Rudy A. Vandenbelt et al.

Patent Trials and Appeals Board

Feb 3, 2020

13796555 - (D) (P.T.A.B. Feb. 3, 2020)

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.
13/796,555 03/12/2013 RUDY A. VANDENBELT HW147XX 1275
37275 7590 02/03/2020
LAW OFFICE OF A.P. DURIGON
20 EUSTIS STREET
CAMBRIDGE, MA 02140
EXAMINER
KUHLMAN, CATHERINE BURK
ART UNIT PAPER NUMBER
3791
NOTIFICATION DATE DELIVERY MODE
02/03/2020 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):
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apdurigon@gmail.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte RUDY A. VANDENBELT, TROY G. ANDERSON, and
PHILIPPE J. GENEREUX
____________

Appeal 2018-003749
Application 13/796,5551
Technology Center 3700
____________

Before STEFAN STAICOVICI, EDWARD A. BROWN, and
RICHARD H. MARSCHALL, Administrative Patent Judges.

BROWN, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellant seeks review under 35 U.S.C. § 134(a) of the Examiner’s
decision rejecting claims 1–6, 10, and 23–25, which are the pending claims.
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 the real party in interest as
Headwaters, Inc. Appeal Br. (dated Oct. 13, 2017) 1.
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CLAIMED SUBJECT MATTER
Appellant’s disclosure “is drawn to the field of sleep therapy, and
more particularly, to novel system and method providing all-night sleep
management.” Spec. 1.
Claim 1, reproduced below, is representative of the claimed subject
matter.
1. Apparatus for use in an all-night sleep management
system by an individual sleeper whose sleep cycle is being
managed by said all-night sleep management system in accord
with a predetermined all-night sleep management paradigm
providing all-night management of a predetermined sleeper’s
overall awake-to-sleep-to-wake-up-refreshed sleep cycle,
comprising:
a media player that is part of said all-night sleep
management system that plays media that when played by the
media player has a predetermined duration and content that are
determined to implement said predetermined all-night sleep
management paradigm providing all-night management of a
predetermined sleeper’s overall awake-to-sleep-wake-up-
refreshed sleep cycle;
wherein said predetermined sleeper’s overall awake-to-
sleep-to-wake-up-refreshed sleep cycle has a predetermined
duration; wherein said predetermined all-night sleep
management paradigm, providing said all-night management of
a predetermined sleeper’s overall awake-to-sleep-to-wake-up-
refreshed sleep cycle, is determined to allow said predetermined
sleeper whose sleep cycle is being managed by the all-night
sleep management system to fall and remain asleep all-night
long without transitions that consciously or unconsciously
could potentially disrupt the rest and sleep of sensitive sleepers;
and wherein said predetermined content and duration of play,
when said media is played by said media player that plays
media determined to implement said predetermined all-night
sleep management paradigm determined to allow the
predetermined sleeper whose sleep cycle is being managed by
the all-night sleep management system to fall and remain asleep
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all-night long without transitions that consciously or
unconsciously could potentially disrupt the rest and sleep of
sensitive sleepers, are determined to eliminate transitions that
consciously or unconsciously could potentially disrupt the rest
and sleep of sensitive sleepers, such that said duration of play,
when said media is played by said media player, is no less in
duration than said predetermined duration of said
predetermined sleeper’s overall awake-to-sleep-to-wake-up-
refreshed sleep cycle, and wherein said content being played,
when said media is played by said media player, is determined
relative to said duration, that is no less in duration than said
predetermined duration, such that said content that is played
when said media player plays media is unique content that does
not repeat prior to expiry of said duration that is no less in
duration than said predetermined duration, and is continuous
content free from breaks, gaps and potentially disruptive
transitions prior to expiry of said duration that is no less in
duration than said predetermined duration.
Appeal Br. 24–25 (Claims App.).

REJECTIONS2
Claims 1–6, 10, and 23–25 stand rejected under 35 U.S.C. § 112(b) as
indefinite.
Claims 1–6, 10, 23, and 25 stand rejected under 35 U.S.C. § 102(b) as
anticipated by Osborn3.

