Ex Parte DiMarco

Board of Patent Appeals and Interferences

Apr 17, 2012

10379188 (B.P.A.I. Apr. 17, 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.
10/379,188 03/06/2003 Anthony M. DiMarco 2522-003 4815
7590 04/17/2012
ANTHONY M. DIMARCO
16 NOB HILL ROAD
POUGHKEEPSIE,, NY 12603
EXAMINER
MCCORMICK, GABRIELLE A
ART UNIT PAPER NUMBER
3629
MAIL DATE DELIVERY MODE
04/17/2012 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 1
___________ 2
3
BEFORE THE BOARD OF PATENT APPEALS 4
AND INTERFERENCES 5
___________ 6
7
Ex parte ANTHONY M. DIMARCO 8
___________ 9
10
Appeal 2010-009832 11
Application 10/379,188 12
Technology Center 3600 13
___________ 14
15
16
Before MURRIEL E. CRAWFORD, ANTON W. FETTING, and 17
JOSEPH A. FISCHETTI, Administrative Patent Judges. 18
19
FETTING, Administrative Patent Judge. 20
21
22
DECISION ON APPEAL 23
24
25
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STATEMENT OF THE CASE1 1

1 Our decision will make reference to the Appellant’s Appeal Brief (“App.
Br.,” filed September 30, 2009) and the Examiner’s Answer (“Ans.,” mailed
June 24, 2010).
Anthony M. DiMarco (Appellant) seeks review under 35 U.S.C. § 134 2
(2002) of a final rejection of claims 49-88, the only claims pending in the 3
application on appeal. We have jurisdiction over the appeal pursuant to 4
35 U.S.C. § 6(b) (2002). 5
The Appellant invented a talent and career management tool (Spec. 3). 6
An understanding of the invention can be derived from a reading of 7
exemplary claim 69, which is reproduced below (bracketed matter and some 8
paragraphing added). 9
69. The method of developing a career view, career 10
autobiography and visual resume of an individual and that will 11
also permit talent search and talent analysis to form a talent and 12
career management system, the method comprising the steps of: 13
[1] capturing multi-dimensional and structured text-based 14
career information data 15
on an individual 16
that includes data input fields 17
for general information, education 18
information and comprehensive job 19
information 20
to be completed by the individual; 21
[2] storing the individual data captured in a relational data base 22
in the memory of a server; 23
and, 24
25
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[3] generating multiple discrete pictorial representations 1
of the text-based career information data 2
stored in the relational data base 3
concerning the individual 4
from the data base stored in the relational database. 5
6
The Examiner relies upon the following prior art: 7
Kurzius US 6,385,620 B1 May 7, 2002
Barton US 2002/0046074 A1 Apr. 18, 2002
Knowlton US 2003/0011630 A1 Jan. 16, 2003
Mike Heck, et al., New tools for an old need, 16 Infoworld, 68 (Oct. 3, 8
1994). 9
10
Joel Shore, Office 97 fulfills the promise, Computer Reseller News, 65 11
(Sep. 30, 1996). 12
13
Avi Rappoport, Search engines: The hunt is on, 11 Network Computing, 14
48 (Oct. 16, 2000). 15
16
Claims 49-68 stand rejected under 35 U.S.C. § 112, second paragraph, 17
as failing to particularly point out and distinctly claim the invention. 18
Claims 49-88 stand rejected under 35 U.S.C. § 112, first paragraph, as 19
not enabling a person of ordinary skill in the art to make and use the claimed 20
subject matter from the original disclosure. 21
Claims 49-52, 55-58, 62-66, 68-72, 75-78, 82-86, and 88 stand 22
rejected under 35 U.S.C. § 103(a) as unpatentable over Kurzius and Heck.2 23

2 The statement of statutory rejection omits claims 56, 68, 76, and 88 (Ans.
9), but the analysis explicitly recites claims 56, 68, and 76, and has a clear
typographic error that is meant to include claim 88, that claim being parallel
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Claims 53, 54, 73, and 74 stand rejected under 35 U.S.C. § 103(a) as 1
unpatentable over Kurzius, Heck, and Rappoport. 2
Claims 61 and 81 stand rejected under 35 U.S.C. § 103(a) as 3
unpatentable over Kurzius, Heck, and Shore. 4
Claims 59, 67, 79, and 87 stand rejected under 35 U.S.C. § 103(a) as 5
unpatentable over Kurzius, Heck, and Barton. 6
Claims 60 and 80 stand rejected under 35 U.S.C. § 103(a) as 7
unpatentable over Kurzius, Heck, and Knowlton. 8
DISPOSITION OF THE APPEAL 9
The Examiner entered a new ground of rejection in the Examiner’s 10
Answer against claims 49-68 under 35 U.S.C. § 112, second paragraph as 11
being indefinite. Ans. 5. The Examiner properly gave notice of the new 12
ground of rejection (Ans. 20). As the Answer indicated (Ans. 21), the 13
Appellant was required to respond to the new grounds within two months in 14
either of two ways: 1) reopen prosecution (see 37 C.F.R. § 15
41.39(a)(2)(b)(1)); or 2) maintain the appeal by filing a reply brief as set 16
forth in 37 C.F.R. § 41.41 (see 37 C.F.R. § 41.39(a)(2)(b)(2)), “to avoid sua 17
sponte dismissal of the appeal as to the claims subject to the new ground 18
of rejection.” Ans. 21. According to the record before us, neither option 19
appears to have been exercised. 20

