Ex Parte Jung et al

Patent Trial and Appeal Board

Feb 6, 2014

11731778 (P.T.A.B. Feb. 6, 2014)

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.
11/731,778 03/30/2007 Edward K.Y. Jung 0406-002-002-000000 8051
44765 7590 02/06/2014
THE INVENTION SCIENCE FUND
CLARENCE T. TEGREENE
11235 SE 6TH STREET
SUITE 200
BELLEVUE, WA 98004
EXAMINER
LUBIN, VALERIE
ART UNIT PAPER NUMBER
3626
MAIL DATE DELIVERY MODE
02/06/2014 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,
ERIC C. LEUTHARDT, ROYCE A. LEVIEN,
ROBERT W. LORD, and MARK A. MALAMUD
____________________

Appeal 2012-006159
Application 11/731,778
Technology Center 3600
____________________

Before: JOSEPH A. FISCHETTI, NINA L. MEDLOCK, and
PHILIP J. HOFFMANN, Administrative Patent Judges.

FISCHETTI, Administrative Patent Judge.

DECISION ON APPEAL

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STATEMENT OF CASE
Appellants seek our review under 35 U.S.C. § 134 from the
Examiner’s final rejection of claims 1, 2, 7, 17, 19, 20, 22, 25, 27, 32-39, 41-
49, 56, 70-75, and 77-80. An oral hearing was heard on September 12,
2013.
We reverse and enter a new ground of rejection under 37 C.F.R. §
41.50(b).

THE CLAIMED INVENTION
Appellants claim configuring software for effective health monitoring
(Title). Claim 1 is illustrative of the claimed subject matter:
1. A method comprising:
obtaining an indication of an activity status change of an
application program; and
invoking circuitry for causing a movement of data
distillation code relating to physiology-indicative data in
response to the indication of the activity status change of the
application program.

REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Surwit US 6,024,699 Feb. 15, 2000
Smith US 2008/0298603 A1 Dec. 4, 2008

REJECTIONS
The following rejections are before us for review.
The Examiner rejected claims 1, 2, 7, and 49 under 35 U.S.C. § 101 as
reciting non-statutory subject matter.
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The Examiner rejected claims 1, 2, 7, 17, 19, 22, 25, 27, 32-39, 41-49,
56, 70-75, and 77-80 under 35 USC § 112, second paragraph, as indefinite.
The Examiner rejected claims 1, 2, 7, 17, 19, 20, 22, 25, 27, 32-39,
41-49, 56, 70-75, 77, 79, and 80 under 35 U.S.C. § 102(b) as anticipated by
Surwit.
The Examiner rejected claim 78 under 35 U.S.C. § 103(a) as
unpatentable over Surwit and Smith.

