Ex Parte Jenkins et al

Patent Trial and Appeal Board

Nov 20, 2013

11423177 (P.T.A.B. Nov. 20, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte WILLIAM M. JENKINS, LOGAN E. DE LEY,
VIRGINIA A. MANN, TERRI KIM MATTER, and STEVEN L. MILLER
____________

Appeal 2011-013492
Application 11/423,177
Technology Center 3700
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Before MICHAEL L. HOELTER, LYNNE H. BROWNE, and
BART A. GERSTENBLITH, Administrative Patent Judges.

GERSTENBLITH, Administrative Patent Judge.

DECISION ON APPEAL

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STATEMENT OF THE CASE
William M. Jenkins et al. (“Appellants”) appeal under 35 U.S.C.
§ 134 from the Examiner’s decision rejecting claims 1, 6, 8, 13-15, and
17-30. We have jurisdiction under 35 U.S.C. § 6(b).
Claimed Subject Matter
Claims 1 and 30 are the independent claims on appeal. Claim 1 is
illustrative of the claimed subject matter and is reproduced below.
1. A computer-implemented method for building skills in
constructing and organizing multiple-paragraph stories and
expository passages in a student, the method comprising:
a computing device performing:
providing a stimulus passage set comprising a
plurality of stimulus passages, wherein each stimulus passage
comprises a sequence of one or more pages;
performing a paragraph ordering task with respect
to paragraphs of a stimulus passage from the set of stimulus
passages, including recording responses from the student,
wherein each of the paragraphs comprises a plurality of
sentences; and
determining if the student performed the paragraph
ordering task correctly; and
repeating said performing and said determining for
each page for each stimulus passage of the plurality of stimulus
passages;
wherein said repeating builds skills in constructing
and organizing multiple-paragraph stories and expository
passages in the student.
App. Br. 15, Claims App’x.
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References
The Examiner relies upon the following prior art references:
Wagoner US 5,738,523 Apr. 14, 1998
Haynes US 7,062,220 B2 Jun. 13, 2006
Budra US 2004/0180311 A1 Sep. 16, 2004
Van Schaack US 2005/0277099 A1 Dec. 15, 2005
Rejections
Appellants seek review of the following rejections:
I. Claims 1, 6, 8, 13-15, 17-21, and 23-30 are rejected under 35
U.S.C. § 103(a) as unpatentable over Budra, Haynes, and
Wagoner; and
II. Claim 22 is rejected under 35 U.S.C. § 103(a) as unpatentable
over Budra, Haynes, Wagoner, and Van Schaack.1
SUMMARY OF DECISION
We AFFIRM.
OPINION
Rejection I –
Obviousness over Budra, Haynes, and Wagoner
The Examiner concluded that the combination of Budra, Haynes, and
Wagoner would have rendered the subject matter of claims 1, 6, 8, 13-15,
17-21, and 23-30 obvious to one of ordinary skill in the art at the time of

