Ex Parte Abraham-Fuchs et al

Board of Patent Appeals and Interferences

Sep 1, 2010

09742268 (B.P.A.I. Sep. 1, 2010)

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.
09/742,268 12/20/2000 Klaus Abraham-Fuchs P00,1908 7104
26574 7590 09/01/2010
SCHIFF HARDIN, LLP
PATENT DEPARTMENT
233 S. Wacker Drive-Suite 6600
CHICAGO, IL 60606-6473
EXAMINER
FRENEL, VANEL
ART UNIT PAPER NUMBER
3687
MAIL DATE DELIVERY MODE
09/01/2010 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 KLAU ABRAHAM-FUCHS and
KAI-UWE SCHMIDT
___________

Appeal 2009-006241
Application 09/742,268
Technology Center 3600
____________

Before HUBERT C. LORIN, JOSEPH A. FISCHETTI, and
FRANCISCO C. PRATS, Administrative Patent Judges.

LORIN, Administrative Patent Judge.

DECISION ON APPEAL1

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.
Appeal 2009-006241
Application 09/742,268

2
STATEMENT OF THE CASE
Klaus Abraham-Fuchs et al. (Appellants) seek our review under 35
U.S.C. § 134 (2002) of the final rejection of claims 1-28. We have
jurisdiction under 35 U.S.C. § 6(b) (2002).

SUMMARY OF DECISION
We AFFIRM-IN-PART. 2

THE INVENTION
This invention is “a method for a patient, who suffers from a
neurological disease which is treated with medication, to self-monitor his or
her current state.” Specification 1:8-10.
Claim 1, reproduced below, is illustrative of the subject matter on
appeal.
1. A method for allowing a patient, suffering from
a neurological disease and receiving medication
for said disease, to self-monitor the patient's actual
state, comprising the steps of:
providing a computer at a location readily
accessible to a patient substantially on a daily basis
for acquiring information from a patient:
acquiring information, via an interactive
procedure, from a patient wherein the acquired
information is selected from a group consisting of
information characterizing a motor function of the
patient, information characterizing a verbal

2 Our decision will make reference to the Appellants’ Appeal Brief (“Br.,”
filed Jul. 3, 2007) and the Examiner’s Answer (“Answer,” mailed Oct. 18,
2007).

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communication ability of the patient, and
information characterizing cognitive abilities of
the patient;
providing an expert system accessible by the
computer;
providing said acquired patient information
to said expert system for processing thereby, and
determining, from the acquired information, at
least one quantified indicator describing the state
of the patient suffering from a neurological disease
which is treated with medication; and
providing said computer with an output
device and making said quantified indicator
available to the patient via said output device.

THE REJECTION
The Examiner relies upon the following as evidence of
unpatentability:
Kaufman
Fischell
US 5,868,135
US 6,354,299 B1
Feb. 9, 1999
Mar. 12, 2002

The following rejection is before us for review:
1. Claims 1-28 are rejected under 35 U.S.C. §103(a) as being
unpatentable over Fischell and Kaufman.

ISSUES
The issue is whether claims 1-28 are unpatentable under 35 U.S.C. §
103(a) over Fischell and Kaufman. Specifically, the major issue is whether
one of ordinary skill in the art would have been led by Fischell and Kaufman
to a method that includes: the recited step of acquiring information, via an
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interactive procedure; the recited step of providing said acquired patient
information to said expert system for processing thereby, and determining,
from the acquired information, at least one quantified indicator describing
the state of the patient; and the recited step of providing said computer with
an output device and making said quantified indicator available to the patient
via said output device.

