JOAN SEVERSON et al.

Patent Trials and Appeals Board

Sep 1, 2021

2021000580 (P.T.A.B. Sep. 1, 2021)

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.
13/304,146 11/23/2011 JOAN MARIE SEVERSON 139674.435950 9204
26694 7590 09/01/2021
VENABLE LLP
P.O. BOX 34385
WASHINGTON, DC 20043-9998
EXAMINER
GRANT, MICHAEL CHRISTOPHER
ART UNIT PAPER NUMBER
3715
NOTIFICATION DATE DELIVERY MODE
09/01/2021 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
PTOMail@Venable.com
khauser@venable.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JOAN MARIE SEVERSON, JOSHUA DANIEL COSMAN, and
MICHAEL BRUCE MERICKEL JR.
Appeal 2021-000580
Application 13/304,146
Technology Center 3700
Before JENNIFER D. BAHR, MICHAEL L. WOODS, and
LEE L. STEPINA, Administrative Patent Judges.
STEPINA, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1, 3, and 5–21.2 We have jurisdiction
under 35 U.S.C. § 6(b).
We AFFIRM.

1 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42. Appellant identifies Digital Artefacts, LLC as the real party
in interest. Appeal Br. 1.
2 Claims 2 and 4 are cancelled. Replacement Claims App. 2–3.
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CLAIMED SUBJECT MATTER
Appellant’s disclosure is directed to a method and system for
assessing cognitive function using a portable touchscreen personal
computing device, for self-administration of the test by the individual. Spec.
¶ 11.
Claim 1, reproduced below, is illustrative of the claimed subject
matter.
1. A method for assessing cognitive function before, after,
and/or during exposure of a user to a chemical substance, the
method comprising:
displaying, on a touchscreen display of a portable
computing device, an image, the image indicating to the user of
the portable computing device to interact with the touchscreen
display in a specified manner, wherein the user has had exposure
to a known chemical substance, the exposure being at least one
of before, after, or during the displaying of the image;
receiving, at the portable computing device via the
touchscreen display, tactile signals indicating the user is
interacting with the touchscreen display in the specified manner;
measuring, by the portable computing device, reaction
times from when the image was displayed until the tactile signals
were generated;
transmitting, from the portable computing device to an
assessment computer, first cognitive assessment performance
data relating to the user, including responses to the image and
the reaction times, wherein the assessment computer:
normalizes the first cognitive assessment
performance data using cognitive assessment performance
data from a plurality of individuals defined by a plurality
of demographic characteristics, resulting in normed
performance metrics;
generates individual performance metrics specific
to the exposure for the user using at least a first cognitive
baseline based on the normed performance metrics, and
wherein the normed performance metrics relating to
the plurality of individuals are dynamically generated by
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the assessment computer based on results collected from a
plurality of portable touchscreen personal computing
devices that enabled self-administration of at least one
cognitive assessment test by the plurality of individuals.

Replacement Claims App. 2.
REFERENCES
The prior art relied upon by the Examiner is:
Name Reference Date
Shephard US 2005/0053904 A1 Mar. 10, 2005
John US 2009/0312663 A1 Dec. 17, 2009

REJECTIONS
I. Claims 1, 3, and 5–20 are rejected under 35 U.S.C. § 101 as
being directed to patent-ineligible subject matter.
II. Claims 1, 3, 5–17, and 19–21 are rejected under 35 U.S.C.
§ 103(a) as unpatentable over Shephard and John.

