Ex Parte Menon et al

Patent Trial and Appeal Board

Dec 18, 2018

13913965 (P.T.A.B. Dec. 18, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/913,965 06/10/2013
29989 7590 12/20/2018
HICKMAN PALERMO BECKER BINGHAM LLP
1 ALMADEN BOULEVARD
FLOOR 12
SAN JOSE, CA 95113
Satish Menon
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.
60201-0343 8948
EXAMINER
ZAMAN, SADARUZ
ART UNIT PAPER NUMBER
3715
NOTIFICATION DATE DELIVERY MODE
12/20/2018 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):
usdocket@h35g.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte SATISH MENON,
JAY AKUMAR MUTHUKUMARASAMY,
PARTHA SAHA, KURTIS S. TAYLOR, and
JAMES R. UTTER 1
Appeal2017-000206
Application 13/913 ,965
Technology Center 3700
Before CAROLYN D. THOMAS, BRADLEY W. BAUMEISTER, and
NABEEL U. KHAN, Administrative Patent Judges.
Opinion for the Board filed by Administrative Patent Judge
CAROLYN D. THOMAS.
Opinion Concurring filed by Administrative Patent Judge
BRADLEY W. BAUMEISTER.
THOMAS, Administrative Patent Judge.
DECISION ON APPEAL
1 Appellants list Apollo Education Group, Inc. as the real party in interest.
Appeal Brief filed November 19, 2015 (App. Br. 2).
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Application 13/913,965
STATEMENT OF THE CASE
Appellants seek our review under 35 U.S.C. § 134(a) of the
Examiner's Final Rejection of claims 1-20, all the pending claims in the
present application (see Claims Appendix). We have jurisdiction over the
appeal under 35 U.S.C. § 6(b).
We REVERSE.
The present invention relates generally to utilizing a course skeleton
for adaptive learning (see Spec., Abstract).
Claim 1 is illustrative:
1. A method comprising:
maintaining a hierarchy of learning goals that includes a
plurality of learning goal nodes, each node corresponding to a
learning goal;
adding, to the hierarchy of learning goals, a first learning
goal node corresponding to a particular learning goal;
wherein the first learning goal node is associated with a
particular set of learning goal metadata;
wherein the particular set of learning goal metadata
includes a particular set of metadata items for finding learning items;
wherein the particular set of metadata items does not
identify any particular learning items;
maintaining a learning item repository, wherein the
learning item repository includes a plurality of learning items;
receiving a request for learning items for a particular
user;
automatically determining that the request is for learning
items to assist the particular user to achieve the particular learning
goal;
in response to determining that the request is for learning
items to assist the particular user to achieve the particular learning
goal:
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automatically identifying the first learning goal
node in the hierarchy of learning goals,
automatically identifying the particular set of
metadata items included in the particular set of learning goal
metadata associated with the first learning goal node, and
automatically using the particular set of metadata
items to identify a particular learning item, from the learning
item repository, to facilitate achievement of the particular
learning goal; and
automatically providing the particular learning item as a
response to the request for learning items;
wherein the steps of maintaining the hierarchy of
learning goals, maintaining the learning item repository, receiving the
request, using the particular set of metadata items, and providing the
particular learning item are performed by one or more computing
devices.
RI. Claims 1-20 stand rejected under 35 U.S.C. § 101 as being
directed to patent-ineligible subject matter (Final Act. 2--4).
R2. Claims 1-20 stand rejected under 35 U.S.C. § I03(a) as
unpatentable over Krebs et al., (US 2007/0099161 Al; published May 3,
2007; hereinafter "Krebs"); and Siefert (US 6,334,779 Bl; issued Jan. 1,
2002) (Final Act. 4--10).
ANALYSIS
Claim Construction
For the purposes of this Decision, we determine that no explicit claim
constructions are needed to resolve the issues before us. See, e.g., Wellman,
Inc. v. Eastman Chem. Co., 642 F.3d 1355, 1361 (Fed. Cir. 2011) ("[C]laim
terms need only be construed 'to the extent necessary to resolve the
controversy.' ") ( citation omitted) ( citing Vivid Techs., Inc. v. Am. Sci. &
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Eng'g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)). Contrary to the positions
presented below in the concurring opinion, we note that neither Appellants
nor the Examiner present any controversy regarding the claimed limitation
"automatically," presumably because it did not relate to any of the specific
arguments presented by Appellants.
