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Patent Trials and Appeals Board

Oct 15, 2019

13131317 - (D) (P.T.A.B. Oct. 15, 2019)

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.
13/131,317 05/26/2011 Johan Adam Du Preez 728883 4937
23460 7590 10/15/2019
LEYDIG VOIT & MAYER, LTD
TWO PRUDENTIAL PLAZA, SUITE 4900
180 NORTH STETSON AVENUE
CHICAGO, IL 60601-6731
EXAMINER
BALDORI, JOSEPH B
ART UNIT PAPER NUMBER
3711
NOTIFICATION DATE DELIVERY MODE
10/15/2019 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):
Chgpatent@leydig.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte JOHAN ADAM DU PREEZ and LUDWIG CARL SCHWARDT

Appeal 2019-003001
Application 13/131,317
Technology Center 3700
____________

Before MICHAEL C. ASTORINO, CYNTHIA L. MURPHY, and
ROBERT J. SILVERMAN, Administrative Patent Judges.

ASTORINO, Administrative Patent Judge.

DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 51–60. We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM.

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. Appellant identifies the real party in interest as
Stellenbosch University. Br. 2.
Appeal 2019-003001
Application 13/131,317

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STATEMENT OF THE CASE
Claimed Subject Matter
Claim 51, the sole independent claim, is representative of the subject
matter on appeal and reproduced below.
51. A toy comprising a body that includes:
at least one input sensor for receiving an input from a
human user;
at least one output apparatus through which the toy is
configured to interact with the user;
a processor in communication with the input sensor and
the at least one output apparatus; and
a memory in communication with the processor and
configured to store a statistical model relating to a generic user
and a statistical model relating to a preferred user, the preferred
user model being initialized to be the same as the generic user
model,
wherein the processor is programmed to:
obtain a sequence of frames from input received
from the at least one input sensor, the input being
associated with a user;
determine information included in each frame;
combine the determined information into a feature
vector summarizing the information for each frame to
form a feature matrix for the sequence of frames;
classify the feature vector of each frame as either
positive or negative to obtain a quality measure for a
given period spanning the sequence of frames;
compare the feature vector for each frame to both
the preferred user model and the generic user model to
evaluate the closeness of the feature matrix to the
preferred user model;
adapt the preferred user model towards or away
from the feature matrix based on the quality measure and
the closeness of the feature matrix to the preferred user
model; and
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send control signals to the at least one output
apparatus that are dependent on one or both of the quality
measure and closeness of the feature matrix to the
preferred user model,
wherein adaptation of the preferred user model based on
the quality measure and the closeness of the feature matrix to
the preferred user model and sending control signals based
thereon enables the toy to exhibit increased bonding behavior
towards a preferred user in response to a series of
predominantly positive inputs from the preferred user over
time, and decreased bonding behavior towards the preferred
user in response to a series of predominantly negative inputs
over time.

Rejections2
I. Claims 51–60 are rejected under 35 U.S.C. § 112, first
paragraph, as failing to comply with the enablement requirement.
II. Claims 51–60 are rejected under 35 U.S.C. § 112, second
paragraph, as indefinite.

ANALYSIS
Rejection I
The Examiner rejects claims 51–60 under 35 U.S.C. § 112, first
paragraph, as failing to comply with the enablement requirement. Final
Act. 2–3.
In view of our determination that independent claim 51 is indefinite,
infra, in this case, it follows that the rejection of claim 51 and its dependent
claims under 35 U.S.C. § 112, first paragraph, as failing to comply with the

2 The rejections under 35 U.S.C. § 102(b) and § 103(a) are withdrawn.
Ans. 4.
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enablement requirement must fall because it is necessarily based on a
speculative assumption as to the meaning of the claims. See also In re
Steele, 305 F.2d 859, 862–63 (CCPA 1962). Therefore, we do not sustain
the Examiner’s rejection of claims 51–60 under this ground of rejection. It
should be understood, however, that our decision in this regard is pro forma
and based solely on the indefiniteness of the claimed subject matter set forth
below.

