Ex Parte Jung et al

Patent Trial and Appeal Board

Aug 9, 2016

12156783 (P.T.A.B. Aug. 9, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
12/156,783 06/03/2008 Edward K. Y. Jung
140634 7590 08/10/2016
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.
0406-002-006-COOOOl 4517
EXAMINER
ARCHER, MARIE
ART UNIT PAPER NUMBER
3769
MAILDATE DELIVERY MODE
08/10/2016 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 EDWARD K. Y. JUNG, ERIC C. LEUTHARDT,
ROYCE A. LEVIEN, ROBERT W. LORD, and MARK A. MALAMUD
Appeal2013-010865
Application 12/156,783
Technology Center 3700
Before NEALE. ABRAMS, JILL D. HILL, and LISA M. GUIJT,
Administrative Patent Judges.
GUIJT, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants 1 seek our review under 35 U.S.C. § 134 of the Examiner's
decision2 rejecting claims 74--101. 3 We have jurisdiction under 35 U.S.C.
§ 6(b ).
We AFFIRM
1 Appellants identify the real party in interest as Searete, LLC. App. Br. 4.
2 Appeal is taken from the Final Office Action dated November 9, 2012
("Final Act.").
3 Claims 102-105 have been withdrawn. See Final Act. 5---6.
Appeal2013-010865
Application 12/156,783
CLAIMED SUBJECT MATTER4
Claims 7 4 and 101 are the independent claims on appeal. Claim 7 4,
reproduced below, is illustrative of the subject matter on appeal, with
disputed claim limitations italicized for emphasis.
74. A system comprising:
a device configured to obtain user-health data;
a user-health test function selection module; and
a device configured to apply at least one selected
user-health test function to at least one interaction between
at least one user and at least one device-implement
application whose primary function is game player.
REJECTIONS5
1. Claims 74--100 stand rejected under 35 U.S.C. § 112, first
paragraph, as failing to comply with the written description requirement.
2. Claims 74--92 and 94--99 stand rejected under 35 U.S.C. §
103(a) as unpatentable over Simon (US 2003/0167149 Al; pub. Sept. 4,
2003) and Calhoun (US 6,280, 198 Bl; pub. 1A,ug. 28, 200 l ).
3. Claim 93 stands rejected under 35 U.S.C. § 103(a) as
unpatentable over Simon, Calhoun, and Shirai (US 2005/0283055 Al; pub.
Dec. 22, 2005).
4. Claims 100 and 101 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Simon and Hersh (US 2002/0106617 Al; pub. Aug. 8,
2002).
4 See Amendment dated Sept. 27, 2012.
5 Claims 74--99 and Appellants' Specification stand objected to by the
Examiner. See Final Act 6-7. These matters are petitionable, and we
therefore decline to consider them. 3 7 C.F .R. § 1.181.
2
Appeal2013-010865
Application 12/156,783
ANALYSIS
As an initial matter, Appellants request entry of the After Final
Amendment dated March 11, 2013, which was not entered by the Examiner.
App. Br. 5; see Adv. Act. 1.6 However, entry of amendments is not
appealable, but rather petitionable, and thus, is not within the jurisdiction of
the Board. See In re Berger, 279 F.3d 975, 984 (Fed. Cir. 2002); and In re
Mindick, 371 F.2d 892, 894 (CCPA 1967) (refusal of examiner to enter an
amendment of claims is reviewable by petition under 3 7 C.F .R. § 1.181, and
not by appeal to the Board).
Appellants chose not to present arguments responsive to the Final
Action in their Appeal Brief, but presented responsive arguments for the first
time on appeal in their Reply Brief. The Board is not required to take up a
belated argument that has not been addressed by the Examiner, absent a
showing of good cause. This is because, as the Examiner has not been
provided a chance to respond, and in the absence of a showing of good cause
by Appellants, these arguments are deemed waived. See 37 C.F.R. §
41.41 (b )(2); Ex parte Nakashima, 93 USPQ2d 1834, 183 7 (BP AI 2010)
(explaining that arguments and evidence not timely presented in the
principal Brief, will not be considered when filed in a Reply Brief, absent a
showing of good cause explaining why the argument could not have been
presented in the Principal Brief); Ex parte Borden, 93 USPQ2d 1473, 1477
(BP AI 2010) (informative) ("Properly interpreted, the Rules do not require
the Board to take up a belated argument that has not been addressed by the
6 The claims subject to appeal are the claims as presented in the
Amendment dated September 27, 2012.
