Ex Parte Nanikashvili et al

Patent Trials and Appeals Board

Jan 22, 2013

12706541 - (D) (P.T.A.B. Jan. 22, 2013)

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.
90/010,751 11/30/2009 7,542,878 B2 14645-4 3683
757 7590 01/22/2013
BRINKS HOFER GILSON & LIONE
P.O. BOX 10395
CHICAGO, IL 60610
EXAMINER
WEST, JEFFREY R
ART UNIT PAPER NUMBER
2857
MAIL DATE DELIVERY MODE
01/22/2013 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
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.
12/706,541 02/16/2010 Reuven Nanikashvili 14645-3 1860
757 7590 01/22/2013
BRINKS HOFER GILSON & LIONE
P.O. BOX 10395
CHICAGO, IL 60610
EXAMINER
WEST, JEFFREY R
ART UNIT PAPER NUMBER
2857
MAIL DATE DELIVERY MODE
01/22/2013 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte CARD GUARD SCIENTIFIC SURVIVAL LTD. Appellant
____________

Appeal 2012-010812
Application 12/706,541
Reexamination Control 90/010,751
US Patent. No. 7,542,878 B2
Technology Center 3900
____________

Before, RICHARD M. LEBOVITZ, MICHAEL R. ZECHER, and
JENNIFER S. BISK Administrative Patent Judges.

LEBOVITZ, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on appeal by the Patent Owner from the Patent
Examiner’s decision to reject pending claims 1-37 in an ex parte
reexamination of U.S. Patent No. 7,542,878. The Board’s jurisdiction for this
appeal is under 35 U.S.C. §§ 6(b) and 134. We affirm-in-part.

Appeal 2012-010812
Application 12/706,541
Reexamination Control 90/010,751
Patent U.S. 7,542,878 B2

2
STATEMENT OF CASE
This is an appeal from a merged reissue and ex parte reexamination of
U.S. Patent No. 7,542,878 (hereinafter, “the ‘878 patent”), which issued June
2, 2009. The Patent Owner is Card Guard Scientific Survival Ltd. App. Br. 2.
A “Request for Ex Parte Reexamination” was filed by a Third-Party Requester
on November 30, 2009 pursuant to 35 U.S.C. §§ 302-307 and 37 C.F.R.
§ 1.510. A reissue application of the ‘878 patent was filed February 16, 2010.
The ex parte reexamination and reissue application were subsequently merged
into one proceeding. Decision to Merge Reissue and Ex Parte Reexamination
Proceedings, mailed June 4, 2010. An oral hearing was held November 28,
2012. A transcript of the hearing will be entered into the record in due course.
The original patent has 30 claims. Claims 31-37 were added during the
reexamination proceeding. All of the claims stand rejected by the Patent
Examiner over prior art. Patent Owner, who is also the Appellant in this
appeal, appeals from the Examiner’s final rejection of all the claims.
The claims are directed to a personal health monitor that comprises a
physiological data input device and a multi-purpose personal data accessory.
There are also pending method claims involving the use of the health monitor.
According to the ‘878 patent, the device is used to monitor the health of a
person. ‘878 patent, col. 5, ll. 5-9. In preferred embodiments, the multi-
purpose personal data accessory is a cellular phone. Id. at col. 5, ll. 10-14.
For example, physiological data, such as heart and blood information, can be
collected by an input device and then sends it to a cellular phone which
processes the data and then transmits the processed data to a remote medical
center.
Appeal 2012-010812
Application 12/706,541
Reexamination Control 90/010,751
Patent U.S. 7,542,878 B2

3

Related cases
Inter parte reexamination 95/001,312 (Appeal No. 2012-012494) is
currently pending. This case has been concurrently decided with this appeal.
This appeal is also related to the litigation captioned Lifewatch, Inc. v.
Medicomp, Inc., Case No. 6:09-cv-1909-31DAB (M.D. Fla.), currently stayed.

