Ex Parte Doyle et al

Patent Trials and Appeals Board

Jun 27, 2019

14792524 - (D) (P.T.A.B. Jun. 27, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
14/792,524 07/06/2015 Francis J. Doyle III
23379 7590 07/01/2019
RICHARD ARON OSMAN
530 Lawrence Expy # 332
Sunnyvale, CA 94085
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.
UC13-272-2US 2303
EXAMINER
MASINI CK, MICHAEL D
ART UNIT PAPER NUMBER
2117
NOTIFICATION DATE DELIVERY MODE
07/01/2019 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):
richard@sci-tech.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex Parte FRANCIS J. DOYLE III, EYAL DASSAU,
DALEE. SEBORG, and JOON BOK LEE
Appeal 2018-008297
Application 14/792,5241
Technology Center 2100
Before ST. JOHN COURTENAY III, LARRY HUME and
PHILLIP A. BENNETT, Administrative Patent Judges.
HUME, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134(a) of the Final
Rejection of claims 22, 23, 25, 26, 28, 29, 31, 32, 34, 35, 37, and 38. The
Examiner indicates claims 1-21, 24, 30, 33, 36 are cancelled. We have
jurisdiction under 35 U.S.C. § 6(b ).
We REVERSE.
1 According to Appellants, the real parties in interest are Regents of the
University of California, the assignee of record, and Insulet Corp., the
licensee. App. Br. 1.
Appeal 2018-008297
Application 14/792,524
STATEMENT OF THE CASE2
The Invention
Embodiments of Appellants' disclosed invention relate to "[a] model-
based control scheme consisting of either a proportional-integral-derivative
(IMC-PID) controller or a model predictive controller (MPC), with an
insulin feedback (IFB) scheme personalized based on a priori subject
characteristics and comprising a lower order control-relevant model to
obtain PID or MPC controller for artificial pancreas (AP) applications."
Abstract.
Exemplary Claim
Claim 22, reproduced below, is representative of the subject matter on
appeal ( claim formatting added for readability):
22. A controller for an artificial pancreas (AP) system
which automatically directs delivery of insulin to be
administered to a subject with type 1 diabetes mellitus to
maintain blood glucose concentrations within the euglycemic
zone, comprising[:]
a control algorithm with individual gain personalization
based on each subject's clinical characteristics, using a control-
relevant discrete model with a priori subject information,
wherein the subject's basal insulin is incorporated into the
model to personalize the controller's aggressiveness and take
into account variations in insulin sensitivity,
wherein the personalization allows the controller to be
aggressive in cases where the subject is insensitive to insulin
2 Our Decision relies upon Appellants' Appeal Brief ("App. Br.," filed April
7, 2018); Reply Brief ("Reply Br.," filed Aug. 22, 2018); Examiner's Answer
("Ans.," mailed June 26, 2018); Final Office Action ("Final Act.," mailed
Jan. 11, 2018); and the original Specification ("Spec.," filed July 6, 2015).
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Appeal 2018-008297
Application 14/792,524
and requires a large basal amount to maintain euglycemia,
while preventing hypoglycemic risk by reducing the controller's
aggressiveness in cases where the subject requires a low basal
amount to maintain normal blood glucose levels,
wherein the controller is an internal model control (IMC)
based design of a proportional-integral-derivative (PID)
controller.
App. Br. 11 (Claims App'x).
Prior Art
The Examiner relies upon the following prior art as evidence in
rejecting the claims on appeal:
Atlas et al. ("Atlas") US 2012/0123234 Al May 17, 2012
Rejection on Appeal3
Claims 22, 23, 25, 26, 28, 29, 31, 32, 34, 35, 37, and 38 stand rejected
under pre-AIA 35 U.S.C. § 102(e) as being anticipated by Atlas. Final
Act. 3; Ans. 2.
3 Because a rejection under§ 103 is not before us on appeaL we do not
reach and express no opinion as to whether claims 22, 23, 25, 26, 28, 29, 31,
32, 34, 35, 37, and 38 might be obvious over the teachings and suggestions
of the Atlas reforence, considered alone or in combination with one or more
additional references. In the event of further prosecution, we leave it to the
