Ex Parte McFaul

Patent Trial and Appeal Board

Jun 30, 2014

11778966 (P.T.A.B. Jun. 30, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte WILLIAM J. MCFAUL
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Appeal 2012-002949
Application 11/778,9661
Technology Center 3600
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Before HUBERT C. LORIN, ANTON W. FETTING, and
MICHAEL C. ASTORINO, Administrative Patent Judges.

ASTORINO, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
The Appellant appeals under 35 U.S.C. § 134 from the Examiner’s
decision rejecting claims 5, 6, 8, 18–21, 23–25, and 27–29. App. Br. 2. We
have jurisdiction over the appeal under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.

1 According to Appellant, the real party in interest is Strategic Initiatives in
Healthcare, Inc. (App. Br. 2).
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Claimed Subject Matter
Claim 5, reproduced below, is illustrative of the appealed subject
matter.
5. A collective educational system comprising:
a test provided electronically to each member of a
plurality of members in order to determine characteristics, skills
and knowledge, wherein said plurality of members are
connected to a network that enables communication and
collaborative learning, and said plurality of members are
selected to form an internal consulting group
a physical diagnostic tool, wherein the physical
diagnostic tool determines mental functioning activity and
further wherein a mental functioning activity of each member
of said plurality of members is evaluated;
test results obtained from the test, wherein the test results
determine the characteristics, skills and knowledge of each
member of said plurality of members;
distributed sub-topics wherein said sub-topics are
distributed to each member based upon said test results,
wherein intelligence on said sub-topics is used to form a shared
interpretation.

Rejection
The following Examiner’s rejection is before us for review.
Claims 5, 6, 8, 18–21, 23–25, and 27–29 are rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Employment-testing.com as of May 29,
2005, accessed via www.archive.org (hereinafter, “Test.com”) and Neal E,
Seymour, MD et al., Virtual Reality Training Improves Operating Room
Performance: Results of a Randomized, Double Blinded Study, Annals of
Surgery, Vol. 236, No. 4, pp. 458–464 (hereinafter, “Seymour”).