We review the appealed rejections for error based upon the issues
identified by Appellants, and in light of the arguments and evidence
produced thereon. Ex parte Frye, 94 USPQ2d 1072, 107 5 (BP AI 2010)
(precedential).
Re} ection under § 101
Issue 1: Did the Examiner err in determining that the claims are
directed to patent-ineligible subject matter?
Alice Corp. Pty. v. CLS Bankint'l, 134 S. Ct. 2347 (2014), identifies a
two-step framework for determining whether claimed subject matter is
judicially excepted from patent eligibility under § 101. According to Alice
step one, "[ w ]e must first determine whether the claims at issue are directed
to a patent-ineligible concept," such as an abstract idea. Alice, 134 S. Ct. at
2355. "If the claims are not directed to an abstract idea [or other patent-
ineligible concept], the inquiry ends. If the claims are 'directed to' an
abstract idea, then the inquiry proceeds to the second step of the Alice
framework." McRO, Inc. v. Bandai Namco Games Am. Inc., 837 F.3d 1299,
1312 (Fed. Cir. 2016). In analyzing whether a claim is directed to an
abstract idea, we look to other decisions where similar concepts were
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previously found abstract by the courts. See Amdocs (Israel) Ltd. v. Openet
Telecom, Inc., 841 F.3d 1288, 1294 (Fed. Cir. 2016).
Step One
In this regard, with respect to independent method claim 1, and
similarly, computer readable media claim 11, the Examiner determines that
the claims are directed to at least the abstract idea of "maintaining hierarchy
of learning goals in association with metadata searched for learning items"
(Final Act. 3) and "organizing human activities" (id. at 11 ). The Examiner
further determines that "[t]his is like comparing new and stored information
and using rules to identify options like ... SmartGene" (Ans. 3; see also id.
at 13).
For example, in SmartGene, Inc. v. Advanced Biological
Laboratories, SA, the Federal Circuit concluded that claims reciting methods
and systems of selecting a therapeutic treatment regimen for a patient with a
known disease were directed to an abstract idea. See SmartGene, Inc. v.
Advanced Biological Labs., SA, 555 Fed. App'x 950, 955 (Fed. Cir. 2014)
( claim directed to "the mental steps of comparing new and stored
information and using rules to identify medical options," which was held to
be unpatentable subject matter); Elec. Power Grp. LLC v. Alstom S.A., 830
F.3d 1350, 1353-54 (Fed. Cir. 2016) (presenting the results of the collection
and analysis without more are patent-ineligible abstract concepts).
We find that the Examiner's cogent analysis relying on judicial
examples (see Ans. 3), shows the Examiner provided an adequate basis for
determining that the claims are directed to an abstract idea.
Appellants challenge the Examiner's determinations on the ground
that ( 1) "[ t ]he Office Action fails to establish a prima facie case of
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unpatentability;" and (2) "[t]his application qualifies for streamlined§ 101
analysis" (App. Br. 5).
Here, the claimed sequence of steps in claim 1 cover employing
computing devices to perform functions, such as maintaining a hierarchy of
learning goals, adding to the hierarchy, maintaining a repository, receiving a
request for items, determining that the request is for items, identifying the
first learning goal node, identifying particular set of metadata, using the
metadata, and providing the particular learning item (see claim 1 ).
However, information collection and analysis, including when limited to
particular content, e.g., learning goals, is within the realm of abstract ideas.
Elec. Power Grp., 830 F.3d at 1353 (holding that "collecting information,
analyzing it, and displaying certain results of the collection and analysis" are
"a familiar class of claims 'directed to' a patent-ineligible concept.").
As such, the abstract idea here is not meaningfully different from the
ideas found to be abstract in other cases. Furthermore, we note that just
because claim 1 includes more words than the phrase the Examiner uses as
an articulation of the abstract idea is an insufficient reason to persuasively
argue that claim 1 is not directed to an abstract idea. Stated differently, the
identified abstract idea need not encompass every claim limitation.
