Ex Parte Jung et al

Patent Trial and Appeal Board

Oct 16, 2014

11893106 (P.T.A.B. Oct. 16, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
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.
11/893,106 08/13/2007 Edward K.Y. Jung SE1-0982-US 3215
80118 7590 10/17/2014
Constellation Law Group, PLLC
P.O. Box 580
Tracyton, WA 98393
EXAMINER
PAULS, JOHN A
ART UNIT PAPER NUMBER
3626
MAIL DATE DELIVERY MODE
10/17/2014 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, and LOWELL L. WOOD JR
____________________

Appeal 2012-0039651
Application 11/893,1062
Technology Center 3600
____________________

Before HUBERT C. LORIN, NINA L. MEDLOCK, and
JAMES A. WORTH, Administrative Patent Judges.

MEDLOCK, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 21, 42, 49–85, and 87–95. We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM.

1 Our decision references Appellants’ Appeal Brief (“App. Br.,” filed
August 31, 2011, as corrected, October 27, 2011), Reply Brief (“Reply Br.,”
filed January 10, 2012), Supplemental Reply Brief (“Supplemental Reply
Br.,” filed January 10, 2012), and the Examiner’s Answer (“Ans.,” mailed
November 10, 2011).
2 According to Appellants, the real party in interest is Searete LLC. App.
Br. 5.
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CLAIMED INVENTION
Appellants’ claimed invention “relates to data handling techniques”
(Spec. ¶ 1).
Claim 21, reproduced below, is illustrative of the subject matter on
appeal:
21. A method for determining allergic populations
comprising:
accepting an informational input identifying at least one
allergic reaction to an allergen;
accessing a dataset to identify at least one innate allergy
determinant of the at least one allergic reaction in a population;
accessing an allergy test dataset to identify, based on the
at least one innate allergy determinant, a portion of the
population with a predisposition to the allergic reaction;
calculating, based on the portion of the population with a
predisposition to the allergic reaction, an allergic index for the
population; and
presenting information related to the allergic index for
the population in response to calculating, based on the portion
of the population with a predisposition to the allergic reaction,
the allergic index for the population,
where each step is performed using a microprocessor.

REJECTIONS
Claims 21, 42, 49–52, 57, 58, 63, 65–72, 77, 78, 83, 85, and 87–95 are
rejected under 35 U.S.C. § 103(a) as unpatentable over Preuss
(US 2007/0183878 A1, pub. Aug. 9, 2007), Kreig (US 2006/0188913 A1,
pub. Aug. 24, 2006), Official Notice, and Gefter (US 6,759,234 B1,
iss. July 6, 2004).
Claims 53 and 73 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Preuss, Kreig, Official Notice, Gefter, and Avner
(US 2003/0177512 A1, pub. Sept. 18, 2003).
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Claims 54 and 74 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Preuss, Kreig, Official Notice, Gefter, and Kam
(JP 03292898 A, pub. Dec. 24, 1991).
Claims 55, 56, 75, and 76 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Preuss, Kreig, Official Notice, Gefter, and Saint-Remy
(US 6,602,509 B1, iss. Aug. 5, 2003).
Claims 59, 60, 79, and 80 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Preuss, Kreig, Gefter, and Official Notice.
Claims 61, 62, 81, and 82 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Preuss, Kreig, Official Notice, Gefter, and Mahler
(US 2002/0187158 A1, pub. Dec. 12, 2002).
Claims 64 and 84 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Preuss, Kreig, Official Notice, Gefter, and Small
(US 5,910,421, iss. June 8, 1999).

