Ex Parte Jung et alDownload PDFPatent Trial and Appeal BoardDec 3, 201411906112 (P.T.A.B. Dec. 3, 2014) Copy Citation UNITED STATES PATENT AND TRADEMARKOFFICE 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 APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO. 11/906,112 09/27/2007 Edward K. Y. Jung SE1-0077C3-US 5706 80118 7590 12/04/2014 Constellation Law Group, PLLC P.O. Box 580 Tracyton, WA 98393 EXAMINER PATEL, NEHA ART UNIT PAPER NUMBER 3686 MAIL DATE DELIVERY MODE 12/04/2014 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 EDWARD K.Y. JUNG, ROYCE A. LEVIEN, ROBERT W. LORD, MARK A. MALAMUD, JOHN D. RINALDO, JR., and LOWELL L. WOOD, JR. ________________ Appeal 2012-004557 Application 11/906,1121 Technology Center 3600 ________________ Before FRED E. MCKELVEY, JEFFREY T. SMITH, and DONNA M. PRAISS, Administrative Patent Judges. PRAISS, Administrative Patent Judge. DECISION ON APPEAL 1 According to Appellants, the real party in interest is Searete, LLC. Br. 5. Appeal 2012-004557 Application 11/906,112 2 STATEMENT OF THE CASE This is an appeal under 35 U.S.C. § 134 from the final rejection of claims 1–6, 8, 12, 13, 17, 24, 31, 34, 35, 42–44, 46–49, 51, 52, 54–56, 58– 61, 64, 67, 69–76, and 85–98. We have jurisdiction under 35 U.S.C. § 6. Appellants’ claimed invention relates to labeling for medications and other health-related products. Spec. 1. Independent claims 1, 42, 54, 69, and 75 are illustrative (bracketed matter and italics added): 1. A method comprising: [a] establishing at least one supplemental visual identifier, which at least one supplemental visual identifier includes one or more recognizable symbolic aspects configured for suggesting administration information for at least one health-related substance; and [b] providing at least one display scheme for incorporating the at least one supplemental visual identifier and at least one recognizable symbolic aspect configured for identifying at least one particular patient in close association with the at least one health-related substance. 42. A product comprising: [a] at least one supplemental visual identifier, which at least one supplemental visual identifier includes one or more recognizable symbolic aspects configured for suggesting administration information; and [b] at least one health-related substance including in close association the at least one supplemental visual identifier and at least one recognizable symbolic aspect configured for identifying at least one particular patient. 54. A system comprising: Appeal 2012-004557 Application 11/906,112 3 [a] at least one supplemental visual identifier, which at least one supplemental visual identifier includes one or more recognizable symbolic aspects configured for suggesting administration information for at least one health-related substance; and [b] at least one container for holding the at least one health-related substance including in close association the at least one supplemental visual identifier and at least one recognizable symbolic aspect configured for identifying at least one particular patient. 69. A system comprising: [a] at least one supplemental visual identifier, which at least one supplemental visual identifier includes one or more recognizable symbolic aspects configured for suggesting administration information for at least one health-related substance; and [b] one or more components for use in connection with administration of the at least one health-related substance, wherein the one or more components display the at least one supplemental visual identifier and at least one recognizable symbolic aspect configured for identifying at least one particular patient. 75. Non-transitory computer readable media bearing one or more device detectable instructions for facilitating operations comprising: [a] establishing at least one supplemental visual identifier, which at least one supplemental visual identifier includes one or more recognizable symbolic aspects configured for suggesting administration information for at least one health-related substance; and [b] providing at least one display scheme for incorporating the at least one supplemental visual identifier and at least one recognizable symbolic aspect configured for Appeal 2012-004557 Application 11/906,112 4 identifying at least one particular patient in close association with the at least one