Ex Parte Hyde et al

Patent Trial and Appeal Board

Aug 15, 2016

12380587 (P.T.A.B. Aug. 15, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
12/380,587 0212712009 Roderick A. Hyde
80118 7590 08/16/2016
Constellation Law Group, PLLC
P.O. Box 580
Tracyton, WA 98393
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www .uspto.gov
ATTORNEY DOCKET NO. CONFIRMATION NO.
SEl-0928-US 4370
EXAMINER
RAJ,RAJIV J
ART UNIT PAPER NUMBER
3626
MAILDATE DELIVERY MODE
08/16/2016 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 RODERICK A. HYDE, ROBERT LANGER,
ERIC C. LEUTHARDT, ROBERT W. LORD,
ELIZABETH A. SWEENEY, CLARENCE T. TEGREENE, and
LOWELL L. WOOD JR.
Appeal2014-003024 1
Application 12/380,5872
Technology Center 3600
Before NINA L. MEDLOCK, TARA L. HUTCHINGS, and
ROBERT J. SILVERMAN, Administrative Patent Judges.
HUTCHINGS, Administrative Patent Judge.
DECISION ON APPEAL
1 Our decision references Appellants' Appeal Brief ("Br.," filed Oct. 18,
2013), and the Examiner's Answer ("Ans.," mailed Nov. 6, 2013) and Final
Office Action ("Final Act.," mailed May 9, 2013).
2 Appellants identify Searete LLC as the real party in interest. Br. 7.
Appeal2014-003024
Application 12/380,587
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's final
rejection of claims 1, 38, 39, 41--44, 47, 49, 51, 52, 54--57, 59, 61---69, 71,
and 74--82. We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE and enter a NEW GROUND OF REJECTION
pursuant to our authority under 37 C.F.R. § 41.50(b).
CLAIMED INVENTION
Appellants' claimed invention "relates to methods and systems for an
inhaled bioactive agent combined with an artificial sensory experience."
Spec. 4:21-22.
Claims 1 and 38, reproduced below, are illustrative of the subject
matter on appeal:
1. A computer-implemented method, comprising:
accepting, using a microprocessor, at least one indication
of use of an inhalation device configured to dispense a bioactive
agent to an individual; and
presenting at least one artificial sensory experience to
monitor at least one desired effect of the bioactive agent on the
individual.
38. A system, comprising:
means for accepting at least one indication of use of an
inhalation collar device configured to dispense a bioactive agent
to an individual; and
means for presenting at least one virtual world experience
to monitor at least one desired effect of the bioactive agent on the
individual.
REJECTIONS
Claims 1,38,39,41,42,44,47,49,51,52,54-57,59,62---64, 71, 74--
80, and 82 are rejected under 35 U.S.C. § 103(a) as unpatentable over
2
Appeal2014-003024
Application 12/380,587
Trueba (US 2004/0107961 Al, pub. June 10, 2004) and Lamson (US
6,425,764 Bl, iss. July 30, 2002).
Claims 43, 61, 65---69, and 81 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Trueba, Lamson, and Kehr (US 2003/0036683 Al,
pub. Feb. 20, 2003).
ANALYSIS
Claims 1, 38, 39, 41--44, 47, 49, 51, 52, 54--57, 59, 61---69, 71, and 74--
82 are indefinite under 35 U.S.C. § 112, second paragraph, for the reasons
discussed below. In light of this new rejection, we reverse, proforma, the
Examiner's rejections of claims 1, 38, 39, 41--44, 47, 49, 51, 52, 54--57, 59,
61-69, 71, and 74--82 under 35 U.S.C. § 103(a). See In re Steele, 305 F.2d
859, 862 (CCPA 1962) (A prior art rejection cannot be sustained if the
hypothetical person of ordinary skill in the art would have to make
speculative assumptions concerning the meaning of claim language.) Our
decision to reverse is based solely on the indefiniteness of the claims, and
does not reflect on the merits of the underlying rejections.
NEW GROUND OF REJECTION
Within our authority under 37 C.F.R. § 41.50(b), we enter a new
ground of rejection for claims 1, 38, 39, 41--44, 47, 49, 51, 52, 54--57, 59,
61---69, 71, and 74--82 under 35 U.S.C. § 112, second paragraph.
