Ex Parte Jung et alDownload PDFPatent Trials and Appeals BoardMar 21, 201611893370 - (D) (P.T.A.B. Mar. 21, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 111893,370 08/14/2007 Edward K.Y. Jung 80118 7590 03/21/2016 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. SEl-0983-US 4262 EXAMINER LIN, JERRY ART UNIT PAPER NUMBER 1631 MAILDATE DELIVERY MODE 03/21/2016 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, and LOWELL L. WOOD, JR. 1 Appeal2013-003004 Application 11/893,370 Technology Center 1600 Before ERIC B. GRIMES, LORA M. GREEN, and JOHN G. NEW, Administrative Patent Judges. NEW, Administrative Patent Judge. DECISION ON APPEAL 1Appellants state the real party-in-interest is Searete, LLC. App. Br. 5. Appeal2013-003004 Application 11/893,370 SUMMARY Appellants file this appeal under 35 U.S.C. § 134(a) from the Examiner's Non-Final Rejection of claims 48, 49, 54-57, 60-65, 70-73, and 76-86 as unpatentable under 35 U.S.C. § 103(a) as being obvious over the combination ofH.-L. Qiao, J. Yang, and Y.-W. Zhang, Specific Serum IgE Levels and FCERI/J Genetic Polymorphism in Patients with Penicillins Allergy, 59 ALLERGY 1326-32 (2004) ("Qiao") and Liew (US 2007 /0054282 Al, March 8, 2007) ("Liew"). We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. NATURE OF THE CLAIMED INVENTION Appellants' invention is directed to methods, apparatus, computer program products, devices and systems that carry out accepting an input identifying at least one allergy, searching an individual's health data to identify at least one innate allergy determinant of the allergy; searching the individual's health data to identify at least one acquired allergy determinant of the allergy; determining allergy risk information for the individual relative to a specified population; and presenting a signal related to ingestion-dependent allergy risk information for the individual. Abstract. REPRESENTATIVE CLAIM Claim 48 is representative of the claims on appeal and recites: 48. A method comprising: accepting an input identifying at least one allergy at one or more user interfaces; and transmitting data from the one or more user interfaces to at least one data analysis system, the data including at least the at least one allergy: 2 Appeal2013-003004 Application 11/893,370 App. Br. 92. the data analysis system being capable of searching an individual's health data to identify at least one innate allergy determinant of the at least one allergy; searching the individual's health data to identify at least one acquired allergy determinant of the at least one allergy; determining, based on the innate and acquired allergy determinants, allergy risk information for the individual relative to a specified population; and the data analysis system further being capable of sending a signal to either the one or more user interfaces or a different user interface in response to the allergy risk information for the individual relative to a specified population, which signal transmits ingestion-dependent allergy risk information for the individual relative to a specified population. ISSUES AND ANALYSES The Examiner's prima facie case With respect to claims 48, 63, 64, and 79-86, the Examiner finds Qiao teaches accepting an input identifying at least one allergy, searching an individual's health data to identify at least one innate and one acquired allergy determinant, determining the allergy risk information for an individual relative to a specified population, and presenting a signal regarding ingestion-dependent allergy risk information for the individual relative to a specified population. Non-Final Act. 3. The Examiner finds Liew teaches using a "Scanalyzer," which would require a computer with inputs, microprocessor, software, user interface, computer readable medium, recordable medium, and communication medium. Id. at 3--4. 3 Appeal2013-003004 Application 11/893,370 With respect to claims 49, 54-57, 60, 61, 65, 70-73, 76, and 77, the Examiner finds Qiao teaches accepting an input identifying a Type I immediate hypersensitivity reaction or a Type IV delayed hypersensitivity reaction, searching an individual's medical history to identify at least one innate or acquired allergy determinant, searching the individual's health data to identify a genetic determinant, searching the individual's health data to identify a statistically characterized innate or acquired allergy determinant, and determining the statistically characterized allergy risk information for an individual relative to a specified population. Ans. 4. With respect to claims 62 and 78, the Examiner finds Qiao and Liew teach determining allergy risk information relative to a clinical trial population. Id. at 5. The Examiner concludes it would have been obvious for one of ordinary skill in the art to implement the processes of Qiao on a computer and with computer programming, as taught by Liew. Ans. 4. The Examiner further finds one of ordinary skill in the art would have been motivated to use the genetic polymorphisms discovered by Qiao as biomarkers in the system of Liew to determine if an individual has a penicillin allergy. Id. We agree with the Examiner's reasoning and adopt the Examiner's conclusions as our own. A. Independent claim 48 Issue 1 Appellants argue the Examiner erred by allegedly failing to map the teachings of the prior art to the limitations of the claim. App. Br. 51. 