Ex Parte Townshend et alDownload PDFPatent Trial and Appeal BoardMay 28, 201311176834 (P.T.A.B. May. 28, 2013) 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. 11/176,834 07/06/2005 Brent Townshend 04-461-A 7293 20306 7590 05/28/2013 MCDONNELL BOEHNEN HULBERT & BERGHOFF LLP 300 S. WACKER DRIVE 32ND FLOOR CHICAGO, IL 60606 EXAMINER FLETCHER, JERRY-DARYL ART UNIT PAPER NUMBER 3715 MAIL DATE DELIVERY MODE 05/28/2013 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 BRENT TOWNSHEND and JARED BERNSTEIN ____________________ Appeal 2011-003284 Application 11/176,834 Technology Center 3700 ____________________ Before JAMES P. CALVE, SCOTT A. DANIELS, and JEREMY M. PLENZLER, Administrative Patent Judges. DANIELS, Administrative Patent Judge. DECISION ON APPEAL Appeal 2011-003284 Application 11/176,834 2 STATEMENT OF CASE Appellants appeal under 35 U.S.C. § 134 from a Final Rejection of claims 1-23. Claims 1, 10 and 15 are independent. We have jurisdiction under 35 U.S.C. § 6(b). We affirm. The claims are directed to a system and method for obtaining a measurement of reading skills. Claim 1, reproduced below, is illustrative of the claimed subject matter with disputed limitations emphasized: 1. A method for measuring reading skills of a plurality of individuals on a single scale, comprising in combination: an input device capturing a speech signal formed when an individual reads aloud from a source text; a processor, coupled to the input device, estimating linguistic content of what the individual said when reading aloud; the processor extracting latency and accuracy for units of text read from the source text; the processor measuring elapsed time for the units of text read from the source text; and the processor combining the estimated linguistic content, the extracted latency and accuracy, the elapsed time, and a set of parameters for the units of text read from the source text to form a measure of the individual's reading skill that is substantially independent of the source text, wherein the set of parameters includes an item response theory difficulty associated with each of the units of text. REFERENCES The prior art relied upon by the Examiner in rejecting the claims on appeal is: Rtischev Patz US 5,634,086 US 7,149,468 B2 May 27, 1997 Dec. 12, 2006 Appeal 2011-003284 Application 11/176,834 3 REJECTIONS The Examiner made the following rejections: Claims 1-23 stand rejected under 35 U.S.C §112, first paragraph as failing to comply with the enablement requirement. Final Rej. 2 and see Ans. 10-13. Claim 1-23 stands rejected under 35 U.S.C §103(a) as being unpatentable over Rtischev and Patz. Ans. 3. ANALYSIS Claims 1-23 as non-enabled under 35 U.S.C §112, first paragraph. When rejecting a claim for lack of enablement, the PTO bears the initial burden of setting forth a reasonable explanation as to why the scope of the claim is not adequately enabled by the description provided in the specification. In re Wright, 999 F.2d 1557, 1561-62 (Fed. Cir. 1993). The Examiner found that the limitation in each of the independent claims 1, 10 and 15, reciting that an individual's reading skill is “substantially independent” of the source text, lacks enablement because the Specification does not teach how such a measurement would be achieved. Ans. 10-12; Final Rej. 2. The Examiner also found that the Declaration of Jared Bernstein did not remedy this deficiency. Ans. 12-13. Appellants challenge the Examiner’s enablement rejection of claims 1-23. Facts that should be considered in determining whether a specification is enabling, or if it would require an undue amount of experimentation to practice the invention include: (1) the quantity of experimentation necessary Appeal 2011-003284 Application 11/176,834 4 to practice the invention, (2) the amount of direction or guidance presented, (3) the presence or absence of working examples, (4) the nature of the invention, (5) the state of the prior art, (6) the relative skill of those in the art, (7) the predictability or unpredictability of the art, and (8) the breadth of the claims. See In re Wands, 858 F.2d 731, 737 (Fed. Cir. 1988). In concluding there is no enabling disclosure, the Examiner has not addressed the Wands factors or otherwise explained why one of ordinary skill in the art would have to engage in undue experimentation to practice the claimed invention. Instead, the Examiner contends that the claims contain subject matter not described in the Specification in such a way as to enable one skilled in the art to make and/or use the invention. See Ans. 10- 13 and Final Rej. 2. Based on the claim recitation that the reading skill measurement is “substantially independent of the source text,” the Examiner blanketly asserts that the “Applicant fails to show how one of ordinary skill in the art would remove this dependency on the source text.” Id. Because there is nosubstantive explanation of why one of ordinary skill in the art would have to engage in undue experimentation to practice these aspects, the Examiner has failed to establish a prima facie case of non-enablement of claims 1-23, and we are constrained to reverse the rejection. Claims 1-23 as unpatentable over Rtischev and Patz. Claims 1, 10 and 15. Appellants argue independent claims 1, 10 and 15 as a group. See App. Br. 15. We initially select claim 1 as representative of the group where claims 10 and 15 stand or fall with claim 1. See 37 C.F.R. 41.37(c)(1)(vii) (2011). Appeal 2011-003284 Application 11/176,834 5 The Examiner found that Rtischev teaches a method for measuring reading skills including an input device connected to a processor, where from a speech signal developed from units of text read by an individual, the processor combines extracted latency and accuracy, elapsed time, and a set of parameters for the units of text read to form a measure of the individual's reading skill that is “substantially independent of the source text,” as called for in claim 1. Ans. 4-5. Additionally, the Examiner found that Patz discloses that it is known in the art “to use item response theory models for determining the accuracy of a reader.” Ans. 6 citing Patz col. 2, ll. 32-36. Notwithstanding