Ex Parte Hyde et al

Patent Trial and Appeal Board

Nov 4, 2015

12387151 (P.T.A.B. Nov. 4, 2015)

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.
12/387,151 04/28/2009 Roderick A. Hyde SE1-1001-US 1455
80118 7590 11/04/2015
Constellation Law Group, PLLC
P.O. Box 580
Tracyton, WA 98393
EXAMINER
WILLIAMS, TERESA S
ART UNIT PAPER NUMBER
3686
MAIL DATE DELIVERY MODE
11/04/2015 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 RODERICK A. HYDE, ROBERT LANGER,
ERIC C. LEUTHARDT, ROBERT W. LORD,
ELIZABETH A. SWEENEY, CLARENCE T. TEGREENE, and
LOWELL L. WOOD JR.
____________________

Appeal 2013-0033051
Application 12/387,1512
Technology Center 3600
____________________

Before NINA L. MEDLOCK, BRUCE T. WIEDER, and
TARA L. HUTCHINGS, Administrative Patent Judges.

MEDLOCK, Administrative Patent Judge.

DECISION ON APPEAL

1 Our decision references Appellants’ Appeal Brief (“App. Br.,” filed
August 20, 2012) and Reply Brief (“Reply Br.,” filed December 26, 2012),
and the Examiner’s Answer (“Ans.,” mailed October 26, 2012) and Final
Office Action (“Final Act.,” mailed March 20, 2012).
2 Appellants identify Searete LLC as the real party in interest. App. Br. 4.
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STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 71–100. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART and enter a NEW GROUND OF
REJECTION pursuant to our authority under 37 C.F.R. § 41.50(b).
CLAIMED INVENTION
Appellants’ claimed invention “relates to methods and systems for an
inhaled bioactive agent combined with an artificial sensory experience”
(Spec. 7, ll. 9–10).
Claim 71, reproduced below, is the sole independent claim, and is
representative of the subject matter on appeal:
71. A system, comprising:
an accepter module configured to accept an indication of
an individual’s compliance with an artificial sensory
experience; and
a presenter module configured to present an indication of
an inhalation device dispensed bioactive agent at least partially
based on the indication of the individual’s compliance with the
artificial sensory experience.

REJECTIONS3
Claims 71–77 and 79–100 are rejected under 35 U.S.C. § 102(b) as
anticipated by Trueba (US 7,198,044 B2, iss. Apr. 3, 2007).

3 The provisional rejection of claims 74, 78, 86–88, and 96–99 on the
ground of non-statutory obviousness-type double patenting is moot in view
of the abandonment of application Serial No. 12/317,934. See Notice of
Abandonment mailed October 27, 2015.
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Claim 78 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Trueba, Epstein (US 7,711,583 B2, iss. May 4, 2010) and Altieri
(US 7,373,377 B2, iss. May 13, 2008).4
ANALYSIS
As set forth below, pursuant to our authority under 37 C.F.R.
§ 41.50(b), we enter a new ground of rejection of claims 71-100 as indefinite
under 35 U.S.C. § 112, second paragraph. In light of this new rejection, we
do not reach the merits of the rejections of claims 71–100 under 35 U.S.C.
§§ 102(b) and 103(a). Before a proper review of the rejections under
§§ 102(b) and 103(a) can be conducted, the subject matter encompassed by
the claims on appeal must be reasonably understood without resort to
speculation. Because the claims fail to satisfy the requirements of 35 U.S.C.
§ 112, second paragraph, we reverse, pro forma, the Examiner’s rejections
of claims 71–77 and 79–100 under 35 U.S.C. § 102(b) and claim 78 under
§ 103(a). See In re Steele, 305 F.2d 859, 862 (CCPA 1962) (A prior art
rejection cannot be sustained if the hypothetical person of ordinary skill in
the art would have to make speculative assumptions concerning the meaning
of claim language.); see also In re Wilson, 424 F.2d 1382, 1385 (CCPA
1970) (“If no reasonably definite meaning can be ascribed to certain terms in
the claim, the subject matter does not become obvious-the claim becomes
indefinite.”). Our decision is based solely on the indefiniteness of
claims 71–100, and does not reflect on the merits of the underlying
rejections.