4 Appeal2013-003004 Application 11/893,370 Analysis Appellants argue the Examiner has mapped the limitations of claim 48 reciting "[a] accepting an input identifying at least one allergy at one or more user interfaces onto a configuration" ("limitation a") and: [T]ransmitting data from the one or more user interfaces to at least one data analysis system, the data including at least the at least one allergy: the data analysis system being capable of searching an individual's health data to identify at least one innate allergy determinant of the at least one allergy; searching the individual's health data to identify at least one acquired allergy determinant of the at least one allergy; determining, based on the innate and acquired allergy determinants, allergy risk information for the individual relative to a specified population; and the data analysis system further being capable of sending a signal to either the one or more user interfaces or a different user interface in response to the allergy risk information for the individual relative to a specified population, which signal transmits ingestion-dependent allergy risk information for the individual relative to a specified population. ("limitation b") to Qiao. App. Br. 51. Appellants contend the Examiner "has not explained how it reaches such mappings under the framework of the broadest reasonable interpretation consistent with the Specification as is the USPTO's burden (e.g., such as by examples drawn from Appellant[s'] claims or detailed description)." Id. at 51-52. The Examiner responds that, in the Non-Final Action, the Examiner provided paragraph numbers or relevant passages for each of the limitations, as well as explanations in parenthetical statements where the mapping may be unclear. Ans. 8. Specifically, the Examiner finds Qiao teaches accepting an input identifying at least one allergy; and searching an individual's health data to identify at least one innate and one acquired allergy determinant. 5 Appeal2013-003004 Application 11/893,370 Non-Final Act. 3 (citing Qiao 1327-1329). The Examiner finds Qiao teaches determining the allergy risk information for an individual relative to a specified population (i.e., those with allergies or the control group without allergies) and presenting a signal (i.e., presenting data) regarding ingestion- dependent allergy risk information (e.g., ampicillin and amoxicillin are administered orally to patients) for the individual relative to a specified population. Id. (see also Qiao Tables 1-3). The Examiner notes that although Qiao teaches analyzing data and creating statistical data, it does not explicitly teach using a user interface, Liew discloses using a Scanalyzer, which requires a computer with inputs, microprocessor, software, user interface, computer readable medium, recordable medium, and communications medium. Non-Final Act. 3 (citing Liew iii! 122, 137) We are not persuaded by Appellants' argument. We adopt the Examiner's reasoning and find the passages of Qiao and Liew cited by the Examiner teach the limitations recited by the Examiner and establish a prima facie case of obviousness. Moreover, Appellants allege that the Examiner failed to map the limitations to the cited prior art, but provide no evidence or example in support of this argument other than to recite a portion of the reference cited to by the Examiner and the language of the disputed limitations, and making an unsupported assertion that the Examiner failed to map the prior art to the limitations. Appellants do not provide any arguments as to why the passages cited by the Examiner fail to teach the disputed limitations, but merely gainsay the Examiner's findings. Such attorney argument, unsupported by the evidence of record is insufficient to rebut the Examiner's primafacie case. See In re Geisler, 116 F.3d 1465, 6 Appeal2013-003004 Application 11/893,370 1470 (Fed. Cir. 1997) (Attorney arguments and conclusory statements that are unsupported by factual evidence are entitled to little probative value). Issue 2 Appellants argue the Examiner erred because Qiao neither teaches nor suggests the limitations of claim 48. App. Br. 54. Analysis Appellants argue that "as Appellant[ s] can discern, the Qiao reference does not recite" limitations a orb of claim 