Ex Parte Power et al

Patent Trial and Appeal Board

May 17, 2016

11989815 (P.T.A.B. May. 17, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
111989,815 01/30/2008
71331 7590
NIXON PEABODY LLP
70 West Madison, Suite 3500
CHICAGO, IL 60602
05/19/2016
FIRST NAMED INVENTOR
Barry D. Power
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
05DC023 7797
EXAMINER
HALVORSON, MARK
ART UNIT PAPER NUMBER
1642
NOTIFICATION DATE DELIVERY MODE
05/19/2016 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address( es):
docketingchicago@nixonpeabody.com
ipairlink@nixonpeabody.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte BARRY D. POWER and JEFFREY A. CULVER
Appeal2013-003559
Application 11/989,815
Technology Center 1600
Before ERIC B. GRIMES, ULRIKE W. JENKS, and
ROBERT A. POLLOCK, Administrative Patent Judges.
PERCURIAM.
DECISION ON APPEAL
This is a decision on appeal 1 under 35 U.S.C. § 134 from the
Examiner's rejection of claims 1---6 and 12-20. We have jurisdiction under
35 U.S.C. § 6(b).
We affirm.
STATEMENT OF THE CASE
The Specification states that "it is particularly important for a person
with diabetes to test his or her blood glucose level about two hours after a
meal. . . . Thus, it would be desirable to have a meter that provides a
1 Appellants identify the Real Party in Interest as Bayer HealthCare LLC
(App. Br. 2).
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Application 11/989,815
reminder or stimulus to the user to check his or her blood glucose level
about two hours after a meal" (Spec. i-f 3).
Claim 1 is representative of the claims on appeal and reads as follows:
1. A meter adapted to determine an analyte concentration reading, the
meter comprising:
an alarm mechanism adapted to produce alarms;
a display adapted to display information to a user of the meter, the
displayed information including an icon visually representing a pre-meal
marker and an icon visually representing a post-meal test-time alarm
generated via the alarm mechanism to remind the user to obtain a post-meal
analyte concentration reading; and
at least one user input mechanism adapted to receive from the user
selections of the pre-meal marker icon and the post-meal test-time alarm
icon,
wherein, upon receipt of a selection of the pre-meal marker icon via
the at least one user input mechanism, the display responsively displays the
post-meal test-time alarm icon, and
wherein, upon receipt of a selection of the post-meal test-time alarm
icon via the at least one user input mechanism, the alarm mechanism
responsively generates the post=meal test=time alarm after a predetermined
amount of time to thereby remind the user to obtain a post-meal analyte
concentration reading.
The claims stand rejected as follows:
Claims 1-6 and 12-19 under 35 U.S.C. § 102(e) as anticipated by
Kovelman2 (Ans. 3---6);
Claims 1---6 and 12-20 under 35 U.S.C. § 102(e) as anticipated by
Meissner3 (Ans. 7-10);
2 Kovelman, US 2007/0016170 Al, published Jan. 18, 2007.
3 Meissner, US 2006/0089540 Al, published Apr. 27, 2006.
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Application 11/989,815
Claims 1---6 and 12-20 under 35 U.S.C. § 103(a) as obvious in view of
Kovelman and Saidara4 (Ans. 10-12);
Claims 1---6 and 12-20 under 35 U.S.C. § 103(a) as obvious in view of
Meissner and Saidara (Ans. 12-14).
I.
Issue
The Examiner has rejected claims 1---6 and 12-19 as anticipated by
Kovelman (Ans. 3---6), and has rejected claims 1---6 and 12-20 as obvious in
view of Kovelman and Saidara (Ans. 10-12). The same issue is dispositive
for both of these rejections, and we will consider them together.
The issue presented is: Does the evidence of record support the
Examiner's finding that Kovelman discloses a meter adapted to determine an
analyte concentration that comprises all of the elements of claim 1?
Findings of Fact
1. The Examiner finds that Kovelman discloses "a glucose
monitor and infusion device comprising a display with several selectable
keys (icons) that includes an alarm that may be activated" (Ans. 6, citing
Kovelman i-fi-122--44 and Fig. 1 ).