health-related substance. The Examiner relied on the following references in rejecting the appealed subject matter: Song US 6,227,371 B1 May 8, 2001 Adler US 2003/0214129 A1 Nov. 20, 2003 Keene US 2005/0038558 A1 Feb. 17, 2005 Rines US 2005/0147667 A1 July 7, 2005 Ruben US 7,016,752 B1 Mar. 21, 2006 Kimura US 2006/0177637 A1 Aug. 10, 2006 Chalmers US 2006/0254580 A1 Nov. 16, 2006 The Examiner maintains, and Appellants appeal, the following rejections:2 1. Claim 64 stands rejected under 35 U.S.C. § 112, first paragraph, for lacking written description support in the Specification for “supplemental visual identifier includes one or more recognizable symbolic aspects configured for identifying at least one patient.” 2. Claims 1–6, 8, 12, 13, 17, 24, 31, 34, 35, 42–44, 46–49, 51, 52, 54–56, 58–61, 64, 67, 69–76, and 85–98 stand rejected under 35 U.S.C. § 112, second paragraph, as indefinite for reciting “a supplemental visual identifier for a medication” without mentioning any other visual identifier. 2 The rejections of claim 90 under 35 U.S.C. § 112, first paragraph, and claims 24, 31, 34, 35, 42, 49, 51, 52, 54, 75, and 89–97 under 35 U.S.C. § 112, second paragraph, for use of the term “close association” stand withdrawn. Ans. 3. Therefore we do not address those rejections in this decision. Appeal 2012-004557 Application 11/906,112 5 3. Claims 1–6, 8, 12, 13, 17, 24, 31, 34, 35, 42–44, 46–49, 51, 52, 54–56, 58–61, 64, 67, 69–74, and 85–98 stand rejected under 35 U.S.C. § 101 as being unpatentable subject matter. 4. Claims 1–6, 12, 34, 48, 49, 51, 54–56, 59–61, 64, 67, 69, 70, 73– 76, 85–87, 89, and 97 stand rejected under 35 U.S.C. § 102(b) as anticipated by Keene. 5. Claim 92 stands rejected under 35 U.S.C. § 103(a) as being unpatentable over Keene in view of Kimura. 6. Claims 8, 24, and 31 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Keene in view of Adler. 7. Claim 44 stands rejected under 35 U.S.C. § 103(a) as being unpatentable over Keene in view of Ruben. 8. Claims 13, 43, and 52 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Keene. 9. Claims 34, 58, 72, 88, 90, 91, and 953 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Keene in view of Rines. 10. Claim 94 stands rejected under 35 U.S.C. § 103(a) as being unpatentable over Keene in view of Song. 11. Claims 93 and 96 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Keene in view of Chalmers. 3 We note that the Examiner did not reject claim 98 over the cited prior art references in the Final Rejection. Br. 73; Ans. 36–37. Appeal 2012-004557 Application 11/906,112 6 ISSUES Did the Examiner err in determining that claim 64 has no written description support in the Specification? We decide this issue in the negative. Did the Examiner err in determining that independent claims 1, 42, 54, 69, and 75 and all of their dependent claims are indefinite? We decide this issue in the negative. Did the Examiner err in determining that the claims 1–6, 8, 12, 13, 17, 24, 31, 34, 35, 42–44, 46–49, 51, 52, 54–56, 58–61, 64, 67, 69–74, and 85-98 are unpatentable subject matter? We decide this issue in the negative. Did the Examiner err in determining that the claims 1–6, 12, 34, 48, 49, 51, 54–56, 59–61, 64, 67, 69, 70, 73–76, 85–87, 89, and 97 are anticipated by Keene? We decide this issue in the negative. Did the Examiner err in determining that the claims 8, 13, 24, 31, 34, 43, 44, 52, 58, 72, 88, and 90–96 are unpatentable over Keene alone or in view of Kimura, Adler, Rines, Ruben, Chalmers, or Song? We decide this issue in the negative. FINDINGS OF FACT We find that the following enumerated findings are supported by at least a preponderance of the evidence. Ethicon, Inc. v. Quigg, 849 F.2d 1422, 1427 (Fed. Cir. 1988) (explaining the general evidentiary standard for proceedings before the Office). 1. Keene is directed to a system for labeling medication and/or patient specific prescriptions with both graphic and textual information as well as bar codes suitable for scanner recognition systems used in Appeal 2012-004557 Application 11/906,112 7 healthcare facilities to identify a patient specific prescription. Ans. 9, 12; Keene ¶¶ 20, 58–59, Fig. 6A. 2. Keene teaches graphical representation of the medication is provided on the top label and pictograms may be provided on the top and/or side label representing directions that the medication should be taken with food. Ans. 9–10; Keene Figs. 6B, 6C. 3. Keene teaches a schedule describing times and procedures for taking prescribed medications such as time, which medication, and how much of the medication, which may be displayed on a monitor or provided to the patient or caregiver in a printed or electronic version. Ans. 14–15; Keene ¶ 62, Fig. 6C. 4. Keene teaches printing an information page along with label for cross reference. Ans. 15–16; Keene ¶ 99. 