2 Additionally, claim 1 is objected to “because . . . the same limitations are
repeated multiple times throughout the claim. Such language makes it
difficult to identify the features of the invention and clearly understand the
claim.” Final Act. 2. As this is a petitionable matter, rather than an
appealable matter, we do not address the objection in this appeal.
3 Osborn, US 2008/0020672 A1, published Jan. 24, 2008.
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Claim 24 stands rejected under 35 U.S.C. § 103 as unpatentable over
Osborn and Anderson4.
ANALYSIS
Claims 1–6, 10, and 23–25 as indefinite
The Examiner determines that claims 1–6, 10, and 23–25 are
indefinite based on the recitation of the terms in claim 1 discussed below.
Final Act. (dated Nov. 25, 2016) 4–5.
“Could,” “Potentially,” and “Sensitive sleepers”
Claim 1 recites the limitation “transitions that consciously or
unconsciously could potentially disrupt the rest and sleep of sensitive
sleepers.” Appeal Br. 24 (Claims App.) (emphasis added) (“transitions
limitation”). The Examiner determines that “could” and “potentially” are
subjective terms which render claim 1 indefinite. Final Act. 4. As for the
term “could,” the Examiner reasons, “[d]isruptions that interrupt sleep vary
from person to person” and “while these disruptions may disrupt rest and
sleep, they don’t necessarily do so (as the term ‘could’ implies they may not
disrupt rest and sleep) therefore it is unclear what disruptions are to be
avoided in order to satisfy this limitation.” Id. The Examiner states similar
reasoning for the term “potentially.” Id.
Appellant contends that the kind of transitions that would satisfy the
transitions limitation are recited at lines 16–31 of claim 1 (i.e., the remaining
portion of claim 1 following the transitions limitation). Appeal Br. 16. As
for the term “could,” Appellant contends that the claim language need not be
more precise than the nature of the subject of the invention permits. Id.

4 Anderson et al., US 7,749,155 B1, issued July 6, 2010.
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Appellant states, “[a]s will be appreciated by those of skill in the art, the
sensitive sleepers the present invention is concerned about are those sleepers
whose sleep could be disturbed by potentially disruptive transitions.” Id.
For claims in an application, “[a] claim is indefinite when it contains
words or phrases whose meaning is unclear.” In re Packard, 751 F.3d 1307,
1310, 1314 (Fed. Cir. 2014); see Ex parte McAward, No. 2015-006416, slip
op. at 11 (PTAB Aug. 25, 2017) (precedential) (same). We agree with the
Examiner that claim 1 recites language that is unclear.
We are not persuaded that the language at lines 16–31 clarifies the
meaning of the transitions limitation. Claim 1 excludes transitions that
“could potentially” disrupt rest and sleep of “sensitive sleepers.”
Appellant’s explanation does not clarify what is meant by “sensitive
sleepers,” but rather, only slightly rephrases the transitions limitation. We
construe the term “sensitive sleepers” as one of degree. “Claim language
employing terms of degree has long been found definite where it provided
enough certainty to one of skill in the art when read in the context of the
invention.” Interval Licensing LLC v. AOL, Inc., 766 F.3d 1364, 1370 (Fed.
Cir. 2014). Accordingly, “[t]he claims, when read in light of the
specification and the prosecution history, must provide objective boundaries
for those of skill in the art.” Id. at 1371 (citing Nautilus, Inc. v. Biosig
Instruments, Inc., 572 U.S. 898, 911 & n. 8 (2014)). Here, the Specification
does not describe clearly what is meant by “sensitive sleepers.” The
Specification mentions “more sensitive sleepers.” Spec. 2. The
Specification also mentions “average sleepers” (id. at 5, 12), but not in
relation to “sensitive sleepers.” Even if the use of these two different
adjectives for sleepers might imply that “sensitive sleepers” are different
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from “average sleepers,” the Specification provides no objective boundary
for identifying “sensitive sleepers” from such “average sleepers” or other
types of sleepers. Accordingly, the transitions limitation attempts to define
the excluded transitions based on being potentially disruptive to an
undefined group of sleepers, making it unclear.
For these reasons, we agree with the Examiner that the meaning of the
transitions limitations recited in claim 1 is unclear.
“Said duration” and “said predetermined duration”
The Examiner also determines that there is insufficient antecedent
basis for the terms “said duration” and “said predetermined duration” in
claim 1. Final Act. 4.
Claim 1 recites the terms and phrases “said duration of play” (l. 23),
“said duration” (ll. 26–27, 29, 31), and “said predetermined duration” (ll. 27,
29, 31). Appeal Br. 24–25 (Claims App.). Claim 1 also recites the
limitations “media that when played by the media player has a
predetermined duration” (ll. 5–6); “said predetermined sleeper’s overall
awake-to-sleep-to-wake-up-refreshed sleep cycle has a predetermined
duration” (ll. 10–11); “said duration of play, when said media is played by
said media player” (ll. 23–24); “said duration, that is no less in duration than
said predetermined duration” (ll. 26–27); and, similarly, “said duration that
is no less in duration than said predetermined duration” (ll. 29, 31). Id.
(emphasis added).
Appellant contends that “said duration” is defined with the limiting
language “‘that is no less than said predetermined duration,’” and
“predetermined duration” refers to the predetermined duration of the overall
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awake-to-sleep-to-wake-refreshed sleep cycle of the predetermined sleeper
recited in lines 10–11. Id. at 16–17.
We understand that, in claim 1, the term “said duration” refers to the
duration of play of the media, which may be equal to, or longer than, the
predetermined duration of media play. Accordingly, we agree with
Appellant that the meaning of “said duration” is sufficiently clear. However,
we agree with the Examiner that it is unclear whether the term “said
predetermined duration” recited in lines 27, 29, and 31 refers to the
predetermined duration of the media or to the predetermined duration of the
predetermined sleeper’s sleep cycle. Ans. (dated Dec. 26, 2017) 3–4. We
thus agree with the Examiner that the meaning of “said predetermined
duration” is unclear.
“Unique content”
Claim 1 recites “said content that is played when said media player
plays media is unique content that does not repeat prior to expiry of said
duration that is no less in duration than said predetermined duration, and is
continuous content free from breaks, gaps and potentially disruptive
transitions prior to expiry of said duration that is no less in duration than said
predetermined duration.” Appeal Br. 25 (Claims App.) (emphasis added).
The Examiner determines that the meaning of “unique content” is unclear.
Final Act. 4. The Examiner states that “unique content” “could mean inter
alia unique or new to a particular user, uniquely or newly created generally
(i.e. not a known sound or song or audio signal), or unique relative to a
previous use (for example played in a different order).” Id. Furthermore,
the Examiner states, “the term ‘unique’ is also subjective as a sound that is
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determined to be unique or interesting to one user may not be unique to
another.” Id. at 4–5.
Appellant contends that the term “unique content,” in the context of
the claimed subject matter as a whole, refers to the recited “‘unique content
that does not repeat prior to expiration of said duration that is no less in
duration than said predetermined duration.’” Appeal Br. 17.
Appellant’s explanation for the meaning of “unique content” is not
persuasive. Appellant does not explain, for example, what is “unique” about
the “unique content” or how the “unique content” may be different from
simply “content.” That is, is “unique content” simply “content that does not
repeat prior to expiration of said duration that is no less in duration than said
predetermined duration”? If not, it is unclear what is further required of the
“content” by the term “unique.” We note that the Specification does not
describe the term “unique content,” and, consequently, provides no apparent
guidance as to the meaning of this term, and thus, lacks sufficient precision
to permit one endeavoring to practice the invention to adequately determine
the metes and bounds thereof. Accordingly, because we agree with the
Examiner that the meaning of the term “unique content” is unclear, we also
sustain the rejection as to this term.
For the above reasons, we sustain the rejection of claims 1–6, 10, and
23–25 under 35 U.S.C. § 112(b) as indefinite.

