Bruce Lev

Patent Trials and Appeals BoardDec 20, 2021

2021002825 (P.T.A.B. Dec. 20, 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. 12/387,948 05/11/2009 Bruce A. Lev LEV_BRUCE.001U 3913 16424 7590 12/20/2021 Bruce A Lev 22276 N 103rd Dr Peoria, AZ 85383 EXAMINER MATTHEWS, CHRISTINE HOPKINS ART UNIT PAPER NUMBER 3791 NOTIFICATION DATE DELIVERY MODE 12/20/2021 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): levdoctor@yahoo.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte BRUCE A. LEV Appeal 2021-002825 Application 12/387,948 Technology Center 3700 Before ANNETTE R. REIMERS, WILLIAM A. CAPP, and MICHAEL L. WOODS, Administrative Patent Judges. WOODS, Administrative Patent Judge. DECISION ON REQUEST FOR REHEARING STATEMENT OF THE CASE Appellant filed a Request for Rehearing on November 26, 2021, (“Request for Rehearing,” “Request,” or “Req. Reh’g”), under 37 C.F.R. § 41.52 (2011), seeking rehearing of our Decision mailed November 22, 2021, (“Decision” or “Dec.”). In that Decision, we sustained the rejection of claims 1, 2, 4, 6–13, 15, 25, 26, 30–37, 40, and 42 as indefinite under 35 U.S.C. § 112, second paragraph, but reversed the rejections under 35 U.S.C. §§ 101, 103(a), and 112, first paragraph. We grant the Request to the extent that our Decision misstated the claim language. After reconsidering Appellant’s arguments, we grant Appellant’s Request to change our Decision to reverse a separate rejection of Appeal 2021-002825 Application 12/387,948 2 dependent claims 33 and 34 under 35 U.S.C. § 112(b), but otherwise affirm the rejection of claims 1, 2, 4, 6–13, 15, 25, 26, 30–37, 40, and 42 as indefinite. We further designate the rejection under 35 U.S.C. § 112, second paragraph, as a new ground. ORIGINAL DECISION ON APPEAL Below is a summary of our original Decision: Claims Rejected 35 U.S.C. § Reference(s)/ Basis Affirmed Reversed 37 112 ¶ 1 Written Description 37 1, 2, 4, 6–13, 15, 25, 26, 30–37, 40, 42 112 ¶ 2 Indefinite 1, 2, 4, 6–13, 15, 25, 26, 30–37, 40, 42 1, 2, 4, 6–13, 15, 25, 26, 40 101 Ineligible 1, 2, 4, 6–13, 15, 25, 26, 40 1, 2, 4, 6, 15, 26, 30, 31, 37, 42 103(a) Bulat, Alyfuku 1, 2, 4, 6, 15, 26, 30, 31, 37, 42 7, 25, 32, 40 103(a) Bulat, Alyfuku, Stone 7, 25, 32, 40 10–13 103(a) Bulat, Alyfuku, Patton 10–13 Overall Outcome 1, 2, 4, 6–13, 15, 25, 26, 30–37, 40, 42 Dec. 25. Appeal 2021-002825 Application 12/387,948 3 APPELLANT’S CONTENTIONS A rehearing request under 37 C.F.R. § 41.52 (2011) has the very specific requirements that the party seeking rehearing allege that the Board misapprehended or overlooked something in rendering the original decision.Appellant contends that “[t]he PTAB was in error by not including and considering the After Final Amendment of August 11th, 2020, which the Examiner did allow entry of on September 10th 2020.” Req. Reh’g 1 (emphasis omitted). Appellant argues that the “abstract, specification, and claims were amended to overcome several issues, including those of Section 112.” Id. In support of Appellant’s argument, Appellant cites to our Decision in which we recited the pre-amendment claim language to independent claim 1 as “data receiving, interpreting and preliminary diagnosing (or means).” See id. at App. A (emphasis added). Appellant also cites to the fact that dependent claims 33 and 34 were amended to correct an antecedent basis issue to “said primary computer module,” yet our Decision affirmed the rejection of those claims as indefinite. See id. ANALYSIS I. Most Recent Claim Amendment As to Appellant’s argument that we erred by not considering the After Final Amendment dated August 11, 2020, we disagree. Req. Reh’g 1. In response to a USPTO Notification of Non-Compliant Appeal Brief