Ex Parte Jung et alDownload PDFPatent Trial and Appeal BoardJun 9, 201411728025 (P.T.A.B. Jun. 9, 2014) 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. 11/728,025 03/22/2007 Edward K.Y. Jung SE1-0986-US 8870 80118 7590 06/09/2014 Constellation Law Group, PLLC P.O. Box 580 Tracyton, WA 98393 EXAMINER PAULS, JOHN A ART UNIT PAPER NUMBER 3686 MAIL DATE DELIVERY MODE 06/09/2014 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 EDWARD K.Y. JUNG, ROYCE A. LEVIEN, ROBERT W. LORD, MARK A. MALAMUD, and LOWELL L. WOOD, JR. ___________ Appeal 2012-002165 Application 11/728,025 Technology Center 3600 ___________ Before JOSEPH A. FISCHETTI, BIBHU R. MOHANTY, and KEVIN W. CHERRY, Administrative Patent Judges. CHERRY, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE1 Edward K.Y. Jung, Royce A. Levien, Robert W. Lord, Mark A. Malamud, and Lowell L. Wood, Jr. (Appellants) seek review under 35 U.S.C. § 134 of a final rejection of claims 1-19, 21-39, and 41-47, the only claims pending in the application on appeal2. We have jurisdiction over the appeal pursuant to 35 U.S.C. § 6(b). 1 Our decision will make reference to the Appellants’ Appeal Brief (“App. Br.,” filed April 28, 2011), Reply Brief (“Reply Br.,” filed July 18, 2011), and Supplemental Reply Brief (“Supp. Reply Br.,” filed October 28, 2011), and the Examiner’s Answer (“Ans.,” mailed May 18, 2011). 2 Claims 20 and 40 were previously cancelled (App. Br. 11). Appeal 2012-002165 Application 11/728,025 2 Appellants’ claimed invention relates to a method for handling data related to allergies (Spec. ¶¶ [0001], [0002]). Claim 1, which is reproduced below (bracketed matter added), is representative. 1. A method comprising: [(a)] accepting an informational input identifying at least one allergy; [(b)] searching an individual’s health data to identify at least one innate allergy determinant of the allergy; [(c)] searching the individual’s health data to identify at least one acquired allergy determinant of the allergy; [(d)] determining, based on the innate and acquired allergy determinants, allergy risk information for the individual relative to a specified population; [(e)] presenting ingestion-dependent allergy risk information for the individual in response to determining, based on the innate and acquired allergy determinants, the allergy risk information for the individual relative to a specified population; and [(f)] wherein each step is performed using a microprocessor. The following rejection is before us on review: Claims 1-19, 21-39, and 41-47 stand rejected as unpatentable under 35 U.S.C. § 103(a) over Krieg (US 2006/0188913 A1, pub. Aug. 24, 2006), Preuss (US 2007/0183978 A1, pub. Aug. 9, 2007) and Official Notice that it is well-known in the biomedical industry to automate known processes (Ans. 4, 11). Appeal 2012-002165 Application 11/728,025 3 FINDINGS OF FACT We determine that the findings of fact in the Analysis section below are supported at least by a preponderance of the evidence.3 ANALYSIS Claim 1 Appellants argue that the Examiner fails to make out a prima facie case of obviousness for any of the claims because the Examiner fails to explain the claim constructions used for each of the elements and fails to provide “objectively verifiable evidence” to support the findings of what the various references relied upon teach (App. Br. 50-54, Reply Br. 3-8, Supp. Reply Br. 3-15). We disagree. The Examiner need not provide claim constructions for every element and evidence beyond citations to the prior art to meet the prima facie burden. See In re Jung, 637 F.3d 1356, 1363 (Fed. Cir. 2011). Appellants raise a number of additional arguments why the combination Krieg, Preuss, and Official Notice fails to render obvious claim 1 (App. Br. 50-73). In contrast, the Examiner stands by the rejection (Ans. 4-6, 11-12). We are not persuaded that the Examiner erred in finding claim 1 obvious. First, we find that Appellants have not shown that the Examiner erred in finding that the combination of Krieg, Preuss, and Official Notice teaches all of the elements of claim 1 (App. Br. 54-63). In this regard, we adopt as 3 See Ethicon, Inc. v. Quigg, 849 F.2d 1422, 1427 (Fed. Cir. 1988) (explaining the general evidentiary standard for proceedings before the U.S. Patent and Trademark Office). Appeal 2012-002165 Application 11/728,025 4 our own the findings set forth by the Examiner in the Answer, beginning at page 4 where the Examiner states “[a]s per claim 1” and ending at the bottom of page 6, where the Examiner found these elements taught in the prior art. Second, we are not persuaded by Appellants’ argument that the Examiner erred in taking Official Notice that it was well-known in the biomedical industry to automate processes (App. Br. 58-59). The cited portions of Krieg are silent as to how the diagnostic steps are conducted. It is generally obvious to automate a known manual procedure or mechanical device. See Leapfrog Enters, Inc. v. Fisher-Price, Inc., 485 F.3d 1157 (Fed. Cir. 2007). That is, one of ordinary skill would know both the benefits of and the implementation requirements for using a computer system to automate searching of an individual’s health records to identify the