Ex Parte Grigorov et al

Patent Trial and Appeal Board

Apr 7, 2016

12112844 (P.T.A.B. Apr. 7, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/112,844 04/30/2008
29157 7590
K&L Gates LLP-Chicago
P.O. Box 1135
CHICAGO, IL 60690
04/11/2016
FIRST NAMED INVENTOR
Martin Grigorov
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
3712036.00878 9918
EXAMINER
REYES, REGINALD R
ART UNIT PAPER NUMBER
3686
NOTIFICATION DATE DELIVERY MODE
04/11/2016 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):
USpatentmail@klgates.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MARTIN GRIGOROV and LAURENT-BERNARD FAY
Appeal2013-009424 1
Application 12/112,8442
Technology Center 3600
Before HUBERT C. LORIN, NINA L. MEDLOCK, and
BRADLEY B. BAY AT, Administrative Patent Judges.
MEDLOCK, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's
rejection of claims 1-9 and 11-24. We have jurisdiction under 35 U.S.C.
§ 6(b ).
We AFFIRM-IN-PART.
1 Our decision references Appellants' Appeal Brief ("App. Br.," filed
January 15, 2013) and Reply Brief ("Reply Br.," filed July 16, 2013), and
the Examiner's Answer ("Ans.," mailed May 23, 2013) and Final Office
Action ("Final Act.," mailed July 6, 2012).
2 Appellants identify Nestec S.A. as the real party in interest. App. Br. 2.
Appeal2013-009424
Application 12/112,844
CLAIMED INVENTION
Appellants' disclosure "is directed to methods of measuring the
effects of nutritional products on a consumer and generating revenue from
products related to same" (Spec. i-f 1 ).
Claims 1, 18, and 23, reproduced below, are illustrative of the subject
matter on appeal:
1. A method of monitoring an effect of a product on a
consumer, the method comprising:
providing a nutritional product and a personal monitoring
device as a packaged assembly for use by the consumer, wherein
the consumer consumes the nutritional product and wherein the
nutritional product is selected from the group consisting of dairy
drink, dairy powder, cereal bar, protein bar, vegetable drink and
combinations thereof; and
measuring efficacy of the nutritional product packaged
with the personal monitoring device, wherein the efficacy of the
nutritional product is measured by using the personal monitoring
device to measure an effect of the nutritional product on the
consumer, the effect being specifically related to the nutritional
product.
18. A method for generating revenue, the method
compnsmg:
providing a nutritional product and a personal monitoring
device;
selling the nutritional product and the personal monitoring
device to a consumer, wherein the consumer consumes the
nutritional product and wherein the nutritional product is
selected from the group consisting of dairy drink, dairy powder,
cereal bar, protein bar, vegetable drink and combinations thereof;
and
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enabling the consumer to measure efficacy of the
nutritional product provided with the personal monitoring
device, wherein the efficacy of the nutritional product is
measured by using the personal monitoring device to measure an
effect of the nutritional product on the consumer at any location,
the effect being specifically related to the nutritional product.
23. A method for generating revenue, the method
compnsmg:
selling a nutritional product to a consumer, wherein the
consumer consumes the nutritional product and wherein the
nutritional product is selected from the group consisting of dairy
drink, dairy powder, cereal bar, protein bar, vegetable drink and
combinations thereof;
providing a personal monitoring device to a consumer as
a result of the consumer purchasing the nutritional product; and
enabling the consumer to measure efficacy of the
nutritional product by using the personal monitoring device
provided in response to purchase of the nutritional product to
measure an effect of the nutritional product on the consumer at
any location, the effect being specifically related to the
nutritional product.
REJECTIONS
Claims 1-9 and 11-17 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Stivoric (US 2004/0152957 Al, pub. Aug. 5, 2004),
Oommen (US 2008/0038320 Al, pub. Feb. 14, 2008), Vermeer
(US 2004/0197830 Al, pub. Oct. 7, 2004), and Official Notice. 3
3 Although not reflected in the Examiner's statement of the claim rejections,
the Examiner takes Official Notice with respect to claims 19, 20 and 24 that
the practice of packaging one or more products together for marketing
purposes is old and well-known (Final Act. 8-9). The Official Notice also is
applicable to the rejection of claims 1 and 13, which like claim 19, call for a
packaged assembly including a nutritional product and a personal
monitoring device.
