Ex Parte Phillips et al

Patent Trial and Appeal Board

Jun 28, 2016

13609059 (P.T.A.B. Jun. 28, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/609,059 09/10/2012 Robert Edwin Phillips
22852 7590 06/30/2016
FINNEGAN, HENDERSON, FARABOW, GARRETT & DUNNER
LLP
901 NEW YORK A VENUE, NW
WASHINGTON, DC 20001-4413
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.
12060. 0001-00000 1715
EXAMINER
CASLER, TRACI
ART UNIT PAPER NUMBER
3629
NOTIFICATION DATE DELIVERY MODE
06/30/2016 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):
regional-desk@finnegan.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ROBERT EDWIN PHILLIPS and MONICA CHANDRA
Appeal2014-005444
Application 13/609,0591
Technology Center 3600
Before ANTON W. PETTING, JOSEPH A. FISCHETTI, and
NINA L. MEDLOCK, Administrative Patent Judges.
FISCHETTI, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants seek our review under 35 U.S.C. § 134 of the Examiner's
final rejection of claims 1, 3, 4, 7-9, 11-14, 16, 17, 19, 21, 22, 24, 27, and
29-32. We have jurisdiction under 35 U.S.C. § 6(b ).
SUMMARY OF DECISION
We REVERSE.
1 Appellants identify Robert Edwin Phillips and Monica Chandra as the real
party in interest. (Br. 3).
Appeal2014-005444
Application 13/609,059
THE INVENTION
Appellants claim "methods and systems for providing career advice to
college students ... by facilitating career network connections." (Spec.,
para 1).
Claim 1 reproduced below, is representative of the subject matter on
appeal.
1. A computer-implemented method, performed by one or more
computing processors, of providing career advice to a college
student, the method comprising:
receiving two or more user vocational interests of the
college student, wherein
the two or more user vocational interests are selected by
the college student from a list of vocational interests, and
each of the user vocational interests is associated with a
vocational interest vector comprising six elements
corresponding to Holland codes;
generating, by the one or more computing processors, a
user interest vector associated with the college student based on
averaging the vocational interest vectors associated with the
two or more selected user vocational interests;
receiving two or more affiliate vocational interests of a
college affiliate, wherein
the two or more affiliate vocational interests are selected
by the college affiliate from a list of vocational interests, and
each affiliate vocational interest is associated with a
vocational interest vector comprising six elements
corresponding to Holland codes;
generating, by the one or more computing processors, an
affiliate interest vector associated with the college affiliate
based on averaging the vocational interest vectors associated
with the two or more selected affiliate vocational interests;
computing, by the one or more computing processors, a
distance between the user interest vector and the affiliate
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Appeal2014-005444
Application 13/609,059
interest vector based on a sum of squares of differences
between each element of the user interest vector and a
corresponding element of the affiliate interest vector; and
generating a recommendation of an advice connection
based on the computed distance.
THE REJECTION
The Examiner relies upon the following as evidence of
unpatentability:
The National Center for O*NET Development,
O*NET® Interest Profiler Short Form Psychometric Characteristics:
Summary (2010) (hereinafter "O*NET Selvakummar").
Patrick J. Rottinghaus, Diverse Pathways of Psychology Majors:
Vocational Interests, Self-Efficacy, and Intentions; in The Career
Development Quarterly 55, 1 (Sep 2006) and ProQuest Central 85
(hereinafter "Rottinghaus").
The following rejections are before us for review. 2
rejected under 35 U.S.C. 112, first paragraph, as failing to comply with the
written description requirement.
2 In the event of further prosecution of this application (including any review
for allowance), the Examiner may wish to review the claims for compliance
under 35 U.S.C. § 101 in light of the most recent Patent Office guidance on
§ 101 found in the May 4, 2016 Memorandum to the Examining Corps,
titled "Formulating a Subject Matter Eligibility Rejection and Evaluating the
Applicant's Response to a Subject Matter Eligibility Rejection," and the
"July 2015 Update on Subject Matter Eligibility," 80 Fed. Reg. 45429 (July
30, 2015), which supplements the "2014 Interim Guidance on Patent Subject
Matter Eligibility," 79 Fed. Reg. 74618 (Dec. 16, 2014), and the
"Preliminary Examination Instructions in view of the Supreme Court
Decision in Alice Corporation Pty. Ltd. v. CLS Bank International, et al.,"
Memorandum to the Examining Corps, June 25, 2014.
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Appeal2014-005444
Application 13/609,059
Claims 1,3,4, 7-9, 11, 12, 14, 16, 17, 19,21,22,24,27,and29-32
are rejected under 35 U.S.C. 103(a) as being unpatentable over O*NET
Selvakummar and Rottinghaus.
Claim 13 is rejected under 35 U.S.C. 103(a) as being unpatentable
over O*NET Selvakummar and Rottinghaus, as applied to claims 1, 3, 4, 7-
9, 11, 12, 14, 16, 17, 19,21,22,24,27,and29-32above,andfurtherin
view of Official Notice.
ANALYSIS
35 USC§ 112, First Paragraph Rejection
We will not sustain the rejection of claims 1, 3, 4, 7-9, 11-14, 16, 17,
19, 21, 22, 24, 27, and 29-32 under 35 U.S.C. § 112, first paragraph.
The Examiner found that
The claims are directed to generating an interest vector based
