Ex Parte Isenberg

Board of Patent Appeals and Interferences

May 30, 2012

10107872 (B.P.A.I. May. 30, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte SUSAN ISENBERG
___________

Appeal 2010-010118
Application 10/107,872
Technology Center 3700
____________

Before HUBERT C. LORIN, BIBHU R. MOHANTY, and
MEREDITH C. PETRAVICK, Administrative Patent Judges.

PETRAVICK, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2010-010118
Application 10/107,872

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STATEMENT OF THE CASE
Susan Isenberg (Appellant) seeks our review under 35 U.S.C. § 134 of
the final rejection of claims 1-17 and 21-23. We have jurisdiction under 35
U.S.C. § 6(b).

SUMMARY OF DECISION
We AFFIRM. 1

THE INVENTION
This invention is “a system and method for behavior modification.”
Spec. 1:3-4.
Claim 1, reproduced below, is illustrative of the subject matter on
appeal.
1. A method for producing a behavior
modification plan comprising the steps of:
providing a computer system having a
problem, the program for allowing input of
information;
inputting information relating to past
success in behavior modification;
inputting information relating to behavior
modifications to be made and ranking the
behavior modifications to be made;
inputting information relating to prior and
anticipated barriers in behavior modification;

1 Our decision will make reference to the Appellant’s Appeal Brief (“App.
Br.,” filed Mar. 12, 2010) and Reply Brief (“Reply Br.,” filed Jun. 25, 2010),
and the Examiner’s Answer (“Ans.,” mailed Apr. 27, 2010).

Appeal 2010-010118
Application 10/107,872

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inputting information relating to a preferred
learning style;
preparing a behavior modification plan
based upon the ranking of the behavior
modifications to be made, prior barriers,
anticipated barriers, and a preferred learning
style; and
displaying the prepared behavior
modification play.

THE REJECTION
The Examiner relies upon the following as evidence of
unpatentability:
Bro US 5,596,994 Jan. 28, 1997
Brown US 5,879,163 Mar. 9, 1999
Segel
O’Donnell
US 5,967,789
US 2003/0027116 A1
Oct. 19, 1999
Feb. 6, 2003

The following rejection is before us for review:
1. Claims 1-17 and 21-23 are rejected under 35 U.S.C. §103(a) as
being unpatentable over O’Donnell, Segel, Bro, and Brown.

ISSUE
The issue is whether claims 1-17 and 21-23 are unpatentable under 35
U.S.C. §103(a) over O’Donnell, Segel, Bro, and Brown. Specifically, the
major issue is whether the combination of the prior art teaches the steps of:
1) preparing a behavior modification plan based upon the ranking and the
Appeal 2010-010118
Application 10/107,872

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anticipated barriers; 2) inputting information relating to past successes in
behavior modification; and 3) inputting information relating to prior barriers
in behavior modification.

FINDINGS OF FACT
We find that the findings of fact which appear in the analysis below
are supported by at least a preponderance of the evidence. Ethicon, Inc. v.
Quigg, 849 F.2d 1422, 1427 (Fed. Cir. 1988) (explaining the general
evidentiary standard for proceedings before the Office)

ANALYSIS
The Appellant argues claims 1-17 and 21-23 as a group. App. Br. 10-
15. We select claim 1 as the representative claim for this group, and the
remaining claims 2-17 and 21-23 stand or fall with claim 1. 37 C.F.R.
§ 41.37(c)(1)(vii).
The Appellant argues that the Examiner’s combination of the prior art
does not teach the following limitations: 1) preparing a behavior
modification plan based upon the ranking and the anticipated barriers (App.
Br. 10-11 and Reply Br. 3); 2) inputting information relating to past
successes in behavior modification (App. Br. 11 and Reply Br. 3-4); and 3)
inputting information relating to prior barriers in behavior modification
(App. Br. 11-12 and Reply Br. 4).
Turning to the first limitation at issue, we not persuaded by the
Appellant’s argument (App. Br. 10-11 and Reply Br. 3) that the Examiner
erred in finding this limitation taught by the combination of the prior art.
We agree with and adopt the Examiner’s reasoning on pages 4- 5 of the
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Application 10/107,872

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Answer. Additionally, we note that O’Donnell’s stage 1 (see paras. [0007]-
[0046]) results in a list of behavior changes in decreasing order of total score
(i.e, a ranking). Para. [0047]. O’Donnell describes that the user selects “one
or two behaviors” from this list. Id. The development of a Behavior Change
Plan, as described in stage 3 of O’Donnell (see para. [0098]) for these
selected behaviors teaches the claimed step of preparing a behavior
modification plan based upon the ranking, when the claim is given the
broadest reasonable interpretation in light of the Specification.
Further, O’Donnell describes a user being asked about expected
obstacles (i.e., anticipated barriers) (para. [0076]) and the user developing
strategies to overcome the identified obstacles (para. [0086]), such as being
referred to educational materials or working with a counselor (para. [0091]).
O’Donnell describes that step 18, which is part of stage 3’s development of a
behavior change plan, includes listing educational materials and sources
(para. 0101]). Given these descriptions in O’Donnell, we find that
O’Donnell teaches the claimed step of preparing a behavior modification
plan based upon the ranking, when the claim is given the broadest
reasonable interpretation in light of the Specification.
Turning to the second limitation at issue, we are not persuaded by the
Appellants’ argument (App. Br. 11 and Reply Br. 3-4) that the Examiner
erred in finding that Segel teaches this limitation. We agree with and adopt
the Examiner’s reasoning on page 5 of the Answer.
Turning to the third limitation at issue, we are not persuaded by the
Appellants’ argument (App. Br. 11-12 and Reply Br. 4) that the Examiner
erred in finding that Bro teaches this limitation. We agree with and adopt
the Examiner’s reasoning on pages 5-6 of the Answer.
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Application 10/107,872

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In addition to arguing that the Examiner’s combination of the prior art
does not teach every limitation of claim 1, the Appellant broadly argues: 1)
that there is no motivation to combine the prior art as suggest by the
Examiner; 2) the Examiner is applying impermissible hindsight; 3) the
Examiner’s combination would render O’Donnell unsatisfactory for its
intended purpose. App. Br. 12-15 and Reply Br. 4-5. We find these
arguments unpersuasive as to error in the Examiner’s rejection for the
reasons set forth on pages 6-7 of the Answer.
Accordingly, the rejection of claims 1-17 and 21-23 under 35 U.S.C.
§103(a) as being anticipated by O’Donnell, Segal, Bro, and Brown are
affirmed.

DECISION
The decision of the Examiner to reject claims 1-17 and 21-23 is
affirmed.
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) (2011).

AFFIRMED

MP