Ex Parte Klingberg

Patent Trial and Appeal Board

Oct 25, 2013

11325289 (P.T.A.B. Oct. 25, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte TORKEL KLINGBERG
____________________

Appeal 2011-008821
Application 11/325,289
Technology Center 3700
____________________

Before MICHAEL C. ASTORINO, MICHELLE R. OSINSKI, and
HYUN J. JUNG, Administrative Patent Judges.

OSINSKI, Administrative Patent Judge.

DECISION ON APPEAL
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STATEMENT OF THE CASE
Appellant1 appeals under 35 U.S.C. § 134(a) from a final rejection of
claims 53-56, 58, and 60-62. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

CLAIMED SUBJECT MATTER
The sole independent claim on appeal is reproduced below and is
illustrative of the appealed subject matter.
53. A method for training a working memory of a user,
comprising:
providing a computer;
displaying a first sequence of stimuli of a training session
on a display of the computer;
the computer requesting a user to remember the first
sequence of stimuli;
the computer establishing a delay of a predetermined
time of between 0.1 seconds to 10 seconds during which the
first sequence of stimuli is not visible to the user;
the computer ignoring any answer entered by the user
during the delay in which the first sequence of stimuli is not
visible to the user;
the user entering a first answer sequence into the
computer, the computer accepting the first answer sequence
only when entered by the user after an expiration of the delay in
response to the request to remember the first sequence of
stimuli displayed,
upon acceptance and storage of the first answer sequence,
the computer determining whether the first answer sequence is
correct or incorrect and generating a second sequence of stimuli
when the first answer sequence is correct and a second different
sequence of stimuli when the first answer sequence is incorrect,
and

1 Appellant identifies the real party in interest as Cogmed Systems AB.
App. Br. 1.
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the computer displaying the second sequence of stimuli
or second different sequence of stimuli on the display and
requesting the user to respond thereto.

REJECTIONS
Appellant seeks review of the following rejections:
(1) the rejection of claims 53 and 54 under 35 U.S.C. § 103(a) as
unpatentable over Buschke ’636 (US 4,770,636, iss. Sep. 13, 1988) and
Keller (US 5,289,389, iss. Feb. 22, 1994) (Ans. 3-5);
(2) the rejection of claims 55, 56, 58, 60, and 61 under 35 U.S.C.
§ 103(a) as unpatentable over Buschke ’636, Keller, and Wood (US
2003/0129576 A1, pub. Jul. 10, 2003) (Ans. 6-8); and
(3) the rejection of claim 62 under 35 U.S.C. § 103(a) as unpatentable
over Buschke ’636, Keller, and Buschke ’058 (US 6,689,058 B2, iss. Feb.
10, 2004) (Ans. 8).