the Examiner’s reliance on Patz for teaching the response theory model, the issue of patentability essentially resolves to the question of whether or not Rtischev discloses a measure of reading skill “substantially independent” of the source text. The Examiner pointed out that in the claimed invention the measurements of the user’s reading skills are at least to some extent based on the source text as read by the user, and as such “the measurement itself is inherently dependent on the source text since it is derived from the source text.” Ans. 11. Under the broadest reasonable interpretation of the claim language, the Examiner determined that the formation of Appellants’ claimed “measure” relies on the source text, or elements of the source text, and therefore the claim term “substantially independent” could not be overlooked in the interpretation of Appellants’ claims. Ans. 12. Appellants argue that different from the claimed “measure” of reading skill that is substantially independent of the source text, Rtischev bases their measure, or score on a specific, preselected script, which the user reads, and that the focus on a specific lesson, i.e. the preselected script, is necessarily Appeal 2011-003284 Application 11/176,834 6 dependent on the source text and thus “precludes any measurement that is substantially independent of the source text.” App. Br. 16. This, Appellants assert, means that Rtischev’s measure, or score, is not standardized for other script outside of the preselected script(s), nor does the score have significance outside the specific lesson. Id. Claims are to be given their broadest reasonable interpretation consistent with the specification, reading claim language in light of the specification as it would be interpreted by one of ordinary skill in the art. In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). Appellants do not point to, and we cannot find, anything in the Specification, or even Mr. Bernstein’s Declaration to indicate that “substantially” is used in a manner other than its ordinary and customary meaning. “Substantially” is often used to mean largely but not wholly what is specified. See, e.g., York Products, Inc., v. Central Tractor Farm & Family Center, 99 F.3d 1568, 1572-73 (Fed. Cir. 1996); See also Amhil Enterprises Ltd. v. Wawa, Inc., 81 F.3d, 1554, 1562, (Fed. Cir. 1996). The plain meaning of “substantial” is “being largely but not wholly that which is specified” MERRIAM-WEBSTER ONLINE DICTIONARY, http://www.merriam-webster.com/dictionary/ substantial (last visited May 16, 2013). Our understanding therefore of Appellants’ claims is that the measure of reading skill is thus “largely, or mostly independent” of the source text. Or, said another way, the measure or score is only slightly, or partly, dependent on the source text. The Examiner explained that while Rtischev discloses a measure, or score which is dependent on the source text, such dependency may only be slightly dependent on the source text, where a “phone-length” of the source text, i.e. a very small, granular portion of the source text, is utilized. Ans. Appeal 2011-003284 Application 11/176,834 7 14. The Examiner reasoned that “Rtischev shows that the measurement is derived from evaluation periods as short as a phone-length, which is substantially independent of the source text given that a phone is the lowest level of granularity possible for conveying a sound in a language, therefore at the phone-length, evaluations can be thought of as substantially independent of the source text.” Ans. 15. We agree with the Examiner that the plain meaning of “substantially independent” still leaves some portion of the measure of reading skill as dependent upon at least a portion of the source text, and thus Appellants’ claim language encompasses a measure, or score based on a small portion of the source text, such as a “phone-length,” which is mostly independent of the source text as a whole. Moreover, we note that no matter what source text is provided, or from where the source text originates for the individual to read, Appellants’ claimed method and system must know, or have evaluated the text, in order to determine parameters of the source text. See Spec. 10, l.1 - Spec. 12, l. 4. Claims 1, 10 and 15 all similarly recite that an individual reads from a source text (claims 1 and 15), or text (claim 10). Clms. Appx. The claims do not require a source text originating as something other than pre-selected text as argued by Appellants. See App. Br. 16. Both Rtischev as well as Appellants method select a desired source text and use parameters determined from the source text to generate the measure or score. Given the use of such a small portion of the overall source text in Rtischev to determine a reading skill score, the Examiner’s determination that such use satisfies the claim limitation of the measure being “substantially independent” of the source text appears reasonable. Appellants have not provided any persuasive arguments regarding why Appeal 2011-003284 Application 11/176,834 8 Rtischev’s score using only a mere phone-length is not “substantially independent” of the source text. Appellants further argue that Patz does not remedy the deficiencies of Rtischev. App. Br. 16. As set forth supra, there are no deficiencies for Patz to cure. Patz is cited only for the teaching of item response theory models, a finding which Appellants do not contest. Accordingly, we are not apprised of Examiner error and we sustain the rejection of claim 1 as unpatentable over Rtischev and Patz. Claims 10 and 15 fall with claim 1. Claims 2-9, 11-14 and 16-23. Appellants argue that claims 2-9, 11-14 and 16-23 are allowable due to their dependency from claims 1, 10 and 15. App. Br. 17. As we sustain the rejection of claims 1, 10 and 15, these respective dependent claims fall accordingly. DECISION The Examiner’s rejection of claims 1-23 as failing to comply with the enablement requirement is reversed. The Examiner’s rejection of claims 1-23 as being unpatentable over Rtischev and Patz is affirmed. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv). AFFIRMED ke Copy with citationCopy as parenthetical citation