International Business Machines Corporation

Patent Trials and Appeals Board

Dec 23, 2020

2020005565 (P.T.A.B. Dec. 23, 2020)

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.
15/611,326 06/01/2017 Tien Hiong Lee AS920170002US1 4530
45725 7590 12/23/2020
Walder Intellectual Property Law PC
445 Crestover Circle
Richardson, TX 75080
EXAMINER
ZHANG, DUAN
ART UNIT PAPER NUMBER
3685
MAIL DATE DELIVERY MODE
12/23/2020 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 TIEN HIONG LEE,
KONSTANTIN LEVINSKI,
EDWIN BOAZ SOENARYO, and
WENG SING TANG

Appeal 2020-005565
Application 15/611,326
Technology Center 3600

Before HUBERT C. LORIN, MICHAEL C. ASTORINO, and
KENNETH G. SCHOPFER, Administrative Patent Judges.

LORIN, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant appeals from the
Examiner’s final decision to reject claims 1–4, 6, 8–11, 13, 15–18, and 20.1
We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE and enter a NEW GROUND of rejection.

1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R.
§ 1.42(a). Appellant identifies International Business Machines Corporation
as the real party in interest. App. Br. 2.
Appeal 2020–005565
Application 15/611,326

2
CLAIMED SUBJECT MATTER
The claimed subject matter “relates generally to an improved data
processing apparatus and method and more specifically to mechanisms for
secure sensitive private information dependent transactions.” (Spec., para.
1). Claim 1, reproduced below, is illustrative of the claimed subject matter
(emphasis added):
1. A method, in a data processing system, for secure
sensitive private information dependent transactions, the method
comprising:
receiving, in a cognitive sensitive personal information
(SPI) broker from a service provider, a query and a transaction
token S associated with a current transaction between a SPI
owner and the service provider, wherein the query comprises
criteria required to be fulfilled using particular SPI of the SPI
owner for the current transaction initiated by the SPI owner, the
particular SPI stored on one or more authorized devices of the
SPI owner, the particular SPI is fulfilled from the group
consisting of identity information, financial information, and
medical information;
identifying, by the cognitive SPI broker, the particular SPI
required based on the query;
constructing, by the cognitive SPI broker, a request for the
particular SPI from the SPI owner thereby forming a constructed
request;
sending, by the cognitive SPI broker, the constructed
request to the one or more authorized devices associated with the
SPI owner enrolled with the cognitive SPI broker;
receiving by the cognitive SPI broker, the particular SPI
from an authorized device of the one or more authorized devices
associated with the SPI owner thereby forming received SPI;
using, by the cognitive SPI broker, the received SPI to
complete the current transaction;
and
sending, by the cognitive SPI broker, a notification to the
SPI owner that the current transaction has been completed.
Appeal 2020–005565
Application 15/611,326

3
Appeal Br. 37 (Claims Appendix).
REFERENCES
The prior art relied upon by the Examiner is:
Name Reference Date
Coulter US 2010/0121767 A1 May 13, 2010
Ortiz US 2014/0108263 A1 Apr. 17, 2014
Barbir US 2014/0173754 A1 June 19, 2014
Yang US 2016/0300222 A1 Oct. 13, 2016
REJECTIONS
Claims 1–4, 6, 8–11, 13, 15–18, and 20 are rejected under 35 U.S.C. §
101 as being directed to judicially-excepted subject matter.
Claims 1, 6, 8, 13, 15, and 20 are rejected under 35 U.S.C. § 103 as
being unpatentable over Coulter and Barbir.
Claims 2, 9, and 16 are rejected under 35 U.S.C. § 103 as being
unpatentable over Coulter, Barbir, and Ortiz.
Claims 3, 4, 10, 11, 17, and 18 are rejected under 35 U.S.C. § 103 as
being unpatentable over Coulter, Barbir, Yang, and Ortiz.
OPINION
The rejection of claims 1–4, 6, 8–11, 13, 15–18, and 20 under 35 U.S.C. §
101 as being directed to judicially-excepted subject matter.
Claims 1–4, 6, 8–11, 13, 15–18, and 20 are indefinite for the reasons
discussed below. Accordingly, the rejection of claims 1–4, 6, 8–11, 13, 15–
18, and 20 under 35 U.S.C. § 101 for claiming patent-ineligible subject
matter must fall, pro forma, because it necessarily is based on speculative
assumptions as to the meaning of the claims. See In re Steele, 305 F.2d 859,
862–63 (CCPA 1962).
Appeal 2020–005565
Application 15/611,326

4
We make the following observations to explain why we are raising a
question of definiteness. We otherwise have no comment on the merits of
the Examiner’s position regarding the patent–eligibility of the claimed
subject matter.
We cannot meaningfully review this rejection because, based on the
present record, we have been unable to give the claim limitation “a cognitive
SPI broker” a broadest reasonable construction in light of the Specification,
as it would be interpreted by one of ordinary skill in the art.

