Ex Parte Keates et al

Patent Trial and Appeal Board

Feb 26, 2016

12132908 (P.T.A.B. Feb. 26, 2016)

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.
12/132,908 06/04/2008 Leigh Simeon Keates YOR920060440US2(150CON) 8667
49267 7590 02/26/2016
TUTUNJIAN & BITETTO, P.C.
425 Broadhollow Road, Suite 302
Melville, NY 11747
EXAMINER
SCHNIREL, ANDREW B
ART UNIT PAPER NUMBER
2625
MAIL DATE DELIVERY MODE
02/26/2016 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 LEIGH SIMEON KEATES,
PETER KENNETH MALKIN,
and SHARON MARY TREWIN
____________

Appeal 2014-004345
Application 12/132,9081
Technology Center 2600
____________

Before JASON V. MORGAN, DANIEL J. GALLIGAN, and
SHARON FENICK, Administrative Patent Judges.

FENICK, Administrative Patent Judge.

DECISION ON APPEAL

This is an appeal under 35 U.S.C. § 134(a) from the Examiner’s
Final Rejection of claims 1–9 and 11–21. (Appeal Br. 2.) Claim 10 is
cancelled. (Appeal Br. 25.) We have jurisdiction under 35 U.S.C. § 6(b)(1).
We affirm.

1 According to Appellants, the real party in interest is International Business
Machines Corporation. (Appeal Br. 4.)
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Application 12/132,908

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Invention
Appellants’ invention relates to correcting mispositioning of an
aiming device with which a human operator makes an aiming motion.
(Spec. ¶ 2, Abstract.) Features are extracted from an information stream
including information regarding the position of the aiming device. These
features are compared with feature profiles to determine modifications of the
information stream which would remediate mispositioning of the aiming
device. (Id. ¶¶ 7, 18, 28–30, Fig. 1.)
Illustrative Claims
Claims 1, 9, and 21, reproduced below with key limitations
emphasized, are illustrative:
1. A method for correcting mispositioning of an aiming
device, comprising:
extracting features from an information stream having
position information for an aiming device;
comparing the features with mispositioning feature
profiles that describe features expected for given kinds of
mispositioning motion to determine modifications associated
with a matched feature profile to remediate associated
mispositioning actions;
providing a modified information stream including the
modifications to remediate mispositioning actions to replace the
information stream; and
adjusting parameters of comparison used based on an
inference of whether a previous assessment of an action was
accurate and stored feature profiles to improve future
performance.

9. The method as recited in claim 1, further comprising
generating an alert to a user if a performance threshold is
crossed.

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21. The method as recited in claim 1, wherein said
comparing includes a Bayesian network that calculates and
combines probabilities for characteristics of mispositioning
motion.
Rejections
The Examiner rejects claims 1–7, 11–13, and 16–20 under 35 U.S.C.
§ 103(a) as unpatentable over Levine et al. (US 6,650,313 B2, Nov. 18,
2003) (“Levine”), Joshi et al. (US 6,583,781 B1, June 24, 2003) (“Joshi”),
and Liberty et al. (US 7,239,301 B2, July 3, 2007) (“Liberty”). (Final
Action 2–14.)
The Examiner rejects claims 8 under 35 U.S.C. § 103(a) as
unpatentable over Levine, Joshi, Liberty and Brouhon (US 2004/0135776
A1, July 15, 2004). (Final Action 14–15.)
The Examiner rejects claims 9 under 35 U.S.C. § 103(a) as
unpatentable over Levine, Joshi, Liberty and Burdsall et al. (US 7,167,166
B1, Jan. 23, 2007) (“Burdsall”). (Final Action 15.)
The Examiner rejects claims 14, 15, and 21 under 35 U.S.C. § 103(a)
as unpatentable over Levine, Joshi, Liberty and Trewin (US 2004/0064597
A1, Apr. 1, 2004). (Final Action 16–18.)

