Kulangara Sivadas

Patent Trials and Appeals Board

Jun 28, 2021

2020002245 (P.T.A.B. Jun. 28, 2021)

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.
12/931,101 01/24/2011 Kulangara Sivadas 3112
110572 7590 06/28/2021
Kulangara Sivadas
50 Tavella Place
Foothill, CA 92610
EXAMINER
BLOCH, MICHAEL RYAN
ART UNIT PAPER NUMBER
3791
MAIL DATE DELIVERY MODE
06/28/2021 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 PATENT TRIAL AND APPEAL BOARD
Ex parte KULANGARA SIVADAS
Appeal 2020-002245
Application 12/931,101
Technology Center 3700
Before JENNIFER D. BAHR, JOHN C. KERINS, and
CHARLES N. GREENHUT, Administrative Patent Judges.
BAHR, Administrative Patent Judge.
DECISION ON REQUEST FOR REHEARING
STATEMENT OF THE CASE
On May 26, 2021, Appellant1 filed a Request for Rehearing
(hereinafter “Request” or “Req. Reh’g”) under 37 C.F.R. § 41.52 of the
Decision on Appeal (hereinafter “Decision” or “Dec.”) dated March
31, 2021. In the Decision, the Board affirmed the rejection of claims
134–142 under 35 U.S.C. § 112, first paragraph, as failing to comply with
the written description requirement; the rejection of claims 134–142 under

1 We use the term “Appellant” to refer to “applicant” as defined in 37 C.F.R.
§ 1.42. Appellant identifies the real party in interest as Kulangara Sivadas.
Appeal Br. 3.
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35 U.S.C. § 101 as being directed to patent-ineligible subject matter; the
rejection of claims 134–139 under 35 U.S.C. § 103(a) as being unpatentable
over Kishi2 and Greene;3 the rejection of claims 140 and 141 under
35 U.S.C. § 103(a) as being unpatentable over Kishi, Greene, and Le;4 and
the rejection of claim 142 under 35 U.S.C. § 103(a) as being unpatentable
over Kishi, Green, and Levin.5 Dec. 37. The Board reversed the rejection of
claims 134–142 under 35 U.S.C. § 112, first paragraph, as failing to comply
with the enablement requirement. Id.
REQUIREMENTS FOR REQUEST FOR REHEARING
A Request for Rehearing must comply with the following
requirements:
The request for rehearing must state with particularity the
points believed to have been misapprehended or overlooked by
the Board. Arguments not raised, and Evidence not previously
relied upon, pursuant to §§ 41.37, 41.41, or 41.47 are not
permitted in the request for rehearing except as permitted by
paragraphs (a)(2) through (a)(4) of this section.
37 C.F.R. § 41.52(a)(1). For example, “Appellant may present a new
argument based upon a recent relevant decision of either the Board or a
Federal Court.” 37 C.F.R. § 41.52(a)(2). However, a Request for Rehearing
is not an opportunity to rehash arguments raised in the Appeal Brief or in the
Reply Brief. Neither is it an opportunity to merely express disagreement
with a decision without setting forth points believed to have been
misapprehended or overlooked.

2 US 5,311,877, issued May 17, 1994.
3 US 2008/0319335 A1, published Dec. 25, 2008.
4 US 2007/0173733 Al, published July 26, 2007.
5 US 6,167,298, issued Dec. 26, 2000.
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OPINION
Objection to the Specification and Written Description
Appellant requests that the Board reconsider its decision affirming the
rejection of claims 134–142 under 35 U.S.C. § 112, first paragraph, as
failing to comply with the written description requirement in regard to items
d)–f) of claims 134 and 138, as well as the Examiner’s related objection to
the corresponding material added on pages 22–23 of the Specification. See
Req. Reh’g 2. Appellant’s arguments on pages 2–4 of the Request
essentially re-hash arguments made on page 12 of the Appeal Brief.
Appellant points out that block 813 in the flowchart of Figure 8 of the
present application “is a historic data processor.” Id. at 3. Appellant
contends that a person having ordinary skill in the art would recognize that
block 840 in the flow chart of Figure 8 of the present application “has been a
statistical processor disclosed in the Original Specification” and is “part of a
classical digital control system that accumulates and processes past samples
using statistical principles.” Id. at 4. Appellant once again directs our
attention to the disclosure on page 21 of the Specification6 that “after many
days (or weeks or even months) of operating the device at a particular
setting, it gets to a stage where the subject will be able to ‘sense’ (block 840)
the onset of a brooding state and predict a mantra coming, before it is
triggered by the device.” Id. Appellant submits that “[c]ollecting months’
worth of data and running hypothesis tests on them is nothing but ‘statistical
processing of historic data’.” Id.

