Ex Parte Lebowitsch et al

Patent Trials and Appeals Board

Jul 8, 2019

14057668 - (D) (P.T.A.B. Jul. 8, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/057,668 10/18/2013
127350 7590 07/10/2019
Steptoe & Johnson LLP
1330 Connecticut Avenue NW
Washington, DC 20036
FIRST NAMED INVENTOR
Jonathan Lebowitsch
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
20622.0030 (IDF-30) 4445
EXAMINER
SOREY, ROBERT A
ART UNIT PAPER NUMBER
3626
NOTIFICATION DATE DELIVERY MODE
07/10/2019 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):
hfox@steptoe.com
rgreenfeld@steptoe.com
ipdocketing@steptoe.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JONATHAN LEBOWITSCH,
CHRISTINE MATAKOVICH, BENJAMIN YOUNG,
IAN HARRINGTON, and CHRISTOPHER HERBST
Appeal2017-009342
Application 14/057,668 1
Technology Center 3600
Before BRUCE T. WIEDER, TARA L. HUTCHINGS, and
ROBERT J. SILVERMAN, Administrative Patent Judges.
SILVERMAN, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
The Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's
decision rejecting claims 19-25 and 28-36. We have jurisdiction under
35 U.S.C. § 6(b). An oral argument was held on June 26, 2019.
We AFFIRM.
1 The Appellants identify Medidata Solutions, Inc. as the real party in
interest. Appeal Br. 3.
Appeal2017-009342
Application 14/057,668
ILLUSTRATIVE CLAIM
19. A clinical trial design system for generating a
clinical trial design specification, comprising:
a titration design interface configured to provide titration
configuration options for selection, including titration level sets
and titration limiting rules, the titration limiting rules being
used for the duration of the clinical trial and selected from one
or more of (a) enforcing up and down single-step titrations at
titration levels set by a user and (b) limiting the number of
times a subject may be titrated up or down;
a rules engine, controlled by a processor, configured to
receive selected titration configuration options and to compute
at least one treatment combination set comprising a plurality of
treatment parameters, wherein the treatment combination set is
based upon the selected titration configuration options and at
least one treatment parameter comprises titration information;
and
a treatment assignment interface, comprising the
treatment combination set, configured to receive and display the
treatment combination set for selection and to generate the
clinical trial design specification based upon selections made
from said treatment combination set.
CITED REFERENCES
The Examiner relies upon the following references:
Pickar et al. US 2003/0108938 Al June 12, 2003
(hereinafter "Pickar")
Liang et al. US 2010/0151014 Al June 17, 2010
(hereinafter "Liang")
Young et al. US 2011/0307267 Al Dec. 15, 2011
(hereinafter "Young")
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REJECTIONS
I. Claims 19-25 and 28-36 are rejected under 35 U.S.C. § 101 as
ineligible subject matter.
II. Claims 19-25 and 28-36 are rejected under 35 U.S.C. § 103(a)
as unpatentable over Young, Pickar, and Liang.
FINDINGS OF FACT
The findings of fact relied upon, which are supported by a
preponderance of the evidence, appear in the following Analysis.
ANALYSIS
Subject-Matter Eligibility
Under 35 U.S.C. § 101, an invention is patent-eligible if it claims a
"new and useful process, machine, manufacture, or composition of matter."
35 U.S.C. § 101. Yet, subject matter belonging to any of the statutory
categories may, nevertheless, be ineligible for patenting. The Supreme
Court has interpreted § 101 to exclude laws of nature, natural phenomena,
and abstract ideas, because they are regarded as the basic tools of scientific
and technological work, such that including them within the domain of
patent protection would risk inhibiting future innovation premised upon
them. Ass 'nfor Molecular Pathology v. Myriad Genetics, Inc., 569 U.S.
576, 589 (2013).
Of course, "[a]t some level, 'all inventions ... embody, use, reflect,
rest upon, or apply"' these basic tools of scientific and technological work.
