Ex Parte Jung et al

Patent Trial and Appeal Board

Mar 12, 2013

11901954 (P.T.A.B. Mar. 12, 2013)

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.
11/901,954 09/18/2007 Edward K.Y. Jung SE1-0001-US 8060
80118 7590 03/13/2013
Constellation Law Group, PLLC
P.O. Box 220
Tracyton, WA 98393
EXAMINER
SZMAL, BRIAN SCOTT
ART UNIT PAPER NUMBER
3736
MAIL DATE DELIVERY MODE
03/13/2013 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 EDWARD K.Y. JUNG, ROYCE A. LEVIEN,
ROBERT W. LORD, MARK A. MALAMUD, and
JOHN D. RINALDO, JR.
____________

Appeal 2010-007041
Application 11/901,954
Technology Center 3700
____________

Before STEFAN STAICOVICI, JOHN W. MORRISON, and
HYUN J. JUNG, Administrative Patent Judges.

STAICOVICI, Administrative Patent Judge.

DECISION ON APPEAL

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STATEMENT OF THE CASE
Edward K.Y. Jung et al. (Appellants) appeal under 35 U.S.C. § 134
from the Examiner’s decision finally rejecting claims 1, 4, 7, 16, 20-22, 24-
27, and 29. Claims 2, 3, 5, 6, 8-11, 13-15, 17, and 23 have been withdrawn
and claims 12, 18, 19, and 28 have been canceled. We have jurisdiction
over this appeal under 35 U.S.C. § 6.

THE INVENTION
Appellants’ invention relates to a method and device for monitoring
movement or position of a person’s appendage, determining whether the
movement or position is indicative of a risk of repetitive injury to the person,
and implementing an action to reduce the determined risk. Spec. 1, para.
[01].
Claims 1, 22, 26, and 29, with added brackets, are illustrative of the
claimed invention and read as follows:
1. A method implemented in an environment that includes a
person interacting with an electronic device via a user interface,
the method comprising:
[a] monitoring a position of an appendage of the person
and a position of the user interface of the device to determine at
least one of a movement or a position of the appendage with
respect to the position of the user interface of the device;
[b] determining if the monitored movement or position of
the appendage of the person with respect to the position of the
user interface of the device is indicative of a risk of a repetitive
injury to the person; and
[c] implementing an action facilitating a reduction of the
determined indicated risk of a repetitive injury to the person.

22. An electronic device comprising:
[a] a user interface operable to at least one of receive
input from a person or provide an output to the person;
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[b] a monitoring circuit operable to gather data indicative
of a physical movement involved in the person making an input
to the electronic device using the user interface;
[c] an analytic circuit operable to determine if the
movement of the person making an input to the electronic
device corresponds to a repetitive injury risk to the person; and
[d] a mitigation circuit operable to implement a
remediation action by demonstrating or illustrating alternate
positions or movement of the appendage to facilitate a
reduction of the determined repetitive injury risk to the person.

26. A computer program product comprising:
(a) program instructions operable to perform a process in
a computing device having a user interface operable to interact
with a person, the process comprising:
[a] monitoring at least one of a movement or a position of
an appendage of the person with respect to the user interface of
the device;
[b] determining if the monitored movement or position of
the appendage of the person is indicative of a risk of a repetitive
injury to the person; and
[c] implementing an action by suggesting to the person
one of a corrected position or movement of the appendage to
facilitate a reduction of the determined indicated risk of a
repetitive injury to the person; and
(b) a computer-readable signal-bearing storage medium
bearing the program instructions.

