Ex Parte Jung et alDownload PDFPatent Trial and Appeal BoardDec 3, 201411524084 (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. 11/524,084 09/19/2006 Edward K.Y. Jung SE1-0077C1-US 6386 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 2012-004347 Application 11/524,0841 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. 4. Appeal 2012-004347 Application 11/524,084 2 STATEMENT OF THE CASE This is an appeal under 35 U.S.C. § 134 from the final rejection of claims 1–7, 10, 12–19, 22, 24, 26, 28, 34, 35, 38, 42–44, 46–49, 51, 52, 55, 60, 66, 69–73, 75, 76, and 85–96. 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, 69, and 75 are illustrative (bracketed matter and italics added): 1. A method comprising: [a] establishing at least one visual identifier, which at least one visual identifier includes at least one primary recognizable symbolic aspect configured for identifying at least one particular patient; [b] establishing at least one supplemental visual identifier, which at least one supplemental visual identifier includes at least one secondary recognizable symbolic aspect configured for suggesting administration information of at least one health-related substance; and [c] providing at least one display scheme for incorporating the at least one visual identifier and/or the at least one supplemental visual identifier in close association with the at least one health-related substance. 42. A product comprising: [a] at least one visual identifier, which at least one visual identifier includes at least one primary recognizable symbolic aspect configured for identifying at least one particular patient; [b] at least one supplemental visual identifier, which at least one supplemental visual identifier includes at least one secondary recognizable symbolic aspect configured for suggesting administration information; and Appeal 2012-004347 Application 11/524,084 3 [c] at least one health related substance including in close association the at least one visual identifier and/or the at least one supplemental visual identifier. 69. A marking system comprising: [a] at least one visual identifier, which at least one visual identifier includes at least one primary recognizable symbolic aspect configured for identifying at least one particular patient; [b] at least one supplemental visual identifier, which at least one supplemental visual identifier includes at least one secondary recognizable symbolic aspect configured for suggesting administration information; and [c] at least one display implementation that incorporates the at least one visual identifier and/or the at least one supplemental visual identifier. 75. Non-transitory computer readable media bearing one or more processor executable instructions for facilitating operations comprising: [a] establishing at least one visual identifier, which at least one visual identifier includes at least one primary recognizable symbolic aspect configured for identifying at least one particular patient; [b] establishing at least one supplemental visual identifier, which at least one supplemental visual identifier includes at least one secondary recognizable symbolic aspect configured for suggesting administration information of at least one health-related substance; and [c] implementing at least one display scheme for incorporating the at least one visual identifier and/or the at least one supplemental visual identifier in close association with the at least one health-related substance. Appeal 2012-004347 Application 11/524,084 4 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. Claims 1, 2–7, 10, 12–19, 22, 24, 26, 28, 34, 35, 38, 42–44, 46–49, 51, 52, 55, 60, 66, 69–73, and 85–96 stand rejected under 35 U.S.C. § 101 as being unpatentable subject matter. 2. Claims 1–5, 12, 14–18, 22, 28, 35, 38, 42, 46–49, 51, 55, 60, 66, 69–71, 75, 76, 85–88, 90, and 96 stand rejected under 35 U.S.C. § 102(b) as anticipated by Keene. 3. Claims 6, 7, 10, 72, and 73 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Keene in view of Kimura. 4. Claims 13, 26, 43, and 52 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Keene. 5. Claim 19 stands rejected under 35 U.S.C. § 103(a) as being unpatentable over Keene in view of Adler. 6. Claims 24, 34, 91, and 94 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Keene in view of Rines. 2 The rejection of claims 87 and 89 under 35 U.S.C. § 112, first paragraph, and claims 1, 28, 34, 35, 42, 49, 51, 52, and 96 under 35 U.S.C. § 112, second paragraph, stand withdrawn. Ans. 4. Therefore we do not address those rejections in this decision. Appeal 2012-004347 Application 11/524,084 5 7. Claim 44 stands rejected under 35 U.S.C. § 103(a) as being unpatentable over Keene in view of Ruben. 8. Claims 92 and 95 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Keene in view of Chalmers. 