6 Paragraph 121 of US 2012/0029379 A1 (the publication of the present
application) corresponds to the last paragraph on page 21 of the
Specification.
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Appellant does not direct our attention to any disclosure in the
Original Specification, submitted January 24, 2011, or the drawings of the
present application, that supports Appellant’s assertion that a person having
ordinary skill in the art would recognize that block 840 is a statistical
processor that is part of a digital control system that accumulates and
processes past samples. Although Appellant’s Specification and drawings
disclose collecting and processing data, in blocks 800 and 810, for example,
Appellant’s Original Specification does not associate such a function with
block 840. As explained in the Decision:
The Original Specification discloses that, after some period “of
operating the device at a particular setting, it gets to a stage
where the subject will be able to ‘sense’ (block 840) the onset
of a brooding state and predict a mantra coming, before it is
triggered by the device.” Id. at 21. According to the
Specification, this happens because the subject’s mind has been
conditioned to the causation between the mental state and the
stimuli played, and the subject may even advance to a stage in
which it is “possible for the subject to precipitate a mantra
triggering by ‘faking’ a brooding state.” Id. at 21–22.
Block 850 of Appellant’s Figure 8 simply asks whether
the subject is “happy with the level of mental controllability
and sensitivity.” Fig. 8, block 850. If the answer to this inquiry
is yes, the subject stops using the device. Fig. 8, block 860. If
the answer to the inquiry in block 850 is no, block 851 instructs
to “Decrease TL, L1, TLL.” Fig. 8, block 851. Block 840
simply asks whether the subject is “able to predict an alert
AND/OR . . . able to induce an alert condition.” Fig. 8, block
840. If the answer to this inquiry is no, block 841 instructs the
subject to either get more used to the current thresholds or
increase them. Fig. 8, block 841. If the answer is yes, the
method simply advances to block 850. Fig. 8. Notably, we do
not discern, nor does Appellant direct our attention to, any
disclosure in the Original Specification or the drawings of the
present application suggesting that block 840 statistically
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monitors the subject’s historical trends in reaction time values
against a given threshold setting or includes a statistical
algorithm for validating whether the subject is getting
sufficiently habituated to the current setting by analyzing such
historical trends to determine whether block 841 should be
launched.
Dec. 11.
For the reasons explained on pages 10–13 of the Decision, the
portions of the Original Specification and drawings alluded to by Appellant
do not discuss
lowering the threshold value if the measured value of the
duration is less than a current setting of the threshold value or
increasing the threshold value if the measured value of the
duration is at least equal to the current setting, as recited in
items d) and e) of claims 134 and 138, much less choosing
between these two determinations each time the subject
undergoes a sustaining mental state until the duration stays
consistently below a target value, as recited in item f) of claims
134 and 138. Although Appellant’s Original Specification does
not exclude the possibility that the subject might assess his or
her satisfaction with the level of his or her own mental
controllability or with the sensitivity of the device by
comparing the measured value of the duration of the sustaining
mental state with the current setting of the threshold value for
the duration, neither the Original Specification nor the relevant
portions of Figure 8 disclose performing these steps, either
automatically or even manually. The subject could perform the
disclosed method by simply subjectively feeling that the device
is either overly sensitive (applying stimuli too frequently) or not
sufficiently sensitive (missing sustained brooding states) and
adjusting the duration threshold value accordingly.
Dec. 12–13 (footnote omitted).
Appellant’s arguments in the Request do not persuade us that the
Board misapprehended or overlooked any points in reaching its decision to
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affirm the Examiner’s rejection of claims 134–142 under 35 U.S.C. § 112,
first paragraph, as failing to comply with the written description requirement
in regard to items d)–f) of claims 134 and 138.