ANALYSIS
Independent claim 21 and dependent claims 49–68
Appellants variously argue that the rejection of independent claim 21
should be reversed because the Examiner has failed to establish a prima
facie case of unpatentability (App. Br. 47–66). More particularly,
Appellants argue that a prima case of obviousness has not been established
because the “USPTO-cited technical material fails to recite several express
terms” of claim 21 and the USPTO has not explained how it reached the
mappings of the claim onto the cited prior art under a broadest reasonable
interpretation standard (id. at 47–51). Appellants assert that the Examiner
the characterization that Preuss teaches what is recited in claim 21 (id. at 53–
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56; see also Reply Br. 3–7 and Supplemental Reply Br. 8–13), and that
Appellants have “shown by direct quotations” that claim 21 and the cited
portions of Preuss are “very different on their faces” (id. at 55). In this
regard, Appellants maintain that Appellant’s application is the only
“objectively verifiable Examiner-cited document of record that shows or
suggests what Examiner purports the references to teach” (id. at 57), and that
the Examiner is interpreting Preuss through the lens of Appellants’
application, which is impermissible hindsight (id.).
Appellants also charge that the Examiner is improperly relying on
personal knowledge or is taking official notice of one of more factors to
reach the factual conclusion of what the cited technical material teaches, and
that the Examiner should be required to provide an affidavit or declaration
setting forth objectively verifiable evidence in support of the Examiner’s
assertions regarding what the cited technical material teaches and/or should
be interpreted to teach (id. at 57–58). Appellants make similar arguments
with respect to Krieg (id. at 58–62) and Gefter (id. at 62–66).
Appellants’ arguments are unpersuasive. The Federal Circuit has held
that the USPTO carries its procedural burden of establishing a prima facie
case when its rejection satisfies the requirements of 35 U.S.C. § 132 by
notifying the applicant of the reasons for rejection, “together with such
information and references as may be useful in judging of the propriety of
continuing the prosecution of [the] application.” See In re Jung, 637 F.3d
1356, 1362 (Fed. Cir. 2011). Thus, “all that is required of the office to meet
its prima facie burden of production is to set forth the statutory basis of the
rejection and the reference or references relied upon in a sufficiently
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articulate and informative manner as to meet the notice requirement of
§ 132.” Id. at 1363.
Here, the Examiner notified Appellants that claim 21 is rejected under
35 U.S.C. § 103(a) as obvious over the combination of Preuss, Kreig,
Official Notice, and Gefter, and the Examiner cited specific portions of the
references, by paragraph (Preuss and Kreig) and claim (Gefter) numbers,
that are the bases for the rejection (Ans. 5–7). The cited portions of the
references, and the accompanying explanations provided by the Examiner,
collectively constitute the “objectively verifiable evidence,” which
Appellants allege is lacking.
Moreover, and contrary to Appellants’ suggestion that identity of
terminology is required, the Examiner does not contend, nor is the Examiner
required to demonstrate, that the identical text of rejected claim 21 appears
in the cited references. The test of whether a reference teaches a claim
limitation is not whether the exact language is present. Instead, the relevant
inquiry is whether the limitation is taught or suggested by the prior art when
the claim is given its broadest reasonable interpretation in light of the
Specification. Cf. In re Bond, 910 F.2d 831, 832–33 (Fed. Cir. 1990)
(interpretation of references “is not an ‘ipsissimis verbis” test,” citing Akzo
N.V. v. U.S. Int’l Trade Comm’n, 808 F.2d 1471, 1479 & n.11 (Fed. Cir.
1986)); Standard Havens Prods., Inc. v. Gencor Indus., Inc., 953 F.2d 1360,
1369 (Fed. Cir. 1991) (“[A] . . . reference . . . need not duplicate word for
word what is in the claims.”).
We find that the Examiner’s rejection satisfies the notice requirement
of § 132, and, therefore, establishes a prima facie case of obviousness.
Cf. Jung, 637 F.3d at 1363 (“[T]he examiner’s discussion of the theory of
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invalidity . . . the prior art basis for the rejection . . . and the identification of
where each limitation of the rejected claims is shown in the prior art
reference by specific column and line number was more than sufficient to
meet this burden.”). Therefore, the burden shifts to Appellants to rebut the
Examiner’s prima facie case by distinctly and specifically pointing out the
supposed errors in the Examiner’s action, as well as the specific distinctions
believed to render the claims patentable over the applied references.
See 37 C.F.R. § 41.37(c)(vii) (2011) (“A statement which merely points out
what a claim recites will not be considered an argument for separate
patentability of the claim.”); see also In re Lovin, 652 F.3d 1349, 1357 (Fed.
Cir. 2011) (“[W]e 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.”).
Appellants have failed to carry their burden. Rather than distinctly
pointing out the Examiner’s supposed errors, Appellants have made mere
general allegations that the claims define a patentable invention because the
Examiner has failed to establish a prima facie case of unpatentability,
without specifically articulating what gaps exist between the cited references
and the claims. For example, although Appellants charge the Examiner with
improper reliance on hindsight, personal knowledge, or improper reliance on
official notice,3 Appellants do not provide persuasive arguments or evidence