Grounds of rejection
The claims stand rejected as follows:
1. Claims 1-4, 8-12, 19-22, 25-27, 31, and 34-37 as anticipated under 35
U.S.C. § 102 by Davis.
1

2. Claims 1-4, 8, 10-12, 15, 19- 22, 27, 31, 34, and 36 as anticipated under 35
U.S.C. § 102(e) by Rohde.
2

3. Claim 1, 2, 4, 10, 12, 15, 19, 20, 22, 27, 31, 34, and 36 as anticipated under
35 U.S.C. § 102(e) by Albert.
3

4. Claims 5, 13, 14, and 23 as obvious under 35 U.S.C. § 103(a) over Davis in
view of Righter.
4

5. Claim 6 as obvious under 35 U.S.C. § 103(a) over Davis in view of Crowe.
5

6. Claim 7 and 24 as obvious under 35 U.S.C. § 103(a) over Davis in view of
Groff.
6

1
Charles L. Davis et al., U.S. 5,544,661 (Aug. 13, 1996).
2
Mitchell M. Rohde, U.S. 5,876,351 (Mar. 2, 1999).
3
David E. Albert et al., U.S. 5,735,285 (Apr. 7, 1998).
4
William H. Richter et al., U.S. 5,581,369 (Dec. 3, 1996).
5
Louis Michael Crowe et al., U.S. 7,257,448 B2 (Aug. 14, 2007).
6
Clarence P. Groff et al., U.S. 6,102,856 (Aug. 15, 2000).
Appeal 2012-010812
Application 12/706,541
Reexamination Control 90/010,751
Patent U.S. 7,542,878 B2

4
7. Claim 16 and 28-30 as obvious under 35 U.S.C. § 103(a) over Davis in
view of Richardson.
7

8. Claim 17 as obvious under 35 U.S.C. § 103(a) over Davis in view of Flach.
8

9. Claims 18, 32, and 33 as obvious under 35 U.S.C. § 103(a) over Davis in
view of Evanyk.
9

10. Claims 5, 13, 14, and 23 as obvious under 35 U.S.C. § 103(a) over Rohde
in view of Righter.
11. Claim 6 as obvious under 35 U.S.C. § 103(a) over Rohde in view of
Crowe.
12. Claims 7 and 24 as obvious under 35 U.S.C. § 103(a) over Rohde in view
of Groff.
13. Claims 9, 26, 35, and 37 as obvious under 35 U.S.C. § 103(a) over Rohde
in view of Davis.
14. Claims 16 and 28-30 as obvious under 35 U.S.C. § 103(a) over Rohde in
view of Richardson.
15. Claim 17 as obvious under 35 U.S.C. § 103(a) over Rohde in view Flach.
16. Claims 18, 32, and 33 as obvious under 35 U.S.C. § 103(a) over Rohde in
view of Evanyk.
17. Claims 5, 13, 14, and 23 as obvious under 35 U.S.C. § 103(a) over Albert
in view of Righter.
18. Claim 6 as obvious under 35 U.S.C. § 103(a) over Albert in view of
Crowe.

7
J. Jeffrey Richardson et al., U.S. 5,976,083 (Nov. 2, 1999).
8
Terry E. Flach et al., U.S. 5,748,103 (May 5, 1998).
9
Shane Walter Evanyk et al., U.S. 2004/0225199 A1 (Nov. 11, 2004).
Appeal 2012-010812
Application 12/706,541
Reexamination Control 90/010,751
Patent U.S. 7,542,878 B2

5
20. Claims 35 and 37 as obvious under 35 U.S.C. § 103(a) over Albert in view
of Davis.
CLAIMS
The following claims are representative (underlining and brackets
indicate amendments relate to the original claim):
1. A personal health monitor comprising: a physiological data
input device operative to gather physiological data; and a multi-
purpose personal data accessory, whereas the multipurpose
personal data accessory is adapted to execute health monitoring
software such as to enable the multi-purpose personal data
accessory to receive the physiological data, process the
physiological data to provide processed physiological data and
control a long range transmission of the processed physiological
data to a remote entity.

19. A method for health monitoring, comprising: gathering
physiological data, by a physiological data input device;
providing the physiological data to a multi-purpose personal data
accessory; executing health monitoring software, by the multi-
purpose personal data accessory to process the physiological data
to provide processed physiological data; and controlling long
range transmission of [[transmitting ]]the processed physiological
data.