on the vocational interests of the users and the interest vectors
are the "average of the vocational interests[.]" However the
appiicants claims state that the vocationai interests are Hoiiand
Codes which are letter codes RIASEC of which are associated
with the users interests. The disclosure in i-f 20 states they are
averaged however it is unclear how one would "average" a
letter. Applicants (sic) claims do not assign a number but rather
a code to the interests.
(Final Act. 2-3).
Appellants however argue that,
Now here do claims 1, 14, or 22 recite that "vocational interests
are Holland codes, which are letter codes RIASEC," as the
Examiner asserts (emphasis added). Id. Instead, claims 1, 14,
and 22 recite a vocational interest vector (not a vocational
interest), which comprises "six elements that correspond to
Holland codes" (not that the elements are actual Holland Code
letters).
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Appeal2014-005444
Application 13/609,059
(Appeal Br. 8).
We agree with Appellants that because the claims use the term
"correspond" and do not recite that the vectors are Holland codes, we find it
reasonable from this claim language that the letter codes correspond to
numerical values, and not that the letters themselves are numbers. We will
thus not sustain the rejection under 35 U.S.C. § 112, first paragraph.
35 U.S.C. § 103 REJECTION
Each of independent claims 1, 14, and 22 requires in one form or
another:
generating, by the one or more computing processors, a user interest
vector associated with the college student based on averaging the vocational
interest vectors associated with the two or more selected user vocational
interests;
receiving two or more affiliate vocational interests of a college
affiliate, wherein the two or more affiliate vocational interests are selected
by the college affiliate from a list of vocational interests, and
each affiliate vocational interest is associated with a vocational
interest vector comprising six elements corresponding to Holland codes;
generating, by the one or more computing processors, an affiliate
interest vector associated with the college affiliate based on averaging the
vocational interest vectors associated with the two or more selected affiliate
vocational interests; ....
Appeal Br. 20 (Claims App'x).
The Examiner found that these limitations are disclosed by
Rottinghaus in that:
The examiner notes an example of Personal inventory test is
provide to show how one scores when two or categories score
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Appeal2014-005444
Application 13/609,059
the same for enablement purposes. The example test states it
was derived from the 2008 inventory of ONET and when two
scores are primary you are 'equally divided' Read to mean
averaged). It would have been obvious to one skilled in the art
at the time of invention to combine Rottinghaus's means of
measuring Holland Codes with ONET as the references are
both directed towards improvement/solving the same problem
of improving how to provide career guidance to individuals
with the use of personal inventory skills.
(Final Act. 4).
We disagree with the Examiner. Although we find that the equally
divided aspect of the Personal inventory test scores would meet the
averaging limitation of the claims, the disclosure in Rottinghaus still does
not equate to the claimed averaging is that of the vocational interest vectors
selected for each of the user vocational interests and the affiliate vocational
interests. Furthermore, nowhere in any of ONET, Rottinghaus and
Selvakummar is there a disclosure of computing a distance between the user
interest vector and the affiliate interest vector based on a sum of squares of
differences between each element of the user interest vector and a
corresponding element of the affiliate interest vector. At best, Rottinghaus
discloses, at page 87, squared values of additional variables by intention
group which exceed a threshold, but nothing is disclosed about these squared
values being derived from the user interest vector and the affiliate interest
vector as required by the independent claims.
Thus, we will not sustain the rejection of independent claims 1, 14,
and 22.
Because claims 3, 4, 7-9, 11, 12, 16, 17, 19, 21, 24, 27, and 29-32
depend from one of claims 1, 14, and 22, and because we cannot sustain the
rejection of claims 1, 14 and 22, the rejection of claims 3, 4, 7-9, 11, 12, 16,
17, 19, 21, 24, 27, and 29-32 likewise cannot be sustained.
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Appeal2014-005444
Application 13/609,059
Claim 13 ultimately depends from claim 1. The rejection of claim 13
based on Official Notice, in combination with O*NET Selvakummar and
Rottinghaus, does not cure the deficiency in the Examiner's rejection of
claim 1. Therefore, we also cannot sustain the Examiner's rejection of
claim 13.
CONCLUSIONS OF LAW
We conclude the Examiner did err in rejecting claims 1, 3, 4, 7-9, 11-
14, 16, 17, 19, 21, 22, 24, 27, and 29-32 under 35 U.S.C. § 112.
We conclude the Examiner did err in rejecting claims 1, 3, 4, 7-9, 11-
14, 16, 17, 19, 21, 22, 24, 27, and, 29-32 under 35 U.S.C. § 103(a).
DECISION
The decision of the Examiner to reject claims 1, 3, 4, 7-9, 11-14, 16,
-1,..., -1 A I"\ -1 l"\I"\ I"\ Al I"\,..,. 1 I"\/'"'\ ,...I"\ • 1
l 1, l 'J, Li, LL, L<+, L 1, ana L'J-jL 1s reversea.
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)(l )(iv).
REVERSED
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