Ex Parte Itoh et al

Board of Patent Appeals and Interferences

Apr 26, 2010

10214371 (B.P.A.I. Apr. 26, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte TAKEHITO ITOH and HIDEYUKI TOMITA
__________

Appeal 2009-004132
Application 10/214,371
Technology Center 1600
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Decided: April 26, 2010
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Before ERIC GRIMES, TONI R. SCHEINER, and DONALD E. ADAMS,
Administrative Patent Judges.

SCHEINER, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 from the rejection of claims
1-17, directed to a blood glucose monitoring system. The claims have been
rejected on the grounds of anticipation, obviousness, and indefiniteness. We
have jurisdiction under 35 U.S.C. § 6(b).
Appeal 2009-004132
Application 10/214,371

STATEMENT OF THE CASE
Claim 1 is representative of the subject matter on appeal:
1. A recording medium operating mounted on a portable terminal
capable of supplying power, comprising:
a communication control unit exchanging data with said portable
terminal;
an inlet port for inserting a test paper configured for mounting said
test paper on which taken blood is applied
a sensor circuit unit generating a current from a blood glucose level of
blood applied to said test paper mounted on said inlet port;
a signal processing unit converting said generated current to a digital
data and outputting the data;
an electrically erasable and programmable non-volatile memory unit
storing blood glucose level data converted based on the data output from
said signal processing unit;
a control unit converting the data output from said signal processing
unit to said blood glucose level data, writing the converted data to said
memory unit, reading said blood glucose level data from said memory unit
and transmitting the data to said portable terminal through said
communication control unit; and
a power supply control unit receiving power from said portable
terminal and supplying power to said sensor circuit unit, said signal
processing unit, said memory unit, said communication control unit and said
control unit; wherein
said communication control unit, said inlet port, said sensor circuit
unit, said signal processing unit, said memory unit, said control unit and said
power supply control unit are integrally configured.

The Examiner relies on the following evidence:

Pollmann et al. US 5,288,636 Feb. 22, 1994
Böcker et al. US 5,507,288 Apr. 16, 1996
Anderson et al. US 6,066,243 May 23, 2000
Kuusela et al. WO 97/49077 Dec. 24, 1997
Heinonen et al. WO 99/22236 May 6, 1999

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The Examiner rejected the claims as follows:
(A) Claims 1-11 under 35 U.S.C. § 102(b) as anticipated by Heinonen.

(B) Claims 1-11 and 15-17 under 35 U.S.C. § 103(a) as unpatentable over
Kuusela and Anderson.

(C) Claims 1-17 under 35 U.S.C. § 103(a) as unpatentable over Böcker
and Pollmann.

(D) Claims 15-17 under 35 U.S.C. § 112, second paragraph, as indefinite.1

We reverse rejections (A), (B), and (C), and affirm rejection (D).

ANTICIPATION: HEINONEN
Issue
Claims 1-11 stand rejected as anticipated by Heinonen. The issue
raised by this rejection is whether the evidence of record supports the
Examiner’s finding that Heinonen discloses “a power supply control unit”
receiving power from a portable terminal, as required by independent claims
1 and 5, or connected to the power supply of a portable terminal, as required
by independent claim 11.
Findings of Fact
FF1 Independent claims 1 and 5 require, in part, “a power supply
control unit” capable of receiving power from a portable terminal.
Similarly, independent claim 11 requires “a power supply control unit
operably connected” to the power supply of a portable terminal.

1 The Examiner has withdrawn the rejection under 35 U.S.C. § 112, second
paragraph with respect to claims 1, 2, 5, and 11 (Ans. 2).
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FF2 According to the Specification, “[p]referably, the portable
terminal is one of a portable telephone, a personal digital assistant, and a
portable personal computer” (Spec. 4: 12-13).
Power control unit 18 receives power from portable
telephone 2 through power supply terminal 193, as recording
medium 1 itself does not have any power source, and supplies a
prescribed power for operation, to sensor circuit unit 11, signal
processing unit 12, control unit 13, EEPROM 14, RAM15 and
communication control unit 16.

(Id. at 10: 7-11.)
FF3 Heinonen discloses a system, shown in Figure 1, reproduced
below, which is capable of providing a blood glucose level test result:

Heinonen’s system, illustrated in Figure 1, comprises a mobile telephone 1,
shown from the rear. The telephone has modified software, but is otherwise
conventional.
However, in place of the conventional battery, a measurement
unit 2 is provided which can be inserted into the slot on the rear
of the mobile phone 1 normally occupied by the battery. The
measurement unit 2 contains a reduced size battery unit (not
shown) for powering the measurement unit 2 and the phone 1.

