Ex Parte Hinnebusch

Patent Trial and Appeal Board

Aug 17, 2017

13343360 (P.T.A.B. Aug. 17, 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.
13/343,360 01/04/2012 Michael Hinnebusch 3023001US4BP 5151
27542 7590
SAND & SEBOLT
AEGIS TOWER, SUITE 1100
4940 MUNSON STREET, NW
CANTON, OH 44718-3615
EXAMINER
NELSON, FREDA ANN
ART UNIT PAPER NUMBER
3628
NOTIFICATION DATE DELIVERY MODE
08/21/2017 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):
docket@ sandandsebolt.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MICHAEL HINNEBUSCH
Appeal 2015-0039591
Application 13/343,360
Technology Center 3600
Before: ANTON W. FETTING, JOSEPH A.FISCHETTI, and
MICHAEL W. KIM, Administrative Patent Judges.
KIM, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
This is an appeal from the Final Rejection of claims 79—94. We have
jurisdiction to review the case under 35 U.S.C. §§134 and 6.
The invention relates generally to “digital electrical computer network
and methods related thereto for enabling people to program a cardiovascular
exercise routine on a personal computer or the like and then have that
exercise routine downloaded to a piece of fitness equipment, such as a
treadmill.” Spec. 1:13—16.
1 The Appellant identifies “Desmond Travers, LLC” as the real party in
interest. Appeal Br. 3.
Appeal 2015-003959
Application 13/343,360
Independent claim 79 is illustrative:
79. A method including:
programming a computer system so as to carry out the
operation of translating a private personalized exercise routine,
stored in and retrieved from a portable memory device, to a
different private personalized exercise routine for each different
type of user-selected exercise machine such that an exercise
machine of at least one said type is controlled with one said
different private personalized exercise routine.
Claims 79-94 are rejected under 35 U.S.C. § 112(a) or pre-AIA 35
U.S.C. § 112, first paragraph, as failing to comply with the written
description requirement.
We AFFIRM and enter a NEW GROUND of rejection pursuant to our
authority under 37 C.F.R. § 41.50(b).
PRINCIPLES OF LAW
The first paragraph of 35 U.S.C. § 112 contains a written description
requirement that is separate and distinct from the enablement requirement.
AriadPharms., Inc. v. EliLilly & Co., 598 F.3d 1336, 1340 (Fed. Cir. 2010)
(en banc). To satisfy the written description requirement, the specification
must describe the claimed invention in sufficient detail that one skilled in the
art can reasonably conclude that the inventor had possession of the claimed
invention. Vas-Cath, Inc. v. Mahurkar, 935 F.2d 1555, 1562-63 (Fed. Cir.
1991). Specifically, the specification must describe the claimed invention in
a manner understandable to a person of ordinary skill in the art and show
that the inventor actually invented the claimed invention. Ariad, 598 F.3d at
1351; Vas-Cath, 935 F.2d at 1562-63.
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The written description requirement of 35 U.S.C. § 112, first
paragraph applies to all claims including original claims that are part of the
disclosure as filed. Ariad, 598 F.3d at 1349. As stated by the Federal
Circuit, “[although many original claims will satisfy the written description
requirement, certain claims may not.” Ariad, 598 F.3d at 1349; see also
LizardTech, Inc. v. Earth Res. Mapping, Inc., 424 F.3d 1336, 1343-46 (Fed.
Cir. 2005); Regents of the University of California v. Eli Lilly & Co., 119
F.3d 1559, 1568 (Fed. Cir. 1997). For instance, generic claim language in
the original disclosure does not satisfy the written description requirement if
it fails to support the scope of the genus claimed. Ariad, 598 F.3d at 1350;
Enzo Biochem, Inc. v. Gen-Probe, Inc., 323 F.3d 956, 968 (Fed. Cir. 2002)
(holding that generic claim language appearing in ipsis verbis in the original
specification did not satisfy the written description requirement because it
failed to support the scope of the genus claimed); Fiers v. Revel, 984 F.2d
1164, 1170 (Fed. Cir. 1993) (rejecting the argument that “only similar
language in the specification or original claims is necessary to satisfy the
written description requirement”).