filed on October 5, 2020, Appellant filed a 7 page “Appeal Brief,” the contents of which included a listing of claims 1, 2, 4, 6–13, 15, 25, 26, 30– 37, 40, and 42 (the “Amended Claims” or “Amend. Cls.”). These Amended Claims represent the most recent version of claims filed by Appellant, and we consistently referred to and considered the Amended Claims in our Appeal 2021-002825 Application 12/387,948 4 Decision. For example, the Decision reproduced the entirety of Appellant’s amended claim 1. Compare Dec. 1, with Amend. Cls. 1. As to Appellant’s assertion that the amendment overcame the Examiner’s rejections under 35 U.S.C. § 112, second paragraph, we also disagree. Req. Reh’g 2 (“since the 112 issues have been corrected . . .”); see also id. at 1 (“the abstract, specification, and claims were amended to overcome several issues, including those of Section 112.”). Even after Appellant’s amendment, the Examiner maintained most of the rejections under 35 U.S.C. § 112, second paragraph. In addressing the withdrawn rejections, the Examiner stated: The following grounds of rejection are not presented for review on appeal because they have been withdrawn by the examiner. The rejection of claim 4 (and dependent claim 40) under 35 U.S.C. 112, second paragraph, has been overcome, in view of the amendments to such claims, by entry of the After Final amendment of 11 August 2020. However, these claims remains rejected in light of their dependency on independent claim 1 which is still rejected under 35 U.S.C. 112, second paragraph, as noted below. The rejection of claims 30–32 and 42 under 35 U.S.C. 112, second paragraph, are withdrawn in light of the amendment, and that of claims 27 and 28 in light of their cancellation. Ans. 3 (emphasis added).1 As emphasized above, even after the amendment, independent claim 1 stands rejected as indefinite. Indeed, our Decision did not consider the withdrawn rejections, only those still maintained by the Examiner. See Dec. 3; see also id. n.2; see also Ans. 4 (maintaining the 1 See infra § V. The Examiner’s Answer provides conflicting information as to whether the 35 U.S.C. § 112, second paragraph, rejection is maintained as to claim 42. For this reason, we designate our affirmance as a new ground of rejection. Appeal 2021-002825 Application 12/387,948 5 rejection of independent claims 1, 37, and 42). The majority of the rejections under 35 U.S.C. § 112, second paragraph, were maintained by the Examiner (see Ans. 3), and the Decision analyzed twelve different rejections under 35 U.S.C. § 112, second paragraph, each of which was maintained by the Examiner. See id. at 8–9 (numbering the separate bases for rejecting the claims as indefinite); see also id. at 10–22 (analyzing the twelve different indefinite rejections). As to Appellant’s assertion that our Decision misstated the limitation by reciting the term “preliminary diagnosing,” however, we agree. Indeed, the term “preliminary diagnosing” was deleted by amendment. See Claims App. We acknowledge this error, and we modify our Decision to omit the term “preliminary diagnosing” from the Decision. This error was harmless, however, and had no substantive impact on our analysis. In affirming the Examiner’s rejections, our analysis did not focus on the term “preliminary diagnosing.” Rather, we focused on the term “data receiving and interpreting mechanism,” as recited in the Amended Claims. In particular, our Decision states that: Although reference numeral 25 is described as a “data receiving and interpreting mechanism” (Spec. 13, Fig. 4 (reproduced supra II)), we do not find a corresponding “mechanism” described in the Specification or shown in Figure 4. Rather, the Specification describes