Ex Parte Kaneko

Board of Patent Appeals and Interferences

Jul 30, 2009

10119157 (B.P.A.I. Jul. 30, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________
Ex parte TADASHI KANEKO
____________________
Appeal 2009-005432
Application 10/119,157
Technology Center 3600
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Decided1: July 31, 2009
____________________

Before MURRIEL E. CRAWFORD, HUBERT C. LORIN, and
KEVIN F. TURNER Administrative Patent Judges.

TURNER, Administrative Patent Judge.

DECISION ON APPEAL

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, begins to run from the decided date
shown on this page of the decision. The time period does not run from the
Mail Date (paper delivery) or Notification Date (electronic delivery).

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STATEMENT OF CASE
Appellant seeks our review under 35 U.S.C. § 134 of the final
rejection of claims 5-9. We have jurisdiction under 35 U.S.C. § 6(b).

SUMMARY OF THE DECISION
We AFFIRM2.

THE INVENTION
Appellant’s claimed invention relates to a remote psychoanalysis
system using operation history that allows any person to be subjected to
psychological counseling easily and rapidly over a network. (Spec. 2).
Independent claim 5, which is deemed to be representative, reads as
follows:
5. A remote psychoanalysis system for enabling an
analyzer to perform psychoanalysis of a client requesting
psychoanalysis by using an operation history, said system
comprising:
a client computer apparatus of the client requesting
psychoanalysis;

a server comprising a server computer apparatus
for controlling psychoanalysis information;

a plurality of analyzer computer apparatuses to be
operated by a plurality of analyzers practicing
psychoanalysis; and

2 Our decision will make reference to the Appellant’s Appeal Brief (“App.
Br.,” filed April 04, 2008) and the Examiner’s Answer (“Ans.,” mailed June
24, 2008).
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a communication network for connecting said
client computer apparatus, said server computer
apparatus, and said plurality of analyzer computer
apparatuses to one another through a network, wherein:

said client computer apparatus is operable to
receive psychoanalysis object information inputted by the
client, and transmit the psychoanalysis object information
to said server computer apparatus through said
communication network;

said server is operable to perform accounting for
the client through said communication network for each
request for psychoanalysis or confirmation of reception
of money for the accounting;

said server is operable to transmit the
psychoanalysis object information prepared by the client
from said server computer apparatus to said plurality of
analyzer computer apparatuses through said
communication network;

one of said plurality of analyzer computer
apparatuses operated by one of the analyzers among the
plurality of analyzers is operable to output the acquired
psychoanalysis information so as to enable the one of the
analyzers to practice psychoanalysis of the client based
on the outputted psychoanalysis object information, to
receive psychoanalysis result information inputted by the
one of the analyzers, and transmit the psychoanalysis
result information to said client computer apparatus
through said communication network;

said one of said plurality of analyzer computer
apparatuses is further operable to store acquired
psychoanalysis object information received from the
client and output an operation history of previously
acquired psychoanalysis object information in addition to
presently acquired psychoanalysis objection information
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from the client so as to enable the one of the analyzers to
analyze the presently acquired psychoanalysis object
information from the client with reference to the
outputted operation history and input the psychological
result information based on the previously and presently
acquired psychoanalysis object information; and

said client computer apparatus is operable to
transmit the psychoanalysis object information as a
ciphered electronic mail, and said one of said plurality of
analyzer computer apparatuses is operable to transmit the
psychoanalysis result information as a ciphered
electronic mail.

THE REJECTION
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Mathewson US 2003/0018724 A1 Jan. 23, 2003
Darby US 2005/0192513 A1 Sept. 01, 2005
The Examiner rejected claims 5-9 under 35 U.S.C. § 103(a) as being
unpatentable over Darby and Mathewson.
Rather than repeat the arguments of Appellant or Examiner, we make
reference to the Briefs and the Answer for their respective details. Only
those arguments actually made by Appellant have been considered in this
decision. Arguments that Appellant did not make in the Briefs have not
been considered and are deemed to be waived. See 37 C.F.R.
§ 41.37(c)(1)(vii).

