Application No. 12/846,635
`Reply Dated June 28, 2012
`Reply to Office Action of March 1, 1012
`
`REMARKS:
`
`The Office Action dated March 1, 2012, has been received and carefully reviewed.
`
`Reconsideration of the rejection is respectfully requested in view of the amendments to the claims
`
`and remarks below.
`
`I.
`
`§ 102 Rejection
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`In response to the Examiner’s rejection under 102(e) as being anticipated by Work,
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`Applicant respectfully disagrees that Work discloses all of the features of the present invention.
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`Work appears to disclose matching search queries and potential targets of search queries by
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`comparing search criteria with profile criteria describing potential targets. Work discloses using
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`database queries or SQL queries to perform the comparison feature. Work does not disclose
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`providing threshold requirements of the candidate,
`
`in fact
`
`the only reference within the
`
`specification of threshold appears in the background portion when discussing Patent 6,115,709
`
`and a system for constructing a user’s knowledge profile. Work does not disclose each and every
`
`feature of claims 13—14, 19, 24 —25.
`
`Work appears to disclose utilization of an employee’ s profile criteria including capabilities,
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`history, values, interests, style, goals, projects, human networks, contacts, profiles of the contacts,
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`employment history, education history, organizational activities, organizations, profiles of the
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`organizations or compensation requirements in data provided by the candidate. Employers
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`(initiators) may search through profiles using the search criteria, including descriptive portions
`
`provided by the candidate. However, Work does not disclose utilization of the structured profile
`
`criteria provided by the employer related to the candidate being sought as specified in claims
`
`19
`
`Petitioner Exhibit 1004 9.1
`
`Petitioner Exhibit 1004 p.1
`
`
`Reply Dated June 28, 2012
`Reply to Office Action of March 1, 1012
`
`REMARKS:
`
`The Office Action dated March 1, 2012, has been received and carefully reviewed.
`
`Reconsideration of the rejection is respectfully requested in view of the amendments to the claims
`
`and remarks below.
`
`I.
`
`§ 102 Rejection
`
`In response to the Examiner’s rejection under 102(e) as being anticipated by Work,
`
`Applicant respectfully disagrees that Work discloses all of the features of the present invention.
`
`Work appears to disclose matching search queries and potential targets of search queries by
`
`comparing search criteria with profile criteria describing potential targets. Work discloses using
`
`database queries or SQL queries to perform the comparison feature. Work does not disclose
`
`providing threshold requirements of the candidate,
`
`in fact
`
`the only reference within the
`
`specification of threshold appears in the background portion when discussing Patent 6,115,709
`
`and a system for constructing a user’s knowledge profile. Work does not disclose each and every
`
`feature of claims 13—14, 19, 24 —25.
`
`Work appears to disclose utilization of an employee’ s profile criteria including capabilities,
`
`history, values, interests, style, goals, projects, human networks, contacts, profiles of the contacts,
`
`employment history, education history, organizational activities, organizations, profiles of the
`
`organizations or compensation requirements in data provided by the candidate. Employers
`
`(initiators) may search through profiles using the search criteria, including descriptive portions
`
`provided by the candidate. However, Work does not disclose utilization of the structured profile
`
`criteria provided by the employer related to the candidate being sought as specified in claims
`
`19
`
`Petitioner Exhibit 1004 9.1
`
`Petitioner Exhibit 1004 p.1
`
`
`
`Application No. 12/846,635
`Reply Dated June 28, 2012
`Reply to Office Action of March 1, 1012
`
`13—14, 19 and 24—25. Because Work fails to teach each and every limitation of the present
`
`invention, Applicant respectfully requests that the 102(e) rejection be removed.
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`11.
`
`§ 103 Rejection
`
`Regarding the 103 rejection, Claims,
`
`13—14, 19 and 24—25 are rejected as being
`
`unpatentable in light of Work. Applicant respectfully disagrees. Initially, the rejection of record
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`acknowledges that Work “fails to explicitly disclose these claimed features.” However, the action
`
`concludes with the statement that the claimed features are “old and well known” without stating
`
`which features are not disclosed or which are old and well known. The rejection fails to
`
`adequately support or specify the basis for the rejection and therefore it is an improper rejection
`
`under 103. Which claimed features are taught and not taught by Work is not disclosed by the
`
`examiner and which features are old and well known or upon whose knowledge is also not
`
`disclosed.
