Ex Parte Hwang et al

Patent Trial and Appeal Board

Aug 8, 2016

13066441 (P.T.A.B. Aug. 8, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/066,441 04/14/2011 Eun Young Hwang
80118 7590 08/08/2016
Constellation Law Group, PLLC
P.O. Box 580
Tracyton, WA 98393
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.
SE2-0891-US 6937
EXAMINER
SEOH, MINNAH L
ART UNIT PAPER NUMBER
3686
MAILDATE DELIVERY MODE
08/08/2016 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 EUN YOUNG HWANG, RODERICK A. HYDE,
MURIEL Y. ISHIKAWA, JORDIN T. KARE, DENNIS J. RIVET,
ELIZABETH A. SWEENEY, CLARENCE T. TEGREENE,
VICTORIA Y. H. WOOD, and LOWELL L. WOOD, JR.
Appeal2014-005927
Application 13/066,441 1
Technology Center 3600
Before JOSEPH A. FISCHETTI, BRUCE T. WIEDER and
SHEILA F. McSHANE, Administrative Patent Judges.
McSHANE, Administrative Patent Judge.
DECISION ON APPEAL
The Appellants seek our review under 35 U.S.C. § 134(a) of the
Examiner's final decision to reject claims 1, 26, 29, 50, 75, 78, 79, 93, 96,
102, 103, 108, 110, 123-126, 131, 139, 142, 150, 156,and 199-206. We
have jurisdiction under 35 U.S.C. § 6(b ).
We AFFIRM.
1 According to Appellants, the real party in interest is Elwha LLC. Appeal
Brief filed November 12, 2013, hereafter "App. Br.," 5.
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Application 13/066,441
BACKGROUND
The invention relates to obtaining an indication of an incentive based
on an indication of a therapeutic component available to the individual and
other determinants. Specification, hereafter "Spec.," Abstract, i-fi-16, 11, 16.
Representative claims 1, 50, 93, and 150 are reproduced from pages
107, 108, 109, and 113, respectively, of the Claims Appendix of the Appeal
Brief (Claims App'x) as follows, with emphasis added to relevant claim
limitations:
1. A resource apportionment method comprising:
invoking circuitry for obtaining an indication of an
artificial incentive partly based on an indication of a health
status apparently resulting from a bioactive material
administered to an individual and partly based on a profile of
the individual, a component of the artificial incentive being an
artificial incentive to the individual; and
transmitting the indication of the artificial incentive
partly based on an indication of a health status apparently
resulting from a bioactive material administered to the
individual and partly based on a profile of the individual.
50. A resource apportionment system comprising:
means for obtaining an indication of an artificial
incentive partly based on an indication of a health status
apparently resulting from a bioactive material administered to
an individual and partly based on a profile of the individual, a
component of the artificial incentive being an artificial
incentive to the individual; and
means for transmitting the indication of the artificial
incentive partly based on an indication of a health status
apparently resulting from a bioactive material administered to
the individual and partly based on a profile of the individual.
93. A resource apportionment system comprising:
circuitry for obtaining an indication of an artificial
incentive partly based on an indication of a health status
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apparently resulting from a bioactive material administered to
an individual and partly based on a profile of the individual, a
component of the artificial incentive being an artificial
incentive to the individual; and
circuitry for transmitting the indication of the artificial
incentive partly based on an indication of a health status
apparently resulting from a bioactive material administered to
the individual and partly based on a profile of the individual.
150. An article of manufacture, comprising:
one or more physical media configured to bear a device-
detectable implementation of a method including at least
obtaining an indication of an artificial incentive
partly based on an indication of a health status apparently
resulting from a bioactive material administered to an
individual and partly based on a profile of the individual,
a component of the artificial incentive being an artificial
incentive to the individual; and
transmitting the indication of the artificial
incentive partly based on an indication of a health status
apparently resulting from a bioactive material
administered to the individual and partly based on a
profile of the individual.
The Examiner rejected claims 50, 75, 78, 79, 93, 96, 102, 103, 108,
110, 123-126, 131, 139, 142, and 199-206 under 35 U.S.C. § 112, second
paragraph.2 Claims 1, 26, 29, 150, and 156 are rejected under 35 U.S.C.
§ 101 as directed to non-statutory subject matter. Claims 1, 26, 50, 75, 79,
93, 96, 102, 108, 110, 123-126, 139, 142, 150, 156, 200-203, and 205 are
rejected under 35 U.S.C. § 102(b) as anticipated by Walker. 3 Claims 29 and
2 The current application was filed on April 14, 2011, prior to the effective
date of the AIA (America Invents Act), and therefore the pre-AIA statute is
applicable.
