Ex Parte LEMKE et al

Patent Trials and Appeals Board

Mar 28, 2019

14197642 - (D) (P.T.A.B. Mar. 28, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
14/197,642 03/05/2014 Gilbert LEMKE
24737 7590 04/01/2019
PHILIPS INTELLECTUAL PROPERTY & STANDARDS
465 Columbus A venue
Suite 340
Valhalla, NY 10595
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
2007P00448USO 1 9164
EXAMINER
BURGESS, JOSEPH D
ART UNIT PAPER NUMBER
3626
NOTIFICATION DATE DELIVERY MODE
04/01/2019 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):
patti. demichele@Philips.com
marianne.fox@philips.com
katelyn.mulroy@philips.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte GILBERT LEMKE, DEBRA ANN LIEBERMAN,
and TADASHI EGAMI
Appeal2017-006068
Application 14/197,642
Technology Center 3600
Before DEBRA K. STEPHENS, AMBER L. HAGY, and
AARON W. MOORE, Administrative Patent Judges.
HAGY, Administrative Patent Judge.
DECISION ON APPEAL
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner's
Final Rejection of claims 1, 2, 4, 6-12, 16, 17, and 19, which are all of the
pending claims. 2 We have jurisdiction under 35 U.S.C. § 6(b ).
We affirm.
1 References herein to "Appellant" are to the applicant, Koninklijke Philips
N.V., which is also identified as the real party in interest. (App. Br. 1.)
2 Claims 3, 5, 13-15, 18, and 20 have been canceled. (Final Act. 2; see also
App. Br. (Claims App'x) 36, 40-42.)
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Application 14/197,642
STATEMENT OF THE CASE
Introduction
According to Appellant, "this application relates to involving medical
patients in simulation/ role playing activities in conjunction with provision
of information regarding management of their medical condition or
prevention of potential medical conditions." (Spec. 1:26-29.) Appellant's
Specification notes that "[p ]atients with chronic illnesses ... may have
limited mobility," which may make it "difficult or impossible to get out and
participate in live peer group discussions .... " (Id. at 2:20-22.) To address
that need, according to Appellant's Specification, the claimed invention
provides "[i]nteractive role playing simulations, such as in an on-going quiz
or game that may be incorporated into an interactive healthcare program
used with a computer, a television, or other form of audio visual rendering
and user input devices, [which] can provide simulation, role-playing, and
repetition as a form of education in an applied way." (Id. at 2:22-26.) "The
system employs video presentations and teaching surveys as a way to
convey information to patients, together with simulated situations involving
giving a friendly, appealing character advice on how to deal with health
issues that will arise in their daily life." (Id. at 2:26-29.)
Illustrative Claim
Claims 1, 9, and 1 7 are independent. Claim 1, reproduced below, is
illustrative of the claimed subject matter:
1. A system of rendering audio visual health care content to
a patient with a medical condition, said system comprising:
a content element storage operatively coupled with a
communications network and configured to store a plurality of
different prerecorded audio visual content elements to be
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rendered to the patient, the plurality of audio visual content
elements including:
a plurality of different role playing simulation
content elements in which the patient is presented with a
situation involving one of a plurality of issues related to a
medical condition confronted by a character and in which
the patient provides input related to the character's
situation,
a plurality of education content elements, and
interactive survey or quiz content elements;
an itinerary arrangement processor operatively coupled
with the content element storage and configured to:
select one or more of the stored educational content
elements;
select one or more of the interactive survey or quiz
content elements;
select one of the role playing simulation content
elements, to be rendered to the patient in a given viewing
session as part of a defined care plan, the selected role
playing simulation content element being selected based
on patient responses to the interactive survey or quiz
content element;
arrange the selected content elements into a serially
ordered itinerary with the educational content elements,
the interactive survey or quiz content elements, and the
role playing simulation content elements arranged to
correspond to a chronology of the defined care plan,
wherein one or more of the educational content elements
is arranged before each interactive survey or quiz content
element and one of the interactive survey or quiz content
elements is arranged before each of the role playing
simulation content elements;
select a character selection content element to be
rendered to the patient as part of the defined care plan in a
given viewing session, the character selection content
element including images and names for a plurality of
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characters and allowing the patient to select one of the
characters; and
arrange the selected content elements into a serially
ordered itinerary for presentation to the patient with the
character selection content element presented to the
patient before the role playing simulation content element
but after the interactive survey or quiz content element;
and
a user interface operatively coupled with the
communications network and with a display device, the user
interface being operable by the patient to render the selected
content elements to the patient according to the serially ordered
itinerary by the display device and to receive inputs from the
patient indicative of answers to the survey or quiz content
element.
