09237194 (B.P.A.I. Apr. 20, 2010)

Ex Parte BROWN

Board of Patent Appeals and InterferencesApr 20, 2010

09237194 (B.P.A.I. Apr. 20, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE 1 ___________ 2 3 BEFORE THE BOARD OF PATENT APPEALS 4 AND INTERFERENCES 5 ___________ 6 7 Ex parte STEPHEN JAMES BROWN 8 ___________ 9 10 Appeal 2009-002452 11 Application 09/237,194 12 Technology Center 3600 13 ___________ 14 15 Decided: April 20, 2010 16 ___________ 17 18 Before HUBERT C. LORIN, ANTON W. FETTING, and 19 BIBHU R. MOHANTY, Administrative Patent Judges. 20 FETTING, Administrative Patent Judge. 21 DECISION ON APPEAL 22 Appeal 2009-002452 Application 09/237,194 2 STATEMENT OF THE CASE 1 Stephen James Brown (Appellant) seeks review under 35 U.S.C. § 134 2 (2002) of a final rejection of claims 34-138, the only claims pending in the 3 application on appeal. 4 We have jurisdiction over the appeal pursuant to 35 U.S.C. § 6(b) 5 (2002). 6 SUMMARY OF DECISION1 7 We AFFIRM. 8 THE INVENTION 9 The Appellant invented a self-care health monitoring arrangement that 10 gathers data important to a health management program (Specification 11 1:Field of the Invention). 12 An understanding of the invention can be derived from a reading of 13 exemplary claim 34, which is reproduced below [bracketed matter and some 14 paragraphing added]. 15 34. A networked health-monitoring system, comprising: 16 (a) a plurality of remote patient sites, each site including 17 (i) at least one display; 18 (ii) a data management unit configured to facilitate 19 collection of patient health-related data; 20 1 Our decision will make reference to the Appellant’s Appeal Brief (“App. Br.,” filed March 31, 2008) and Reply Brief (“Reply Br.,” filed September 4, 2008), and the Examiner’s Answer (“Ans.,” mailed July 7, 2008). Appeal 2009-002452 Application 09/237,194 3 (iii) a memory; and 1 (iv) stored program instructions for use in generating 2 health-monitoring related information on the display; 3 (b) at least one remotely located computing facility including at 4 least one central server connectable for communication with the 5 data management units at the patient sites, 6 the central server configured to receive and store the 7 patient health-related data from the data management unit 8 at the remote patient sites; and 9 (c) at least one health care professional computer remotely 10 located from and configured for signal communication with the 11 central server, 12 wherein the central server can generate a report based on 13 the patient health-related data collected at the remote 14 patient site and the report can be viewed at the at least 15 one healthcare professional computer and 16 wherein at least one message can be sent from the 17 healthcare professional computer to the remote patient 18 sites through the central server. 19 THE REJECTIONS 20 The Examiner relies upon the following prior art: 21 Fu US 4,803,625 Feb. 7, 1989 Lee US 4,838,275 Jun. 13, 1989 Kirk US 5,390,238 Feb. 14, 1995 Beckers US 5,019,974 May 28, 1991 Fujimoto US 5,339,821 Aug. 23, 1994 Claims 34-41, 45-50, 52, 54-59, 61-63, 65, 66, 69-75, 77-84, 88-93, 95, 22 97-102, 104-106, 108, 109, and 112-118 stand rejected under 35 U.S.C. 23 § 103(a) as unpatentable over Fu, Lee, and Kirk. 24 Appeal 2009-002452 Application 09/237,194 4 Claims 42, 44, 85, and 87 stand rejected under 35 U.S.C. § 103(a) as 1 unpatentable over Fu, Lee, Kirk, and Beckers. 2 Claims 51, 53, 60, 64, 67 94, 96, 103, 107, 110, and 111 stand rejected 3 under 35 U.S.C. § 103(a) as unpatentable over Fu, Lee, Kirk, and Fujimoto. 4 Claims 43 and 86 stand rejected under 35 U.S.C. § 103(a) as 5 unpatentable over Fu, Lee, Kirk, and Official Notice. 6 Claims 76 and 119-138 stand rejected under 35 U.S.C. § 103(a) as 7 unpatentable over Fu, Lee, Kirk, and Official Notice. 8 ARGUMENTS 9 The Appellant argues the claims rejected under 35 U.S.C. § 103(a) as 10 unpatentable over Fu, Lee, and Kirk as a group. Accordingly, we select 11 claim 34 as representative of the group. 37 C.F.R. § 41.37(c)(1)(vii) (2008). 12 The Appellant contends that he invented the claimed subject matter prior 13 to the filing date of Kirk and therefore the Kirk reference is not prior art. 14 ISSUES 15 The issue of whether the Appellant has sustained its burden of showing 16 that the Examiner erred in rejecting claims 34-138 under 35 U.S.C. § 103(a) 17 as unpatentable over Fu, Lee, Kirk, and the remaining art turns on whether 18 the Appellant adequately swore behind Kirk as prior art. 19 20 21 Appeal 2009-002452 Application 09/237,194 5 FACTS PERTINENT TO THE ISSUES 1 The following enumerated Findings of Fact (FF) are believed to be 2 supported by a preponderance of the evidence. 3 Facts Related to the Prior Art 4 Kirk 5 01. The filing date of Kirk is June 15, 1992. 