Ex Parte Jung et al

Patent Trial and Appeal Board

Mar 20, 2013

11888627 (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.
11/888,627 07/31/2007 INV001Edward K.Y. Jung SE1-0193-US 4454
80118 7590 03/21/2013
Constellation Law Group, PLLC
P.O. Box 220
Tracyton, WA 98393
EXAMINER
WOODS, TERESA S
ART UNIT PAPER NUMBER
3686
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
LOWELL L. WOOD, JR.
________________

Appeal 2011-011419
Application 11/888,627
Technology Center 3600
________________

Before FRED E. MCKELVEY, JEFFREY T. SMITH, and
DONNA M. PRAISS, Administrative Patent Judges.

PRAISS, Administrative Patent Judge.

DECISION ON APPEAL

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STATEMENT OF THE CASE
This is an appeal under 35 U.S.C. § 134 from the final rejection of
claims 1-4, 6-7, 11, 18, 23, 24, 26-28, 31-35, 38, 48, 55, 60-61, 63-65, 68,
137-142, and 152-157. We have jurisdiction under 35 U.S.C. § 6.
Appellants' claimed invention relates to computational methods and
systems associated with nutraceutical related assays. Spec. 7. Claim 1 is
illustrative:
1. A method comprising:
assaying one or more samples associated with one or more individuals
for one or more indicators;
accepting input associated with nutraceutical usage by one or more of
the individuals; and
processing, using one or more processors, results of the assaying one
or more samples associated with one or more individuals for one or more
indicators and the input associated with nutraceutical usage by one or more
of the individuals by comparing from two or more different times one or
more values associated with the nutraceutical usage, determining one or
more changes in one or more of the values associated with the nutraceutical
usage, identifying based upon one or more of the changes one or more
relationships between the nutraceutical usage and one or more of the
indicators, and determining based upon one or more of the relationships one
or more nutraceutical dosages or modification of one or more nutraceutical
dosages.

The Examiner relied on the following references in rejecting the
appealed subject matter:
Holmes U.S. 2006/0264780 A1 Nov. 23, 2006
Jemison U.S. 2004/0225203 A1 Nov. 11, 2004
The Examiner maintains, and Appellants appeal, the rejection of
claims 1-4, 6-7, 11, 18, 23, 24, 26-28, 31-35, 38, 48, 55, 60-61, 63-65, 68,
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137-142, and 152-157 under 35 U.S.C. § 103(a) as being unpatentable over
Holmes in view of Jemison.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. 20). Appellants contend the Examiner fundamentally erred
because “the art of record does not recite the text of Appellant’s claims at
issue, and hence fails to establish a prima facie case of unpatentability (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
1-4, 6-7, 11, 18, 23, 24, 26-28, 31-35, 38, 48, 55, 60-61, 63-65, 68, 137-142,
and 152-157 (see Final 5-26; Ans. 6-23). 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 (Ans. 6-23). 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. 6-7),
it would have been obvious to one of ordinary skill in the art, at
the time of the invention, to have modified the system and

1 The rejection of claims 1-4, 6-7, 11, 18, 23, 24, 26-28, 31-35, 38, 48, 55,
60-61, 63-65, 68, and 152-157 under 35 U.S.C. § 101 stands withdrawn by
the Examiner. Ans. 4.
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method of Holmes so as to have included the multiple users
input of Jemison to comprehensively share results among a
medical professional network for analyzing and reporting to
have improved the efficiency of the method, since so doing
could be performed readily and easily by any person of ordinary
skill in the art, with neither undue experimentation nor risk of
unexpected results.

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.2 In our view, the Examiner
has not relied on unsupported, conclusory statements, but has fully explained
the reason to modify Holmes. (See e.g. Ans. 6-7, 16-17).3 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., App. Br. 20, 49, 51, 55, 60 fn.17, 65, 67,
69, 72, 74, 75, 79-80, 85) 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 at 1363. A reference
does not have to satisfy an ipsissimis verbis test to disclose a claimed

2 The Examiner found that the underlying elements used in the process of
Holmes meet the means limitations of independent claim 137 (Ans. 16-17).
Appellants have not contested the scope of equivalents for the means
limitations.
3 “[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).
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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).
Similarly, Appellants’ repeated allegation that the Examiner has
mapped claim limitations to specific disclosures in the cited references in a
way that “does not address the express language” of a claim (see, e.g., App.
Br. 49, 79) does not explain the significance of any difference. For example,
Appellants quote with emphasis process step [c] in claim 1 and assert it has
been “mapped . . . onto” a quoted portion of the Final Office Action mailed
November 24, 2010 (see App. Br. 48). Appellants provide no explanation
how they reach the conclusion that the Examiner’s stated rejection “does not
address the express language” of claim 1 (see id. at 48-49).
Appellants also contend that the Examiner has not supported the
obviousness rejections. However, Appellants provide no explanation how
the cited references fail to provide such support (see, e.g., id. at 49, 80). For
example, Appellants reproduce the Examiner’s rejection of claim 1 under the
heading “The USPTO is Characterizing/Asserting Holmes to ‘Teach’ the
Text of Independent Claim 1, But Does Not Support Its
Characterization/Assertion . . .” and summarize in one sentence “Appellant
respectfully disagrees and traverses the rejection.” Id. at 49-51. No
explanation is provided for the conclusion in the heading that the rejections
are unsupported. Appellants merely reproduce the Examiner’s rejection
(see, e.g., id. at 50-51), reproduce the sections of the references cited by the
Examiner (see, e.g., id. at 52-53), and leave it to the reader to determine the
significance of any difference (see, e.g., id. at 55 (“Appellant has shown by
direct quotations that Independent Claim 1 and the Holmes references are
very different on their faces.”)).
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Appellants further contend that the Examiner’s rejection requires “an
affidavit setting forth objectively verifiable evidence sufficient to ‘close the
gap’ between the characterization and what the reference actually recites.”
Id. at 57; see, id. at 60n.17, 87. However, Appellants’ objection to the
Examiner’s technical explanation of how the claim is obvious in view of the
prior art lacks technical explanation of what the error is.
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 U.S.P.Q.2d 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 as unpatentable under 35
U.S.C. § 103(a). Because we affirm the obviousness rejection of all of the
claims on appeal, we do not accept the Examiner’s invitation to reject all of
the claims under 35 U.S.C. § 102(b) as anticipated by Holmes. (See Ans.
23).

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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

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