Ex Parte Gordon et alDownload PDFBoard of Patent Appeals and InterferencesJun 18, 201210316679 (B.P.A.I. Jun. 18, 2012) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES ____________ Ex parte TIM H. GORDON, SCOTT W. GISLER, MICHAEL PUMA, RAYMOND L. YAO, and PIERRE CASSIGNEUL ____________ Appeal 2010-003327 Application 10/316,679 Technology Center 2600 ____________ Before JOSEPH F. RUGGIERO, BRADLEY W. BAUMEISTER, and JOHN A. EVANS, Administrative Patent Judges. EVANS, Administrative Patent Judge. DECISION ON APPEAL Appeal 2010-003327 Application 10/316,679 2 Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s rejection of claims 1-18, 36, and 37. We have jurisdiction under 35 U.S.C. § 6(b). We affirm. STATEMENT OF THE CASE1 Appellants describe their invention as follows: A printing device is provided to increase the benefit to patients and healthcare professionals of personal medical monitoring devices, such as blood glucose meters. The printing device receives and analyzes data from a personal medical monitoring device, such as a blood glucose meter, and generates an output based on analysis of the data. The output may include a log of the data entries, or graphical representations of the data, such as pie charts, line charts, histograms, and the like. Furthermore, the data analysis performed by the device can comprise applying therapy rules to the data. In this manner, the device is capable of and providing therapy recommendations in the output based on the analysis of data and application of therapy rules, and to thereby provide therapy guidance for a patient and their respective health care professional. (Abstr.). Claims 1 and 10 are illustrative (footnotes added): 1. A printing device2 for use with a body fluid chemistry analyzer, comprising: 1 Rather than repeat the Examiner’s positions and Appellants’ arguments in their entirety, we refer to the following documents for their respective details: the Abstract (Abstr.) filed December 11, 2002, the Appeal Brief (App. Br.) filed June 22, 2009, the Examiner’s Answer (Ans.) mailed September 30, 2009, and the Reply Brief (Reply) filed November 30, 2009. 2 Claim 1 recites: “[a] printing device . . . comprising . . . a printing device . . . .” Because the distinction between the two recitations of “a printing device” is unclear, upon further prosecution the Examiner should consider whether claim 1 is indefinite under 35 U.S.C. § 112, ¶ 2. Appeal 2010-003327 Application 10/316,679 3 a communication port adapted for communication with a body fluid chemistry analyzer; and a printing device adapted to be controlled by a processor, wherein said processor is adapted to, in response to a single action by a user, retrieve body fluid chemistry data from said body fluid chemistry analyzer, format said data, and print3 said formatted data. 10. A method of retrieving and printing stored blood chemistry data comprising the steps of: in response to a single action by a user, retrieving body fluid chemistry analyzer data from a body fluid chemistry analyzer through a communication port of a printing device, formatting said data, and printing said formatted data. THE REJECTIONS AND CLAIM GROUPING 1. The Examiner rejected claims 1, 3-10, 12-18, 36, and 37 under 35 U.S.C. § 103(a) as being unpatentable over Struble (US 6,745,253 B2, issued June 1, 2004, filed Mar. 24, 2001) in view of Causey (US 6,558,320 B1, issued May 6, 2003, filed Jan. 20, 2000). (Ans. 3). 2. The Examiner rejected claims 2 and 11 under 35 U.S.C. § 103(a) over Struble in view of Causey as applied to claims 1, 10 and 19, and further in view of Rosen (US 2003/0048473 A1, pub. Mar. 13, 2003, filed Sep. 13, 2001). (Ans. 3). 3 Claim 1 recites: “wherein said processor is adapted to . . . print said formatted data.” Because the recitation appears to imply that the inferentially claimed processor (as opposed to the expressly claimed printing device) prints the data, upon further prosecution the Examiner should consider whether claim 1 is indefinite under 35 U.S.C. § 112, ¶ 2. Appeal 2010-003327 Application 10/316,679 4 Appellants argue independent claims 1, 10, 36, and 37 as a group. (App. Br. 11-13). Appellants argue dependent claims 2-4, 6-9, 11-13, and 15-18 are allowable based upon their dependence from one of independent claims 1 and 10. (App. Br. 15). Appellants separately argue the patentability of claims 5 (dependent from claim 1) and 14 (dependent from claim 10) as a group. In view thereof, we first analyze claims 1-4, 6-13, 15-18, 36, and 37. We next analyze claims 5 and 14. CLAIMS 1-4, 6-13, 15-18, 36, AND 37 Contentions Appellants allege the Examiner erred in finding that the combination of Struble and Causey teaches a printing device control processor that operates “in response to a single action by a user” (independent claims 1 and 10) or equivalently, “upon a single action of a user” (independent claims 36 and 37). (App. Br. 11). More specifically, Appellants argue that Struble does not disclose the claimed limitation “in response to a single action by a user” because Struble prompts the user for a preference whether to automatically transmit data to a peripheral device within range or to first prompt the user for a transmit command. Appellants allege that inputting the preference requires an additional input from the user. (App. Br. 12). The Examiner finds that Struble discloses a single action, which is having the user input the transmit