Ex Parte Henke

Patent Trial and Appeal Board

Mar 28, 2017

12714355 (P.T.A.B. Mar. 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.
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):
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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”).
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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
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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
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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
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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
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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
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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
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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
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