Ex Parte Hyde et al

Patent Trial and Appeal Board

Oct 30, 2018

14182201 (P.T.A.B. Oct. 30, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
14/182,201 02/17/2014 Roderick A. Hyde
140634 7590 11/01/2018
Constellation Law Group, PLLC
P.O. Box 580
Tracyton, WA 98393
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.
GSl-1130-US 3726
EXAMINER
APPLE, KIRSTEN SACHWITZ
ART UNIT PAPER NUMBER
3697
NOTIFICATION DATE DELIVERY MODE
11/01/2018 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):
admin@constellationlaw.com
Ty ler@constellationlaw.com
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PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte RODERICK A. HYDE, ERIC C. LEUTHARDT,
ROBERT W. LORD, CLARENCE T. TEGREENE, and
LOWELL L. WOOD JR.
Appeal2017-008662
Application 14/182,201 1
Technology Center 3600
Before HUNG H. BUI, NABEEL U. KHAN, and PHILLIP A. BENNETT,
Administrative Patent Judges.
BENNETT, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's final
rejection of claims 41-70. Claims 1--40 have been cancelled. We have
jurisdiction under 35 U.S.C. § 6(b ).
We affirm.
1 Appellants' Brief ("Br.") identifies Gearbox, LLC, as the real party in
interest. Br. 3.
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Application 14/182,201
CLAIMED SUBJECT MATTER
The claims are directed to programmable dispensing of consumable
compositions. Spec., Title. Claim 41, reproduced below, is illustrative of
the claimed subject matter:
41. A method for administering a consumable
composition comprising:
controlling a dispenser device to cause dispensing of a
dose of a consumable composition into a container according to
a dosing schedule stored in a memory device;
sensing, via at least one sensor device, an aspect of a
dispensed dose of the consumable composition that has been
received by the container; and
transmitting data indicative of the sensed aspect of the
dispensed dose of the consumable composition to a system
associated with a monitoring entity.
Br. 25 (Claims Appendix).
REJECTIONS
Claims 41-70 stand rejected under judicially created doctrine of
obviousness-type double patenting as being unpatentable over claims of U.S.
Patent 8,788,380. Final Act. 2. Appellants do not challenge this rejection in
their Appeal Brief. Accordingly, we summarily affirm the double patenting
rejection.
Claims 41-70 stand rejected under 35 U.S.C. § 101 as being directed
to patent-ineligible subject matter. Final Act. 3---6.
Claims 41, 69, and 70 stand rejected under 35 U.S.C. § I03(a) as
being unpatentable over Varvarelis (US 2006/0071011 Al, published Apr. 6,
2006). Final Act. 6-7.
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Application 14/182,201
ISSUES
First Issue: Has the Examiner erred in concluding the claims are
patent-ineligible under 35 U.S.C. § 101?
Second Issue: Has the Examiner erred in finding Varvarelis teaches
or suggests "sensing, via at least one sensor device, an aspect of a dispensed
dose of the consumable composition that has been received by the
container," as recited in claim 41?
ANALYSIS
First Issue-35 US.C. § 101
In rejecting the claims, the Examiner finds the claims are directed to
the abstract idea of "dispensing, sensing and communicat[ing] consumable
compositions." Final Act. 3. The Examiner determines that "dispensing,
sensing[,] and communicat[ing] consumable compositions as disclosed in
the claims are a fundamental economic practice, methods of organizing
human activities[,] and/or an idea of itself." Final Act. 4. With respect to
the second step of the Alice framework, the Examiner finds "[ t ]he additional
element(s) or combination of elements in the claim(s) other than the abstract
idea per se amount(s) to no more than: a system." Final Act. 3. The
Examiner further determines that "[ t ]he claims require no more than a
generic computer to perform generic computer functions that are well-
understood, routine and conventional activities previously known to the
industry." Ans. 3--4; see also Ans. 4--5 ("generic computer functions that are
well-understood, routine and conventional activities").
Appellants argue the claims pass muster under both steps of the Alice
inquiry. With respect to the first step, Appellants argue the claims are not
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Application 14/182,201
directed to an abstract idea because "[t]he presently claimed system enables
sensor driven compliance determination of user consumption of dispensed
compositions. Such automated compliance determinations facilitate regimen
efficacy for prescribed compositions." Br. 8. Appellants also argue "the
claimed method is necessarily rooted in computer technology to overcome a
problem specifically arising in user regimen compliance." Id.
With respect to the second Alice step, Appellants contend "the
invention as a whole amounts to significantly more than simply 'dispensing,
sensing and communicate"' because the claims provide a "'dispenser device'
that dispenses a 'dose a consumable composition' according to a 'dosing
schedule stored in a memory device' and the 'at least one sensor' that senses
an aspect of that previously dispensed 'dose of consumable composition[.]"'
Br. 9. Appellants contend "these are meaningful limitations that add more
than generally linking the use of the abstract idea [ ] to a generic computing
device, because they solve an compliance-centric problem with a claimed
solution that is necessarily rooted in computer technology ( e.g. dispensers
and associated sensors), similar to the additional elements in DDR Holdings
[v. Hotels.com, L.P., 773 F.3d 1245 (Fed. Cir. 2014)]." Id. Appellants also
challenge the Examiner's finding that the steps are well-known, routine, and
conventional, arguing that the "limitations, when taken as an ordered
combination, provid[ ed] unconventional steps that confine the abstract idea
to a particular useful application." Id.
We are persuaded the Examiner has erred. Under the new
examination procedure published online by the USPTO on April 19, 2018,
entitled "Changes in Examination Procedure Pertaining to Subject Matter
