Ex Parte Firminger et alDownload PDFPatent Trial and Appeal BoardApr 6, 201512657980 (P.T.A.B. Apr. 6, 2015) Copy Citation 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. 12/657,980 01/29/2010 Shawn P. Firminger SE1-1023-US 4397 80118 7590 04/07/2015 Constellation Law Group, PLLC P.O. Box 580 Tracyton, WA 98393 EXAMINER BURGESS, JOSEPH D ART UNIT PAPER NUMBER 3626 MAIL DATE DELIVERY MODE 04/07/2015 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 SHAWN P. FIRMINGER, JASON GARMS, RODERICK A. HYDE, EDWARD K.Y. JUNG, CHRIS DEMETRIOS KARKANIAS, ERIC C. LEUTHARDT, ROYCE A. LEVIEN, RICHARD T. LORD, ROBERT W. LORD, MARK A. MALAMUD, JOHN D. RINALDO, JR., CLARENCE T. TEGREENE, KRISTIN M. TOLLE, and LOWELL L. WOOD, JR. ____________ Appeal 2012-010996 Application 12/657,980 1 Technology Center 3600 ____________ Before ROBERT L. KINDER, BRUCE T. WIEDER, and BRADLEY B. BAYAT, Administrative Patent Judges. WIEDER, Administrative Patent Judge. DECISION ON APPEAL This is a decision on appeal under 35 U.S.C. § 134 from the Examiner’s rejection of claims 1, 2, 5, 8, 10–14, 18, 20, 23, 26–34, 38, 54, 56–59, 61, 63, 64, and 127–134. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. 1 According to Appellants, the real party in interest is Searete LLC, which is wholly owned by Intellectual Ventures Management, LLC. (Appeal Br. 5.) Appeal 2012-010996 Application 12/657,980 2 CLAIMED SUBJECT MATTER Appellants’ claimed invention relates to a system and method for “detecting an indication of at least one attribute of an individual, accepting sensor data about the individual, and presenting a set of health care options at least partially based on the detecting an indication of at least one attribute of the individual and the accepting sensor data about the individual.” (Spec. 10.) Claims 1, 64, 127, 128, and 132 are the only independent claims. Claim 1 is representative and is reproduced below: 1. A system comprising: means for detecting an indication of at least one attribute of an individual; means for accepting sensor data about the individual; and means for presenting a set of health care options at least partially based on the detecting an indication of at least one attribute of the individual and the accepting sensor data about the individual. REJECTIONS Claims 1, 2, 5, 8, 10–14, 18, 20, 23, 26–34, 38, 54, 56–59, 61, 63, 64, and 127–134 are provisionally rejected for nonstatutory obviousness-type double patenting as being unpatentable over claims 1–5, 8, 10–14, 23, 26– 31, 33, 43, 44, 54–59, 61, 63, 64, and 127–134 of copending Application No. 12/657,429 (“the ‘429 application”). Claims 1, 2, 5, 8, 10–12, 14, 18, 20, 23, 26, 27, 29–34, 38, 54, 56, 57, 61, 64, and 127–134 are rejected under 35 U.S.C. § 102(b) as being anticipated by Leyde (US 2007/0150024 A1, pub. June 28, 2007). Claim 13 is rejected under 35 U.S.C. § 103(a) as being unpatentable over Leyde. Appeal 2012-010996 Application 12/657,980 3 Claim 28 is rejected under 35 U.S.C. § 103(a) as being unpatentable over Leyde and Flaherty (US 7,901,368 B2, iss. Mar. 8, 2011). Claims 58 and 63 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Leyde and Eaton (US 2006/0136264 A1, pub. June 22, 2006). Claim 59 is rejected under 35 U.S.C. § 103(a) as being unpatentable over Leyde and Johnson (US 2003/0046113 A1, pub. Mar. 6, 2003). ANALYSIS The Provisional Nonstatutory Obviousness-type Double Patenting Rejection The Examiner provisionally rejected claims 1, 2, 5, 8, 10–14, 18, 20, 23, 26–34, 38, 54, 56–59, 61, 63, 64, and 127–134 on the grounds of nonstatutory obviousness-type double patenting. The Examiner asserts that the difference between claim 1 of the present application and claim 1 of the ‘429 application is that the word “detecting” (that appears twice) in claim 1 of the present application is replaced with the word “accepting” in claim 1 of the ‘429 application. (Answer 4–5.) The Examiner asserts that “[a]lthough the conflicting claims are not identical, they are not patentably distinct from each other.” (Id. at 4.) In particular, the Examiner states (id. at 21) that [i]t would be obvious to one of ordinary skill in the art that accepting an indication of at least one attribute of an individual could be interpreted as detecting an indication of at least one attribute of an individual. Therefore, these limitations are obvious variants of each other. Furthermore, accepting an indication involves a detection step in order for the accepting to occur. Appeal 2012-010996 Application 12/657,980 4 Appellants