INTERNATIONAL BUSINESS MACHINES CORPORATION

Patent Trials and Appeals Board

Dec 30, 2021

2021003361 (P.T.A.B. Dec. 30, 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.
14/921,115 10/23/2015 Christian Eggenberger YOR920080398US2
(268 CON)
3604
49267 7590 12/30/2021
Tutunjian & Bitetto, P.C.
401 Broadhollow Road
Suite 402
Melville, NY 11747
EXAMINER
JIAN, SHIRLEY XUEYING
ART UNIT PAPER NUMBER
3792
NOTIFICATION DATE DELIVERY MODE
12/30/2021 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):
docketing@tb-iplaw.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte CHRISTIAN EGGENBERGER,
PETER K. MALKIN,
ANDREAS J. SCHINDLER, and
JEFFREY W. MERSEREAU

Appeal 2021-003361
Application 14/921,115
Technology Center 3700
____________

Before JOHN C. KERINS, MICHAEL L. HOELTER, and
BENJAMIN D. M. WOOD, Administrative Patent Judges.

HOELTER, 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, 3–8, and 10–18. See Appeal Br. 1.
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
“INTERNATIONAL BUSINESS MACHINES CORPORATION.” Appeal
Br. 3.
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CLAIMED SUBJECT MATTER
The disclosed subject matter “relates to biofeedback methods and
devices, and more particularly to systems and methods for career consulting
and management using biometric information such as heart rate variability
data.” Spec. ¶ 1. System claim 1, method claim 10, and computer readable
storage medium claim 16 are independent. Claim 1 is illustrative of the
claims on appeal, and is reproduced below.
1. A system for creating biometric profiles comprising:
a sensor configured to measure a person's biometric
signals; and
a processor configured to process the biometric signals to
produce a life fire graph, the life fire graph comprising a heat
map that correlates an intensity of change in the biometric
signals at different frequencies at different points in time, the
processor being further configured to compare the life fire
graph to a plurality of stored biometric profiles, and the
processor being further configured to evaluate at least one
personality characteristic of the person based on correlations
with the plurality of stored profiles to determine job roles to
optimize performance and health for the user.