OPINION
Rejection I (Subject Matter Eligibility)
Appellant argues for the patent-eligibility of the claims subject to
Rejection I, i.e., claims 1, 3, and 5–20, as a group. See Appeal Br. 10–14.
We select claim 1 as representative of the group, and claims 3 and 5–20
stand or fall with claim 1. 37 C.F.R. § 41.37(c)(1)(iv).
The Examiner determines that claim 1 is “directed to an abstract idea
in the form of mental processes, in terms of a process that can be performed
in the human mind or by a human using pen and paper.” Final Act. 4. The
Examiner takes the position that the touchscreen and portable computing
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device limitations in claim 1 are merely recitations relating to “the extra-
solution activity of data gathering and data display” and do not require a
“particular machine” for the purposes of patent eligibility. Id. at 5, 15.
Specifically, the Examiner states,
a computer, a portable touchscreen personal computing device,
database, computer-readable-medium, eye tracking, and
processing device are claimed, these are merely claimed to add
insignificant extra-solution activity to the judicial exception
(e.g., data gathering) and/or do no more than generally link the
use of a judicial exception to a particular technological
environment or field of use.
Final Act. 5. Thus, the Examiner concludes that claim 1 fails to recite
significantly more than the abstract idea. The Examiner finds that the steps
and structure recited in claim 1 that are not directed to a mental process are,
alone or in combination, generic, routine, well-known, and conventional.
See id. at 5–6 (citing Spec. ¶¶ 152, 155, 156).
Addressing the issue of whether claim 1 is directed to an abstract idea,
Appellant argues “the claims are directed to an improvement in computer
functionality” because
The claims (i) address a specific, technical problem:
different response times, refresh rates, operating system
performance and resolutions in computer assessment systems . .
. (ii) are directed to a technical improvement to solve that
technical problem: an interactive touchscreen system to quantify
cognitive function . . . and (iii) recite how to solve the technical
problem.
Appeal Br. 10 (citing Spec. ¶¶ 2, 10, 11) (emphasis omitted). Thus,
Appellant contends claim 1 is directed to an improvement to technology.
Appellant lists as technical problems the fact that different keyboards may
have different response times, that traditional displays have different refresh
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rates and resolutions, and that computer operating systems may affect data
reliability. See id. at 10–12. Appellant asserts that “the interfaces of prior
systems are inadequate.” Id. at 10. Appellant touts the recited use of a
touch screen in claim 1 as something that improves “the operation of
computer functionality in a number of ways.” Id. at 11. Appellant also
states that “accurately measuring reaction times from when an image is
displayed to when the user reacts using a singular device, the ‘touchscreen,’
is a technical problem which cannot exist without the touchscreen
technology.” Id. at 12.
Appellant also argues that the process of quantifying cognitive
function is a specific type of assessment that is “rooted in technology.”
Appeal Br. 11. According to Appellant, “[u]nlike qualitative assessments,
which could be determined based on feelings or intuition, a quantified
assessment requires capturing and recording data,” and “[t]he solution to
providing a quantified cognitive self-assessment disclosed by the
Specification uses a ‘touchscreen display of a portable computing device.’”
Id. Appellant rephrases this argument, stating that “accurately measuring
reaction times from when an image is displayed to when the user reacts
using a singular device, the ‘touchscreen,’ is a technical problem which
cannot exist without the touchscreen technology.” Id. at 12 (emphasis
added).
Next, Appellant asserts that claim 1 recites “at least two particular
machines or items of manufacturer which are integral to the claim.” Appeal
Br. 12 (emphasis omitted). Appellant first contends that “any accurate
measurement will require some form of measuring device, a clock or
chronometer-a tangible, non-abstract item,” and “[h]uman beings cannot
accurately measure reaction times solely in their mind, and would need some
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physical tool (stopwatch, chronometer, sun dial, etc.) to measure the
reaction.” Id. at 13. Second, Appellant poses the inquiry, “how would one,
‘display, on a touch screen display of a portable computing device, an
image, the image indicating to the user of the portable computing device to
interact with the touchscreen display in a specified manner,’ as recited in
