Ex Parte Leuthardt et alDownload PDFPatent Trial and Appeal BoardMay 29, 201512584129 (P.T.A.B. May. 29, 2015) Copy Citation 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 2012-010952 Application 12/584,1291 Technology Center 1600 ____________ Before MICHAEL J. STRAUSS, JOHN F. HORVATH, and KIMBERLY J. 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, 2, 11–14, 31, and 61–68. Claims 3–10 and 15–30 have been withdrawn. 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 2012-010952 Application 12/584,129 2 BACKGROUND Appellants’ invention is directed generally to methods and systems for memory modification by combining a memory-dampening agent with an artificial sensory experience. Spec. 6:26–27. Claims 1, 31, 61, and 66 are independent. Claims 1 and 31 are the focus of Appellants’ brief and are reproduced below: 1. A system, comprising: means for accepting an indication of memory-dampening agent use; and means for altering an artificial sensory experience to modify at least one effect of the memory-dampening agent. 31. A computer-implemented method, comprising: accepting an indication of memory-dampening agent use; and altering an artificial sensory experience to modify at least one effect of the memory-dampening agent, where each step is performed on a suitable microprocessor. THE REJECTIONS ON APPEAL2 Claims 1, 2, and 11–14 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; Ans. 4. Claims 1, 2, and 11–14 are rejected under 35 U.S.C. § 112, first paragraph, as failing to comply with the written description requirement. Final Act. 4; Ans. 5. 2 The rejection of claims 1, 2, 11–14, and 31 under 35 U.S.C. § 101 as directed to non-statutory subject matter is withdrawn. Ans. 4. Appeal 2012-010952 Application 12/584,129 3 Claims 1, 2, 11–14, 31, and 61–68 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Davis et al. (US 2006/0252761 A1, published Nov. 9, 2006 (hereinafter “Davis”)), Lamson (US 6,425,764 B1, issued July 30, 2002); and Dacosta (US 2004/0078239 A1, published Apr. 22, 2004). Final Act. 7; Ans. 5. Claims 1, 2, 11, 31, and 61–68 are provisionally rejected on the ground of nonstatutory obviousness-type double patenting as being unpatentable over (respectively) claims 34, 35, 35, 1 and 67–74 of copending Application No. 12/218,503 in view of Davis. Final Act. 11; Ans. 5. Claims 1, 31, and 61–68 are provisionally rejected on the ground of nonstatutory obviousness-type double patenting as being unpatentable over (respectively) claims 1, 1 and 14–20 of copending Application No. 12/156,949 in view of Davis. Final Act. 12; Ans. 5. Claims 1, 2, 11, 31, and 61–68 are provisionally rejected on the ground of nonstatutory obviousness-type double patenting as being unpatentable over (respectively) claims 31, 32, 32, 1 and 61–68 of copending Application No. 12/283,619 in view of Davis. Final Act. 12; Ans. 5. Claims 1, 2, 11, 31, and 61–68 are provisionally rejected on the ground of nonstatutory obviousness-type double patenting as being unpatentable over (respectively) claims 33, 34, 34, 1 and 65–72 of copending Application No. 12/217,509 in view of Davis. Final Act. 12; Ans. 5. Claims 1, 2, 11–14, and 31 are provisionally rejected on the ground of nonstatutory obviousness-type double patenting as being unpatentable over Appeal 2012-010952 Application 12/584,129 4 (respectively) claims 65, 66, 66, 73–75 and 65 of copending Application No. 12/157,989 in view of Davis. Final Act. 13; Ans. 5. Claims 1, 2, 11–14, 31, and 61–68 are provisionally rejected on the ground of nonstatutory obviousness-type double patenting as being unpatentable over (respectively) claims 29, 30, 30, 37–39, 1 and 57–64 of copending Application No. 12/157,160 in view of Davis. Final Act. 13; Ans. 6. Claims 1, 31, and 61–68 are provisionally rejected on the ground of nonstatutory obviousness-type double patenting as being unpatentable over (respectively) claims 44, 1 and 87–94 of copending Application No. 12/315,072 in view of Davis. Final Act. 13; Ans. 6. Claims 1, 2, 11, 31, and 61–68 are provisionally rejected on the ground of nonstatutory obviousness-type double patenting as being unpatentable over (respectively) claims 1, 2, 2, 1 and 17–23 of copending Application No. 12/156,440 in view of Davis. Final Act. 14; Ans. 6. Claims 1, 2, 11, 31, and 61–68 provisionally rejected on the ground of nonstatutory obviousness-type double patenting as being unpatentable over (respectively) claims 1, 5, 5, 35 and 69–76 of copending Application No. 12/459,029. Final Act. 14; Ans. 6. Claims 1, 2, 11, 31 and 61–68 are provisionally rejected on the ground of nonstatutory obviousness-type double patenting