Ex Parte Putnam et al

Board of Patent Appeals and Interferences

Aug 26, 2009

09882292 (B.P.A.I. Aug. 26, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE 1
____________________ 2
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BEFORE THE BOARD OF PATENT APPEALS 4
AND INTERFERENCES 5
____________________ 6
7
Ex parte LAURA T. PUTNAM, 8
EILEEN C. SHAPIRO, 9
and 10
STEVEN J. MINTZ 11
____________________ 12
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Appeal 2009-001096 14
Application 09/882,292 15
Technology Center 3600 16
____________________ 17
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Decided: August 27, 2009 19
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Before MURRIEL E. CRAWFORD, JOSEPH A. FISCHETTI, and BIBHU 23
R. MOHANTY, Administrative Patent Judges. 24
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CRAWFORD, Administrative Patent Judge. 26
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DECISION ON APPEAL 29
Appeal 2009-001096
Application 09/882,292

2
STATEMENT OF THE CASE 1
Appellants appeal under 35 U.S.C. § 134 (2002) from a final rejection 2
of claims 3-62, 80-102, and 104-124. We have jurisdiction under 35 U.S.C. 3
§ 6(b) (2002). 4
Appellants invented systems and methods for analyzing job functions 5
across different industries, particularly for identifying employment options 6
for individuals and for identifying appropriately qualified job candidate 7
populations for employers (Spec. 1:12-15). 8
Claim 3 under appeal is further illustrative of the claimed invention as 9
follows: 10
3. A computerized method of identifying industries 11
for potential transfer of a job function capability with respect to 12
a first industry, the method comprising: 13
a. in a first digital computer process, identifying a job 14
function in the first industry; 15
b. in a second digital computer process, accessing a 16
database, stored on a digital storage medium, that correlates, for 17
the job function, the first industry with a set of second 18
industries with respect to which the job function capability is 19
potentially transferable; and 20
c. in a third digital computer process, using the database 21
to identify the second industries. 22
The prior art relied upon by the Examiner in rejecting the claims on 23
appeal is: 24
Salmon US 5,592,375 Jan. 7, 1997 25
Joao US 6,662,194 B1 Dec. 9, 2003 26
Appeal 2009-001096
Application 09/882,292

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The Examiner rejected claims 3-6, 8-12, 14, 15, 17, 19, 21, 23, 24, 28-1
30, 34-38, 40, 42, 43, 45, 47, 49, 51, 53-55, 59, 61, 80-102, 104, 105, 111, 2
112, 118, and 119 under 35 U.S.C. § 102(b) as being anticipated by Salmon; 3
rejected claims 7, 13, 16, 18, 20, 22, 25-27, 31-33, 39, 41, 44, 46, 48, 50, 52, 4
56-58, 60, and 62 under 35 U.S.C. § 103(a) as being unpatentable over 5
Salmon in view of Joao; and rejected claims 106-110, 113-117, and 120-124 6
under 35 U.S.C. § 103(a) as being unpatentable over Salmon. 7
We AFFIRM-IN-PART. 8
9
ISSUES 10
Did the Appellants show the Examiner erred in finding that Salmon 11
does not disclose accessing a database that correlates, for a job function, a 12
first industry with a set of second industries with respect to which the job 13
function capability is potentially transferable, as recited in independent 14
claims 3, 80, and 88? 15
Did the Appellants show the Examiner erred in rejecting dependent 16
claims 7, 13, 16, 18, 20, 22, 25-27, 31-33, 39, 41, 44, 46, 48, 50, 52, 56-58, 17
60, and 62, because Joao is not cited as remedying the deficiencies of the 18
independent claims from which they ultimately depend? 19
Did the Appellants show the Examiner erred in rejecting dependent 20
claims 106-110, 113-117, and 120-124, because the additional assertions set 21
forth by the Examiner are not cited as remedying the deficiencies of the 22
independent claims from which they ultimately depend? 23
Appeal 2009-001096
Application 09/882,292