Rejection II
The Examiner rejects claims 51–60 under 35 U.S.C. § 112, second
paragraph, as indefinite. Final Act. 4.
The Examiner explains that “[t]here is insufficient detail in the claims
and specification for one of ordinary skill to understand what the applicant
regards as his invention and what is being claimed.” Id. The Examiner
determines that it is impossible to determine the scope of many of the
recitations from claim 51 particular to the programming of the processor. Id.
at 4, 12–13; Ans. 3–4, 6–9. The following recitation from claim 51 includes
italics and numbering to identify the six separate recitations that the
Examiner determined was impossible to determine the scope of:
wherein the processor is programmed to:
obtain [(1)] a sequence of frames from input received
from the at least one input sensor, the input being associated
with a user;
[(2)] determine information included in each frame;
[(3)] combine the determined information into a feature
vector [(4)] summarizing the information for each frame to
form a feature matrix for the sequence of frames;
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classify the feature vector of each frame as either positive
or negative to obtain a quality measure for a given period
spanning the sequence of frames;
[(5)] compare the feature vector for each frame to both
the preferred user model and the generic user model to
evaluate the closeness of the feature matrix to the preferred
user model;
[(6)] adapt the preferred user model towards or away
from the feature matrix based on the quality measure and the
closeness of the feature matrix to the preferred user model; and
send control signals to the at least one output apparatus
that are dependent on one or both of the quality measure and
closeness of the feature matrix to the preferred user model,
Final Act. 4, 12–13. The Examiner sets for a reason why each numbered
and italicized recitation is indefinite. See id.; Ans. 4, 6–8.
The Appellant argues generally that the Examiner fails to properly
analyze the claims and that the claims comply with 35 U.S.C. § 112, second
paragraph. See Appeal Br. 12, 14. The Appellant addresses recitation 6
directly (id. at 13–14), but fails to do the same for recitations 1–5.
The Appellant’s general argument is not persuasive as it does not
explain how the Examiner erred in determining that recitations 1–5 are
indefinite or why recitations 1–5 are definite. See also In re Jung, 637 F.3d
1356, 1365 (Fed. Cir. 2011) (“it has long been the Board’s practice to
require an applicant to identify the alleged error in the examiner’s
rejections”) (citing Ex parte Frye, Appeal 2009-006013, at 9–10, 2010 WL
889747 (BPAI Feb. 26, 2010) (precedential)).
In the Appeal Brief, the Appellant addresses recitations 3–5 in terms
of the enablement requirement. Br. 9–10. An aspect of the analysis touches
on the breadth of the claims. See id. at 8–11. However, the substance of the
analysis pertains to how each of recitations 3–5 enable one of ordinary skill
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in the art to make and/or use the invention by pointing to the Specification.
Id. The focus of the analysis is not directed to understanding the metes and
bounds of recitations 3–5 in terms of whether the full scope of the claim is
clear to one of ordinary skill in the art. Therefore, the Appellant’s comments
concerning breadth of claim 51, in particular to recitations 3–5, in the
Appeal Brief at pages 9–10, are inadequate to properly address the
Examiner’s rejection of claim 51 as indefinite as it pertains recitations 3–5.
As for recitation 6, i.e., “adapt the preferred user model towards or
away from the feature matrix based on the quality measure and the closeness
of the feature matrix to the preferred user model,” the Appellant argues:
using the specification as a glossary to the claim terms, a person
of ordinary skill in the relevant arts would readily understand
how a statistical model relating to a preferred user might be
adapted towards or away from a feature matrix, representing
information determined from a sequence of frames from an
input received from an input sensor, based on a quality measure
and the closeness of the feature matrix to the preferred user
model.
. . . the Applicant submits that in the context of the
specification, entitled, “a toy that exhibits bonding behaviour”
it would be readily apparent that the toy will bond with (i.e. the
preferred user model will be adapted towards) a user whose
input has a positive quality measure and is represented by a
feature matrix which is close to that of the preferred user model.
It would be illogical for the toy to bond with (i.e. the preferred
user model will be adapted towards) a user whose input has a
negative quality measure.
Br. 14. The Appellant’s argument is not persuasive at least because some of
the language in recitation 6 refers back to language in recitations 1–5.
Therefore, the full scope (i.e., the metes and bounds) of claim 51 is not clear
to one of ordinary skill in the art.
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Thus, based on the foregoing reasons, we sustain the Examiner’s
rejection of independent claim 51 and claims 52–60, which depend
therefrom.

CONCLUSION
In summary:
Claims
Rejected
Basis  Affirmed Reversed
Claims 51–60 § 112, first
paragraph, 
51–60
Claims 51–60 § 112, second
paragraph 
51–60
Overall Outcome 51–60

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).

AFFIRMED