Ex Parte 6368273 et al

Patent Trial and Appeal Board

May 18, 2016

90013250 (P.T.A.B. May. 18, 2016)

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.
90/013,250 05/21/2014 6368273 1737.563REX8 7098
60683 7590 09/15/2016
Robert Bosch LLC
1800 W. Central Road
Mount Prospect, IL 60056
EXAMINER
BANANKHAH, MAJID A
ART UNIT PAPER NUMBER
3992
MAIL DATE DELIVERY MODE
09/15/2016 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 ROBERT BOSCH HEALTHCARE SYSTEM, INC.
____________________

Appeal 2016-002468
Reexamination Control 90/013,250
Patent 6,368,273 B1
Technology Center 3900
____________________

Before MARC S. HOFF, ERIC B. CHEN, and JUSTIN T. ARBES,
Administrative Patent Judges.

HOFF, Administrative Patent Judge.

DECISION ON REQUEST FOR REHEARING

INTRODUCTION
Patent Owner requests rehearing of our Decision entered May 18,
2016 (“Decision”), in which we affirmed the rejection of claims 1–10.

OPINION
We will maintain the rejections.

PRINCIPLES OF LAW
One cannot show nonobviousness by attacking references individually
where the rejection is based on a combination of references. In re Keller,
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Patent No. 6,368,273 B1

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642 F.2d 413, 425 (CCPA 1981). The test of obviousness is not whether the
features of a secondary reference may be bodily incorporated into the
structure of the primary reference, nor is it that the claimed invention must
be expressly suggested in any one or all of the references. Rather, the test is
what the combined teachings of the references would have suggested to
those of ordinary skill in the art. Id. at 425.
ANALYSIS
NO KNOWN METHOD
Appellant argues that the Board misapprehended the argument that the
Examiner has not established that there exists a known method of combining
Lyons’ script customization method with Goodman’s treatment plan
program. Req. Reh’g 2. Appellant contends that the Board incorrectly
characterized Appellant’s argument as one against the bodily incorporation
of elements of Lyons into Goodman, when Appellant’s argument concerned
the Examiner’s alleged error in asserting that Goodman teaches a “base
customized programmed algorithm for treatment plans” that could be
modified by Lyons using a known method. Id. at 3.
Appellant contests the apparent suggestion by the Examiner that
Goodman teaches a (single) “base customized programmed algorithm for
treatment plans,” arguing instead that each of Goodman’s algorithms is
customized. Id.
When considering what the combined teachings of the references
would have suggested to those of ordinary skill in the art, however, we
remain in agreement with the Examiner that Goodman discloses generating a
treatment plan program that displays or conveys information to the patient,
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and Lyons discloses generating a script program that displays information to
a client user. See Ans. 7. Whether or not each of Goodman’s algorithms is
customized does not negate the motivation to modify Goodman to include
the script program of Lyons, which makes communication more efficient as
it could readily and easily be interpreted by both the server and the client
and effectively reduces the use of state memory upon what would otherwise
be a stateless system. See id.; Decision 9–10.
Appellant argued that “Lyons[’] program customization method
merely inserts custom text (to be displayed) in an existing program.
Goodman does not have an existing ‘base’ program in which custom text
may be inserted.” App. Br. 15. “[I]t was and is important to clarify that
Goodman does not teach a base program that merely needs tweaking (i.e. by
the method of Lyons) to generate the customized treatment plans taught by
Goodman.” Req. Reh’g 5. However, the “base” algorithm referred to by the
Examiner (FinalAct. 11) may simply mean any of the customized algorithms
of Goodman, not necessarily anything that is common to all algorithms. We
agree with the Examiner that the result of the combination, “a program that
displays personal information,” would have been predictable to one of
ordinary skill in the art and that a person of ordinary skill in the art would
have had reason to combine the references’ teachings in the manner
proposed by the Examiner. See FinalAct. 11. Appellant’s argument is not
persuasive because the same motivation to modify Goodman using the
teaching of Lyons (i.e. “insert[ing] custom text (to be displayed) in an
existing program”), discussed supra, exists whether or not each of the
programs of Goodman is customized.
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Patent No. 6,368,273 B1

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NO CHANGE IN RESPECTIVE FUNCTIONS
We remain unpersuaded by Appellant’s argument that the
combination of Goodman and Lyons would require “a substantial change in
function of at least one of the two elements.” App. Br. 16; Req. Reh’g 5–8.
Appellant’s argument that Lyons does not disclose “generating, within a
script, a conditional logic branching statement, a timing operation, an
operation that compares values, or an operation that accesses a system time-
of-day clock” is not relevant to the Examiner’s proposed modification of
Goodman with Lyons. App. Br. 16. Considering what the combined
teachings of the references would have suggested to those of ordinary skill
in the art, we agree with the Examiner that Lyons suggests generating
Goodman’s treatment plan program as a script program, a known method of
communicating information between remote devices. See Ans. 11; Decision
10. The Examiner’s proposed combination need not discard the teachings of
Goodman regarding conditional logic branching statements, timing
operations, operations that compare values, or operations that access a
system time-of-day clock, in order to incorporate the teachings of Lyons.
We, therefore, conclude that Appellant has not shown any points that
we misapprehended or overlooked in our Decision.

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CONCLUSION
We have granted Appellant’s request for rehearing to the extent that
we have reconsidered our decision affirming the rejection of claims 1–10,
but we decline to modify the Decision in any way.
Pursuant to 37 C.F.R. § 41.79(d), this Decision is final for the purpose
of judicial review. A party seeking judicial review must timely serve notice
on the Director of the United States Patent and Trademark Office. See
37 C.F.R. § 90.2.

REHEARING DENIED

PATENT OWNER:

ROBERT BOSCH HEALTHCARE SYSTEMS, INC.
2400 Geng Road, Suite 200
Palo Alto, CA 94303

THIRD PARTY REQUESTOR:
STERNE, KESSLER, GOLDSTEIN
& FOX P.L.L.C.
1100 NEW YORK AVENUE, N.W.
WASHINGTON, DC 20005