Ex Parte Leuthardt et al

Patent Trial and Appeal Board

Aug 24, 2015

12459493 (P.T.A.B. Aug. 24, 2015)

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.
12/459,493 07/01/2009 Eric C. Leuthardt SE1-0943-US 9846
80118 7590 08/24/2015
Constellation Law Group, PLLC
P.O. Box 580
Tracyton, WA 98393
EXAMINER
HARWARD, SOREN T
ART UNIT PAPER NUMBER
1631
MAIL DATE DELIVERY MODE
08/24/2015 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 ERIC C. LEUTHARDT, ROYCE A. LEVIEN,
MARK A. MALAMUD, and LOWELL L. WOOD JR.
____________

Appeal 2013-003009
Application 12/459,4931
Technology Center 1600
____________

Before JOHN F. HORVATH, KIMBERLY J. McGRAW, and
KEVIN C. TROCK, Administrative Patent Judges.

McGRAW, Administrative Patent Judge.

DECISION ON APPEAL

Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 1, 6, 8, 22, 23, 43, and 85–92. App. Br. 12; Final Act. 2.
Claims 2, 5, 7, 13, 16, 19–21, 24, 27, 28, 30–33, 35, and 37–42 are
withdrawn. Final Act. 2. Claims 3, 4, 9–12, 17, 18, 25, 26, 29, 34, 36, and
44–84 are cancelled. Id. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.

1 According to the Appellants, the real party in interest is Searete LLC,
which is wholly owned by Intellectual Ventures Management, LLC. App.
Br. 5.
Appeal 2013-003009
Application 12/459,493

2
BACKGROUND
Appellants’ invention is directed generally to methods and systems for
combining a bioactive agent with an artificial sensory experience. Spec.
4:22–24. Claims 4, 43, 85, 86, and 90 are independent. Claim 1 is the focus
of Appellants’ brief and is reproduced below:
1. A system, comprising:
means for detecting an indication of an undesired memory of an
individual; and
means for presenting an indication of at least one memory-
dampening agent at least
partially based on the detecting an indication of an undesired
memory of an individual.

App. Br. 59 (Claims App’x).

THE REJECTIONS ON APPEAL
Claims 1, 6, 8, 22, and 23 stand rejected under 35 U.S.C. § 112,
second paragraph, as being indefinite for failing to particularly point out and
distinctly claim the subject matter which applicant regards as the invention.
Final Act. 4.
Claims 1, 6, 8, 43, and 85–92 stand rejected under 35 U.S.C. § 103(a)
as unpatentable over Brown (US 6,334,778 B1, issued Jan. 1, 2002) and
Vaiva et al. (Immediate Treatment with Propranolol Decreases
Posttraumatic Stress Disorder Two Months after Trauma, 54 BIOL.
PSYCHIATRY 947–949 (2003) (hereinafter “Vaiva”)). Final Act. 6.
Claims 22 and 23 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Brown, Vaiva, Davis et al. (US 2006/0252761 A1,
published Nov. 9, 2006 (hereinafter “Davis”) and Difede et al. (Virtual
Reality Exposure Therapy for World Trade Center Post-traumatic Stress
Appeal 2013-003009
Application 12/459,493