References Cited
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Brown
Southard et al. ("Southard")
Findlay
Mizuta
us 5,918,603
US 2004/0180708 Al
US 2006/0105825 Al
US 2007/0293315 Al
Rejections
July 6, 1999
Sept. 16, 2004
May 18, 2006
Dec. 20, 2007
Claims 1, 2, 4, 6-12, 16, 17, and 19 stand rejected under 35 U.S.C.
§ 101 as directed to patent-ineligible subject matter (abstract idea). (Final
Act. 3-5.)
Claims 1, 2, 4, 6, and 8 stand rejected under 35 U.S.C. § I03(a) as
being unpatentable over Brown, Findlay, and Southard. (Final Act. 6-10.)
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Claims 7, 9-12, and 16 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Brown, Findlay, Southard, and Mizuta. (Final Act.
10-15.)
Claims 17 and 19 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Brown and Findlay. (Final Act. 16-17.)
ISSUES
1. Whether the Examiner erred in concluding that the claims are
directed to patent-ineligible subject matter by reciting an abstract idea
without including additional elements that amount to significantly more than
the abstract idea.
2. Whether the Examiner erred in finding that the subject matter of
claims 1, 2, 4, 6, and 8 is taught or suggested by the combination of Brown,
Findlay, and Southard.
3. Whether the Examiner erred in finding that the subject matter of
claims 7, 9-12, and 16 is taught or suggested by the combination of Brown,
Findlay, Southard, and Mizuta.
4. Whether the Examiner erred in finding that the subject matter of
claims 1 7 and 19 is taught or suggested by the combination of Brown and
Findlay.
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ANALYSIS
A. § 1 OJ Rejection 3
1. Principles of Law
Under 35 U.S.C. § 101, an invention is patent-eligible if it claims a
"new and useful process, machine, manufacture, or composition of matter."
35 U.S.C. § 101. The Supreme Court, however, has long interpreted§ 101
to include an implicit exception: "[l]aws of nature, natural phenomena, and
abstract ideas" are not patentable. Alice Corp. v. CLS Bank Int 'l, 573 U.S.
208, 216 (2014) ( citation omitted).
The Supreme Court, in Alice, reiterated the two-step framework
previously set forth in Mayo Collaborative Services v. Prometheus
Laboratories, Inc., 566 U.S. 66, 75-77 (2012), "for distinguishing patents
that claim laws of nature, natural phenomena, and abstract ideas from those
that claim patent-eligible applications of those concepts." Alice, 573 U.S. at
217. The first step in the analysis is to "determine whether the claims at
issue are directed to one of those patent-ineligible concepts." Id. For
example, abstract ideas include, but are not limited to, fundamental
economic practices, methods of organizing human activities, an idea of
itself, and mathematical formulas or relationships. Id. at 218-20. The
"directed to" inquiry asks not whether "the claims involve a patent-ineligible
concept," but instead whether, "considered in light of the specification, ...
'their character as a whole is directed to excluded subject matter.'" Enfzsh,
LLC v. Microsoft Corp., 822 F.3d 1327, 1335 (Fed. Cir. 2016) (internal
3 With regard to the Examiner's § 101 rejection, we consider claim 1 to be
representative of the claimed subject matter on appeal. See 37 C.F.R.
§ 4I.37(c)(l)(iv).
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citations omitted). In that regard, we determine whether the claims "focus
on a specific means or method that improves the relevant technology" or are
"directed to a result or effect that itself is the abstract idea and merely invoke
generic processes and machinery." McRO, Inc. v. Bandai Namco Games
Am. Inc., 837 F.3d 1299, 1314 (Fed. Cir. 2016).
If, at the first stage of the Alice analysis, we conclude that the claims
are not directed to a patent-ineligible concept, they are considered patent
eligible under § 101 and the inquiry ends. Rapid Litig. Mgmt. Ltd. v.
CellzDirect, Inc., 827 F.3d 1042, 1047 (Fed. Cir. 2016).