1 Additionally, the Examiner provisionally rejected claims 1-30 on the
ground of nonstatutory obviousness-type double patenting as unpatentable
over claims 1-26 of U.S. Patent Application No. 11/423,169 (the “’169
Application”). Appellants did not appeal the provisional rejection, but the
’169 Application has since gone abandoned. See ’169 Application File
History, Notice of Abandonment (mailed July 11, 2011). Accordingly, the
provisional rejection is moot.
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invention. Ans. 3-14. The Examiner found that Budra discloses the
elements of the claims except for “performing a paragraph ordering task
with respect to a paragraph of a stimulus passage from the set of stimulus
passages.” Id. at 4. The Examiner found that Haynes teaches a sequencing
activity in which a student arranges sentences in their correct order. Id. The
Examiner equated arranging sentences in Haynes with arranging paragraphs
(id.) because it is known that a paragraph “compris[es] one or more
sentence” (id. at 18). The Examiner concluded that it would have been
obvious to one of ordinary skill in the art to modify Budra’s word ordering
task by substituting Haynes’s sentence sequence task to “provide an
effective learning system that utilizes different strategies to improve [a]
student’s comprehension skills in general.” Id. at 4-5.
The Examiner found that the combination of Budra and Haynes
discloses the subject matter of the claims with the exception of the feature
that each paragraph comprises a plurality of sentences. Id. at 6. The
Examiner found that Wagoner teaches arranging paragraphs based on a
“paragraph connection, wherein the arrangement of the first sentence of the
second paragraph correspond[s] to the last sentence of the first paragraph
based on the order of the event line.” Id. (citing Wagoner, col. 2, ll. 58-67;
col. 3, ll. 1-12). The Examiner concluded that it would have been obvious to
one of ordinary skill in the art to modify the combination of Budra and
Haynes by
substituting Wagoner’s teaching of arranging the paragraphs
according to continuity of theme in order to provide an effective
and comprehensive learning system for teaching written
composition skills to students of any age or educational level,
and identifying key themes used in successful writing and
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provide a clear outline of sentence and paragraph interaction
within composition.
Id.
Claims 1, 6, 21, and 24-302
Appellants raise several arguments with respect to this rejection.
First, Appellants contend that neither Budra nor Haynes disclose paragraph
ordering or sequencing. Br. 5-7. The Examiner equated Haynes’s
disclosure of ordering sentences with ordering paragraphs. See Ans. 4
(“Haynes teaches presenting the student with a sequencing activity
includ[ing] presenting the student with randomly arranged sentences
(paragraph) from the lesson passage and instructions for the student to
arrange the sentences (paragraph) into their correct order.” (citing Haynes,
col. 16, ll. 47-51)).
Claim 1 is directed to a computer-implemented method for building
skills in constructing and organizing multiple-paragraph stories and
expository passages in a student, comprising a computer device performing,
inter alia, “performing a paragraph ordering task.” The claim later specifies
“wherein each of the paragraphs comprises a plurality of sentences.”
We interpret the claim language, where necessary, giving the claims
their broadest reasonable interpretation in light of the Specification.
In re Crish, 393 F.3d 1253, 1256 (Fed. Cir. 2004). The ordinary and
customary meaning of “paragraph” in this context is “[a] distinct division of
written or printed matter that begins on a new, usually indented line, consists