claim 1, without a touchscreen?” Id. Thus, on this second point, it appears
Appellant contends that the touchscreen display itself amounts to a particular
machine in the sense pertinent to patent eligibility.
The Examiner responds that, in addition to reciting a mental process,
the subject matter of claim 1 “could also be characterized as a method of
organizing human activity.” Ans. 4, n.1. The Examiner also states,
“Appellant’s claims are directed to collecting data, analyzing that data, and
providing an output/display based on that analysis.” Id. at 5. The Examiner
likens the subject matter of claim 1 to the subject matter held patent-
ineligible in Electric Power Group, LLC v. Alstom S.A., 830 F.3d 1350 (Fed.
Cir. 2016). Id. Further, the Examiner states, “Appellant’s claimed invention
is not, as Appellant would have it, ‘rooted in technology’ because
Appellant[’s] claimed abstract idea does not require any technology to
perform and instead can be performed by human beings alone.” Id. at 7.
The Examiner states, “simply embodying an abstract idea on a generic
computing device (‘portable computing device’ with a ‘touchscreen’) does
not necessarily render patent eligible subject matter when those devices are
merely used for generic, well-known, and conventional purposes.” Id. at 10.
The Examiner also finds that “any generic computing device” would
perform the time measurement function recited in claim 1, and the recited
touchscreen merely performs data gathering. Id. at 12.
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In the Reply Brief, Appellant reiterates arguments from the Appeal
Brief, and specifically, contends that
[t]rying to accurately self-assess one’s cognitive function,
without technical means, is impossible. If a user is sitting alone
in a room, how are they supposed to determine if they are
undergoing cognitive decline? That is the problem being solved,
and it is a ‘technical’ problem because it requires some form of
physical, tangible device to make such a determination.
Reply Br. 2. Appellant also asserts that the step of normalization using data
from a plurality of individuals solves a technical problem, namely, that
different electronic devices may have different response times, refresh rates,
operating system performance, and resolutions. Id.
As for the Examiner’s finding that the claimed abstract idea is
performable by humans, Appellant states, “[h]uman beings cannot display an
image, receive tactile signals via the same surface the image was displayed
on, then transmit data, all in our minds.” Reply Br. 3. More generally,
Appellant contends “the problem being solved is ‘self-assessment,’ and
therefore multiple human beings could not solve the problem is question.
Indeed, the Appellant believes such a solution is impossible without a
‘portable computing device.’” Id. at 5.
For the following reasons, we sustain Rejection I.
An invention is patent-eligible if it claims a “new and useful process,
machine, manufacture, or composition of matter.” 35 U.S.C. § 101.
However, the Supreme Court has long interpreted 35 U.S.C. § 101 to include
implicit exceptions: “[l]aws of nature, natural phenomena, and abstract
ideas” are not patentable. E.g., Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 573
U.S. 208, 216 (2014) (internal quotation marks and citation omitted).
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In determining whether a claim falls within an excluded category, we
are guided by the Supreme Court’s two-step framework, described in Mayo
and Alice. See Alice, 573 U.S. at 217–18 (citing Mayo Collaborative Servs.
v. Prometheus Labs., Inc., 566 U.S. 66, 75–77 (2012)). In accordance with
that framework, we first determine what concept the claim is “directed to.”
Id. at 219 (“On their face, the claims before us are drawn to the concept of
intermediated settlement, i.e., the use of a third party to mitigate settlement
risk.”); see also Bilski v. Kappos, 561 U.S. 593, 611 (2010) (“Claims 1 and 4
in petitioners’ application explain the basic concept of hedging, or protecting
against risk.”).
Concepts determined to be abstract ideas, and, thus, patent-ineligible,
include certain methods of organizing human activity, such as fundamental
economic practices (Alice, 573 U.S. at 219–20; Bilski, 561 U.S. at 611);
mathematical formulas (Parker v. Flook, 437 U.S. 584, 594–95 (1978)); and
mental processes (Gottschalk v. Benson, 409 U.S. 63, 67 (1972)).
If the claim is “directed to” an abstract idea, we turn to the second
step of the Alice and Mayo framework, where “we must examine the
elements of the claim to determine whether it contains an ‘inventive
concept’ sufficient to ‘transform’ the claimed abstract idea into a patent-
