Ex Parte Jung et al

Patent Trial and Appeal Board

Jan 24, 2014

11804304 (P.T.A.B. Jan. 24, 2014)

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.
11/804,304 05/15/2007 Edward K.Y. Jung 0406-002-004-000000 8909
44765 7590 01/27/2014
THE INVENTION SCIENCE FUND
CLARENCE T. TEGREENE
11235 SE 6TH STREET
SUITE 200
BELLEVUE, WA 98004
EXAMINER
DOWNEY, JOHN R
ART UNIT PAPER NUMBER
3769
MAIL DATE DELIVERY MODE
01/27/2014 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 EDWARD K.Y. JUNG,
ERIC C. LEUTHARDT, ROYCE A. LEVIEN,
ROBERT W. LORD, and MARK A. MALAMUD
__________

Appeal 2012-000903
Application 11/804,304
Technology Center 3700
__________

Before DONALD E. ADAMS, FRANCISCO C. PRATS, and
MELANIE L. McCOLLUM, Administrative Patent Judges.

PRATS, Administrative Patent Judge.

DECISION ON REHEARING
Appellants have requested rehearing of the decision entered June 13,
2013, (“Decision”), in which we affirmed the Examiner’s rejection of claims
1 and 3-27 under 35 U.S.C. § 101 as being directed to non-statutory subject
matter, and also affirmed the rejection of claims 1, 3-8, 11-17, 19, 21-24, 31,
32, and 58-67, under 35 U.S.C. § 102(b) as anticipated by Donaher.1

1 U.S. Patent App. Pub. No. 2004/0197750 A1 (published Oct. 7, 2004).
Appeal 2012-000903
Application 11/804,304

2
We have granted Appellants’ request to the extent we have
reconsidered our original Decision in light of Appellants’ points, but we
decline to modify the Decision.
DISCUSSION
Appellants first request guidance regarding the Examiner’s objection
to the Specification due to the inclusion of hyperlinks (Req. Reh’g 2-3; see
also Ans. 4; Final Rej. 2). In particular, Appellants urge that the section of
the Manual of Patent Examining Procedure (MPEP) cited by the Examiner,
MPEP § 1002.02(c), item 3(g), relates to the fact that refusal to enter an
amendment is a petitionable matter, whereas the objection made by the
Examiner relates to the Specification as originally filed (Req. Reh’g 2).
Appellants urge that the Specification complies with the MPEP, and that the
Board should direct the Examiner to withdraw the objection (id. at 2-3).
Section 1201 of the MPEP, also cited by the Examiner (see Ans. 4),
states:
The line of demarcation between appealable matters for
the Board of Patent Appeals and Interferences[, now the Patent
Trial and Appeal Board,] (Board) and petitionable matters for
the Director of the U.S. Patent and Trademark Office (Director)
should be carefully observed. The Board will not ordinarily
hear a question that should be decided by the Director on
petition, and the Director will not ordinarily entertain a petition
where the question presented is a matter appealable to the
Board.

Section 706.01 of the MPEP, which explains the different avenues of
review for rejections of claims, as opposed to objections, states, in turn:
The practical difference between a rejection and an objection is
that a rejection, involving the merits of the claim, is subject to
review by the Board of Patent Appeals and Interferences, while
Appeal 2012-000903
Application 11/804,304

3
an objection, if persisted, may be reviewed only by way of
petition to the Director of the USPTO.
Similarly, the Board will not hear or decide issues
pertaining to objections and formal matters which are not
properly before the Board. These formal matters should not be
combined in appeals to the Board.

In sum, because the Examiner’s objection to the Specification is a
matter reviewable only by way of petition to the Director of the USPTO, we
decline Appellants’ request to rule on that objection.
Appellants next urge that our Decision erred in affirming the
Examiner’s rejection under § 101 because “the claimed ‘device’ is a part of
the claim and cannot be read out of the claim by calling it ‘tangential.’”
(Req. Reh’g 4.) Thus, Appellants contend, “the recitation of a device further
removes the method from abstraction and ensures that the claim is not
directed to a series of mental steps.” (Id.)
In affirming the rejection under § 101 we noted the Examiner’s
explanation that the device recited in claim 1 is “tangentially related to the
inventive steps, since it merely runs an application and does not perform
essential steps of the invention such as ‘obtaining user data’ or ‘presenting
an output’” (Decision 3 (citing Ans. 4-5)). We also noted the Examiner’s
explanation that the device “‘is merely generally recited and could cover any
machine capable of running an application. There is no transformation of
any article that is an object or substance’” (Decision 3 (citing Ans. 5)).
Because we found that Appellants’ citation of the language of claim 1 did
not persuasively explain why the Examiner’s analysis or reasoning was
faulty, we affirmed the rejection (Decision 4-5).
Appeal 2012-000903
Application 11/804,304

4
While Appellants again direct us to the language of claim 1, including
its recitation of a device, Appellants’ arguments merely express
disagreement with the Decision’s ultimate conclusion on this issue, and do
not “state with particularity the points believed to have been
misapprehended or overlooked by the Board,” as required under 37 C.F.R.
§ 41.52. That is, while Appellants disagree with the outcome of the
Decision, Appellants have not shown that the Decision failed to adequately
appreciate or address the arguments Appellants presented regarding the
Examiner’s rejection under § 101.
Lastly, Appellants urge that our Decision erred in affirming the
Examiner’s anticipation rejection because the life skill simulation described
in Donaher is not an “‘application whose primary function is different from
symptom detection,’” as evidenced by paragraph 76 of Donaher, which
allegedly describes symptom detection (Req. Reh’g 4). Moreover,
Appellants urge, “Donaher does not anticipate the claims because the ‘life
skill simulation’ of Donaher appears to be integrated or the same as the
application that the user interacts with to generate data. The pending claims
explicitly disclaim this scenario” (id. at 5).
We do not find these arguments persuasive. As acknowledged in our
Decision, the Examiner cited paragraphs 69 through 81 of Donaher to
support the anticipation rejection (Decision 6). As we noted in the Decision,
paragraphs 69 and 70 of Donaher describe implementing in a device, a
computer specifically, a virtual reality life skill simulation application that
assists disabled subjects in dealing with everyday situations that may be
problematic due to their limitations or disabilities (id. (citing Donaher
[0069]-[0070])). We also noted that Donaher’s process includes the steps of
Appeal 2012-000903
Application 11/804,304

5
monitoring the disabled subjects’ responses, as well as evaluating their life
skills and behavior (id. at 6-7 (citing Donaher [0078]).
Thus, because Donaher’s health test function — monitoring a disabled
person’s response to life skills situations presented in a virtual reality
environment — is structurally distinct from the application that operates the
virtual reality environment, Appellants’ arguments do not persuade us that
the Examiner erred in finding that Donaher’s process includes all of the
features required of the health test function recited in claim 1. Moreover,
while we note that an input device can be used to input different disability
modes for the system’s users or simulated characters based on the symptoms
of the disability (see Donaher [0075]-[0076]), the primary function of the
application is presentation of the life skill simulation, not symptom
detection, as Appellants argue (see id. at [0069]).
SUMMARY
We are not persuaded that our decision affirming the Examiner’s
rejections for patent ineligibility and anticipation misapprehended or
overlooked any point of fact or law advanced by Appellants. We therefore
decline to modify our original decision entered June 13, 2013.

TIME PERIOD
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
REHEARING DENIED

cdc