Ex Parte Pompilio et al

Patent Trial and Appeal Board

Apr 28, 2017

13330779 (P.T.A.B. Apr. 28, 2017)

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.
13/330,779 12/20/2011 Daniel V. Pompilio 519794-605005 9712
24325 7590
PATENT GROUP 2N
JONES DAY
NORTH POINT
901 LAKESIDE AVENUE
CLEVELAND, OH 44114
EXAMINER
MAI, HUY KIM
ART UNIT PAPER NUMBER
2872
MAIL DATE DELIVERY MODE
04/28/2017 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 DANIEL V. POMPILIO and JASON P. ZAMER
Appeal 2015-005357
Application 13/330,779
Technology Center 2800
Before ADRIENE LEPIANE HANLON, MICHAEL P. COLAIANNI, and
CHRISTOPHER L. OGDEN, Administrative Patent Judges.
HANLON, Administrative Patent Judge.
DECISION ON REHEARING
The Appellants request rehearing of a DECISION ON APPEAL dated
February 24, 2017.1 In that Decision, we (1) reversed the 35 U.S.C. § 112, first
paragraph, rejection of claims 1—6 and 8—25, based on the written description
requirement; (2) affirmed the 35 U.S.C. § 112, second paragraph, rejection of
claims 1—6 and 8—25; and (3) reversed the 35 U.S.C. § 102(e) rejection of claims
1—6 and 8—25 based on Kiirkure.2
1 Hereinafter “Decision.”
2 In the Decision, we emphasized that our reversal of the § 102(e) rejection was not
based on the merits of the rejection but rather was a procedural reversal predicated
upon the indefmiteness of the claims. Decision 8.
Appeal 2015-005357
Application 13/330,779
A request for rehearing must state with particularity the points believed to
have been misapprehended or overlooked by the Board. Arguments not raised in
the briefs before the Board and evidence not previously relied upon in the briefs
are not permitted in a request for rehearing except as permitted by 37 C.F.R.
§§ 41.52(a)(2) through (a)(4). See 37 C.F.R. § 41.52(a)(1) (2016).
I.
On rehearing, the Appellants argue that the Board’s Decision “side-stepped
the main issue to be decided, whether the pending claims are anticipated by
Kurkure, via a claim construction determination that was not at issue in the case or
briefed by Applicant or the Examiner.” Request 2.
Contrary to the Appellants’ argument, the definiteness of independent claims
1, 24, and 25 was an issue on appeal. In particular, the Examiner concluded that
the claims on appeal are rendered indefinite by the phrase “the test measures a
user’s cognitive ability” recited in claims 1, 24, and 25, because it is unclear on
this record whether the eye test disclosed in the Appellants’ Specification measures
a user’s cognitive ability. Non-Final 10. In that regard, the Appellants’
Specification fails to define the term “cognitive” or exemplify a test that measures
cognitive ability. See Decision 7 (“the only express description of a test that
measures ‘a user’s cognitive ability’ is found in the originally filed claims”). We
recognize that the Specification discloses several tests, i.e., an eye test, a mouse
dexterity test, and a touch screen dexterity test. However, the Specification does
not disclose a relationship between any of those tests and measuring a user’s
cognitive ability.
Original claim 1 recites, in relevant part, “A computer-implemented method
of adaptively controlling a user experience, comprising: administering ... a test to
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Appeal 2015-005357
Application 13/330,779
record user metrics; wherein the test measures a user’s cognitive ability . . . .”
Spec. 25 (emphasis added). Original claim 13, which depends from claim 1,
recites “wherein the test further includes an eye test. . . .” Spec. 27 (emphasis
added). The Board held that “[bjased on the doctrine of claim differentiation and
the language of original claim 13, it is unclear whether an eye test is an example of
a test that measures a user’s cognitive ability or is a test in addition to measuring a
user’s cognitive ability.” Decision 7.
On rehearing, the Appellants do not direct us to any error in the Board’s
factual findings or legal conclusions. Rather, the Appellants argue that
• “wherein the test further includes an eye test” in claim 13 is
intended to be construed as “wherein the test comprises an eye
test;”
• “wherein the test further includes a mouse dexterity test” in claim
16 is intended to be construed as “wherein the test comprises a
mouse dexterity test;” and
• “wherein the test further includes a touch screen dexterity test” in
claim 20 is intended to be construed as a “a touch screen dexterity
test.”
Request 4.
The Appellants, however, do not direct us to any portion of the original
disclosure that supports their construction of claims 13, 16, and 20.
The Appellants also submit an amendment under 37 C.F.R. § 41.31(c), with
their request for rehearing, cancelling claims 13, 16, and 20. Request 3.
According to 37 C.F.R. § 41.33 (2016),
(b) Amendments filed on or after the date of filing a brief pursuant
to § 41.37 maybe admitted:
(1) To cancel claims, where such cancellation does not affect
the scope of any other pending claim in the proceeding ....
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Appeal 2015-005357
Application 13/330,779
(c) All other amendments filed after the date of filing an
appeal pursuant to § 41.31(a)(1) through (a)(3) will not be admitted
except as permitted by §§ 41.39(b)(1), 41.50(a)(2)(i), and 41.50(b)(1).
In this case, § 41.33(c) is not applicable because the amendment is not
responsive to a new ground of rejection or a remand by the Board. Therefore, we
turn to § 41.33(b). As explained above and in the Board’s Decision, the scope of
independent claims 1, 24, and 25 is unclear. The Appellants argue that the eye test,
the mouse dexterity test, and the touch screen dexterity test recited in claims 13,
16, and 20, respectively, are intended to be examples of a test that measures a
user’s cognitive ability and the amendment cancels those claims “to eliminate the
ambiguity perceived by the Board.” Request 3 (emphasis added). Thus, the
Appellants’ amendment can be said to effect the scope of the claims, which is
prohibited by § 41.33(b).
Moreover, regardless of whether the Appellants’ amendment is entered,3 the
scope of “the test measures a user’s cognitive ability” is unclear because the
Appellants’ Specification does not define the term “cognitive” or disclose a
relationship between measuring a user’s cognitive ability and the disclosed eye
test, mouse dexterity test, or touch screen dexterity test.
II.
The Appellants also request that “the Board reconsider its decision not to
reach the § 102 rejections for equitable reasons — to relieve Applicant of another
2+ year trip through the appeal queue, where the issues are presently ripe for
decision.” Request 3.
3 The original claims are part of the original disclosure regardless of whether they
are cancelled in the Appellants’ amendment.
4
Appeal 2015-005357
Application 13/330,779
As explained in the Decision, “speculation and assumptions would be
required to determine whether the claimed subject matter is anticipated by
Kiirkure.” Decision 8. We decline to speculate whether the claim language at
issue encompasses an eye test because “[i]t is the applicants’ burden to precisely
define the invention, not the PTO’s.” In re Morris, 127 F.3d 1048, 1056 (Fed. Cir.
1997). Moreover, “[speculation and assumptions ... are not proper in a prior art
rejection.” Decision 8 (citing In re Steele, 305 F.2d 859, 862—63 (CCPA 1962)).
III.
The Appellants’ Request for Rehearing has been granted to the extent that
the DECISION ON APPEAL dated February 24, 2017, has been reconsidered in
light of the Appellants’ arguments. However, the Request is denied because the
Decision is not modified in any respect.
REHEARING DENIED
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