FINDINGS OF FACT
We find the following facts by a preponderance of the evidence.
1. The Specification does not define or describe the term data distillation
code.
2. The ordinary and customary definition of the term “distill,” as defined
by Merriam Webster’s Collegiate Dictionary (10th ed.), is: “to take the
most important parts of something and put them in a different and
usually improved form.”
3. The Specification describes only by example various distillation
modules as including “invokers 1663, 1664, 1665 in one or more task
managers 1668, translators 1671, message parsers 1672, filters 1675,
1676, input processors 1678, evaluation logic 1680, option generators
1688, or ports 1689.” (Spec. 24:30-33) (emphasis deleted).
4. The Specification describes plural examples of distillation codes.
(Spec. 14:16-33)
5. The Specification describes distillation, in one variant, as extracting
data. (Spec. 35:19-23).
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6. The Specification describes distillation, in another variant, as ranking,
categorization, and indication of level. (Spec. 40:27-30).
7. The Specification describes data acceptable to a clinical analysis
module as recited in claim 49, stating:
Operation 2661 describes configuring the one or more
applications with one or more criteria for determining a
compatibility between the clinical analysis module and the first
clinical data (e.g. resource manager 1574 providing “B” type
app(s) 1592 with file types, protocol version numbers, or the
other filter parameters 1595 for generating an indication of
whether performance analysis logic 1456 can apparently
process “Type 2” portion 1567 at least partly in response to
descriptive data 1565).
(Spec. 42:12-17).
8. The Specification describes examples of determining data acceptable to
a clinical analysis module, stating, “a preliminary indication of
compatibility can be inferred in response to an error message, a type list,
an allowable range of values, or the like.” (Spec. 42:24-26).
9. The Specification describes, by example, obtaining an indication of an
activity status change of an application program as encompassing:
... receiving or otherwise detecting an indication that one or
more user programs 594 have come online, stalled, encountered
an error, completed a task, or the like). If a user powers up
external system 590, for example, this can cause one or more
programs 594 to be loaded or otherwise trigger such activity
status changes in some configurations.
(Spec. 12:28-32).
10. Surwit discloses physiology-indicative data that is “collected via a PPM
[that] may include physiologic or biologic data (e.g., blood glucose
measure, body temperature, urine ketones, and the like) and behavioral
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data (e.g., assessments related to diet, exercise, stress, the presence of
illness). (Col. 7, ll. 42-46).
11. Surwit discloses the “PPM may be configured to make automatic
adjustments to a patient's self-monitoring and treatment regimen based
on patient-entered data.” (Col. 7, ll. 58-60).
12. Surwit discloses the use of “a general purpose computer.” (Col. 5,
ll. 52-58).
13. Surwit discloses movement of code, in that:
The computer program instructions may also be loaded onto a
computer or other programmable data processing apparatus to
cause a series of operational steps to be performed on the
computer or other programmable apparatus to produce a
computer implemented process such that the instructions which
execute on the computer or other programmable apparatus
provide steps for implementing the functions specified in the
flowchart block or blocks.”
(Col. 5, l. 65 to col. 6, l. 6).
14. Invoking circuitry for causing a movement of code at application code
startup is described as being performed by a “loader,” which is a
“program routine that copies a program into memory for execution.”
(“Loader,” PC Magazine Encyclopedia, retrieved from
http://www.pcmag.com/encyclopedia on Dec. 16, 2013).
15. In section 2 on Organization and Operation of the Von Neumann
