Ex Parte Jung et al

Patent Trial and Appeal Board

Dec 1, 2014

12215683 (P.T.A.B. Dec. 1, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte EDWARD K.Y. JUNG, ERIC C. LEUTHARDT,
ROYCE A. LEVIEN, ROBERT W. LORD,
MARK A. MALAMUD, JOHN D. RINALDO JR.,
and LOWELL L. WOOD JR.
____________________

Appeal 2012-009884
Application 12/215,683
Technology Center 2100
____________________

Before ALLEN R. MacDONALD, LINDA E. HORNER, and
TRENTON A. WARD, Administrative Patent Judges.

MacDONALD, Administrative Patent Judge.

DECISION ON APPEAL

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STATEMENT OF CASE
Introduction
Appellants appeal under 35 U.S.C. § 134(a) from a final rejection of
claims 4–31 and 35–64. We have jurisdiction under 35 U.S.C. § 6(b).
Exemplary Claims
Exemplary claims 8 and 13 under appeal read as follows (emphasis
added):
8. A computationally-implemented method, comprising:
acquiring, by a network device, data indicative of an
inferred mental state of an authoring user, wherein said
acquiring data indicative of an inferred mental state of an
authoring user comprises:
determining the data indicative of the inferred mental
state of the authoring user, wherein said determining the data
indicative of the inferred mental state of the authoring user
comprises:
determining a result of an observation of one or
more physical characteristics of the authoring user, the
observation of the one or more physical characteristics of
the authoring user being performed during or proximate
to a composition by the authoring user of an electronic
message, wherein said determining a result of an
observation of one or more physical characteristics of the
authoring user, the observation of the one or more
physical characteristics of the authoring user being
performed during or proximate to a composition by the
authoring user of an electronic message comprises:
sensing the one or more physical
characteristics of the authoring user in a response
associated with a functional near infrared
procedure on the authoring user; and
associating the data indicative of the inferred mental
state of the authoring user with the electronic message.
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13. The computationally-implemented method of claim
8, wherein said associating the data indicative of the inferred
mental state of the authoring user with an electronic message
comprises:
associating the data indicative of the inferred mental state
of the authoring user with an electronic message, the data
indicative of the inferred mental state of the authoring user
being raw sensor provided data indicating brain characteristics
of the authoring user.

Examiner’s Rejections
The Examiner rejected claims 5, 6, 8–31, 36, 37, and 39–64 as being
unpatentable under 35 U.S.C. § 103(a) over the combination of Bill (US
2008/0059570 A1, Mar. 6, 2008) and Yamamoto (US 2002/0095089 A1,
July 18, 2002). 1
The Examiner rejected dependent claims 4 and 35 as being
unpatentable under 35 U.S.C. § 103(a) over the combination of Bill,
Yamamoto, and Yanagidaira (US 2004/0236236 A1, Nov. 25, 2004). 2

1 Separate patentability is not argued for claims 5, 6, 9–12, 16–31, 36, 37,
and 39–43, and 47–64. We select independent claim 8 as the representative
claim, and the rejection of these claims turns on our decision as to the
rejection of claim 8. Except for our ultimate decision, these claims are not
discussed further herein. Appellant presents an argument for separate
patentability of dependent claim 13. Claims 14 and 15 depend from claim
13. Likewise, claim 44 contains a limitation similar to claim 13, and claims
45 and 46 depend from claim 44.
2 Separate patentability is not argued for claims 4 and 35. Rather, rejection
of these claims turns on our decision as to the underlying § 103(a) rejection
of claims 8 and 39. Except for our ultimate decision, these claims are not
discussed further herein.
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The Examiner rejected dependent claims 7 and 38 as being
unpatentable under 35 U.S.C. § 103(a) over the combination of Bill,
Yamamoto, and deCharms (US 2008/0001600 A1, Jan. 3, 2008). 3
Appellants’ Contentions 4
1. Appellants contend that the Examiner erred in rejecting claim 8
under 35 U.S.C. § 103(a) because:
Assume for sake of argument that the Examiner's
assertions regarding the alleged disclosures of the Bill reference
are held to be entirely true. That the Bill reference, among other
things, discloses "acquiring data indicating of user's emotions
(i.e. mental state) through user or video camera," that the Bill
reference discloses "video camera observing the user before or
during the writing of a massage and determining his emotion
(i.e. mental state) based on his physical characteristic such as
facial expression," and that the Bill reference discloses
"associating the emotion data with an instant massage or an
avatar." Appellants are unable to discern how the Examiner is
able [to] modify the alleged disclosures of the Bill reference
with the alleged disclosures of the Yamamoto reference in order
to reach the entire recitations of Appellants' Claim 8 since
Appellants were unable to find in the art of record any
indication that it is even possible to determine emotion or
emotional state (i.e., mental state) of a user based on a
functional near infrared procedure.
That is, presumably in order to reach the entire
recitations of Claim 8 including clause [d], the Examiner is