29. An electronic device having an input or output device
with a user interface operable to interact with a person, the
electronic device comprising:
[a] means for monitoring at least one of a movement or a
position of an appendage of the person touching the user
interface of the input or output device;
[b] means for determining if the monitored movement or
position of the appendage of the person is indicative of a risk of
a repetitive injury to the person; and
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[c] means for implementing an action facilitating a
reduction of the determined indicated risk of a repetitive injury
to the person.
THE REJECTIONS
The following rejections are before us for review:
The Examiner rejected claims 1, 4, 7, 16, 20, 21, 26, and 27 under 35
U.S.C. § 101 as directed to non-statutory subject matter.
The Examiner rejected claims 1, 4, 7, 16, 20, and 21 under 35 U.S.C.
§ 112, first paragraph, for failing to comply with the written description
requirement.
The Examiner rejected claims 1, 4, 7, 16, 20, and 29 under 35 U.S.C.
§ 102(b) as anticipated by Madill (US 6,647,288 B2, iss. Nov. 11, 2003).
The Examiner rejected claims 21, 22, 24, 26, 27 under 35 U.S.C. §
103(a) as unpatentable over Madill and Littell (US 2005/0270163 A1, publ.
Dec. 8, 2005).
The Examiner rejected claim 25 under 35 U.S.C. § 103(a) as
unpatentable over Madill, Littell, and Jadidi (US 2006/0184059 A1, publ.
Aug. 17, 2006).

SUMMARY OF DECISION
We AFFIRM.

ANALYSIS1
The non-statutory subject matter rejection

1 Appellants did not provide page numbers in the Appeal Brief and
Reply Brief. However, for ease of referring to Appellants’ arguments, we
assign page numbers 1 through 51 to the Appeal Brief and page numbers 1
through 7 to the Reply Brief.
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Claims 1, 4, 7, 16, 20, and 21
With respect to independent claim 1, the Examiner found that “[e]ach
of the monitoring, determining and implementing steps can be performed by
a human being or by hand.” Ans. 3. Thus according to the Examiner, “the
claim fails to meet the requirements for patent eligibility.” Id.
In response, Appellants take the position that independent claim 1
satisfies the machine-or-transformation test because the claim (1) is tied to a
particular machine, namely, “the user interface of the device” and (2)
“transforms the monitored movement or position into ‘implementing an
action facilitating a reduction of the determined indicated risk.’” Reply Br.
4-5. Thus, according to Appellants, claims 1, 4, 7, 16, 20, and 21 are
directed to statutory subject matter. Reply Br. 7.
Section 101 defines the subject matter that may be patented under the
Patent Act: “[w]hoever invents or discovers any new and useful process,
machine, manufacture, or composition of matter, or any new and useful
improvement thereof, may obtain a patent therefor, subject to the conditions
and requirements of this title.” Supreme Court precedents “provide three
specific exceptions to § 101 ’s broad patent-eligibility principles: ‘laws of
nature, physical phenomena, and abstract ideas.’” Bilski v. Kappos, 130 S.
Ct. 3218, 3225 (2010) (quoting Diamond v. Chakrabarty, 447 U.S. 303,309
(1980)).
In this case, we agree with the Examiner that the steps of claim 1,
namely, “monitoring,” “determining,” and “implementing” read on a process
that could be performed in the human mind, or by a human. Ans. 3.
“[M]ental processes-or processes of human thinking-standing alone are not
patentable even if they have practical application.” In re Comiskey, 554
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F.3d 967, 979 (Fed. Cir. 2009); see also Gottschalk v. Benson, 409 U.S. 63,
67 (1972) (“Phenomena of nature..., mental processes, and abstract
intellectual concepts are not patentable, as they are basic tools of scientific
and technological work.”).
The U.S. Supreme Court acknowledges that the machine-or-
transformation test is a “useful and important clue or investigative tool” for
determining patent eligibility under § 101. Bilski, 130 S. Ct. at 3221. In this
regard, although we appreciate that claim 1 recites “[a] user interface of the
device,” we note that none of the recited steps refers to any specific
operations that would cause the “user interface of the device” to be the
mechanism to perform these steps. As noted by the Examiner, “the
monitoring step can be performed by a human observer watching the person
use the user interface” and “the human observer can then determine if the
movement of the person is indicative of a repetitive injury to the person.”
Ans. 3. As such, the steps of claim 1 are not executed by a particular
machine or apparatus.
Furthermore, in contrast to Appellants’ position that claim 1
transforms the monitored movement or position into “implementing an
action facilitating a reduction of the determined indicated risk”, because the
monitored movement or position is not an article, the implementing step of
claim 1 cannot result in the transformation of an article. See Reply Br. 5.
“[T]he human observer can either move the user interface or can physically
move the person to prevent a repetitive injury.” Ans. 3.
For all these reasons, we sustain the rejection of independent claim 1
and dependent claims 4, 7, 16, 20, and 21, which have not been separately
argued, as directed to non-statutory subject matter.
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Claims 26 and 27
Independent claim 26 is directed to “a computer-readable signal-
bearing storage medium.” App. Br., Clms. App’x.
The Examiner finds that the claim is directed to non-statutory subject
matter because the recited “computer-readable signal-bearing storage
medium” is not limited to physical memory, such as, “ROM, RAM, CD-
ROM, DVD or magnetic storage, but also includes quantum memory,”
which according to the Examiner “does not comprise a physical structure”
because the “[S]pecification does not limit the types of computer readable
medium to only physical structures” and the limitation can be interpreted “as
nothing more than a signal.” Ans. 3-4. In other words, the Examiner takes
the position that the recited “computer-readable signal-bearing storage
medium” includes signal bearing mediums. See Ans. 4.
Appellants contend that the claim is directed to statutory subject
matter because the claim “is directed to an article of manufacture, namely, a
computer program product.” Reply Br. 6.
At the outset, we note that Appellants’ Specification states that a
“computer-readable signal-bearing medium includes a computer storage
medium,” and in another embodiment, it “includes a communication
medium.” Spec. 16, para. [049]. Appellants’ Specification further states
that “[c]ommunications media may typically embody computer-readable
instructions, data structures, program modules, or other data in a modulated
data signal such as a carrier wave or other transport mechanism.” Spec. 6,
para. [025] ( “. . . communications media include . . . wireless media such as
acoustic, RF, optical, and infrared media.”). Emphasis added.
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Thus, under the broadest reasonable interpretation, the “computer-
readable signal-bearing storage medium” of independent claim 26
encompasses transitory signals. Accordingly, independent claim 26 is
directed to non-statutory subject matter. See In re Nuijten, 500 F.3d 1346,
1357-58 (Fed. Cir. 2007) (“A transitory, propagating signal like Nuitjen's is
not a ‘process, machine, manufacture, or composition of matter.’... [T]hus,
such a signal cannot be patentable subject matter.”); see also Subject Matter
Eligibility of Computer Readable Media, 1351 Off. Gaz. Pat. Office 212
(Feb. 23, 2010) (“A claim drawn to such a computer readable medium that
covers both transitory and non-transitory embodiments may be amended to
narrow the claim to cover only statutory embodiments to avoid a rejection
under 35 U.S.C. § 101 by adding the limitation 'non-transitory' to the
claim.”).
In conclusion, for the reasons set forth supra, we sustain the rejection
of independent claim 26 and dependent claim 27, which has not been
separately argued, as directed to non-statutory subject matter.

