Ex Parte 8140663 et alDownload PDFPatent Trial and Appeal BoardSep 15, 201690013105 (P.T.A.B. Sep. 15, 2016) Copy Citation UNITED STATES PATENT AND TRADEMARKOFFICE 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. 90/013,105 02/05/2014 8140663 1737.563REX6 1045 60683 7590 09/15/2016 Robert Bosch LLC 1800 W. Central Road Mount Prospect, IL 60056 EXAMINER MENEFEE, JAMES A ART UNIT PAPER NUMBER 3992 MAIL DATE DELIVERY MODE 09/15/2016 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 STEPHEN J. BROWN ____________________ Appeal 2016-000698 Reexamination Control 90/013,105 Patent 8,140,663 B2 Technology Center 3900 ____________________ Before MARC S. HOFF, ERIC B. CHEN, and JUSTIN T. ARBES, Administrative Patent Judges. HOFF, Administrative Patent Judge. DECISION ON REQUEST FOR REHEARING Appeal 2016-000698 Reexamination Control 90/013,105 Patent No. 8,140,663 B2 2 INTRODUCTION Patent Owner requests rehearing of our Decision mailed April 1, 2016 (“Decision”), in which we affirmed the rejection of claims 16, 17, 36, and 37.1 OPINION We will maintain the rejections. PRINCIPLES OF LAW 37 C.F.R. § 41.52 states in relevant part (emphasis added): (a)(1) Appellant may file a single request for rehearing within two months of the date of the original decision of the Board. . . . The request for rehearing must state with particularity the points believed to have been misapprehended or overlooked by the Board. Arguments not raised, and Evidence not previously relied upon, are not permitted in the request for rehearing except as permitted by paragraphs (a)(2) through (a)(4) of this section. . . . (2) Appellant may present a new argument based upon a recent relevant decision of either the Board or a Federal Court. (3) New arguments responding to a new ground of rejection designated pursuant to § 41.50(b) are permitted. (4) New arguments that the Board’s decision contains an undesignated new ground of rejection are permitted. PROSECUTION HISTORY The Examiner, in the Decision Granting Ex Parte Reexamination mailed February 20, 2014 (“Reexam. Grant.”), found a substantial new 1 Claims 1, 5, 22, 34, and 35 were conditionally confirmed by the Examiner. Decision 1; Final Action, mailed January 29, 2015, at 5 (“Final Act.”). Appeal 2016-000698 Reexamination Control 90/013,105 Patent No. 8,140,663 B2 3 question of patentability (SNQ) with regard to claims 16, 17, 36, and 37 over the combination of Chaco, Wright, and Evers PCT, or alternatively over Evers PCT and Wright. Reexam. Grant. 10. Claims 16 and 17 depend from independent claim 5. Claims 36 and 37 depend from independent claim 22. The Examiner also found a SNQ with regard to claims 1, 5, and 22 concerning obviousness-type double patenting over Brown ’440 in combination with Wright. Reexam. Grant. 13. Subsequently, the Examiner rejected claims 16, 17, 36, and 37 under § 103 as being unpatentable over Chaco, Wright, and Evers PCT. Non-Final Action, mailed July 9, 2014, at 36. The Examiner also rejected claims 5, 15, 22, 34, and 35 under § 103 as being unpatentable over Evers PCT and Wright.2 Non-Final Action mailed July 9, 2014, at 44. In the Final Action, the Examiner withdrew the prior art rejection of claims 1, 5, 22, 34, and 35 and stated that “for the purpose of [the] instant reexamination, original claims 1, 5, 22, and 34–35 are confirmed,” although “[t]he status of claims 1, 5, 22, and 34–35 may change based on [a] successful Issue of Reexamination Certificate for co-pending Inter parte reexaminations 95/00,2178 merged with 95/002,221 and ex parte reexamination 90/013,335.” Final Act. 5. The Examiner maintained the rejection of claims 16, 17, 36, and 37 over Chaco, Wright, and Evers PCT. Final Act. 44. In the Appeal Brief, Appellant stated that “[c]laims 1, 5, 22, 34, and 35 are conditionally confirmed” and that: 2 We observe that claim 1 may have been