Ex Parte Angelides

Patent Trial and Appeal Board

Jun 13, 2016

13656692 (P.T.A.B. Jun. 13, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/656,692 10/20/2012
93599 7590
Eric P. Mirabel, JD, LLM
3783 Darcus Street
Houston, TX 77005
06/15/2016
FIRST NAMED INVENTOR
Kirnon J. Angelides
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.
EOS-ProgPers 1081
EXAMINER
RIGGS II, LARRY D
ART UNIT PAPER NUMBER
1631
NOTIFICATION DATE DELIVERY MODE
06/15/2016 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):
emirabel@comcast.net
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte KIMON J. ANGELIDES
Appeal2014-004568
Application 13/656,692
Technology Center 1600
Before DONALD E. ADAMS, JEFFREY N. FREDMAN, and
ULRIKE W. JENKS, Administrative Patent Judges.
ADAMS, Administrative Patent Judge.
DECISION ON APPEAL 1
This appeal2 under 35 U.S.C. § 134(a) involves claims 1, 2, 5-10, and
13-15 (App. Br. 5). Examiner entered a rejection under 35 U.S.C. § 103(a)
(Ans. 4--11). We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
1 Appellant identifies the Real Party in Interest as "EosHealth, Inc." (App.
Br. 3).
2 Appellant discloses the following related Appeals: Application No.
13/485,849, Appeal No. 2014-002929 (Decision entered June 5, 2014,
reversing all grounds of rejection); Application No. 13/705,341, Appeal No.
2014-008033 (Decision entered April 28, 2015, affirming the obviousness
rejection of rejection); and Application No. 13/901,588, Appeal No. 2014-
003996 (currently pending at the Patent Trial and Appeal Board).
Appeal2014-004568
Application 13/656,692
STATEMENT OF THE CASE
Appellant's "invention relates to a system for managing diabetes by
analyzing blood glucose levels and other patient information to formulate
queries, advice and educational materials displayed on a portable device
carried by the patient" (Spec. 1 ). Claim 1 is representative and reproduced
in the Claims Appendix of Appellant's Brief.
Claims 1, 2, 5-10, and 13-15 stand rejected under 35 U.S.C. § 103(a)
as unpatentable over the combination of Cosentino,3 Boushey,4 Malave,5
Y odfat, 6 Liisberg, 7 Kamen, 8 Grana, 9 and Abrams. 10
ISSUE
Does the preponderance of evidence relied upon by Examiner support
a conclusion of obviousness?
FINDINGS OF FACT
We adopt the Examiner's findings concerning the scope and content
of the prior art (Ans. Ans. 5-15),
ANALYSIS
Based on the combination of Cosentino, Boushey, Malave, Y odfat,
Liisberg, Kamen, Grana, and Abrams, Examiner concludes that, at the time
Appellant's invention was made, Appellant's claimed invention would have
3 Cosentino et al., US 2008/0294024 Al, published Nov. 27, 2008.
4 Boushey et al., US 8,363,913 B2, issued Jan. 29, 2013.
5 Malave et al., US 7,647,237 B2, issued Jan. 12, 2010.
6 Yodfat et al., US 2010/0268043 Al, published Oct. 21, 2010.
7 Liisberg et al., US 2006/0253296 Al, published Nov. 9, 2006.
8 Kamen, US 7,999,674 B2, issued Aug. 16, 2011.
9 Grana, US 6,980,999 Bl, issued Dec. 27, 2005.
10 Abrams et al., US 5,673,691, issued Oct. 7, 1997.
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Appeal2014-004568
Application 13/656,692
been prima facie obvious to a person of ordinary skill in this art (see Ans.
10-11).
Cosentino discloses "a handheld portable glucose meter[, i.e. a
glucometer that includes a microprocessor, with a readable display that can
be carried the patient], able with a controller and remote input/output circuit
configured to send/receive data to [a] remote location wirelessly[, i.e.,]
to/from a server" (Ans. 5---6; Cosentino i-fi-f l, 9, 53, 76, 89, 250-264; see
App. Br. 10-11). Liisberg "relates to a diabetes advisory system which
outputs recommendations for choices of actions to be taken by a diabetes
patient, e.g., a recommended medication, physical exercise, nutrition, etc."
