Ex Parte RaniereDownload PDFPatent Trial and Appeal BoardDec 9, 201610358902 (P.T.A.B. Dec. 9, 2016) Copy Citation United States Patent and Trademark Office 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 APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO. 10/358,902 02/04/2003 Keith A. Raniere FIRST.3340-NY 8548 5409 7590 12/13/2016 SCHMEISER, OLSEN & WATTS 22 CENTURY HILL DRIVE SUITE 302 LATHAM, NY 12110 EXAMINER UTAMA, ROBERT J ART UNIT PAPER NUMBER 3715 NOTIFICATION DATE DELIVERY MODE 12/13/2016 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): AZ5409@IPLAWUSA.COM PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte KEITH A. RANIERE Appeal 2014-009232 Application 10/358,902 Technology Center 3700 Before LINDA E. HORNER, THOMAS F. SMEGAL, and GORDON D. KINDER, Administrative Patent Judges. HORNER, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Keith A. Raniere (Appellant)1 seeks our review under 35 U.S.C. § 134 of the Examiner’s decision, as set forth in the Non-Final Office Action, dated September 5, 2013 (“Non-Final Act.”), rejecting claims 237 and 238. Claims 1-236 are canceled. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. 1 Appellant identifies the real party in interest as First Principles, Inc. Appeal Br. 1. Appeal 2014-009232 Application 10/358,902 CLAIMED SUBJECT MATTER Appellant’s claimed subject matter relates to “an efficient processing of an evaluation of a course, its teacher(s), and its student(s).” Spec. 5,11. 5- 6. Claims 237 and 238 are independent. Claim 237 is reproduced below. 237. A method for processing data for evaluating a teacher of at least one session of a course, the course being taught at a first geographic location, comprising: providing a first electronic device with a system for a selection of a mode for evaluation, the mode for evaluation being an observation mode; initiating a questionnaire for evaluating the teacher of the course, by the first electronic device, at a start of the at least one session of the course, the questionnaire including a plurality of evaluation items relevant to the observation mode, the plurality of items relating to a performance of the teacher of the course; receiving, by the first electronic device, data, wherein the data reflect a first response to the plurality of evaluation items of the during the at least one session of the course; providing a second electronic device; transmitting, by the first electronic device, the entered data in real time during the at least one session to the second electronic device, wherein the second electronic device is selected from the group consisting of a database, a computer, and combinations thereof; updating, by the second electronic device, in real time the entered data during the at least one session transmitted by the first electronic device; analyzing, by the second electronic device, in real time the data during the at least one session transmitted by the first electronic device during the at least one session; 2 Appeal 2014-009232 Application 10/358,902 receiving, by the second device, an additional data during the at least one session, wherein the additional data reflect a second response to the plurality of evaluation items, wherein an aggregate data comprise the data received by the second device and the additional data received by the second device; statistically analyzing, by the second device executing an algorithm, the aggregate data in real time during the at least one session, resulting in a statistical analysis of the aggregate data, wherein the aggregate data is normalized in accordance with a statistical criterion; determining, by the second electronic device, during the at least one session, an effective performance of said teacher; and displaying, with an output device coupled to the second device, during the at least one session, the effective performance of the teacher of the course based upon the data reflected by the first and second responses to at least one of the plurality of evaluation items, wherein the output device coupled to the second device is located in a second geographic location that is different from the first geographic location. REJECTIONS The Final Action included the following grounds of rejection: 1. Claims 237 and 238 under 35 U.S.C. § 102(b) as anticipated by the Inventor’s Declaration under 37 C.F.R. § 1.131 filed on April 13, 2012 (“Inventor Dec.”).2 3 2 According to the Examiner, the Inventor Declaration contains evidence that “it [is] possible that the invention as currently claimed was readily available and [was] disclosed to the general public . . . prior to the 102(b) date for the instant application which is 02/04/2002.” Final Act. 2 (citing evidence in Exhibit C to the Inventor Declaration that discusses asserted actual reduction to practice of invention prior to December 14, 2001). 