Ex parte Rosenthal

Board of Patent Appeals and Interferences

May 27, 1999

08190227 (B.P.A.I. May. 27, 1999)

Application for patent filed February 01, 1994. 1
According to the appellant, this application is a continuation
-in- part of 08/007,967, filed 01/22/93, now U.S. Patent No.
5,576,544, which is a continuation of 07/717,198, filed
06/18/91, now U.S. Patent 5,204,532, which is a continuation -
in- part of 07/682,249, filed 04/09/91, now U.S. Patent No.
5,068,536, which is a continuation -in- part of 07/565,302,
filed 08/10/90, now U.S. Patent No. 5,077,476, which is a
continuation -in- part of 07/544,580, filed 06/27/90, now U.S.
Patent 5,086,229, which is a continuation -in- part of
07/298,904, filed 01/19/89, now U.S. Patent No. 5,028,787.
1
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered today
(1) was not written for publication in a law journal and
(2) is not binding precedent of the Board.
Paper No. 16
UNITED STATES PATENT AND TRADEMARK OFFICE
_____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________
Ex parte ROBERT D. ROSENTHAL

_____________
Appeal No. 96-2855
Application 08/190,2271
______________
ON BRIEF
_______________
Before THOMAS, JERRY SMITH, and HECKER Administrative Patent
Judges.
Appeal No. 96-2855
Application No. 08/190,227
2
HECKER, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the final
rejection of claims 1 through 6, all of the claims pending in
the present application.
The invention relates to a procedure for verifying
the accuracy of a non-invasive blood glucose measurement
instrument through the use of an invasive (in-vitro)
measurement instrument. Representative independent claim
6 is reproduced as follows:
6. A procedure for verifying the accuracy of a non-
invasive blood glucose measurement instrument, comprising the
steps of:
taking a first blood glucose measurement of a user
with a measurement instrument whose accuracy has been
independently verified;
taking a second blood glucose measurement of said
user with said non-invasive measurement instrument; and
comparing said second measurement with said first
measurement in order to determine the accuracy of said non-
invasive measurement instrument.
The Examiner relies on the following reference:
Regimand Re. 34,070 Sep. 22, 1992
Appeal No. 96-2855
Application No. 08/190,227
3
(effectively filed Jul. 29,
1988)
Claims 1 through 6 stand rejected under 35 U.S.C.
§ 103 as being unpatentable over Regimand.
Rather than reiterate the arguments of Appellant and
the Examiner, reference is made to the brief, reply brief and
answer for the respective details thereof.
OPINION
We will not sustain the rejection of claims 1
through 6 under 35 U.S.C. § 103.
ANALOGOUS ART
Appellant argues in the Reply Brief:
First, the Answer has failed to establish
that the Regimand neutron gauges for detecting the
asphalt content of bituminous paving mix are in the
same field as the present invention, which relates
to non-invasive quantitative measurement of analytes
in the blood. There is no evidence of record that
one skilled in the art of non-invasive biochemical
analysis would look to the industrial neutron gauge
art for solutions to problems encountered in that
field.
In determining whether a claim would have been
obvious at the time of the invention, the Examiner must first
Appeal No. 96-2855
Application No. 08/190,227
4
determine the scope and content of the prior art. Graham v.
John Deere
Co., 383 U.S. 1, 17, 148 USPQ 459, 467 (1966). "Although §
103 does not, by its terms, define the 'art to which [the]
subject matter [sought to be patented] pertains,' this
determination is frequently couched in terms of whether the
art is analogous or not, i.e., whether the art is 'too remote
to be treated as prior art.'" In re Clay, 966 F.2d 656, 658,
23 USPQ2d 1058, 1060 (Fed. Cir. 1992) (citing In re Sovish,
769 F.2d 738, 741, 226 USPQ 771, 773 (Fed. Cir. 1985)).
In making this determination, we must consider two
criteria. First, it must be determined if the prior art is
from the same field of endeavor, regardless of the problem
addressed. Secondly, even if the prior art is not in the same
field of endeavor, it must be determined whether the reference
still is reasonably pertinent to the particular problem with
which the inventor is involved. In re Clay, supra, 966 F.2d
at 658-659, 23 USPQ2d at 1060.
The Examiner states (Answer at page 4):
The instant invention belongs to the prior
art of clinical analytical chemistry and calibration
and accuracy are [a] mainstay of the field.
Appeal No. 96-2855
Application No. 08/190,227
5
However, Regimand cannot be considered to be within
Appellant’s field of endeavor merely because both relate to
analytical chemistry. Regimand measures asphalt content using
a neutron source and detector. Appellant measures glucose
in blood using a near-infrared energy source and detector. We
find measuring blood content to be a totally different field
than measuring asphalt content. We are not inclined to hold,
as the Examiner contends, that any or all chemical analysis
should be
considered the same field of endeavor. This is especially so
without any evidentiary support.
However, Regimand may still be analogous if it is
"reasonably pertinent to the particular problem with which the
inventor is involved." Id. See also In re Paulsen, 30 F.3d
1475, 1481, 31 USPQ 2d 1671, 1675-76 (Fed. Cir. 1994). A
reference is reasonably pertinent if, even though it may be in
a different field from that of the inventor’s endeavor, it is
one which, because of the matter with which it deals,
logically would have (not could have) commended itself to an
inventor’s attention in considering his problem. Thus the
Appeal No. 96-2855
Application No. 08/190,227
6
purposes of both the invention and the prior art reference are
important in making this determination.
Regimand calibrates field gauges by transferring
calibration data via a master gauge (column 3, lines 3-11).
At column 5, lines 64-67, Regimand states “This calibration
procedure would be carried out whenever calibration is
required, such as due to the use of a new type or variation of
paving mix.” With respect to Appellant’s invention, at page
4, lines 26-34 of the specification it recites with respect to
non-invasive blood glucose measurement instruments:
Although such instruments are very
accurate, there may arise a need due to regulatory
regulations or other circumstances to independently
verify the accuracy of such instruments. The
procedure of the present invention permits the
accuracy of non-invasive instruments to be
periodically checked in a quick and easy manner.
The instrument can be used after the accuracy check
only if the measured accuracy is within preset
limits.
We find the purpose of Regimand to be quite
different than that of Appellant. Transferring calibration
data to field instruments, due to a new asphalt mix
Appeal No. 96-2855
Application No. 08/190,227
7
(Regimand), is not reasonably pertinent to Appellant’s
checking non-invasive blood glucose measurement field
instruments for accuracy, as claimed. Similarly, the asphalt
calibration approach of Regimand does not logically commend
itself to an inventor’s attention concerning the calibration
of non-invasive blood glucose measurement field instruments of
the type claimed.
Thus, we find that Regimand is not reasonably
pertinent and is non analogous art. Therefore, we will not
sustain the rejection of claims 1 through 6.
We have not sustained the rejection of claims 1
through 6 under 35 U.S.C. § 103. Accordingly, the Examiner's
decision is reversed.
REVERSED
Appeal No. 96-2855
Application No. 08/190,227
8
James D. Thomas )
Administrative Patent Judge )
)
)
) BOARD OF
)
Jerry Smith ) PATENT
Administrative Patent Judge )
) APPEALS AND
)
) INTERFERENCES
Stuart N. Hecker )
Administrative Patent Judge )

dm
Rothwell, Figg, Ernst & Kurz
Suite 701-E, 555 13th Street, N.W.
Washington, D.C. 20004