4 We treat as inadvertent error the omission of Trueba from the heading for
the rejection of claim 78, noting that this claim depends from claim 77.
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New Ground of Rejection
We enter the following new ground of rejection of claims 71–100
under 35 U.S.C. § 112, second paragraph, pursuant to our authority under
37 C.F.R. § 41.50(b).
Indefiniteness
The patent statute requires that a claim “particularly point[] out and
distinctly claim[] the subject matter which the applicant regards as the
invention.” 35 U.S.C. § 112, ¶ 2. As such, a claim is invalid for
indefiniteness if a person of ordinary skill in the art would not understand
the scope of the claim, when the claim is read in light of the specification.
See Allen Eng’g Corp. v. Bartell Indus., Inc., 299 F.3d 1336, 1348 (Fed. Cir.
2002). Notably too, when a word of degree or a purely subjective phrase is
used in a patent claim, the specification must provide some objective
standard for measuring that degree or the scope of that phrase.
See Datamize, LLC v. Plumtree Software, Inc., 417 F.3d 1342, 1350–55
(Fed. Cir. 2005). “The scope of claim language cannot depend solely on the
unrestrained, subjective opinion of a particular individual purportedly
practicing the invention.” Id. at 1350 (citation omitted).
Independent claim 71 recites a system comprising “an accepter
module configured to accept an indication of an individual’s compliance
with an artificial sensory experience; and a presenter module configured to
present an indication of an inhalation device dispensed bioactive agent at
least partially based on the indication of the individual’s compliance with the
artificial sensory experience.” Our concern is with the phrase “artificial
sensory experience,” which appears in claim 71, and, therefore, also in each
of dependent claims 72–100.
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The Specification sets forth examples of an artificial sensory
experience:
[o]ne example of an artificial sensory experience may include a
virtual world and/or other computer-simulated experience.
Other examples of an artificial sensory experience may include
experiences triggering sight, smell, hearing, touch, and/or taste.
For example, presenter module 104 may present an indication
of an artificial sensory experience including a virtual scent
environment, which may include olfactory stimulation for
improving memory.
See, e.g., Spec. 15, ll. 16–22. However, the Specification provides no
objective definition for identifying an “artificial sensory experience” or any
objective standard for determining which experiences are “artificial sensory
experiences” and which are not. Nor is any such objective standard evident
from the examples. In fact, it would seemingly appear that whether a
particular experience constitutes an “artificial sensory experience,” e.g.,
whether the experience“[triggers] sight, smell, hearing, touch, and/or taste,”
depends on the subjective reaction of the individual participant.
The Specification identifies Figure 17 as illustrating “a system related
to combining an inhaled bioactive agent and an artificial sensory
experience” and identifies Figure 22 as illustrating “an operational flow
representing example operations related to combining an inhaled bioactive
agent and an artificial sensory experience.” Spec. 10, ll. 78, 1719. But
Figure 17 merely shows a simulated computer screen and Figure 22 shows a
two-step flowchart.
Even if we assume for the sake of argument, that a person of ordinary
skill in the art, on reviewing the Specification, were able to determine what
constitutes an “artificial sensory experience,” as called for in the claims, we
find nothing from our review of the Specification that provides any guidance
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to a person of ordinary skill in the art in determining what constitutes “an
individual’s compliance with an artificial sensory experience,” e.g.,
compliance with an experience that triggers “sight, smell, hearing, touch,
and/or taste.”
In our view, a person of ordinary skill in art, on reviewing the
Specification, would not understand what types of “artificial sensory
experiences” the claims are intended to cover or what constitutes
“compliance with an artificial sensory experience.” As such, a person of
ordinary skill in the art would not able to determine the metes and bounds of
claims 71–100 so as to understand how to avoid infringement. Therefore,
rejection of claims 71–100 under 35 U.S.C. § 112, second paragraph, is
appropriate. See Orthokinetics, Inc. v. Safety Travel Chairs, Inc., 806 F.2d
1565, 1576 (Fed. Cir. 1986).

DECISION
The Examiner’s rejection of claims 71–77 and 79–100 under
35 U.S.C. § 102(b) is reversed pro forma.
The Examiner’s rejection of claim 78 under 35 U.S.C. § 103(a) is
reversed pro forma.
A NEW GROUND OF REJECTION has been entered for claims 71–
100 as indefinite under 35 U.S.C. § 112, second paragraph.
37 C.F.R. § 41.50(b) provides that “[a] new ground of rejection . . .
shall not be considered final for judicial review.” 37 C.F.R. § 41.50(b) also
provides that the Appellants, WITHIN TWO MONTHS FROM THE DATE
OF THE DECISION, must exercise one of the following two options with
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respect to the new ground of rejection to avoid termination of the appeal as
to the rejected claims:
(1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new evidence relating
to the claims so rejected, or both, and have the matter
reconsidered by the examiner, in which event the proceeding
will be remanded to the Examiner.
(2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same record.

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).

REVERSED; 37 C.F.R. § 41.50(b)

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