Ex Parte Firminger et al

Patent Trial and Appeal Board

Apr 6, 2015

12657980 (P.T.A.B. Apr. 6, 2015)

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.)
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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.
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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.

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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
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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
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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.)
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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.

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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
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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).

AFFIRMED
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