Ex Parte Von Klleeck

Board of Patent Appeals and Interferences

Jun 21, 2012

10710008 (B.P.A.I. Jun. 21, 2012)

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.
10/710,008 06/11/2004 David Lawrence Von Klleeck 001345 4007
29569 7590 06/21/2012
FURR LAW FIRM
2622 DEBOLT ROAD
UTICA, OH 43080
EXAMINER
BUSS, BENJAMIN J
ART UNIT PAPER NUMBER
2129
MAIL DATE DELIVERY MODE
06/21/2012 PAPER
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.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte DAVID LAWRENCE VON KLLEECK
____________________

Appeal 2010-002872
Application 10/710,008
Technology Center 2100
____________________

Before DENISE M. POTHIER, ERIC B. CHEN, and JENNIFER S. BISK,
Administrative Patent Judges.

BISK, Administrative Patent Judge.

DECISION ON APPEAL

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DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 42-53. Claims 1-41 have been canceled. We have
jurisdiction under 35 U.S.C. § 6(b). We affirm.

STATEMENT OF THE CASE
The claims are directed to a system for hiring an employee using
neural networks. See Abstract. Claim 42, reproduced below, is illustrative of
the claimed subject matter:
42. A system for hiring an employee comprising: inputting
data, having a Model identification step review said data and
output results; having a Model parameter estimation step
review said output results; and outputting final results where
said model identification step comprises identifying by decision
nodes and uses artificial neural networks to review said data,
where said model parameter estimation step uses machine
learning to review said output results and where said results
have two states.

THE REJECTIONS
1. Claims 42-44 and 50-52 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Neuneier (US 6,317,730 B1; Nov. 13, 2001), Zizzamia
(US 2004/0054553 A1; Mar. 18, 2004), and Tewari (US 6,004,267; Dec.
21, 1999). Ans. 3-9.
2. Claims 45 and 53 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Neuneier, Zizzamia, Tewari, and Mascarenhas (US
2002/0029162 A1; Mar. 7, 2002). Ans. 9-10.
3. Claims 46, 47, and 49 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Neuneier and Mascarenhas. Ans. 10-12.
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4. Claim 48 stands rejected under 35 U.S.C. § 103(a) as being unpatentable
over Neuneier, Mascarenhas, and Zizzamia. Ans. 12-13.

REJECTION #1: THE OBVIOUSNESS REJECTION OVER
NEUNEIER, ZIZZAMIA, AND TEWARI
The Examiner finds that Neuneier teaches all elements of
representative claim 42 except “system for hiring an employee” and “where
said results have two states.” Ans. 4. In concluding that this claim would be
obvious, the Examiner cites Zizzamia as teaching the “system for hiring an
employee” and Tewari as teaching “where said results have two states.” Ans.
4-5. The Examiner further provides a rationale for combining these
references with Neuneier. Ans. 5-6.
Appellant argues that Neuneier fails to teach “hiring an employee”
“which is the basis for the Applicant’s invention.” Br. 4. Appellant also
argues that Zizzamia and Tewari are not “proper prior art” because they are
“contemporary” with the application and their “data,” “usage,” and “fields”
are different than the claimed invention. Id. Appellant further argues that the
Examiner did not provide a proper motivation to combine the cited
references. Br. 4-5.

ISSUES
1. Under § 103, has the Examiner erred in rejecting claim 42 by
finding that Neuneier, Zizzamia, and Tewari would have taught or suggested
hiring an employee?
2. Are Zizzamia and Tewari prior art?
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3. Is the Examiner’s reason to combine the teachings of these
references supported by articulated reasoning with some rational
underpinning to justify the Examiner’s obviousness conclusion?