ISSUE
Has Appellant shown that Examiner erred in rejecting claims 5-9
under 35 U.S.C. § 103(a) as being obvious over Darby and Mathewson?
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FINDINGS OF FACT
The record supports the following findings of fact (FF) by at least a
preponderance of the evidence. In re Caveney, 761 F.2d 671, 674 (Fed. Cir.
1985) (explaining the general evidentiary standard for proceedings before
the Office).
1. Darby is directed to a psychological testing apparatus for carrying
out psychological testing, which may be performed over the Internet. When
the testing is performed over the Internet, part of the software runs on the
host computer and a part of the software is resident on the PC or client
computer. ( ¶ [0062]).
2. Darby discloses that the host computer and client computer are
connected through a communication network. Specifically, the
communication network is the Internet. (Claims 19 and 20).
3. In Darby, the data generated by the software running on the client
or PC are automatically transmitted to the host computer. (¶ [0062]).
4. Darby uses algorithms to perform an analysis and comparison of
the data collected from the testing. (¶ [0197]).
5. Mathewson is directed to a method for allowing the author of an
electronic message to control the time the message is opened. The author
may mark the message as time-sensitive and identify when the message will
be automatically displayed to its recipient. (Abs.).
6. Appellant has not traversed the teachings of Mathewson. (Br. 7).

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PRINCIPLES OF LAW
It is well established that while the features of an apparatus claim may
be recited functionally, the apparatus must be distinguished from the prior
art in terms of structure, rather than function. See In re Schreiber, 128 F.3d
1473, 1477 (Fed. Cir. 1997).
During examination, the claims must be interpreted as broadly as their
terms reasonably allow. In re Am. Acad. of Sci. Tech Center, 367 F.3d 1359,
1369 (Fed. Cir. 2004). When the specification states the meaning that a term
in the claim is intended to have, the claim is “examined using that meaning,
in order to achieve a complete exploration of the applicant's invention and its
relation to the prior art.” In re Zletz, 893 F.2d 319, 321 (Fed. Cir. 1989).
“Section 103 forbids issuance of a patent when ‘the differences
between the subject matter sought to be patented and the prior art are such
that the subject matter as a whole would have been obvious at the time the
invention was made to a person having ordinary skill in the art to which said
subject matter pertains.’” KSR Int'l Co. v. Teleflex, Inc., 550 U.S. 398, 406
(2007). The question of obviousness is resolved on the basis of underlying
factual determinations including: (1) the scope and content of the prior art,
(2) any differences between the claimed subject matter and the prior art, (3)
the level of skill in the art, and (4) where in evidence, so-called secondary
considerations. Graham v. John Deere Co., 383 U.S. 1, 17-18 (1966). See
also KSR, 550 U.S. at 407 (“While the sequence of these questions might be
reordered in any particular case, the [Graham] factors continue to define the
inquiry that controls.”)
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In KSR, the Supreme Court held that “[t]he combination of familiar
elements according to known methods is likely to be obvious when it does
no more than yield predictable results.” Id. at 416. The Court explained:
When a work is available in one field of endeavor, design
incentives and other market forces can prompt variations of it,
either in the same field or a different one. If a person of
ordinary skill can implement a predictable variation, § 103
likely bars its patentability. For the same reason, if a technique
has been used to improve one device, and a person of ordinary
skill in the art would recognize that it would improve similar
devices in the same way, using the technique is obvious unless
its actual application is beyond his or her skill.

Id. at 417.
The operative question in this “functional approach” is thus “whether
the improvement is more than the predictable use of prior art elements
according to their established functions.” Id. In rejecting claims under 35
U.S.C. § 103(a), the examiner bears the initial burden of establishing a prima
facie case of obviousness. In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir.
1992). See also In re Piasecki, 745 F.2d 1468, 1472 (Fed. Cir. 1984). Only
if this initial burden is met does the burden of coming forward with evidence
or argument shift to the Appellant. Oetiker, 977 F.2d at 1445. See also
Piasecki, 745 F.2d at 1472. Obviousness is then determined on the basis of
the evidence as a whole and the relative persuasiveness of the arguments.
See Oetiker, 977 F.2d at 1445; see also In re Piasecki, 745 F.2d at 1472.

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ANALYSIS
Appellant argues independent claims 5, 6, and 8 as a group.
Accordingly, we select claim 53 as representative of each of those respective
groups. 37 C.F.R. § 41.37(c)(1)(vii)(2008).