eligible application.” Alice, 573 U.S. at 221 (internal citation omitted). “A
claim that recites an abstract idea must include ‘additional features’ to
ensure ‘that the [claim] is more than a drafting effort designed to
monopolize the [abstract idea].’” Id. (alteration in the original) (quoting
Mayo, 566 U.S. at 77). “[M]erely requir[ing] generic computer
implementation[] fail[s] to transform that abstract idea into a patent-eligible
invention.” Id.
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In January of 2019, the PTO issued revised guidance on the
application of § 101. See 2019 Revised Patent Subject Matter Eligibility
Guidance, 84 Fed. Reg. 50 (hereinafter “Revised Guidance”). The Revised
Guidance includes steps 1, 2A, and 2B. Under Step 1, we consider whether
the claimed subject matter falls within the four statutory categories of
patentable subject matter identified by 35 U.S.C. 101: Process, machine,
manufacture, or composition of matter. Under Step 2A of the Revised
Guidance, we look to whether the claim recites:
(1) any judicial exceptions, including certain groupings of
abstract ideas (i.e., mathematical concepts, certain methods of
organizing human activity such as a fundamental economic
practice, or mental processes); and
(2) additional elements that integrate the judicial exception into
a practical application (see MANUAL OF PATENT
EXAMINING PROCEDURE (“MPEP”) §§ 2106.05(a)–(c), (e)–
(h) (9th Ed., Rev. 08.2017, 2018)).
Only if a claim (1) recites a judicial exception and (2) does not integrate that
exception into a practical application, do we then look, in Step 2B, to
whether the claim:
(3) adds a specific limitation beyond the judicial exception that is not
“well-understood, routine, conventional” in the field (see MPEP
§ 2106.05(d)); or
(4) simply appends well-understood, routine, conventional activities
previously known to the industry, specified at a high level of generality, to
the judicial exception. See Revised Guidance.
Step 1 – Statutory Category
Claim 1 recites “[a] method for assessing cognitive function before.”
Replacement Claims App. 2. Therefore, the invention recited in claim 1
falls into the process category of subject matter. Claim 19 recites similar
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limitations in system format and its invention falls into the machine category
of subject matter. Id. at 5.
Step 2A, Prong 1 – Recitation of Judicial Exception
Claim 1 recites, in part, “displaying, on a touchscreen display of a
portable computing device, an image, the image indicating to the user of the
portable computing device to interact with the touchscreen display in a
specified manner.” Replacement Claims App. 2 (emphasis added). We
agree with the Examiner that this step recites a method of organizing human
activity, namely, it directs a user to perform an action so that a portable
computing device may collect data about the user. See Ans. 4 n.1.
Claim 1 also recites “the assessment computer: normalizes the first
cognitive assessment performance data using cognitive assessment
performance data from a plurality of individuals defined by a plurality of
demographic characteristics, resulting in normed performance metrics.”
Replacement Claims App. 2 (emphasis added). We agree with the Examiner
that this step can be performed in the human mind, and, therefore, amounts
to the recitation of a mental process. See Final Act. 4.
Although a portable computing device and assessment computer may
enhance the speed and accuracy of the performance of these steps, this does
not change the fact that the steps include a method of organizing human
activity and a mental process. Nor does the fact that claim 1 explicitly
requires such steps to be performed on such hardware. The recitation of
computer components does not, by itself, establish that the claim does not
recite mental steps. See, e.g., Versata Dev. Grp., Inc. v. SAP Am., Inc., 793
F.3d 1306, 1335 (Fed. Cir. 2015) (“Courts have examined claims that
required the use of a computer and still found that the underlying, patent-
ineligible invention could be performed via pen and paper or in a person’s
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mind.”). Also, “[i]f a claim, under its broadest reasonable interpretation,
covers performance in the mind but for the recitation of generic computer
components, then it is still in the mental processes category unless the claim
cannot practically be performed in the mind.” Revised Guidance at 52 n.14
(citing Intellectual Ventures I LLC v. Symantec Corp., 838 F.3d 1307, 1318
(Fed. Cir. 2016). In summary, we agree with the Examiner that claim 1
recites a mental process and a method of organizing human activity, and,
further, that these steps are abstract ideas. See Final Act. 4–5.

