Ex Parte Jung et al

Patent Trial and Appeal Board

Jun 13, 2013

11804304 (P.T.A.B. Jun. 13, 2013)

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.
11/804,304 05/15/2007 Edward K.Y. Jung 0406-002-004-000000 8909
44765 7590 06/13/2013
THE INVENTION SCIENCE FUND
CLARENCE T. TEGREENE
11235 SE 6TH STREET
SUITE 200
BELLEVUE, WA 98004
EXAMINER
YAO, SAMCHUAN CUA
ART UNIT PAPER NUMBER
3769
MAIL DATE DELIVERY MODE
06/13/2013 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
__________

Appeal 2012-000903
Application 11/804,304
Technology Center 3700
__________

Before DONALD E. ADAMS, FRANCISCO C. PRATS, and
MELANIE L. McCOLLUM, Administrative Patent Judges.

PRATS, Administrative Patent Judge.

DECISION ON APPEAL
This appeal
1
under 35 U.S.C. § 134 involves claims to a process that
implements a health test function. The Examiner rejected certain claims as
being directed to ineligible subject matter under 35 U.S.C. § 101, and also
entered rejections for anticipation and obviousness.

1
The real party in interest is Searete, LLC, which wholly owned by
Intellectual Ventures Management, LLC (App. Br. 5).
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2
We have jurisdiction under 35 U.S.C. § 6(b).
We affirm the rejection under § 101, as well as the anticipation
rejection. We reverse the obviousness rejection, however.
STATEMENT OF THE CASE
Claims 1, 3-27, 31, 32, and 58-67 stand rejected and appealed (App.
Br. 5). Claim 1 illustrates the appealed subject matter and reads as follows:
1. A method comprising:
implementing in at least one device at least one user-health test
function that is structurally distinct from at least one application
whose primary function is different from symptom detection, the at
least one application being operable on the at least one device;
obtaining user data in response to an interaction between a user
and the at least one application; and
presenting an output of the at least one user-health test function
at least partly based on the user data.

The following rejections are before us for review:
(1) Claims 1 and 3-27, under 35 U.S.C. § 101 as being directed to
non-statutory subject matter (Ans. 4-5);
(2) Claims 1, 3-8, 11-17, 19, 21-24, 31, 32, and 58-67, under 35
U.S.C. § 102(b) as anticipated by Donaher
2
(Ans. 5-6); and
(3) Claims 9, 10, 18, 20, and 25-27, under 35 U.S.C. § 103(a) as
obvious over Donaher (Ans. 6-7).

THE REJECTION UNDER 35 U.S.C. § 101
The Examiner initially notes that claim 1 is directed to a process, and
also notes that the “only machine or apparatus recited in the claim is a

2
U.S. Patent App. Pub. No. 2004/0197750 A1 (published Oct. 7, 2004).
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„device‟ on which an application runs. The steps of „obtaining user data‟
and „presenting an output‟ fail to recite any apparatus or device that
performs the steps” (Ans. 4).
The Examiner further notes that the “„device‟ on which the
application is implemented is tangentially related to the inventive steps,
since it merely runs an application and does not perform essential steps of
the invention such as „obtaining user data‟ or „presenting an output‟” (id. at
4-5). Furthermore, the Examiner contends, “the „device‟ is merely generally
recited and could cover any machine capable of running an application.
There is no transformation of any article that is an object or substance” (id.
at 5).
The Examiner further reasons that the steps of “„obtaining user data‟
and „presenting an output‟ are drawn to an abstract idea since under the
broadest reasonable interpretation of the steps, a person can mentally
perceive data and speak in response to that perception. Such an example is a
series of mental steps, which are not patentable” (id.; see also id. at 7-8).
Appellants argue that, as set forth by the Supreme Court in Bilski v.
Kappos, 130 S.Ct. 3218 (2010), and explained in the June 28, 2010
Memorandum from Robert W. Bahr to the Patent Examining Corps
providing examination guidance under Bilski, “„the machine-or-
transformation test is not the sole test for patent-eligibility of processes
under § 101‟” and “„the examiner should reject the claim under section 101
unless there is a clear indication that the method is not directed to an abstract
idea‟” (App. Br. 15 (citing June 28, 2010 Bahr Memorandum)).
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Thus, Appellants argue, the rejected claims are not restricted to
abstract ideas; instead:
Independent Claim 1 is directed to the real-world process of:
implementing in at least one device at least one user-health test
function that is structurally distinct from at least one application
whose primary function is different from symptom detection,
the at least one application being operable on the at least one
device; obtaining user data in response to an interaction
between a user and the at least one application; and presenting
an output of the at least one user-health test function at least
partly based on the user data.