3 Separate patentability is not argued for claims 7 and 38. Rather, rejection
of these claims turns on our decision as to the underlying § 103(a) rejection
of claims 8 and 39. Except for our ultimate decision, these claims are not
discussed further herein.
4 Appellants’ arguments directed to claims 8 and 13 are found in Section B
of the Revised Appeal Brief. To the extent that Appellants’ arguments at
pages 81–83 of the Revised Appeal Brief mistakenly incorporate by
reference from “Section A” rather than “Section B,” we read the arguments
of Sections C–E as incorporating arguments from Section B.
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proposing to modify the disclosures of the Bill reference by
incorporating into the Bill system with the near infrared
procedures of Yamamoto reference to additionally or
alternatively (rather than employing a camera) detect physical
characteristics of the user to determine his "emotions (i.e.,
mental state)." There is, of course, one problem with such a
theory. Yamamoto (as well as Bill) does not disclose that a
functional near infrared procedure can be employed in order
to determine the emotional state (e.g., mental state) of a user.
(Revised App. Br. 41–42) (Appellants’ emphasis omitted) (Panel
emphasis added).
2. Appellants further contend that the Examiner erred in rejecting
claim 8 because:
[I]t appears that at least the cited portions of the Yamamoto
discloses using near infrared procedures to detect brain
activities of a user and to control a computer (e.g., to control an
object being displayed on a screen) based on the detected brain
activities using the near infrared procedures. Appellants were
unable to find in the expressly cited portions of the Yamamoto
reference (as well as in the cited portions of the Bill reference)
any indication that near infrared procedures could be used in
order to detect the emotions (e.g., mental state)17 of a user.
Further, the Examiner has not provided any objectively
verifiable evidence, nor argument based on objectively
verifiable evidence as to how the Bill reference and/or the
Yamamoto reference could be modified in order to reconcile
the clear gap between that which is facially disclosed by the
cited art (e.g., the Bill and Yamamoto reference) and the
recitations of Independent Claim 8. Again, Appellants were
unable to find in the cited art of record any "teachings" for
employing functional near infrared procedures in order to
determine the emotions or emotional state (e.g., mental state) of
a user. [Footnote 17: Note that although Appellants' Claim 8
does not recite "emotions", it appears to be the Examiner's
theory that Bill discloses the "mental state" or "inferred
mental state" as recited in Claim 8 because Bill discloses
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detecting or determining the emotions or emotional state of a
user.]
(Revised App. Br. 46) (Appellants’ emphasis omitted) (Panel emphasis
added).
3. Appellants also contend that the Examiner erred in rejecting
claim 8 because:
The Examiner in the Final Office Action further appeared to
have been proposing to modify the teachings of Bill by
replacing the video camera that is used to detect the physical
characteristics a user (such as facial expressions of the user) in
order to determine the emotional state of the user, with the
infrared procedures of Yamamoto to reach the recitations of
clause [d] of Claim 8.
(Reply Br. 6) (Appellants’ emphasis omitted) (Panel emphasis added).
4. Appellants also contend that the Examiner erred in rejecting
claim 8 because:
[T]he Examiner is interpreting art of record (e.g., the
combination of the Bill reference and the Yamamoto reference)
through the lens of Appellants’ application, which is
impermissible hindsight use.
(Revised App. Br. 47).
5. Appellants also contend that the Examiner erred in rejecting
claim 8 because it is unclear to the Appellants why the Examiner has chosen
to cite the In re Keller line of case law. (Revised App. Br. 47–48).
6. Appellants contend that the Examiner erred in rejecting
claim 13 because:
Appellants submit that there is no "associating" of "raw
sensor provided data" with an electronic message (e.g., instant
message) being disclosed here by the cited art. Instead, the "raw
sensor provided data" as provided by, for example, the video
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camera of Bill serves only as an early basis (there are at least
three degrees of separation between the raw sensor provided
data as provided by the video camera of Bill and the instant
message of Bill) for generating the IM paralinguistic indicators
that are to be included into instant message. In other words, and
as best understood by Appellants, any possible link or
connection from the "raw sensor provided data" as provided by
the video camera of Bill to the instant message of Bill appears
to end at the VW side of the Bill system where the "raw sensor
provided data" may be used in order to generate VW
paralinguistic indicators. Thus, at least the cited portions of the
Bill reference does not indicate that "raw sensor provided data,"
as provided by, for example, a video camera (or a functional
near infrared device), is linked to, connected to, or united with
the instant message (e.g. electronic message) as generated by,
for example, the Bill system. Nor does [sic] the cited portions
of the Yamamoto reference appear to teach such features.
(Revised App. Br. 60).