The Written Description Rejection
Independent claim 1 recites, inter alia, “monitoring a position of an
appendage of the person and a position of the user interface of the device.”
App. Br., Clms. App’x. Emphasis added. The Examiner found that
although Appellants’ Specification “supports the monitoring of the
movement of the appendage with respect to the device,” the Specification
“lacks support for monitoring the position of the user interface of the
device.” Ans. 5.
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It is well settled that the fundamental factual inquiry is whether the
specification conveys with reasonable clarity to those skilled in the art that,
as of the filing date sought, applicant was in possession of the invention as
now claimed. See, e.g., Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555, 1563-64
(Fed. Cir. 1991). Here, Appellants’ Specification specifically discloses
monitoring “at least one of a movement or a position of an appendage of the
person with respect to the user interface of the device.” Spec., para. [038].
Since the position of the person’s appendage is monitored with respect to the
user interface it follows that the user interface acts as a reference point, and
as such, the position of the user interface is known, that is, the position of
the user interface is monitored. Thus, we agree with Appellants that the
limitation of “monitoring a position of an appendage of the person and a
position of the user interface of the device” is supported by Appellants’
original disclosure. App. Br. 18.
Accordingly, we do not sustain the rejection of claims 1, 4, 7, 16, 20,
and 21 under 35 U.S.C. § 112, first paragraph, for failing to comply with the
written description requirement.