If the claims are directed to a patent-ineligible concept, the second
step in the analysis is to consider the elements of the claims "individually
and 'as an ordered combination'" to determine whether there are additional
elements that "'transform the nature of the claim' into a patent-eligible
application." Alice, 573 U.S. at 217 (quoting Mayo, 566 U.S. at 79, 78). In
other words, the second step is to "search for an "'inventive concept"'-i.e.,
an element or combination of elements that is 'sufficient to ensure that the
patent in practice amounts to significantly more than a patent upon the
[ineligible concept] itself."' Id. at 217-18 (brackets in original) ( quoting
Mayo, 566 U.S. at 72-73). The prohibition against patenting an abstract
idea "'cannot be circumvented by attempting to limit the use of the formula
to a particular technological environment' or adding 'insignificant
postsolution activity."' Bilski v. Kappas, 561 U.S. 593, 610-11 (2010)
(internal citation omitted).
The Patent and Trademark Office (the "Office") recently published
revised guidance on the application of 35 U.S.C. § 101. 2019 Revised
Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50-57 (Jan. 7,
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2019) ("2019 PEG"). Under the 2019 PEG, the Office first looks to whether
the claim recites:
(1) any judicial exceptions, including certain groupings of abstract
ideas (i.e., mathematical concepts, certain methods of organizing
human activity such as a fundamental economic practice, or mental
processes); and
(2) additional elements that integrate the judicial exception into a
practical application (see MPEP § 2106.05(a}-(c), (e}-(h)). 4
See 2019 PEG at 52, 54--55. Only if a claim (1) recites a judicial exception,
and (2) does not integrate that exception into a practical application, does the
Office then look to whether the claim:
(3) adds a specific limitation beyond the judicial exception that are not
"well-understood, routine, conventional" in the field (see MPEP
§ 2106.05(d)); or
(4) simply appends well-understood, routine, conventional activities
previously known to the industry, specified at a high level of
generality, to the judicial exception.
See 2019 PEG at 56. We follow this framework in our analysis herein.
a. Step One of Alice
Prong 1 : Whether the Claims Recite an Abstract Idea
In applying the framework set out in Alice, and as the first step of that
analysis, the Examiner concludes claim 1 recites abstract ideas amounting
essentially to "comparing new and stored information and using rules to
identify options." (Final Act. 3.)
As noted above, according to the 2019 PEG, the Office considers, in
the first prong of Alice step one, whether the claims recite any judicial
4 All references to the MPEP are to Rev. 08.2017 (Jan. 2018).
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exceptions in the form of "mathematical concepts, certain methods of
organizing human activity such as a fundamental economic practice, or
mental processes." 2019 PEG at 52. The Examiner does not find, nor do
we, that the claims recite "mathematical concepts." Although the Examiner
does not state his conclusion in these terms, it appears, based on the
authority cited by the Examiner (SmartGene, Inc. v. Advanced Biological
Laboratories, SA, 555 F. App'x 950 (Fed. Cir. 2014)), that the Examiner
concludes the claims are directed to an abstract idea in the form of mental
processes. Cf SmartGene, 555 F. App'x at 955 (noting that the claims were
directed to patent-ineligible mental processes underlying the treatment of
patients by doctors, in "which every step is a familiar part of the conscious
process that doctors can and do perform in their heads").
The Examiner also determines that the claims are directed to "using
categories to organize, store, and transmit information," because "the
limitations outline organizing content elements into categories such as role
playing simulation, educational, interactive survey or quiz, and character
selection, storing these content elements and transmitting the content
elements to display devices." (Final Act. 4.) Similarly, in Cyberfone
Systems, LLC v. CNN Interactive Group, Inc., 558 F. App'x. 988, 992 (Fed.
Cir. 2014), the Court held that "using categories to organize, store, and
transmit information is well-established," and "the well-known concept of
categorical data storage, i.e., the idea of collecting information in classified
form, then separating and transmitting that information according to its
classification, is an abstract idea that is not patent-eligible." (Emphasis
omitted).
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In challenging the Examiner's determination that the claims recite an
abstract idea, Appellant argues, inter alia, that the Examiner's
characterization of the claims is at a high level of abstraction and is
untethered to the language of the claims. (App. Br. 19.) Appellant further
argues, in particular, that the claims do not merely recite "storing
information and implementing rules to select a list of options" but instead
recite a "convoluted, user interactive series of detailed steps and reactive
steps," which "are not regularly performed in a person's head." (Id. at 17.)
