John S. Conti Kilmer et al.

Patent Trials and Appeals Board

Dec 17, 2020

2018008730 (P.T.A.B. Dec. 17, 2020)

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.
14/625,430 02/18/2015 John S. Conti Kilmer P9457US00 2215
168042 7590 12/17/2020
Insigne LLP
201 N. Union Street, Suite 110
Alexandria, VA 22314
EXAMINER
CWERN, JONATHAN
ART UNIT PAPER NUMBER
3793
NOTIFICATION DATE DELIVERY MODE
12/17/2020 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):
docket@insigne.law
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
________________

Ex parte JOHN S. CONTI KILMER,
WILLIAM D’ALELIO,
JEFF HAYES, and ANDREW RAMSEY
________________

Appeal 2018-008730
Application 14/625,430
Technology Center 3700
_

Before CHARLES N. GREENHUT, MICHAEL L. HOELTER, and
JAMES P. CALVE, Administrative Patent Judges.

HOELTER, Administrative Patent Judge.

DECISION ON REQUEST FOR REHEARING

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Application 14/625,430

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STATEMENT OF THE CASE
Appellant filed a Request for Rehearing (“Req. Reh’g”) October 26,
2020, of the Decision on Appeal mailed August 25, 2020 (“Decision”).1
This Decision affirmed the Examiner’s rejection of claims 1–4 and 6–22
under 35 U.S.C. § 112(a) as failing to comply with the written description
requirement.2 See Decision 18. This Decision also affirmed the Examiner’s
rejection of claims 1–4 and 6–16 under 35 U.S.C. § 101 because the claimed
invention is directed to a judicial exception (i.e., a law of nature, a natural
phenomenon, or an abstract idea) without significantly more. See Decision
18. “Appellant notes that claims 17–22 are not subject to the rejection under
35 U.S.C. [§] 101.” Req. Reh’g 2. “Appellant requests that the Board
reconsider its findings and decision regarding the alleged lack of written
description, especially as to claims 17–22, for the reasons set forth below.”
Req. Reh’g 2.
Upon consideration of Appellant’s Request, we do not modify our
opinion.

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. Appellant identifies Future Life, Inc., as the real party in
interest. Appeal Br. 1.
2 The Examiner rejected these claims because both independent claim 1 and
claim 17 included the limitation “an emotional recognition algorithm.” Final
Act. 2. The Examiner explained that this term “was not described in the
specification in such a way as to reasonably convey . . . that the inventor or a
joint inventor . . . had possession of the claimed invention.” Final Act. 3.
To be clear, the Examiner reviewed Appellant’s Specification and concluded
that it “only broadly describes what the algorithm is intended to achieve,
without any detail of the steps of the algorithm which are performed in order
to achieve this outcome.” Final Act. 3.
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REQUIREMENTS OF A REQUEST FOR REHEARING
A request for rehearing “must state with particularity the points
believed to have been misapprehended or overlooked by the [Patent Trial
and Appeal Board, hereinafter “Board”].” See 37 C.F.R. § 41.52(a)(1). This
section also states that arguments not raised in the briefs before the Board
and evidence not previously relied upon in the briefs “are not permitted in
the request for rehearing except as permitted by paragraphs (a)(2) through
(a)(4) of this section.”3 In addition, a request for rehearing is not an
opportunity to express disagreement with a decision without setting forth
points believed to have been misapprehended or overlooked by the Board in
rendering its Decision. The proper course for an Appellant dissatisfied with
a Board decision is to seek judicial review, not to file a request for rehearing
to reargue issues that have already been decided. See 35 U.S.C. §§ 141, 145.
ANALYSIS
“Initially, Appellant is concerned that the Examiner's interpretation of
the claim term “algorithm” is unduly limiting.” Req. Reh’g 2. Appellant
thereafter proposes a definition of “a step-by-step procedure for solving a
problem or accomplishing some end.” Req. Reh’g 2 (referencing “Merriam-
Webster's Online Dictionary”). Appellant contends that the claim term
“algorithm” “is more properly understood to relate to” the “step-by-step
procedure” definition. Req. Reh’g 3.
The definition of the term “algorithm” was not at issue in the earlier
proceedings, and it is not clear where the Examiner or Appellant presented

