Ex Parte Leuthardt et alDownload PDFPatent Trial and Appeal BoardMay 27, 201612462344 (P.T.A.B. May. 27, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 12/462,344 07/31/2009 44765 7590 06/01/2016 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. 0208-002-001-CP 1 CP7 6599 EXAMINER HARWARD, SOREN T ART UNIT PAPER NUMBER 1631 NOTIFICATION DATE DELIVERY MODE 06/01/2016 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. Appeal2014-000445 Application 12/462,344 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 35 and 69-76. App. Br. 9-10; Final Act. 3--4. Claims 1- 13, 16, 17, and20-32 are withdrawn. Final Act. 3. Claims 14, 15, 18, 19, 33, 34, and 36---68 are cancelled. Final Act. 3. 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. Appeal2014-000445 Application 12/462,344 Appellants' invention is directed generally to a computer implemented method comprising accepting an indication of a schedule for administration of a memory-dampening agent and presenting an indication of an artificial sensory experience based at least in part on accepting the indication of the schedule for administration of the memory-dampening agent, as well as to related systems and computer program products. Abstract. Claims 35, 69, 70, and 74 are independent. Claim 35 is the focus of Appellants' brief and is reproduced below: 35. A computer-implemented method, comprising: accepting an indication of a schedule for administration of a memory-dampening agent to an individual; and presenting an indication of an artificial sensory experience at least partly based on the accepting an indication of the schedule for administration of the memory-dampening agent to an individual. App. Br. 65 (Claims App.). THE REJECTIONS ON APPEAL Claims 35 and 69--76 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) ("Calhoun") and Davis et al. (US 2006/0252761 Al, published Nov. 9, 2006) ("Davis"). Final Act. 4---6. Claim 35 is provisionally rejected on the ground of non-statutory obviousness-type double patenting as being unpatentable over claim 77 of co-pending Application No. 12/462,404. Final Act. 8. 2 Appeal2014-000445 Application 12/462,344 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 USC§ 103(a) The Examiner rejected claims 35 and 69-76 under 35 U.S.C. § 103(a) as over Calhoun and Davis. Final Act. 4---6. Claim 35 Appellants contend that the Examiner failed to establish a prima facie case of unpatentability of claim 35 because the cited art "fails to recite" several terms found in claim 75. See, e.g., App. Br. 34--37. Appellants further argue that the Examiner has not provided any "objectively verifiable evidence'; that Calhoun and Davis teach the limitations of claim 35 (see, e.g. id. at 35--48) or how to incorporate the structures of Davis with the Calhoun technologies (see, e.g., id. at 48-56). 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 41. 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. Appellants also argue that Examiner's stated rationale for combining Calhoun and Davis is conclusory and lacks evidentiary support, that 3 Appeal2014-000445 Application 12/462,344 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. See, e.g., id. at 48-56. 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 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 Calhoun 2 Appellants' Reply Brief, filed September 17, 2013, cites to In re Jung, and states that "[i]n the event that the Board cannot read the Appeal Brief vocabulary as consistent with [Jung's] notice-theory of the prima facie case, Appellant respectfully requests that the Board notify Appellant and allow Appellant to file a Revised Appeal Brief wherein the vocabulary is modified to overtly state that Appellant has carried the burden of establishing that the claims are patentable over the art." Reply Br. 3 (emphasis omitted). However, Jung was decided on March 28, 2011 and was controlling case law when the Appeal Brief was filed in March 2013. Appellants have not provided any persuasive argument as to why Appellants' arguments relating to Jung were not presented in Appellants' opening brief. 4 Appeal2014-000445 Application 12/462,344 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 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 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 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, 5 Appeal2014-000445 Application 12/462,344 error in the Examiner's interpretations of Calhoun or Davis or the claim language. We reject Appellants' argument that the Examiner must demonstrate 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");AkzoN.V. v. US. Int'! Trade Comm'n, 808F.2d1471, 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 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 6 Appeal2014-000445 Application 12/462,344 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 Examiner has not articulated a sufficient rationale to support a conclusion of obviousness and that 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. See e.g., App. Br. 48-56. 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 Calhoun and Davis would change the references' principle of operation or render the references unfit for their intended purpose. See e.g., id. Instead, we find the Examiner has articulated reasoning with rational underpinning to support the conclusion of obviousness, and that conclusion remains unrebutted by Appellants. See, e.g., Final Act. 5-6. Accordingly, we affirm the rejection of claim 35. Claims 69, 70, and 74 Appellants argue independent claims 69, 70, and 74 contain similar recitations as independent claim 35 and are patentable for at least the same reasons. App. Br. 56-57. As we sustained the rejection of claim 35, this argument is not persuasive and we sustain the rejection of independent claims 69, 70, and 74. 7 Appeal2014-000445 Application 12/462,344 Claims 71-73, 75, and 76 Appellants argue that dependent claims 71-73, 75, and 76 depend directly or indirectly from independent claims 70 and/or 74 and are patentable for at least the reasons why independent claims 70 and/or 74 are patentable. App. Br. 57. As we sustained the rejection of claims 70 and 74, this argument is not persuasive. PROVISIONAL OBVIOUSNESS-TYPE DOUBLE-PATENTING Appellants contend the Examiner erred in rejecting claim 35 for obviousness-type double patenting. App. Br. 10. 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 rejection, Appellants' argument amounts to nothing more than a request for a de nova review of the Examiner's findings, which we decline to perform. As such, we do not disturb the Examiner's double patenting rejection. DECISION The obviousness rejection of claims 35 and 69-76 under 35 U.S.C. § 103(a) is affirmed. 8 Appeal2014-000445 Application 12/462,344 We do not disturb the provisional-obviousness type non-statutory double patenting rejection of claim 35. 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 9 Copy with citationCopy as parenthetical citation