Kulangara Sivadas

Patent Trials and Appeals Board

Mar 31, 2021

2020002245 (P.T.A.B. Mar. 31, 2021)

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.
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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.
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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.
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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
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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.

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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
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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
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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
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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
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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
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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
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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”).
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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
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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
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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.
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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
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(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
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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
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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.
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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))).
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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
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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
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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
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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
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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
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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-
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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
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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
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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.
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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
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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
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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
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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
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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
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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
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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)