Step 2A, Prong 2 – Integrated Into a Practical Application
Appellant’s argument that claim 1 provides a technical solution to a
technical problem does not apprise us of Examiner error. The Specification,
in the Background section, describes a problem to be solved by the invention
as follows:
Using traditional cognitive assessment methods, a pool of
subjects representative of a population of interest is selected. The
statistically relevant sample of subjects is then tested to develop
a normed performance metric. Individuals taking the same test at
a later time can then be compared to this historical pre-selected
reference group. Maintaining the currency of the normed
performance metric is incredibly time-consuming and expensive
because new sample groups must be repeatedly identified and
tested with the results incorporated. Identifying new sample
groups is time consuming and expensive. Also, the actual test
administration is time consuming and expensive as well.
Spec. ¶ 5. Further, the Specification states, “[b]ecause of the costs
associated with maintaining currency of the data, the normed data sets are
often outdated and do not reflect current societal norms.” Id.
There are also drawbacks associated with traditional
paper and pencil tests and computerized and internet-based tests.
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For example, paper and pencil tests generally must be
individually administered by a trained clinician. This makes the
testing procedures inefficient and time consuming.
Spec. ¶ 6 (emphasis added). Consistent with a portion of Appellant’s
arguments, the Specification then explains that variations in the way
traditional tests are administered, and differences amongst computer systems
used to administer traditional tests (e.g., keyboard differences, refresh rates)
may degrade the quality of the data obtained from the tests. See id. ¶¶ 7–10.
Appellant’s solution to these problems does not reflect an
improvement in the functioning of a computer or an improvement to other
technology or technical field. Rather, Appellant’s claim recites an
improvement to a cognitive assessment test that, as the Specification
explains, can be performed via paper and pencil. See Spec. ¶¶ 4, 6.
Appellant’s Specification also explains that some of the problems associated
with administering a cognitive assessment test via pen and paper can be
ameliorated by administering the test by generic computer or via the
internet. See id. ¶¶ 4–10. Appellant’s claim 1 extends this improvement by
administering a cognitive assessment test via the touchscreen of a portable
computing device3 and analyzing the results via an “assessment computer.”
The use of electronic devices such as a portable computing device and
assessment computer in claim 1 does result in an improvement to the
functioning of these computers themselves, or another technology. Rather,

