Ex Parte Gordon et al

Board of Patent Appeals and Interferences

Jun 18, 2012

10316679 (B.P.A.I. Jun. 18, 2012)

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

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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.
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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.
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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.
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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
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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,
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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.
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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

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