3 Appeal 2014-009232 Application 10/358,902 2. Claims 237 and 238 under 35 U.S.C. § 103(a) as unpatentable over Pre-Grant Publication US 2003/0113698 Al, published June 19, 2003 (“Von der Geest”) and U.S. Patent US 6,789,047 Bl, issued September 7, 2004 (“Woodson”). ANALYSIS First Ground of Rejection 35 U.S.C. § 102(b) provides that “[a] person shall be entitled to a patent unless . . . the invention was ... in public use or on sale in this country, more than one year prior to the date of the application for patent in the United States.” The application before us on appeal was filed on February 4, 2003. Thus, Appellant would not be entitled to a patent if the claimed invention was in public use or on sale in the United States prior to February 4, 2002. The Examiner determined Exhibit C of the Inventor Declaration “shows that the invention was used in [the United States] prior to . . . [February 4, 2002].” Final Act. 2.3 The Inventor Declaration was directed to showing actual reduction to practice of now canceled claims and was 3 The Examiner further found the activity engaged in by Karen Unterreiner, as set forth in Exhibit C to the Inventor Declaration, amounted to a possible public use of the invention prior to the critical date. Final Act. 2. Appellant asserts the participants were under a duty of confidentiality, and thus the use was not public. Inventor Dec., para. 6. We need not reach this issue because, for the reasons discussed infra, we find the evidence of actual reduction to practice is not commensurate with the subject matter of the claims on appeal. 4 Appeal 2014-009232 Application 10/358,902 submitted prior to the introduction of new claims 237 and 238 in the application.4 5The Examiner determined, however, “[t]he newly amended claim[s] also do[] not differ significantly from the cancelled claim[s]” and thus took the position “it [is] possible that the invention as currently claimed was readily available and [was] disclosed to the general public.” Ans. 5. Thus, the Examiner’s anticipation rejection appears to be premised upon the Appellant showing the subject matter now claimed in appealed claims 237 and 238 was actually reduced to practice more than one year before the application filing date. On the other hand, in examination of the Inventor Declaration for purposes of removing Von der Geest as a reference, the Examiner stated “appellant’s arguments for establishing actual reduction [to] practice are not commensurate to the scope of the claim[s]” because “[n]ot all of the claim limitations found in either claim 237 or claim 238 have any basis [in] the appellant’s own declaration.” Id. In particular, the Examiner noted Appellant’s element-by-element comparison of the claimed subject matter to the evidence of actual reduction to practice, provided in Exhibit E to the Inventor Declaration, does not show evidence of several steps of claims 237 and 238. Id. at 4-5. Appellant attempts to show, by the Inventor Declaration, an actual reduction to practice of the invention prior to December 14, 2001 (the effective date of Von der Geest). In the Declaration, the inventor testifies 4 New claims 237 and 238 were added by an amendment filed on April 11, 2013, well after the date of the Inventor Declaration. 5 Appeal 2014-009232 Application 10/358,902 that prior to December 14, 2001, he conceived the course evaluation method “as claimed in the above-referenced application” and “the electronic course evaluation method as claimed in the above-identified patent application was reduced to practice.” Inventor Dec., paras. 7, 8 (incorporating by reference a prior Declaration under 37 C.F.R. § 1.131 submitted by Appellant on March 12, 2010 as evidence of conception (hereinafter “Initial Inventor Declaration”)). Appellant further provides statements in the Declaration, supported by exhibits, to show actual reduction to practice of the claimed method. Id., paras. 9-17 (citing Exs. A-O). The deficiency with these Declarations and supporting exhibits, as noted by the Examiner (Ans. 3), is that the course evaluation method “as claimed” in the application at the time of filing both the Inventor Declaration and the Initial Inventor Declaration differs from the course evaluation method as presently claimed in claims 237 and 238 before us on appeal. For example, Exhibit E submitted with the Inventor Declaration purports to provide “an element-by-element comparison of the claim elements and the steps that were performed during the course evaluation method prior to December 14, 2001.” Inventor Dec., para. 9. The steps included in the element-by-element comparison, however, omit any discussion of the following steps in claim 237: statistically analyzing, by the second device executing an algorithm, the aggregate data in real time during the at least one session, resulting in a statistical analysis of the aggregate data, wherein the aggregate data is normalized in accordance with a statistical criterion; 6 Appeal 2014-009232 Application 10/358,902 determining, by the second electronic device, during the at least one session, an effective performance of said teacher; and displaying, with an output device coupled to the second