3
Disorder: A Case Report, 5 CYBERPSYCHOLOGY & BEHAVIOR 529–535
(2002) (hereinafter Difede”)). Final Act. 8–9.

ANALYSIS
We have reviewed each of Appellants’ arguments for patentability.
However, we are not persuaded by Appellants’ arguments and sustain the
Examiner’s rejections of claims 1, 6, 8, 22, 23, 43, and 85–92 for essentially
those reasons expressed in the Answer, including the Response to Argument
section. We add the following primarily for emphasis.
35 U.S.C. § 112, ¶ 2 – Indefiniteness
Claims 1, 6, 8, 22, and 23 stand rejected under 35 U.S.C. § 112, ¶ 2 as
being indefinite. Final Act. 4. The Examiner finds that the claims recite
means-plus-function limitations that invoke 35 U.S.C. § 112, sixth
paragraph, and finds the written description fails to clearly link or associate
any corresponding structure or material. Id.
Regarding the limitation “means for detecting,” Appellants point to
language in the Specification that states a “detector module 6902 may
include a computer processor.” App. Br. 14. However, “modules” that
“may include a computer processor” do not describe a structure sufficient to
satisfy the requirements of 35 U.S.C. § 112.
35 U.S.C. § 112, ¶ 6 requires a claim limitation expressed in means-
plus-function language “shall be construed to cover the corresponding
structure . . . described in the specification and equivalents thereof.” An
applicant who chooses to employ means-plus-function language in a claim
must provide an adequate disclosure in the specification showing what is
meant by that language. In re Donaldson Co., 16 F.3d 1189, 1195 (Fed. Cir.
Appeal 2013-003009
Application 12/459,493

4
1994) (en banc). If there is no disclosure of structure, material or acts for
performing the recited function, then the claim fails to particularly point out
and distinctly claim the invention as required by the 35 U.S.C. § 112, ¶ 2.
Id.
A module is an undefined structure that does not inform one of
ordinary skill in the art what structure, material, or acts perform the claimed
function. Nor does a “computer processor” provide the requisite structure.
Our reviewing court has made clear that the corresponding structure for
performing a specific function is required to be more than a simple general
purpose computer or microprocessor. See, e.g., Aristocrat Techs. Australia
Pty Ltd. v. Int’l Game Tech., 521 F.3d 1328, 1333 (Fed. Cir. 2008). To
claim a means for performing a specific computer-implemented function,
and then to disclose only a general purpose computer or microprocessor as
the structure designed to perform that function, amounts to pure functional
claiming. Id. The structure corresponding to the means for a computer
implemented function must include the algorithm needed to transform the
general purpose computer or microprocessor disclosed in the specification.
Id. Here, Appellants merely refer to modules that may include a computer
processor but do not disclose any algorithm for performing the claimed
function.
Accordingly, the “means for detecting” limitations lack sufficient
disclosure of structure under 35 U.S.C. § 112, ¶ 6 and, we affirm the
Examiner’s rejection of claims as indefinite under 35 U.S.C. § 112, ¶ 2.
As we have affirmed the Examiner’s rejection, we need not consider
Appellants’ argument that the Specification provides support for the “means
for presenting” limitations.
Appeal 2013-003009
Application 12/459,493

5
OBVIOUSNESS-TYPE DOUBLE-PATENTING REJECTIONS
Appellants contend the Examiner erred in rejecting claims 1, 6, 8, 22,
23, and 43 for obviousness-type double patenting. App. Br. 16. However,
rather than pointing out the Examiner’s supposed errors, Appellants have
made mere general allegations that the obviousness-type double patenting
rejections are improper because (1) the Examiner has failed to provide
objectively verifiable evidence as to what the copending application teaches,
(2) the copending application does not literally recite what PTO asserts
would have been “obvious” based on its disclosure, and (3) the PTO must
have relied on “personal knowledge” or taken improper “official notice” of
one or more factors to reach its assertions. Id. By failing to identify, with
sufficient particularity, any error in the Examiner’s double patenting
rejections, Appellants’ argument amounts to nothing more than a request for
a de novo review of the Examiner’s findings, which we decline to perform.
As such, we do not disturb the Examiner’s double patenting rejection.
35 U.S.C. § 103(a)
The Examiner rejected claims 1, 6, 8, 43, and 85–92 under 35 U.S.C.
§ 103(a) as unpatentable over Brown and Vaiva. Final Act. 6. Claims 22
and 23 are rejected under 35 U.S.C. § 103(a) as being unpatentable over
Brown, Vaiva, Davis, and Difede. Final Act. 8–9.
Claim 1
Appellants contend that the Examiner failed to establish a prima facie
case of unpatentability of claim 1 because the cited art “fails to recite”
several terms found in claim 1. App. Br. 29–32. Appellants further argue
that the Examiner has not provided any “objectively verifiable evidence”
Appeal 2013-003009
Application 12/459,493

