Ex Parte 8140663 et al

Patent Trial and Appeal Board

Mar 31, 2016

90013105 (P.T.A.B. Mar. 31, 2016)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
90/013,105 02/05/2014 8140663 1737.563REX6 1045
60683 7590 04/01/2016
Robert Bosch Healthcare Systems, Inc.
2400 GENG ROAD, SUITE 200
PALO ALTO, CA 94303
EXAMINER
MENEFEE, JAMES A
ART UNIT PAPER NUMBER
3992
MAIL DATE DELIVERY MODE
04/01/2016 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 STEPHEN J. BROWN
____________________

Appeal 2016-000698
Reexamination Control 90/013,105
Patent No. US 8,140,663 B2
Technology Center 3900
____________________

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

HOFF, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(b) from the Examiner’s
Final Rejection of claims 16, 17, 36, and 37. Claims 1, 5, 16, 17, 22, and
34–37 are subject to reexamination. Claims 1, 5, 22, 34, and 35 are
conditionally confirmed. We have jurisdiction under 35 U.S.C. §§ 134(b)
and 306.
We affirm.
The ’663 patent issued to Brown on March 20, 2012, and is assigned
to Robert Bosch Healthcare Systems, Inc. The ’663 patent describes a
system and method for remote medical monitoring of an individual. The
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claims under appeal (16, 17, 36, and 37) recite executing a customized
program presenting one or more queries to the individual and collecting one
or more responses. Execution of the program prompts the individual to
connect at least one monitoring device to a remote apparatus, and facilitates
collection and transmission of measurements to the remote apparatus.
Claims 16 and 17 illustrate the claims on appeal. Parent claims 5 and
15 are also reproduced for convenience.
5. A system for remotely monitoring an individual,
comprising:
a server comprising a monitoring application including a
program generator; and
a remote apparatus including (i) a processor for executing a
customized program for the individual to present one or more
queries to the individual and collect one or more responses to the
one or more queries from the individual, wherein said program
includes (1) a set of statements regarding general health
conditions and (2) at least one of (a) a portion specific to the
health of said individual and (b) a message corresponding to said
individual from a health care provider associated with said
individual, (ii) a user interface through which the individual can
input the one or more responses to the one or more queries, and
(iii) a memory configured to store a unique identification code
corresponding to said individual;
wherein the server is configured to (a) create the
customized program for the individual based on the one or more
queries using the program generator, (b) transmit the program to
the remote apparatus, and ( c) receive the one or more responses
to the one or more queries from the remote apparatus.
15. The system of claim 5, further comprising one or more
monitoring devices connectable to the remote apparatus.
16. The system of claim 15 wherein execution of the
program prompts the individual to connect at least one of the
monitoring devices to the remote apparatus.
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17. The system of claim 16 wherein execution of the
program facilitates (i) collection of measurements by the at least
one monitoring device and (ii) transmission of said
measurements to said remote apparatus.

The Examiner relies upon the following prior art in rejecting the
claims on appeal:
The rejection of claims 16, 17, 36, and 37 under 35 U.S.C. § 103(a) as
being unpatentable over U.S. Patent No. 5,465,082 to Chaco (“Chaco”) in
view of U.S. Patent No. 5,704,029 to Wright (“Wright”) and International
Pub. No. WO 94/24929 to Evers et al. (“Evers PCT”)
Throughout this decision, we make reference to Appellant’s Appeal
Brief (“App. Br.,” filed June 29, 2015) and Reply Brief (“Reply Br.,” filed
September 24, 2015) and the Examiner’s Answer (“Ans.,” filed July 24,
2015) for their respective details.
REJECTIONS
Claims 16, 17, 36, and 37 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Chaco, Wright, and Evers PCT.

ISSUES
Appellant argues that the Examiner’s proposed combination of Chaco,
Wright, and Evers PCT does not disclose all the elements of the claims at
issue. App. Br. 12–15. Specifically, Appellant contends that the Examiner,
when rejecting parent claims 5 and 15, relied on nurse notepad terminal
2310 in Chaco as corresponding to the claimed “remote apparatus,” but
when specifically discussing dependent claims 16, 17, 36, and 37, relied on
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microcomputer 414 of Chaco as the remote apparatus. Id. at 10, 13–15.
Appellant thus alleges that the Examiner did not identify a single element in
Chaco that satisfies all the limitations of the claimed “remote apparatus.” Id.
Appellant further argues that the Examiner has not stated a legally
sound rationale for combining Chaco with Wright and Evers PCT. Id. at 15–
18. Appellant suggests that the proposed combination prompts several
unanswered questions, such as “[h]ow many hospitalized patients are of
sufficient physical and mental capability to connect monitoring equipment to
a computer?” and “how would training a patient to connect equipment to a
computer” be “more cost-effective than simply connecting the equipment to
the computer when the equipment is placed in the hospital room?” App. Br.
11.
Appellant’s arguments present us with the following issues:
1. Has the Examiner identified a component in Chaco that
corresponds to the “remote apparatus,” recited in claims 16, 17, 36, and 37,
as well as independent claim 5?
2. Has the Examiner identified a legally appropriate reason,
motivation, suggestion, or other rationale for combining Chaco, Wright, and
Evers PCT?

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PRINCIPLES OF LAW
“The combination of familiar elements according to known methods
is likely to be obvious when it does no more than yield predictable results.”
KSR Int’l v. Teleflex Inc., 550 U.S. 398, 416 (2007).