present no persuasive substantive argument addressing this rejection, e.g., why it would not have been “obvious to one of ordinary skill in the art that detecting an indication of at least one attribute of an individual could be interpreted as accepting an indication of at least one attribute of an individual.” (See Answer 5.) Therefore, in view of the Examiner’s explanation and reasoning as cited above and as found in the Answer at pages 4–5 and 21, we affirm the provisional nonstatutory obviousness-type double patenting rejection of claims 1, 2, 5, 8, 10–14, 18, 20, 23, 26–34, 38, 54, 56–59, 61, 63, 64, and 127–134. The § 102 Rejection Appellants do not separately argue independent claims 1, 64, 127, 128, and 132 or dependent claims 2, 5, 8, 10, 12, 18, 20, 23, 26, 27, 30–34, 38, 54, 56, 57, 61, 129–131, 133, and 134. These claims stand or fall together. 37 C.F.R. § 41.37(c)(1)(vii) (2011). Claim 1 The Examiner, citing Leyde, finds (Answer 5–6): • means for detecting an indication of at least one attribute of an individual (see at least paragraphs 0016, 0072, sensors are used to detect physiological parameters of a patient); • means for accepting sensor data about the individual (see at least paragraph 0064, device accepts sensing signals from patient); • means for presenting a set of health care options at least partially based on the detecting an indication of at least one attribute of the individual and the accepting sensor data about the individual (see at least paragraphs 0129-0134, patient communication device provides multiple recommendation/instruction outputs regarding appropriate Appeal 2012-010996 Application 12/657,980 5 action to take for epileptic seizure treatment including medication, behavioral modification, warnings, etc.). The Examiner conveyed the Examiner’s understanding that each claim limitation was broad enough to encompass what is disclosed in the cited corresponding paragraph of Leyde. As a procedural matter, this is sufficient to present a prima facie case of anticipation. See In re Jung, 637 F.3d 1356, 1362 (Fed. Cir. 2011). Appellants argue that “the USPTO-identified portions of Leyde do not recite the text of at least Clauses [a], [b], or [c] of Independent Claim 1 . . . .” (Appeal Br. 52.) However, “[a]n anticipatory reference . . . need not duplicate word for word what is in the claims. Anticipation can occur when a claimed limitation is ‘inherent’ or otherwise implicit in the relevant reference.” Standard Havens Prods., Inc. v. Gencor Indus., Inc., 953 F.2d 1360, 1369 (Fed. Cir. 1991). Appellants have not presented a persuasive substantive argument to overcome the Examiner’s prima facie case of anticipation. Claim 11 Appellants argue that claim 11 is independently patentable. (Appeal Br. 55–58.) Claim 11 recites: 11. The system of claim 1, wherein the means for detecting an indication of at least one attribute of an individual comprises: means for detecting the at least one attribute from a medical history associated with the at least one individual. Appellants argue (Appeal Br. 57) that Leyde’s disclosure is in the context of a *downloading of patient history data (e.g., neural state, medication intake, etc.) to a remote server for Appeal 2012-010996 Application 12/657,980 6 future or substantially real-time review by a clinician or the patient's guardian* not *means for detecting the at least one attribute from a medical history.* Consequently, on its face, Leyde does not show the text of Dependent Claim 11. However, paragraph 16 of Leyde, as cited by both the Examiner (Answer 5) and Appellants (Appeal Br. 48) as part of the discussion of claim 1, from which claim 11 depends, discloses using “patient history, and/or other physiological signals from the patient” for detecting an indication of an attribute of an individual. Therefore, we affirm the rejection of claim 11 as being anticipated by Leyde. Claim 14 Appellants argue that claim 14 is independently patentable. (Appeal Br. 58–60.) Claim 14 recites: 14. The system of claim 1, wherein the means for detecting an indication of at least one attribute of an individual comprises: means for detecting at least one mental attribute associated with the at least one individual. The Examiner finds that “Leyde discloses the limitation of the means for detecting an indication of at least one attribute of an individual comprises: means for detecting at least one mental attribute associated with the at least one individual (see at least paragraphs 0015, 0076, devices are used to measure EEG signals from patient's brain).” (Answer 7.) Appeal 2012-010996 Application 12/657,980 7 Appellants respond 2 that paragraphs 15 and 76 are “in the context of *an EEG signal* not *means for detecting at least one mental attribute associated with the at least one individual.