Alice Corp. v. CLS Banklnt'l, 573 U.S. 208,217 (2014) (internal citation
omitted). Accordingly, evaluating ineligible subject matter, under these
judicial exclusions, involves a two-step framework for "distinguish[ing]
between patents that claim the buildin[g] block[ s] of human ingenuity and
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those that integrate the building blocks into something more, thereby
transform[ing] them into a patent-eligible invention." Id. (internal quotation
marks and citation omitted). The first step determines whether the claim is
directed to judicially excluded subject matter (such as a so-called "abstract
idea"); the second step determines whether there are any "additional
elements" recited in the claim that ( either individually or as an "ordered
combination") amount to "significantly more" than the identified judicially
excepted subject matter itself. Id. at 217-18.
The USPTO recently published revised guidance on the application of
§ 101, in accordance withjudicial precedent. 2019 Revised Patent Subject
Matter Eligibility Guidance, 84 Fed. Reg. 50, 52 (Jan. 7, 2019) ("2019
Revised Guidance"). Under the 2019 Revised Guidance, a claim is "directed
to" an abstract idea, only if the claim recites any of (1) mathematical
concepts, (2) certain methods of organizing human activity, and (3) mental
processes - without integrating such abstract idea into a "practical
application," i.e., without "apply[ing], rely[ing] on, or us[ing] the judicial
exception in a manner that imposes a meaningful limit on the judicial
exception, such that the claim is more than a drafting effort designed to
monopolize the judicial exception." Id. at 52-55. The considerations
articulated in MANUAL OF PATENT EXAMINING PROCEDURE§ 2106.05(a)-(c)
and ( e )-(h) ("MPEP") bear upon whether a claim element ( or combination
of elements) integrates an abstract idea into a practical application. Id. at 55.
A claim that is "directed to" an abstract idea constitutes ineligible subject
matter, unless the claim recites an additional element ( or combination of
elements) amounting to significantly more than the abstract idea. Id. at 56.
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Although created "[i]n accordance with judicial precedent" (id. at 52),
the 2019 Revised Guidance enumerates the analytical steps differently than
the Supreme Court's Alice opinion. Step 1 of the 2019 Revised Guidance
addresses whether the claimed subject matter falls within any of the statutory
categories of§ 101. Id. at 53-54. Step 2A, Prong One, concerns whether
the claim at issue recites ineligible subject matter and, if an abstract idea is
recited, Step 2A, Prong Two, addresses whether the recited abstract idea is
integrated into a practical application. Id. at 54-55. Unless such integration
exists, the analysis proceeds to Step 2B, in order to determine whether any
additional element ( or combination of elements) amounts to significantly
more than the identified abstract idea. Id. at 56.
In the present Appeal, neither the Examiner nor the Appellants
question the satisfaction of Step 1 of the 2019 Revised Guidance - i.e., that
the claims are drawn to subject matter within the scope of§ 101.
In relation to Step 2A, Prong One, of the 2019 Revised Guidance, the
Examiner regards independent claims 19, 28, 32, and 35 as expressing "at
least the abstract idea of (1) displaying computed treatment combination
set(s) based on selected treatment configuration options, and/or at least the
abstract idea of (2) generating a clinical trial design specification based upon
selections made from a treatment combination set." Final Action 2-3.
According to the Examiner, these two identified concepts "at least correlate
to the court identified abstract idea of (A) using categories to organize, store,
and transmit information, and/or the court identified abstract idea of
(B) comparing new and stored information and using rules to identify
options." Id. at 3.
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Viewed through the lens of the 2019 Revised Guidance, the
Examiner's identified abstract ideas are embodied, for example, by the
following limitations2 of claim 19:
provide titration configuration options for selection, including
titration level sets and titration limiting rules, the titration
limiting rules being used for the duration of the clinical trial and
selected from one or more of (a) enforcing up and down single-
step titrations at titration levels set by a user and (b) limiting the
number of times a subject may be titrated up or down;
... compute at least one treatment combination set comprising
a plurality of treatment parameters, wherein the treatment
combination set is based upon the selected titration
configuration options and at least one treatment parameter
comprises titration information; and
... display the treatment combination set for selection and to
generate the clinical trial design specification based upon
selections made from said treatment combination set.