as being unpatentable over (respectively) claims 1, 10, 14, 43, and 85–92 of copending Application No. 12/459,287 in view of Davis. Final Act. 14; Ans. 6. Claims 1, 2, and 31 are provisionally rejected on the ground of nonstatutory obviousness-type double patenting as being unpatentable over Appeal 2012-010952 Application 12/584,129 5 (respectively) claims 77, 80, and 77 of copending Application No. 12/459,195. Final Act. 15; Ans. 6. Claims 1, 12–14, 31, and 61–68 are provisionally rejected on the ground of nonstatutory obviousness-type double patenting as being unpatentable over (respectively) claims 1, 9–11, 34, and 67–74 of copending Application No. 12/460,252. Final Act. 15; Ans. 6. Claims 1, 2, and 31 are provisionally rejected on the ground of nonstatutory obviousness-type double patenting as being unpatentable over (respectively) claims 77, 92 and 77 of copending Application No. 12/462,404. Final Act. 15; Ans. 7. Claims 1, 2, and 31 are provisionally rejected on the ground of nonstatutory obviousness-type double patenting as being unpatentable over (respectively) claims 69, 70 and 69 of copending Application No. 12/584,200. Final Act. 16; Ans. 7. Claims 1 and 31 are provisionally rejected on the ground of nonstatutory obviousness-type double patenting as being unpatentable over claim 95 of copending Application No. 12/387,472 in view of Davis. Final Act. 16; Ans. 7. Claims 1 and 31 are provisionally rejected on the ground of nonstatutory obviousness-type double patenting as being unpatentable over claim 71 of copending Application No. 12/387,151 in view of Davis. Final Act. 16; Ans. 7. Claims 1 and 31 are provisionally rejected on the ground of nonstatutory obviousness-type double patenting as being unpatentable over claim 83 of copending Application No. 12/380,679 in view of Davis. Final Act. 17; Ans. 7. Appeal 2012-010952 Application 12/584,129 6 Claims 1 and 31 are provisionally rejected on the ground of nonstatutory obviousness-type double patenting as being unpatentable over claim 87 of copending Application No. 12/384,203 in view of Davis. Final Act. 17; Ans. 7. Claims 1, 12–14, 31, and 61–68 are provisionally rejected on the ground of nonstatutory obviousness-type double patenting as being unpatentable over (respectively) claims 40, 49–51, 1 and 79–86 of copending Application No. 12/384,104 in view of Davis. Final Act. 18; Ans. 7. Claims 1, 2, 11, 31, and 61–68 are provisionally rejected on the ground of nonstatutory obviousness-type double patenting as being unpatentable over (respectively) claims 1, 8, 8, 1, and 75–82 of copending Application No. 12/383,509 in view of Davis. Final Act. 19; Ans. 8. Claims 1, 2, 11–14, and 31 are provisionally rejected on the ground of nonstatutory obviousness-type double patenting as being unpatentable over (respectively) claims 73, 78, 78, 85–87 and 73 of copending Application No. 12/380,108 in view of Davis. Final Act. 19; Ans. 8. Claims 1, 31, and 61–68 are provisionally rejected on the ground of nonstatutory obviousness-type double patenting as being unpatentable over (respectively) claims 38, 1 and 75–82 of copending Application No. 12/380,587 in view of Davis. Final Act. 19–20; Ans. 8. Claims 1, 2, 11, and 31 are provisionally rejected on the ground of nonstatutory obviousness-type double patenting as being unpatentable over (respectively) claims 73, 81, 81 and 73 of copending Application No. 12/319,143 in view of Davis. Final Act. 20; Ans. 8. Appeal 2012-010952 Application 12/584,129 7 Claims 1, 31, and 61–68 are provisionally rejected on the ground of nonstatutory obviousness-type double patenting as being unpatentable over (respectively) claims 33, 1 and 65–72 of copending Application No. 12/317934 in view of Davis. Final Act. 21; Ans. 8. Claims 1 and 31 are provisionally rejected on the ground of nonstatutory obviousness-type double patenting as being unpatentable over claim 75 of copending Application No. 12/218,627 in view of Davis. Final Act. 21; Ans. 8. Claims 1, 12–14 and 31 are rejected on the ground of nonstatutory obviousness-type double patenting as being unpatentable over claims 1, 12– 14 and 1 of U.S. Patent 7,801,686 in view of Davis. Final Act. 22; Ans. 8. 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 of claims 1, 2, 11–14, 31, and 61–68 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, 2, and 11–14 stand rejected under 35 U.S.C. § 112, ¶ 2 as being indefinite. The Examiner finds that claim elements reciting “means for accepting an indication of memory-dampening agent use” and “means for altering an artificial sensory experience to modify at least one effect of the memory-dampening agent” are means-plus-function limitations that invoke 35 U.S.C. § 112, sixth paragraph, and finds the written description fails to clearly link or associate a disclosed structure, material, or acts to the Appeal 2012-010952 Application 12/584,129 8 claimed function, so that one of ordinary skill in the art would recognize what structure, material, or acts perform the function. See Final Act. 3; Ans. 3. We sustain the Examiner’s rejection. 