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OPINION
Independent claim 5
We are not persuaded by the Appellant’s arguments that a
combination of Test.com and Seymour fails to disclose or suggest “a
physical diagnostic tool, wherein the physical diagnostic tool determines
mental functioning activity,” as recited by independent claim 5, because
“[t]here is no testing of mental functioning activity performed by the virtual
reality system [of Seymour but], instead the motor skills of the individual are
evaluated based upon their virtual reality training.” App. Br. 6–7; Reply Br.
3–4. Specifically, Appellant contends that assessing the motor skills of an
individual is not the same “as testing the mental functioning activity of
individual[s] by using a device such as an MRI.” Reply Br. 4.
Independent claim 5 recites “a physical diagnostic tool, wherein the
physical diagnostic tool determines mental functioning activity and further
wherein a mental functioning activity of each member of said plurality of
members is evaluated.” App. Br. 16, Clms. App’x. (emphasis added). Thus,
claim 5 requires a “physical diagnostic tool,” but does not require, as
Appellant alleges, the “physical diagnostic tool” to be construed as an MRI
device. See CollegeNet, Inc. v. ApplyYourself, Inc., 418 F.3d 1225, 1231
(Fed. Cir. 2005) (while the specification can be examined for proper context
of a claim term, limitations from the specification will not be imported into
the claims). For example, although we acknowledge Appellant’s
Specification describes MRI as one example of a “physical diagnostic tool,”
the Specification also describes that other physical diagnostic tools, or even
specially formatted questionnaires may be used instead. Spec. ¶ 31.
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Accordingly, we agree with the Examiner that Seymour discloses a
physical diagnostic tool which assesses various mental functioning activities
(Ans. 6 and 9–10; citing Seymour pg. 2), under a broad, but reasonable
interpretation commensurate with the scope of Appellant’s Specification.
(See e.g., ¶¶ 30–32). In other words, we agree with the Examiner that
Seymour’s virtual reality-based surgical simulators and trainers which assess
a user’s visiospatial, perceptual, and psychomotor ability (pg. 2, 4)
determines the mental functioning activity of each user, as the claim
requires.
We also are not persuaded by the Appellant’s argument that
“Test.com does not disclose having distributed sub-topics distributed to each
member based upon said test results, nor does Seymour.” App. Br. 9; Reply
Br. 6–7. Specifically, Appellant contends that the Examiner erred in
determining that the claimed “distributed sub-topics” are directed to the
intended use of the system and also erred in finding that Test.com’s teaching
of “giving various test results to the potential employer” addresses this
limitation. Id.
At the outset, we agree with the Examiner that the only structural
limitations of independent claim 5 are related to a “test” and “physical
diagnostic tool.” Ans. 6. The remainder of the claim language recites
limitations derived from these two components, such as the limitations
directed to “test results obtained from the test” and “distributed sub-topics
wherein said sub-topics are distributed to each member based upon said test
results.” App. Br. 16, Clms. App’x. (emphasis added). The Appellant has
not shown how either of these limitations impose any structural limitation on
the components of the claimed “collective educational system” and we find
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the diagram of the “collective educational system,” depicted in Appellant’s
Figure 4, to be similarly silent as to any particular structure or special
programming for performing these limitations. Thus, we agree with the
Examiner that “distributed sub-topics,” as presently claimed, read on
Test.com’s disclosure regarding “providing information regarding six mental
aptitudes as well as communication skills, leadership skills, sales skills, and
9 other behavioral traits” (Ans. 5; citing Test.com pg. 2, ¶ 7), as they provide
personal development suggestions as well as other training and development
recommendations. (Test.com pg. 2, ¶ 6)
We also are not persuaded by the Appellant’s argument that the
Examiner’s asserted combination is based on impermissible hindsight
because “there is no teaching in any of the cited references to suggest using
an MRI for mental functioning activity testing or for mixing and matching
employment testing, surgical training and fMRIs.” App. Br. 8; Reply Br. 4–
5.
Initially, as discussed above, we note that independent claim 5 recites
no limitation that would require any type of MRI. Thus, the absence of any
teaching or suggestion for combining the employment testing of Test.com
and surgical training taught by Seymour, with MRI, is not persuasive to
demonstrate impermissible hindsight. Additionally, to the extent Appellant
seeks an explicit suggestion or motivation in the reference itself, this is no
longer the law in view of the Supreme Court’s holding in KSR Int’l Co. v.
Teleflex Inc., 550 U.S. 398, 418 (2007). The Examiner has provided an
articulated reasoning with rational underpinning for why a person with
ordinary skill in the art would modify the system disclosed by Test.com to
include the physical diagnostic tool, which determines mental functioning
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activity, as taught in Seymour. Ans. 6. Specifically, the Examiner
articulates a rationale based on it being predictable to use physical diagnostic
testing to study mental functioning in order to “understand[] a group
member’s mental and/or functional limits with respect to a particular task
associated with a job role.” Id.
We agree with the Examiner and find the that the proposed
modification of Test.com’s system to include Seymour’s physical diagnostic
tool (i.e., virtual reality-based surgical simulators and trainers) would have
been an obvious, predictable combination of familiar elements to allow an
organization to properly assess a user’s mental functioning activity. In KSR,
the Court stated that when considering obviousness that “the analysis need
not seek out precise teachings directed to the specific subject matter of the
challenged claim, for a court can take account of the inferences and creative
steps that a person of ordinary skill in the art would employ.” KSR 550 U.S.
at 418. Here, Test.com has disclosed a system directed to personality and
aptitude testing, as it pertains to pre-employment and selection programs.
The modification of Test.com’s system to include the physical diagnostic
tool taught by Seymour, which also looks at a doctor’s aptitude for
performing surgery, would have been an obvious, predictable modification
for the benefit of allowing an organization to better assess a subject aptitude
for a particular skill or “sub-topic.” The combination of familiar elements
according to known methods is likely to be obvious when it does no more
than yield predictable results.” See KSR, 550 U.S. at 416.
Based on the above, we sustain the Examiner’s rejection of
independent claim 5, under 35 U.S.C. § 103(a), as unpatentable over
Test.com and Seymour.
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Dependent claim 6
We are not persuaded by the Appellant’s argument that the
combination of Test.com and Seymour fails to disclose or suggest a
“plurality of organizations” because “Test.com is directed to pre-
employment screening and is not directed towards selecting more than one
individual from a plurality of organizations.” App. Br. 9. Initially, we agree
with the Examiner that, “the plurality of members and where they came
from, test results, and distributed subtopics are not positive structural
limitations of these system claims and only pertain to how the system is
intended to be employed.” Ans. 12. However, Test.com also describes on
page 1, paragraph 2 that its tests may be used for training and development,
as well as leadership development, which one of ordinary skill in the art
would appreciate relates to employee development within a company and
also appreciate that companies are comprised of different organizations (e.g.,
sales, management).
Thus, we sustain the Examiner’s rejection of claim 6, under 35 U.S.C.
§ 103(a), as unpatentable over Test.com and Seymour.