* Consequently, on its face, Martin does not show the text of Dependent Claim 14.” (Appeal Br. 59.) However, paragraph 15 of Leyde is not so limited. Paragraph 15 discloses: In one embodiment, a patient’s propensity for a seizure can be estimated or derived from a neural state which can be characterized as a point along a single or multivariable state space continuum. The term “neural state” is used herein to generally refer to calculation results or indices that are reflective of the state of the patient's neural system, but does not necessarily constitute a complete or comprehensive accounting of the patient's total neurological condition. The estimation and characterization of “neural state” may be based on one or more patient dependent parameters from the brain, such as electrical signals from the brain, including but not limited to electroencephalogram signals “EEG” and electrocorticogram signals “ECoG” (referred to herein collectively as “EEG”), brain temperature, blood flow in the brain, concentration of AEDs in the brain, etc. In other words, paragraph 15 discloses using an EEG signal to estimate and characterize a patient’s neural state. Therefore, regardless of whether the EEG signal itself or the patient’s neural state is interpreted as a “mental attribute,” Leyde discloses the additional limitation of claim 14. Thus, we affirm the rejection of claim 14 as being anticipated by Leyde. 2 We note that Appellants make multiple references to “Martin” in arguing against the anticipatory rejection by Leyde. (See, e.g., Appeal Br. 59, 60, and 62). These references appear to have been made in error and intended to refer to Leyde. Appeal 2012-010996 Application 12/657,980 8 Claim 29 Appellants argue that claim 29 is independently patentable. (Appeal Br. 60–62.) Claims 27 and 29 recite: 27. The system of claim 1 wherein the means for accepting sensor data about the individual comprises: means for accepting brain sensor data. 29. The system of claim 27 wherein the means for accepting brain sensor data comprises: means for accepting data from at least one brain- computer interface. The Examiner states (Answer 24): With regards to Appellant’s [sic] argument that Leyde fails to teach means for accepting data from at least one brain- computer interface, the Examiner respectfully disagrees. In at least paragraph 0075, Leyde discloses a device assembly that is extracranially placed or implanted intracranially to accept data from the patient's brain. Leyde, in at least paragraph 0079, further discloses the device assembly includes hardware, software, and firmware, which is interpreted as computer. Therefore, the device assembly is interpreted as a brain- computer interface that accepts data. Appellants respond that paragraph 75 of Leyde is “in the context of an *implanted device* not *means for accepting data from at least one brain- computer interface.* Consequently, on its face, Martin does not show the text of Dependent Claim 29.” (Appeal Br. 62.) However, paragraph 79 of Leyde cites to Figure 5 which shows a patient device including a processor, memory and an input marked “From Patient Interface Assembly(s).” Paragraph 75 also cites to Figure 3A which Appeal 2012-010996 Application 12/657,980 9 shows the sensors attached intracranially in communication with a computer. Therefore, we affirm the rejection of claim 29 as being anticipated by Leyde. The § 103 Rejection Because Appellants do not present any separate, persuasive arguments in response to the obviousness rejection of claims 13, 28, 58, 59, and 63, we affirm the rejection of these claims under 35 U.S.C. § 103(a) for the reasons set forth above. DECISION The Examiner’s provisional rejection of claims 1, 2, 5, 8, 10–14, 18, 20, 23, 26–34, 38, 54, 56–59, 61, 63, 64, and 127–134 for nonstatutory obviousness-type double patenting is affirmed. The Examiner’s rejection of claims 1, 2, 5, 8, 10–12, 14, 18, 20, 23, 26, 27, 29–34, 38, 54, 56, 57, 61, 64, and 127–134 under 35 U.S.C. § 102(b) is affirmed. The Examiner’s rejection of claims 13, 28, 58, 59, and 63 under 35 U.S.C. § 103(a) is affirmed. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. § 1.136(a)(1)(iv). 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