Case: 23-1425 Document: 28 Page: 1 Filed: 12/15/2023
NOTE: This disposition is nonprecedential.
United States Court of Appeals
for the Federal Circuit
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IN RE: WILLIAM HENRY STARRETT, JR.,
Appellant
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2023-1425
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Appeal from the United States Patent and Trademark
Office, Patent Trial and Appeal Board in No. 14/921,682.
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Decided: December 15, 2023
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WILLIAM STARRETT, JR., Richardson, TX, pro se.
KAKOLI CAPRIHAN, Office of the Solicitor, United States
Patent and Trademark Office, Alexandria, VA, for appellee
Katherine K. Vidal. Also represented by ROBERT MCBRIDE,
AMY J. NELSON, FARHEENA YASMEEN RASHEED.
______________________
Before LOURIE, STOLL, and CUNNINGHAM, Circuit
Judges.
PER CURIAM.
William Henry Starrett, Jr. appeals from a decision of
the United States Patent and Trademark Office Patent
Trial and Appeal Board (“the Board”) affirming an exam-
iner’s rejections of the pending claims of U.S. Patent
Case: 23-1425 Document: 28 Page: 2 Filed: 12/15/2023
2 IN RE: STARRETT
Application 14/921,682 (“the ’682 application”) as directed
to patent ineligible subject matter under
35 U.S.C. § 101
and as anticipated under § 102, as well as the rejection of
certain pending claims as indefinite under § 112(b). Ex
parte William Henry Starrett Jr., No. 2021-000504,
2022
WL 1799367 (P.T.A.B. May 31, 2022) (“Decision”). For the
following reasons, we affirm.
BACKGROUND
The twenty-six claims of the ’682 application generally
relate to “editing, storing, converting, encoding, generat-
ing, or maintaining representations of subjective experi-
ences, physiological responses, or expressive responses as
a representation of emotion in a computing environment.”
’682 application, ¶ 6. For example, in one described embod-
iment, the invention gathers data from devices measuring
physiological conditions such as brain activity, heart rate,
or body temperature and uses that data to define, recreate,
or maintain a subject’s emotional state.
Id. ¶ 44.
Claim 1, reproduced below, is representative for pur-
poses of this appeal:
1. A machine having a memory containing data
representing either of or both data structures and
program instructions for editing, storing, convert-
ing, encoding, generating, or maintaining said data
structures representing
one or more immersive first-person experiences
of emotion with zero, one, or more representa-
tions of immersive first-person physical sensa-
tions of self-awareness and zero, one, or more
representations of a vantage
using a hierarchy of coordinate systems be-
ing generated by a method comprising the
steps of:
analyzing one or more bodies;
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IN RE: STARRETT 3
obtaining information about a body;
generating one or more hierarchical
representation.
Id. at claim 1 (emphases added).
The examiner rejected all twenty-six claims (1) under
35 U.S.C. § 101 as being directed to patent-ineligible sub-
ject matter, (2) under § 102 as being anticipated by Froloff, 1
and (3) under § 112(b) as being indefinite. Decision at
*1–2. Additionally, the examiner rejected claims 9, 10, 16,
17, 25, and 26 under § 112(a) for failing to comply with the
written description requirement. Id. at *1. Starrett ap-
pealed to the Board, asserting that each of the examiner’s
rejections was improper and should be overturned.
The Board sustained the examiner’s rejections under
§§ 101 and 102 in full, and the rejections under § 112(b) in
part. Id. at *13. Accordingly, the Board affirmed the Ex-
aminer’s final decision as it sustained at least one ground
of rejection with respect to each claim on appeal, although
it did reverse the examiner’s rejections under § 112(a) and
a handful of the rejections under § 112(b). Id. at *13–14;