48. App. Br. 55. Appellants then quote extensive passages of Qiao cited to by the Examiner. Id. at 54-56. According to Appellants, the portions of Qiao cited to by the Examiner do not recite the text of at least limitations a orb of claim 48. Id. at 58. Comparing the quoted language of the prior art and the limitations of claim 48, Appellants assert they have "shown by direct quotations that [i]ndependent [ c ]laim 48 and the Qiao reference are very different on their faces." Id. Consequently, argue Appellants, the Examiner has provided no objectively verifiable evidence, or argument based on objectively verifiable evidence, as to how Qiao could be modified or combined to teach at least limitations a and b of claim 48. The Examiner responds that although Qiao does not employ the exact language of the instant claims and/or use the same terms, the prior art need not do so to make the claim obvious. Ans. 8. The Examiner points out that, for a showing of obviousness by the cited prior art of the elements recited in a claim, the prior art need not have the exact same language as the instant claims. Id. Rather, the Examiner notes that it is sufficient that the prior art 7 Appeal2013-003004 Application 11/893,370 teachings would be understood by one of ordinary skill in the art to encompass, or be the equivalent of, the claimed invention with respect to the language used by Appellants. Id. The Examiner states that the basis of the rejection and the previous arguments of record have explained how the teachings of the cited references render claim 48 obvious. Id. We are not persuaded by Appellants' arguments. We agree with the Examiner that the test for obviousness is not whether the prior art recites, ipsissimis verb is, the language of the claim limitations. Rather, the test for obviousness is "what the combined teachings of the references would have suggested to those of ordinary skill in the art." In re Keller, 642 F.2d 413, 425 (C.C.P.A. 1981). Appellants have failed to make any argument, supported by evidence of record, that a person of ordinary skill in the art would not have understood the teachings of Qiao to teach the disputed limitations of claim 48. The Examiner has cited explicitly to the teachings of the prior art to show how Qiao teaches limitations of claim 48. We agree with the Examiner's findings and reasoning that Qiao teaches the disputed limitations, and conclude that the Examiner has established a prima facie case of obviousness. Appellants assert that the recited language of Qiao is different than that of claim 48 and that the teachings of Qiao and the claimed subject matter are very different. But Appellants make no argument, supported by evidence, concerning what the understanding of a person of ordinary skill in the art would be with respect to the teachings of Qiao, or why, in the understanding of such a person of ordinary skill, Qiao does not teach or suggest the limitations of the claim. 8 Appeal2013-003004 Application 11/893,370 Issue 3 Appellants argue the Examiner erred because Liew neither teaches nor suggests the limitations of claim 48. App. Br. 60. Analysis Appellants repeat their arguments made with respect to Qiao supra, viz., that Liew does not recite the language of limitations a and b of claim 48. App. Br. 62. We find Appellants' arguments no more persuasive in this instance and equally ineffective in overcoming the Examiner's prima facie conclusion of obviousness. Issue 4 Appellants argue the Examiner erred by impermissibly employing hindsight analysis, or improperly applied personal knowledge, or official notice in arriving at a conclusion of obviousness. App. Br. 65. Analysis Appellants argue separately that, because neither Qiao nor Liew teaches the disputed limitations of claim 48, the only applicable evidence of record is Appellants' Specification. App. Br. 59-60; 65-66. Appellants contend the Examiner has provided no "objectively verifiable evidence," or argument based on such evidence, in support of the Examiner's findings regarding what the technical material cited by the Examiner teaches. Id. at 66. Appellants allege the Examiner is therefore relying on "personal knowledge" and/or is taking "official notice" of one or more factors to reach the factual conclusion of what the cited technical material teaches. Id. 9 Appeal2013-003004 Application 11/893,370 Appellants request that the Examiner provide an affidavit or declaration setting forth evidence in support of the Examiner's allegedly unsupported assertions regarding what the cited technical material teaches. Id. We are not persuaded by Appellants' arguments. As an initial matter, it is the combination of Qiao and Liew that the Examiner finds teaches the limitations of claim 1. "[O]ne cannot show non-obviousness by attacking references individually where ... the rejections are based on