9. Claims 89 and 93 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Keene in view of Song. ISSUES Did the Examiner err in determining that the claims 1, 2–7, 10, 12–19, 22, 24, 26, 28, 34, 35, 38, 42–44, 46–49, 51, 52, 55, 60, 66, 69–73, and 85– 96 are unpatentable subject matter? We decide this issue in the negative. Did the Examiner err in determining that the claims 1–5, 12, 14–18, 22, 28, 35, 38, 42, 46–49, 51, 55, 60, 66, 69–71, 75, 76, 85–88, 90, and 96 are anticipated by Keene? We decide this issue in the negative. Did the Examiner err in determining that the claims 6, 7, 10, 13, 19, 24, 26, 34, 43, 44, 52, 72, 73, 89, and 91–95 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 2012-004347 Application 11/524,084 6 healthcare facilities to identify a patient specific prescription. Ans. 9, 10–11, 12–13, 14; 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. 10, 11–12, 13, 15; 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. 16, 18; Keene ¶ 62, Fig. 6C. 4. Keene teaches printing an information page along with label for cross reference. Ans. 17; 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. 17, 19, 20–21; Keene ¶¶ 58, 59, Fig. 6A. 6. Keene teaches the label may be present in Braille for partially or fully blind patients. Ans. 21, 22; 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. 16; 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. 25; Kimura ¶ 26. Appeal 2012-004347 Application 11/524,084 7 9. Adler is directed to the use of a color identifier on a label to identify a particular medication. Ans. 31; 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. 32; Rines ¶ 11. 11. Ruben is directed to visually identifying a particular patient having a shared affiliation or grouping. Ans. 35; 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. 35, 41–42; 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. 37, 41; Song Figs. 1, 2. PRINCIPLES OF LAW 35 U.S.C. § 101 defines patent-eligible subject matter as “any new and useful process, machine, manufacture, or composition of matter, or any 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. Appeal 2012-004347 Application 11/524,084 8 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 Patentable Subject Matter The Examiner finds that the broadest reasonable interpretation of claim 1 is a method of “establishing at least one visual identifier[,â€] and [“establishing at least one] supplemental identifierâ€, 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 38. The Examiner also finds the broadest reasonable interpretation of claim 42 is a “health related substance†and “a 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. at 7, 39. Similarly, the Examiner finds that the broadest reasonable interpretation of claim 69 limitations “visual identifier†and “supplemental visual identifier†cover “text, color and/or shape which are Appeal 2012-004347 Application 11/524,084 9 not structural elements of [the] claims†(id. at 8, 39) and “display implementation†can be “just [the] idea of color co-ordination†(id. at 39). Appellants do not dispute the Examiner’s finding of the broadest reasonable interpretation of independent claims 1, 42, 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. 29. Appellants further argue that “the recitations of the claims are not abstract.†Id. at 31–32. 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 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 do not meet the machine- or-transformation test. Appellants acknowledge that to be patentable subject matter under Section 101, the claim must not be to an abstract idea. Br. 30–31 (quoting Research Corp. Techs. v. Microsoft Corp., 627 F.3d 859, 867 (Fed. Cir. 2010)). See also, Mayo Collaborative Servs., 132 S. Ct. at 1293 (quoting Diamond v. Diehr, 450 U.S. 175, 185 (1981)); Bilski, 130 S. Ct. at 3225. Appellants’ conclusory statement that “the recitations of the claims are not abstract†(Br. 31–32) followed by recitation of claims 1, 42, and 69 each concluding with “are not abstract†(id. at 32–33) does not identify for the Board, however, any alleged error in the Examiner’s rejection. See In re Appeal 2012-004347 Application 11/524,084 10 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 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 Appeal 2012-004347 Application 11/524,084 11 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. Anticipation Appellants do not separately argue each claim rejected under Section 102 is patentable. Appellants rely on arguments asserted with respect to independent claim 1. Br. 56, 75, 76, 77. In accordance with 37 C.F.R. § 41.37(c)(1)(vii), claims 2–5, 12, 14–18, 22, 28, 35, 38, 42, 46–49, 51, 55, 60, 66, 69–71, 75, 76, 85–88, and 90 will stand or fall together with representative claim 1. The Examiner finds that each and every element set forth in claims 1 and 96 is disclosed in Keene. FF1, 2; Ans. 22. The Examiner finds that Keene teaches a label that provides the patient with graphic and textual information including a bar code for the specific medication suitable for scanner recognition systems. Ans. 9; Keene ¶¶ 20, 58, 59, Fig. 6A. The