3 US Publication 2006/0218011 Al, published September 28, 2006.
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78 are rejected under 35 U.S.C. § 103(a) as unpatentable over Walker and an
Official Notice. Claims 103, 131, 199, 204, and 206 are rejected under
35 U.S.C. § 103(a) as unpatentable over Walker and Zapol.4 Claims 50 and
93 are also rejected based on pending statutory-type double patenting under
35 U.S.C. § 101. Final Action mailed June 4, 2013, hereafter "Final Act.,"
2-35; Examiner's Answer mailed February 13, 2014, hereinafter "Ans.," 2.
DISCUSSION
We will address the issues presented in the Appeal in tum based upon
the nature of the rejection.
Rejections Under 35 U.S. C. § 112, second paragraph
and Statutory-Type Double Patenting.
The Appellants argue the indefiniteness rejections in two groupings:
1) independent claim 50, and the claims that depend from it, and 2) claim 93,
and its dependent claims. App. Br. 16-34. There is also a pending rejection
of claim 204 as indefinite, because its recitation "partly based on the profile
of the individual to another individual" is unclear. Final Act. 3. The
Appellants fail to argue the rejection of claim 204. We will address the
claims with similar groupings, with the dependent claims standing or falling
with the respective independent claims.
Claim 50
The Examiner finds that claim 50' s limitations of "means for
obtaining an indication of an artificial incentive partly based on an indication
of a health status apparently resulting from a bioactive material administered
to an individual and partly based on a profile of the individual" and "means
for transmitting the indication of the artificial incentive partly based on an
4 US Patent 5,485,827, issued January 23, 1996.
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indication of a health status apparently resulting from a bioactive material
administered to the individual and partly based on a profile of the
individual" invoke 35 U.S.C. § 112, sixth paragraph. Final Act. 3--4. The
Examiner also finds that the written description in the Specification "fails to
clearly link or associate the disclosed structure, material, or acts to the
claimed function such that one of ordinary skill in the art would recognize
what structure, material, or acts perform the claimed function," thus
rendering the claim indefinite. Id. at 2-3.
The Appellants allege that they are traversing the Examiner's
rejection by identifying the corresponding structure, material, or acts, by the
excerption and underlining of portions of the Specification, including some
of its Figures, in the Appeal Brief. See App. Br. 17-28 (citing Spec. i-fi-191-
98, 252-257, 298, 299, Figs. 1, 3, 7, 13, 27; incorporation of US Patent
7 ,041,468 and its Fig. 11 ). The underlined portions of excerpts include
references to several other patents. See id. at 20-21, 23. The Appellants
also state that the excerpts identified do not exhaust the full range of
structures that may be included in the Specification. Id. at 18 n.1.
The Examiner finds that although the examples of structures are
disclosed, these structures are not clearly linked and one of ordinary skill in
the art could not identify what structure, material, or acts disclosed in the
specification perform the claimed function. Ans. 4.
Upon consideration of the evidence on this record in light of the
arguments advanced by the Appellants, we find that the Appellants have not
identified reversible error in the Examiner's determination that
representative claim 50 is indefinite.
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In the context of a means-plus-function limitation, if one skilled in the
art would be able to identify the structure, material, or acts for performing
the claimed function, the requirements of 35 U.S.C. § 112, second paragraph
are satisfied. See Atmel Corp. v. Info. Storage Devices, Inc., 198 F.3d 1374,
1381 (Fed. Cir. 1999). If there is insufficient disclosure of the structure,
material, or acts for performing the claimed function, however, a rejection
under 35 U.S.C. § 112, second paragraph is appropriate. Biomedino LLC v.
Waters Techs. Corp., 490 F.3d 946, 952 (Fed. Cir. 2007). Here, we agree
with the Examiner that the Appellants fail to provide identification of the
structure of the claimed function with any clarity such that one of ordinary
skill could discern it. Structure disclosed in the specification is
corresponding structure only if the specification or prosecution history
clearly links or associates that structure to the function recited in the claim.
This duty to link or associate structure to function is the quid pro quo for the
convenience of employing 112, paragraph 6. Medical Instrumentation and
Diagnostic Corp. v. Elekta AB, 344 F.3d 1205, 1218, 68 USPQ2d 1263,
1268 (Fed. Cir. 2003). We fail to see such linking here. Thus, we sustain
the§ 112, second paragraph rejection of representative claim 50.