to claim 68 in the same manner that claim 76 parallels claim 56. Thus this
rejection is taken to include these four claims.
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Accordingly, the appeal as to claims 49-68, subject to the new ground 1
of rejection under § 112, second paragraph as being indefinite stands 2
dismissed. 3
Upon return of the application to the Examiner, the Examiner should 4
(1) cancel claims 49-68 subject to the new ground of rejection and (2) notify 5
the Appellants that the appeal as to claims 49-68, subject to the new ground 6
of rejection under § 112, second paragraph as being indefinite, is dismissed 7
and claims 49-68 are cancelled. See Manual of Patent Examining Procedure 8
(MPEP) § 1207.03 (8th ed., Rev. 8, Jul. 2010). 9
Given that the appeal as to claims 49-68 stands dismissed, the 10
rejections before us for review are reduced to as follows: 11
Claims 69-88 stand rejected under 35 U.S.C. § 112, first paragraph, as 12
not enabling a person of ordinary skill in the art to make and use the claimed 13
subject matter from the original disclosure. 14
Claims 69-72, 75-78, 82-86, and 88 stand rejected under 35 U.S.C. § 15
103(a) as unpatentable over Kurzius and Heck.3 16
Claims 73 and 74 stand rejected under 35 U.S.C. § 103(a) as 17
unpatentable over Kurzius, Heck, and Rappoport. 18
Claim 81 stands rejected under 35 U.S.C. § 103(a) as unpatentable 19
over Kurzius, Heck, and Shore. 20