see also
37 C.F.R. § 41.50(a)(1). Starrett subsequently filed
a request for rehearing, which the Board denied in a later
decision. Ex parte William Henry Starrett Jr., No. 2021-
000504,
2022 WL 17223428 (P.T.A.B. Nov. 23, 2022).
Starrett timely appeals. We have jurisdiction under
28
U.S.C. § 1295(a)(4)(A) and
35 U.S.C. § 141(a).
DISCUSSION
We review the Board’s legal determinations de novo, In
re Elsner,
381 F.3d 1125, 1127 (Fed. Cir. 2004), and the
Board’s factual findings for substantial evidence, In re
Gartside,
203 F.3d 1305, 1316 (Fed. Cir. 2000). A finding
1 U.S. Patent 7,720,784 (filed Aug. 30, 2005).
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4 IN RE: STARRETT
is supported by substantial evidence if a reasonable mind
might accept the evidence as adequate to support the find-
ing. Consol. Edison Co. v. NLRB,
305 U.S. 197, 229 (1938).
Starrett appeals each ground of rejection that was sus-
tained by the Board. We first review the Board’s § 102 an-
ticipation determination, which applies to all of the ’682
application’s twenty-six claims. A claim “is anticipated
only if each and every element as set forth in the claim is
found, either expressly or inherently described, in a single
prior art reference,” Verdegaal Bros. v. Union Oil Co. of
California,
814 F.2d 628, 631 (Fed. Cir. 1987), and “antici-
pation is a question of fact subject to substantial evidence
review.” Microsoft Corp. v. Biscotti, Inc.,
878 F.3d 1052,
1068 (Fed. Cir. 2017).
On appeal to this court, Starrett repeats many of the
same contentions regarding this issue that he argued to the
Board, going insofar as to quote large sections of his appeal
brief to the Board and request for rehearing to the Board
verbatim. Starrett asserts that the ’682 application’s
claims are not anticipated because (1) Froloff’s depictions
of emotive states are not representations of “immersive
first-person experiences of emotion,” (2) Froloff’s data
structures do not use “a hierarchy of coordinate systems,”
and (3) Froloff does not disclose “representations of immer-
sive first-person physical sensations of self-awareness” or
“representations of a vantage” as recited in the claim 1 of
the ’682 application.
Regarding claim 1’s recitation of “data structures rep-
resenting one or more immersive first-person experiences,”
the Board agreed with the examiner that “Froloff discloses
emotive vectors, or emovectors, that represent emotive con-
tent.” Decision at *12. On appeal, Starrett argues that
such disclosure does not anticipate claim 1’s representa-
tions of “immersive first-person experiences of emotion,”
but he fails to adequately explain how that limitation re-
quires more than Froloff’s disclosed emovectors. Starrett
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IN RE: STARRETT 5
seems to argue that Froloff’s disclosure is insufficient be-
cause its emovectors are represented by sets of predefined
labels, representations, and designations. Appellant’s Br.
at 47, 55. Starrett cites a single passage from the ’682 ap-
plication specification in support, which describes the
preexisting technology’s limited ability to recreate human
state experiences and freely model complex sensational
events inside of emotional events.
Id. at 55 (citing ’682 ap-
plication, ¶ 4). But this is not what is required by the
claims, which recite, “data structures representing one or
more immersive first-person experiences of emotion.” ’682
application, claim 1 (emphasis added). The application’s
claims do not require data structures with undefined la-
bels, as Starrett seemingly argues here. Nor does the spec-
ification show otherwise. The specification language relied
on by Starrett merely describes the state of the background
art and does not support reading an unwritten requirement
into the claim. During examination, although claims are
to be given their broadest reasonable interpretation con-
sistent with the specification and should be read in light of
the specification as it would be interpreted by one of ordi-
nary skill in the art, In re Am. Acad. Of Sci. Tech Ctr.,
367
F.3d 1359, 1364 (Fed. Cir. 2004), “[w]e have cautioned
against reading limitations into a claim from the preferred
embodiment described in the specification, even if it is the
only embodiment described, absent clear disclaimer in the
specification.”
Id. at 1369.
