Ex Parte Moran et alDownload PDFPatent Trials and Appeals BoardJul 5, 201915068597 - (D) (P.T.A.B. Jul. 5, 2019) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. 15/068,597 24505 7590 Daniel J. Swirsky 11 Reuven Street FILING DATE 03/13/2016 07/05/2019 Beit Shemesh, 9954419 ISRAEL FIRST NAMED INVENTOR Dov Moran 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. 2654-US 6613 EXAMINER AFRIFA-KYEI, ANTHONY D ART UNIT PAPER NUMBER 2685 MAIL DATE DELIVERY MODE 07/05/2019 PAPER 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. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte DOV MORAN, YIFTAH BEN AHARON, and MENAHEM LASSER Appeal 2018-008113 Application 15/068,597 Technology Center 2600 Before ALLEN R. MacDONALD, MICHAEL J. ENGLE, and IFTIKHAR AHMED, Administrative Patent Judges. MacDONALD, Administrative Patent Judge. DECISION ON APPEAL 1 STATEMENT OF CASE Appellants appeal under 35 U.S.C. § 134(a) from a final rejection of claims 1, 2, 4-9, 12, and 16-27. Appellants have cancelled claims 3, 10, 11, 13-15, and 28-31. Oct. 22, 2017 Amendment 5; Dec. 11, 2017 Advisory Act. Attachment. We have jurisdiction under 35 U.S.C. § 6(b). We newly reject claims 5 and 23-27. We AFFIRM-IN-PART. 1 Appellants indicate the real party in interest is Glucome Ltd. App. Br. 2. Appeal 2018-008113 Application 15/068,597 Illustrative Claims Illustrative claims 1, 4, 5, and 6 under appeal read as follows ( emphasis, formatting, and bracketed material added): 1. A method for administering an insulin dose to a subject compnsmg: [A.] administering, by an insulin administering device, an insulin dose to said subject; [B.] generating, by said insulin administering device, at least one message containing a status update; and [C.] sending, by the insulin administering device, said at least one message to a computing device via a communication channel, [i.] said computing device being separate from said insulin administering device, [ii.] wherein said communication channel is one of[:] [a.] a visual communication channel and [b.] a capacitive communication channel. 4. The method of claim 1 wherein said communication channel is a visual communication channel. 2 5. The method of claim 1 wherein said communication channel is a capacitive communication channel. 6. The method of claim 1 further comprising receiving, by the computing device, a status update from the insulin administering device. 2 Appellants have written claims 4 and 5 (16 and 23) as "a visual communication channel" or "a capacitive communication channel." To avoid indefiniteness concerns and maintain consistency with Appellants' Specification, we read these as "[the] visual communication channel" or "[the] capacitive communication channel" of claim 1 ( claim 12); rather than as the introduction of an additional visual communication channel, or an additional capacitive communication channel. 2 Appeal 2018-008113 Application 15/068,597 Nitzan Yodfat Nagar Hampapuram References3 US 2007 /0024425 Al Feb. 1,2007 US 2007/0106218 Al May 10, 2007 US 2014/0207099 Al July 24, 2014 US 2016/0212783 Al July 21, 2016 Rejections A. The Examiner rejects claims 1, 2, 4-6, 12, 16, 17, and 23 under 35 U.S.C. § 102(a)(2) as being anticipated by Nagar. Final Act. 2-7. We determine that Appellants' arguments group claims 1, 2, 6, 12, and 17 (App. Br. 5-8); claims 4 and 16 (App. Br. 11-12); and claims 5 and 23 (App. Br. 8-11). We select claims 6, 4, and 5 as representative.4 Except for our ultimate decision, we do not address claims 1, 2, 12, 16, and 17 further herein. 5 3 All citations herein to these references are by reference to the first named inventor only. 4 We choose narrower claim 6 as representative of claims 1, 2, 6, 12, and 17. Since we agree with the Examiner's determination as to this narrow claim, broader claim 1 must likewise be anticipated. Cf In re Muchmore, 433 F.2d 824, 825 (CCPA 1970) ("Since we agree with the board's conclusion of obviousness as to these narrow claims, the broader claims must likewise be obvious."). 5 Claim 23 is addressed herein with a new rejection of claim 5. 3 Appeal 2018-008113 Application 15/068,597 B. The Examiner rejects claims 7-9 and 18-22 under 35 U.S.C. § 103 as being unpatentable over Nagar in various combinations with other references. Final Act. 4-7. Appellants do not present separate arguments for claims 7-9 and 18- 22. Thus, the rejections of these claims tum on our decisions as to claim 6 (which is representative of claim 1, as discussed above) and claim 4. Except for our ultimate decision, we do not discuss the § 103 rejections of claims 7- 9 and 18-22 further herein. C. The Examiner rejects claims 24 and 25 under 35 U.S.C. § 103 as being unpatentable over the combination ofNagar and Hampapuram; and rejects claims 26 and 27 under 35 U.S.C. § 103 as being unpatentable over the combination ofNagar and Yodfat. Final Act. 7. Appellants do not present separate arguments for these claims. Thus, these rejections tum on our decision as to claim 5. Issues on Appeal Did the Examiner err in rejecting claims 6, 4, and 5 as being anticipated? ANALYSIS We have reviewed the Examiner's rejections in light of Appellants' Appeal Brief arguments that the Examiner has erred. 