Patent Eligibility Rejection
Appellant requests that the Board reconsider its decision affirming the
rejection of claims 134–142 under 35 U.S.C. § 101 as being directed to
patent-ineligible subject matter. Req. Reh’g 4–9.
Step 2A, Prong One — Recitation of Judicial Exception
Appellant argues that the Specification describes the invention
“primarily [as] a self-operating . . ., self-wearable . . .[,]
self-meditation-training . . . device.” Req. Reh’g 5. According to Appellant,
“[t]his precludes the possibility of a second person involving in a subject’s
mind-flex training that the Appellant envisaged.” Id. Appellant did not
raise this argument in the Appeal Brief and, thus, cannot raise it in a request
for rehearing. See 37 C.F.R. § 41.52(a)(1). Accordingly, we do not consider
this line of argument.
Appellant argues that performance of Appellant’s invention by a
human observer (i.e., a second person who is not the subject) as stated on
page 25 of the Decision “is not viable because”: (1) the human mind cannot
process signals having a frequency as high as that of an EEG biomarker;
(2) a human being would need to constantly memorize, retrieve, and
compare the contents of thousands of data registers for days and weeks to
find signal attributes that determine a state or transition; and (3) a single
marker, such as a pinched brow or closed eyes, is rarely sufficient to
discriminate between brooding/non-brooding states. Req. Reh’g 5–6.
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According to Appellant, it may be necessary “to add a heart rhythm, breath
rate[,] or skin conductance,” and a human “mind is not designed to multiplex
between multiple markers as a custom digital circuit could do.” Id. at 6. As
pointed out on page 24 of the Decision, Appellant’s arguments are not
commensurate with the scope of claim 138 (the representative claim
addressed in the Decision), which does not require processing such signals
from large data registers as Appellant argues. Further, Appellant does not
provide any evidence or technical explanation to support the assertion that
the types of observations a second person could make about a subject’s
demeanor, or a display of an electrical signal indicative of mental state,
would be insufficient to assess the subject’s mental state. Although
collection, retrieval, and digital processing of large volumes of electrical
signal data might permit assessment of details of a subject’s mental state that
could not be observed by a human observer, claim 138 is not limited to such
details.
Appellant argues that the subject could not undertake the
measurement and control tasks recited in the claims using his or her own
mind without destroying the underlying mental process. Req. Reh’g 6. As
Appellant recognizes (id.), this argument simply re-hashes the argument
made on page 14 of the Appeal Brief. As the Decision points out, “claim
138 does not require the recited steps to be performed by the subject.”
Dec. 24.
Appellant argues that, in contrast to the claims addressed in
Intellectual Ventures I LLC v. Symantec Corp., 838 F.3d 1307, 1318 (Fed.
Cir. 2016), Appellant’s “invention requires a real-time computer-system
having an OS that needs to synchronize its CPU cycles with at least one A/D
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converter, one D/A converter and associated buffer memories,” as well as
“sensors and actuators that interface with said A/D and D/A converters for
system’s minimal functioning as recited in the independent claim 134 and its
dependent claims 135, 136 and 137.” Req. Reh’g 6. According to
Appellant, “[a]nyone skilled in implementing control systems would readily
recognize that real-time computers are special purpose computers and
connecting them with special sensors and actuators results in custom
hardware and software.” Id.
Appellant’s arguments are not commensurate with the scope of claims
134 and 138, which do not recite A/D or D/A converters. Further, the
nominal recitation of “[a] real-time signal processor device” in claim 134 is
insufficient to denote anything more than a generic computing device. As
for Appellant’s reference to sensors in claims 135–137, arguments
specifically directed to these claims are impermissible in a request for
rehearing because they were not raised in the Appeal Brief and claims 135–
137 were not separately argued by Appellant. See Dec. 23 (stating that
“[c]laims 135–137 stand or fall with claim 134”).
Step 2A, Prong Two — Practical Application
Appellant attempts to raise new arguments, not raised in the Appeal
Brief, that Appellant’s invention integrates the judicial exception into a
practical application. Req. Reh’g 7–8 (asserting that Appellant’s invention
improves the functioning of a computer or other technology, is applied with
a particular machine, and effects a transformation of a particular article to a
different state). Appellant asserts that Appellant did not raise these
arguments in the Reply Brief because the Examiner did not bring this matter
up in the Answer. Id. at 7.
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These new assertions that Appellant’s invention integrates the abstract
idea into a practical application cannot be raised in a request for rehearing.
See 37 C.F.R. § 41.52(a)(1). It is Appellant’s responsibility to raise all
issues to be considered on appeal in the Appeal Brief. See 37 C.F.R.
§ 41.37(c)(iv) (stating that “any arguments or authorities not included in the
appeal brief will be refused consideration by the Board”). An examiner need
not address in the answer issues not raised by an appellant in the appeal
brief. Further, “[a]ny argument raised in the reply brief which was not
raised in the appeal brief, or is not responsive to an argument raised in the
examiner’s answer, . . . will not be considered by the Board.” 37 C.F.R.
§ 41.41(b)(2). Thus, if Appellant had raised these arguments directed to
integration into a practical application in the Reply Brief, the arguments
would have been untimely and would not have been considered by the
Board. As noted on page 28 of the Decision, the Examiner expressly
determined, on page 17 of the Final Action, that the judicial exception of
claims 134–138 “is not integrated into a practical application.” Thus,
Appellant was on notice of this determination and should have raised any
arguments contesting this determination in the Appeal Brief. Accordingly,
we do not consider these new arguments in the Request.
Step 2B — Inventive Concept
Appellant also attempts to raise new arguments contesting the
Examiner’s finding that the claims do “not include additional elements that
are sufficient to amount to significantly more than the judicial exception
because the additional elements of using software modules embedded on a
generic processor to perform the functions amounts to no more than mere
instructions to apply the exception using a generic computer component”
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(Final Act. 18) and the Board’s agreement with this finding (Dec. 30). Req.
Reh’g 8. Appellant did not present these arguments in the Appeal Brief.
See Dec. 30 (stating that “Appellant does not present any arguments
contesting this finding”). Thus, much like the new arguments directed to
integration into a practical application, discussed above, Appellant’s new
arguments in the Request directed to an inventive concept are untimely and
will not be considered by the Board. See 37 C.F.R. § 41.52(a)(1).
For the above reasons, Appellant’s Request does not persuade us that
the Board misapprehended or overlooked any points in reaching its decision
to affirm the Examiner’s rejection of claims 134–142 under 35 U.S.C. § 101,
as being directed to patent-ineligible subject matter.