3 Appellant’s Specification states, “[t]he suite of tests is administered on a
personal computing device with a touch-activated screen, such as an iPad®,
iPhone® or other similar device. For this reason, the tests described above
are adapted for use with a touchscreen user interface.” Spec. ¶ 47.
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the portable computer and assessment computer merely perform functions
Appellant admits were previously performed by pen and paper.4
Appellant’s arguments regarding the inability of a person to self-
assess cognitive function (Reply Br. 2), and that the method of claim 1
requires a clock and touchscreen (id. at 5) appear to rely on a false premise,
specifically, the false premise that for the subject matter of a claim to be
directed to a mental process, every limitation of the claim must be performed
in the human mind (in particular, a single human mind).5 Appellant’s
implied legal standard is incorrect. See Intellectual Ventures I LLC, 838
F.3d at 1318 (“with the exception of generic computer-implemented steps,
there is nothing in the claims themselves that foreclose them from being
performed by a human, mentally or with pen and paper.”).
We also disagree with Appellant that these devices constitute
“particular machines” in the sense pertinent to § 101. Rather, we agree with
the Examiner that “generic computers are very good at measuring time” and
“simply embodying an abstract idea on a generic computing device
(‘portable computing device’ with a ‘touchscreen’) does not necessarily
render patent eligible subject matter when those devices are merely used for
generic, well-known, and conventional purposes.” Ans. 9, 10.
As for Appellant’s contention that normalization of data solves a
technical problem (Reply Br. 5), as discussed above, this function is an
abstract idea, and therefore, a judicial exception. As such, it does not