Architecture, process use of code in memory by invoking circuitry for
causing a movement of code is described as encompassing:
... the CPU. This component fetches (i.e., reads) instructions
and data from the main memory and coordinates the complete
execution of each instruction. It is typically organized into two
separate subunits: the arithmetic and logic unit (ALU) and the
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control unit. The ALU combines and transforms data using
arithmetic operations, such as addition, subtraction,
multiplication, and division, and logical operations, such as
bitwise negation, AND, and OR. The control unit interprets the
instructions fetched from the memory and coordinates the
operation of the entire system. It determines the order in which
instructions are executed and provides all of the electrical
signals necessary to control the operation of the ALU and the
interfaces to the other system components.
(Eigenmann, R. and Lilja, D. J., “Von Neumann Computers, “ Wiley
Encyclopedia of Electrical and Electronics Engineering, John Wiley
& Sons, 1999, p. 391, retrieved from
http://onlinelibrary.wiley.com/doi/10.1002/047134608X.W1704/full
on Dec. 30, 2013)
16. In section 2.2 on Virtual Memory, invoking circuitry for causing a
movement of code is described as encompassing paging, in that “[w]hen
a process makes a memory reference by issuing a virtual address, this is
translated into (1) an index in the page table in order to locate the page
this address is in and (2) an offset within the located page. If the page
that it looks up is not in the physical memory, a page fault occurs.
Demand paging brings that page in from the secondary memory (usually
a disk).” (Shih-Lien L. Lu, “Memory Architecture,” Wiley
Encyclopedia of Electrical and Electronics Engineering, John Wiley &
Sons, 1999, p. 536, retrieved from
http://onlinelibrary.wiley.com/doi/10.1002/047134608X.W1660/pdf on
Dec. 30, 2013.)
17. The Specification describes moving of code as encompassing copying
code. (Spec. 37:12-18).
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18. The Specification discloses the use of a general purpose computer,
stating, “processor 511 can be configured to move one or more
instances of optical data distillation code 513, interaction data
distillation code 517, configurable distillation code 518 or the like into
or out of memory 530 in response to the indication.” (Spec. 14:13-16).
19. The Specification describes:
Operation 2496 describes selecting the data distillation code in
response to an attribute of the application program (e.g. code
selection logic 1879 identifying code segment 1885 with a
memory address or other code-identifying information
associated with program 1842). Alternatively or additionally,
some or all of the code selection information can be received
from user interface 1854, table entries 1831, or the like.
(Spec. 38:9-13).
20. Surwit discloses “[a]utomated insulin adjustment algorithms with
physician-prescribed parameters are stored within each patient's PPM
for real-time analysis and adjustment of a patient's insulin dosage.”
(Col. 7, ll. 55-58).
21. Surwit discloses using first clinical data and a pointer to configure an
application to use second clinical data, stating:
A PPM may also monitor patient medication intake (e.g.,
insulin dosage). A PPM, depending on the chronic illness of the
patient, may contain software specifically designed for a
particular patient's illness. For example, a PPM for a diabetes
patient may contain physician-prescribed insulin dosage
algorithms. A PPM designed for a diabetes patient will store
blood glucose readings along with other relevant self-
monitoring patient data. Blood from a pricked finger may be
read on a chemically treated strip via the PPM. Automated
insulin adjustment algorithms with physician-prescribed
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parameters are stored within each patient's PPM for real-time
analysis and adjustment of a patient's insulin dosage.
(Col. 7, ll. 46-58).

