11633808 (P.T.A.B. Jan. 2, 2014)

Ex Parte Hurling

Patent Trial and Appeal BoardJan 2, 2014

11633808 (P.T.A.B. Jan. 2, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________________ Ex parte ROBERT HURLING ____________ Appeal 2011-011513 Application 11/633,808 Technology Center 3700 ____________ Before: JENNIFER D. BAHR, WILLIAM A. CAPP and NEIL T. POWELL Administrative Patent Judges. CAPP, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellant seeks our review under 35 U.S.C. § 134 of the final rejection of claims 1-6 and 10-20 under 35 U.S.C. § 101 as directed to non- statutory subject matter and as unpatentable under 35 U.S.C. § 103(a) over Fruge (US 5,954,512, iss. Sep. 21, 1999) and Freer (US 6,402,520 B1, iss. Jun. 11, 2002). We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. Appeal 2011-011513 Application 11/633,808 - 2 - THE INVENTION Appellant’s invention relates to behavioral training. Spec. 1. Claim 1, reproduced below, is illustrative of the subject matter on appeal. 1. A method for interacting with a user to improve the user's sub-conscious ability to shield a goal identified by the user, said method implemented on a computing device via software as a client application and comprising the steps of: providing the user with a training exercise or exercises dependent on the user's identified goal and designed to improve the user's goal shielding ability: said training exercise comprising: presenting the user with a series of stimuli, each stimulus suitable for prompting a response from the user; monitoring the user's responses to the stimuli; determining, as a function of the responses, whether the user's behaviour is consistent with shielding the goal; and presenting the user with one or more rewards dependent on the degree of shielding exhibited by the user; presenting the user with a goal shielding task to assess the efficacy of training on the user's sub-conscious capacity to shield the identified goal. OPINION Unpatentable Subject Matter Appellant argues claims 1-6 and 10-20 as a group. App. Br. 7-9. We select claim 1 as representative. See 37 C.F.R. § 41.37(c)(1)(vii) (2011). The Examiner finds, among other things, that Appellant’s claims lack sufficient recitation of a machine or transformation. Ans. 3-4, citing In re Bilski, 545 F.3d 943 (Fed. Cir. 2009). Also, the Examiner concludes that claim 1 is directed to an abstract idea that is patent ineligible. Ans. 3. Appeal 2011-011513 Application 11/633,808 - 3 - Appellant traverses the rejection, arguing that claim 1 requires a machine. App. Br. 8. Appellant also argues that claim 1 “transforms” underlying subject matter, namely, an increase in the user’s ability. App. Br. 9, Reply Br. 2. Finally, Appellant argues that the claimed process is not merely an abstract mental concept because it requires a person to interact with a specially programmed computer. App. Br. 8. None of these arguments is persuasive. With respect to Appellant’s transformation argument, training a user to modify his or her behavior does not constitute transforming an article into a different state or thing within the meaning of the machine-or- transformation test. See Bilski, 545 F.3d at 962. Similarly, Appellant’s recitation of a generic computing device and software in the preamble of claim 1 fails to satisfy the “machine” prong of the machine-or- transformation test.1 Abstract methods that employ computers adapted to perform those methods do not become patent-eligible merely by being clothed in computer language. See CLS Bank Int’l v. Alice Corp. Pty. Ltd., 717 F.3d 1269, 1292 (Fed. Cir. 2013). As the Federal Circuit recently reiterated in CLS Bank, the laws of nature, natural phenomena, and abstract ideas are excluded from patent eligibility. Id. at 1277. The underlying concern is that patents covering such elemental concepts reach too far and claim too much. Id. 1 The Examiner found that the recitation of a computer and software resided in the claim preamble and, therefore, did not limit the scope of the claim. Ans. 6. We do not reach the issue of whether the preamble is limiting, because we conclude that the claim does not recite patent eligible subject matter even if the preamble is limiting. Appeal 2011-011513 Application 11/633,808 - 4 - In analyzing whether subject matter is patent eligible, we engage in a two-step analysis. First we ask whether the claimed invention is a process, machine, manufacture, or composition of matter. 