Ex Parte Hyde et alDownload PDFPatent Trial and Appeal BoardApr 17, 201512218627 (P.T.A.B. Apr. 17, 2015) Copy Citation 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. 12/218,627 07/16/2008 Roderick A. Hyde SE1-0961-US 4046 80118 7590 04/17/2015 Constellation Law Group, PLLC P.O. Box 580 Tracyton, WA 98393 EXAMINER ADAMS, CHARLES D ART UNIT PAPER NUMBER 2164 MAIL DATE DELIVERY MODE 04/17/2015 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, MURIEL Y. ISHIKAWA, ERIC C. LEUTHARDT, ROYCE A. LEVIEN, ROBERT W. LORD, MARK A. MALAMUD, ELIZABETH A. SWEENEY, LOWELL L. WOOD JR., and VICTORIA Y.H. WOOD ____________ Appeal 2012-011998 Application 12/218,6271 Technology Center 2100 ____________ Before CARLA M. KRIVAK, JOHN F. HORVATH, and KIMBERLY J. McGRAW, Administrative Patent Judges. KIMBERLY J. McGRAW, Administrative Patent Judge. DECISION ON APPEAL Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s rejection of claims 75–96. We have jurisdiction under 35 U.S.C. § 6(b). We affirm. 1 According to the Appeal Brief filed May 8, 2012, the real party in interest is Searete LLC, which is wholly owned by Intellectual Ventures Management, LLC. App. Br. 4. Appeal 2012-011998 Application 12/218,627 2 BACKGROUND Appellants’ invention is directed generally to methods and systems for monitoring bioactive agent use. Spec. 1:1–2. Claim 75 is the only independent claim and is reproduced below: 75. A system, comprising: an acceptor module; an assigner module, including a microprocessor, configured to assign an artificial sensory experience to monitor at least one side effect of a bioactive agent on an individual. THE REJECTIONS Claims 75, 76, and 78–93 stand rejected under 35 U.S.C. § 102(b) as anticipated by Brown (US Patent 6,186,145 B1 issued Feb. 13, 2001). Ans. 8–12. Claims 77 and 94–96 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Brown and Suffin (US Patent 7,177,675 B2 issued Feb. 13, 2007). Ans. 12–14. Claim 75 stands provisionally rejected on the ground of nonstatutory obviousness-type double patenting as being unpatentable over claim 34 of copending Application No. 12/218,503.2 Ans. 7. ANALYSIS We have thoroughly reviewed each of Appellants’ arguments for patentability. However, we are not persuaded by Appellants’ arguments and 2 Application No. 12/218,503 is pending. Thus, we do not reach the merits of the Examiner’s provisional double patenting rejection because this issue is not ripe for decision by the Board. Panels have the flexibility to reach or not reach provisional double-patenting rejections. See Ex parte Moncla, 95 USPQ2d 1884 (BPAI 2010) (precedential). Appeal 2012-011998 Application 12/218,627 3 sustain the Examiner’s rejections of claims 75–96 for essentially those reasons expressed in the Answer, including the Response to Argument section. We add the following primarily for emphasis. Claim 75 The Examiner found that Brown teaches each and every limitation of claim 75. Ans. 8 and 17, citing Brown 7:18-26, 16:35–60, 24:66–25:33. Appellants contend that the Examiner failed to establish a prima facie case of unpatentability because Brown does not recite the text “an acceptor module” or “an assigner module configured to assign an artificial sensory experience to monitor at least one side effect of a bioactive agent on an individual,” found in claim 75. App. Br. 26. Appellants further argue that the Examiner has not provided any “objective evidentiary support to ‘close the gap’ between” what Brown explicitly recites and what the Examiner alleges the reference teaches. Id. at 26–30. Appellants also charge that the Examiner is improperly relying on personal knowledge or is taking official notice of one of more factors to reach the factual conclusion of what the cited technical material teaches. Further, Appellants state the Examiner should be required to provide an affidavit or declaration setting forth objectively verifiable evidence in support of the Examiner’s assertions regarding what the cited technical material teaches and/or should be interpreted to teach. Id. at 31–32. Appellants’ arguments are not persuasive. The Federal Circuit has held that the USPTO carries its procedural burden of establishing a prima facie case when its rejection satisfies the requirements of 35 U.S.C. § 132 by notifying the applicant of the reasons for rejection, “together with such information and references as may be useful in judging of the propriety of Appeal 2012-011998 Application 12/218,627 4 continuing the prosecution of [the] application.” See In re Jung, 637 F.3d 1356, 1362 (Fed. Cir. 2011).3 Thus, “all that is required of the office to meet its prima facie burden of production is to set forth the statutory basis of the rejection and the reference or references relied upon in a sufficiently articulate and informative manner as to meet the notice requirement of § 132.” Id. at 1363. Here, the Examiner has satisfied the burden of establishing a prima facie case of unpatentability by reciting column and line numbers in Brown corresponding to the subject matter recited in Appellants’ claims, thereby notifying Appellants of the reasons for the