Ex Parte Tubman

Patent Trial and Appeal Board

Mar 13, 2017

13692276 (P.T.A.B. Mar. 13, 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.
TUB-006 4282
EXAMINER
DORNA, CARRIE R
ART UNIT PAPER NUMBER
3735
MAIL DATE DELIVERY MODE
13/692,276 12/03/2012
21884 7590 03/14/2017
WELSH FLAXMAN & GITLER LLC
2000 DUKE STREET, SUITE 100
ALEXANDRIA, VA 22314
Andrew Tubman
03/14/2017 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 ANDREW TUBMAN
Appeal 2015-005442
Application 13/692,276
Technology Center 3700
Before DONALD E. ADAMS, JEFFREY N. FREDMAN, and
TIMOTHY G. MAJORS, Administrative Patent Judges.
PER CURIAM.
DECISION ON APPEAL1
This Appeal under 35 U.S.C. § 134(a) involves claim 1 (App. Br. 3).
Examiner entered rejections under 35 U.S.C. § 101 and 35 U.S.C. § 103(a).
We have jurisdiction under 35 U.S.C. § 6(b).
We reverse but enter a new ground of rejection of claim 1 under
35 U.S.C. § 103(a).
1 Appellant identifies “Andrew Tubman [as] the real party in interest” (App.
Br. 1).
Appeal 2015-005442
Application 13/692,276
STATEMENT OF THE CASE
Appellant’s invention relates to a “singing program [that] is a
personalized, 4 track software application” which is purported to “enable[]
spontaneous interactive participation for the purpose of providing various
special needs populations access to the now proven medical and
psychological benefits of singing” (Spec. 3:2—6). Independent claim 1 is the
sole claim and is reproduced in the Claims Appendix of Appellant’s Appeal
Brief.
Claim 1 stands rejected under 35 U.S.C. § 101, as being directed to
non-statutory subject matter.
Claim 1 stands rejected under 35 U.S.C. § 103(a) as unpatentable over
Tubman,2 Kondo,3 and Wakamoto.4
Non-statutory Subject Matter.
ISSUE
Does the preponderance of evidence on this record support
Examiner’s determination that the claim is directed to non-statutory subject
matter?
ANALYSIS
Examiner determines that
[t]he method of claim 1 is directed to the abstract idea and
longstanding, familiar practice of tracking the progress over time
of one’s ability to sing words. The additional elements of
downloading, delivering, and recording fail to constitute
2 Tubman et al., US 5,820,384, issued Oct. 13, 1998.
3 Kondo, US 6,036,498, issued Mar. 14, 2000.
4 Wakamoto, US 6,500,006 B2, issued Dec. 31, 2002.
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Application 13/692,276
significantly more than the abstract idea itself, as they are well-
understood, routine, and conventional activities previously
known to the industry. No more than a generic play and record
device is required to perform the steps of the method.
Accordingly, the claim simply instructs the practitioner to
implement the abstract idea using routine and conventional
activity, and the method of claim 1 is not patent-eligible.
(Ans. 2-3.)
On this record, Appellant’s claimed invention is “[a] method of
treating patients with special needs to increase or activate brain activity” that
involves (a) “downloading one or more songs with words into a memory of a
4-track play and record device,” (b) “delivering to a patient via the play and
record device audibly the words to be sung in a song just prior to when the
words are to be sung,” (c) “recording the spoken words sung by the patient
in response to the delivering step (b) on the play and record device,” (d)
“analyzing, by a therapist, the recording,” and (e) “repeating the above steps
(b—d) over a period of time and tracking, by a therapist, the patient’s
progress” (see Appellant’s claim 1). We are not persuaded that Examiner
has established claim 1 is drawn to non-statutory subject matter.
Here, claim 1 is drawn to a method as opposed to an apparatus.
Although Examiner asserts that “[t]he method of claim 1 is directed to the
abstract idea and longstanding, familiar practice of tracking the progress
over time of one’s ability to sing words” (Ans. 2), Examiner failed to
establish that the record supported a finding that the non-abstract subject
matter of the claim (“a memory of a 4-track play and record device” and
“the play and record device”), as organized in the steps of claim 1, was
“well-understood, routine, and conventional activities previously known to
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Application 13/692,276
the industry” for the method claimed by Appellant. See Alice Corporation
Pty. Ltd. v. CLS Bank International 134 S. Ct. 2347, 2359 (2014).
CONCLUSION OF LAW
The evidence of record fails to support Examiner’s determination that
Appellant’s claimed invention is directed to non-statutory subject matter.