ANALYSIS
Claims 1, 5-8, 14, 15, and 16
The Appellants argued claims 1, 5-8, 15, and 16 as a group (Br. 8-
14). We select claim 1 as the representative claim for this group, and the
remaining claims 5-8, 15, and 16 stand or fall with claim 1. 37 C.F.R.
§ 41.37(c)(1)(vii) (2009). We note that the Appellants have failed to include
arguments directed to dependent claim 14 and, therefore, claim 14 will also
stand or fall with claim 1.
First, the Appellants argue that neither Fischell nor Kaufman teaches
an interactive procedure that allows a patient to self monitor. Br. 9-11 and
13-14. The Appellants’ argument seems to be based on the claim requiring
that the interactive procedure be “between the patient and the computer in
order to allow the patient to provide (communicate) information to the
computer.” Br. 9. However, this is not required by claim 1. Claim 1 recites
a step of “acquiring information, via an interactive procedure, from a patient
wherein the acquired information is selected from a group consisting of
information characterizing a motor function of the patient, information
characterizing a verbal communication ability of the patient, and information
characterizing cognitive abilities of the patient.” This does not require the
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interactive procedure to be between a patient and the computer and does not
preclude other interactive procedures, such as the device in Fischell
interacting with the patient’s body.
Second, the Appellants argue that neither Fischell nor Kaufman
teaches “providing the acquired patient information to an expert system for
processing thereby, and determining, from the acquired patient information,
at least one quantified indicator describing the state of the patient suffering
from a neurological disease which is treated with medication” as recited in
claim 1. Br. 10-12. The Appellants argue that Fischell is concerned with
providing instant medical responses and not providing the information to an
expert system. Br. 10. The Appellants also argue that neither Fischell nor
Kaufman teaches “providing said computer with an output device and
making the quantified indicator available to the patient via the output
device” as recited in claim 1. Br. 12. Finally, the Appellants argue that
it would not be obvious to combine the systems of
Fischell and Kaufman, as both are concerned with
entirely different testing and/or monitoring schemes.
Specifically, Fischell is concerned with an implantable
device that can monitor a patient’s physiological
indicators and Kaufman is concerned with external
method of testing a patient’s physiological indicators
(Br. 12-13).
However, while Fischell does describe providing instant relief (for
example see col. 9, ll. 50-55), Fischell also describes a physician receiving
workstation receiving data, including EEG data, from Fischell’s device and
analyzing the data (see col. 15, ll. 8-24; col. 24, ll. 7-14). Kaufman
describes a patient monitoring system and teaches that the system can
measure the patients, temperature, blood pressure, etc. and display the value
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on readouts. (Col. 4, ll. 40-47). Given these teachings, we find that one of
ordinary skill in the art would have been led to determining from the EEG
data at least one quantified indicator that describes the state of the patient
and displaying the quantified indicator to the patient. The Supreme Court
emphasized that “the principles laid down in Graham reaffirmed the
‘functional approach’ of Hotchkiss, 11 How. 248,” KSR Int’l v. Teleflex Inc.,
550 U.S. 398, 415 (2007) (citing Graham, 383 U.S. at 12 (emphasis added)),
and reaffirmed principles based on its precedent that “[t]he combination of
familiar elements according to known methods is likely to be obvious when
it does no more than yield predictable results.” KSR, 550 U.S. at 416. The
operative question in this “functional approach” is “whether the
improvement is more than the predictable use of prior art elements according
to their established functions.” Id., at 415.
Accordingly, we find that the Appellants have overcome the rejection
of claim 1, and claims 5-8, 14, 15, and 16, dependent thereon, under 35
U.S.C. § 103(a) as unpatentable over Fischell and Kaufman.

Claim 2
The Appellants argue that neither Fischell nor Kaufman teach the step
of conducting software controlled motor function exercises for quantifying
at least one of neutral, negative and positive effects of said medication on
said patient’s state as recited in claim 2. Br. 14-15. In the rejection, the
Examiner cites column 7, lines 1-35 of Kaufman to teach this limitation.
Answer 5.
Column 7, lines 1-35 of Kaufman describe a motorized unit that has
elements, such as a cuff for a blood pressure test, or a thermometer and a
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button or switch to indicate that the patient has correctly placed the cuff or
thermometer for a test. We fail to see how this passage of Kaufman teaches
conducting software controlled motor function exercises as recited in claim
2, and the Examiner provides no other explanation (see Answer 13-21).
Accordingly, we find that the Appellants have overcome the rejection
of claim 2 under 35 U.S.C. § 103(a) as unpatentable over Fischell and
Kaufman.