Claim 93
The Examiner finds that claim 93 does not facially invoke § 112, sixth
paragraph because the term "means" is not used in it, however, the
Specification does not describe the "circuitry" for "obtaining" or for
"transmitting." Final Act. 4. The Examiner indicates that "applicant
appears to state that the 'circuitry' is a general purpose computer capable of
running computer code." Id. The Examiner finds that§ 112, sixth
paragraph is invoked, and because the written description fails to disclose
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the associated structure for "circuitry" in the view of one of ordinary skill,
the Examiner finds that the claim terms of claim 93 are indefinite under
§ 112, second paragraph. Id. at 7.
There is a presumption that§ 112, sixth paragraph does not apply to
claim 93 because the term "means" is not recited, but this presumption can
nonetheless be rebutted if the claim term fails to recite sufficiently definite
structure, or else recites function without reciting sufficient structure for
performing that function. Williamson v. Citrix Online, LLC, 792 F.3d 1339,
1348-1349 (Fed. Cir. 2015) (en banc); 5 see also Personalized Media
Commc'ns, LLCv. Int'! Trade Comm'n, 161F.3d 696, 704 (Fed. Cir. 1998).
"The standard is whether the words of the claim are understood by persons
of ordinary skill in the art to have a sufficiently definite meaning as the
name for structure." Id. at 1349.
Here, therefore, the issues are whether the Appellants identify
reversible error in the Examiner's determination that§ 112, sixth paragraph
is invoked and the Specification fails to recite sufficient structure for the
term "circuitry" as used in claim 93 's limitations of "circuitry for obtaining"
or "circuitry for transmitting."
The Examiner finds that "the written description fails to clearly link or
associate the disclosed structure, material, or acts to the claimed function
such that one of ordinary skill in the art would recognize what structure,
material, or acts perform the claimed function," and that the Specification
may indicate "that general purpose computers and circuitry are able to
5 The Appellants states that there is a strong presumption that§ 112, sixth
paragraph does not apply. App. Br. 33. That strong presumption, however,
has been overruled by the en bane Williamson decision. See Williamson,
792 F.3d at 1349. Accordingly, we refer to that decision in this Appeal.
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accomplish these functions, but a specific structure and algorithm for
obtaining an indication and transmitting the indication are not found." Final
Act. 7. The Appellants allege that, even if the Examiner were correct in
finding that § 112, sixth paragraph, applies to the terms, its alleged failure to
describe the circuitry claimed is not accurate because several identified
excerpts describe the circuitry. App. Br. 32, see also id. at 29-32. The
Appellants also allege that the Examiner mischaracterizes the Specification
when stating that the "circuitry" appears to be a general purpose computer.
Id. at 31 n.8. 6 The Appellants do not identify what the structures performing
the function actually are, beyond their characterization as "circuitry." Id. at
31-33. The Appellants instead argue that they are being "penalized" by
providing for more than one disclosure in support of the claim terms. Id. at
34.
6 The Appellants refer to the portion of the Specification in support of its
contention that "electrical circuitry" "includes, but is not limited to,
electrical circuitry having at least one discrete electrical circuit, electrical
circuitry having at least one integrated circuit, electrical circuitry having at
least one application specific integrated circuit, electrical circuitry forming a
general purpose computing device configured by a computer program (e.g.,
a general purpose computer configured by a computer program which at
least partially carries out processes and/or devices described herein, or a
microprocessor configured by a computer program which at least partially
carries out processes and/or devices described herein), electrical circuitry
forming a memory device (e.g., forms of memory (e.g., random access,
flash, read only, etc.)), and/or electrical circuitry forming a communications
device (e.g., a modem, communications switch, optical-electrical equipment,
etc.). Those having skill in the art will recognize that the subject matter
described herein may be implemented in an analog or digital fashion or
some combination thereof." App. Br. 31 n.8 (emphasis omitted) (quoting
Spec. ii 63).
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We see no reversible error with the Examiner's finding that § 112,
sixth paragraph is invoked. The broad scope of all "circuitry" alleged to be
the structure is not tied to or identified as performing the claimed functions.
Thus, we further find no reversible error with the Examiner's finding that
there is no identification provided for the specific structure and algorithm for
obtaining an indication and transmitting the indication. See Aristocrat
Techs. Aust!. Pty Ltd. v. Int'! Game Tech., 521F.3d1328, 1333 (Fed. Cir.
