Ex parte Siemers

Board of Patent Appeals and Interferences

May 10, 1999

08584158 (B.P.A.I. May. 10, 1999)

Application for patent filed January 11, 1996. 1
According to the appellant, the application is a continuation
of Application No. 08/176,802, filed January 3, 1994, now
abandoned.
We note that the appellant has requested an oral hearing2
(part of Paper No. 23, filed May 11, 1998), but under the
circumstances a hearing is not considered necessary. See 37
CFR § 1.194(c), last sentence, as amended effective Dec. 1,
(continued...)
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered today (1) was not written
for publication in a law journal and (2) is not binding precedent of the Board.
Paper No. 25
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte DONNA L. SIEMERS
____________
Appeal No. 1998-2849
Application No. 08/584,1581
____________
ON BRIEF
____________
Before CALVERT, MEISTER, and NASE, Administrative Patent Judges.
NASE, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the examiner's final
rejection of claims 35 through 74, which are all of the claims
pending in this application.2
Appeal No. 1998-2849 Page 2
Application No. 08/584,158
(...continued)2
1997, by final rule notice, 62 Fed. Reg. 53131 (Oct. 10,
1997), 1203 Off. Gaz. Pat. Office 63, (Oct. 21, 1997).
We REVERSE and enter a new rejection pursuant to 37 CFR
§ 1.196(b).
BACKGROUND
The appellant's invention relates to a method or game
process for measurement of the emotional distance between two
or more preselected individuals. A copy of the claims under
appeal appears in the appendix to the appellant's brief.
The prior art reference of record relied upon by the
examiner in rejecting the appealed claims is:
Wright 4,893,819 Jan. 16,
1990
Claims 35 through 74 stand rejected under 35 U.S.C. § 101
as being drawn to non-statutory subject matter.
Claims 35 through 74 stand rejected under 35 U.S.C. §
112, first paragraph, as the specification, as originally
Appeal No. 1998-2849 Page 3
Application No. 08/584,158
filed, does not provide support for the invention as is now
claimed.
Claims 35 through 74 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 the appellant regards as the invention.
Claims 35 through 37, 39 and 41 stand rejected under
35 U.S.C. § 102(b) as being anticipated by Wright.
Claims 38, 40 and 42 through 61 stand rejected under
35 U.S.C. § 103 as being unpatentable over Wright.
Rather than reiterate the conflicting viewpoints advanced
by the examiner and the appellant regarding the above-noted
rejections, we make reference to the final rejection in the
parent application (Paper No. 8, mailed February 6, 1995), the
final rejection in this application (Paper No. 16, mailed July
2, 1996) and the examiner's answer (Paper No. 22, mailed March
9, 1998) for the examiner's complete reasoning in support of
Appeal No. 1998-2849 Page 4
Application No. 08/584,158
the rejections, and to the appellant's brief (Paper No. 19,
filed June 3, 1997) and reply brief (Paper No. 23, filed May
11, 1998) for the appellant's arguments thereagainst.
OPINION
In reaching our decision in this appeal, we have given
careful consideration to the appellant's specification and
claims, to the applied prior art reference, and to the
respective positions articulated by the appellant and the
examiner. As a consequence of our review, we make the
determinations which follow.
The indefiniteness issues
We will not sustain the rejection of claims 35 through 74
under 35 U.S.C. § 112, second paragraph.
The second paragraph of 35 U.S.C. § 112 requires claims
to set out and circumscribe a particular area with a
reasonable degree of precision and particularity. In re
Johnson, 558 F.2d 1008, 1015, 194 USPQ 187, 193 (CCPA 1977).
In making this determination, the definiteness of the language
Appeal No. 1998-2849 Page 5
Application No. 08/584,158
employed in the claims must be analyzed, not in a vacuum, but
always in light of the teachings of the prior art and of the
particular application disclosure as it would be interpreted
by one possessing the ordinary level of skill in the pertinent
art. Id.
The examiner's focus during examination of claims for
compliance with the requirement for definiteness of 35 U.S.C.
§ 112, second paragraph, is whether the claims meet the
threshold requirements of clarity and precision, not whether
more suitable language or modes of expression are available.
Some latitude in the manner of expression and the aptness of
terms is permitted even though the claim language is not as
precise as the examiner might desire. If the scope of the
invention sought to be patented can be determined from the
language of the claims with a reasonable degree of certainty,
a rejection of the claims under 35 U.S.C. § 112, second
paragraph, is inappropriate.