The anticipation rejection based upon Madill
Claims 1, 4, 7, 16, and 20
The Examiner found that Madill teaches “the use of EMG [electrodes]
to monitor the position of the user’s appendages with respect to a
workstation” because in Figure 2 of Madill, EMG electrodes 31a, 31b, 32a,
32b, 33a, and 33 b, are attached to the user “to monitor the arm movement
with respect to the workpiece mounted on the workstation.” Ans. 10 and 11.
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Appellants argue that the electrodes of Madill enable sensing of
muscle loading, and as such, do not “[monitor] a position of an appendage of
the person and a position of the user interface of the device,” as called for by
independent claim 1. App. Br. 29-30. We agree.
The device and method of Madill uses electromyography electrodes
31a, 31b, 32a, 32b, 33a, and 33 b to monitor muscle loading of a user while
performing a repetitive task (i.e., muscle loading profile 101, 111, 121,131).
Madill, col. 5, ll. 23-25 and 35-38 and fig. 2; see also Ans. 6. Madill further
teaches that the electromyography electrodes “are responsive to micro-
voltage fluctuations produced by a person’s muscles during rest and motion
or the performance of work.” Id., col. 4, ll. 51-55. Thus, although we
appreciate that the electrodes of Madill monitor the movement of a person’s
appendage while performing work, the electrodes of Madill do not monitor
the position of a person’s appendage, as called for by independent claim 1.
A person’s appendage can occupy various positions and yet have similar
muscle loading profiles. Therefore, we agree with Appellants that Madill
fails to teach the limitation of “monitoring a position of an appendage of the
person and a position of the user interface of the device,” as called for by
independent claim 1. App. Br. 29.
Accordingly, we do not sustain the rejection of independent claim 1
and its dependent claims 4, 7, 16, and 20 under 35 U.S.C. § 102(b) as
anticipated by Madill.

Claim 29
Appellants argue that Madill “does not recite the text of” either clause
[a] or clause [b] of independent claim 29. App. Br. 47-48. Although we
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appreciate that Madill does not recite the exact language of either clause [a]
or clause [b] of independent claim 29, nonetheless, Madill teaches these
limitations. A reference which describes the subject matter of a claim
anticipates the claim even if the reference does not use the same terminology
used in the claim. See In re Bond, 910 F.2d 831, 832 (Fed. Cir. 1990)
(stating that anticipation does not require an ipsissimus verbis test).
As such, with respect to clause [a], we note that in contrast to
independent claim 1, independent claim 29 recites, “means for monitoring at
least one of a movement or a position of an appendage of the person.” App.
Br., Clms. App’x. Emphasis added. When a claim contains alternatives, the
claim is anticipated if any of the alternatives is known in the prior art. See
Brown v. 3M, 265 F.3d 1349, 1351 (Fed. Cir. 2001) (citing Titanium Metals
Corp. of Am. v. Banner, 778 F.2d 775, 782 (Fed. Cir. 1985). Here, we agree
with the Examiner that because the electrodes of Madill monitor muscle
loading, the electrodes monitor the movement of the user’s appendage, and
hence, constitute “the claimed ‘means for monitoring.’” Ans. 15.
In regard to clause [b], like the Examiner, we find that Madill teaches
generating muscle loading profiles 101, 111, 121, 131 that can be used to
“identify the muscle or muscle group profile as being the most likely . . . to
fatigue or be overloaded by repetitive use.” Madill, col. 7, ll. 43-50; see also
Ans. 15. We thus agree with the Examiner that Madill teaches the claimed
“means for determining if the monitored movement . . . of the person is
indicative of a risk of a repetitive injury to the person.” Ans. 15-16. Lastly,
we are not persuaded by Appellants’ hindsight argument because hindsight
is not germane to the issue of anticipation. See App. Br. 30.
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In conclusion, for the foregoing reasons, we sustain the anticipation
rejection of independent claim 29.

The obviousness rejection over Madill and Littell
Claim 21
With respect to the rejection of claim 21, Appellants do not make any
substantive arguments separate from the arguments made with respect to the
rejection of independent claim 1, from which claim 21 depends. App. Br.
31. Accordingly, for the reasons set forth supra, we sustain the rejection of
claim 21 under 35 U.S.C. § 103(a) as unpatentable over Madill and Littell.

