Ex Parte Morariu et al

Board of Patent Appeals and Interferences

Aug 29, 2012

10427367 (B.P.A.I. Aug. 29, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte JANIS A. MORARIU, CATHERINE P. RICKELMAN,
JANELL STRAACH, MARGARET A. STRONG, CLAUDIA L. WOODY,
and ELIZABETH E. WRIGHT
____________

Appeal 2010-005154
Application 10/427,367
Technology Center 3700
____________

Before KEN B. BARRETT, CHARLES N. GREENHUT, and
MICHAEL C. ASTORINO, Administrative Patent Judges.

ASTORINO, Administrative Patent Judge.

DECISION ON APPEAL

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STATEMENT OF THE CASE
The Appellants appeal under 35 U.S.C. § 134 from the Examiner’s
decision finally rejecting claims 19-22, 24-30, and 32-39 under 35 U.S.C.
§ 103(a) as unpatentable over Jay (US 5,823,789, iss. Oct. 20, 1998) and
Dowdell (US 2004/0132000 A1, pub. Jul. 8, 2004). Claims 1-18, 23, and 31
have been canceled. We have jurisdiction over the appeal under 35 U.S.C.
§ 6(b). We AFFIRM.

CLAIMED SUBJECT MATTER
Claims 19, 27, and 35 are the independent claims on appeal. Claim
35, reformatted and reproduced below, is illustrative of the subject matter on
appeal.
35. A design repository for designing an
educational program, comprising:
a plurality of modules that each include a
framework for developing educational content for
the educational program,
wherein the plurality of modules are
organized in the design repository in a column-row
matrix according to a plurality of delivery
strategies that each indicate a different type of
interaction in delivering educational content to a
student and a set of proficiency levels,
at least one of the plurality of delivery
strategies involving in-person instruction or
mentoring by an instructor.

