Kulangara SivadasDownload PDFPatent Trials and Appeals BoardMar 31, 20212020002245 (P.T.A.B. Mar. 31, 2021) Copy Citation 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. 12/931,101 01/24/2011 Kulangara Sivadas 3112 110572 7590 03/31/2021 Kulangara Sivadas 50 Tavella Place Foothill, CA 92610 EXAMINER BLOCH, MICHAEL RYAN ART UNIT PAPER NUMBER 3791 MAIL DATE DELIVERY MODE 03/31/2021 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 KULANGARA SIVADAS Appeal 2020-002245 Application 12/931,101 Technology Center 3700 Before JENNIFER D. BAHR, JOHN C. KERINS, and CHARLES N. GREENHUT, Administrative Patent Judges. BAHR, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s decision to reject claims 134–142. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. 1 We use the term “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies the real party in interest as Kulangara Sivadas. Appeal Br. 3. Appeal 2020-002245 Application 12/931,101 2 CLAIMED SUBJECT MATTER According to Appellant’s Substitute Specification, submitted March 16, 2017 (hereinafter “Substitute Specification” or “Substitute Spec.”), Appellant’s invention is directed to a device and method for training a human mind in meditation techniques. Substitute Spec. 5.2 Independent claims 134 and 138, reproduced below, are illustrative of the claimed subject matter. 134. A real-time signal processor device interfaced to at least one data acquisition channel and at least one data output channel driving down a duration of a sustaining mental state of a subject comprising: a) a timer implemented on said device measuring said duration by clocking a wake up event with reference to an onset event on at least one bio signal from said subject acquired using said at least one data acquisition channel indicative of said sustaining mental state, b) a settable time interval programmed into said device defining a threshold value for said duration, c) an alert mechanism triggering a stimulus including an optimized stimulus using said at least one data output channel when said sustaining mental state persists for at least said threshold value, d) a first logic embedded into said device lowering said threshold value below a measured value of said duration if said measured value is less than a current setting of said threshold value, e) a second logic embedded into said device maintaining or increasing said threshold value if said measured value of said 2 Appellant’s Substitute Specification is paginated only with page numbers referenced to the entire Amendment with which the Substitute Specification was submitted. For convenience, we have re-numbered the pages of the Substitute Specification, with the first page of the Substitute Specification (numbered “Page 28 of 53” in the Amendment) as page 1, and the remainder of the pages numbered consecutively thereafter. Appeal 2020-002245 Application 12/931,101 3 duration is at least equal to said current setting of said threshold value and f) an algorithm embedded into said device choosing between said first and said second logics at each of a plurality of occasions said subject undergoes said sustaining mental state until said duration stays consistently below a target value. 138. A method of driving down a duration of a sustaining mental state of a subject comprising the steps of: a) measuring said duration by clocking a wake up event with reference to an onset event of said sustaining mental state on at least one bio signal from said subject indicative of said sustaining mental state, b) setting a time interval defining a threshold value for said duration, c) triggering a stimulus including an optimized stimulus when said sustaining mental state persists for at least said time interval, d) activating a first conditional logic that lowers said time interval below a measured value of said duration if said measured value is less than a current setting of said time interval, e) activating a second conditional logic that maintains or increases said time interval if said measured value is at least equal to said current setting of said time interval and f) algorithmically choosing between said first and said second conditional logics each time said subject undergoes said sustaining mental state on a plurality of occasions until said duration stays consistently below a target value. Appeal 2020-002245 Application 12/931,101 4 REFERENCES The prior art relied upon by the Examiner is: Name Reference Date Kishi US 5,311,877 May 17, 1994 Levin US 6,167,298 Dec. 26, 2000 Le US 2007/0173733 Al July 26, 2007 Greene US 2008/0319335 A1 Dec. 25, 2008 REJECTIONS Claims 134–142 stand rejected under 35 U.S.C. § 112, first paragraph, as failing to comply with the written description requirement. Claims 134–142 stand rejected under 35 U.S.C. § 112, first paragraph, as failing to comply with the enablement requirement. Claims 134–142 stand rejected under 35 U.S.C. § 101 as being directed to patent-ineligible subject matter. Claims 134–139 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Kishi and Greene. Claims 140 and 141 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Kishi, Greene, and Le. Claim 142 stands rejected under 35 U.S.C. § 103(a) as being unpatentable over Kishi, Greene, and Levin. OPINION Objections to the Specification Appellant seeks review of the Examiner’s objection to three aspects of Appellant’s Substitute Specification being new matter. Appeal Br. 9–11. In particular, the Examiner objects to material added on page 10, material added on page 19, and material added on pages 22–23 of the Substitute Specification. Final Act. 4–7. The objections to the material added on Appeal 2020-002245 Application 12/931,101 5 pages 10 and 19 are not directly related to issues involved in a rejection of the claims and, thus, are reviewable by petition to the Director under 37 C.F.R. § 1.181, and not by appeal. See The Manual of Patent Examining Procedure (“MPEP”) § 1201 (9th ed. Rev. 10.2019, rev. June 2020) (the Board will not ordinarily hear a question that is reviewable by petition); In re Berger, 279 F.3d 975, 984 (Fed. Cir. 2002) (stating that there are many kinds of decisions made by examiners that are not appealable to the Board when they are not directly connected with the merits of issues involving rejections of claims) (citing In re Hengehold, 440 F.2d 1395, 1403 (CCPA 1971))). The objection to the material added on pages 22–23 of the Substitute Specification, on the other hand, is directly related to the merits of issues involved in a rejection of the claims under 35 U.S.C. § 112, first paragraph, as failing to comply with the written description requirement. See Final Act. 6–7, 9, 11–13. In other words, this particular issue of new matter is presented in both an objection and a rejection. Ordinarily, an objection is reviewable by petition under 37 C.F.R. § 1.181 and a rejection is appealable to the Board of Patent Appeals and Interferences. When the issue of new matter presented is the subject of both an objection and a rejection, however, the issue is appealable. To the extent that the objection in the Final Rejection to the material added to the Substitute Specification turns on the same issues as the rejection of claims 134–142 under 35 U.S.C. § 112, first paragraph, as failing to comply with the written description requirement, our decision below with respect to the rejection is dispositive as to the corresponding objection. Appeal 2020-002245 Application 12/931,101 6 Written Description Rejection Principles of Law Pertaining to Written Description The fundamental factual inquiry for ascertaining compliance with the written description requirement is whether the disclosure of the application relied upon reasonably conveys to those skilled in the art that the inventor had possession of the claimed subject matter as of the filing date. See Ariad Pharm., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en banc). “This inquiry . . . is a question of fact,” and “the level of detail required to satisfy the written