6
that Brown or Vaiva teaches the limitations of claim 1 (App. Br. 33–36, 37–
38) or how Brown and Vaiva could be modified to teach the detecting or
presenting limitations of claim 12. See, e.g., id. at 43–51. Appellants also
charge that the Examiner is improperly relying on hindsight or personal
knowledge or is taking official notice of one of more factors to reach the
factual conclusion of what the cited technical material teaches. See, e.g., id.
at 36, 42. Further, Appellants assert the Examiner should be required to
provide an affidavit or declaration setting forth objectively verifiable
evidence in support of the Examiner’s assertions regarding what the cited
technical material teaches and/or should be interpreted to teach. See, e.g., id.
at 36, 40, 43.
Appellants also argue that combining the teachings of Brown and
Vaiva would require substantial reconstruction and redesign of the elements
shown in Brown, as well as a change in the basic principle under which
Brown was designed to operate, and that the combination of Brown and
Vaiva would render the references unsatisfactory for their intended purpose.
Id. at 45–48.
Appellants’ arguments are not persuasive. The Federal Circuit has
held that the USPTO carries its procedural burden of establishing a prima
facie case when its rejection satisfies the requirements of 35 U.S.C. § 132 by
notifying the applicant of the reasons for rejection, “together with such
information and references as may be useful in judging of the propriety of
continuing the prosecution of [the] application.” See In re Jung, 637 F.3d

2 Although Appellants’ Appeal Brief recites claim 93 in the heading on page
45, we consider this to be a typographical error and treat the Appellants’
argument as directed to claim 1.
Appeal 2013-003009
Application 12/459,493

7
1356, 1362 (Fed. Cir. 2011).3 Thus, “all that is required of the office to meet
its prima facie burden of production is to set forth the statutory basis of the
rejection and the reference or references relied upon in a sufficiently
articulate and informative manner as to meet the notice requirement of
§ 132.” Id. at 1363. Here, the Examiner has satisfied the burden of
establishing a prima facie case of obviousness by identifying and applying
paragraphs in Brown and Vaiva for teaching or suggesting subject matter
corresponding to that recited in Appellants’ claims, and providing articulated
reasoning with rational underpinning to support the conclusion of
obviousness. The cited portions of Brown and Vaiva and the accompanying
explanations provided by the Examiner, collectively constitute the
objectively verifiable evidence that Appellants allege is lacking.
Therefore, the burden has shifted to Appellants to rebut the
Examiner’s prima facie case by specifically pointing out the supposed errors
in the Examiner’s action setting forth findings of fact and conclusions of
law, as well as the specific distinctions believed to render the claims
patentable over the applied references. Appellants have failed to carry their
burden. Rather than pointing out the Examiner’s supposed errors,
Appellants have made mere general allegations that the claims define a

3 Appellants’ Supplemental Reply Brief filed December 20, 2012, requests
that the Board read the Appeal Brief vocabulary as consistent with the
“newly-announced notice theory of the prima facie case announced in In re
Jung,” Supp. Reply Br. 3, which misleadingly implies that Jung is “new”
and represents a change in the law. Jung, decided on March 28, 2011, was
controlling case law when the Appeal Brief was filed. Appellants have not
provided any persuasive argument as to why Appellants’ arguments relating
to Jung were not presented in Appellants’ opening brief. As such, we have
not considered Appellants’ Supplemental Reply Brief.
Appeal 2013-003009
Application 12/459,493

