Ex Parte HenkeDownload PDFPatent Trial and Appeal BoardMar 28, 201712714355 (P.T.A.B. Mar. 28, 2017) Copy Citation 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. 12/714,355 02/26/2010 Tom L. Henke 3175.001US1 6554 21186 7590 03/30/2017 SCHWEGMAN LUNDBERG & WOESSNER, P.A. P.O. BOX 2938 MINNEAPOLIS, MN 55402 EXAMINER SATANOVSKY, ALEXANDER ART UNIT PAPER NUMBER 2857 NOTIFICATION DATE DELIVERY MODE 03/30/2017 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): uspto@slwip.com SLW @blackhillsip.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte TOM L. HENKE Appeal 2016-002113 Application 12/714,3551 Technology Center 2800 Before CATHERINE Q. TIMM, DONNA M. PRAISS, and CHRISTOPHER L. OGDEN, Administrative Patent Judges. PRAISS, Administrative Patent Judge. DECISION ON APPEAL2 STATEMENT OF THE CASE Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s decision to reject claims 1, 2, and 5-20 as obvious under 35 U.S.C. § 103(a) 1 Appellant identifies QuickCheck Health, Inc. as the real party in interest. App. Br. 2. 2 In this decision, we refer to the Specification filed Feb. 26, 2010 (“Spec.”), the Non-Final Office Action mailed Feb. 21, 2014 (“Act.”), the Appeal Brief filed Mar. 20, 2015 (“App. Br.”), the Examiner’s Answer mailed Oct. 8, 2015 (“Ans.”), and the Reply Brief filed Dec. 8, 2015 (“Reply Br.”). Appeal 2016-002113 Application 12/714,355 over Zwanziger,3 Bodlaender,4 Lappe,5 and other references. App. Br. 10- 18; Act. 5-27. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. The subject matter on appeal relates to a method for at-home testing for which results can be verified by a third party. Spec. 3:7-8. Claim 1 is illustrative (disputed matter italicized): 1. A method of using an electronic testing device to analyze a plurality of test strips comprising: storing in a memory device of an electronic testing device a plurality of predefined test result codes, wherein each predefined test result code corresponds to a potential test result, and each potential test result is associated with at least one of the predefined test result codes', analyzing, using the electronic testing device, a test result zone of a first test strip to determine a result of a test performed on a material received in a sample zone of the first test strip; retrieving one of the predefined test result codes based on the result of the test, the retrieved test result code indicating the results of the test; using the retrieved predefined test result code to output at least one human-readable code on an output device of the electronic testing device, wherein the at least one human- readable code encodes the test result to avoid revealing the test result to a user of the electronic testing device; analyzing, using the electronic testing device, a test result zone of a second test strip, different from the first test strip, to determine a result of a test performed on a material received in a sample zone of the second test strip, wherein the result of the 3 Zwanziger et al., US 6,319,665 Bl, iss. Nov. 20, 2001 (“Zwanziger”). 4 Bodlaender et al., US 2009/0192820 Al, pub. July 30, 2009 (“Bodlaender”). 5 Lappe, US 2005/0214865 Al, pub. Sept. 29, 2005 (“Lappe”). 2 Appeal 2016-002113 Application 12/714,355 test performed on the second test strip is the same as the result of the test of the first test strip; and in response to determining the result of the test performed on the material received in the sample zone of the second test strip, outputting a second human-readable code on the output device of the electronic testing device, wherein the second human-readable code is different than the human-readable code outputted for analysis of the first test strip. App. Br. 20 (Claims App’x). OPINION The Examiner finds that claims 1, 2, and 5-20 would have been obvious to one of ordinary skill in the art at the time of the invention for the reasons stated on pages 5-27 of the Non-Final Office Action and 3-9 of the Answer. Appellant does not separately argue the patentability of claims 1, 2, and 5-20. App. Br. 10-18. In accordance with 37 C.F.R. § 41.37(c)(l)(iv), and based upon the lack of arguments directed to the subsidiary rejections, claims 2 and 5-20 will stand or fall together with independent claim 1. Appellant argues that the Examiner erred in rejecting claim 1 over the combination of Zwanziger, Bodlaender, and Fappe because the combination does not teach storing predefined test result codes or analyzing two test strips in an electronic assay device. App. Br. 12. Appellant contends that “the Examiner is improperly relying on inherency” by finding that Lappe’s decoder that decodes test results “implies] using a pre-stored (in a memory) plurality of predefined test result codes, wherein each of them corresponds to a potential test result.” Id. at 13 (quoting Act. 9). Specifically, Appellant argues that “the reading apparatus [of Lappe] merely decodes the patterns. Decoding neither implies nor requires a set of predefined result codes as 3 Appeal 2016-002113 Application 12/714,355 claimed.” Id. at 14. Appellant contends that its position is supported by Figure 3 of Lappe which shows memory unit 62b is separate from decoder 54b. Id. at 15. Appellant also argues that because Zwanziger’s testing device cannot retrieve a predefined test result code based on the result of the test as required by