35 U.S.C. § 101. Second, if the invention falls within one of the above recited, statutory categories, we then determine whether a judicial exception nonetheless bars such a claim because the claim is drawn to a patent-ineligible law of nature, natural phenomenon, or abstract ideal. CLS Bank, at 1277. The analysis turns primarily on the practical likelihood of a claim preempting a fundamental concept. Id.2 In the instant case, the claimed method presents the user with a stimulus, monitors a response to that stimulus, and then presents a reward to reinforce a behavioral response that is deemed desirable. Finally, the method measures the user’s performance on a task. Clms. App’x., claim 1. Appellant’s claim is sufficiently broad to preempt almost the entire field of behavior modification learning theory. 3 2 “First and foremost is an abiding concern that patents should not be allowed to preempt the fundamental tools of discovery.” CLS Bank, at 1280. 3 For the purposes of the instant appeal, we do not decide whether behaviorism is properly considered a law of nature or an abstract idea as our analysis here would be unaffected by any distinction between the two. The basic principles of behaviorism are presented inter alia in the following works: Hull, C. L. (1943), Principles of Behavior: An Introduction to Behavior Theory, New York: Appleton-Century-Crofts; Pavlov, I. P. (1897), The Work Of The Digestive Glands. London: Griffin; Skinner, B. F. (1948), Walden Two. New York: Macmillan; Watson, J. B. (1930), Behaviorism (revised edition). University of Chicago Press. Appeal 2011-011513 Application 11/633,808 - 5 - Having identified that Appellant’s method claim is directed to the basic principles of behavior modification learning theory, we have considered whether the claim contains additional substantive limitations that narrow, confine, or otherwise tie down the claim so that, in practical terms, it does not fully cover the abstract idea itself. See CLS Bank, at 1282. Here, Appellant has not directed our attention to any such substantive limitation. In particular, we think the final limitation in claim 1 directed to assessing training efficacy is sufficiently broad that it encompasses presentation of essentially the same stimulus/response protocol as the training exercise limitation recited elsewhere in the claim. Thus, the claimed method encompasses assessing performance on repetition of the training exercise itself. As such, the assessment limitation does not, in practical terms, limit the scope of the claim. For the foregoing reasons, we sustain the Examiner’s Section 101 rejection of claims 1-6 and 10-20. Unpatentability of Claims 1-6 and 10-20 Claims 1, 4-6 and 10-19 Appellant argues claims 1, 4-6 and 10-19 as a group. App. Br. 9-13. We select claim 1 as representative. 37 C.F.R. § 41.37(c)(1)(vii). The Examiner finds that Freer discloses all of the elements of claim 1 except that it lacks rewarding the user depending on the user’s response to stimuli. Ans. 4. The Examiner relies on Fruge for rewarding desirable behavior. Ans. 4. The Examiner concludes that it would have been obvious to a person of ordinary skill in the art at the time of the invention to modify Freer with a reward protocol as taught by Fruge to achieve the claimed Appeal 2011-011513 Application 11/633,808 - 6 - invention. Ans. 5. According to the Examiner, a person of ordinary skill in the art would do this to motivate the user. Ans. 5. Appellant traverses the Examiner’s rejection by arguing that Freer does not teach goal shielding or rewards. App. Br. 11, Reply Br. 3-4. Appellant argues that Fruge rewards users for achieving goals established by someone other than the user (i.e., in a parent-child relationship). Id. Appellant attempts to distinguish the instant invention by arguing that the goals are identified by the user, not the user’s parent. Id. Appellant argues that a person of ordinary skill in the art would not have been motivated to modify Freer to measure goal shielding because Freer is directed to improving cognitive skills that have nothing to do with subconscious associations. App. Br. 13. Finally, Appellant argues that Freer does not assess the user’s “sub-conscious” ability. Reply Br. 4. The Examiner responds that Freer does disclose goal shielding. Ans. 9. The Examiner interprets “goal shielding” as concentrating one’s attention on a particular task instead of allowing one’s attention to be diverted by a distraction. Ans. 10. The Examiner disagrees with Appellant’s argument regarding a goal shielding task to assess training efficacy. Ans. 9. The Examiner states that claim 1 does not specify or otherwise limit what type of activity may be considered a goal shielding task. Ans. 9-10. The Examiner takes