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FINDINGS OF FACT 1
Specification 2
Appellants invented systems and methods for analyzing job functions 3
across different industries, particularly for identifying employment options 4
for individuals and for identifying appropriately qualified job candidate 5
populations for employers (Spec. 1:12-15). 6
7
Salmon 8
Salmon discloses that the industry, function, and skill set for each 9
resume item of a candidate is logically correlated in a database, and the data 10
for each resume item is kept logically separate from the data for the 11
candidate’s other resume items (col. 4, ll. 53-57). 12
A candidate with “‘Production experience in the Biotechnology 13
industry’” and “‘Design experience in the Aerospace industry’” should not 14
match a search for “‘Design experience in Biotechnology’” (col. 4, ll. 50-15
53). 16
A Buyer’s Profile may specify that industry and experience must 17
match exactly, or the Buyer’s Profile may merely give weights to the 18
industry or experience (col. 5, ll. 38-46; col. 9, ll. 40-56). 19
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PRINCIPLES OF LAW 21
Anticipation 22
A claim is anticipated only if each and every element as set forth in 23
the claim is found, either expressly or inherently described, in a single prior 24
art reference. Verdegaal Bros., Inc. v. Union Oil Co. of Cal., 814 F.2d 628, 25
631 (Fed. Cir. 1987). 26
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Obviousness 1
One of ordinary skill in the art would have found it obvious to update 2
the prior art device by using modern electronic components in order to gain 3
the commonly understood benefits of such adaptation, such as decreased 4
size, increased reliability, simplified operation, and reduced cost. The 5
combination is thus the adaptation of an old idea or invention using newer 6
technology that is commonly available and understood in the art. Leapfrog 7
Enterprises, Inc. v. Fisher-Price, Inc., 485 F.3d 1157, 1162 (Fed. Cir. 2007). 8
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ANALYSIS 10
Correlating First and Second Industries 11
We are persuaded of error on the part of the Examiner by Appellants’ 12
argument that Salmon does not disclose accessing a database that correlates, 13
for a job function, a first industry with a set of second industries with respect 14
to which the job function capability is potentially transferable, as recited in 15
independent claims 3, 80, and 88 (App. Br. 11-13, Reply Br. 2-4). Salmon 16
discloses logically correlating industry, function, and skill set for each 17
resume item of a candidate, e.g., classifying a candidate, based on their 18
resume, as having experience in a particular industry. Salmon also discloses 19
a user creating a Buyer Profile that weights industry and experience to create 20
matches. However, independent claims 3, 80, and 88 recite accessing a 21
database that correlates a first industry with a set of second industries. In 22
Salmon, the database merely stores a candidate’s assigned industry, and 23
does not correlate that candidate with another industry. While the user 24
creating a Buyer Profile may correlate a candidate with multiple industries, 25
independent claims 3, 80, and 88 recite that it is the database, and not the 26
Appeal 2009-001096
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user, that performs the correlation. As this is a rejection under § 102(b), and 1
Salmon does not disclose the aforementioned aspects of independent claims 2
3, 80, and 88, we are constrained to reverse this rejection. See Verdegaal 3
Bros., Inc. v. Union Oil Co. of Cal., 814 F.2d at 631. 4
5
Joao 6
The Appellants are correct in regard to the disclosure of Joao as it 7
relates to the rejection of dependent claims 7, 13, 16, 18, 20, 22, 25-27, 31-8
33, 39, 41, 44, 46, 48, 50, 52, 56-58, 60, and 62 (App. Br. 14). However, 9
Salmon discloses that the user creating a Buyer Profile correlates a candidate 10
with multiple industries by weighting industry and experience. One of 11
ordinary skill in the art would have found it obvious to automate, via the 12
database, the above-referenced correlating process performed by the user in 13
order to gain the commonly understood benefits of such adaptation, such as 14
saving the user the time spent creating the weightings in the Buyer Profile. 15
See Leapfrog Enterprises, Inc. v. Fisher-Price, Inc., 485 F.3d at 1162. 16
Accordingly, Salmon does render obvious accessing a database that 17
automatically correlates, for a job function, a first industry with a set of 18
second industries with respect to which the job function capability is 19
potentially transferable, as recited in independent claims 3, 80, and 88. 20
Insofar as the rationale for the basis of this rejection may differ from 21
that set forth by the Examiner, we denominate our affirmance of the 22
rejection of these claims as a new ground of rejection under 37 C.F.R. § 23
41.50(b) (2008). 24
Appeal 2009-001096
Application 09/882,292

