Ex Parte 8140663 et al

Patent Trial and Appeal Board

Dec 29, 2016

90013335 (P.T.A.B. Dec. 29, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO.
90/013,335
60683 7590
Robert Bosch LLC
FILING DATE
09/03/2014
12/30/2016
1800 W. Central Road
Mount Prospect, IL 60056
FIRST NAMED INVENTOR
8140663
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
1737 .563REX9 9684
EXAMINER
MENEFEE, JAMES A
ART UNIT PAPER NUMBER
3992
MAILDATE DELIVERY MODE
12/30/2016 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
Exparte ROBERT BOSCH HEALTHCARE SYSTEMS, INC.
Appeal 2016-007772
Reexamination Control 90/013,335
Patent No. US 8, 140,663 B2
Technology Center 3900
Before MARC S. HOFF, STEPHEN C. SIU, and ERIC B. CHEN,
Administrative Patent Judges.
HOFF, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from the rejection of
claims 6 and 23. 1 Claims 1, 5, and 22 are confirmed in the present
proceeding. 2 We have jurisdiction under 35 U.S.C. §§ 134(b) and 306.
An oral hearing was held on December 14, 2016. The record will
include a written transcript of the oral hearing.
We affirm.
1 Claims 1-5, 7-22, and 24 are not subject to reexamination.
2 Claims 5 and 22 are rejected as obvious over the combination of Fu and
Clough in Merged Reexamination Proceeding 95/002, 178 and 95/002,221.
Appeal No. 2016-000252, Decision at 6-8.
Appeal 2016-007772
Reexamination Control 90/013,335
Patent No. 8,140,663 B2
The '663 patent issued to Brown on March 20, 2012 and is assigned to
Robert Bosch Healthcare Systems, Inc. The '663 patent is a system or
remotely monitoring an individual. A server system generates a script
program from a set of queries. The script program is executable by a remote
apparatus that displays information and/or a set of queries to the individual
through a user interface. Responses to the queries, together the individual
identification information, are sent from the remote apparatus to the server
system across a communication network. The server system also includes an
automated answering service, for providing a series of questions for an
individual at the remote apparatus, from a stored set. Responses to each
provided question are stored, and a service is provided based on the
individual's response to the questions. See Abstract.
Claim 6 illustrates the claims on appeal:
6. The system of claim 5 wherein the program is further based on
one or more previous responses made by the individual to at least
one prev10us query
The Examiner relies upon the following prior art in rejecting the
claims on appeal:
Chaco
Lyons
Wright Jr.
us 5,465,082
us 5,623,656
us 5,704,029
Nov. 7, 1995
Apr. 22, 1997
Dec. 30, 1997
Throughout this decision, we make reference to Appellant's Brief
("App. Br.," filed Dec. 21, 2015) and the Examiner's Answer ("Ans.,"
mailed Jan. 20, 2016) for their respective details.
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Reexamination Control 90/013,335
Patent No. 8,140,663 B2
REJECTIONS
Claims 6 and 23 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Chaco, Wright, and Lyons.
ISSUES
Appellant argues that neither Chaco nor Wright teach or suggest a
monitoring application in a server, which also includes a program generator.
App. Br. 8.
Appellant further asserts that that the combination of Chaco and
Wright does not disclose or suggest a remote apparatus to present one or
more queries to the individual (being monitored). App. Br. 8-9.
Appellant contends that the Examiner did not comply with the
requirement of MPEP § 2143 that a base device, comparable device, and
improvement technique be identified. App. Br. 15-21.
Appellant's arguments present us with the following issues:
1. Does the combination of Chaco and Wright teach or suggest a
monitoring application in a server, which also includes a program generator?
2. Does the combination of Chaco and Wright disclose or suggest a
remote apparatus to present one or more queries?
3. Did the Examiner comply with the requirement ofMPEP § 2143
that a base device, comparable device, and improvement technique be
identified?
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Reexamination Control 90/013,335
Patent No. 8,140,663 B2
ANALYSIS
UNDERLYING REJECTION OF PARENT CLAIMS 5 AND 22
Appellant begins arguing for the patentability of appealed claims 6
and 23 by asserting error in the rejection of parent claims 5 and 22 over
Chaco and Wright.
Appellant's argument that neither Chaco nor Wright teach or suggest
a monitoring application in a server, which also includes a program
generator, is not persuasive to show Examiner error. See App. Br. 8. As
discussed in the Answer, the Examiner has adopted the rationale expressed
in the Request for Reexamination, Control No. 95/002,221 ("'221 Request").
See Ans. 4. The '221 Request makes clear that Chaco is relied upon to teach
the concept of "monitoring." '221 Request at 196. Wright is relied upon to
