Ex Parte Kovatchev et al

Patent Trial and Appeal Board

Apr 19, 2013

10524094 (P.T.A.B. Apr. 19, 2013)

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.
10/524,094 02/09/2005 Boris P. Kovatchev 3057.128.US 4378
26474 7590 04/19/2013
NOVAK DRUCE CONNOLLY BOVE + QUIGG LLP
1875 I ST NW
SUITE 1100
WASHINGTON, DC 20006-5409
EXAMINER
CLOW, LORI A
ART UNIT PAPER NUMBER
1631
MAIL DATE DELIVERY MODE
04/19/2013 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 BORIS P. KOVATCHEV and DANIEL J. COX
__________

Appeal 2011-003312
Application 10/524,094
Technology Center 1600
__________

Before TONI R. SCHEINER, ERICA A. FRANKLIN, and JOHN G. NEW,
Administrative Patent Judges.

FRANKLIN, Administrative Patent Judge.

DECISION ON REQUEST FOR REHEARING
Appellants request reconsideration of the Decision on Appeal entered
January 31, 2013, which affirmed the Examiner‟s rejection of claims under
35 U.S.C. § 101 as being directed to non-statutory subject matter, and
reversed the rejections of claims under 35 U.S.C. § 112, second paragraph,
as being indefinite and under 35 U.S.C. §102(e) as being anticipated. We
have considered the arguments presented, but deny the requested relief.

Appeal 2011-003312
Application 10/524,094

2
BACKGROUND
Appellants‟ claims are directed to methods and systems for evaluating
the glycosylated hemoglobin (HbA1c) of a patient based on blood glucose
data. “The invention includes a data analysis method and computer-based
system for the simultaneous evaluation, from routinely collected SMBG
[self-monitoring blood glucose] data, of the two most important components
of glycemic control in diabetes: HbA1c and the risk of hypoglycemia.”
(Spec. 7, ll. 3-5.) The Examiner rejected the claims as being directed to non-
statutory subject matter, as being indefinite, and as anticipated. We reversed
the indefiniteness and anticipation rejections and affirmed the rejection of
the claims as being directed to non-statutory subject matter. (Decision 9.)
Appellants request rehearing alleging that while the Decision
recognizes that the “machine-or-transformation” test is not the exclusive test
for determining whether claims are directed to statutory subject matter, “the
Board‟s determination of ineligible subject matter is solely based on
application of the „transformation‟ test.” (Reh‟g Req. 1)(citing Decision 5.)

ANALYSIS
We have carefully reviewed Appellants‟ argument presented in the
Request for Rehearing, but do not find it persuasive. In particular, the
Decision addresses the proper standard for determining whether a claim is
directed to patent eligible subject matter by stating:
The test for patent eligible subject matter involves
weighing factors to evaluate the claim as to whether the claim
represents an abstract idea or is tailored narrowly enough to
encompass only a particular application of a fundamental
principle. While we understand that the Federal Circuit's
"machine or transformation test" is not the sole test, as asserted
Appeal 2011-003312
Application 10/524,094

3
by Appellants (see App. Br. 14-15; Reply Br. 2) the Supreme
Court did acknowledge, based on the Court's precedent, that the
test is a “useful and important clue, an investigative tool, for
determining whether some claimed inventions are processes
under § 101.” Bilski v. Kappos, 130 S.Ct. 3218, 3227 (2010);
see also Mayo Collaborative Servs. v. Prometheus Labs., Inc.,
132 S.Ct. 1289, 1296 (2012).

(Decision 5.)
The Decision also indicated our finding that “the Examiner
appropriately assessed eligibility under the machine-or-transformation test.”
(Id.)
Further, the Decision informed that we did not rely only on the
machine-or-transformation test in determining whether the claimed
invention was directed to patent eligible subject matter by stating,
“[w]e have considered the claimed methods taken as a whole ….” (Id.) The
Decision further articulated that upon such consideration of the claimed
methods as a whole, we “agree with the Examiner that the claims are
directed to an abstract idea, and therefore recite patent ineligible subject
matter under 35 U.S.C § 101.” (Id.)
Appellants assert that they “established that claims at issue are not
directed to abstract intellectual concepts or principles, mental processes, or
phenomena of nature.” (Reh‟g Req. 3)(citing App. Br. 14-15.) We
considered this argument in the Appeal Brief, which alleged that the
appealed claims are not directed to abstract intellectual concepts or to a
phenomena of nature, but “[t]o the contrary, the appealed claims … are
directed to a method that pertains to analysis of quantitative physical
characteristics of a physical patient, and that has practical application in the
prevention or treatment of an adverse physical condition of a patient.” (App.
Appeal 2011-003312
Application 10/524,094

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Br. 15.) We also considered the assertion at oral hearing that the claimed
invention is not directed to an abstract idea but instead relates to “a method
of evaluating a physical parameter of a patient, which is their level of a
certain type of hemoglobin in their body.” (Oral Hearing Transcript, Feb. 4,
2013, 4.) However, mere evaluation or analysis of a physical parameter, as
set forth in the claims, without more, e.g., a specific application, is abstract.
Thus, our application of the machine-or-transformation step, in
addition to consideration of the claims as a whole, established that the
appealed claims were directed to an abstract idea, and therefore not patent
eligible. (Decision 5.)

CONCLUSION OF LAW
We have considered Appellants‟ request, but find no point of law or
fact which we overlooked or misapprehended in arriving at our decision.

SUMMARY
We deny the requested relief.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).

DENIED

cdc