The rejection of claim 1 under 35 U.S.C. § 101, as directed to nonstatutory
subject matter is reversed.
Obviousness'.
ISSUE
Does the preponderance of evidence relied upon by Examiner support
Examiner’s conclusion that claim 1 would have been obvious over Tubman,
Kondo, and Wakamoto?
FACTUAL FINDINGS (FF)
FF 1. The Specification suggests that “SingFit is intended to promote health
and well[-]being by enabling successful singing experiences for practically
everyone, including those with Alzheimer’s, autism, brain injuries, Down
Syndrome, Parkinson’s Disease[,] impaired vision, and other special needs”
(Spec. 6:11-14).
ANALYSIS
Claim 1 recites “[a] method of treating patients with special needs”
(see Appellant’s claim 1).
Examiner asserts that ‘“[sjpecial needs’ is construed to include a user
or ‘patient’ goal, such as the need to learn a new language, which increases
or activates brain activity, as taught by Tubman et al. and Wakamoto” (Ans.
3). We are not persuaded.
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Application 13/692,276
The Specification suggests that “SingFit is intended to promote health
and well[-]being by enabling successful singing experiences for practically
everyone, including those with Alzheimer’s, autism, brain injuries, Down
Syndrome, Parkinson’s Disease[,] impaired vision, and other special needs”
(FF 1). “[CJlaims in an application are to be given their broadest reasonable
interpretation consistent with the specification and that claim language
should be read in light of the specification as it would be interpreted by one
of ordinary skill in the art.” In re Sneed, 710 F.2d 1544, 1548 (Fed. Cir.
1983).
We recognize, but are not persuaded by, Examiner’s assertion that
the limitation “special needs” occurs only in the preamble, and is
not tied to the body of the claimed method. A preamble is
generally not accorded any patentable weight where it merely
recites the purpose of a process or the intended use of a structure,
and where the body of the claim does not depend on the preamble
for completeness but, instead, the process steps or structural
limitations are able to stand alone.
(Ans. 4.) Claim 1 is drawn to a “method of treating patients’’ involving
“analyzing, by a therapist” and “tracking, by a therapist, the patient’s
progress” (see Appellant’s claim 1 (emphasis added)). Claim 1 is not drawn
to an apparatus and here, “special needs” in the preamble ties in with
“patients” and “therapist” as recited in the body of the claim. Therefore, we
agree with Appellant that “the Examiner’s position, categorizing a person
desiring to learn a second language as a patient with special needs goes well
beyond the broadest reasonable interpretation and applies a meaning those
skilled in the art would appreciate as being strained and tenuous” (App. Br.
10—11). Thus, the patient population of claim 1 differs from the populations
disclosed in the prior art. See, e.g., Perricone v. Medicis Pharm. Corp., 432
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Application 13/692,276
F.3d 1368, 1378 (Fed. Cir. 2005) (“The issue is not. . . whether Pereira’s
lotion if applied to skin sunburn would inherently treat that damage, but
whether Pereira discloses the application of its composition to skin
sunburn.”)
CONCLUSION OF LAW
The preponderance of evidence relied upon by Examiner fails to
support Examiner’s conclusion that claim 1 would have been obvious over
Tubman, Kondo, and Wakamoto.
The rejection of claim 1 under 35 U.S.C. § 103(a) as being obvious
over Tubman, Kondo, and Wakamoto is reversed.
New Ground Of Rejection'.
Under the provisions of 37 C.F.R. § 41.50(b), we enter a new ground
of rejection of claim 1 under 35 U.S.C. § 103 over the combination of
Tubman, Kondo, and Wakamoto, and Hood.5 6
FACTUAL FINDINGS (FF)
FF 2. Examiner finds that Tubman suggests a method that comprises
the following steps: a) input one or more songs with words into
the memory of a 4-track play and record device (Figures 8 and
10, AcoustiPrompt Karaoke playback system, 52) (song with
lyrics, abstract; col. 15, lines 6—24 and lines 50—56); b) delivering
to a patient via the play and record device (52) audibly the words
to be sung in a song just prior to when the words are to be sung
(abstract; col. 5, lines 18—27; col. 17, line 65—col. 18, line 8); c)
recording the spoken words sung by the patient in response the
delivering step (b) on the play and record device (52) (col. 17,
lines 6—10, lines 21—24, lines 30-50); d) analyzing the recording
5 Hood et al., advice to those who stutter, second edition, The Stuttering
Foundation, Publication No. 0009 (2008).