8
patentable invention because (1) the Examiner has failed to establish a prima
facie case of obviousness, without specifically articulating what gaps exist
between the cited art and the recited claims or (2) the combination of the
cited art would render the art unsatisfactory for their intended purpose,
without providing any explanation as to why. Appellants’ arguments
amount to little more than a recitation of the claim language, and a quotation
of the Examiner’s statement of the rejection followed by a quotation of each
of the cited portions of the prior art references, from which Appellants
summarily conclude that the quoted language of the references does not
meet the quoted claim language. Other than alleging the Examiner is
required to provide direct quotations of identical terminology, Appellants
have not identified, with any particularity, error in the Examiner’s
interpretations of Brown or Vaiva or the claim language.
We reject Appellants’ argument that the Examiner must demonstrate
that the identical language of rejected claims appears in the cited references
in order for the references to establish a prima facie case of unpatentability.
The test of whether a reference teaches or suggests a claim limitation is not
whether the exact language of the limitation is present in the reference.
Rather, the relevant inquiry is whether the limitation is taught or suggested
by the prior art when the claim is given its broadest reasonable interpretation
in light of the specification. See, e.g., In re Bond, 910 F.2d 831, 832–33
(Fed. Cir. 1990) (interpretation of references “is not an ‘ipsissimis verbis’
test”); Akzo N.V. v. U.S. Int’l Trade Comm’n, 808 F.2d 1471, 1479 & n.11
(Fed. Cir. 1986); see also Standard Havens Prods., Inc. v. Gencor Indus.,
Inc., 953 F.2d 1360, 1369 (Fed. Cir. 1991) (“An anticipatory reference . . .
need not duplicate word for word what is in the claims.”)
Appeal 2013-003009
Application 12/459,493

9
The Appellants may well disagree with how the Examiner interpreted
and applied the references, and the rationale for combining the references
but Appellants offer no evidence or substantive reasoned arguments to rebut
the specific underlying factual findings or conclusions made by the
Examiner in support of the § 103 rejection. We decline to examine the
claims sua sponte, looking for distinctions over the prior art. See 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 [A]ppellant, looking for [patentable] distinctions over the prior art.”). In
the absence of a more detailed explanation, we are not persuaded of error on
the part of the Examiner. See Jung, 637 F.3d. at 1365 (“[I]t has long been
the Board’s practice to require an [Appellant] to identify the alleged error in
the [E]xaminer’s rejections,” citing Ex parte Frye, 94 USPQ2d 1072, 1075
(BPAI 2010) (precedential) (“The panel then reviews the obviousness
rejection for error based upon the issues identified by appellant, and in light
of the arguments and evidence produced thereon.”)).
Appellants’ arguments that the modification of the cited art would
render the art unfit for their intended purpose or change the principle of
operation are similarly conclusory and unpersuasive. Appellants merely
quote sections of the Examiner’s rejection, quote sections of the prior art,
and then make non-specific assertions of error without providing any
substantive argument indicating why the Examiner’s proposed combination
of Brown and Vaiva would change the references’ principle of operation or
render the references unfit for their intended purpose. Instead, we find the
Examiner has articulated reasoning with rational underpinning to support the
Appeal 2013-003009
Application 12/459,493

10
conclusion of obviousness, and that conclusion remains unrebutted by
Appellants.
Accordingly, we affirm the rejection of claim 1.
Claims 43, 85, 86, and 90
Appellants argue that independent claims 43, 85, 86, and 90 contain
similar recitations as claim 1 and are not obvious for at least the same
reasons. App. Br. 51. We affirm the rejection of claims 43, 85, 86, and 90
for the same reasons we affirm the rejection of independent claim 1.
Claims 6 and 8
Appellants separately argue claims 6 and 8, but rely upon arguments
similar to those made with respect to independent claim 1. Id. at 52–55. We
affirm the rejection of claims 6 and 12 for the same reasons we affirm the
rejection of independent claim 1.
Claims 22, 23, 87–89, 91, and 92
Appellants do not present separate arguments directed to claims 22,
23, 87–89, 91, and 92, which depend directly or indirectly upon claims 1, 86,
or 90. As such, we also sustain the rejection of dependent claims 22, 23, 87–
89, 91, and 92.
DECISION
The indefiniteness rejection of claims 1, 6, 8, 22, and 23 under
35 U.S.C. § 112, ¶ 2 is affirmed.
The obviousness rejections of claims 1, 6, 8, 22, 23, 43, and 85–92
under 35 U.S.C. § 103(a) are affirmed.
Appeal 2013-003009
Application 12/459,493

11
We do not disturb the provisional-obviousness type non-statutory
double patenting rejection of claims 1, 6, 8, 22, 23, and 43.
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
cdc