ANALYSIS
Rejection of claims 1, 2, 7, and 49 under 35 U.S.C. § 101
The Examiner rejected claims 1, 2, and 7 as directed to non-statutory
subject matter “because the ‘tie’ (e.g. invoking circuitry) is representative of
extra-solution activity ....” (Ans. 5).
Claim 1 recites two steps: “obtaining an indication of an activity
status change of an application program” and “invoking circuitry ... in
response to the indication.” We construe the two steps to require the
execution of an application program on a general purpose computer, which
has become a special purpose computer by being programmed with an
application program that is “relating to physiology-indicative data.” The
“invoking” is, therefore, a significant step in initiating the computer to
respond to the “indication,” and is not mere insignificant extra-solution
activity because the second-recited step does not represent mere data
gathering or output, but rather is responsible for launching the desired
circuitry - which is the functional essence of the claim.
Therefore, we will not sustain the rejection of claims 1, 2, 7, and 49
under 35 U.S.C. § 101.
Rejection of claims 1, 2,7, 17, 19, 22, 25, 27, 32- 34, 39, 41, 48,
and 70-75 under 35 U.S.C. § 112, second paragraph
The Examiner rejected these claims as indefinite based on the claim
term “data distillation code” in independent claims 1, 17, and 33 which the
Examiner considers “unclear.” (Ans. 6, 14).
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Appellants argue the term’s meaning is clear, based on “clear
articulations” in the Specification. (App. Br. 53-58; see also Reply Br. 6-8).
We find that the Specification describes many examples of distillation
code (FF 3-6), but is not limited to these examples, and can, thus, include
other operations on data as well. During prosecution, the PTO gives claims
their “broadest reasonable interpretation consistent with the specification.”
In re Hyatt, 211 F.3d 1367 (Fed. Cir. 2000). “Breadth is not indefiniteness.”
In re Gardner, 427 F.2d 786, 788 (1970). Thus, the Examiner’s concerns
are a matter of claim breadth, not indefiniteness.
For these reasons, we find the claim term is not indefinite, and we
reverse the rejection of these claims under 35 U.S.C. § 112, second
paragraph.
Rejection of claims 49, 56, and 77-80 under
35 U.S.C. § 112, second paragraph
The Examiner rejected these claims based on the claim term
“acceptable” being ambiguous, in that the “Applicant does not set forth a
standard measure for what constitutes acceptable data.” (Ans. 6).
The Specification describes one example of an optional module that
may determine if data is acceptable to a module, describing that it involves
“whether performance analysis logic 1456 can apparently process” the data.
(FF 7). The Specification also provides additional examples, as “in response
to an error message, a type list, an allowable range of values, or the like.”
(FF 8). We, therefore, are able to construe the claim phrase, albeit broadly,
to be whether a software module is able to process data. The determination
of acceptability is not limited, and may utilize error messages, type data,
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ranges, and other methodologies for understanding whether a module can
process data.
Given this understanding of the broad meaning of the claim term, we
reverse the rejection under 35 U.S.C. § 112, second paragraph, of these
claims.
Rejection of claims 1, 2, and 7 under 35 U.S.C. § 102(b)
Appellants argue the cited sections of Surwit “do not show or
suggest” or “recite” the express language of claim 1, because the claim and
cited portions of Surwit are “very different on their faces,” and because the
cited portions Surwit “do not show or suggest the express language” of the
claim because the cited “technical material is different from Claim 1.”
(App. Br. 15-17; see also Reply Br. 3, 6-8).
The claim recites that the movement of code is in response to the
indication of the activity status change of the application program. We find
the term, indication of the activity status change, is not defined, but is
described in the Specification, by example, as encompassing an indication
that application programs may “have come online, stalled, encountered an
error, completed a task, or the like). If a user powers up external system
590, for example, this can cause one or more programs 594 to be loaded or
otherwise trigger such activity status changes in some configurations.”
(FF 9). Therefore we construe an indication of the activity status change of
the application program as encompassing, among other possibilities,
receiving an indication that a program is caused to be loaded for execution.
Although Surwit discloses “computer program instructions may also
be loaded onto a computer or other programmable data processing apparatus
to cause a series of operational steps to be performed on the computer”
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(FF 13), this is not necessarily in response to an indication of the activity
status change of an application program. Therefore, we will not sustain the
rejection under 35 U.S.C. § 102(b) of claim 1, and dependent claims 2 and 7.
Rejection of claims 1, 2, and 7 under 35 U.S.C. § 103(a)
We enter a new ground of rejection under 35 U.S.C. § 103(a) of
claims 1, 2, and 7 as unpatentable over Surwit.
We find Surwit discloses the use of physiology-indicative data
(FF 10), and data distillation code relating to that data (FF 11). Surwit also
discloses the use of a “general purpose computer,” (FF 12), and invoking
circuitry for causing a movement of data distillation code (FF 13).
Specifically, Surwit discloses “computer program instructions may also be
loaded onto a computer or other programmable data processing apparatus to
cause a series of operational steps to be performed on the computer ...”
(FF 13). We find that a general purpose computer uses a “loader” that
copies code into memory for execution (FF 14).
We, thus, find that a person with ordinary skill in the art would
recognize that Surwit’s loading of a program into memory for execution
meets the claim language by loading the program into memory for execution
by copying the code into memory.1

