig. 1 lC). The Examiner has not
pointed to any disclosure in the Specification that would support a claim
construction of training material "development" that would be limited to the
delivery of the training materials, excluding the actual development of the
training materials before delivery to the trainees. For these reasons, we
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Application 13/477,269
conclude "development" of training materials includes, at least, the creation
or gathering of the training materials.
Based on a proper construction of the required "development" of
training materials, as claimed, a preponderance of the evidence does not
indicate Draper discloses estimating resources required for such
development. The Examiner pertinently cites paragraphs 46-48 of the
Draper disclosure in connection with the claimed estimation. Final Act. 3.
That disclosure concerns forecasting the demand for, scheduling, and
delivering training materials to trainees. Draper i-fi-1 46-48. It does not
describe estimating resources required for creating or gathering the training
materials.
Appellant also argues the Examiner errs in finding Murray discloses
the claimed estimating of resources required for development of training
materials. Reply Br. 2. According to Appellant, Murray instead describes
"a time-estimate as to how long it will take for a student to actually study
pre-existing/already-developed materials." Id. It appears the Examiner
relies on Murray in connection with the "estimating" step that precedes the
"translating" step of claim 1. See Final Act. 3 (citing Murray, claim 3 and
i-fi-f 12 and 19-20, as disclosing "estimating an amount of time required to
complete the training based on the training curriculum to form a delivery
estimate"); Ans. 3. Nonetheless, to the extent Appellant's reading of the
Examiner's rejection is correct, we agree with Appellant that Murray does
not disclose estimating resources required for creating or gathering the
training materials. See Murray, claim 3, i-fi-f 12 and 19-20.
For the foregoing reasons, we do not sustain the rejection of
independent claim 1, and of claims 2-10 depending therefrom, as
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Application 13/477,269
unpatentable over Draper and Murray. Independent claims 13 and 16,
similarly to claim 1, recite a database application (claim 13) or computer
usable program code (claim 16) that translates "the delivery estimate into an
estimate of resources required for development of training materials."
Appeal Br. 25, 26-27 (Claims App.). Thus, we likewise do not sustain the
rejection of claims 13-19 as unpatentable over Draper and Murray.
B. Obviousness based on Draper, Murray, and Subramanyan-
Claims 11 and 12
The Examiner's reliance on Subramanyan as disclosing the subject
matter added by dependent claims 11 and 12 with respect to their common
parent independent claim 1 does not cure the deficiency of Draper and
Murray as to claim 1. See Final Act. 9-11. Thus, for the reasons provided
above, we do not sustain the rejection.
DECISION
The Examiner's decision to reject claims 1-19 is REVERSED.2
REVERSED
2 Should there be further prosecution of this application, the Examiner may
wish to consider reviewing all of the claims for compliance under 35 U.S.C.
§ 101 in light of the most recent Patent Office guidance on § 101 and Alice
Corp. v. CLS Banklnt'l, 134 S. Ct. 2347 (2014).
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