Claims 1–6, 10, 23, and 25 as anticipated by Osborn
The Examiner finds that Osborn discloses all limitations of claims 1–
6, 10, 23, and 25. Final Act. 5–7.
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In contrast, Appellant contends that Osborn does not disclose all
limitations of claim 1, and thus, also dependent claims 2–6, 10, 23, and 25.
Appeal Br. 17–21. As for claim 1, Appellant contends that Osborn does not
disclose: (i) “the recited predetermined sleep management paradigm
determined to prevent disturbances to the sleep of sensitive sleepers whether
those disturbances are consciously perceived or unconsciously perceived;
(ii) “the recited media player that is part of the recited all-night sleep
management system that plays media having predetermined content and
duration determined to eliminate disruptions that could disturb the sleep of
such sensitive sleepers”; and (iii) the “unique and continuous content free
from gaps and breaks that does not repeat prior to expiry of the duration at
least as long in duration as the duration of the recited sleep cycle.” Id. at 20
(emphasis added)
Because we sustain the rejection of claims 1–6, 10, 23, and 25 as
indefinite, we cannot sustain the rejection of these same claims under 35
U.S.C. § 102(b). As discussed above, the meaning of certain terms and
phrases recited in claim 1, including “sensitive sleepers” and “unique
content,” are unclear, and thus, are indefinite under 35 U.S.C. § 112(b). As
Appellant contends that Osborn fails to disclose various claim limitations
reciting these terms and phrases, sustaining the rejection of claims 1–6, 10,
23, and 25 would require speculation on our part as to their scope. See In re
Aoyama, 656 F.3d 1293, 1300 (Fed. Cir. 2011) (holding that the Board erred
in affirming an anticipation rejection of indefinite claims); In re Steele, 305
F.2d 859, 862–63 (CCPA 1962) (holding that the Board erred in affirming
an obviousness rejection of indefinite claims because the rejection was based
on speculative assumptions as to the meaning of the claims). Thus, we do
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not sustain the rejection of claims 1–6, 10, 23, and 25 as anticipated by
Osborn.5

Claim 24 as unpatentable over Osborn and Anderson
Because we sustain the rejection of claim 24 as indefinite, for the
same reasons discussed above, we also cannot sustain the rejection of claim
24 under 35 U.S.C. § 103 as unpatentable over Osborn and Anderson.

DECISION SUMMARY
Claim(s)
Rejected
35 U.S.C. §   Reference(s)/Basis Affirmed Reversed
1–6, 10, 23–25 § 112(b)  1–6, 10,
23–25

1–6, 10, 23, 25 § 102(b)  Osborn 1–6, 10, 23,
25
24 103 Osborn, Anderson 24
Overall
Outcome
1–6, 10,
23–25

FINALITY AND RESPONSE

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

5 It should be understood, however, that our decision is based solely on the
indefiniteness of the claimed subject matter, and does not reflect on the
adequacy of the reference applied in the rejection.