5. Keene also teaches supplemental symbolic aspect such as pictograms to illustrate use directions including a bread image representing taking medication with food while the mouth and arrow image represents that the medication should be taken orally. Ans. 9–10; Keene ¶ 58, 59, Fig. 6A. 6. Keene teaches the label may be present in Braille for partially or fully blind patients. Ans. 17–18; Keene ¶ 60. 7. Keene teaches the use of a monitor to display labels in conjunction with a corresponding pharmaceutical prescription schedule that is printed or transmitted electronically to patient or caregiver. Ans. 15; Keene ¶ 62, Figs. 3, 6C. 8. Kimura is directed to a color ID patterned matching label for affixing to a patient’s drug package. Ans. 22; Kimura ¶ 26. Appeal 2012-004557 Application 11/906,112 8 9. Adler is directed to the use of a color identifier on a label to identify a particular medication. Ans. 23; Adler ¶ 66. 10. Rines teaches the use of three dimensional shapes as identification that is an integral part of the medication and a supplemental identifier. Ans. 27; Rines ¶ 11. 11. Ruben is directed to visually identifying a particular patient having a shared affiliation or grouping. Ans. 24–25; Ruben, col. 3, ll. 4– 22, Fig. 4. 12. Chalmers is directed to a display scheme for incorporating a visual identifier as an edible addition to the health-related substance including a color. Ans. 30, 31; Chalmers ¶¶ 46, 116. 13. Song is directed to a display scheme incorporating a visual identifier as a shape of a container for a substance dosage. Ans. 29–30; Song Figs. 1, 2. PRINCIPLES OF LAW The purpose of the written description requirement of 35 U.S.C. § 112, first paragraph, is to convey with reasonable clarity to those skilled in the art that, as of the filing date sought, applicant was in possession of the invention as now claimed. Vas-Cath, Inc. v. Mahurkar, 935 F.2d 1555, 1563-64 (Fed. Cir. 1991). The definiteness of a claim under 35 U.S.C. § 112, second paragraph, depends on whether one skilled in the art would understand the bounds of the claim when read in light of the specification. Nautilus, Inc. v. Biosig Instruments, Inc., 134 S. Ct. 2120, 2129 (2014). 35 U.S.C. § 101 defines patent-eligible subject matter as “any new and useful process, machine, manufacture, or composition of matter, or any Appeal 2012-004557 Application 11/906,112 9 new and useful improvement thereof . . . .” The Supreme Court has held that Section 101, although broad, is subject to important limitations. For example “laws of nature, natural phenomena, and abstract ideas are not patentable.” Mayo Collaborative Servs. v. Prometheus Labs., Inc., 132 S. Ct. 1289, 1293 (2012) (internal quotation marks omitted). Under 35 U.S.C. § 102, “every element of the claimed invention must be identically shown in a single reference . . . .” In re Bond, 910 F.2d 831, 832 (Fed. Cir. 1990). However, this is not an ipsissimis verbis test, i.e., identity of terminology is not required. Id. Under 35 U.S.C. § 103, the factual inquiry into obviousness requires a determination of: (1) the scope and content of the prior art; (2) the differences between the claimed subject matter and the prior art; (3) the level of ordinary skill in the art; and (4) secondary considerations, if any. Graham v. John Deere Co. of Kansas City, 383 U.S. 1, 17–18 (1966). [A]nalysis [of whether the subject matter of a claim would have been obvious] need not seek out precise teachings directed to the specific subject matter of the challenged claim, for a court can take account of the inferences and creative steps that a person of ordinary skill in the art would employ. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007). ANALYSIS Written Description The Examiner finds that the recitation in claim 64 “supplemental visual identifier includes one or more recognizable symbolic aspects configured for identifying at least one patient” is not supported by the Specification. Ans. 4. Appellants contend that page 8, lines 10–17, of Specification describes the use of the supplemental visual identifier for both Appeal 2012-004557 Application 11/906,112 10 suggesting administration information and identifying at least one patient. Br. 19. The Examiner finds that the passage quoted by Appellants discloses that there may be a common symbol used for both the visual identifier and the supplemental visual identifier. However, the Specification only describes using the supplemental identifier to suggest administration information for the health related substance. Ans. 32. We agree. Appellants have not explained adequately why one skilled in the art would have understood from the Specification that the supplemental visual identifier would have been used to identify a patient rather than suggesting administration information for the health related substance. The rejection of claim 64 based on § 112, first paragraph, is affirmed. Indefiniteness The Examiner finds that the claims are indefinite because it is unclear what the supplemental visual identifier is supplemental to, as no other mention is made in the claims about any other visual identifier. Ans. 4–5. Appellants contend that it has not had the opportunity to respond to the rejection in a non-final office action (Br. 22) and that the rejection is conclusory, without any analysis or citations (id. at 24). Appellants also include from the Specification Figure 1 and paragraphs describing Figure 1 (id. at 25–26) as support for the proposition that “one skilled in the art would, in light of the specification, be able to ascertain with a reasonable degree of precision and particularity the area circumscribed by the claims.” Id. at 22, 28. Clause [a] in each of the independent claims recites “at least one supplemental visual identifier, which at least one supplemental visual Appeal 2012-004557 Application 11/906,112 11 identifier includes one or more recognizable symbolic aspects configured for suggesting administration information for at least one health-related substance.” See supra at 2–3. In the context of the claim language, then, one supplemental visual identifier may constitute one or more symbolic aspects. The claims, however, do not indicate the relationship of the supplemental visual identifier to a non-supplemental identifier as the Examiner correctly finds. We are not persuaded by Appellants that one skilled in the art reasonably could understand what is meant by the claims. The portions of the Specification that Appellants direct us to do not address the indefiniteness problem. Instead, the passages describe what may constitute a “visual identifier” and a “supplemental visual identifier” and the purpose of such identifiers to facilitate identification of a patient and to suggest pertinent product administration information, respectively. Br. 26. According to the Specification, “[t]he visual identifier may include various types of recognizable primary symbolic aspects . . . .” Id. (quoting Spec. 4:16). According to clause [a] of the claims, the “at least one supplemental visual identifier includes one or more recognizable symbolic aspects.” Neither the Specification nor the claims offer guidance on how the claimed supplemental visual identifier of clause [a] relates to the claimed symbolic aspect of clause [b]. Therefore the claims are not clear as to whether the symbolic aspect of clause [b] is the visual identifier mentioned in the Specification or one of the symbolic aspects that constitute the supplemental identifier of clause [b]. The rejection of all of the pending claims based on § 112, second paragraph, is affirmed. Appeal 2012-004557 Application 11/906,112 12 Patentable Subject Matter The Examiner finds that the broadest reasonable interpretation of claim 1 is a method of “establishing at least one visual identifier” and “providing at least one display scheme” that “cover[s] performing [the] recited limitations manually and/or mentally.” Ans. 5. The Examiner further finds that the steps “can be just dictating or setting up policy related to identifying person and medication” and a “hand gesture.” Id. at 33. The Examiner also finds the broadest reasonable interpretation of claim 42 is a “health related substance” and “a supplemental visual