CLAIM INTERPRETATION
Before a claim can be compared to the prior art, it must be properly
interpreted. We therefore begin with claim interpretation. During
reexamination, the PTO must give claims their broadest reasonable
construction consistent with the specification. In re Am. Acad. of Sci. Tech
Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004); In re Suitco Surface, Inc., 603
F.3d 1255, 1259 (Fed. Cir. 2010).
Appeal 2012-010812
Application 12/706,541
Reexamination Control 90/010,751
Patent U.S. 7,542,878 B2

6

● “multi-purpose personal data accessory”
“Multi-purpose personal data accessory” is not explicitly defined in the
written description of the ‘878 Patent. However, there is guidance in the
patent specification as to its meaning.
The ‘878 patent describes several examples of multi-purpose personal
data accessories, including a cellular phone, a hand-held device, and a palm
computer. ‘838 Patent, col. 1, ll. 26-28; col. 4, ll. 32-35; col. 5, ll. 14-18.
The personal data accessory is described in the “Summary of the Invention” as
“adapted to execute health monitoring software such as to enable the personal
data accessory to receive the physiological data,” a function which is also
expressly ascribed to the device in independent claims 1 and 34. ‘838 Patent,
col. 4, ll. 35-38. Similar language is also in claim 19. The claims also
explicitly require the personal data accessory to process physiological data.
The latter functions are what appear to differentiate the claimed multi-purpose
personal data accessory from prior art cellular phones and other prior art
personal data devices. Id. at col. 5, ll. 31-34.
The ‘878 patent does not define “multi-purpose.” However, in view of
the disclosure in the patent of cellular phones and palm computers as multi-
purpose devices, we interpret it to mean that the claimed device has the
functions of a prior art cellular phone or handheld computer, but also is
enabled to execute a health monitoring function, including receiving and
processing physiological data.
As explained below, the ability of the multi-purpose personal data
accessory to execute the health monitoring software is described in the ‘878
Appeal 2012-010812
Application 12/706,541
Reexamination Control 90/010,751
Patent U.S. 7,542,878 B2

7
Patent as a function of the data accessory hardware, itself. In distinguishing,
the invention from the prior art, the ‘878 Patent acknowledges that “[v]arious
methods and devices for monitoring the health of a person are known in the
art.” ‘878 Patent, col. 3, ll. 44-46. Such prior art devices are characterized in
the “Background of the Invention” as requiring “special” and “dedicated”
hardware. Id. at col. 3, ll. 45-50. The ‘878 invention is consistently described
as being enabled to perform its health monitoring function “without any
addition of complex hardware, such as additional processors.” Id. at col. 5, ll.
13-14. The illustrative examples in the ‘878 Patent are of a self-contained
cellular phone which is enabled to execute health monitoring software. Id. at
Figs. 3-6, 8, 10, and 11; col. 6, ll. 30-33, 39-42; col. 8, ll. 41-47; col. 10, ll. 11-
13. In other words, the phrase “execute . . . health monitoring software” by
the multi-purpose personal data accessory as recited in claims 1 and 19 is
reasonably interpreted in view of the ‘878 Patent to mean that the software is
carried out by the hardware of the data accessory.
In sum, we interpret the claimed multi-purpose personal data accessory
to be a device which is adapted to execute the claimed health monitoring
function using hardware, such as a processor, and which is not solely devoted
to performing the heath monitoring function. That is, the multi-purpose
personal data accessory is not “dedicated” to a single purpose or function, but
has a function other than health monitoring, such as a function conventionally
available on a cellular phone or palm computer.

● “adapted” to “control a long range transmission of the processed
physiological data to a remote entity”
Appeal 2012-010812
Application 12/706,541
Reexamination Control 90/010,751
Patent U.S. 7,542,878 B2

8
Claims 1, 34, and 35 require the multi-purpose personal data accessory
to be “adapted” to “control a long range transmission of the processed
physiological data to a remote entity.” We interpret this to mean that the data
accessory, itself, controls the data transmission.
The ‘878 Patent describes the use of a multi-purpose personal data
accessory comprising a long-range transmitter to transmit information to
remote stations. For example, with respect to a cellular phone, the ‘878 Patent
teaches that “cellular phone 210 is capable of determining whether to transmit
the processed physiological data, to transmit a portion of the data or not to
transmit it at all.” ‘878 Patent, col. 7, ll. 54-56. The patent also describes a
mode in which the device continuously captures physiological data and
transmits it automatically to the remote station. Id. at col. 8, ll. 33-38. In
other words, the transmission of data is controlled by the phone, without
intervention by a person, consistent with the ordinary meaning of “control . . .
to exercise restraining or directing influence over” or “to have power over.”
10

With respect to long range transmission, the ‘878 Patent discloses
various examples of wireless networks for long-range transmission and the
internet. ‘878 Patent, col. 7, ll. 57-59; col. 8, ll. 45-50. However, we do not
construe the claims to be limited to these modes of transmission.