3 See 37 C.F.R. § 41.52(a)(3) which states, “[n]ew arguments responding to a
new ground of rejection designated pursuant to [section] 41.50(b) are
permitted.”
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conflicting definitions to employ. As such, it is not understood how such an
issue (i.e., the Examiner is employing an improper definition) can be said to
have been misapprehended or overlooked by the Board if such disagreement
was not previously raised or discussed. Furthermore, the Examiner’s written
description rejection did not hinge on the definition of this term, but instead
upon the Examiner’s finding that Appellant’s Specification “only broadly
describes what the algorithm is intended to achieve, without any detail of the
steps of the algorithm which are performed in order to achieve this
outcome.” Final Act. 3; see also Decision 3 (citing Spec. ¶¶ 44–49).
Accordingly, Appellant’s “concern” regarding the definition
employed does not state with particularity any points believed to have been
misapprehended or overlooked by the Board. Req. Reh’g 1.
Appellant also disagrees with the Board’s citation, in the Decision, to
Fiers v. Revel, 984 F.2d 1164, 1171 (Fed. Cir. 1993). See Req. Reh’g 4; see
also Decision 3. Appellant contends that the language quoted “is merely
dicta; a statement of policy, not law” and that such quote “is inapposite” to
the earlier case of Vas-Cath, Inc. v. Mahurkar, 935 F.2d 1555 (Fed. Cir.
1991). Req. Reh’g 4. Appellant does not explain why the Board’s reliance
on the more current Fiers case was inappropriate or ill-chosen, only that
Appellant desires to instead rely upon Vas-Cath so that “the written
description requirement is satisfied if the language of the [S]pecification is
sufficient to enable the skilled artisan to make and use the invention.” Req.
Reh’g 5.
However, even should Appellant’s paraphrasing of Vas-Cath above be
the current understanding of the law as it relates to written description
matters, Appellant does not identify other sections of the Specification to
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review, or attempt to show that the Examiner (and the Board) erred when
concluding that the portions of Appellant’s Specification which were
identified by Appellant “only broadly describes what the algorithm is
intended to achieve, without any detail of the steps of the algorithm which
are [to be] performed in order to achieve this outcome.” Final Act. 3; see
also Decision 5. Again, as above, Appellant does not state with particularity
any points believed to have been misapprehended or overlooked by the
Board when criticizing the Board’s citation to Fiers.
Appellant further states that “[w]hat was not known in the art at the
time of filing is expressed in the claims of the present application.” Req.
Reh’g 5. Here, Appellant identifies “a system in which a patient and a
therapist are connected” and also “an algorithm which assesses the patient’s
emotional state [that] is encoded in the patient’s computer or connection
device.” Req. Reh’g 5–6. However, the Examiner is not disputing that
independent claim 17 (or claim 1 for that matter) recites an algorithm on the
patient’s computer, but instead, the Examiner finds that Appellant’s
Specification does not provide proper written description support for such
algorithm. See Final Act. 3. The Board agreed with the Examiner’s
assessment for the reasons stated. See Decision 4–5. Accordingly,
Appellant’s contention above regarding “[w]hat was not known in the art at
the time of filing” is not indicative that the Board misapprehended or
overlooked a written description argument presented by Appellant.
Appellant additionally contends that the Examiner focused upon
Appellant’s “failure to disclose a mathematically described emotional
recognition algorithm.” Req. Reh’g 6. However, nowhere does Appellant
identify where the Examiner required the algorithm to be described with
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mathematical precision. Again, Appellant’s contention is not indicative that
the Board misapprehended or overlooked an argument made by Appellant.
Appellant also alleges that skilled persons were “enabled to write the
computer code necessary to accomplish the method and product of the
present claims.” Req. Reh’g 6. However, the rejection before us is one
based on written description found in Appellant’s Specification, not
enablement. See Final Act. 3. In other words, Appellant does not identify
any portion, or provide any additional interpretation, of Appellant’s
Specification that might show that, indeed, Appellant’s Specification itself
had the requisite support to demonstrate Appellant was in possession of the
recited “emotional recognition algorithm.” Accordingly, Appellant’s
contention is not indicative that the Board misapprehended or overlooked an
argument previously presented by Appellant. In a similar vein, Appellant
addresses “best mode,” but this topic is not germane to the written
description matter presently under consideration, and is not indicative of the
Board misapprehending or overlooking an argument previously made. Req.
Reh’g 8.
Appellant further contends that “the relevant case law would seem to
support sufficient written description for computer related inventions upon
recitation of the function of the invention.” Req. Reh’g 9. This “upon
recitation of the function of the invention” is the crux of the matter at hand.
The Examiner, upon consulting Appellant’s Specification, concluded that
there was insufficient discussion of the function or manner by which the
algorithm is to perform or operate, as contrasted to the end result the
algorithm is to achieve. See Final Act. 3. As stated in the Decision, “[a]n
express listing of computer source code may not be required but Appellant’s
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Specification must provide a detailed enough algorithm [i.e., a “step-by-step
procedure” using Appellant’s definition above] to explain ‘how the
inventor[s] intended the function to be performed.’” Decision 7 (quoting
MPEP § 2161.01 (I)); see also Examining Computer-Implemented
Functional Claim Limitations for Compliance With 35 U.S.C. 112. 84 Fed.
Reg. 57 (Jan. 7, 2019) (discussing, inter alia, MPEP § 2161.01 (I)). It is that
explanation or methodology that we agree with the Examiner is missing.
Accordingly, and based on the record presented, we are not informed
of an argument that the Board may have misapprehended or overlooked.

DECISION
Accordingly, Appellant’s Request for Rehearing has been granted to
the extent that the Board reconsidered its Decision in light of the statements
made in this Request, but is denied with respect to the Board making any
modification to the Decision.

Outcome of Decision on Rehearing:
Claim(s)
Rejected
35 U.S.C. § Reference(s)/Basis Denied Granted
17–22 112(a) Written Description 17–22

Final Outcome of Appeal after Rehearing:
Claim(s)
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–4, 6–22 112(a) Written Description 1–4, 6–22
1–4 6–16 101 Eligibility 1–4 6–16
Overall
Outcome
1–4, 6–22

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No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).

DENIED