Otherwise, there would be no need for step two of the Alice inquiry. Alice,
134 S. Ct. at 2355.
The Examiner analyzed the claims using the Mayo/Alice two-step
framework. Thus, the Examiner notified Appellants of the reasons for the
rejection "together with such information and references as may be useful in
judging of the propriety of continuing the prosecution of [the] application."
35 U.S.C. § 132. Therefore, contrary to Appellants' assertions supra, in
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doing so, the Examiner set forth a prima facie case of unpatentability such
that the burden shifted to Appellant to demonstrate that the claims are
patent-eligible.
In regard to Appellants' argument that a streamline eligibility analysis
should be applied to the present claims (see App. Br. 5), we find that
Appellants mischaracterizes the purpose of section l(B)(3) of the 2014
Interim Guidance on Patent Subject Matter Eligibility guidelines as placing
a requirement on the Examiner ("section l(B)(3) requires" (App. Br. 17)).
Rather, section 1 (B)(3) is available to the Examiner as a discretionary
streamlined § 101 Alice/Mayo analysis favoring Applicant. Section 1 (B)(3)
is explicit that "if there is doubt as to whether the applicant is effectively
seeking coverage for a judicial exception itself, the full analysis should be
conducted. " Emphasis added. Contrary to Appellant's argument, the
streamlined patent-eligibility analysis under section l(B)(3) is not required
to be available to Appellants; rather, it is at the Examiner's discretion. As
such, the Examiner choosing to perform a full § 101 Alice/Mayo analysis is
not an error.
Thus, we agree with the Examiner that the claims are directed to an
abstract idea.
Step Two
We now tum to the second step of the Alice framework: "a search for
an 'inventive concept'-i.e., an element or combination of elements that is
'sufficient to ensure that the patent in practice amounts to significantly more
than a patent upon the [ineligible concept] itself."' Alice, 134 S. Ct. at 2355
(alteration in original) (quoting Mayo Collaborative Servs. v. Prometheus
Labs., Inc., 566 U.S. 66, 72-73 (2012)).
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The Examiner determines that "[t]he additional element(s) ...
amount(s) to no more than [] (i) mere instructions to implement the idea on a
computer, and (ii) recitation of [a] generic computer device that serves to
perform generic computer functions [ that are] only well-understood, routine,
and conventional activities" (Final Act. 3). The Examiner further concludes
that the claims merely illustrate "standard search activity [as] known in
[prior] art Krebs" (Ans. 15) and that the additional elements "are
organization of information through mathematical correlations" (id.).
Appellants contend that "[b ]ecause several additional elements were
not even identified in the Office Action, much less considered individually
and collectively," the Examiner has not sufficiently shown that the claims do
not amount to "significantly more" (see App. Br. 19) or "are well-
understood, routine, and conventional activities" (id. at 20). We agree with
Appellants.
Specifically, Appellants highlight various limitations, including the
claimed in response to determining that the request is for learning items ...
automatically identifying the first learning goal node in the hierarchy of
learning goals [ and] automatically identifying the particular set of metadata
items ... associated with the first learning goal node (see App. Br. 22-23)
and point out that "limitations that are so specific as to distinguish all art of
record cannot properly be deemed to be generic as to qualify as a 'generic
computer function"' (id. at 23).
Here, we conclude that the Examiner has not set forth with sufficient
specificity or provided any factual finding that the specifically claimed
manner of identifying the first learning goal and the metadata included
therein is well-understood, routine, or conventional. Berkheimer v. HP Inc.,
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No. 2017-1437, slip op. at 14 (Fed. Cir. Feb. 8, 2018) ("Whether something
is well-understood, routine, and conventional to a skilled artisan at the time
of the patent is a factual determination."). Instead, the Examiner merely
directs our attention to conventional search techniques, rather than the
specifics noted in the claims.
Thus, under Alice Step Two, the Examiner has not properly consider
the elements of the claims, both individually and "as an ordered
combination," to determine whether the additional elements transform the
Examiner's asserted abstract idea into a patent-eligible application.
For the above reasons under step two of Alice, the Examiner's
rejection of claims 1-20 under 35 U.S.C. § 101 is reversed.
Rejection under§ 103(a)
Issue 2: Did the Examiner err in finding that the combined teachings
of Krebs and Siefert teach and/or suggest in response to determining that the
request is for the learning items ... automatically identifying the first
learning goal node, as set forth in claim 1?
