Ex Parte Fernandez

Board of Patent Appeals and Interferences

Aug 8, 2012

10646682 (B.P.A.I. Aug. 8, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte DENNIS S. FERNANDEZ
____________

Appeal 2011-004442
Application 10/646,682
Technology Center 1600
____________

Before TONI R. SCHEINER, DONALD E. ADAMS, and DEMETRA J.
MILLS, Administrative Patent Judges.

ADAMS, Administrative Patent Judge.

DECISION ON APPEAL
This appeal under 35 U.S.C. § 134 involves claims 36-49 and 51-55
(App. Br. 5; Reply Br. 1; Ans. 2).
1
We have jurisdiction under 35 U.S.C.
§ 6(b).
STATEMENT OF THE CASE
The claims are directed to a systems-biology platform-based
integrated biosensor and simulation system (36-39 and 51-55) and a
systems-based biology platform-based method (claims 40-49). Claim 36 is

1
Pending claim 50 has been withdrawn from consideration (App. Br. 5).
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representative and is reproduced in the Claims Appendix of Appellant’s
Brief.
Claims 36-49 and 51-55 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over the combination of Porat
2
and Giuffre.
3

We reverse.
ISSUE
Does the preponderance of evidence on this record support a
conclusion of obviousness?
FACTUAL FINDINGS (FF)
FF 1. Porat suggests a system and method of using a “biosensor system for
monitoring and optionally alleviating a physiological condition in a patient”
(Ans. 5).
FF 2. Porat suggests implantable biosensors, including
[A]n implantable biosensor system for monitoring and
alleviating a physiological condition in a patient . . . comprising
(a) a shunt having a fluid passageway and being operable for
draining fluid through the fluid passageway from a portion of a
patient’s body; [and] (b) a monitoring and operating mechanism
coupled with the shunt for non-invasively monitoring the
physiological condition and operating the shunt, the monitoring
and operating mechanism including at least one sensor for
sensing at least one parameter of the physiological condition
and for generating electrical sensor signals representative of the
physiological condition.

(Porat, col. 3, l. 62 - col. 4, l. 7 and col. 1, ll. 29-31; Ans. 5 (Porat’s
implantable biosensor comprising a shunt . . . reads on a reconfigurable

2
Porat et al., US 6,432,050 B1, issued August 13, 2002.
3
Giuffre, US 6,042,548, issued March 28, 2000.

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sensor, “wherein reconfiguration involves reconfiguring a therapeutic
reservoir as instantly claimed”)).
FF 3. Examiner finds that Porat fails to suggest “biosensors in combination
with a simulator system comprising a system-biology platform and a model
to generate a therapeutic or diagnostic output” (Ans. 6).
FF 4. Giuffre suggests a system that utilizes cardiovascular sensors to
estimate brain and central nervous system activity (Giuffre, Abstract and col.
4, ll. 24-27; Ans. 6).
ANALYSIS
Based on the combination of Porat and Giuffre, Examiner concludes
that, at the time of Appellant’s claimed invention, a person of ordinary skill
in this art would have found it prima facie obvious to use Porat’s biosensors,
with Giuffre’s “system for registering changes in brain and central nervous
system activity by using simulation and signals derived from
[cardiovascular] biosensors” (Ans. 8). We are not persuaded.
Obviousness requires more than a mere showing that the
prior art includes separate references covering each separate
limitation in a claim under examination. KSR Int'l Co. v.
Teleflex Inc., 550 U.S. 398, 418, 127 S.Ct. 1727, 167 L.Ed.2d
705 (2007). Rather, obviousness requires the additional
showing that a person of ordinary skill at the time of the
invention would have selected and combined those prior art
elements in the normal course of research and development to
yield the claimed invention. Id. at 421, 127 S.Ct. 1727.

Unigene Laboratories, Inc. v. Apotex, Inc., 655 F.3d 1360 (Fed. Cir. 2011).
On this record, Examiner established that (1) biosensors are known in
the art, including sensors that can regulate devices (e.g., a shunt) (FF 1-2);
and (2) that cardiovascular sensors can be used to estimate brain and central
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nervous system activity (FF 4). Examiner failed, however, to articulate a
reason why a person of ordinary skill in this art would have selected a
sensor, from Porat, that is reconfigurable by a simulator for use in Giuffre’s
system of estimating brain and central nervous system activity using
cardiovascular sensors. In this regard, we are not persuaded by Examiner’s
assertion that a person of ordinary skill in this art would have been
motivated to do so because Porat’s biosensors are “improved” over those
known prior to Porat’s invention (Ans. 8). In re Kahn, 441 F.3d 977, 988
(Fed. Cir. 2006) (“[R]ejections on obviousness grounds cannot be sustained
by mere conclusory statements; instead, there must be some articulated
reasoning with some rational underpinning to support the legal conclusion of
obviousness.”).
CONCLUSION OF LAW
The preponderance of evidence on this record fails to support a
conclusion of obviousness. The rejection of claims 36-49 and 51-55 under
35 U.S.C. § 103(a) as unpatentable over the combination of Porat and
Giuffre is reversed.

REVERSED

alw