ANALYSIS
Rejection (1)
The Examiner found that Buschke ’636 teaches the claimed limitation
of “requesting the user to remember the first sequence of stimuli” because of
the “Copy” step of Figure 3 (Ans. 4) or alternatively because the user is
asked “to repeat the number to show his/her . . . immediate recall of the fact
in his/her memory (see col. [7, ll. 6-9, 48-52 and fig. 3 relating to]
‘immediate recall’)” (id. at 9). Appellant’s contention that Buschke ’636’s
copying step 60 does not teach requesting the user to remember the first
sequence of stimuli (App. Br. 6-8) is unpersuasive because it does not
explain why Buschke ’636’s presentation of visual stimuli (i.e., a series of
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seven digit numbers) prior to their removal from the screen during
immediate recall step 62 does not meet the claim language. See Ans. 9-10
(“The user’s ability to memorize (or to remember) can[]not be tested if the
user[] is not asked to remember the stimulus.”).
The Examiner also found that Buschke ’636 teaches the claimed
limitation of “ignoring any answer entered by the user during the delay in
which the first sequence of stimuli is not visible to the user” because of the
“‘interference’” described at column 7, lines 55-60 (Ans. 4) or alternatively
because “the user will not be able to enter any answer before spaces are
shown to the user[,] or rather user’s entry is ignored during the time between
the cleared screen and display of the spaces” (id. (citing Buschke ’636, col.
7, ll. 50-55)). Appellant’s contention that the acceptance of answers during
interference step 64 means that the computer does not ignore answers during
the delay (App. Br. 9, 11) is unpersuasive because it does not address the
Examiner’s alternative position in which the delay is the 1-9 second delay of
immediate recall step 62. See Ans. 4. Accepting answers during
interference step 64 may be after the 1-9 second delay of immediate recall
step 62.
The Examiner further found that Buschke ’636 teaches “accepting a
first answer sequence only when entered by the user after an expiration of
the delay” since “spaces are shown.” Ans. 4 (citing Buschke ’636, col. 7, ll.
50-55). See id. at col. 7, ll. 48-51 (“[T]he screen is cleared and . . . after a
specified number of seconds (1-9), . . . spaces are shown on the screen for
immediate recall.”). Appellant contends that “Buschke [’636] clearly
accepts answers before the expiration of the delay[,] i.e.[,] both during the
copying step 60 and the immediate recall step 62.” Reply Br. 4; see also
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App. Br. 12. First, Appellant’s argument that accepting answers during the
immediate recall step 62 results in acceptance of answers before the
expiration of delay does not address the Examiner’s finding in which the
delay is the 1-9 seconds of the immediate recall step 62 where answers are
only accepted after the 1-9 seconds has elapsed. See Ans. 4 (citing Buschke
’636, col. 7, ll. 45-55). Second, Appellant’s argument that accepting
answers during the copying step 60 results in acceptance of answers before
the expiration of delay is also not persuasive. Even though the same number
sequence could be entered into Buschke ’636’s system during copying step
60 and immediate recall step 62 as explained by Appellant, copying step 60
occurs before, and is immaterial to, what occurs during the claimed method
steps. Buschke ’636 does not request a user to remember a sequence of
stimuli until after the user’s comprehension of the stimuli is verified during
copying step 60. Without successful verification of the user’s
comprehension of the stimuli, it would be unclear if error during immediate
recall step 62 was due to a user’s failure to comprehend or due to a deficit in
working memory. See Buschke ’636, col. 6, ll. 42-43, 45-47. Any number
of other steps (including, but not limited to, Buschke ’636’s copying step 60)
could occur before or after the claimed method steps and still meet the
claimed method due to the use of the transitional phrase “comprising” in the
claims. See Fin. Rej. 8.
The Examiner found that Buschke ’636 failed to teach all of the claim
limitations and relied on Keller to cure the deficiencies of Buschke ’636.
Ans. 4-5. The Examiner concluded that it would have been obvious to
generate a second sequence of stimuli when the first answer is correct and to
generate a different second sequence of stimuli when the first answer is
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incorrect “as taught by Keller, in order to increase the reliability of the test
result.” Ans. 5 (citing Keller, col. 3, ll. 55-60); see also Keller, col. 2, l. 63 –
col. 3, l. 1 (explaining that the “correct five digit number . . . will be
displayed on the LCD” if the user’s answer sequence is correct and that “an
error code, such as a series of zeros” is displayed on the LCD if the user’s
answer sequence is incorrect).
Appellant contends that the Examiner’s reasoning for modifying
Buschke ’636 based on the teachings of Keller does not rise to the level of
having a rational underpinning to support the legal conclusion of
obviousness and instead is conclusory, “merely provide[s] a benefit,” and
relies on impermissible hindsight. App. Br. 14-15; Reply Br. 8-10. More
particularly, Appellant contends that it is unclear how modifying Buschke
’636 based on Keller’s teaching of an error message improves the reliability
of Buschke ’636’s invention. Reply Br. 9 (“it is submitted that Keller’s error
code (col. 3, lines 55-60) has no [e]ffect on the test reliability of Buschke
[’636]’s system or at least the Examiner has failed to explain how this
asserted benefit would occur”).
The Examiner responded that Keller teaches “that it would have been
known at the time of the invention to repeat the test with a different
sequence of stimulus” (Ans. 13 (citing Keller, col. 3, ll. 40-60)) and that “the
result of repeating the test would also be predictable . . . and would have
been foreseeable in view of the Buschke [’636] reference” (Ans. 13-14
(citing Buschke ’636, col. 8, ll. 45-50)). As explained by the Examiner, both
Buschke ’636 and Keller support that repeating the test after receipt of an
error can provide a more complete assessment of memory and learning. See,
e.g., Ans. 13 (citing Buschke ’636, col. 8, ll. 45-50; col. 13, ll. 10-13; and
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Table III) (“the result of several delayed memory test[s] are averaged
together to form a more reliable result[]”) and Keller, col. 3, ll. 40-60 (after
receipt of an error code, “the operator need only press any key at step 70 to
repeat the response speed and accuracy test”). Appellant does not offer
evidence or reasoning as to why it would not have been predictable to
combine the teachings of Buschke ’636 and Keller, and thus, their
contention that the Examiner’s articulated reasoning lacks rational
underpinnings is unpersuasive. See KSR Int’l Co. v. Teleflex, Inc., 550 U.S.
398, 416 (2007) (“The combination of familiar elements according to known
methods is likely to be obvious when it does no more than yield predictable
results.”).
For the foregoing reasons, Appellant has failed to show error by the
Examiner in concluding that the subject matter of independent claim 53 is
unpatentable over Buschke ’636 and Keller, and we sustain the rejection of
claim 53 under 35 U.S.C. § 103(a) as unpatentable over Buschke ’636 and
Keller. As Appellant does not present separate arguments for claim 54, we
likewise sustain the rejection of claim 54 under 35 U.S.C. § 103(a) as
unpatentable over Buschke ’636 and Keller.2

