International Business Machines Corporation

Patent Trials and Appeals Board

Feb 7, 2022

2021000120 (P.T.A.B. Feb. 7, 2022)

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. 15/223,918 07/29/2016 Donna K. Byron AUS920160231US1 6941 65362 7590 02/07/2022 TERRILE, CANNATTI & CHAMBERS, LLP IBM Austin P.O. BOX 203518 AUSTIN, TX 78720 EXAMINER TRUONG, DENNIS ART UNIT PAPER NUMBER 2152 NOTIFICATION DATE DELIVERY MODE 02/07/2022 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): USPTO@dockettrak.com tmunoz@tcciplaw.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte DONNA K. BYRON, CARMINE M. DIMASCIO, BENJAMIN L. JOHNSON, JACQUELYN A. MARTINO, and FLORIAN PINEL Appeal 2021-000120 Application 15/223,918 Technology Center 2100 Before JOSEPH L. DIXON, JASON J. CHUNG, and BETH Z. SHAW, Administrative Patent Judges. SHAW, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s decision to reject claims 1-20. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. 1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R. § 1.42(a). Appellant identifies the real party in interest as International Business Machines Corporation. Appeal Br. 1. Appeal 2021-000120 Application 15/223,918 2 CLAIMED SUBJECT MATTER The claims are directed to a content recommendation method based on a user’s level of skill. Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. A computer-implemented method for recommending instructional content according to a user’s level of skill, comprising: receiving user input requesting instructional content related to a particular skill; parsing the user input to generate features associated with skills referenced in the user input; generating a user skills competency profile for the user, the user skills competency profile being based upon a subset of user skills content associated with the particular skill, the user skills content comprising content that contains a reference to a degree of competency as it relates to the particular skill, the user skills content comprising content posted by the user, the content posted by the user demonstrating a proficiency of the user with the particular skill, the content posted by the user being identified by searching a social media profile of the user to identify examples of user skills content posted by the user; accessing the user skills competency profile associated with the user; processing the features, the user input and the user skills competency profile to identify individual instances of instructional content that contain at least one skill referenced in the user input; and providing the individual instances of instructional content as recommended instructional content to the user. Appeal 2021-000120 Application 15/223,918 3 REFERENCES The prior art relied upon by the Examiner is: Name Reference Date Treves US 9,680,945 B1 June 13, 2017 McConnell US 2014/0282098 A1 Sept. 18, 2014 Nealon US 2016/0035237 A1 Feb. 4, 2016 REJECTIONS Claims 1, 7, 13, 19, and 202 are rejected under 35 U.S.C. § 103 as being unpatentable over Treves and McConnell. Final Act. 4-9. Claims 2-6, 8-12, and 14-18 are rejected under 35 U.S.C. § 103 as being unpatentable over Treves, McConnell, and Nealon. Final Act. 9. OPINION We have reviewed the Examiner’s rejections in light of Appellant’s arguments that the Examiner has erred. On this record, we find Appellant has not identified an error in the Examiner’s reliance on the cited references for collectively teaching or suggesting the elements recited in the claims. We agree with and adopt as our own the Examiner’s findings and conclusions in the Final Rejection and Answer. See Final Act. 2-16; Ans. 3-8. With respect to independent claims 1, 7, and 13, the Appellant does not set forth separate arguments for patentability regarding 35 U.S.C. § 103. Appeal Br. 3, 5. As a result, we select independent claim 1 as the 2 There appears to be a typographical error on page 4 of the Final Rejection, where the rejection refers to claim 17 instead of claim 7. However, in light of pages 8-16 of the Final Rejection, we treat claim 7 as rejected over Treves and McConnell. Appeal 2021-000120 Application 15/223,918 4 representative claim for the group because claims 7 and 13 contains similar limitations. See 37 C.F.R. § 41.37(c)(1)(iv). Therefore, claims 2-6, 8-12, and 14-20 stand or fall with representative independent claim 1 with respect to 35 U.S.C. § 103. Arguments which the Appellant could have made but did not make in the Brief are deemed to be waived or forfeited. See 37 C.F.R. § 41.37(c)(1)(iv). We review the appealed rejection for error based upon the issues the Appellant identifies, and in light of the arguments and evidence produced thereon. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential) (“[I]t has long been the Board’s practice to require an applicant to identify the alleged error in the examiner’s rejections.”) (cited with approval in In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011)). In rejecting claims under 35 U.S.C. § 103(a), the examiner bears the initial burden of establishing a prima facie case of obviousness. In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992); see also In re Piasecki, 745 F.2d 1468, 1472 (Fed. Cir. 1984). Obviousness is determined on the basis of the evidence as a whole and the relative persuasiveness of the arguments. See Oetiker, 977 F.2d at 1445; Piasecki, 745 F.2d at 1472. Upon review of the evidence and each of the respective positions set forth in the record by Appellant, we find that Appellant has not shown error in the obviousness rejection by a preponderance of evidence in the record. Accordingly, we affirm the Examiner’s 35 U.S.C. § 103 rejections on appeal essentially for the reasons set forth in the record by the Examiner, with the following emphasis. “Filing a Board appeal does not, unto itself, entitle an appellant to de novo review of all aspects of a rejection. If an appellant fails to present arguments on a particular issue - or, more broadly, on a particular rejection Appeal 2021-000120 Application 15/223,918 5 - the Board will not, as a general matter, unilaterally review those uncontested aspects of the rejection.” Ex parte Frye, 94 USPQ2d at 1075 (precedential) (internal citations omitted). “It is not the function of [the U.S. Court of Appeals for the Federal Circuit] to examine the claims in greater detail than argued by an appellant, looking for nonobvious distinctions over the prior art.” In re Baxter Travenol Labs., 952 F.2d 388, 391 (Fed. Cir. 1991). Similarly, it is not the function of this Board to examine claims in greater detail than argued by the Appellant, looking for distinctions over the prior art. “It is well-established that the Board is free to affirm an examiner’s rejection so long as appellants have had a fair opportunity to react to the thrust of the rejection.” In re Jung, 637 F. 3d 1356, 1365 (Fed. Cir. 2011) (citations omitted). Appellant has the burden on appeal to the Board to demonstrate error in the Examiner’s position. See In re Kahn, 441 F.3d 977, 985-86 (Fed. Cir. 2006). We find that the Appellant has not shown error in the rejection as applied by the Examiner. As the Examiner finds, and we agree, Treves teaches the claimed “user skills competency profile” because Treves stores “skill metrics of a user” “within the profile data store.” Ans. 3 (citing Treves 5:51-61). The Examiner clarifies the rejection and makes additional factual findings in the Examiner’s Answer that Treves teaches the claimed “processing the features, the user input and the user skills competency profile to identify individual instances of instructional content that contain at least one skill referenced in the user input,” as recited in claim 1, for the reasons explained in the Answer. See Ans. 7-8; Treves, 11:7-28, 13:66-14:16, and 14:37-43. Appeal 2021-000120 Application 15/223,918 6 Appellant does not file a Reply Brief to respond to the Examiner’s further clarifications and additional citations relied upon in the teachings of Treves. Moreover, Appellant does not explain persuasively why the Examiner’s findings are erroneous apart from presenting mere conclusory statements in the Appeal Brief. Furthermore, Appellant does not argue the Examiner’s rationale in combining the references, and we discern no error therein. Accordingly, we are not persuaded that the Examiner erred in rejecting claim 1, and we therefore sustain the rejection of claim 1. We also sustain the rejections of the remaining pending claims, which were argued together with claim 1. CONCLUSION The Examiner’s rejections are affirmed. DECISION SUMMARY In summary: Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1, 7, 13, 19, 20 103 Treves, McConnell 1, 7, 13, 19, 20 2-6, 8-12, 14-18 103 Treves, McConnell, Nealon 2-6, 8-12, 14-18 Overall Outcome 1-20 Appeal 2021-000120 Application 15/223,918 7 TIME PERIOD FOR RESPONSE 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)(1)(iv). AFFIRMED