Verily Life Sciences LLC

Patent Trials and Appeals Board

Apr 15, 2021

2020000015 (P.T.A.B. Apr. 15, 2021)

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.
15/945,286 04/04/2018 William Biederman 101146-1082750-023US2 6738
139501 7590 04/15/2021
Verily / Kilpatrick Townsend & Stockton LLP
Mailstop: IP Docketing - 22
1100 Peachtree Street, Suite 2800
Atlanta, GA 30309
EXAMINER
HU, RUI MENG
ART UNIT PAPER NUMBER
2643
NOTIFICATION DATE DELIVERY MODE
04/15/2021 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):
KTSDocketing2@kilpatrick.foundationip.com
ipefiling@kilpatricktownsend.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte WILLIAM BIEDERMAN

Appeal 2020-000015
Application 15/945,286
Technology Center 2600

Before ALLEN R. MacDONALD, JEAN R. HOMERE, and
JAMES B. ARPIN, Administrative Patent Judges.

HOMERE, Administrative Patent Judge.

DECISION ON APPEAL
I. STATEMENT OF THE CASE1
Pursuant to 35 U.S.C. § 134(a), Appellant appeals from the
Examiner’s rejection of claims 1–20, all of the claims pending.2 Appeal
Br. 2. Claims App. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.

1 We refer to the Specification filed Apr. 4, 2018 (“Spec.”); the Final Office
Action, mailed Nov. 2, 2018 (“Final Act.”); the Appeal Brief, filed May 6,
2019 (“Appeal Br.”); the Examiner’s Answer, mailed Aug. 2, 2019 (“Ans.”);
and the Reply Brief, filed Sept. 30, 2019 (“Reply Br.”).
2 “Appellant” refers to “applicant” as defined in 37 C.F.R. § 1.42(a).
Appellant identifies Verily Life Sciences, LLC, as the real party in interest.
Appeal Br. 1.
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II. CLAIMED SUBJECT MATTER
According to Appellant, the claimed subject matter relates to single
use wearable glucose sensor (101) including radio frequency (RF) rectifier
(116) applying current to switch (112) to enable power to flow from power
supply (110) to processor (102). Spec. ¶ 6, Fig. 1A. Figure 1A, reproduced
and discussed below, is useful for understanding the claimed subject matter:

Figure 1A above illustrates wearable glucose device (101) including RF
rectifier (116) applying current to switch (112) to enable power to flow from
power supply (110) to processor (102). Spec. ¶¶ 5, 29.

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In particular, upon receiving a Near Field Communication (NFC)
signal from NFC antenna (114), RF rectifier (116) generates a current, which
it applies to switch (112) to change the state thereof causing power to flow
from power supply (110) to processor (102) to store in memory (104) data
received from blood glucose sensor (106) and to then transmit the sensor
data to a remote device via NFC antenna (114). Id.
Claims 1, 10, and 15 are independent. Claim 1, reproduced below
with disputed limitations emphasized, is illustrative:
1. A wearable glucose sensor device comprising:
a power supply;
a first antenna;
a radio frequency (RF) rectifier electrically coupled to the first
antenna to generate a current based on a first signal received from the
first antenna;
a sensor terminal adapted to electrically couple to a sensor;
a memory configured to store data received via the sensor terminal;
an electronic switch coupled between the power supply and the
sensor to control electrical connection between the power supply and
the sensor, wherein the RF rectifier is further coupled to the electronic
switch to apply the current to the electronic switch to change a state
of the electronic switch; and
a network interface coupled to the memory, the network
interface activated by a second signal to transmit data stored in the
memory to a remote device.
Appeal Br. 21 (Claims App.) (Emphasis added).
III. REFERENCES
The Examiner relies upon the following references.3
Name Reference Date
Yarger US 2014/0313052 A1 Oct. 23, 2014

3 All reference citations are to the first named inventor only.
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Name Reference Date
Fripp US 2015/0075770 A1 Mar. 19, 2015
DeHennis US 2016/0242685 A1 Aug. 25, 2016
Kong US 2017/0040818 A1 Feb. 9, 2017
IV. REJECTIONS
The Examiner rejects claims 1–20 as follows:
Claims 1–7, 9, and 15–19 are rejected as obvious under 35 U.S.C.
§ 103 over the combination of DeHennis and Fripp. Final Act. 5–11.
Claims 8 and 20 are rejected as obvious under 35 U.S.C. § 103 over
the combination of DeHennis, Fripp, and Yarger. Id. at 11–12.
Claims 10–13 are rejected as obvious under 35 U.S.C. § 103 over the
combination of DeHennis, Fripp, and Kong. Id. at 8–11.
Claim 14 is rejected as obvious under 35 U.S.C. § 103 over the
combination of DeHennis, Fripp, Kong, and Yarger. Id. at 15.
V. ANALYSIS
Claim 1
We consider Appellant’s arguments seriatim, as they are presented in
the Appeal Brief, pages 14–20 and the Reply Brief, pages 1–3.4 We are not
persuaded by Appellant’s contentions. Except as otherwise indicated herein
below, we adopt as our own the findings and reasons set forth in the Final
Action, and the Examiner’s Answer in response to Appellant’s Appeal Brief.

