Ex Parte SatoDownload PDFPatent Trial and Appeal BoardFeb 26, 201311075875 (P.T.A.B. Feb. 26, 2013) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE 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 APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO. 11/075,875 03/10/2005 Yoshiaki Sato 2660.0004C (SUZ0021-US) 4708 92270 7590 02/27/2013 Edell, Shapiro & Finnan LLC 1901 Research Blvd Suite 400 Rockville, MD 20850 EXAMINER DORNBUSCH, DIANNE ART UNIT PAPER NUMBER 3773 MAIL DATE DELIVERY MODE 02/27/2013 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 YOSHIAKI SATO ____________________ Appeal 2011-002565 Application 11/075,875 Technology Center 3700 ____________________ Before: JENNIFER D. BAHR, BENJAMIN D. M. WOOD, and MITCHELL G. WEATHERLY, Administrative Patent Judges. BAHR, Administrative Patent Judge. DECISION ON APPEAL Appeal 2011-002565 Application 11/075,875 2 STATEMENT OF THE CASE Yoshiaki Sato (Appellant) appeals under 35 U.S.C. § 134 from the Examiner’s decision rejecting claims 1-13. Appellant cancelled claim 14 in the Amendment filed July 1, 2010. We have jurisdiction under 35 U.S.C. § 6(b). An oral hearing in accordance with 37 C.F.R. § 41.47 was held on January 13, 2013. We AFFIRM. The Claimed Subject Matter Claim 1, reproduced below, is illustrative of the claimed subject matter. 1. A method of lowering blood glucose levels, comprising: applying a predetermined compression pressure to at least one of tightened areas of a user near the proximal ends of his or her limbs to restrict blood flow through the limbs receiving said predetermined compression pressure; applying the predetermined compression pressure at a pressure appropriate to lower a blood glucose level of the user; and maintaining the predetermined compression pressure for a predetermined period of time appropriate to lower a blood glucose level of the user. Evidence The Examiner relied on the following evidence in rejecting the claims on appeal: Sato US 6,149,618 Nov. 21, 2000 Craig C. Freudenrich, Ph.D., How Exercise Works (Feb. 17, 2004), http://web.archive.org/web/20040217145709/health.howstuffworks.com/ sportsphysiology2.htm (last visited Feb. 24, 2009) (hereinafter “Freudenrich”). American Diabetes Association, Exercise and Blood Glucose (Sep. 23, 2004), http://web.archive.org/web/20040923135336/http://www.diabetes.org/youth Appeal 2011-002565 Application 11/075,875 3 -zone/physical-activity-bg.jsp (last visited Feb. 24, 2009) (hereinafter “ADA”). Appellant’s Admitted Prior Art, Spec., p. 4, ll. 16-19 (hereinafter “AAPA”). Rejections1 Appellant requests our review of the following rejections by the Examiner: I. claims 1-10 under 35 U.S.C. § 102(b) as anticipated by Sato, as evidenced by Freudenrich, ADA, and AAPA and II. claims 11-13 under 35 U.S.C. § 102(b) as anticipated by or, in the alternative, under 35 U.S.C. § 103(a) as obvious over, Sato, as evidenced by Freudenrich, ADA, and AAPA. ISSUE The issue presented in this appeal is whether the Examiner erred in finding that practicing the prior art “Pressure Muscle Training Method” (see Spec. 1, ll. 15-20) described in Sato inherently lowers a blood glucose level of the user and thus anticipates the subject matter of claims 1 and 5. See Ans. 4. FACTS PERTINENT TO THE ISSUE The Examiner found that Sato discloses applying a predetermined pressure to at least one tightened area of a user near the proximal ends of the user’s limbs (fig. 1) to restrict blood flow through the limbs receiving the pressure, applying the compression pressure at a pressure appropriate to lower a blood glucose level of the user, and maintaining the predetermined compression pressure for a predetermined period of time appropriate to lower the blood glucose level of the user. Ans. 4, 7-8. The Examiner found 1 The Examiner withdrew the rejection under 35 U.S.C. § 112, first paragraph. Ans. 7. Appeal 2011-002565 Application 11/075,875 4 that practicing Sato’s method inherently lowers the blood glucose level of the user as a natural consequence of physiology. Id. at 4. In support of the inherency finding, the Examiner relied upon ADA’s statement that exercise can lower blood glucose levels. Id.; see ADA, first para. To further support the inherency finding, the Examiner pointed out that Sato’s device used in the Sato method applies pressure such as that disclosed in the present application. Ans. 4; see Sato, col. 2, ll. 35-49 (disclosing that use of the tightening tool in accordance with the Sato method blocks the flow of blood, generating lactic acid and fatigue). As evidenced by Freudenrich (p. 2, “Glycogen-Lactic Acid System”), lactic acid is a product of the breaking down of glucose in anaerobic (i.e., without oxygen) metabolism.2 Ans. 4. Thus, the Examiner reasoned that the lactic acid generation described by Sato as a consequence of performing the “Pressure Muscle Training Method” indicates that glucose was metabolized, thereby reducing the blood glucose level. Id. With respect to the claimed application of a predetermined compression pressure appropriate to lower blood glucose levels, the Examiner found that Sato’s disclosure that the device has tightening force (compression pressure) indicating means to permit the user to confirm optimum force/compression describes using a predetermined pressure. Sato, col. 2, ll. 50-54 (describing visual confirmation of an optimum tightening force); col. 5, ll. 46-47 (describing a condition with blood vessel rise as 2 Freudenrich does not disclose that higher lactic acid levels indicate more glycogen (not glucose) was metabolized, as Appellant asserts (Reply Br. 2). Freudenrich also does not support Appellant’s contention that “higher lactic acid levels go hand in hand with higher glucose levels” (id.). Rather, according to Freudenrich, higher lactic acid levels go hand in hand with higher anaerobic glucose metabolism. Freudenrich, p. 2. Appeal 2011-002565 Application 11/075,875 5 proper and