description requirement varies depending on the nature and scope of the claims and on the complexity and predictability of the relevant technology.” Id. “[T]he specification must describe an invention understandable to that skilled artisan and show that the inventor actually invented the invention claimed.” Id. Clause a) of Claims 134 and 138 The Examiner finds that the disclosure of the present application fails to reasonably convey to those skilled in the art that Appellant had possession of a device or method including “clocking a wake up event with reference to an onset event on at least one bio signal from said subject acquired using said at least one data acquisition channel indicative of said sustaining mental state” as recited in claims 134 and 138, as of the filing date. Final Act. 8. According to the Examiner, the application “fails to provide information on how to determine a mental state based on the at least one bio signal” and, at best, “discusses the calculation of coherence of segments of data that have been marked by the user.” Id. The Examiner finds that the present application “fails to describe how the coherence is used to determine a particular mental state such as happy or sad, or how those mental states are Appeal 2020-002245 Application 12/931,101 7 defined by the features of the signals” and “further lacks description of how these calculations would be applied to a signal other than the EEG signal.” Id. at 8–9. In particular, the Examiner notes that “[a]s defined by the specification, the bio signal can be a number of signals such as EEG, EMG, skin conductance, breath rhythm, etc.,” but “[t]he example provided by the specification is limited to EEG signals, and the lack of information provided in [Appellant’s] specification makes it unclear whether the calculations would be the same if applied to breath rhythm for example.” Id.; see Original Spec. 10; Substitute Spec. 10. Thus, according to the Examiner, “the specification fails to provide information on how to determine the mental state from any calculation of the bio signal and how the calculations can be used on any signal other than an EEG signal.” Final Act. 9. Appellant submits that claims 134 and 138 do not recite determining a particular mental state such as happy or sad. Appeal Br. 11, 12. Appellant’s point is well taken. Claims 134 and 138 recite measuring, or a timer for measuring, the duration of a subject maintaining a mental state by clocking a wake up event with reference to an onset event on at least one bio signal from the subject. Id. at 18, 19. Appellant’s Original Specification, submitted January 24, 2011 (hereinafter “Original Specification” or “Original Spec.”), discloses a learning mode (block 300), which the subject enters by pressing button 103, in which libraries of bio signal segments recorded during periods in which the subject identifies brooding modes, by pressing button 101, or non- brooding moods, by pressing button 102, are validated and stored. Original Spec. 12, 14–18; Figs. 1 (showing headset 100 with buttons 101, 102, 103), 3–5. After the library of brooding states and/or the library of non-brooding Appeal 2020-002245 Application 12/931,101 8 states has been built, “the next step is finding a common pattern inside all members of the library, so that it can be used as a sign to search for similar mental states.” Original Spec. 18. In other words, regardless of the type of bio signal used, Appellant’s device and method look for similarities between a bio signal acquired from a data acquisition channel and a library of bio signals identified as either indicative of brooding states or indicative of non- brooding states, as identified by the subject during the learning phase. Appellant’s Original Specification discloses that common time-domain attributes and frequency-domain attributes of the libraries of brooding and/or non-brooding states “are computed, tabulated[,] and presented to the subject via user interface 108.” Original Spec. at 18–19. After reviewing the attributes presented, “[t]he subject chooses (block 660) the ‘best’ attribute available (named AXD) to represent the dwell-in session of his/her brooding state.” Id. at 19. After the device is set in “Operate Mode,” Appellant’s device collects sufficient samples of data of the bio signal to compute the selected attribute (AXD), and, if AXD is detected, the device checks whether it lasts longer than a threshold duration, and if it does, a mantra alert is played. Id. at 20–21 (referencing blocks 800, 813, and 820 of Figure 8). This requires timing, or clocking, a wake up event with reference to an onset event (i.e., the duration of the presence of attribute AXD) on the at least one bio signal indicative of the sustaining mental state (e.g., brooding state), as recited in claims 134 and 138. Although Appellant’s Original Specification discusses the invention using processing of EEG signals as an example, the Examiner does not provide sufficient evidence or technical explanation to suggest that applying the disclosed technique to other bio signals, such as those mentioned on page Appeal 2020-002245 Application 12/931,101 9 10 of the Original Specification, for example, would have been beyond the technical grasp of a person having ordinary skill in the art, and would not have been in Appellant’s possession. In addressing the related issue of enablement, discussed below, the Examiner finds that “[t]he level of one of ordinary skill is one of a biomedical engineer with a background in signal processing.” Final Act. 14. For the above reasons, the Examiner fails to establish a sustainable case that the disclosure of the present application does not reasonably convey to those skilled in the art that Appellant had possession of the claimed device or method, including “clocking a wake up event with reference to an onset event on at least one bio signal from said subject acquired using said at least one data acquisition channel indicative of said sustaining mental state,” as recited in independent claims 134 and 138 as of the filing date. Accordingly, we do not sustain the Examiner’s rejection of claims 134–142 under 35 U.S.C. § 112, first paragraph, on this basis. Clauses d)–f) of Claims 134 and 138 The Examiner finds that the disclosure of the present application fails to reasonably convey to those skilled in the art that Appellant had possession of a device or method including items d)–f) of claims 134 and 138 as of the filing date. Final Act. 9. According to the Examiner, Figure 8 of the disclosure describes the changing of the thresholds (current settings) solely based on the subject’s discretion. For example, elements 840, 841, 850, and 851 clearly ask questions of the subject to determine if the time limits should be changed. The measured value is not compared to a threshold, but rather a flow chart. Element 850 explicitly asks if the subject is happy with the level of mental controllability and sensitivity to determine if the thresholds Appeal 2020-002245 Application 12/931,101 10 should decrease. It is clear there is no hardware or software to make this decision using measured values. Final Act. 9. Appellant argues that the specification on page 21, lines 25-29 clearly teaches that “tweaking (threshold) parameters (is done) in accordance with (individual) mind’s sensitivities[.”] Essentially it means that while the device validates the level of alertness acquired by a certain user, against a certain brooding state, at the end of a habituation-training session, and suggests efficacies with regard to increasing, decreasing, or retaining the existing threshold levels, it is entirely up to the user to choose the levels of change needed (guided by performance statistics presented to him/her via display device taught in page 10, line 1) in case he/she is still not happy with the level of his/her ‘mental controllability’ acquired (depicted by blocks 849, 850 in Fig. 8) or even stop using the machine (block 860) otherwise. Appeal Br. 12. For