Ex Parte Sperle et al

Patent Trial and Appeal Board

Nov 14, 2014

11284263 (P.T.A.B. Nov. 14, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte ROBIN SPERLE, HEINZ SCHILLINGER, and
MATHIAS SCHOENECKER
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Appeal 2012-007275
Application 11/284,263
Technology Center 2100
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Before CARL W. WHITEHEAD JR., DANIEL N. FISHMAN, and
CATHERINE SHIANG, Administrative Patent Judges.

SHIANG, Administrative Patent Judge.

DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 1–15. We have jurisdiction under 35 U.S.C. § 6(b). We
reverse.

STATEMENT OF THE CASE
We have reviewed Appellants’ arguments in the Briefs, the
Examiner’s rejection, and the Examiner’s response to Appellants’
arguments. We concur with Appellants’ conclusion that the Examiner erred
in finding Rosen (US 2006/0229896 A1; published Oct. 12, 2006) and the
proposed combination teach claim 1, because the Examiner fails to
Appeal 2012-007275
Application 11/284,263

2
adequately explain how Rosen’s disclosures (in the proposed combination)
render claim 1 obvious.
Claim 1 recites “a qualification block catalogue containing definitions
of a plurality of qualifications blocks, each qualifications block including a
set of qualification data objects that specify the qualification block” and “a
second object.” Claim 1.1
The Examiner maps Rosen’s employee seeker’s profile to two
distinctive claim elements: the “qualification block catalogue” and the
“second object.” The Examiner first maps Rosen’s employee seeker’s
profile to the “qualification block catalogue” claim element. See Ans. 6
(“Desired attributes, i.e. a set of qualification data objects, are stored with
attribute units, i.e. qualification blocks, in the database in association with an
employee seeker’s profile, i.e. a qualification block catalogue”). The
Examiner then maps the same Rosen’s employee seeker’s profile to the
“second object” claim element. See Ans. 34 (“an employee seeker profile of
Rosen (which is used interchangeably in Rosen with an employee seeker
match profile), which represents the claimed second object”) (emphases
added).
Since it is unclear to us how the Examiner interprets Rosen’s
disclosures to render claim 1 obvious, the Examiner has not provided
adequate explanation for the rejection.

1 Appellants raise additional arguments. Because the identified issue is
dispositive of the appeal, we do not need to address the additional
arguments.
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Application 11/284,263

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Accordingly, we do not sustain the Examiner’s rejection of claim 1
and for similar reasons, claims 2–15.2

DECISION
The Examiner’s decision rejecting claims 1–15 is reversed.

REVERSED

msc

2 Some claims recite “a position object” instead of “a second object,” and
our analysis is similar: the Examiner improperly maps Rosen’s employee
seeker’s profile to two distinctive claim elements: the “qualification block
catalogue” and the “position object.” See Ans. 41–42.