3 The statement of statutory rejection omits claims 56, 68, 76, and 88 (Ans.
9), but the analysis explicitly recites claims 56, 68, and 76, and has a clear
typographic error that is meant to include claim 88, that claim being parallel
to claim 68 in the same manner that claim 76 parallels claim 56. Thus this
rejection is taken to include these four claims.
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Claims 79 and 87 stand rejected under 35 U.S.C. § 103(a) as 1
unpatentable over Kurzius, Heck, and Barton. 2
Claim 80 stands rejected under 35 U.S.C. § 103(a) as unpatentable 3
over Kurzius, Heck, and Knowlton. 4
ISSUES 5
The issue of enablement turns on whether the Examiner provided 6
analysis as to whether undue experimentation is required. The issues of 7
obviousness turn on whether the claims recite the features argued by 8
Appellant. 9
FACTS PERTINENT TO THE ISSUES 10
The following enumerated Findings of Fact (FF) are believed to be 11
supported by a preponderance of the evidence. 12
Facts Related to the Prior Art 13
Kurzius 14
01. Kurzius is directed to the management of candidate recruiting 15
with automated candidate recruiting that includes a candidate web 16
engine to communicate with a network and to present a candidate 17
survey form to a client of the network, receive candidate 18
qualification data from the client that is entered in the form, 19
receive the candidate qualification data from a candidate web 20
engine and generate at least one candidate identifier in response to 21
parsing the candidate qualification data. Kurzius indexes the at 22
least one candidate identifier in response to the parsed candidate 23
qualification data using a candidate identifier linked to a candidate 24
record. Kurzius compares the candidate qualification data to a 25
candidate map and assigns each candidate identifier to a category 26
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of the candidate map in response to the compared candidate 1
qualification data. Kurzius 1:53 – 2:24. 2
02. Kurzius’ candidate review template has fields to display 3
candidate records for review that are listed in the candidate map. 4
Different versions of the candidate review template may be 5
displayed depending on the identity of the user accessing 6
candidate records. For example, a recruiter may review candidate 7
records using a version of the candidate review template that 8
includes additional fields associated with evaluation or feedback 9
information of a candidate, for example, for entry and later review 10
of such information. An employer or candidate version of the 11
candidate review template may include less fields or fields 12
devoted to other information such as whether the candidate has 13
received feedback on the displayed candidate record or whether 14
the employer wishes to indicate interest in the displayed candidate 15
record. Recruiting events associated with a particular candidate 16
record such as an employer indicating interest, a suitable job being 17
found, an interview being scheduled, an offer being given, or other 18
suitable event may be stored in a general or more particular 19
recruiting event field. Kurzius 6:34-53. 20
03. In Kurzius step 606, the candidate is presented with a candidate 21
survey form for entering candidate qualification data. Candidate 22
qualification data may include, for example: contact information; 23
background information; educational qualifications; employment 24
history; candidate job preferences including desired geography, 25
working environment, or benefits; special training; expertise with 26
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particular processes, systems or software; or other relevant skills 1
of the candidate. A candidate may enter textual content in fields 2
or dialog boxes that are presented to the candidate in order to 3
receive freeform data generated and typed in by the candidate. 4
Additionally, the candidate survey form may include options 5
presented to the candidate that have been selectable by the 6
candidate, scroll bars that are moveable to indicate a particular 7
piece of data, or other selectable or manipulatable icons, buttons, 8
links, highlightable data items, or any other piece of selectable 9
data that has been pre-generated and presented to the candidate via 10
the candidate survey form. One embodiment of a candidate 11
survey form is illustrated in Figure 14. Kurzius 9:53 – 10:5. 12
04. Kurzius describes using menus for data selection in a graphic 13
user interface. Kurzius 17:26-34. Kurzius Figure 18 shows that 14
these fields may include education and job description. 15
Heck 16
05. Heck is directed to reviewing four midrange project 17
management packages. Heck 1:Abstr. 18
06. With Time Line's reporting module, you gain more than 30 19
built-in reports, including task status, notes, cost, and effort. The 20
program provides a fair amount of flexibility in fine-tuning the 21
contents of standard reports containing columns of text and 22
numbers. The Print Calendar prints tasks in typical one-month-23
per-page calendar fashion. You can also generate Gantt, PERT, 24
time-scaled PERT, and cross-tab reports directly from onscreen 25
views. With the add-on Time Line Report Maker, you can 26
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customize the built-in database reports and create a variety of 1
additional reports that use Time Line data as well as information 2
from other SOL databases 3
ANALYSIS 4
Claims 69-88 rejected under 35 U.S.C. § 112, first paragraph, as not 5
enabling a person of ordinary skill in the art to make and use the claimed 6
subject matter from the original disclosure. 7
We are persuaded by Appellant’s arguments that the Specification 8
enables the claimed invention. Appeal Br. 9-12. The Examiner did not 9
make any analysis of whether the experimentation needed to practice the 10
invention was undue or unreasonable. In re Wands, 858 F.2d 731, 737 (Fed. 11
Cir. 1988). 12
Claims 69-72, 75-78, 82-86, and 88 rejected under 35 U.S.C. § 103(a) as 13
unpatentable over Kurzius and Heck. 14
We are unpersuaded by Appellant’s arguments that the claims call for 15
specific data fields and multi-dimensional, comprehensive, and structured 16
data. Appeal Br. 13-24. The Specification does not define the limitations 17
“multi-dimensional,” “comprehensive,” and “structured.” These 18
characteristics of data are largely in the eye of the beholder. The various 19
data entered for a candidate is multi-dimensional in that it crosses more than 20
one dimension of a candidate’s description, and is comprehensive for a 21
similar reason. The data is structured at least in that the data is entered in 22
