Ex Parte Angelides

Patent Trial and Appeal Board

Jun 2, 2017

14338221 (P.T.A.B. Jun. 2, 2017)

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.
14/338,221 07/22/2014 Kimon J. Angelides EOS-Priortz 1044
93599 7590
Eric P. Mirabel, JD, LLM
3783 Darcus Street
Houston, TX 77005
06/06/2017 EXAMINER
SEREBOFF, NEAL
ART UNIT PAPER NUMBER
3626
NOTIFICATION DATE DELIVERY MODE
06/06/2017 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):
emirabel @ come ast. net
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte KIMON J. ANGELIDES
Appeal 2016-000610
Application 14/338,2211
Technology Center 3600
Before DONALD E. ADAMS, JEFFREY N. FREDMAN, and
ULRIKH W. JENKS, Administrative Patent Judges.
ADAMS, Administrative Patent Judge.
DECISION ON APPEAL
This Appeal2 under 35 U.S.C. § 134(a) involves claims 1—11 and 13—
17 (App. Br. 5; Ans. 2). Examiner entered rejections under 35 U.S.C. § 101,
35 U.S.C. § 112, second paragraph, the written description of 35 U.S.C.
1 Appellant identifies the real party in interest as “EosHealth, Inc.” (App.
Br. 3.)
2 Appellant contends that this Appeal is related to Appeal 2014-002929
(Application 13/485,849), now US 8,812,244; Appeal 2014-003996
(Application 13/901,588), now abandoned; Appeal 2014-004568
(Application 13/656,692), now abandoned; Appeal 2014-008033
(Application 13/705,341), now abandoned; Appeal 2015-005439
(Application 14/474,172), now abandoned. In addition, we recognize that
this Appeal is related to pending Appeal 2016-001276 (Application
14/307,906).
Appeal 2016-000610
Application 14/338,221
§ 112, first paragraph and 35 U.S.C. § 103(a). We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM and enter a NEW GROUND OF REJECTION.
STATEMENT OF THE CASE
Appellant’s disclosure relates to a method of using messages to
increase diabetic patient compliance with a recommended regime of diet,
exercise, health-related checking or chemical indicator testing (see generally
App. Br. 24—29; Spec. 2—4). Claims 1, 9, and 16 are representative and
reproduced below:
1. A method of increasing diabetic patient compliance with a
recommended regime of diet, exercise, health-related checking
or chemical indicator testing, wherein the patient is in an
interactive system in which a glucometer carried by the patient
communicates to a server which sends back messages from a
message bank (containing at least 100 educational messages
and at least 100 advisory messages) to the patient, and wherein
advisory messages advise the patient to do one or more of: test
for chemical or biochemical indicators, take action with respect
to eating or exercising, and initiate a health-related check, and
wherein educational messages advise the user of health risks
and benefits based on test results or health-related check results
or of the risks and benefits of action or inaction but do not
recommend any action, the method comprising:
placing all messages in a messages bank;
associating certain advisory messages each with a different
patient blood glucose level, so that when particular levels are
received particular advisory messages are sent;
associating certain educational messages in the bank each with
either a different patient blood glucose level or a different
advisory message and wherein one or more of the following
rules are applied:
(i) when a first particular patient blood glucose level is received
a first particular educational message is also sent within a
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designated period and also sent a number of times thereafter at
a specified frequency, or,
(ii) when a first particular advisory message is sent the first
particular educational message or another educational message
is also sent within a designated period and also sent a number
of times thereafter at a specified frequency, and
(iii) when the first particular patient blood glucose level is
received a second particular advisory message is not sent for at
least a designated period, or
(iv) when the first particular advisory message is sent a second
particular educational message is not sent for at least a
designated period;
providing the patient access to the system and receiving at the
server blood glucose levels from the patient's glucometer and
sending advisory and educational messages to the patient in
accordance with rules (i) to (iv) above.
(App. Br. 24—25.)