the reasons that follow, Appellant’s argument does not apprise us of error in the Examiner’s rejection. Appellant’s Original Specification discloses that, as the subject continues wearing and operating Appellant’s device, the subject “learns to tweak [parameters L1, TL, or TLL] in accordance with mind’s sensitivities.” Original Spec. 21 (emphasis added). For example, if none of the subject’s brooding events are detected, it means the parameters are set too high, and, on the other, hand, if the device buzzes mantras too often, “it means that it is time to increase the detection threshold values to a comfortable level or check the characteristics of bio signals coming in.” Id. (emphasis added). The Original Specification refers the reader to blocks 850 and 851 for an explanation of “optional steps” the subject can take to “lower the detection thresholds and get sooner and faster alerts when mind slips into brooding Appeal 2020-002245 Application 12/931,101 11 states.” Id. at 22. The Original Specification discloses that, after some period “of operating the device at a particular setting, it gets to a stage where the subject will be able to ‘sense’ (block 840) the onset of a brooding state and predict a mantra coming, before it is triggered by the device.” Id. at 21. According to the Specification, this happens because the subject’s mind has been conditioned to the causation between the mental state and the stimuli played, and the subject may even advance to a stage in which it is “possible for the subject to precipitate a mantra triggering by ‘faking’ a brooding state.” Id. at 21–22. Block 850 of Appellant’s Figure 8 simply asks whether the subject is “happy with the level of mental controllability and sensitivity.” Fig. 8, block 850. If the answer to this inquiry is yes, the subject stops using the device. Fig. 8, block 860. If the answer to the inquiry in block 850 is no, block 851 instructs to “Decrease TL, L1, TLL.” Fig. 8, block 851. Block 840 simply asks whether the subject is “able to predict an alert AND/OR . . . able to induce an alert condition.” Fig. 8, block 840. If the answer to this inquiry is no, block 841 instructs the subject to either get more used to the current thresholds or increase them. Fig. 8, block 841. If the answer is yes, the method simply advances to block 850. Fig. 8. Notably, we do not discern, nor does Appellant direct our attention to, any disclosure in the Original Specification or the drawings of the present application suggesting that block 840 statistically monitors the subject’s historical trends in reaction time values against a given threshold setting or includes a statistical algorithm for validating whether the subject is getting sufficiently habituated Appeal 2020-002245 Application 12/931,101 12 to the current setting by analyzing such historical trends to determine whether block 841 should be launched.3 Neither the Original Specification nor Figure 8 discusses lowering the threshold value if the measured value of the duration is less than a current setting of the threshold value or increasing the threshold value if the measured value of the duration is at least equal to the current setting, as recited in items d) and e) of claims 134 and 138, much less choosing between these two determinations each time the subject undergoes a sustaining mental state until the duration stays consistently below a target value, as recited in item f) of claims 134 and 138. Although Appellant’s Original Specification does not exclude the possibility that the subject might assess his or her satisfaction with the level of his or her own mental controllability or with the sensitivity of the device by comparing the measured value of the duration of the sustaining mental state with the current setting of the threshold value for the duration, neither the Original Specification nor the relevant portions of Figure 8 disclose performing these steps, either automatically or even manually.4 The subject could perform the disclosed method by simply subjectively feeling that the device is either 3 Compare Original Spec. 21–22, with Substitute Spec. 21–23. 4 The question of whether a modification is an obvious variant of that which is originally disclosed is irrelevant insofar as the written description requirement is concerned. See, e.g., Lockwood v. Am. Airlines, Inc., 107 F.3d 1565, 1571–72 (Fed. Cir. 1997) and In re Wohnsiedler, 315 F.2d 934, 937 (CCPA 1963). See also In re Barker, 559 F.2d 588, 593 (CCPA 1977) (“That a person skilled in the art might realize from reading the disclosure that such a step is possible is not a sufficient indication to that person that the step is part of appellants’ invention. Such an indication is the least that is required for a description of the invention under the first paragraph of § 112”). Appeal 2020-002245 Application 12/931,101 13 overly sensitive (applying stimuli too frequently) or not sufficiently sensitive (missing sustained brooding states) and adjusting the duration threshold value accordingly. For the above reasons, Appellant does not apprise us of error in the Examiner’s finding that the disclosure of the present application fails to reasonably convey to those skilled in the art that Appellant had possession of the claimed device or method including items d)–f) as recited in independent claims 134 and 138 as of the filing date. Accordingly, we sustain the Examiner’s rejection of claims 134–142 under 35 U.S.C. § 112, first paragraph, on this basis. Enablement Rejection Principles of Law Pertaining to Enablement When rejecting a claim under the enablement requirement of section 112, the PTO bears an initial burden of setting forth a reasonable explanation as to why it believes that the scope of protection provided by that claim is not adequately enabled by the description of the invention provided in the specification of the application; this includes, of course, providing sufficient reasons for doubting any assertions in the specification as to the scope of enablement. If the PTO meets this burden, the burden then shifts to the applicant to provide suitable proofs indicating that the specification is indeed enabling. In re Wright, 999 F.2d 1557, 1561–62 (Fed. Cir. 1993) (citing In re Marzocchi, 439 F.2d 220, 223–24 (CCPA 1971)). Insofar as the enablement requirement is concerned, the dispositive issue is whether an applicant’s disclosure, considering the level of ordinary skill in the art as of the date of the appellant’s application, would have enabled a person of such skill to Appeal 2020-002245 Application 12/931,101 14 make and use the appellant’s invention without undue experimentation. In re Strahilevitz, 668 F.2d 1229, 1232 (CCPA 1982). Factors to be considered in determining whether a disclosure would require undue experimentation include (1) the quantity of experimentation necessary, (2) the amount of direction or guidance presented, (3) the presence or absence of working examples, (4) the nature of the invention, (5) the state of the prior art, (6) the relative skill of those in the art, (7) the predictability or unpredictability of the art, and (8) the breadth of the claims. In re Wands, 858 F.2d 731, 737 (Fed. Cir. 1988). Clause a) of Claims 134 and 138 The Examiner determines that the disclosure in the present application does not enable a person skilled in the art to make and/or use a device or method including “clocking a wake up event with reference to an onset event on at least one bio signal from said subject acquired using said at least one data acquisition channel indicative of said sustaining mental state” as recited in claims 134 and 138. Final Act. 13. The Examiner states that “the specification, while being enabling for EEG, does not reasonably provide enablement for bio signals.” Id. (emphasis omitted). According to the Examiner, the present application “fails to provide information on how to determine a mental state based on the at least one bio signal.” Id. The Examiner points out that the “at least one bio