the position that Freer’s assessment of a user’s attention over any other distraction satisfies the disputed claim limitation. Ans. 10. We find the Examiner’s well-reasoned Answer regarding the unpatentability of claim 1 to be persuasive and adopt the Examiner’s fact findings and underlying rationale as our own. In addition, we note that, in Appeal 2011-011513 Application 11/633,808 - 7 - addition to Fruge’s teachings on positive reinforcement, Freer expressly discloses providing positive reinforcement in a stimulus/response training environment. See Freer, Col. 12, ll. 21-57. With respect to claim 1’s recitation of assessing the efficacy of training on the user’s “sub-conscious” capacity, we note that Freer does not discuss or describe, in so many words, whether or to what extent the user’s learning and improved performance is attributable to activity at the “sub- conscious” level. 4 However, the Examiner’s fact findings, as a whole, detail substantial similarity between the stimulus/response/reward protocol of Freer and Appellant’s invention.5 The Appellant has failed to persuade us, with either evidence or technical reasoning, that there is any patentable distinction between Freer’s impact on the user’s sub-conscious learning versus that of Appellant’s invention. See In re Spada, 911 F.2d 705, 708 (Fed.Cir.1990) (“when the PTO shows sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not.”). Appellant has not carried this burden. 4 As a board of appeal, we are primarily a tribunal of review. Although we decline to exercise our discretionary authority under 37 C.F.R. § 41.50(b) to enter a new ground of rejection in this case, we nevertheless take this occasion to express our reservations regarding whether claim 1satisfies the definiteness requirements under 35 U.S.C. § 112(b). Appellant’s specification does not operationally define “sub-conscious” and the specification and claims provide little, if any guidance, to allow a person of ordinary skill in the art to objectively ascertain the scope of claim 1 and to determine and assess whether an increase in a user’s performance may or may not be attributable to “sub-conscious” activity. 5 For example, Freer discloses training of “visual tracking” skills. Col. 12, ll. 42-46. We interpret Appellant’s “road race-track” exercise as directed largely to visual tracking skills. Spec. 15-17. Appeal 2011-011513 Application 11/633,808 - 8 - Finally, Appellant attempts to distinguish the claimed invention by arguing that the claimed “training exercise” is designed to increase a person’s ability to stick to a goal that they have defined, such as to exercise regularly. App. Br. 11. In response, the Examiner points out that Appellant’s example of exercising regularly is not part of the claim and that it would be improper to import a limitation from the specification into the claim. Ans. 9. The Examiner’s position on this issue is correct. See Arlington Indus., Inc. v. Bridgeport Fittings, Inc., 345 F.3d 1318, 1327 (Fed. Cir. 2003)( it is improper to read a limitation from the specification into the claims).6 6 As previously discussed in note 4 above, we are primarily a tribunal for review. Although we decline to exercise our discretionary authority under 37 C.F.R. § 41.50(b) to enter a new ground of rejection in this case, we nevertheless take this occasion to express our skepticism regarding the adequacy of Appellant’s disclosure to teach a practitioner to devise a “training exercise” that can empower a user to transfer learned behavior from a “training exercise” so as to achieve enhanced performance on a second and different task such as eating a healthier diet or going to a gym and exercising regularly. Should the scope of claim 1 be construed to cover such a scenario (in our opinion as presently drafted it does not) we question whether claim 1 is supported by sufficient written description to demonstrate actual possession of such an invention under 35 U.S.C. § 112(a); Ariad Pharmaceuticals, Inc. v. Eli Lilly & Co., 598 F.3d 1336 (Fed. Cir. 2010). Furthermore, we question whether the specification is sufficient to enable any person skilled in the art to which it pertains to make and use the full scope of the invention without engaging in undue experimentation. 