Issues
Did the Examiner err in finding that the combination of Levine, Joshi
and Liberty teaches or suggests a mispositioning feature profile that
describes features expected for given kinds of mispositioning motion, as
recited in claim 1?
Did the Examiner err in combining Burdsall with Levine, Joshi, and
Liberty?
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Did the Examiner err in finding that the combination of Levine, Joshi,
Liberty and Trewin teaches or suggests comparing features from an
information stream with mispositioning profile features includes a Bayesian
network that calculates and combines probabilities for characteristics of the
mispositioning motion, as recited in claim 21?

ANALYSIS
“mispositioning feature profiles that describe features
expected for given kinds of mispositioning motion”
Appellants contend that the combination of Levine, Joshi, and Liberty
fails to teach or suggest the mispositioning profiles as recited in claim 1.
(Appeal Br. 10–13; Reply Br. 5–6.) Appellants contend that no disclosure in
any of the cited art relates to features expected for given kinds of
mispositioning motion, and allege that the examiner has merely presented “a
laundry list of keywords.” Appellants argue that, while Levine discusses
mispositioning, each of Joshi and Liberty are directed to other types of
movement analysis—Joshi to the detection of an event trigger and Liberty to
the recognition of a user through analysis of the user’s movements. (Appeal
Br. 11–13.)
Appellants’ argument focuses on the references individually instead of
addressing the Examiner’s rejection, which is based upon what the combined
teachings would have suggested to the ordinary artisan. In re Keller, 642
F.2d 413, 425 (CCPA 1981). Appellants argue about the propriety of the
combination only in a conclusory fashion: “[t]he bare concept of
mispositioning motion cannot simply be grafted to the teachings of Joshi and
Liberty to produce the present invention.” (Appeal Br. 12–13.) Appellants
make a more specific argument regarding the propriety of combining Levine
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and Joshi in their Reply (Reply Br. 5), however this argument is not
responsive to an argument presented for the first time in the Examiner’s
Answer, and good cause has not been shown as to why the argument was not
presented earlier. Therefore the argument will not be considered for the
purposes of this appeal. 37 C.F.R. § 41.41(b)(2) (2012).
The Examiner has noted the various features of the prior art
references, how they would have been combined to teach the elements of the
claim, included the recited “mispositioning feature profiles,” and has
provided a motivation to combine the references. (Final Action 2–4;
Answer 19–21.) We are not persuaded of error on the part of the Examiner.
Accordingly, we sustain the Examiner’s 35 U.S.C. § 103(a) rejection
of claim 1, and the rejections of claims 2–7, 11–13, and 16–20 not separately
argued with specificity. Additionally, we sustain the Examiner’s 35 U.S.C.
§ 103(a) rejection of claim 8 as unpatentable over Levine, Joshi, Liberty, and
Brouhon, and of claims 14 and 15 as unpatentable over Levine Joshi,
Liberty, and Trewin, argued on the same grounds.