We are not persuaded of error in the Examiner's determination that
the claims recite abstract ideas comprising steps that are susceptible of being
performed as mental processes and/or represent certain methods of
organizing human activity. For example, the limitation "role playing
simulation content elements in which the patient is presented with a situation
involving one of a plurality of issues related to a medical condition
confronted by a character and in which the patient provides input related to
the character's situation," recited in the claims, encompasses a patient,
having reviewed educational content regarding a medical condition,
imagining appropriate and inappropriate responses to particular scenarios,
and thus is susceptible of being performed as a mental process. Similarly, if
the patient engages in role playing with, for example, a medical provider,
this claim limitation also encompasses a method of organizing human
activity in the form of a doctor educating a patient about a medical condition
by providing hypothetical scenarios and requesting patient responses to
those scenarios. We agree with Petitioner, however, that this is only a small
part of the claims. The analysis of the full scope of the claims is addressed
in the next prong.
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Prong Two: Whether the Claims Integrate the Abstract Idea
into a Practical Application
In accordance with prong 2 of Step 2A of the 2019 PEG, the claims
are evaluated to determine whether they recite additional elements beyond
the abstract idea, and, if so, the additional elements are evaluated to
determine whether they integrate the abstract idea into a practical
application. 2019 PEG at 54. The 2019 PEG at page 55 provides the
following exemplary considerations of whether an additional element:
• "reflects an improvement in the functioning of a computer, or
an improvement to other technology or technical field";
• "applies or uses a judicial exception to effect a particular
treatment or prophylaxis for a disease or medical condition";
• "implements a judicial exception with, or uses a judicial
exception in conjunction with, a particular machine or manufacture that is
integral to the claim";
• "effects a transformation or reduction of a particular article [ or
thing] to a different state or thing"; or
• "applies or uses the judicial exception in some other meaningful
way beyond generally linking the use of the judicial exception to a particular
technological environment."
The 2019 PEG also highlights certain examples in which courts have
held that "a judicial exception has not been integrated into a practical
application," such as where the claims "merely use[] a computer as a tool to
perform an abstract idea" or the additional element adds "insignificant extra-
solution activity" to the abstract idea. 2019 PEG at 55 ( emphasis added).
Here, claim 1 recites the additional elements of "prerecorded audio
visual content elements" that include "role playing simulation content
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elements," "education content elements," and "interactive survey or quiz
content elements," in which the content elements are arranged in a particular
order, and also including a "character selection content element" that
includes "images and names for a plurality of characters." Claim 1 also
recites a "user interface" with which a user may interact to "render the
selected content elements" and to input "answers to the survey or quiz
content element." Thus, the claim requires specific content elements,
arranged in a particular manner, and a user interface that allows a user to
interact with the content elements in an interactive role-playing simulation.
Although the underlying computing device may itself not be novel, these
limitations implement the recited abstract ideas with the particular
computing device that is integral to the claim and apply or use the recited
abstract ideas in a meaningful way beyond generally linking the use of the
abstract ideas to a particular technological environment, such that the claim
as a whole is more than a drafting effort designed to monopolize the
exception. See 2019 PEG, 84 Fed. Reg. at 55. As such, claim
1 integrates the abstract idea into a practical application and, therefore, is
directed to patent-eligible subject matter. Similar reasoning applies as to
independent claims 9 and 17, as well as to the dependent claims.
b. Step Two of Alice
We also note that, even if we were to agree with the Examiner that
claim 1 recites a judicial exception, i.e., either a mental process and/or
certain methods of organizing human activity, and does not integrate that
exception into a practical application, the Examiner's analysis does not
establish that the claims fail to add additional limitations beyond the judicial
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exception that are not "well-understood, routine, and conventional" in the
field (see MPEP § 2106.0S(d)).
Specifically, Appellant contends that the claims recite that "role
playing simulation content element is selected based on the patient response
to the interactive survey or quiz content element." (App. Br. 18.) Thus,
according to Appellant, "the claimed method is an interactive method which
changes with patient responses, hence would change with a change in the
patient's medical conditions and with different patients .... " (Id.) In
response, the Examiner determines that "Applicant has not provided any
evidence that steps contained in the instant limitations to select and arrange
content are any different from steps previously used in conventional industry
practice" and "Applicant's system further has no such non-conventional,
non-generic arrangement ... but merely uses generic computer elements as
tools for well-understood, routine, and conventional activities such as
selecting and arranging content." (Ans. 6.) The Examiner further
determines "[t]he computer as recited is a generic computer component that
performs generic computer functions (i.e. storing content, selecting content,
arranging content, displaying content, receiving inputs, and defining care
plan). These are generic computer functions that are well-understood,
routine, and conventional activities previously known to the industry." (Id.
at 7 .) However, although the Examiner points out the generic components,
as well as certain generic computer functions such as storing, selecting,
arranging content, the Examiner does not specifically address the above-
noted limitations highlighted by Appellant. It is the Examiner's burden to
show-with supporting facts-that the recited limitations are well-
understood, routine, and conventional where, as here, the Examiner relies on
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such a basis for the ineligibility rejection. See Berkheimer v. HP Inc., 881
F.3d 1360, 1369 (Fed. Cir. 2018) ("Whether something is well-understood,
routine, and conventional to a skilled artisan at the time of the patent is a
factual determination.").
