Ex Parte MasaokaDownload PDFPatent Trial and Appeal BoardMay 21, 201512804519 (P.T.A.B. May. 21, 2015) Copy Citation 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. 12/804,519 07/23/2010 Manabu Masaoka SE0001-US-CIP 5285 7590 05/21/2015 Manabu Masaoka 29707 Island View Drive, Unit 1 Rancho Palos Verdes, CA 90275 EXAMINER UTAMA, ROBERT J ART UNIT PAPER NUMBER 3715 MAIL DATE DELIVERY MODE 05/21/2015 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 PATENT TRIAL AND APPEAL BOARD ____________ Ex parte MANABU MASAOKA ____________ Appeal 2013-003940 Application 12/804,519 Technology Center 3700 ____________________ Before STEFAN STAICOVICI, THOMAS F. SMEGAL, and TIMOTHY J. GOODSON, Administrative Patent Judges. GOODSON, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellant Manabu Masaoka appeals under 35 U.S.C. § 134(a) from the rejection of claims 1–15. Appeal Br. 3. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. CLAIMED SUBJECT MATTER Claim 1 illustrates the subject matter on appeal and is reproduced below: 1. A system for exchanging information, comprising: a communications network; Appeal 2013-003940 Application 12/804,519 2 a communications device; a server for providing over the communications network a lesson to a user through the communications device; wherein the lesson utilizes promotional information as course material to serve an educational purpose and a promotional purpose; a database for storing an input from the user through a feedback device in response to an inquiry regarding the course material; wherein the feedback device is associated with a deliberate selector unit; wherein the input includes a cognitive input from the user in response to the inquiry that includes at least one datum from the deliberate selector unit; a software engine receiving the input, a location of the user, and at least one personal characteristic or trait of the user; wherein the software engine identifies a cognitive baseline on an initial series of cognitive inputs to establish a cognitive reference point to assess a subsequent series of cognitive inputs; wherein the software engine generates a report comprising the cognitive input from the user relative to the cognitive reference point, a location of the user, and at least one personal characteristic or trait of the user; and wherein the report provides marketing information of an effect of the promotional information on the user. PRIOR ART The Examiner relies on the following evidence in rejecting the claims that are the subject of this appeal: Braunberger Njemanze Ueda Martino US 2003/0077559 A1 US 2003/0187359 A1 US 2003/0208353 A1 US 6,778,807 B1 Apr. 24, 2003 Oct. 2, 2003 Nov. 6, 2003 Aug. 17, 2004 Appeal 2013-003940 Application 12/804,519 3 GROUNDS OF REJECTION Claims 1, 4, and 6–14 stand rejected under 35 U.S.C. § 103(a) as obvious over Ueda, Martino, and Braunberger. Final Act. 2. 1 Claims 2, 3, 5, and 15 stand rejected under 35 U.S.C. § 103(a) as obvious over Ueda, Martino, Braunberger, and Njemanze. Id. at 6. OPINION In rejecting independent claims 1, 4, and 6, the Examiner relies on Braunberger as teaching a database for storing an input from the user through a feedback device, and a feedback device that is associated with a deliberate selector unit. Final Act. 4 (citing Braunberger ¶¶ 42, 68). The Examiner proposes to combine these aspects of Braunberger with Ueda and Martino, which the Examiner points to as teaching other limitations in independent claims 1, 4, and 6. Id. at 2–4. However, the Examiner does not articulate any reasoning why it would have been obvious to combine these features from Braunberger with Ueda or Martino. The Final Action begins a sentence that appears to have been intended to set forth such an explanation, but leaves the sentence incomplete. See id. at 4. To establish obviousness, “it is not enough to simply show that the references disclose the claim limitations; in addition, ‘it can be important to identify a reason that would have prompted a person of ordinary skill in the art to combine the elements as the new invention does.’” Transocean Offshore Deepwater Drilling, Inc. v. Maersk Contractors USA, Inc., 617 1 Citations to the Final Action refer to the Office Action mailed April 3, 2012. Appeal 2013-003940 Application 12/804,519 4 F.3d 1296, 1303 (Fed. Cir. 2010) (quoting KSR Int'l Co. v. Teleflex, Inc., 550 U.S. 398, 418 (2007)). See also In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) (“[R]ejections 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, lacking any explanation as to why it would have been obvious to combine Braunberger with Ueda and Martino, the Examiner has not carried the burden to demonstrate the obviousness of claims 1, 4, and 6. Accordingly, we do not sustain the rejection of independent claims 1, 4, and 6. We also do not sustain the rejection of claims 7–14, which depend from claim 6. The rejection of dependent claims 2, 3, 5, and 15 is premised on the same reasoning as claims 1, 4, and 6, and the Examiner’s use of Njemanze does not remedy the deficiency of any reasoning to combine Braunberger with Ueda and Martino. See Final Act. 6–7. We therefore do not sustain the rejection of claims 2, 3, 5, and 15. DECISION We reverse the Examiner’s rejection of claims 1, 4, and 6–14 under 35 U.S.C. § 103(a) as obvious over Ueda, Martino, and Braunberger. We reverse the Examiner’s rejection of claims 2, 3, 5, and 15 under 35 U.S.C. § 103(a) as obvious over Ueda, Martino, Braunberger, and Njemanze. REVERSED Ssc Copy with citationCopy as parenthetical citation