Ex Parte Dolan

Board of Patent Appeals and Interferences

Dec 20, 2002

09543632 (B.P.A.I. Dec. 20, 2002)

The opinion in support of the decision being entered today was not written
for publication and is not binding precedent of the Board.
Paper No. 12
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte F. J. STEVE DOLAN
____________
Appeal No. 2002-0954
Application No. 09/543,632
____________
ON BRIEF
____________
Before McQUADE, NASE and BAHR, Administrative Patent Judges.
BAHR, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the examiner's final rejection of claims 1, 3, 4,
6, 7, 15, 17, 18, 20 and 21, which are all of the claims pending in this application.
We REVERSE.
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BACKGROUND
The appellant's invention relates to a teaching aid that may be used to enhance
understanding of vocabulary words. The two independent claims on appeal read as
follows:
1. A vocabulary teaching aid system, comprising:
a programmable apparatus;
a video monitor operably coupled to said
programmable apparatus;
an user-interactive peripheral operably coupled to
said programmable apparatus; and
a program wherein said program directs the
operations of said programmable apparatus to:
provide an interactive screen presentation on said
video monitor;
provide for selection of a vocabulary word from said
interactive screen presentation through use of said
interactive peripheral; and
present an example of usage of the selected
vocabulary word on said video monitor wherein said
example of usage is a complete sentence utilizing said
vocabulary word and wherein said program directs the
operations of said programmable apparatus to present a
synonym of said selected vocabulary word on said video
monitor in the complete sentence.
15. A method for expanding knowledge of vocabulary,
comprising the steps of:
providing an interactive screen presentation on a
video monitor;
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1 U.S. Patent No. 5,827,071, issued October 27, 1998 to Sorensen et al.
allowing selection of a desired vocabulary word from
said interactive screen presentation by means of an
interactive peripheral;
providing an example of usage of the selected
vocabulary word on the video monitor wherein said example
of usage is a complete sentence utilizing said vocabulary
word; and
providing a synonym of said selected vocabulary word
in said complete sentence.
The following rejection is before us for review.
Claims 1, 3, 4, 6, 7, 15, 17, 18, 20 and 21 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Sorensen1.
Rather than reiterate the conflicting viewpoints advanced by the examiner and
the appellant regarding the above-noted rejection, we make reference to the answer
(Paper No. 11) for the examiner's complete reasoning in support of the rejection and to
the brief (Paper No. 10) for the appellant's arguments thereagainst.
OPINION
In reaching our decision in this appeal, we have given careful consideration to
the appellant's specification and claims, to the Sorensen patent, and to the respective
positions articulated by the appellant and the examiner. Based on our review, for the
reasons which follow, we cannot sustain the examiner’s rejection.
Independent claim 1 calls for, inter alia, a program which directs a programmable
apparatus to present on a video monitor both a complete sentence utilizing a selected
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2 We note what appears to be an inconsistency between the subject matter of the claims as now
presented and appellant’s underlying disclosure. In particular, while appellant’s specification (page 5 and
Figure 3) discloses presentation of a selected vocabulary word in a complete sentence “with the
meaning/definition of the word as used in the sentence indicated within brackets, parentheses or
otherwise punctuated” per operations block 46, the specification discloses only the presentation of a
“listing of synonyms” (page 6) per decision block 60 when requested by the user. Appellant’s specification
does not disclose the presentation of the use of the “synonyms” in a sentence per decision block 60, as
called for in the claims as now presented. While we recognize that the “meaning/definition” inserted in the
complete sentence after the selected vocabulary word per operations block 46 might be considered to be
a listing of synonyms for the vocabulary word, appellant’s specification appears to distinguish “synonyms”
from “meaning/definition.” Upon return of this application to the Technology Center, the primary examiner
may wish to take appropriate action to clarify whether the term “synonyms” as used in appellant’s
application differs from “meaning/definition” and to consider whether the claimed subject matter finds
written description support in the application as originally filed, as required under the first paragraph of 35
U.S.C. § 112.
3 With further regard to our observations in footnote 2, Sorensen’s separate references to “the
word with definitions” and “the word with synonyms” suggests that the terms “definitions” and “synonyms”
are viewed differently within the field of teaching vocabulary.
vocabulary word and a synonym of the selected vocabulary word in the complete
sentence. Independent claim 15 likewise recites steps of providing on the video
monitor a complete sentence utilizing a selected vocabulary word and a synonym of the
selected vocabulary word in the complete sentence.2
Sorensen discloses a computer program product and method for teaching
vocabulary wherein users may directly input the words of their choice into a user word
list along with associated information such as definitions, usage sentences, synonyms,
antonyms, etc. (column 7, lines 41-45). Sorensen also discloses presentation of
various learning frame settings which may include “the word only, the word with
definitions, the word with synonyms[3], example sentences, etc.” (column 10, lines 28-
30). Note Figures 8B and Appendix pages A3, wherein the vocabulary word itself is
enclosed in brackets in the example sentences, and A6, which illustrates a presentation
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of a listing of synonyms and antonyms for the selected vocabulary word in addition to a
presentation of the use of the selected vocabulary word in sentences. As conceded by
the examiner (answer, page 3), however, Sorensen does not disclose presentation of
the use of synonyms of the selected vocabulary word in a sentence, much less the
same sentence in which the vocabulary word is used. While it might appear to involve
only a very simple modification of Sorensen’s device and method to present the usage
of one or more of the listed synonyms of the selected vocabulary word in the same
sentence(s) in which the selected vocabulary word is presented, we find no suggestion
in Sorensen to do so. The mere fact that the prior art could be so modified would not
have made the modification obvious unless the prior art suggested the desirability of
the modification. See In re Mills, 916 F.2d 680, 682, 16 USPQ2d 1430, 1432 (Fed. Cir.
1990); In re Gordon, 733 F.2d 900, 902, 221 USPQ 1125, 1127 (Fed. Cir. 1984). Even
when obviousness is based on a single prior art reference, there must be a showing of
a suggestion or motivation to modify the teachings of that reference. See In re Kotzab,
217 F.3d 1365, 1370, 55 USPQ2d 1313, 1316-17 (Fed. Cir. 2000). From our
perspective, the only suggestion for modifying Sorensen in the manner proposed by the
examiner is found in the luxury of hindsight accorded one who first viewed the
appellant’s disclosure. This, of course, is not a proper basis for a rejection. See In re
Fritch, 972 F.2d 1260, 1266, 23 USPQ2d 1780, 1784 (Fed. Cir. 1992).
For the foregoing reasons, we conclude that the evidence adduced by the
examiner is insufficient to establish a prima facie case of obviousness of the subject
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matter of claims 1 and 15. It thus follows that the examiner’s rejection of claims 1 and
15, as well as claims 3, 4, 6, 7, 17, 18, 20 and 21 which depend therefrom, is reversed.
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CONCLUSION
To summarize, the decision of the examiner to reject claims 1, 3, 4, 6, 7, 15, 17,
18, 20 and 21 under 35 U.S.C. § 103 is reversed.
REVERSED
JOHN P. McQUADE )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
JEFFREY V. NASE ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
JENNIFER D. BAHR )
Administrative Patent Judge )
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Application No. 09/543,632
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John F. Thuente
Patterson & Keough P.A.
4800 IDS Center
50 South 8th Street
Minneapolis, MN 55402-2100