These limitations entail the design of a clinical trial for the administration of
a therapy by "physician[ s ]" ( or clinicians) to patients ( or "subject[ s ]"), as
described in the Specification:
An example of a clinical treatment system is a system
that helps design and administer clinical trials. A sponsor ( e.g.,
a drug manufacturer whose drug is being tested) or a contract
research organization (CRO), which may execute clinical trials
on behalf of a sponsor, may develop a protocol for a clinical
trial. The clinical trial protocol may include a dosing schedule
to specify when, and how much of, a therapy is to be
administered to clinical trial subjects as well as dosing factors
that influence what dosage a subject may receive. In some
cases, clinical trials may include graduated or conditional
dosing schedules that alter the prescribed therapy dose as the
2 Because the Appellants argue all claims in the Appeal as a group, with
respect to the rejection under § 101, we refer to exemplary claim 19 for
analysis herein. See 37 C.F.R. § 41.37(c)(l)(iv).
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clinical trial progresses, a process known as titration. Titration
may be based on scheduled or unscheduled physician visits or
on specific conditional rules or both. Dosing information from
the clinical trial protocol may be used to develop a detailed visit
schedule, which often includes a schedule of every combination
of every treatment arm according to each dosing factor and
titration level detailed in the clinical trial protocol. Such a
schedule may comprise tens of thousands of combinations that
require hours of labor to create corresponding rows and
columns in visit schedule spreadsheets. Upon completion of
such a visit schedule spreadsheet, a clinical trial sponsor or
CRO may spend several hours on quality control to validate the
visit schedule for accuracy. A developer with computer
programming skills then must hard code the details of the visit
schedule into a computerized clinical trial system for clinical
trial site personnel to use. Such complexities lead to error-
prone designs and can extend the clinical trial development
time by several weeks or longer, resulting in substantially
increased costs. Additionally, severe risks to patients may be
involved when errors occur in the subject treatment assignment,
compromising study integrity.
Spec. ,i 16. Notwithstanding the Appellants' contrary view (see
Supplemental Brief 7-9), the above-identified claimed features describe the
coordination of human actors - precisely what the 2019 Revised Guidance
calls "managing personal behavior or relationships or interactions between
people (including social activities, teaching, and following rules or
instructions)," which is a variety of judicially excepted abstract ideas -
specifically, "[ c Jertain methods of organizing human activity." 2019
Revised Guidance, 84 Fed. Reg. at 52. Accordingly, under Step 2A, Prong
One, exemplary claim 19 recites an abstract idea.
The Appellants assert that the rejection improperly relies upon
concepts "derived from" non-precedential case decisions of the Federal
Circuit. Appeal Br. 9. This argument is unpersuasive, in view of the
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foregoing discussion of the 2019 Revised Guidance-which states that it is
"[i]n accordance with judicial precedent" (84 Fed. Reg. at 52).
The Appellants also contend that the Examiner does not properly
articulate any abstract idea, because the rejection employs portions of the
claim language itself to characterize the abstract concepts at issue. Appeal
Br. 5-6; see also Reply Br. 5-6. Yet, "[ a ]n abstract idea can generally be
described at different levels of abstraction," Apple, Inc. v. Ameranth, Inc.,
842 F.3d 1229, 1240 (Fed. Cir. 2016), and the Appellants have not explained
why the Examiner's use of the claim language (in order to describe the
claims) results in any error in the analysis.
The Appellants also argue that, because the "claimed invention does
not tie up or preempt the generation of all or even most clinical trial design
specifications, it is patent eligible." Appeal Br. 13; see also Reply Br. 11-
12. This argument is unpersuasive. "While preemption may signal patent
ineligible subject matter, the absence of complete preemption does not
demonstrate patent eligibility." Ariosa Diagnostics, Inc. v. Sequenom, Inc.,
788 F.3d 1371, 1379 (Fed. Cir. 2015).
Accordingly, we are not persuaded of error in the aspects of the
rejection corresponding to Step 2A, Prong One, of the 2019 Revised
Guidance.