ANALYSIS
Based on the record before us, we find no error in the Examiner’s
obviousness rejection of representative claim 42. First, we agree with the
Examiner that the clause “for hiring an employee” is merely intended use
recited in the preamble, which does not alter the claimed structure, and
therefore is not a limitation of the claim. See Catalina Mktg. Int’l, Inc. v.
Coolsavings.com, Inc., 289 F.3d 801, 808 (Fed. Cir. 2002). Moreover, we
agree with the Examiner that even if “hiring an employee” limits the claimed
invention, Zizzamia in combination with Neuneier teaches this limitation. As
pointed out by the Examiner, Zizzamia specifically recites “recruiting, hiring
and appointing new insurance agents.” Ans. 15 (quoting Zizzamia ¶ 8).
Second, we agree with the Examiner that Zizzamia and Tewari are
prior art. This application claims an effective filing date of June 11, 2003.
Zizzamia claims the benefit of an earlier provisional filing date—July 10,
2002. Also, Tewari is a patent that was granted December 21, 1999, well
before the application’s effective filing date.
Further, the Examiner properly explains how Zizzamia and Tewari
map to the claimed elements. Ans. 16-17. Thus, the Examiner has made a
prima facie case of obviousness. Appellant’s bald and conclusory statements
(Br. 4) that Zizzamia’s “data and its usage” and Tewari’s “fields and its
usage” differ from the application, without accompanying persuasive
explanation or evidence, do not adequately rebut the prima facie case. See,
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e.g., In re Kumar, 418 F.3d 1361, 1366 (Fed. Cir. 2005) (holding that once a
prima facie case of obviousness is made, the burden shifts to Appellant “to
come forward with evidence or argument in rebuttal”).
Finally, the Examiner properly articulates how the person of ordinary
skill in the art would have understood the prior art, how the prior art would
have been combined, and the rationales for the combination. Ans. 5-6,
17-19. The Examiner finds that Neuneier, Zizzamia, and Tewari are from the
same field of endeavor, specifically “predictive data modeling/processing”
and explains in some detail the motivation behind combining the three
references. Ans. 5 (citing Zizzamia ¶¶ 14, 18, 21), 6 (citing Tewari, col. 11,
ll. 40-54), 17-19. Additionally and concerning combining Tewari with
Neuneier, the Examiner finds that “it is well understood in the art that neural
networks are universal function approximators which, given appropriate
structure, are capable of representing any function” and “the diverse uses of
neural networks . . . were well known to the person of ordinary skill in the
art at the time the invention was made.” Ans. 13 (emphasis in original).
Appellant does not provide persuasive reasoning or evidence to rebut the
Examiner’s findings.
For the foregoing reasons, we sustain the Examiner’s rejection of
representative claim 42 and claims 43, 44, and 50-52, which were not argued
separately.

REJECTION #2: THE OBVIOUSNESS REJECTION OVER
NEUNEIER, ZIZZAMIA, TEWARI, AND MASCARENHAS
The Examiner cites Mascarenhas as teaching the additional limitation
of “where said data is personality data” recited by dependent claims 45 and
53. Ans. 9-10.
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In addition to repeating several arguments that apply to claim 42
addressed above, Appellant argues that Neuneier and Tewari fail to teach
“where the data is personality data.” Br. 6. Appellant also argues that the
combination of four references in this rejection “from different fields of
[endeavor]” is “overly burdensome.” Id. Appellant further argues that the
Examiner’s cited field of endeavor is “over broad” and the four references
would not have been combined by a person of ordinary skill. Id.

ISSUES
1. Under § 103, has the Examiner erred in rejecting claims 45 and 53
by finding that Neuneier, Zizzamia, Tewari, and Mascarenhas collectively
would have taught or suggested “where said data is personality data”?
2. Has the Examiner erred in finding that the four references are from
the same field of endeavor and are properly combinable?