Independent Claims 1, 75, 76, and 80, and Dependent Claims 77-79, 81,
and 82
Independent claim 1 recites a computer-implemented method
comprising "presenting at least one artificial sensory experience to monitor
at least one desired effect of the bioactive agent on the individual."
3
Appeal2014-003024
Application 12/380,587
Independent claims 75, 76, and 80 recite similar language. Our concern is
with the phrase "artificial sensory experience."
The Specification sets forth examples of an artificial sensory
experience:
[ o ]ne example of an artificial sensory experience may include a
virtual world and/or other computer-simulated experience.
Other examples of an artificial sensory experience may include
experiences triggering sight, smell, hearing, touch, and/ or taste.
For example, presenter module 104 may present an indication
of an artificial sensory experience including a virtual scent
environment, which may include olfactory stimulation for . .
1mprovmg memory.
See, e.g., Spec. 13:7-13. However, the Specification provides no objective
definition for identifying an "artificial sensory experience" or any objective
standard for determining which experiences are "artificial sensory
experiences" and which are not. Nor is any such objective standard evident
from the examples. In fact, it would seemingly appear that whether a
particular experience constitutes an "artificial sensory experience," e.g.,
whether the experience "[triggers] sight, smell, hearing, touch, and/or taste,"
depends on the subjective reaction of the individual participant. See
Datamize, LLC v. Plumtree Software Inc., 417 F.3d 1342, 1350 (Fed. Cir.
2005) ("The scope of claim language cannot depend solely on the
unrestrained, subject opinion of a particular individual purportedly
practicing the invention.") (citations omitted).
In other words, a person of ordinary skill in the art, on reviewing the
Specification, would not understand what types of "artificial sensory
experiences" the claims are intended to cover. As such, a person of ordinary
skill in the art would not be able to determine the metes and bounds of
4
Appeal2014-003024
Application 12/380,587
independent claims 1, 75, 76, and 80, and claims 77-79, 81, and 82, which
depend therefrom, so as to understand how to avoid infringement.
Therefore, we find claims 1 and 75-82 indefinite under 35 U.S.C.
§ 112, second paragraph. See Orthokinetics, Inc. v. Safety Travel Chairs,
Inc., 806 F.2d 1565, 1576 (Fed. Cir. 1986).
Independent Claim 38, and Dependent Claims 39, 41--44, 47, 49, 51, 52, 54-
57, 59, 61-69, 71, and 74
Claim 3 8 recites a system comprising "means for accepting at least
one indication of use of an inhalation collar device configured to dispense a
bioactive agent to an individual," and "means for presenting at least one
virtual world experience to monitor at least one desired effect of the
bioactive agent on the individual." "Use of the term 'means' in a claim
limitation creates a presumption that section 112, paragraph 6 has been
invoked, but that presumption may be rebutted if the properly construed
claim limitation itself recites sufficiently definite structure to perform the
claimed function." Kemco Sales, Inc. v. Control Papers Co., 208 F.3d 1352,
1361 (Fed. Cir. 2000) (citation omitted). In this case, the claimed "means
for accepting" and "means for presenting" each fails to recite any structure
to perform the claimed function. Therefore, we conclude that claim 38
invokes 35 U.S.C. § 112, sixth paragraph.
The patent statute requires a claim limitation expressed in means-plus-
function language to be construed as covering the corresponding structure
described in the Specification. See 35 U.S.C. § 112, i-f 6. "As such, [our
reviewing court] has referred to section 112, paragraph 6 as embodying a
statutory quid pro quo." Kemco Sales, 208 F.3d at 1360 (citation omitted).
If one fails to satisfy the bargain because of a failure to disclose adequate
structure, the claim will be rendered indefinite under section 112, second
5
Appeal2014-003024
Application 12/380,587
paragraph. Id. at 1360-61 (citing Jn re Donaldson Co., 16 F.3d 1189, 1195
(Fed. Cir. 1994)).
Here, Appellants direct us to Figures 18-22 and page 32, line 10 to
page 34, line 20 of the Specification as support for the claimed "means for
accepting" and "means for presenting," as recited in independent claim 38.