Eligibility, Recent Subject Matter Eligibility Decision (Berkheimer v. HP,
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Application 14/182,201
Inc.)" ("Berkheimer Memorandum"), there is a new fact finding requirement
for Examiners, as applicable to rejections under § 101. Specifically,
Examiners must now provide specific types of evidence to support a finding
that claim elements (or combinations of elements) are well-understood,
routine, and conventional.
Here, the Examiner's determination that the claims are directed to an
abstract idea and do not amount to significantly more than the abstract idea
is predicated, at least in part, on an unsupported finding that Appellants'
claims are directed to routine, conventional, computer operations. See, e.g.,
Ans. 3-5. Appellants have challenged this finding in their Brief. Br. 9
("These limitations, when taken as an ordered combination, provid[ ed]
unconventional steps that confine the abstract idea to a particular useful
application.") In light of this challenge, the burden shifts to the Examiner to
provide evidence in support of the finding-but no evidence has been
provided. Consequently, we do not sustain the rejection under 35 U.S.C.
§ 101 for lack of supporting evidence based on: (1) Berkheimer (881 F.3d at
1369), and (2), the Berkheimer Memorandum, which changed the
examination procedures to be fully compliant with Berkheimer.
Therefore, we do not sustain the rejection of Appellants claims under
35 U.S.C. § 101.2
2 We further note that, although we do not reverse the rejection on this basis,
we see merit in Appellants' argument the claims pass muster under Alice
step 1 because the Examiner's characterization of the abstract idea is overly
broad and does not give adequate consideration to the details of the features
recited therein.
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Second Issue-35 USC§ 103(a)
In rejecting claim 41 the Examiner finds Varvarelis teaches the
limitation "sensing an aspect of at least one dispensed dose of the
consumable composition." Final Act. 7 (citing Varvarelis Fig. 1 and item
124 of Fig. 5). Further, explaining the basis for the rejection in the Answer,
the Examiner states that "sensing can be read on in V arvarelis door opening
and pill dispensing in Figure 1. Varvarelis 'sensor [124]' reads on the
[A]ppellants 'sensing' 'at least one dispensed dose of the consumable
composition that has been received by the container."' Ans. 6.
Appellants argue the Examiner has not provided sufficient detail in
the rejection of claim 41. 3 Br. 12. Appellants also argue Varvarelis does not
teach that the sensor 124 senses an aspect of a pill that has been received in
the dispensing tray, but rather teaches the sensor 124 "provide[s] a signal of
the dispensing activity, whereupon the processor 114 obtains timing data
from the real time clock 116 and stores the timing data in the memory 112."
Br. 13.
We are not persuaded by Appellants' arguments. At the outset, we
first note that we disagree with Appellants' assertion that the rejection is
insufficiently informative to allow Appellants to meaningfully respond. The
Examiner has identified the specific portions of the prior art reference that
are pertinent to Appellants' claims and provided an explanation for how they
correspond to the recited limitations. Final Act. 6; Ans. 6.
We also are not persuaded by Appellants' argument that V arvarelis
fails to teach or suggest the "sensing" limitation of claim 41. Varvarelis
3 Appellants present the same arguments for independent claims 69 and 70.
Br. 16-22.
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relates to an electronic pill dispenser which "enhances patient compliance
for following through a particular drug regimen." Varvarelis, Abstract. The
electronic pill dispenser includes a sensor (124). Varvarelis Fig. 4. The
sensor ( 124) is configured such that "when the dispensing mechanism
dispenses a pill P, the associated sensor(s) 124 provide a signal of the
dispensing activity." Varvarelis ,r 36. Varvarelis further teaches "[t]he
sensors 124 are configured to detect whether the dispenser mechanism 122
has a pill P within its recess" allowing it to "track the number of pills P that
have been dispensed." Varvarelis ,r 39. The sensors in Varvarelis "may be
any type of sensor" and "may be included ... to detect other occurrences."
Id.
We agree with the Examiner that V arvarelis' s sensor detecting that a
pill has been dispensed into the container by providing "a signal of the
dispensing activity," teaches "sensing an aspect of at least one dispensed
dose of the consumable composition." Appellants' argument seems to
suggest that providing a signal of dispensing activity is not the same as
"sensing an aspect of at least one dispensed dose." We do not agree. When
Varvarelis's sensor provides "a signal of the dispensing activity," it does so
because it has sensed an aspect of the pill-namely the dispensation of the
pill itself. In light of the close similarity between the sensing activity of
V arvarelis' s sensors and the claimed "sensing," we conclude that Appellants
have not sufficiently explained why this teaching in Varvarelis is insufficient
to render obvious the "sensing" limitation of claim 41. Accordingly, we
sustain the rejection of claim 41 under 35 U.S.C. § 103(a). For the same
reasons, we also sustain the rejections of claims 69 and 70 for which
Appellants present the same arguments.
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DECISION
We summarily affirm the Examiner's double-patenting rejection of
claims 41-70.
We reverse the Examiner's rejection of claims 41-70 under 35 U.S.C.
§ 101.
We affirm the Examiner's rejection of claims 41, 69, and 7 0 under
35 U.S.C. § 103(a).
Because we have affirmed at least one ground of rejection for each
claim on appeal, we affirm the Examiner's decision to reject the claims.
37 C.F.R. § 4I.50(a)(l).
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(l )(iv).
AFFIRMED
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