signal” in claims 134 and 138 can include any bio signal and, in particular, is not limited to EEG signals, or even to signals from the list of “[t]ypical bio sensors” mentioned on page 10 of the Substitute Specification. Id. The Examiner finds that the application’s disclosure “clearly does not provide how to apply the example Appeal 2020-002245 Application 12/931,101 15 of EEG signal processing to any bio signal listed in the specification or otherwise to determine the mental state of the user.” Id. at 13–14. The Examiner applies the Wands factors to Appellant’s claims and underlying disclosure. Final Act. 14. In particular, the Examiner finds that the claims are broad with respect to the bio signal; “the prior art describes using EEG signals to determine the mental state of the user”; “[t]he level of one of ordinary skill is one of a biomedical engineer with a background in signal processing”; “it may be predictable to use EEG signals for the determination of mental states, but it is not predictable to use any biological signal to determine the mental state”; the application provides information for processing EEG signals, but not for other signals; the application does not provide working examples for more than EEG signals; and “[t]he quantity of experimentation needed to make or use the invention based on the content of the disclosure is infinite because there is no indication of how to use the signal processing techniques described for any biological signal, other than EEG, for the determination of mental state.” Id. After analyzing the Wands factors, the Examiner concludes that “the claim limitation of using any biological signal for determining the mental state of the user is not enabled for more than EEG signals.” Id. at 15. Based on the Examiner’s findings, the Examiner considers the problem to be that the full scope of the claimed invention is not enabled. Final Act. 13–15. Indeed, the Examiner states that “[t]he rejection is a scope of enablement rejection” and that “the disclosure enables the physiological signal being EEG, but does not support any and all potential bio signals apprised by the claimed scope.” Ans. 19. Appeal 2020-002245 Application 12/931,101 16 Appellant reiterates the argument that the claimed invention is not determining a particular mental state. Appeal Br. 12. For the reasons set forth above in regard to the written description rejection concerning these same claim limitations, Appellant’s point is again well taken here. As discussed in more detail above, Appellant’s disclosed device and method first builds and stores libraries of signals that are deemed to be well correlated to periods specifically identified by the subject as either non- brooding states or brooding states. See Substitute Spec. 12, 14–19. Appellant’s disclosed device/method next evaluates several common time- domain attributes and frequency-domain attributes of the libraries and presents them to the subject via a user interface to allow the subject to choose “the ‘best’ attribute available (named AXD) to represent the dwell-in session of his/her brooding state.” Id. at 18–19. After the device is set in “Operate Mode,” Appellant’s device collects sufficient samples of data of the bio signal to compute the selected attribute (AXD), and, if AXD is detected, the device checks whether it lasts longer than a threshold duration. Id. at 20–21 (referencing blocks 800, 813, and 820 of Figure 8). Appellant argues that the Examiner overlooks the disclosure in lines 3–13 on page 21 of the Substitute Specification regarding using correlation checks on frames of captured data to calculate the duration of transient (i.e., aperiodic) signals in the time domain. Appeal Br. 13. According to Appellant, “[a] biomedical engineer having a background in signal processing (a skill level readily recognized by the Examiner as that of a Person of Ordinary Skill in the Art in the context of the current invention) would have readily recognized from reading page 21, lines 3–13” of the Substitute Specification that “the level of coherence or correlation Appeal 2020-002245 Application 12/931,101 17 (selectively chosen in dealing with frequency and time domain AXD attributes respectively) calculated between adjacent running windows . . . could be used to” increment a counter to generate “an aggregate count that is proportional to the duration of the sustaining mental state that caused the AXD attribute.” Id. Appellant also submits that “[s]uch a person of ordinary skill would also have appreciated . . . that any known signal could have only two types of attributes: periodic or aperiodic (in other words, frequency domain or time domain) attributes.” Id. The Examiner does not persuasively refute Appellant’s contentions in this regard. In short, accepting the Examiner’s finding that the level of ordinary skill in the art is “one of a biomedical engineer with a background in signal processing” (Final Act. 14), the Examiner has not established that such a person would not have sufficient technical understanding of various bio sensors to determine which types of bio sensors would generate signals that would vary in a recognizable way dependent on mental states, such as brooding or non-brooding states (e.g., relaxed versus agitated states), along with signal processing techniques useful for extracting attributes that characterize these distinctions, to carry out the claimed invention. The Examiner notes that the claims do not recite determining best attributes or building a library of onset events, wherein the subject identifies the data gathered as indicative of mental states. Ans. 20. The Examiner appears to be making this point in support of the conclusion that Appellant’s disclosure is not enabling for the full scope of the claims. See id. at 19–20. However, the claims need not recite all the details required to carry out the claimed steps or functions. It is the function of the specification, not the claims, to set forth the practical limits of operation for an invention. One Appeal 2020-002245 Application 12/931,101 18 does not look to claims to find out how to practice the invention they define, but to the specification. See In re Johnson, 558 F.2d 1008, 1017 (CCPA 1977) (holding the PTO in error for, in essence, requiring “the claims to set forth the practical limits of operation for the invention and [thereby] effectively ignor[ing] the scope of enablement provided by the specification as a whole”). Appellant’s Substitute Specification sets forth a technique (compiling libraries of signals characteristic of brooding and/or non- brooding states as identified by the subject experiencing such mental states, processing the signals for different attributes, selecting the attribute that best distinguishes or characterizes the mental state, and then analyzing signals from at least one bio sensor via a data acquisition channel to detect the presence of such an attribute, and measuring the duration of the presence of such an attribute) for “clocking a wake up event with reference to an onset event on at least one bio signal from said subject acquired using said at least one data acquisition channel indicative of said sustaining mental state” as recited in claims 134 and 138. However, it is not necessary that claims 134 and 138 recite all of these details. The Examiner maintains that the disclosure of the present application “does not provide any specificity as to what signal processing steps are performed for non-EEG signals to determine a mental state” or specify the particular signal features that Appellant used to achieve the claimed result. Ans. 19–20. However, the Examiner does not provide any evidence or persuasive technical reasoning to suggest that persons having ordinary skill in the art would not be able to carry out the claimed invention from the disclosure provided in the present application without undue experimentation. See id. at 20 (acknowledging that the application lists Appeal 2020-002245 Application 12/931,101 19 common