Ex Parte Hyde et alDownload PDFPatent Trial and Appeal BoardApr 29, 201512150122 (P.T.A.B. Apr. 29, 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. 12/150,122 04/24/2008 Roderick A. Hyde SE1-0936-US 5536 80118 7590 04/29/2015 Constellation Law Group, PLLC P.O. Box 580 Tracyton, WA 98393 EXAMINER HARWARD, SOREN T ART UNIT PAPER NUMBER 1631 MAIL DATE DELIVERY MODE 04/29/2015 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 2013-0005742 Application 12/150,122 1 Technology Center 1600 ____________ Before MICHAEL J. STRAUSS, JOHN F. HORVATH, and KIMBERLY J. McGRAW, Administrative Patent Judges. McGRAW, Administrative Patent Judge. DECISION ON APPEAL Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s final rejection of claims 1, 56, 58, 64, 87, 104, 111, 112, and 116. We have jurisdiction under 35 U.S.C. § 6(b). We affirm. 1 According to the Appeal Brief filed December 18, 2012, the real party in interest is Searete LLC, which is wholly owned by Intellectual Ventures Management, LLC. App. Br. 5. Appeal 2013-005742 Application 12/150,122 2 BACKGROUND Appellants’ invention is directed generally to methods and systems for combining medicine with artificial sensory experience. Spec. 1:16–18. Claim 1, 56, 111, 112, 116 are independent. Claim 56 is representative of the issues raised on appeal and is reproduced below: 56. A system comprising: means for accepting at least one attribute of at least one individual; means for querying at least one database at least partly based on the at least one attribute; means for, including a microprocessor, selecting from the at least one database at least one prescription medication and at least one artificial sensory experience to address the at least one attribute of at least one individual; and means for presenting an indication of the at least one prescription medication and the at least one artificial sensory experience at least partly based on the selecting from the at least one database at least one prescription medication and at least one artificial sensory experience to address the at least one attribute of at least one individual. THE REJECTIONS Claims 56, 58, 64, 87, and 104 stand rejected under 35 U.S.C. § 112, second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which applicant regards as the invention. Final Act. 3; App. Br. 12. Claims 1, 56, 58, 64, 87, 104, 111, 112, and 116 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Mishelevich (US 2005/0065813 A1 published Mar. 24, 2005) and Firlik (US 2007/0179534 A1 published Aug. 2, 2007). Final Act. 5; App. Br. 12. Appeal 2013-005742 Application 12/150,122 3 Claims 1, 56, 58, 64, 111, 112, and 116 are provisionally rejected on the ground of nonstatutory obviousness-type double patenting as being unpatentable over claim 122 of copending Application No. 12/157,922 in view of Mishelevich (Final Act. 10; App. Br. 12) and claims 1, 56, 111, 112, and 116 are provisionally rejected on the ground of nonstatutory obviousness-type double patenting as being unpatentable over (respectively) claims 36, 36, 70, 71, and 75 of copending Application No. 12/387,961 in view of Mishelevich (Final Act. 12; App. Br. 12). 2 ANALYSIS We have thoroughly reviewed each of Appellants’ arguments for patentability. However, we are not persuaded by Appellants’ arguments and sustain the Examiner’s rejections of claims 1, 56, 58, 64, 87, 104, 111, 112, and 116 for essentially those reasons expressed in the Answer, including the Response to Argument section. We add the following primarily for emphasis. 35 U.S.C. § 112, ¶ 2 – Indefiniteness Claims 56, 58, 64, 87, and 104 stand rejected under 35 U.S.C. § 112, ¶ 2 as being indefinite. The Examiner finds that claim elements reciting “means for” are means-plus-function limitations that invoke 35 U.S.C. § 112, sixth paragraph, and finds the written description fails to clearly link or associate a disclosed structure, material, or acts to the claimed function, 2 Application Nos. 12/157,922 and 12/387,961 are pending. Thus, we do not reach the merits of the Examiner’s provisional double patenting rejections 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 2013-005742 Application 12/150,122 4 so that one of ordinary skill in the art would recognize what structure, material, or acts perform the function. See Final Act. 3; Ans. 3. Appellants argue that there is support for the various recited “means for” limitations in the Specification, pointing to various passages and drawings in the Specification. App. Br. 13–15, citing Spec. 9:23–30 (discussing an “acceptor module 102” that “may include a computer processor”), 10:1–9 (discussing a “querier module 104” that “may include a computer processor”), 10:10–22 (discussing a “selector module 106” that “may include a computer processor”), 10:23–11:22 (discussing a “presenter module 108” that “may include a computer processor”). Appellants’ argument is not persuasive. 