Ex Parte Kavusi et al

Patent Trial and Appeal Board

Sep 28, 2017

13017391 (P.T.A.B. Sep. 28, 2017)

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.
13/017,391 01/31/2011 Sam Kavusi 1576-0731 6553
10800 7590 09/28/2017
Maginot, Moore & Beck LLP
One Indiana Square, Suite 2200
Indianapolis, IN 46204
EXAMINER
ALKAFAWI, EMAN A
ART UNIT PAPER NUMBER
2865
MAIL DATE DELIVERY MODE
09/28/2017 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 SAM KAVUSI and CHRISTOPH LANG1
____________

Appeal 2016-002476
Application 13/017,391
Technology Center 2800
____________

Before PETER F. KRATZ, BEVERLY A. FRANKLIN, and
MONTÉ T. SQUIRE, Administrative Patent Judges.

FRANKLIN, Administrative Patent Judge.

DECISION ON APPEAL

1 Appellants identify the real party in interest as Robert Bosch GmbH. App.
Br. 2.
Appeal 2016-002476
Application 13/017,391

2
Appellants request our review under 35 U.S.C. § 134 from the
Examiner’s decision rejecting claims 1–20. We have jurisdiction over the
appeal under 35 U.S.C. § 6(b).

STATEMENT OF THE CASE
Claim 1 is illustrative of Appellants’ subject matter on appeal and is
set forth below (with text in bold for emphasis):
1. A biomarker monitoring system comprising:
a communications network;
a portable wellness device configured to form a
communication link with the communications network, the
portable wellness device including
a detector configured to detect at least one
biomarker in a biologic sample,
a first memory,
a plurality of program instructions stored in the
first memory, and
a processing circuit operably connected to the first
memory and configured to execute the program
instructions to generate wellness data over a period of
time based upon detection of the at least one biomarker
in the biologic sample; and
a remote user interface operably connected to the
communications network and configured to render the wellness
data, wherein the rendered wellness data depicts a variation
associated with the at least one biomarker during the period
of time along with one or more of a depiction of a variation
of a personal factor which may influence the health of an
immune system during the period of time and depiction of a
variation of an environmental factor which may influence
the health of the immune system during the period of time.

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Application 13/017,391

3
The Examiner relies on the following prior art references as evidence
of unpatentability:
Chappell et al. US 2006/0094056 A1 May 4, 2006
(“Chappell”)
Duncan US 2012/0237954 A1 Sept. 20, 2012
Friedland et al. WO 2010/099607 A1 Sept. 10, 2010
(“Friedland”)

THE REJECTIONS
1. Claims 1–18 and 20 are rejected under 35 U.S.C. §103(a) as being
unpatentable over Friedland in view of Duncan.
2. Claim 19 is rejected under pre-AIA 35 U.S.C. § 103(a) as being
unpatentable over Friedland in view of Duncan, and further in view of
Chappell.

ANALYSIS
We can focus on the aspect of the claims pertaining to the claim
element set forth below in resolving the dispositive issue in this case:
wherein the rendered wellness data depicts a variation associated with
the at least one biomarker during the period of time along with one or
more of a depiction of a variation of a personal factor which may
influence the health of an immune system during the period of time
and depiction of a variation of an environmental factor which may
influence the health of the immune system during the period of time.

