Ex Parte Kim

Patent Trial and Appeal Board

Mar 28, 2016

10553479 (P.T.A.B. Mar. 28, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
10/553,479 10/17/2005 Mi YeonKim
24978 7590 03/30/2016
GREER, BURNS & CRAIN, LTD
300 S. WACKER DR.
SUITE 2500
CHICAGO, IL 60606
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.
5540.115880 8900
EXAMINER
BOYCE, ANDRE D
ART UNIT PAPER NUMBER
3623
NOTIFICATION DATE DELIVERY MODE
03/30/2016 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
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PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MI YEON KIM
Appeal2014-001309
Application 10/553,479
Technology Center 3600
Before BIBHU R. MOHANTY, MICHAEL W. KIM, and
MATTHEWS. MEYERS, Administrative Patent Judges.
MOHANTY, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
The Appellant seeks our review under 35 U.S.C. § 134 of the final
rejection of claims 1-34 which are all the claims pending in the application.
We have jurisdiction under 35 U.S.C. § 6(b ).
SUMMARY OF THE DECISION
We REVERSE.
Appeal2014-001309
Application 10/553,479
THE INVENTION
The Appellant's claimed invention is directed to a method of
providing answers to a question wherein the quality of the question and
answer data posted by users is evaluated to improve the quality on the
Internet (Spec. 1 :6-9). Claim 23, reproduced below, is representative of the
subject matter on appeal.
23. A method that utilizes a processor to provide answers to a
question, comprising:
providing a question input by a first user on a given web
page;
receiving an answer to the question from a second user for
an answer period;
providing the answer on the web page in association with
the question;
receiving input for adopting the answer and evaluation
data for the adopted answer from the first user, the input and the
evaluation data being received after the answer period has
elapsed; and
increasing point data, using the processor, associated with
the second user who input the adopted answer based on the
evaluation data.
THE REJECTIONS
The following rejections are before us for review:
1. Claims 23, 24, 26, 29, and 30 are rejected under 35 U.S.C.
§ 102(b) as anticipated by Gardner (US 6,064,978, iss. May 16, 2000).
2. Claims 1, 3, 4, 6-22, 33, and 34 are rejected under 35 U.S.C.
§ 103(a) as unpatentable over Gardner and Heinberg (US 6,364,667 Bl, iss.
Apr. 2, 2002).
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Appeal2014-001309
Application 10/553,479
3. Claims 2, 5, 25, 27, 28, 31, and 32 are rejected under 35 U.S.C.
§ 103(a) as unpatentable over Gardner, Heinberg, and Marks (US
2003/0163356 Al, pub. Aug. 28, 2003).
FINDINGS OF FACT
We have determined that the findings of fact in the Analysis section
below are supported at least by a preponderance of the evidence 1.
ANALYSIS
Rejection under 35 USC§ 102(b)
The Appellant argues in the Appeal Brief at pages 9-11 that the
rejection of claim 23 is improper because the cited prior art fails to disclose
the claim limitation for:
receiving input for adopting the answer and evaluation data for
the adopted answer from the first user; the input and the
evaluation data being received after the answer period has
elapsed.
In contrast, the Examiner has determined that the cited claim
limitation is found in Gardner at steps 104, 106, 108, 110, 112, column 3,
lines 21-27, and column 3, lines 40-53 (Final Act. 3, 20, Ans. 2, 3).
We agree with the Appellant. Here, the cited claim limitation above
requires that the input for adopting the answer and evaluation data are
received "after the answer period has elapsed" and this has not been shown
in the above citations. For example, Gardner at the cited steps 104, 106,
1 See Ethicon, Inc. v. Quigg, 849 F.2d 1422, 1427 (Fed. Cir. 1988)
(explaining the general evidentiary standard for proceedings before the
Patent Office).
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Appeal2014-001309
Application 10/553,479
108, 110, and 112 fails to disclose this claim limitation. Note that in
Gardner, the evaluation data in step 108 are received before the answer has
been completed in step 110. Gardner at column 3, lines 40-53 does disclose
that the average quantitative evaluation is assigned at step 110, but this is an
assignment and not the receiving step. For these reasons, the rejection of
claim 23 and its dependent claims under this rejection is not sustained.
The Appellant argues in the Appeal Brief at page 11 that the rejection
of claim 29 is improper because the cited prior art fails to disclose the claim
limitation for:
(b) receiving answers for the question from a second user for a
predetermined period.
In contrast, the Examiner has determined that the cited claim
limitation is found in Gardner at steps 106, 108, 110, 112, and column 3,
lines 34--45 (Final Act. 4, 21, Ans. 3).
We agree with the Appellant. Here, the cited claim limitation requires
receiving answers for the question from a second user "for a predetermined
time period" and the above citations to Gardner fail to disclose this. For
example, in Figure 1, the answer is completed when steps 104, 106, and 108,
are done, which we are not persuaded is a "predetermined" time period,
because it does not involve any units of time that may elapse. See Spec. Fig.
4a; 8:24--27. For this reason, this rejection of claim 29 and its dependent
claims is not sustained.
Rejections under 35 USC§ 103(a)
The Appellant argues that the rejection of claim 1 is improper because
there would have been no reason for the cited combination (App. Br. 12-14,
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Appeal2014-001309
Application 10/553,479
Reply Br. 7-9). The limitations at issue are "(a) receiving a question from a
first user; ... ( c) receiving evaluation data for the question from a second
user or an operator of the web page, the evaluation data of the question being
an indication of the quality of the question; (e) ... wherein the first user, the
second user, and the operator are different from each other."
In contrast, the Examiner has determined that the cited combination of
references is proper because "combining prior art elements accordingly to
known methods to yield predictable results" is obvious (Final Act. 5, 6, Ans.
4, 5).
We agree with the Appellant. Gardner is directed to the asking and
motivating the answering of questions over a computer network (Gardner,
col. 1:45--47). Heinberg is directed to evaluating mastery about material by
the ability of members to write questions about the material that discriminate
between test takers who do well, and those who do not (Heinberg, col. 2:53-
60). In KS'R Int'! Co. v. Telejlex Inc., 550 U.S. 398 (2007), the Supreme
Court at 418 noted that in an obviousness analysis "rejections on
obviousness grounds cannot be sustained by mere conclusory statements;
instead, there must be some articulated reasoning with some rational
underpinning to support the legal conclusion of obviousness." Here,
Heinberg does teach the concept of evaluation, but the evaluation is for the
submitters (see Figure 1, step 115), and not the questions themselves, as
required by the claim. Accordingly, we are unpersuaded there is an
adequate articulated reasoning with rational underpinnings without
impermissible hindsight for the cited combination to meet the specific
limitations of claim 1.
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Appeal2014-001309
Application 10/553,479
For these reasons the rejection of claim 1 and its dependent claims
under this rejection is not sustained. Independent 33 contains similar subject
matter and the rejection of these claims and its dependent claims under this
rejection is not sustained for the same reasons given above.
Independent claim 8 contains a limitation for "receiving a vote for an
answer from a third user during a voting period, the vote for the answer
indicating that the third user affirms the voted on answer from among one or
more provided answers." Here, the rejection of record for claim 8 lacks
articulated reasoning with rational underpinnings without impermissible
hindsight to meet this claim limitation in the context of the claim for the
same reasons as those addressed above. For these same reasons the rejection
of claim 8 and its dependent claims under this rejection is not sustained.
CONCLUSIONS OF LAW
We conclude that Appeiiant has shown that the Examiner erred in
rejecting the claims as listed in the Rejections section above.
DECISION
The Examiner's rejections of claims 1-34 are reversed.
REVERSED
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