Ex Parte Collier

Patent Trial and Appeal BoardJul 22, 2016

13477269 (P.T.A.B. Jul. 22, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 13/477,269 05/22/2012 37945 7590 07/26/2016 DUKEW, YEE YEE AND AS SOCIA TES, P.C. P.O. BOX 802333 DALLAS, TX 75380 FIRST NAMED INVENTOR James Patrick Collier II 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. END920060096US2 1087 EXAMINER CARLOS, ALVIN LEABRES ART UNIT PAPER NUMBER 3715 NOTIFICATION DATE DELIVERY MODE 07/26/2016 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): ptonotifs@yeeiplaw.com mgamez@yeeiplaw.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte JAMES PA TRICK COLLIER II Appeal2014-006263 Application 13/477,269 Technology Center 3700 Before WILLIAM A. CAPP, GEORGE R. HOSKINS, and BRANDON J. WARNER, Administrative Patent Judges. HOSKINS, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE James Patrick Collier II ("Appellant") 1 appeals under 35 U.S.C. Â§ 134 from the Examiner's decision rejecting, under 35 U.S.C. Â§ 103(a), claims 1- 10 and 13-19 as unpatentable over Draper (US 2004/0133437 Al, pub. July 8, 2004) and Murray (US 2002/0106615 Al, pub. Aug. 8, 2002), and claims 11 and 12 as unpatentable over Draper, Murray, and Subramanyan (US 2002/0178181 Al, pub. Nov. 28, 2002). The Board has jurisdiction over the appeal under 35 U.S.C. Â§ 6(b). We REVERSE. 1 The Appeal Brief identifies International Business Machines Corporation as the real party in interest. Appeal Br. 2. Appeal2014-006263 Application 13/477,269 CLAIMED SUBJECT MATTER Claims 1, 13, and 16 are independent. Claim 1 illustrates the subject matter on appeal, and it recites: 1. A computer implemented method for developing training for a client organization, the computer implemented method being executed by a computer and comprising steps of: the computer identifying training delivery requirements for the client organization; the computer gathering assessment information; the computer developing a training curriculum based on the training delivery requirements and the assessment information; the computer estimating an amount of time required to complete the training based on the training curriculum to form a delivery estimate; the computer translating the delivery estimate into an estimate of resources required for development of training materials for the training; and the computer verifying that the client organization receives the training materials, for delivery to an end user, that are necessary to implement the training by the client organization. Appeal Br. 23 (Claims App.). ANALYSIS A. Obviousness based on Draper and Murra~ Claims 1-10and13-19 In rejecting claim 1 as obvious over Draper and Murray, the Examiner finds Draper discloses, inter alia, the claimed "translating [a] delivery estimate into an estimate of resources required for development of training materials." Final Act. 2-3 (emphasis added). In that regard, the Examiner 2 Appeal2014-006263 Application 13/477,269 finds Draper discloses "scheduling tools are used to manage the materials needed to teach the course." Id. at 3 (citing Draper i-fi-1 46-48). Appellant argues the Examiner errs in finding Draper discloses determining an estimate of resources required for "development" of training materials, as claimed. Appeal Br. 9-11. In particular, Appellant asserts Draper's paragraphs 46-48 "describe three sub-sub-processes: (i) a delivery support plan process, (ii) a forecast demand process, and (iii) a schedule process." Id. at 11. Appellant contends the delivery support plan process of paragraph 46 is limited to delivery of ''previously developed learning content," as opposed to the claimed development of training materials. Id. at 9, 11. Appellant contends the forecast demand process of paragraph 4 7 similarly "is used to align the 'delivery' of course content with business objectives ... , as part of the process to prioritize the 'delivery' of an organization's learning," rather than the claimed development of training materials. Id. at 9-10, 11. Appellant contends the schedule process of paragraph 48 does not concern course development, as it "describes a mechanism to manage the delivery of already developed training materials." Id. at 10, 11. The Examiner responds that "this developing step [of claim 1] does not necessarily require developing yet-to-be-developed training materials." Final Act. 11. The Examiner adds "the feature of 'developing a training curriculum ... ' would reasonably be interpreted to Draper's managing delivery of already developed training materials." Id. Appellant's argument is persuasive. We do not agree with the Examiner's construction of the claim term "development" to refer to 3 Appeal2014-006263 Application 13/477,269 managing delivery of already-developed training materials, without regard to