With this as background, we find ourselves in agreement
with the appellant's position (brief, pp. 18-20) that the
Appeal No. 1998-2849 Page 6
Application No. 08/584,158
claims under appeal are not indefinite for the reasons set
forth by the examiner in his specific objections set forth in
the final rejection in the parent application (Paper No. 8).
In that regard, it is our opinion that the metes and bounds of
the terms used in the claims on appeal (e.g., emotional
distance, behavior type category, etc.) would be known with a
reasonable degree of precision and particularity in view of
the teachings of the originally filed application disclosure
as it would be interpreted by one possessing the ordinary
level of skill in the pertinent art. Accordingly, the
decision of the examiner to reject claims 35 through 74 under
35 U.S.C. § 112, second paragraph, is reversed.
Appeal No. 1998-2849 Page 7
Application No. 08/584,158
The written description issue
We will not sustain the rejection of claims 35 through 74
under 35 U.S.C. § 112, first paragraph.
The test for determining compliance with the written
description requirement is whether the disclosure of the
application as originally filed reasonably conveys to the
artisan that the inventor had possession at that time of the
later claimed subject matter, rather than the presence or
absence of literal support in the specification for the claim
language. See Vas-Cath, Inc. v. Mahurkar, 935 F.2d 1555,
1563-64, 19 USPQ2d 1111, 1116-17 (Fed. Cir. 1991) and In re
Kaslow, 707 F.2d 1366, 1375, 217 USPQ 1089, 1096 (Fed. Cir.
1983).
In addition, the examiner has the initial burden of
presenting evidence or reasons why persons skilled in the art
would not recognize in an applicant's disclosure a description
of the invention defined by the claims. In re Wertheim, 541
F.2d 257, 265, 191 USPQ 90, 98 (CCPA 1976); Ex parte Sorenson,
3 USPQ2d 1462, 1463 (Bd. Pat. App. & Int. 1987).
Appeal No. 1998-2849 Page 8
Application No. 08/584,158
In our view, the examiner has not met this initial burden
of presenting evidence or reasons why persons skilled in the
art
would not recognize in the appellant's disclosure a
description of the invention defined by the claims. In this
regard, we note that the examiner has not (1) identified the
claim limitation not described; and (2) provided reasons why
persons skilled in the art at the time the application was
filed would not have recognized the description of the claimed
limitations in the disclosure of the application as filed.
We have reviewed the specific concern stated by the
examiner in this rejection (i.e., the addition of two
paragraphs to pages 16 and 26 of the specification), but find
nothing therein which supports a rejection based upon the
written description requirement of 35 U.S.C. § 112, first
paragraph. In this case, the examiner has not even identified
the specific language in those paragraphs that constitutes the
alleged "new matter." In any event, it is our opinion that
the meaning of the claimed phrase "emotional distance" as
understood by one of ordinary level of skill in the art is not
Appeal No. 1998-2849 Page 9
Application No. 08/584,158
altered by these two paragraphs. Thus, there is no basis for
a rejection of claims 35 through 74 based upon the written
description requirement of 35 U.S.C.
§ 112, first paragraph.
For the reasons stated above, the decision of the
examiner to reject claims 35 through 74 under 35 U.S.C. § 112,
first paragraph, is reversed.
The non-statutory subject matter issue
We will not sustain the rejection of claims 35 through 74
under 35 U.S.C. § 101.
Section 101 of title 35, United States Code, provides:
Whoever invents or discovers any new and useful process,
machine, manufacture, or composition of matter, or any
new and useful improvement thereof, may obtain a patent
therefor, subject to the conditions and requirements of
this title.
The Supreme Court has held that Congress chose the
expansive language of 35 U.S.C. § 101 so as to include
Appeal No. 1998-2849 Page 10
Application No. 08/584,158
"anything under the sun that is made by man." Diamond v.
Chakrabarty, 447 U.S. 303, 308-09 (1980).