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Application 13/692,276
(col. 17, lines 37-47); and e) repeating the above steps (b—d) over
a period of time and tracking the patient’s progress (col. 17, lines
37-47).
(Final Act. 2—3.)
FF 3. Examiner finds that “Merriam-Webster’s Dictionary defines
‘download’ as ‘an act of moving or copying a file, program, etc. from a
usually larger computer system to another computer or device’” {id. at 3).
FF 4. Examiner finds that Tubman “does not specify that the one or more
songs are ‘downloaded’ into the play and record device memory, or that a
therapist analyzes the patient’s recording and tracks patient progress” {id.).
FF 5. Examiner finds that
Kondo teaches a method comprising the following steps: a)
download one or more songs into the memory of a play device
(col. 2, line 65—col. 3, line 15; col. 3, lines 42-43 and lines 48—
64); and b) delivering to a patient via the play device audibly the
words to be sung in a song just prior to when the words are to be
sung (abstract; col. 4, lines 27-46).
{Id.)
FF 6. Examiner finds that “Tubman et al. and Kondo do not teach that a
therapist analyzes the patient’s recording and tracks patient progress” (id. ).
FF 7. Examiner finds that Wakamoto suggests a method
of learning a second language and learning a song, which activate
brain activity. See col. 9, lines 3—11 and col. 13, lines 12—15.),
comprising the following steps: a) inputting one or more songs
with words in to a play and record device {Figure 8,
pronunciation practice device) (The “play and record device” is
considered to be the pronunciation practice device shown in
Figure 8, including the headset 100, microphone mixer 40,
switches 50 and 60, amplifier, 70, monitor device, 1, speakers 8,
and CD player 30. See col. 10, lines 10-20; col. 12, line 62—col.
13, line 9); b) delivering . . . via the play and record device
audibly the words to be sung in a song (col. 13, lines 4—9); c)
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Application 13/692,276
recording the spoken words sung ... in response to the delivering
step (b) on the play and record device (col. 13, lines 9-12); d)
analyzing, by a therapist, the recording (At least one member of
the audience is construed as the “therapist”, col. 13, lines 12—15);
and e) repeating the above steps (b-d) over a period of time and
tracking, by a therapist, the patient’s progress (col. 13, lines lb-
31).
(Id. at 4.)
FF 8. Tubman suggests
These two features of (1) loudspeaker listening and (2) recording
enable a Karaoke participant who is using the microphone ... to
practice a rendition repeatedly and to make recordings of each
rendition.
The AcoustiPrompt player system . . . plus processing
equipment . . ., if desired, enables a Karaoke participant to
become accomplished in a particular song through listening, lyric
learning, vocal practice, mixing developments, live sound, and
through repeatedly recording the performance for later playback
and critiquing.
(Tubman 17:37-47; see also Final Act. 2—3.)
FF 9. Wakamoto suggests that “[t]he audience listen to the user’s song
while watching the lyrics displayed on the monitor . . ., and are able to check
whether the pronunciation is correct or not” (Wakamoto 13:29-31; see also
id. at 13:12—15; Final Act. 4).
FF 10. Hood suggests that “[t]he following practices have helped in my
efforts to improve my speech: . . . Listen to and/or watch audio and
videotaped recordings of yourself in speech situations” (Hood 92—93).
FF 11. Hood suggests that
It is difficult to work on attitudes, beliefs, and speech skills.
However, if you are consistent in your practice—alone and in
speaking situations—speech will become easier. Experimenting
will become fun. You may need the help of a friend, speech
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Application 13/692,276
therapist, and/or support group. Consider exploring the Internet
for sites pertaining to stuttering.
(Id. at 93.)
FF 12. Hood suggests “[e]xamin[ing] utterances in which your stuttering
occurs and describe the specific movements, feelings, or actions which
characterize that stuttering. . . . Making a video recording or asking a friend
for feedback may help” (id. at 96).
FF 13. The Specification suggests
In a first time ever clinical study completed at Harvard
University in Feb. 2010, it was reported that by using brain
imaging technology, ground breaking results were found for
rewiring damaged portions of the brain of stroke victims by using
interactive singing participation, a.k.a. melodic intonation
therapy, to improve and accelerate speech recovery.
(Spec. 1:16-20.)