9. A method of increasing diabetic patient compliance with a
recommended regime of diet, exercise, health-related checking
or chemical indicator testing, wherein the patient is in an
interactive system in which a glucometer carried by the patient
communicates to a server which sends back messages from a
message bank (containing (a) at least 100 educational messages,
(b) at least 100 advisory messages, and (c) at least 10 messages
acknowledging performance of an action recommended by a
prior message to the patient) to the patient, and wherein
advisory messages (type (b)) advise the patient to do one or
more of: test for chemical or biochemical indicators, take action
with respect to eating or exercising, and initiate a health-related
check, and wherein educational messages (type (a)) advise the
user of health risks and benefits based on test results or health-
related check results or of the risks and benefits of action or
inaction but do not recommend any action, the method
comprising:
placing all messages in a message bank;
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associating certain type (c) messages in the message bank each
with a different patient blood glucose level or time-averaged
level, so that after a particular blood glucose level or time-
averaged level is received by the server, particular type (c)
messages are sent;
associating certain advisory messages in the message bank each
with a different patient blood glucose level, so that when
particular levels are received particular advisory messages are
sent;
associating certain educational messages in the message bank
each with either a different patient blood glucose level or a
different advisory message and wherein the following rules are
applied:
associating certain educational messages in the message bank
each with either a different patient blood glucose level or a
different advisory message and wherein the following rules are
applied:
(i) when a first particular patient blood glucose level is received
a first particular educational message is also sent within a
designated period and also sent a number of times thereafter at
a specified frequency, or,
(ii) when a first particular advisory message is sent the first
particular educational message or another educational message
is also sent within a designated period and also sent a number
of times thereafter at a specified frequency, and
(iii) when the first particular patient blood glucose level is
received a second particular advisory message is not sent for at
least a designated period, or
(iv) when the first particular advisory message is sent a second
particular educational message is not sent for at least a
designated period;
providing the patient access to the system and receiving at the
server blood glucose levels from the patient's glucometer and
sending advisory and educational messages to the patient in
accordance with rules (i) to (iv) above; and
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wherein the selection of the first particular advisory message,
and the first or second particular educational message or
another educational message, is based on the effectiveness of
said messages in causing patients to take actions which make
their BG levels move into a desired range or in causing patients
to take actions which maintain their BG levels in a desired
range.
(App. Br. 25-27.)
16. A method of increasing diabetic patient compliance with a
recommended regime of diet, exercise, health-related checking
or chemical indicator testing, wherein the patient is in an
interactive system in which a glucometer carried by the patient
communicates to a server which sends back messages from a
message bank (containing (a) at least 100 educational messages,
(b) at least 100 advisory messages, and (c) at least 10 messages
acknowledging performance of an action recommended by a
prior message to the patient) to the patient, and wherein
advisory messages (type (b)) advise the patient to do one or
more of: start or stop exertion, test for chemical or biochemical
indicators, take action with respect to eating or exercising, and
initiate a health-related check, and wherein educational
messages (type (a)) advise the user of health risks and benefits
based on test results or health-related check results or of the
risks and benefits of action or inaction but do not recommend
any action, the method comprising:
placing all messages in a message bank;
associating certain type (c) messages in the message bank each
with a different patient blood glucose level or time-averaged
level, so that after a particular blood glucose level or time-
averaged level is received by the server, particular type (c)
messages are sent;
associating certain advisory messages in the message bank each
with a different patient blood glucose level, so that when
particular levels are received particular advisory messages are
sent;
associating certain educational messages in the message bank
each with either a different patient blood glucose level or a
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different advisory message and wherein the following rules are
applied:
associating certain educational messages in the message bank
each with either a different patient blood glucose level or a
different advisory message and wherein the following rules are
applied:
(i) when a first particular patient blood glucose level is received
a first particular educational message is also sent within a
designated period and also sent a number of times thereafter at
a specified frequency, or,
(ii) when a first particular advisory message is sent the first
particular educational message or another educational message
is also sent within a designated period and also sent a number
of times thereafter at a specified frequency, and
(iii) when the first particular patient blood glucose level is
received a second particular advisory message is not sent for at
least a designated period, or
(iv) when the first particular advisory message is sent a second
particular educational message is not sent for at least a
designated period;
providing the patient access to the system and receiving at the
server blood glucose levels from the patient's glucometer and
sending advisory and educational messages to the patient in
accordance with rules (i) to (iv) above; and
wherein the selection of the first particular advisory message,
and the first or second particular educational message or
another educational message, is based on the effectiveness of
said messages in causing patients to take actions which make
their BG levels move into a desired range or in causing patients
to take actions which maintain their BG levels in a desired
range; and wherein the more effective messages are sent to
patients more frequently than less effective messages and
wherein message frequency of sending to patients is governed
by weighting the messages in the message bank in accordance
with their effectiveness.