35 U.S.C. § 112(a); In re Wands, 858 F.2d 731 (Fed. Cir. 1988). Among other things, we express reservations concerning the amount of direction or guidance presented in the specification regarding transference of learning in a training exercise to a different, real world behavior. Wands, at 737. We also take note that Appellant’s specification does not provide any working examples. Id. We also take note of the breadth of the claims as currently drafted. Id. We also take note of the relative unpredictability of the field of human behavior. Id. Appeal 2011-011513 Application 11/633,808 - 9 - Accordingly, we sustain the Examiner’s unpatentability rejection of claims 1, 4-6 and 10-19. Claims 2 and 3 Appellant argues claims 2 and 3 together. App. Br. 14-16. We select claim 2 as representative. 37 C.F.R. § 41.37(c)(1)(vii). Claim 2 depends from claim 1 and adds the limitation: “wherein monitoring includes monitoring any responses made within (i) a first period of time t1: (ii) a second period of time t2, following the first period, or a (iii) third period of time t3, following the second period; wherein the first period time t1 is between 300 and 400 ms.” Clms. App’x. The Examiner acknowledges that Freer does not disclose monitoring performance within the specified increments of time. Ans. 5. However, the Examiner finds that Freer does teach monitoring responses within sequential time periods. Id. The Examiner concludes that it would have been an obvious matter of design choice to select one time period over another. Id. Appellant traverses the rejection by arguing that the claimed time periods are critical for insuring that the user’s responses are sub-conscious. App. Br. 15-16. This argument is not persuasive. Appellant provides no persuasive evidence that tends to establish a temporal threshold when a respondent’s responses to stimuli become sub-conscious. Freer discloses a reward protocol by which a user may achieve more than 25 rewards per minute. Freer, col. 12, ll. 33-34. This establishes a response time interval that is close to, if not overlapping with, Appellant’s claim. A prima facie case of obviousness exists where the claimed ranges do not overlap but are close enough that one skilled in the art would have expected them to have the same properties. Titanium Metals Corp. of Am. v. Banner, 778 F.2d 775, Appeal 2011-011513 Application 11/633,808 - 10 - 783 (Fed. Cir. 1985). Appellant has failed to rebut the Examiner’s prima facie of obviousness. We sustain the Examiner’s unpatentability rejection of claims 2-3. Claim 20 Claim 20 depends from claim 1 and adds the limitation: “presenting the user with a first task prior to presenting the series of stimuli to assess the user's capacity to shield the identified goal.” Clms. App’x. Appellant traverses the rejection by arguing that Freer’s example of a flying bird is not a “first task” that has anything to do with the user’s capacity to shield the identified goal. App. Br. 17. The Examiner responds that Appellant’s dependent claim limitation does not specify what should be interpreted as a “first task.” Ans. 11. Freer discloses a biofeedback system for improving learning skills. Freer, col. 2, ll. 32-42. Freer’s system uses EEG technology to measure beta and theta brainwave activity. Freer, col. 4, ll. 5-26. Freer associates a decrease in theta wave activity with an increase in focus or attention. Freer, col. 6, ll. 43-44. Freer associates increased beta wave activity with an increase in cognitive processing. Freer, col. 6, ll. 44-45. Freer uses only the mind of a user to control a computer display. Freer, col. 7, ll. 1-5. In one disclosed training paradigm, Freer rewards the user for achieving specified voltage differentials in theta and beta wave activity. Freer, col. 12, ll. 21-24. Among other things, Freer presents the user with a stimulus/response/reward protocol in the form a visual tracking exercise. Freer, col. 12, ll. 36-58. Freer’s apparatus includes recording means to store performance data of individual users. Freer, col. 13, ll. 1-21. Inasmuch as Freer contemplates presenting at least some users with more than a single task, the Examiner’s Appeal 2011-011513 Application 11/633,808 - 11 - finding that Freer discloses a first task prior to presenting a series of stimuli to assess the user’s capacity to shield the identified goal is supported by a preponderance of the evidence.7 We sustain the Examiner’s unpatentability rejection of claim 20. DECISION The decision of the Examiner to reject claims 1-6 and 10-20 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 Vsh 7 We agree with the Examiner’s interpretation that the “first task” in claim 20 can be interpreted as any task that is presented prior to presenting the series of stimuli to assess the user’s capacity to shield. Ans. 11. The claim language is thus broad enough to encompass presenting the user with essentially the same task, two or more times, in succession.