3
Appeal2013-010865
Application 12/156,783
Examiner, absent a showing of good cause."). Here, Appellants' Reply
Brief presents arguments that are identical to the arguments presented in
Appellants' Amendrnent dated September 27; 2012, and therefore, we have
the benefit of a response by the Examiner as stated in the Fina! Action dated
November 9, 2012; from which this appeal has been taken. Thus, on the
record before us and for expediency, we will decide the issues presented in
this appeal and as argued in Appellants; Reply Brief
First Ground of Rejection
Independent claim 7 4
Regarding independent claim 7 4, the Examiner determines that
although "the Specification provides support for a game ... , there is no
disclosure for a 'player,'" and thus, the claim term "game player" is new
matter, which fails to comply with the written description requirement of 3 5
U.S.C. § 112, first paragraph. Final Act. 7-8 (citing Spec. i-fi-152, 60, 78,
186)7'8
Appellants argue that the Specification demonstrates possession of the
subject matter of claim 74, in that the Specification recites that
[ o ]peration 900 depicts applying the at least one user-health test
function to the at least one interaction between the at least one
user and at least one device-implemented game whose primary
function is different from symptom detection. For example, at
least one device 102 may have installed on it at least one game
106 whose primary function is different from symptom
detection, the game 106 being operable on the at least one device
102.
7 The Examiner and Appellants cite to the publication of the Specification
(US 2009/0005654 Al; pub. Jan. 1, 2009); for consistency, we will also cite
to the published Specification.
8 The claim term "game player" was first added to claim 74 by the
Amendment dated March 20, 2012.
4
Appeal2013-010865
Application 12/156,783
Reply Br. 10 (citing Spec. if 182). Appellants submit that, because the
Specification discloses that "device 102 may have installed on it at least one
game 106 whose primary function is different from symptom detection, .. [,]
[the Specification] clearly supports the [claim] recitation ... of 'at least one
device-implement application whose primary function is ... a ... game
player."' Id. at 10-11; see also id. at 14--19.
The purpose of the written description requirement in 35 U.S.C. §
112, first paragraph, is to "'clearly allow persons of ordinary skill in the art
to recognize that [the inventor] invented what is claimed."' Ariad Pharm.,
Inc. v. Eli Lilly and Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en bane)
(citing Vas-Cath, Inc. v. Mahurkar, 935 F.2d 1555, 1562-63 (Fed. Cir.
1991)). "[T]he test for sufficiency 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."
Id. This test "requires an objective inquiry into the four comers of the
specification from the perspective of a person of ordinary skill in the art."
Id.
Claim 7 4 recites, in relevant part, "a device configured to apply at
least one selected user-health test function to at least one interaction between
at least one user and at least one device-implemented application whose
primary function is game player." Amendment dated Sept. 27, 2012, p. 2
(emphasis added). Thus, according to the language of claim 7 4, "game
player" limits the function of the "device-implemented application."
The Specification discloses that "a device" (i.e., device 102) is
"virtually any kind of computing device [that] may be used in connection
with the application 104, such as ... a workstation, a desktop computer, a
5
Appeal2013-010865
Application 12/156,783
mobile computer, a net-worked computer, a collection of servers and/or
databases, cellular phone, personal entertainment device, or a table PC."
Spec. i-f 35. The Specification also discloses that "a device-implemented
application" (i.e., application 104) is "an application 104 that is operable on .
. . device 102.9 Id. i-f 53. As an example, the Specification discloses that
"application 104 [may] perform a primary function that is different from
symptom detection[, f]or example, an online computer game may be
operable as an application 104 on a personal computing device through a
network 192." Id. i-f 53 (emphasis added); see also, e.g., id. i-f 190 ("device
102 may have installed on it at least one game 106 whose primary function
is different from symptom detection").
that
Regarding the use of the term "player," the Specification discloses
[a]nother example of applying the at least one user-health test
function to at least one interaction between at least one user and
at least one device=implemented application \'l1hose primary
function is different from symptom detection is applying a
selected hearing test function to an interaction between a user
and a music-playing device, video-playing device, or other
personal entertainment device that emits sound. In this case, the
device-implemented application can be a media player for
playing music or movies, or the like. Similarly, as a selected
vision test function may be applied by the at least one device 102
to an interaction between a user and a media player application
that, for example, displays a photograph or movie on a computer
screen or other monitoring device.