On the record before us, in the context of the rejection under section
101, the Examiner has not provided any factual finding that the specifically
claimed manner of "stor[ing] a plurality of different prerecorded audio
visual content elements to be rendered to the patient," including specific
content, arranged "into a serially ordered itinerary with the educational
content elements" in a specified manner, and also including a "user interface
... operable by the patient to render the selected content elements ...
according to the serially ordered itinerary," is merely well-understood,
routine, or conventional. The Examiner has, however, issued a rejection of
the claims as unpatentable for obviousness in light of particular prior art.
Thus, rather than speculate whether the claims recite merely "well-
understood, routine, and conventional" subject matter, we address the
novelty of the claims in the context of the Examiner's prior-art rejections
under 35 U.S.C. § 103(a). Meanwhile, under Alice Step Two and the 2019
PEG, we determine that the Examiner has not properly considered the
elements of the claims, both individually and "as an ordered combination,"
to determine whether the additional elements transform the Examiner's
asserted abstract idea into a patent-eligible application.
For all of the foregoing reasons, under the 2019 PEG, we are
persuaded that the Examiner erred in concluding claims 1, 2, 4, 6-12, 16, 17,
and 19 are judicially-excepted from patentability.
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Accordingly, we reverse the Examiner's§ 101 rejection of
independent claims 1, 9, and 1 7, as well as the Examiner's rejection of
dependent claims 2, 4, 6-8, 10-12, 16, and 19, which stand or fall with the
independent claims from which they depend.
B. § 103(a) Rejections5
Appellant's contentions challenging the Examiner's rejections under
section 103(a) are unpersuasive of reversible Examiner error. We adopt as
our own ( 1) the findings and reasons set forth by the Examiner in the action
from which this appeal is taken (Final Act. 6-17) and (2) the reasons set
forth by the Examiner in the Examiner's Answer in response to Appellant's
Appeal Brief ( Ans. 11-15), and concur with the conclusions reached by the
Examiner. We highlight the following for emphasis.
1. Claims 1, 2, 4, 6, and 8: § 103(a) over Brown, Findlay, and
Southard
The Examiner finds Brown teaches several of the limitations of
independent claim 1, including the "content storage element" coupled to a
"communication network:' and configured to store the recited "audio visual
content elements," and the "itinerary arrangement processor operatively
coupled to the content storage element" and configured to select "one or
more of the stored educational content elements" and "a character selection
element." (Final Act. 6-7 (citing Brown 3: 1-11, 3:59---61, 4:33--48, 6:66-
5 The Leahy-Smith America Invents Act ("AIA"), Pub. L. No. 112-29, 125
Stat. 284, 287-88 (2011), revised 35 U.S.C. § 103 effective March 16, 2013.
Because the instant application claims benefit of an application filed before
the effective date of the relevant section of the AIA, we refer to the pre-AIA
version of§ 103 throughout this decision.
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10:67).) The Examiner also finds Brown teaches portions of the "user
interface" element of claim 1. (Id. at 7 (citing Brown 9:20-57.)) The
Examiner finds Brown does not "explicitly recite" certain limitations of
claim 1, which the Examiner finds are taught by Findlay. In particular, the
Examiner finds Findlay teaches the "interactive survey or quiz content
element" (id. at 7 ( citing Findlay ,r,r 278-284)); the "role playing content
element ... being selected based on a patient response to the interactive
survey or quiz content element" (id. at 7 ( citing Findlay ,r,r 278-286)); the
recited arrangement of the content elements (id. at 7-8 ( citing Findlay
,r,r 108, 132-133, 237, 284)); the "character selection element" and
arrangement of "the selected content elements into a serially ordered
itinerary for presentation to the patient with the character selection element
presented to the patient before the role playing simulation content" (id. at 8
(citing Findlay Figs. 3, 5A-5D, ,r,r 97-100); and receiving "inputs from the
patient indicative of answers to the survey or quiz content elements" (id.
( citing Findlay ,r 53)). The Examiner further finds "[i]t would have been
obvious to one of ordinary skill in the art at the time of the invention to
combine the [ teachings ofJ Brown with Findlay with the motivation of
teaching patients the full impacts of medical conditions." (Id. ( citing
Findlay ,r 8).)