device, during the at least one session, the effective performance of the teacher of the course based upon the data reflected by the first and second responses to at least one of the plurality of evaluation items, wherein the output device coupled to the second device is located in a second geographic location that is different from the first geographic location. See Ans. 4 (Examiner finding Exhibit E analysis does not show evidence of “statistically analyzing” step and the last “wherein” clause regarding different geographic locations). Likewise, the steps included in the element- by-element comparison provided in Exhibit E, omit any discussion of the following steps in claim 238: determining, by the second electronic device, during the at least one session, an effective performance of said teacher; and displaying, with an output device coupled to the second device, during the at least one session, the effective performance of the teacher of the course based upon the data reflected by the first and second responses to at least one of the plurality of evaluation items wherein the plurality of evaluation items include questions only regarding aspects of the teacher, and not an understanding level of the students. See Ans. 4-5 (Examiner finding Exhibit E analysis does not show evidence of “initiating a questionnaire,” “updating,” and “displaying” steps). In response to the Examiner’s findings as to the deficiencies in Exhibit E, Appellant stated “each element of the claims 237 and 238 are supported by the Declaration, which includes testimonial evidence and documentary evidence” and argued “[t]he Examiner must look at the 7 Appeal 2014-009232 Application 10/358,902 evidence provided in the Declaration as a whole.” Reply Br. 3. Rather than provide specific citations to the Declaration or supporting evidence that provide evidence of actual reduction to practice of the elements identified by the Examiner to be missing from Exhibit E, Appellant, however, points to the evidence of conception provided in the Initial Inventor Declaration and avers “[t]he claims at the time of filing the Initial [Inventor] Declaration included the limitations that the Examiner now believes are not supported by the Declaration.” Reply Br. 3—4. Appellant does not provide any further insight as to which of canceled claims 1, 5, 6, 8-15, 17-20, 22-26, 28-34, 69, 73, 74, 76-83, 85-88, 90-100, 198-212, 214-217, and 219-22, addressed in the Initial Inventor Declaration, contain limitations the same as or similar to the limitations in present claims 237 and 238.5 The Declaration and exhibits do not adequately explain which facts or data applicant is relying on to show completion of the subject matter of claims 237 and 238 prior to December 14, 2001. Vague and general statements in broad terms about what the Declarations and exhibits describe along with a general assertion that the exhibits and prior Initial Inventor Declaration describe a reduction to practice of the elements missing from Exhibit E “amounts essentially to mere pleading, unsupported by proof or a showing of facts” 5 Appellant chose to appeal from a Non-Final Action, instead of taking advantage of the opportunity to enter new evidence directed to the claims now present in the case, or at least file a paper showing the correspondence between the canceled claims and the new claims. 8 Appeal 2014-009232 Application 10/358,902 and, thus, does not satisfy the requirements of 37 C.F.R. § 1.131(b).6 In re Borkowski, 505 F.2d 713, 718 (CCPA 1974). A review of the Initial Inventor Declaration does not provide evidence of the subject matter missing from Exhibit E. For example, Exhibits A-C to the Initial Inventor Declaration show alleged conception of the concept of providing each student of a course with a digital recording device, teaching lessons during a session, during and after the session, entering evaluations by the students of the teaching as data input into the device, accessing the data input by a centralized computer, and real-time processing of the data input by the centralized computer. See, e.g., Initial Inventor Dec., Ex. C. This Declaration does not show evidence of statistically analyzing aggregate data normalized in accordance with a statistical criterion, determining, by the second electronic device, during the at least one session, an effective performance of said teacher, and displaying, during the session, the effective 6 37 C.F.R. § 1.131 provides that an applicant may establish invention of the claimed subject matter before the effective date of the reference and antedate the reference. The tests are stated in § 1.131(b): b) The showing of facts shall be such, in character and weight, as to establish reduction to practice prior to the effective date of the reference, or conception of the invention prior to the effective date of the reference coupled with due diligence from prior to said date to a subsequent reduction to practice or to the filing of the application. Original exhibits of drawings or records, or photocopies thereof, must accompany and form part of the affidavit or declaration or their absence must be satisfactorily explained. 