Examiner also finds that Keene teaches graphical representation of the medication and pictograms to display a visual identifier associated with the dosage. Ans. 9; Keene ¶ 59, Figs. 6B, 6C. Appeal 2012-004347 Application 11/524,084 12 The Examiner further finds that Keene teaches that the top label and side label display graphical representation of the medication or food supplement and one or more pictograms from an exemplary table represent additional information to the patient or caregiver, such as directing taking the medication with food. Ans. 10; Keene ¶ 59, Figs. 6B, 6C. Therefore, the Examiner has provided sufficient findings based on the cited reference to identify how claim 1 is anticipated by Keene. The Examiner also finds that each and every element set forth in claim 96 is disclosed in Keene. FF1, 2, 6; Ans. 22. The Examiner finds that Keene teaches a label that may be present in Braille for partially or fully blind patients. Ans. 22; Keene ¶ 60. Therefore, the Examiner has provided sufficient findings based on the cited reference to identify how claim 96 is anticipated by Keene. Appellants provide repeated quotations of claims 1 and 96 (Br. 49–51, 53, 55, 72, 73), quote the Examiner’s rejection of claim 1 (id. at 50–52), quote the Examiner’s entire rejection of claim 96 (id. at 72), and reprint all figures and paragraphs of Keene identified in the Examiner’s quoted rejections (id. at 53–55, 72–73). However, Appellants have failed to convincingly explain how the reference, including the cited portions, does not meet the claimed invention. Appellants assert that they have “shown by direct quotations that [Claims 1 and 96] and the cited portions of Keene are very different on their faces.†Id. at 56, 74. On this basis, Appellants assert that claims 1 and 96 are “prima facie patentable over the pinpoint-cited portions of Keene.†Id. at 56, 74. Rather than addressing the disclosures in Keene relied upon by the Examiner, Appellants assert that they have “shown by direct quotations that Appeal 2012-004347 Application 11/524,084 13 Independent Claim 1 and the cited portions of Keene are very different on their faces.†Id. at 56. 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 96 read on 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 “one primary recognizable symbolic aspect configured for identifying at least one particular patient†of claim 1 (id. at 51, 53) and (2) the Keene reference. Appellants twice quote the first full paragraph of the Examiner’s rejection (id. at 50–51, 52), separately bold the terms “recognizable symbolic aspect†and “Patient Name†(id. at 51), and box sections of the passages reprinted from the reference (id. at 50, 53, 55) 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.â€). 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. Appeal 2012-004347 Application 11/524,084 14 Obviousness Appellants do not separately argue claims 6, 7, 10, 13, 19, 24, 26, 34, 43, 44, 52, 72, 73, 91, 93, and 94 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 from the claim on which they depend. Regarding separately argued claims 89, 92, and 95, which each depend directly from claim 1, 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 34–35; Ans. 35–37. 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, including the Response to Argument section (Ans. 35–37, 41–43). In our view, the Examiner has not relied on unsupported, conclusory statements, but has more than adequately explained the reason to modify Keene with Song (claim 89, see, e.g., Ans. 36–37), or Chalmers (claims 92, 95, see, e.g., Ans. 35–36). Appellants have not explained, with any degree of specificity, why the Examiner’s proposed motivation to modify Keene with any one of Rines, Adler, Song, or Chalmers is not supported by the evidence of record. Appellants’ repeated assertion that claim limitations are not expressly “recited†in a reference (see, e.g., Br. 58, 64–65, 68–69) and argument that the “direct quotations . . . are very different on their faces†(see, e.g., Br. 61, 65, 70) 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. Appeal 2012-004347 Application 11/524,084 15 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 Song, or Chalmers (see, e.g., Br. 61, 66, 70). Appellants have not provided a cogent technical explanation why teachings of the references cannot be “combined†nor do Appellants’ assertions address the Examiner’s stated reasons for combining 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, 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 of the arguments and evidence produced thereon.â€))). In sum, upon 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 decision to reject all of the claims under § 103. The obviousness rejections are affirmed. Appeal 2012-004347 Application 11/524,084 16 DECISION The decisions of the Examiner’s to reject claims under §§ 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). ORDER AFFIRMED bar Copy with citationCopy as parenthetical citation