2008); Finisar Corp. v. The DirectTV Grp., 523 F.3d 1323, 1340-41 (Fed.
Cir. 2008) (Simply disclosing software "without providing some detail about
the means to accomplish the function[,] is not enough."). We therefore
sustain the§ 112, second paragraph rejection of representative claim 93.
Because we agree with the Examiner that§ 112, sixth paragraph is
invoked in claim 93, claims 50 and 93 could be viewed to have identical
subject matter. However, we reverse the pending statutory-type double
patenting rejection of claims 50 and 93 under 35 U.S.C. § 101 because the
claims are pending in the same application.
Claim 204
The Examiner also rejects claim 204 as indefinite, because its
recitation "partly based on the profile of the individual to another individual"
is unclear and appears to be missing words. Final Act. 3. The Appellants
fail to argue the rejection of claim 204. The Appellants waive any argument
as to that rejection under 37 C.F.R. § 41.37(c)(l)(iv). We therefore
summarily affirm this rejection.
* * *
In light of the affirmance of the rejections of representative claims 50
and 93 under§ 112, second paragraph, by virtue of their dependency, the
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rejections of claims 75, 78, 79, 96, 102, 103, 108, 110, 123-126, 131, 139,
142, and 199-206 are also affirmed. In light of the affirmance of the
indefiniteness rejections of these claims, we do not reach the merits of the
rejections of them under 35 U.S.C. §§ 102 and 103. Before a proper review
of the rejections under§§ 102 and 103 can be conducted, the subject matter
encompassed by the claims on appeal must be reasonably understood
without resort to speculation. Because the claims fail to satisfy the
requirements of 35 U.S.C. § 112, second paragraph, we reverse, proforma,
the Examiner's rejection of these claims, to the extent applicable. See In re
Steele, 305 F .2d 859, 862 (CCP A 1962) (A prior art rejection cannot be
sustained if the hypothetical person of ordinary skill in the art would have to
make speculative assumptions concerning the meaning of claim language.);
see also In re Wilson, 424 F.2d 1382, 1385 (CCPA 1970) ("If no reasonably
definite meaning can be ascribed to certain terms in the claim, the subject
matter does not become obvious-the claim becomes indefinite."). Our
decision is based solely on indefiniteness, and does not reflect on the merits
of the underlying rejections.
Rejections Under 35 U.S.C. § 101.
The Examiner rejects claims 1, 26, and 29 as directed to non-statutory
subject matter, finding that the claims are directed to an abstract idea with
insufficient recitation of a machine or transformation. Final Act. 8 (citing
Bilski v. Kappas, 95 USPQ2d 1001 (U.S. 2010)). The Examiner finds that
the Appellants give "circuitry' a special meaning in the Specification, and "it
is not clear what 'circuitry' entails and the ordinary and customary meaning
cannot be given." Id. at 3 8 (citing Spec. i-fi-1 61, 87, 88). The Examiner also
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finds that the claims lack a transformation step, as they claim "merely
'conditioning' of an 'artificial incentive."' Id.
The Examiner also rejects claims 150 and 156 under§ 101 because
the claims are directed to "an article of manufacture comprising one or more
physical media" where "[t]he broadest reasonable interpretation of a
'physical media' includes forms of non-transitory tangible media and
transitory propagating signals per se." Id. at 8 (citing Spec. i-f 325).
The Appellants argue that the Examiner provided no objectively
verifiable evidence that the "circuitry" portion of claim 1 fails to meet the
"machine" prong as an insufficient recitation of a machine. App. Br. 35.
Additionally, the Appellants allege that the Examiner has not provided
sufficient support that "invoking circuitry" would not result in a
transformation, and moreover, even if the machine or transformation test
was not met, the claimed method is not an abstract idea. Id. at 35-36.
Additionally, as to the rejections of claims 150 and 156, the Appellants
argue that the claims are to an "article of manufacture," and there is an
absence of authority or analysis in the rejection. Id. at 38.
We find no reversible error with these Examiner's findings relating to
the machine or transformation test for claims 1, 26, and 29. While the
Examiner relies on the machine or transformation test to gain this result, this
test, however, "is not the sole test for deciding whether an invention is a
patent-eligible 'process."' Bilski v. Kappas, 130 S. Ct. 3218, 3227 (2010).
In Alice Corporation Pty, Ltd. v. CLS Bank International, 134 S. Ct. 2347
(2014), the Supreme Court further clarified the law regarding patentable
subject matter. In doing so, the Supreme Court reiterated the two-step
framework previously set forth in Mayo Collaborative Services v.