As for the claim limitation requiring the use of “a hi-
erarchy of coordinate systems,” the Board agreed with the
examiner that Froloff’s emovectors correspond to coordi-
nate systems and that Froloff discloses an associated hier-
archal model. Decision at *12–13. The Board specifically
relied on Figure 3 of Froloff, which the reference describes
as “an illustration of the emotive hierarchy.” Id. at *12 (cit-
ing Froloff, Fig. 3, col. 17 ll. 25–58). Figure 3 depicts a pyr-
amid chart that presents physical, emotional, and cognitive
signals in ascending order and directional markers
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6 IN RE: STARRETT
associated with pain and pleasure. Froloff, Fig. 3, col. 17 l.
25–col. 18 l. 62. The Board also relied on Froloff’s Figure
6, which illustrates an “emotive displacement calculation”
using “a two[-]dimensional space wherein pleasure and
pain are opposing directions on an orthogonal time axis.”
Decision at *12 (citing Froloff, Fig. 6, col. 21 ll. 34–38).
However, Starrett seems to argue on appeal that the two-
dimensional nature of Froloff’s disclosures is insufficient to
anticipate the claims of the ’682 application. Appellant’s
Br. at 45–47, 54–56. But, again, this is not what is required
by the claims. Claim 1 does not require a minimum num-
ber of dimensions to be represented in its coordinate sys-
tems or hierarchy, and Starrett does not direct us to any
portion of the ’682 application’s specification that supports
the importation of such an unwritten requirement into the
claim.
Concerning the claim limitations requiring “represen-
tations of immersive first-person physical sensations of
self-awareness” and “representations of a vantage,” the
Board found that Starrett’s arguments were “unpersuasive
of examiner error because these optional limitations are
non-limiting and need not be disclosed by Froloff for claim
1 to be anticipated.” Decision at *12. The Board found the
limitations optional because, in context, they require “zero,
one, or more representations of immersive first-person
physical sensations of self-awareness” and “zero, one, or
more representations of a vantage.” Id. at *3 (citing ’682
application, claim 1) (emphases in Decision). The Board
then relied on this court’s decision in In re Johnston,
435
F.3d 1381 (Fed. Cir. 2006) to find that “optional elements
do not narrow the claim because they can always be omit-
ted.” Decision at *3. Although Starrett includes several
general assertions regarding the “sensations of self-aware-
ness” and “vantage” limitations in this appeal, see, e.g., Ap-
pellant’s Br. at 48–49, he fails to explain how the recitation
of “zero” preceding those limitations does not render them
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IN RE: STARRETT 7
optional. As such, Starrett has not provided us any basis
to upset the Board’s decision as to those limitations.
Accordingly, the Board’s finding that claim 1 of the ’682
application was anticipated by Froloff is supported by sub-
stantial evidence. Concerning the application’s remaining
claims, the Board analyzed claims 11 and 18 separately be-
cause of their additional limitation regarding “zero, one, or
more values for subjectively held ideas.” Decision at *13.
The Board then found that Starrett relied on the same ar-
guments for the application’s remaining twenty-three
claims and sustained the examiner’s anticipation rejec-
tions as to those as well. Although Starrett’s appeal in-
cludes arguments specifically directed to claims 1, 11, and
18, Appellant’s Br. at 49–51, he asserts no contentions re-
garding the “subjectively held ideas” limitation and pre-
sents no argument that the Board erred in treating claim 1
as representative. Accordingly, Starrett has waived any
separate arguments as to claims 2–26 of the ’682 applica-
tion.
37 C.F.R. § 41.37(c)(1)(iv) (“Notwithstanding any
other provision of this paragraph, the failure of appellant
to separately argue claims which appellant has grouped to-
gether shall constitute a waiver of any argument that the
Board must consider the patentability of any grouped claim
separately.”); Pentax Corp. v. Robison,
135 F.3d 760, 762
(Fed. Cir. 1998) (stating that “this court will not address
issues raised for the first time on appeal or issues not pre-
sented on appeal”).
CONCLUSION
We have considered Starrett’s remaining arguments
regarding anticipation but find them unpersuasive. As we
have affirmed a ground of rejection applicable to all of the
claims in this appeal, we need not address Starrett’s re-
maining arguments regarding the other grounds of rejec-
tion. For the foregoing reasons, we affirm the Board’s
rejection of claims 1–26 of the ’682 application.
AFFIRMED