(App. Br. 27-29.)
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The claims stand rejected as follows:
Claims 1—11 and 13—17 stand rejected under 35 U.S.C. § 112, second
paragraph.
Claims 9—11 and 13—17 stand rejected under the written description of
35 U.S.C. § 112, first paragraph.
Claims 1—5, 9—11, 16, and 17 stand rejected under 35 U.S.C. § 103(a)
as unpatentable over the combination of Lawless3 and Angelides.4
Claims 6—8 and 13—15 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over the combination of Lawless, Angelides, and Lipsky.5
Claims 1—11 and 13—17 stand rejected under 35 U.S.C. § 101, as
directed to non-statutory subject matter.
DEFINITENESS:
ISSUE
Does the preponderance of evidence support Examiner’s conclusion
that Appellant’s claims are indefinite?
3 Lawless, US 8,032,397 B2, issued Oct. 4, 2011.
4 Angelides, US 2013/0035563 Al, published Feb. 7, 2013.
5 Lipsky et al., US 2006/0184421 Al, published Aug. 17, 2006.
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ANALYSIS
Claims 1, 9, and 16— “rules”'.
Examiner finds that the “rules” set forth in Appellant’s independent
claims 1, 9, and 16 “are not listed in the alternative” and, therefore, “[i]t is
not clear from the claim language whether the one or more options are
(i) or (ii) or (iii) or (iv)
[(i) or (ii)] and [(iii) or (iv)]
(i) or [(ii) and (iii)] or (iv)”
(Final Act. 7—8 (alteration original).) Appellant contends that a person of
ordinary skill in this art, would clearly understand the claims to mean the
selection of at least one rule from: (a) the group of (i) or (ii) and (b) the
group of (iii) or (iv) (see App. Br. 16; Reply Br. 4—5). We agree with
Appellant. Amgen, Inc. v. Chugai Pharm. Co., Ltd., 927 F.2d 1200, 1217
(Fed. Cir. 1991).
Claims 9 and 16— “the selection of the first particular advisory message
Examiner finds that the phrase “wherein the selection of the first
particular advisory message,” set forth in Appellant’s independent claims 9
and 16, lacks antecedent basis, because “advisory messages were never
selected previously” (Final Act. 8). We are not persuaded. As Appellant
explains, notwithstanding Examiner’s assertion to the contrary, the “rules,”
which precede the phrase at issue provide the required antecedent basis for
the phrase (see App. Br. 16; cf. Final Act. 8; Ans. 10). See Amgen, 927 F.2d
at 1217.
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Claims 9 and 16— “based on the effectiveness of said messages
Examiner finds that the phrase “is based on the effectiveness of said
messages,” as set forth in Appellant’s independent claims 9 and 16, lacks
antecedent basis in the claims, because “[t]his is the first introduction of
effectiveness” (Final Act. 8). We are not persuaded. As Appellant explains,
the phrase is clear when “the entire clause [is read in the context of the
claim, which] reads as follows: ‘is based on the effectiveness of said
messages in causing patients to take actions which make their BG levels
move into a desired range or in causing patients to take actions which
maintain their BG levels in a desired range’” (App. Br. 16—17; see Reply Br.
5; cf Final Act. 8; Ans. 10-11). See Amgen, 927 F.2d at 1217.
Claims 2 and 10— “tests”'.
Examiner finds that the phrase “of the results of a test for chemical or
biochemical indicators,” as set forth in Appellant’s claims 2 and 10, unclear,
because “[i]t is not clear what ‘of the results of a test. . .’ refers to” (Final
Act. 8). In this regard, Examiner asserts that the performance of a test is
different than advising a patient to perform a test (Ans. 11). We are not
persuaded. As Appellant explains, “[t]he preamble of claims 1 and 9 . . .
[provide] antecedent basis for testing for these indicators and obtaining the
results of such testing” (App. Br. 17; see Reply Br. 5; cf Final Act. 8; Ans.