10
http://www.merriam-webster.com/dictionary/control
Appeal 2012-010812
Application 12/706,541
Reexamination Control 90/010,751
Patent U.S. 7,542,878 B2

9
DAVIS REJECTIONS
Rejection 1. Claims 1-4, 8-12, 19-22, 25-27, 31, and 34-37 stand rejected
under 35 U.S.C. § 102(b) over Davis.
Findings of Fact (“FF”)
FF1 Davis describes “a method and apparatus for monitoring the
physical condition of a patient and for automatically notifying a central
monitor if the patient’s condition requires attention.” Davis, col. 1, ll. 5-10.
FF2 Davis describes a portable device which comprises “an expert
system for determining if a pre-established critical parameter set has been
exceeded; and a wireless communication device for automatically contacting
the central station via a public cellular phone network when the critical
parameter set has been exceeded.” Davis, col. 1, l. 64 to col. 2, l. 5.
FF3 A preferred embodiment is a cellular phone unit 11 as shown in
Figure 1. Davis, col. 2, ll. 57-67. Figure 1 is reproduced below:

Appeal 2012-010812
Application 12/706,541
Reexamination Control 90/010,751
Patent U.S. 7,542,878 B2

10
FF4 Figure 1, above, shows device 11 interconnected with a patient
10 and cellular system 104B. The device 11 comprises an “analysis logic
102” which is described as “a programmed microprocessor which can perform
a wide variety of analysis.” Davis, col. 3, ll. 2-4. Davis teaches that the
“output of the analysis logic 102 goes to decision logic 103 which compares
the patient data to certain preset parameters. If the patient’s data is outside the
preset parameters, cellular phone 509 is activated by controller logic 109.”
Davis, col. 3, ll. 1-7.
FF5 Figure 5, reproduced below, is an overall block diagram of the
monitoring, processing and communication unit 11 which is worn by the
patient. Davis, col. 4, ll. 22-24

The figure, reproduced above, is described as having the following
features:
FF6 “The central components of unit 11 include digital signal
processor 507, programmable micro controller 513, DSP program and data
Appeal 2012-010812
Application 12/706,541
Reexamination Control 90/010,751
Patent U.S. 7,542,878 B2

11
ram 508, data storage memory 522 and control program memory 523.” Davis,
col. 4, ll. 27-31.
FF7
The details of the cardiac measurement and analysis algorithm
operations (block 932) are shown in FIG. 13 and 14. It is noted
that all of the operations shown in FIGS. 13 and 14 are controlled
by stored programs and performed by digital signal processor 507
and microcontroller 513.
Davis, col. 7, ll. 45-50.
Discussion
The issue in this rejection is whether Davis’s device 11 meets the
claimed limitations of a “multi-purpose personal data accessory” which
“execute[s] health monitoring software” as those terms would be interpreted
by one of ordinary skill in the art in light of the ‘878 patent. We have
construed the claimed multi-purpose personal data accessory to be a device
which is capable of executing health monitoring software without using
additional hardware. In other words, the health monitoring software is
executed by hardware in the multi-purpose personal data accessory, which
also performs other functions associated with the data accessory.
Davis describes specific processors, 102, 103, 507, and 513, who’s only
disclosed function is to monitor the health of the patient wearing the device.
FF4, FF6, & FF7. The processors can therefore be characterized as hardware
“dedicated” to health monitoring. As already discussed, the ‘878 Patent
specifically distinguishes its invention from health monitoring devices that
comprise additional processors and hardware dedicated only to health care
monitoring and cuts against the Davis device as being “multi-purpose.”
Appeal 2012-010812
Application 12/706,541
Reexamination Control 90/010,751
Patent U.S. 7,542,878 B2