time-domain attributes and frequency-domain attributes that could be used). We note that Appellant’s Figure 6 discloses computing “a sortie of time domain and/or frequency domain parameters depending upon the type of bio signal.” Fig. 6, block 640. We appreciate the Examiner’s observation that the present application does not specifically elaborate on how the time domain and/or frequency parameters vary depending upon the type of bio signal, or which parameters are more suitable for which bio sensors. However, the Examiner does not present sufficient evidence or technical explanation to establish a reasonable basis to doubt that a person having ordinary skill in the art (i.e., a biomedical engineer with a background in signal processing) would understand or be able to determine which parameters would yield the best results for which types of bio sensor signals and how to process those signals to extract the parameter (attribute) most characteristic of the subject’s mental state without the need for undue experimentation. For the above reasons, the Examiner has not discharged the initial burden of setting forth a reasonable explanation as to why the scope of protection provided by claims 134 and 138 is not adequately enabled by the description of the invention provided in the present application. Accordingly, we do not sustain the rejection of claims 134–142 under 35 U.S.C. § 112, first paragraph, on this basis. Patent Eligibility Rejection Principles of Law Pertaining to Patent Eligibility An invention is patent-eligible if it is a “new and useful process, machine, manufacture, or composition of matter.” 35 U.S.C. § 101. Appeal 2020-002245 Application 12/931,101 20 However, the Supreme Court has long interpreted 35 U.S.C. § 101 to include implicit exceptions: “[l]aws of nature, natural phenomena, and abstract ideas” are not patentable. E.g., Alice Corp. v. CLS Bank Int’l, 573 U.S. 208, 216 (2014). In determining whether a claim falls within an excluded category, we are guided by the Supreme Court’s two-step framework, described in Mayo and Alice. Alice, 573 U.S. at 217–18 (citing Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 75–77 (2012)). In accordance with that framework, one first determines what concept the claim is “directed to.” See Alice, 573 U.S. at 219 (“On their face, the claims before us are drawn to the concept of intermediated settlement, i.e., the use of a third party to mitigate settlement risk.”); see also Bilski v. Kappos, 561 U.S. 593, 611 (2010) (“Claims 1 and 4 in petitioners’ application explain the basic concept of hedging, or protecting against risk.”). Concepts determined to be abstract ideas, and thus patent ineligible, include certain methods of organizing human activity, such as fundamental economic practices (Alice, 573 U.S. at 219–20; Bilski, 561 U.S. at 611); mathematical formulas (Parker v. Flook, 437 U.S. 584, 594–95 (1978)); and mental processes (Gottschalk v. Benson, 409 U.S. 63, 67 (1972)). Concepts determined to be patent eligible include physical and chemical processes, such as “molding of rubber products” (Diamond v. Diehr, 450 U.S. 175, 192 (1981)); “tanning, dyeing, making water-proof cloth, vulcanizing India rubber, smelting ores” (id. at 182 n.7 (quoting Corning v. Burden, 56 U.S. 252, 267–68 (1853))); and manufacturing flour (Benson, 409 U.S. at 69 (citing Cochrane v. Deener, 94 U.S. 780, 785 (1876))). Appeal 2020-002245 Application 12/931,101 21 In Diehr, the claim at issue recited a mathematical formula, but the Supreme Court held that “a claim drawn to subject matter otherwise statutory does not become nonstatutory simply because it uses a mathematical formula.” Diehr, 450 U.S. at 187; see also id. at 191 (“view[ing] respondents’ claims as nothing more than a process for molding rubber products and not as an attempt to patent a mathematical formula”). Having said that, the Supreme Court also indicated that a claim “seeking patent protection for that formula in the abstract . . . is not accorded the protection of our patent laws, . . . and this principle cannot be circumvented by attempting to limit the use of the formula to a particular technological environment.” Id. (citing Benson and Flook); see, e.g., id. at 187 (“It is now commonplace that an application of a law of nature or mathematical formula to a known structure or process may well be deserving of patent protection.”). If the claim is “directed to” an abstract idea, we turn to the second step of the Alice and Mayo framework, where “[one] must examine the elements of the claim to determine whether it contains an ‘inventive concept’ sufficient to ‘transform’ the claimed abstract idea into a patent- eligible application.” Alice, 573 U.S. at 221 (quotation marks omitted). “A claim that recites an abstract idea must include ‘additional features’ to ensure ‘that the [claim] is more than a drafting effort designed to monopolize the [abstract idea].’” Id. (quoting Mayo, 566 U.S. at 77). “[M]erely requir[ing] generic computer implementation[] fail[s] to transform that abstract idea into a patent-eligible invention.” Id. On January 7, 2019, the PTO issued revised guidance on the application of § 101. See 2019 Revised Patent Subject Matter Eligibility Appeal 2020-002245 Application 12/931,101 22 Guidance, 84 Fed. Reg. 50 (hereinafter “2019 Eligibility Guidance”). The 2019 Eligibility Guidance includes steps 2A and 2B. Under Step 2A, Prong One, of the guidance, one first looks to whether the claim recites any judicial exceptions, including certain groupings of abstract ideas (i.e., mathematical concepts, certain methods of organizing human activities such as a fundamental economic practice, or mental processes). See id. at 54. If a claim recites a judicial exception, one proceeds to Step 2A, Prong Two, and determine whether the claim recites additional elements that integrate the judicial exception into a practical application. See 2019 Eligibility Guidance, 84 Fed. Reg. at 54; see also MPEP § 2106.05(a)–(c), (e)–(h). Only if a claim both recites a judicial exception and fails to integrate the judicial exception into a practical application, does one proceed to Step 2B of the guidance. At this step, one determines whether the claim adds a specific limitation beyond the judicial exception that is not “well-understood, routine, conventional” in the field (see MPEP § 2106.05(d)); or 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 Eligibility Guidance, 84 Fed. Reg. at 56. In doing so, one considers the elements of the claim both individually and as “an ordered combination.” See Alice, 573 U.S. at 217 (stating that “[one] consider[s] the elements of each claim both individually and ‘as an ordered combination’ to determine whether the additional elements “transform the nature of the claim” into . . . 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 Appeal 2020-002245 Application 12/931,101 23 upon the [ineligible concept] itself’”); see also BASCOM Glob. Internet Servs., Inc. v. AT&T Mobility LLC, 827 F.3d 1341, 1349–50 (Fed. Cir. 2016) (explaining that, even in claims reciting only “generic computer, network and Internet components, none of which is inventive by itself,” “an inventive concept can be found in the non-conventional and non-generic arrangement of known, conventional pieces” under step two of the Alice framework). Claim Grouping Appellant presents arguments for claims 134–142 together in contesting the rejection under 35 U.S.C. § 101, and then presents an additional argument directed to claims 134, 139 and 140. Appeal Br. 13–14. Thus, we review this rejection on the basis of independent claim 138, and claim 142 stands or falls with claim 138. We address separately the argument directed to claims 134, 139, and 140, with claim 141 standing or falling with claim 140, from which it depends. Claims 135–137 stand or fall with claim 134, from which they depend. Step 2A, Prong One — Recitation of Judicial Exception The Examiner finds that claim 138 recites measuring a duration, duration thresholds, triggering a stimulus, and lowering or maintaining a duration threshold based on the measured duration. Final Act. 17. The Examiner finds that each of these steps “may be performed by the mind but for the recitation of generic computer components.” Id. Thus, the Examiner finds that these steps are mental processes. Id. The Examiner explains that the human mind can “keep and measure time; think about a threshold; create a stimulus by performing an act such as speaking; think[] about a new threshold; and compar[e] values to thresholds.” Id. The 2019 Eligibility Guidance specifically enumerates “[m]ental processes—concepts performed Appeal 2020-002245 Application 12/931,101 24 in the human mind (including an observation, evaluation, judgment, opinion)” as one of the groupings of abstract ideas. 