Ex Parte Lebowitsch et alDownload PDFPatent Trials and Appeals BoardJul 8, 201914057668 - (D) (P.T.A.B. Jul. 8, 2019) Copy Citation 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") 2 Appeal2017-009342 Application 14/057,668 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 3 Appeal2017-009342 Application 14/057,668 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. 4 Appeal2017-009342 Application 14/057,668 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. 5 Appeal2017-009342 Application 14/057,668 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). 6 Appeal2017-009342 Application 14/057,668 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 7 Appeal2017-009342 Application 14/057,668 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 8 Appeal2017-009342 Application 14/057,668 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 9 Appeal2017-009342 Application 14/057,668 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. 10 Appeal2017-009342 Application 14/057,668 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, 11 Appeal2017-009342 Application 14/057,668 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 12 Appeal2017-009342 Application 14/057,668 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 13 Appeal2017-009342 Application 14/057,668 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 14 Appeal2017-009342 Application 14/057,668 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. 15 Appeal2017-009342 Application 14/057,668 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 16 Appeal2017-009342 Application 14/057,668 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 Copy with citationCopy as parenthetical citation