ANALYSIS
Based on the record before us, we find no error in the Examiner’s
obviousness rejection of dependent claims 45 and 53. First Appellant’s
argument that Neuneier and Tewari do not teach the limitation “where said
data is personality data” does not address the Examiner’s actual rejection, in
which Mascarenhas is cited as teaching this limitation. Second, reliance on a
large number of references in a rejection does not, without more, weigh
against the obviousness of the claimed invention. See In re Gorman, 933
F.2d 982, 986 (Fed. Cir. 1991). Finally, the Examiner finds that all of the
references are in the field of “Artificial Intelligence, and more specifically to
predictive data modeling/processing” (Ans. 23) and one of ordinary skill
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would have “been educated in a vast variety of computer algorithms and
how they could be practically applied to numerous real world applications”
(Ans. 23-24).1 After making these findings, the Examiner provides, in some
detail, an articulated and rational reason why and how a person of skill in the
art would have combined the cited references. Ans. 10, 23-26. Appellant
does not provide persuasive reasoning or evidence to rebut the Examiner’s
findings and conclusions.
For the foregoing reasons, we sustain the Examiner’s rejection of
claims 45 and 53.

REJECTION #3: THE OBVIOUSNESS REJECTION OVER
NEUNEIER AND MASCARENHAS
The Examiner finds that Neuneier teaches all elements of independent
claim 46 except “system for hiring an employee” and “where said results
have three states.” Ans. 10-11. In concluding this claim would be obvious,
the Examiner cites Mascarenhas as teaching both limitations. Ans. 11.
In addition to repeating several arguments that apply to claim 42
addressed above, Appellant argues that Neuneier and Mascarenhas fail to
teach the “further specific elements [of dependent claims 46, 47, and 49] that
have no reasonable correspondence to Neuneier or Mascarenhas.” Br. 7.2

1 Additionally, prior art is also considered analogous when it is reasonably
pertinent to the problem with which Appellant’s is concerned. See In re
Kahn, 441 F.3d 977 (Fed. Cir. 2006).
2 Appellant mistakenly states that claims 46, 47, and 49 depend on claim 42.
Claim 46 is an independent claim upon which claims 47 and 49 depend. We
presume this to be a clerical error. See also Ans. 27.
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ISSUE
Under § 103, has the Examiner erred in rejecting dependent claims 46,
47, and 49 by finding that Neuneier and Mascarenhas would have taught or
suggested their “further specific elements”?

ANALYSIS
Based on the record before us, we find no error in the Examiner’s
obviousness rejection of dependent claims 46, 47, and 49. The Examiner
clearly details how the combination of Neuneier and Mascarenhas teaches
every claim limitation of these claims. Ans. 10-12. The Examiner also
provides a reasonable rationale for the motivation to combine the two
references in the recited manner. Id. Appellant does not particularly point out
or provide persuasive reasoning or evidence to show error in the rejection.
Also, we agree with Examiner that the limitation related to “hiring an
employee” is found only in the preamble (see Ans. 27-28) and, as explained
above, has been given little weight. Nonetheless, contrary to Appellant’s
contentions (Br. 7), Mascarenhas teaches hiring employees. See Ans. 11
(citing to the Abstract).
We sustain the Examiner’s rejection of claims 46, 47, and 49.

REJECTION #4: THE OBVIOUSNESS REJECTION OVER
NEUNEIER, MASCARENHAS, AND ZIZZAMIA
The Examiner finds that the combination of Neuneier and
Mascarenhas fails to teach the limitation “where said data is biographical
data” as recited by dependent claim 48. Ans. 12-13. The Examiner cites
Zizzamia as teaching this limitation. Ans. 13. The Examiner adds that it
would have been obvious to combine the three references, which are all in
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the same field—“predictive data modeling/processing.” Ans. 13 (citing
Zizzamia ¶¶ 14, 18, 21).
Appellant raises no new arguments for this rejection, instead relying
on several arguments that were previously addressed. Br. 7-8. For the same
reasons addressed above, we sustain the rejection of dependent claim 48.

DECISION
The Examiner’s decision rejecting claims 42-53 is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED

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