2 Appellants do not separately argue claims 1, 6, 21, and 24-30. See
Br. 5-11. We select claim 1 as representative. Accordingly, claims 6, 21,
and 24-30 stand or fall with claim 1. See 37 C.F.R. § 41.37(c)(1)(vii)
(2011); see also In re Lovin, 652 F.3d 1349, 1351 (Fed. Cir. 2011).
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of one or more sentences, and typically deals with a single thought or topic
or quotes one speaker’s continuous words.” See The American Heritage
Dictionary of the English Language (2007), accessed at
http://www.credoreference.com/entry/hmdictenglang/paragraph (last visited:
Nov. 18, 2013); see also Advisory Act. (mailed Mar. 2, 2010) at 3 (noting
the definition of “paragraph”). The use of “paragraph” in the claims is
consistent with its ordinary and customary meaning, with the distinction that
the “wherein” clause further narrows the term to “a plurality of sentences”
rather than “one or more sentences.”
The Examiner relied upon Haynes as disclosing ordering of
paragraphs containing only one sentence. See Ans. 6 (noting that the
combination of Budra and Haynes does not disclose ordering paragraphs
where each paragraph comprises a plurality of sentences). The Examiner
thus relied upon Wagoner, not Budra or Haynes, as disclosing a paragraph
ordering task wherein each paragraph comprises a plurality of sentences.
See Ans. 6. Accordingly, Appellants’ arguments with respect to Budra and
Haynes are not persuasive because they fail to account for the Examiner’s
reliance upon Wagoner. See In re Keller, 642 F.2d 413, 426 (CCPA 1981)
(“one cannot show non-obviousness by attacking references individually
where, as here, the rejections are based on combinations of references”);
In re Young, 927 F.2d 588, 591 (Fed. Cir. 1991) (“The test for obviousness
is what the combined teachings of the references would have suggested to
one of ordinary skill in the art.”).
Second, Appellants assert that the Examiner’s motivation to combine
Budra and Haynes is “not specific to the claimed limitations, but rather, is so
broad as to be applicable to virtually any innovation or technique that
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improves comprehension skills, which is clearly improper.” Br. 7. We
disagree. Budra is directed to “[a] computer program . . . to cross-train
students in language development skills such as letter-word correspondence,
word recognition, vocabulary, and sentence and paragraph comprehension.”
Budra, Abstract. Haynes is similarly directed to an “automated,
computer-based reading tutoring system . . . includ[ing] a plurality of
instructional passages of different, predetermined levels of reading
difficulty.” Haynes, Abstract. Thus, both references are directed to different
strategies directed to a common purpose to improve a student’s
comprehension skills. In light of the similarity of the references and their
mutual focus on developing and improving a student’s comprehension skills,
the Examiner’s rationale has a rational underpinning to support the finding
that one of ordinary skill would have been prompted to combine their
teachings in this manner. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398,
417 (2007) (“if a technique has been used to improve one device, and a
person of ordinary skill in the art would recognize that it would improve
similar devices in the same way, using the technique is obvious unless its
actual application is beyond his or her skill”). Accordingly, Appellants’
argument is not persuasive.
Third, Appellants contend that Wagoner is non-analogous art. Br. 8.
Appellants assert that Wagoner is “directed to helping a student write a
composition with such paragraphs using physical ‘articles’ or
‘manipulatives[,]’ . . . e.g., blocks, that represent (but do not present or
explicate) paragraphs, themes, and so forth.” Id. Appellants contend that
Wagoner does not “teach or even hint at student ordering (pre-)written
paragraphs. Id.
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“A reference qualifies as prior art for an obviousness determination
under § 103 only when it is analogous to the claimed invention.”
In re Klein, 647 F.3d 1343, 1348 (Fed. Cir. 2011) (citing Innovention Toys,
LLC v. MGA Entm’t., Inc., 637 F.3d 1314, 1321 (Fed. Cir. 2011), and
In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004)). “Two separate tests
define the scope of analogous art: (1) whether the art is from the same field
of endeavor, regardless of the problem addressed and, (2) if the reference is
not within the field of the inventor’s endeavor, whether the reference still is
reasonably pertinent to the particular problem with which the inventor is
involved.” Id. (quoting In re Bigio, 381 F.3d at 1325). The “field of
endeavor” test “requires the PTO to determine the appropriate field of
endeavor by reference to explanations of the invention’s subject matter in
the patent application, including the embodiments, function, and structure of
the claimed invention.” In re Bigio, 381 F.3d at 1325. If the structure and
function of the prior art would have been considered by a person of ordinary
skill in the art because of similarity to the structure and function of the
claimed invention as disclosed in the application, the prior art is properly
considered within the same field of endeavor. See id. at 1325-26.
Appellants’ claimed invention is directed to a method and apparatus
for building skills in constructing and organizing multiple-paragraph stories
and expository passages. Spec., Title. Wagoner is directed to written
composition teaching methods and aids. Wagoner, Title; see also id. col. 5,
ll. 33-36 (“Each manipulative or article represents a paragraph in written
composition and has a first indicia representing a paragraph theme. Second
indicia on the manipulative represent sentences and sentence themes within
a paragraph.”). Although Wagoner uses manipulatives to represent
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sentences and themes within a paragraph and ordering paragraphs within a
composition, and the claimed invention uses pre-written paragraphs for a
student to order into a correct sequence, both are directed to the same field
of endeavor—educational tools and methods to enhance a student’s
comprehension skills, specifically related to ordering and sequencing
writing, including order and sequencing of paragraphs. Accordingly,
Appellants have not persuaded us that Wagoner is non-analogous art.
Fourth, Appellants assert that Budra, Haynes, and Wagoner, even if
combined, do not result in Appellants’ claimed invention “at least because
none of the references teaches paragraph ordering.” Br. 8. Appellants’
argument here is nearly identical to their first argument except Appellants
include Wagoner in this contention. As we explained supra, the Examiner’s
proposed combination relies upon Haynes for ordering single-sentence
paragraphs and Wagoner for ordering paragraphs of more than one sentence
(i.e., a plurality of sentences). Thus, while a single reference does not
disclose paragraph ordering wherein a paragraph consists of a plurality of
sentences, the Examiner’s proposed combination discloses each of these
elements. Accordingly, we are not persuaded by Appellants’ argument. See
In re Keller, 642 F.2d 413, 426 (CCPA 1981) (“one cannot show
non-obviousness by attacking references individually where, as here, the
rejections are based on combinations of references”); In re Young,
927 F.2d 588, 591 (Fed. Cir. 1991) (“The test for obviousness is what the
combined teachings of the references would have suggested to one of
ordinary skill in the art.”).
Fifth, Appellants contend that “no proper motivation to combine
Wagoner with Budra and Haynes has been provided.” Br. 8. Appellants
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assert that the Examiner’s “suggested motivation . . . is simply a description
of objectives regarding Wagoner, and is not germane to Appellant’s [sic]
claim, at least because it has nothing whatsoever to do with ordering
pre-existing paragraphs.” Id. at 9.
In the Examiner’s response to Appellants’ argument, the Examiner
further explained why one of ordinary skill in the art would have been
prompted to combine Wagoner’s teaching of a paragraph with one or more
sentences with the combination of Budra and Haynes. The Examiner
explained that it would have been obvious to modify the combination of
Budra and Haynes “in order to help develop children’s knowledge in
composing a multi[-]paragraph story by properly structuring paragraphs.”
Ans. 18. In other words, the Examiner’s rationale is that one of ordinary
skill in the art would have been prompted to modify Haynes’s disclosure of
ordering single-sentence paragraphs to the ordering of multi-sentence
paragraphs because Wagoner teaches the benefits of using multi-sentence
paragraphs for teaching written composition. The Examiner’s rationale has
a rational underpinning and we see no reason why the rationale for
combining Wagoner would need to pertain to pre-existing paragraphs when
Haynes teaches the concept of ordering pre-existing sentences. In other
words, the Examiner was not relying on Wagoner for ordering pre-existing
paragraphs; rather, the Examiner relied upon Wagoner for the simple
disclosure of paragraphs including a plurality of sentences. Accordingly, we
are not persuaded by Appellants’ argument.
Sixth, Appellants contend that the cited references do not disclose “a
computer-implemented method for building skills in constructing and
organizing multiple-paragraph stories and expository passages in a
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student,” as recited in claim 1. Br. 9. Appellants assert that the Examiner’s
citations do not “teach or suggest constructing and organizing
multiple-paragraph stories and expository passages, nor, more specifically,
ordering paragraphs in a multi-paragraph passage, as claimed. Id.
Appellants similarly contend that “[f]or similar reasons, the cited art also
fails to disclose any of the other clauses of claim 1 specifically related to
paragraph ordering” because “none of the cited references mention or even
hint at a paragraph ordering exercise.” Id. at 10-11.
Appellants’ arguments rely upon the same positions we found
unpersuasive supra. Accordingly, we are not persuaded by Appellants’
recast arguments.
Claims 8, 13-15, and 17-20
Appellants assert that “[g]iven the cited art’s failure to disclose a
paragraph sequencing or ordering task in general, and more specifically, its
failure to disclose the particular paragraph ordering method elements recited
in claim 8, . . . the cited art fails to teach or suggest all the features of claim
8.”3 Br. 12.
Appellants’ arguments rely upon the same arguments which we
addressed and found unpersuasive in the context of claim 1. Accordingly,
for the reasons we explained supra, Appellants’ arguments are unpersuasive
in the context of claim 8.