12
FF8
Various methods and devices for monitoring the health of a
person are known in the art. They include special hardware for
gathering and processing physiological data and a wireless device
utilizes for transmitting the gathered information. The special
hardware is much less sophisticated and less efficient as the
hardware of cellular phones. The development of dedicated
hardware is usually costly.
‘878 Patent, col. 3, ll. 44-50.
FF9
The following description also refers to a cellular phone that can
be provided with health monitoring software that enables the
cellular phone to process physiological data, and especially
without any addition of complex hardware, such as additional
processors. It is noted that the invention can be applied to other
multi-task and/or multi-purpose accessories, especially personal
data accessories (PDAs) other that [sic] cellular phones that in
turn may include palm-computers and the like.
‘878 Patent, col. 5, ll. 10-18.
Davis describes a device with a cellular phone 509 and separate
hardware to process the physiological data on the patient’s physical condition.
Such a device is the type of health monitor which the ‘878 Patent expressly
characterizes as prior art. FF8. Consistently, the illustrative examples in the
‘878 Patent are drawn to a cellular phone which executes the health
monitoring software without recourse to additional special hardware as
described by Davis. In view of these specific disclosures in the ‘878 Patent, it
would be unreasonable to read “multi-purpose data accessory device” with the
claimed software execution function to cover Davis’s device which contains a
Appeal 2012-010812
Application 12/706,541
Reexamination Control 90/010,751
Patent U.S. 7,542,878 B2

13
separate processor “to execute the health monitoring software” devoted to this
purpose and no other.
Our analysis is consistent with In re Abbott Diabetes Care Inc., 696
F.3d 1142, 1150 (Fed. Cir. 2012), in which disparaging remarks in the patent
specification with respect to a certain structural feature of a prior art device,
coupled with the finding that every embodiment in the specification lacked
such a structure, was sufficient basis to interpret the claim language to exclude
the structural feature.
Independent claims 1, 19, 34, and 35 each require that the multi-
purpose personal data accessory execute the health monitoring software. As
this limitation is not met by Davis, we reverse the rejection of these claims
and the claims which depend upon them. Consequently, we reverse the
rejection of claims 1-4, 8-12, 19-22, 25-27, 31, and 34-37 as anticipated by
Davis.

Rejections 4-9. The claims stand rejected as obvious in view of Davis and
additionally cited secondary publications. The Examiner did not provide an
explanation as to how the additionally cited secondary publications make up
for the deficiency in Davis. Consequently, we are compelled to reverse
Rejections 4-9, covering claims 5-7, 13, 14, 16-18, 23, 24, 28-30, 32, and 33.

ROHDE REJECTIONS
Rejection 2. Claims 1-4, 8, 10-12, 15, 19-22, 27, 31, 34, and 36 stand rejected
as anticipated under 35 U.S.C. § 102(e) by Rohde.

Appeal 2012-010812
Application 12/706,541
Reexamination Control 90/010,751
Patent U.S. 7,542,878 B2

14
Claims 1-4, 8, 10-12, 15, 31, and 34
Rohde describes a portable modular diagnostic medical device. The
medical device is “based on a portable multipurpose computerized platform,
such as those designed primarily for playing video games.” Rohde, Abstract.
“In a preferred embodiment, the platform is a Nintendo Gameboy [sic] video
game device, and the medical component is a cartridge that plugs into the
Gameboy [sic] device.” Id. at col. 3, ll. 7-10. The Examiner found that
Rohde describes all the features of the claimed multi-purpose personal data
accessory.
With respect the claimed limitation of “control a long range
transmission of the processed physiological data to a remote entity” of claim
1, the Examiner found this met by the following disclosure:
FF10
The clinician is able to select an ECG signal from any of a
number of different leads. Outputting of the signal via the serial
port permits the acquired data to be sent via cable to a local
laptop computer or smart modem. Outputting of the signal on the
speaker or through the headphones may enhance data
visualization for the clinician; the speaker can also be used as an
acoustic modem to transmit the signal from a remote location to a
hospital via a normal phone connection.
Rohde, col. 6, ll. 43-51
Patent Owner contends the Rohde does not describe “long-range
transmission” of data or “control” of long range transmission as recited in
claim 1. App. Br. 22-24.
We agree with Patent Owner that the Examiner did not establish that
Rohde’s Game Boy
®
controls long-range transmission of processed
Appeal 2012-010812
Application 12/706,541
Reexamination Control 90/010,751
Patent U.S. 7,542,878 B2