ANALYSIS
PRIMA FACIE OBVIOUSNESS
We are not persuaded by Appellant’s argument that Chaco fails to
disclose or suggest a remote apparatus, as recited in parent claim 5, “wherein
execution of the program prompts the individual to connect at least one of
the monitoring devices to the remote apparatus,” as recited in claim 16. See
App. Br. 10. According to Appellant, the Examiner relied upon one element
in Chaco (nurse notepad terminal 2310) in rejecting parent claim 5, but
relied upon a different element (microcomputer 414) in rejecting dependent
claim 16. App. Br. 10.
The rejection in this reexamination relies on the rejection of parent
claim 5, not a subject of this appeal, made in the merged proceeding
concerning Reexamination Control Nos. 95/002,178 and 95/002,221
(“Merged Proceeding”). Appellant argues that the rejection in the Merged
Proceeding does not assert that Chaco’s microcomputer 414 includes the
claimed processor for executing a customized program for the individual to
present one or more queries to the individual, or a customized program to
collect one or more responses to the one or more queries, or a user interface
through which the individual can input the one or more responses to the one
or more queries. See App. Br. 14; Reply Br. 6. We find, contrary to
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Appellant’s argument, that the Examiner in the Merged Proceeding does cite
microcomputer 414 of Chaco in its rejection of claim 5. The Right of
Appeal Notice in the Merged Proceeding dated November 10, 2014
(“MP RAN”), discussing the rejection over Chaco and Wright, points out
that
Chaco discloses that one or more external devices, such as an
electrocardiogram, blood pressure monitor or respiration monitor
may be coupled to the microcomputer 414 through separate
external interface circuits 418 (Column 14 lines 36-40). In
addition to the circuitry shown in FIG. 4, it is contemplated that
the patient station microcomputer 414 may be coupled to a
keyboard (not shown) and to a video display monitor (not
shown) so that data on the patient may be viewed from and
entered into both the central computer system 432 and the
memory card 110 from the patient's bedside (column 15, lines 1-
7)."
MP RAN 133; see also MP RAN 109–110, 121.
We agree with the Examiner’s finding that the cited section of Chaco,
in combination with Wright, teaches a processor for executing a program
that presents queries (on the video display monitor) to an individual, a
processor for executing a program to collect one or more responses (using
the keyboard), and a user interface (to be displayed on the video display
monitor) through which an individual can input one or more responses
(using the keyboard) to one or more queries (displayed on said monitor).
See Ans. 5–7.
Because we find that the Merged Proceeding does rely on
microcomputer 414 of Chaco as the claimed “remote apparatus,” we are not
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persuaded by Appellant that the proposed combination of Chaco, Wright,
and Evers PCT does not teach the limitations of the claims. See App. Br. 14.
MOTIVATION TO COMBINE
We are similarly unpersuaded that, as Appellant argues, the proposed
modification of Chaco and Wright in view of Evers PCT does not amount to
the combination of prior art elements according to known methods to yield
predictable results (App. Br. 15). We agree with the Examiner’s conclusion
that modifying the prior elements of Chaco and Wright in view of Evers
PCT’s disclosure of “prompting” an individual to connect at least one of the
monitoring devices to the remote apparatus (see examples of test instructions
at pp. 43–46 of Evers PCT) would yield the predictable result of achieving a
remote apparatus that prompts the individual to connect a monitoring device.
The base device would operate just as disclosed in the combination of Chaco
and Wright, except that as modified in view of Evers PCT, the patient would
be given more responsibility in connecting his or her monitoring device(s).
Prompts are added to assist the patient in such connection. Each of the
elements from Chaco, Wright, and Evers PCT would thus perform according
to its established functions. See Ans. 10.
We agree with the Examiner that Chaco and Evers PCT both state that
medical personnel shortages are a known problem, and we agree that a
predictable result of the invention is a reduction in such shortages. See id. at
8–9. Although Appellant may be correct that the use of the Examiner’s
combination, for some patients, would not work to alleviate medical
personnel shortages (see App. Br. 16), that does not negate the gains to be
made through judicious use of the combination advanced by the Examiner.
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We agree with the Examiner that a decision whether to employ the
combination may be made on a case-by-case basis (Ans. 8).
We are similarly unpersuaded of the unobviousness of the claimed
invention by Appellant’s other arguments, such as whether training patients
to connect devices would be more costly, or whether some patients would
not be physically capable of connecting monitoring devices (see App. Br.
16–17). The relative financial viability of the invention is not, by itself, a
relevant factor in determining obviousness. See In re Farrenkopf, 713 F.2d
714, 718 (Fed. Cir. 1983) (“That a given combination would not be made by
businessmen for economic reasons does not mean that persons skilled in the
art would not make the combination because of some technological
incompatibility. Only the latter fact would be relevant.”). Again, we agree
with the Examiner that the appropriateness of using the proffered
combination of references may be determined on an individual patient basis
(see Ans. 8–10).
We conclude that the Examiner did not err in combining Chaco,
Wright, and Evers PCT to obtain the inventions recited in claims 16, 17, 36,
and 37, and stated a rationale having a logical underpinning to support the
legal combination of obviousness. We sustain the Examiner’s § 103(a)
rejection.

CONCLUSIONS
1. The Examiner has identified a component in Chaco that
corresponds to the “remote apparatus,” recited in claims 16, 17, 36, and 37,
as well as independent claim 5.
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2. The Examiner has identified a legally appropriate reason,
motivation, suggestion, or other rationale for combining Chaco, Wright, and
Evers PCT.

DECISION
The Examiner’s decision to reject claims 16, 17, 36, and 37 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)(1)(iv).

AFFIRMED

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kme
For Patent Owner:

ROBERT BOSCH HEALTHCARE SYSTEMS, INC.
2400 GENG ROAD, SUITE 200
PALO ALTO, CA 94303

For Third Party Requestor

STERNE, KESSLER, GOLDSTEIN & FOX PLLC
1100 NEW YORK AVENUE, NW
WASHINGTON, DC 20005