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. 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. Regarding the limitation “means for altering an artificial sensory experience to modify at least one effect of the memory-dampening agent,” Appellants point to language in the Specification that discuss an “alterer module 6904” that in some instances “may include a computer processor.” App. Br. 18–19. However, “modules” that “may include a computer processor” do not describe a structure sufficient to satisfy the requirements of 35 U.S.C. § 112. A module is an undefined structure that does not tell 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. Appeal 2012-010952 Application 12/584,129 9 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. As such, the Specification does not disclose sufficient structure corresponding to the “means for altering an artificial sensory experience to modify at least one effect of the memory-dampening agent,” and we sustain the Examiner’s rejection of claims 1, 2, and 11–14 for failing to particularly point out and distinctly claim the invention as required by the 35 U.S.C. § 112 ¶ 2. Appellants’ arguments regarding the Specification’s disclosure of an “acceptor module” that may include a computer processor as support for the “means for accepting an indication of memory-dampening agent use” are similarly unpersuasive. See App. Br. 18. Nor are the cited provisions of the Specification discussing use of “a nanowire sensor for detecting the presence of a memory-dampening agent” or a “wireless monitoring system,” and incorporating by reference journal articles disclosing the actual structure of the sensors and wireless systems to be used, sufficient to provide the corresponding structure necessary to satisfy the definiteness requirement for a means-plus-function clause. App. Br. 18; see, e.g., Atmel Corp. v. Information Storage Devices, Inc., 198 F.3d 1374, 1382 (Fed. Cir. 1999) (for Appeal 2012-010952 Application 12/584,129 10 purposes of a means-plus-function claim one may not rely on an incorporated reference for the supporting structure or material). Thus, for these additional reasons, we agree that the means-plus-function limitations lack sufficient disclosure of structure under 35 U.S.C. § 112 ¶ 6 and sustain the Examiner’s rejection of claims 1, 2, and 11–14 as indefinite under 35 U.S.C. § 112 ¶ 2. 35 U.S.C. § 112, first paragraph – Written Description Claims 1, 2, and 11–14 are rejected under 35 U.S.C. § 112, first paragraph, as failing to comply with the written description requirement. Final Act. 4–5; Ans. 5; App. Br. 7. The Examiner found that the Specification is silent with respect to what structure constitutes an adequate “means,” and thus fails to reasonably convey to one skilled in the art what it was that Applicants possessed and considered to be the invention. Final Act. 4. Appellants cite to the same sections of the Specification referred to above and argue that one skilled in the art would understand that the recitation of a computer processor in the Specification is adequate disclosure of the means in the claims. App. Br. 19. For the reasons stated above, we agree that the Specification does not provide a written description of the structures corresponding to the means limitations and sustain the Examiner’s rejection of claims 1, 2 and 11–14 under 35 U.S.C. § 112, first paragraph. 35 U.S.C. § 103(a) The Examiner rejected claims 1, 2, 11–14, 31, and 61–68 under 35 U.S.C. § 103(a) as unpatentable over Davis, Lamson, and Dacosta. Final Act. 7. Appeal 2012-010952 Application 12/584,129 11 Claim 31 Appellants contend that the Examiner failed to establish a prima facie case of unpatentability of claim 31 because the cited art “does not recite the text of Appellant’s claims at issue, and hence fails to establish a prima facie case of unpatentability.” App. Br. 22; see also id. at 36. In particular, Appellants contend that the cited art, Davis, Lamson, and Dacosta, do not recite the text “accepting an indication of memory-dampening agent use” and “altering an artificial sensory experience to modify at least one effect of the memory-dampening agent, where each step is performed on a suitable microprocessor.” See, e.g., App. Br. 34–36, 41–45, 41–50. Appellants further argue that the Examiner has not provided any “objectively verifiable evidence” as to how Davis, Lamson, or Dacosta could be modified to teach the accepting or altering clauses of claim 31. Appellants also charge that 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 the cited technical material teaches. See, e.g., id. at 40–41, 46. 