Ex Parte Levin

Board of Patent Appeals and Interferences

Feb 11, 2011

10787486 (B.P.A.I. Feb. 11, 2011)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte ROBERT LEVIN
____________

Appeal 2009-011966
Application 10/787,486
Technology Center 3700
____________

Before MICHAEL W. O’NEILL, KEN B. BARRETT, and
FRED A. SILVERBERG, Administrative Patent Judges.

O’NEILL, Administrative Patent Judge.

DECISION ON APPEAL1

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown in the PTOL-90A cover letter attached to this decision.

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STATEMENT OF THE CASE
Robert Levin (Appellant) appeals under 35 U.S.C. § 134 from the
Examiner’s decision finally rejecting claims 1 and 3. Appellant cancelled
claim 2.2 The Examiner withdrew claims 4-6 from consideration pursuant to
a restriction requirement. We have jurisdiction under 35 U.S.C. § 6(b).

The Invention
The claims on appeal relate to a vocabulary building method.
Claim 1, reproduced below with emphasis added, is representative of
the subject matter on appeal.
1. An educational method for increasing a student's
vocabulary comprising the steps of:
identifying a first expression consisting of a commonly
known person, place, thing, event, title, phrase, or quote
consisting of one or more words;
obscuring said words by substituting one or more of said
words with lesser known words to form a second expression;
presenting the second expression to a student to decipher
using his vocabulary knowledge of said lesser known words;
providing said student with one or more definitions of the
lesser known words which definitions serve as clues for
deciphering the second expression back into the first expression
whereby said student learns the lesser known words and
adds them to his vocabulary by actively using said definitions
of the lesser known words in deciphering the second expression
back into the first expression.

2 In the revised Status of Claims section, filed November 18, 2008,
Appellant lists claims 4-6 as being cancelled. However, a review of the
record reveals that claims 4-6 were not cancelled by Appellant, but were
instead withdrawn from consideration by the Examiner in the April 20, 2005
Office Action pursuant to a restriction requirement.
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The Rejection
The following Examiner’s rejection is before us for review:
Claims 1 and 3 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Alam (U.S. Patent No. 3,678,602, issued Jul. 25, 1972) in
view of Mankoff (U.S. Patent No. 3,935,651, issued Feb. 3, 1976).

OPINION
Issue
The determinative issue in this appeal is:
Did the Examiner err in concluding that the combination of Alam and
Mankoff renders obvious all of the steps of the method of claim 1? This
issue turns on whether Mankoff teaches or suggests “the providing step.”
Analysis
Appellant contends that the combination of Alam in view of Mankoff
“does not arrive at [Appellant’s] four-step process” because the resulting
method from the combination of Alam in view of Mankoff leaves the
student with nothing to decipher as is required by claim 1. App. Br. 22.
The Examiner’s position is that Alam discloses the identifying,
obscuring, and presenting steps of claim 1, but fails to disclose the providing
step. Ans. 4. The Examiner posits that Mankoff discloses the providing
step. Id. The Examiner concluded that it would have been obvious to one of
ordinary skill in the art to combine Alam and Mankoff in order to provide a
player with multiple choices. Id.
Alam discloses a vocabulary building card game having two or more
decks of cards with each deck bearing cards having a word part such as
prefix, root, or suffix thereon. Abstract, Figs. 1 and 3, and col. 2, ll. 26-29.
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The reverse side of each card has a definition of the respective prefix, root,
or suffix. Abstract. By learning what many prefixes, roots, and suffixes
mean, one will automatically recognize the meaning of all words which are
made up of a combination of one of those prefixes, roots, and suffixes. Col.
2, ll. 15-23.
Mankoff discloses a deck of cards similar to a conventional deck of
playing cards. Abstract. As with a conventional deck of playing cards, each
card in Mankoff’s deck has one of four suits (i.e., hearts, diamonds, spades,
and clubs). Col. 2, ll. 16-21. In contrast to a conventional deck of playing
cards, each card in Mankoff’s deck contains a vocabulary word thereon
along with a value denomination for each of three multiple choices, one of
the three multiple choices being the correct definition for the vocabulary
word and the other two choices being incorrect definitions. Figs. 2-5 and
col. 2, ll. 29-42. The value denomination of each card corresponds to that of
the correct definition for the vocabulary word. Col. 2, ll. 29-42. Once the
value denominations of the cards have been indentified by selection of the
correct definition of the vocabulary words, Mankoff’s deck of cards can be
used to play any standard card game. Col. 3, ll. 6-10.
In rejecting claims under 35 U.S.C. § 103(a), the examiner bears the
initial burden of establishing a prima facie case of obviousness. See In re
Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992). See also In re Piasecki, 745
F.2d 1468, 1472 (Fed. Cir. 1984). It is incumbent upon the examiner to
establish a factual basis to support the legal conclusion of obviousness. See
In re Fine, 837 F.2d 1071, 1073 (Fed. Cir. 1988).
In the present case, the Examiner has not met the initial burden of
establishing a prima facie case of obviousness because the Examiner has
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failed to establish a factual basis to support the legal conclusion of
obviousness. The Examiner has failed to establish that the combination of
Alam and Mankoff discloses all of the steps of the method of claim 1. More
particularly, the Examiner has failed to show that Mankoff discloses the step
of providing the student with one or more definitions of the lesser known
words which definitions serve as clues for deciphering the second expression
back into the first expression.
Indeed, with respect to Mankoff, all the Examiner’s rejection states is
that “Mankoff discloses vocabulary playing cards . . . with words and
definitions, which are used to decipher the vocabulary word (see abstract,
claim 1 and col. 2, lines 29-68).” Ans. 5.
After reviewing Mankoff’s disclosure and in particular, the sections of
Mankoff particularly pointed to by the Examiner (i.e., the abstract, claim 1,
and col. 2, lines 29-68), we do not find sufficient evidence within Mankoff
which supports the Examiner’s allegation that Mankoff discloses the step of
providing the student with one or more definitions of the lesser known
words which definitions serve as clues for deciphering the second expression
back into the first expression. Rather, Mankoff merely discloses providing a
single definition and two wrong answers for the lesser known words. The
single definition does not serve as a clue and we agree with Appellant that
there is nothing to decipher.
Absent a teaching or suggestion of the providing step, we constrained
to conclude that the Examiner has not set forth a prima facie case of
obviousness by the modification of Alam in view of Mankoff. Therefore,
we do not sustain the Examiner’s decision to reject of claims 1 and 3 under
35 U.S.C. § 103(a) as being obvious over Alam in view of Mankoff.
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CONCLUSION
The Examiner’s erred in finding that Mankoff cures the defects of
Alam because Mankoff does not disclose the providing step.

DECISION
We reverse the Examiner’s decision to reject claims 1 and 3 under 35
U.S.C. §103(a) as being obvious over Alam in view of Mankoff.

REVERSED

Klh

GRACE J. FISHEL
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