Ex Parte Jung et al

Patent Trial and Appeal Board

Nov 25, 2014

11586439 (P.T.A.B. Nov. 25, 2014)

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.
11/586,439 10/24/2006 Edward K.Y. Jung SE1-1036-US 8407
80118 7590 11/26/2014
Constellation Law Group, PLLC
P.O. Box 580
Tracyton, WA 98393
EXAMINER
REYES, REGINALD R
ART UNIT PAPER NUMBER
3626
MAIL DATE DELIVERY MODE
11/26/2014 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, ROYCE A. LEVIEN,
ROBERT W. LORD, MARK A. MALAMUD, JOHN D.
RINALDO, JR., and LOWELL L. WOOD, JR.
____________________

Appeal 2012-006744
Application 11/586,439
Technology Center 3600
____________________

Before: MURRIEL E. CRAWFORD, ANTON W. FETTING, and
NINA L. MEDLOCK, Administrative Patent Judges.

CRAWFORD, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellants seek our review under 35 U.S.C. § 134 from the
Examiner’s final rejection of claims 1–6, 11–18, 20, 24, 26–30, 32, 34, 36–
41, 52–58, and 72. We affirm.
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Appellants’ claims relate to data handling techniques. (Spec. ¶ 1).
Claim 1 is illustrative of the claimed subject matter:
1. A system comprising:
means for accessing at least one dataset, based on at least
one treatment parameter and at least one predictive basis;
means for determining a graphical illustration of a first
possible outcome of a use of the at least one treatment
parameter with respect to at least one body portion, based on
the at least one dataset;
means for applying a filter criteria to the at least one
dataset to obtain a filtered dataset; and
means for determining a modified graphical illustration
of a second possible outcome of the use of the at least one
treatment parameter with respect to the at least one body
portion, based on the filtered dataset.

The following rejections are before us for review.
Claims 1–6, 11–18, 20, 24, 26–30, 32, 34, 36–41, 52–58, and 72 are
rejected under 35 U.S.C. § 112, second paragraph, as indefinite.
Claims 1–6, 11–18, 20, 24, 26–30, 32, 34, 36–41, and 52–58 are
rejected under 35 U.S.C. § 101 as reciting non-statutory subject matter.
Claims 1–6, 11–18, 20, 24, 26–30, 32, 34, 36–41, 52–58, and 72 are
rejected under 35 U.S.C. § 103(a) as unpatentable over Eder
(US 7,730,063 B2, issued June 1, 2010) and Chernack (US 5,505,623, issued
Apr. 9, 1996).

ANALYSIS
Rejections under Section 112, Second Paragraph
We are persuaded by the Appellants’ argument that at least paragraphs
4, 116, 146–51, and 227–29 of the Appellants’ Specification provide
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examples of structure for the means for accessing and means for determining
clauses, and for determining a body portion of the graphical illustration.
(App. Br. 9, 21, 26)1. The Examiner asserts the claims recite only a “general
purpose computer” and are unclear on what body part is determined.
(Ans. 5). The Examiner directs that the Appellants must “[s]tate on the
record where the corresponding structure, material, or acts are set forth . . . .”
(Id.).
However, the Examiner does not respond to the Appellants’
arguments that set forth the requested information (App. Br. 21, 26), nor
does the Examiner consider whether the cited sections adequately address
the meaning of the claims. Therefore, the Examiner has failed to establish
that a prima facie case of indefiniteness remains, given that the Appellants
have apparently provided exactly what the Examiner required.
For this reason, we reverse both rejections under 35 U.S.C. § 112,
second paragraph.