Appellants contend that "[t]here is no evidence in Krebs of (a) first
identifying a learning goal node that corresponds to a learning goal for a
request for learning items ... and (b) [] using metadata from the identified
learning goal node to find learning items to return to the user" (App. Br. 34).
We agree with Appellants.
Even if we assume arguendo ( without deciding) that Krebs teaches
"receiving a request for learning items" and "in response to receiving the
request, using the metadata items to identify a particular learning item" as
proffered by the Examiner (see Final Act. 6; see also Ans. 18-20), we do not
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find, and the Examiner has not established that Krebs also, in response to the
request, identifies a first learning goal node and then identifies the particular
set of metadata items ... associated with the first learning goal node, as
required by claim 1. Furthermore, it is unclear how ( or if) Siefert is being
used to cure this deficiency of Krebs.
For instance, the Examiner merely notes that "Siefert, however,
teaches the execution of automatically presenting query against a learning
item repository to identify a learning item ... ; identifying the learning item
... ; and presenting the learning item to the student" (see Final Act. 8; see
also Ans. 21 ). However, like with Krebs, the Examiner has not clearly
associated Siefert's teachings with the claimed identifying a first learning
goal node and identifying the particular set of metadata items ... associated
with the first learning goal node, as required by claim 1.
An Examiner cannot entirely ignore any limitation in a claim while
determining whether the subject matter of the claim would have been
obvious. In re Wilson, 484 F.2d 1382, 1385 (CCPA 1970).
Therefore, we are constrained by the record before us to find that the
Examiner erred in rejecting representative claim 1, and also erred in
rejecting claims 2-20 for similar reasons, because they all include the
aforementioned limitations. Because this issue is dispositive regarding our
reversal of the claims under§ 103(a), we need not address any additional
arguments made by Appellants.
Accordingly, we reverse the Examiner's rejection of claims 1-20
under 35 U.S.C. § 103(a).
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DECISION
The Examiner's decision rejecting claims 1-20 under both 35 U.S.C.
§§ 101 and 103(a) are reversed.
REVERSED
11
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte SATISH MENON,
JAY AKUMAR MUTHUKUMARASAMY,
PARTHA SAHA, KURTIS S. TAYLOR, and
JAMES R. UTTER
Appeal2017-000206
Application 13/913,965
Technology Center 3700
Before CAROLYN D. THOMAS, BRADLEY W. BAUMEISTER, and
NABEEL U. KHAN, Administrative Patent Judges.
BAUMEISTER, Administrative Patent Judge, concurring.
To the extent that the claims can be interpreted as broadly as the
Majority interprets them, I agree with the Majority's reasoning and
conclusions. I write separately, at least in part, though, because I question
whether the Majority's broad interpretation is reasonable. As discussed
below, an alternative narrower interpretation of the claims appears to be no
less reasonable than the broad interpretation adopted by the Majority. See In
re Steele, 305 F.2d 859, 862, (CCPA 1962) (holding that the Examiner and
the Board were wrong in relying on what, at best, were speculative
assumptions as to the meaning of the claims and in basing a rejection under
35 U.S.C. § 103 thereon).
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Because I find the intended meaning of the amended claims to be
speculative at best, I would exercise the Board's discretionary authority
under 35 U.S.C. § 4I.50(b) and newly reject the claims under 35 U.S.C.
§ 112(b) (pre-AIA § 112, ,r 2) as being indefinite. I also would reject the
claims under 35 U.S.C. § 112(a) (pre-AIA § 112, ,r 1) because the claims, as
amended, lack adequate written description.
