Ex Parte Jung et al

Patent Trial and Appeal Board

Jun 9, 2014

11728025 (P.T.A.B. Jun. 9, 2014)

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).
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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).
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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).
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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 ¶
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[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:
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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
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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

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