Introduction
35 U.S.C. § 101 provides that “[w]hoever invents or discovers any
new and useful process, machine, manufacture, or composition of matter, or
any new and useful improvement thereof, may obtain a patent therefor.”
In that regard, claim 1 (reproduced above) covers a “process” and is
thus statutory subject matter for which a patent may be obtained.2 This is
not in dispute. The two other independent claims on appeal, claim 8 to “[a]
computer program product” and claim 15 to “[a]n apparatus” are nominally
directed to the “manufacture” and “apparatus” statutory categories of
invention, respectively. This is also undisputed.
However, the 35 U.S.C. § 101 provision “contains an important
implicit exception: Laws of nature, natural phenomena, and abstract ideas
are not patentable.” Alice Corp. v. CLS Bank Int’l, 573 U.S. 208, 216 (2014)

2 This corresponds to Step 1 of the 2019 Revised 101 Guidance which
requires determining whether “the claim is to a statutory category.” 84 Fed.
Reg. at 53. See also id. at 53–54 (“consider[] whether the claimed subject
matter falls within the four statutory categories of patentable subject matter
identified by 35 U.S.C. 101.”).
Appeal 2020–005565
Application 15/611,326

5
(quoting Ass’n for Molecular Pathology v. Myriad Genetics, Inc., 569 U.S.
576, 589 (2013)).
In that regard, notwithstanding claims 1, 8, and 15 cover statutory
subject matter (as are the claims depending from them), the Examiner has
raised a question of patent eligibility on the ground that claim 1 is directed to
an abstract idea.
Alice identifies a two-step framework for determining whether
claimed subject matter is directed to an abstract idea. Alice, 573 U.S. at 217.
Alice step one — the “directed to” inquiry:
According to Alice step one, “[w]e must first determine whether the
claims at issue are directed to a patent-ineligible concept.” Alice, 573 U.S.
at 218 (emphasis added).
The Examiner determined, inter alia, that the claims are directed to “a
method for [processing] secure sensitive private information dependent
transactions.” Final Act. 5. To reach that determination, the Examiner
reproduces much of claim 1, focusing on the “receiving,” “identifying,”
“constructing,” “sending,” “receiving,” “using,” and, “sending” terms in the
claim. See id. at 5–8. But the claim limitation “a cognitive SPI broker” is
not addressed.
Appellant disagrees, arguing inter alia that
The fact that the claimed invention is an improved computer tool
that operates to ensure that the SPI will remain secure once it is
released to the organizations and/or stored in the service
providers' datacenters is evident from the features recited in the
claims that the Examiner overlooks in its oversimplification and
generalization of the claimed invention. Taking claim 1 as an
example, the claim recites that the data processing system
receives, in a cognitive sensitive personal information (SPI)
broker from a service provider … .
Appeal 2020–005565
Application 15/611,326

6
App. Br. 8. See also App. Br. 13:
the claims clearly are specifically directed to an improved
computing tool that performs the ordered combination of
operations to construct, by the cognitive SPI broker, a request for
the particular SPI from the SPI owner thereby forming a
constructed request and send, by the cognitive SPI broker, the
constructed request to the one or more authorized devices
associated with the SPI owner enrolled with the cognitive SPI
broker.
And Reply Br. 12:
the claimed invention is claiming an inventive concept in the
particular ordered combination of operations recited in the
present claims, as well as the particular way in which this ordered
combination of operations is implemented specifically in a
specifically configured computing tool. No computing tool prior
to the presently claimed invention provided the functionality of
capabilities to perform the particular set of operations set forth in
the present claims.
Accordingly, a dispute over whether claim 1 is directed to an abstract
idea is present. Specifically, is claim 1 directed to “a method for
[processing] secure sensitive private information dependent transactions
(Final Act. 5) or “an improved computing tool” (App. Br. 13)?

