INTERNATIONAL BUSINESS MACHINES CORPORATIONDownload PDFPatent Trials and Appeals BoardDec 30, 20212021003361 (P.T.A.B. Dec. 30, 2021) Copy Citation 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. Appeal 2021-003361 Application 14/921,115 2 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. Appeal 2021-003361 Application 14/921,115 3 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 Appeal 2021-003361 Application 14/921,115 4 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: Appeal 2021-003361 Application 14/921,115 5 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 Appeal 2021-003361 Application 14/921,115 6 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. Appeal 2021-003361 Application 14/921,115 7 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. Appeal 2021-003361 Application 14/921,115 8 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 Appeal 2021-003361 Application 14/921,115 9 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. Appeal 2021-003361 Application 14/921,115 10 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. Appeal 2021-003361 Application 14/921,115 11 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). Appeal 2021-003361 Application 14/921,115 12 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 Copy with citationCopy as parenthetical citation