Turning to Step 2A, Prong Two, of the 2019 Revised Guidance, unless
a claim, reciting a judicial exception (such as an abstract idea), "integrates
the recited judicial exception into a practical application of that exception,"
the claim is "directed to" the judicial exception. 2019 Revised Guidance, 84
Fed. Reg. at 53. The analysis of such an "integration into a practical
application" involves "[i]dentifying ... any additional elements recited in
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the claim beyond the judicial exception(s)" and "evaluating those additional
elements individually and in combination to determine whether they
integrate the exception into a practical application." Id. at 54-55.
"[W]hether an additional element or combination of elements integrate the
exception into a practical application should be evaluated on the claim as a
whole." Id. at 55 n.24.
The Appellants assert that "rules-based claims," such as those in the
Appeal, "are explicitly patent eligible," in view of McRO, Inc. v. Bandai
Namco Games America Inc., 837 F.3d 1299 (Fed. Cir. 2016). Appeal Br.
10. Yet, McRO did not tum on the merely formal use of"rules." Rather, the
outcome in that case depended upon the specific substance of those "rules"
that the court determined to constitute a technological improvement:
Here, the claims are limited to rules with specific
characteristics. As the district court recognized during claim
construction, "the claims themselves set out meaningful
requirements for the first set of rules: they 'define[] a morph
weight set stream as a function of phoneme sequence and times
associated with said phoneme sequence."' They further require
"applying said first set of rules to each sub-sequence ... of
timed phonemes." Whether at step one or step two of the Alice
test, in determining the patentability of a method, a court must
look to the claims as an ordered combination, without ignoring
the requirements of the individual steps. The specific, claimed
features of these rules allow for the improvement realized by
the invention.
McRO, 837 F.3d at 1313 (citations omitted).
The Appellants also argue that particular claim elements give rise to a
technological improvement:
Appellant[s'] claimed invention specifically targets the titration
aspects of such clinical trial design specification. Computing
the treatment combination set in the claims is based on one or
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more titration limiting rules that "enforc[ e] up and down single-
step titrations at titration levels set by a user" and "limit[ ] the
number of times a subject may be titrated up or down," as
recited in independent claims 19, 28, 32, and 35.
Supplemental Brief 10-12; see also Appeal Br. 11-12 ("[T]he system uses
titration limiting rules and inputs from a user regarding treatment options to
compute a treatment combination set and generate an improved clinical trial
design specification based upon selections made from the treatment
combination set."); Reply Br. 6-9. Yet, the Appellants' argument relies
upon claim limitations identified, above, as describing the recited abstract
idea - including, for example, the following limitations of claim 19:
provide titration configuration options for selection, including
titration level sets and titration limiting rules, the titration
limiting rules being used for the duration of the clinical trial and
selected from one or more of (a) enforcing up and down single-
step titrations at titration levels set by a user and (b) limiting the
number of times a subject may be titrated up or down;
... compute at least one treatment combination set comprising
a plurality of treatment parameters, wherein the treatment
combination set is based upon the selected titration
configuration options and at least one treatment parameter
comprises titration information; and
... display the treatment combination set for selection and to
generate the clinical trial design specification based upon
selections made from said treatment combination set.
Therefore, the Appellants do not identify "additional elements recited in the
claim beyond the judicial exception(s)," as Step 2A, Prong Two, requires.
2019 Revised Guidance, 84 Fed. Reg. at 54-55.
Accordingly, we are not persuaded of error in the rejection, with
regard to the issues corresponding to Step 2A, Prong Two.
