Eugene Dantsker

Patent Trials and Appeals Board

Sep 13, 2019

14697483 - (D) (P.T.A.B. Sep. 13, 2019)

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.
14/697,483 04/27/2015 Eugene Dantsker 105272-1132814 1093
20350 7590 09/13/2019
KILPATRICK TOWNSEND & STOCKTON LLP
Mailstop: IP Docketing - 22
1100 Peachtree Street
Suite 2800
Atlanta, GA 30309
EXAMINER
SCHMIDT, EMILY LOUISE
ART UNIT PAPER NUMBER
3783
NOTIFICATION DATE DELIVERY MODE
09/13/2019 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):
KTSDocketing2@kilpatrick.foundationip.com
ipefiling@kilpatricktownsend.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte EUGENE DANTSKER
____________________

Appeal 2018-007352
Application 14/697,483
Technology Center 3700
____________________

Before MICHAEL J. FITZPATRICK, MICHELLE R. OSINSKI, and
JILL D. HILL, Administrative Patent Judges.

HILL, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Eugene Dantsker (“Appellant”)1 appeal under 35 U.S.C. § 134(a)
from the Examiner’s final decision rejecting claims 1–3, 6–9, 15–18, 21–27,
29 and 30.2 We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.

1 Appellant identifies Applicant and Assignee Qualcomm Incorporated as
the real party in interest. Appeal Br. 3.
2 Claims 4, 5, 10–14, 19, 20 and 28 have been withdrawn from
consideration. Final Act. 1.
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BACKGROUND
Independent claims 1, 18, and 27 are pending. Independent claim 1,
reproduced below, illustrates the claimed invention:
1. A system comprising:
an adhesive patch, wherein the adhesive patch comprises:
a flexible substrate having an adhesive backing for
adhering the flexible substrate to a person’s skin, the
flexible substrate having one or more openings, each
opening indicating a post-adhesion, designated injection
site for subcutaneous medication delivery when the
adhesive patch is adhered to the person’s skin, and
a first short-range wireless communications
interface;
a first subcutaneous medication delivery applicator
(SMDA), wherein the first SMDA includes:
a mechanism configured to subcutaneously deliver
an amount of medication through the person’s skin,
a second short-range wireless communications
interface configured to receive and transmit information
from and to, respectively, at least the first short-range
wireless communications interface, and
a safety interlock that prevents the mechanism
from dispensing the medication when the safety interlock
is engaged and that allows the mechanism to dispense the
medication when disengaged; and
control logic operatively connected with the first
short-range wireless communications interface, the
second short-range wireless communications interface,
and the safety interlock, wherein:
the control logic includes a first portion that
is included in the adhesive patch and a second
portion that is included in the first SMDA,
the first portion of the control logic and the
second portion of the control logic are configured
to communicate with each other via the first short-
range wireless communications interface and the
second short-range wireless communications
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interface, respectively, and the control logic is
configured to:
determine whether subcutaneous
injection of the medication from the first
SMDA is authorized at a first time based, at
least in part, on information indicating that
the first SMDA is pre-associated with
identifier information that identifies the first
SMDA and that is pre-associated with the
adhesive patch and transmitted via the first
short-range wireless communications
interface, the second short-range wireless
communications interface, or the first short-
range wireless communications interface
and the second short-range wireless
communications interface, and
cause the safety interlock to disengage
responsive to a determination that the
subcutaneous injection of the medication is
authorized.

App. Br. 29–30 (Claims Appendix).