Obviousness Rejections
Kishi in view of Greene
Appellant requests that the Board reconsider its decision to affirm the
rejection of claims 134–139 under 35 U.S.C. § 103(a) as being unpatentable
over Kishi and Greene. Req. Reh’g 9. Appellant argues that the Decision’s
characterization of the Examiner’s proposed modification reveals that the
“Examiner could not show a reasonable motivation in modifying Kishi in
view of Greene.” Id. (implying that the Examiner proposes to modify Kishi
“for no reason”). Appellant’s argument is not correct. The Decision states
that “the Examiner determines it would have been obvious to ‘modify Kishi
with the threshold adjustments as taught by Greene because it is the use of a
known technique of providing a more accurate comparison of measured
values to a threshold to improve similar devices in the same way.’” Dec. 31
(citing Final Act. 21). The United States Supreme Court has recognized
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such a rationale as being sufficient to support a conclusion of obviousness.
See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007) (stating that “if
a technique has been used to improve one device, and a person of ordinary
skill in the art would recognize that it would improve similar devices in the
same way, using the technique is obvious unless its actual application is
beyond his or her skill”).
Appellant’s Request presents new arguments, not presented in the
Appeal Brief or Reply Brief, in an attempt to support the assertion that the
modification proposed by the Examiner would render Kishi’s device
inoperable by delaying the alert signal, thereby causing longer fatigue
durations and fatal accidents (Reply Br. 11). Req. Reh’g 9–10. These new
arguments are not permissible in a request for rehearing and will not be
considered by the Board. See 37 C.F.R. § 41.52(a)(1). We note, however,
that Appellant’s arguments regarding Kishi’s determination of the reaction
time threshold on pages 9–10 of the Request appear to overlook Kishi’s
disclosure of the methodology of measuring the reaction time and setting a
reaction time threshold as illustrated in Figure 6 and described in columns 5
and 6. As stated in the Decision, “Kishi already discloses setting a reaction
time threshold, measuring a reaction time, comparing the reaction time to the
threshold, and, in response to the comparison, setting the reaction time
threshold again. See Kishi 5:37–6:21; 7:11–30; Fig. 6 (blocks S30, S37–
S41).” Dec. 32. The Decision points out that Appellant failed to adequately
explain why modifying Kishi by incorporating Greene’s sensitivity
optimization algorithm for achieving a desired target detection rate in
Kishi’s methodology for setting the reaction time threshold, at block S30,
“would result in longer fatigue durations and fatal accidents or why a person
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having ordinary skill in the art would have been unable to make the
modification in a manner to produce an operative device.” Id. at 32–33.
For the above reasons, the Request does not persuade us that the
Board misapprehended or overlooked any points in reaching its decision to
affirm the Examiner’s rejection of claims 134–139 under 35 U.S.C. § 103(a)
as being unpatentable over Kishi and Greene.
Kishi in view of Greene and Le
Appellant requests that the Board reconsider its decision affirming the
rejection of claims 140 and 141 under 35 U.S.C. § 103(a) as being
unpatentable over Kishi, Greene, and Le. Req. Reh’g 10. Appellant argues
that, contrary to Kishi’s device, which seeks to prevent the driver from
remaining in a drowsy state by ending such states without delay, “the
claimed invention seeks to maintain a (pre-validated) wandering state (as
opposed to a drowsy or a less alert state that Kishi’s device handles) by not
sending the alert until a time-threshold reaches, and continuously verifying
that the wandering state persists.” Id. at 11. This argument essentially
attempts to re-hash the arguments presented on page 16 of the Appeal Brief.
As the Decision points out, this line of argument is not persuasive because it
is not commensurate with the scope of the claimed invention. See Dec. 34.
Appellant presents new arguments urging the Board to interpret “at a
plurality of occasions” in claims 134 and 138 as meaning a “plurality of
