Ex Parte Hyde et al

Patent Trial and Appeal Board

Apr 17, 2015

12218627 (P.T.A.B. Apr. 17, 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.
12/218,627 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).
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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
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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.
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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
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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.
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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

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