35 U.S.C. § 112, ¶ 6 requires a claim limitation expressed in means-plus-function language “shall be construed to cover the corresponding structure . . . described in the specification and equivalents thereof.” An applicant who chooses to employ means plus function language in a claim must provide an adequate disclosure in the specification showing what is meant by that language. In re Donaldson Co., 16 F.3d 1189, 1195 (Fed. Cir. 1994) (en banc). If there is no disclosure of structure, material or acts for performing the recited function, then the claim fails to particularly point out and distinctly claim the invention as required by the 35 U.S.C. § 112, ¶ 2. Id. Here, none of the cited provisions of the Specification describe a structure sufficient to satisfy the requirements of 35 U.S.C. § 112. The Specification refers to “modules” that “may include a computer processor.” Spec. 9. A module is an undefined structure that does not tell one of ordinary skill in the art what structure, material, or acts perform the claimed function. Nor does a “computer processor” provide the requisite structure. Appeal 2013-005742 Application 12/150,122 5 Our reviewing court has made clear that the corresponding structure for performing a specific function is required to be more than a simple general purpose computer or microprocessor. See, e.g., Aristocrat Techs. Australia Pty Ltd. v. Int’l Game Tech., 521 F.3d 1328, 1333 (Fed. Cir. 2008). To claim a means for performing a specific computer-implemented function and then to disclose only a general purpose computer or microprocessor as the structure designed to perform that function amounts to pure functional claiming. Id. The structure corresponding to the means for a computer implemented function must include the algorithm needed to transform the general purpose computer or microprocessor disclosed in the specification. Id. Here, Appellants merely refer to modules that may include a computer processor but do not disclose any algorithm for performing the claimed function. Accordingly, the means-plus-function limitations lack sufficient disclosure of structure under 35 U.S.C. § 112, ¶ 6 and we sustain the Examiner’s rejection of claims 56, 58, 64, 87, and 104 as indefinite under 35 U.S.C. § 112, ¶ 2. 35 U.S.C. § 103(a) The Examiner rejected claims 1, 56, 58, 64, 87, 104, 111, 112, and 116 under 35 U.S.C. § 103(a) as being unpatentable over Mishelevich and Firlik. See, e.g., Final Act. 5–7, citing Firlik, Abstract, ¶ 23 and Mishelevich ¶¶ 2, 35, 46, 89–91, 101, 110, 111, 114, 129, 130, Figs. 8, 9; Ans. 4–5. Appeal 2013-005742 Application 12/150,122 6 Claims 1 and 56 3 Appellants contend that the Examiner failed to establish a prima facie case of unpatentability of claims 1 and 56 because “the art of record does not recite the text of Appellant’s [sic] claims at issue.” App. Br. 16; see also id. at 34. In particular, Appellants contend that neither Mishelevich nor Firlik recite the text “accepting at least one attribute of at least one individual,” “querying at least one database at least partly based on the at least one attribute,” “selecting, including a microprocessor, from the at least one database at least one prescription medication and at least one artificial sensory experience to address the at least one attribute of at least one individual” or “presenting an indication of the at least one prescription medication and the at least one artificial sensory experience at least partly based on the selecting from the at least one database at least one prescription medication and at least one artificial sensory experience to address the at least one attribute of at least one individual” found in claims 1 and 56. See, e.g., App. Br. 19–20, 22, 27–28, 30–35. Appellants further argue that the Examiner has not provided any “objectively verifiable evidence” as to how Mishelevich or Firlik could be modified to teach the accepting, querying, selecting, or presenting clauses of claims 1 and 56. See, e.g., id. at 26–30, 32–34, 36, 37. Appellants also charge that the Examiner is improperly relying on hindsight or personal knowledge or is taking official notice of one of more factors to reach the factual conclusion of what the cited technical material teaches. See, e.g., id. 3 Although heading VII, A, 1 of Appellants’ opening brief is titled “Independent Claim 56”, this section also contains arguments directed to claim 1. See, e.g., App. Br. 2, 17, 30. As such, we have considered Appellants’ arguments as they relate to both claim 1 and 56. Appeal 2013-005742 Application 12/150,122 7 at 29–30, 35–36. Further, Appellants assert 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. See, e.g., id. at 30, 36. Appellants also argue that combining the teachings of Mishelevich with Firlik would require substantial reconstruction and redesign of the elements shown in Mishelevich, as well as a change in the basic principle under which Mishelevich was designed to operate, and that the combination of Mishelevich and Firlik would render the references unsatisfactory for their intended purpose. App. Br. 38–45. 