3 Appellants do not separately argue claims 8, 13-15, and 17-20. See
Br. 11-12. We select claim 8 as representative. Accordingly, claims 13-15
and 17-20 stand or fall with claim 8. See 37 C.F.R. § 41.37(c)(1)(vii)
(2011); see also In re Lovin, 652 F.3d 1349, 1351 (Fed. Cir. 2011).
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Claim 23
Appellants assert that because Budra fails to disclose performing
paragraph sequencing trials, it does not disclose “repeating the performance
of such trials as claimed.” Br. 13. Appellants’ argument, although not fully
developed in this section of their Brief, relies upon the same positions we
found unpersuasive in the context of claim 1. Accordingly, Appellants’
arguments are unpersuasive in the context of claim 23 as well.
Rejection II –
Obviousness over Budra, Haynes, Wagoner, and Van Schaack
The Examiner concluded that the combination of Budra, Haynes,
Wagoner, and Van Schaack would have rendered the subject matter of claim
22 obvious to one of ordinary skill in the art at the time of invention.
Ans. 14-15. Claim 22 indirectly depends from claim 1. Appellants assert
that claim 22 is nonobvious for the reasons they raised in the context of
claim 1 and Rejection I. Because we found Appellants’ contentions
unpersuasive, as explained supra, we sustain Rejection II.
DECISION
We AFFIRM the Examiner’s decision rejecting claims 1, 6, 8, 13-15,
and 17-30.
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

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