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Turning to Step 2B, the Appellants do not identify any additional
claim elements ( or combination thereof) that might amount to significantly
more than any recited abstract idea. Instead, the Appellants argue that the
Examiner does not adequately support the position that the claims lack such
additional elements amounting to significantly more than an abstract idea,
because the only additional claim elements are well-understood, routine, or
conventional features. See Supplemental Brief 3-6. The Appellants rely, in
particular, upon the Federal Circuit's decisions in in Berkheimer v HP Inc.,
881 F.3d 1360 (Fed. Cir. 2018), andAatrix Software Inc. v. Green Shades
Software Inc., 882 F.3d 1121 (Fed. Cir. 2018), which express the principle
that "[t]he question of whether a claim element or combination of elements
is well-understood, routine and conventional to a skilled artisan in the
relevant field is a question of fact," Berkheimer, 881 F.3d at 1368.
The Appellants (Supplemental Brief 4) focus upon the following
statement from the Final Office Action (page 3), as purportedly lacking
adequate support under Berkheimer:
Claims 19, 28, 32, and 35 do not include additional elements
that are sufficient to amount to significantly more than the
judicial exception because the claimed "processor", "interface",
"runtime system", and "storage medium" are generic
components that are configured to perform activities that are
well-understood, routine, and conventional activities previously
known to the industry (e.g., providing and receiving
configuration options; computing, providing, receiving, and
displaying data; and generating information).
Contrary to the Appellants' position, however, courts have regarded basic
computer functions, such as the additional elements that the Examiner
identifies, as insufficient to establish significantly more than an abstract
idea, per Step 2B. See Interval Licensing, LLC v. AOL, Inc., 896 F.3d 1335,
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1345 (Fed. Cir. 2018) ( the claim elements "merely recite routine and
conventional steps in carrying out the well-established practice of accessing
data from an external source and displaying that data on a user's device" that
"offer 'nothing more than generic, pre-existing computer functionality"')
( citation omitted); Versata Dev. Group, Inc. v. SAP Am., Inc., 793 F .3d
1306, 1334, (Fed. Cir. 2015) (arranging, storing, and retrieving information
"are well-understood, routine, conventional activities previously known to
the industry"); Intellectual Ventures I LLC v. Capital One Bank (USA), 792
F.3d 1363, 1370 (Fed. Cir. 2015) ("[T]he interactive interface limitation is a
generic computer element"); OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d
1359, 1363 (Fed. Cir. 2015) (relying on a computer to perform routine tasks
more quickly or more accurately is insufficient to render a claims patent-
eligible ); Bancorp Servs., L.L.C. v. Sun Life Assurance Co., 687 F.3d 1266,
1278 (Fed. Cir. 2012) ("The computer required by some of Bancorp's claims
is employed only for its most basic function, the performance of repetitive
calculations, and as such does not impose meaningful limits on the scope of
those claims."); In re Katz Interactive Call Processing Patent Litig., 639
F.3d 1303, 1316 (Fed. Cir. 2011) ("Absentapossiblenarrowerconstruction
of the terms 'processing,' 'receiving,' and 'storing,' ... those functions can
be achieved by any general purpose computer without special
programming.")
In addition, the rejection states that the "[ c ]laimed elements do not
add meaningful limitations to the identified abstract idea(s) claimed beyond
generally linking the judicial exception to a particular technological
environment, that is, implementation via computers." Final Action 4.
Rather, "[t]he claimed elements directed toward receiving and displaying
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data are insignificant extra solution activities to the judicial exception," such
that "the claims do not amount to significantly more than the underlying
abstract idea." Id. According to the Supreme Court, "the prohibition against
patenting abstract ideas 'cannot be circumvented by attempting to limit the
use of the formula to a particular technological environment' or adding
'insignificant postsolution activity."' Bilski v. Kappas, 561 U.S. 593, 610-
11 (2010) (quoting Diamond v. Diehr, 450 U.S. 175, 191-92 (1981)).
In view of the foregoing, we are not persuaded of error regarding the
aspects of the rejection corresponding to Step 2B of the 2019 Revised
Guidance.