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(Heinonen 5: 4-11.) Measurement unit 2 also includes slot 6, which receives
test strip 5; reflectometry system 3, which measures a color change on the
test strip; an optical reader which reads identification information on the test
strip; and memory 8. The measurement unit communicates with mobile
phone 1, which communicates wirelessly with central database 9 (id. at 5: 12
to 7: 4).
FF4 The Examiner finds that Heinonen discloses “a portable mobile
phone terminal [1] . . . that operates mounted on a measurement unit [2]”
(Ans. 4), both of which “receive power from a battery unit located on the
measurement unit” (id. at 4).
FF5 The Examiner finds that the “battery power supply unit” (i.e.,
the “battery unit”) of Heinonen’s measurement unit 2, which “supplies
power to a memory, sensors, and processor,” is “functionally equivalent to
the power supply control unit as claimed” (Ans. 9-10).
Principles of Law
“A claim is anticipated only if each and every element as set forth in
the claim is found, either expressly or inherently described, in a single prior
art reference.” Verdegaal Bros., Inc. v. Union Oil Co. of California, 814
F.2d 628, 631 (Fed. Cir. 1987).
Analysis
Appellants contend that “[t]he present recording medium covered by
claim 1 comprises a ‘power supply control unit,’ and relies on ‘a portable
terminal capable of supplying power’” (App. Br. 7), as does the recording
medium of claim 11 (id. at 8), while the recording medium “covered by
claim 5 comprises a ‘power supply control unit,’ and relies on ‘a portable
terminal’ including ‘a power supply unit.’” (Id. at 7.)
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Appellants contend that “Heinonen’s measurement unit 2 contains a
battery, i.e., a power supply, that supplies power [for] the measurement unit
2 as well as the phone 1” (id.), rather than “the claimed ‘power supply
control unit receiving power from said portable terminal’” of claims 1 and 5
(App. Br. 6, 7), or the “power supply control unit operably connected to the
power supply” of claim 11. (Id. at 8.)
The Examiner’s position is that the Specification “does not provide a
limiting definition for said ‘power supply control unit’” (Ans. 9) and the
“battery power supply unit” of Heinonen’s measurement unit 2, which
“supplies power to a memory, sensors, and processor,” is “functionally
equivalent to the power supply control unit as claimed” (Ans. 9-10; FF5).
The evidence of record doesn’t support the Examiner’s finding on this
point. The claims require a “power supply control unit” that is capable of
“receiving power from” a portable terminal, or is “operably connected to [a]
power supply” (FF1), and which, in turn, supplies power to a sensor circuit
unit, a signal processing unit, a memory unit, a communication control unit,
and a control unit, with which it is integrally configured. Moreover, the
Specification indicates that a “[p]ower control unit” receives power from a
portable telephone, and in turn, supplies, i.e., relays, power to various other
functional units (Spec. 10: 7-11; FF2). While the battery unit in Heinonen’s
measurement unit supplies power to the measurement unit, and to the mobile
phone to which it’s attached, it takes the place of the mobile phone’s battery,
and the Examiner has not established that the battery unit receives power
from any other unit, or is operably connected to a power supply.

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Conclusions of Law
The evidence of record does not support the Examiner’s finding that
Heinonen discloses “a power supply control unit” receiving power from a
portable terminal, as required by independent claims 1 and 5, or connected
to the power supply of a portable terminal, as required by independent claim
11.
The rejection of claims 1-11 as anticipated by Heinonen is reversed.