6 Facts Related To the Appellant’s Declaration Under 37 C.F.R. § 1.131 7 02. There are two declarations in the evidence appendix. One is 8 dated September 19, 2006. Attached to it are Exhibits labeled A 9 through AB. 10 03. The declaration states that exhibit B is the evidence of 11 conception. Declaration ¶ 8. 12 04. Exhibit B is a one page letter dated March 2, 1992, from Steve 13 Brown of Raya Systems to Drs. Jersch and Keiser indicating 14 acceptance of an order for Camit 2.5 indicating a desire to begin 15 development on April 26. There are no details of any method or 16 machine other than the names of some devices. There are no 17 details showing the specific components recited in the claims. 18 05. The declaration states that exhibits C to AB are the evidence of 19 diligence. Declaration ¶ 10. 20 06. Exhibit C is a query to the Director of a diabetes research 21 program as to the propriety of applying for funding. The query 22 indicates that commercial development is anticipated. A copy of a 23 Department of Health and Human Services Small Business 24 Appeal 2009-002452 Application 09/237,194 6 Innovation Research Programs grant application is appended. No 1 specific details of development of the claimed subject matter are 2 provided. 3 07. Exhibit D is a project plan for KinderCamit. The plan includes 4 a preliminary design document that portrays screen shots, but 5 provides little specification as to the underlying functionality and 6 does not specify how the claimed subject matter is to be 7 implemented at the level of detail in the claims. No specific 8 details of development activities of the claimed subject matter are 9 provided. 10 08. Exhibit E is a draft letter proposing to initiate intellectual 11 property protection measures from an attorney. No specific 12 details of development activities of the claimed subject matter are 13 provided. 14 09. Exhibit F is an invoice from an attorney and a check in payment 15 thereof. Numerous activities are listed, none of which pertain to 16 drafting a patent application. All dates are prior to Kirk’s filing 17 date. No specific details of development activities of the claimed 18 subject matter are provided. 19 10. Exhibit G is a letter laying out a proposed development 20 timetable for Camit S 2.5. Declaration ¶ 19 states that this 21 corresponds to the provider interface. The phrase “provider 22 interface” occurs in none of the claims. Numerous proposed 23 generic activities are listed, none of which pertain to specific 24 Appeal 2009-002452 Application 09/237,194 7 claim limitations. No specific details of development activities of 1 the claimed subject matter are provided. 2 11. Exhibit H is a speaker release form and a letter from the 3 American Diabetes Association acknowledging Mr. Brown’s 4 participation in the association’s 52nd Scientific Sessions. No 5 specific details of development activities of the claimed subject 6 matter are provided. 7 12. Exhibit I is an invoice from an attorney and a check in payment 8 thereof. Numerous activities are listed, none of which pertain to 9 drafting a patent application. All dates are prior to Kirk’s filing 10 date. No specific details of development activities of the claimed 11 subject matter are provided. 12 13. Exhibit J is a letter describing personnel assignment and hiring 13 decisions. Declaration ¶ 22 states that this includes a development 14 status report. No discernable description of the invention’s 15 development status is present except for a statement as to the need 16 to start on Camit 2.5 and Diabcare documentation. The letter 17 provides no translation from these names to the specific claim 18 limitations. Therefore, how this letter relates to the need for 19 documentation as to the claimed subject matter is not provided. 20 No specific details of development activities of the claimed 21 subject matter are provided. 22 14. Exhibit K is a one page bullet list of introductions, Raya 23 Systems status, organization, and administrative issues. 24 Declaration ¶ 23 states that this was a meeting agenda that listed 25 Appeal 2009-002452 Application 09/237,194 8 the Nintendo project related to the patient interface portion of the 1 invention. Nothing in the agenda provides any details as to what 2 was to be actually discussed. The phrase “patient interface” 3 occurs in none of the claims. No specific details of development 4 activities of the claimed subject matter are provided. The agenda 5 is dated prior to Kirk’s filing date. 6 15. Exhibit L is a work for hire agreement draft. Declaration ¶ 24 7 states that this was for hiring Jay Clark for development of 8 interactive patient self-care education software. No specific 9 details of development activities of the claimed subject matter are 10 provided. The cover sheet is dated prior to Kirk’s filing date. 11 16. Exhibit M is a letter from Sculptured Software indicating a 12 desire to work with Raya Systems. Declaration ¶ 25 states that 13 this was for hiring a software developer for development of 14 interactive patient self-care education software. No specific 