15
physiological data. We construed the latter phrase to mean that the
transmission of data is controlled by the multi-purpose personal data
accessory, without intervention by a person. Rohde does not expressly
describe this feature. According to Rohde, the acquired physiological data is
sent to a “smart modem” or by an “acoustic modem” to “a remote location to
a hospital via a normal phone connection.” Rohde, col. 6, ll. 43-51. The
Examiner did not provide evidence in either case that the transmission by the
modems through the phone connection was controlled by the Game Boy
®
as
we have interpreted “control a long range transmission” to require. Answer
58. Consequently, we conclude that the Examiner’s decision not to adopt the
anticipation rejection of claims 1-4, 8, 10-12, 15, 31, and 34 is not supported
by a preponderance of the evidence. We reverse the Examiner’s
determination with respect these claims.

Claims 19-22, 27, and 36
Independent claim 19 differs from claim 1 in not requiring that the long
range transmission be controlled by the multi-purpose personnel data
accessory. Claim 19 recites “controlling long range transmission of the
physiological data,” but it does not specify how the control is accomplished.
Thus, even if the subject or a clinician controls the delivery of the data, this
meets the claimed limitation.
11

11
Claim 31, which depends on claim 19, in contrast, specifically requires that
the multi-purpose device control the long range transmission of the processed
data (“wherein transmitting the processed physiological data comprises
Appeal 2012-010812
Application 12/706,541
Reexamination Control 90/010,751
Patent U.S. 7,542,878 B2

16
Rohde describes transmitting physiological data through a phone
connection. Rohde, col. 6, ll. 43-51. Patent Owner takes the position that the
long range transmission must be wireless. Although Patent Owner provided
evidence that long range transmission included wireless cellular
communications, including citation to a supplemental declaration by Michael
K. Dempsey (App. Br. 21-22), such evidence does not exclude a phone line
from accomplishing long range transmission of data. As discussed on page 8
of the Claim Interpretation section, examples of wireless networks for long
range transmission are described, but so is the internet, which is not
necessarily wireless. In sum, there is insufficient evidence that one of
ordinary skill in the art would have construed “long range transmission” to be
limited to wireless transmission.
Patent Owner also contends that the Rohde’s Game Boy
®
is not a multi-
purpose personal data accessory because it is for a single purpose which is
dictated by the cartridge installed in the Game Boy
®
. App. Br. 20-21. This
argument is not persuasive. While the Game Boy
®
is a preferred embodiment
described by Rohde, Rohde’s disclosure it not limited to this device. Rohde
expressly describes “multipurpose” devices:
FF11
This application is intended to cover any adaptations or variations
of the present invention. For example, the invention has been
shown in relation to a NINTENDO GAMEBOY device.
However, any portable handheld multipurpose computerized

controlling a long range transmission of the processed physiological data, by
the multi-purpose personal data accessory.”

Appeal 2012-010812
Application 12/706,541
Reexamination Control 90/010,751
Patent U.S. 7,542,878 B2

17
platform conforming to the claimed invention is amenable, such
as a personal digital assistant (PDA).
Rohde, col. 16, ll. 47-53.
In sum, based on the totality of the evidence, we conclude that a
preponderance of the evidence supports the Examiner’s determination that
claims 19-22, 27, and 36 are anticipated by Rohde. We affirm the rejection
with respect to these claims.

Rejections 10-16. The Examiner set forth additional rejections of the claims
as obvious in view of Rohde and various secondary references.
With respect to claims 5-7, 9, 13, 14, 16-18, 32, 33, and 35, the
Examiner did not explain how the additionally cited secondary publications
make up for the deficiency in Rohde. Consequently, we are compelled to
reverse Rejections 10-16 with respect to these claims.
Claims 23, 24, 26, 28-30, and 37 depend on claim 19, which we found
anticipated by Rohde. Patent Owner did not provide any rebuttal evidence or
arguments as to why these claims are not obvious in view of the additionally
cited references. Consequently, we affirm the rejections with respect to these
claims for the reasons set forth by the Examiner.