Therefore, for the reasons provided above, we sustain the rejection of
claims 19-25 and 28-36 under 35 U.S.C. § 101.
Obviousness
The Appellants argue independent claims 19, 28, 32, and 35 as a
group. See Appeal Br. 14-18. Claim 19 is selected for analysis herein. See
37 C.F.R. § 41.37(c)(l)(iv).
The Appellants present two arguments, relating to the obviousness
rejection, neither of which persuades us of Examiner error.
First, the Appellants argue that the cited references fail to teach or
suggest claim 19' s limitation of "titration limiting rules being used for the
duration of the clinical trial." Appeal Br. 15-17. The Appellants contend
that Liang teaches a clinical study that includes a "Titration Phase" of up to
45 days, in which the dosage administered to patients is titrated up or down,
in order to find a "dose that managed the subject's pain"; but - because the
dosage would be maintained (and no longer titrated up or down) during the
subsequent "Maintenance Phase," which the Appellants characterize as "the
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bulk of the clinical trial" - Liang does not teach the claimed "titration
limiting rules being usedfor the duration of the clinical trial." Id. at 16
(citing Liang ,-J,-J 236-242) (emphasis added). The Appellants explain:
Titration in Liang's study occurs only as a separate, preliminary
phase as a way to determine inclusion in the clinical trial and to
set a dosage for the clinical trial. In contrast, in Appellant[s']
invention, as part of the clinical trial design specification, a
patient is subject to titration limiting rules "for the duration of
the clinical trial." This is an important distinction, because
unauthorized or unaccounted for titrations during a trial are
difficult to keep track of and can cause errors in the results of a
clinical trial. See Specification ,-J 0003.
Id. at 17.
Notwithstanding the Appellants' reading of Liang, the Examiner
states that it would have been obvious for a person of ordinary skill in the
art, at the relevant time, to have modified Liang, by extending the dosage-
altering practice of the Titration Phase, for use throughout a clinical trial,
based upon the motivation of evaluating the efficacy, safety, and tolerability
of a drug. Answer 10 ( citing Liang ,-J,-J 234, 239); see also Final Action 7,
12, 15, 19-20,28-30.
The Appellants concede that Liang ,-J 234 discloses the need to assess
the efficacy, safety, and tolerability of a drug, but contend that such would
not provide sufficient motivation to modify the reference, because "Liang
discloses titration only during a separate, preliminary titration," whereas
claim 19 recites "titration limiting rules being used for the duration of the
clinical trial." Reply Br. 14.
The Appellants' criticism of the Examiner's reason for modifying
Liang amounts essentially to a denial that Liang may be modified, as
proposed. But, the Appellants do not articulate any reason why Liang may
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not be so modified. Therefore, the Appellants' first argument does not
persuade us of error in the rejection of claim 19.
The Appellants' second argument, asserting error in the rejection,
contends that the cited references fail to teach or suggest claim 19's
"titration design interface" limitation. 3 See Appeal Br. 17-18.
According to the Examiner, the "titration design interface" limitation
is met by the combination of Young with Liang:
Young teaches a webpage to configured randomization
design for a clinical trial where the treatment design includes
defining article dispensation metrics (see: Young, Fig. 1; Fig.
4; Fig. 11; Fig. 16; and paragraph 62, 76-78, 121, and 148).
Hence, Young is relied upon to teach the design interface. As
per the titration as aspect of the design interface, Liang was
relied upon to teach a titration phase of primary treatment
design calling for daily dose increases and rules for limiting
titrations outside of a treatment design, and allowing for only
two back-titrations outside of said treatment design (see:
Liang, paragraph 239). In combination, Young and Liang meet
the broadly claimed features in question.
Answer 11.
The Appellants acknowledge that Young teaches an interface, but
emphasize that it is a "randomization interface," not a "titration design
interface" and "there is no disclosure in Liang of any design interface,
titration or otherwise." Appeal Br. 17. Further, although Liang discloses
titration techniques, the Appellants argue that Liang teaches away from any
combination with Young:
[T]here is no motivation to combine Liang with Young because
Liang teaches away from such a combination. Liang' s titration
3 The "titration design interface" limitation does not appear in independent
claim 28; therefore, this argument does not apply to claim 28 and claims 29-
31 depending therefrom.