the “data receiving and interpreting mechanism [as] includ[ing] trained personnel 31 interfacing with the user, and computer modules 27 with access to a large data base.” Id. (emphasis added). We are not persuaded that a group of trained personnel with computers and with access to a database, regardless of how talented they may be, as providing corresponding structure for a “mechanism” for performing the function of “data receiving and interpreting.” Dec. 13 (emphases replaced). Appeal 2021-002825 Application 12/387,948 6 In the Decision, we explained that the means-plus-function limitation was indefinite because the Specification lacked corresponding structure for the claimed “mechanism” for “performing the function of ‘data receiving and interpreting.’” See id. (emphases added). To reiterate, the analysis focused on the language of amended claim 1, not the term “preliminary diagnosing.” Compare id., with Amend. Cls. Although we modify our Decision to omit the term “preliminary diagnosing,” we do not otherwise modify our analysis and maintain our affirmance of the indefinite rejections. II. Claims 33, 34 Appellant argues that we erred in affirming the rejection of dependent claims 33 and 34 as indefinite because these claims were amended to correct a lack of antecedent basis infirmity. See Req. Reh’g (App. A); see also Final Act. 12 (rejecting claims 33 and 34 for “insufficient antecedent basis for” the limitation “said primary computer module”). In our Decision, we affirmed the rejection because the “Appellant d[id] not address this particular rejection” in the Appeal Brief. Dec. 19 (citing Appeal Br.). Upon reviewing claims 33 and 34, however, we agree with Appellant that the Examiner’s basis for rejecting these claims—that is, lack of antecedent basis for the term “said primary computer module”—has been obviated by claim amendment. Accordingly, we reverse the rejection of dependent claims 33 and 34 for lacking antecedent basis. Claims 33 and 34 continue to stand rejected, however, based on their dependence to claim 42, which stands rejected under 35 U.S.C. § 112, second paragraph. Appeal 2021-002825 Application 12/387,948 7 III. Appendix C Appellant submits Appendix C along with its Request for the purpose of “taking the opportunity to answer some of the questions posed by the PTAB within the instant decision.” Req. Reh’g 2. We decline Appellant’s request. A rehearing request is not an opportunity for Appellant to present additional argument or evidence. See 37 C.F.R. § 41.52 (2011). We further note that our Decision did not pose any questions seeking answers from Appellant. IV. Prior Art Rejections In our Decision, we reversed pro forma the Examiner’s rejections under 35 U.S.C. § 103. See Dec. 22–23 (“we are unable to discern the meaning of ‘data receiving and interpreting mechanism’ and ‘functions to stabilize a user’s biological vital signs’”) (citing in part In re Steele, 305 F.2d 859, 862 (CCPA 1962)). Appellant requests that “since the 112 issues have been corrected,” that we modify our Decision to “further include a ruling ‘on the merits’ of the underlying 103(a) rejections.” Req. Reh’g 2. We deny Appellant’s request. As explained above, the claims stand rejected as indefinite, and the “112 issues have [not] been corrected,” contrary to Appellant’s understanding. See id. As explained in our Decision, we are unable to discern the meaning of multiple claim terms, some of which are at the center of the prior art dispute. See Dec. 22–23. Accordingly, we are unable to provide a meaningful review of the prior art rejections, as doing so would require us to speculate as to the meaning of certain limitations. See Steele, 305 F.2d at 862. Accordingly, we