2019 Eligibility Guidance, 84 Fed. Reg. at 52. Appellant argues that the Examiner errs in identifying the limitations of claim 138 as abstract ideas. Appeal Br. 13. In particular, Appellant submits that the Examiner’s finding that the claim limitations are “mental processes is logically flawed” because, if someone’s mind engages in measuring the duration of its own state, then it must already be out of that state; a sustaining mental state of a subject cannot be detected by the subject’s own mind because sustainability is broken when the mind starts observing it; thinking about a threshold is not the same as setting a threshold on a data acquisition channel or interrupting a running digital clock; and the human mind cannot measure absolute time independently, which, according to Appellant, is why humans invented clocks. Id. at 14. The Examiner points out that claim 138 does not require the recited steps to be performed by the subject. Ans. 21. The Examiner maintains that the claimed steps are “different observations, evaluations, judgments[,] or opinions which can certainly be performed in the human mind.” Id. Appellant counters by contending that a second person would not be able to measure durations of a first person’s sustaining mental state because this would require recognizing the “peculiar type of thought-process onsetting in another person’s brain.” Reply Br. 11. Appellant’s contention is not commensurate with the scope of claim 138. Item a) of claim 138 requires measuring the duration of the sustaining mental state “with reference to an onset event of said sustaining mental state on at least one bio signal from said subject indicative of said sustaining mental state.” Appeal Appeal 2020-002245 Application 12/931,101 25 Br. 19 (Claims App.). In other words, item a) encompasses the person observing the subject, or the bio signal from the subject, which could be any observable signal, such as a pulse, closed eyes, pinched brows, trembling, inattentiveness, etc., or a display of an electrical signal, indicative of the sustaining mental state, and noting the time the attributes indicative of the sustaining mental state began and when they ended. Appellant’s other arguments on page 14 of the Appeal Brief, listed above, are not commensurate with the scope of claim 138, which does not recite setting a threshold on a data acquisition channel or interrupting a digital clock. It is well established that limitations not appearing in the claims cannot be relied upon for patentability. In re Self, 671 F.2d 1344, 1348 (CCPA 1982). Appellant contends that “using mere thoughts a human-being does not have the ability to set a physical threshold on an electrical signal to trigger it or divide it into 3 time-segments or process each segment separately.” Reply Br. 11. This argument is not commensurate with the scope of claim 138, which does not require the threshold to be set on an electrical signal or with electrical or computer components, and thus is not persuasive. Moreover, the recitation of computer components does not, by itself, establish that the claim does not recite mental steps. See, e.g., Versata Dev. Grp., Inc. v. SAP Am., Inc., 793 F.3d 1306, 1335 (Fed. Cir. 2015) (“Courts have examined claims that required the use of a computer and still found that the underlying, patent-ineligible invention could be performed via pen and paper or in a person’s mind.”). Also, “[i]f a claim, under its broadest reasonable interpretation, covers performance in the mind but for the recitation of generic computer components, then it is still in the mental processes category unless the claim cannot practically be performed in the Appeal 2020-002245 Application 12/931,101 26 mind.” 2019 Eligibility Guidance, 84 Fed. Reg. at 52 n. 14 (citing Intellectual Ventures I LLC v. Symantec Corp., 838 F.3d 1307, 1318 (Fed. Cir. 2016). For the above reasons, Appellant does not apprise us of error in the Examiner’s finding that claim 138 recites a judicial exception, namely, mental processes, which are abstract ideas. Appellant additionally argues that the Examiner did not consider other claim elements, such as “acquiring from data acquisition channel” in claim 134, “archiving signal” in claim 139, and “dividing into three segments” in claim 140. Appeal Br. 14. Appellant submits that these are recitations of “physical steps that would confer subject matter eligibility” in accordance with the Federal Circuit decision in Classen Immunotherapies, Inc. v. Biogen IDEC, 659 F.3d 1057 (Fed. Cir. 2011). Id. The physical step at issue in Classen was a step of immunizing mammals in a treatment group. Classen, 659 F.3d at 1061, 1067–68. Such a step requires physical manipulation of doses of immunogens and effects a physical transformation of the mammals and the immunogens. The step of “self-marking and archiving of a segment of said bio signal pertaining to said sustaining mental state at a plurality of occasions by said subject” in claim 139 relates to the subject identifying portions of a bio signal pertaining to the sustaining mental state. Appeal Br. 19 (Claims App.). In contrast to a step of immunizing mammals, this is not a physical step, but, rather, can be performed by a human mentally or with a pen and paper. In other words, this is a mental process. Claim 140 recites a step of applying a first stimulus to the subject while simultaneously acquiring a bio response signal including at least a pre- Appeal 2020-002245 Application 12/931,101 27 stimulus segment, an intra-stimulus segment, and a post-stimulus segment. Appeal Br. 20 (Claims App.). This encompasses simply observing the reaction of the subject before, during, and after applying a stimulus to the subject (which the Examiner finds encompasses merely speaking (Final Act. 17)). In other words, this is simply an observation, which is a mental process. Claim 134’s reference to at least one bio signal acquired using at least one data acquisition channel (Appeal Br. 17–18 (Claims App.)) does not undercut the Examiner’s position with respect to the timer limitation in that claim being a mental process. If the broadest reasonable interpretation of a claim covers performance in the mind but for the recitation of generic computer components, then it is still in the mental processes category unless the claim cannot practically be performed in the mind. See Intellectual Ventures I LLC v. Symantec Corp., 838 F.3d 1307, 1318 (Fed. Cir. 2016) (stating that, “with the exception of generic computer-implemented steps, there is nothing in the claims themselves that foreclose them from being performed by a human, mentally or with pen and paper”); CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1372, 1375 (Fed. Cir. 2011) (holding that the incidental use of “computer” or “computer readable medium” does not make a claim otherwise directed to a process that “can be performed in the human mind, or by a human using a pen and paper” patent eligible); Synopsys, Inc. v. Mentor Graphics Corp., 839 F.3d 1138, 1139, 1148 (Fed. Cir. 2016) (holding that claims to the mental process of “translating a functional description of a logic circuit into a hardware component description of the logic circuit” are