identifier.” Id. at 7–8. The Examiner determines that the claim parts thus cover naturally occurring products and a hand gesture or inherent property of a naturally occurring product like color or shape. Id. Similarly, the Examiner finds that the broadest reasonable interpretation of claim 54 and claim 69 limitations “supplemental visual identifier” covers hand gestures or an inherent property of a naturally occurring product like color or shape, and “container” covers a naturally occurring wrapper or shell of a naturally occurring health related substance. Id. at 8, 34. Appellants do not dispute the Examiner’s finding of the broadest reasonable interpretation of independent claims 1, 42, 54, and 69. Appellants argue that the Examiner has not made out a prima facie case of unpatentability under Section 101 because the Examiner applied the “overruled machine-or-transformation test” of In re Bilski, 545 F.3d 943, 954 (Fed. Cir. 2008) (Br. 32). Appellants further argue that “the recitations of the claims are not abstract.” Id. at 35. The Supreme Court has not held that the machine-or-transformation test is not appropriate. Rather, the Court explained that it is “not the sole test Appeal 2012-004557 Application 11/906,112 13 for deciding whether an invention is a patent-eligible ‘process.’” Bilski v. Kappos, 130 S.Ct. 3218, 3227 (2010). “[T]he machine-or-transformation test is a useful and important clue, an investigative tool, for determining whether some claimed inventions are processes under § 101.” Id. Appellants do not dispute that the rejected claims fail to meet the machine- or-transformation test. Appellants acknowledge that to be patentable subject matter under Section 101, the claim must be “non-abstract.” Br. 33. See also, Mayo Collaborative Servs., 132 S.Ct. at 1293 (quoting Diamond v. Diehr, 450 U.S. 175, 185 (1981)). Appellants’ conclusory statement that “the recitations of the claims are not abstract” (Br. 35) followed by recitation of claims 1, 42, 54, and 69 each concluding with “are not abstract” (id. at 35– 36) does not identify for the Board any alleged error in the Examiner’s rejection. See In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011) (“[I]t has long been the Board’s practice to require an applicant to identify the alleged error in the examiner’s rejections.” (citing Ex Parte Frye, 94 USPQ2d 1072 (BPAI 2010) (precedential))). See also 37 C.F.R. § 41.37(c)(1)(vii) (first sentence). In Alice Corp. Pty, Ltd. v. CLS Bank Int’l, 134 S. Ct. 2347, 2355 (2014), the Supreme Court recently addressed the process for analyzing claims to determine whether claims are directed to patent-ineligible subject matter. In Alice, the Supreme Court applied the framework set forth previously in Mayo, “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. The first step in the analysis is to “determine whether the claims at issue are directed to one Appeal 2012-004557 Application 11/906,112 14 of those patent-ineligible concepts.” Id. If they 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 there are additional elements that “‘transform the nature of the claim’ into a patent-eligible application.” Id. (quoting Mayo, 132 S. Ct. at 1291, 1297). 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. (alteration in original) (quoting Mayo, 132 S. Ct. at 1294). The machine-or-transformation test “can provide a ‘useful clue’ in the second step of the Alice framework . . . .” Ultramercial, Inc. v. HULU, LLC, No. 2014-1544, slip op. at 12 (Fed. Cir. Nov. 14, 2014) (citing Bancorp Servs., L.L.C. v. Sun Life Assurance Co. of Can., 687 F.3d 1266, 1278 (Fed. Cir. 2013)). The “prohibition against patenting abstract ideas ‘cannot be circumvented by attempting to limit the use of the formula to a particular technological environment’ or adding ‘insignificant postsolution activity.’” Bilski, 130 S. Ct. at 3230 (quoting Diamond v. Diehr, 450 U.S. 175, 191–92 (1981)). On this record, the claims have been demonstrated to be abstract ideas or naturally occurring products. Appellants have not directed us to any inventive concept, let alone one that amounts to more than the patent ineligible concept identified by the Examiner. Therefore we do not find error in the Examiner’s rejection of the claims under 35 U.S.C. § 101. The rejection based on § 101 is affirmed. If prosecution is continued, the Examiner may wish to