Ex Parte Bodin et al

Board of Patent Appeals and Interferences

Feb 27, 2012

10455174 (B.P.A.I. Feb. 27, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte WILLIAM KRESS BODIN, MICHAEL JOHN BURKHART,
DANIEL G. EISENHAUER, DANIEL MARK SCHUMACHER,
and THOMAS J. WATSON
____________________

Appeal 2009-012310
Application 10/455,1741
Technology Center 2400
____________________

Before MARC S. HOFF, CARLA M. KRIVAK, and
ELENI MANTIS MERCADER, Administrative Patent Judges.

HOFF, Administrative Patent Judge.

DECISION ON APPEAL

1 The real party in interest is International Business Machines Corporation.
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STATEMENT OF CASE
Appellants appeal under 35 U.S.C. § 134 from a Final Rejection of
claims 12-33.2 We have jurisdiction under 35 U.S.C. § 6(b).
We affirm-in-part.
Appellants’ invention concerns a method and system for
administering devices. The method includes creating a user metric vector
including a plurality of disparate user metrics, and creating a user metric
space including a plurality of metric ranges. Upon a determination that the
user metric vector is outside the user metric space, the method calls for
creating, in dependence upon the user metric vector, a dynamic action list.
At least one action in the dynamic action list is identified and executed
(Spec. 3).
Claim 12 is exemplary of the claims on appeal:
12. A system for administering devices, the system comprising:
means for creating a user metric vector comprising a plurality of
disparate user metrics:
means for creating a user metric space comprising a plurality of
metric ranges;
means for determining whether the user metric vector is outside the
user metric space;
if the user metric vector is outside a user metric space, means for
creating, in dependence upon the user metric vector, a dynamic action list;
means for identifying at least one action in the dynamic action list;
and
means for executing the action.
The Examiner relies upon the following prior art in rejecting the
claims on appeal:
Phipps US 2003/0216625 A1 Nov. 20, 2003
Miller US 2004/0030531 A1 Feb. 12, 2004

2 Claims 1-11 have been cancelled.
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Claims 12-18, 22-29,3 and 33 stand rejected under 35 U.S.C. § 102(e)
as being anticipated by Phipps.
Claims 19-21 and 30-32 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Phipps in view of Miller.
Throughout this decision, we make reference to the Appeal Brief
(“App. Br.,” filed March 28, 2008), the Reply Brief (“Reply Br.,” filed
August 12, 2008), and the Examiner’s Answer (“Ans.,” mailed June 12,
2008) for their respective details.

ISSUES
Appellants argue, inter alia, that Phipps does not teach means for
creating a user metric vector (App. Br. 6); means for creating a user metric
space (App. Br. 7); means for determining whether the user metric vector is
outside the user metric space (App. Br. 8); if the user metric vector is outside
a user metric space, means for creating a dynamic action list (App. Br. 9);
means for identifying at least one action in the dynamic action list or means
for executing the action (App. Br. 12). Appellants further argue that the
Examiner rejected dependent claims 22 and 33 without addressing their
specific limitations (App. Br. 14).
Appellants’ contentions, and the Examiner’s findings, present us with
the following issues:
1. Does Phipps teach means for creating a user metric vector?
2. Does Phipps teach means for creating a user metric space?

3 The Examiner lists claim 30 as being rejected both under § 102 and § 103.
Since the Examiner discusses claim 30 within the body of the § 103 rejection
only, we consider claim 30 to stand rejected only under § 103.
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3. Does Phipps teach means for determining whether the user metric
vector is outside the user metric space?
4. Does Phipps teach means for creating a dynamic action list?
5. Does Phipps teach identifying at least one action in the dynamic
action list, and executing the action?
6. Did the Examiner address the limitations of claims 22 and 33?

FINDINGS OF FACT
Phipps
1. Phipps teaches a medical monitoring device employing software
having the capability to monitor a subject’s vital signs, record, collect, and
store the data (¶ [0011]).
2. Phipps’s monitoring device can be any type of medical monitoring
device, including those which monitor heart rate or pulse, breathing rate,
blood pressure, heart EKG activity, or body temperature (¶ [0025]).
3. Phipps teaches threshold field 70 that includes thresholds for data
collected from the monitoring device, and used to trigger an action by a
personal data unit (PDU) (¶ [0052]).
4. Phipps teaches instructions field 72 comprises instructions for the
PDU to perform in response to some condition, grouped but not limited to
the categories of autonotification, emergency transmission, data store, and
data download (¶ [0053]).
5. The auto-notification category includes procedures for triggering
output, including displays to the LCD screen, activation of beeper, and
activation of vibrator (¶ [0054]). The emergency transmission category
includes procedures for issuing alerts via pages or phone calls (¶ [0055]).
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The data store category includes procedures for storing data in a PDU
memory 54 (¶ [0056]). The data download category includes procedures for
downloading data to an external computer via a communications port (¶
[0057]).

