Ex Parte Mikkelsen et alDownload PDFPatent Trial and Appeal BoardJan 26, 201511661018 (P.T.A.B. Jan. 26, 2015) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________________ Ex parte SOREN MIKKELSEN and ANDRE LARSEN ____________________ Appeal 2012-0075581 Application 11/661,018 Technology Center 3600 ____________________ Before: MURRIEL E. CRAWFORD, JOSEPH A. FISCHETTI, and MICHAEL W. KIM, Administrative Patent Judges. CRAWFORD, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellants seek our review under 35 U.S.C. § 134 from the Examiner’s final rejection of claims 1, 6, and 7. We have jurisdiction under 35 U.S.C. § 6(b). We reverse and enter a NEW GROUND OF REJECTION pursuant to our authority under 37 C.F.R § 41.50(b). 1 The Appellants identify the real party in interest as Novo Nordisk A/S. (App. Br. 3). Appeal 2012-007558 Application 11/661,018 2 Claim 1 is illustrative of the claims on appeal: 1. A method of giving a service (1004, 1012) to a patient (1006), said method comprising the steps of: subscribing (95) with an identification code of a drug administration device (1003) to a health care advisory system (1001), transferring (100) the identification code of the drug administration device (1003) to the health care advisory system (1001), controlling (110) that the patient having the drug administration device (1003) is a subscriber to the health care advisory system (1001) based on the received identification code, requesting (120) and receiving treatment data from the subscribing drug administration device (1003), generating (130) an advice (1004) based on the received treatment data and a personalized setup of patient related data in the health care advisory system, the advice being optionally verified or modified by a health care person, and/or generating (140) an order (1012) based on the received treatment data in the health care advisory system to supply goods to the patient, and sending (150) the advice (1004) to the drug administration device (1003), and/or sending (160) the order (1012) to a goods supplier (1011). Appellants appeal the following rejections: Claims 1 and 6 are rejected under 35 U.S.C. § 102(b) as anticipated by Burd (US 6,558,321 B1, iss. May 6, 2003). Claim 7 is rejected under 35 U.S.C. § 103(a) as unpatentable over Burd and Morag (US 2002/0062230 A1, pub. May 23, 2002). Appeal 2012-007558 Application 11/661,018 3 ANALYSIS Claim 1 We are persuaded by the Appellants’ arguments that the “calibration information” of Burd is not the same as the recited “treatment data” (App. Br. 11). The term “treatment data” is not defined by the Appellants’ original disclosure, but we construe it, broadly, as data about a patient’s treatment. The Specification describes that the claimed invention is about “service to a patient” (Spec. 1, l. 3), where it can utilize “advice that involved a skilled person in treatment of diabetes, e.g.[,] a nurse, a physician, or another healthcare person.” (Id. at 7, ll. 5–8). The Specification describes by example “treatment data comprises blood glucose data, insulin intakes, meal and exercise . . . .” (Id. at 16, ll. 11–13). Construing the claim in light of the Specification leads us to interpret “treatment data” as data about medical treatment of a patient. Calibration data fundamentally is data about a device and the accuracy of its measurements, not directly about a patient’s treatment. Therefore, we do not agree that the calibration information received from the medical device in Burd, column 33, lines 59–66, corresponds to the recited “treatment data.” The Appellants also argue that the “calibration value” in Burd is not the same as “advice,” as recited in the claims (App. Br. 12–13, Reply Br. 2). The term “advice” is similarly undefined, but is generally described as medical advice directly related to the medical treatment. (See Spec. 16, l. 31 to 17, l. 12). Burd discloses a condition where the receipt of calibration data leads to “providing the calibration value for recalibration” (col. 33, l. 66 to col. 34, l. 4). However, it is possible the calibration value is a constant, not related in content or magnitude to the received calibration data, other than by Appeal 2012-007558 Application 11/661,018 4 the calibration information leading to indicating the need to supply the calibration value. Therefore, Burd does not necessarily disclose that the calibration value is “based on” the received calibration information, as required to correspond to the recited “advice.” More importantly, however, the claim requires basing the “advice” not only on the “treatment data,” but also on “a personalized setup of patient related data in the health care advisory system.” The Examiner has not established how Burd discloses this element of the “generating” step. (See Ans. 5, 6, and 9–10). Therefore, even if it is possible that the “calibration value” in Burd constitutes “advice,” it is not disclosed as being based on any “patient related data.” Burd discloses transmitting data such as information from blood glucose tests (col. 34, ll. 10–20), which can be accessed by the patient’s physician (col. 34, ll. 21–25). The Examiner has not established that the physician “generates an advice” based on blood glucose levels and patient data–at best, Burd discloses using the glucose levels in some general, unspecified manner “in the management of diabetic patients” (col. 7, ll. 41– 44) –or whether it is documented anywhere that a physician would use blood glucose levels and other patient data to generate medical advice, or to verify or modify medical advice to a patient. A claim is anticipated only if each and every element as set forth in the claim is found, either expressly or inherently described, in a single prior art reference. Verdegaal Bros. v. Union Oil Co. of California, 814 F.2d 628, 631 (Fed. Cir. 1987). Because the Examiner has failed to establish that “treatment data,” and “advice” based on the “received treatment data and a personalized setup of patient related data in the health care advisory system” Appeal 2012-007558 Application 11/661,018 5 are disclosed or inherent in Burd, we will not sustain the anticipation rejection of claim 1. Claim 6 Independent claim 6 recites a device comprising, among other aspects, “means for sending treatment