Ex Parte RaoDownload PDFPatent Trial and Appeal BoardJun 12, 201714266074 (P.T.A.B. Jun. 12, 2017) 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. 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. 2 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.”). 3 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), 4 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 5 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 6 Copy with citationCopy as parenthetical citation