Issues on Appeal
Did the Examiner err in rejecting claim 8 as being unpatentable under
35 U.S.C. § 103(a) because Yamamoto (as well as Bill) does not disclose
that a functional near infrared procedure can be employed in order to
determine the emotional state of a user?
Did the Examiner err in rejecting claim 13 as being unpatentable
under 35 U.S.C. § 103(a) because the rejection fails to provide a proper
articulated reasoning as to why the cited Bill and Yamamoto references
disclose the argued limitation of associating raw sensor provided data with
an electronic message?

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ANALYSIS
We have reviewed the Examiner’s rejection in light of Appellants’
arguments (Appeal Brief and Reply Brief) that the Examiner has erred.
As to Appellants’ above contention 6, we agree. The Examiner has
erred in finding the claims obvious over the applied references. The
Examiner’s rejection of claim 13 does not present sufficient articulated
reasoning with regard to the claimed associating “raw sensor provided data”
with an electronic message,5 as required by KSR Int’l Co. v. Teleflex Inc.,
550 U.S. 398, 418 (2007). Rather, the Examiner’s rejection merely shows
that Yamamoto teaches raw sensor provided data. The only articulated
reasoning we find for associating data with an electronic message is that of
Bill where the associated data is processed data (i.e., Bill’s indicators at
¶ [0020]) not raw data (i.e., Bill’s set of data ¶ [0020]). The leap from
associating processed data with the electronic message to associating raw
data with the electronic message requires an explanation that we do not find
in the Examiner’s articulated reasoning or in what an artisan would
understand as being taught on their face by the Bill and Yamamoto
references.
As to Appellants’ above contentions 1–5, we disagree with
Appellants’ conclusions. We adopt as our own (1) the findings and reasons
set forth by the Examiner in the action from which this appeal is taken and