REJECTIONS
I. Claims 1, 2, 6–8, 14, 16–18, 21, 22, 24, 26, 27, 29, and 30 stand
rejected under 35 U.S.C. § 103(a) as unpatentable over Ulrich ’705 (WO
2013/070705 A1, pub. May 16, 2013), Deberadine (US 2014/0128842 A1,
pub. May 8, 2014), and Yodfat (US 2011/0118694 A1, pub. May 19, 2011).
Final Act. 2.
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II. Claim 3 stands rejected under 35 U.S.C. § 103(a) as
unpatentable over Ulrich ’705, Deberadine, Yodfat, and Curry (US
2014/0247109 A1, pub. Sept. 4, 2014).3 Final Act. 8.
III. Claims 9 and 23 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Ulrich ’705, Deberadine, Yodfat, and Zhang (US
2001/0037104 Al A1, pub. Nov. 1, 2001).4 Final Act. 8.
IV. Claim 25 stands rejected under 35 U.S.C. § 103(a) as
unpatentable over Ulrich ’705, Deberadine, Yodfat, and Ulrich ’715 (WO
2013/070715 A1, pub. May 16, 2013). Final Act. 9.
ANALYSIS
Rejection I
Appellant makes no argument that claims 1, 2, 6–8, 14, 16–18, 21, 22,
24, 26, 27, 29, and 30 are patentable over Ulrich ’705, Deberadine, and
Yodfat. Therefore, we summarily sustain Rejection I.
Rejection II
Claim 3 depends from claim 1 and recites the adhesive patch being
configured to short-circuit itself upon removal from the person’s skin.
Appeal Br. 30 (Claims App.) The Examiner finds this disclosure in Curry.
Final Act. 8 (citing Curry ¶¶ 38, 64). The Examiner concludes that it would