Claim Construction3
To make a determination as to whether the claims at issue are directed
to a patent-ineligible concept (or not), in accordance with step one of the

3 “[T]he important inquiry for a § 101 analysis is to look to the claim.”
Accenture Glob. Servs., GmbH v. Guidewire Software, Inc., 728 F.3d 1336,
1345 (Fed. Cir. 2013). “In Bancorp Servs., L.L.C. v. Sun Life Assurance Co.
of Can., 687 F.3d 1266, 1273 (Fed. Cir. 2012), the court observed that
‘claim construction is not an inviolable prerequisite to a validity
Appeal 2020–005565
Application 15/611,326

7
Alice framework, we need to first accurately articulate what it is that the
claims are directed to. The Examiner and the Appellant have two different
views on this. The correct view will be the one that aligns with the claims,
properly construed. In that regard, we consider the claim as a whole4 giving
it the broadest reasonable construction5 as one of ordinary skill in the art
would have interpreted it in light of the Specification6 at the time of filing.
All the claims call for a “cognitive SPI broker.” It is integral to the
claimed process because all the steps are performed by it. The claim does
not define want it is; that is, in structural terms. At best, it is described in
functional terms; that is, it performs “receiving,” “identifying,”
“constructing,” “sending,” “receiving,” “using,” and, “sending” steps.
Claim 1 does not, otherwise, give one reading the claim any insight into

determination under § 101.’ However, the threshold of § 101 must be
crossed; an event often dependent on the scope and meaning of the claims.”
Internet Patents Corp. v. Active Network, Inc., 790 F.3d 1343, 1347–48
(Fed. Cir. 2015).

4 “In determining the eligibility of respondents’ claimed process for patent
protection under § 101, their claims must be considered as a whole.”
Diamond v. Diehr, 450 U.S. 175, 188 (1981).

5 See 2019 Revised 101 Guidance, 84 Fed. Reg. at 52, footnote 14 (“If a
claim, under its broadest reasonable interpretation.”).

6 “First, it is always important to look at the actual language of the claims. .
. . Second, in considering the roles played by individual limitations, it is
important to read the claims ‘in light of the specification.’” Smart Sys.
Innovations, LLC v. Chicago Transit Auth., 873 F.3d 1364, 1378 (Fed. Cir.
2017) (J. Linn, dissenting in part and concurring in part) (citing Enfish, LLC
v. Microsoft Corp., 822 F.3d 1327, 1335 (Fed. Cir. 2016)), among others.
Appeal 2020–005565
Application 15/611,326

8
what “a cognitive sensitive personal information (SPI) broke” entails,
making it difficult to ascertain the claim’s scope.
Turning to the Specification, “a cognitive SPI broker” is described
several places, notably the following:
• Para. 21: “The cognitive system comprises of a cognitive SPI broker
that acts as a secure intermediary between service providers and
customers, allowing a customer to transact with the service provider
without revealing their SPI to the service provider throughout the life
cycle of the business transactions. With reference to the above-
mentioned example, the cognitive system enables the customer to
make payments without revealing financial information to the on-line
retail merchant”;
• Para. 23: “in a first embodiment, the cognitive SPI broker searches a
taxonomy of the SPI stored for the customer in a user registry for a
location …”;
• Para. 24: “In a second embodiment, the cognitive SPI broker searches
a user registry for a location …”; and,
• Para. 49: “Cognitive SPI broker 302 comprises cognitive reasoning
engine 308, user registry 310, and SPI registration engine 312.
Cognitive reasoning engine 308 is a lexical module that analyzes and
processes queries and requests from service providers 316 received
via service provider facing APIs 306. That is, cognitive reasoning
engine 308 runs cognitive-based reasoning and decision making
algorithms that act on those queries and requests. User registry 310 is
a taxonomy of the SPI for all SPI owners 314 enrolled with Cognitive
Appeal 2020–005565
Application 15/611,326

9
SPI broker 302 via a user enrollment process and device authorization
process.”
This last passage (para. 49) is apparently referring to Fig. 3 reproduced
below:

Fig. 3 “depicts a functional block diagram of a mechanism for secure
sensitive private information dependent transactions in accordance with an
illustrative embodiment.” Para. 11.
The passages and Figure add to the difficulty in understanding what a
“Cognitive SPI broker” is. As with the claims, some of the disclosures
describe what the “Cognitive SPI broker” is intended to accomplish (paras.
21, 23, and 24), not what it is. Para. 49 provides more technical detail (i.e.,
it comprises “engine[s]”) but is an embodiment of the invention. The
claimed process does not appear to limit the “Cognitive SPI broker” to that
embodiment. To make matters even more confusing, the “engines”
Appeal 2020–005565
Application 15/611,326

10
mentioned in para. 49 describe what the “cognitive SPI broker” comprises
and are earlier described as
not intended to be limiting of any particular implementation for
accomplishing and/or performing the actions, steps, processes,
etc., attributable to and/or performed by the engine. An engine
may be, but is not limited to, software, hardware and/or firmware
or any combination thereof that performs the specified functions
including, but not limited to, any use of a general and/or
specialized processor in combination with appropriate software
loaded or stored in a machine readable memory and executed by
the processor. Further, any name associated with a particular
engine is, unless otherwise specified, for purposes of
convenience of reference and not intended to be limiting to a
specific implementation. Additionally, any functionality
attributed to an engine may be equally performed by multiple
engines, incorporated into and/or combined with the
functionality of another engine of the same or different type, or
distributed across one or more engines of various configurations.
Para. 30.
We understand that an objective of the invention is to “provide
mechanisms for secure sensitive private information dependent transactions”
(para. 16) and employing a “cognitive SPI broker” is essential in achieving
that objective. But what is the “cognitive SPI broker”? Is it simply a
concept, e.g., a mechanism for processing information? Or is it a generic
computer system (see para. 30 (“a general … processor in combination with
appropriate software”)) performing the recited “receiving,” “identifying,”
“constructing,” “sending,” “receiving,” “using,” and, “sending” steps? Or is
it something more than that as Appellant suggests.
At this juncture, given nothing more than what is recited in the claims
and the cited passages and Figure 3 from the Specification, we are unable to
give the element “cognitive SPI broker” an ordinary and customary
Appeal 2020–005565
Application 15/611,326

11
meaning. There is insufficient information to ascertain what the “cognitive
SPI broker” of the claims is.
The disagreement between the Examiner and the Appellant as to what
the “cognitive SPI broker” is mirrors our own difficulty.
The Examiner appears to view it as a generic computer system. See
Ans. 6–7 (“general purpose hardware”).
Appellant has a different view. See e.g., “an improved computer tool”
(App. Br. 8). And yet the technology underlying the “cognitive SPI broker”
which would help us understand the technological improvement over prior
art process is never spelled out.
We agree that the Specification provides support for the suggestion
that the “cognitive SPI broker” provides an essential element in practicing
the claimed method. See e.g., para. 21. But given no further technical details
about the “cognitive SPI broker,” we cannot determine whether the claim
element “cognitive SPI broker” is a generic computer system simply
performing the recited “receiving,” “identifying,” “constructing,” “sending,”
“receiving,” “using,” and, “sending” steps as the Examiner understands it to
be, or, for example, more complex system, as Appellant suggests. Based on
the present record, we are unable to resolve that dispute in any meaningful
way.
The Abstract Idea7
Since we are unable to ascertain what the “cognitive SPI broker” is,
we are unable to give the claims a broadest reasonable construction (see

7 See Step 2A of the 2019 Revised 101 Guidance. Step 2A determines
“whether a claim is ‘directed to’ a judicial exception,” such as an abstract
idea. Id. at 53. Step 2A is a two prong inquiry.
Appeal 2020–005565
Application 15/611,326

12
above). Consequently, we cannot proceed to identify those limitations that
recite an abstract idea.8 Knowing what the “cognitive SPI broker” consists
of is crucial to determining whether the claimed subject matter is directed to
an abstract idea; that is to say, whether the claimed subject matter falls
within the enumerated groupings of abstract ideas; that is, “Mathematical
concepts,” “Certain methods of organizing human activity,” and “Mental
processes.” 9
Specific asserted technological improvements, when claimed, can
render claimed subject matter not directed to an abstract idea.10 Cf. McRO,

8 See Prong One (a) of Step 2A of the 2019 Revised 101 Guidance. “To
determine whether a claim recites an abstract idea in Prong One, examiners
are now to: (a) Identify the specific limitation(s) in the claim under
examination (individually or in combination) that the examiner believes
recites an abstract idea . . . .” Id. at 54.