In addition, original genus claims that use functional language to
define the boundaries of a claimed genus may simply claim a desired result
and fail to describe species that achieve the result. Ariad, 598 F.3d at 1349.
In such a case, the claims fail to satisfy the written description requirement
when the specification fails to demonstrate that the applicant has made a
generic invention that achieves the claimed result by showing that the
applicant has invented species sufficient to support a claim to the
functionally defined genus. Id. (“[A]n adequate written description of a
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Application 13/343,360
claimed genus requires more than a generic statement of an invention’s
boundaries.”) (citing Eli Lilly, 119 F.3d at 1568).
ANALYSIS
We are unpersuaded the Examiner erred in asserting that
“programming a computer system so as to carry out the operation of
translating a private personalized exercise routine,” as recited in independent
claim 79, does not comply with the written description requirement. App.
Br. 9—21; Reply Br. 3—10. Fundamentally, we discern that most of the
Appellant’s assertions are misplaced, because they do not address squarely
the reason for the Examiner’s rejection. Specifically, we do not discern that
the Examiner is asserting that the Specification does not disclose “«
computer system [for] carrying] out the operation of translating a private
personalized exercise routine, stored in and retrieved from a portable
memory device, to a different private personalized exercise routine for each
different type of user-selected exercise machine such that an exercise
machine of at least one said type is controlled with one said different private
personalized exercise routine.” Emphasis added. Instead, we discern that
the Examiner is asserting that the existence of that computer system alone is
insufficient to show possession of the recited act of “programming” that
computer system. We discern that it is for this reason the Examiner
consistently refers to the “programming methodology.” Ans. 4—9.
Nevertheless, as best as we are able, we treat the Appellant’s assertions as
being directed toward the recited act of “programming.”
To that end, the Appellant sets forth many assertions, including (1)
that the Specification explicitly recites “translating,” and “programming”
thereof, (2) that there is a strong presumption of an adequate written
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description and, relatedly, the inadequacy of the Examiner’s rejection in
view of that strong presumption, and (3) that one of ordinary skill in the field
of programming has a relatively high level of skill. App. Br. 9—22; Reply
Br. 1—10. Ultimately, even these assertions are also misplaced, however,
because even if the aforementioned claim limitation has literal support, for
the reasons asserted by the Appellant, it does not satisfy the written
description requirement of 35 U.S.C. § 112, first paragraph, under the
doctrines set forth in Ariad and LizardTech.
More specifically, independent claim 79 uses the functional claim
language “programming a computer system so as to carry out the operation
of translating a private personalized exercise routine,” to define the
boundaries of a claimed genus, and because the Specification does not
disclose species sufficient to support the functionally defined genus, the
recited functional claim language does not have sufficient written
description support to satisfy 35 U.S.C. § 112, first paragraph. Our analysis
supporting our conclusion that the aforementioned aspect of independent
claim 79 is directed to a functionally defined genus is set forth below.
It is true that the aforementioned aspect of independent claim 79 has
literal support in the paragraphs of the Specification identified by the
Appellant. App. Br. 9, 11 (citing Spec. 32:6—7; Fig. 12, block 66). The fact
that the Specification literally repeats, however, the functional claim
language in ipsis verbis is not dispositive. Ariad, 598 F.3d at 1350; Enzo
Biochem, 323 F.3d at 968.
Given the identified support in the written description, we next must
determine whether the scope of the functional claim language is a genus that
covers all species for performing the claimed function. Ariad, 598 F.3d at
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Application 13/343,360
1349. Factors to consider include (a) whether the claim itself recites
limitations as to how the function is performed; and (b) whether the
Specification identifies a way of performing the claimed function, such as a
specific type of microcomputer or an algorithm, that defines the scope of the
functional claim language, without importing limitations from the
Specification into the claim. LizardTech, 424 F.3d at 1346; In re Hayes
Microcomputer Prods., Inc. Patent Litigation, 982 F.2d 1527, 1534 (Fed.