It is the Examiner’s position that Friedland teaches most of the
elements recited in claim 1. Final Act. 1–4. The Examiner states that
Friedland is silent regarding the claim element pertaining to variation of
personal and environmental factor during the period of time. Final Act. 4.
The Examiner relies upon Duncan for teaching this element, and refers to
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¶¶ 198 and 202 in this regard, stating that Duncan teaches wherein the
change of the results for certain selected patients has a time dependent rate,
and further refers to Figures 18B, 19A and 19B.
The Examiner also refers to Duncan’s Table 9 and ¶¶ 203–204 and
states that this disclosure teaches, during a certain period of time, specific
conditions such as (age, gender, former smoker) which reads on personal
factors, and other conditions such as (Caucasian, African-American, Native
American), which reads on “environmental factors.” Final Act. 4.
The Examiner also refers to ¶ 51 and Figures 19A and 19B for
teaching curve A for patients with a major adverse event (transplantation),
which reads on personal factors, and curve B for patients with diffusion
capacities for carbon monoxide, which reads on environmental factors. Final
Act. 4–5.
The Examiner concludes that it would have been obvious to have
applied the teaching of considering personal conditions along with
environmental conditions at the testing and diagnosing stage and within a
certain study time period as taught by Duncan and apply it to the teachings
of Friedland, as this type of inclusive study results in better statistical
comprehensive data with relative outcomes. Duncan ¶¶ 15, 203 and 126.
Final Act. 5.
Appellants argue that the Examiner mischaracterizes Duncan
regarding the claim term at issue (reproduced, supra). Appeal Br. 9.
Appellants dispute the Examiner’s position that Duncan depicts variation of
a personal factor or environmental factor over the same period that wellness
data is generated based upon Table 9 or Figures 19A and 19B of Duncan,
within the meaning of their claims. Appeal Br. 9–10.
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5
Appellants submit that Table 9 is simply a snapshot of the
demographic information for a pool of test subjects. Duncan, ¶ 204.
Appellants argue that data taken at a single moment in time, apparently at
the beginning of the study, is not a “variation” of either a personal factor or
an environmental factor over the same period that wellness data is generated
as required by claim 1 Appeal Br. 9–10. Appellants submit that therefore
Table 9 of Duncan does not support the Examiner’s characterization.
Appeal Br. 10.
Appellants also argue that Duncan’s Figure 19A depicts survival rates
of two groups of test subjects over a 12 month period after a CD28% assay
was obtained [emphasis added]. Duncan, ¶ 51 and FIG. 19A. Appeal Br. 10.
Appellants submit that, as an initial matter, there is no stated correlation to
any wellness data which the Examiner alleged to be disclosed at ¶¶ 198 and
202. Rather, Duncan explicitly states at ¶ 197 that the “time dependent rate”
of Figure 18B resulted from data which was obtained using “prior CD28%
determinations”. Appeal Br. 10. Appellants submit that therefore the period
of the alleged “wellness data” terminated at the time the alleged
personal/environmental data began. Appellants therefore conclude that
Duncan fails to disclose depiction of a personal factor or environmental
factor over the same period that wellness data is generated. Id.
Appellants further argue that Duncan’s Figures 19A and 19B are not
personal or environmental factors. Appeal Br. 10. Rather, Appellants
submit that, as stated at ¶ 51, Figures 19A and 19B show survival rates for
the twelve month period following inception of the study. Appellants state
that a group survival rate is neither a “personal factor” nor an
“environmental factor”. Appeal Br. 10. Appellants submit that the survival
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rate of a group does not “affect the subject’s immune system”, and refers to
the stated definition of “personal factor” and “environmental factor” at ¶¶
45–46 of the Specification in this regard. In other words, data showing that
34 of 44 patients with high CD28% died or had a lung transplant over a
twelve month period could not possibly cause or influence any one of the
deaths or transplants. Appellants submit that the data in Figures 19A and
19B therefore cannot “affect the immune system” of any of the patients.
Therefore, group statistics are not personal or environmental factors. Appeal
Br. 10–11.
Therefore, Appellants submit that the applied art does not disclose or
suggest a variation of wellness data over the same timeframe during which
the wellness data is generated along with a depiction of a personal factor or
environmental factor over that same period as required by claim 1. Appeal
Br. 11.
In response, the Examiner states that any matter that changes over
time, is a variation of that specific matter within the specific time period.
Ans. 7. However, the Examiner misses the point made by Appellants that a
snapshot is a single moment in time which cannot depict a variation during a
period of time. Also, that data of Figures 19A and B involves group survival
rates which is not a “personal factor” or an “environmental factor” within
the meaning of claim 1, as discussed, supra. Also, as discussed, supra,
Duncan’s Figure 19A depicts survival rates of two groups of test subjects
over a 12 month period after a CD28% assay was obtained [emphasis
added], and therefore cannot reflect a depiction of a personal factor
or environmental factor over the same period that wellness data is generated.
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7
Notably, the Examiner does not adequately address this specific point made
by Appellants.
In view of the above, we reverse Rejection 1. We also reverse
Rejection 2 because the Examiner does not use Chappell to cure the stated
deficiencies of the combination of Friedland in view of Duncan.

DECISION
Each rejection is reversed.

REVERSED