Ex Parte Masaoka

Patent Trial and Appeal Board

May 21, 2015

12804519 (P.T.A.B. May. 21, 2015)

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.
12/804,519 07/23/2010 Manabu Masaoka SE0001-US-CIP 5285
7590 05/21/2015
Manabu Masaoka
29707 Island View Drive, Unit 1
Rancho Palos Verdes, CA 90275
EXAMINER
UTAMA, ROBERT J
ART UNIT PAPER NUMBER
3715
MAIL DATE DELIVERY MODE
05/21/2015 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
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte MANABU MASAOKA
____________

Appeal 2013-003940
Application 12/804,519
Technology Center 3700
____________________

Before STEFAN STAICOVICI, THOMAS F. SMEGAL, and
TIMOTHY J. GOODSON, Administrative Patent Judges.

GOODSON, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellant Manabu Masaoka appeals under 35 U.S.C. § 134(a) from
the rejection of claims 1–15. Appeal Br. 3. We have jurisdiction under
35 U.S.C. § 6(b).
We REVERSE.

CLAIMED SUBJECT MATTER
Claim 1 illustrates the subject matter on appeal and is reproduced
below:
1. A system for exchanging information, comprising:
a communications network;
Appeal 2013-003940
Application 12/804,519

2
a communications device;
a server for providing over the communications network
a lesson to a user through the communications device;
wherein the lesson utilizes promotional
information as course material to serve an educational
purpose and a promotional purpose;
a database for storing an input from the user through a
feedback device in response to an inquiry regarding the course
material;
wherein the feedback device is associated with a
deliberate selector unit;
wherein the input includes a cognitive input from
the user in response to the inquiry that includes at least
one datum from the deliberate selector unit;
a software engine receiving the input, a location of the
user, and at least one personal characteristic or trait of the user;
wherein the software engine identifies a cognitive
baseline on an initial series of cognitive inputs to
establish a cognitive reference point to assess a
subsequent series of cognitive inputs;
wherein the software engine generates a report
comprising the cognitive input from the user relative to
the cognitive reference point, a location of the user, and
at least one personal characteristic or trait of the user; and
wherein the report provides marketing information
of an effect of the promotional information on the user.

PRIOR ART
The Examiner relies on the following evidence in rejecting the claims
that are the subject of this appeal:
Braunberger
Njemanze
Ueda
Martino
US 2003/0077559 A1
US 2003/0187359 A1
US 2003/0208353 A1
US 6,778,807 B1
Apr. 24, 2003
Oct. 2, 2003
Nov. 6, 2003
Aug. 17, 2004
Appeal 2013-003940
Application 12/804,519

3
GROUNDS OF REJECTION
Claims 1, 4, and 6–14 stand rejected under 35 U.S.C. § 103(a) as
obvious over Ueda, Martino, and Braunberger. Final Act. 2.
1

Claims 2, 3, 5, and 15 stand rejected under 35 U.S.C. § 103(a) as
obvious over Ueda, Martino, Braunberger, and Njemanze. Id. at 6.

OPINION
In rejecting independent claims 1, 4, and 6, the Examiner relies on
Braunberger as teaching a database for storing an input from the user
through a feedback device, and a feedback device that is associated with a
deliberate selector unit. Final Act. 4 (citing Braunberger ¶¶ 42, 68). The
Examiner proposes to combine these aspects of Braunberger with Ueda and
Martino, which the Examiner points to as teaching other limitations in
independent claims 1, 4, and 6. Id. at 2–4. However, the Examiner does not
articulate any reasoning why it would have been obvious to combine these
features from Braunberger with Ueda or Martino. The Final Action begins a
sentence that appears to have been intended to set forth such an explanation,
but leaves the sentence incomplete. See id. at 4.
To establish obviousness, “it is not enough to simply show that the
references disclose the claim limitations; in addition, ‘it can be important to
identify a reason that would have prompted a person of ordinary skill in the
art to combine the elements as the new invention does.’” Transocean
Offshore Deepwater Drilling, Inc. v. Maersk Contractors USA, Inc., 617

1
Citations to the Final Action refer to the Office Action mailed April 3,
2012.
Appeal 2013-003940
Application 12/804,519

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F.3d 1296, 1303 (Fed. Cir. 2010) (quoting KSR Int'l Co. v. Teleflex, Inc., 550
U.S. 398, 418 (2007)). See also In re Kahn, 441 F.3d 977, 988 (Fed. Cir.
2006) (“[R]ejections on obviousness grounds cannot be sustained by mere
conclusory statements; instead, there must be some articulated reasoning
with some rational underpinning to support the legal conclusion of
obviousness.”). Here, lacking any explanation as to why it would have been
obvious to combine Braunberger with Ueda and Martino, the Examiner has
not carried the burden to demonstrate the obviousness of claims 1, 4, and 6.
Accordingly, we do not sustain the rejection of independent claims 1, 4, and
6. We also do not sustain the rejection of claims 7–14, which depend from
claim 6.
The rejection of dependent claims 2, 3, 5, and 15 is premised on the
same reasoning as claims 1, 4, and 6, and the Examiner’s use of Njemanze
does not remedy the deficiency of any reasoning to combine Braunberger
with Ueda and Martino. See Final Act. 6–7. We therefore do not sustain the
rejection of claims 2, 3, 5, and 15.

DECISION
We reverse the Examiner’s rejection of claims 1, 4, and 6–14 under 35
U.S.C. § 103(a) as obvious over Ueda, Martino, and Braunberger.
We reverse the Examiner’s rejection of claims 2, 3, 5, and 15 under 35
U.S.C. § 103(a) as obvious over Ueda, Martino, Braunberger, and
Njemanze.

REVERSED
Ssc