‘identical’ occasions’of teaching’ or ‘conditioning’ using environments
crafted for the purpose.” Req. Reh’g 11. Appellant contends that Kishi’s
device, as modified in view of Greene, “wouldn’t have resulted in a
combination capable of generating a plurality of identical occasions.” Id.
These arguments, which were not made in the Appeal Brief or Reply Brief,
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are not appropriate for a request for rehearing and will not be considered by
the Board. See 37 C.F.R. § 41.52(a)(1).
For the above reasons, the Request does not persuade us that the
Board misapprehended or overlooked any points in reaching its decision to
affirm the Examiner’s rejection of claims 140 and 141 under
35 U.S.C. § 103(a) as being unpatentable over Kishi, Greene, and Le.
Kishi in view of Greene and Levin
Appellant requests that the Board reconsider its decision affirming the
rejection of claim 142 as being unpatentable over Kishi, Greene, and Levin.
Req. Reh’g 11. Appellant appears to take issue with the Board’s agreement,
on page 35 of the Decision, with the Examiner that “claim 142 does not
recite noise cancelling circuitry.” Id. at 12. Relying on SafeTCare
Manufacturing., Inc. v. Tele-Made, Inc., 497 F.3d 1262, 1269–70 (Fed. Cir.
2007), Appellant argues that, “since the present [S]pecification repeatedly
emphasizes (in paragraphs 0061 and 0116) the use of active noise canceling,
it is the implicit redefinition of ‘deep silent period’, and therefore effectively
disclaims the ordinary meaning of the term ‘deep silence period’ in claim
142.” Id.
Appellant’s argument is not persuasive. Paragraph 61 of the
publication of the present application, cited by Appellant, corresponds to the
paragraph bridging pages 9–10 of the Specification, and states that “[a]
preferred bio actuator suitable for the embodiment is a pair of headphones
optionally having noise canceling features.” Paragraph 116 of the
publication of the present application corresponds to the third paragraph on
page 20 of the Specification, and states that “[a]n example for optimization
is adding a deep silence section (by activating noise cancelling circuitry of
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the headset) just before playing the audio clip.” Thus, Appellant’s
Specification describes noise canceling features as optional and lists
activating noise canceling circuitry as one means for adding a deep silence
section. These descriptions in no way suggest that noise cancellation
circuitry is the only means of adding a deep silence section or expressly
define “adding a deep silence period” as applying noise cancellation
circuitry. Further, unlike the specification in SafeTCare, the portions of
Appellant’s Specification relied on by Appellant do not attempt to
distinguish noise cancellation circuitry from other, unsuitable, means of
adding a deep silence section or period, nor do they characterize noise
cancellation circuitry as critical. Thus, we are not persuaded that
Appellant’s Specification implicitly redefines “deep silent period” and
“therefore effectively disclaims the ordinary meaning of the term ‘deep
silence period’ in claim 142” as Appellant contends.
For the above reasons, Appellant’s Request does not persuade us that
the Board misapprehended or overlooked any points in reaching its decision
to affirm the Examiner’s rejection of claims 142 under 35 U.S.C. § 103(a) as
unpatentable over Kishi, Greene, and Levin.
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CONCLUSION
Outcome of Decision on Rehearing:
Claims 35 U.S.C § Reference(s)/Basis Denied Granted
134–142 112, first
paragraph
Written
Description
134–142
134–142 101 Eligibility 134–142
134–139 103(a) Kishi, Greene 134–139
140, 141 103(a) Kishi, Greene, Le 140, 141
142 103(a) Kishi, Greene,
Levin
142
Overall
Outcome
134–142

Final Outcome of Appeal after Rehearing:
Claims 35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
134–142 112, first
paragraph
Written
Description
134–142
134–142 112, first
paragraph
Enablement 134–142
134–142 101 Eligibility 134–142
134–139 103(a) Kishi, Greene 134–139
140, 141 103(a) Kishi, Greene, Le 140, 141
142 103(a) Kishi, Greene,
Levin
142
Overall
Outcome
134–142

TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).
DENIED