9 An ordinary definition of "application" in the context of computer
software is "a computer program or piece of software designed to perform a
specific task." MICROSOFT® ENCARTA COLLEGE DICTIONARY, 64
(2001).
6
Appeal2013-010865
Application 12/156,783
Spec. if 52 (emphasis added). Thus, a "-playing device," "player," or"-
player application" are described in the context of the functionality of
applications operable on a computing device, in accordance with the
Specification.
In view of the above, we determine that the Specification reasonably
conveys to those skilled in the art that, as of the filing date, the inventor had
possession of the claimed subject matter, "game player," as limiting the
primary functionality of an application operable on a computing to a game,
and therefore, we do not sustain the Examiner's rejection of claim 74. The
Examiner's rejections of dependent claims 75-99 are based upon their
dependency from claim 7 4, and therefore, we also do not sustain the
Examiner's rejection of claims 75-99 under 35 U.S.C. § 112, first
paragraph, as failing to comply with the written description requirement.
Dependent claim 100
Claim 100 depends from independent claim 101. See Amendment
dated Sept. 27, 2012, p. 5. Independent claim 101 recites, in relevant part,
"a device configured to apply at least one selected user-health function to at
least one interaction between at least one user and at least one device-
implemented application whose primary function is a media player," and
dependent claim 101 recites "wherein the media player includes at least one
of a music player, a video player or an entertainment player." Id. at p. 5---6.
The Examiner determines that "there is no disclosure in the Specification of
a 'player' or that the entertainment device is a player or that the media
player includes an entertainment player." Final Act. 7-8 (citing Spec. iii! 35,
52, 215). Appellants argue that the Specification demonstrates possession of
7
Appeal2013-010865
Application 12/156,783
the subject matter of claim 100, relying on paragraph 52 of the Specification,
as stated supra. Reply Br. 11-12.
An ordinary definition of the claim term "media player," as describing
the functionality of an application operable on a computing device, in light
of the Specification, is "a software application that controls audio and video
of a computer," 10 and as stated supra, the Specification discloses a "media
player application" that "displays a photograph or movie on a computer
screen." Spec. i-f 52. Further, the Specification discloses that a specific
example of a "device-implemented application" is a "personal entertainment
device that emits sound." Spec. i-f 52.
Thus, we determine that the Specification reasonably conveys to those
skilled in the art that, as of the filing date, the inventor had possession of the
claimed subject of "a media player" and more narrowly, "an entertainment
player," as limiting the primary functionality of an application operable on a
computing device to controlling the audio and video of the computer to
entertain, for example, by the presentation of photographs or movies, and
therefore, we do not sustain the Examiner's rejection of claim 100.
Second Ground of Rejection
Regarding independent claim 7 4, the Examiner finds, inter alia, that
Simon teaches the claimed invention, except that "Simon does not teach that
the device implemented application's primary function is a game player,"
explaining that Simon's "interface through which the test is administered is
not embodied as a game player or a game scenario." Final Act. 12-13. The
Examiner relies on Calhoun for teaching "computer implemented cognitive
10 http://www.dicationary.com/browse/media-player (last visited July 26,
2016).
8
Appeal2013-010865
Application 12/156,783
tests [in] the form of ... games that the human subject plays on a remote
computer." Id. at 13 (citing Calhoun, col. 5, 11. 50-60) (emphasis omitted);
see also id. at 10, Response to Arguments section ("Calhoun teaches
cognitive tests administered as game players.").
Appellants argue that Calhoun fails to disclose "at least one device-
implemented application whose primary function is a game player,'" as
required by claim 74, but rather Calhoun discloses only that "cognitive tests
may take the form of a set of trials or games." Reply Br. 16; see also
Amendment dated Sept. 27, 2012, p. 21. Appellants maintain that "a search
of the entirety of the text of Calhoun fails to reveal a recitation of an
'application whose primary function is a game player,"' as required by claim
74. Reply Br. 16; see also Amendment dated Sept. 27, 2012, p. 21.
Calhoun discloses that
there are numerous cognitive tests that may be applied using
[Calhoun's] remote computer implemented testing methods. In
order to maintain a high level of engagement, a test may be
chosen that previously have been shown to be associated with a
high level of engagement. For example, Tetris may be used as a
cognitive test for the cognitive skills of spatial orientation and
reaction time as tests associated with a high level of engagement.