2. The Examiner finds that the term "'icon' is not defined in the
specification and is interpreted as encompassing switches, buttons, keys and
other related terms" (Ans. 5). "Thus an icon representing a pre-meal marker
has been interpreted to be an icon, switch or button. The phrase 'visually
4 Saidara et al., US 7,399,277 B2, issued July 15, 2008 ("Saidara").
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representing a pre-meal marker' does not impart any structural features in
the icon that differentiates the icon from the icons, buttons or keys of the
prior art" (id.).
3. Kovelman discloses a medical device, such as a glucose
monitor or glucose meter, that includes "at least one programmable medical
device feature, at least one alarm to remind the patient about the ... feature,
and at least one reminder check to allow the patient to deactivate the at least
one alarm" (Kovelman i-f 6).
4. Figure 1 of Kovelman is shown below:
Figure 1 shows "a perspective view ... of an infusion device" (id. i-f 13).
"[E]xternal infusion device 10 is an external infusion pump that is
programmed through a keypad 24" (id. i-f 20). "Feedback from the external
infusion device 10 on status or programming changes are displayed on an
LCD 28 . ... [T]he keypad 24 may be omitted and the LCD 28 may be used
as a touch screen input device" (id. i-f 20).
5. Kovelman discloses that the "infusion device includes an alarm
to notify the user of a potentially missed meal bolus at predetermined times
of the day" (id. ,-r 27).
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6. Figure 3 of Kovelman is shown below:
Figure 3 shows "a flow diagram of setting the bolus alarm S2" (id. i-f 29).
"Once the alarm to be set is selected in step S4, the user sets the time for the
alarm at step S6." (id. i-f 30.)
Analysis
We agree with the Examiner's finding that Kovelman discloses the
meter of claim 1. Claim 1 is directed to a meter with a display that includes
an icon visually representing a pre-meal marker and an icon visually
representing a post-meal test-time alarm, where selection of the pre-meal
icon results in display of the post-meal test time alarm icon and selection of
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Application 11/989,815
the post-meal test-time alarm icon activates an alarm. The Examiner
interprets icon to include "an icon, switch or button" (FF 2).
Kovelman discloses a programmable medical device that includes an
alarm, a display, and a keypad to program the alarm (FFs 3-5). Kovelman
also discloses that the display can be a touch screen input device (FF 4) that
takes the place of, and therefore allows the same selections as, the keypad.
Kovelman discloses that, to set the alarm, the user selects the alarm
and the time for the alarm; i.e., through a series of icon selections in the
display (FF 6). Thus, Kovelman discloses a device that displays a first icon,
to allow selection of an alarm, where selection of that icon allows the user to
set the time for the alarm, resulting in activation of an alarm that will sound
after a predetermined amount of time.
Appellants argue that Kovelman does not disclose a glucose meter
that displays both "an icon visually representing a pre-meal marker" and "an
icon visually representing a post-meal test-time alarm" as required by claim
1 (App. Br. 13). Appellants argue that the Specification "supports an
interpretation where the phrases 'pre-meal marker icon' and 'post-meal test-
time alarm icon' denote an actual state of operability that fundamentally ties
together the constituent parts of the meter (e.g., the interoperability of the
claimed alarm mechanism, display, and user input mechanism)" (id. at 14,
citing the Spec. at i-fi-f 10-13). Appellants argue that the Examiner's assertion
that the "claimed icons could be interpreted to include a mechanical button
or a mechanical switch is inconsistent with any reasonable interpretation at
which one of ordinary skill in the art would arrive" (id. at 15) and "is not
consistent with the use of 'icon"' in the Specification (id. at 16).
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Appellants' arguments are not persuasive. Claim 1 states that
selection of the pre-meal marker icon results in the display of a post-meal
test-time alarm icon, selection of which in tum results in activation of the
post-meal test-time alarm. The Specification states that the "post-meal test-
time alarm ... is adapted to remind a user to test his or her blood glucose
concentration after a meal. . . . While some meters provide the capability to
program test-time alarms, the present invention automatically ties the alarm
to a meal marker and provides for the alarm to go off after a predetermined
amount of time." (Spec. i-f 10.)