37 C.F.R. § 1.131(b). 9 Appeal 2014-009232 Application 10/358,902 performance of the teacher, wherein the output device is located in a second geographic location that is different from the first geographic location. Further, the evidence presented in this Initial Inventor Declaration pertaining to conception does not provide any assistance in filling in the gaps in the evidence as it pertains to actual reduction to practice, because the Initial Inventor Declaration was not directed to actual reduction to practice.7 And, the statement in the later-filed Inventor Declaration as to actual reduction to practice relates to the claims as pending on April 13, 2012, and not the claims on appeal. As such, we find that the evidence provided by Appellant is inadequate to show actual reduction to practice of the claimed invention prior to December 14, 2001. Because the Examiner’s anticipation rejection is based on this evidence of actual reduction to practice, we further find the Examiner has not supported this first ground of rejection with sufficient evidence. For these reasons, we do not sustain the rejection of claims 237 and 238 under 35 U.S.C. § 102(b) as anticipated by the Inventor Declaration. Second Ground of Rejection For the reasons provided supra, we find the Inventor Declaration is insufficient to show actual reduction to practice of the claimed invention prior to December 14, 2001, and thus insufficient to remove Von der Geest 7 The Initial Inventor Declaration purported to show conception and constructive reduction to practice of the claimed invention. 10 Appeal 2014-009232 Application 10/358,902 as a prior art reference. As such, we now turn to the obviousness determination based on Von der Geest and Woodson. The Examiner found “[t]he transmission of entered data in the computer networks of Von der Geest is real time since the data entered is either short-answer text (paragraph 30) or numbers (paragraph 92)” and “[t]he transmission of short-answer text and numbers . . . occurs in real time across computer networks since the entered data is relatively small compared to the transmission capabilities of computer networks.” Non- Final Act. 4 (emphasis added). The Examiner found, however, “[t]he Von der Geest reference failed to provide a teaching of updating in real time the entered data received from an electronic device by an entity selected from the group consisting of a computer.” Id. at 5. The Examiner relied on Woodson for this teaching. Id. (citing Woodson, col. 10,11. 40-50). The Examiner determined it would have been obvious to include this feature in Von der Geest “to promote interaction between the presenter and student.” Id. at 5. Appellant argues the prior art combination fails to teach “updating, by the second electronic device, in real time the entered data during the at least one session transmitted by the first electronic device,” as recited in claims 237 and 238. Appeal Br. 15 (Appellant asserting “Woodson does not teach updating the database of the computer in real-time with data entered into the first electronic device for displaying real-time updated data regarding an effective performance of the teacher” and “Woodson only teaches observing, in real-time, student-to-instructor interactions for later analysis”). 11 Appeal 2014-009232 Application 10/358,902 Woodson teaches the use of a monitoring instructor who monitors interactions between the instructor and the students and assesses the quality of these interactions on a daily basis. Woodson, col. 10,11. 39^15. Woodson discloses “[t]he monitoring instructor may employ a monitoring instructor terminal 12 for observing student-to-instructor interactions in real time, for recording student-to-instructor interactions for later analysis, . . . .” Id., col. 10,11. 45^18. We understand Woodson to disclose a system in which the monitoring instructor, via the monitoring instructor terminal 12, observes interactions in real-time and can record interactions for later analysis. Woodson discloses the instructor later uses these observations to prepare a qualitative evaluation report. Id. The report is stored in the monitoring instructor terminal 12 and is subsequently gathered via communications monitor 20 and stored in second database 34. Id., col. 10, 11. 31-37. We do not see in this cited portion of Woodson support for the Examiner’s finding Woodson discloses updating in real time the entered data received from an electronic device by an entity selected from the group consisting of a computer. Final Act. 5. For this reason, we do not sustain the rejection of claims 237 and 238 under 35 U.S.C. § 103(a) as unpatentable over Von der Geest and Woodson. 12 Appeal 2014-009232 Application 10/358,902 DECISION The decision of the Examiner to reject claims 237 and 238 is REVERSED. REVERSED 13 Copy with citationCopy as parenthetical citation