command, and thus, Struble does meet the claimed limitation. (Ans. 9). Issue The question is whether the independent claims exclude all user action other than inputting a transmit command. Appeal 2010-003327 Application 10/316,679 5 Analysis As noted above, Appellants argue independent claims 1, 10, 36, and 37, together as a group. (App. Br. 11-13). We therefore select independent claim 10 as representative. (See 37 C.F.R. § 41.37(c)(1)(vii)). The record before us does not set forth either an express disclaimer or a definition in the disclosure that excludes a user from performing one or more preliminary steps. The Examiner notes that Appellants’ Specification, at least at page 7, permits such preliminary steps as powering on the printer and connecting it to a blood fluid chemistry analyzer. (Ans. 10). To be his own lexicographer, a patentee must use a “special definition of the term [that] is clearly stated in the patent specification or file history.” Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1580 (Fed. Cir. 1996); see also CCS Fitness, Inc. v. Brunswick Corp., 288 F.3d 1359, 1366 (“[T]he claim term will not receive its ordinary meaning if the patentee acted as his own lexicographer and clearly set forth a definition of the disputed claim term in either the specification or prosecution history.”). Appellants have not cited the Specification for a specific definition of “single action” that excludes the definition proffered by the Examiner. Moreover, Appellants’ claims recite multiple actions that may comprise a “single action,” e.g., claims 3 and 10 recite “wherein said single action comprises connecting said body fluid chemistry analyzer to said communication port” (emphasis added) and claims 5 and 14 recite “wherein said single action comprises responding to said alert” (emphasis added). The transitional term “comprising” is inclusive or open-ended and does not exclude additional, unrecited elements. “The transition ‘comprising’ in a method claim indicates that the claim is open-ended and allows for Appeal 2010-003327 Application 10/316,679 6 additional steps.” Invitrogen Corp. v. Biocrest Mfg., L.P., 327 F.3d 1364, 1368 (Fed. Cir. 2003). “‘Comprising’ is a term of art used in claim language which means that the named elements are essential, but other elements may be added and still form a construct within the scope of the claim.” See Genentech, Inc. v. Chiron Corp., 112 F.3d 495, 501 (Fed. Cir. 1997). We therefore find that representative claim 10 is broad enough to allow the recited “single action” to comprise multiple steps, such as the user inputting a preference, prior to the user inputting a transmit data command. Accordingly, we sustain the obviousness rejection of representative claim 10, as well as claims 1, 3, 4, 6-9, 12, 13, 15-18, 36, and 37, which are not argued separately. Regarding dependent claims 2 and 11, Appellants present no additional arguments regarding Rosen, but instead merely argue the claims’ allowability based upon their respectively depending from claims 1 and 10. (App. Br. 15). CLAIMS 5 AND 14 Appellants argue claims 5 and 14 together as a group. (App. Br. 13- 15). We therefore select claim 14 as representative. (See 37 C.F.R. § 41.37(c)(1)(vii)). Claim 14 reads as follows: 14. The method of claim 10, wherein said communication port comprises a wireless communication port, and said printing device further comprises a monitoring circuit adapted to poll for an available wireless communication device, to establish a communication link with said available wireless communication device, and to provide an alert to said user indicating the presence of said wireless communication device, Appeal 2010-003327 Application 10/316,679 7 and wherein said single action comprises responding to said alert. Appellants argue that the single action is responding to an alert. (App. Br. 13-14). Appellants argue the Examiner finds responding to an alert as being a single action by a user, but that the Examiner’s rejection of claims 5 and 14 is inconsistent with the rejection of independent claims 1, 10, 36, and 37 because the Examiner there identified inputting a transmit data command as the single action. (Ans. 10). The Examiner’s position is, more specifically, though, that “the user starts the initial transmission of the data on the PDA, which finds a peripheral device that is in range and able to receive and output the selected data. Once the PDA is alerted that a printer in range has been found and is able to perform the above mentioned tasks, the PDA responds by transmitting the data to the device as disclosed in Column 4, Lines 36-40. Thus, the single action includes submitting the data to have it transmitted to a printer once one is found in range. (Ans. 10). For the reasons discussed above in relation to the reasonableness of the Examiner’s interpretation of the term “single action,” we conclude that further method steps are not excluded by the claim recitations. As such, Appellants have not persuaded us of error in the Examiner’s rejection of representative claim 14. We therefore sustain the obviousness rejection of claim 14, as well as claim 5, which was not separately argued. DECISION The Examiner’s decision rejecting claims 1-18, 36, and 37 under 35 U.S.C. § 103 is AFFIRMED. Appeal 2010-003327 Application 10/316,679 8 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). AFFIRMED babc Copy with citationCopy as parenthetical citation