1 We also find other instances where a general purpose computer moves
code ... in response to an indication of the activity status change of an
application program, such as, when code is copied from the memory to the
CPU for execution (FF 15), and when the code is paged out and back into
memory by a virtual memory manager (FF 16). Although “movement of ...
code” is not defined by the Specification, the Specification describes loading
code by copying it into memory (FF 17), so we construe code movement to
encompass copying.
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Therefore, we find Surwit’s disclosure of the use of a general purpose
computer would be recognized by one of ordinary skill, along with the other
cited sections, as meeting the claim language of claim 1. The Appellants
provided no arguments specifically for claims 2 and 7, which are also
rejected using the Examiner’s other findings. (Ans. 7). Accordingly, we
leave to the Examiner’s consideration whether any of the subject matter of
the dependent claims would have been obvious using Surwit alone and/or in
combination with other reference(s).
Rejection of claims 17, 19, 20, 22, 25, 27, and 32 under 35 U.S.C. § 102(b)
Independent claim 17 recites “means for obtaining an indication of an
activity status change of an application program; and means for causing a
movement of data distillation code relating to physiology-indicative data in
response to the indication of the activity status change of the application
program.”
A claim limitation that includes the term “means,” coupled with the
recitation of a function, is presumed to be intended to invoke means-plus-
function treatment, i.e., treatment under 35 U.S.C. §112, ¶ 6. See Rodime
PLC v. Seagate Tech., Inc., 174 F.3d 1294, 1302 (Fed. Cir. 1999). That
presumption is rebutted if the claim recites sufficient structure for
performing the recited function. Otherwise, as here, the claim is construed
in accordance with 35 U.S.C. § 112, ¶ 6 by “look[ing] to the specification
and interpret[ing] that language in light of the corresponding structure,
material, or acts described therein, and equivalents thereof.” In re
Donaldson Co., 16 F.3d 1189, 1193 (Fed. Cir. 1994).
“‘Structure disclosed in the Specification is “corresponding” structure
only if the Specification or prosecution history clearly links or associates
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that structure to the function recited in the claim.”’ Med. Instrumentation &
Diagnostics Corp. v. Elekta AB, 344 F.3d 1205, 1210 (Fed. Cir. 2003)
(quoting B. Braun Med., Inc. v. Abbott Labs., 124 F.3d 1419, 1424 (Fed. Cir.
1997)). If the Specification fails to disclose corresponding structure, the
claim is indefinite under 35 U.S.C. § 112, second paragraph. See, e.g.,
Biomedino, LLC v. Waters Technologies Corp., 490 F.3d 946, 950 (Fed. Cir.
2007) (“If there is no structure in the specification corresponding to the
means-plus-function limitation in the claims, the claim will be found invalid
as indefinite.”).
Appellants direct us to Figure 6 and page 12, line 26, to page 14,
line 33 of the Specification as providing written description support for the
claim (App. Br. 7). Figure 6 discloses a flow chart that corresponds with the
two method steps of claim 1. But the text of pages 12-14 provides only
multiple examples of functions, and indications of what the invention “can
include,” “may” include, and “can optionally include.” The cited portion of
the Specification also only describes a processor and memory and basic
computer operations. (FF 18).
Appellants’ Specification, thus, uses examples rather than specifically
enumerated structure to correspond with the involved claim functions, and,
therefore, fails to provide adequate disclosure of structure corresponding to
the functions recited in the means-plus-function clauses of claim 17.
Since we do not find, enumerated in the Specification, structure
corresponding to the functional claim language, we summarily reverse the
rejection under 35 U.S.C. § 102 (b) and enter a new rejection under
35 U.S.C. § 112, second paragraph, for independent claim 17 and its
dependents claims 19, 20, 22, 25, 27, and 32 because one of ordinary skill in
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the art cannot determine the scope of claim 17. Therefore, the rejection over
prior art must fall, pro forma, as being necessarily based on speculative
assumptions as to the scope of this claim. See In re Steele, 305 F.2d 859,
862-63 (CCPA 1962).
Rejection of claims 33-39, 41-48, and 70-75 under 35 U.S.C. § 102(b)
Independent claim 33 recites “circuitry for obtaining an indication of
an activity status change of an application program; and circuitry for causing
a movement of data distillation code relating to physiology-indicative data in
response to the indication of the activity status change of the application
program.”
Appellants’ arguments are substantially similar to those directed at
claim 1. (App. Br. 21-23). Because the language of claim 33 is
substantially similar to that of claim 1, we reverse the rejection under
35 U.S.C. § 102(b) for the same reasons set forth above at claim 1. We also
reverse the rejection of dependent claims 34-39, 41-48, and 70-75.
