Ex Parte Hyde et al

Patent Trial and Appeal Board

Sep 12, 2016

12386574 (P.T.A.B. Sep. 12, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
12/386,574 0412012009 Roderick A. Hyde
80118 7590 09/13/2016
Constellation Law Group, PLLC
P.O. Box 580
Tracyton, WA 98393
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
SEl -1000-US 9722
EXAMINER
ARCHER, MARIE
ART UNIT PAPER NUMBER
3769
MAILDATE DELIVERY MODE
09/13/2016 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.
Appeal2013-001454
Application 12/386,574
Technology Center 3700
Before JOHN C. KERINS, CHARLES N. GREENHUT, and
GEORGE R. HOSKINS, Administrative Patent Judges.
KERINS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Roderick A. Hyde et al. (Appellants) seek our review under 35 U.S.C.
§ 134(a) of the Examiner's final rejection of claims 1, 36-50, 52, 55, 59---64,
and 66-78. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
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Application 12/386,574
THE CLAIMED SUBJECT MATTER
Appellants' invention is directed to a method and system for
presenting an inhalation experience. Spec. 1. Independent claims 1 and 36,
reproduced below, are illustrative:
1. A computer-implemented method, comprising:
monitoring at least one health attribute of an individual during an
artificial sensory experience;
associating a characteristic of the artificial sensory experience
with the at least one health attribute of the individual; and
modifying at least one of an inhalation device-dispensed
bioactive agent or the artificial sensory experience at least
partially based on associating a characteristic of the artificial
sensory experience with the at least one health attribute of the
individual.
36. A system, comprising:
means for monitoring at least one health attribute of an individual
during an artificial sensory experience;
means for associating a characteristic of the artificial sensory
experience with the at least one health attribute of the individual;
and
means for modifying at least one of an inhalation device-
dispensed bioactive agent or the artificial sensory experience at
least partially based on associating a characteristic of the
artificial sensory experience with the at least one health attribute
of the individual.
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THE REJECTIONS ON APPEAL
The Examiner has rejected:
(i) claims 1, 36-48, 55, 61---64, 66, and 71-78 1 under 35 U.S.C.
§ 103(a) as being unpatentable over Braspenning (US
2011/0004047 Al, published Jan. 6, 2011) in view of Berg (US
2008/0065468 Al, published Mar. 13, 2008);
(ii) claims 49 and 50 under 35 U.S.C. § 103(a) as being
unpatentable over Braspenning in view of Berg and Rovira (US
6,795,972 B2, issued Sept. 21, 2004);
(iii) claims 52, 59, 60, and 67---69 under 35 U.S.C. § 103(a) as being
unpatentable over Braspenning in view of Berg, King, 2 and
Trueba (US 7,198,044 B2, issued Apr. 3, 2007);
(iv) claim 70 under 35 U.S.C. § 103(a) as being unpatentable over
Braspenning in view of Berg and Krijn3; and
(v) claims 72-75 under 35 U.S.C. § 101 as directed to non-
statutory subject matter, in a new ground of rejection entered in
the Answer (pages 3, 4--5).
ANALYSIS
Claims 1, 36--48, 55, 61-64, 66, and 71-78--Braspenning/Berg
Claims 1, 36--40, 43-48, 55, 61-64, 66, and 71-78
1 Claims 48 and 71 were omitted from the listing of claims subject to this
rejection in the Final Action. This is seen as being a clerical error, in that
the detailed grounds of rejection address claims 48 and 71.
2 "Some Effects of Drugs on Rats in Varying Conditions of Sensory
Stimulation," Psychopharmacologia 6, pp. 338-346 (1964).
3 "Virtual Reality Exposure Therapy of Anxiety Disorders: A Review,"
Clinical Psychology Review 24, pp. 259-281 (2004).
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Appellants first present arguments directed to independent claim 36.
Appeal Br. 43-83. The general thrust of the majority of the arguments
advanced is a challenge that the Examiner has failed to establish a prima
facie case ofunpatentability for claim 36. Reply Br. 3-7.