3 Claim 3 depends from claim 1, which was rejected over Ulrich ’705,
Deberadine, and Yodfat. We understand the omission of Yodfat in the
Examiner’s statement of the rejection to be a typographical error.
4 Claim 9 depends from claim 1, and claim 23 depends from claim 18 which
was rejected over Ulrich ’705, Deberadine, and Yodfat. We understand the
omission of Yodfat in the Examiner’s statement of the rejection to be a
typographical error.
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have been obvious to short circuit the device of Ulrich ’705, “as Curry
teaches this is beneficial for disabling the device and would prevent
unwanted use after the device should no longer be used to ensure safety.”
Id.
Appellant argues that the cited references fail to teach the limitations
of dependent claim 3. Appeal Br. 10. Regarding Curry, which the Examiner
finds discloses the limitations of claim 3, Appellant argues that Curry
implements disablement or functionality impairment/downgrade in medical
devices “based on the status of a condition of conveyance,” such as late
installment payments. Id. at 12 (Curry ¶ 81). Curry contemplates that
“‘[t]he disabling or impairing of ... functionality of the device ... may be in
such a way as to permanently disable or impair the functionality ... [f]or
instance, electronic components may be deliberately destroyed by creating a
short circuit in the device 102 . . . .’” Id. (quoting Curry ¶ 64). Appellant
argues that Curry’s short circuit is not, however, based on removing the
device from the patient. Id. at 12, 14. According to Appellant, the Examiner
has provided no evidentiary support for the finding that it is well known to
prevent re-use of an adhesive patch, and “preventing use or re-use of a
medical device usually focuses on devices that contain medication or that are
designed to be inserted into a person’s body, i.e., devices other than [an]
adhesive patch.” Id. at 14–15.
The Examiner responds that: (1) the claim does not explicitly require
patch removal to cause short-circuiting, because “the term ‘upon in the
claim is taken to mean on or thereafter in relation to” timing rather than
causation; (2) the claim does not recite how patch removal would cause
short circuiting; (3) Curry’s short circuiting, though triggered to prevent
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delivery/use for other reasons, could be done concurrently with removal and
satisfy the claim (when “upon” is construed as a term of timing, rather than
causation); and (4) “preventing re-use of a device is well-known and the
short-circuiting as taught by Curry prevents such re-use.” Ans. 2–4.
Appellant replies that (1) “[t]he word ‘upon’ is commonly understood
to imply a causative link,” and the Examiner’s position that “upon” should
be construed as merely a time measure of “on or thereafter” is unreasonable;
(2) it is immaterial that the claim does not recite the exact manner in which
removal of the adhesive patch would cause short-circuiting; and (3) “there
has been no evidentiary showing that it is well known to ‘prevent re-use’ of
an adhesive patch.” Reply Br. 3–4.
Appellant has the better argument. The Specification states that “the
adhesive patch 102 may also be configured to disable itself upon removal
from the patient’s skin. For example, . . . the first processor 172 [of the
adhesive patch] may cause the adhesive patch 102 to short-circuit various
critical components . . . .” Spec. ¶ 70. While, during examination, claims
are given their broadest reasonable interpretation, that interpretation must be
consistent with the specification to be reasonable. See Phillips v. AWH
Corp., 415 F.3d 1303, 1316 (Fed. Cir. 2005). Because Appellant’s
Specification speaks explicitly and only to adhesive patch removal causing
short circuiting, the Examiner’s interpretation of the term “upon” to mean on
or thereafter in relation to timing rather than causation (Ans. 3) is
unreasonable. We interpret the term “upon” in claim 3 to indicate causation.
Curry does not disclose adhesive patch removal causing short circuiting, and
the Examiner does not explain adequately why it would have been obvious
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for removal of an adhesive patch to cause short circuiting, and we therefore
do not sustain the rejection of claim 3.
Rejection III
Claims 9 and 23 depend respectively from claims 1 and 18, and recite,
inter alia, the adhesive patch including a transdermal medication dispenser
(depicted in Fig. 12), and the control logic being “configured to adjust a rate
of transdermal medication dispensation from the transdermal medication
dispenser based, at least in part, on a determination that the subcutaneous
injection of the medication is authorized.” Appeal Br. 33, 38 (Claims App.).
The Examiner finds this disclosure in Zhang. Final Act. 8. According to the
Examiner, Zhang discloses “controlling delivery of anesthetic to
accommodate different patient needs.” Id. (citing Zhang ¶¶ 8, 18, 23, 80,
81). The Examiner concludes that it would have been obvious to control
delivery of the anesthetic as in Zhang “to accommodate different patient
needs.” Id.
Appellant argues that the Examiner’s reasoning “fails to address a key
feature,” because Zhang’s medication delivery depends on a “setting
selected by the patient or the physician based on the patient’s degree of
pain,” rather than being based on “a determination that the subcutaneous
injection of the medication [via the first SMDA] is authorized” as claimed.
Appeal Br. 19 (claim 9), 25 (claim 23). Appellant contends that modifying
Ulrich ’705 and Deberadine with Zhang’s delivery controller “would simply
result in an adhesive patch that had Ulrich’s and Deberadine’s injection-
authorization features (for authorizing a separate medication injector to
unlock in order to administer an injection)” and “allow the patient or
physician to manually increase the transdermal medication delivery rate
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based on patient pain.” Appeal Br. 20, 26. The proposed modification
would not result in adjusting a rate of medication dispensation “at least in
part, on a determination that the subcutaneous injection of the medication is
authorized,’ as recited in claim 9.” Id. at 20–21 (“Zhang’s medication
delivery is ultimately governed . . . by the patient or physician’s active
selection of [a] medication delivery rate.”), 26.