actual development of training materials. [U]nder the broadest reasonable interpretation, the Board's construction "cannot be divorced from the specification and the record evidence," In re NTP, Inc., 654 F.3d 1279, 1288 (Fed. Cir. 2011 ), and "must be consistent with the one that those skilled in the art would reach," In re Cortright, 165 F.3d 1353, 1358 (Fed. Cir. 1999). A construction that is "unreasonably broad" and which does not "reasonably reflect the plain language and disclosure" will not pass muster. Microsoft Corp. v. Proxyconn, Inc., 789 F.3d 1292, 1298 (Fed. Cir. 2015) (quoting In re Suitco Surface, Inc., 603 F.3d 1255, 1260 (Fed. Cir. 2010)). The Examiner's construction of the term "development" is not consistent with Appellant's Specification. The Specification describes "development time" as "the estimated number of hours needed to develop a single hour of delivered training." Spec. i-f 80 (describing Fig. 1 lE). The Specification further indicates such development times may range, for example, from 40 hours (for "low" instructor-led training) to 300 hours (for "high" web-based training). Id. Fig. 1 lE. These and several other portions of the Specification indicate training material "development" refers to the creation or gathering of the training materials, prior to the delivery (i.e., the distribution or presentation) of the training materials to trainees. See Spec. i-fi-140, 43--44, 46, 55, 57, 70, 77-78 (Fig. 1 lC). The Examiner has not pointed to any disclosure in the Specification that would support a claim construction of training material "development" that would be limited to the delivery of the training materials, excluding the actual development of the training materials before delivery to the trainees. For these reasons, we 4 Appeal2014-006263 Application 13/477,269 conclude "development" of training materials includes, at least, the creation or gathering of the training materials. Based on a proper construction of the required "development" of training materials, as claimed, a preponderance of the evidence does not indicate Draper discloses estimating resources required for such development. The Examiner pertinently cites paragraphs 46-48 of the Draper disclosure in connection with the claimed estimation. Final Act. 3. That disclosure concerns forecasting the demand for, scheduling, and delivering training materials to trainees. Draper i-fi-1 46-48. It does not describe estimating resources required for creating or gathering the training materials. Appellant also argues the Examiner errs in finding Murray discloses the claimed estimating of resources required for development of training materials. Reply Br. 2. According to Appellant, Murray instead describes "a time-estimate as to how long it will take for a student to actually study pre-existing/already-developed materials." Id. It appears the Examiner relies on Murray in connection with the "estimating" step that precedes the "translating" step of claim 1. See Final Act. 3 (citing Murray, claim 3 and i-fi-f 12 and 19-20, as disclosing "estimating an amount of time required to complete the training based on the training curriculum to form a delivery estimate"); Ans. 3. Nonetheless, to the extent Appellant's reading of the Examiner's rejection is correct, we agree with Appellant that Murray does not disclose estimating resources required for creating or gathering the training materials. See Murray, claim 3, i-fi-f 12 and 19-20. For the foregoing reasons, we do not sustain the rejection of independent claim 1, and of claims 2-10 depending therefrom, as 5 Appeal2014-006263 Application 13/477,269 unpatentable over Draper and Murray. Independent claims 13 and 16, similarly to claim 1, recite a database application (claim 13) or computer usable program code (claim 16) that translates "the delivery estimate into an estimate of resources required for development of training materials." Appeal Br. 25, 26-27 (Claims App.). Thus, we likewise do not sustain the rejection of claims 13-19 as unpatentable over Draper and Murray. B. Obviousness based on Draper, Murray, and Subramanyan- Claims 11 and 12 The Examiner's reliance on Subramanyan as disclosing the subject matter added by dependent claims 11 and 12 with respect to their common parent independent claim 1 does not cure the deficiency of Draper and Murray as to claim 1. See Final Act. 9-11. Thus, for the reasons provided above, we do not sustain the rejection. DECISION The Examiner's decision to reject claims 1-19 is REVERSED.2 REVERSED 2 Should there be further prosecution of this application, the Examiner may wish to consider reviewing all of the claims for compliance under 35 U.S.C. Â§ 101 in light of the most recent Patent Office guidance on Â§ 101 and Alice Corp. v. CLS Banklnt'l, 134 S. Ct. 2347 (2014). 6