Addressing the indefiniteness rejection first, I initially note that the
appealed claims have been amended and their original scope changed over
the course of prosecution. See Amendment and Response 3--4, filed
Dec. 10, 2014 ("the 2014 Amendment"). To better illustrate how the claims
were amended, claim 1 is reproduced below illustrating additions to the
original version of the claim with underlining and illustrating deletions to the
original version with strikethroughs and brackets:
1. A method comprising:
maintaining a hierarchy of learning goals that includes a
plurality of learning goal nodes, each node corresponding to a
learning goal;
adding, to the hierarchy of learning goals, a first learning
goal node[[,]] corresponding to a particular learning goal;
wherein the particular learning goal first learning goal
node is associated with a particular set of learning goal metadata;
wherein the particular set of learning goal metadata
includes a particular set of metadata items for finding learning
items without identifying any particular learning items;
wherein the particular set of metadata items does not
identify any particular learning items;
maintaining a learning item repository, wherein the
learning item repository includes a plurality of learning items;
receiving a request for learning items for a particular user;
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automatically determining that the request is for learning
items to assist [[a]] the particular user to achieve the particular
learning goal;
in response to receiving determining that the request is for
learning items to assist the particular user to achieve the
particular learning goal: [ [,]]
automatically identifying the first learning goal
node in the hierarchy of learning goals,
automatically identifying the particular set of
metadata items included in the particular set of learning
goal metadata associated with the first learning goal node,
and
automatically using the particular set of metadata
items to identify a particular learning item, from the
learning item repository, to facilitate achievement of the
particular learning goal; and
automatically providing the particular learning item as a
response to the request for learning items;
wherein the steps of maintaining the hierarchy of learning
goals, maintaining the learning item repository, receiving the
request, using the particular set of metadata items, and providing
the particular learning item are performed by one or more
computing devices.
App. Br., Claims Appendix, 42--43; see also 2014 Amendment, 3--4.
Turning to the first noted ground of rejection, I would reject the
claims as indefinite under 35 U.S.C. § 112, ,r 2. In order to consider the
appealed patent-eligibility and obviousness rejections properly, the Board
necessarily must first undertake a claim-construction analysis of the
appealed claims. "Before considering the rejections ... , we must first
[determine the scope of] the claims .... " In re Geerdes, 491 F.2d 1260,
1262 (CCPA 1974). Such a claim-construction analysis indicates that the
meaning of the term "automatically" is unreasonably ambiguous.
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The term "automatically" was added to the claims by amendment and,
therefore, does not appear anywhere in the originally Specification. As
such, the Specification does not reasonably clarify the term's intended
meaning. Specifically, the Specification does not help render it reasonably
clear whether the term "automatically" is being employed broadly, as I
understand the Majority to be interpreting the term, to mean that the various
claim steps modified by this term merely are performed by a computer, as
opposed to being performed manually. It alternatively might be the case that
the term is being used more narrowly to mean that a computer performs the
various claim steps without any user input. For example, the claim
limitation of "automatically determining that the request is for learning items
to assist the particular user to achieve the particular learning goal" might be
intended to mean that the computer determines the meaning of the request
and the identity of the learning goal node without the computer user first
providing that information.
This latter, narrower interpretation does not appear to be reasonable
because the Specification does not provide support for such an
interpretation. The broader interpretation-that the system merely
determines that the user made a request for learning items-appears more
consistent with the Specification, and it seems unreasonable to interpret the
claims in a manner that is not supported by the originally filed application:
A first user that is working on a goal associated with a particular
node in the course skeleton makes a request for learning items to
adaptive learning engine 100. Leaming analysis logic 130
generates a query to be executed against the learning item
repository using goal metadata associated with the learning goal
that the student is attempting to achieve.
Spec. ,r 58.
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However, the broader interpretation does not appear to be reasonable
either. The last two limitations of claim 1 read as follows:
automatically providing the particular learning item as a
response to the request for learning items;
wherein the steps of maintaining the hierarchy of learning
goals, maintaining the learning item repository, receiving the
request, using the particular set of metadata items, and providing
the particular learning item are performed by one or more
computing devices.
(Emphasis added.) Because the last limitation, itself, expressly states that
the step of providing the learning item is performed by one or more
computing devices, it would be unduly redundant to include the word
"automatically" in the penultimate limitation if "automatically," likewise,
merely means to perform the providing step with one or more computing
devices.
To be sure, the double inclusion of a claim element does not per se
render a claim indefinite. See MPEP 2173.05(0). In the present case,
though, the double inclusion of the claim element that would result from
interpreting the term "automatically" broadly to mean merely that a
computer performs the step, does render it less than reasonably clear
whether Appellants intend such an effectively meaningless construction.