11). See Amgen, 927 F.2d at 1217.
CONCFUSION OF FAW
The preponderance of evidence fails to support Examiner’s conclusion
that Appellant’s claims are indefinite. The rejection of claims 1—11 and 13—
17 under 35U.S.C. § 112, second paragraph is reversed.
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Written Description:
ISSUE
Does the preponderance of evidence on this record support
Examiner’s finding that Appellant’s Specification fails to provide written
descriptive support for the claimed invention?
ANALYSIS
Examiner finds that Appellant’s Specification lacks written
descriptive support for a “process of selecting a message based upon the
effectiveness of [the] message” (Final Act. 7; see also Ans. 10-11). We are
not persuaded. As Appellant explains:
Although it is not expressly stated, in order for a message to be
sent, it necessarily must first be “selected” — as set forth in the
claims. Accordingly, there is no written description problem,
as it is clear from reading the claims themselves (even without
the specification) that there was “possession of’ message
selection.”
(App. Br. 16; see Reply Br. 4.) In this regard, Appellant contends that “a
selection step is inherent in the claim itself because the missing descriptive
matter is necessarily present in the claims and specification such that one
skilled in the art would recognize such a disclosure” (Reply Br. 4). Stated
differently, Examiner failed to establish an evidentiary basis on this record
to support a finding that the selection of a message based upon the
effectiveness of the message would not have been readily apparent to those
of ordinary skill, who are familiar with this art. See Capon v. Eshhar, 418
F.3d 1349, 1357 (Fed. Cir. 2005).
CONCLUSION OF LAW
The preponderance of evidence on this record fails to support
Examiner’s finding that Appellant’s Specification fails to provide written
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descriptive support for the claimed invention. The rejection of claims 9—11
and 13—17 under the written description provision of35U.S.C. § 112, first
paragraph is reversed.
Obviousness:
ISSUE
Does the preponderance of evidence relied upon by Examiner support
a conclusion of obviousness?
FACTUAL FINDINGS (FF)
FF 1. Angelides “relates to a system for managing diabetes by analyzing
blood glucose levels and other patient information to formulate queries,
advice and educational materials displayed on a portable device carried by
the patient” (Angelides 12; see Final Act. 12 (Angelides discloses a
“method of receiving blood glucose level and sending messages [] where the
blood glucose levels originate from a blood glucometer. . . .”)).
FF 2. Examiner finds that:
Angelides, paragraphs 55 - 70, describes a message selection
algorithm that is individually tailored to a user. Angelides,
paragraph 7 states, “What is needed is an integrated system of
education, monitoring and advising on glucose testing, diet,
exercise and drug administration, all in a portable and
convenient, form for the patient, to maximize system utilization
and thus effective disease management.”
(Final Act. 15.)
FF 3. Lawless “relates to the field of prescription therapy management and
compliance, as well as wireless and database technology,” wherein “[t]he
use of accessible consumer technologies[, such as portable compliance
devices and compliance communications systems,] makes it easy for the
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average consumer to incorporate the system into their daily routine, thereby
achieving the system’s end goals of enhancing prescription therapy
management and increasing prescription compliance” (Lawless 1: 12—14 and
2: 53—56 and 65—67; id. at 6: 32—36 (Lawless discloses that “[wjireless
prescription reminders, messages, and other electronic transmissions are
routed from [a] wireless messaging platform [] to [] wireless carriers,
wireless networks, and ultimately to the original users and other individuals
on their wireless phones and devices”)).