4 Appeal 2018-008113 Application 15/068,597 A. Appellants raise the following argument6 in contending that the Examiner erred in rejecting claim 6 under 35 U.S.C. § 102(a)(2). [N]o reference is provided indicating where Nagar shows sending a message from an insulin administering device to a separate computing device. Complete detail in the case of current claim [ 6] must include "sending, by the insulin administering device, said at least one message to a computing device [. "] App. Br. 6-7 ( emphasis omitted). We are unpersuaded by Appellants' argument. At paragraph 270, Nagar describes an insulin syringe based drug delivery device in contactless communication with an optimizer using, for example, an RFID tag or passive tag as shown in Figure 9B. Appellants were informed that paragraph 270 shows sending a message when in discussing the "status update" (i.e., message) of claim 6, the Examiner finds "Nagar discloses receiving by the computing device a status updated from the insulin administering device (Paragraphs 270-272)." Final Act. 3. 6 Appellants' Appeal Brief presents the argument as though claim 1 is representative. However, as discussed above, we have selected claim 6 (which depends from claim 1) as the representative claim for claims 1, 2, 6, 12, and 17 (which Appellants do not separately argue). 5 Appeal 2018-008113 Application 15/068,597 B. Appellants also raise the following arguments in contending that the Examiner erred in rejecting claim 6 under 35 U.S.C. § 102(a)(2). In the final rejection of September 7, 2017, the Examiner implicitly agreed that Nagar does not in fact disclose a visual or capacitive device-to-device interface. Instead, the Examiner attempts to justify his continued rejection of claims 1 and 12 on other grounds, stating that "Nagar discloses the communication method being optical (paragraph 221 ), which {it} is well known in the art can be communicated visually as well as with electronic devices, and hence can be interpreted as a visual communication channel." The Examiner provides no support for this assertion. App. Br. 8 ( emphasis added). We are unpersuaded by Appellants' argument. The Examiner finds that Nagar discloses "wherein said communication channel may be acoustic (audio), visual ( Optical/LED! display) and Capacitive communication (NFC i[n] some instances) (Paragraph 27, 83)." Final Act. 2 (emphasis added). We determine that an artisan would understand the optical communication method ofNagar to be a visual communication method as required by claim 6. The terms "optical" and "visual" are synonyms. Roget's 21st Century Thesaurus, Third Edition Copyright© 2013 by the Philip Lief Group. Thus, we determine Nagar describes the required one of a visual communication channel and a capacitive communication channel. C. Appellants raise the following argument in contending that the Examiner erred in rejecting claim 4 under 35 U.S.C. § 102(a)(2). Appellant notes that in paragraph 0221, N agar is not describing a visual communication channel between a computing 6 Appeal 2018-008113 Application 15/068,597 device and an insulin administering device. In fact, Nagar does not describe any visual communication channel for communicating between the computing device and the insulin administering device such as recited by the instant claims. Rather, Nagar explicitly describes a "user interface module ... for interfacing with the user[."] Indeed, Nagar represents the UI module 128U in Fig. 1 as an optional, separate element alongside a distinct contactless communication module 128R .... Nagar's contactless COM Module 128R may be understood to communication directly between devices, this is described as an RFID channel (see paragraph 0225). Nowhere does Nagar describe or suggest that his contactless communication module 128R uses the LED display of the user interface module 128U. App. Br. 12. We are unpersuaded by Appellants' argument. Although Appellants correctly point out that the user interface cannot be the visual communication channel, Appellants overlook that the Examiner also cited to paragraph 83 ofNagar as describing an optical communication method. Final Act. 2. We agree with the Examiner as discussed supra. D. Appellants raise the following argument in contending that the Examiner erred in rejecting claim 5 under 35 U.S.C. § 102(a)(2). [C]laim[] 5 ... include[ s] the limitation that the device communicates using a capacitive communication channel. The Examiner incorrectly states that N agar discloses the communication channel being a capacitive communication because it describes NFC, as NFC (Near Field Communication) is not a capacitive technology. 