3 The Examiner has taken Official Notice, which Appellants have not
challenged (see Ans. 15), that it is well-known to automate known processes
using microprocessors and also well-known “to access a radioallegosorbent
test dataset to identify, based on the at least one innate allergy determination
[sic], allergy predisposition information and [to] access[ ] a serum
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to support that charge. Appellants’ objection to the Examiner’s technical
explanation of how the claim is obvious in view of the prior art, and their
demand for “an affidavit or declaration setting forth objectively verifiable
evidence in support of Examiner’s currently unsupported assertions
regarding what the cited technical material ‘teaches’ and/or should be
interpreted to ‘teach’” (see, e.g., App. Br. 57), also lack technical
explanation of what the error is. Appellants also do not specifically identify
(except by quoting the entirety of the claim) the several “express terms” of
claim 21 that the “USPTO-cited technical material” allegedly fails to recite.
Appellants’ further argument that the Examiner has provided
conclusory statements only, and has failed to provide articulated reasoning
with some rational underpinning to support the obviousness conclusion
(App. Br. 66–68, citing KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398 (2007)))
also begs the question of whether any differences exist, and fails to address
the Examiner’s stated rationale for combining the references.
Appellants’ contentions that combining the references, as the
Examiner proposes, would change the principle of operation of one or both
of Preuss and Krieg, would render the technologies of Preuss, Kreig, and/or
Gefter unfit for their intended purposes, and would require substantial
reconstruction and redesign of the elements of Krieg (App. Br. 68–76)
similarly fail at least because they appear based on bodily incorporation,
which is not the test for obviousness. See In re Sneed, 710 F.2d 1544, 1550
(Fed. Cir. 1983) (“[I]t is not necessary that the inventions of the references

immunoglobulin electrophoresis test dataset to identify, based on the at least
one innate allergy determination [sic], allergy predisposition information”
(Ans. 4–5).
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be physically combinable to render obvious the invention under review.”); In
re Nievelt, 482 F.2d 965 (CCPA 1973) (“Combining the teachings of
references does not involve an ability to combine their specific structures.”).
Viewed as a whole, Appellants’ arguments amount to a recitation of
the claim language, and a quotation of the Examiner’s statement of the
rejection followed by a quotation of each of the cited portions of the prior art
references, from which Appellants summarily conclude that the quoted
language of the references does not meet the quoted claim language. Other
than seeking direct quotations of identical terminology, Appellants have not
identified error in the Examiner’s interpretations of the cited references or
the claim language.
Appellants may well disagree with how the Examiner interpreted and
applied the references, but Appellants offer no substantive arguments to
rebut the specific underlying factual findings made by the Examiner in
support of the ultimate legal conclusion of obviousness. And we decline to
examine the claims sua sponte, looking for distinctions over the prior art.
Cf. In re Baxter Travenol Labs., 952 F.2d 388, 391 (Fed. Cir. 1991) (“It is
not the function of this court to examine the claims in greater detail than
argued by an appellant, looking for [patentable] distinctions over the prior
art.”).
In the absence of a more detailed explanation, we are not persuaded of
error on the part of the Examiner. See Jung, 637 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
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of the arguments and evidence produced thereon.”)). Therefore, we sustain
the Examiner’s rejection of claim 21 under 35 U.S.C. § 103(a).
For the same reasons, we also sustain the Examiner’s rejection of
dependent claims 49–68, which are not argued separately except based on
their dependence on claim 21 (App. Br. 76).
Independent claims 42, 89, and 93 and dependent claims 69–85, 87, 88, 90–
92, 94, and 95
Appellants argue that independent claims 42, 89, and 93 are
patentable for the same reasons as set forth with respect to claim 21 (App.
Br. 76). We are not persuaded for the reasons set forth above that the
Examiner erred in rejecting claim 21 under 35 U.S.C. § 103(a). Therefore,
we sustain the Examiner’s rejection of independent claims 42, 89, and 93 for
the same reasons.
We also sustain the rejection of claims 69–85, 87, 88, 90–92, 94, and
95, each of which depends, directly or indirectly, from one of independent
claims 42, 89, and 93, and is not argued separately except based on its
respective dependence on the independent claims (id. at 76–77).

DECISION
The Examiner’s rejections of claims 21, 42, 49–85, and 87–95 under
35 U.S.C. § 103(a) 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)(iv).

AFFIRMED

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