Appeal No. 2006-1963
Application No. 09/951,321
Opinion
We have considered the subject matter on appeal, the rejections advanced by the
examiner and the evidence of lack of enablement and obviousness relied upon by the
examiner in support of the rejections. We have likewise, reviewed and taken into
consideration, in reaching our decision, appellant’s arguments set forth in the briefs along
with the examiner’s rationale in support of the rejections and arguments in rebuttal set
forth in the examiner’s answer.
With full consideration being given to the subject matter on appeal, the
examiner’s rejection and the arguments of appellant and the examiner, and for the
reasons stated infra we will not sustain the examiner’s rejection of claims 28 through 37
under
35 U.S.C. § 112 first paragraph, however we will sustain the examiner’s rejections of
claims 28 through 48 under 35 U.S.C. § 103(a).
Rejection of claims 28 through 37 under 35 U.S.C. § 112 first paragraph.
Appellant argues, on page 12 of the brief, that the specification discloses that in
order to prevent the participant of the test from retaking the same test, questions for the
retest are drawn randomly from a pool of questions. Thus, appellant argues on page 13 of
the brief that there is no skewing of the questions towards incorrectly answered material,
and it would not require undue experimentation to select test questions independent of
the incorrect answers given. Appellant presents similar arguments on pages 1 and 2 of
the reply brief.
On pages 6 and 7 of the answer, the examiner responds to appellant’s arguments
concerning the rejection under 35 U.S.C. § 112 first paragraph. The examiner states on
pages 6 and 7 of the answer:
In appellant's claim language they specifically recite that the selection is not
based upon incorrectly answered questions. This limitation recites specific
features, which are to be used in the selection, and adds a specific purpose to the
selection, thereby removing the complete randomness of the selection as
described in
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