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phase is merely a preliminary phase to determine the dose to be
used in the maintenance phase, which is the main part of the
clinical trial in which Liang tests the efficacy of its
pharmaceutical composition, whereas Young discloses
randomization during the main part of the clinical trial coupled
with supply management based on such randomization. There
is no disclosure or suggestion in either reference that titration
may be used during the main part of the clinical trial, and, in
fact, if titration were to be used in Young it would be
detrimental to its randomization and supply management
purposes because titration would generate an imbalance in the
clinical trial and in the supply chain for the trial.
Id. at 17-18; see also Reply Br. 15.
Because the rejection combines teachings of Young and Liang, it is
insufficient for the Appellants (see Appeal Br. 17) to point out that one
reference lacks a feature taught by another reference - i.e., the absence of
"titration" in Young (this being taught by Liang) and the absence of a
"design interface" in Liang (this being taught by Young). See In re Keller,
642 F.2d 413,426 (CCPA 1981) ("[O]ne cannot show nonobviousness by
attacking references individually where, as here, the rejections are based on
combinations of references.")
Additionally, the Appellants do not adequately show that Liang
teaches away from its combination with Young. "A reference may be said
to teach away when a person of ordinary skill, upon reading the reference,
would be discouraged from following the path set out in the reference, or
would be led in a direction divergent from the path that was taken by the
applicant." In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994). Even if aspects
of the Young embodiment might be diminished, as a result of the proposed
combination, this would not amount to teaching away therefrom. After all,
"a given course of action often has simultaneous advantages and
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disadvantages, and this does not necessarily obviate motivation to combine."
Medichem, S.A. v. Rolabo, S.L., 437 F.3d 1157, 1165 (Fed. Cir. 2006). See
also In re Urbanski, 809 F.3d 1237, 1244 (Fed. Cir. 2016) ("[O]ne of
ordinary skill would have been motivated to pursue the desirable properties
taught by Wong, even if that meant foregoing the benefit taught by Gross.
And Urbanski's claims do not require Gross's benefit that is arguably lost by
combination with Wong.")
Significantly, "[a] person of ordinary skill is also a person of ordinary
creativity, not an automaton." KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398,
421 (2007). Yet, the Appellants' argument focuses essentially on "whether
the features of a secondary reference may be bodily incorporated into the
structure of the primary reference," whereas the test for obviousness must
assess "what the combined teachings of the references would have suggested
to those of ordinary skill in the art." Keller, 642 F.2d at 425. See also
Optivus Tech., Inc. v. Ion Beam Applications SA, 469 F.3d 978, 989-90
(Fed. Cir. 2006) ("Clearly, one of ordinary skill in the art would not simply
remove the beryllium plate and direct the high intensity proton beam at a
patient without further calculation or adjustment. Nothing about the [prior
art reference] can be said to discourage a person having ordinary skill in the
art from modifying it to enable proton therapy or to lead the skilled artisan in
a path divergent from the path taken by [ the patentee].")
As such, we are not persuaded of error in the Examiner's position that
a person of ordinary skill in the art, at the relevant time, would have
regarded the proposed combination of Young and Liang as obvious and
would have had a sufficient reason to combine the references' teachings to
arrive at claim 19 's "titration design interface."
17
Appeal2017-009342
Application 14/057,668
Accordingly, in view of the foregoing, we sustain the rejection of
claims 19-25 and 28-36 under 35 U.S.C. § 103(a).
DECISION
We AFFIRM the Examiner's decision rejecting claims 19-25 and 28-
36 under 35 U.S.C. § 101.
We AFFIRM the Examiner's decision rejecting claims 19-25 and 28-
36 are rejected under 35 U.S.C. § 103(a).
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § l .136(a).
AFFIRMED
18