(Liisberg i13; see Ans. 7). Liisberg's diabetes advisory system includes a
"processing means [] provided as part of a single device, e.g. a portable or a
hand-held electronic device," such as "a portable or hand-held computer, a
Personal Digital Assistant (PDA), a special-purpose medical device, or the
like" that includes "suitable communications means for transmitting the
input parameters to the remote data processing system and for receiving
information about the recommended action" (Liisberg i-fi-138-39; Ans. 7; see
App. Br. 11-12). In addition, Appellant recognizes, that Abrams discloses
"a []hand-held computer"; Boushey "relates to []a mobile device (e.g., a
PDA or mobile telephone); and "Kamen is also preferably a portable
glucometer or infusion device with a database incorporated in it or available
to it by wireless connection" (App. Br. 14).
We recognize, but are not persuaded by, Appellant's contention that
" [ m] eal and food consumption is not mentioned" in Cosentino (App. Br. 11;
cf Cosentino i-fi-1264--265; see Ans. 5---6 (Cosentino suggests a device which
permits a user to indicate whether a blood glucose test was performed
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Application 13/656,692
"before a meal [] or after a meal" and the "current condition of the operator,
for example, that they have consumed too much food").
Cosentino' s device provides for the entry of carbohydrate intake
(Cosentino i-f 277; App. Br. 10-11; see Ans. 5). In addition, Boushey
"relates to the fields of ... food databases" and "the use of [food databases]
in a system for recording dietary intake and analyzing nutritional content"
(Boushey 1; see generally Ans. 1 O; App. Br. 11 ). The "software in
[Boushey' s] device prompts the user to 'record a new meal,' 'review meals,'
or 'alternate method'," wherein "energy and nutrient content of food
consumed can be determined" (Boushey 5; Ans. 6). Examiner finds that
Boushey' s disclosure of "meal tagging []includes determining the energy
and nutrient content of food consumed by the individual ... suggesting
calories of fat, protein and carbohydrates consumed" (Ans. 6). Therefore,
when Examiner's combination is viewed as a whole, we are not persuaded
by Appellant's contention that Boushey "does not disclose a meal
breakdown by calories of fat, protein[,] and carbohydrates consumed" (App.
Br. 11). In re Merck & Co. Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986) (Each
reference "must be read, not in isolation, but for what it fairly teaches in
combination with the prior art as a whole.").
The method of Appellant's claim 1 requires, inter alia, advising a
patient, from the server, to eat food and [] on food choices based exclusively
on: (i) patient preferences for certain foods at certain times of day and
patient preferences for foods with similar textures to foods said patient
indicated as preferred, and (ii) blood glucose level and time from last food
intake (see Appellant's claim 1 ).
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Application 13/656,692
The combination of prior art suggests a method that comprises, inter
alia, advising a patient, from a server, to eat food and on food choices based
on (i) patient preferences for certain foods at certain times of day and patient
preferences for foods with similar textures to foods said patient indicated as
preferred (see Appellant's claim 1). Specifically, Kamen suggests a medical
device, that comprises a database [] contain[ing] information related to the
preference of the particular food item for those with specific diet
restrictions," such as those with diabetes (Kamen Abstract; id. 9; Ans. 7-8).
Kamen's "database may be used to suggest food items in response to
specific inquiry, i.e., based on a user entered preference or request" (Kamen
9; Ans. 7-8). Kamen's device and database allow a user to define a "user
profile [that] may include ... preferences" (Kamen 10; Ans. 7-8). Grana
suggests a "Menu/Recipe Database" that permits a user to identify
preferences relating to "texture," "cultural preferences," "[ m ]eal patterns ...
e.g., a user ... eats cereal for breakfast everyday," as well as, whether a user
prefers organic, vegetarian[], vegan [or] kosher" foods (Grana 10; see id. at
11; Ans. 8; see generally App. Br. 12-15). Abrams discloses an apparatus
that "employs an interactive goal-oriented program especially suited for
helping an individual control his weight" (Abrams 1; Ans. 8). Abrams
apparatus "obtains personal data and preferences from the user," such as
"food preferences" and "normal times for eating meals" (Abrams 22-23;
Ans. 8). Therefore, we are not persuaded by Appellant's contention that,
when viewed in isolation Grana's method is "definitely not 'based
exclusively on' patient preferences for foods with similar textures, and may
not even include food textures as a consideration, in many cases" (App. Br.
15; Reply Br. 3). In re Merck & Co. Inc., 800 F.2d at 1097.