Claim 3
The Appellants argue that neither Fischell nor Kaufman teach the step
of acoustically acquiring speech from the patient and assessing the speech
with a speech assessment system as recited in claim 3. Br. 3. In the
rejection, the Examiner cites column 4, lines 23-60 to teach this limitation.
Answer 6.
Column 4, lines 23-60 describe that Kaufman’s system includes a
voice synthesizer and recognition unit to provide audio reminders to the
patient to take medication and to receive feedback from the patient. We fail
to see how this passage of Kaufman teaches acoustically acquiring speech
from the patient and assessing the speech with a speech assessment system
as recited in claim 3, and the Examiner provides no other explanation (see
Answer 13-21).
Accordingly, we find that the Appellants have overcome the rejection
of claim 3 under 35 U.S.C. § 103(a) as unpatentable over Fischell and
Kaufman.

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Claim 4
The Appellants argue that neither Fischell nor Kaufman teach the step
of generating questions requiring a response from the patient to the
respective patients and, from the responses, generating an information value
quantifying at least one of neutral, negative and positive effect of the
medication on the patient. Answer 15-16. In the rejection, the Examiner
cites column 3, lines 40-67 of Fischell to teach this limitation. Answer 6.
Column 3, lines 40-67 of Fischell describes using EEG signals to
detect neurological events. We fail to see how this passage of Fischell
teaches generating questions requiring a response from the patient to the
respective patients and, from the responses, generating an information value
quantifying at least one of neutral, negative and positive effect of the
medication on the patient as recited in claim 4, and the Examiner provides
no other explanation (see Answer 13-21).
Accordingly, we find that the Appellants have overcome the rejection
of claim 4 under 35 U.S.C. § 103(a) as unpatentable over Fischell and
Kaufman.

Claims 9-13
The Appellants argue that neither Fischell nor Kaufman teach the step
of providing store information to the expert system, and producing in the
expert system an evaluation regarding dosage of the medication based on the
stored information and making the evaluation available to the patient at the
output device. Br. 16. In the rejection, the Examiner cites column 33, lines
36-67 of Fischell to teach this limitation. Answer 7.
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Column 33, lines 36-67 of Fischell describes detecting an adverse
physiological condition by a control module, which is implanted in a patient
(see col. 32, l. 66 –col. 3 and fig. 23), and in response releasing medication
via a catheter. We fail to see how this passage of Fischell teaches the step
recited in claim 9, and the Examiner provides no other explanation (see
Answer 13-21).
Accordingly, we find that the Appellants have overcome the rejection
of claim 9, and claims 10-13, dependent thereon, under 35 U.S.C. § 103(a)
as unpatentable over Fischell and Kaufman.

Claims 17, 21, 22, 27, and 28
The Appellants argue claims 17, 21, 22, 27, and 28 as a group (Br.
22). We select claim 17 as the representative claim for this group, and the
remaining claims 21, 22, 27, and 28 stand or fall with claim 17. 37 C.F.R. §
41.37(c)(1)(vii) (2009).
Claim 17 recites an apparatus with elements similar to the method of
claim 1. The Appellants argue that the apparatus is not taught by Fischell
and Kaufman for the same reasons as used to traverse the rejection of claim
1. Br. 17-22. For the same reasons as we discuss above, we are not
persuaded by the Appellants’ argument. Accordingly, we find that the
Appellants have not overcome the rejection of claim 17, and claims 21, 22,
27, and 28, dependent thereon, under 35 U.S.C. § 103(a) over Fischell and
Kaufman.