Claims 22 and 24
Appellants argue that Madill “does not recite the text of clause [a]”
and Littell “does not recite the text of clause [d]” of independent claim 22.
App. Br. 33 and 35. Thus, according to Appellants, the Examiner arrived at
the obviousness rejection of claim 22 by employing impermissible hindsight
reconstruction. App. Br. 36.
Although we appreciate that neither Madill nor Littell recites the exact
language of clause [a] and clause [d], respectively, of independent claim 22,
nonetheless, Madill and Littell discloses these limitations.
Regarding clause [a], because the electrophysiological system of
Madill generates a muscle loading using as input the user’s movements, we
agree with the Examiner that Madill discloses “a user interface operable to
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. . . receive input from a person,” as called for by independent claim 22.
Madill, col. 3, l. 66 through col. 4, l. 5 and col. 7, ll. 35-37; see also App. Br.
33-34.
In regard to clause [d], the Examiner found that Littell specifically
discloses in paragraph [0038] “the use of a visual feedback to allow the user
to monitor their movement with respect to a correct posture.” (“ . . . the
screen view includes the user’s image in the environment of the scene (i.e.,
current position), superimposed by or otherwise in respect to a target correct
posture indication.”) Id. Hence, the Examiner correctly found Littell
discloses the limitations of clause [d].
With respect to Appellants’ hindsight argument, we are not persuaded
because the Examiner has articulated that the visual feedback of Littell is
being simply substituted for the audio and visual feedback of Madill (see
Ans. 12; Madill, col. 10, ll. 28-38) and Appellants have not alleged, nor
provided persuasive evidence showing, that the Examiner’s proposed
substitution would have been either beyond the level of ordinary skill in the
art or unpredictable to a person of ordinary skill in the art. Moreover, the
Examiner has provided a reason with rational underpinning (“ . . . provide a
means of allowing the user to correct their posture in a manner that alleviates
or prevents a repetitive risk injury.”) See Ans. 7; In re Kahn, 441 F.3d 977,
988 (Fed. Cir. 2006).
In conclusion, for the foregoing reasons, we sustain the rejection of
claim 22 under 35 U.S.C. § 103(a) as unpatentable over Madill and Littell.
Finally, regarding the rejection of claim 24, Appellants do not make
any substantive arguments separate from the arguments made with respect to
the rejection of independent claim 22, from which claim 24 depends. App.
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Br. 37. Accordingly, for the same reasons discussed above, we also sustain
the rejection of claim 24 over the combined teachings of Madill and Littell.

Claims 26 and 27
Appellants argue that Madill “do[es] not recite the text of clause [c]”
and likewise, Littell “does not recite the text of clause [c]” of independent
claim 26. App. Br. 40 and 41. Thus, according to Appellants, the Examiner
arrived at the obviousness rejection of claim 26 by employing impermissible
hindsight reconstruction. App. Br. 42.
At the outset, we agree with the Examiner that the limitations of
clause [c] of independent claim 26 are similar to the limitations of clause [d]
of independent claim 22. Ans. 13-14. Accordingly, we are not persuaded by
Appellants’ arguments for the same reasons set forth supra with respect to
the rejection of independent claim 22. Hence, we sustain the rejection of
independent claim 26 as unpatentable over Madill and Littell.
Since Appellants do not set forth any other substantive arguments
regarding the rejection of claim 27, we likewise sustain the rejection of
claim 27 over the combined teachings of Madill and Littell. See App. Br. 42-
43.

The obviousness rejection over Madill, Littell, and Jadidi
With respect to the rejection of claim 25, Appellants do not make any
separate arguments. Accordingly, for the reasons discussed above, with
respect to the rejection of independent claim 22, from which claim 25
depends, we sustain the rejection of claim 25 under 35 U.S.C. § 103(a) as
unpatentable over Madill, Littell, and Jadidi.
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SUMMARY
The decision of the Examiner to reject claims 1, 4, 7, 16, 20-22, 24-
27, and 29 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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