Ex Parte Townshend et al

Patent Trial and Appeal Board

May 28, 2013

11176834 (P.T.A.B. May. 28, 2013)

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

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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
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Application 11/176,834

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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
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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).
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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
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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.
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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
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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
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