teach the recited server: "The PC, in Wright, Jr., performs the same
functions as the server defined in the '663 Patent." Id. at 197. Further,
Wright "discloses a system designed such that a remote apparatus executes a
program to communicate a set of queries to an individual and collect the
responses of the individual." Id. at 202---03, citing Wright col. 3:41-55; col.
7:6-10; and col. 7:14--25. As illustrated in Figure 1 of Wright, which is
reproduced in the Request, a forms creation program, running on the PC,
creates a form, and form descriptors or field description records are
transferred to portable computer (PDA) 104. Wright col. 6:36-44. After the
user completes a particular form, the collected data, stored in a form data
array, is saved in the PDA, and may be sent to host computer 102 (the
"PC"), for further processing. See Wright col. 7:33-39. A program that
communicates a set of queries and collects responses to those queries meets
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Patent No. 8,140,663 B2
Appellant's proffered definition of "monitoring," as to "watch, observe,
listen to, or check (something) for a special purpose over a period of time."
Reply Br. 5. We agree with the Examiner, then, that the combined teachings
of Chaco and Wright suggest the claimed "server comprising a monitoring
application including a program generator." See Ans. 4.
Appellant contends that the combination of Chaco and Wright does
not disclose or suggest a remote apparatus to present one or more queries to
the individual (being monitored). App. Br. 8-9. In Chaco, a nurse enters
information into "nurse notepad computer 2310." Id. We are not persuaded
by Appellant's argument because we agree with the Examiner that the
relevant limitations - that queries be presented to the individual, that
responses be collected from the individual, that an individual can input
responses - are statements of intended use or intended result. See Ans. 5---6.
These limitations do not limit the structure of the '663 device. The
"individual" mentioned in the claims forms no part of the inventive system
or method. The combination of Chaco and Wright is capable of performing
the claimed functionality, whether a nurse or a patient is the person who
interacts with the apparatus.
Appellant further asserts that the Examiner has not identified a
rationale to modify Chaco to incorporate presenting queries to the patient,
rather than to the nurse; and that the combination of Chaco and Wright does
not disclose or suggest a user interface through which the individual can
input the one or more responses. App. Br. 10, 11. These assertions are
merely a repetition of Appellant's argument addressed supra, that Chaco
does not apply to the claimed invention because a nurse, rather than a
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patient, interacts with the presented queries. As analyzed supra, we are not
persuaded by this argument.
CLAIMS 6 AND 23
Appellant's specific arguments directed to claims 6 (and 23) consist of
two sections. In the first section, Appellant repeats the assertion that the
combination of Chaco and Wright is deficient with respect to several
limitations of parent claim 5. See App. Br. 13-14. We find that assertion
unpersuasive, as discussed supra. In the second section, Appellant alleges
that the Examiner did not comply with the requirement of MPEP § 2143 that
a base device, comparable device, and improvement technique be identified.
App. Br. 15-21. Appellant's arguments are overly narrow, unsupported by
relevant case law, and thus, unpersuasive. We agree with the Examiner's
finding that the combined Chaco/Wright device, applied against parent
claims 5 and 22, constitutes the base device. See Ans. 9. We further agree
with the Examiner that the Lyons device is sufficiently comparable that its
teachings may be applied to the combination of Chaco and Wright, and that
the teachings of Lyons concerning using scripts based on previous answers
to queries constitutes the improvement technique. See Ans. 10-12.
We conclude that the Examiner did not err in rejecting claims 6 and
23 as being unpatentable over Chaco, Wright, and Lyons. We sustain the
Examiner's§ 103 rejection.
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Patent No. 8,140,663 B2
CONCLUSIONS
1. The combination of Chaco and Wright suggests a monitoring
application in a server, which also includes a program generator.
2. The combination of Chaco and Wright teaches a remote apparatus
to present one or more queries.
3. The Examiner complied with the requirement ofMPEP § 2143 that
a base device, comparable device, and improvement technique be identified.
ORDER
The Examiner's decision to reject claims 6 and 23 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)(l)(iv).
AFFIRMED
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