However, the Specification does not describe any function that would
require the "pre-meal marker icon" to be used before a meal, or any function
that would require the "post-meal test-time alarm" to be set for a time after a
meal. We agree with the Examiner that the broadest reasonable
interpretation of the term "an icon visually representing a pre-meal marker"
requires an indicator (icon) that allows the user to set the timing for a later
alarm, and "an icon visually representing a post-meal test-time alarm"
requires an indicator (icon) that an alarm has been set.
Although Appellants argue that "the phrases 'pre-meal marker icon'
and 'post-meal test-time alarm icon' denote an actual state of operability that
fundamentally ties together the constituent parts of the meter" (App. Br. 14),
claim 1 simply requires that selection of the pre-meal marker icon results in
display of the post-meal test-time alarm icon, and selection of the latter
results in an alarm after a pre-determined amount of time. While the
functions of the two icons are therefore related to each other, neither the
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Application 11/989,815
claim language nor the Specification requires their use at particular times
relative to meals.
Appellants argue that Kovelman does not disclose icons having the
functions required by claim 1 for a "pre-meal marker icon" and a "post-meal
test-time alarm icon" (App. Br. 13). Appellants argue that Kovelman's
"infusion device includes an alarm to notify the user of a missed meal bolus
at predetermined times of the day" but "these teachings do not disclose
anything in the nature of icons visually indicating a pre-meal marker or a
post-meal test-time alarm, or automatically generating an alarm after a
predetermined amount responsive to selection of the post-meal test-time
alarm icon" (App. Br. 16).
Appellants' arguments are not persuasive. Kovelman' s device
includes an alarm, a display, which can be a touch screen input device, and
possibly a keypad, where either the touch screen or the keypad is used to
program the alarm (FFs 3--4). Kovelman discloses that, to set the alarm, the
user selects the alarm and the time for the alarm; i.e., through a series of icon
selections in the display (FF 6). Thus, Kovelman's device displays a first
icon, either on a touch screen or as a symbol on the keypad, where selection
of the icon results in the display of a second icon, and where selection of the
second icon results in the device generating an alarm after a predetermined
amount of time. Thus, Kovelman discloses the device of claim 1.
Appellants argue essentially the same limitations with regard to claim
12 but, for the same reasons as for claim 1, we agree with the Examiner that
Kovelman discloses all of the elements of claim 12.
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Thus, we affirm the rejection of claims 1 and 12 under 35 U.S.C.
§ 102( e ). Claims 2---6 have not been argued separately and therefore fall
with claim 1. See 37 C.F.R. § 41.37(c)(l)(iv).
Appellants also argue that "the Final Action does not address the
limitations" of claims 16-18 (App. Br. 18-19).
The Examiner responds by explaining his interpretation of claims 16-
18 and pointing to disclosures in Kovelman that, in his view, meet the
broadest reasonable interpretation of those claims (Ans. 25-27).
Appellants argue that the Examiner has misinterpreted the claims
(Reply Br. 9), but do not point to any evidence showing that the Examiner's
interpretation is unreasonably broad. Appellants therefore have not provided
a reasoned basis for concluding that the Examiner's interpretation goes
beyond the broadest reasonable interpretation in light of the Specification.
Appellants also argue that, because of the assertedly erroneous claim
interpretation, the Examiner still has not pointed to evidence that Kovelman
anticipates claim 16 (id.). Appellants argue that the rejection of claims 17
and 18 on the same basis suffers from the same deficiency (id.). 5
Because Appellants have not persuasively shown that the Examiner's
claim interpretation is in error, however, their conclusory argument that
Kovelman does not disclose the limitations of claims 16-18 is unpersuasive.
Appellants, in effect, merely assert that the limitations are not shown in
5 Appellants also assert that the explanation, in the Answer, of the basis for
rejecting claims 16-18 amounts to a new ground of rejection (Reply Br. 3),
but also acknowledge that that issue is one that can only be addressed by
way of petition (id.). Appellants did not petition to have the rejection of
claims 16-18 designated a new ground of rejection.