`
`These statements, however, do not satisfy the factual inquiry required by Graham v.
`
`John Deere C0., 383 U.S. 1 (1966) to make a prima facie case of obviousness. See MPEP Section
`
`2144 ("It is never appropriate to rely solely on 'common knowledge' in the art without evidentiary
`
`support in the record, as the principal evidence upon which a rejection was based.") A prima facie
`
`case of obviousness cannot be made with conclusory statements that certain limitations are well
`
`known in the art, but rather is made with factual support.
`
`If the Examiner's factual findings are based on the Examiner's personal belief of
`
`what was well known in the art at the time of the invention, Applicant requests that the Examiner
`
`provide an affidavit specifically explaining why the limitations of the amended claims would have
`
`20
`
`Petitioner Exhibit 1004 p2
`
`Petitioner Exhibit 1004 p.2
`
`
`
`Application No. 12/846,635
`Reply Dated June 28, 2012
`Reply to Office Action of March 1, 1012
`
`been known to a person of ordinary skill in the art at the time of invention. See 37 CFR Section
`
`1.104(d)(2) (”When a rejection in an application is based on facts within the personal knowledge
`
`of an employee of the Office, the data shall be as specific as possible, and the reference must be
`
`supported, when called for by Applicant, by the affidavit of such employee, and such affidavit
`
`shall be subject to contradiction or explanation by the affidavits of Applicant and other persons.")
`
`Should the Examiner rely on a personal affidavit to satisfy his burden under Graham, Applicant
`
`requests that any rejections based on the Examiner's personal knowledge be made non—final so that
`
`Applicant may have opportunity to adequately address Examiner's affidavit. See MPEP Section
`
`706 ("The goal of examination is to clearly articulate any rejection early in the prosecution process
`
`so that Applicant has the opportunity to provide evidence of patentability and otherwise reply
`
`completely at the earliest opportunity.").
`
`Without waiving the request for a proper rejection, for the same reasons as previously
`
`indicated, Work fails to teach either singly or in combination the utilization of the structured
`
`profile criteria provided by the employer related to the candidate being sought as specified in
`
`claims 13—14, 19 and 24—25 and therefore the 103 rejection is improper.
`
`Claims 18, 21—23 and 26—31 are rejected as being unpatentable over Work in view of
`
`Kurzius (6,385,620). Again, Work does not disclose either singly or in combination with Kurzius
`
`the utilization of the threshold requirement or structured profile criteria provided by the employer
`
`related to the candidate being sought.
`
`Kurzius discloses a system for matching job descriptions with candidate profiles and for
`
`enabling employers to search candidate profiles for suitable employees or enabling candidates to
`
`21
`
`Petitioner Exhibit 1004 9.3
`
`Petitioner Exhibit 1004 p.3
`
`
`
`Application No. 12/846,635
`Reply Dated June 28, 2012
`Reply to Office Action of March 1, 1012
`
`search for suitable job descriptions. Kurzius receives information based upon a candidate survey
`
`which is provided by a candidate or from candidate data from third party sources. The term
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`“threshold” occurs in only one paragraph in Kurzius: at column 24 lines 10—20 which refers to the
`
`third party sources which may be used to obtain additional candidate data. In that case, the data is
`
`obtained from sources other than the employer itself. Because Work does not disclose or suggest
`
`the limitations of Claim 12, including threshold requirement or storing the candidate attributes in a
`
`structured format, it does not either alone or in combination with Kurzius render claim 12, 21 or 29
`
`unpatentable nor the remaining claims which depend therefrom.
`
`The Examiner is invited to contact applicant's attorney at the telephone number
`
`listed below in the event that prosecution of this application can be expedited thereby.
`
`Respectfully submitted,
`
`Marc Vianello
`
`By / Arthur K. Shafier/
`Arthur K. Shaffer
`
`Reg. No. 50,257
`
`Intellectual Property Center, LLC
`7101 College Blvd.
`Suite 1520
`
`Overland Park, KS 66210
`
`Telephone (913) 345—0900
`Facsimile (913) 345—0903
`
`22
`
`Petitioner Exhibit 1004 9.4
`
`Petitioner Exhibit 1004 p.4
`
`
`
`Application No. 12/846,635
`Reply Dated December 22, 2011
`Reply to Office Action of November 10, 2011
`
`REMARKS:
`
`The Advisory Action dated November 10, 2011, has been received and carefully reviewed.