2 Appellant’s reference to “claim 54 also recit[ing] additional characteristics
that are not found in the cited art” (App. Br. 16) is not considered to
constitute a separate argument for patentability pursuant to 37 C.F.R.
§ 41.37(c)(1)(vii)(2011). See In re Lovin, 652 F.3d 1349, 1357 (Fed. Cir.
2011) (holding that the Board had reasonably interpreted 37 C.F.R.
§ 41.37(c)(1)(vii) as requiring “more substantive arguments in an appeal
brief than a mere recitation of the claim elements and a naked assertion that
the corresponding elements were not found in the prior art”).
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Rejection (2)
Appellant’s argument that the Examiner has failed to articulate
reasoning with rational underpinning (App. Br. 16-17) lacks objective
evidence or cogent reasoning in response to the Examiner’s particular
findings and conclusion, and as such, is unpersuasive. Accordingly,
Appellant has failed to show error by the Examiner in concluding that the
subject matter of claims 55, 56, 58, 60, and 61 is unpatentable over Buschke
’636, Keller, and Wood, and we sustain the rejection of claims 55, 56, 58,
60, and 61 under 35 U.S.C. § 103(a) as unpatentable over Buschke ’636,
Keller, and Wood.

Rejection (3)
Appellant’s argument that the Examiner has failed to articulate
reasoning with rational underpinning (App. Br. 17) lacks objective evidence
or cogent reasoning in response to the Examiner’s particular findings and
conclusion, and as such, is unpersuasive. Accordingly, Appellant has failed
to show error by the Examiner in concluding that the subject matter of claim
62 is unpatentable over Buschke ’636, Keller, and Buschke ’058, and we
sustain the rejection of claim 62 under 35 U.S.C. § 103(a) as unpatentable
over Buschke ’636, Keller, and Wood.

DECISION
The Examiner’s rejections of claims 53-56, 58, and 60-62 under 35
U.S.C. § 103(a) are 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)(1)(iv).
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AFFIRMED

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