Ex Parte Nerenberg

Board of Patent Appeals and Interferences

May 30, 2012

11733255 (B.P.A.I. May. 30, 2012)

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.
11/733,255 04/10/2007 Arnold Nerenberg NERE-4426 7842
5409 7590 05/31/2012
SCHMEISER, OLSEN & WATTS
22 CENTURY HILL DRIVE
SUITE 302
LATHAM, NY 12110
EXAMINER
GEBREMICHAEL, BRUK A
ART UNIT PAPER NUMBER
3715
MAIL DATE DELIVERY MODE
05/31/2012 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte ARNOLD NERENBERG
____________________

Appeal 2010-010021
Application 11/733,255
Technology Center 3700
____________

Before MURRIEL E. CRAWFORD, ANTON W. FETTING, and
JOSEPH A. FISCHETTI, Administrative Patent Judges.

CRAWFORD, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2010-010021
Application 11/733,255

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STATEMENT OF THE CASE
Appellant seeks our review under 35 U.S.C. § 134 of the Examiner’s
final decision rejecting claims 1-5, 7-37 and 39-50. We have jurisdiction
over the appeal under 35 U.S.C. § 6(b).
Claim 1 is illustrative:
1. A method, comprising instructing a first
person to execute an activity, wherein executing
the activity comprises performing at least one
physical exercise and reciting words during said
performing the at least one physical exercise,
wherein the recited words relate to at least one
goal of the first person, wherein the at least one
goal is unrelated to and not a consequence of the at
least one physical exercise, wherein said
instructing the first person is performed by a
second person, and wherein said instructing results
in an execution of the activity by the first person in
response to said instructing.

Strong US 5,833,587 Nov. 10, 1998
Heikkila US 2002/0091329 A1 Jul. 11, 2002
Albert US 7,063,644 B2 Jun. 20, 2006
Westreich US 2007/0166679 A1 Jul. 19, 2007

Appellant appeals the following rejection(s):
Claims 1-5, 7-37 and 39-50 are rejected under 35 USC § 101 as being
directed to non-statutory subject matter.
Claims 1-5, 7-14, 18, 23-37 and 39-42, and 47 are rejected under 35
U.S.C. § 103(a) as being unpatentable over Westreich.
Claims 15-17 and 43-46 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Westreich in view of Heikkila.
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Application 11/733,255

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Claim 19 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Westreich in view of Albert.
Claims 20-22 and 48-50 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Westreich in view of Strong.

ANALYSIS
Statutory subject matter
We will sustain the Examiner’s rejection of claims 1-5, 7-37 and 39-
50. The law on patent-eligibility for process claims under 35 U.S.C. § 101
has undergone significant clarification since the mailing of the Answer
(2009). Nevertheless, it remains the case that failing to satisfy the machine-
or-transformation test is a factor weighing against the patent eligibility of a
process claim. See Interim Guidance for Determining Subject Matter
Eligibility for Process Claims in View of Bilski v. Kappos, 75 Fed. Reg.
43,922, 43,926 (July 27, 2010). The Examiner states that the processes
recited in the claims fail to pass the machine-or-transformation test. Ans. 3-
4.
The Appellant argues that the claims satisfy the transformation prong
of the machine or transformation test because the physical matter of the first
person is transformed.
We agree and adopt as our own the Examiner’s response to this
argument (Ans. 16-18). In view of the forgoing, we will sustain this
rejection as it is directed to claim 1. We will also sustain this rejection as it
is directed to claims 2-5, 7-37, and 39 because the Appellant does not
separately address the patentability of these claims.
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Application 11/733,255

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We will also sustain the rejection as it is directed to claims 49 and 50.
We are not persuaded of error by the argument of Appellant that these
claims recited statutory subject matter because the claims recite the use of
exercise equipment. We agree with and adopt as our own the Examiner’s
response to this argument (Ans. 19-21). We add, for emphasis only, that
use of exercise equipment does not impose meaningful limits on the claim's
scope and as such does not impact patent-eligibility. See Gottschalk v.
Benson, 409 U.S. 63, at 71-72. In this regard, we note that the claim does
not recite a step of doing anything with exercise equipment rather the claim
recites only the step of instructing.
Obviousness
We will not sustain the Examiner’s rejection of claims 1-5, 7-37 and
39-50 because we agree with the Appellant that Westreich does not disclose
performing at least one physical exercise and reciting words during said
physical exercise , wherein the recited words relate to at least one goal
of the first person, wherein the at least one goal is unrelated to and not a
consequence of the at least one physical exercise. We find that Westreich
discloses performing a physical exercise which relates to the words being
spoken and as such are related to the goal of the person. For instance,
Westreich discloses that the person performs a letter kinesthetically with the
goal of learning the letter.
In view of the foregoing, we will not sustain the Examiner’s rejection
of claim 1 under 35 U.S.C. § 103. We will also sustain the rejection as it is
related to the remaining claims because each of the remaining claims
contains the recitation that the words spoken are unrelated to the goal of the
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Application 11/733,255

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person and because the Examiner relies on Westreich for teaching this
subject matter in each of the rejections.

DECISION
We affirm the Examiner’s rejection under 35 U.S.C. § 101.

We reverse the Examiner’s § 103 rejections.

AFFIRMED

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