11888614 (P.T.A.B. Mar. 20, 2013)

Ex Parte Jung et al

Patent Trial and Appeal BoardMar 20, 2013

11888614 (P.T.A.B. Mar. 20, 2013)

UNITED STATES PATENT AND TRADEMARKOFFICE 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. 11/888,614 07/31/2007 INV001Edward K.Y. Jung 1105-002-043-000000 4607 44765 7590 03/21/2013 THE INVENTION SCIENCE FUND CLARENCE T. TEGREENE 11235 SE 6TH STREET SUITE 200 BELLEVUE, WA 98004 EXAMINER RAPILLO, KRISTINE K ART UNIT PAPER NUMBER 3626 MAIL DATE DELIVERY MODE 03/21/2013 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 EDWARD K.Y. JUNG, ROYCE A. LEVIEN, ROBERT W. LORD, MARK A. MALAMUD, JOHN D. RINALDO, JR., CLARENCE T. TEGREENE, and LOWEL L. WOOD, JR. ________________ Appeal 2011-006264 Application 11/888,614 Technology Center 3600 ________________ Before FRED E. MCKELVEY, JEFFREY T. SMITH, and DONNA M. PRAISS, Administrative Patent Judges. PRAISS, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE This is an appeal under 35 U.S.C. § 134 from the final rejection of claims 66-70, 73-76, 142-152, 159, and 169-172. We have jurisdiction under 35 U.S.C. § 6. Appellants’ claimed invention relates to methods and systems related to receiving nutraceutical associated information. Spec. 7. Claim 66 is illustrative: Appeal 2011-006264 Application 11/888,614 2 66. A method comprising: receiving one or more signals that include processed information related to input associated with usage of one or more non-pharmaceutically regulated nutraceuticals by one or more individuals, input related to one or more assays of one or more samples associated with the one or more individuals for one or more indicators associated with one or more non- pharmaceutically regulated nutraceuticals, and input associated with one or more parameters related to the one or more individuals; and displaying the information by processing the one or more signals, with one or more microprocessors, into one or more user selected display formats. The Examiner relied on the following references in rejecting the appealed subject matter: Kehr US 2003/0036683 A1 Feb. 20, 2003 Kaylor US 2005/0101841 A9 May 12, 2005 The Examiner maintains, and Appellants appeal, the following rejections: 1. Claims 66-70, 73-76, 142-148, 150-152, 159, and 169-172 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Kehr. 2. Claims 73 and 149 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Kehr in view of Kaylor. OPINION Appellants request reversal of the Examiner’s rejections. Appellants assert the Examiner failed to establish a prima facie case of obviousness (App. Br. 26), because the Examiner erred in citing “technical material [that] Appeal 2011-006264 Application 11/888,614 3 does not recite several express recitations of the claims at issue, and hence fails to establish a prima facie case of unpatentability (id.).” We find the evidence and explanation provided by the Examiner fully supports the conclusion of prima facie obviousness as to appealed claims 66- 70, 73-76, 142-152, 159, and 169-172 (see Final 2-9; Ans. 3-10). We have considered each of Appellants’ arguments in support of patentability, but are not convinced of reversible error on the part of the Examiner for the reasons stated in the Answer. We add the following discussion to clarify the relevant case law on obviousness under 35 U.S.C. § 103(a). A prima facie case of obviousness is established where the Examiner demonstrates that the invention is nothing more than the predictable result of a combination of familiar elements according to known methods. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007). As explained by the Examiner (see Ans. 4, 11-12), the “simple substitution of regulated nutraceuticals (as taught by Kehr) for the non-regulated nutraceuticals claimed produces a predictable result and renders the claim obvious (id. at 4, 11).” We have reviewed the Final Office Action and Answer and find the Examiner provided detailed facts and reasons in support of the obviousness determination for each of the pending claims.1 Contrary to Appellants' position presented in the Brief, the Examiner has not relied on unsupported, conclusory statements, but has fully explained the reason to modify Kehr. 1 The Examiner found that the underlying elements used in the process of Kehr meet the means limitations of claim 159 (Ans. 9). Appellants have not contested the scope of equivalents for the means limitations. Appeal 2011-006264 Application 11/888,614 4 (See e.g. Ans. 4, 9).2 Appellants have not explained, with any degree of specificity, why the Examiner’s obviousness determination is not supported by the evidence of record. Appellants’ repeated assertion that claim limitations are not expressly “recited” in a reference (see, e.g., Ap. Br. 32, 33 fn.11, 42 fn.13, 46 fn.16, 47, 53, 54 fn.17, 57, 59, 60 fn.19, 71, 74, 75, 76, 78, 82 fn. 24, 91 fn. 26, 102, 103 fn. 28, 106, 109, 110 fn. 30, 119 fn. 32, 131) does not evidence lack of prima facie obviousness, but, rather, “begs the substantive question of whether there are facial differences to be bridged.” See In re Jung, 637 F.3d 1356, 1363 (Fed. Cir. 2011). A reference does not have to satisfy an ipsissimis verbis test to disclose a claimed element, therefore Appellants’ demand for such an exacting match in not persuasive of error. See In re Gleave, 560 F.3d 1331, 1334 (Fed. Cir. 2009). In the absence of a more detailed explanation, we are not convinced of error on the part of the Examiner in concluding the claimed invention would have been obvious within the meaning of 35 U.S.C. § 103(a). See id. at 1365 (“[I]t has long been the Board’s practice to require an applicant to identify the alleged error in the examiner’s rejections.” (citing Ex Parte Frye, 94 USPQ2d 1072 (BPAI 2010) (precedential) (“The panel then reviews the obviousness rejection for error based upon the issues identified by appellant, and in light of the arguments and evidence produced thereon.”))). Appellants assert generally that “all of the claim terms have 2 “[T]he PTO carries its procedural burden of establishing a prima facie case when its rejection satisfies 35 U.S.C. § 132, in ‘notify[ing] the applicant . . . [by] stating the reasons for [its] rejection, or objection or requirement, together with such information and references as may be useful in judging of the propriety of continuing the prosecution of [the] application.’ 35 U.S.C. § 132. In re Jung, 637 F.3d 1356, 1362 (Fed. Cir. 2011). Appeal 2011-006264 Application 11/888,614 5 not been addressed in the Examiner’s analysis” (App. Br. 42; see also id. at 69, 90, 94, 11, 123). This blanket assertion does not identify any specific alleged error on the part of the Examiner for the Board to review. In sum, upon thorough consideration of the appeal, and for the reasons expressed in the Answer and above, we find a preponderance of the evidence favors the Examiner’s conclusion of obviousness.3 Therefore, we affirm the Examiner’s decision to reject all of the claims over the prior art. 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)(v). AFFIRMED cam 3 Should prosecution of this application be continued, the Examiner should review the guidelines for subject matter patentability under 35 U.S.C. § 101 with respect to claim 169.