(Id.).
As stated in In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992):
[T]he examiner bears the initial burden . . . of presenting a
prima facie case of unpatentability. . . .
After evidence or argument is submitted by the applicant
in response, patentability is determined on the totality of the
record, by a preponderance of evidence with due consideration
to persuasiveness of argument.

Appellants‟ arguments do not persuade us that the Examiner failed to
make out a prima facie case that claim 1 is not eligible subject matter under
§ 101.
Appellants have failed to explain, with any specificity, why the
Examiner‟s analysis of claim 1 is defective. While we note Appellants‟
reiteration of the language of claim 1 (see App. Br. 15), Appellants have not
provided any clear or specific explanation as to why that language
demonstrates error in the Examiner‟s reasoning, or ultimate conclusion that
the claim recites ineligible subject matter under § 101. Also, while it may be
true that the machine or transformation test is not the only applicable test,
Appellants have not explained why that test is inapplicable here.
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Accordingly, as Appellants‟ arguments do not persuade us that the
Examiner failed to make out a prima facie case of ineligible subject matter
as to claim 1, we affirm the Examiner‟s rejection of that claim on that
ground. As they were not argued separately,
3
claims 3-27 fall with claim 1.
See 37 C.F.R. § 41.37(c)(1)(vii).
ANTICIPATION
After reviewing the legal principles explaining the Examiner‟s burden
in establishing a prima facie case of unpatentability, the legal principles
explaining the requirements for a finding of anticipation, and the legal
principles regarding claim interpretation during the examination process (see
App. Br. 16-26; see also Reply Br. 3-8 (discussing theory of prima facie
case under In re Jung, 637 F.3d 1356 (Fed. Cir. 2011)), Appellants argue
that the Examiner failed to make out a prima facie case of anticipation
because the rejection “overlooked several express recitations of Independent
Claim 1 in its analysis” and because the Examiner “is interpreting Donaher
to disclose the text of Independent Claim 1, but has not provided any
objectively verifiable evidence supporting its interpretation” (App. Br. 37;
see also Reply Br. 9-13).
We are not persuaded. Rather than ignoring or overlooking any
feature of claim 1, the Examiner set forth the language of claim 1, provided
a citation of where in Donaher each claimed process step appears, and

3
Appellants state that the “claims do not stand and fall together. Rather, the
patentability of each claim is being argued separately, as can be seen in the
argument section, below” (App. Br. 5). Appellants do not, however, present
any separate argument as to any of claims 3-27 with respect to the § 101
rejection.
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explained why the claim language encompassed the subject matter described
in Donaher (see Final Rejection 7; see also Ans. 5-6).
As to claim 1‟s implementing step, the Examiner cited paragraphs
[0069] through [0081] of Donaher as describing a process of “computer –
assisted role playing” (Final Rejection 7). The Examiner then explained that
a “computer is a device and the role playing software is an application. The
system presents virtual reality environments to users, and virtual reality
environments are used for entertainment and teaching of life skills, which is
a primary function different from symptom detection” (id.).
Appellants seem to dispute the Examiner‟s characterization of the
reference. However, Appellants‟ reproduction of paragraphs [0069] through
[0081] (see App. Br. 38-40) supports the evidentiary basis of Examiner‟s
finding as to claim 1‟s implementing step. In particular, Donaher discloses:
The inventive subject matter uses virtual reality
technology to approximate naturalistic settings, which promotes
functional and realistic therapy practices. For example, in a
safe and nonthreatening way, a disabled subject is transported
into a life skill simulation of a real-life situation, and is
encouraged to navigate through everyday routines which may
prove problematic in light of the limitations or disabilities of
the individual. . . . Thus, the inventive subject matter relates to a
method for computer-assisted role-playing of a life skill
simulation by one or more living subject(s), comprising the
steps of:
A) utilizing an input device of a computer system,
selecting a life skill simulation available through said computer
system . . . .

