Ex Parte Bodin et alDownload PDFBoard of Patent Appeals and InterferencesFeb 27, 201210455174 (B.P.A.I. Feb. 27, 2012) Copy Citation 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. Appeal 2009-012310 Application 10/455,174 2 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. Appeal 2009-012310 Application 10/455,174 3 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. Appeal 2009-012310 Application 10/455,174 4 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]). Appeal 2009-012310 Application 10/455,174 5 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 Appeal 2009-012310 Application 10/455,174 6 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. Appeal 2009-012310 Application 10/455,174 7 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. Appeal 2009-012310 Application 10/455,174 8 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 babc Copy with citationCopy as parenthetical citation