4 We have considered in this Decision only those arguments Appellant
actually raised in the Briefs. Arguments not made are forfeited. See
37 C.F.R. § 41.37(c)(1)(iv) (2017).
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Final Act. 2–17; Ans. 3–21. However, we highlight and address specific
arguments and findings for emphasis as follows.
Appellant argues that the Examiner errs in rejecting claims 1–7, 9, and
15–19 as obvious over the combination of DeHennis and Fripp. Appeal
Br. 14. In particular, Appellant argues that Fripp is not analogous art because
it pertains to oil drilling technology, and more particularly to wireless
activation of downhole tools, whereas the field of endeavor for the claimed
subject matter relates to a wearable biometric sensor for monitoring
physiological conditions of a user. Id. at 15 (citing Fripp ¶¶ 2, 113).
According to Appellant, oil rig technology is significantly different because
it involves hundreds or thousands of meters into the Earth, and it would use
much higher power than a wearable biometric sensor would. Id.at 15–16.
Further, Appellant argues that Fripp’s concern regarding power consumption
of downhole tools in an oil rig is not reasonably pertinent to the problem of
wearable electronic device faced by the inventor. Id. at 16. Additionally,
Appellant argues that the DeHennis-Fripp combination is based on
impermissible hindsight. Id. at 17. More particularly, Appellant argues that
the Examiner’s motivation (“reducing unnecessary processing to extract
some command signals by using direct current generated by the rectifier to
directly control the switch 464 to reduce unnecessary battery power
consumption”) in support of the proposed combination is drawn from
Appellant’s own Specification. Id.
We are not persuaded by Appellant’s argument that Fripp is non-
analogous art, and, therefore, that Fripp cannot be properly used in the
proffered combination. “Whether a reference in the prior art is ‘analogous’ is
a fact question.” In re Clay, 966 F.2d 656, 658 (Fed. Cir. 1992) (citing
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Panduit Corp. v. Dennison Mfg. Co., 810 F.2d 1561, 1568 n.9 (Fed. Cir.
1987)).
Two criteria have evolved for answering the analogous art
question: (1) whether the art is from the same field of endeavor,
regardless of the problem addressed, and (2) if the reference is
not within the field of the inventor’s endeavor, whether the
reference still is reasonably pertinent to the particular problem
with which the inventor is involved.
Id. at 658–59 (citing In re Deminski, 796 F.2d 436, 442 (Fed. Cir. 1986); In
re Wood, 599 F.2d 1032, 1036 (CCPA 1979)).
We agree with the Examiner that the cited Fripp’s solution is directed
to the same problem with which Appellant’s claimed subject matter is
concerned. Ans. 14. As correctly noted by the Examiner, both Appellant’s
claimed subject matter and Fripp are concerned with using the well-known
and widely used technique of short range wireless RF communication to
solve the problem of power consumption, albeit in disparate environments.
Id. at 14, 16, 17 (citing Spec. ¶ 2, Fripp ¶ 2). As further correctly noted by
the Examiner, the solution of transmitting a wireless RF trigger signal to an
antenna to save battery power is a widely used technique independently of a
particular technological field. Id. at 17. Because Fripp’s solution pertains to
the particular problem with which Appellant’s claimed subject matter is
involved, we are thus satisfied that Fripp qualifies as analogous art. See
Donner Tech., LLC v. Pro Gear, LLC, 979 F.3d 1353 (2020).
Further, we are not persuaded by Appellant’s argument that the
Examiner’s proposed reason to combine the teachings of Fripp with those of
DeHennis is insufficient, thereby rendering the proposed combination
improper. The U.S. Supreme Court has held “[t]he combination of familiar
elements according to known methods is likely to be obvious when it does
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no more than yield predictable results.” KSR Int’l Co. v. Teleflex, Inc., 550
U.S. 398, 416 (2007). The Court further instructs that:
Often, it will be necessary for a court to look to interrelated
teachings of multiple patents; . . . and the background
knowledge possessed by a person having ordinary skill in the
art, all in order to determine whether there was an apparent
reason to combine the known elements in the fashion claimed
by the patent at issue.
Id. at 418.
The Court also instructs that:
“[R]ejections on obviousness grounds cannot be sustained by
mere conclusory statements; instead, there must be some
articulated reasoning with some rational underpinning to