directed to an abstract idea, because the claims “can be . . . performed mentally or with pencil and Appeal 2020-002245 Application 12/931,101 28 paper”). Thus, the recitation of generic computer components, such as a real-time signal processor device or data acquisition channel, does not remove item a) of claim 134 from the mental process category. Accordingly, Appellant does not apprise us of error in the Examiner’s determination that claims 134–142 recite abstract ideas, namely mental processes. Step 2A, Prong Two — Practical Application Having agreed with the Examiner that claims 138–142 recite a judicial exception, namely, mental processes, we next consider whether the claims recite “additional elements [that] integrate the exception into a practical application” (see MPEP § 2106.05(a)–(c), (e)–(h)). See 2019 Eligibility Guidance, 84 Fed. Reg. at 54. This evaluation requires one to determine whether an additional element or a combination of additional elements in the claim applies, relies on, or uses 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 exception. Id. If the recited judicial exception is integrated into a practical application, the claim is not “directed to” the judicial exception. Id. The Examiner determines that the judicial exception of claims 134–138 is not integrated into a practical application because the additional elements recited in the claims are nothing more than “generic software modules (timer, settable time interval, alert mechanism, first logic, second logic, algorithm) embedded on a generic processor (real-time signal processor device).”5 Final Act. 17. Appellant does not specifically contest 5 Notably, we do not find any positive recitations of software modules or a generic processor in claim 138. Indeed, claim 138 does not recite any Appeal 2020-002245 Application 12/931,101 29 the Examiner’s position in this regard. We find no indication in the Specification, nor does Appellant direct us to any indication, that the operations recited in claim 134 (or its dependent claims), or the steps of claim 138 (or its dependent claims), invoke any assertedly inventive programming, require any specialized computer hardware or other inventive computer components, i.e., a particular machine, or that the claimed invention is implemented using other than generic computer components to perform generic computer functions. See DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245, 1256 (Fed. Cir. 2014) (“[A]fter Alice, there can remain no doubt: recitation of generic computer limitations does not make an otherwise ineligible claim patent-eligible.”). In short, the claims do not recite any additional elements that (1) improve the functioning of a computer or other technology, (2) are applied with any particular machine, (3) effect a transformation of a particular article to a different state, or (4) are applied in any meaningful way beyond generally linking the use of the judicial exception to a particular technological environment, such that the claim as a whole is more than a drafting effort designed to monopolize the exception. See MPEP § 2106.05(a)–(c), (e)–(h) (and cases cited therein). Step 2B — Inventive Concept Because we agree with the Examiner that claims 134–142 fail to recite additional elements that integrate the judicial exception into a practical additional elements that could integrate the mental steps into a practical application. The references to conditional logic and algorithmically choosing are not specific to a computer implementation of the claimed process. Appeal 2020-002245 Application 12/931,101 30 application, in accordance with the 2019 Eligibility Guidance, we next consider whether the claim adds a specific limitation beyond the judicial exception that is not “well-understood, routine, conventional” in the field or instead “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 Eligibility Guidance, 84 Fed. Reg. at 56. The Examiner finds that the claims do “not include additional elements that are sufficient to amount to significantly more than the judicial exception because the additional elements of using software modules embedded on a generic processor to perform the functions amount to no more than mere instructions to apply the exception using a generic computer component.” Final Act. 18. Appellant does not present any arguments contesting this finding. Accordingly, Appellant does not assert, nor do we find, any element or combination of elements recited in claims 134–142 beyond the judicial exception that is not “well-understood, routine, conventional” in the field or that contains any “inventive concept” or adds anything “significantly more” to transform the abstract concept into a patent-eligible application. Alice, 573 U.S. at 221. Accordingly, we sustain the rejection of claims 134–142 under 35 U.S.C. § 101 as being directed to patent-ineligible subject matter. Obviousness Rejections Kishi in view of Greene Appellant groups claims 134–139 together in contesting this rejection. Appeal Br. 14–15. We decide the appeal of this rejection on the basis of claim 134, with claims 135–139 standing or falling with claim 134. See Appeal 2020-002245 Application 12/931,101 31 37 C.F.R. § 41.37(c)(1)(iv) (permitting the Board to select a single claim to decide the appeal as to a single ground of rejection of a group of claims argued together). The Examiner finds that Kishi discloses most of the features of claim 134, but that “Kishi does not explicitly teach a first logic, second logic, and [an] algorithm for choosing between the first and second logic for adjusting the threshold values.” Final Act. 20. The Examiner finds that Greene teaches “automatically adjusting detection thresholds in a feedback- controlled neurological event detector” including an “algorithm that automatically adjusts a threshold us[ing]a measured value in comparison to a target value to determine the changes in the threshold values.” Id. at 21 (citing Greene, Abstr.; Fig. 9; ¶¶ 50–52, 72). The Examiner explains that “Kishi teaches measuring a reaction time of the user and a threshold that uses historical averages and standard deviations” (citing Kishi 7:11–34) and “Greene explicitly teaches automatically adjusting threshold values based on the comparison of the measured value to the threshold.” Final Act. 21. Thus, the Examiner determines it would have been obvious to “modify Kishi with the threshold adjustments as taught by Greene because it is the use of a known technique of providing a more accurate comparison of measured values to a threshold to improve similar devices in the same way.” Id. Appellant argues that “[c]ontrolling a threshold automatically as taught by Greene” in Kishi’s drowsiness alert system would result “in an inoperable combination that teaches away from” Appellant’s habit-forming mechanism. Appeal Br. 14. According to Appellant, a person of ordinary skill in the art “would not have selected a drowsy state to train a mind to generate automatic reflex actions.” Id. at 15. Thus, Appellant asserts that Appeal 2020-002245 Application 12/931,101 32 the Examiner has not established a prima facie case of obviousness so as to shift the burden to Appellant to show otherwise. Id. Appellant’s arguments are unavailing because they are not directed to the modification of Kishi proposed by the Examiner. The Examiner does not propose to transform Kishi’s system into a habit-forming or mind- training device to generate automatic reflex actions, as Appellant’s argument presumes. Rather, the Examiner simply proposes to modify Kishi, which already measures reaction times of a user and a reaction time threshold based on historical values and standard deviations, to automatically adjust the reaction time threshold based on comparison of the measured reaction time and the current threshold. See Final Act. 21. It is not apparent why such a modification would render Kishi’s device inoperative. In the Reply Brief, Appellant submits that “modifying Kishi by applying a time-threshold (as taught by Greene) would mean delaying the alert signal, which in turn would cause longer fatigue durations and fatal accidents,” thereby rendering “Kishi’s device inoperable.” Reply Br. 11. Appellant does not provide any technical reasoning or evidence to support this assertion. Kishi already discloses setting a reaction time threshold, measuring a reaction time, comparing the reaction time to the threshold, and, in response to the comparison, setting the reaction time threshold again. See Kishi 5:37–6:21; 7:11–30; Fig. 6 (blocks S30, S37–S41). The Examiner finds that Kishi does not explicitly teach changing the reaction time threshold based on this comparison and proposes modifying Kishi, in view of Greene, to do so. It is not apparent, and Appellant does not adequately explain, why such a modification would result in longer fatigue durations and fatal accidents or why a person having ordinary skill in the art would Appeal 2020-002245 Application 12/931,101 33 have been unable to make the modification in a manner to produce an operative device. After all, “[a] person of ordinary skill is also a person of ordinary creativity, not an automaton.