Rejection under Section 101
We are persuaded by the Appellants’ argument that the means-plus-
function claims (all but claim 72 in the set of pending claims) encompass
computer hardware to perform the recited software functions, such that the
claims do not merely recite software per se, as set forth by the Examiner.
(App. Br. 28). Specifically, the Appellants cite paragraphs 227–29 of the

1 In the Summary of Claimed Subject Matter section of the Appeal Brief, the
Appellants also indicate that support for claim 1 can be found in originally
filed claim 1, but the meaning of a means-plus-function claim is not found in
a claim that recites only means-plus-function language. (App. Br. 9). See
Medical Instrumentation and Diagnostic Corp. v. Elekta AB, 344 F.3d 1205,
1218 (Fed. Cir. 2003).
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Specification as describing specific computer hardware components that
provide physical structure in the claims. (Id.). The Examiner does not
respond to this argument. Because the Appellants have responded to the
argument with what, on its face, appears to be computer hardware alleged to
be within the scope of the means-plus-function limitations, they appear to
refute the Examiner’s argument, that the claims recite only software per se.
For this reason, we reverse the rejection under 35 U.S.C. § 101.

Rejection under Section 103
Claims 1–4, 6, 11–18, 20, 24, 26–30, 32, 34, 36–40, 52–54, 56–58, and 72
The Appellants argue independent claims 1, 52, and 72 together as a
group (App. Br. 77–78), so we select claim 1 as representative. No separate
argument is specifically directed to dependent claims 2–4, 6, 11–18, 20, 24,
26–30, 32, 34, 36–40, and 53, 54, and 56–58. (Id. at 73, 78). Therefore
claims 2–4, 6, 11–18, 20, 24, 26–30, 32, 34, 36–40, 52–54, 56–58, and 72
fall with claim 1. See 37 C.F.R. § 41.37(c)(1)(vii).
Appellants variously argue that the rejection of independent claim 1
should be reversed because the Examiner has failed to establish a prima
facie case of unpatentability (App. Br. 53–73). More particularly,
Appellants argue that a prima case of obviousness has not been established
because the “USPTO-cited Technical Material Fails to Recite Several
Express Terms” of claim 1 and the USPTO has not explained how it
reached the mappings of the claim onto the cited prior art under a broadest
reasonable interpretation standard (id. at 54–64). Appellants assert that the
Examiner’s characterization that Eder and Chernack teach what is recited in
claim 1 (id. at 53–65; see also Reply Br. 3–6 and Supplemental Reply Br. 5–
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13), and that the Appellants have “shown by direct quotations” that claim 1
and the cited portions of Eder and Chernack are “very different on their
faces” (id. at 59, 63), are not based on objective evidence. In this regard, the
Appellants maintain that Appellants’ application is the only “objectively
verifiable Examiner-cited document of record that shows or suggests what
Examiner purports the references to teach” (id. at 54, 59–65), and that the
Examiner is interpreting Eder and Chernack through the lens of the
Appellants’ application, which is impermissible hindsight (id. at 60, 64).
The Appellants also charge that the Examiner is improperly relying on
personal knowledge or is taking official notice of one of more factors to
reach the factual conclusion of what the cited technical material teaches, and
that the Examiner should be required to provide an affidavit or declaration
setting forth objectively verifiable evidence in support of the Examiner’s
assertions regarding what the cited technical material teaches and/or should
be interpreted to teach (id. at 60–61, 64–65, 73).
The Appellants’ arguments are unpersuasive. The Federal Circuit has
held that the USPTO carries its procedural burden of establishing a prima
facie case when its rejection satisfies the requirements of 35 U.S.C. § 132 by
notifying the applicant of the reasons for rejection, “together with such
information and references as may be useful in judging of the propriety of
continuing the prosecution of [the] application.” See In re Jung, 637 F.3d
1356, 1362 (Fed. Cir. 2011) (internal citation and quotations omitted). Thus,
“all that is required of the office to meet its prima facie burden of production