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Claims 106-110, 113-117, and 120-124 1
Appellants are also correct in their argument relating to dependent 2
claims 106-110, 113-117, and 120-124 (App. Br. 14). However, for the 3
same reasons as set forth above with respect to dependent claims 7, 13, 16, 4
18, 20, 22, 25-27, 31-33, 39, 41, 44, 46, 48, 50, 52, 56-58, 60, and 62, 5
Salmon renders obvious accessing a database that automatically correlates, 6
for a job function, a first industry with a set of second industries with respect 7
to which the job function capability is potentially transferable, as recited in 8
independent claims 3, 80, and 88. 9
Insofar as the rationale for the basis of this rejection may differ from 10
that set forth by the Examiner, we denominate our affirmance of the 11
rejection of these claims as a new ground of rejection under 37 C.F.R. § 12
41.50(b) (2008). 13
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CONCLUSION OF LAW 15
On the record before us, Appellants have shown that the Examiner 16
erred in rejecting claims 3-6, 8-12, 14, 15, 17, 19, 21, 23, 24, 28-30, 34-38, 17
40, 42, 43, 45, 47, 49, 51, 53-55, 59, 61, 80-102, 104, 105, 111, 112, 118, 18
and 119. 19
On the record before us, Appellants have not shown that the Examiner 20
erred in rejecting claims 7, 13, 16, 18, 20, 22, 25-27, 31-33, 39, 41, 44, 46, 21
48, 50, 52, 56-58, 60, 62, 106-110, 113-117, and 120-124. 22
Appeal 2009-001096
Application 09/882,292

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DECISION 1
The decision of the Examiner to reject claims 3-6, 8-12, 14, 15, 17, 2
19, 21, 23, 24, 28-30, 34-38, 40, 42, 43, 45, 47, 49, 51, 53-55, 59, 61, 80-3
102, 104, 105, 111, 112, 118, and 119 is reversed. 4
The decision of the Examiner to reject claims 7, 13, 16, 18, 20, 22, 25-5
27, 31-33, 39, 41, 44, 46, 48, 50, 52, 56-58, 60, 62, 106-110, 113-117, and 6
120-124 is affirmed. 7
We use our authority under 37 C.F.R. § 41.50(b) to enter a new 8
rationale for rejecting claim 7, 13, 16, 18, 20, 22, 25-27, 31-33, 39, 41, 44, 9
46, 48, 50, 52, 56-58, 60, and 62 under 35 U.S.C. § 103(a) as unpatentable 10
over Salmon in view of Joao. 11
We use our authority under 37 C.F.R. § 41.50(b) to enter a new 12
rationale for rejecting claim 106-110, 113-117, and 120-124 under 35 U.S.C. 13
§ 103(a) as unpatentable over Salmon. 14
37 C.F.R. § 41.50(b) provides that, “[a] new ground of rejection 15
pursuant to this paragraph shall not be considered final for judicial review.” 16
Regarding the new ground of rejection, Appellants must, WITHIN 17
TWO MONTHS FROM THE DATE OF THE DECISION, exercise one of 18
the following options with respect to the new ground of rejection, in order to 19
avoid termination of the appeal as to the rejected claims: 20
(1) Reopen prosecution. Submit an appropriate amendment of the 21
claims so rejected or new evidence relating to the claims so rejected, 22
or both, and have the matter reconsidered by the examiner, in which 23
event the proceeding will be remanded to the examiner. . . [; or] 24
(2) Request rehearing. Request that the proceeding be reheard under 25
§ 41.52 by the Board upon the same record. . . . 26
Appeal 2009-001096
Application 09/882,292

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No time period for taking any subsequent action in connection with 1
this appeal may be extended under 37 C.F.R. § 1.136(a) (2007). 2
AFFIRMED-IN-PART, 37 C.F.R. § 41.50(b) 3
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Sunstein Kann Murphy & Timbers LLP 11
125 SUMMER STREET 12
BOSTON, MA 02110-1618 13
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