Ex Parte Rao

Patent Trial and Appeal Board

Jun 12, 2017

14266074 (P.T.A.B. Jun. 12, 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.
AGAM.P-071-2 8358
EXAMINER
SIEFKE, SAMUEL P
ART UNIT PAPER NUMBER
1797
MAIL DATE DELIVERY MODE
14/266,074 04/30/2014
57381 7590
Larson & Anderson, LLC
P.O. BOX 4928
DILLON, CO 80435
06/12/2017
Anoop Rao
06/12/2017 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 ANOOP RAO
Appeal 2016-004032
Application 14/266,0741
Technology Center 1700
Before MARKNAGUMO, DONNA M. PRAISS, and
WESLEY B. DERRICK, Administrative Patent Judges.
DERRICK, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
This is a decision on an appeal under 35U.S.C. § 134 from the
Examiner’s decision rejecting claims 1-5 under 35 U.S.C. § 102(b) as
anticipated by Brown.2 We have jurisdiction pursuant to 35 U.S.C. § 6.
We REVERSE.
1 Appellant identifies AgaMatrix, Inc. as the real party in interest. Appeal
Brief filed August 5, 2015, 1.
2 Brown et al., US 2008/0300920 Al, published December 4, 2008.
Appeal 2016-004032
Application 14/266,074
THE INVENTION
Appellant’s appealed claims relate to a portable combination for
measuring a glucose concentration value having a portable glucose meter
(GM) and a web enabled portable device (WEPD) that are electrically
coupled to allow power transfer between the GM and WEPD, and are
communicatively coupled to allow for data transfer between the GM and the
WEPD, wherein the GM is detachable and reattachable to the WEPD.
Specification filed April 30, 2014 (“Spec.”), Abstract.
Claim 1—the sole independent claim—is representative.
1. A portable combination for measuring a glucose
concentration value in a sample, the combination comprising:
(A) a portable glucose meter (GM) having a test strip
port for receiving a disposable electrochemical test strip,
wherein the GM calculates a glucose concentration value in a
sample applied to a test strip received in the test strip port; and
(B) a web enabled portable device (WEPD) having a
rechargeable WEPD battery and a wireless connection to the
internet, wherein:
(I) the GM and the WEPD are electrically coupled
to allow power transfer between the GM, and the WEPD,
(II) the GM and the WEPD are communicatively
coupled to allow for data transfer between the GM and the
WEPD, and
(III) the GM and WEPD are detachable from and
reattachable to each other to form the portable combination.
Appeal Br. (Claims Appendix) 6.
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Appeal 2016-004032
Application 14/266,074
DISCUSSION3
Anticipation is a question of fact, and requires that a single prior art
reference describe an embodiment within the scope of the claim, in which
every element required by the claim, and every relation between elements, is
present, either expressly or inherently. See, e.g., In re Gleave, 560 F.3d
1331, 1334 (Fed. Cir. 2009). In particular, our reviewing court has held that,
“unless a reference discloses within the four comers of the document not
only all of the limitations claimed but also all of the limitations arranged or
combined in the same way as recited in the claim, it cannot be said to prove
prior invention of the thing claimed and, thus, cannot anticipate under 35
U.S.C. § 102.” NetMoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1371
(Fed. Cir. 2008).
Having considered the Examiner’s anticipation rejection in light of
Appellant’s argument, we are persuaded that the Examiner has failed to meet
the Office’s burden of establishing the unpatentability of the claims on
appeal. For any ground of rejection, “the examiner bears the initial burden
. . . of presenting a prima facie case of unpatentability.” In re Oetiker, 977
F.2d 1443, 1445 (Fed. Cir. 1992).
The Examiner relies on Brown for its disclosure of two different sets
of devices and maintains that both anticipate the claims. See generally Ans.
The first set of devices are a portable glucose meter (GM) 500 and
web enabled portable device (WEPD) 100. Ans. 2-3. The Examiner finds
and maintains that both GM 500 and WEPD 100 have USB connectors that
3 We refer to the Specification, the Final Office Action issued January 26,
2105 (“Final Act.”), the Appeal Brief issued August 5, 2015 (“App. Br.”),
the Examiner’s Answer issued January 12, 2016 (“Ans.”), and the Reply
Brief filed March 8, 2016 (“Reply Br.”).
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Appeal 2016-004032
Application 14/266,074
allow electrically coupling the two together to provide both power transfer
and data transfer, and that the GM 500 and WEPD 100 are detachable from
and reattachable to each other. Ans. 2-3 (citing Brown, Fig. 3); 6-7 (citing
Brown, || 44, 80-84).
Looking at Brown, however, we find it discloses that the GM 500 is