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Application 12/112,844
Claims 18-24 rejected under 35 U.S.C. § 103(a) as unpatentable over
Stivoric, Oommen, Vermeer, Thompson (US 2001/0037060 Al,
pub. Nov. 1, 2001), and Official Notice.
ANALYSIS
Independent claims 1 and 13 and dependent claims 2--8, 11, 12, and 14-16
Appellants argue that the Examiner erred in rejecting independent
claims 1and13 under 35 U.S.C. § 103(a) because none of Stivoric,
Oommen, and Vermeer, alone or in combination, discloses or suggests
"providing a nutritional product and a personal monitoring device as a
packaged assembly," as recited in claim 1, and similarly recited in
independent claim 13 (App. Br. 9-12).
Addressing independent claims 1 and 13, the Examiner acknowledges
in the Final Office Action that "Stivoric does not explicitly teach packaged
assembly for use by the consumer" (Final Act. 3). However, as Appellants
observe, the Examiner does not assert that this feature is disclosed or
suggested by Oommen or Vermeer (App. Br. 11). To the contrary, in
addressing a number of other claims, including dependent claim 19, 4 the
Examiner expressly acknowledges that "Stivoric in view of Oommen and
Thompson and Vermeer does not explicitly teach packaged assembly for use
by the consumer" (Final Act. 8). The Examiner takes Official Notice that
"in the history of selling/distributing products[,] the commonly known
practice of packaging one or more products together for marketing purposes
4 Claim 19 depends from independent claim 18, and recites that "the
nutritional product and the personal monitoring device are sold as part of a
packaged assembly."
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are [sic] old and well known" (id. at 8-9). And the Examiner concludes that
"[ o ]ne of ordinary skill in the art at the time of invention would have found
it obvious to package the nutritional product as desired with the monitoring
device when providing the items to add convenience to the user" (id. at 9).
Appellants argue that the rejection based on Official Notice cannot be
maintained because the Examiner "has not shown such an assertion is
'capable of instant and unquestionable demonstration,' as expressly required
by MPEP §2144.03(A)" and also "has not provided documentary evidence
in the next Office Action following an adequate traversal by Applicant ... as
expressly required by MPEP §2144.03(C)" (App. Br. 12). Yet the difficulty
with that argument is that Appellants failed to adequately traverse the
Examiner's taking of Official Notice so as to require the Examiner to
produce documentary evidence in support of the Examiner's finding.
Therefore, the Official Notice is taken as admitted prior art. See In re
Ahlert, 424 F.2d 1088, 1091(CCPA1970) (where an applicant for a patent
has failed to challenge a fact officially noticed by the Examiner, and it is
clear that the applicant has been amply apprised of such finding so as to
have the opportunity to make such challenge, the Examiner's finding shall be
considered conclusive); In re Chevenard, 139 F.2d 711, 713 (CCPA 1943)
(if an applicant does not seasonably traverse the taking of official notice,
then the object of the official notice is taken to be admitted prior art).
There is no question that Appellants expressed disagreement with the
Examiner's conclusions. For example, responding to a July 23, 2010 Non-
Final Office Action, Appellants asserted:
Additionally, Applicants note that the Patent Office has taken
Official Notice that "in the history of selling/distributing
products the commonly known practice of packaging one or
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more products together for marketing purposes are old and well
known." See, Office Action, page 3, lines 15-18. However, the
Patent Office has provided no supporting reference
demonstrating same. As such, Applicants respectfully submit
that the Patent Office has not shown such an assertion is "capable
of instant and unquestionable demonstration," as expressly
required by section 2144.03(A) of the MPEP, and respectfully
request that the Patent Office provide support demonstrating
same.
Response to Non-Final Office Action filed November 22, 2010 at 10.