This perspective has been embraced by the Federal
Circuit:
The plain and unambiguous meaning of 101 is that any new
and useful process, machine, manufacture, or composition
of matter, or any new and useful improvement thereof, may
be patented if it meets the requirements for
patentability set forth in Title 35, such as those found
in ' 102, 103, and 112. The use of the expansive term
"any" in 101 represents Congress's intent not to place
any restrictions on the subject matter for which a patent
may be obtained beyond those specifically recited in 101
and the other parts of Title 35. . . . Thus, it is
improper to read into 101 limitations as to the subject
matter that may be patented where the legislative history
does not indicate that Congress clearly intended such
limitations. [In re Alappat, 33 F.3d 1526, 1542, 31
USPQ2d 1545, 1556 (Fed. Cir. 1994) (in banc)]
As cast, 35 U.S.C. § 101 defines four categories of
inventions that Congress deemed to be the appropriate subject
matter of a patent; namely, processes, machines, manufactures
and compositions of matter. The latter three categories
define "things" while the first category defines "actions"
(i.e., inventions that consist of a series of steps or acts to
be performed). See 35 U.S.C. § 100(b) ("The term 'process'
Appeal No. 1998-2849 Page 11
Application No. 08/584,158
means process, art, or method, and includes a new use of a
known process, machine, manufacture, composition of matter, or
material.").
The Supreme Court has identified three categories of
subject matter that are unpatentable, namely "laws of nature,
natural phenomena, and abstract ideas." Diamond v. Diehr, 450
U.S. 175, 185 (1981).
In this case, the claims under appeal are clearly drawn
to a process and thus constitute statutory subject matter
under
35 U.S.C. § 101. In addition, we note that, contrary to the
opinion of the examiner, the mere fact that some of the
process steps set forth in the claims under appeal require the
intervention of an individual (i.e., a human being) to perform
does not make the claimed subject matter non-statutory.
For the reasons set forth above, the decision of the
examiner to reject claims 35 through 74 under 35 U.S.C. § 101
is reversed.
Appeal No. 1998-2849 Page 12
Application No. 08/584,158
The anticipation issue
We will not sustain the rejection of claims 35 through
37, 39 and 41 under 35 U.S.C. § 102(b).
To support a rejection of a claim under 35 U.S.C. §
102(b), it must be shown that each element of the claim is
found, either expressly described or under principles of
inherency, in a single prior art reference. See Kalman v.
Kimberly-Clark Corp., 713 F.2d 760, 772, 218 USPQ 781, 789
(Fed. Cir. 1983), cert. denied, 465 U.S. 1026 (1984).
We agree with the appellant's argument (brief, pp. 21-22)
that the methods disclosed by Wright are quite different from
the method set forth in claims 35 through 37, 39 and 41.
Specifically, it is our opinion that steps (b), (d) and (e) of
independent claim 35 are not disclosed by Wright.
Since all the limitations of claims 35 through 37, 39 and
41 are not found in Wright for the reasons set forth above,
the decision of the examiner to reject claims 35 through 37,
39 and 41 under 35 U.S.C. § 102(b) is reversed.
Appeal No. 1998-2849 Page 13
Application No. 08/584,158
The obviousness issue
We will not sustain the rejection of claims 38, 40 and 42
through 61 under 35 U.S.C. § 103.
In rejecting claims under 35 U.S.C. § 103, the examiner
bears the initial burden of presenting a prima facie case of
obviousness. See In re Rijckaert, 9 F.3d 1531, 1532, 28
USPQ2d 1955, 1956 (Fed. Cir. 1993). A prima facie case of
obviousness is established by presenting evidence that the
reference teachings would appear to be sufficient for one of
ordinary skill in the relevant art having the references
before him to make the proposed combination or other
modification. See In re Lintner, 458 F.2d 1013, 1016, 173
USPQ 560, 562 (CCPA 1972). Furthermore, the conclusion that
the claimed subject matter is prima facie obvious must be
supported by evidence, as shown by some objective teaching in
the prior art or by knowledge generally available to one of
ordinary skill in the art that would have led that individual
to combine the relevant teachings of the references to arrive
at the claimed invention. See In re Fine, 837 F.2d 1071,
1074, 5 USPQ2d 1596, 1598 (Fed. Cir. 1988).
Appeal No. 1998-2849 Page 14
Application No. 08/584,158
We agree with the appellant's argument (brief, p. 23)
that Wright does not teach or suggest the claimed subject
matter set forth in claims 38, 40 and 42 through 61.
Specifically, it is our opinion that steps (b), (d) and (e) of
independent claim 35, steps (b), (d), (e) and (f) of
independent claim 49, and steps (b), (d), (e), (f) and (g) of
independent claim 59 would not have been obvious to one of
ordinary skill in the art at the time the invention was made
from Wright's disclosure.
For the reasons stated above, the decision of the
examiner to reject claims 38, 40 and 42 through 61 under 35
U.S.C. § 103 is reversed.