ALBERT REJECTIONS
Findings of Fact
FF12 Albert describes an apparatus and method for monitoring a
patient’s electrocardiogram (ECG):
The present invention relates to an improved communication
system for conveying ECG data or other biomedical waveform
Appeal 2012-010812
Application 12/706,541
Reexamination Control 90/010,751
Patent U.S. 7,542,878 B2

18
data more directly between the patient and an attending doctor’s
location. The patient employs a Heart Card-type of device that
converts the patient’s ECG signal into a frequency modulated
audio signal that may then be analyzed by audio inputting via a
telephone system to a selected hand-held computer device that
functions to digitize, record and demodulate the frequency
modulated signal for presentation and viewing on the hand-held
computer display screen.
Albert, col. 2, ll. 5-15.
FF13
The hand-held computer is one with integrated microphone,
audio analog to digital converter, digital to analog converter,
speaker, and central processing unit with memory for performing
various computational data storage and signal processing tasks.
Albert, col. 2, ll. 25-29.
FF14 Figure 1, reproduced below, show’s Albert’s ECH monitoring
system:

Figure 1 shows Heart Card 12 disposed on patient for detecting and
recording an ECG, audio transmission of the signal into a phone which is
relayed through the phone system, and then played into the palmtop computer.
Albert, col. 3, ll. 9-41.

Appeal 2012-010812
Application 12/706,541
Reexamination Control 90/010,751
Patent U.S. 7,542,878 B2

19
FF15 Figure 3 is reproduced below:

As shown in FIG. 3, the original receiving phone 26 and handset
28 may be used to relay the data via telephone system link 53 to
yet another phone 26R and handset 28R as located at another
remote location. Such further transfer may be necessitated by a
need for second opinion or additional comparison data. The
hand-held computer 16 may be operated to emit the audible ECG
data from handset 18 [sic, 28] for transmission via telephone
interconnect 53 to the remote phone 26R whereupon handset 28R
provides audible input to another hand-held computer 16R for
processing and display of the ECG data.
Albert, col. 4, ll. 8-18.

Rejection 3. Claims 1, 2, 4, 10, 12, 15, 19, 20, 22, 27, 31, 34, and 36 stand
rejected as anticipated under 35 U.S.C. § 102(e) by Albert.
The Examiner found that Albert described all the elements of the
claimed personal health monitor. Answer 13-14. For example, Albert teaches
that physiological data collected from a physiological input device (“Heart
Card 12”) can be transmitted to a multi-purpose personal data accessory
(“hand-held computer”) (FF12 & FF14), where the latter can perform data
processing tasks (FF13). The latter meets the limitations of claim 1 of:
Appeal 2012-010812
Application 12/706,541
Reexamination Control 90/010,751
Patent U.S. 7,542,878 B2

20
multipurpose personal data accessory adapted to execute health
monitoring software such as to enable the multi-purpose personal
data accessory to receive the physiological data, process the
physiological data to provide processed physiological data.
In Figure 3, the hand-held computer 16 is shown as transmitting the
processed physiological data to another remote location, using a phone and
telephone system. FF15. The Examiner found that this disclosure met the
claimed limitation of “control a long range transmission of the processed
physiological data to a remote entity.” Answer 14.

Claims 1, 2, 4, 10, 12, 15, 31, and 34
We interpreted the phrase “control a long range transmission of the
processed physiological data to a remote entity” as recited in claim 1 to
require that the device, without intervention from a person, transmit the data
to the remote location. Patent Owner contends that Albert does not meet this
limitation because:
Albert describes using a telephone—not the hand-held computer
16—to transmit data. Consequently, the hand-held computer 16
is not adapted to control long range transmission of processed
physiological data. Like Rohde, Albert requires a person to
operate the local telephone, to achieve any sort of transmission
beyond the palmtop computer 16.
App. Br. 28.
The Examiner responded that the local telephone handset is employed
in the long range transmission and, therefore, long range transmission itself is
controlled by the multipurpose palmtop computer. Answer 63.
The Examiner’s argument is not persuasive. As discussed by Patent
Owner and supported by a preponderance of the evidence, Albert teaches that
Appeal 2012-010812
Application 12/706,541
Reexamination Control 90/010,751
Patent U.S. 7,542,878 B2

