Ex Parte Ricci et al

Patent Trial and Appeal Board

Sep 28, 2016

12547404 (P.T.A.B. Sep. 28, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/547,404 08/25/2009
86846 7590 09/30/2016
Baker Botts L.L.P.
2001 Ross Avenue, 6th Floor
Dallas, TX 75201
FIRST NAMED INVENTOR
Ronald Albert Ricci
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.
062891.3158 5211
EXAMINER
COUPE, ANITA YVONNE
ART UNIT PAPER NUMBER
3624
NOTIFICATION DATE DELIVERY MODE
09/30/2016 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):
PTOmaill@bakerbotts.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte RONALD ALBERT RICCI, TRACY JO GARROUTTE,
and ERIN BERGAMO TACY
Appeal2014-007160
Application 12/547,404
Technology Center 3600
Before MURRIEL E. CRAWFORD, NINA L. MEDLOCK, and
ROBERT J. SILVERMAN, Administrative Patent Judges.
CRAWFORD, 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 decision rejecting claims 1, 8, 13, 20, and 25. We have jurisdiction
over the appeal under 35 U.S.C. § 6(b).
We AFFIRM.
Appeal2014-007160
Application 12/547,404
BACKGROUND
Appellants' invention is directed generally to applied psychometrics
(Spec., para. 1 ).
Claim 1 is illustrative:
1. A method comprising:
accessing by one or more computer systems a set of
responses to an instrument for assessing a communication style
of a person, the instrument and the assessment focusing on:
how the person mentally processes information;
how the person mentally organizes information;
how comfortable the person is at expressing himself or
herself; and
whether the person presents information in a more linear
manner or a more nonlinear manner;
based on the set of responses to the instrument, determining
by the one or more computer systems a communication profile
of the person that indicates:
how the person mentally processes information;
how the person mentally organizes information;
how comfortable the person is at expressing himself or
herself; and
whether the person presents information in a more linear
manner or a more nonlinear manner;
based on the communication profile of the person,
generating by the one or more computer systems a
recommendation concerning communication by the person in a
particular communication environment; and
communicating the recommendation for consideration.
Appellants appeal the following rejection:
Claims 1, 8, 13, 20, and 25 under 35 U.S.C. § 112, second paragraph, as
being indefinite for failing to particularly point out and distinctly claim the
subject matter which Appellants regard as the invention.
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Appeal2014-007160
Application 12/547,404
ISSUE
Did the Examiner err in rejecting the claims under 35 U.S.C. § 112,
second paragraph, because the rejection is based on conclusory statements
and ignores the disclosure provided in the Specification?
ANALYSIS
We are not persuaded of error on the part of the Examiner in rejecting
the claims under 35 U.S.C. § 112, second paragraph. The Examiner rejected
claims 1, 13, and 2 5 because the terms "more linear" and "more non-linear"
are relative terms which render the claims indefinite (Final Act. 3). The
Examiner rejected claims 8 and 20 because these claims also include the
language "more linear" and "more non-linear" but also include the
recitations of other phrases such as "to what extent" and "how comfortable
the person is" that the Examiner held to be relative phrases.
A decision on \vhether a claim is invalid under§ 112, second
paragraph5 requires a detennination of whether those skilled in the art would
understand what is claimed when the clairn is read in light of the
specification. Orthokinetics, Inc. v. Safety Travel Chairs, Inc., 806 F.2d
1565, 1576 (Fed. Cir. 1986). \Vhen a word of degree is used, such as the
tenn ''more" linear, it is necessary to determine whether the specification
provides some standard for measuring that degree. See Seattle Box Co., Inc.
v. lndustr. Crating & Packing, Inc., 731F.2d818, 826 (Fed. Cir. 1984).
The Examiner found that the relative tenns and phrases of the claims
are not defined by the claims and the Specification does not provide a
standard to ascertain the requisite degree so that a person of ordinary skm
would be reasonably apprised of the scope of the invention. The Examiner
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Appeal2014-007160
Application 12/547,404
specifically referred to Appellants' disclosure and recitations in the claims in
making this determination. In addition, the Examiner explained that there is
no numeric aspect to determine the relationship, such as a score given to the
answers of the questionnaire and the scores being compared to a table
defining a score of 3 as more linear than a score of 4 (Ans. 4). Therefore,
we are not persuaded that the rejection of the Examiner is based on
condusory statements.
vVe are also not persuaded that the Examiner erred by ignoring the
disclosure provided in the Specification. The Appellants argue that the
terms linear and non-linear are defined in the Specification (Reply Brief 3).
However, the Appellants have not directed our attention to a disclosure in
the Specification which explains an o~jective standard to define what
constitutes the terms and phrases that the Examiner found to be relative
terms. For example, although the Appellants direct our attention to the
disclosure related to linear and non-linear, the Appellants do not direct our
attention to a disclosure that explains what is more linear or more non-linear.
In view of the foregoing; we sustain the rejection of claims 1, 8, 13,
20, and 25 under 35 U.S.C. § 112, second paragraph.
DECISION
The decision of the Examiner is affirmed.
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Appeal2014-007160
Application 12/547,404
TIME PERIOD
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) (2009).
ORDER
AFFIRMED
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