Ex Parte Leuthardt et alDownload PDFPatent Trial and Appeal BoardFeb 10, 201612455148 (P.T.A.B. Feb. 10, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 12/455,148 05/28/2009 Eric C. Leuthardt 80118 7590 02/10/2016 Constellation Law Group, PLLC P.O. Box 580 Tracyton, WA 98393 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 ATTORNEY DOCKET NO. CONFIRMATION NO. SEl-0940-US 4984 EXAMINER HARWARD, SOREN T ART UNIT PAPER NUMBER 1631 MAILDATE DELIVERY MODE 02/10/2016 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 ERIC C. LEUTHARDT, ROYCE A. LEVIEN, MARK A. MALAMUD, and LOWELL L. WOOD JR. Appeal2013-005808 Application 12/455,148 1 Technology Center 1600 Before MICHAEL J. STRAUSS, JOHN F. HORVATH, and KIMBERLY McGRAW, 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, 5, 18, 24, 39, and 77-84. Claims 2--4, 6-15, 19, 20, 22, 23, 26, 28-31, and 34-38 are withdrawn. Final Act. 2. Claims 16, 17, 21, 25, 27, 32, 33, and 40-76 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. Appeal2013-005808 Application 12/455,148 BACKGROUND Appellants' invention is directed generally to systems, methods, and a computer program product for activating and reconsolidating a consolidated memory of an individual. Claims 1, 39, 77, 78, and 82 are independent. Claim 1 is the focus of Appellants' brief and is reproduced below: 1. A system comprising: means for activating at least one consolidated memory of an individual; means for presenting an indication of at least one memory-dampening agent to the individual; and means for presenting to the individual at least one artificial sensory experience for reconsolidation of the at least one consolidated memory. App. Br. 76 (Claims App.). THE REJECTIONS ON APPEAL Claims 1, 5, 18, and 24 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. 3-5. Claims 1, 5, 24, 39, and 77-84 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Calhoun et al. (US 6,565,359 B2 issued May 20, 2003) (hereinafter "Calhoun"), Difede et al. (Joann Difede & Hunter G. Hoffman, Virtual Reality Exposure Therapy for World Trade Center Post-traumatic Stress Disorder: A Case Report, 5 CyberPsychology & Behavior 529 (2002)) (hereinafter "Difede"), and Davis et al. (US 2006/0252761 Al published Nov. 9, 2006) (hereinafter "Davis"). Final Act. 6-8. 2 Appeal2013-005808 Application 12/455,148 Claim 18 stands rejected under 35 U.S.C. § 103(a) as being unpatentable over Calhoun, Difede, Davis, and Kehr et al. (US 2003/0036683 Al published February 20, 2003) (hereinafter "Kehr"). Final Act. 8-10. Claims 1, 5, 18, 24, and 39 are provisionally rejected on the ground of non-statutory obviousness-type double patenting as being unpatentable over claims of co-pending Application No. 12/455,308. Final Act. 11-12. ANALYSIS We have thoroughly reviewed each of Appellants' arguments for patentability. However, we are not persuaded by Appellants' arguments and sustain the Examiner's rejections for essentially those reasons expressed in the Final Action and the Examiner's Answer. We add the following primarily for emphasis. 35 U.S.C. § 112, f 2 -Indefiniteness Independent claim 1 and dependent claims 5, 18, and 24 stand rejected under 35 U.S.C. § 112, i-f 2 as being indefinite. Final Act. 3. The Examiner finds that various "means" terms, including "means for activating" invoke 35 U.S.C. § 112, sixth paragraph. Id. The Examiner finds the written description fails to clearly link or associate any corresponding structure or material to the claimed function, and therefore the claims are invalid under 112, i-f 2 as indefinite. Id. at 3--4. Appellants argue the Examiner erred in rejecting the claims as indefinite, contending one skilled in the art would understand the claim recitation at issue and would be able to clearly link and associate the disclosed structure, material, or acts to the claimed function. App. Br. 12. Appellants point to page 163, lines 15 and 16 of the Specification, which 3 Appeal2013-005808 Application 12/455,148 states that in "some instances, activator module 6902 may include a computer processor and/or presentation instrumentation, such as a display." App. Br. 11. We disagree that a module that "may include a computer processor and/or presentation instrumentation, such as a display" describes a structure sufficiently to satisfy the requirements of 35 U.S.C. § 112. 35 U.S.C. § 112, i-f 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. 1994) (en bane). 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, i-f 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'! Game Tech., 521F.3d1328, 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 4 Appeal2013-005808 Application 12/455,148 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. The recitation of a presentation instrumentation or display does not cure this deficiency. Accordingly, the "activator module" limitation lacks sufficient disclosure of structure under 35 U.S.C. § 112, i-f 6 and we affirm the Examiner's rejection of claim 1, and dependent claims 5, 18, and 24 as indefinite under 35 U.S.C. § 112, i-f 2. 