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Prometheus Labs., Inc., 132 S. Ct. 1289, 1300 (2012), "for distinguishing
patents that claim laws of nature, natural phenomena, and abstract ideas
from those that claim patent-eligible applications of these concepts." Alice,
134 S. Ct. at 2355. Under Alice, the first step of such analysis is to
"determine whether the claims at issue are directed to one of those patent-
ineligible concepts." Id. (citation omitted). If determined that the claims are
directed to a patent-ineligible concept, the second step in the analysis is to
consider the elements of the claims "individually and 'as an ordered
combination'" to determine whether the additional elements "'transform the
nature of the claim' into a patent-eligible application." Id. (citing Mayo, 132
S. Ct. at 1297-1298). In other words, the second step is to "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.'" Id. (citing Mayo, 132
S. Ct. at 1294).
The Examiner finds here that the claims are directed to the abstract
idea of "invoking" could be the "abstract step of a person calculating and
then pressing a button." Ans. 5. Additionally, the Examiner finds that the
"transmission" step could be a letter mailed through a post office in light of
the disclosure of the pass-through functionality of a modem disclosed as
transmission machinery. Id. (citing Spec. i-f 63). Although we agree with the
Examiner that "circuitry" is broadly disclosed in the Specification, we do not
find that "invoking circuitry for obtaining an indication of an artificial
incentive partly based on an indication of a health status" is directed to an
abstract idea. We therefore reverse the § 101 rejections of claims 1, 26, and
29.
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As to claim 150, the Specification describes "physical media" to
include
[i]n some embodiments, the one or more 'physical media' may
include one or more instances of conduits, layers, networks,
static storage compositions, or other homogenous or
polymorphic structures or compositions suitable for bearing
signals. In some embodiments, such a 'communication
channel' in physical media may include a signal path between
two transceivers or the like. A 'remainder' of the media may
include other signal paths intersecting the communication
channel or other media as described herein. In some variants,
another exemplary system comprises one or more physical
media 2890 constructed and arranged to receive a special-
purpose sequence 2882 of two or more device-detectable
instructions 2884 for implementing a flow as described herein
or to receive an output of executing such instructions. Physical
media 2890 may (optionally) be configured by writer 2801,
transmitter 2772, or the like.
Spec. ,-r 325.
In view of this broad disclosure of "physical media," its scope would
extend to transitory propagating signals, as the Examiner found. We are not
persuaded of reversible error by the Appellants' argument that claim 150 is
directed to an "article of manufacture." Regardless of what statutory
category ("process, machine, manufacture, or composition of matter,"
(35 U.S.C. § 101)) a claim's language is crafted to literally invoke, we look
to the underlying invention for patent-eligibility purposes. In CyberSource,
the Federal Circuit determined that the invention underlying both a method
claim and a manufacture claim was a method for detecting credit card fraud
and, despite the different formatting of the two claims, treated both claims as
process claims "for patent-eligibility purposes." CyberSource Corp. v.
Retail Decisions, Inc., 654 F.3d 1366, 1374--75 (Fed. Cir. 2011). In
reaching that determination, the Federal Circuit referred to In re Abele, 684
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F.2d 902 (CCPA 1982), where a court refused to treat a claim that recited
"an '[a]pparatus for displaying data'" as an apparatus claim because to do
so would "exalt form over substance since the claim [was] really to the
method or series of functions itself." Id. at 1374 (quoting Abele, 684 F.2d at
909). Therefore, we view claim 150 as directed to the performance of the
method steps. Because those steps can include the use of transitory
propagating signals, we find no reversible error in the rejection of claim 150,
and its dependent claim 156, as directed to non-statutory subject matter. See
Ex parte Mewherter, 107 USPQ2d 1857, 1859 (PTAB 2013) (precedential).
Rejections Under 35 U.S.C. §§ 1021103.
The Appellants argue the anticipation rejections in the groupings of:
i) independent claim 1, and claims 26 and 297, that depend from it; and
ii) independent claim 150, and claim 156 that depends from it. App. Br. 38-
47, 96-104. We will address the claims with similar groupings selecting
independent claims 1 and 150, respectively, as representative.