PRINCIPLE OF LAW
“‘A rejection for anticipation under section 102 requires that each and
every limitation of the claimed invention be disclosed in a single prior art
reference.’” See In re Buszard, 504 F.3d 1364, 1366 (Fed. Cir. 2007)
(quoting In re Paulsen, 30 F.3d 1475, 1478-79 (Fed. Cir. 1994)).

ANALYSIS
CLAIMS 12-18 AND 23-29
We select claim 12 as representative of this group of claims, pursuant
to our authority under 37 C.F.R. § 41.37(c)(1)(iv).
Appellants’ arguments, summarized supra, are not persuasive to show
Examiner error.
We agree with the Examiner’s finding that Phipps teaches creating a
user metric vector comprising a plurality of disparate user metrics. The
Examiner finds, and Appellants do not contest, that Phipps teaches a medical
monitoring device that monitors multiple characteristics (FF 1, 2).
We agree with the Examiner’s finding that Phipps teaches creating a
user metric space comprising a plurality of metric ranges. Phipps teaches
thresholds for each monitored characteristic (FF 3).
We find that Phipps teaches determining if the “user metric vector” is
outside the “user metric space,” and triggering action if a monitored value is
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found to be outside a threshold (FF 3). Appellants argue that Phipps’s
thresholds have no relationship to one another so as to define a space (App.
Br. 7). Such a relationship, however, is not required in order to meet the
claim. Appellants admit that one example of determining whether a user
metric vector is outside the user metric space is to specify that a user metric
vector is outside the user metric space if only one metric value is outside its
corresponding metric range (App. Br. 8-9; Reply Br. 10).
We find that Phipps teaches triggering actions, such as activating a
beeper, making a telephone call, and storing data in memory, if the
monitoring device should return a result outside those thresholds (FF 4, 5).
We agree with the Examiner that such actions amount to creating, in
dependence upon the user metric vector, a dynamic action list, identifying at
least one such action, and executing the action (Ans. 15-16).
We find, therefore, that the Examiner did not err in rejecting claims
12-18 and 23-29 as being anticipated by Phipps. We will sustain the § 102(e)
rejection.
CLAIMS 22 AND 33
We agree with Appellants that the Examiner failed to respond to
Appellants’ arguments that Phipps does not teach the limitations of claims
22 and 33 (App. Br. 14-15). The Examiner’s belated attempt to do so (Ans.
16-17) fails to explain how Phipps teaches means for calculating a metric
vector value in dependence upon the user metrics of the user metric vector,
or means for calculating a metric space value in dependence upon the metric
ranges of the user metric space.
We therefore find that the Examiner erred in rejecting claims 22 and
33 as being anticipated by Phipps. We will not sustain the § 102 rejection.
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CLAIMS 19-21 AND 30-32
Appellants assert that these claims are patentable because Phipps does
not disclose all the limitations of independent claims 12 and 23 (App. Br.
16-17). Because we find supra that Phipps does disclose all the limitations
of claims 12 and 23, we find that the Examiner did not err in rejecting claims
19-21 and 30-32 under § 103 as being unpatentable over Phipps in view of
Miller. We will sustain the Examiner’s § 103 rejection.

SUGGESTION TO THE EXAMINER
We suggest that the Examiner consider making an obviousness-type
double patenting rejection of the claims as not being patentably distinct from
claims 1-11 of copending Application No. 11/839,808. The claims of this
application are directed to a system or a computer program product for
administering devices, rather than a method for administering devices, but
are in every other respect identical to the claims of copending Application
No. 11/839,808.

CONCLUSIONS
1. Phipps teaches means for creating a user metric vector.
2. Phipps teaches means for creating a user metric space.
3. Phipps teaches means for determining whether the user metric
vector is outside the user metric space.
4. Phipps teaches means for creating a dynamic action list.
5. Phipps teaches identifying at least one action in the dynamic action
list, and executing the action.
6. The Examiner did not address the limitations of claims 22 and 33.
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ORDER
The Examiner’s rejection of claims 12-21 and 23-32 is affirmed.
The Examiner’s rejection of claims 22 and 33 is reversed.
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)(iv).

AFFIRMED-IN-PART

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