Examiner to determine whether these claims should instead be rejected
under 35 U.S.C. § 103(a). \Vhile the Board is authorized to reject claims
under 37 C.F.R. § 41.50(b), no inference should be drmvn when the Board
elects not to do so. See lvfanual qf Patent Examining Procedure (MPEP)
§ 1213.02.
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Appeal 2018-008297
Application 14/792,524
ISSUE
Appellants argue (App. Br. 3-9; Reply Br. 1-9) the Examiner's
rejection of claim 22 under pre-AIA 35 U.S.C. § 102(e) as being anticipated
by Atlas is in error. These contentions present us with the following issue:
Did the Examiner err in finding the cited prior art discloses claim 22,
as claimed?
ANALYSIS
We agree with particular arguments advanced by Appellants with
respect to independent claims 22 and 23 for the specific reasons discussed
below. We highlight and address specific findings and arguments regarding
claims 22 and 23 for emphasis as follows.
Independent Claims 22 and 23
Regarding claim 22, the Examiner finds Atlas's IMC-based design of
a PID controller teaches the claimed controller. Final Act. 4, citing Atlas
,-J,-J 18-19. The Examiner further finds Atlas's embodiments disclosed in
,-J,-J 35, 39, 46-48, and 49 also disclose various other limitations of claim 22.
The Examiner similarly cites Atlas with respect to the limitations of
independent claim 23.
We find the Examiner is improperly piecing together different
embodiments of the reference in the anticipation rejection. We conclude the
embodiments from Atlas's Background section, depicted in paragraphs 18
and 19, describing the prior art to Atlas, Atlas' preferred embodiment in
paragraph 46, and various other disclosed embodiments of Atlas in
paragraphs 47, 48, and 49 are improperly combined for a 102 rejection.
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Appeal 2018-008297
Application 14/792,524
Our reviewing court guides, under § 102, the prior art reference "must
not only disclose all elements of the claim within the four comers of the
document, but must also disclose those elements arranged as in the claim."
Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1369 (Fed. Cir. 2008)
( citation and internal quotation marks omitted). "Thus, it is not enough that
the prior art reference discloses part of the claimed invention, which an
ordinary artisan might supplement to make the whole, or that it includes
multiple, distinct teachings that the artisan might somehow combine to
achieve the claimed invention." Id. at 1371 (emphasis added). Thus, our
reviewing court inlVetAfoneyln explains that combining distinct parts of two
separate protocols disclosed in a single reference does not anticipate. Id.
at 1371.4
Accordingly, based upon the findings above, on this record, we find at
least one error in the Examiner's reliance on the cited prior art to disclose the
limitations of claims 22 and 23 as arranged therein, such that we do not
sustain the Examiner's finding of anticipation of independent claims 22 and
23 and dependent claims 25, 26, 28, 29, 31, 32, 34, 35, and 37 which stand
therewith.
4 For clarity of our Decision, we note Appellants' various arguments
relating to "teaching away" in reference to the Atlas reference (App.
Br. 3-6) are inapplicable to an anticipation rejection, and thus unpersuasive.
"Teaching away is irrelevant to anticipation." Seachange International, Inc.,
v. C-Cor, Inc., 413 F.3d 1361, 1380 (Fed. Cir. 2005). Therefore, this
inapplicable argument does not alter our findings relating to lack of
anticipation in this Appeal.
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Appeal 2018-008297
Application 14/792,524
CONCLUSION
The Examiner erred with respect to the anticipation rejection of
claims 22, 23, 25, 26, 28, 29, 31, 32, 34, 35, 37, and 38 under pre-AIA 35
U.S.C. § 102(e) over the cited prior art of record, and we do not sustain the
rejection.
DECISION
We reverse the Examiner's decision rejecting claims 22, 23, 25, 26,
28, 29, 31, 32, 34, 35, 37, and 38.
REVERSED
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