Ex Parte Mathan et al

Patent Trial and Appeal BoardApr 24, 2013

11350310 (P.T.A.B. Apr. 24, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte SANTOSH MATHAN, STEPHEN D. WHITLOW, MICHAEL C. DORNEICH, and PATRICIA M. VERVERS ____________ Appeal 2011-001567 Application 11/350,310 Technology Center 3700 ____________ Before JOHN C. KERINS, NEIL T. POWELL, and JILL D. HILL, Administrative Patent Judges. HILL, Administrative Patent Judge. DECISION ON APPEAL Appeal 2011-001567 Application 11/350,310 2 STATEMENT OF THE CASE Santosh Mathan et al. (Appellants) appeal under 35 U.S.C. § 134 from a final rejection of claims 1-14 and 16-24. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE and, pursuant to our authority under 37 C.F.R. § 41.50(b) (2011), we designate a NEW GROUND OF REJECTION for claims 1-14 and 16-24. CLAIMED SUBJECT MATTER The claimed subject matter relates to “a method of training a student in real time using the assessment of a student’s cognitive state during tasks . . . to help evaluate and provide feedback to the student.” Spec., para. [0015]. Claims 1-14 and 16-24 are pending and subject to this appeal. Claim 1 is illustrative of the subject matter on appeal and is reproduced below with the key disputed limitation emphasized: 1. A method of teaching a student, the method comprising: attaching a plurality of sensors to the student to obtain the student's cognitive state; providing a temporally continuous simulation to a student that has an objective to accomplish, wherein to achieve the objective a plurality of definable tasks must be correctly completed; via a processor, tracking and recording progress of the student through the temporally continuous simulation; associating an output of the plurality of sensors with the progress of the student during a term of the temporally continuous simulation; providing direction to the temporally continuous simulation during the term of the temporally continuous simulation based at least in part on the output from the plurality of sensors; Appeal 2011-001567 Application 11/350,310 3 marking areas in the temporally continuous simulation based on the student's cognitive state for later review; and providing feedback to the student as the student completes the plurality of tasks based at least in part upon performance in completing each task and a student's cognitive state while completing the task. EVIDENCE The Examiner relies on the following evidence: Lee US 5,267,865 Dec. 7, 1993 Hodges US 5,807,114 Sep. 15, 1998 Ho US 2002/0086272 A1 Jul. 4, 2002 Obrador US 2003/0118974 A1 Jun. 26, 2003 Freer US 6,626,676 B2 Sep. 30, 2003 REJECTION Appellants seek review of the Examiner’s rejection of claims 1-14 and 16-24 under 35 U.S.C. § 102(b) as anticipated by Freer.1 App. Br. 9. ANALYSIS We do not sustain the Examiner’s rejections. Pursuant to our authority under 37 C.F.R. § 41.50(b), we enter a NEW GROUND OF REJECTION against claims 1-14 and 16-24 under 35 U.S.C. § 112, second paragraph, as indefinite for failing to particularly point out and distinctly claim the subject matter that Appellants regard as the invention. 35 U.S.C. § 112, second paragraph. Because claims 1-14 and 16-24 are indefinite, the prior art rejections must fall, pro forma, because they necessarily are based 1 In the Final Rejection, only claims 1, 2, 5-13, 19, 20, 22, and 23 were listed as rejected under 35 U.S.C. § 102(b). Ans. 3. However, the Examiner’s analysis indicated that claims 14, 16, and 18 were also rejected under 35 U.S.C. § 102(b). Ans. 6-7. Claims 3, 4, 17, 21, and 24 were rejected under 35 U.S.C. § 103(a). Ans. 9-11. Appeal 2011-001567 Application 11/350,310 4 on speculative assumptions as to the scope of the claims. See In re Steele, 305 F.3d 859, 862-63 (CCPA 1962). The language of a claim satisfies 35 U.S.C. § 112, second paragraph, only if “one skilled in the art would understand the bounds of the claim when read in light of the specification.” Exxon Rsrch. & Eng'g Co. v. U.S., 265 F.3d 1371, 1375 (Fed. Cir. 2001). “It is the applicants' burden to precisely define the invention, not the PTO's. See 35 U.S.C. § 112, ¶ 2 . . . [. T]his section puts the burden of precise claim drafting squarely on the applicant.” In re Morris, 127 F.3d 1048, 1056 (Fed. Cir. 1997). Independent claims 1, 9, and 19 recite “marking areas in the temporally continuous simulation.” Independent claim 14 recites “a controller adapted to . . . mark areas in the temporally continuous simulation.” Independent claim 22 recites “a means of marking areas in the temporally continuous simulation.” Thus, the marking of areas is recited in each of the independent claims, and is also included in the claims that depend therefrom. The Examiner alleges that Freer discloses the claimed marking areas and marking means. Ans. 4-8 and 12-16. Appellants argue that Freer does not disclose marking areas or a marking means as claimed. App. Br. 10-12. Appellants argue that “the cited portions of Freer, and Freer in general, fail[] to describe . . . ‘marking areas in [a] temporally continuous simulation based on the student’s cognitive state for later review.’” App. Br. 12. Regarding this claim limitation, Appellants also argue that, during patent examination, claim language should be read in light of the specification as it would be interpreted by one of ordinary skill in the art. Reply Br. 4. However, in the present case, we are unable to read the claims Appeal 2011-001567 Application 11/350,310 5 in light of the specification because Appellants’ Specification does not define “marking areas” of the temporally continuous simulation, and Appellants fail to explain how one skilled in the art would interpret that limitation. Appellants’ Specification merely states that “[t]he controller 106 further associates signals sent by the sensing equipment 102 with the progress of the student in the simulation” (Spec., para. [0018]), that the “simulation . . . can be combined with information regarding a student[’]s state to provide an augmented tutoring scenario” (Spec., para. [0019]), that “information regarding the student’s progress in the simulation and the student’s cognitive state is combined to provide the student with guidance” (id.), and that “the system indexes text or video segments where the student’s attention level was low and prompts the students to revisit those segments” (Spec., para [0020]). There is no indication by Appellants that the disclosed association, combination, or indexing teach the claimed “marking areas,” and we decline to make such a conclusion. Without guidance as to the meaning of “marking areas” of the temporally continuous simulation, we are unable to determine the bounds of the claims and we therefore are unable to determine whether Freer includes the subject matter of claims 1-14 and 16-24. DECISION We REVERSE the Examiner's rejections of claims 1-14 and 16-24. Pursuant to our authority under 37 C.F.R. § 41.50(b), we enter a NEW GROUND OF REJECTION against claims 1-14 and 16-24 under 35 U.S.C. Appeal 2011-001567 Application 11/350,310 6 § 112, second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which Appellants regard as the invention. 37 C.F.R. § 41.50(b) provides that, “[a] new ground of rejection pursuant to this paragraph shall not be considered final for judicial review.” Regarding the new ground of rejection, 37 C.F.R. § 41.50(b) also provides that Appellants must, WITHIN TWO MONTHS, exercise one of the following options: (1) Reopen prosecution. Submit an appropriate amendment of the claims so rejected or new evidence relating to the claims so rejected, or both, and have the matter reconsidered by the Examiner, in which event the proceeding will be remanded to the Examiner. . . . (2) Request rehearing. Request that the proceeding be reheard under § 41.52 by the Board upon the same record. . . . 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). REVERSED; 37 C.F.R. § 41.50(b) hh