particular characteristics of a patient (e.g., asthma, past allergies) that place the person at a higher risk of allergies relative to the general population, determining that relative risk, and then presenting this information to the diagnostician. Thus, there is nothing improper with the Examiner’s Official Notice. Third, we not persuaded by Appellants’ arguments that the Examiner’s reasoning is insufficient, it was driven by hindsight, or that the Examiner erred in finding that there was a motivation to combine these references (App. Br. 58-66). Here, we agree with the Examiner that such a combination would have the benefit of providing additional use or utility to the therapeutic method of Krieg through having a means to determine noncompliance with a health regimen (Ans. 6) and also of providing more effective identification of potential persons at risk for an allergy (Krieg ¶ Appeal 2012-002165 Application 11/728,025 5 [0204]). Indeed, Krieg specifically identifies genetic factors as one of the risk factors for developing an allergy (Krieg ¶ [0204]). Moreover, as discussed above, we agree with the Examiner that it would obvious to a person of ordinary skill to automate the diagnostic method using a computer to provide the benefit of making the process more quick and efficient. We find this provides a rational underpinning for the Examiner’s articulated reasoning that a person of ordinary skill would be motivated to improve the therapeutic method of Krieg to include the genetic testing of Preuss and to automate the method. As such, we disagree with Appellants’ contention that the Examiner’s rejection is based on hindsight reasoning found only in Appellants’ application and that the reasoning is insufficient. Finally, we are also not persuaded by Appellants’ contentions that the Examiner’s combination would change the principles of operation of the prior art references or render the prior art references unfit for their intended purposes (App. Br. 66-73). Appellants provide no reasoning for precisely why automating the diagnostic method of Krieg and including genetic testing information from Preuss would, in any way, render the diagnostic methods of either Krieg or Preuss inoperative or unfit for their purpose nor have Appellants pointed out any conflict between the references or problems that would be caused by their combination. Thus, we sustain the Examiner’s rejection of claim 1. Claim 10 Appellants argue that the Examiner erred because the combination of Kreig, Preuss, and Official Notice fails to teach the additional element of dependent claim 10 of “wherein searching an individual’s health data to identify at least one innate allergy determinant of the allergy comprises: Appeal 2012-002165 Application 11/728,025 6 searching an individual’s health data to identify at least one statistically- characterized innate allergy determinant of the allergy” (App. Br. 74-75). In contrast, the Examiner stands by the rejection of claim 10 (Ans. 8). We agree with the Examiner that the combination teaches this element. For example, Krieg discloses examining a patient’s health history to identify risk factors for an allergy (Krieg ¶ [0204]) and Krieg further explains that “[a] subject at risk of developing a disorder generally refers to a subject that has a greater likelihood of having the disorder than the population on average” (Krieg ¶¶ [0174]-[0175]). Thus, we find that the Appellants have failed to show that the Examiner erred in finding that Krieg taught the additional elements of claim 10. The only other arguments offered by Appellants are those considered and rejected above for claim 1. Thus, we sustain the Examiner’s rejection of claim 10. Claims 2-9, 11-19, 21-39, 41-47 Appellants offer no separate arguments for claims 2-9 and 11-19 aside from those arguments presented for claim 1 (App. Br. 73). We rejected those arguments above, and so we find that Appellants have failed to show any error in the Examiner’s rejection of these claims as well. Thus, we sustain the rejection of claims 2-9 and 11-19. See 37 C.F.R. § 41.37(c)(1)(vii) (2011). With respect to the Examiner’s rejection of independent claims 21, 41, and 45, Appellants essentially repeat the same arguments made with respect to claim 1 (App. Br. 76-134). Appellants offer no detailed arguments regarding specific differences between these claims and claim 1. To the extent argued by Appellants and based on the same reasons stated in our discussion of claim 1, we find that Appellants have failed to show any error Appeal 2012-002165 Application 11/728,025 7 in the Examiner’s rejection of these claims. Thus, we sustain the rejection of claims 21, 41, and 45. Claims 22-39, 42-44, 46, and 47, are not argued separately from these independent claims, and so we sustain the rejection of those claims as well. See 37 C.F.R. § 41.37(c)(1)(vii). CONCLUSIONS OF LAW The rejection of claims 1-19, 21-39, and 41-47 as unpatentable under 35 U.S.C. § 103(a) over Krieg, Preuss, and Official Notice is sustained. DECISION The rejection of claims 1-19, 21-39, and 41-47 is affirmed. 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)(1)(iv). AFFIRMED llw Copy with citationCopy as parenthetical citation