Claims 5-9 rejected under 35 U.S.C. § 103(a) as unpatentable over Darby
and Mathewson.
Appellant argues that the combination of Darby and Mathewson fails
to disclose or suggest “a plurality of analyzer computer apparatuses to be
operated by a plurality of analyzers practicing psychoanalysis,” as recited in
claims 5, 6 and 8. (Br. 4). We are not persuaded by Appellant’s argument
and we agree with the Examiner’s findings that Darby discloses a client
computer for psychological testing. (FF 1, 2). Darby discloses a client
computer in communication with a host computer, but does not explicitly
disclose a plurality of client computers. (FF 2). However, one of ordinary
skill in the art at the time of the invention would have appreciated the
addition of any number of client computers to the communication network
disclosed in Darby to be an obvious modification. This modification is
nothing more than the simple substitution of one known element for another
or the mere application of a known technique to a piece of prior art ready for
the improvement. See KSR, 550 U.S. at 417. Specifically, the modification
involves merely the application of a known technique, which here involves
the addition of a plurality of client computers to be used for psychological

3 A statement which merely points out what a claim recites will not be
considered an argument for separate patentability of the claim. See 37
C.F.R. § 41.37(c)(1)(vii).
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testing, and thus appears to be merely a predictable variation of the system
disclosed in Darby. Accordingly, we find this argument unpersuasive.
Further, Appellant argues that “the host computer does not appear to
analyze testing results, but merely assists the PC in performing the initial
testing of a subject.” (Br. 4). We are not persuaded by Appellant’s
argument and find that the client and host computers in Darby are capable of
running software which analyzes and compares test results. (FF 4). It is
well established that while the features of an apparatus claim may be recited
functionally, the apparatus must be distinguished from the prior art in terms
of structure, rather than function. See In re Schreiber, 128 F.3d 1473, 1477
(Fed. Cir. 1997). Thus, while the computer in Darby is indeed analyzing test
results, it is irrelevant what function the computer disclosed is performing,
but rather, that it is capable of performing the function as claimed by
Appellant. Therefore, Appellant’s argument is not persuasive as to error in
the rejection.
Additionally, Appellant argues that the combination of Darby and
Mathewson fails to disclose or suggest “a communication network for
connecting said client computer apparatus, said server computer apparatus,
and said plurality of analyzer computer apparatuses to one another through a
network.” (Br. 5). We are not persuaded by Appellant’s argument and find
that Darby discloses a communication network via the Internet wherein the
host and client computers transmit data. (FF 2, 3). Therefore, Appellant’s
argument is not persuasive as to error in the rejection.
Appellant also argues that the combination of Darby and Mathewson
fails to disclose or suggest the claim limitation of claims 5, 6 and 8 wherein
“said server is operable to transmit the psychoanalysis object information
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prepared by the client from said server computer apparatus to said plurality
of analyzer computer apparatuses through said communication network.”
(Br. 6). We are not persuaded by Appellant’s argument and find that the
client and host computers in Darby are in communication via a network.
(FF 2, 3). It is well established that while the features of an apparatus claim
may be recited functionally, the apparatus must be distinguished from the
prior art in terms of structure, rather than function. See In re Schreiber, 128
F.3d 1473, 1477 (Fed. Cir. 1997). Thus, Darby discloses the requisite
communication network structure to meet the limitation as claimed.
Therefore, Appellant’s argument is not persuasive as to error in the rejection.
Lastly, Appellant argues that the combination of Darby and
Mathewson fails to disclose or suggest that “the system includes a plurality
of analyzers, each one being capable of performing psychoanalysis” and that
“one analyzer can communicate psychoanalysis information to another
analyzer for performing psychoanalysis.” (Br. 6-7). We are not persuaded
by Appellant’s arguments. Darby discloses a client computer for
psychological testing. (FF 1). This client computer runs software for
carrying out testing as well as comparison and analysis of the results. (FF 1,
4). Additionally, as stated supra, it would be an obvious modification to the
system of Darby to include a plurality of client computers which are capable
of communicating information to one another over the communication
network disclosed in Darby (FF 1, 2). Thus, Darby meets the claimed
limitation as defined by Appellant. Accordingly, we find this argument
unpersuasive.
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With regard to the Mathewson reference, we find no need to consider
this reference, since Appellant is not presently arguing any claim limitations
relying on its teachings. (FF 6).

Claims 7 and 9
Appellant does not separately argue claims 7 and 9, which depend
from claims 6 and 8 respectively, and so has not sustained its burden of
showing that the Examiner erred in rejecting claims 7 and 9 under 35 U.S.C.
§ 103(a) as unpatentable over Darby and Mathewson and for the same
reasons we found as to claims 5, 6, and 8, supra.

CONCLUSION OF LAW
We conclude that Appellant has not shown that the Examiner erred in
rejecting claims 5-9 as being obvious over Darby and Mathewson.

DECISION
The decision of the Examiner to reject claims 5-9 under 35 U.S.C.
§ 103(a) as being obvious over Darby and Mathewson 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

cc:
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