a condition with no blood vessel rise as indicative of excess tightening). With respect to the claimed predetermined time appropriate to lower a blood glucose level, the Examiner found that Sato discloses carrying out the muscle training for 15 minutes (col. 6, l. 8) or 30 minutes (col. 5, l. 35). Ans. 8. We observe that following one of these disclosed steps as prescribed by Sato requires maintaining the predetermined compression pressure for the exemplary times of around 10 minutes (for the arm) or around 20 minutes (for the groin) disclosed in Appellant’s Specification. See Spec. 11, ll. 23- 26. Furthermore, the Examiner pointed out that Appellant’s Specification explicitly states that if a person follows the “Pressure Muscle Training Method” of Sato, it will lower the person’s blood glucose. Ans. 5; see Spec. 4, ll. 16-19 (stating that “as a result of daily studies, the present inventor has found that the Pressure Muscle Training Method can lower a blood glucose level of a user who follows the Pressure Muscle Training Method”); id. at 5, ll. 2-4 (stating that “a blood glucose level of the user can be lowered when the user acts according to the conventional Pressure Muscle Training Method”). The Examiner additionally pointed out that Appellant’s Specification also states that the tightening device of Sato can be used to practice the method of lowering blood glucose levels as well as the method of treating and preventing diabetes. Ans. 5; Spec. 9, ll. 4-10 (stating “a compression strip or a compression device disclosed in [Sato] may be used to practice the method of lowering blood glucose levels as well as the method of treating and preventing diabetes according to the present application”). Thus, in summary, the Examiner found that Appellant Appeal 2011-002565 Application 11/075,875 6 “admitted that by using the method and device of Sato the blood glucose level of the user would inherently be lowered.” Ans. 5. PRINCIPLES OF LAW “[M]erely discovering and claiming a new benefit of an old process cannot render the process again patentable.” In re Woodruff, 919 F.2d 1575, 1578 (Fed. Cir. 1990). “It is well settled that a prior art reference may anticipate when the claim limitations not expressly found in that reference are nonetheless inherent in it. Under the principles of inherency, if the prior art necessarily functions in accordance with, or includes, the claimed limitations, it anticipates.” In re Cruciferous Sprout Litig., 301 F.3d 1343, 1349 (Fed. Cir. 2002) (citations and internal quotation marks omitted). “Inherency, however, may not be established by probabilities or possibilities. The mere fact that a certain thing may result from a given set of circumstances is not sufficient.” In re Robertson, 169 F.3d 743, 745 (Fed. Cir. 1999) (citations and internal quotation marks omitted). “Inherency is not necessarily coterminous with knowledge of those of ordinary skill in the art. Artisans of ordinary skill may not recognize the inherent characteristics or functioning of the prior art.” Cruciferous, 301 F.3d at 1349 (quoting MEHL/Biophile Int'l Corp. v. Milgraum, 192 F.3d 1362, 1365 (Fed. Cir. 1999)). When relying on the theory of inherency, the USPTO has the initial burden of providing a basis in fact and/or technical reasoning to reasonably support the determination that the allegedly inherent characteristic reasonably flows from the teachings of the applied prior art. See In re King, 801 F.2d 1324, 1327 (Fed. Cir. 1986). Once the USPTO establishes a prima facie case of anticipation based on inherency, the burden shifts to the Appeal 2011-002565 Application 11/075,875 7 applicant to prove that the prior art does not possess the characteristic at issue. See In re King, 801 F.2d 1324, 1327 (Fed. Cir. 1986). ANALYSIS Based on the findings above, the Examiner has provided a basis in fact and technical reasoning to reasonably support the determination that practicing the prior art “Pressure Muscle Training Method” described by Sato will reduce a blood glucose level of the user, thereby treating or preventing diabetes. Thus, the Examiner has established a prima facie case of anticipation of the subject matter of claim 1 and of claim 5, including the steps of applying the compression pressure at a pressure appropriate to lower a blood glucose level of the user and maintaining the predetermined compression pressure for a predetermined period of time appropriate to lower a blood glucose level of the user. Appellant has not come forth with any evidence or technical reasoning to prove that Sato’s method will not inherently lower the user’s blood glucose level. The fact that Sato may not have intended or recognized the additional benefit of glucose level reduction achieved by following the prior art “Pressure Muscle Training Method” does not negate anticipation, as Appellant’s argument (App. Br. 6) suggests. See, e.g., Toro Co. v. Deere & Co., 355 F.3d 1313, 1321 (Fed. Cir. 2004) (“[T]he fact that a characteristic is a necessary feature or result of a prior-art embodiment (that is itself sufficiently described and enabled) is enough for inherent anticipation, even if that fact was unknown at the time of the prior invention.”). CONCLUSION The Examiner did not err in finding that practicing the prior art “Pressure Muscle Training Method” described in Sato inherently lowers a blood glucose level of the user and thus anticipates the subject matter of Appeal 2011-002565 Application 11/075,875 8 claims 1 and 5. We sustain the rejection of claims 1 and 5 and of dependent claims 2-4 and 6-10, for which Appellant did not present any separate argument. We also sustain the rejection of claims 11-13, for which Appellant relies on the same arguments asserted for claim 1. DECISION The Examiner’s decision rejecting claims 1-13 is affirmed. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. § 1.136(a)(1)(iv). AFFIRMED mls Copy with citationCopy as parenthetical citation