FF 4. Examiner finds that Lawless discloses a:
method comprising:
• placing all messages in a messages bank (column 10, line
9 - column 11, line 3 — data aggregation and content
linking);
• associating certain advisory messages each with a
different patient data (column 10, line 9 — column 11, line
3 —content linking),
o so that when particular data are received particular
advisory messages are sent (column 10, line 9 —
column 11, line 3 — system execution logic and
column 11, lines 56 - 67, ETL);
• associating certain educational messages in the bank each
with either a different patient data or a different advisory
message and wherein one or more of the following rules
are applied (column 14, line 65 — column 15, line 17 and
column 19, lines 29 — 67, message generation logic):
(i) when
o a first particular patient data is received (column 15,
lines 7 — 16 and 26 — 46 prescription)
o a first particular educational message (column 17,
lines 3 — 13, additional information included or pill
images, links to websites) is
■ also sent within a designated period (column
15, lines 26 — 46 10am to lam) and
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■ also sent number of times thereafter at a
specified frequency (column 15, lines 26 — 46
meal times), or,
(ii) when
o a first particular advisory message is sent (figure 9c
please take 20mg of Lipitor)
■ the first particular educational message is
(figure 9c please visit) or
o another education message is also sent within a
designated period (column 15, lines 26 — 46 10am to
lam) and
■ also sent number of times thereafter at a
specified frequency (column 15, lines 26 — 46
meal times), and
(iii) when
o the first particular patient data is received (column 18,
lines 41 —45, emergency)
o a second particular advisory message is not sent for at
least a designated period (column 18, lines 46 — 67
notifying without advising or an infinite period), or
(iv) when
o the first particular advisory message is sent (column
14, lines 65 - column 15, line 16 — prescription
leading to dosing)
o a second particular educational message is not sent for
at least a designated period (column 14, lines 65 —
column 15, line 16 no additional contacts indefinite or
until preferences changed);
• providing the patient access to the system (column 10,
lines 9-67, enrollment) and
• receiving at the server patient data (column 14, lines 65 -
column 15, line 53) and
• transmitting advisory and educational messages to the
patient in accordance with rules (i) and (ii) above (column
14, lines 65 — column 15, line 53 notifications/ reminders
and column 17, lines 2 — 20 additional information).
(Final Act. 9—11.)
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FF 5. Examiner finds that Lawless does not explicitly disclose a device and
method for use in monitoring blood glucose levels and relies on Angelides to
make up for this deficiency in Lawless (see Final Act. 11—12; see also Ans.
11-13).
FF 6. Examiner finds that the combination of Lawless and Angelides do
not explicit teach sending more effective messages to patients more
frequently than less effective messages and relies on Lipsky to make up for
this deficiency in the combination of Lawless and Angelides (Final Act. 18,
citing Lipsky 147).
FF 7. Lipsky discloses:
[T]he facility reallocates the relative weights of the advertising
messages for the current placement based upon the [prior]
comparison performed [] step []. When an advertising message
presentation request is received requesting an advertising
message to present in the current placement, these weights are
used to determine which advertising message to return. The
weight for a particular advertising message reflects the relative
likelihood that that [sic] advertising message will be returned in
response to each such request. A number of embodiments of
the facility utilize various reallocation schemes []. In some
embodiments, one or more advertising messages are “dropped”
by assigning them a weight of zero, thereby increasing the
relative weights of the advertising message that are not
dropped. In these embodiments, any number of advertising
messages may be dropped: a single lowest-performing
advertising messages, the bottom-performing n advertising
messages, the lowest-performing half of the advertising
messages, all but the highest-performing advertising message,
etc. In other embodiments, the facility incrementally adjusts
the weight of each advertising message, incrementally reducing
the weights of lower-performing advertising messages, and
incrementally increasing the weights of higher-performing
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advertising messages. Additional reallocation schemes may
also be employed.
(Lipsky 143; see also Final Act. 18, citing Lipsky H 43^47.)
ANALYSIS
The rejection over the combination of Lawless and Angelides:
Based on the combination of Lawless and Angelides, Examiner
concludes that, at the time Appellant’s invention was made, it would have
been prima facie obvious to incorporate Lawless’s messaging methodology
into the device and method suggested by Angelides (see Final Act. 12; FF 1—
5).
Claim T.
Appellant contends that the printed matter in the messages disclosed
by Lawless are neither advisory nor educational messages as required by
Appellant’s claimed method (App. Br. 18). We are not persuaded. On this
record, Angelides discloses advisory and educational messages within the
scope of Appellant’s claimed invention (see, e.g., Angelides 112) and
Lawless discloses a method, device, and rules for organizing and distributing
those messages to the user of a device, such as that disclosed by Angelides,
for the express purpose of making “it easy for the average consumer to
incorporate the system into their daily routine, thereby achieving the
system’s end goals of enhancing prescription therapy management and
increasing prescription compliance” (see FF 1—5; see generally Ans. 11; cf
Reply Br. 6—7). “The combination of familiar elements according to known
methods is likely to be obvious when it does no more than yield predictable
results.” KSRInt’l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007). See also
DyStar Textilfarben GmbH & Co. Deutschland KG v. C.H. Patrick Co., 464
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F.3d 1356, 1367 (Fed. Cir. 2006) (the “suggestion test is in actuality quite
flexible and not only permits, but requires, consideration of common
knowledge and common sense”).