Dependent claim 8
We are not persuaded by the Appellant’s argument that the
combination of Test.com and Seymour fails to disclose or suggest, “wherein
said internal consulting group is established using the results of said test”
because “the Examiner considers the internal consulting group to be an
‘intended use.’” App. Br. 10. We agree with the Examiner that the instant
limitation is directed to intended use, as presently claimed. Ans. 12–13.
That is, neither the obtained test results nor the subsequently established
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internal consulting group using the results of the test have any affect on the
structural components (i.e., test, physical diagnostic tool) of the underlying
“collective educational system.” A claim containing a “recitation with
respect to the manner in which a claimed apparatus is intended to be
employed does not differentiate the claimed apparatus from a prior art
apparatus” if the prior art apparatus teaches all the structural limitations of
the claim. Ex parte Masham, 2 USPQ2d 1647 (Bd. Pat. App. & Inter.
1987).
Thus, we sustain the Examiner’s rejection of claim 8, under 35 U.S.C.
§ 103(a), as unpatentable over Test.com and Seymour.

Dependent claims 18 and 27
Claim 18 ultimately depends from independent claim 5 and recites,
“wherein said physical diagnostic tool is a magnetic resonance imaging
device.” App. Br. 17–18, Clms. App’x. The Appellant argues that the
rejection of claim 18 is improper because the Examiner resorts to
impermissible hindsight and points out that “whether MRI is known is not
the same as whether or not it is known and/or obvious to employ MRI in the
manner set forth in the claims.” App. Br. 11; Reply Br. 5–6.
The Examiner finds “that using an MRI to diagnose mental
functioning activity is a concept that is old and well known. For example,
MRIs may be used to study structure and mental function and diagnose
mental illness.” Ans. 7. The Examiner concludes that it would have been
obvious “to modify the system of Test.com and Seymour to include an MRI
in order to understand an individual’s mental and/or functional limits.” Id.
We agree with the Appellant.
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Here, there is no articulated reasoning with rational underpinnings as
to why it would have been obvious to combine Test.com and Seymour with
the Examiner’s finding that it is well-known to use MRI machines to study
and diagnose mental illness to meet the limitation of dependent claim 18
without impermissible hindsight. Although, Test.com and Seymour both
assess a person’s characteristics, skills, and knowledge, as well as mental
functioning activity, the Examiner has not provided some articulated
reasoning with rational underpinnings for combining Test.com and Seymour
to include an MRI device, as claimed, without impermissible hindsight.
Thus, we do not sustain the Examiner’s rejection of claim 18, under
35 U.S.C. § 103(a), as unpatentable over Test.com and Seymour. Dependent
claim 27 contains a similar limitation, and the rejection of claim 27 is not
sustained for the same reasons.