9 See Prong One [“Evaluate Whether the Claim Recites a Judicial
Exception”] (b) of Step 2A of the 2019 Revised 101 Guidance. “To
determine whether a claim recites an abstract idea in Prong One, examiners
are now to . . . (b) determine whether the identified limitation(s) falls within
the subject matter groupings of abstract ideas enumerated in Section 1 of the
[2019 Revised 101 Guidance].” Id. at 54.
10 See Prong Two (“If the Claim Recites a Judicial Exception, Evaluate
Whether the Judicial Exception Is Integrated Into a Practical
Application”) of Step 2A of the 2019 Revised 101 Guidance. “A claim that
integrates a judicial exception into a practical application will apply, rely on,
or use the judicial exception in a manner that imposes a meaningful limit on
the judicial exception, such that the claim is more than a drafting effort
designed to monopolize the judicial exception.” 2019 Revised 101
Guidance 54. One consideration, implicated here, that is “indicative that an
additional element (or combination of elements) may have integrated the
exception into a practical application” (id., at 55) is if “[a]n additional
Appeal 2020–005565
Application 15/611,326

13
Inc. v. Bandai Namco Games America Inc., 837 F.3d 1299, 1316 (Fed. Cir.
2016) (“When looked at as a whole, claim 1 is directed to a patentable,
technological improvement over the existing, manual 3–D animation
techniques.”). In that regard, we can consider specific asserted technological
improvements in the step one analysis of the Alice framework. This is
consistent with the case law. See Ancora Techns., Inc. v. HTC America,
Inc., 908 F.3d 1343, 1347 (Fed. Cir. 2018) (“We have several times held
claims to pass muster under Alice step one when sufficiently focused on
such improvements.”)
Nonetheless, as we have explained, without an understanding of what
the “cognitive SPI broker” technically entails, we are unable to ascertain a
broadest reasonable construction for the claims. That inability prevents us
from accurately articulating what the claims are directed to and then
reaching a determination as to whether what the claims are directed to be a
patent-ineligible concept under step one of the Alice framework. See
TecSec, Inc. v. Adobe Inc., 978 F.3d 1278, 1294 (Fed. Cir. 2020) (“The Step
1 “directed to” analysis called for by our cases depends on an accurate
characterization of what the claims require and of what the patent asserts to
be the claimed advance. The accuracy of those characterizations is crucial to
the sound conduct of the inquiries into the problem being addressed and
whether the line of specificity of solution has been crossed.”)
We do not reach step two of the Alice framework.

element reflects an improvement in the functioning of a computer, or an
improvement to other technology or technical field” (id.).
Appeal 2020–005565
Application 15/611,326

14
For the foregoing reasons, we are not placed in a position to do a
meaningful review of this rejection.

The rejection of claims 1, 6, 8, 13, 15, and 20 under 35 U.S.C. § 103(a) as
being unpatentable over Coulter and Barbir.

The rejection of claims 2, 9, and 16 under 35 U.S.C. § 103(a) as being
unpatentable over Coulter, Barbir, and Ortiz.
The rejection of claims 3, 4, 10, 11, 17, and 18 under 35 U.S.C. § 103(a) as
being unpatentable over Coulter, Barbir, Yang, and Ortiz.
Claims 1–4, 6, 8–11, 13, 15–18, and 20 are indefinite for the reasons
discussed below. Accordingly, the rejections of claims 1, 6, 8, 13, 15, and
20 under 35 U.S.C. § 103(a) as being unpatentable over Coulter and Barbir;
claims 2, 9, and 16 under 35 U.S.C. § 103(a) as being unpatentable over
Coulter, Barbir, and Ortiz; and, claims 3, 4, 10, 11, 17, and 18 under 35
U.S.C. § 103(a) as being unpatentable over Coulter, Barbir, Yang, and Ortiz
must fall, pro forma, because they necessarily arer based on speculative
assumptions as to the meaning of the claims. See In re Steele, 305 F.2d 859,
862–63 (CCPA 1962).