claim 1 because Zwanziger does not teach an electronic testing device. Id. at 15-16. Appellant further argues that the Examiner erred because there is “no discussion of why someone would combine Zwanziger, Bodlaender, and Lappe — only blanket statements and sporadic citations to the references.” Id. at 17. According to Appellant, “no evidence or reasoning has been provided as to why a person[] of ordinary skill in the art would take a self-testing strip such as in Zwanziger and make it into a more complex assay device” and “no evidence has been provided as to how ‘ [accommodating] privacy of the individual being tested’ yields outputting ‘different codes even for the same test result.’” Id. (quoting Act. 9-10). Appellant asserts that because “[e]ach of the references deals with generating and presenting assay results in a different way ... by definition, the modifications suggested would ‘change the principle of operation of the prior art invention being modified.’” Id. at 18. The Examiner responds that Zwanziger teaches predefined result codes, referred to as an “identifier,” which is subject to a further algorithm to determine patterns corresponding to test results. Ans. 4 (citing Zwanziger 3:30-37). This teaching of displaying predefined test results by outputting human-readable codes the Examiner finds is useful to Zwanziger’s device as well as an electronic device. Id. at 6. The Examiner finds that Bodlaender teaches an electronic testing device with first and second test strips and a processor that controls a result indicator, thus the device has the ability to be programmed with a code to display test results. Id. at 5 (citing Bodlaender 4 Appeal 2016-002113 Application 12/714,355 45, 49, Fig 3). The Examiner further finds that Lappe’s disclosure of decoding a plurality of patterns to result in decoded digits or characters means that Lappe uses a set of predefined results to be able to output a response to the range of possible test strip inputs. Id. (citing Lappe ^ 29, Fig. 3, item 54b). Regarding the combination of references, the Examiner responds that the separate features missing from Zwanziger are found in Bodlaender and Lappe along with a motivation to combine, namely, modifying Zwanziger’s assay system to employ Bodlaender and Lappe’s electronic testing device would make it more accurate, modifying the device to have a memory capable of storing predefined instruction such as Lappe’s application programs would allow test results to be automatically read and output based on predefined codes, and modifying the device would also enable outputting different codes for the same result which has the advantages discussed. Id. at 7-8. Regarding the added complexity and principle of operation, the Examiner responds that (1) the features improving on Zwanziger’s device would have been obvious to one with ordinary skill in the art at the time of the claimed invention and would have had a reasonable expectation of success and (2) the principle of operation of Zwanziger is not changed because it remains “subjecting a test strip to a tested material and obtaining a result of testing while not revealing the actual test result to the person being tested.” Id. at 8-9. In the Reply Brief, Appellant argues that “the Answer does not sufficiently rebut Appellant’s arguments that there is no teaching or suggestion of the step of “storing in a memory device . . .” without relying on implied features that are not taught by Lappe. Reply Br. 2. We review the appealed rejections for error based upon the issues identified by Appellant and in light of the arguments and evidence produced 5 Appeal 2016-002113 Application 12/714,355 thereon. Cf. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential) (cited with approval in In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011) (“it has long been the Board’s practice to require an applicant to identify the alleged error in the examiner’s rejections”)). We are not persuaded by Appellant’s arguments that the Examiner reversibly erred in rejecting claim 1 over the combination of Zwanziger, Bodlaender, and Lappe for the reasons stated in the Action and Answer. We add the following primarily for emphasis. Appellant does not dispute that Zwanziger discloses a testing device that analyzes multiple different test strips, determines a result from the test performed on the material received, and outputs different human-readable codes for the test strips on the output. Act. 6; Zwanziger 4:47^48, 4:54, 5:7, 2:46, 3:19-21, Figs. 1, 3. Appellant also does not dispute that Bodlaender discloses that an electronic testing device having a processor and decoder is more accurate. Ans. 8; Bodlaender 45. In addition, Appellant does not dispute that Zwanziger and Lappe both disclose the feature of outputting two results that cannot be distinguished in the absence of the code in order to not reveal the results to the administrator of the test. Ans. 7, 9; Zwanziger 3:29- 41, 4:12-20; Lapped 10, 24. Appellant does not adequately explain why the decoder in Lappe, which is connected to a processor having a memory unit, is not a deterministic system accessing a predefined set of result codes for the decoder to output as the Examiner finds (Ans. 5). Appellant’s argument that “[djecoding neither implies nor requires a set of predefined result codes as claimed” (App. Br. 