(Donaher [0069]-[0070].)

As to claim 1‟s step of obtaining user data, the Examiner cited
paragraph [0078] of Donaher as disclosing that its process includes the steps
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of “monitor[ing] user responses and evaluat[ing] the life skills and behavior
of the user, and responses are an interaction between the user and the
computer - assisted role playing simulation” (Final Rejection 7).
As Appellants acknowledge (App. Br. 39), paragraph [0078] of
Donaher in fact states that its computer-implemented process monitors the
user‟s response, or lack thereof, to a stimulus presented to the user “for
effectiveness of each subject in achieving a predetermined goal of said life
skill simulation[.]” As Appellants also acknowledge, based on the response,
the computer-implemented process “assess[es] the effectiveness of each said
response, or lack thereof, in achieving said predetermined goal” (Donaher
[0079]). Thus, we are not persuaded that the Examiner failed to provide an
evidentiary basis for finding that Donaher described a device-implemented
process in which user data was obtained.
As to the final step in claim 1‟s process, the step of presenting an
output, the Examiner cited paragraph [0080] of Donaher (Final Rejection 7).
Paragraph [0080] of Donaher states that the process “provid[es] feedback to
a subject regarding the effectiveness of the subject‟s response in achieving
[a] pre-determined goal . . . .” The Examiner explained that providing
feedback “is an output related to the response data” as required by claim 1
(Final Rejection 7). We are therefore also not persuaded that the Examiner
failed to provide an evidentiary basis for finding that Donaher described a
device-implemented process which presented an output of the at least one
user-health test function at least partly based on the user data.
Thus, given Donaher‟s disclosure, we are not persuaded that the
Examiner overlooked any step in the process of claim 1 when evaluating the
claim for anticipation, nor are we persuaded that the Examiner failed to
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provide an evidentiary basis for finding that Donaher anticipates claim 1.
Moreover, because we conclude that the Examiner provided an adequate
evidentiary basis for finding anticipation, we are not persuaded that the
rejection was improperly based on a hindsight analysis, personal knowledge
or official notice, as Appellants argue (see App. Br. 44-45).
We note, as Appellants argue (see App. Br. 41-44), that the cited
portions of Donaher do not recite, word-for-word, what is recited in claim 1.
An anticipating reference, however, “need not satisfy an ipsissimis verbis
test . . . .” In re Gleave, 560 F.3d 1331, 1334 (Fed. Cir. 2009).
Thus, as Appellants‟ arguments do not persuade us that the Examiner
failed to provide an evidentiary basis for finding that Donaher describes a
process having all of the features required by claim 1, we affirm the
Examiner‟s anticipation rejection of that claim over Donaher.
As to independent claims 31, 61, and 65, Appellants rely on their
arguments as to claim 1 (see App. Br. 50). We therefore affirm the
Examiner‟s anticipation rejection as to those claims as well. Claim 60,
which depends from claim 31, falls with claim 31 as it was not argued
separately. See 37 C.F.R. § 41.37(c)(1)(vii).
As to dependent claims 3-8, 11-17, 19, 21-24, 32, 58, 59, 62-64, 66,
and 67, Appellants rely partially on their dependency from independent
claims 1, 31, 61, and 65 (see App. Br. 49-51). As to those dependent claims,
Appellants also argue:
PTO has provided no objectively verifiable evidence, nor
argument based on objectively verifiable evidence, in support
of PTO assertions regarding what the Donaher reference
“teaches.” Insofar as this reference does not literally recite
what PTO asserts that it “teaches,” Appellant respectfully
asserts that PTO must have relied on “personal knowledge” or
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taken improper “official notice” of one or more factors to reach
its assertions. Appellant accordingly requests an appropriate
affidavit or declaration in support of any of these rejections that
are to be maintained, including any considerations purported to
reflect what is “well known in the art.” See, e.g., 37 C.F.R.
l.104(d)(2).