The Examiner also finds "[t]he combination of Brown/Findlay does
not explicitly recite the character selection content element presented to the
patient before the role playing simulation content element but after the
interactive survey or quiz content element," but finds Southard teaches this
subject matter "in at least figures 3, 4, and 10, [and] paragraphs 0052, 0054-
0055, 0061" by disclosing "displaying questions, then displaying a character
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choosing screen, then going into the role playing game." (Final Act. 8-9.)
In addition, the Examiner finds "[i]t would have been obvious to one of
ordinary skill in the art at the time of the invention to combine the [ teachings
of] Brown with Southard with the motivation of introducing and reinforcing
health lifestyles." (Id. at 9 ( citing Southard ,r 2.))
Appellant presents several arguments challenging the Examiner's
findings and conclusion of obviousness. Appellant first argues Brown,
Findlay, and Southard are directed merely to "video games," and do not
provide "any description or suggestion of a defined healthcare plan," as
recited in claim 1. (App. Br. 27.) We disagree. As the Examiner finds, and
we agree, "Brown teaches a patient visits a physician who evaluates the
patient's medical condition, develops a treatment strategy and chooses an
appropriate video game for patient based on condition" (Ans. 11 (citing
Brown 5:35-60)) and "Findlay discloses a game creator creating a game that
teaches a patient about disease and conditions affecting the human body
which has a number of levels and stages that progress as the patient answers
questions to provide the patient with an understanding of the disease and
conditions, together with details of how it may be treated and/or avoided."
(Id. at 12 (citing Findlay ,r,r 85-92, 108, 133, 237, 284).) Thus, Brown and
Findlay do not disclose merely video games, but expressly disclose role-
playing simulations designed to educate patients as part of a treatment plan
for patient medical conditions. (See Brown, Abs. ( describing a "[ m ]ethod
for treating a medical condition" using a video game that implements a
"psychological strategy," which "contains instructions for a scoring
procedure for quantitatively analyzing the medical condition of the human
patient, and/or counseling instructions or self-care instructions"); Findlay,
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Abs. ("A game is provided for teaching users about conditions affecting the
human body.").)
Appellant also argues "[t]he handheld computer game of Brown does
not serially order content elements." (App. Br. 27.) We disagree. As the
Examiner finds, and we agree, both Brown and Findlay disclose that the
software for the games selects and loads the content elements of the games,
including different levels of the games as the patients progress through the
levels, and, thus, "the software selects and orders content elements." (Ans.
11 ( citing Brown 6: 10-25, 7:49-50; Findlay ,r,r 89, 284, 286).)
Appellant also argues "Findlay does not disclose or suggest an
interactive survey following an educational content session and prior to
being given character choices." (App. Br. 27.) We disagree. As the
Examiner finds, and we agree:
Findlay discloses the knowledge center is used to provide the
game player with knowledge required to answer the questions
and represents information provided to the game player at the
start of every level, the questions being provided after the
knowledge center has been accessed (i-f 0132-0133). In other
words, Findlay discloses the knowledge center is presented
before the questions which is presented before the start of every
level of the game. The knowledge center is equivalent to the
claimed educational content, the questions are equivalent to the
claimed interactive survey, and the levels are equivalent to the
claimed role playing simulation content. Findlay further
discloses a character selection process that includes images and
names of the characters, where the patient selects the character
prior to beginning of the game (figures 3, 5A-5D, ,r 0097-0100),
which is equivalent to the claimed character selection content
presented to the patient before the role playing content.
(Ans. 11-12.) The Examiner further finds, and we agree: "Findlay has not
been used to disclose character selection content after the interactive survey.
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Southard discloses displaying questions, then displaying a character
choosing screen, then going into the role playing game." (Id. at 12 (citing
Southard Figs. 3, 4, and 10, ,r,r 52, 54--55, 61).) In other words, the
Examiner finds Findlay teaches arranging educational content elements
before the interactive survey or quiz elements, which are arranged before the
role playing simulation content elements. The Examiner relies on Southard
as teaching presenting interactive survey or quiz elements before character
selection. (Id.; Final Act. 9). The Examiner combines the teachings of these
disclosures to result in the claimed arrangement of content elements. (Final
Act. 9). Appellant's challenges to the Examiner's findings, in which
Appellant attacks Findlay and Southard each singly for failing to teach the
entire claimed arrangement of elements, are not persuasive of Examiner
error, because it is well established that one cannot show nonobviousness by
attacking references individually where the rejections are based on
combinations of references. See In re Keller, 642 F.2d 413,425 (CCPA
1981); In re Merck & Co., 800 F.2d 1091 (Fed. Cir. 1986).
