Ex Parte Singhal

Patent Trial and Appeal Board

Jan 30, 2019

13374503 (P.T.A.B. Jan. 30, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO.
13/374,503
103550 7590
Tara Chand Singhal
P.O. Box 5075
Torrance, CA 90510
FILING DATE FIRST NAMED INVENTOR
12/30/2011 Tara Chand Singhal
02/01/2019
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.
l l 195.222CIP2 4731
EXAMINER
NGUYEN, HUONG Q
ART UNIT PAPER NUMBER
3791
NOTIFICATION DATE DELIVERY MODE
02/01/2019 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
singhal@att.net
chand@internetpromise.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte TARA CHAND SINGHAL
Appeal2018-002468
Application 13/374,503
Technology Center 3700
Before DANIEL S. SONG, EDWARD A. BROWN, and
NATHAN A. ENGELS, Administrative Patent Judges.
ENGELS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from a rejection of claims
1-13. Claims 14--18 are withdrawn. We have jurisdiction under 35 U.S.C.
§ 6(b ).
We affirm.
Appeal2018-002468
Application 13/374,503
ILLUSTRATIVE CLAIM
Appellant's invention relates to an integrated blood-glucose
measurement device with a test-strip-count system. Spec. 1 :29-31.
According to Appellant, using prior art blood-glucose meters required users
to carry a storage container, the meter, and a lancet with them for testing
multiple times each day. Spec. 7:4--17. Appellant's invention "provide[s]
improvements by integrating these different items into a single compact
blood glucose measuring device, that reduces the number of items as well as
the steps [required for use] in the prior art." Spec. 7: 17-20.
Claim 1, reproduced below, is illustrative of the claimed subject
matter:
1. A test strip use count system in a blood glucose meter,
compnsmg:
a. a handheld blood glucose meter and housed within
the meter body a central processing unit (CPU), a display unit, a
memory, and a test strip electrical interface, and operating in
the CPU and the memory is a meter logic, wherein the meter
logic includes a test strip count logic and a test strip count
display logic;
b. the meter logic operates the meter including a
function that senses intake of blood sample on a test strip and
on sensing intake of blood sample sends a test strip use signal
to the test strip count logic;
c. the test strip count logic on receiving the test strip
use signal, maintains a test strip use count in the memory and
the test strip count logic displays the test strip use count on the
display unit of the blood glucose meter.
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Appeal2018-002468
Application 13/374,503
THE REJECTIONS
Claims 1--4, 9-11, and 13 1 stand rejected under 35 U.S.C. § I03(a) as
being unpatentable in view of Cohen et al. (US 2002/0019707 Al; Feb. 14,
2002) and Wohland (US 2008/0145277 Al; June 19, 2008).
Claims 5-8 and 12 stand rejected under 35 U.S.C. § I03(a) as being
unpatentable in view of Cohen, W ohland, and Funke et al. (US
2009/0277923 Al; Nov. 12, 2009).
ANALYSIS
The Examiner finds that Cohen discloses a blood-glucose meter that
teaches each limitation of claim 1 except that Cohen does not expressly
disclose a test-strip-count logic that displays the test-strip count on the
display unit of the blood-glucose meter, as claimed. Final Act. 4--5 ( citing
Cohen ,r,r 26, 35, 74, 75). In combination with Cohen's teachings, however,
the Examiner cites Wohland for its teachings of a blood-glucose meter that
calculates and displays a test-strip count. Final Act. 5 ( citing Wohland
,r 40).
1 The Office Action Summary in the Final Action identifies claim 13 as
rejected, and the Appeal Brief acknowledges this rejection and indicates
only claims 14--18 have been withdrawn. However, the Examiner's listing
of claims rejected in view of Cohen and W ohland does not list claim 13.
The limitation recited in dependent claim 13 is substantially the same as that
recited in dependent claim 4, and the Examiner's rejection addresses that
limitation. Final Act. 5---6. Because the substance of the Examiner's
rejection includes the limitation of claim 13 and Appellant does not address
claim 13, we understand claim 13 to be among the claims rejected in view of
Cohen and W ohland and treat claim 13 's omission from the list of rejected
claims as a typographical error.
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Appeal2018-002468
Application 13/374,503
Appellant argues that the processor in Cohen's handheld glucose
meter would not have been capable of performing the functions recited in
claim 1. Appeal Br. 17. Specifically, Appellant argues that in light of
Cohen's June 26, 2000 priority date, technology limitations of the processor
in Cohen's handheld glucose meter required use of a remote processing
center, and Appellant notes that it was the remote processing center that
tracks the test-strip-use count, not the handheld glucose meter. Appeal Br.
17-18.
As an initial matter, Appellant's arguments incorrectly focus on the
time of Cohen's invention; the obviousness analysis centers on the patent
applicant's time of invention, not on the priority date( s) of the prior art
reference(s). As provided by pre-AIA 35 U.S.C. § 103(a),2 a patent may not
issue if the differences between the subject matter sought to be patented and
the prior art are such that the subject matter as a whole would have been
obvious at the time the patent applicant's invention was made to a person
having ordinary skill in the art.
Here, the obviousness analysis requires considering the teachings and
suggestions of the prior art, including Cohen, through the lens of a person
having ordinary skill at the time of Appellant's invention, which claims
priority to a May 31, 2011 Application. We agree with the Examiner that, in
