Ex Parte Leuthardt et al

Patent Trial and Appeal Board

Feb 2, 2016

12460327 (P.T.A.B. Feb. 2, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/460,327 07/16/2009
44765 7590 02/04/2016
INTELLECTUAL VENTURES - ISF
ATTN: DOCKETING, ISF
3150 - 139th Ave SE
Bldg.4
Bellevue, WA 98005
FIRST NAMED INVENTOR
Eric C. Leuthardt
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.
0208-002-00l-CP5CO1 7561
EXAMINER
HARWARD, SOREN T
ART UNIT PAPER NUMBER
1631
NOTIFICATION DATE DELIVERY MODE
02/04/2016 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address( es):
ISFDocketlnbox@intven.com
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.
Appeal2013-005674
Application 12/460,327 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 75, 77, 96, and 100-102. App. Br. 7; Final Act. 2.
Claims 76, 78-95, 97-99, and 103-106 are withdrawn. Final Act. 2.
Claims 1-74 are cancelled. Final Act. 2. 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.
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Application 12/460,327
Appellants' invention is directed generally to a system comprising a
measurer module, to measure an effect of a memory dampening agent and an
artificial sensory experience, as well as a modifier module for modifying the
memory dampening agent or the artificial sensory experience. Claim 7 5 is
the only independent claim on appeal and is reproduced below:
75. A system, comprising:
a measurer module, including a microprocessor,
configured to measure at least one effect of a memory-
dampening agent and an artificial sensory experience on
an individual; and
a modifier module configured for modifying at least
one of the memory-dampening agent or the artificial
sensory experience at least partially based on measuring
the effect of a combination memory-dampening agent and
artificial sensory experience.
App. Br. 69 (Claims App.).
THE REJECTIONS ON APPEAL
Claims 75, 77, 96 and 100-102 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.
Claims 75, 77, 96 and 100-102 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Firlik et al. (US 2007 /0179534 Al,
published Aug. 2, 2007) and Davis (US 2006/0252761 Al, published Nov.
9, 2006). Final Act. 6-7.
Claims 75, 77, 96, 100, and 101 are provisionally rejected on the
ground of non-statutory obviousness-type double patenting as being
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unpatentable over claims of co-pending Application No. 12/460,252 in view
of Calhoun et al. (US 6,565,359 issued May 20, 2003 ("Calhoun")). Final
Act. 10-11.
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 US. C. § 112, f 2 - Indefiniteness
Claims 75, 77, 96, and 100-102 stand rejected under 35 U.S.C. § 112,
i-f 2 as being indefinite. Final Act. 3. The Examiner finds that the claim
terms "measurer module," "modifier module," and "presenter module,"
which use the non-structural term "module" coupled with the functional
language "measuring,'' "modifying," or "presenting," invoke 35 U.S.C.
§ 112, sixth paragraph. Id.; see also December 7, 2011 Non-Final Act. 3-5.
The Examiner finds, because the written description fails to clearly link or
associate any corresponding structure or material to the claimed function, the
claims are invalid under§ 112, i-f 2 as indefinite. Final Act. 3--4.
Appellants argue the Examiner erred in rejecting the claims as
indefinite because one skilled in the art would understand the claim
recitations at issue and would be able to clearly link and associate the
disclosed structure, material, or acts to the claimed functions. App. Br. 11.
Specifically, Appellants point to ( 1) page 165, lines 8 through 10 of the
Specification, which discloses that a "measurer module 6902 may include a
computer processor and/or a medical device, such as a stethoscope" and to
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(2) page 166, lines 3 through 4, which discloses that a "modifier module
6904 may include a computer processor." Id. Appellants also argue that
they have amended claim 7 5 to recite a measurer module, "including a
microprocessor" to expedite prosecution. Id. 12.
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 "computer processor" or "mircroprocessor" 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 claiming. Id. The structure
corresponding to the means for a computer implemented function must
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include the algorithm needed to transform the general purpose computer or
microprocessor disclosed in the specification. Id.
Regarding the "modifier module" limitation, Appellants merely refer
to modules that may include a computer processor but do not disclose any
algorithm for performing the claimed function. Regarding the "measurer
module, including a microprocessor," Appellants similarly refer to modules
that may include a computer processor but do not disclose any algorithm for
performing the claimed function. The recitation of a medical device, such as
a stethoscope does not cure this deficiency. Regarding the "presenting
module" limitation, Appellants do not provide any evidence or argument that
the Specification clearly links structure to the recited function of the
presenter module.
Accordingly, Appellants have not shown the Examiner erred in
finding the "measurer module," "modifier module," and "presenter module"
limitations lacks sufficient disclosure of structure under 35 U.S.C. § 112, i-f 6
and, we affirm the Examiner's rejection of claims as indefinite under
35 U.S.C. § 112, i-f 2.
35 US.C. § 103(a)
The Examiner rejected claims 75, 77, 96, and 100-102 under
35 U.S.C. § 103(a) as unpatentable over Firlik and Davis. Final Act. 6-8.
Claim 75
Appellants contend that the Examiner failed to establish a prima facie
case of unpatentability of claim 7 5 because the cited art "fails to recite"
several terms found in claim 75. See, e.g., App. Br. 36-51. Appellants
further argue that the Examiner has not provided any "objectively verifiable
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evidence" that Firlik and Davis teach the limitations of claim 7 5 (see, e.g.,
id. at 36-38, 40-45) or how to incorporate the technologies of Davis into the
structure of Firlik technologies. Id. at 54---60. Appellants also charge 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 45--46, 51-52.
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 46, 49, 51, 61.
Appellants also argue that combining the teachings of Firlik and Davis
would require substantial reconstruction and redesign of the elements shown
in Firlik, as well as a change in the basic principle under which Firlik was
designed to operate, and that the combination of Firlik and Davis would
render the references unsatisfactory for their intended purpose. Id. at 54---60.
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.
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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 Firlik
and Davis 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 Firlik 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 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 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
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.
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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 Firlik or Davis 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. US. Int 'l Trade Comm 'n, 808 F .2d 14 71, 14 79 & 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
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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 (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
substantive argument indicating why the Examiner's proposed combination
of Firlik 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 affirm the rejection of claim 75.
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Claims 77, 96, and 100-102
Appellants argue that dependent claims 77, 96, and 100-102 depend
directly or indirectly from independent claim 75 and are patentable for at
least the reasons why independent claim 7 5 is patentable. As we sustained
the rejection of claim 75, this argument is not persuasive.
Claims 77 and 96
Appellants separately argue claims 77 and 96 but rely upon arguments
similar to those made with respect to independent claim 75. Compare App.
Br. 61-66 with App. Br. 26-39. We therefore affirm the rejection of claims
77 and 96 for the same reasons we affirm the rejection of independent claim
75.
PROVISIONAL OBVIOUSNESS-TYPE DOUBLE-PATENTING
The provisional double patenting rejection is moot in view of the
abandonment of US App. 12/460,252. See Aug. 10, 2015 Notice of
Abandonment dated.
DECISION
The indefiniteness rejection of claims 75, 77, 96, and 100-102 under
35 U.S.C. § 112, if 2 is affirmed.
The obviousness rejections of claims 75, 77, 96, and 100-102 under
35 U.S.C. § 103(a) are affirmed.
The provisional rejection of claims 75, 77, 96, 100, and 101 over
US App. 12/460,252 is moot in view of the abandonment of that application.
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
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