The Examiner responds that Zhang “provides rate control to the
patch” that, combined with the teachings of Ulrich ’705 and Deberadine,
“would result in this rate adjustment being at least in part on the
authorization because” the device and its rate control adjustment would not
be used if the device usage is not authorized. Ans. 3 (emphasis omitted).
Appellant replies that the Examiner “artificially generalizes” Yodfat’s
or Deberadine’s unlocking of injection systems not adhered to the patient’s
body as being authorized device usage, and then “artificially narrows”
device usage to apply to Zhang’s transdermal medication delivery dispenser.
Reply Br. 5, 6. According to Appellant, “[a]bsent the guidance of [their]
[S]pecification, there is no suggestion or teaching in the record that would
cause a person of ordinary skill in the art to modify the combination of
Ulrich [’705], Deberadine, and Yodfat to include Zhang’s transdermal
medication delivery dispenser and accompanying user-controllable
medication delivery rate adjustment functionality” so that a patch of the
combined teachings is configured to adjust a medication dispensation rate
“based, at least in part, on a determination that the subcutaneous injection of
the medication is authorized,” as claimed. Id.
Appellant has the better argument. Appellant’s Specification
discloses an embodiment (see Fig. 12) with the adhesive patch having an
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opening 1220 through which an authorized SMDA can deliver medication
subcutaneously, and also a transdermal medication delivery dispenser 1226.
Spec. ¶ 87. The Specification contemplates “adjust[ing] the rate of
transdermal medication delivery in response to a medication injection being
performed,” for example if the transdermal medication interferes with the
injected medication, or if mixing the medications may produce an
undesirable side effect. Id. Thus, the control logic of the adhesive patch
may cause the transdermal medication dispenser to adjust its delivery rate ––
“for example, the transdermal delivery rate may be decreased or turned off
entirely.” Id.
While the references disclose both (1) adhesive patch control logic
permitting subcutaneous medication delivery only when authorization results
from pre-association of the SMDA and the patch, and (2) adjusting a
transdermal medication dispensation rate, the Examiner fails to explain
adequately how the references would be combined to teach or suggest
transdermal delivery being adjusted based on authorization of the
subcutaneous medication delivery. Lacking such an explanation or support
in the prior art, the Examiner has not established prima facie obviousness of
claims 9 and 23.
Rejection IV
Claim 25 depends from claim 18, via claim 24, and recites SMDA-
adhesive patch pre-association information “includes information identifying
SMDAs from at least two different medication manufacturers or at least two
different SMDA manufacturers.” Appeal Br. 38–39 (Claims App.). The
Examiner finds this disclosure in Ulrich ’715. Final Act. 9. According to
the Examiner, Ulrich ’705 discloses transmitting various information
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“including device ID and medication ([0038], [0042]),” but does not disclose
transmitting “manufacturer information.” Id. The Examiner finds, however,
that Ulrich ’715 discloses that “device information includes the
manufacturer ([0241]).” Id. The Examiner concludes that it would have
been obvious to include manufacturer information in Ulrich ’705 “as this
aids in further ensuring the appropriate device and medication is delivered.”
Id.
Appellant notes that Ulrich ’715 discloses:
All of the various injection devices described herein may
contain various electronic components for communicating with
other medical instruments. For example, the injection device
might contain a RFID tag that contains information such as the
dose amount, a time stamp for the injection, the manufacturer,
the batch from which the medication was manufactured, the
device serial number, and other tracking information.
Appeal Br. 27–28 (citing Ulrich ¶ 241). According to Appellant, this
paragraph of Ulrich ’715 merely suggests that “injection devices may have
RFID tags” identifying the injection device manufacturer, rather than
disclosing or suggesting an adhesive patch being “preassociated with
SMDAs from at least two different medication manufacturers or . . . SMDA
manufacturers.” Id. at 28. According to Appellant, “the Examiner focuses
on information preassociated with injection devices rather than information
pre-associated with the adhesive pad.” Id.
The Examiner responds that “the base references already pre-associate
the adhesive patch and the (SMDA) [with certain information,]” and Ulrich
’715 discloses manufacturer information ensuring safe usage and tracking,
such that the combination would suggest manufacturer information being a
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useful addition to the information used for pre-association in the base
references. Ans. 4.
Appellant replies that the Examiner’s response does not address
Appellant’s contention that Ulrich ’715 “‘does not suggest that an adhesive
patch is preassociated with SMDAs from at least two different medication
manufacturers or at least two different SMDA manufacturers.’” Reply Br. 6
(emphasis omitted).
Again, Appellant has the better argument. Although Ulrich ’715
discloses its injection device information including the manufacturer, the
Examiner makes no finding or conclusion that the combined references
disclose or render obvious “information identifying SMDAs from “at least
two different SMDA manufacturers” as claimed. Lacking such a finding or
conclusion, prima facie obviousness has not been established.

DECISION
We AFFIRM the rejection of claims 1, 2, 6–8, 14, 16–18, 21, 22, 24,
26, 27, 29, and 30 as unpatentable over Ulrich ’705, Deberadine, and
Yodfat.
We REVERSE the rejection of claim 3 as unpatentable over Ulrich
’705, Deberadine, Yodfat, and Curry.
We REVERSE the rejection of claims 9 and 23 as unpatentable over
Ulrich ’705, Deberadine, Yodfat, and Zhang.
We REVERSE the rejection of claim 25 as unpatentable over Ulrich
’705, Deberadine, Yodfat, and Ulrich ’715.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv). See
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37 C.F.R. § 41.50(f).

AFFIRMED-IN-PART