EVIDENCE
Name Date
Autonom Talent, Consulting GmbH,
English Translation; last visited Nov.
2021
www.autonomtalent.com hereinafter
“www.autonomtalent.com”
2007
REJECTION
Claims 1, 3–8, and 10–18 are rejected under 35 U.S.C. § 112, first
paragraph, as failing to comply with the enablement requirement.
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ANALYSIS
Appellant argues all the claims together under a common heading.
See Appeal Br. 8–21. Appellant also addresses dependent claims 6 and 12–
14 under a different heading. See Appeal Br. 21–22. However, with respect
to these dependent claims, Appellant “respectfully directs the Board’s
attention to the detailed analysis of these [Wands] factors, presented in part
B1 above.” Appeal Br. 22. Accordingly, we select claim 1 for review, with
the remaining claims (i.e., claims 3–8 and 10–18) standing or falling with
claim 1. See 37 C.F.R. § 41.37(c)(1)(iv) (2019).
Claim 1 recites the measuring of “a person’s biometric signals” from
which “a life fire graph” is produced. Claim 1 then compares “the life fire
graph to a plurality of stored biometric profiles” and uses this comparison
“to evaluate at least one personality characteristic of the person based on
correlations with the plurality of stored profiles.” In the Specification,
Appellant employs “Heart Rate Variability (‘HRV’)” as the biometric signal
measured and used for comparison. Spec. ¶ 34.
As noted above, the Examiner rejects claim 1 due to a lack of
enablement. See Non-Final Act. 9; see also Ans. 7 (Appellant’s
Specification “lacks sufficient description to enable.”). The Examiner states
that Appellant’s “Specification only describes using HRV to generate ‘life
fire graphs,’ but does not disclose how to interpret these graphs to determine
personality traits, or characteristics.” Non-Final Act. 3 (“[W]hat biometrics
correlate to what personal characteristics.”), 9; Ans. 6–9. Stated another
way, the Examiner explains that although Appellant’s Specification
“provides some examples (i.e., Figs. 3a-3e) of ‘life fire graphs,’ that pertain
to certain personality traits,[] it is unclear what features of the biometrics
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equate to the corresponding personality characteristics in the produced ‘life
fire graph.’” Non-Final Act. 9; see also Ans. 6 (“[T]here is no discussion as
to what specific parameter/feature of a life fire graph is used to correlate
with each of the personal traits.”).
Appellant references Paragraphs 35 and 36 and Figures 3a–3e of
Appellant’s Specification in rebutting this enablement rejection. See
Appeal. Br. 11, 15, and 16. Paragraph 35 describes how a Fourier
transformation of the collected heartbeat data is performed to produce the
graphs depicted in Figures 3a to 3e. Paragraph 36 states “HRV
measurements can also be correlated with various personal traits.” Figures
3a to 3c from Appellant’s Specification are replicated below:
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Appellant’s Specification identifies Figure 3a as representing the trait
of “achievement,” Figure 3b as representing the trait of “will,” and Figure 3c
as representing the trait of “intuition.” Spec. ¶¶ 9–11. As to interpreting the
figures, Paragraph 35 states that “[t]he horizontal axis represents time, while
the vertical axis represents the frequencies at which the RR interval 102 is
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changing at this point in time.”2 Paragraph 36 states that “thick lines
represent frequencies which manifest the strongest” characteristics while
“solid white areas are frequencies which manifest weakly” the indicated
trait.
As an example of how measurements can be associated with a trait,
Appellant’ Specification references Figure 3c stating, “a strong HRV
response in the range 0.15 Hz to 0.4 Hz is an indication of having the
characteristic ‘intuition.’” Spec. ¶¶ 11, 36. However, contrary to this
disclosure, the “intuition” Figure 3c has no thick lines (i.e., “a strong HRV
response”) representing this trait in the stated range of 0.15 Hz to 0.4 Hz. Id.
Thus, Appellant’s Specification does not make clear what is depicted in
Figure 3c that results in this graph representing “a strong HRV response”
indicating “intuition.” Id. Furthermore, Figures 3a and 3b also lack any
thick lines in this range, yet they are said to represent the characteristics of
“achievement” and “will,” not “intuition.” See Spec. ¶¶ 9, 10, 36.3
Appellant does not explain this discrepancy or how Figures 3a to 3c are
distinguishable from each other in this range since Appellant states that they
represent different personality characteristics. See Spec. ¶¶ 9–11, 36. To be
clear, the Examiner states that Appellant does not “disclose how to interpret
these graphs to determine personality traits, or characteristics.” Non-Final
Act. 9; see also Ans. 6–9.

2 Paragraph 34 of Appellant’s Specification explains that “[t]he time
between individual beats . . . is called the RR interval.” See Spec. Fig. 2.
3 The Specification does not define “intuition,” “will,” or “achievement.” It
is difficult for us to understand how Appellant believes such facially
subjective personality characteristics could possibly be objectively
quantified.
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Paragraph 36 of Appellant’s Specification also addresses Figure 3a
stating, “a strong HRV response in the range 0.0033 Hz to 0.04 Hz is
indicative of ‘achievement.’” See also Spec. ¶ 9. However, Appellant does
not make clear how a skilled person might possibly be able to interpret the
range of “0.0033 Hz to 0.04 Hz” in Figure 3a above without undue guessing,
or experimentation.4 In other words, Appellant does not identify what
distinguishes this range in Figure 3a from the same range in the other
figures.
We have been instructed from our reviewing court that the
requirement of enablement, as stated in 35 U.S.C. § 112, enforces the
essential “quid pro quo of the patent bargain” by requiring a patentee to
teach the public how “to practice the full scope of the claimed invention.”
AK Steel Corp. v. Sollac, 344 F.3d 1234, 1244 (Fed. Cir. 2003).
Additionally, “[t]he test of enablement is whether one reasonably skilled in
the art could make or use the invention from the disclosure in the patent
coupled with information known in the art without undue experimentation.”
United States vs. Telectronics, Inc., 857 F.2d 778, 785 (Fed. Cir. 1988).
Perhaps sensing the precariousness of Appellant’s examples,
Appellant states, “the claims . . . take these biometric profiles, with the
associated traits, as given.” Appeal Br. 18 (italics added); see also Reply Br.
12. However, we have also been instructed that a patent owner is “required
to provide an enabling disclosure in the specification; it cannot simply rely
on the knowledge of a person of ordinary skill to serve as a substitute for the