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Application 11/989,815
Kovelman, without providing any reasoned basis for concluding that the
Examiner's finding is incorrect. Cf 37 C.F.R. § 41.37(c)(l)(iv) ("A
statement which merely points out what a claim recites will not be
considered an argument for separate patentability of the claim.").
The Examiner has also rejected claims 1---6 and 12-20 under
35 U.S.C. § 103(a) as obvious in view ofKovelman and Saidara (Ans. 10-
12). Appellants do not present any arguments based on Saidara (see App.
Br. 18). Thus, we affirm the rejection of claims 1---6 and 12-20 as being
obvious in view of Kovelman and Saidara.
Conclusion of Law
The evidence of record supports the Examiner's finding that
Kovelman discloses the meter of claim 1.
II.
Issue
The Examiner has rejected claims 1---6 and 12-19 or 20 as anticipated
by Meissner (Ans. 3---6). The Examiner has also rejected claims 1-6 and 12-
20 as obvious in view of Meissner and Saidara (Ans. 12-14). The same
issue is dispositive for both of these rejections, and we will consider them
together.
The issue presented is: Does the evidence of record support the
Examiner's finding that Meissner discloses the device of claim 1?
Findings of Fact
7. The Examiner finds that Meissner discloses "a device
comprising an alarm in which a setting switch allows the user to select a
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Application 11/989,815
clock for which an alarm [is] to be set. ... The device includes keys ( eg
buttons) and/or switches for setting the time and alarm functions" (Ans. 9,
citing Meissner i-f 24 and Fig. 2). The Examiner finds that "Meissner
discloses that active alarms can be denoted by a marker having a different
shape or color than alarms that are set but not active" (Ans. 9, citing
Meissner i-f 38). The Examiner finds that the "active clock can be indicated
by a change in color, change in lighting, flashing graphics etc." (Ans. 9,
citing Meissner i-f 39.)
8. Meissner discloses "a device for assisting a person having a
medical condition and/or a caregiver to manage food and medicine intake"
(Meissner i-f 13).
9. Figure 2 of Meissner is shown below:
Figure 2 shows an "embodiment of the assistive device" (Meissner i-f 34 ).
"The device ... comprises a face which might comprise a glass-covered
liquid crystal display" (Meissner i-f 35). "The face of the device includes
several clock faces 202 of the 12 hour type. Each clock face displays a
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Application 11/989,815
current time and further includes a marker 204 indicating an alarm setting"
(Meissner i-f 3 5).
10. Meissner discloses that "the device also includes keys (e.g.,
buttons) and/or switches for setting the time and alarm functions.
Particularly, setting switch 206 to 'set alarm' or 'set clock' in conjunction
with actuation of keys 208, 210, 212 allows the user to set the time or an
alarm" (Meissner i-f 39). "Actuation of key 214 allows the user to select the
clock for which an alarm is to be set. The active clock can be indicated by a
change in color, change in lighting, flashing graphic, etc." (Meissner i-f 39).
"Actuation of key 216 allows the user to tum an alarm on or off for the
currently selected clock" (Meissner i-f 39).
Analysis
We agree with the Examiner that Meissner anticipates claim 1.
Meissner discloses a device for assisting a person to manage the intake of
food and medicine (FF 8). Meissner's device comprises a display that
includes several clock faces that each display a current time and a marker
indicating an alarm setting (FF 9). Meissner discloses that the device also
includes keys, buttons or switches for setting the time and alarm functions of
the clocks (FF 10). In particular, Meissner discloses that actuation of key
214 allows the user to select a clock, where the active clock can be indicated
by a change in color or lighting (FF 10). Meissner discloses that actuation
key 216 allows the user to tum on the alarm for the currently selected clock
(FF 10). Thus, in Meissner, a particular clock face corresponds to the claim
1 limitation of an icon representing a pre-meal marker, where selection of
the clock causes a second icon to display, i.e., a flashing or colored clock
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Application 11/989,815
face, which corresponds to the claim limitation of an icon visually
representing a post-meal test-time alarm. Selection of the flashing or
colored clock face with actuation key 216 results in the alarm being turned
on, which meets the claim 1 limitation that, "upon selection of the post-meal
test-time alarm icon via the at least one user input mechanism, the alarm
mechanism responsively generates the post-meal test-time alarm after a
predetermined amount of time."