For the foregoing reasons, we are not persuaded of error in the
Examiner's 35 U.S.C. § 103(a) rejection of independent claim 1 based on the
combined teachings of Brown, Findlay, and Southard. Accordingly, we
sustain that rejection.
Appellant's arguments regarding dependent claims 2, 4, 6, and 8 are
also unavailing of Examiner error. With regard to a "generic care template"
as recited in claim 2, we note that this concept is broadly described in
Appellant's Specification as a "road map[] to direct the health care
professional in developing the care plan." (Spec. 9: 11-13.) As the
Examiner finds, and we agree, Brown discloses an example in which a
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patient is diagnosed with diabetes, and "[a]s treatment, the physician
prescribes insulin shots and a video game based on positive-reinforcement
and self-management." (Brown 8:47--49; see also Final Act. 9 ( citing
Brown Figs. 7, 8, 8:46-9:15).) Thus, we agree Brown teaches or suggests
that the content of the game is selected based on a "generic care template"-
for example, as part of a treatment regimen for diabetes.
With regard to claim 4, which recites that "select portions of the
educational content element" are rendered to the patient in response to a
patient's "incorrect[]" answers to a survey or quiz element, with the "select
portions being relevant to the incorrectly answered questions," Appellant
argues that Brown fails to teach this subject matter and that Southard and
Findley are not asserted to cure Brown's shortcomings. (App. Br. 29.) We
are not persuaded of error. As the Examiner finds, and we agree, Brown
discloses a scenario in which a patient, who suffers from an eating disorder,
plays a game in which the patient's "graphical game character" must make
food choices, wherein the patient's making the wrong food choices will have
"immediate consequences" for the "game character's ability to survive."
(Ans. 9; Brown 10:23-33).) Thus, if the patient makes incorrect food
choices in directing the game character, the patient is educated by the
consequences of such choices. (See id.)
Claim 6 recites a "character introduction content element" that is to be
rendered to the patient "after the character selection content element and
before the role playing simulation content element." Appellant argues that
"the computer game of Findlay, note Figures 5A-5D referenced by the
Examiner, provides for the selection of superhero type characters.
Moreover, the characters of Figures 5A-5D represent not patients, but
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medical concepts such as Insulin or Kortizol." (App. Br. 30.) Appellant's
argument implicitly assumes that claim 6 requires the "character content
element" to represent a patient. Claim 6 is not so limited, however, but
instead recites that the "character introduction content element includ[ es] an
image of the selected character and information about the selected
character." As the Examiner finds, and we agree, "Findlay discloses the
patient selects the character prior to beginning of the game, the patient then
will be provided with background information, such as characters
introducing themselves and giving a brief overview of their capabilities, then
the game play begins." (Ans. 13 (citing Findlay Figs. 3, 5A-5D, ,r,r 97-99,
262-263).) In addition, although Appellant insists Findlay discloses the
game characters are named for "medical concepts," Findlay discloses that
the "game player typically enters details of themselves and/or a character to
play," and notes that "this allows the character to be named after the game
player . ... " (Findlay ,r 97 (emphasis added).) Thus, even if claim 6 did
require the character to reflect the patient (game player), Findlay discloses
that.
Claim 8 recites selection of a "situation of the day," which is a "role
playing simulation content element specifically selected for the current day."
The Examiner finds, and we agree, that this is taught by Brown, which
"discloses a simulation game of a plane or balloon flying at a certain altitude
in correlation with a patient's blood glucose level for a specific current day[,
which] is displayed to patient to track blood glucose for that day." (Ans. 14
(citing Brown Figs. 7-8, 8:46-9:15).) Because Brown's game content is
directly correlated to the patient's current medical status (blood glucose
level), it reflects a "situation of the day."
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For the foregoing reasons, we are not persuaded of error in the
Examiner's rejection of independent claim 1 or of dependent claims 2, 4, 6,
or 8, and we, therefore, sustain those rejections.