detachable from and reattachable to a portable device 200 (Fig. 3) and also
that the portable device 200 is detachable from and reattachable to the
WEPD 100 (Fig. 4). In accord with Appellant’s contention, however, that
“Brown discloses only that a USB cable can be used to connect two devices”
(Appeal Br. 4), we are directed to no disclosure where the GM 500 is
connected to the WEPD 100 using USB cable, either directly or by way of
the portable device 200. See generally Ans. It follows then that this relied
on embodiment that includes the portable device 200 does not necessarily
disclose a combination in which the GM is detachable and reattachable to
the WEPD as required by the claims.
The second set of devices are a portable glucose meter (GM) 600 and
a web enabled portable device (WEPD) 100. Ans. 5-6 (citing Brown,
90-98, Figs. 5, 6a). The Examiner finds the GM 600 is detachable from
and reattachable to the WEPD 100 on the basis of a USB interface
connection. Ans. 6 (citing Brown, 1 93). As to these elements being
electrically coupled to allow power transfer, the Examiner maintains that
paragraphs 83 and 90 of Brown share all the same components and that the
GM 600 and the WEPD 100 are thus electrically coupled to allow power
transfer. Ans. 6-7.
Again in accord with Appellant’s contention that “Brown discloses
only that a USB cable can be used to connect two devices” (Appeal Br. 4),
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Appeal 2016-004032
Application 14/266,074
we are directed to no manifest disclosure of the GM 600 and the WEPD 100
being connected by a USB interface connection. While the Examiner cites
paragraph 93 as disclosing such a USB connection, it does not, but instead
describes a wireless connection as depicted in Figure 6d. Brown, 193,
Fig. 6d.
As to the Examiner’s reliance on paragraphs 83 and 90, we find it falls
short of what is required to support prima facie anticipation. While Brown
states, the “integrated device 600 in FIGS 6A-6D incorporates the
components and functions of the portable device 200 with the components
and function of the meter 500” (190), there is no reasonable basis to
conclude that each and every component in both the portable device 200 and
the GM 500 are included, particularly such that there is provided a USB
connection between the integrated device (GM 600) and the WEPD 100.
Further, absent further explanation as to what is meant by the integration
being “[l]ike the portable device 1100” (190), including no direction to
relevant portions of Brown related to the portable device 1100 in Figure 5,
the Examiner has failed to establish an unambiguous disclosure of the
GM 600 and the WEPD 100 being electrically coupled to allow power
transfer. Cf. In re Hughes, 345 F.2d 184, (CCPA 1965) (In reversing an
anticipation rejection, stating that a “reference ... is good only for that
which it clearly and definitely discloses” and that “an ambiguous reference
. . . will not support an anticipation rejection.”).
As to the Examiner’s further reliance on paragraphs 90 to 98, we
discern no disclosure of a connection to electrically couple the GM 600 with
the WEPD 100 so as to allow power transfer rather than merely the transfer
of data, particularly via RFID. The transfer of data is not sufficient to also
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Appeal 2016-004032
Application 14/266,074
meet the limitation as to the transfer of power as the claim must be construed
so as to not render the limitation as to transfer of power superfluous. Our
reviewing court has denounced claim construction methodology that renders
limitations superfluous. See Stumbo v. Eastman, 508 F.2d 1358, 1362 (Fed.
Cir. 2007).
For the reasons above, the Examiner has not established that Brown
discloses all of the limitations claimed, arranged or combined in the same
way as recited in the claim. See Net MoneyIN, 545 F.3d at 1371. On this
record, accordingly, the Examiner’s articulated reasoning falls short of that
necessary for a prima facie case of anticipation. See In re Warner, 379 F.2d
1011, 1017 (CCPA 1967) (“The Patent Office has the initial duty of
supplying the factual basis for its rejection. It may not. . . resort to
speculation, unfounded assumptions or hindsight reconstruction to supply
deficiencies in its factual basis.”); In re Sporck, 301 F.2d 686, 690 (CCPA
1962); see also Oetiker, 977 F.2d at 1445.
We decline to scour the record in the first instance for facts that might
support the anticipation rejection, or to set forth an obviousness rejection as
a new ground, as our primary role is review, not examination de novo.
CONCLUSION
The Examiner’s decision rejecting claims 1-5 is REVERSED.
REVERSED
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