support the legal conclusion of obviousness”. . . . [H]owever,
the analysis 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.
Id. (citation omitted).
In addition, the Court instructs, “if a technique has been used to
improve one device, and a person of ordinary skill in the art would recognize
that it would improve similar devices in the same way, using the technique is
obvious unless its actual application is beyond his or her skill.” Id. at 417.
This precedent controls, and the application of the cited legal principles to
the facts of this appeal provide us with the necessary guidance in affirming
this obviousness rejection. The Examiner relies upon Fripp to teach the
technique of “using an external wireless RF trigger signal to control the
switch 230 for disconnecting or connecting the onboard battery 204 to the
onboard circuit.” Ans. 18 (citing Fripp, Figs. 2, 3). Accordingly, the
Examiner concludes that, at the time of invention, combining Fripp’s
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teachings with those of DeHennis to achieve the claimed device would have
been obvious to the ordinarily skilled artisan because it would have yielded
the “predictable result that the sensor 100 may take measurements whenever
the external wireless RF trigger signal is applied, while the external wireless
RF trigger signal can be weak that is simply enough to turn on the switch
230, thus at times, strong input wireless RF signal of DeHennis for
harvesting sufficient energy and powering onboard circuits is not required.”
Id. at 18. We agree with the Examiner that the proposed combination of the
teachings of DeHennis and Fripp is supported by a preponderance of the
evidence, and the ensuing conclusion of obviousness is consistent with
controlling authorities.
We find the ordinarily skilled artisan, being “a person of ordinary
creativity, not an automaton,” would have been able to fit the cited teachings
of DeHennis and Fripp together like pieces of a puzzle to predictably result
in the wearable glucose sensing device using RF technology to reduce
battery consumption, as recited in the rejected claims. KSR, 550 U.S. at 421.
Further, although it is necessary for an Examiner to identify a reason for
modifying the familiar elements obtained from the prior art in establishing a
prima facie case of obviousness, so long as the Examiner provides an
articulated reasoning with some rational underpinning to conclude the claim
is obvious, such a conclusion is proper. In this case, the afore-cited rationale
provided by the Examiner is more than just a mere conclusory statement. In
our view, such a statement suffices as an articulated reason with a rational
underpinning to support the proffered combination. As noted above, the
Examiner may look to the state of the prior art, including the knowledge of
the ordinarily skilled artisan, to arrive at such a reason for combining the
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known elements of the prior art. Consequently, the Examiner’s reliance upon
available knowledge to arrive at an articulated reason with a rational
underpinning to support the proffered combination is proper in rejecting
claim 1. Accordingly, we sustain the Examiner’s rejection of claim 1.
Claim 4
Appellant argues that the combination of DeHennis and Fripp does
not teach or suggest a second antenna as recited in claim 4. Appeal Br. 18–
19. According to Appellant, DeHennis discloses a single antenna (COIL1)
that contacts a terminal (COIL2). Id. (citing DeHennis ¶ 46). Appellant’s
arguments are not persuasive of Examiner error because they focus solely on
DeHennis’s teachings, whereas the Examiner relies upon Fripp to teach the
first antenna and further relies upon DeHennis to teach the second antenna.
Ans. 19–20. Accordingly, we sustain the Examiner’s rejection of claim 4.
Claims 2, 3, and 5–20
Regarding the rejections of claims 2, 3, and 5–20, Appellant does not
present separate patentability arguments or reiterates substantially the same
arguments as those discussed above for the patentability of claims 1 and 4.
As such, claims 2, 3, and 5–20 fall therewith. See 37 C.F.R.
§ 41.37(c)(1)(iv).
VI. CONCLUSION
On this record, we affirm the Examiner’s rejections of claims 1–20.

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VII. DECISION SUMMARY
In summary:
Claim(s)
Rejected
35
U.S.C. §
Reference(s)/Basis Affirmed Reversed
1–7, 9, 15–19 103 DeHennis, Fripp 1–7, 9, 15–19
8, 20 103 DeHennis, Fripp,
Yarger
8, 20
10–13 103 DeHennis, Fripp,
Kong
10–13
14 103 DeHennis, Fripp,
Yarger
14
Overall
Outcome
1–20
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). See 37 C.F.R.
§ 1.136(a)(1)(iv).
AFFIRMED