The Burdsall Reference
With respect to the rejection of claim 9, Appellants contend that the
combination of Levine, Joshi, Liberty, and Burdsall is improper because
Burdsall is not analogous art. (Appeal Br. 18– 19; Reply Br. 6–7.) A prior
art reference is analogous to an application (1) if it is from the same field of
endeavor as the application, regardless of the problem addressed, or (2) if
the reference is not within the field of the inventor’s endeavor, it is
nonetheless reasonably pertinent to the particular problem with which the
inventor is involved. In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004).
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The Examiner finds that the Burdsall reference and the subject of
Appellants’ application “are both input devices concerned with inputting
information from a device . . . to a computer.” (Advisory Action of Apr. 25,
2013, 2.) Appellants argue that “[c]haracterizing [Burdsall] as belonging
particularly to the field of input devices is certainly beyond the realm of
what might fairly be considered ‘analogous’ art.” (Appeal Br. 18.)
Appellants additionally contend that, “[a]lthough the Burdsall reference may
include an input device, so too does essentially every computer-related
invention.” (Id.)
The Examiner also finds evidence of the analogousness of Burdsall to
be reflected in the classification of Burdsall into class 245, subclass 179,
which is defined as “stylus,” “wherein the operator uses a handheld pointer
to input positional information data on the display device.” (Answer 21.)
Such classifications may provide some evidence of analogousness. In re
Deminski, 796 F.2d 436, 442 n.3 (Fed.Cir.1986); In re Ellis, 476 F.2d 1370,
1372 (C.C.P.A. 1973).
We agree with the Examiner that Burdsall is not merely a computer-
related invention, but one which would have been reasonably pertinent to the
problem with which the inventor is involved. The input device in the
Burdsall reference is not incidental to the fact that Burdsall is a computer-
related invention. Rather, Burdsall describes and claims the input device—a
pen having a writing tip and digital tip. (Burdsall, 5:1–5; 7:5.) We agree
with the Examiner that Burdsall is from the same field of endeavor as the
Appellants’ application.
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We also note that support in the Specification for the disputed
limitation of “generating an alert to a user if a performance threshold is
crossed” is found in paragraph 38 of the Specification:
At this point other actions may also be taken, such as checking
whether the user’s performance has crossed some threshold and
generating an alert when a threshold is crossed. This alert may,
for example, provide the user with performance information
that indicates how effective their current medical treatment is,
and alerts them when additional medication may be necessary.
This shows that one particular problem with which the inventors are
involved is generating an alert regarding medical treatment. Even if we
considered Burdsall as being in the field of digitally processing observation
charts, as Appellants argue (Appeal Br. 18; Reply 6), as one purpose of the
invention being to detect “timing errors” and to detect “for example, that a
patient has not had his drug administered” (Burdsall 2:8–17), we find that
the reference would be reasonably pertinent to a particular problem with
which the inventors were involved and that Burdsall is analogous art.
Thus, we sustain the Examiner’s 35 U.S.C. § 103(a) rejection of claim
9.

“wherein said comparing includes a Bayesian network that
calculates and combines probabilities for characteristics of
mispositioning motion.”

Appellants argue that the combination of Levine, Joshi, Liberty, and
Trewin fails to teach or suggest comparing including a Bayesian network
that calculates and combines probabilities for characteristics of
mispositioning motion, as recited in claim 21. (Appeal Br. 22; Reply Br. 7.)
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Appellants again argue that the references individually do not show
the limitation, rather than addressing what the combined teachings would
have suggested to the ordinary artisan. Keller, 642 F.2d at 425. Appellants
argue in a conclusory fashion that a “specific relationship” is laid out in the
limitation between the elements the Examiner finds taught or suggested in
the prior art, but have not alleged or shown why combining the teachings
relied on by the Examiner to teach or suggest the disputed limitation would
be “uniquely challenging or difficult for one of ordinary skill in the art.” See
Leapfrog Enters., Inc. v. Fisher-Price, Inc., 485 F.3d 1157, 1162 (Fed. Cir.
2007) (citing KSR, 550 U.S. at 418). To rebut a prima facie case of
unpatentability, it is not enough for the Appellants to simply generally deny
that claim limitations are present in the prior art. Our role is review of the
arguments of record, not independent examination of the claimed invention.
Cf. In re Baxter Travenol Labs., 952 F.2d 388, 391 (Fed. Cir. 1991) (“It is
not the function of this court to examine the claims in greater detail than
argued by an appellant, looking for [patentable] distinctions over the prior
art.”).
Accordingly, we sustain the Examiner’s 35 U.S.C. § 103(a) rejection
of claim 21.

DECISION
We affirm the Examiner’s decision rejecting claims 1–9 and 11–21.
Pursuant to 37 C.F.R. § 1.136(a)(1)(iv), no time period for taking any
subsequent action in connection with this appeal may be extended.

AFFIRMED