Ex Parte Gordon

Board of Patent Appeals and Interferences

Sep 8, 2005

09760905 (B.P.A.I. Sep. 8, 2005)

The opinion in support of the decision being entered today was not
written for publication and is not binding precedent of the Board.

UNITED STATES PATENT AND TRADEMARK OFFICE
_____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________
Ex parte STEPHEN L. GORDON, pro se
_____________
Appeal No. 2005-2422
Application No. 09/760,905
______________
ON BRIEF
_______________
Before HAIRSTON, KRASS and JERRY SMITH, Administrative Patent
Judges.
HAIRSTON, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal from the final rejection of claims
1 through 23.
The disclosed invention relates to a system and method for
providing a report related to an ergonomics resource to a remote
computer via an interactive web-site.
Appeal No. 2005-2422
Application No. 09/760,905
2
Claim 1 is illustrative of the claimed invention, and it
reads as follows:
1. An ergonomics resource system comprising:
an interactive web-site including certain ergonomics
resources, said resources including at least one ergonomics
program that includes, in turn, at least one database;
a computer remote from said web-site;
access means for interactively connecting said web-
site and said remote computer; and,
means to provide at least one report related to said
ergonomics resources.
The reference relied on by the examiner is:
Stern et al. (Stern) 6,592,223 Jul. 15, 2003
(filed Oct. 6, 2000)
Claims 10, 11, 16, 17 and 20 stand rejected under the second
paragraph of 35 U.S.C. § 112 for indefiniteness.
Claims 1 through 23 stand rejected under 35 U.S.C. § 102(e)
as being anticipated by Stern.
Claims 11 and 17 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Stern.
Reference is made to the briefs and the answer for the
respective positions of the appellant and the examiner.
Appeal No. 2005-2422
Application No. 09/760,905
1 A statement of intended use does not serve to distinguish
structure over the prior art.
3
OPINION
We have carefully considered the entire record before us,
and we will sustain the indefiniteness rejection of claims 11 and
17, reverse the indefiniteness rejection of claims 10, 16 and 20,
sustain the anticipation rejection of claims 1 through 23 and
sustain the obviousness rejection of claims 11 and 17.
Turning first as we must to the indefiniteness rejection,
our analysis begins with a determination of whether the claims
do, in fact, set out and circumscribe a particular area with a
reasonable degree of precision and particularity when read in
light of the application disclosure as they would be by one
possessing ordinary skill in the art. In re Moore, 439 F.2d
1232, 1235, 169 USPQ 236, 238 (CCPA 1971).
The examiner’s finding (answer, page 4) that claims 10,
16 and 20 are indefinite because they recite intended use
statements per se lacks merit. Such expressions may be used in
claims, and they are judged for definiteness under the second
paragraph of 35 U.S.C. § 112 like any other claimed expression.
The examiner’s analysis and explanation of In re Casey1, 370 F.2d
576, 580, 152 USPQ 235, 238 (CCPA 1967) applies to a prior art
Appeal No. 2005-2422
Application No. 09/760,905
4
rejection, and not to an indefiniteness rejection. Thus, the
indefiniteness rejection of claims 10, 16 and 20 is reversed.
Turning next to the indefiniteness rejection of claims
11 and 17, the metes and bounds of ergonomics programs that
“conform to government regulations” would not be understood by
the skilled artisan because such regulations are subject to
change over time. The appellant acknowledges (specification,
page 11) that “the regulations may be modified.” A claim cannot
be definite when it has different meanings at different times.
Consequently, the indefiniteness rejection is sustained because
claims 11 and 17 fail to provide definite direction to the
skilled artisan trying to determine the scope of the claimed
invention.
Turning to the anticipation rejection of claims 1 through
23, we agree with the examiner’s findings (answer, pages 4
through 13) that Stern discloses (Figure 3; columns 5 and 6) all
of the claimed subject matter. Appellant’s arguments (brief,
pages 14 and 15) to the contrary notwithstanding, nothing in the
claims on appeal (claims 1 through 23) requires that an
ergonomics program must have six elements. Features that are
Appeal No. 2005-2422
Application No. 09/760,905
5
found only in appellant’s specification will not be read into the
claims. In re Prater, 415 F.2d 1393, 1405, 162 USPQ 541, 551
(CCPA 1969).
Since OSHA and other workplace regulations apply to
workplace lighting and use of office equipment to avoid
eyestrain, we find that the government ergonomics regulations
that apply to appellant’s disclosed and claimed invention (claims
11 and 17) equally apply to the ergonomics resource system
described in Stern.
Using circular reasoning, appellant argues (brief, page 16)
that Stern does not disclose an expert system (claims 2, 5, 10,
16 and 20). We find that Stern discloses an expert system
(Figure 3) that dispenses advice that an optometrist would
normally dispense, and that such ergonomics advice is
understandable by laymen (i.e., the computer user).
Appellant’s argument (brief, page 16) that the web site in
Stern does not ask the user certain questions is without merit in
that the system and method disclosed by Stern has to ask at least
background questions to get the program started for each
individual computer user (claims 3, 19 and 22). Based upon the
Appeal No. 2005-2422
Application No. 09/760,905
6
complexity of the interactive system disclosed by Stern, more
than one program must be devoted to running such an interactive
system (brief, page 16).
Inasmuch as the system in Stern can go to other databases at
any time to gather data, appellant’s argument (brief, pages
14 and 16) concerning Stern’s lack of access of other databases
in and out of the system (claim 8, 18, 21 and 22) is without
merit.
In view of the foregoing, the anticipation rejection of
claims 1 through 23 is sustained.
The obviousness rejection of claims 11 and 17 is sustained
because anticipation is the epitome of obviousness. In re
Pearson, 494 F.2d 1399, 1402, 181 USPQ 641, 644 (CCPA 1974).
DECISION
The decision of the examiner rejecting claims 10, 11, 16,
17 and 20 under the second paragraph of 35 U.S.C. § 112 is
affirmed as to claims 11 and 17, and is reversed as to claims
10, 16 and 20. The decision of the examiner rejecting claims
1 through 23 under 35 U.S.C. § 102(e) is affirmed, and the
decision of the examiner rejecting claims 11 and 17 under
35 U.S.C. § 103(a) is affirmed.
Appeal No. 2005-2422
Application No. 09/760,905
7
No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR § 1.136
(a)(1)(iv).
AFFIRMED
KENNETH W. HAIRSTON )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
ERROL A. KRASS ) APPEALS AND
Administrative Patent Judge ) INTERFERENCES
)
)
)
)
JERRY SMITH )
Administrative Patent Judge )
KWH:hh
Appeal No. 2005-2422
Application No. 09/760,905
8
STEPHEN L. GORDON
505 GARDEN VIEW WAY
ROCKVILLE, MD 20850