21
audible ECG data is relayed from the hand-held computer 16 to the handset
28, which in turn transmits the data through a telephone interconnect. FF12 &
FF14. Albert does not provide information on how the handset and telephone
interconnect are operated, so there is insufficient information to support the
Examiner’s conclusion that it is the palmtop computer which performs the
control, rather than a person dialing a phone, or some other device or means.
For this reason, we conclude that the Examiner did not establish by a
preponderance of the evidence that Albert anticipates claims 1 and 34, and
dependents claim 2, 4, 10, 12, 15, and 31. We reverse the rejection with
respect to these claims.

Claims 19, 20, 22, 27, 36
As discussed already, claim 19 does not specify that the multi-purpose
personal data accessory performs the claimed step of “controlling long range
transmission of the processed physiological data.” Thus, in contrast to claim
1, the evidence supports the Examiner’s finding that this step is taught by
Figure 3 of Albert. FF15. We have considered Patent Owner’s arguments,
but found them unavailing because Patent Owner did not address Albert’s
disclosure at column 4, lines 4-18 (FF15), which the Examiner found to be
anticipatory. We thus affirm the rejection of claims 19, 20, 22, 27, and 36 as
anticipated by Albert.

Rejections 17-20. The Examiner set forth additional rejections of the claims
as obvious in view of Albert and various secondary references.
Appeal 2012-010812
Application 12/706,541
Reexamination Control 90/010,751
Patent U.S. 7,542,878 B2

22
With respect to claims 5, 6, 13, 14, and 35, the Examiner did not
explain how the additionally cited secondary publications make up for the
deficiency in Davis. Consequently, we are compelled to reverse Rejections
17-20 with respect to these claims.
Claims 23 and 37 depend on claim 19, which we found anticipated by
Albert. Patent Owner did not provide any rebuttal evidence or arguments as
to why these claims are not obvious in view of the additionally cited
references. Consequently, we affirm the rejections of these claims for the
reasons set forth by the Examiner.

SUMMARY
The disposition of Rejections 1-20 is as follows:
Rejection 1 of claims 1-4, 8-12, 19-22, 25-27, 31, and 34-37 as
anticipated by Davis is reversed.
Rejection 2 of claims 1-4, 8, 10-12, 15, 31, and 34 as anticipated by
Rohde is reversed.
Rejection 2 of claims 19-22, 27, and 36 as anticipated by Rohde is
affirmed.
Rejection 3 of claims 1, 2, 4, 10, 12, 15, 31, and 34 as anticipated by
Albert is reversed.
Rejection 3 of claims 19, 20, 22, 27, and 36 as anticipated by Albert is
affirmed.
Rejections 4-9 of claims 5-7, 13, 14, 16-18, 23, 24, 28-30, 32, and 33 as
obvious in view of Davis and secondary references are reversed.
Appeal 2012-010812
Application 12/706,541
Reexamination Control 90/010,751
Patent U.S. 7,542,878 B2

23
Rejections 10-16 of claims 5-7, 9, 13, 14, 16-18, 32, 33, and 35 as
obvious in view of Rohde and secondary references are reversed.
Rejections 10-16 of claims 23, 24, 26, 28-30, and 37 as obvious in view
of Rohde and secondary references are affirmed.
Rejections 17-20 of claims 5, 6, 13, 14, and 35 as obvious in view of
Albert and secondary references are reversed.
Rejections 17-20 of claims 23 and 27 as obvious in view of Albert and
secondary references are affirmed.

TIME PERIOD FOR RESPONSE
Requests for extensions of time in this ex parte reexamination
proceeding are governed by 37 C.F.R. § 1.550(c). See 37 C.F.R. § 41.50(f).

AFFIRMED-IN-PART
ack

Patent Owner:

BRINKS HOFER GILSON & LIONE
P.O. BOX 10395
CHICAGO, IL 60610

Third Party Requester:

HARRITY & HARRITY, LLP
11350 RANDOM HILLS ROAD, SUITE 600
FAIRFAX, VA 22030