4 Likewise, claim 1 does not require a particular machine or manufacture, or
affect a transformation of an article to a different state or thing. See Alice,
573 U.S. at 217–18.
5 In the Reply Brief, Appellant criticizes an example provided by the
Examiner in which two human beings perform the recited abstract idea. See
Reply Br. 3; Ans. 6–7.
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integrate any of the judicial exceptions in claim 1 into a practical application
in the sense required under Alice.

Step 2B – Well-Understood, Routine, Conventional Activity
We agree with the Examiner that claim 1 does not require any
additional elements that, when taken alone or in combination, recite
significantly more than the above-noted judicial exceptions (see Final Act.
5), and Appellant makes no arguments traversing the Examiner’s findings on
this point (see Appeal Br. 10–14).
We have considered all of Appellant’s arguments in support of the
patent-eligibility of claim 1, but find them unavailing. Accordingly, we
sustain the rejection of claims 1, 3, and 5–20 as being directed to patent-
ineligible subject matter.
Rejection II (Shephard and John)
Appellant argues for the patentability of the claims subject to
Rejection II, i.e., claims 1, 3, 5–17, and 19–21, as a group. Appeal Br. 15–
20. We select claim 1 as representative of the group, and claims 3, 5–17,
and 19–21 stand or fall with claim 1. 37 C.F.R. § 41.37(c)(1)(iv).
The Examiner finds that Shephard teaches many of the steps recited
by claim 1, but relies on John to teach the limitations on the assessment
computer requiring that it “normalizes the first cognitive assessment
performance data” and “generates individual performance metrics.”6 See

6 The Examiner relies on John for these limitations despite the fact that
Shephard teaches “[i]n an embodiment of the present invention, algorithms
are used to evaluate a user’s performance level with respect to thresholds
and to make recommendations regarding the test-taker’s ability to perform a
task” (Shephard ¶ 18), “[u]sing the thresholds and the knowledge gained
from data mining of scores over an extended period of time and users, a
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Final Act. 7–10 (citing John ¶¶ 43–45, Fig. 2). Additionally, the Examiner
finds John teaches the limitations in the last “wherein” clause of claim 1.
See id. at 9–10.
The Examiner determines that it would have been obvious to combine
the above-noted teachings of Shephard and John in a way that satisfies all
the requirements of claim 1 because “one of ordinary skill in the art could
have combined the elements as claimed by known methods, and that in
combination, each element merely performs the same function as it does
separately; and one of ordinary skill in the art would have recognized that
the results of the combination were predictable.” Final Act. 10.
Aside from this reasoning, the Examiner concludes that it would have
been obvious
to have added the functionality taught by John in regard for
having the performance metrics generated by a remote computer
and based on normed performance metrics that were dynamically
generated by the remote computer to the functionality otherwise
taught by Shephard, in order to provide the most thorough and
up to date dataset for comparison.
Final Act. 10.
Appellant argues that the Examiner’s proposed modification to
Shephard “would require modifying at least one of the references so as to be
unsatisfactory for its intended purpose.” Appeal Br. 16. Specifically,
Appellant asserts “[a] first required element for John to perform the intended
purpose disclosed is the use of the ‘portable neurometric device,’ which