4 For example, the difference between .0033 Hz, which is within this range,
and .0032 Hz, which is outside this range, is .0001 Hz, or three orders of
magnitude smaller than the scale of the graph in Figure 3c.
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missing information in the specification.” ALZA Corp. v. Andrx Pharm.,
LLC, 603 F.3d 935, 941 (Fed. Cir. 2010). Hence, in view of the above, it is
not understood how Appellant’s Specification, or Appellant’s figures, meet
the criteria of enabling the public to practice the claimed invention. See
Non-Final Act. 9 (“The claim(s) contains subject matter which was not
described in the [S]pecification in such a way as to enable one skilled in the
art to which it pertains, or with which it is most nearly connected, to make
and/or use the invention.”). This is especially the case in view of the
examples provided in Appellant’s Specification (see Spec. ¶ 36 discussed
above) which are inconclusive at best. See Ans. 7 (“Appellant only provides
two examples in [0036].”).
In Appellant’s defense, Appellant asserts that when rendering the
rejection, “[t]he Examiner disregards the actual claim language, instead
forming the rejection against features that are not recited.” Appeal Br. 9, 13;
see also Reply Br. 10. However, Appellant does not make clear how the
Examiner’s focus on the lack of a correlation between the recited “biometric
signals” (or “a life fire graph” thereof) and a “personality characteristic of
the person” is a rejection based on “features that are not recited” as
Appellant asserts. See Non-Final Act. 3, 9; see also Ans. 6–9. Claim 1
clearly recites a comparison of the person’s “life fire graph to a plurality of
stored biometric profiles,” and thereafter, requires that the claimed processor
have the ability to “evaluate at least one personality characteristic of the
person based on correlations with the plurality of stored profiles.” Hence,
Appellant’s contentions above are not persuasive of Examiner error.
Appellant further states that Appellant’s Specification “provides
specific instructions as to how a life fire graph may be generated” and also
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addresses “the feature of processing the biometric signals.” Appeal Br. 11,
14 (“HRV data may be processed to produce a life fire graph.”). Appellant
further states that the Examiner is “making a rejection that is based on
clarity.” Appeal Br. 12. However, none of these assertions directed to
generating, processing or clarity addresses the Examiner’s concern, which
seeks an enabling disclosure of the correlation between a biometric signal
and a personality trait. See Non-Final Act. 3, 9; see also Ans. 6–9.
Appellant also states how Appellant’s Specification “does describe
what types of information may be stored in a typical biometric profile”
(Appeal Br. 14) and “how profiles can be created” (Appeal Br. 15), but
again, these statements do not address, or resolve, the Examiner’s concerns
regarding a correlation between biometric data and a personality trait. See
Non-Final Act. 3, 9; see also Ans. 6–9. Additionally, Appellant contends
that a skilled person “would be able to compare two life fire graphs.”
Appeal Br. 16. However, it is not the ability to compare graphs that is
problematic; instead, it is Appellant’s explanation of how to correlate sensed
biometric data such as a heart rate with a particular personality trait that
remains elusive.5 For example, Appellant states “the association between
biometric data and the persons’ traits in the plurality of biometric profiles
may be formed simply by virtue of determining the person’s known traits
and associating them with their biometric information.” Appeal Br. 15–17;
see also Reply Br. 8–9, 13; and Spec. ¶ 37. It is this “associating” of the