combinations of references." Keller, 642 F.2d at 426. Moreover, we have related supra our reasoning as to why Appellants have failed to overcome the Examiner's findings that Qiao and Liew, in combination, teach the limitations of claim 48, and we incorporate that reasoning here by reference. Since Appellants have failed to rebut the Examiner's prima facie case in this regard, the logic of their argument that the Examiner must have relied on some other source, i.e., Appellants' Specification, personal knowledge, or official notice, fails. We therefore affirm the Examiner in this respect. Issue 5 Appellants argue the Examiner erred because ( 1) the suggested modifications or combinations to meet the limitations of claim 48 are a "mere conclusory statement" without evidentiary support; (2) change the principle of operation of components of the cited references; (3) render such components unfit for their intended purpose; and (4) there is no teaching to combine or modify the components as a matter of law. App. Br. 66-67. 10 Appeal2013-003004 Application 11/893,370 Analysis Appellants quote several passages from the Non-Final Action and then argue that the findings set forth by the Examiner are unsupported and erroneous, and appear to mischaracterize the Qiao and Liew references. App. Br. 68. Furthermore, Appellants argue that Qiao teaches: Radioallergosorbent test was used to examine eight kinds of specific IgE antibodies, which included four kinds of major and minor antigenic determinants, respectively, in the sera of 448 patients with penicillins allergy and 101 healthy subjects. A restriction endonuclease fragment length polymorphism of a polymerase chain reaction product was used for analysis of the F ceRIB [sic] polymorphism. App. Br. 70 (quoting Qiao Abstr.). Appellants argue that, were one to incorporate the "method for the detection of gene transcripts in blood" as taught by Liew into the structure of Qiao, Qiao would no longer have a method for the radioallergosorbent test used to examine eight kinds of specific IgE antibodies. Id. Therefore, argue Appellants, the modifications or combinations suggested by the Examiner would change the principle of operation of Qiao for at least this reason. Id. Appellants argue further that the technologies of Qiao, modified or combined with the structure of Liew as suggested by the Examiner would require "substantial reconstruction and redesign of the elements shown in [Qiao] as well as a change in the basic principle under which the [Qiao] construction was designed to operate" in order to render the Examiner's suggested combination capable of performing even a subset of the intended purposes of the technologies of Qiao. App. Br. 71 (quoting MPEP § 2143.01). 11 Appeal2013-003004 Application 11/893,370 Appellants argue further that the Examiner has provided no evidence that an apparent reason to modify or combine the cited technical materials to reach the recitations of claim 48 existed at the time of invention. App. Br. 73. According to Appellants, even assuming, arguendo, that the Examiner had produced an as-yet-unknown objective teaching of how to modify or combine the teachings of Liew with the technologies of Qiao to reach limitations a and b of claim 48, such modification and/or combination would render the technologies of Qiao unsatisfactory for one or more of its intended purposes. App. Br. 73-74. The Examiner responds that there is nothing in the prior art that prevents one of ordinary skill in the art to conduct the tests of Qiao and Liew together. Ans. 9. In other words, the Examiner finds one of ordinary skill in the art could perform the method of Qiao, take the results, and incorporate it into the method of Liew. Id. Therefore the references may be combined without modifying the methods that would change the principles of operations of either method. Id. We are not persuaded by Appellants' arguments. Appellants assert that findings of the Examiner are unsupported and erroneous, and appear to mischaracterize the Qiao and Liew references, but again, provide no evidence in support of this conclusory assertion. See App. Br. 68. As explained supra, we accord such assertions little probative weight. This is also applicable to Appellants' other arguments, which amount to little more than unsupported gainsaying of the Examiner's findings and conclusions. Furthermore, Appellants assert that the combination of Qiao and Liew would render Qiao non-functional or unsuitable for its intended purpose, or would require extensive hypothetical modification. However, the proper test 12 Appeal2013-003004 Application 11/893,370 for obviousness is not whether "the features of a secondary reference may be bodily incorporated into the structure of the primary reference . . . . Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art." Keller, 642 F.2d at 425. In the Non-Final Office Action, the Examiner found that Qiao teaches all of the limitations of claim 48 with the exception of a user interface, for which limitation the Examiner relied on Liew. Ans. 3. Further, the Examiner concluded: It would have been obvious for one ordinary skill in the art at the time of the invention to implement the processes of Qiao et al. on a computer and with computer programming. First, implementing a known function on a computer has been deemed obvious to one of ordinary skill in the art. In addition, one of ordinary skill in the art would have combined the computer system of Liew with the process of Qiao et al. to gain the benefit of creating a system to determine if a patient has an allergy. Qiao et al. has identified genetic polymorphisms which contribute to allergies to penicillins (abstract). Liew teaches that their system may be used to diagnose conditions via biomarkers (paragraph 0008). Thus, one of ordinary skill in the art would have been motivated to use the genetic polymorphisms discovered by Qiao et al. as biomarkers in the system of Liew to determine if an individual has a penicillin allergy. Non-Final Act 4-5. Appellants do not contradict, or even address, the Examiner's conclusions recited supra. We therefore agree with the Examiner's reasoning in this respect and conclude that Appellants' conclusory arguments have not overcome the Examiner's prima facie conclusion of obviousness. We consequently affirm the Examiner's rejection of claim 48. Moreover, because Appellants rely on the same arguments for dependent claims 49, 54-57, 60-65, 70-73, 76-80, and 84- 13 Appeal2013-003004 Application 11/893,370 86, we similarly affirm the Examiner's rejection of those claims upon this ground. See App. Br. 76; 88-89. B. Claim 49 Issue Appellants argue that dependent claim 49 is independently patentable. App. Br. 76. Claim 49 recites: 49. The method of claim 48 wherein the accepting an input identifying at least one allergy at one or more user interfaces compnses: accepting an input identifying at least one Type I immediate hypersensitivity reaction, Type II cytotoxic hypersensitivity reaction, Type III immune-complex reaction, or Type IV delayed hypersensitivity at one or more user interfaces. Id. at 92. Appellants contend the Examiner erred because the combined cited prior art references neither teach nor suggest the limitations of claim 49. Analysis Appellants argue that Qiao does not recite limitations a orb of claim 48, from which claim 49 depends, nor does it recite the limitation of claim 49. App. Br. 77-78. Therefore, Appellants argue, the prior art references do not, on their face, establish a prima facie case of obviousness and the language of Qiao and claim 49 show that the reference is very different from claim 49. Id. at 80. The Examiner responds that Qiao teaches identifying individuals with different allergic reactions, such as anaphylactic shock or urticaria, which 14 Appeal2013-003004 Application 11/893,370 are forms of type l hypersensitivity. Ans. 9-10 (citing Qiao 1328-29; Table 1; Table 3). The Examiner finds that, by teaching the step of obtaining this information, Qiao teaches accepting an input identifying at least one Type I immediate hypersensitivity reaction. Id. at 10. The Examiner therefore finds Qiao teaches the limitation of claim 49. We agree with the Examiner. As we have related supra, the test for for obviousness is not an ipsissimis verbis test, but is based on the understanding of a person of ordinary skill in the art. Appellants make no substantial argument that the teachings of Qiao are such that a person of ordinary skill would fail to understand that Qiao teaches or suggests the limitation in question. See Keller, 642 F.2d at 425. Moreover, we agree with the Examiner's reasoning that the cited passages and tables of Qiao teach accepting an input identifying at least one Type I immediate hypersensitivity reaction. We consequently affirm the Examiner's rejection of claim 49. C. Claim 54 Issue Appellants also argue dependent claim 54 separately. App. Br. 80. Claim 54 recites: 54. The method of claim 48 wherein the transmitting data from the one or more user interfaces to at least one data analysis system, the data including at least the at least one allergy: the data analysis system being capable of searching an individual's health data to identify at least one innate allergy determinant of the at least one allergy; searching the individual's health data to identify at least one acquired allergy determinant of the at least one allergy; determining, based on the innate and acquired 15 Appeal2013-003004 Application 11/893,370 allergy determinants, allergy risk information for the individual relative to a specified population comprises: transmitting the data from the one or more user interfaces