consider whether the preamble of claim 75 reciting “[n]on-transitory computer Appeal 2012-004557 Application 11/906,112 15 readable media bearing one or more device detectable instructions for facilitating operations” amounts to an inventive concept under the Alice framework. Anticipation Appellants do not separately argue each claim rejected under Section 102 is patentable. Although the Appeal Brief provides separate headings, Appellants rely on the same arguments asserted with respect to claim 1 for all of the rejected claims other than claim 97. Br. 61, 74–77. In accordance with 37 C.F.R. § 41.37(c)(1)(vii), claims 2–6, 12, 34, 48, 49, 51, 54–56, 59– 61, 64, 67, 69, 70, 73–76, 85–87, and 89 will stand or fall together with representative claim 1. The Examiner finds that each and every element set forth in claim 1 is disclosed in Keene. FF1–2; Ans. 8–10. The Examiner finds that Keene teaches a label that provides the patient or caregiver with graphic and textual information, including pictograms which illustrate use directions. Ans. 9; Keene ¶¶ 58, 59, Fig. 6A. The Examiner also finds that Keene teaches graphical representation of the medication and pictograms to display more than one identifier associated with the dosage on the top and side labels. Ans. 9–10; Keene ¶ 59, Figs. 6B, 6C. The Examiner further explains that Keene’s label includes the name of the patient, which identifies the patient in a recognizable symbolic aspect. Ans. 34–35. Therefore, the Examiner has provided sufficient findings based on the cited reference to identify how claim 1 is anticipated by Keene where the term “supplemental visual identifier” requires multiple symbolic aspects that Appeal 2012-004557 Application 11/906,112 16 identify the patient and the administration information for the health-related substance. The Examiner also finds that each and every element set forth in claim 97 is disclosed in Keene. FF1–2, 6; Ans. 20–21. The Examiner finds that Keene further teaches a label that may be present in Braille for partially or fully blind patients. Ans. 20–21; Keene ¶ 60. Therefore, the Examiner has provided sufficient findings based on the cited reference to identify how claims 1 and 97 are anticipated by Keene. Appellants provide repeated quotations of claims 1 and 97 (Br. 56, 59, 60, 71–72), repeated quotations of the Examiner’s entire rejection of claim 1 (id. at 54–55, 57–58), quote the Examiner’s entire rejection of claim 97 (id. at 71), and reprint figures and paragraphs of Keene identified in the Examiner’s rejections (id. at 59–60, 71). However, Appellants have failed to explain how the reference, including the cited portions, does not meet the claim invention. Appellants assert that they have “shown by direct quotations that [Claims 1 and 97] and the cited portions of Keene are very different on their faces.” Id. at 60, 72. On this basis, Appellants assert that claims 1 and 97 are “prima facie patentable over the pinpoint-cited portions of Keene.” Id. Rather than addressing the disclosures in Keene relied upon by the Examiner, Appellants assert that they have “shown by direct quotations that Independent Claim 1 and the cited portions of Keene are very different on their faces.” Id. at 60. Appellants’ arguments are not persuasive because they fail to establish error in the findings on which the Examiner based anticipation over the Keene reference. Whether claims 1 and 97 read on Appeal 2012-004557 Application 11/906,112 17 Keene is precisely the substantive basis upon which the Examiner rejected Appellants’ claims. Appellants have failed to articulate what gaps, in fact, exist between, for example, (1) the emphasized “at least one recognizable symbolic aspect configured for identifying at least one particular patient” of claim 1 (id. at 53–54, 56, 59, 60) and (2) the Keene reference. Appellants quote the Examiner’s full rejection (Br. 54–55, 57–58, 71) without further explanation of how the anticipation rejection over Keene may be deficient. See In re Jung, 637 F.3d at 1363 (“whether there are gaps between the prior art and the rejected claims is a substantive issue, and [appellant’s] assertion that the examiner must ‘bridg[e] the facial differences’ between the claims and the prior art begs the substantive question of whether there are facial differences to be bridged.”). A prior art reference does not