5 The Specification describes that “the data (e.g., as provided by one or more
sensors 176/178 . . . ) indicative of the inferred mental state . . . of the
authoring user 130 may be associated by the association module 164 with an
electronic message 140 (e.g., an email message) by incorporating the data
indicative of the inferred mental state of the authoring user 130 into the
electronic message 150.” Spec. para. 37.
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(2) the reasons set forth by the Examiner in the Examiner’s Answer in
response to Appellants’ Appeal Brief (see particularly the Examiner’s
remarks at pages 15–21 of the Answer). We concur with the conclusions
reached by the Examiner.
Separately, we highlight the following. As to above contentions 1–3,
Appellants’ arguments misstate the Examiner’s articulated reasoning as to
the combination of Bill and Yamamoto. Contrary to Appellants’ arguments,
the Examiner does not state that (1) near infrared procedures would be used
in order to detect the emotions, (2) Yamamoto or Bill disclose or render
obvious that a functional near infrared procedure can be employed in order
to determine the emotional state of a user, or (3) one can modify the
teachings of Bill in order to determine the emotional state of the user.
Rather, the Examiner stated:
Yamamoto discloses determining mental state sensing blood
volume changes in the user's brain using near infrared
procedures (See Yamamoto: at least Fig. 1, [0008], [0060], and
[0068]). . . . A skilled artisan would have been motivated to
incorporate the above teaching of Yamamoto into the teachings
of Bill in order to sense the one or more physical characteristics
of the authoring user in a response associated with a functional
near infrared procedure on the authoring user. The motivation
for doing so would have been to increase the utility of system
by using biomedical information such as blood volume changes
to determine the mental state of a person and infrared
procedure enables measuring of blood volume changes in the
brain.
(Final Rejection 6–7) (emphasis added). Appellants repeatedly argue an
“emotional state” limitation that Appellants admit is not required by claim 8.
(See footnote 17 of above Contention 2). Such argument is nonresponsive
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because the Examiner does not propose a modification that results in
emotional state detection. Nor do Appellants’ claims recite such.
Appellants’ argument is a nonresponsive straw man and, as the
Examiner points out, is an individual attack on the reference (Yamamoto)
for lack of a teaching when the rejection is based upon a combination of the
references (Bill and Yamamoto). No “emotional state” is claimed in claim
8. As the Examiner points out in the rejection, the claimed “inferred mental
state” is taught by Bill in the form of an emotional state, and determining a
“mental state” is taught by Yamamoto. The Appellants’ nonresponsive
argument fails to demonstrate error in the Examiner’s findings and
reasoning. Examiner error cannot be shown based on misstatements of the
record.
As to Appellants’ above contention 4, contrary to Appellants’
argument, the Examiner has not used impermissible hindsight. The
Examiner addresses this argument at page 21 of the Answer. We further
point out that Appellants’ “impermissible hindsight” argument uses as its
basis the Appellants’ above noted straw man argument. (Revised App. Br.
47) (“Given the shortcomings of the cited art as described above and what
the cited art (e.g., the Bill and Yamamoto references) actually recites, the
question thus naturally arises as to how the Examiner saw the cited art as
‘teaching’ the entire recitations of Independent Claim 8.”). Therefore,
Appellants’ “impermissible hindsight” argument inherits the same flaws as
their straw man argument. Appellants are arguing “impermissible
hindsight” as to an “emotion state” rejection that was never made (and a
claim that does not exist). Again, Examiner error cannot be shown based on
misstatements of the record.
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As to Appellants’ above contention 5, we agree with the Examiner
that Appellants are attacking Yamamoto individually rather than challenging
the conclusion based upon the references combined teachings. The test for
obviousness is what the combined teachings of the prior art would have
suggested to the hypothetical person of ordinary skill in the art. In re Keller,
642 F.2d 413, 425 (CCPA 1981). Contrary to Appellants’ contention that
Keller is inapplicable, we find Keller highly applicable because, as in Keller,
Appellants are raising and then knocking down a straw man rejection that
was never made by the Examiner. The Appellants address Examiner’s
findings that were never made. This form of argument is unavailing to show
Examiner error.

CONCLUSIONS
(1) The Examiner did not err in rejecting claims 4–12, 16–31, 35–43,
and 47–64 under 35 U.S.C. § 103(a).
(2) Appellants have established that the Examiner erred in rejecting
claims 13–15 and 44–46 as being unpatentable under 35 U.S.C. § 103(a).
(3) On this record, claims 13–15 and 44–46 have not been shown to
be unpatentable.
(4) Claim 4–12, 16–31, 35–43, and 47–64 are not patentable.
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DECISION
The Examiner’s rejection of claims 13–15 and 44–46 is reversed.
The Examiner’s rejections of claims 4–12, 16–31, 35–43, and 47–64
under 35 U.S.C. § 103(a) are 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-IN-PART 6

msc

6 The Examiner has not rejected independent claim 39 herein over claim 8 of
U.S. Patent 8,055,591 for 35 U.S.C. § 101 “same invention” type double
patenting, or rejected independent claims 8, 39, 63, and 64 herein over claim
8 of U.S. Patent 8,055,591 for nonstatutory obviousness-type double
patenting. U.S. Patent 8,055,591 was issued on November 8, 2011,
subsequent to the Examiner’s Final Rejection (6/8/2011).
We have found these independent claims to be unpatentable.
Therefore, we do not reject these claims redundantly based on other
concerns we might have. However, should there be further prosecution of
this application; we suggest that the Examiner re-review all pending claims
and Appellants’ numerous related “inferred mental state” patents for these
double patenting issues.