`
`Reconsideration and modification of the requirement for restriction is respectfully requested in
`
`view of the remarks below.
`
`I.
`
`§ 121 Restriction Requirement
`
`In response to the Examiner’ s restriction requirement, Applicant respectfully disagrees that
`
`the requirement of restriction appropriately groups the claims. The Examiner has grouped the
`
`claims into five categories: (1) 1—11; (11) l2—28; (111) 29—34; (IV) 35—48; and (V) 49—60. Applicant
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`suggests grouping the claims as follows: (1) 1—11; (11) l2—20; (111) 21—34; and (IV) 35—60.
`
`Based upon MPEP § 802.01,
`
`the Director may require restriction if two or more
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`“independent and distinct” inventions are claimed in one application. See also 35 U.S.C. § 121.
`
`According to MPEP § 802.01, Independent means unrelated. Two or more inventions are related
`
`(i.e., not independent) if they are disclosed as connected in at least one of design, operation, or
`
`effect. MPEP§ 802.01(II).
`
`This application includes six independent claims (1, 12, 21, 29, 35, and 49). Generally
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`stated, all six independent claims are related to methods for matching employee candidates with
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`job opportunities of prospective employers.
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`The MPEP provides authority for the examiner to group together species in a patent
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`application, when plural species exist, if the species are patentably distinct.
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`Applicant believes that several of these species may be related in design, operation or
`
`effect. Therefore, Applicant suggests modifying the restriction requirement to group the claims as
`
`Petitioner Exhibit 1004 9.5
`
`Petitioner Exhibit 1004 p.5
`
`
`
`Application No. 12/846,635
`Reply Dated December 22, 2011
`Reply to Office Action of November 10, 2011
`
`follows: (I) 1-11; (II) 12-20; (III) 21-34; and (IV) 35—60.
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`A reasonable number of species may be claimed when there is an allowable claim generic
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`thereto. 37 CPR. § 1.141; MPEP § 806(D). Applicant believes Claim 1 is a generic claim and
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`claims 12, 21, 29, 35, and 49 are species thereof. Applicant believes a reasonable number of
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`species are included within claims 21 and 29, and the claims dependent therefrom.
`
`In comparison with the Examiner’s suggested grouping of claims, Applicant believes the
`
`pair of species disclosed in claims 21 and 29, and the claims dependent therefrom, and the pair of
`
`species disclosed in claims 35 and 49, and the claims dependent therefrom, each hold a higher
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`degree of relation to one another than such pairs hold to the other species disclosed.
`
`Claim 21 is related to determining whether a job description matches candidate profile
`
`threshold requirements and communicating the matches to a prospective employer. Claim 29 is
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`related to determining whether a candidate profile matches job description threshold requirements
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`and communicating the matches to a candidate.
`
`Claim 35 is related to determining whether a job description matches at least one candidate
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`profile threshold requirement, based upon a threshold comparison, and transmitting a request for
`
`interview from a prospective employer to a candidate associated with the matching candidate
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`profile. Claim 49 is related to determining whether a candidate profile matches at lease one job
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`description, based upon a threshold comparison, and transmitting a request for interview from a
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`candidate to a prospective employer associated with the matching job description.
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`Based on the above and foregoing, Applicant suggests grouping the claims into four
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`categories: (I) 1—1 1; (II) 12—20; (III) 21—34; and (IV) 35—60. From those four categories, Applicant
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`Petitioner Exhibit 1004 9.6
`
`Petitioner Exhibit 1004 p.6
`
`
`
`Application No. 12/846,635
`Reply Dated December 22, 2011
`Reply to Office Action of November 10, 2011
`
`would elect group III as a reasonable number of species to the allowable generic claim of group I.
`
`The Examiner is invited to contact applicant's attorney at the telephone number
`
`listed below in the event that prosecution of this application can be expedited thereby.
`
`Respectfully submitted,
`
`Marc Vianello
`
`By / Arthur K. Shafier/
`Arthur K. Shaffer
`
`Reg. No. 50,257
`
`Intellectual Property Center, LLC
`7101 College Blvd.
`Suite 1520
`
`Overland Park, KS 66210
`
`Telephone (913) 345—0900
`Facsimile (913) 345—0903
`
`Petitioner Exhibit 1004 9.7
`
`Petitioner Exhibit 1004 p.7
`
`
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