For the foregoing reasons, we are not persuaded by Appellant’s
contentions that “Lawless is not analogous art, and should not be considered
or combined with Angelides or any other reference” because both references
are involved in patient compliance with pharmaceuticals and Lawless is
pertinent to the treatment concerns of Angelides (FF 1 and 3). In re Wood,
599 F.2d 1032, 1036 (CCPA 1979). We also are not persuaded by
Appellant’s argument that the combination of “Lawless with Angelides so
changes the principle of operation of the inventions in each, or makes each
‘unsatisfactory for its intended purpose’” (App. Br. 18) for the reasons given
above.
For the foregoing reasons and the reasons articulated by Examiner, we
are not persuaded by Appellant’s contention that “neither Angelides nor
Lawless discloses or suggests the rules in [Appellant’s] independent claims”
{see generally FF 4; Ans. 12; cf. App. Br. 19). In this regard, Appellant fails
to make clear why Examiner’s findings and reasoning regarding Lawless’
rules are inapplicable to the rules required by Appellant’s claimed invention.
Arguments not made are waived. See 37 C.F.R. § 41.37(c)(l)(iv).
Claims 9 and 16:
We agree with Appellant that Examiner failed to establish an
evidentiary basis to support a conclusion that Appellant’s claims 9 and 16
are prima facie obvious over the combination of Lawless and Angelides {see
App. Br. 19—20 (Examiner fails to establish that the combination of Lawless
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and Angelides suggests a method, wherein the “tyPe °f message[] [sent is]
‘based on the effectiveness of [the] messages in causing patients to take
actions which make their BG levels move into a desired range or in causing
patients to take actions which maintain their BG levels in a desired range, ’
as in [Appellant’s] claims” 9 and 16); see generally Reply Br. 7).
The rejection over the combination of Lawless, Angelides, and Lipsky:
Based on the combination of Lawless, Angelides, and Lipsky,
Examiner concludes that, at the time Appellant’s invention was made, it
would have been prima facie obvious to incorporate Lipsky’s method of
determining message efficacy into the device and method suggested by the
combination of Lawless and Angelides (Final Act. 18).
We are not persuaded by Appellant’s contention “that Lipsky is non-
analogous art,” because it’s system of enhancing the effectiveness of internet
advertising “is not in the field of medical devices and health” and, therefore,
it “is completely unrelated to motivating a fundamental change in a user’s
checking for blood glucose, or their diet and exercise habits (which affects
the BG level and the messages sent or not sent in the claims)” (App. Br. 21—
23). Angelides discloses a system, in the context of increasing diabetic
patient compliance with a recommended diet and exercise regime that
provides a patient with messages to encourage compliance, Lawless is also
concerned with the use of messaging devices to enhance patient compliance,
and Lipsky discloses a system of providing messages to encourage a
particular outcome (FF 1—7). Taken as a whole, we find no error in
Examiner’s combination, wherein the substitution of one type of message or
printed matter, such as that set forth in Fipsky, for another type of printed
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matter to achieve the desired result of increasing diabetic patient compliance
with a recommended diet and exercise regime would have been prima facie
obvious to one of ordinary skill in this art at the time of Appellant’s claimed
invention (see generally Final Act. 18). See KSR, 550 U.S. at 416; see also
DyStar, 464 F.3d at 1367.
For the foregoing reasons, we are not persuaded by Appellant’s
contention that “combining Lipsky with Angelides or Lawless so changes
the principle of operation of the inventions in each, or makes each
‘unsatisfactory for its intended purpose’” (App. Br. 22—23; see also Reply
Br. 8 (“Lipsky [] cannot be combined with Angelides [] without changing
their principle of operation of the inventions in each, or making each
‘unsatisfactory for its intended purpose’”).