is to set forth the statutory basis of the rejection and the reference or
references relied upon in a sufficiently articulate and informative manner as
to meet the notice requirement of § 132.” Id. at 1363.
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Here, the Examiner notified Appellants that claim 1 is rejected under
35 U.S.C. § 103(a) as obvious over the combination of Eder and Chernack,
and the Examiner cited specific portions of the references, by column and
line numbers, that are the bases for the rejection (Ans. 6–8). The cited
portions of the references, and the accompanying explanations provided by
the Examiner, collectively constitute the “objectively verifiable evidence,”
which Appellants allege is lacking.
Moreover, and contrary to Appellants’ suggestion that identity of
terminology is required, the Examiner does not contend, nor is the Examiner
required to demonstrate, that the identical text of rejected claim 1 appears in
the cited references. The test of whether a reference teaches a claim
limitation is not whether the exact language is present. Instead, the relevant
inquiry is whether the limitation is taught or suggested by the prior art when
the claim is given its broadest reasonable interpretation in light of the
Specification. Cf. In re Bond, 910 F.2d 831, 832–33 (Fed. Cir. 1990)
(interpretation of references “is not an ‘ipsissimis verbis’ test,” citing Akzo
N.V. v. U.S. Int'l Trade Comm'n, 808 F.2d 1471, 1479 & n.11 (Fed. Cir.
1986)); Standard Havens Prods., Inc. v. Gencor Indus., Inc., 953 F.2d 1360,
1369 (Fed. Cir. 1991) (“[A] . . . reference . . . need not duplicate word for
word what is in the claims.”).
We find that the Examiner’s rejection satisfies the notice requirement
of § 132, and, therefore, establishes a prima facie case of obviousness.
Cf. Jung, 637 F.3d at 1363 (“[T]he examiner’s discussion of the theory of
invalidity . . . , the prior art basis for the rejection . . . , and the identification
of where each limitation of the rejected claims is shown in the prior art
reference by specific column and line number was more than sufficient to
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meet this burden.”). Therefore, the burden shifts to Appellants to rebut the
Examiner’s prima facie case by distinctly and specifically pointing out the
supposed errors in the Examiner's action, as well as the specific distinctions
believed to render the claims patentable over the applied references. See
37 C.F.R. § 41.37(c)(1)(vii) (2011) (“A statement which merely points out
what a claim recites will not be considered an argument for separate
patentability of the claim.”); see also In re Lovin, 652 F.3d 1349, 1357 (Fed.
Cir. 2011) (“[W]e hold that the Board reasonably interpreted Rule 41.37 to
require more substantive arguments in an appeal brief than a mere recitation
of the claim elements and a naked assertion that the corresponding elements
were not found in the prior art.”).
Appellants have failed to carry their burden. Rather than distinctly
pointing out the Examiner's supposed errors, Appellants have made mere
general allegations that the claims define a patentable invention because the
Examiner has failed to establish a prima facie case of unpatentability,
without specifically articulating what gaps exist between the cited references
and the claims. For example, although the Appellants charge the Examiner
with improper reliance on hindsight, personal knowledge, or improper
reliance on official notice, the Appellants do not provide persuasive
arguments or evidence to support that charge. The Appellants’ objection to
the Examiner's technical explanation of how the claim is obvious in view of
the prior art, and their demand for “an affidavit or declaration setting forth
objectively verifiable evidence in support of Examiner’s currently
unsupported assertions regarding what the cited technical material ‘teaches’
and/or should be interpreted to ‘teach”’ (see, e.g., App. Br. 58–60, 64–65),
also lack technical explanation of what the error is. Appellants also do not
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specifically identify (except by quoting the entirety of the claim) the several
“express terms” of claim 1 that the “USPTO-cited technical material”
allegedly fails to recite.
Appellants’ further argument that the Examiner has provided