Appeal No. 1998-2849 Page 15
Application No. 08/584,158
New ground of rejection
Under the provisions of 37 CFR § 1.196(b), we enter the
following new ground of rejection.
Claim 57 is rejected under 35 U.S.C. § 112, fourth
paragraph, as being of improper dependent form for failing to
further limit the subject matter of a previous claim.
35 U.S.C. § 112, fourth paragraph, states
Subject to the following paragraph, a claim in dependent
form shall contain a reference to a claim previously set
forth and then specify a further limitation of the
subject matter claimed. A claim in dependent form shall
be construed to incorporate by reference all the
limitations of the claim to which it refers.
A claim that incorporates by reference all of the subject
matter of another claim, that is, the claim is not broader in
any respect, to be in compliance with the fourth paragraph of
35 U.S.C. § 112. See Ex parte Porter, 25 USPQ2d 1144 (Bd.
Pat. App. & Int. 1992) and Ex parte Moelands, 3 USPQ2d 1474
((Bd. Pat. App. & Int. 1987).
Appeal No. 1998-2849 Page 16
Application No. 08/584,158
Claim 57 recites
The method as set forth in claim 56, wherein the step of
recording a preferred response from said selection of
possible responses from each of said two or more
preselected individuals is replaced by the step of
requiring each of said two or more preselected
individuals to provide their own preferred response.
[emphasis ours]
It is our determination that the appellant's use of the
phrase "is replaced by" in claim 57 causes claim 57 to violate
the fourth paragraph of 35 U.S.C. § 112. In that regard, the
phrase "is replaced by" in claim 57 causes claim 57 to not
include all the limitations of the claim to which it refers.
CONCLUSION
To summarize, the decision of the examiner to reject
claims 35 through 74 under 35 U.S.C. § 101 is reversed; the
decision of the examiner to reject claims 35 through 74 under
35 U.S.C.
§ 112, first paragraph, is reversed; the decision of the
examiner to reject claims 35 through 74 under 35 U.S.C. § 112,
second paragraph, is reversed; the decision of the examiner to
Appeal No. 1998-2849 Page 17
Application No. 08/584,158
reject claims 35 through 37, 39 and 41 under 35 U.S.C. §
102(b) is reversed; the decision of the examiner to reject
claims 38, 40 and 42 through 61 under 35 U.S.C. § 103 is
reversed; and a new rejection of claim 57 under 35 U.S.C. §
112, fourth paragraph, has been added pursuant to provisions
of 37 CFR § 1.196(b).
This decision contains a new ground of rejection pursuant
to 37 CFR § 1.196(b)(amended effective Dec. 1, 1997, by final
rule notice, 62 Fed. Reg. 53131, 53197 (Oct. 10, 1997), 1203
Off. Gaz. Pat. Office 63, 122 (Oct. 21, 1997)). 37 CFR §
1.196(b) provides that, "A new ground of rejection shall not
be considered final for purposes of judicial review."

37 CFR § 1.196(b) also provides that the appellant,
WITHIN TWO MONTHS FROM THE DATE OF THE DECISION, must exercise
one of the following two options with respect to the new
Appeal No. 1998-2849 Page 18
Application No. 08/584,158
ground of rejection to avoid termination of proceedings
(§ 1.197(c)) as to the rejected claims:
(1) Submit an appropriate amendment of the
claims so rejected or a showing of facts relating to
the claims so rejected, or both, and have the matter
reconsidered by the examiner, in which event the
application will be remanded to the examiner. . . .
(2) Request that the application be reheard
under § 1.197(b) by the Board of Patent Appeals and
Interferences upon the same record. . . .
Appeal No. 1998-2849 Page 19
Application No. 08/584,158
No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a).
REVERSED; 37 CFR § 1.196(b)
IAN A. CALVERT )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
JAMES M. MEISTER ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
JEFFREY V. NASE )
Administrative Patent Judge )
Appeal No. 1998-2849 Page 20
Application No. 08/584,158
R. REAMS GOODLOE, JR.
10725 S.E. 256th STREET, SUITE 3
KENT, WA 98031-6426
APPEAL NO. 1998-2849 - JUDGE NASE
APPLICATION NO. 08/584,158
APJ NASE
APJ CALVERT
APJ MEISTER
DECISION: REVERSED;
37 CFR § 1.196(b)
Prepared By: Gloria Henderson
DRAFT TYPED: 05 May 99
FINAL TYPED:
Gloria: Change the order of the panel.