Chin, Sarah

Patent Trials and Appeals BoardNov 8, 2019

14658101 - (R) (P.T.A.B. Nov. 8, 2019)

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. 14/658,101 03/13/2015 Sarah Chin SCHIN01 3996 98262 7590 11/08/2019 David E. Crites 15900 Rochin Terrace Los Gatos, CA 95032 EXAMINER MARLEN, TAMMIE K ART UNIT PAPER NUMBER 3792 NOTIFICATION DATE DELIVERY MODE 11/08/2019 ELECTRONIC 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. Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the following e-mail address(es): critesd@umich.edu davidcrites@frontier.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte SARAH CHIN Appeal 2019-002062 Application 14/658,101 Technology Center 3700 ____________ Before MICHAEL J. FITZPATRICK, WILLIAM A. CAPP, and JILL D. HILL, Administrative Patent Judges. FITZPATRICK, Administrative Patent Judge. DECISION ON REQUEST FOR REHEARING Appellant, Sarah Chin, requests rehearing under 37 C.F.R. § 41.52 of our Decision of September 25, 2019 (“Decision”), wherein we affirmed the Examiner’s rejection of claims 1–20 under 35 U.S.C. § 112(a) for lack of written description. See Request for Rehearing filed September 28, 2019 (“Request”). The Request is denied. Appeal 2019-002062 Application 14/658,101 2 DISCUSSION A request for rehearing must state with particularity the point(s) believed to have been misapprehended or overlooked. 37 C.F.R. § 41.52(a)(1). The Request does not comply with this Rule. See generally Request. For example, merely stating how the Decision allegedly “errs” is insufficient. See id. at 1 (“The Decision then errs by failing to look at the specification as a whole for the ‘type of data’ that may be collected.”). Even excusing this failure by the Request, the arguments therein are not persuasive of error. Claim 1 recites that “the high risk mode does not comprise timing a blood pressure measurement” and that “the high risk mode does not comprise collecting a blood pressure measurement.” Appeal Br. 12. Claim 11, the only other independent claim, recites these same limitations. Id. at 14. In the Decision, we affirmed the Examiner’s rejection, finding that the Specification does not describe these limitations. Decision 5–6. In the Appeal Brief, Appellant had argued that “Paragraphs [0019] and [0027] Support Blood Pressure Measurement Under §112(a).” Appeal Br. 4 (brackets by Appellant) (underlining omitted). In response to that argument, the Decision explicitly discussed and considered, in significant detail, the disclosure included in both of the identified paragraphs. See Decision 4–5. The Decision additionally considered the Specification as a whole. In particular, we reviewed the entire Specification to discern whether it contained any possible additional support for the limitation at issue. We found none, stating that “Paragraph 19 is the only portion of the Specification that describes what the risk mode may be.” Decision 5. Appeal 2019-002062 Application 14/658,101 3 Notably, the Request does not dispute that finding. See Request 1–2 (“Even if paragraph [0019] of the Specification ‘is the only portion of the Specification that describes what the risk mode may be’, it is not the only portion of the Specification that describes what the ‘data’ may be.” (quoting Decision 5)). As stated in the Decision: Paragraph 19 includes fifteen sentences that begin as follows: “A high risk mode [] may comprise . . . .” Spec. ¶19. In none of those sentences is blood pressure mentioned. Id. The sentence of Paragraph 19 on which Appellant relies merely discloses that a “high risk mode 121 may comprise a mode of the apparatus wherein the apparatus increases data collection frequency.” Spec. ¶19. This sentence refers to “data” generally; it does not specify any particular type of data that is collected. Decision 5. We appreciate Appellant’s arguments that the “data” generically referred to in paragraph 19 of the Specification could encompass, among other things, blood pressure data in light of paragraph 27 (or the additionally referenced paragraphs 25 and 29). See Request 2. However, this disclosure, at best, would render the claims obvious. But that is not sufficient. See Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1352 (Fed. Cir. 2010) (en banc) (“[W]hile the description requirement does not demand any particular form of disclosure, or that the specification recite the claimed invention in haec verba, a description that merely renders the invention obvious does not satisfy the requirement.”) (citations omitted). In order to satisfy the written description requirement, the Specification as filed must convey with reasonable clarity to those skilled in the art that the inventor was in possession of the invention, as now claimed. Purdue Pharma L.P. v. Appeal 2019-002062 Application 14/658,101 4 Faulding, Inc., 230 F.3d 1320, 1323 (Fed. Cir. 2000). The Specification does not. For the foregoing reasons, Appellant’s Request is denied. SUMMARY Outcome of Decision Rehearing: Claims Rejected Basis Denied Granted 1–20 §112(a); written description 1–20 Final Outcome of Appeal after Rehearing: Claims Rejected Basis Affirmed Reversed 1–20 §112(a); written description 1–20 DENIED