structured fields. 23
We are unpersuaded by Appellant’s arguments that various specific 24
fields are not in Kurzius (Appeal Br. id.), as these fields are not recited in the 25
claims. 26
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We are also unpersuaded by Appellant’s arguments that Heck’s PERT 1
and GANT charts are not multiple discrete pictorial representations of the 2
text-based career information (Appeal Br. id.), as PERT and GANT charts 3
are multiple discrete pictorial representations of text-based project 4
information, and a career is simply the projection of the activities over a 5
person’s professional life. Thus, one of ordinary skill in the career 6
management arts, knowing the importance of visualizing a person’s 7
experience in terms of actual tasks and accomplishments over a period of 8
time, would have known that such project management charts would present 9
such information visually. Appellant argues that PERT and GANT charts do 10
not use the disclosed taxonomy, but again, the disclosed data fields are not 11
recited in the claims. The actual data presented in output is non-functional 12
descriptive material entitled to no patentable weight in any event. 13
With regard to dependent claims 70-72, 75-78, 82-86, and 88, we 14
adopt the Examiner’s findings of fact and analysis at Answer pages 10-18. 15
We are unpersuaded as to Appellant’s arguments regarding: claims 70 and 16
71drop down menus as Kurzius describes using menus and drop down 17
variants were notoriously well known, and the particular fields are entered in 18
Kurzius and in any event are non-functional descriptive material; claims 72 19
and 82 as Heck is applied for the pictorial representations for data 20
maintained by Kurzius; claims 75 and 84 as Appellant does no more than 21
recite the limitations without showing how it is missing; claim 77 as the 22
depth and breadth of the fields enumerated is irrelevant because the claim 23
only requires one of the enumerated fields; claim 78 as Appellant again 24
argues information in the disclosure that are not recited in the claim; claim 25
83 layered pictorial representation storage as the claim does not define the 26
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manner of layering, nor the pictorial nature of the input fields, as so the 1
layered sequential nature of input found by the Examiner and the use of 2
graphics for input fields by Kurzius meets this limitation; claim 85 talent 3
query with a pictorial response as Kurzius describes performing queries on a 4
talent database and Heck at least shows it was predictable to pictorially 5
represent data returned from a query; and claim 86 analysis and report using 6
mobility metric and organization filter because Kurzius uses such mobility 7
(geographic) and organizational data and describes general database queries, 8
among which such search criteria with existing fields as organization and 9
geography were at least predictable. 10
Claims 73 and 74 rejected under 35 U.S.C. § 103(a) as unpatentable over 11
Kurzius, Heck, and Rappoport. 12
We adopt the Examiner’s findings of fact and analysis at Answer page 13
14. We are unpersuaded as to Appellant’s arguments regarding claims 73 14
and 74 reversal because the Examiner applied Rappoport for that feature and 15
Appellant again refers to features in the disclosure rather than in the claim to 16
distinguish Rappoport. 17
Claim 81 rejected under 35 U.S.C. § 103(a) as unpatentable over Kurzius, 18
Heck, and Shore. 19
We are persuaded as to Appellant’s arguments regarding claim 81 20
encrypted and time period sensitive email link for data availability and 21
pictorial representation, because the Examiner provided no evidence to 22
support the predictability of making such an email time sensitive. 23
Claims 79 and 87 rejected under 35 U.S.C. § 103(a) as unpatentable over 24
Kurzius, Heck, and Barton. 25
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We adopt the Examiner’s findings of fact and analysis at Answer 1
pages 16-17. We are unpersuaded as to Appellant’s arguments regarding 2
claims 79 and 87 anonymity and access and registration, service selection, 3
configuration, and partitioning because the Examiner applied Barton for 4
those features and Appellant again refers to features in the disclosure rather 5
than in the claim to distinguish Barton and is arguing the construction of 6
registration, service selection, configuration, and partitioning more narrowly 7
than the claim allows. 8
Claim 80 rejected under 35 U.S.C. § 103(a) as unpatentable over Kurzius, 9
Heck, and Knowlton. 10
We adopt the Examiner’s findings of fact and analysis at Answer page 11
18. We are unpersuaded as to Appellant’s arguments regarding claim 80 12
media file because the Examiner applied Knowlton for those features and 13
Appellant again refers to features in the disclosure rather than in the claim to 14
distinguish Knowlton. 15
CONCLUSIONS OF LAW 16
The rejection of claims 69-88 under 35 U.S.C. § 112, first paragraph, 17
as not enabling a person of ordinary skill in the art to make and use the 18
claimed subject matter from the original disclosure is improper. 19
The rejection of claims 69-72, 75-78, 82-86, and 88 under 35 U.S.C. § 20
103(a) as unpatentable over Kurzius and Heck is proper. 21
The rejection of claims 73 and 74 under 35 U.S.C. § 103(a) as 22
unpatentable over Kurzius, Heck, and Rappoport is proper. 23
The rejection of claim 81 under 35 U.S.C. § 103(a) as unpatentable 24
over Kurzius, Heck, and Shore is improper. 25
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The rejection of claims 79 and 87 under 35 U.S.C. § 103(a) as 1
unpatentable over Kurzius, Heck, and Barton is proper. 2
The rejection of claim 80 under 35 U.S.C. § 103(a) as unpatentable 3
over Kurzius, Heck, and Knowlton is proper. 4
DECISION 5
The rejection of claims 69-80 and 82-88 is affirmed. 6
The rejection of claim 81 is reversed. 7
The appeal as to claims 49-68, subject to the new ground of rejection 8
under § 112, second paragraph as being indefinite stands dismissed. 9
Upon return of the application to the Examiner, the Examiner should 10
(1) cancel claims 49-68 subject to the new ground of rejection and (2) notify 11
the Appellant that the appeal as to claims 49-68, subject to the new ground 12
of rejection under § 112, second paragraph as being indefinite, is dismissed 13
and claims 49-68 are cancelled. See MPEP § 1207.03. 14
No time period for taking any subsequent action in connection with 15
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. 16
§ 1.136(a)(1)(iv) (2011). 17
18
AFFIRMED-IN-PART 19
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22
hh 23