Appellants also made substantially similar assertions in Responses filed
April 29, 2011 and June 4, 2012. Yet we can find no indication in the record
that Appellants have come forth with any information or argument that, on
its face, casts reasonable doubt regarding the justification of the Official
Notice, which is required to adequately traverse the taking of Official
Notice. See In re Boon, 439 F.2d 724, 728 (CCPA 1971) (an applicant has
the right to challenge the official notice and demand production of evidence
in support thereof; provided such challenge is accompanied by adequate
information or argument that, on its face, creates a reasonable doubt
regarding the circumstances justifying the official notice). Merely voicing
disagreement with the Examiner's conclusions, as Appellants do here, does
not rise to the level of a traversal of Official Notice.
Appellants also argue that the Examiner erred in rejecting independent
claims 1and13 under 35 U.S.C. § 103(a) because none of Stivoric,
Oommen, and Vermeer, alone or in combination, discloses or suggests
measuring efficacy of the nutritional product packaged with the
personal monitoring device, wherein the efficacy of the
nutritional product is measured by using the personal monitoring
device to measure an effect of the nutritional product on the
consumer, the effect being specifically related to the nutritional
product[,]
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as recited in claims 1 and 13 (App. Br. 12-13). The Examiner
acknowledges that neither Stivoric nor Oommen discloses the argued
limitation, and the Examiner cites Vermeer to cure the deficiency of Stivoric
and Oommen (Final Act. 4 (citing Vermeer i-fi-160, 65)).
Vermeer is directed to a diagnostic assay for the detection and
determination of matrix GLA-protein ("MGP") in a human serum sample
(see Vermeer, Abstract). Vermeer discloses a kit, at paragraph 60,
comprising a device suitable for carrying out the diagnostic assay, including
"one or more antibodies specifically recognizing epitopes on and/or
conformations of human matrix GLA-protein, chemical agents useful or
necessary" for the assay, and instructions on how the assay is to be carried
out. Vermeer further discloses that serum levels of MGP can be used to
monitor the efficacy of treatment regimens for various diseases, e.g.,
osteoarthritis, Bechterew's disease, and rheumatoid arthritis, and also used
to monitor the efficacy of dietary regiments aimed at increasing vitamin K
levels (Vermeer i1 65).
Appellants argue that Vermeer's disclosure of using a device for
performing a diagnostic assay for human matrix GLA protein to monitor the
efficacy of a treatment regimen does not suggest monitoring the efficacy of a
specific nutritional product, as recited in claims 1 and 13. However, as
mentioned above, Vermeer expressly discloses that the serum levels of MCP
detected by the disclosed device may be used to monitor the efficacy of
dietary regiments, i.e., nutritional products. To the extent that Appellants
argue that Vermeer does not disclose or suggest "the nutritional product is
selected from the group consisting of dairy drink, dairy powder, cereal bar,
protein bar, vegetable drink and combinations thereof," the argument fails at
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least because the Examiner relies on Oommen as disclosing that feature
(Final Act. 3).
Finally, we are not persuaded by Appellants' argument that a person
of ordinary skill in the art would not have combined the cited references as
proposed by the Examiner or that the Examiner has engaged in
impermissible hindsight reconstruction of Appellants' claimed invention
(App. Br. 13-15). We agree with the Examiner that modifying Stivoric, in
view of Vermeer, to measure the efficacy of a nutritional product (including
a nutritional product selected from the group of dairy drink, dairy powder,
cereal bar, protein bar, vegetable drink and combinations thereof, as
disclosed by Oommen) is nothing more than a combination of prior art
elements according to their established functions, and yields a predictable
result. Therefore, it would have been obvious at the time of Appellants'
invention to a person of ordinary skill in the art. See KSR Int 'l Co. v.
Teleflex, Inc., 550 U.S. 398, 416 (2007) ("The combination of familiar
elements according to known methods is likely to be obvious when it does
no more than yield predictable results").