conclusory statements only, and has failed to provide articulated reasoning
with some rational underpinning to support the obviousness conclusion
(App. Br. 65–66, citing KSR Int'l Co. v. Teleflex, Inc., 550 U.S. 398 (2007))
also begs the question of whether any differences exist, and fails to address
the Examiner’s stated rationale for combining the references.
Appellants’ contentions that combining the references, as the
Examiner proposes, would change the principle of operation of one or both
of Eder or Chernack, would render the technologies of Eder and/or Chernack
unfit for their intended purposes, and would require substantial
reconstruction and redesign of the elements of Eder (App. Br. 54, 65, 69–70)
similarly fail at least because they appear based on bodily incorporation,
which is not the test for obviousness. See In re Sneed, 710 F.2d 1544, 1550
(Fed. Cir. 1983) (“[I]t is not necessary that the inventions of the references
be physically combinable to render obvious the invention under review.”); In
re Nievelt, 482 F.2d 965, 968 (CCPA 1973) (“Combining the teachings of
references does not involve an ability to combine their specific structures.”).
Viewed as a whole, Appellants’ arguments amount to a recitation of
the claim language, and a quotation of the Examiner’s statement of the
rejection followed by a quotation of each of the cited portions of the prior art
references, from which Appellants summarily conclude that the quoted
language of the references does not meet the quoted claim language. Other
than seeking direct quotations of identical terminology, Appellants have not
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identified error in the Examiner’s interpretations of the cited references or
the claim language.
The Appellants may well disagree with how the Examiner interpreted
and applied the references, but Appellants offer no substantive arguments to
rebut the specific underlying factual findings made by the Examiner in
support of the ultimate legal conclusion of obviousness. And we decline to
examine the claims sua sponte, looking for distinctions over the prior art.
Cf. In re Baxter Travenol Labs., 952 F.2d 388, 391 (Fed. Cir. 1991) (“It is
not the function of this court to examine the claims in greater detail than
argued by an appellant, looking for [patentable] distinctions over the prior
art.”).
In the absence of a more detailed explanation, we are not persuaded of
error on the part of the Examiner. See Jung, 637 F.3d. at 1365 (“[I]t has
long been the Board's practice to require an applicant to identify the alleged
error in the examiner's rejections,” citing Ex Parte Frye, 94 USPQ2d 1072,
1075 (BPAI 2010) (precedential) (“The panel then reviews the obviousness
rejection for error based upon the issues identified by appellant, and in light
of the arguments and evidence produced thereon.”)). Therefore, we sustain
the Examiner's rejection of claims 1, 52, and 72 under 35 U.S.C. § 103(a).
For the same reasons, we also sustain the Examiner’s rejection of
dependent claims 2–4, 6, 11–18, 20, 24, 26–30, 32, 34, 36–40, and 53, 54,
56–58, which are not argued separately except based on their dependence
on claims 1 and 52.

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Dependent claims 5, 41, and 55
Appellants argue that dependent claims 5, 41, and 55 are patentable
for substantially the same reasons as set forth with respect to claim 1 (App.
Br. 74–80). We are not persuaded for the reasons set forth above that the
Examiner erred in rejecting claim 1 under 35 U.S.C. § 103(a). Therefore,
we sustain the Examiner's rejection of dependent claims 5, 41, and 55 for the
same reasons.

CONCLUSIONS OF LAW
The Examiner erred in rejecting claims 1–6, 11–18, 20, 24, 26–30, 32,
34, 36–41, 52–58, and 72 under 35 U.S.C. § 112, second paragraph, as
indefinite.
The Examiner erred in rejecting claims 1–6, 11–18, 20, 24, 26–30, 32,
34, 36–41, and 52–58 under 35 U.S.C. § 101 as reciting ineligible subject
matter.
The Examiner did not err in rejecting claims 1–6, 11–18, 20, 24, 26–
30, 32, 34, 36–41, 52–58, and 72 under 35 U.S.C. § 103(a).

DECISION
For the above reasons, the Examiner’s rejections of claims 1–6, 11–
18, 20, 24, 26–30, 32, 34, 36–41, 52–58, and 72 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)(1)(iv).

AFFIRMED

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