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Claim 18
The Appellants argue that neither Fischell nor Kaufman describes that
the input is a manually operated input and that the software operates the
computer to execute motor function test exercises and to produce a
quantified information value as recited in claim 18. Br. 22-23.
In the rejection, the Examiner cites to column 21, lines 19-67 of
Fischell to teach this limitation. Answer 10. The majority of Column 21,
lines 19-67 describes the flow chart of Figure 7 for event recording and
processing for event detecting and Figure 8 which describes detecting a
neurological event. We fail to see how this passage of Fischell teaches
software that operates the computer to execute motor function test exercises
and to produce a quantified information value as recited in claim 18, and the
Examiner provides no other explanation (see Answer 13-21).
Accordingly, we find that the Appellants have overcome the rejection
of claim 18 under 35 U.S.C. § 103(a) as unpatentable over Fischell and
Kaufman.

Claim 19
The Appellants argue that neither Fischell nor Kaufman teaches that
the software program assess speech made by the patient into the input unit
using speech algorithms and a phonetic data bank, and produces quantified
information representing the verbal communication abilities as recited in
claim 19. Br. 23-24. In the rejection, the Examiner cites column 6, lines 61-
67 and item 112 of Kaufman to teach this limitation. Answer 11.
Column 6, lines 61-67 describe that the system in Kaufman has a
voice synthesis and recognition unit that is coupled to a microphone 112.
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We fail to see how this passage of Kaufman teaches software that assess
speech made by the patient into the input unit using speech algorithms and a
phonetic data bank, and produces quantified information representing the
verbal communication abilities as recited in claim 19, and the Examiner
provides no other explanation (see Answer 13-21).
Accordingly, we find that the Appellants have overcome the rejection
of claim 19 under 35 U.S.C. § 103(a) as unpatentable over Fischell and
Kaufman.

Claim 20
The Appellants argue that neither Fischell nor Kaufman teaches
software that operates the computer to present questions to the patients and
to receive responses from the patient, and produces a quantified information
value from the responses quantifying at least on of neutral, negative and
positive effects of the medication on cognitive abilities. Br. 24. In the
rejection, the Examiner cites to column 5, lines 14-45 of Kaufman to teach
this limitation.
Column 5, lines 14-45 of Kaufman describes a unit that provides
diagnostic testing, such as blood pressure testing, and can transmit
accumulated information to a remote medical center computer for analysis to
determine whether intervention, such as a change in medication is needed.
We fail to see how this passage of Kaufman teaches software that operates
the computer to present questions to the patients and to receive responses
from the patient, and produces a quantified information value from the
responses quantifying at least on of neutral, negative and positive effects of
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the medication on cognitive abilities as recited in claim 20, and the
Examiner provides no other explanation (see Answer 13-21).
Accordingly, we find that the Appellants have overcome the rejection
of claim 20 under 35 U.S.C. § 103(a) as unpatentable over Fischell and
Kaufman.

Claims 23-26
Claim 23 recites “wherein said expert system produces an evaluation
from said stored information with regard to a dosage of said medication.”
The Appellants argue that neither Fischell nor Kaufman teach the step
of providing store information to the expert system, and producing in the
expert system an evaluation regarding dosage of the medication based on the
stored information and making the evaluation available to the patient at the
output device. Br. 24-25. In the rejection, the Examiner cites column 15,
lines 43-67 of Fischell to teach this limitation. Answer 7.
Column 15, lines 43-67 of Fischell describes delivering an acoustic
signal by a buzzer. We fail to see how this passage of Fischell teaches the
limitation of claim 23. We note that for a step reciting similar elements in
claim 9, the Examiner cited the Examiner cited Column 33, lines 36-37,
which describes detecting an adverse physiological condition by a control
module, which is implanted in a patient (see col. 32, l. 66 –col. 3 and fig.
23), and in response releasing medication via a catheter. We also fail to see
how this passage of Fischell teaches an expert system as recited 23, and the
Examiner provides no other explanation (see Answer 13-21).
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Accordingly, we find that the Appellants have overcome the rejection
of claim 23, and claims 24-26, dependent thereon, under 35 U.S.C. § 103(a)
as unpatentable over Fischell and Kaufman.

DECISION
The decision of the Examiner to reject claims 1, 5-8, 14-17, 21, 22,
27, and 28 is affirmed and to reject claims 2-4, 9-13, 18-20, and 23-26 is
reversed.
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) (2007).

AFFIRMED-IN-PART

mev

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