have to satisfy an ipsissimis verbis test to disclose a claimed element, therefore Appellants’ demand for such an exacting match is not persuasive of error. See In re Gleave, 560 F.3d 1331, 1334 (Fed. Cir. 2009). In the absence of a more detailed explanation, we are not convinced of error on the part of the Examiner in concluding the claimed invention would have been anticipated by Keene. See In re Jung, 637 F.3d at 1365. The rejection based on anticipation over Keene is affirmed. Obviousness Appellants do not separately argue claims 8, 13, 24, 31, 34, 43, 44, 52, 58, 72, 88, and 92–96 rejected under Section 103 are patentable. In accordance with 37 C.F.R. § 41.37(c)(1)(vii), these claims will stand or fall together with claims 90 and 91 separately argued by Appellants.4 4 Appellants omit claims 90, 91, and 95 from the grounds of rejection to be reviewed on appeal under 35 U.S.C. § 103(a) over Keene and Rines. Br. 17. Appeal 2012-004557 Application 11/906,112 18 We have reviewed the Final Office Action and Answer and find the Examiner provided detailed facts and reasons in support of the obviousness determination for each of the pending claims. See Final 20–30; Ans. 21–31. We have considered each of Appellants’ arguments in support of patentability, but are not convinced of any error on the part of the Examiner for the reasons stated in the Answer (Ans. 21–31). In our view, the Examiner has not relied on unsupported, conclusory statements, but has more than adequately explained the reason to modify Keene with Rines (claims 34, 58, 72, 88, 90, 91, and 95, see, e.g., Ans. 27–29), Adler (claims 8, 24, and 31, see, e.g., Ans. 23–24), Ruben (claim 44, see, e.g., Ans. 24– 25), Song (claim 94, see, e.g., Ans. 29–30), or Chalmers (claims 93 and 96 , see, e.g., Ans. 30–31). Appellants have not explained, with any degree of specificity, why the Examiner’s proposed reason to modify Keene with Rines is not supported by the evidence of record. Appellants’ repeated assertion that claim limitations are not expressly “recited” in a reference (Br. 63, 67) and argument that absent an express recitation in the prior art additional evidence the claims are prima facie patentable over the secondary reference (id. at 64, 68) does not indicate lack of prima facie obviousness, but, rather, “begs the substantive question of whether there are facial differences to be bridged.” See In re Jung, 637 F.3d at 1363. Similarly, Appellants assert that the Examiner improperly combined Keene and the cited secondary references. According to Appellants, the Examiner failed to provide an objective rationale to combine Keene with Rines (see, e.g., Br. 64, 68). Appellants have not provided a cogent This appears to be a typographical error in view of Appellants’ argument. Id. at 61–69. Appeal 2012-004557 Application 11/906,112 19 technical explanation why teachings of the references cannot be “combined” nor do Appellants’ assertions address the Examiner’s reason to combine the references. In the absence of a technical explanation distinguishing the claimed invention over corresponding prior art as identified by the Examiner and addressing the Examiner’s reason for combining the references, Appellants have not shown any error on the part of the Examiner in concluding the claimed invention would have been obvious within the meaning of 35 U.S.C. § 103(a). See In re Jung, 635 F.3d at 1365 (“[I]t has long been the Board’s practice to require an applicant to identify the alleged error in the examiner’s rejections[.]” (citing Ex Parte Frye, 94 USPQ2d 1072 (BPAI 2010) (precedential) (“The panel then reviews the obviousness rejection for error based upon the issues identified by appellant, and in light of the arguments and evidence produced thereon.”))). In sum, upon thorough consideration of the appeal, and for the reasons expressed in the Answer and above, we find a preponderance of the evidence favors the Examiner’s conclusion of unpatentability based on obviousness. Therefore, we affirm the Examiner’s final rejections of the claims under § 103. The obviousness rejections are affirmed. DECISION The decisions of the Examiner to reject claims under §§ 112, 101, 102, and 103 are 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)(1)(v). Appeal 2012-004557 Application 11/906,112 20 ORDER AFFIRMED bar Copy with citationCopy as parenthetical citation