Appellants argue that Meissner does not disclose a meter with a
display that displays both "an icon visually representing a pre-meal marker"
and "an icon visually representing a post-meal test-time alarm," performing
the functions required by claim 1 (App. Br. 13).
Appellants' argument is not persuasive. As discussed above, the
broadest reasonable interpretation of the terms "an icon visually representing
a pre-meal marker" and "an icon visually representing a post-meal test-time
alarm" that is consistent with the Specification is that these terms require a
displayed item with the particular functions recited in claim 1. Meissner's
device includes icons (i.e., clock faces that change appearance upon
selection) that perform those functions. Appellants argue essentially the
same limitations with regard to claim 12 but, for the same reasons as for
claim 1, we agree with the Examiner that Meissner discloses all of the
elements of claim 12.
Thus, we affirm the rejection of claims 1 and 12 under 35 U.S.C.
§ 102( e) in view of Meissner. Claims 2---6 and 13-20 have not been argued
separately and therefore fall with claims 1 and 12. See 37 C.F.R.
§ 41.37(c)(l)(iv).
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Appellants also argue "the Final Action does not address the
limitations" of claims 16-18 (App. Br. 18-19).
The Examiner responds by explaining his interpretation of claims 16-
18 and pointing to disclosures in Meissner that, in his view, meet the
broadest reasonable interpretation of those claims (Ans. 25-27).
Appellants argue that the Examiner has misinterpreted the claims
(Reply Br. 9), but do not point to any evidence showing that the Examiner's
interpretation is unreasonably broad. Appellants therefore have not provided
a reasoned basis for concluding that the Examiner's interpretation goes
beyond the broadest reasonable interpretation in light of the Specification.
Appellants also argue that, because of the assertedly erroneous claim
interpretation, the Examiner still has not pointed to evidence that Meissner
anticipates claim 16 (id.). Appellants argue that the rejection of claims 17
and 18 on the same basis suffers from the same deficiency (id.). 6
Because Appellants have not persuasively shown that the Examiner's
claim interpretation is in error, however, their conclusory argument that
Meissner does not disclose the limitations of claims 16-18 is unpersuasive.
Appellants, in effect, merely assert that the limitations are not shown in
Meissner, without providing any reasoned basis for concluding that the
Examiner's finding is incorrect. Cf 37 C.F.R. § 41.37(c)(l)(iv) ("A
6 Appellants also assert that the explanation in the Answer of the basis for
rejecting claims 16-18 amounts to a new ground of rejection (Reply Br. 3),
but also acknowledge that that issue is one that can only be addressed by
way of petition (id.).
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statement which merely points out what a claim recites will not be
considered an argument for separate patentability of the claim.").
The Examiner has also rejected claims 1---6 and 12-20 as obvious in
view of Meissner and Saidara (Ans. 12-14). Appellants have waived
arguments directed to Saidara (App. Br. 18). Thus, we affirm the rejection
of claims 1---6 and 12-20 as being obvious in view of Meissner and Saidara.
Conclusion of Law
The evidence of record supports the Examiner's finding that Meissner
discloses the meter of claim 1.
SUMMARY
We affirm the rejection of claims 1---6 and 12-19 under 35 U.S.C.
§ 102( e) in view of Kovelman.
We affirm the rejection of claims 1---6 and 12-20 under 35 U.S.C.
§ 102( e) in view of Meissner.
We also affirm the rejection of claims 1---6 and 12-20 under 35 U.S.C.
§ 103(a) in view of Kovelman and Saidara.
We also affirm the rejection of claims 1---6 and 12-20 under 35 U.S.C.
§ 103(a) in view of Meissner and Saidara.
TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED
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