2. Claims 7, 9-12, and 16: 103(a) over Brown, Findlay, Southard,
and Mizuta
Independent claim 9 is similar to claim 1, although it is recited in
method form. The Examiner relies on the same combination of Brown,
Findlay, and Southard to teach the limitations of claim 9, except for claim
9' s additional recited limitation of "the character introduction content
element includes audio of the selected character," for which the Examiner
additionally combines the teachings of Mizuta. (Final Act. 11-14.) With
regard to Mizuta, the Examiner finds it discloses "recording the voice of a
game player to use as the speech for a game character when an image of the
character speaking is displayed," and further finds "[i]t would have been
obvious to one of ordinary skill in the art at the time of the invention to
combine Brown with Mizuta with the motivation of allowing the game
player to feel a sense of closeness to the game character so as to not reduce
interest in the game." (Id. at 13-14 (citing Mizuta ,r,r 28, 52).) The
Examiner relies on the same combination and reasoning to reject claim 7,
which depends from claim 1 and also recites "the character introduction
element includes audio of the selected character." (Id. at 10-11.) Claims
10-12 and 16 depend from claim 9, and are similar to dependent claims 2, 6,
4, and 8, respectively, and are rejected over the combination of Brown,
Findlay, Southard, and Mizuta based on similar reasoning as applied to
claim 9 and also to claims 2, 6, 4 and 8. (Id. at 14--15.)
Appellant's arguments as to these claims are substantively similar to
those we have considered, and rejected, above with regard to claims 1, 2, 4,
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6, and 8. Appellant does not dispute that Mizuta discloses the "audio of the
selected character," as recited in claims 7, 9-12 and 16, nor does Appellant
challenge the Examiner's combination of the references. We, therefore,
sustain the Examiner's rejection of claims 7, 9-12 and 16.
3. Claims 17 and 19: 103(a) over Brown and Findlay
Claim 1 7 is an independent claim, and recites, in method form,
limitations similar to those of claim 1, except it does not require the
character content elements, for which the Examiner relies on Southard in
connection with the rejection of claim 1 (see supra). Thus, the Examiner
rejects claim 17 (and dependent claim 19) over the combination of Brown
and Findlay. (Final Act. 16-17.)
Appellant argues the Examiner's rejection is in error, relying in part
on arguments raised in connection with claim 1 that we have rejected for the
reasons noted above. (App. Br. 33 (asserting "Brown and Findlay are
directed to video games").) Specific to claim 17, Appellant additionally
argues:
[C]laim 17 calls for the content elements to include interactive
survey or quiz content elements and role playing simulation
content elements, which are displayed in a prescribed temporal
order. Neither Brown, nor Findlay, suggest a series of interactive
survey or quiz content elements and role playing simulation
content elements selected by a computer and arranged in the
specified temporal order.
(App. Br. 33 ( emphasis added).) Appellant makes a similar argument as to
claim 19. (Id. at 34.) The "temporal order" required by claim 17 is
"arranging by the at least one processor the interactive survey or quiz
content element temporally before the role playing simulation content
element in the care plan." In other words, claim 17 requires quiz or survey
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content before the role playing simulation content. Claim 19 depends from
claim 17 and recites arranging "the educational content element temporally
before the role playing simulation content element."
The Examiner finds, and we agree, that Findlay teaches educational
content, as recited in claim 19, and survey or quiz content elements, as
recited in claim 17, before the role playing simulation content. (Final Act.
17 (citing Findlay ,r,r 132-133, 284).) In particular, Findlay discloses:
Thus for example, the knowledge center may represent
information provided to the game player at the start of every
level. This can be in the form of written or spoken information
which the game player must consider before commencing the
level. In this case, the questions could be provided after the
knowledge center has been center has been accessed, or
throughout the level at appropriate times.
(Findlay ,r 133 ( emphasis added).) Findlay also discloses situations in which
"questions must be answered before the game can continue." (Id. ,r 284.)
Thus, we agree Findlay discloses quiz, educational, and role-playing content
elements in the required "temporal order" of claims 1 7 and 19.
For the foregoing reasons, we are not persuaded of error in the
Examiner's 35 U.S.C. § 103(a) rejection of claims 17 and 19, and we,
therefore, sustain that rejection.
DECISION
The Examiner's 35 U.S.C. § 101 rejection of claims 1, 2, 4, 6-12, 16,
1 7, and 19 is reversed.
The Examiner's 35 U.S.C. § 103(a) rejections of claims 1, 2, 4, 6-12,
16, 1 7, and 19 are affirmed.
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Because we affirm at least one ground of rejection with respect
to each claim on appeal, the Examiner's decision rejecting claims 1, 2, 4, 6-
12, 16, 17, and 19 is affirmed. See 37 C.F.R. § 4I.50(a)(l).
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED
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