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 continuing the prosecution of [the] application.” See In re Jung, 637 F.3d 1356, 1362 (Fed. Cir. 2011). 4 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 4 Appellants’ Supplemental Reply Brief filed March 18, 2013, 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. 3, which misleadingly implies that Jung is “new” and represents a change in the law. Jung, decided on March 28, 2011, 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 2013-005742 Application 12/150,122 8 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 obviousness by identifying and applying paragraphs in Mishelevich and Firlik for teaching or suggesting subject matter corresponding to that recited in Appellants’ claims, and providing articulated reasoning with rational underpinning to support the conclusion of obviousness. The cited portions of Mishelevich and Firlik, 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 specifically pointing out the supposed errors in the Examiner’s action setting forth findings of fact and conclusions of law, 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 pointing out the Examiner’s supposed errors, Appellants have made mere general allegations that the claims define a patentable invention because (1) the Examiner has failed to establish a prima facie case of obviousness, without specifically articulating what gaps exist between the cited art and the recited claims or (2) the combination of the cited art would render the art unsatisfactory for their intended purpose, without providing any explanation as to why. Appellants’ arguments amount to little more than 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 Appeal 2013-005742 Application 12/150,122 9 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, with any particularity, error in the Examiner’s interpretations of Mishelevich, Firlik, or the claim language. We reject Appellants’ argument that the Examiner must demonstrate that the identical language of rejected claims appears in the cited reference in order for the reference to establish a prima facie case of unpatentability. The test of whether a reference teaches or suggests 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 references, and the rationale for combining the references but Appellants offer no substantive arguments to rebut the specific underlying factual findings or conclusions made by the Examiner in support of the § 103 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 Appeal 2013-005742 Application 12/150,122 10 [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.”)). Appellants’ arguments that the modification of the cited art would render the art unfit for their intended purpose or change the principle of operation are similarly conclusory and unpersuasive. Appellants merely quote sections of the Examiner’s rejection, quote sections of Mishelevich, and then make non-specific assertions of error without providing any substantive argument indicating why the Examiner’s proposed combination of Mishelevich and Firlik would change either reference’s principle of operation or render either reference unfit for its intended purpose. Instead, we find the Examiner has articulated reasoning with rational underpinning to support the conclusion of obviousness, and that conclusion remains unrebutted by Appellants. Accordingly, we affirm the rejection of claims 1 and 56. Claims 1, 111, 112, 116 Appellants argue that independent claims 1, 111, 112, and 116 contain similar recitations as claim 56 and are not obvious for at least the same reasons. App. Br. 45. We affirm the rejection of claims 1, 111, 112, and 116 for the same reasons we affirm the rejection of independent claim 56. Appeal 2013-005742 Application 12/150,122 11 Claim 58 Appellants separately argue claim 58, but rely upon arguments similar to those made with respect to independent claim 56. App. Br. 46–48. We affirm the rejection of claims 58 for the same reasons we affirm the rejection of independent claim 56. Claims 64, 87, and 104 Appellants do not present separate arguments directed to claims 64, 87, and 104, which depend directly or indirectly upon claim 56. App. Br. 45. As such, we also sustain the rejection of dependent claims 64, 87, and 104. DECISION The indefiniteness rejection of claims 56, 58, 64, 87, and 104 under 35 U.S.C. § 112, ¶ 2 is affirmed. The obviousness rejection of claims 1, 56, 58, 64, 87, 104, 111, 112, and 116 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