inadvertently omitted from the statement of rejection in the Non-Final Action mailed July 9, 2014. Appeal 2016-000698 Reexamination Control 90/013,105 Patent No. 8,140,663 B2 4 As discussed in the Patent Owner’s papers in the ‘221 Proceeding, the underlying claims 5, 15, 22, 34, and 35 are [argued to be] allowable over Chaco and Wright. Because the modifications of Chaco/Wright proposed by the Examiner in the Office Action do not cure the deficiencies of the Chaco/Wright combination with respect to claims 5, 15, 22, 34, and 35, it is respectfully submitted that the rejections of claims 16, 17, 36, and 37 should be withdrawn for at least this reason. App. Br. 5, 9. The Appeal Brief then presented detailed arguments for the patentability of claims 16, 17, 36, and 37, but did not present detailed arguments for the patentability of claims 5 and 22, with the exception that an argument was made that the rejection of claim 5 in the ‘221 Proceeding (Reexamination Control No. 95/002,221) presumes that nurse notepad terminal 2310/2710 of Chaco constitutes the claimed “remote apparatus,” but that patient microcomputer 414 of Chaco, as modified by Wright, does not constitute, and is not asserted to constitute, the claimed “remote apparatus.” App. Br. 13–14. The Board’s Decision in the co-pending Merged Reexamination Proceeding, Appeal No. 2016-000252, Control Nos. 95/002,178 and 95/002,221 (“’221 Decision”), affirmed the rejection of claims 5 and 22 over the combination of Fu and Clough. ’221 Decision 6–8. The ’221 Decision did not reach Patent Owner-Appellant’s arguments that claims 5 and 22 are patentable over Chaco and Wright. See id. at 12; ’221 Patent Owner Appeal Brief, dated February 10, 2015, at 33–38. Appeal 2016-000698 Reexamination Control 90/013,105 Patent No. 8,140,663 B2 5 ARGUMENTS IN REQUEST FOR REHEARING In the Request for Rehearing, Appellant now argues that because the Board “has declined to affirm the rejections of underlying claims 5 and 22 in the ’221[] Decision, arguments are presented herein with respect to that issue.” Req. Reh’g 2. Appellant first argues that neither Chaco nor Wright teach or suggest “a monitoring application [in a server] including a program generator,” as claimed in claim 5. See id. at 3–7. Second, Appellant argues that neither Chaco nor Wright teach or suggest “executing a customized program for the individual,” as claimed in claim 5. See id. at 7–9. Appellant makes similar arguments for claim 22. Id. at 9–10. Last, Appellant contends that the Board misapprehended Appellant’s argument in the Appeal Brief that the underlying rejections of claims 5 and 22 are in error. Id. at 10. ANALYSIS Appellant’s arguments in the Request for Rehearing are not persuasive, for two distinct reasons. First, Appellant’s substantive arguments concerning the patentability of claims 5 and 22 do not concern points misapprehended or overlooked by the Board, as required by 37 C.F.R. § 41.52. Second, Appellant’s substantive arguments were not raised in the Appeal Brief and therefore are not permitted under § 41.52 to be raised in the Request for Rehearing. Appellant, in his arguments concerning Chaco and Wright, does not raise any points misapprehended or overlooked by the Board, because Appellant did not present separate argument in favor of the patentability of Appeal 2016-000698 Reexamination Control 90/013,105 Patent No. 8,140,663 B2 6 claims 5 and 22 over Chaco and Wright in the Appeal Brief.3 Appellant’s short statement that he believes claims 5 and 22 to be “allowable over Chaco and Wright” (App. Br. 9), without any detailed explanation, does not constitute a separate argument for the patentability of claims 5 and 22 that is entitled to be given weight by the Board. Whether or not the Board decision in the ‘221 Proceeding addressed or did not address the patentability of claims 5 and 