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 421 (2007). For the above reasons, Appellant does not apprise us of error in the rejection of claim 134 as unpatentable over Kishi and Greene. Accordingly, we sustain the rejection of claim 134, and of claims 135–139, which fall with claim 134, as unpatentable over Kishi and Greene. Kishi in view of Greene and Le In rejecting claims 140 and 141, the Examiner relies on Le for its teachings regarding particular steps of determining optimized stimuli to alter the mental state of the user. Final Act. 23–24 (citing Le ¶¶ 26, 27, 31, 52, 62–79). The Examiner explains that Kishi teaches presenting stimuli to a user to maintain mental alertness and delivering optimal stimuli to the user that vary based on each individual, without specifics as to how to determine the optimal stimuli, but that Le teaches using correlation and/or coherence to measure the mental state of the subject. Final Act. 24. The Examiner determines it would have been obvious to modify Kishi, as already modified in view of Greene, by using Le’s process of determining optimized stimuli “because it presents the best stimulus to the user to create a deliberate mental state, such as awakening as sought by Kishi, and is the use of a known technique to improve similar devices in the same way.” Id. at 24–25. Appellant argues merely that the Examiner’s rejection relies “on isolated teachings of those prior arts and do[es] not regard the claimed invention as a whole.” Appeal Br. 15. In particular, Appellant appears to argue that the Examiner has ignored the fact that Kishi seeks to maintain a Appeal 2020-002245 Application 12/931,101 34 waking degree of the subject, which is opposite of what Appellant’s invention seeks to do. Id. at 16. Appellant’s argument is not persuasive. Kishi seeks to maintain the driver in an alert state by providing stimuli and measuring reaction times to prevent the driver from remaining in a drowsy, or less alert, state. See, e.g., Kishi 1:6–11, 64–68; 2:26–30, 61–67. Appellant does not specifically point out how this is contrary to, or inconsistent with, the claimed invention. Appellant suggests the Examiner disregards the limitations in claims 134 and 138 directed to running an algorithm “at a ‘plurality of occasions’ in order to achieve the desired outcome.” Appeal Br. 16. However, Appellant does not explain how performing the processes illustrated in Figures 6–8 of Kishi for measuring and determining the reaction time threshold (particularly steps S37–S41 and S30) would not satisfy the “at a plurality of occasions” limitation. See also Kishi 5:29–7:37 (describing the processes of Figs. 6–8). Appellant baldly asserts that the Examiner relies on hindsight reconstruction in rejecting the claims. Appeal Br. 16. Appellant does not identify any flaw in the Examiner’s reasoning or point to any knowledge relied on by the Examiner that was gleaned only from Appellant’s disclosure and that was not otherwise within the level of ordinary skill in the art at the time of the invention, thereby failing to support Appellant’s hindsight assertion. See In re McLaughlin, 443 F.2d 1392, 1395 (CCPA 1971) (“Any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning, but so long as it takes into account only knowledge which was within the level of ordinary skill at the time the Appeal 2020-002245 Application 12/931,101 35 claimed invention was made and does not include knowledge gleaned only from applicant’s disclosure, such a reconstruction is proper.”). For the above reasons, Appellant does not apprise us of error in the Examiner’s rejection of claims 140 and 141 as unpatentable over Kishi, Greene, and Le, which we thus sustain. Kishi in view of Greene and Levin In rejecting claim 142, the Examiner relies on the teachings of Levin directed to enhancing the effectiveness of a bio stimulus on a subject “by adding a prelude of altered bio stimulus to said bio stimulus such as but not limited to a deep silence period before an audio stimulus before said stimulus is played.” Final Act. 26 (citing Levin 3:46–63). The Examiner explains that “the time between the detection of a nonalert state and the application of a stimulus is considered the ‘deep silence period’ as claimed.” Id. The Examiner determines that it would have been obvious to modify Kishi, as already modified in view of Greene, “with the specific stimulus of Levin because it is the use of a known technique to improve similar devices in the same way.” Id. at 27. In addition to the arguments discussed above asserted against the rejection of claim 138 as unpatentable over Kishi and Greene, Appellant argues that the Examiner “ignored the proper meaning of claim language ‘deep silence period’ wherein an active noise canceling circuitry (page 20, lines 13-14) is used to enforce deep silence, which can’t be read upon by the suggested prior arts.” Appeal Br. 17. This argument is unavailing because, as the Examiner correctly points out, claim 142 does not recite noise cancelling circuitry. Ans. 28. As stated by our reviewing court in In re Hiniker Co., 150 F.3d 1362, 1369 (Fed. Cir. 1998), “the name of the game is Appeal 2020-002245 Application 12/931,101 36 the claim.” Appellant cannot rely on limitations not recited in the claim for patentability. See Self, 671 F.2d at 1348. As the Examiner explains, “[a]lthough the claims are interpreted in light of the specification, limitations from the specification are not read into the claims.” Ans. 28 (citing In re Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993)). For the above reasons, Appellant fails to apprise us of error in the rejection of claim 142 as unpatentable over Kishi, Greene, and Levin, which we thus sustain. CONCLUSION The rejections of claims 134–142 under 35 U.S.C. § 112, first paragraph, for lack of enablement and written description with respect to clause a) of claims 134 and 138 are REVERSED. All other rejections of claims 134–142, including the other ground for the written description rejection based on clauses d)–f), as well as the rejections under 35 U.S.C. §§ 101 and 103(a), are AFFIRMED. Appeal 2020-002245 Application 12/931,101 37 DECISION SUMMARY Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 134–142 112, first paragraph Written Description 134–142 134–142 112, first paragraph Enablement 134–142 134–142 101 Eligibility 134–142 134–139 103(a) Kishi, Greene 134–139 140, 141 103(a) Kishi, Greene, Le 140, 141 142 103(a) Kishi, Greene, Levin 142 Overall Outcome 134–142 RESPONSE 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). AFFIRMED6 6 “The affirmance of the rejection of a claim on any of the grounds specified constitutes a general affirmance of the decision of the examiner on that claim, except as to any ground specifically reversed.” 37 C.F.R. § 41.50(a)(1) Copy with citationCopy as parenthetical citation