Appellants maintain that the Examiner has not provided a broadest
reasonable interpretation of claim 36 consistent with their Specification, and
does not explain how the references are applied to the claim language under
an appropriate broadest reasonable interpretation. Appeal Br. 44--48. The
Examiner, however, properly determined that each of the limitations set
forth in claim 36 invokes 35 U.S.C. § 112, sixth paragraph, and has
explained what structure in the Specification is regarded as corresponding to
claimed "means plus function" limitations, namely that the disclosed
structure corresponding to the recited means involves modules employing
the use of a processor or processors. Final Act. 13; Ans. 28-31. Appellants
do not point to any alleged Examiner error in this determination.
Appellants further argue, in more than one instance, that the portions
of the Braspenning and Berg references relied on by the Examiner do not
include the identical language used in claim 3 6, and that the Examiner does
not provide objectively verifiable evidence supporting a position that,
despite the differences in the terminology used, the claim limitations are
taught by the references. Appeal Br. 48-57. According to Appellants, this
alleged deficiency results in an absence of establishment of a prima facie
case ofunpatentability. Appeal Br. 49, 57.
It is well settled that:
[The USPTO] satisfies its initial burden of production by
adequately explain[ing] the shortcomings it perceives so that
the applicant is properly notified and able to respond. In other
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words, the PTO carries its procedural burden of establishing a
prima facie case when its rejection satisfies 35 U.S.C. § 132, in
notify[ing] the applicant ... [by] stating the reasons for [its]
rejection ... together with such information and references as
may be useful in judging of the propriety of continuing the
prosecution of [the] application.
In re Jung, 637 F.3d 1356, 1362 (Fed. Cir. 2011) (internal citations and
quotation marks omitted).
The Examiner provides detailed information, including an annotated
version of Figure 9b of Braspenning, as to the portions of Braspenning and
Berg asserted to disclose the claimed "means for monitoring," "means for
associating," and "means for modifying," recited in claim 36. Final Act. 13-
18. The Examiner additionally explains how the features relied on in
Braspenning and Berg are considered as meeting those limitations. Id.
These findings and explanations would have put any reasonable applicant on
notice of the basis for the Examiner's rejection, and would have given such
applicant ample information to judge the propriety of continuing
prosecution, as well as to be in a position to assign alleged error to the
Examiner's position in traversing the rejection. In accordance with Jung,
that is all that is required of a prima facie case of unpatentability.
In order to rebut a prima facie case of unpatentability, Appellants
must distinctly and specifically point out any alleged Examiner errors. See
37 C.F.R. § 41.37(c)(iv). Appellants have not done so here. Appellants'
various arguments include recitations of the limitations found in claim 36,
quotations from the Examiner's statement of rejection, and quotations from
the cited references, followed by contentions that the exact language in the
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cited references does not literally match the language in claim 36.4 Appeal
Br. 48-57. While Appellants baldly assert that the Examiner has not bridged
the gap between the verbiage in claim 36 and the verbiage in the references
with objectively verifiable evidence or arguments based on such evidence,
Appellants do not point to a single, specific instance where a statement made
by the Examiner is not supported by evidence in the form of the references
themselves, as well as Appellants' Specification, nor do they identify any
other alleged error in the Examiner's reasoning. See id.
Appellants additionally argue that, given the differences in
terminology between the claim limitations and the references, "it follows
that the USPTO is interpreting Braspenning through the lens of
Appellant[s'] application, which is impermissible hindsight use." Appeal
Br. 58. The use of Appellants' Specification to aid in interpreting claim 36
is not an impermissible use of hindsight; it is a necessary step in proper
claim construction. The application of the disclosure of Braspenning to the
limitations in claim 36 is neither impermissible use of hindsight; it is a
necessary aspect of establishing the unpatentability of the claim. Appellants
do not allege, and we do not see, any other action taken by the Examiner that
would amount to impermissible use of hindsight reconstruction.
Appellants also argue that, due to the terminology differences, "the
USPTO is relying on 'personal knowledge' and/or is taking 'official notice'
of one or more factors" regarding what the references teach. Appeal Br. 58.
No specific instance of this has been identified by Appellants. We view the
Examiner's position instead as properly evaluating or interpreting the
4 See In re Bond, 910 F.2d 831, 832 (Fed. Cir. 1990) (whether a reference
teaches a claim limitation "is not an 'ipsissimis verb is' test").
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references as would a person of ordinary skill in the art, and we conclude
that the Examiner's position is supported by evidence in the form of the
references.