Dependent claim 19
Dependent claim 19 recites, “wherein mental functioning activity
comprises focus, temperament, concern and physical behavior.” App. Br.
17, Clms. App’x.
The Examiner finds that the “Test.com and Seymour combination
discloses all of the elements of the claimed invention but fails to explicitly
disclose the mental functioning activity comprises focus, temperament,
concern and physical behavior.” Ans. 7. However, the Examiner finds “that
it is old and well known for physical diagnostic tools to have the ability to
study different types of brain activity that affect and/or cause certain
physical/mental function and health” and concludes that it would have been
obvious “to modify the system of the Test.com and Seymour combination to
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include mental functioning activity comprising focus temperament, concern
and physical behavior in order to determine if the brain is functioning
properly and whether it is able to perform specific tasks.” Ans. 8.
The Appellant contends that the Examiner’s conclusion of
obviousness resorts to impermissible hindsight. App. Br. 11–12. However,
we agree with the Examiner that it would have been obvious at the time of
the invention to determine focus, temperament, concern and physical
behavior using a physical diagnostic tool to access a person’s mental
functioning activity based on the teachings of Test.com and Seymour. At
the outset, we note that claim 19 is directed to the intended use of the
“physical diagnostic tool” recited in independent claim 5. Therefore, to
meet the claimed limitation, Seymour’s virtual reality-based surgical
simulators and trainers need only be capable of determining mental
functioning activity comprising focus, temperament, concern and physical
behavior. However, given that Seymour describes that its system assesses
the cognitive skills of anatomical recognition, decision making, and alternate
planning (pg. 5), we find Seymour’s system meets the claimed limitation.
We further note that the rejection is based on the combination of Test.com
and Seymour, and Test.com also assesses a person’s mental functioning
activity (Test.com pg. 2, ¶¶ 3 and 4) and is capable of determining focus,
temperament, concern and physical behavior using an array of electronic
tests similar to those described in Appellant’s Specification. (See e.g., ¶
0032 and Fig. 3).
Thus, we sustain the Examiner’s rejection of claim 19, under 35
U.S.C. § 103(a), as unpatentable over Test.com and Seymour.

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Dependent claims 20 and 21
Although the Appellant uses separate headings for the rejection of
claims 20 and 21, for each ground of rejection, the Appellant only asserts the
patentability of the claims is based its dependency from independent claim
5. App. Br. 12. Accordingly, for the same reasons we have sustained the
rejection of claim 5, we likewise sustain the rejections of claims 20 and 21.

Dependent claim 232
Claim 23 recites, “wherein said sub-topics are selected from the group
consisting of individual roles, establishing behavioral norms, conflict
resolution, brainstorming techniques and meeting management.” App. Br.
17, Clms. App’x.
The Examiner finds that Test.com “discloses providing personal
development suggestions as well as training and development
recommendations based on assessments testing communications skills,
management skills, etc. This suggests, that sub-topics related to these areas
of testing may be distributed based on recommendations of training and
development suggested.” Ans. 12 (citing Test.com pg. 2, ¶ 3). Even so, the
Examiner asserts that “[t]he distributed subtopics do not have corresponding
structure and, are therefore, not considered to be system elements as positive
system elements must be structural in nature. Data by itself is not
considered a positive limitation on a system.” Ans. 12.