‘recommendation’ can be offered to the test-taker or the test-taker’s
supervisor, given specific test scores” (id. ¶ 30), and a performance level is
“a measure of performance of a test-taker to a test relative to normative
data” (id. ¶ 48).
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reads the electric potential of neurological activity in the patient’s head.” Id.
(citing John ¶¶ 13, 27, 30, 33). Appellant next asserts “[a] second required
element for John to perform the intended purpose disclosed are remote
analysis modules which perform ‘at least one of’ various functions on the
EEG data collected by the portable neurometric device.” Id. (citing John ¶¶
13–22, 40). Third, Appellant argues that an intended purpose of John is that
its system is intended to “operate equally on both conscious and unconscious
individuals.” Id. (citing John ¶ 33). Appellant concludes that these
“intended purposes” in John would be undermined by the Examiner’s
proposed combination of the teachings of Shephard and John. Id.
Expanding on this argument, Appellant sets forth a series of
conclusions, stating, “[f]irst, the use of hand-held computing devices to take
cognition tests (as required by Shepard) is incompatible with the
requirement of John that user results/data be generated in both conscious and
unconscious states,” “[s]econd, the remote analysis modules disclosed by
John are specific to the analysis of an EEG, and are not, as disclosed,
designed to interpret or analyze hand-held cognition test performance,” and
“[t]hird, John requires the use of a ‘portable neurometric device,’ which is a
device which is attached to the user’s head to record brain activity. Shepard
requires the use of a hand-held computer device to take cognition tests.”
Appeal Br. 16–17. Appellant continues identifying aspects of the teachings
of John, and contends the Examiner is improperly picking and choosing
certain elements disclosed by John while ignoring other pertinent aspects of
Shephard and John’s disclosures. See id. at 17–20. In support of
Appellant’s contention that the Examiner is improperly picking and
choosing teachings from John, Appellant poses the inquiry:
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Would one of ordinary skill in the art use EEG data analysis
processes taught by John while ignoring (1) John's requirements
that the data analysis processes work for both conscious and
unconscious individuals, (2) John’s explicit emphasis that the
data analysis processes be used on EEG data, and (3) John’s
explicit description of a “patient” using a “neurometric device”
to capture the data, not a user performing a self-assessment?
Id. at 19.
In reply, the Examiner characterizes Appellant’s arguments as being
based on a bodily incorporation of John’s teachings in Shephard’s method,
and, therefore, unpersuasive. Ans. 13. In this regard, the Examiner
summarizes the relevance of John’s teachings to the rejection of claim 1,
stating:
John is not relied upon for its teaching of capturing data from an
individual in both conscious and unconscious states. John is only
relied upon for teaching that it is known in the prior art to
normalize assessment data from a plurality of individuals, to
generate metrics based on normed performance metrics, where
those normed performance metrics are generated based on
multiple individuals. And Appellant does not allege that John
fails to teach these claimed limitations.
Id. The Examiner continues to address Appellant’s arguments regarding the
various teachings Appellant identifies, stating “John is not relied upon for its
teaching of capturing EEG data” (id. at 14), “John is not relied upon for its
teaching of ‘a device which is attached to the user’s head to record brain
Activity’” (id. at 15), “John is not relied upon for its teaching of a ‘portable
neurometric device’” (id. at 16). The Examiner’s response is summarized as
follows:
John is only relied upon in the Final [Office Action] for teaching
that it is known in the prior art to normalize assessment data from
a plurality of individuals, to generate metrics based on normed
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performance metrics, where those normed performance metrics
are generated based on multiple individuals. And none of those
teachings necessarily require the data to be captured from an
individual in both conscious and unconscious states. None of
those teachings necessarily only pertain to EEG data. None of
those teachings necessarily require that that data is captured via
“a device which is attached to the user’s head to record brain
activity”. Nor do any of those teachings require that the data be
captured by a “portable neurometric device”.
Ans. 17–18.
In reply, Appellant again contends the Examiner is ignoring “aspects
of the prior art which would cause one of ordinary skill in the art to not
combine the references,” and is relying on “only those aspects of the
references which, in the Examiner’s opinion, disclose various features are
cherry-picked from the references.” Reply Br. 8; see also id. at 9 (stating
“John’s requirements of (1) capturing data from an individual in both
conscious and unconscious states, by (2) capturing EEG data, using (3) a
device which is attached to the user’s head to record brain activity are
improperly disregarded.”).
For the reasons discussed below, we sustain the Examiner’s rejection
of claim 1. Appellant does not contest the Examiner’s finding that John
discloses the limitations in the last three clauses of claim 1, and which the
Examiner finds are missing from Shephard. See Appeal Br. 15–20.
Appellant also does not contest the Examiner’s specific rationales for the
proposed modification to Shephard’s method, stated on page 10 of the Final
Office Action. See id.
Instead, Appellant lists various aspects of Shephard and John’s
method and summarily concludes that these aspects demonstrate that the
Examiner erred in rejecting claim 1. We agree with the Examiner that
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Appellant’s arguments rely on a bodily incorporation of John’s method, i.e.,
Appellant’s arguments are based on the assumption that, for the rejection of
claim 1 to be proper, the additional aspects of John that Appellant identifies
must be incorporated in the Examiner’s proposed combination. However,
this assumption is incorrect. “It is well-established that a determination of
obviousness based on teachings from multiple references does not require an
actual, physical substitution of elements.” In re Mouttet, 686 F. 3d 1322,
1332 (Fed. Cir. 2012); see also In re Applied Materials, Inc., 692 F.3d 1289,
1298 (Fed. Cir. 2012) (“A reference must be considered for everything that
it teaches, not simply the described invention or a preferred embodiment.”);
KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) (obviousness
inquiry must “take account of the inferences and creative steps that a person
of ordinary skill in the art would employ”). Appellant does not provide any
persuasive explanation as to why the aspects of John’s invention identified
by Appellant would interfere with the Examiner’s proposed implementation
of the teachings of John in Shephard’s method. Appellant also fails to
provide any tenable reason as to why John’s teachings regarding data
capture during conscious or unconscious states, capturing EEG data, and the
use of a device worn on the user’s head must implemented in combination
with the Examiner’s proposed modification to Shephard’s method. Nor do
we discern any.
We do not agree with Appellant that the Examiner is improperly
picking and choosing, i.e., “cherry-picking” teachings from John. See
Appeal Br. 17–20; Reply Br. 8–9. Rather, we agree with the Examiner that
the application of John’s normalization teachings etc. would have been the
combination of familiar elements according to known methods yielding no
more than predictable results. See KSR, 550 U.S. at 415–416.
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As for whether the Examiner’s proposed combination of the teachings
of Shephard and John would render “at least one of the references”
unsatisfactory for its intended purpose (Appeal Br. 16), we note that the
Examiner proposes to modify Shephard’s method based on the teachings of
John. See Final Act. 10 (“it would have been obvious to have added the
functionality taught by John . . . to the functionality otherwise taught by
Shephard, in order to provide the most thorough and up to date dataset for
comparison.”). Thus, any argument that John would be rendered
unsatisfactory for its intended use does not address the rejection as presented
by the Examiner. Regarding Shephard’s intended purpose, as discussed
above, Appellant does not identify any trenchant reason Shephard’s method
would be adversely affected by the Examiner’s proposed modification, and
Appellant’s arguments rely on an unreasonable bodily incorporation of
John’s teachings. Accordingly, we sustain the Examiner’s rejection of
claims 1, 3, 5–17, and 19–21 as unpatentable over Shephard and John.
CONCLUSION
The Examiner’s rejections are affirmed.

DECISION SUMMARY

Claims
Rejected
35 U.S.C. § Basis  Affirmed Reversed
1, 3, 5–20 101 Eligibility  1, 3, 5–20
1, 3, 5–17,
19–21
103(a) Shephard, John  1, 3, 5–17,
19–21

Overall
Outcome
1, 3, 5–21

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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