Because the amended term "automatically" renders the claims
unreasonably ambiguous, I would reject the claims as indefinite under
35 U.S.C. 112(b) (or pre-AIA § 112, ,r 2). See Ex parte Miyazaki,
89 USPQ2d 1207, 1211 (BP AI 2008) (precedential) "[I]f a claim is
amenable to two or more plausible claim constructions, the USPTO is
justified in requiring the applicant to more precisely define the metes and
bounds of the claimed invention by holding the claim unpatentable under
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35 U.S.C. § 112, second paragraph, as indefinite."); see also Ex parte
McAward, Appeal No. 2015-006416, 2017 WL 3669566 (PTAB Aug. 25,
2017) (precedential).
Turning to the second issue, I also would reject the claims under
35 U.S.C. § 112(a) (pre-AIA § 112, ,r 1) as lacking adequate written
description in the originally filed Specification.
Referring to claim 1, for example, Appellants contend on appeal that
their invention entails a two-level search:
The first level of the two-level search in Claim 1 involves
identifying a learning goal node that corresponds to a particular
learning goal determined from a received request for learning
items ....
Once Claim 1 determines which learning goal the user
wants to achieve, a learning goal node is automatically identified,
from the hierarchy of learning goals, where the node corresponds
to the learning goal for the request. To be specific, Claim 1
recites: "in response to determining that the request is for learning
items to assist the particular user to achieve the particular learning
goal: automatically identifying the first learning goal node in
the hierarchy of learning goals". Claim 1 further recites that the
"first learning goal node correspond[s] to [the] particular
learning goal".
Identification of the learning goal node that corresponds
to the learning goal for a request for learning items is only the first
step toward identifying learning items to be provided as a
response to the received request for learning items learning items.
App. Br. 31.
Appellants then describe the second-level search as follows:
[T]he second-level search of Claim 1 is based on the
information identified in the first-level search. More
specifically, Claim 1 automatically uses metadata items from the
learning goal node "to identify a particular learning item, from
the learning item repository, to facilitate achievement of the
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particular learning goal". The learning goal node metadata ( used
to identify a learning item) is "for finding learning items", but
"does not identify any particular learning items", as recited by
Claim 1.
Again, to accomplish the second-level search, Claim 1
uses the metadata items from the learning goal node to identify a
particular learning item that is then provided to the user as a
response to the user's request. As such, it is this second level of
search that ultimately identifies the learning items from the
learning item repository.
Id. at 32.
Appellants' characterization of their originally filed Specification as
disclosing a two-level search, and more particularly, as disclosing the
purported first level of the search, is inaccurate. To be sure, the amended
claims, which are on appeal, set forth language directed to the purportedly
disclosed first-level search:
automatically determining that the request is for learning
items to assist the particular user to achieve the particular
learning goal;
in response to determining that the request is for learning
items to assist the particular user to achieve the particular
learning goal:
automatically identifying the first learning goal
node in the hierarchy of learning goals,
automatically identifying the particular set of
metadata items included in the particular set of learning
goal metadata associated with the first learning goal node,
and
automatically using the particular set of metadata
items to identify a particular learning item, from the
learning item repository, to facilitate achievement of the
particular learning goal.
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Amended claim 1 ( emphasis added). But the original version of claim 1
does not recite identifying a first learning goal in the hierarchy in response
to determining that a request is for a learning item. The original version of
claim 1 merely recites, in relevant part, "receiving a request for learning
items" and "in response to receiving the request, using the metadata items to
identify a particular learning item."
Appellants allege in their Appeal Brief where the originally filed
Specification provides support for this "identifying-in-response-to"
limitation:
Claim 1 further recites receiving a request for learning
items for a particular user and determining that the request is for
learning items to assist the user to achieve a particular learning
goal. (Specification, paragraph [0058].) To identify learning
items that will assist the user to achieve the particular learning
goal, Claim 1 identifies the learning goal node associated with
the indicated learning goal, identifies the metadata associated
with the learning goal node, then uses the metadata to find a
learning item to facilitate achievement of the learning goal.
(Specification, paragraphs [0016] and [0058]).