2 Claim 23 depends upon cancelled claim 22. App. Br. 17, Clms. App’x.
For purposes of this appeal, however, we presume claim 23 depends upon
independent claim 5.
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The Appellant contends that the “Examiner fails to address this
limitation and the only mention of subtopics by the Examiner does not
include the sub-topics listed above.” App. Br. 13; Reply Br. 6.
We agree with the Examiner that personal development suggestions,
as well as training and development recommendations based on assessments,
provided by Test.com, address the argued limitation. Furthermore, as
discussed above, we agree with the Examiner the “sub-topics” recited by
independent claim 5 and further limited by dependent claim 23 are directed
to limitations, which fail to impose any structural limitation on the
components of the claimed “collective educational system.”
To the extent Appellant acknowledges that Test.com mentions
subtopics, but does not include the sub-topics recited by claim 23, we note
that the different types of “sub-topics” are labels, as the Examiner points out,
which are directed to non-functional descriptive material. In other words,
the feature that Appellant maintains is not disclosed in Test.com is only
perceptible to humans, and does not alter or, in any way, affect the structure
or function of the claimed system. As such, it cannot be relied on to
distinguish over the prior art in terms of patentability. See In re Ngai, 367
F.3d 1336, 1339 (Fed. Cir. 2004); cf. In re Gulack, 703 F.2d 1381, 1385
(Fed. Cir. 1983) (when descriptive material is not functionally related to the
substrate, the descriptive material will not distinguish the invention from the
prior art in terms of patentability). See also Ex parte Nehls, 88 USPQ2d
1883, 1888 (BPAI 2008) (precedential).
Thus, we sustain the Examiner’s rejection of claim 23, under 35
U.S.C. § 103(a), as unpatentable over Test.com and Seymour.

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Independent claim 24 and dependent claim 25
The Appellant contends that the rejection of independent claim 24 is
improper for similar reasons discussed above with respect to independent
claim 5. App. Br. 7–9; Reply Br. 2–5. For similar reasons as those
discussed above, the Appellant’s contentions are unpersuasive. As such, we
sustain the Examiner’s rejection of independent claim 24, and its dependent
claim 25, under 35 U.S.C. § 103(a), as unpatentable over Test.com and
Seymour.

Dependent claims 28 and 29
Claim 28 recites, “wherein the mental functioning test result is a
categorization number.” App. Br. 18, Clms. App’x.
Claim 29 recites, “wherein the categorization number is selected from
numbers selected from a clock face.” App. Br. 19, Clms. App’x.
The Examiner asserts that claims 28 and 29 are merely directed to
data identifying the results of a test which are not related to any structural
limitations of the claimed system, and concludes, that “it would have been
obvious to a person of ordinary skill in the art at the time the invention was
made to include various types of test results because the specific type of test
result does not functionally alter or relate to the steps of the method and
merely labeling the information differently from that in the prior art does not
patentably distinguish the claimed invention.” Ans. 8 and 13.
The Appellant contends that the limitations recited by claims 28 and
29 “are indeed positive limitations and affect the system and operation of the
system by affecting the way the computer system operates and displays data.
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The manner in which data is displayed and the interface one has with such a
system are important elements in a system.” App. Br. 14–15; Reply Br. 7.
However, we again agree with the Examiner that the features of
claims 28 and 29 that Appellant maintains are not disclosed by the asserted
combination are merely directed to data, which are only perceptible to
humans, and do not alter or, in any way, affect the structure or function of
the claimed system. As such, they cannot be relied on to distinguish over
the prior art in terms of patentability. See In re Ngai, 367 F.3d at 1339; cf.
In re Gulack, 703 F.2d at 1385. Although Appellant asserts that the manner
in which data are displayed affect the way the computer system operates
(Reply Br. 7), Appellant has not shown where such a functional relationship
between the displayed results and the structural components of the
“collective educational system” of independent claim 24 exists. Thus non-
functional descriptive material, being useful and intelligible only to the
human mind, is given no patentable weight.
Accordingly, we sustain the Examiner’s rejection of claims 28 and 29,
under 35 U.S.C. § 103(a), as unpatentable over Test.com and Seymour.

DECISION
We affirm the Examiner’s rejection of claims 5, 6, 8, 19–21, 23–25,
28, and 29.
We reverse the Examiner’s rejection of claims 18 and 27.

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No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).

AFFIRMED-IN-PART

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