35 U.S.C. § 103(a) The Examiner rejected claims 1, 5, 24, 39, and 77-84 under 35 U.S.C. § 103(a) as unpatentable over Calhoun, Difede, and Davis and claim 18 under these references, further in view of Kehr. Final Act. 6-9. Claim 1 Appellants contend 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. See, e.g., App. Br. 36-40, 42--43, 46-50, 52-55. Appellants argue the Examiner has not provided any "objectively verifiable evidence" that the combination of Calhoun, Difede, and Davis teaches the limitations of claim 1 (Id. at 42-57) or to support the Examiner's assertions regarding the teaching to modify the cited art (id. at 57----66). Appellants also argue the Examiner is improperly relying on hindsight or personal knowledge or is taking official notice of one or more factors to reach the factual conclusion of what is taught by the prior art. See, e.g., id. at 42-57. 5 Appeal2013-005808 Application 12/455,148 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. Id. at 44--45, 48--49, 51. Appellants also argue that combining the teachings of Calhoun and Davis would require substantial reconstruction and redesign of the elements shown in Calhoun, as well as a change in the basic principle under which Calhoun was designed to operate, and that the combination of Calhoun and Davis would render the references unsatisfactory for their intended purpose. Id. at 57----66. 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 1356, 1362 (Fed. Cir. 2011).2 Thus, "all that is required of the office to meet 2 Appellants' Supplemental Reply Brief, filed March 18, 2013, 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, [637 F.3d 1356 (Fed. Cir. 2011)]." Supp. Reply Br. 3. This 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. 6 Appeal2013-005808 Application 12/455,148 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 specific portions of the Calhoun and Davis references 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. See In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992). The cited portions of Calhoun and Davis 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 findings of fact and conclusions of law, explaining why the findings and/or conclusion are erroneous, 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 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 7 Appeal2013-005808 Application 12/455,148 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 prior art fails to disclose particular features in haec verba, Appellants have not identified, with any particularity, error in the Examiner's interpretations of Calhoun or Davis as applied in the rejections or construction of 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'! 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.") 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 8 Appeal2013-005808 Application 12/455,148 claims sua sponte, looking for distinctions over the prior art. See Jn 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 (BP AI 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 evidence supporting a conclusion or substantive argument indicating why the Examiner's proposed combination of Calhoun and Davis 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 conclusion of obviousness, and that conclusion remains unrebutted by Appellants. Accordingly, we sustain the Examiner's rejection of claim 1. Claims 39, 77, 78, and 82 Appellants argue that independent claims 39, 77, 78, and 82 are patentable for at least the same reason claim 1 is patentable. App. Br. 67. 9 Appeal2013-005808 Application 12/455,148 As we sustained the rejection of claim 1, this argument is not persuasive. Accordingly, we sustain the rejection of claims 39, 77, 78, and 82. Claims 5, 18, 24, 39, 79--81, 83, and 84 Appellants separately address claims 5 and 24 but rely upon arguments similar to those made with respect to independent claim 1. Compare, e.g., App. Br. 67-72 with id. at 36-56. Having found these arguments unpersuasive for the reasons discussed supra in connection with claim 1, we are likewise unpersuaded by these similar arguments presented in connection with claims 5 and 24. Appellants also argue that dependent claims 5, 18, 24, 39, 79-81, 83, and 84, which depend directly or indirectly from independent claims 1, 78, or 82, are patentable for at least the reasons why their respective independent claim is patentable. As we sustained the rejection of the independent claims, this argument is not persuasive. For the foregoing reasons, we sustain the Examiner's rejection of claims 5, 18, 24, 39, 79-81, 83, and 84. PROVISIONAL OBVIOUSNESS-TYPE DOUBLE-PATENTING Claims 1, 5, 18, 24, and 39 stand provisionally rejected on the grounds of non-statutory obviousness-type double patenting. Final Act. 11-12. Appellants have not presented any argument or evidence that the Examiner's provisional rejection is in error. As such, we do not disturb the Examiner's double patenting rejection. DECISION The indefiniteness rejection of claims 1, 5, 18 and 24 under 35 U.S.C. § 112, i-f 2 is affirmed. The obviousness rejections of claims 1, 5, 18, 24, 39, and 77-84 under 35 U.S.C. § 103(a) are affirmed. 10 Appeal2013-005808 Application 12/455,148 We do not disturb the provisional-type non-statutory double patenting rejection of claims 1, 5, 18, 24, and 39. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv). AFFIRMED bar 11 Copy with citationCopy as parenthetical citation