Ex Parte Piccionelli et al

Patent Trial and Appeal BoardJan 21, 2014

10822213 (P.T.A.B. Jan. 21, 2014)

UNITED STATES PATENT AND TRADEMARKOFFICE 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. 10/822,213 04/09/2004 Gregory A. Piccionelli 39003.814US01 1327 7590 01/21/2014 Michael M. Gerardi 30801 Calaise Court Westlake Village, CA 91362 EXAMINER HADIZONOOZ, BANAFSHEH ART UNIT PAPER NUMBER 3715 MAIL DATE DELIVERY MODE 01/21/2014 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 GREGORY A. PICCIONELLI and MICHAEL M. GERARDI ____________ Appeal 2012-000630 Application 10/822,213 Technology Center 3700 ____________ Before JOHN C. KERINS, MICHAEL L. HOELTER, and JILL D. HILL, Administrative Patent Judges. HILL, Administrative Patent Judge. DECISION ON APPEAL Appeal 2012-000630 Application 10/822,213 2 STATEMENT OF THE CASE Gregory A. Piccionelli and Michael M. Gerardi (Appellants) appeal under 35 U.S.C. § 134 from a final rejection of claims 44, 45, 50, 62, 64-66, 69, and 72-81. Appellant Michael M. Gerardi presented arguments at oral hearing on January 14, 2014. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. CLAIMED SUBJECT MATTER The claimed subject matter relates to a method of studying a subject that provides motivation for the student to continue in the course of study. Spec. 1. Claim 44 illustrates the subject matter on appeal and is reproduced below. 44. A method of studying a subject, the method comprising the steps of: a) opening an educational application that comprises a plurality of questions pertaining to a subject, b) providing to a central site via a network i) an answer to at least one said question, and ii) an instruction directing a human model to remove an article of clothing when the central site determines that the answer so provided is correct, and c) viewing via the network a human model removing the article of clothing upon determination by the central site that the answer provided in step b) is correct. EVIDENCE The Examiner relies on the following evidence: Rachman US 2002/0182578 A1 Dec. 5, 2002 Jenkins US 6,585,519 B1 Jul. 1, 2003 Appeal 2012-000630 Application 10/822,213 3 Billy Madison, WIKIPEDIA, http://en.wikipedia.org/wiki/ Billy_Madison (hereinafter “Billy Madison”). REJECTIONS Claims 44, 45, 50, 62, 64-66, 69, and 72-81 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Rachman, Jenkins, and Billy Madison. Ans. 3. ANALYSIS Appellants argue claims 44, 45, 50, 62, 64-66, 69, and 72-81 as a group. See App. Br. 3-4; 37 C.F.R. §41.37(c)(1)(iv). We select claim 44 as representative. The Examiner finds Rachman teaches all of the limitations of claim 44, except for viewing a model removing an article of clothing when a question is answered correctly. Ans. 3-4. The Examiner finds, however, that Jenkins teaches a motivational method for a computer-assisted training system that presents periodic reward animations to a user such that the user’s curiosity to see the rest of the animation motivates more correct responses. Ans. 4. The Examiner concludes that it would have been obvious to one of ordinary skill in the art to incorporate the teachings of Jenkins into the system and method of Rachman to achieve a system and method that encourages users to further input correct responses. Id. The Examiner finds that Jenkins does not teach a human model removing an article of clothing as a reward system, but that such a motivational method is well known in the art. Id. As support for the motivation being well known, the Examiner cites the movie “Billy Madison” (id.) and later discusses the show “Strip Poker” (Ans. 6). Appeal 2012-000630 Application 10/822,213 4 The Examiner concludes that it would have been obvious to one skilled in the art at the time of the invention to incorporate the well-known human removing clothing reward system into the combined electronic system of Rachman and Jenkins “to motivate an adult to participate in the learning process or to answer a question correctly.” Ans. 6. Appellants make two principal arguments: (1) that the references, even when combined, do not teach instructing a human model to remove an article of clothing; and (2) that the references, even when combined, do not teach selecting an article of clothing to be removed. App. Br. 6. During the hearing on January 14, 2014, Mr. Gerardi clarified his position as being that the references do not teach the user instructing the human model to remove a piece of clothing and do not teach the user selecting an article of clothing to be removed. Claim 44, and indeed all of the claims, do not recite the user instructing the model to remove a piece of clothing. Therefore, the host of “Strip Poker” instructing participants to remove a piece of clothing teaches the limitation as claimed. In addition, claim 44 does not recite selecting an article of clothing. Further, although selecting an article of clothing is recited in claims 45, 60, 62, 65, 69, 72, and 77, none of the claims recite the user selecting the article of clothing. Because the claims do not recite the user selecting the article of clothing, a teaching of anyone selecting the article of clothing, including the human model as in “Billy Madison” and “Strip Poker,” meets the claimed selection and we therefore are not persuaded by this argument. Appellants also argue that the combined disclosures of Rachman, Jenkins, and Billy Madison do not teach or suggest computer readable media Appeal 2012-000630 Application 10/822,213 5 encoded with computer applications including educational applications and “means as presently claimed.” The arguments presented to support this assertion are conclusory and unpersuasive. Appellants make additional assertions on pages 7-11 of the Appeal Brief, such as the references not teaching (1) the central site making the determination of whether the answer provided is correct, or the user viewing the model removing the article of clothing after such a determination is made (as recited in claim 44), and (2) using an educational application that includes both a plurality of questions pertaining to a subject and a link to a model site on a network that permits viewing a human model, activating such a link when the educational application is opened, and viewing, via a network, a human model removing the selected article of clothing (as recited in claim 45). The arguments made on pages 7-11 of the Appeal Brief are conclusory and are not sufficient argument for the separate patentability of the claims. See 37 C.F.R. §41.37(c)(1)(iv). In addition, these arguments are unpersuasive because arguments and conclusory statements that are unsupported by factual evidence are entitled to little probative value. See In re Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997). We sustain the rejection of claim 44 as unpatentable over Rachman, Jenkins, and Billy Madison. Claims 45, 50, 62, 64-66, 69, and 72-81 fall with claim 44. DECISION We AFFIRM the rejection of claims 44, 45, 50, 62, 64-66, 69, and 72- 81 under 35 U.S.C. § 103(a) as being unpatentable over Rachman, Jenkins, and Billy Madison. Appeal 2012-000630 Application 10/822,213 6 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 mls