Rejection of claims 33-39, 41, 43-48, 70, and 72-75 under 35 U.S.C.
§ 103(a)
We enter a new ground of rejection under 35 U.S.C. § 103(a) of
claims 33-39, 41, 43-48, 70, and 72-75 as unpatentable over Surwit, using
the same rationale as for claim 1, above.
Rejection of claim 42 under 35 U.S.C. § 103(a)
We enter a new ground of rejection under 35 U.S.C. § 103(a) of claim
42 as unpatentable over Surwit.
Dependent claim 42 recites “circuitry for requesting the data
distillation code relating to physiology-indicative data.”
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Surwit discloses making automatic adjustments based on patient-
entered data. (FF 11). We find one of ordinary skill would recognize this as
leading to code being loaded and executed (FF 13, 14), as well as the CPU
calling for the code (FF 15) or a page fault indicator calling for the code
(FF 16).
Rejection of dependent claim 71 under 35 U.S.C. § 103(a)
We enter a new ground of rejection under 35 U.S.C. § 103(a) of
claim 71 as unpatentable over Surwit.
Dependent claim 71 recites:
The system of claim 33 in which the circuitry for causing a
movement of data distillation code relating to physiology-
indicative data in response to the indication of the activity
status change of the application program comprises:
circuitry for selecting the data distillation code in
response to an attribute of the application program;
circuitry for requesting the data distillation code relating
to physiology-indicative data;
circuitry for receiving an indicator of an association
between the data distillation code and a data type;
circuitry for loading the data distillation code relating to
physiology-indicative data into a memory; and
circuitry for configuring a processor in response to one or
more physiological expressions.
Surwit discloses making automatic adjustments to programmed
routines (FF 11), which we find one of ordinary skill would recognize as
selecting ... code in response to an attribute of the application program,
because the received patient data is an attribute of the application program.
This is consistent with the meaning set forth in the Specification that “some
or all of the code selection information can be received from the user
interface 1854 ....” (FF 19). Surwit also discloses the use of a general
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purpose computer, which one of ordinary skill would recognize as
requesting and loading code at program startup, as new sections of code are
required, and during paging operations (FF 14-16), thus meeting the
remaining claim language.
Rejection of independent claim 49 under 35 U.S.C. § 102(b)
Independent claim 49 recites the requirement of a pointer:
A method comprising:
obtaining (a) first clinical data acceptable to a clinical
analysis module and (b) a pointer to the clinical analysis
module;
invoking circuitry for configuring one or more
applications using the pointer to the clinical analysis module
after receiving at least the first clinical data acceptable to the
clinical analysis module; and
using second clinical data acceptable to the clinical
analysis module with at least one of the one or more
applications configured using the pointer to the clinical analysis
module after receiving at least the first clinical data acceptable
to the clinical analysis module.
The Examiner cited to column 7 of Surwit as meeting the claim
requirement of a pointer to the clinical analysis module. (Ans. 9). However,
the text throughout column 7 does not explain the use of a pointer.
(See FF 10, 11, and 20). Therefore, we reverse the rejection of claim 49
under 35 U.S.C. § 102(b).
Rejection of claim 49 under 35 U.S.C. § 103(a)
We enter a new ground of rejection under 35 U.S.C. § 103(a) of claim
49 as unpatentable over Surwit.
Surwit discloses first clinical data as user-entered data as part of self-
monitoring. (FF 11). Surwit also discloses using second clinical data, such
as blood glucose readings. (FF 21). Thus, one of ordinary skill would
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recognize that the user-entered data could contain a pointer to the application
to process the data, which would utilize the blood glucose data to invoke
insulin dosage algorithms (Id.), thus meeting the claim language.
Rejection of claims 56 and 77, 79, and 80 under 35 U.S.C. § 102(b)
Use of the term “means” in independent claim 56 invokes means-plus-
function treatment under 35 U.S.C. §112, ¶ 6. However, the Specification
does not set forth specific structure2 corresponding to the recited means-
plus-function elements, as required by 35 U.S.C. § 112, sixth paragraph.
Since we do not find, enumerated in the Specification, specific
structure corresponding to the functional claim language, we summarily
reverse the 35 U.S.C. § 102 (b) rejection of independent claim 56 and
dependent claims 77, 79, and 80, and reverse the 35 U.S.C. § 103(a)
rejection of dependent claim 78. We enter a new rejection under 35 U.S.C.
§ 112, second paragraph, for independent claim 56 and its dependent claims
77-80 because one of ordinary skill in the art cannot determine the scope of
claim 56. See, e.g., Biomedino, 490 F.3d at 950. Therefore, the rejection
over prior art must fall, pro forma, as being necessarily based on speculative