Appellants further argue that Berg does not disclose the limitations set
forth in claim 36. Appeal Br. 58---67. Not only is Berg not relied upon as
teaching all of the limitations of claim 36, Appellants' arguments do not
apprise us of error in the Examiner's findings relative to Berg. In that
regard, Appellants quote several passages that are asserted to be from the
Berg reference. See Appeal Br. 62---64. It is apparent from those excerpts
that Appellants' arguments are drawn to a reference different than Berg, in
that at least several of the excerpts are not present in the Berg reference.
Appellants repeat the arguments directed to the use of impermissible
hindsight and reliance on either personal knowledge or taking official notice,
relative to the Berg reference. Appeal Br. 67. For the same reasons noted
above with respect to these arguments and the Braspenning reference, we are
not apprised of Examiner error in these respects.
Appellants reproduce the Examiner's position originally set forth at
pages 13-18 of the Final Action, and state that "[f]or the reasons set forth
above" the Examiner's position is "unsupported and erroneous, and
appear[ s] to mischaracterize the Braspenning and Berg references," and that
the rejection is founded on "mere conclusory statements." Appeal Br. 68-
72. The "reasons set forth above," referred to by Appellants appear to be
that there is no literal correspondence between language of claim 36 and the
disclosures of Braspenning and Berg. Absent identification of any specific
alleged error or mischaracterization, Appellants' argument fails to apprise us
of Examiner error.
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Appellants additionally maintain that the combination of Braspenning
and Berg would result in a change in the principle of operation of
Braspenning, in that such would result in Braspenning "no longer hav[ing] a
method for modifying a psychological state of a subject." Appeal Br. 76.
This argument appears to be based upon a full bodily incorporation of Berg
into Braspenning, which is not commensurate with the Examiner's rejection.
Id. ("were one to incorporate the 'Personalized audio controlled shopping
information service for a mobile device' as taught by Berg"). Further, we
note, as above, that Appellants appear to be referring to a reference different
than Berg, in that Berg does not disclose a "personalized audio controlled
shopping information service." The argument does not apprise us of
Examiner error.
Appellants continue this line of argument, asserting that the proposed
modification of Braspenning in view of Berg would require substantial
reconstruction and redesign of the elements in Braspenning, and would
result in a change in the basic principle of operation of the Braspenning
device. Appeal Br. 7 6-77. Appellants, once again, fail to identify even one
specific aspect that would require substantial reconstruction or redesign, nor
is there any indication as to what exactly would change in the way of
principle of operation. The arguments do not apprise us of Examiner error.
Appellants again assert that "the direct disclosures of Braspenning and
Berg are radically different from the recitations of clauses [a], [b], and [c]"
of claim 36. Appeal Br. 81. The statement is accompanied by no analysis as
to why a person of ordinary skill in the art would regard the disclosures in
general as being radically different from the three claimed means limitations.
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Similarly, Appellants proffer bald statements that the Examiner "has
provided no evidence that an apparent reason to modify/combine" the
teachings existed at the time of the invention, and that "such
modification/combination would apparently render the technologies of
Braspenning unsatisfactory for one or more of its intended purposes."
Appeal Br. 81. The Examiner has noted that the means for association
disclosed in Berg would be advantageous to use in the Braspenning system
as well, in that it would provide information with respect to the specific
aspect of the stimulus which is relevant to the user. Final Act. 18.
Appellants' argument does nothing to undermine this reason to combine, nor
does the reason to combine appear to render any part of Braspenning
unsatisfactory for its intended use.
Finally, Appellants note that one intended purpose of Braspenning is
for assessing and modifying a psychophysiological state of a person to aid in
reaching a relaxed state, and that a system having the three claimed means
limitations "would frustrate this purpose," and thus render Braspenning
unsatisfactory for its intended purpose. Appeal Br. 82. Again, absent any
detailed reasoning supporting such an assertion, we are not apprised of error
in the Examiner's position.
We have considered the remainder of Appellants' arguments,
including those advanced in the Reply Brief and Supplemental Reply Brief,
and none of these arguments apprise us of Examiner error. In particular, the
positions taken by Appellants in the Supplemental Reply Brief, i.e., that the
arguments should be treated as though directed to the merits of the rejection,
in addition to the "no evidence, no prima facie case" position, by-and-large
devolve to the same arguments regarding the absence of literal
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correspondence between the claim language and the language employed in
the cited references. Supplemental Reply Br. 3-15. To the extent that any
arguments touch on the actual merits of the rejection, they have been
addressed above.