Cir. 1992). To that end, we note that independent claim 79 does not recite
how the function of “translating,” and certainly not the function of
“programming” that “translating,” is performed. While the claims may
disclose the data to be input into (e.g., an exercise routine on a weight
machine) and output from (e.g., an exercise routine on a treadmill) the
“translating,” they do not disclose how the “translating” is performed (e.g.,
how lifting a certain amount of weight a certain number of times on a weight
machine is “translated” into running at a certain speed for a certain time
period on a treadmill). To that end, the above-identified portions of the
Specification constitute the entirety of the written description concerning the
recited “translating,” and is neither a specific type of microcomputer nor an
algorithm for performing the recited “translating.” Finisar Corp. v. DirecTV
Group, Inc., 523 F.3d 1323, 1340 (Fed. Cir. 2008) (quoting In re Freeman,
573 F.2d 1237, 1245—46 (CCPA 1978)) (“This court permits a patentee to
express that algorithm in any understandable terms including as a
mathematical formula, in prose ... or as a flow chart, or in any other manner
that provides sufficient structure”); Ergo Licensing LLC v. CareFusion 303,
Inc., 673 F.3d 1361, 1363 (Fed. Cir. 2012) (“[e]ven described ‘in prose,’ an
algorithm is still ‘a step-by-step procedure for accomplishing a given
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result’”). And even if the aforementioned minimal disclosure of
“translating” in the Specification could be considered an algorithm, it
constitutes only a single algorithm that is not sufficient to support the
functionally defined genus.
Accordingly, we find that the scope of “programming a computer
system so as to carry out the operation of translating a private personalized
exercise routine” is a functionally defined genus that covers all species for
performing the claimed function. And as the Specification discloses, at
most, one species for “programming a computer system so as to carry out
the operation of translating a private personalized exercise routine,”
independent claim 1 fails to meet the written description requirement of 35
U.S.C. § 112, first paragraph. LizardTech, 424 F.3d at 1346 (“[T]he
description of one method for creating a seamless DWT does not entitle the
inventor ... to claim any and all means for achieving that objective”); Ariad,
598 F.3d at 1349 (“the specification must demonstrate that the applicant has
made a generic invention that achieves the claimed result and do so by
showing that the applicant has invented species sufficient to support a claim
to the functionally-defined genus”). See also ICUMed., Inc. v. Alaris Med.
Sys., Inc., 558 F.3d 1368 (Fed. Cir. 2009) (applying LizardTech to conclude
that where specification only discloses species of valves with spikes,
inventor did not possess genus of valves generally, which would cover the
species of valves without spikes); McDavid, Inc. v. Nike USA, Inc., 892 F.
Supp. 2d 970 (N.D. 111. 2012) (two ways of performing claimed function
insufficient to support claimed functional genus).
We sustain the rejection of independent claim 79. For the same
reason, we also sustain the rejection of dependent claims 80—94, which are
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Application 13/343,360
not argued separately. Insofar as our rationale for this rejection may differ
from that set forth by the Examiner, we exercise our discretion and
denominate it as a NEW GROUND of rejection under 37 C.F.R. § 41.50(b).
DECISION
We AFFIRM the rejection of claims 79—94 under 35 U.S.C. § 112(a)
or pre-AIA 35 U.S.C. § 112, first paragraph.
This decision contains new grounds of rejection pursuant to 37 C.F.R.
§ 41.50(b). 37 C.F.R. § 41.50(b) provides “[a] new ground 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 proceeding 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 ....
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37
C.F.R. § 1.136(a)(l)(iv).
AFFIRMED: 37 C.F.R, $ 41.50(b)
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