(App. Br. 49-51, nn. 11-14 (emphasis added).)
We are not persuaded. As noted above, an anticipating reference
“need not satisfy an ipsissimis verbis test . . . .” Gleave, 560 F.3d at 1334.
Moreover, both the Examiner‟s Answer and the Final Rejection cite to
the “previous action” for an explanation regarding the claims not specifically
addressed (Ans. 6; Final Rejection 7). At pages 4-11 of the Non-Final
Rejection the Examiner provided an analysis, similar in extent to that
discussed above with respect to claim 1, for the dependent claims subject to
the anticipation rejection, including citations to Donaher (see Non-Final
Rejection 4-11).
We are therefore not persuaded that the Examiner‟s rejection was
based on personal knowledge or official notice. Moreover, as Appellants
point to no clear or specific error in the Examiner‟s analysis as to the
dependent claims, and as we detect no defect in the Examiner‟s findings, we
affirm the Examiner‟s rejection as to those claims as well.
OBVIOUSNESS
The Examiner found that Donaher‟s process differed from the
processes recited in claims 9, 10, 18, 20, and 25-27 in that Donaher did not
disclose “all of the claimed test functions, such as visual field test, papillary
reflex or eye movement test, security application, and the corresponding data
obtained such as reaction time, eye movement, and internet usage data”
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(Ans. 6-7). The Examiner found, however, that Appellants had “disclosed a
multitude of functions and features throughout the specification and claims
without providing a distinction of the importance of each function as
combined with the others, and reasoning for including each function or data
collection” (id. at 7). “Without more,” the Examiner “interpreted the
different test functions as obvious variants, and the combination or selection
thereof as a design choice” (id.).
Therefore, the Examiner concluded, an ordinary artisan would have
considered it obvious “to modify the invention of Donaher et al. to include
the aforementioned test functions and types of data obtained, since the
invention of Donaher et al. is used to evaluate and encompass many different
types of health disorders and deficiencies as discussed throughout
paragraphs 0033 – 0068” (id.).
Appellants argue, among other things, that the Examiner provided
only a conclusory statement without an adequate evidence-based explanation
as to why the rejected claims would have been obvious (see App. Br. 45-46).
In this instance, we agree with Appellants.
As Appellants point out, and the Examiner agrees (see Ans. 9),
“rejections on obviousness grounds cannot be sustained by mere conclusory
statements; instead, there must be some articulated reasoning with some
rational underpinning to support the legal conclusion of obviousness.” KSR
Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007).
We acknowledge that Donaher‟s methods can assist individuals with a
number of different disabilities (see Donaher [0033]-[0060]). Moreover, it
might be true, as the Examiner argues, that all of the health tests in the
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rejected claims were “commonly known and used by those having ordinary
skill in the health evaluation arts” (Ans. 9).
The Examiner has not, however, explained with any sort of specificity
why an ordinary artisan would have considered the particular user health
test functions recited in claims 9, 10, 18, 20, and 25-27 to be useful in
Donaher‟s particular method of assisting disabled persons to engage in
routine everyday situations through virtual reality role-playing (see Donaher
[0069]). In the absence of some specific explanation directed to the
particular health test functions claimed and their relevance to Donaher‟s
process, beyond the mere fact that the tests might have been known in the
art, we agree with Appellants that the Examiner has not met the burden of
establishing a prima facie case of obviousness.
We therefore reverse the Examiner‟s obviousness rejection of claims
9, 10, 18, 20, and 2-27 over Donaher.
SUMMARY
We affirm the Examiner‟s rejection of claims 1 and 3-27, under 35
U.S.C. § 101 as being directed to non-statutory subject matter.
We also affirm the Examiner‟s rejection of claims 1, 3-8, 11-17, 19,
21-24, 31, 32, and 58-67, under 35 U.S.C. § 102(b) as anticipated by
Donaher.
We reverse the Examiner‟s rejection of claims 9, 10, 18, 20, and 25-
27, under 35 U.S.C. § 103(a) as obvious over Donaher.

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TIME PERIOD
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).

AFFIRMED

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