7 Appeal 2018-008113 Application 15/068,597 Examples of capacitive communication channels are described in detail in the current specification at least in pages 13-17. Near Field Communication (NFC), such as described in Nagar, has none of these characteristics and is not related to capacitive communication at all. App. Br. 8-9 ( emphasis omitted). [T]here is no suggestion of capacitive communication in Nagar. App. Br. 11. We are persuaded by Appellants' argument that NFC (Near Field Communication) is not a capacitive technology. However, we are unpersuaded by Appellants' assertion that there is no suggestion of capacitive communication in Nagar. As noted supra, paragraph 270 of Nagar describes an insulin syringe based drug delivery device in contactless communication with an optimizer using, for example, an RFID tag or passive tag as shown in Figure 9B. A capacitive tag is a known form of a passive tag. Such a known passive tag is described in the newly cited Nitzan reference. Passive RFID labels based on capacitive coupling generally include a low cost carbon ink antenna and low cost component assembly, resulting in cheaper RFID labels. Such a capacitive coupling label offers the advantage of functioning even when it is partially damaged. Nitzan ,-J 4. The substitution ofNitzan's known passive capacitive tag for the passive tag in Nagar would have been obvious to one of ordinary skill in the art at the time of Appellants' invention. 8 Appeal 2018-008113 Application 15/068,597 Pursuant to our authority under 3 7 C.F .R. § 41. 50(b ), we designate our analysis above as a new ground of rejection of claims 5 and 23 under 35 U.S.C. § 103 as being unpatentable over the combination ofNagar and Nitzan. ADDITIONAL NEW GROUNDS OF REJECTION Pursuant to our authority under 3 7 C.F .R. § 41. 50(b ), we designate our analysis above in combination with the Examiner's claims 24 and 25 analysis (Final Act. 7) as a new ground of rejection of claims 24 and 25 under 35 U.S.C. § 103 as being unpatentable over the combination ofNagar, Nitzan, and Hampapuram. Pursuant to our authority under 3 7 C.F .R. § 41. 50(b ), we designate our analysis above in combination with the Examiner's claims 26 and 27 analysis (Final Act. 7) as a new ground of rejection of claims 26 and 27 under 35 U.S.C. § 103 as being unpatentable over the combination ofNagar, Nitzan, and Y odfat. CONCLUSIONS (1) The Examiner has not erred in rejecting claims 1, 2, 4, 6, 12, 16, and 17 as being anticipated under 35 U.S.C. § 102(a)(2). (2) The Examiner has not erred in rejecting claims 7-9 and 18-22 as being unpatentable under 35 U.S.C. § 103. (3) Appellants have established that the Examiner erred in rejecting claims 5 and 23 as being anticipated under 35 U.S.C. § 102(a)(2). (4) Appellants have established that the Examiner erred in rejecting claims 24-27 as being unpatentable under 35 U.S.C. § 103. 9 Appeal 2018-008113 Application 15/068,597 (5) We newly conclude that claims 5 and 23-27 are unpatentable under 35 U.S.C. § 103 as being obvious. (6) Claims 1, 2, 4-9, 12, and 16-27 are not patentable. DECISION The Examiner's rejections of claims 1, 2, 4, 6-9, 12, and 16-22 are affirmed. The Examiner's rejections of claims 5 and 23 as being anticipated under 35 U.S.C. § 102(a)(2) are reversed. The Examiner's rejections of claims 24-27 as being unpatentable under 35 U.S.C. § 103 are reversed. Claims 5 and 23-27 are newly rejected. 37 C.F.R. § 41.50(b) This decision contains a new ground of rejection pursuant to 37 C.F.R. § 41.50(b), which provides that "[a] new ground of rejection pursuant to this paragraph shall not be considered final for judicial review." Section 41.50(b) also provides that Appellants, WITHIN TWO MONTHS FROM THE DATE OF THE DECISION, must exercise one of the following two options with respect to the new grounds of rejection to avoid termination of the appeal as to the rejected claims: (1) Reopen prosecution. Submit an appropriate amendment of the claims so rejected or new Evidence relating to the claims so rejected, or both, and have the matter reconsidered by the examiner, in which event the prosecution will be remanded to the examiner .... 10 Appeal 2018-008113 Application 15/068,597 (2) Request rehearing. Request that the proceeding be reheard under § 41.52 by the Board upon the same Record .... No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § l .136(a)(l )(iv). AFFIRMED-IN-PART 37 C.F.R. § 41.50(b) 11 Copy with citationCopy as parenthetical citation