Arguments not made are waived. See 37 C.F.R. § 41.37(c)(l)(iv).
NEW GROUND OF REJECTION
Claims 9 and 16:6
We recognize and incorporate, by reference, Examiner’s rejection of
claims 9 and 16 over the combination of Lawless and Angelides, discussed
above (see supra', see also Final Act. 9-12). As Appellant makes clear, the
combination of Lawless and Angelides fails to disclose a method, wherein
the “type of message[] [sent is] ‘based on the effectiveness of [the] messages
in causing patients to take actions which make their BG levels move into a
desired range or in causing patients to take actions which maintain their BG
6 This new ground of rejection applies to Appellant’s independent claims 9
and 16. Upon further prosecution, Examiner should separately address the
merits of dependent claims 10, 11, and 17 in light of this new ground of
rejection.
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levels in a desired range,’ as in [Appellant’s] claims” 9 and 16 (App. Br. 19—
20). Lipsky, however, makes up for this deficiency in Lawless and
Angelides by disclosing a method, wherein “the facility incrementally
adjusts the weight of each advertising message, incrementally reducing the
weights of lower-performing advertising messages, and incrementally
increasing the weights of higher-performing advertising messages.
Additional reallocation schemes may also be employed” (FF 7)). Stated
differently, Lipsky adds a weighting calculation, to the method suggested by
the combination of Lawless and Angelides, wherein the type of message sent
to a diabetic patient would have been “based on the effectiveness of [the]
messages in causing patients to take actions which make their BG levels
move into a desired range or in causing patients to take actions which
maintain their BG levels in a desired range” (see Appellant’s claims 9 and
16; FF 1-7). See KSR, 550 U.S. at 416; see also DyStar, 464 F.3d at 1367.
CONCLUSION OF LAW
The preponderance of evidence relied upon by Examiner supports a
conclusion of obviousness with respect to the rejection of Appellant’s claims
1 and 6.
The rejection of claim 1 under 35 U.S.C. § 103(a) as unpatentable
over the combination of Lawless and Angelides is affirmed. Claims 2—5 are
not separately argued and fall with claim 1.
The rejection of claim 6 under 35 U.S.C. § 103(a) as unpatentable
over the combination of Lawless, Angelides, and Lipsky. Claims 7, 8, and
13—15 are not separately argued and fall with claim 6.
The preponderance of evidence relied upon by Examiner fails to
support a conclusion of obviousness with respect to Appellant’s claims 9—
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11, 16, and 17. The rejection of claims 9—11, 16, and 17 under 35 U.S.C.
§ 103(a) as unpatentable over the combination of Lawless and Angelides is
reversed.
Claims 9 and 16 stand rejected under 35 U.S.C. § 103(a) as
unpatentable, as part of a new ground of rejection, over the combination of
Lawless and Angelides.
Statutory Subject Matter.
ISSUE
Does the evidence of record support Examiner’s finding that
Appellant’s claimed invention is directed to non-statutory subject matter?
ANALYSIS
Examiner finds that Appellant’s claimed invention relates to the
“abstract idea” of “comparing new and stored information . . . and using
rules[, or algorithms,] to identify options” (Ans. 5). In this regard, Examiner
finds that a device, such as a glucometer, that measures blood glucose levels,
food intake, exertions levels, transmits information to and receives messages
from a database system was known in this art at the time of Appellant’s
claimed invention (FF 1; see Final Act. 5—6; Ans. 5; cf. Reply Br. 3 (“the
instant claims relate to a challenge peculiar to diabetics who carry a web-
based communicative glucometer and messaging system”)). In addition,
algorithms to compare and weight the efficacy of motivational messages
were known in the art at the time of Appellant’s claimed invention as
exemplified by Lipsky (FF 7). According to Examiner, “Appellant is simply
appending well-understood, routine, and conventional activities previously
known to the industry, specified at a high level of generality, to the judicial
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exception” (Ans. 8). For the foregoing reasons, we are not persuaded by
Appellant’s contention that Examiner failed to “introduce evidence showing
what is ‘routine and convention,’ and why” (App. Br. 15).