contrast to Appellant's arguments, a person of ordinary skill would have
2 Although not applicable to Appellant's Application because it was filed
before March 16, 2013, § 103 now reads, in relevant part: "A patent for a
claimed invention may not be obtained, .... if the differences between the
claimed invention and the prior art are such that the claimed invention as a
whole would have been obvious before the effective filing date of the
claimed invention to a person having ordinary skill in the art to which the
claimed invention pertains .... " 35 U.S.C. § 103 (emphasis added).
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Appeal2018-002468
Application 13/374,503
recognized that in 2011, handheld devices included processors capable of
performing the recited functions even if Cohen's handheld blood-glucose
meter relied on a remote processing center for additional processing
capabilities. See Ans. 3; see also Cohen ,r 24 ( describing that "optionally"
the handheld device's processor can perform certain processing functions).
As explained by the Examiner, Cohen recognizes that connecting to the
remote processing center is inconvenient, which would have motivated a
person of ordinary skill to use the improved processing capabilities available
in 2011 as an improvement to the processing capabilities of the handheld
device available at the time of Cohen's disclosure. See ZUP, LLC v. Nash
Mfg., Inc., 896 F.3d 1365, 1371 (Fed. Cir. 2018) (explaining that a
motivation to combine may be found "explicitly or implicitly in market
forces; design incentives; the 'interrelated teachings of multiple patents';
'any need or problem known in the field of endeavor at the time of invention
and addressed by the patent'; and the background knowledge, creativity, and
common sense of the person of ordinary skill") ( quoting Plantronics, Inc. v.
Aliph, Inc., 724 F.3d 1343, 1354 (Fed. Cir. 2013)).
We also disagree with Appellant's arguments that the prior art fails to
teach or suggest the claimed meter logic "that senses intake of blood sample
on a test strip and on sensing intake of blood sample sends a test strip use
signal to the test strip count logic," as claimed. See Appeal Br. 18.
According to Appellant, "[the] prior art teaches away from generating a test
strip use signal only when the blood sample is detected and teaches
generating a test strip use signal when the test strip is inserted in the glucose
meter." Appeal Br. 18. Contrary to Appellant's arguments, Cohen teaches
that its handheld blood-glucose meter, upon receiving a blood-glucose
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Appeal2018-002468
Application 13/374,503
measurement, sends signals (including the user's blood-glucose
measurements) to the remote processing center, and the remote processing
center uses those signals to count the number of strips that have been used.
See Ans. 4--5; Cohen ,r,r 21-24, 33, 74 ("as the processing center 40 receives
glucose measurements, a count is maintained of the number of test strips
processed from each lot"). Based on the cited disclosures, we agree with the
Examiner's findings that Cohen teaches or at least reasonably suggests the
claimed logic and signals.
Finally, we disagree with Appellant's arguments based on Graham v.
John Deere Co. of Kansas City, 383 U.S. 1 (1966) andKSRint'l Co. v.
Teleflex Inc., 550 U.S. 398,402 (2007). Appeal Br. 20-21. As explained in
KSR, Graham set out a framework for applying the statutory language of
§ 103, and, prior to KSR under that framework, courts had applied a
"teaching, suggestion, or motivation" test that required "some motivation or
suggestion to combine the prior art teachings [to] be found in the prior art."
KSR, 550 U.S. at 406--07 (internal quotation and citations omitted).
Contrary to Appellant's arguments that a teaching, suggestion, or motivation
"is a necessary pre-requisite to be able to combine ... prior art references"
(Appeal Br. 20; Reply Br. 7), KSR expressly rejected a "rigid" application of
the "teaching, suggestion, or motivation" test (KSR, 550 U.S. at 415).
Regardless, we agree with the Examiner that Cohen does provide a teaching,
suggestion, or motivation that would have lead a person of ordinary skill in
the art at the time of Appellant's invention to combine the teachings of the
prior art to arrive at the claimed invention----Cohen expressly recognizes the
inconvenience of relying on a remote processing center. See Ans. 3 ( citing
Cohen ,r 35). As explained above, we agree with the Examiner that at the
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Appeal2018-002468
Application 13/374,503
time of Appellant's invention, a person of ordinary skill would have
recognized the benefit of using the improved processing capabilities
available at that time to use a handheld device's processor to perform the
functions that had previously (inconveniently) required the use of a remote
processing center.
As Appellant does not address the Examiner's findings regarding
what a person of ordinary skill would have understood from the combined
teachings of the prior art at the time of Appellant's invention, Appellant has
not persuasively rebutted the Examiner's findings and conclusions of
obviousness. Having considered the Examiner's rejection in light of each of
Appellant's arguments and the prior art of record, we disagree with
Appellant and agree with the Examiner's findings and conclusions.
Accordingly, we sustain the Examiner's rejection of claim 1, as well as the
rejections of claims 2-13, for which Appellant relies on the arguments
advanced for claim 1.
DECISION
We affirm the Examiner's rejection of claims 1-13.
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)(l )(iv).
AFFIRMED
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