Ex Parte Janschitz et al

Patent Trial and Appeal Board

Feb 17, 2016

12713285 (P.T.A.B. Feb. 17, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
121713,285 02/26/2010 Wolfgang Janschitz
67491 7590 02/19/2016
DINSMORE & SHOHL, LLP
FIFTH THIRD CENTER
ONE SOUTH MAIN STREET
SUITE 1300
DAYTON, OH 45402
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.
ROH 0035 NA/33510.50 4398
EXAMINER
LANE, JOHNA
ART UNIT PAPER NUMBER
2139
NOTIFICATION DATE DELIVERY MODE
02/19/2016 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):
daytonipdocket@dinsmore.com
pair_roche@firsttofile.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte WOLFGANG JANSCHITZ, KLAUS GROMANN, and
CHRISTIAN KAROL
Appeal2014-004533
Application 12/713,285
Technology Center 2100
Before CAROLYN D. THOMAS, JASON V. MORGAN, and
JOHN R. KENNY, Administrative Patent Judges.
KENNY, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the final rejection of
claims 1, 4--15, and 18-20,1 which constitute all claims pending in the
application. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
1 The Office Action Summary for the Final Action and the first page of the
Appeal Brief indicate that claim 20 is not pending in the application. The
body of the Final Action and body of the Appeal Brief, however, set forth
that claim 20 is pending and stands rejected. (Final Act. 2; App. Br. 6-7.)
Appeal2014-004533
Application 12/713,285
INVENTION
Appellants' disclosed invention relates to a process for the
management of data of analysis devices. (Spec. i-f 2.) Claim 1, which is
representative, reads as follows:
1. A process for the transfer of data between a first and a
second analysis device, the process comprising:
newly creating or modifying data in an internal memory
medium of a first analysis device;
continuously and automatically storing the newly created
or modified data in a redundant manner in a non-volatile
removable storage medium during operation without
synchronization of data stored in the internal memory medium
of the first analysis device; and
importing the data redundantly stored on the removable
storage medium of the first analysis device into the internal
memory medium of a second analysis device;
wherein the first and second analysis devices are
medical/diagnostic devices configured for the input and
analysis of body fluids.
REFERENCES
The Examiner relies on the following prior art references in rejecting
the claims on appeal:
Lesser (et al.)
Velarde
US 2008/0086609 Al
US 2009/0281836 Al
REJECTION APPEALED
Apr. 10, 2008
Nov. 12, 2009
Claims 1, 4--15, and 18-20 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Appellants' admitted prior art in their background
section of their Specification ("Admitted Prior Art"), Velarde, and Lesser.
(Final Act. 2.)
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Application 12/713,285
ISSUE
Appellants argue that the Examiner erred in combining the teachings
of the Admitted Prior Art,2 Lesser, and Velarde. (App. Br. 7-11, Reply Br.
1.)
ANALYSIS
We have reviewed the Examiner's rejections in light of Appellants'
arguments that the Examiner has erred, and we have reviewed the
Examiner's response to Appellants' arguments. We disagree with
Appellants' conclusion that the Examiner erred in rejecting the pending
claims. For the reasons given by the Examiner in the Final Action and in the
Answer, we sustain the Examiner's rejections. (Final Act. 2-5, Ans. 2-7.)
We add the following primarily for emphasis.
Claim 1
Appellants argue that, in rejecting claim 1, the Examiner erred in
citing to the medical/diagnostics analyzers and their uses of protocols for
data exchange because the Admitted Prior Art indicates "that neither the
protocols nor the discussed disclosures in the patent utility model literature
solve the problems of the data transfer in known analyzers outlined." (App.
Br. 8. (citing Spec. i-f 9)) We disagree with Appellants that the identification
of such problems shows error in the Examiner's rejection because the
Examiner does not rely exclusively on the Admitted Prior Art. Rather, the
Examiner relies, for example, on Lesser' s automatic backup strategy as
teaching or suggesting continuously and automatically storing data without
2 Appellants withdrew their challenge regarding the Examiner's findings
about the content of the Admitted Prior Art. (Reply Br. 1.)
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Application 12/713,285
synchronization. (Final Act. 4--5 (citing Lesser if 32).) That is, the
Examiner properly identified prior art that would have cured the issues in the
Admitted Prior Art. Thus, Appellants' argument that the Admitted Prior
Art's "disadvantages are something that is a failure that is yet to be solved
rather than a solution in and of itself' (App. Br. 8}-an argument that is not
responsive to the Examiner's rejection, which relies on the combination of
the Admitted Prior Art with Velarde and Lesser-is unpersuasive of error.
Appellants further argue that Velarde and Lesser cannot be combined
because one of ordinary skill in the art would have difficulty modifying the
personal medical records system of Velarde to accommodate the security
requirements of Lesser. (App. Br. 8-10.) This argument concerns the
bodily incorporation of Lesser into Velarde, which the Examiner did not
propose and which is not required for obviousness. In re Mouttet, 686 F.3d
1322, 1332-33 (Fed. Cir. 2012) (citing In re Keller, 642 F.2d 413, 425-26
(CCPA 1981)). The rejection-at-issue combines Velarde's teaching of a
removable storage medium with Lesser's teaching of continuously and
automatically backing up data. (Final Act. 4--5.) Appellants have not
persuaded us that one or ordinary skill in the art would have difficulty
combining those teachings and thus have not persuaded us that the Examiner
erred in combining Velarde and Lesser.
Appellants also argue "it would not have been obvious to modify [the]
personal medical records system of Velarde with the backup strategy
associated with different security requirements of Lesser et al. because there
is no suggestion or motivation to a person of ordinary skill in the art having
read Velarde." (App. Br. 10 (emphasis added).) Appellants' argument is
not responsive to the Examiner's rejection, which relies on the combination
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Appeal2014-004533
Application 12/713,285
of Velarde, Lesser, and the Admitted Prior Art. To the extent that the
Appellants are arguing that the Admitted Prior Art had known disadvantages
(see App. Br. 8; Spec. i-f 9), known problems can suggest requisite
modifications. KSR Intern. Co. v. Teleflex, Inc., 550 U.S. 398, 419-20
(2007) ("One of the ways in which a patent's subject matter can be proved
obvious is by noting that there existed at the time of invention a known
problem for which there was an obvious solution encompassed by the
patent's claims.") Therefore, we agree with the Examiner that it would have
been obvious to an artisan of ordinary skill to modify the combination of
Velarde and the Admitted Prior Art based on the back-up scheme teachings
and suggestions of Lesser. (See Final Act. 5.)
Accordingly, we sustain the rejection of claim 1.
Claims 4-15 and 18-20
Appellants argue that the Examiner erred in rejecting claims 4--15 and
18-20 for the same reasons as for claim 1. (App. Br. 11.) Therefore, for the
reasons provided for claim 1, we sustain the rejection of claims 4--15 and
18-20.
DECISION
The decision of the Examiner to reject claims 1, 4--15, and 18-20 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)(l). See 37 C.F.R.
§ 1.136(a)(l )(iv).
AFFIRMED
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Appeal2014-004533
Application 12/713,285
JRG
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