Thus, in applying the first step of the Supreme Court’s two-part test
for distinguishing between claims to patent-ineligible exceptions, and claims
to patent-eligible applications of those exceptions, we find no error in
Examiner’s finding that Appellant’s claimed invention is “‘directed to [a]
patent-ineligible concept[].’” See Rapid Litigation Mgmt. Ltd. V.
CellzDirect, Inc., 827 F.3d 1042, 1047 (Fed. Cir. 2016). For the reasons set
forth above, wherein Appellant’s inventive concept makes use of “‘well-
understood, routine, conventional activity already engaged in by the
scientific community,”’ we find that Appellant’s claimed invention fails the
second step of the Supreme Court’s test: The “search for an ‘inventive
concept’.” Id. “At step two, more is required than ‘well-understood,
routine, conventional activity already engaged in by the scientific
community,’ which fails to transform the claim into ‘significantly more than
a patent upon the’ ineligible concept itself’ {id., citations omitted).
Appellant’s response applied to each of Appellant’s independent
claims 1, 9, and 16 and, therefore, these claims and contentions will be
addressed together.
We are not persuaded by Appellant’s contentions regarding the
glucometer, which, as Angelides makes clear, is well known and
conventionally used in this field (FF 1; cf. App. Br. 14—15). Similarly, we
are not persuaded by Appellant’s contention (Reply Br. 1 4) that appending
well-known and conventional data manipulation steps (see FF 3—7) to a
known device and method {see FF 1—2) results in something more “than
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‘well-understood, routine, conventional activity already engaged in by the
scientific community,’ which fails to transform the claim into ‘significantly
more than a patent upon the’ ineligible concept itself.” See Rapid Litigation,
827 F.3d at 1047.
We are also not persuaded by Appellant’s contention that “in a case
with similar subject matter, and similar arguments . . . the PTAB reversed a
Section 101 rejection. See US Application Serial No. 13/705,341, [Appeal
2014-008033,] decision on appeal of 4/28/2015. Accordingly, the rejection
under Section 101 should be reversed” (App. Br. 15). Initially, we note that
Application 13/705,341 stands abandoned. Further, we note that the claims
before this Panel in Appeal 2014-008033 are not the same claims that are
now before this Panel. Therefore, we are not persuaded by Appellant’s
contentions.
Arguments not made are waived. See 37 C.F.R. § 41.37(c)(l)(iv).
CONCLUSION OF LAW
The evidence of record supports Examiner’s finding that Appellant’s
claimed invention is directed to non-statutory subject matter. The rejection
of claims 1, 9, and 16 under 35 U.S.C. § 101, as directed to non-statutory
subject matter is affirmed. Claims 2—8, 10, 11, 13—15, and 17 are not
separately argued and fall with claims 1, 9, and 16 respectively.
TIME PERIOD FOR RESPONSE
Regarding the affirmed rejection(s), 37 C.F.R. § 41.52(a)(1) provides
“Appellant may file a single request for rehearing within two months from
the date of the original decision of the Board.”
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In addition to affirming the Examiner’s rejection(s) of one or more
claims, this decision contains a new ground of rejection pursuant to
37 C.F.R. § 41.50(b). 37 C.F.R. § 41.50(b) provides “[a] new ground of
rejection pursuant to this paragraph shall not be considered final for judicial
review.”
37 C.F.R. § 41.50(b) also provides that the Appellant, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new ground 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 proceeding will be remanded to
the examiner....
(2) Request rehearing. Request that the proceeding be reheard
under § 41.52 by the Board upon the same record....
Should the Appellant elect to prosecute further before the Examiner
pursuant to 37 C.F.R. § 41.50(b)(1), in order to preserve the right to seek
review under 35 U.S.C. §§ 141 or 145 with respect to the affirmed rejection,
the effective date of the affirmance is deferred until conclusion of the
prosecution before the Examiner unless, as a mere incident to the limited
prosecution, the affirmed rejection is overcome.
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If the Appellant elects prosecution before the Examiner and this does
not result in allowance of the application, abandonment or a second appeal,
this case should be returned to the Patent Trial and Appeal Board for final
action on the affirmed rejection, including any timely request for rehearing
thereof.
AFFIRMED; 37 C.F.R, $ 41.50(b)
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