Ex Parte Bakarania et al

Patent Trial and Appeal BoardAug 28, 2013

11423093 (P.T.A.B. Aug. 28, 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. 11/423,093 06/08/2006 Neel Bakarania AGAM.P-021 5214 57381 7590 08/29/2013 Larson & Anderson, LLC P.O. BOX 4928 DILLON, CO 80435 EXAMINER WU, DANIEL J ART UNIT PAPER NUMBER 2681 MAIL DATE DELIVERY MODE 08/29/2013 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 NEEL BAKARANIA, JOSEPH FLAHERTY, TIMOTHY GOLNIK, ROBERT RICE, GARY TSAI, SONNY VU, and BAOGUO WEI ____________ Appeal 2011-004243 Application 11/423,0931 Technology Center 2600 ____________ Before MARC S. HOFF, MICHAEL J. STRAUSS, and JUSTIN BUSCH, Administrative Patent Judges. HOFF, Administrative Patent Judge. DECISION ON APPEAL Appellants appeal under 35 U.S.C. § 134(a) from a final rejection of claims 1-3, 7, 11, 15, 19-23, 25, 29, 33, 34, and 37-43.2 We have jurisdiction under 35 U.S.C. § 6(b). We affirm-in-part. 1 The real party in interest is AgaMatrix, Inc. 2 Claims 4-6, 8-10, 12-14, 16-18, 24, 26-28, 30-32, 35, and 36 have been cancelled. Appeal 2011-004243 Application 11/423,093 2 STATEMENT OF THE CASE Appellants’ invention is a data collection system and interface for facilitating data transfer between a portable or hand-held glucose or similar analyte detection meter and a base station. Test result information stored in the meter is periodically and routinely transferred from the meter to a base station such as a personal computer. When a user brings the meter into a predefined proximity to the base station, a communication link between the meter and the base station is established and data transfer is initiated between the devices in the absence of user intervention (Spec. 1-2). Independent claim 1, reproduced below, is representative of the subject matter on appeal. 1. A data collection system comprising an analyte detection meter and a base station, wherein (a) the meter performs an analysis of a sample, determines a level of the analyte and stores analyte data; (b) the meter and the base station are operatively connected to one another to transfer analyte data from the meter to the base station; (c) the base station comprises means for communicating transferred data to a data receiving server; and (d) transfer of analyte data from the meter to the base station occurs in response to a defined stimulus; wherein the defined stimulus is proximity of the meter to the base station such that a wireless signal from the meter can be detected by the base station and vice versa, whereby when the meter and the base station are in a predefined proximity analyte data transfer between the meter and the base station occurs in the absence of user intervention, other than a user bringing the meter into the predefined proximity to the base station. REFERENCES Causey US 6,558,320 B1 May 6, 2003 Appeal 2011-004243 Application 11/423,093 3 Tanada US 2003/0125074 A1 Jul. 3, 2003 Moran US 2003/0163622 A1 Aug. 28, 2003 Burnes US 2006/0064020 A1 Mar. 23, 2006 Dua US 2006/0258289 A1 Nov. 16, 2006 Quy US 2007/0293733 A1 Dec. 20, 2007 REJECTIONS Claims 1-3, 7, and 19 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Causey in view of Tanada. Claims 23, 25, 29, and 34 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Causey in view of Moran and Dua. Claim 33 stands rejected under 35 U.S.C. § 103(a) as being unpatentable over Causey in view of Moran, Dua, Quy, and Burnes.3 Claims 11, 15, 20-22, and 40-43 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Causey in view of Tanada, Quy and Burnes. Claims 37-39 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Causey in view of Moran, Dua, and Burnes.4 ISSUES Appellants argue that Tanada fails to teach the initiation of data transfer occurring in response to the defined stimulus of proximity of the meter to the base station, and in the absence of user intervention (App. Br. 3 The Examiner’s statement of rejection mentions Tanada. However, the Examiner’s explanation of the rejection does not mention Tanada, or any specific teachings of the Tanada reference. We will treat claim 33 as if Tanada forms no part of the rejection made by the Examiner. 4 See the rejection of claim 33, supra. We treat the Examiner’s rejection of claims 37-39 as if Tanada were not present in the statement of rejection. Appeal 2011-004243 Application 11/423,093 4 7). Appellants allege that in Tanada, the user must initiate Bluetooth functionality on both the first and second devices prior to any communication link being established (App. Br. 8). With respect to claim 7, Appellants contend that the Examiner’s proposed modification of Causey to remove the display from a computer is the product of improper hindsight (App. Br. 9). Appellants’ arguments present us with the following issues: 1. Does the combination of Causey and Tanada teach or fairly suggest transfer of analyte data from the meter to the base station in response to the defined stimulus of proximity of the meter to the base station, occurring in the absence of user intervention? 2. Would it have been obvious to the person having ordinary skill in the art to modify Causey by removing the display from computer 12? PRINCIPLES OF LAW Section 103(a) forbids issuance of a patent when ‘the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains.’ KSR Int'l Co. v. Teleflex, Inc., 550 U.S. 398, 406 (2007). The question of obviousness is resolved on the basis of underlying factual determinations including (1) the scope and content of the prior art, (2) any differences between the claimed subject matter and the prior art, (3) the level of skill in the art, and (4) where in evidence, so-called secondary considerations. Graham v. John Deere Co., 383 U.S. 1, 17-18 (1966). See also KSR, 550 U.S. at 407, (“While the sequence of these questions might be reordered in Appeal 2011-004243 Application 11/423,093 5 any particular case, the [Graham] factors continue to define the inquiry that controls.”). ANALYSIS CLAIMS 1-3 AND 19 We select claim 1 as representative of this group of claims, pursuant to our authority under 37 C.F.R. § 41.37(c)(1)(vii). Appellants’ argument that Tanada does not teach data transfer between the meter and the base station occurring in the absence of user intervention (App. Br. 7-8) is not persuasive. We agree with the Examiner that it is inherent in Appellants’ disclosure that if both the meter and the base station listen constantly for a wireless signal from the other, each device must necessarily be configured and enabled by a user in order for such constant listening to occur (Ans. 17; Spec. 7). We therefore find that in both Tanada and Appellants’ invention, subsequent to initial configuration, communication and/or data transfer occur upon appropriate proximity of devices, without user intervention. Consequently, we agree with the Examiner’s finding (Ans. 18) that Tanada’s teaching of a Bluetooth device search, followed by data communication if it is determined that the acceptor terminal is in range of the initiator terminal (¶¶ [0067]-[0070]), corresponds to the claimed transfer of data in response to the defined stimulus of proximity of the meter to the base station. Because we find that the Examiner did not err in rejecting representative claim 1, we will sustain the Examiner’s § 103 rejection of claims 1-3 and 19. CLAIM 7 Appeal 2011-004243 Application 11/423,093 6 Appellants’ argument that the Examiner’s proposed modification of Causey in view of Tanada constitutes improper hindsight reconstruction (App. Br. 9) is not persuasive to establish that the Examiner erred. The Examiner relies on Causey for a teaching of a base station in a separate housing from a data receiving server (Ans. 6). We agree with the Examiner that the person having ordinary skill in the art would have been motivated to remove the display from a device functioning as a base station in order to reduce the manufacturing cost of the device (Ans. 7). We further agree with the Examiner’s finding that Causey teaches that laptop computer 12 may be replaced with a different processing device, such as a data processor or modem, neither of which includes a display (Ans. 7; col. 6, ll. 7-32). We find that the Examiner did not err in rejecting claim 7. We will sustain the § 103 rejection. CLAIMS 11, 15, 20-22, AND 40-43 Each of these claims depends from independent claim 1. Appellants argue only that Quy and Burnes fail to provide the limitations missing from Causey and Tanada (App. Br. 10-11). As explained supra, we do not agree with Appellants that any limitations are missing from the references. Thus, we will sustain the Examiner’s § 103 rejection of claims 11, 15, 20-22, and 40-43, for the reasons given with respect to independent claim 1, supra. CLAIMS 23, 25, 29, AND 34 Independent claim 23, like independent claim 1 discussed supra, recites a base station operatively connected to the meter to transfer analyte Appeal 2011-004243 Application 11/423,093 7 data from the meter in response to the defined stimulus of proximity of the meter to the base station. The Examiner’s rejection fails to explain where any of the applied references (Causey, Moran, and Dua) teach such automatic data transfer upon proximity (see Ans. 8). We therefore agree with Appellants that the combination of Causey, Moran, and Dua fails to teach all the limitations of claims 23, 25, 29, and 34. We will not sustain the Examiner’s § 103 rejection. CLAIMS 33 AND 37-39 Claims 33 and 37-39 depend from independent claim 23, whose rejection we do not sustain supra. We have reviewed Quy and Burnes, and we find that they do not remedy the deficiencies of Causey, Moran, and Dua with respect to the limitations of independent claim 23. Thus, we will not sustain the Examiner’s rejection of claim 33, or claims 37-39, for the same reasons expressed supra with respect to claim 23. CONCLUSIONS 1. The combination of Causey and Tanada teaches transfer of analyte data from the meter to the base station in response to the defined stimulus of proximity of the meter to the base station, occurring in the absence of user intervention. 2. It would have been obvious to the person having ordinary skill in the art to modify Causey by removing the display from computer 12. Appeal 2011-004243 Application 11/423,093 8 DECISION The Examiner’s decision rejecting claims 1-3, 7, 11, 15, 19-22, and 40-43 is affirmed. The Examiner’s decision rejecting claims 23, 25, 29, 33, 34, and 37-39 is reversed. 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)(iv). AFFIRMED-IN-PART gvw