2 Appellants direct us to page 15, line 22 to page 16 line 29 for support for
the 35 U.S.C. 112, Sixth Paragraph language. (App. Br. 12). This support
only describes that the first clinical data may be, but is not limited to being,
obtained via a link, downloading, from within the system, by keypad, or via
a network. (Spec. 15:22-16:8). The Specification further describes the
configuring means as encompassing plural modes, such as, generating or
adapting an application, using a compiler or task processor, repeating and
resuming operations, or after receiving another pointer or increment, type, or
aspect of data, such as from an operator. (Spec. 16:9-18). Finally, the
Specification describes only by example using the second clinical data by
the application. (Spec. 16:19-29).

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assumptions as to the scope of this claim. See In re Steele, 305 F.2d at 862-
63.

CONCLUSIONS OF LAW
The Examiner erred in rejecting claims 1, 2, 7, and 49 under 35
U.S.C. § 101.
The Examiner erred in rejecting claims 1, 2, 7, 17, 19, 22, 25, 27, 32-
39, 41-49, 56, 70-75, and 77-80 under 35 USC § 112, second paragraph.
The Examiner erred in rejecting claim 78 under 35 U.S.C. § 103(a).
The Examiner erred in rejecting claims 1, 2, 7, 17, 19, 20, 22, 25, 27,
32-29, 41-49, 56, 70-75, 77, 79, and 80 under 35 U.S.C. § 102(b).
DECISION
For the above reasons, the Examiner’s rejection under 35 U.S.C.
§ 102(b) of claims 1, 2, 7, 17, 19, 20, 22, 25, 27, 32-29, 41-49, 56, 70-75,
77, 79, and 80 is REVERSED. The Examiner’s rejection of claim 78 under
35 U.S.C. § 103(a) is REVERSED. The Examiner’s rejection of claims 1, 2,
7, and 49 under 35 U.S.C. § 101 is REVERSED. The Examiner’s rejection
of claims 1, 2, 7, 17, 19, 22, 25, 27, 32-39, 41-49, 56, 70-75, and 77-80
under 35 USC § 112, second paragraph is REVERSED. We enter a NEW
GROUND of rejection under 35 U.S.C. § 103(a) of claims 1, 2, 7, 33-29, 41-
49, 70-75, as unpatentable over Surwit and enter a new ground of rejection
under 35 U.S.C. § 112, second paragraph, for claims 17, 19, 20, 22, 25, 27,
32 56, and 77-80.
This decision contains new grounds of rejection pursuant to 37 C.F.R.
§ 41.50(b) (2008). 37 C.F.R. § 41.50(b) provides “[a] new ground of
Appeal 2012-006159
Application 11/731,778

19
rejection pursuant to this paragraph shall not be considered final for judicial
review.”
37 CFR § 41.50(b) also provides that the Appellants, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new ground of rejection to
avoid termination of the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate amendment of the
claims so rejected or new evidence relating to the claims so rejected, or both,
and have the matter reconsidered by the examiner, in which event the
proceeding will be remanded to the examiner . . . .
(2) Request rehearing. Request that the proceeding be reheard under §
41.52 by the Board upon the same record . . . .
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).

REVERSED; 37 C.F.R. § 41.50(b)

Vsh