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Application 13/656,692
The combination of prior art suggests a method that comprises, inter
alia, advising a patient, from a server, to eat food based on (ii) blood glucose
level and time from last food intake (see Appellant's claim 1). Liisberg
describes a device and method that advises a patient about the consumption
of food, which accounts for blood glucose level and the time from last food
intake (see e.g., Liisberg i-fi-178, 82, and 146; see Ans. 7; see also App. Br.
11-12 (Liisberg "discloses recommendations to a patient [] includ[ing] ...
intake of food"))
Therefore, notwithstanding Appellant's contention to the contrary,
when Examiner's combination is viewed as a whole, the combination
suggests a method of diabetes management using a portable device including
a glucometer and a microprocessor with a readable display that is carried
with the patient and linked through a wireless connection to a server that
comprises, inter alia, advising a patient, from the server, to eat food and[]
on food choices based on: (i) patient preferences for certain foods at certain
times of day and patient preferences for foods with similar textures to foods
said patient indicated as preferred, and (ii) blood glucose level and time from
last food intake (see Appellant's claim 1; cf App. Br. 15 ("In Grana nothing
is necessarily included or excluded as a consideration in decision-making");
see Reply Br. 2). In re Merck & Co. Inc., 800 F.2d at 1097.
Appellant fails to provide an evidentiary basis to support a conclusion
that "[t]here is simply too much information to be input and output in Grana
to enter or display on a small, hand-held device screen" (App. Br. 16-17; see
Reply Br. 2). In re Pearson, 494 F.2d 1399, 1405 (CCPA 1974)
("Attorney's argument in a brief cannot take the place of evidence.").
Further, as Examiner explains, "hand held devices[, such as those suggested
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by the combination of references relied upon by Examiner,] are capable of
data entry and 'complex' data analysis" (Ans. 15). See In re Jacoby, 309
F.2d 513, 516 (CCPA 1962) (the obviousness question cannot be
approached on basis that skilled artisans would only know what they read in
references; such artisans must be presumed to know something about the art
apart from what the references disclose). A fact-finder "need not seek out
precise teachings directed to the specific subject matter of the challenged
claim [in an analysis of obviousness], for a court can take account of the
inferences and creative steps that a person of ordinary skill in the art would
employ." KSR Int'! v. Teleflex Inc., 550 U.S. 398, 418 (2007). See also
DyStar Textilfarben GmbH & Co. Deutschland KG v. C.H. Patrick Co., 464
F.3d 1356, 1367 (Fed. Cir. 2006) (the "suggestion test is in actuality quite
flexible and not only permits, but requires, consideration of common
knowledge and common sense").
For the foregoing reasons, we are not persuaded by Appellant's
contention
that[] there is no likelihood of success where, as here, the
proposed modification by Grana to Consentino, Liisberg or
Kamen (where input and display are on portable devices) makes
the recipient portable device unsuitable for its intended purpose
of diabetes monitoring. The Cosentino, Liisberg or Kamen
devices would have to become large enough to have a display
screen showing diabetes monitoring and education information,
as well display menus, recipes, shopping lists, meal plans, price
and bargain lists (for budgeting), which cannot be
accommodated on [a] portable device.
(App. Br. 18; see Reply Br. 3). See In re Pearson, 494 F.2d at 1405. See
also KSR Int'! Co. v. Teleflex Inc., 550 U.S. at 417:
If a person of ordinary skill can implement a predictable
variation, § 103 likely bars its patentability. For the same
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reason, if a technique has been used to improve one device, and
a person of ordinary skill in the art would recognize that it
would improve similar devices in the same way, using the
technique is obvious unless its actual application is beyond his
or her skill.
On this record, Appellant failed to establish that devices, such as those
suggested by the combination of references relied upon by Examiner, could
not be configured by those of ordinary skill in this art to perform as
Examiner reasonably explains (see Ans. 5-8 and 10-15). A minor
modification of the prior art, such as limiting the device to a particular size,
does not distinguish the claimed product from the prior art. See KSR, 127 S.
Ct. at 1741 (It is proper to "take account of the inferences and creative steps
that a person of ordinary skill in the art would employ."). See also id. at
1742 ("A person of ordinary skill is also a person of ordinary creativity, not
an automaton.").
CONCLUSION OF LAW
The preponderance of evidence relied upon by Examiner supports a
conclusion of obviousness. The rejection of claim 1 under 35 U.S.C.
§ 103(a) as unpatentable over the combination of Cosentino, Boushey,
Malave, Y odfat, Liisberg, Kamen, Grana, and Abrams is affirmed. Claims
2, 5-10, and 13-15 are not separately argued and fall with claim 1.
TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED
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