Ex Parte Fuisz et alDownload PDFPatent Trial and Appeal BoardJul 25, 201613927136 (P.T.A.B. Jul. 25, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 13/927, 136 06/26/2013 42798 7590 07/26/2016 FITCH, EVEN, TABIN & FLANNERY, LLP 120 South LaSalle Street, Suite 1600 Chicago, IL 60603-3406 FIRST NAMED INVENTOR Richard C. FUISZ 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. 20386-135286 1035 EXAMINER BURGESS, JOSEPH D ART UNIT PAPER NUMBER 3626 MAILDATE DELIVERY MODE 07/26/2016 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 RICHARD C. FUISZ and JOSEPH M. FUISZ Appeal2016--004382 Application 13/927,136 Technology Center 3600 Before ANTON W. PETTING, JOSEPH A. FISCHETTI, and NINA L. MEDLOCK, Administrative Patent Judges. PETTING, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE1 Richard C. Fuisz and Joseph M. Fuisz (Appellants) seek review under 35 U.S.C. § 134 of a final rejection of claims 1 and 3---6, the only claims pending in the application on appeal. Oral argument was presented June 2, 2016. We have jurisdiction over the appeal pursuant to 35 U.S.C. § 6(b). 1 Our decision will make reference to the Appellants' Appeal Brief ("App. Br.," filed September 30, 2015) and Reply Brief ("Reply Br.," filed March 21, 2016), and the Examiner's Answer ("Ans.," mailed January 19, 2016), and Final Action ("Final Act.," mailed July 17, 2015). Appeal2016-004382 Application 13/927,136 The Appellants invented a way of electronically delivering to a caregiver analytical alert data concerning a breach or non-breach of an alert limit for an analyte. Specification 2:23-24. An understanding of the invention can be derived from a reading of exemplary claim 1, which is reproduced below (bracketed matter and some paragraphing added). 1. A method for electronically delivering to a caregiver analytical alert data concerning a breach of an alert limit for an analyte, comprising: [ 1] programming a medical analyzer device with at least one threshold value for the at least one analyte to be sensed by the medical analyzer device; [2] sensing the analyte level with the medical analyzer device; [3] collecting data regarding the analyte level and breaches of the at least one threshold value during a time cycle; and [ 4] electronically sending metadata compnsmg data and comprising only a subset of the collected data during said time cycle regarding the analyte level breaches of the at least one threshold value to the caregiver, the metadata comprising an indication of the analyte and the limits set by the caregiver, a breach of the threshold value, 2 Appeal2016-004382 Application 13/927,136 the degree of the breach on the basis of an amount over or under the threshold value, a time interval between breaches whether fixed or rolling, a total number of breaches in the time cycle, and the total number of tests in the time cycle. The Examiner relies upon the following prior art: Cohen US 2007 /0016449 Al Fuisz US 7 ,824,612 B2 Jan. 18,2007 Nov. 2, 2010 Claims 1 and 3-6 stand rejected under 35 U.S.C. § 101 as directed to non-statutory subject matter. Claims 1 and 3---6 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Cohen and Fuisz. ISSUES The issues of statutory subject matter tum primarily on whether informing one of when too much or too little of something occurs in an organism is more than an abstract idea. The issues of obviousness tum primarily on whether data extracted from the scope of all data collected is a subset of all data collected. FACTS PERTINENT TO THE ISSUES The following enumerated Findings of Fact (FF) are believed to be supported by a preponderance of the evidence. 3 Appeal2016-004382 Application 13/927,136 Facts Related to Claim Construction 01. The disclosure contains no lexicographic definition of "analyte." 02. The plain meaning of analyte is a substance or sample being analyzed.2 Facts Related to Appellants' Disclosure 03. The disclosure as originally filed does not use the word "subset." Facts Related to the Prior Art Cohen 04. Cohen is directed to selection of configurable parameters in a medical information management system. Specifically, Cohen is directed to selection of configurable or variable glucose target ranges for meal events and time-based events, and is also directed to the selection of configurable or variable analysis time periods for before and after the meal events. Cohen para. 1. 05. Cohen allows for multiple blood glucose or sensor glucose target ranges to be established and modified, establishing an adjustable target glucose range for different events. Cohen para. 10. 06. Cohen allows a subject-user to establish adjustable analysis timeframes for analyzing subject data at different times. Cohen 2 http://www.collinsdictionary.com/dictionary/english/analyte 4 Appeal2016-004382 Application 13/927,136 generates reports that display the adjustable analysis timeframes for the different meal events. Cohen generates glucose statistics for the analysis timeframes to allow the subject-user to better monitor his or her therapy. Cohen para. 11. 07. Cohen calculates values for various medical reports. Cohen calculates average blood glucose or sensor glucose readings for specified timeframes, and values for medical or physical information that is to be displayed on the reports. A subject-user may select parameters used to generate medical information values corresponding to the selected parameters. Cohen para. 65. 08. Cohen describes setting high and low blood glucose threshold reporting parameters. Cohen 97. 09. Cohen describes setting a date (or period of dates) for which the data in the report is to encompass and/or a time (or period of times) for which the data in the report is to encompass. Cohen para. 158. Fuisz 10. Fuisz is directed to a method for programming a bodily fluid analyzer. Fuisz 2:15-16. 11. Fuisz describes setting a threshold value for an analyte to be sensed by the bodily fluid analyzer, the threshold value being one beyond which the display will display an alert; sensing the analyte; and displaying an alert if the sensed analyte level is beyond the threshold value. Fuisz 2:21-29. 