NEW GROUND OF REJECTION
Claims 1–4, 6, 8–11, 13, 15–18, and 20 are rejected under 35 U.S.C.
§ 112(b) as being indefinite for failing to particularly point out and distinctly
claim the subject matter which Appellant regards as the invention.
The claims and the Specification fail to inform those skilled in the art
about the scope of the “cognitive SPI broker” with any reasonable certainty.
Appellant provides no definition for the “cognitive SPI broker” either in the
Appeal 2020–005565
Application 15/611,326

15
briefs or the Specification. The “cognitive SPI broker” has no ordinary
meaning, and its scope is unclear based on the intrinsic record. At most, the
briefs and Specification describe the “cognitive SPI broker” in terms of its
functions – e.g., “[t]he cognitive system comprises of a cognitive SPI broker
that acts as a secure intermediary between service providers and customers,
allowing a customer to transact with the service provider without revealing
their SPI to the service provider throughout the life cycle of the business
transactions.” Spec., para. 21. This is a result-oriented description that gives
no insight into what the “cognitive SPI broker” is. It insufficiently
circumscribes the scope of the “cognitive SPI broker.”
Appellant argues that said “cognitive SPI broker” is “an improved
computer tool”. App. Br. 8. This suggests that there are technical details
associated with the “cognitive SPI broker” that render it more than a general
purpose computer. However, because the present record provides
insufficient insight into what those technical details are, the claim phrase
“cognitive SPI broker” remains vague. “[U]nder the broadest reasonable
interpretation when read in light of the Specification, [the phrase “cognitive
SPI broker”] is vague and unclear, and a person having ordinary skill in the
art would not be able to discern the metes and bounds of the claimed
invention in light of this claim language.” Ex parte McAward, 2015–006416
(PTAB Aug. 25, 2017) (precedential).
Accordingly, claims 1–4, 6, 8–11, 13, 15–18, and 20 are rejected
under 35 U.S.C. § 112(b) as indefinite for failing to particularly point out
and distinctly claim Appellant’s invention.
Appeal 2020–005565
Application 15/611,326

16
CONCLUSION
The decision of the Examiner to reject claims 1–4, 6, 8–11, 13, 15–18,
and 20 is reversed and a new rejection is entered as a new ground of
rejection.
More specifically:
The decision of the Examiner to reject claims 1–4, 6, 8–11, 13, 15–18,
and 20 under 35 U.S.C. § 101 for claiming patent-ineligible subject matter is
reversed pro forma.
The rejections of claims 1, 6, 8, 13, 15, and 20 under 35 U.S.C. § 103
as being unpatentable over Coulter and Barbir; claims 2, 9, and 16 under 35
U.S.C. § 103 as being unpatentable over Coulter, Barbir, and Ortiz; and,
claims 3, 4, 10, 11, 17, and 18 under 35 U.S.C. § 103 as being unpatentable
over Coulter, Barbir, Yang, and Ortiz are reversed pro forma.
Claims 1–4, 6, 8–11, 13, 15–18, and 20 are newly rejected under 35
U.S.C. § 112(b).
DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/
Basis
Affirmed Reversed New
Ground
1–4, 6, 8–
11, 13,
15–18, 20
101 Eligibility 1–4, 6, 8–
11, 13,
15–18, 20

1, 6, 8,
13, 15, 20
103 Coulter,
Barbir
1, 6, 8,
13, 15, 20

2, 9, 16 103 Coulter,
Barbir, Ortiz
2, 9, 16
3, 4, 10,
11, 17, 18
103 Coulter,
Barbir, Ortiz
3, 4, 10,
11, 17, 18

Appeal 2020–005565
Application 15/611,326

17
112(b) Indefiniteness 1–4, 6,
8–11,
13, 15–
18, 20
Overall
Outcome
1–4, 6, 8–
11, 13,
15–18, 20
1–4, 6,
8–11,
13, 15–
18, 20

NEW GROUND
This decision contains a new ground of rejection pursuant to
37 C.F.R. § 41.50(b). 37 C.F.R. § 41.50(b) provides “[a] new ground of
rejection pursuant to this paragraph shall not be considered final for judicial
review.” 37 C.F.R. § 41.50(b) also provides that the Appellant, WITHIN
TWO MONTHS FROM THE DATE OF THE DECISION, must exercise
one of the following two options with respect to the new ground of rejection
to avoid termination of the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate amendment
of the claims so rejected or new Evidence relating to the claims
so rejected, or both, and have the matter reconsidered by the
examiner, in which event the prosecution will be remanded to
the examiner. . . .

(2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same Record. . . .

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).

REVERSED; 37 C.F.R. § 41.50(b)