ANALYSIS
Examiner concludes that it would have been obvious to
modify the method of Tubman et al. to download the one or more
songs to the memory of the play and record device as taught by
Kondo, because downloading one or more songs, such as from a
distribution center or server, provides greater access to a variety
of song selections without requiring the patient or user to have a
library of physically stored media, such as a library of compact
discs or cassettes (Kondo, col. 3, lines 42^43 and lines 57—59).
(Final Act. 3.)
Examiner also concludes that it would have been obvious to
modify the method of Tubman et al. and Kondo such that a
therapist analyzes the recording and tracks patient progress as
taught by Wakamoto, because providing outside feedback from
someone other than the patient enhances learning (Wakamoto,
col. 9, lines 3—11 and col. 13, lines 12—15).
(Id. at 4.)
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Application 13/692,276
As discussed above, based on the Examiner’s interpretation of the
claims, we are unpersuaded that Tubman, Wakamoto, and Kondo teach
“treating patients with special needs” nor that the analysis and tracking are
done with the assistance of a “therapist” as recited in steps (d) and (e) of
claim 1. (See Appellants’ claim 1). We agree with the Examiner, however,
that the combination of Tubman, Wakamoto, and Kondo teach all other
limitations of Appellants’ claim 1 (see FF 2, 5, 7—9). Hood suggests the
remaining limitations. Hood suggests that “[t]he following practices have
helped in my efforts to improve my speech: . . . Listen to and/or watch audio
and videotaped recordings of yourself in speech situations” (FF 10). Hood
also suggests that “[y]ou may need the help of a friend, speech therapist,
and/or support group” (FF 11) (emphasis added). Hood further suggests
“[e]xamin[ing] utterances in which your stuttering occurs and describe the
specific movements, feelings, or actions which characterize that stuttering.
. . . Making a video recording or asking a friend for feedback may help” (FF
12) (emphasis added).
In this regard, we find that, absent evidence to the contrary, stuttering
is a type of special needs within the scope of Appellant’s claim. This is
consistent with Appellant’s contention that “[wjhile it is once again fully
appreciated there are numerous definitions of ‘special needs,’ when the term
‘special needs’ is used to describe a patient, all definitions involve someone
who has a mental, emotional, or physical disability” (App. Br. 10), and Hood
suggesting that movements, feelings, and actions affect stuttering (FF 12).
Further, Hood suggests using recordings to treat patients with
stuttering with the help of a therapist (FF 10-12). Appellant’s Specification
also acknowledges a prior study by Harvard University using “interactive
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singing participation, a.k.a. melodic intonation therapy, to improve and
accelerate speech recovery” (FF 13). Appellant’s invention appears to be
nothing more than the use of a known song playing/recording device as part
of melodic intonation therapy. We, therefore, conclude that it would have
been obvious to treat patients with special needs such as stuttering with the
help of a therapist, as taught by Hood, in the combined method of using a
song playing/recording device of Tubman, Wakamoto, and Kondo, because
it would yield predictable results of improved treatments for stuttering.
“The combination of familiar elements according to known methods is likely
to be obvious when it does no more than yield predictable results.” KSR
Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007). “If a person of ordinary
skill can implement a predictable variation, § 103 likely bars its
patentability.” Id. at 417.
Thus, under the provisions of 37 C.F.R. § 41.50(b), we enter a new
ground of rejection of claim 1 under 35 U.S.C. § 103 as obvious over the
combination of Tubman, Wakamoto, Kondo, and Hood.
We address below Appellant’s arguments that remain relevant to the
obviousness rejection made under the New Ground of Rejection.
Appellant contends that Appellant “is unable to find any disclosure of
repeating the above steps (b—d) over a period of time and tracking, by a
therapist, the patient’s progress” (App. Br. 10). Hood, however, makes up
for this deficiency by expressly suggesting the involvement of a speech
therapist (FF 11). Thus, it would have been obvious to have a therapist
analyze and track a patient’s progress in a method of treating a stuttering
patient in order to provide professional guidance to the patient and help the
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patient improve faster as suggested by the combined disclosures of Tubman,
Wakamoto, Kondo, and Hood.
CONCLUSION OF LAW
We enter a new ground of rejection of claim 1 under 35 U.S.C.
§ 103(a) as being obvious over Tubman, Wakamoto, Kondo, and Hood.
TIME PERIOD FOR RESPONSE
This decision contains a new ground of rejection pursuant to
37 C.F.R. § 41.50(b) (effective September 13, 2004, 69 Fed. Reg. 49960
(August 12, 2004), 1286 Off. Gaz. Pat. Office 21 (September 7, 2004)).
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. . . .
REVERSED: 37 C.F.R, $ 41,501b)
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