14) is not supported by the evidence in this record because Figure 3 of Lappe shows a connection between the decoder 54b and controller 62 having a processor 62a and a memory unit 62b. Paragraph 29 6 Appeal 2016-002113 Application 12/714,355 of Lappe also discloses that the controller establishes “the functional characteristics of the test card reading apparatus 60” and that the memory unit 62b includes “a suitable application program” to output the decoded digits and characters. Lappe ^ 29; see Lappe ^ 30 (“the functionality of the test card reading apparatus 60 may be provided by the execution of an (custom) application program.”); Ans. 5; Act. 9. Therefore, the Examiner’s finding that Lappe’s disclosure of decoding a plurality of patterns to result in decoded digits or characters means that Lappe uses a set of predefined results to be able to output a response to the range of possible test strip inputs is supported by the preponderance of the evidence. See KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 421 (2007) (“A person of ordinary skill is also a person of ordinary creativity, not an automaton.”); In re Preda, 401 F.2d 825, 826 (CCPA 1968) (noting that “in considering the disclosure of a reference, it is proper to take into account not only specific teachings of the reference but also the inferences which one skilled in the art would reasonably be expected to draw therefrom”). Appellant’s argument is also insufficient to rebut the Examiner’s finding because it merely provides a block quote from Lappe with a conclusory sentence following it expecting the Board to fill in how the quote supports the argument (App. Br. 13-14). DeSilva v. DiLeonardi, 181 F.3d 865, 866-67 (Fed. Cir. 1999) (“A brief must make all arguments accessible to the judges, rather than ask them to play archeologist with the record.”); United States v. Dunkel, 927 F.2d 955, 956 (7th Cir. 1991) (“Judges are not like pigs, hunting for truffles buried in briefs.”). In addition, Appellant does not dispute the Examiner’s finding that Bodlaender also discloses an electronic testing device having a memory device and a processor that can 7 Appeal 2016-002113 Application 12/714,355 be integrated with each other to output a test result. Act. 7-8 (citing Bodlaender]} 45, Figs. 2, 3). To the extent that Appellant’s argument distinguishing Lappe’s decoder seeks to add a limitation to the claim that the memory device have a certain structure relative to the processor and the decoder involved in outputting the analysis of the first and second test strips, we are not inclined to read limitations into the claim from the Specification. Nor do we find the method of claim 1 distinguishable over the cited prior art on the basis of hardware or structure that has not been shown to impact the recited process steps. Our reviewing court “has repeatedly ‘cautioned against limiting the claimed invention to preferred embodiments or specific examples in the specification.’” Williamson v. Citrix Online, LLC, 792 F.3d 1339, 1346 47 (Fed. Cir. 2015). We also find unpersuasive Appellant’s argument that the Examiner’s combination of references fails to provide any reason for the combinations (App. Br. 17). The Examiner cites Bodlaender’s teaching that an electronic testing device is more accurate as a reason to modify Zwanziger’s testing device to be an electronic testing device. Act. 9 (citing Bodlaender ]} 45). The Examiner also cites the benefits of portability and privacy of results described in Lappe in support of the further modification of Zwanziger’s method with the teachings of Lappe. Id. at 9-10 (citing Lappe ]}]} 10, 24). Similarly, Appellant’s assertion that the modification of Zwanziger by the teachings of Bodlaender and Lappe would change the principle of operation of Zwanziger (App. Br. 18) is unpersuasive because it is not supported by evidence. It is insufficient that the cited references each “deal[] with generating and presenting assay results in a different way.” Id. Indeed, it is recognized that “[ojften, it will be necessary for a court to look 8 Appeal 2016-002113 Application 12/714,355 to interrelated teachings of multiple patents.” KSR, 550 U.S. at 418. In addition, an obviousness analysis “need not seek out precise teachings directed to the specific subject matter of the challenged claim, for a court can take account of the inferences and creative steps that a person of ordinary skill in the art would employ.” Id. Thus, the fact that the cited references describe three different testing methods does not alone constitute a change in the principle of operation if the teachings of the references are combined. Therefore, we are not persuaded of reversible error in any of the Examiner’s findings as to Zwanziger, Bodlaender, and Lappe and the Examiner’s determination that the claimed method would have been obvious to one of ordinary skill in the art over the combination of cited prior art. In sum, we affirm the Examiner’s rejection of claim 1 as obvious over the combination of Zwanziger, Bodlaender, and Lappe. CONCLUSION We affirm the Examiner’s decision to reject claims 1, 2, and 5-20 as obvious under 35 U.S.C. § 103(a). DECISION The Examiner’s decision is affirmed. TIME PERIOD FOR RESPONSE 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). AFFIRMED 9 Copy with citationCopy as parenthetical citation