See Br. 8; see also 37 C.F.R. § 41.37(c)(iii) (2013) ("if the claim contains a
means plus function [limitation], then the concise explanation [of claimed
subject matter in the Appeal Brief] must identify the structure ... described
in the specification ... by page and line number or by paragraph number,
and to the drawing, if any, by reference characters.")
Figures 18-21 show a system 1800 for accepting an indication of use
of an inhalation device. Spec. 32:10-14, 32:21-25, 33:14--16, 34:3--4,
Figs. 18-21. As shown in Figures 18-21, system 1800 includes "an accepter
module 2002 and presenter module 2028." Id. at 32:14--15, 32:25-27,
33: 14--16, 34:3--4, Figs. 18-21. Accepter module 2002 includes computer
device accepter module 2004, collar accepter module 2008, headset accepter
module 2010, medicine accepter module 2014, unregulated bioactive agent
accepter module 2020, and/or recreational agent accepter module 2024. Id.
at 33: 16-20, Fig. 20. Presenter module 2028 includes data receiver module
2102, mobile device module 2108, virtual presenter module 2112,
neurophysiological presenter module 2114, brain activity measurer module
2118, real time presenter module 2122, function monitorer module 2124, test
output monitorer module 2126, and/or recorder module 2128. Id. at 34:4--9,
Fig. 21. In other words, the Specification depicts accepter module 2002 and
presenter module 2028 as black boxes, each module containing other black
6
Appeal2014-003024
Application 12/380,587
box modules. But we fail to find any disclosure of the structural details of
these modules.
Nor do we find any disclosure of an algorithm, code, or flowchart that
could be implemented on a general purpose computer to perform the
functions corresponding to the accepter module and presenter module and,
thereby provide the necessary structure under§ 112, sixth paragraph.
Figure 22 shows a two-step operational flow 2200 comprising "accepting at
least one indication of use of an inhalation device" (step 2210) and
"presenting at least one artificial sensory experience to monitor" (step 2220).
Id. at Fig. 22, 34, 11. 16-20, Fig. 22. But these steps substantially restate the
functionality recited with respect to the claimed means for accepting and
means for presenting, and do not provide a particular algorithm for
achieving the functionality.
Therefore, we conclude that the accepter module 2002 and presenter
module 2028 are undefined structures that do not inform one of ordinary
skill in the art what structure, material, or acts perform the claimed function.
Additionally, with respect to dependent claims 51, 52, 54--57, 59, 61-
64, 71, and 74, we note that these claims lack antecedent basis for the phrase
"artificial sensory experience."
In view of the foregoing, we find independent claim 38 and claims 39,
41--44, 47, 49, 51, 52, 54--57, 59, 61---69, 71, and 74--82, which depend
therefrom, indefinite under 35 U.S.C. § 112, i-f 2.
7
Appeal2014-003024
Application 12/380,587
DECISION
The Examiner's rejections of claims 1, 38, 39, 41--44, 47, 49, 51, 52,
54--57, 59, 61---69, 71, and 74--82 under 35 U.S.C. § 103(a) are reversed pro
forma.
A NEW GROUND OF REJECTION has been entered for claims 1,
38, 39, 41--44, 47, 49, 51, 52, 54--57, 59, 61---69, 71, and 74--82 as indefinite
under 35 U.S.C. § 112, second paragraph.
37 C.F.R. § 41.50(b) provides that "[a] new ground of rejection ...
shall not be considered final for judicial review." 37 C.F.R. § 41.50(b) also
provides that the Appellants, WITHIN TWO MONTHS FROM THE DATE
OF THE DECISION, must exercise one of the following two options with
respect to the new ground of rejection to avoid termination of the appeal as
to the rejected claims:
( 1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new evidence relating to
the claims so rejected, or both, and have the matter reconsidered
by the examiner, in which event the proceeding will be remanded
to the Examiner . . . .
(2) Request rehearing. Request that the proceeding be
reheard under§ 41.52 by the Board upon the same record ....
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
REVERSED; 37 C.F.R. § 41.50(b)
8