22 over Chaco and Wright does not bear on the Request for Rehearing in the instant reexamination. Further, Patent Owner-Appellant requested rehearing in the ‘221 Proceeding, and raised no argument in that rehearing concerning any need for the rejection over Chaco and Wright to be addressed. Appellant’s arguments concerning the patentability of claims 5 and 22 over Chaco and Wright were not presented in Appellant’s Brief on Appeal. Under 37 C.F.R. § 41.52(a)(1), “[a]rguments not raised [in the appeal brief] . . . are not permitted in the request for rehearing except as permitted by paragraphs (a)(2) through (a)(4) of this section.” Sections 41.52(a)(3) and 41.52(a)(4) are inapplicable because no new ground of rejection was entered in the Decision. Section 41.52(a)(2) states that “[a]ppellant may present a new argument based upon a recent relevant decision of either the Board or a Federal Court.” Although Appellant has not invoked this subsection to justify consideration of the Request for Rehearing, we nonetheless 3 As explained above, Appellant argued that the rejection of claim 16 should be reversed because the Examiner’s finding with respect to the claimed “remote apparatus” for claim 16 was inconsistent with what the Examiner found for parent claim 5. App. Br. 12–15. We addressed this argument in the Decision. Dec. 5–7. Appeal 2016-000698 Reexamination Control 90/013,105 Patent No. 8,140,663 B2 7 independently consider § 41.52(a)(2) inapplicable, because we consider a “relevant” decision under § 41.52(a)(2) to be a decision that offers some new interpretation, extension, or reversal of statute, regulation, or existing case law, not merely any Board decision that may concern a related patent application or reexamination. Because we find no applicable exception to § 41.52(a)(1)’s prohibition on arguments not raised in the Appeal Brief, we conclude that Appellant is not entitled to raise the arguments he has attempted to raise concerning the patentability of claims 5 and 22 over the combination of Chaco and Wright. Appellant’s alternative ground for rehearing, that Patent Owner-Appellant allegedly did raise the argument that claims 5 and 22 are allowable over Chaco and Wright, but that the Board did not address the rejection (Req. Reh’g 10), also is unpersuasive. As discussed supra, Appellant’s Appeal Brief states that “the modifications of Chaco/Wright proposed by the Examiner in the Office Action do not cure the deficiencies of the Chaco/Wright combination with respect to claims 5, 15, 22, 34, and 35.” App. Br. 9. This statement merely alleges the allowability of claims 5 and 22, and does not argue with particularity why the rejection over Chaco and Wright was alleged to be in error. Appellant’s Appeal Brief thus did not present separate argument for the patentability of claims 5 and 22, and Appellant’s bare mention fails to constitute a point that the Board misapprehended or overlooked. We therefore, conclude that Appellant has not shown any points which we misapprehended or overlooked in our Decision. Appeal 2016-000698 Reexamination Control 90/013,105 Patent No. 8,140,663 B2 8 CONCLUSION We have granted Appellant’s request for rehearing to the extent that we have reconsidered our decision affirming the rejection of claims 16, 17, 36, and 37, but we decline to modify the decision in any way. Pursuant to 37 C.F.R. § 41.79(d), this decision is final for the purpose of judicial review. A party seeking judicial review must timely serve notice on the Director of the United States Patent and Trademark Office. See 37 C.F.R. § 90.2. REHEARING DENIED Patent Owner: ROBERT BOSCH HEALTHCARE SYSTEMS, INC. 2400 GENG ROAD, SUITE 200 PALO ALTO, CA 94303 Third Party Requestor: STERNE, KESSLER, GOLDSTEIN & FOX PLLC 1100 NEW YORK A VENUE, NW WASHINGTON, DC 20005 Copy with citationCopy as parenthetical citation