rejection. Ans. 8–9, 16–19. The cited portions of Brown, and the accompanying explanations provided by the Examiner, collectively constitute the objectively verifiable evidence that Appellants allege is lacking. Therefore, the burden has shifted to Appellants to rebut the Examiner’s prima facie case by distinctly and specifically pointing out the supposed errors in the Examiner’s action, as well as the specific distinctions believed to render the claims patentable over the applied references. Appellants have failed to carry their burden. Rather than distinctly pointing out the Examiner’s supposed errors, Appellants have made mere general allegations that the claims define a patentable invention because the 3 Appellants’ Supplemental Reply Brief filed August 21, 2012, requests that the Board read the Appeal Brief vocabulary as consistent with the “newly- announced notice theory of the prima facie case announced in In re Jung,” Supp. Reply Br. 4, which misleadingly implies that Jung is “new” and represents a change in the law. Jung was controlling case law when the Appeal Brief was filed. Appellants have not provided any persuasive argument as to why Appellants’ arguments relating to Jung were not presented in Appellants’ opening brief. As such, we have not considered Appellants’ Supplemental Reply Brief. Appeal 2012-011998 Application 12/218,627 5 Examiner has failed to establish a prima facie case of anticipation, without specifically articulating what gaps exist between Brown and claim 75. Viewed as a whole, Appellants’ arguments amount to a recitation of the claim language, and a quotation of the Examiner’s statement of the rejection followed by a quotation of each of the cited portions of the prior art reference, from which Appellants summarily conclude that the quoted language of the references does not meet the quoted claim language. Other than alleging the Examiner is required to provide direct quotations of identical terminology, Appellants have not identified error in the Examiner’s interpretations of Brown or the claim language. We reject Appellants argument that the Examiner must demonstrate that the identical language of claim 75 appears in the cited reference in order for the reference to anticipate. See e.g., App. Br. 26. The test of whether a reference teaches a claim limitation is not whether the exact language of the limitation is present in the reference. Rather, the relevant inquiry is whether the limitation is taught or suggested by the prior art when the claim is given its broadest reasonable interpretation in light of the specification. See e.g., In re Bond, 910 F.2d 831, 832–33 (Fed. Cir. 1990) (interpretation of references “is not an ‘ipsissimis verbis’ test); Akzo N. V. v. U.S. Int’l Trade Comm’n, 808 F.2d 1471, 1479 & n.11 (Fed. Cir. 1986); see also Standard Havens Prods., Inc. v. Gencor Indus., Inc., 953 F.2d 1360, 1369 (Fed. Cir. 1991)(“An anticipatory reference . . . need not duplicate word for word what is in the claims.”) The Appellants may well disagree with how the Examiner interpreted and applied the reference, but Appellants offer no substantive arguments to rebut the specific underlying factual findings made by the Examiner in Appeal 2012-011998 Application 12/218,627 6 support of the anticipation rejection. We decline to examine the claims sua sponte, looking for distinctions over the prior art. See In re Baxter Travenol Labs., 952 F.2d 388, 391 (Fed. Cir. 1991) (“It is not the function of this court to examine the claims in greater detail than argued by an [A]ppellant, looking for [patentable] distinctions over the prior art.”). In the absence of a more detailed explanation, we are not persuaded of error on the part of the Examiner. See Jung, 637 F.3d. at 1365 (“[I]t has long been the Board’s practice to require an [Appellant] to identify the alleged error in the [E]xaminer’s rejections,” citing Ex Parte Frye, 94 USPQ2d 1072 (BPAI 2010) (precedential) (“The panel then reviews the obviousness rejection for error based upon the issues identified by appellant, and in light of the arguments and evidence produced thereon.”)). Accordingly, we affirm the rejection of claim 75. Claims 76–78, 80–85, 87, and 89–96 Appellants do not present separate arguments directed to claims 76– 78, 80–85, 87, and 89–96, which depend directly or indirectly upon claim 75. App. Br. 32. As such, we also sustain the rejection of dependent claims 76–78, 80–85, 87, and 89–96. Claims 79, 86, and 88 Appellants separately argue claims 79, 86, and 88, but rely upon arguments similar to those made with respect to independent claim 75 in asserting the patentability of dependent claims 79, 86, and 88. App. Br. 32– 42. We affirm the rejection of claims 79, 86, and 88 for the same reasons we affirm the rejection of independent claim 75. Appeal 2012-011998 Application 12/218,627 7 DECISION The anticipation rejection of claims 75, 76, and 78–93 under 35 U.S.C. § 102(b) is affirmed. The obviousness rejection of claims 77 and 94–96 under 35 U.S.C. § 103(a) 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 bar Copy with citationCopy as parenthetical citation