For the foregoing reasons, as well as for the reasons and explanations
provided in the "Response to Argument" section of the Examiner's Answer,
none of the arguments advanced by Appellants for claim 36 apprises us of
Examiner error in rejecting that claim over Braspenning and Berg.
Accordingly, the rejection is sustained as to claim 36.
Appellants expressly rely on the arguments presented with respect to
claim 36 forthe patentability of independent claims 1, 71, 72, and 76.
Appeal Br. 83. The rejection as to those claims is therefore sustained.
Appellants also rely solely on the dependency of claims 37--40, 43-
48, 55, 61---64, 66, 73-75, 77, and 78, from one of independent claims 36,
72, and 7 6, for the patentability of those claims. Appeal Br. 83. The
rejection as to these claims is thus also sustained.
Claim 41
Appellants maintain that claim 41, which depends from claim 3 6, is
independently patentable, in that, in addition to the reasons advanced with
respect to claim 36, Braspenning does not recite "means for recording at
least one monitored health attribute of the individual." Appeal Br. 85. The
Examiner responds that paragraph 35 and item 28 in Figure 3 of
Braspenning discloses a memory to store ECG data, and regards this as
being encompassed by the recited means for recording at least one
monitored health attribute. Ans. 50.
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Appellants' arguments do not apprise us that this finding made by the
Examiner is in error. The rejection of claim 41 is sustained.
Claim 42
Appellants additionally maintain that claim 42, which depends from
claim 36, is independently patentable, in that, in addition to the reasons
advanced with respect to claim 36, neither Braspenning nor Berg recites
"means for observing at least one indication of an expected behavior pattern
proximate in time to a characteristic of the artificial sensory experience."
Appeal Br. 88, emphasis omitted. Appellants appear to recognize that the
Examiner relies on Berg, and not Braspenning, as disclosing this limitation.
Appellants cite to what are asserted to be paragraphs 60, 97, 102, 105, and
21 in Berg, arguing that these disclosures do not amount to a teaching of the
recited claim limitation. Id. at 88-89. The excerpts presented in the Appeal
Brief are not, however, excerpts from the cited Berg reference.
A review of actual paragraphs 21, 97, 102, and 105 of Berg, relied on
by the Examiner, reveals that Berg discloses subject matter falling with the
scope of the means limitation set forth in claim 42. As such, Appellants'
arguments do not apprise us of error in the Examiner's position. The
rejection of claim 42 is sustained.
Claims 49 and 50--Braspenning/Berg/Rovira
Appellants rely solely on the dependency of claims 49 and 50 from
independent claim 36 for their patentability. Appeal Br. 83. The rejection
as to these claims is sustained for the same reasons presented above.
Claims 52, 59, 60, and 67-69--Braspenning/Berg/King/Trueba
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Appellants rely solely on the dependency of claims 52, 59, 60, and
67----69, from independent claim 36 for their patentability. Appeal Br. 83.
The rejection as to these claims is thus also sustained.
Claim 70--Braspenning/Berg/Krijn
Appellants rely solely on the dependency of claim 70 from
independent claim 36 for its patentability. Appeal Br. 83. The rejection of
this claim is sustained for the same reasons presented above.
Claims 72-75-Non-Statutory Subject Matter
The Answer enters a new ground of rejection, that claims 72-75 are
unpatentable under 35 U.S.C. § 101 as directed to non-statutory subject
matter. Ans. 3, 4--5. Appellants fails to address this rejection in the Reply
Brief or in the Supplemental Reply Brief. We, accordingly, summarily
sustain this rejection.
DECISION
The rejection of claims 1, 36-48, 55, 61----64, 66, and 71-78 under 35
U.S.C. § 103(a) as being unpatentable over Braspenning in view of Berg is
affirmed.
The rejection of claims 49 and 50 under 35 U.S.C. § 103(a) as being
unpatentable over Braspenning in view of Berg and Rovira is affirmed.
The rejection of claims 52, 59, 60, and 67----69 under 35 U.S.C.
§ 103(a) as being unpatentable over Braspenning in view of Berg, King, and
Trueba is affirmed.
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The rejection of claim 70 under 35 U.S.C. § 103(a) as being
unpatentable over Braspenning in view of Berg and Krijn is affirmed.
The rejection of claims 72-75 under 35 U.S.C. § 101 as directed to
non-statutory subject matter 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).
AFFIRMED
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