Ex Parte Moran et al

Patent Trials and Appeals Board

Jul 5, 2019

15068597 - (D) (P.T.A.B. Jul. 5, 2019)

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.
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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.
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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).
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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
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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.
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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.
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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.
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(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 ....
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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)
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