Appellants argue that the sensor device and the central monitoring
unit of Stivoric would not perform the same function in the combination of
references proposed by the Examiner as it does in the context of the Stivoric
disclosure. But that is not indicative of any Examiner error - instead, it
merely reflects the Examiner's proposal to modify the Stivoric apparatus, in
view of Vermeer, to measure the efficacy of a nutritional product.
We are not persuaded, on the present record, that the Examiner erred
in rejecting independent claims 1 and 13 under 35 U.S.C. § 103(a).
Therefore, we sustain the Examiner's rejection of claims 1 and 13. We also
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sustain the Examiner's rejection under 35 U.S.C. § 103(a) of dependent
clams 2-8, 11, 12, and 14--16, which are not argued separately.
Dependent claims 9 and 17
Appellants argue that claims 9 and 17 are patentable based on their
respective dependence on claims 1 and 13 (App. Br. 15). We are not
persuaded for the reasons set forth above that the Examiner erred in rejecting
claims 1 and 13 under 35 U.S.C. § 103(a). Therefore, we also sustain the
Examiner's rejection under 35 U.S.C. § 103(a) of claims 9 and 17.5
Independent claim 18 and dependent claims 19-22
Appellants argue that the Examiner erred in rejecting claim 18 under
35 U.S.C. § 103(a) because although Thompson, on which the Examiner
relies, discloses selling portable glucose monitors, i.e., personal monitoring
devices, Thompson does not disclose selling the glucose monitor with any
other article (App. Br. 16-17). Appellants' argument is not persuasive at
least because it is not commensurate \~\rith the scope of claim 18. Claim 18
recites "selling the nutritional product and the personal monitoring device to
a consumer," but we find nothing in the claim language that requires the
nutritional product and the personal monitoring device to be sold together.
Appellants' further arguments are substantially similar to the
arguments set forth with respect to claims 1 and 13 - arguments that we
5 Appellants also argue that Tanaka (US 2009/0131799 Al) does not cure
the alleged deficiencies of Stivoric, Oommen, and Vermeer with respect to
independent claims 1 and 13 (App. Br. 15). However, we find no indication
in the Final Office Action that claims 9 and 17 are rejected under 35 U.S.C.
§ 103(a) as unpatentable over Stivoric, Oommen, Vermeer, and Tanaka.
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found unpersuasive with respect to claims 1 and 13 and that we find equally
unpersuasive with respect to claim 18.
In view of the foregoing, we sustain the Examiner's rejection of
claim 18 under 35 U.S.C. § 103(a). We also sustain the Examiner's
rejection of dependent claims 19-22, which are not argued separately.
Independent claim 23 and dependent claim 24
We are persuaded by Appellants' argument that the Examiner erred in
rejecting claim 23 under 35 U.S.C. § 103(a) because none of Stivoric,
Oommen, Vermeer, and Thompson discloses or suggests "providing a
personal monitoring device to a consumer as a result of the consumer
purchasing the nutritional product" (App. Br. 20-22). The Examiner cites
Thompson as disclosing the argued limitation (Final Act. 7 (citing
Thompson i-f 28) ).
Thompson is directed to a computer-implemented system for
monitoring and analyzing data downloaded from a user's glucose monitor,
and discloses in paragraph 28, cited by the Examiner, the sale of portable
glucose monitors. However, we find no disclosure or suggestion in that
paragraph that the glucose monitor is provided to a consumer as a result of
the consumer purchasing another product, let alone as a result of the
consumer purchasing a nutritional product, as recited in claim 23.
In view of the foregoing, we do not sustain the Examiner's rejection
of claim 23 under 35 U.S.C. § 103(a). We also do not sustain the
Examiner's rejection under 35 U.S.C. § 103(a) of dependent claim 24.
Cf In re Fritch, 972 F.2d 1260, 1266 (Fed. Cir. 1992) ("dependent claims
are nonobvious if the independent claims from which they depend are
nonobvious").
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DECISION
The Examiner's rejections of claims 1-9 and 11-22 under 35 U.S.C.
§ 103(a) are affirmed.
The Examiner's rejection of claims 23 and 24 under 35 U.S.C.
§ 103(a) 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)(l )(iv).
AFFIRMED-IN-PART
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