Ex Parte Morariu et al

Patent Trial and Appeal Board

Apr 19, 2016

10873346 (P.T.A.B. Apr. 19, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
10/873,346 0612212004 Janis A. Morariu
45092 7590 04/21/2016
HOFFMAN WARNICK LLC
540 Broadway
4th Floor
ALBANY, NY 12207
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
END920040020US 1 5831
EXAMINER
UTAMA, ROBERT J
ART UNIT PAPER NUMBER
3715
NOTIFICATION DATE DELIVERY MODE
04/21/2016 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address( es):
PTOCommunications@hoffmanwarnick.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JANIS A. MORARIU, STEVEN W. STAPEL,
JANELL STRAACH, and ELIZABETH E. WRIGHT
Appeal2013-003144
Application 10/873,346
Technology Center 3700
Before MICHAEL C. ASTORINO, NINA L. MEDLOCK, and
SCOTT C. MOORE, Administrative Patent Judges.
ASTORINO, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
The Appellants appeal under 35 U.S.C. § 134 from the Examiner's
decision rejecting claims 1-22 and 24-30. 1 We have jurisdiction over the
appeal under 35 U.S.C. § 6(b).
We REVERSE.
1 Although the Examiner indicates that claims 1-30 are rejected (Final
Act. 1, PTOL-326 (item 7)), claim 23 is not included in any ground of
rejection. As such, we do not understand claim 23 to be a rejected claim.
Appeal2013-003144
Application 10/873,346
Claimed Subject Matter
Claims 1, 8, 16, and 24 are the independent claims on appeal.
Claim 1, reproduced below with emphasis added, is illustrative of the subject
matter on appeal.
1. A computer-implemented method for providing an
educational program in an educational content design and
distribution environment, comprising:
providing, on a computer device, a plurality of learning
objects, each learning object in the plurality of learning objects
having educational content used to educate an intended recipient,
the plurality of learning objects being stored in a content
repository having a plurality of blocks in a row-column matrix
arranged according to a set of proficiency levels and a set of
delivery strategies;
developing, using the computer device, a solution scenario
that defines a framework, independent of the plurality of learning
objects, for an entirety of the educational program by indicating
an order of each of the plurality of learning objects and any
relationships between individual ones of the plurality learning
objects by way of contextual data, the contextual data including
informational content that adapts a first learning object of the
plurality of learning objects and a second learning object of the
plurality of learning objects for specific use with one another
within the educational program, wherein the solution scenario is
maintained separately from each of the plurality of learning
objects;
aggregating, with the computer device, the plurality of
learning objects using the solution scenario to yield the
educational program;
developing, using the computer device, a second solution
scenario having the first learning object and a third learning
object but not the second learning object and having different
contextual data that adapts the first learning object and the third
learning object for specific use with one another, wherein the
solution scenario is maintained separately from each of the
plurality of learning objects;
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Application 10/873,346
aggregating, with the computer device, the plurality of
learning objects using the second solution scenario to yield a
second educational program; and
outputting, from the computer device, results from the
aggregating.
Rejections2
I. Claims 1, 2, 7-9, 15-17, 24, 25, and 30 are rejected under
35 U.S.C. § 103(a) as unpatentable over Jay (US 5,823,789, iss. Oct. 20,
1998), Austin (US 6,615,220 B 1, iss. Sept. 2, 2003), and Theilmann
(US 2003/0152903 Al, pub. Aug. 14, 2003).
II. Claims 3, 4, 6, 10-13, 18-21, 26, 27, and 29 are rejected under
35 U.S.C. § 103(a) as unpatentable over Jay, Austin, Theilmann, and Elzinga
(US 2005/0026131 Al, pub. Feb. 3, 2005). 3
III. Claims 5, 14, 22, and 28 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Jay, Austin, Theilmann, Elzinga, and Hekmatpour
2 The Examiner fails to include the Theilmann patent as a reference in the
statement of the grounds of rejection for Rejections II and III, (see Final
Act. 7, 8, Ans. 3), which we determine to be a minor oversight. Rejection I
includes independent claims 1, 8, 16, and 24, which includes Theilmann' s
teachings. Rejections II and III reject claims that only depend from one of
independent claims 1, 8, 16, and 24 (Appeal Br., Claims App.). As such, we
understand that the Examiner relied on Theilmann' s teachings for
Rejections II and III as well.
3 We understand Rejection II to include a rejection of claim 21 (Final
Act. 8) and determine that the failure to include claim 21 in the statement of
the ground of rejection as a minor oversight.
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Application 10/873,346
ANALYSIS
The Appellants contend that the Examiner fails to properly reject
independent claims 1, 8, 16, and 24 under 35 U.S.C. § 103(a) as
unpatentable over Jay, Austin, and Theilmann. See Appeal Br. 8-10, Reply
Br. 1-2. In particular, the Appellants contend that the Examiner's finding
that Theilmann teaches "informational content that adapts a first learning
object of the plurality of learning objects and a second learning object of the
plurality of learning objects for specific use with one another within the
educational program," as recited in claims 1, 8, 16, and 24 is inadequately
supported. See, e.g., Reply Br. 2. The Appellants' contentions are
persuasive.
The Examiner's finds that Theilmann's item (Java Basics) 905 and
item (I/O programming in Java) 920 correspond to the first learning object
and the second learning object, respectively; and Theilmann's paragraphs 89
and 90 include disclosure that corresponds to the claimed requirement of
informational content that adapts learning objects for specific use with one
another within the educational program. See Final Act. 4, Ans. 4. The
Examiner cites to Theilmann's Abstract and paragraph 23 to bolster the
finding that Theilmann teaches "informational content," as required by the
claims. See Ans. 4--5.
However, the Examiner fails to explain how the disclosure of
Theilmann's Abstract and/or paragraphs 23, 89, and 90 corresponds to
"informational content that adapts a first learning object of the plurality of
learning objects and a second learning object of the plurality of learning
objects for specific use with one another within the educational program," as
recited in claims 1, 8, 16, and 24, where the first and second learning objects
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Application 10/873,346
are item (Java Basics) 905 and item (l/O programming in Java) 920,
respectively. Hence, we are forced to speculate how the Examiner is
applying Theilmann's disclosure. As such, the Examiner's finding that
Theilmann' s disclosure teaches "informational content," as required by the
claims, is inadequately supported.
Further, because the Examiner solely relies on Theilmann's disclosure
to correspond to "informational content," as required by the claims, we are
constrained to reverse the Examiner's rejection of independent claims 1, 8,
16, and 24, and their dependent claims, as unpatentable over Jay, Austin, and
Theilmann. Additionally, the remaining rejections of dependent claims 3---6,
10-14, 18-22, and 26-29 rely on the same inadequately supported finding
discussed above. As such, we reverse the Examiner's rejections of these
claims as well.
DECISION
We REVERSE Examiner's decision rejecting claims 1-22 and 24--30.
REVERSED
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