to at least one data analysis system, the data including at least the at least one allergy: the data analysis system being capable of searching the individual's medical history data to identify at least one innate allergy determinant of the at least one allergy; searching the individual's health data to identify at least one acquired allergy determinant of the at least one allergy; determining, based on the innate and acquired allergy determinants, allergy risk information for the individual relative to a specified population. Id. at 93. Appellants contend the cited prior art neither teaches not suggests the limitations of claim 54. Id. at 83. Analysis Appellants essentially repeat their arguments with respect to claims 48 and 49, supra, viz., that neither Qiao nor Lie\"/ recites the language of claim 54, and therefore the references neither teach nor suggest the limitation. App. Br. 81-82. The Examiner responds that Qiao teaches searching an individual's medical data to identify at least one innate allergy determinant. Ans. 10 (citing Qiao 1327, 1328). The Examiner finds Qiao teaches the sample provided by the subjects also provides the individual's health data which includes at least searching the individual's health data to identify a statistically characterized innate allergy determinant. Id. (citing Qiao 1328). The Examiner therefore finds Qiao and Liew teach the disputed limitation. We agree with the Examiner's findings that Qiao and Liew, in combination, teach the limitations of claim 54. Moreover, and as we have 16 Appeal2013-003004 Application 11/893,370 related supra, Appellants' argument is not the proper test for an obviousness analysis. Appellants attempt no argument as to what the prior art would teach or suggest to a person of ordinary skill in the art, Appellants merely argue that because the prior art fails to recite the language of the claim, the prior art fails to teach the limitations. That is insufficient to rebut the Examiner's primafacie case of obviousness, and we affirm the rejection of claim 54. D. Claim 55 Issue Appellants argue dependent claim 55 separately. App. Br. 84. Claim 55 recites: 55. The method of claim 48 wherein the transmitting data from the one or more user interfaces to at least one data analysis system, the data including at least the at least one allergy: the data analysis system being capable of searching an individual's health data to identify at least one innate allergy determinant of the at least one allergy; searching the individual's health data to identify at least one acquired allergy determinant of the at least one allergy; determining, based on the innate and acquired allergy determinants, allergy risk information for the individual relative to a specified population comprises: transmitting the data from the one or more user interfaces to at least one data analysis system, the data including at least the at least one allergy: the data analysis system being capable of searching an individual's health data to identify at least one genetic determinant, epigenetic determinant, or gene expression determinant of the at least one allergy; searching the individual's health data to identify at least one acquired allergy determinant of the at least one allergy; determining, based on the innate and acquired allergy determinants, allergy risk information for the individual relative to a specified population. 17 Appeal2013-003004 Application 11/893,370 Id. at 94. Appellants argue the Examiner erred in finding Qiao teaches the limitations of claim 55. App. Br. 87-88. Analysis Appellants repeat, almost verbatim, their arguments with respect to claims 48, 49, and 54. App. Br. 84-88. The Examiner finds Qiao teaches searching an individual's medical data to identify at least one innate allergy determinant. Ans. 10-11 (citing Qiao 1327; 1328). The Examiner finds the sample provided by the subjects also provides the individual's health data which includes at least searching the individual's health data to identify a statistically characterized innate allergy determinant. Id. (citing Qiao 1328). We agree with the Examiner's reasoning and, because Appellants fail to make an argument successfully rebutting the Examiner's conclusion of obviousness, we affirm the Examiner's rejection of claim 55. CONCLUSION For the reasons set forth supra, we agree with the Examiner's reasoning that claims 48, 49, 54-57, 60-65, 70-73, and 76-86 are prima facie obvious. We consequently affirm the rejection of the claims. DECISION The Examiner's rejection of claims 48, 49, 54-57, 60-65, 70-73, and 76-86 as unpatentable under 35 U.S.C. § 103(a) is affirmed. 18 Appeal2013-003004 Application 11/893,370 No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § l.136(a)(l). See 37 C.F.R. § l.136(a)(l )(iv). AFFIRMED 19 Copy with citationCopy as parenthetical citation