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 41, 46, 51. Appellants also argue that combining the teachings of Davis, Lamson, and Dacosta would require substantial reconstruction and redesign of the elements shown in Davis, as well as a change in the basic principle under which Davis was designed to operate, and that the combination of Davis, Appeal 2012-010952 Application 12/584,129 12 Lamson, and Dacosta would render the references unsatisfactory for their intended purpose. App. Br. 53–57. 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).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 Davis, Lamson, and Dacosta 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 Davis, Lamson, and Dacosta and the accompanying explanations provided by the Examiner, 3 Appellants’ Supplemental Reply Brief filed July 19, 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 2012-010952 Application 12/584,129 13 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 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 reference, 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 Davis, Lamson, or Dacosta, or the claim language. We reject Appellants’ argument that the Examiner must demonstrate that the identical language of rejected claims appears in the cited reference in order for the reference to establish a prima facie case of unpatentability. The test of whether a reference teaches or suggests a claim limitation is not Appeal 2012-010952 Application 12/584,129 14 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.”) 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 substantive 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.”)). Appeal 2012-010952 Application 12/584,129 15 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 Davis, and then make non-specific assertions of error without providing any substantive argument indicating why the Examiner’s proposed combination of Davis, Lamson, and Dacosta 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 31. Claims 1, 61, 62, and 66 Appellants argue that independent claims 1, 61, 62, and 66 contain similar recitations as claim 31 and are not obvious for at least the same reasons. App. Br. 58. We affirm the rejection of claims 1, 61, 62, and 66 for the same reasons we affirm the rejection of independent claim 31. Claims 2 and 11–14, Appellants separately argue claims 2 and 11–14, but rely upon arguments similar to those made with respect to independent claim 31. App. Br. 58–62. We affirm the rejection of claims 2, 11–14, and 12 for the same reasons we affirm the rejection of independent claim 31. Claims 63–65 and 67–68 Appellants do not present separate arguments directed to claims 63– 65 and 67–68, which depend directly or indirectly upon claims 62 and 66. Appeal 2012-010952 Application 12/584,129 16 App. Br. 62. As such, we also sustain the rejection of dependent claims 63– 65 and 67–68. DOUBLE-PATENTING REJECTIONS Appellants contend the Examiner erred in rejecting claims 1, 2, 11– 14, 31, and 61–68 for obviousness-type double patenting. App. Br. 63–65. 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 applications teach, (2) the cited copending references do not literally recite what PTO asserts would have been “obvious” based on their disclosures, (3) that PTO must have relied on “personal knowledge” or taken improper “official notice” of one or more factors to reach its assertions. App. Br. 65. By failing to identify, with any 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 do. As such, the Examiner’s double patenting rejections are sustained. DECISION The indefiniteness rejection of claims 1, 2, and 11–14 under 35 U.S.C. § 112 ¶ 2 is affirmed. The written description rejection of claims 1, 2, and 11–14 under 35 U.S.C. § 112 ¶ 2 is affirmed. The obviousness rejection of claims 1, 2, 11–14, 31, and 61–68 under 35 U.S.C. § 103(a) is affirmed. Appeal 2012-010952 Application 12/584,129 17 The provisional-type non-statutory double patenting rejections of claims 1, 2, 11–14, 31, and 61–68 are affirmed. The non-statutory obviousness-type double patenting rejection of claims 1, 12–14, and 31 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 cdc Copy with citationCopy as parenthetical citation