The Declaration of Wayne Kindsvogel, Ph.D. ("Kindsvogel Dec.")
under 37 C.F.R. § 1.132 only addresses anticipation and/or obviousness
rejections of claims 93, 124, 199, and 200, which are not at issue8 in light of
7 Claim 29 was rejected under§ 103 as obvious under Walker and Official
Notice. Final Act. 27-28. The Appellants argue dependent claim 29's
patentability based only on the issues argued as to independent claim 1. See
App. Br. 47. Therefore, we will address claim 29 in the grouping with
independent claim 1 relating only to the anticipation arguments offered.
8 Concerning claims 93, 124, 199, and 200, and even concerning claims 1,
26, 29, 150, and 156 if the Kindsvogel Declaration were intended to address
these claims as well, we find no reversible error with the Examiner's
findings that the Kindsvogel Declaration is insufficient to overcome the
rejections. Final Act. 42. We agree with the Examiner that the Declaration
does not state why the Examiner is incorrect or provide supporting evidence
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their rejections under§ 112, second paragraph, atlirmed above. See
Kindsvogel Dec. 2, 5, 6. The Kindsvogel Declaration does not identify or
address the claims remaining in dispute based upon anticipation and
therefore will not be considered here.
Claim 1
The Appellants argue that the Examiner fails to explain how Walker's
disclosures are applied to the limitation of "an indication of a health status
apparently resulting from a bioactive material administered" or
"transmitting" the indication. App. Br. 40-44. The Appellants argue that
Walker's disclosures instead only describe "that the medicated patch has
been applied to the patient's skin." Id. at 46 (quoting Walker i-f 44).
The Examiner finds that there is no "controlling definition of 'health
status"' identified in the Specification or identified by the Appellants. Final
Act. 36. The Examiner finds "[t]herefore any health information about the
patient is considered to be health status information. The medicated patch of
Walker detects signals through the body of the patient. Detecting a signal
through a patient's body is considered to be an indication of a health status."
Id.
Upon consideration of the evidence on this record in light of the
arguments advanced by the Appellants, we find that the Appellants have not
or argument. Id. At best, the Kindsvogel Declaration provides conclusory
opinions on patentability only. Opinion on the ultimate legal conclusion at
issue is not entitled to any weight, although the underlying basis for the
opinion may be given some weight. See In re Chilowsky, 306 F.2d 908,
(CCP A 1962); see also, Perreira v. Sec '.Y of Dep 't of Health & Human
Servs., 33 F.3d 1375, 1377 n.6 (Fed. Cir. 1994) ("An expert opinion is no
better than the soundness of the reasons supporting it.").
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identified reversible error in the Examiner's determination that
representative claim 1 is anticipated by Walker.
Walker states that
According to some embodiments, the actual usage, ingestion,
and/or other application of the substance may be determined.
In the case of a patch-administered medication, for example,
signals may be sent and/or received (e.g., via the patient's
body) to determine that the medicated patch has been applied to
the patient's skin.
Walker i-f 44.
We agree with the Examiner's finding that signals sent or received via
a patient's body to determine that a medicated patch has been applied are an
indication of health status. Although such signals, albeit, may equate to an
indication that the medicated patch has been applied as the Appellants argue,
because the signals are via a patient's body, and they reflect the usage of the
applied medication per Walker's disclosure, the disclosure are indicative of
health status as well.
We therefore sustain the rejection of representative claim 1, and
claims 26 and 29 that depend from it.
Claim 150
The Appellants present the same arguments relating to the rejection of
claim 150 as those presented for claim 1. See App. Br. 96-104. We sustain
the rejection of representative claim 150, and claim 156 that depends from it,
for similar reasons to those discussed for claim 1.
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SUMMARY
The rejection of claims 50, 75, 78, 79, 93, 96, 102, 103, 108, 110,
123-126, 131, 139, 142, and 199-206 under 35 U.S.C. § 112, second
paragraph is affirmed.
The rejection of claims 1, 26, and 29 under 35 U.S.C. § 101 is
reversed.
The rejection of claims 150 and 156 under 35 U.S.C. § 101 is
affirmed.
The rejection of claims 50 and 93 based on pending statutory-type
double patenting under 35 U.S.C. § 101 is reversed.
The rejection of claims 1, 26, 150, and 156 under 35 U.S.C. § 102(b)
is affirmed.
The rejection of claims 50, 75, 79, 93, 96, 102, 108, 110, 123-126,
139, 142, 200-203, and 205 under U.S.C. § 102(b) is reversed.
The rejection of claim 29 under 35 U.S.C. § 103(a) is affirmed.
The rejection of claims 78, 103, 131, 199, 204, and 206 under
35 U.S.C. § 103(a) is reversed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED
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