OPINION
The Appellants argue claims 19-22, 24-30, and 32-39 as a group. See
Br. 4-7. We select independent claim 35 as the representative claim and
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claims 19-22, 24-30, 32-34, and 36-39 stand or fall with claim 35. See 37
C.F.R. § 41.37(c)(1)(vii) (2011).
The Examiner finds Jay discloses a design repository as called for in
claim 35, except that Jay “does not disclose [(1)] where the plurality of
modules are organized in the design repository in a column-row matrix and
[(2)] where the content is organized according to a set of delivery strategies
for delivery of educational content to a student and at least one of the
plurality of delivery strategies involving in-person instruction or mentoring
by an instructor.” Ans. 7 (emphasis omitted). As for Jay’s first non-
disclosed claim limitation, the Examiner determines that organizing a
depository in a column-row matrix would have been “a mere design
consideration which fails to patentably distinguish over the prior art of Jay.”
Ans. 7. As for Jay’s second non-disclosed claim limitation, the Examiner
finds that Dowdell’s plurality of delivery strategies include mentoring by an
instructor, and determines that incorporating this teaching into Jay’s design
repository would have “accommodate[d] students with a broad range of
education levels and geographic areas and allow a student to ask questions to
both the instructor and the rest of her classmates.” Ans. 8. For the
foregoing reasoning, we find that the Examiner established an initial prima
facie case of obviousness, and the burden shifts to the Appellants to come
forward with evidence or argument to rebut the Examiner’s rejection. In re
Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992); see also In re Piasecki, 745
F.2d 1468, 1472 (Fed. Cir. 1984). Obviousness is then determined on the
basis of the evidence as a whole and the relative persuasiveness of the
arguments. Id.
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The Appellants contend that (1) “the organization of the design
repository of the claimed invention is not merely a design choice” (Br. 5);
(2) the “two” cited passages of Dowdell “do not teach organization
according to learning strategies” (Br. 5-6); (3) Dowdell does not disclose “an
instructor instructing a student in-person instruction, e.g., located in the
same location as the student” (Br. 7); and, (4) Dowdell’s training
technologies “fail to teach or suggest the four delivery strategies of the
claimed invention” (Br. 7).
As for the Appellants’ first contention, the Appellants contend that the
organization of the repository in a column-row matrix “has practical value
by allowing for easy access to the modules contained therein.” Br. 5. In
response, the Examiner determines that the Appellants’ contention “does not
show/prove the advantage of having the plurality of modules organized in a
design repository in a column-row matrix.” Ans. 10. The Examiner also
determines that:
[t]he Applicant has not disclosed that having the
plurality of modules organized in the design
repository in a column-row matrix provides an
advantage, is used for a particular purpose, or
solves a stated problem. One of ordinary skill in
the art, furthermore, would have expected, Jay’s
correlation system and the applicant’s
[(Appellants’)] invention, to perform equally well
with either method of storing the modules because
both methods would perform the same function of
being able to easily find material to be presented.
Ans. 7. See In re Kuhle, 526 F.2d 553, 555 (CCPA 1975) (use of claimed
feature solves no stated problem and presents no unexpected result and
“would be an obvious matter of design choice within the skill of the art”
(citations omitted)). See also In re Chu, 66 F.3d 292, 298-99 (Fed. Cir.
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1995) (“design choice” is appropriate where the applicant fails to set forth
any reason why the differences between the claimed invention and the prior
art would result in a different function). The Appellants do not cogently
explain how the “easy” access provided by organizing the repository in a
column-row matrix is different than Jay’s correlation system. For the above
reasons, we agree with the Examiner that the organization of the repository
in a column-row matrix as called for in claim 35 is nothing more than an
obvious matter of design choice in view of Jay’s correlation system. Ans. 7.
Furthermore, to the extent that the Appellants consider the Examiner’s
reasoning to amount to a factual finding by taking Official Notice, we agree
with the Examiner that such is not the case. Ans. 10-11; contra Br. 5.
As for the Appellants’ second contention, we note that the Appellants’
assertion that the Examiner only cited two portions in the Final Rejection is
incorrect. Rather, the Examiner cited to more than two of Dowdell’s
passages for correspondence to a plurality of delivery strategies as called for
in claim 35. Br. 5-6. In addition to citing to paragraphs 0034 & 0038, the
Examiner also cited to the Abstract, which describes Dowdell’s invention as
“[a] learning system[, i.e., Supply Chain Learning System (SCLS) 100, that]
utilizes a blended learning approach that matches various educational
delivery techniques to the appropriate learning materials, time constraints,
and skill level of the end user” (emphasis added). Ans. 8, 11; see also
Dowdell’s paras. [0012], [0034]. Dowdell’s delivery techniques include
those described under the heading “Training Type” in Figure 8, i.e.,
“eLearning TBD”, “Online Self-Study”, “Expert On-Demand”,
“Workshop”, “eCourse”, and “Expert Audio/Web.” See also paras. [0034],
[0035], [0037], [0038], [0045], and [0046]. Further, as depicted in Figure 8,
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a portal of SCLS 100 includes the ability to search by training type. See
Dowdell, paras. [0029], [0056]. The Appellants do not cogently explain
how the blended learning approach matching various educational delivery
techniques disclosed in Dowdell’s Abstract, as understood in light of
relevant portions of Dowdell’s disclosure with respect to delivery
techniques, does not correspond to the claimed plurality of modules directed
to a plurality of delivery strategies as called for in claim 35.
As for the Appellants’ third contention, claim 35 recites “at least one
of the plurality of delivery strategies involving in-person instruction or
mentoring by an instructor.” Emphasis added. The use of the disjunctive
term “or” requires the Examiner to find that Dowdell discloses either in-
person instruction or mentoring by an instructor, but not both. Ans. 11.
Although the Appellants contend that Dowdell does not disclose in-person
instruction, the Appellants do not contest the Examiner’s finding that
Dowdell discloses a delivery strategy that includes mentoring by an
instructor. Ans. 12. Indeed, Dowdell discloses a collaboration component
where participants use discussion forums 420 to discuss issues with experts,
which adequately supports the Examiner’s finding that Dowdell discloses
“mentoring by an instructor.” Ans. 12; see Dowdell, para. [0045].
As for the Appellants’ fourth contention, the relevant portion of claim
35 recites: “a plurality of delivery strategies that each indicate a different
type of interaction in delivering educational content to a student . . . , at least
one of the plurality of delivery strategies involving in-person instruction or
mentoring by an instructor.” As such, the Appellants’ argument that
“Dowdell fail[s] to teach or suggest the four delivery strategies of the
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claimed invention” (Br. 7) is not commensurate with the language of claim
35, and as such, is not persuasive of error.
For the foregoing reasons, the Examiner’s rejection of claims 19-22,
24-30, and 32-39 as unpatentable over Jay and Dowdell is sustained.

DECISION
We AFFIRM the rejections of claims 19-22, 24-30, and 32-39.
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

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