5 The Examiner provides further insight stating, “[i]f a biometric profile,
only includes biometrics, then what is the point of producing a life fire
graph, when the acquired biometrics can be compared directly to the stored
biometric profiles?” Non-Final Act. 10.
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trait “with their biometric information” that the Examiner finds nonenabled,
i.e., what is it about the biometric information that informs a correlation with
a specific trait, and vice-versa. See Non-Final Act. 3, 9; see also Ans. 6–9.
Appellant further contends that a certain website (i.e.,
http://www.autonomtalent.com) “was cited to address the Examiner’s
questions regarding the association of traits to biometric profiles.” Appeal
Br. 17; see also Reply Br. 14 (“The NPL document is cited to show that
correlations between talents and biometrics were known in the art.”). The
English Language translation of this document states, “by means of an
objective method we measure and recognize talent and the status of the
physical-mental capacity” and that “[t]ogether with you we design individual
programs according to the requirements of your organization.” See Non-
Final Act. 6. Although this document does state “we measure and recognize
talent,” it is not made clear where this document provides the information
needed to answer “the Examiner’s questions regarding the association of
traits to biometric profiles.” Appeal Br. 17. Appellant’s statement that
“their technology was used for identifying the personality traits of
individuals,” even if true, is still bereft of any teaching of the sought-after
correlation. Appeal Br. 18. In other words, Appellant has not provided
persuasive evidence in support of an enabling disclosure, and it is not
otherwise self-evident from the record. Accordingly, we are not in
agreement that this cited document overcomes (or even addresses) the
Examiner’s enablement rejection.
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Appellant also acknowledges that “[i]n support of the rejection, the
Examiner cites Wands [6] factors (A)–(G).” Appeal Br. 18. Appellant
disagrees with the Examiner’s conclusions (see Appeal Br. 18–20; see also
Reply Br. 13–17) but we are not persuaded of Examiner error in this
endeavor for at least the reasons stated above. See Ans. 12–16.
Additionally, Appellant contends that the Examiner’s focus on a
correlation between a biometric and a personality trait is an example of the
Examiner “cherry-pick[ing] features without their full context.” Reply Br.
6–7. Appellant states instead that “it is the comparison between the life fire
graph and the stored biometric profiles which provide the foundation for the
recited correlations.” Reply Br. 7. Be that as it may, claim 1 further recites
the ability to “evaluate at least one personality characteristic of the person
based on correlations with the plurality of stored profiles.” Hence, the
Examiner is not seeking a correlation between a life fire graph and a stored
profile, but instead, the Examiner is seeking disclosure of a correlation
between a personality characteristic and a biometric (represented by a life
fire graph and/or stored profile) so as to enable the recited evaluation to be
undertaken. See Spec. ¶¶ 29, 35; see also Ans. 5. Thus, Appellant’s
contention is misdirected and does not address the Examiner’s rejection.
It is further noted that Paragraph 33 of Appellant’s Specification
states, “[i]t is contemplated that these traits and others might be accounted
for in a person’s profile.” Thus, it would seem that even Appellant
recognizes the hypothetical or conjectural nature of a correlation between a
trait and a biometric. On this point we have been instructed, “the law is

6 In re Wands, 858 F.2d 731 (Fed. Cir. 1988).
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clear that a patent cannot be awarded for mere theoretical research without
more.” Biogen International GMBH v. Mylan Pharmaceuticals Inc. 2021
WL 5571708 (Fed. Cir. 2021) (referencing Ariad Pharms., Inc. v. Eli Lilly &
Co., 598 F.3d 1336, 1353 (Fed. Cir. 2010)). We understand that Biogen
primarily addresses the written description requirement, but this concept
stated by our reviewing court is equally applicable here.
CONCLUSION
According, and based on the record presented, we sustain the
Examiner’s enablement rejection of claims 1, 3–8, and 10–18.
DECISION SUMMARY
In summary:
Claim(s)
Rejected
35 U.S.C. §  References/Basis Affirmed Reversed
1, 3–8, 10–
18
112, first
paragraph
Enablement 1, 3–8, 10–
18

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)(1)(iv).
AFFIRMED