Ex Parte Jung et alDownload PDFPatent Trial and Appeal BoardMar 20, 201311486973 (P.T.A.B. Mar. 20, 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. 11/486,973 07/14/2006 INV001Edward K.Y. Jung 1105-002-032-000000 4160 44765 7590 03/21/2013 THE INVENTION SCIENCE FUND CLARENCE T. TEGREENE 11235 SE 6TH STREET SUITE 200 BELLEVUE, WA 98004 EXAMINER HUNTER, SEAN KRISTOPHER 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., and LOWELL L. WOOD, JR. ________________ Appeal 2012-003389 Application 11/486,973 Technology Center 3600 ________________ Before FRED E. MCKELVEY, JEFFREY T. SMITH, and DONNA M. PRAISS, Administrative Patent Judges. PRAISS, Administrative Patent Judge. DECISION ON APPEAL Appeal 2012-003389 Application 11/486,973 2 STATEMENT OF THE CASE This is an appeal under 35 U.S.C. § 134 from the final rejection of claims 1, 2, 4, 6-8, 10, 11, 20-23, 32-35, 40, 41, 51, 53-55, 60, 61, 71, 73-75, 79, 80, 82, 84, 174, and 178-179. We have jurisdiction under 35 U.S.C. § 6. Appellants’ claimed invention relates to computational and/or control systems related to individualized selection and packaging of pharmaceutical agents and nutraceutical agents. Spec. 4. Claim 1 is illustrative: 1. A method comprising: accepting input of one or more parameters specifically associated with an individual; processing the input with one or more processors to automatically select one or more pharmaceutical agents in response to at least one of the one or more parameters specifically associated with the individual; processing the input with one or more processors to automatically select one or more nutraceutical agents in response to at least one of the one or more parameters specifically associated with the individual; and automatically packaging at least one of the one or more pharmaceutical agents and at least one of the one or more nutraceutical agents in a single administration form in response to at least one of the one or more parameters specifically associated with the individual. The Examiner relied on the following references in rejecting the appealed subject matter: Greeven U.S. 2002/0143434 A1 Oct. 3, 2002 Vilkov U.S. 5,807,579 Sep. 15, 1998 Appeal 2012-003389 Application 11/486,973 3 The Examiner maintains, and Appellants appeal, the rejection of claims 1, 2, 4, 6-8, 10, 11, 20-23, 32-35, 40, 41, 51, 53-55, 60, 61, 71, 73-75, 79, 80, 82, 84, 174, and 178-179 under 35 U.S.C. § 103(a) as being unpatentable over Greeven in view of Vilkov.1 OPINION Appellants request reversal of the Examiner’s rejections. Appellants assert the Examiner failed to establish a prima facie case of obviousness (App. Br. 39). Appellants contend the Examiner erred in (1) citing technical material that does not “recite[] each and every recitation of [every claim on appeal]”, (2) interpreting the cited references as teaching the claim limitations without providing “objectively verifiable evidence supporting the interpretation”, (3) failing to establish that one skilled in the art “would have considered the language of the cited references to teach an equivalent of any of the recitations of [the claims on appeal]”, and (4) failing “to present a prima facie case of equivalence for [the cited references] and a least a portion of [the claims on appeal] (id.).” We find the facts and reasons relied on by the Examiner fully support the Examiner’s conclusion of prima facie obviousness as to appealed claims 1, 2, 4, 6-8, 10, 11, 20-23, 32-35, 40, 41, 51, 53-55, 60, 61, 71, 73-75, 79, 80, 82, 84, 174, and 178-179 (see Final 6-25; Ans. 5-21). 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 1 The rejection of claims 1, 2, 4, 6-8, 10, 11, 20-23, 32-35, 40, 41, 51, 53-55, 60, 61, 71, 73-75, 79, 80, 82, 84, 174, and 178-79 under 35 U.S.C. § 101 stands withdrawn by the Examiner. Ans. 4. Appeal 2012-003389 Application 11/486,973 4 stated in the Answer (Ans. 5-21). 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. 5-6) after identifying the relevant disclosures of the claimed method in Greeven, which broadly defines the term pharmaceutical to include the claimed nutraceutical, and the relevant disclosures of Vilkov, which describes a tablet composition: “[i]t would have been obvious to one of ordinary skill at the time of the invention to expand the method of Greeven to further include, a pharmaceutical tablet composition. One of ordinary skill in the art at the time of the invention would have been motivated to expand the method of Greeven in this way since all the claimed elements were known in the prior art and one skilled in the art could have combined the elements as claimed by known methods with no change in the respective functions, and the combination would have yielded predictable results to one of ordinary skill in the art at the time of the invention.” Id. at 6. 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. In our view, the Examiner has not relied on unsupported, conclusory statements, but has fully explained the reason to modify Greeven with Vilkov. (See e.g. Ans. 4, 9).2 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 . . . Appeal 2012-003389 Application 11/486,973 5 Appellants have not explained, with any degree of specificity, why the Examiner’s proposed motivation to modify Greeven with Vilkov is not supported by the evidence of record. Appellants’ repeated assertion that claim limitations are not expressly “recited” in a reference (see, e.g., App. Br. 39, 44, 49, 52-53, 56, 60, 63-64, 68, 71, 75-76, 79-80, 83-84, 88, 92, 96, 100, 104, 109, 114, 119, 124, 128, 133, 139, 145, 150-51, 155, 160) and argument that absent an express recitation in the prior art additional evidence concerning interpretations, teachings, and equivalents is necessary (see, e.g., App. Br. 39, 43, 48, 50, 55, 57, 59, 61, 62-63, 65, 66-67, 70, 72, 74, 76, 78, 82, 86, 91, 93, 95, 99, 103, 107, 112-113, 118, 122-23, 124, 127, 132, 134, 138, 143, 149, 154, 158-59, 164-67, 171-72, 173-74, 179-82 ) does not indicate 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). Similarly, Appellants’ assertion that the Examiner improperly combined Greeven and Vilkov3 because (1) the modification changes the principle of operation, (2) the combination renders the technologies unfit for their intended purpose, and (3) the Examiner “failed to provide objectively verifiable evidence of record to combine Greeven with Vilkov” (see App. Br. 182) is not grounded by a technical explanation nor do Appellants’ assertions address the Examiner’s reason to combine the references. Essentially, Appellants argue that the combination is improper because (1) it [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). 3 We understand Appellants reference to “Kolkov” on page 182 to be a typographical error intending to refer to “Vilkov”. Appeal 2012-003389 Application 11/486,973 6 changes the principle of operation into the methods recited by the claims (App. Br. 184-85), (2) the modification eliminates functions of the cited art rendering them unfit for their intended purpose (id. at 186-87), and (3) the combination is the result of improper hindsight reasoning because no evidence outside of the cited references was provided by the Examiner (id. at 188). The problem with Appellants’ motivation argument is that it begs the question of whether any difference exists and fails to address the Examiner’s stated rationale for combining the references. In the absence of a technical explanation distinguishing the claimed invention over corresponding passages in the prior art as identified by the Examiner and addressing the Examiner’s reason for combining the references, 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.”))). 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. 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). Appeal 2012-003389 Application 11/486,973 7 AFFIRMED tc Copy with citationCopy as parenthetical citation