5 Appeal2016-004382 Application 13/927,136 ANALYSIS Claims 1and3-6 rejected under 35 U.S.C. § 101 as directed to non- statutory subject matter The Supreme Court set forth a framework for distinguishing patents that claim laws of nature, natural phenomena, and abstract ideas from those that claim patent-eligible applications of those concepts. First, [] determine whether the claims at issue are directed to one of those patent-ineligible concepts. [] If so, [] then ask, "[ w ]hat else is there in the claims before us? [] To answer that question, [] consider the elements of each claim both individually and "as an ordered combination" to determine whether the additional elements "transform the nature of the claim" into a patent- eligible application. [The Court] described step two of this analysis as a search for an "inventive concept"-i.e., an element or combination of elements that is "sufficient to ensure that the patent in practice amounts to significantly more than a patent upon the [ineligible concept] itself." Alice Corp., Pty. Ltd. v CLS Bank Intl, 134 S. Ct. 2347, 2355 (2014) (citing Mayo Collaborative Services v. Prometheus Laboratories, Inc., 132 S. Ct. 1289 (2012)). We are not persuaded by Appellants' argument that the claims are not directed to an abstract idea. App. Br. 4--5. The Examiner finds the claims are directed to the abstract idea of letting one know when one has too much or too little of some substance. Final Act. 2-3. This finding could as easily have been couched as the claims being directed to a law of nature that too much or too little of certain substances adversely affects an organism. In support of this finding, claim 1 's preamble recites it provides data concerning a breach of an alert limit for an analyte. The steps end up 6 Appeal2016-004382 Application 13/927,136 sending data describing the breach. The Specification repeats the purpose described in claim 1. Spec. 2: Summary of the Invention. Thus, the focus of the claims is to inform one when too much or too little of something is present. This idea is as old as the practice of medicine, and, as such, is no more than conceptual advice, the epitome of abstract ideas. In any event, these claims are decidedly not directed to, in the sense of focusing on, improvements in technology to so inform one. Accordingly, the claims do not pass the first Alice/Mayo step. The introduction of a computer into the claims does not alter the analysis at Mayo step two. the mere recitation of a generic computer cannot transform a patent-ineligible abstract idea into a patent-eligible invention. Stating an abstract idea "while adding the words 'apply it'" is not enough for patent eligibility. Nor is limiting the use of an abstract idea "to a particular technological environment." Stating an abstract idea while adding the words "apply it with a computer" simply combines those two steps, with the same deficient result. Thus, if a patent's recitation of a computer amounts to a mere instruction to "implement[t]" an abstract idea "on ... a computer," that addition cannot impart patent eligibility. This conclusion accords with the pre-emption concern that undergirds our § 101 jurisprudence. Given the ubiquity of computers, wholly generic computer implementation is not generally the sort of "additional feature [ e]" that provides any "practical assurance that the process is more than a drafting effort designed to monopolize the [abstract idea] itself." Alice Corp. Pty. Ltd., 134 S. Ct. at 2358 (citations omitted). 7 Appeal2016-004382 Application 13/927,136 "[T]he relevant question is whether the claims here do more than simply instruct the practitioner to implement the abstract idea [] on a generic computer." Alice Corp. Pty. Ltd., 134 S. Ct. at 2359. They do not. Taking the claim elements separately, the function performed by the computer at each step of the process is purely conventional. Using a computer to program a value, collect data and compare to that value and send data about that comparison amounts to electronic data query and retrieval---one of the most basic functions of a computer. Using a generic medical analyzer to sense medical data is similar in that the device is used only for its generic intended purpose. See In re TL! Communications LLC Patent Litigation, 823 F.3d 607 (Fed. Cir. 2016). We are not persuaded by Appellants' argument that the claims recite tangible steps. App. Br. 6-7. These steps are just those of a conventional computer and generic medical analyzer. Taken together they do no more than describe that too much or too little of something is present. The steps do not functionally act upon this information in any manner. Claims 1and3-6 rejected under 35 U.S.C. § 103(a) as unpatentable over Cohen and Fuisz We are not persuaded by Appellants' argument that the art fails to send only a subset of metadata. App. Br. 7-9. As the Examiner finds, Cohen's customized reports narrow the portion of time used within the domain of time collected and in any event, it is predictable to only use the data that is pertinent to analysis. Ans. 6. For example, although Cohen continuously monitors data over extended periods of time, only the more recent periods 8 Appeal2016-004382 Application 13/927,136 would typically be pertinent. Claim l recites collecting data over a time period and sending metadata concerning only a subset of that data. The time period for collection is not further narrowed and may encompass the time since the device began performing analysis originally. To the extent Appellants include additional claim language in their arguments without further analysis, we do not take mere recitation of claim limitations with a general allegation that they are not found in the art as argument. This is insufficient to act as a separate argument under 37 C.F.R. § 41.37. As our reviewing court held, we hold that the Board reasonably interpreted Rule 41.37 to require more substantive arguments in an appeal brief than a mere recitation of the claim elements and a naked assertion that the corresponding elements were not found in the prior art. In re Lovin, 652 F.3d 1349, 1357 (Fed Cir 2011). CONCLUSIONS OF LAW The rejection of claims 1 and 3---6 under 35 U.S.C. § 101 as directed to non-statutory subject matter is proper. The rejection of claims 1 and 3-6 under 35 U.S.C. § 103(a) as unpatentable over Cohen and Fuisz is proper. 9 Appeal2016-004382 Application 13/927,136 uECISION The rejection of claims 1 and 3---6 is affirmed. 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) (2011). AFFIRMED 10 Copy with citationCopy as parenthetical citation