Ex Parte Fuisz et al

Patent Trial and Appeal Board

Jul 25, 2016

13927136 (P.T.A.B. Jul. 25, 2016)

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).
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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,
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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.
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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
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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.
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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
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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).
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"[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
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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.
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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
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