OBVIOUSNESS: KUUSELA and ANDERSON
Issue
Claims 1-11 and 15-17 stand rejected as unpatentable over Kuusela
and Anderson. The issue raised by this rejection is whether the evidence of
record supports the Examiner’s conclusion that it would have been obvious
to integrally incorporate Anderson’s glucose meter into the basic element of
Kuusela’s auxiliary device.
Findings of Fact
FF6 Kuusela discloses “[a]n auxiliary device, to be coupled to a
mobile station,” e.g., a mobile telephone, for non-invasively obtaining
various measurements from a patient (Kuusela 1: 19-21), e.g., blood sugar
level, body temperature, oxygen content of the blood, respiration, blood
pressure, etc. (id. at 7: 5 to 9: 31).
FF7 The auxiliary unit comprises two components: “a basic element,
which contains components necessary for data transmission, analyses and
storage” and a detachable “sensor element, which contains a sensor suitable
for the non-invasive follow-up of a person’s bodily functions” (Kuusela 1:
24 to 2: 8).
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FF8 The sensor element “can be easily replaced according to the
function measured or several of them can be connected in sequence”
(Kuusela 2: 24-26).
FF9 According to Kuusela,
The advantage of the structure is that the use of different
kinds of sensors does not require several different kinds of
versions of the complicated basic element. The basic element
21 contains appropriately analog/digital converters, a
microprocessor for controlling the operations, as well as a
memory for storing data. . . . The microprocessor is responsible
for the measuring protocols, the analysing of the results and the
data traffic to the telephone.

(Kuusela 4: 16-22.)
FF10 Anderson discloses a “medical analyzer that features automated
calibration and analysis for a variety of uses. The analyzer includes several
interchangeable modules that allow the user to analyze several samples”
(Anderson, col. 5, ll. 37-40), one of which is “a glucose meter that includes a
receptacle . . . for insertion of a test strip” (id. at col. 6, ll. 34-35).
Analysis
The Examiner acknowledges that “Kuusela does not teach an inlet
port for inserting a test paper” (Ans. 8). However, the Examiner concludes
that it would have been obvious “to modify the portable monitoring system
of Kuusela using the reagent test strip modules taught by Anderson” (id.),
“in order to improve system flexibility by adding an additional module for
measuring blood glucose levels” (id. at 9), “since Kuusela teaches a flexible
module-based system that allows for the use of different types of modules
for measuring patient analytes” (id. at 8).
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Appellants contend that one skilled in the art would have had no
reason to include Anderson’s inlet port in Kuusela’s device because
“Kuusela already discloses a device for the mobile monitoring of blood
glucose levels” (App. Br. 10). More importantly, Appellants contend that
substituting Anderson’s glucose meter for one of Kuusela’s non-invasive
sensors wouldn’t provide “a communication control unit, an inlet port, a
sensor circuit unit, a signal processing unit, a memory unit, a control unit
and a power supply control unit that are integrally configured” (id. at 11),
because Kuusela’s various sensors are separate modules that can be coupled
to or detached from the basic element as needed.
We agree with Appellants that combining the teachings of Kuusela
and Anderson wouldn’t result in a recording medium with an “integrally
configured” sensor. Kuusela deliberately separates the “basic element” from
the various specialized sensors so that the device can be easily modified to
take different types of measurements without having to duplicate the
components and functions of the “complicated” basic element for each type
of measurement (FF7-FF9). Combining Kuusela’s device with Anderson’s
glucose meter would merely add another detachable sensor to Kuusela’s
repertoire, and the Examiner has not explained why it would have been
obvious to reduce the flexibility of Kuusela’s device by integrating
Anderson’s glucose meter with the basic element.
Conclusions of Law
The evidence of record does not support the Examiner’s conclusion
that it would have been obvious to integrally incorporate Anderson’s glucose
meter into the basic element of Kuusela’s auxiliary device.

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OBVIOUSNESS: BÖCKER and POLLMANN
Issue
The Examiner rejected claims 1-17 as unpatentable over Böcker and
Pollmann. The issue raised by this rejection is whether the Examiner has
established that the claimed glucose recording medium would have been
obvious over the combined teachings of Böcker and Pollmann.
Findings of Fact
FF11 Böcker discloses a two-part analytical system for monitoring a
substance present in the blood of a patient. Böcker’s “analysis-element-
sensor-system” is shown in Figure 1, reproduced below:

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Böcker’s sensor-analysis system, shown in Figure 1, “is composed of
a sensor unit 2 borne on the body of the patient and of a central unit 3 linked
with the sensor unit 2 by wireless data transmission symbolized by the arrow
4” (Böcker, col. 5, ll. 18-20). “[T]he sensor unit 2 is composed of the base
unit 6 and of two sensors 7, 8 connected by cables 9 to the base unit 6. The
base unit 6 may be worn by a neck strap 10 around the neck of the patient”
(id. at col. 5, ll. 21-25). Base unit 6 also includes a rechargeable power-
supply battery (id. at col. 7, ll. 4-7).
“The central unit 3 . . . serves to evaluate an analysis-element 12 in
the form of a glucose test strip 13 with a base layer 14 and a test zone 15. . . .
[T]he analysis-element 12 is inserted into a test duct 17 located beneath a
flap 18 of the device 3. . . . A display 21 serves as information output” (id. at
col. 5, ll. 36-43).
Analysis
The Examiner finds that Böcker’s sensor-analysis system meets all the
limitations of the claimed invention, except that Böcker doesn’t “specifically
teach the use of an enzyme electrode for generating a current from an
enzyme reaction” (Ans. 6). In particular, the Examiner finds that the
Specification “does not provide a limiting definition for said ‘power supply
control unit’” (id. at 10), and Böcker’s “base unit [sic, central unit] has an
‘on/off’ control element . . . which is also reasonably interpreted as a power
supply control element capable of supplying power to the integrally
configured elements located on the base unit [sic, central unit]” (id. at 10-
11). The Examiner cites Pollmann as teaching an enzyme electrode
biosensor, and concludes that it would have been obvious “to practice the
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portable glucose measurement system taught by [Böcker] using the known
enzyme biosensor taught by Pollmann” (id. at 6).
Appellants contend that Böcker “discloses a substantially different
device than the claimed invention” (App. Br. 8-9), and Pollmann does not
make up for the deficiency (id. at 9). Specifically, Appellants contend that
even if Böcker’s central unit 3 is considered to be a recording medium, it is
not “‘mounted’ to the sensor unit 2 and the sensor unit 2 does not supply
power to the central unit 3 via a power supply control unit” (id.). Nor is
central unit 3 disclosed “as being mounted to anything [else] that is capable
of supplying power” (id.).
Appellants contend that sensor unit 2 doesn’t meet the requirements
for the claimed recording medium either, because Böcker “does not disclose
the sensor unit 2 being mounted to central unit 3 and does not disclose the
central unit 3 supplying power to the sensor unit 2” (id.). Moreover, sensor
unit 2 doesn’t measure the glucose level of blood applied to a test strip, but
simply transmits data wirelessly from sensor unit 2 to central unit 3 (id.).
We agree with Appellants. The claimed recording medium has a
“power supply control unit receiving power from . . . [a] portable terminal”
(e.g., claim 1), and which “suppl[ies] power to said sensor circuit unit, said
signal processing unit, said memory unit, said communication control unit,
and said control unit” (id.), with which it is integrally configured. Böcker’s
central unit 3 has many of the elements required by the claimed recording
medium, but the Examiner has not established that the central unit receives
power from a portable terminal of any kind, nor has the Examiner explained
why such an arrangement would have been obvious.

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Conclusions of Law
The Examiner has not established that the claimed glucose recording
medium would have been obvious over the combined teachings of Böcker
and Pollmann.
The rejection of claims 1-17 as unpatentable over Böcker and
Pollmann is reversed.

INDEFINITENESS
The Examiner rejected claims 15-17 as indefinite because “[i]t is
unclear in what way a communication control unit, inlet port, sensor circuit
unit, signal processing unit, memory unit, communication unit, control unit,
and power supply unit ‘comprise elements of a memory card’” or “are all
functionally ‘embodied on a memory card’” (Ans. 4).
Appellants “submit that the claim language has been examined in five
prior Office Actions . . . [and] should not have become unclear on the
present Office Action” (App. Br. 12-13). In addition, Appellants contend
that the Specification discloses that the recording medium of the present
invention “is in compliance with the specification of a commercially
available compact memory card that can be used mounted on a portable
telephone” (Reply Br. 12).
Neither of Appellants’ arguments provides a substantive response to
the Examiner’s criticism of the claims.
The rejection of claims 15-17 as indefinite is affirmed.
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SUMMARY
(A) The rejection of claims 1-11 under 35 U.S.C. § 102(b) as anticipated
by Heinonen is reversed.

(B) The rejection of claims 1-11 and 15-17 under 35 U.S.C. § 103(a) as
unpatentable over Kuusela and Anderson is reversed.

(C) The rejection of claims 1-17 under 35 U.S.C. § 103(a) as unpatentable
over Böcker and Pollmann is reversed.

(D) The rejection of claims 15-17 under 35 U.S.C. § 112, second
paragraph, as indefinite is affirmed.

TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with this
appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv)(2006).

AFFIRMED-IN-PART

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