Calhoun, col. 6, 11. 1-9. "Tetris" is defined as "[a] puzzle video game in
which falling tetrominoes must be manipulated to form complete lines,
which are then cleared from the grid." 11 Accordingly, we are not apprised of
error in the Examiner's finding that Calhoun discloses "at least one device-
implemented application whose primary function is a game player," as
recited in independent claim 74, in that Tetris is a device-implemented
11 http://www.yourdictionary.com/tetris (last visited July 26, 2016).
9
Appeal2013-010865
Application 12/156,783
application whose primary purpose is for playing a game on a computing
device rather than for cognitive testing.
Accordingly, we sustain the Examiner's rejection of independent
claim 74 under 35 U.S.C. § 103(a) as unpatentable over Simon and
Calhoun. 12 Appellants chose not to present separate arguments for the
patentability of claims 7 5-99, and therefore, we also sustain the Examiner's
rejection of claims 75-92 and 94--99. See Reply Br. 20.
Third Ground of Rejection
Claim 93 depends from independent claim 7 4. Appellants chose not
to present separate arguments for the patentability of claim 93. See Reply
Br. 20. Because we sustain the Examiner's rejection of independent claim
74, as discussed supra, we also sustain the Examiner's rejection of claim 93
depending therefrom.
Fourth Ground of Rejection
Regarding claims 100 and 101, the Examiner finds, inter alia, that
Simon teaches the claimed invention, including teaching testing that
includes "perception tests." Final Act. 21-23 (citing Simon i-f 225). The
Examiner determines that "Simon does not teach that the device
implemented application's primary function is a media player," as required
by independent claim 101, or "that the media player includes a music
player," as required by dependent claim 100. Id. at 23 (citing Simon i-f 225).
The Examiner relies on Hersh for teaching "a multi-media ... system [that]
performs psychological assessment of an individual," wherein "the multi-
12 Appellants' additional arguments that the Examiner relies on inherency or
errors in "mapping" the disclosures of Calhoun are moot in view of our
determination that the Examiner did not err in relying on Calhoun for
teaching the relevant claim limitation. See Reply Br. 17-19.
10
Appeal2013-010865
Application 12/156,783
media include[s] ... auditory effects such as ... alarming music." Id. at 23
(citing Hersh, Abstract, i-f 142) (emphasis omitted); see also Id. at 5,
Response to Arguments section. The Examiner finds that Hersh's "media
player is both a software and hardware application." Id. at 23. The
Examiner reasons that it would have been obvious to modify Simon "to
provide a multi-media interface, including a music player, in order to present
the auditory stimuli to the client during the perception test as taught by
Hersh." Id.
Appellants argue that the Examiner's findings lack support from
Hersh, in that "the portion[ s] of Hersh [cited by the Examiner] fail to recite
at least [one] 'device-implemented application whose primary function is
a[] 'music player, a video player or an entertainment player,"' contending
that "the cited portions of Hersh recite, in part, 'the individual is shown and
provided with discrete visual and auditory stimuli' to 'perform psychological
assessment of an individual."' Reply Br. 22. However, Appellants' do not
provide evidence or persuasive argument as to why the Examiner's finding
that Hersh's disclosure of multi-media equipment, which is described as
used for testing, does not also include a software application that controls
the audio and video of the computer whose primary function is as a media
player to control music (or "music player," as recited in claim 100), apart
from device-implemented applications whose primary functions are to
conduct the testing programs. Appellants' contention also fails to address
the Examiner's proposed modification of Simon's interface to include a
media player or music player, as taught in Hersh.
11
Appeal2013-010865
Application 12/156,783
Accordingly, we sustain the Examiner's rejection of claim 100 under
35 U.S.C. § 103(a) as unpatentable over Simon and Hersh. 13 Appellants
chose not to present separate arguments for the patentability of independent
claim 101. See Reply Br. 23-25. Accordingly, we also sustain the
Examiner's rejection of claim 101under35 U.S.C. § 103(a) as unpatentable
over Simon and Hersh.
DECISION
The Examiner's rejection of claims 74--100 under 35 U.S.C. § 112,
first paragraph, is REVERSED.
The Examiner's rejections of claims 74--101under35 U.S.C. § 103(a)
are AFFIRMED.
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)(l )(iv).
AFFIRMED
13 Appellants' additional arguments that the Examiner relies on inherency or
errors in "mapping" the disclosures of Hersh are moot in view of our
determination that Appellants have not apprised us of error in the
Examiner's reliance on Hersh for teaching the relevant claim limitation. See
Reply Br. 23-25.
12