data (1003) upon request to the health care advisory system (1001), and means for receiving (130) an advice (1004) based on the received treatment data and a personalized setup of patient related data . . . .” We interpret this claim language under 35 U.S.C. § 112, sixth paragraph, and look to the Specification for the description of the corresponding structure. The Appellants direct us for support of the claim limitation to page 13, lines 5–11, page 16, lines 26–35, and Figures 1–4. (App. Br. 5). The citation at page 13 describes the nature of information involved. The citation at page 16 describes the nature of the claimed “advice.” The Figures are flow charts. These citations do not describe any device component that sends or receives data. We find a paragraph that generally describes the claimed “drug administration device (1003)” at page 12, lines 27–32, but this merely describes using the devices with the methods of Figures 2–4, and that there may be more than one device 1003. Section 112, sixth paragraph provides that one may define the structure for performing a particular function generically, through the use of a means expression, provided that it discloses specific structure or structures corresponding to that means in the patent specification. Kemco Sales, Inc. v. Control Papers Co., Inc., 208 F.3d 1352, 1360–61 (Fed. Cir. 2000). As such, the court has referred to section 112, sixth paragraph as embodying a Appeal 2012-007558 Application 11/661,018 6 statutory quid pro quo. (Id.). If one fails to satisfy the bargain, because of a failure to disclose adequate structure, the claim will be rendered indefinite under section 112, second paragraph. (Id.). The rules that “structure corresponding to the claimed function must be disclosed in the specification with clear linkage between the structure and the claimed function serve worthy goals. Such rules are intended to produce certainty in result.” Med. Instrumentation & Diagnostics Corp. v. Elekta AB, 344 F.3d 1205, 1220 (Fed. Cir. 2003). “A computer-implemented means-plus-function term is limited to the corresponding structure disclosed in the specification and equivalents thereof, and the corresponding structure is the algorithm.” Harris Corp. v. Ericsson, Inc., 417 F.3d 1241, 1253 (Fed. Cir. 2005). Because we are unable to determine the nature of the device’s structure that sends and receives data, we cannot determine whether this structure is disclosed in Burd. Therefore, we cannot sustain the rejection under 35 U.S.C. § 102(b). As a result of the same shortcoming in the Specification, and pursuant to our authority under 37 C.F.R. § 41.50(b), we enter a new ground of rejection for claim 6 under 35 U.S.C. § 112, second paragraph, for indefiniteness. We conclude that the Specification’s failure to disclose structure corresponding to the “means for receiving (130) an advice (1004) based on the received treatment data and a personalized setup of patient related data,” renders claim 6 indefinite under 35 U.S.C. § 112, second paragraph. Appeal 2012-007558 Application 11/661,018 7 Claim 7 Independent claim 7 recites a system comprising, at least “means for generating (130) an advice (1004) based on the received treatment data and a personalized setup of patient related data in the health care advisory system . . . .” The Appellants argue that Burd does not disclose “generating an advice.” (App. Br. 14). The disputed claim limitation, however, is for a portion of a system that generates an advice, not a method step of generating an advice. We interpret this disputed “means for generating” claim language under 35 U.S.C. § 112, sixth paragraph, and look to the Specification for the description of the corresponding structure that generates the advice. As with claim 6, the Appellants direct us for support of the claim limitation to page 13, lines 5–11, page 16, lines 26–35, and Figures 1–4. (App. Br. 6). The citation at page 13 describes the nature of information involved. The citation at page 16 describes the nature of the claimed “advice.” The Figures are flow charts. Similar to claim 6, for the reasons stated above, because we are unable to determine the nature of the system’s structure that generates an advice, we cannot determine whether this structure is disclosed in the combination of Burd and Morag. Therefore, we cannot sustain the rejection under 35 U.S.C. § 103(a). As a result of the same shortcoming in the Specification, and pursuant to our authority under 37 C.F.R. § 41.50(b), we enter a new ground of rejection for claim 7 under 35 U.S.C. § 112, second paragraph, for indefiniteness. We conclude that the Specification’s failure to disclose Appeal 2012-007558 Application 11/661,018 8 structure corresponding to the “means generating (130) an advice (1004) based on the received treatment data and a personalized setup of patient related data in the health care advisory system,” renders claim 7 indefinite under 35 U.S.C. § 112, second paragraph. DECISION We reverse the rejection of claims 1 and 6 under 35 U.S.C. § 102(b). We reverse the rejection of claim 7 under 35 U.S.C. § 103(a). We enter a new ground of rejection of claims 6 and 7 under 35 U.S.C. § 112, second paragraph, for indefiniteness. This decision contains a new ground of rejection pursuant to 37 C.F.R. § 41.50(b) (2008). 37 C.F.R. § 41.50(b) provides “[a] new ground of rejection pursuant to this paragraph shall not be considered final for judicial review.” 37 C.F.R. § 41.50(b) also provides that the Appellants, WITHIN TWO MONTHS FROM THE DATE OF THE DECISION, must exercise one of the following two options with respect to the new ground of rejection to avoid termination of the appeal as to the rejected claims: (1) Reopen prosecution. Submit an appropriate amendment of the claims so rejected or new evidence relating to the claims so rejected, or both, and have the matter reconsidered by the examiner, in which event the proceeding will be remanded to the examiner . . . . (2) Request rehearing. Request that the proceeding be reheard under § 41.52 by the Board upon the same record . . . . Appeal 2012-007558 Application 11/661,018 9 No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. § 1.136(a)(1)(iv). REVERSED; 37 C.F.R. § 41.50(b) hh Copy with citationCopy as parenthetical citation