maintain our reversal, pro forma, of the prior art rejections. Appeal 2021-002825 Application 12/387,948 8 V. Designate as a New Ground of Rejection The Answer contains ambiguities about the status of the claims as rejected as indefinite. For example, the Answer states that the rejection of claim 42 under 35 U.S.C. § 112, second paragraph, has been withdrawn. Ans. 3. On the next page, however, the Examiner maintains the rejection of claim 42 as indefinite. See id. at 4. Indeed, we have difficulty reconciling the numerous indefinite rejections from the Final Office Action with the Examiner’s Answer. Although Appellant does not raise this inconsistency in a reply brief, as none was filed, or in the Request, we find that the ambiguity may have led to Appellant’s confusion as to the status of the claims as rejected as indefinite. For this reason, and if we affirmed one of the many indefinite rejections that the Examiner intended to withdraw, we denominate our affirmance of the rejections under 35 U.S.C. § 112, second paragraph, as a new ground under 37 C.F.R. § 41.50(b) (2011). For the reasons discussed in our Decision, however, we maintain that each of claims 1, 2, 4, 6–13, 15, 25, 26, 30–37, 40, and 42 stand rejected as indefinite under 35 U.S.C. § 112, second paragraph. Appeal 2021-002825 Application 12/387,948 9 CONCLUSION Upon consideration of the record and for the reasons given, we modify the summary table in the Decision as indicated below. Outcome of Decision on Rehearing: Claims Rejected 35 U.S.C. § Reference(s)/Basis Granted Denied 37 112 Written Description 37 1, 2, 4, 6–13, 15, 25, 26, 30–37, 40, 42 112 Indefinite 1, 2, 4, 6–13, 15, 25, 26, 30–37, 40, 42 1, 2, 4, 6–13, 15, 25, 26, 40 101 Ineligible 1, 2, 4, 6–13, 15, 25, 26, 40 1, 2, 4, 6, 15, 26, 30, 31, 37, 42 103(a) Bulat, Alyfuku 1, 2, 4, 6, 15, 26, 30, 31, 37, 42 7, 25, 32, 40 103(a) Bulat, Alyfuku, Stone 7, 25, 32, 40 10–13 103(a) Bulat, Alyfuku, Patton 10–13 Overall Outcome 1, 2, 4, 6– 13, 15, 25, 26, 30–37, 40, 42 Appeal 2021-002825 Application 12/387,948 10 Final Outcome of this Appeal after rehearing: Claims Rejected 35 U.S.C. § Reference(s) /Basis Affirmed Reversed New Ground 37 112 Written Description 37 1, 2, 4, 6–13, 15, 25, 26, 30–37, 40, 42 112 Indefinite 1, 2, 4, 6–13, 15, 25, 26, 30– 37, 40, 42 1, 2, 4, 6–13, 15, 25, 26, 40 101 Ineligible 1, 2, 4, 6– 13, 15, 25, 26, 40 1, 2, 4, 6, 15, 26, 30, 31, 37, 42 103(a) Bulat, Alyfuku 1, 2, 4, 6, 15, 26, 30, 31, 37, 42 7, 25, 32, 40 103(a) Bulat, Alyfuku, Stone 7, 25, 32, 40 10–13 103(a) Bulat, Alyfuku, Patton 10–13 Overall Outcome 1, 2, 4, 6–13, 15, 25, 26, 30–37, 40, 42 TIME PERIOD FOR RESPONSE This decision contains a new ground of rejection pursuant to 37 C.F.R. § 41.50(b) (2011). 37 C.F.R. § 41.50(b) provides “[a] new ground Appeal 2021-002825 Application 12/387,948 11 of rejection pursuant to this paragraph shall not be considered final for judicial review.” 37 C.F.R. § 41.50(b) also provides that the Appellant, WITHIN TWO MONTHS FROM THE DATE OF THE DECISION, must exercise one of the following two options with respect to the new ground of rejection to avoid termination of the appeal as to the rejected claims: (1) Reopen prosecution. Submit an appropriate amendment of the claims so rejected or new Evidence relating to the claims so rejected, or both, and have the matter reconsidered by the examiner, in which event the prosecution will be remanded to the examiner. . . . (2) Request rehearing. Request that the proceeding be reheard under § 41.52 by the Board upon the same Record. . . . Further guidance on responding to a new ground of rejection can be found in the Manual of Patent Examining Procedure § 1214.01. GRANTED; 37 C.F.R. 41.50(b)