App. Br. 3
But these cited paragraphs do not disclose a first-level search that
entails identifying a learning node in response to determining that a received
request is for a learning item. These cited paragraphs disclose only a single-
level search functionality that entails searching for the requested learning
items:
GENERAL OVERVIEW
[0016] In an embodiment, a course "skeleton" is associated with
a course of instruction. The course skeleton is made up of a
hierarchy of goals, with each goal being associated with goal
metadata that describes the goal and provides information about
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the type of content that may be used to achieve the goal. The
course skeleton is used to provide a more dynamic adaptive
learning experience. The nodes of the course skeleton are
associated with metadata about the corresponding goal. A
learning item repository stores learning items and learning item
metadata describing the learning items. Instead of directly
mapping these learning items to the nodes or goals, the goal
metadata is used to dynamically generate a query that can be
executed against the learning item repository in order to retrieve
learning items for the student.
SELECTING LEARNING ITEMS USING DYNAMICALLY
GENERATED QUERIES
[0058] In an embodiment, the learning item repository includes
learning items, such as multimedia, audio, text, and video files.
In addition, the learning item repository includes learning item
metadata that describes the learning items. For example, the
learning item metadata may be stored in a database with a
relational link to the learning items described by the metadata. A
logical hierarchy such as course skeleton 200 is stored in the
course skeleton data table 160 in database 150. The course
skeleton is representative of a course of instruction, and each
node in the hierarchy represents a learning goal. Corresponding
goal metadata that describes each learning goal is associated with
each node in the course skeleton. A first user that is working on
a goal associated with a particular node in the course skeleton
makes a request for learning items to adaptive learning engine
100. Leaming analysis logic 130 generates a query to be
executed against the learning item repository using goal metadata
associated with the learning goal that the student is attempting to
achieve. A learning item or a reference to a learning item from
learning items table 170 is returned, and presentation logic 140
presents the learning item to the student.
[0059] A second user requests learning items from adaptive
learning engine in an embodiment. The second user is
attempting to achieve the same goal as the first user, and
therefore an identical query is generated for the second user.
However, when the query is executed for the second user, a
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Application 13/913,965
learning item is returned that is different than the learning item
that was returned for the first user. In an embodiment, additional
learning items [are] added to the learning item repository
between the execution of the query for the first user and the
execution of the query for the second user. Th[ ese] additional
learning items [are] determined to be more relevant to the query,
and therefore the updated learning items [are] delivered to the
second user.
Spec. ,r,r 16, 5 8, 59 ( emphasis added).
Read as a whole, Appellants' originally filed Specification merely
discloses that a user working on a goal associated with a particular node,
requests learning items. Then in response, the metadata associated with that
particular node is used to perform a search of available learning items. The
Specification does not further disclose that the learning engine 100 is
unaware of the user's specific learning node until after the user submits the
request for learning items.
Due to the Specification's silence on this point, it alternatively could
be the case that the user identifies the user's learning node to the learning
engine either (1) prior to submitting a request for learning items (e.g., before
or at the time of login), or (2) simultaneously when submitting the request
for learning items (e.g., the request theoretically could include an indication
of the node for which the learning items are being requested). But in either
of these hypothetical cases, the learning engine would not identify the user's
learning goal node in response to (i.e., after) determining that the request is
for the learning item.
Our reviewing court has interpreted the written-description
requirement of the patent statutes as follows:
The test for determining compliance with the written
description requirement is whether the disclosure of the
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Appeal2017-000206
Application 13/913,965
application as originally filed reasonably conveys to the artisan
that the inventor had possession at that time of the later claimed
subject matter, rather than the presence or absence of literal
support in the specification for the claim language.
In re Kaslow, 707 F.2d 1366, 1375 (Fed. Cir. 1983) (citations omitted).
"[O]ne cannot disclose a forest in the original application, and then later
pick a tree out of the forest and say here is my invention." Purdue Pharma
L.P. v. Paulding Inc., 230 F.3d 1320, 1326 (Fed. Cir. 2000). Rather, the
Specification must provide some guides or "blaze marks" that disclose the
claimed invention "'specifically, as something appellants actually
invented."' Ariad Pharm., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1348 (Fed.
Cir. 2010) (en bane).
For the reasons outlined above, Appellants' originally filed
Specification does not reasonably convey to the artisan that at the time of
filing, Appellants had possession of a search functionality entailing
identifying a learning goal node in response to determining that a received
request is for learning items, as claimed. Accordingly, I would reject the
claims as lacking adequate written description.
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