Ex Parte Hyde et alDownload PDFPatent Trial and Appeal BoardSep 24, 201412290456 (P.T.A.B. Sep. 24, 2014) 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. 12/290,456 10/29/2008 Roderick A. Hyde SE1-0967-US 5909 80118 7590 09/25/2014 Constellation Law Group, PLLC P.O. Box 580 Tracyton, WA 98393 EXAMINER RAYMOND, EDWARD ART UNIT PAPER NUMBER 2857 MAIL DATE DELIVERY MODE 09/25/2014 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. WOOD1 ____________ Appeal 2013-000330 Application 12/290,456 Technology Center 2800 ____________ Before JAMES C. HOUSEL, GEORGE C. BEST, and JEFFREY W. ABRAHAM, Administrative Patent Judges. ABRAHAM, Administrative Patent Judge. DECISION ON APPEAL This is a decision on an appeal under 35 U.S.C. § 134(a) from the decision of the Primary Examiner finally rejecting claims 71–98. We have jurisdiction pursuant to 35 U.S.C. § 6(b). We affirm. 1 According to the Appeal Brief filed April 30, 2012, the Real Party in Interest is Searete LLC. App. Br. 4. Based on records submitted to the USPTO on October 21, 2013, Searete assigned the ’456 Application to The Invention Science Fund I, LLC. See Reel/Frame 031442/0416. Appeal 2013-000330 Application 12/290,456 2 BACKGROUND Appellants’ claimed invention “relates to methods and systems for combining a bioactive agent with an artificial sensory experience.” Spec. 10:6–7. Claim 71 is the only independent claim on appeal, and is reproduced below from the Claims Appendix (App. Br. 40): 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 a bioactive agent at least partly based on the indication of the individual’s compliance with the artificial sensory experience. The Examiner maintains, and Appellants appeal (App. Br. 12), the rejection of claims 71–98 under 35 U.S.C. § 102(e) as anticipated by Einav (US 2008/0132383 A1, published June 5, 2008). OPINION The Examiner finds that Einav teaches each and every limitation of Appellants’ claimed subject matter, and identifies paragraph numbers and figures from Einav that correspond to the specific limitations in the claims. Final Act. 2–6. Appellants contend that the Examiner failed to establish a prima facie case of unpatentability because “the art of record does not recite the text of Appellant[s’] claims at issue.” App. Br. 13. Appellants’ arguments are not persuasive. The Federal Circuit has held that anticipation under 35 U.S.C. § 102 “is not an ‘ipsissimis verbis’ test.” In re Bond, 910 F.2d 831, 832-33 (Fed. Cir. 1990). We find that the Appeal 2013-000330 Application 12/290,456 3 Examiner satisfied the burden of establishing a prima facie case of unpatentability by reciting paragraph numbers and figures in Einav corresponding to the subject matter recited in Appellants’ claims, thereby notifying Appellants of the reasons for the rejection. See In re Jung, 637 F.3d 1356, 1362 (Fed. Cir. 2011); see also 35 U.S.C. § 132. As a result, the burden is on Appellants to come forward with persuasive arguments and/or evidence to rebut the prima facie case of anticipation. In re Dillon, 919 F.2d 688, 692 (Fed. Cir. 1990). Appellants, however, fail to provide any persuasive arguments or evidence. See, e.g., App. Br. 15; Reply Br. 8 and n.9. Failure to present this information in the Appeal Brief constitutes a waiver. See 37 C.F.R. § 41.37(c)(1)(iv). Accordingly, we affirm the rejection of claims 71–98.2 CONCLUSION For the reasons set forth above, we affirm the Primary Examiner’s final rejection of claims 71–98 under 35 U.S.C. § 102. 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). 2 Appellants do not argue dependent claims 73–75 and 77–98 apart from independent claim 71. These claims, therefore, stand or fall together with our analysis of independent claim 1. 37 C.F.R. § 41.37(c)(1)(iv). Appellants separately argue claims 72 and 76, but rely upon arguments similar to those made with respect to independent claim 1 in asserting the patentability of dependent claims 72 and 76. Accordingly, we affirm the rejection of claims 72 and 76 for the same reason we affirm the rejection of independent claim 1. Appeal 2013-000330 Application 12/290,456 4 AFFIRMED kme Copy with citationCopy as parenthetical citation