15 details of development activities of the claimed subject matter are 16 provided. The letter is dated prior to Kirk’s filing date. 17 17. Exhibit N is a letter to Boehringer Mannheim GmbH indicating 18 a planning timetable that has been used and relating administrative 19 problems affecting development. Declaration ¶ 26 states that this 20 was a status report. The only status related in the letter is an 21 expressed “hope to continue on this schedule” and a general 22 statement that “experienced staff” have been added and the lack of 23 decision making authority. No specific details of development 24 activities of the claimed subject matter are provided. The letter is 25 Appeal 2009-002452 Application 09/237,194 9 the first exhibit dated subsequent to Kirk’s filing date, being one 1 day later. 2 18. Exhibit O is a letter to Dr. Klaus Piwernetz recapping a 3 conversation and indicating that a dBase contractor was hired and 4 that a conversion program had been provided and a desire to 5 obtain certain information. Declaration ¶ 27 states that this was 6 related to the database portion of the invention. No specific 7 details of development activities of the claimed subject matter are 8 provided. The letter is dated subsequent to Kirk’s filing date, 9 being three days later. 10 19. Exhibit P is an invoice from an attorney and a check in payment 11 thereof. Numerous activities are listed, none of which pertain to 12 drafting a patent application. All dates are prior to Kirk’s filing 13 date, except for activities relating to contract review and 14 confidentiality agreements. No specific details of development 15 activities of the claimed subject matter are provided. 16 20. Exhibit Q is a letter from Emerson Brooks. No invention 17 development activities are listed. The letter describes an attached 18 bill for personnel placement service for hiring Mr. Jack Thornton. 19 A payroll register is also attached that shows that Mr. Thornton 20 began work in June, the same month as Kirk’s application was 21 filed. No specific details of development activities of the claimed 22 subject matter are provided. The letter is dated 10 days 23 subsequent to Kirk’s filing date. 24 Appeal 2009-002452 Application 09/237,194 10 21. Exhibit R is a proposal from Construction Specialties, Inc. for 1 construction work. Declaration ¶ 27 states that this was related 2 to the moving plans that were implemented between mid July and 3 mid August, 1992. No specific details of development activities 4 of the claimed subject matter are provided. The letter is dated 22 5 days subsequent to Kirk’s filing date. 6 22. Exhibit S is a series of letters discussing participation at a trade 7 conference. No specific details of development activities of the 8 claimed subject matter are provided. The letters are dated 9 between 17 and 29 days subsequent to Kirk’s filing date. 10 23. Exhibits T and U are copies of a non-disclosure agreement with 11 several high level system charts. Declaration ¶ 35 states that this 12 was a schematic. The schematic diagrams show high level 13 interconnections among several generic well known articles of 14 electronic equipment, but details of implementation to the level of 15 the claim limitations. Declaration ¶ 36 states that exhibit U was a 16 copy sent to the Appellant’s patent attorney. No specific details 17 of development activities of the claimed subject matter are 18 provided. The letter is dated 59 days subsequent to Kirk’s filing 19 date. 20 24. Exhibit V is handwritten note discussing the need for a 21 proposal. Declaration ¶ 37 states that this was indicative of 22 continuing development. The note makes reference to a prototype 23 with off the shelf components, but provides no indication of 24 whether such a prototype is prospective or not. No specific details 25 Appeal 2009-002452 Application 09/237,194 11 of development activities of the claimed subject matter are 1 provided. The letter is dated 67 days subsequent to Kirk’s filing 2 date. 3 25. Exhibit W is a September 3, 1192 letter from attorneys to Raya 4 Systems acknowledging that work on the patent application is 5 authorized to begin. The letter indicates that a patentability search 6 that will be used to amend the application is deferred an additional 7 twenty days beyond the date of the letter. No specific details of 8 development activities of the claimed subject matter are provided. 9 The letter is dated 80 days subsequent to Kirk’s filing date. 10 26. Exhibit X is a series of correspondence regarding an 11 administrative review by the Department of Health and Human 12 Services on a Phase II Small Business Innovation Research grant 13 application. The response by Raya Systems lists budgetary 14 matters but no actual details regarding activities on developing the 15 invention. No specific details of development activities of the 16 claimed subject matter are provided. The letters are dated 86 and 17 87 days subsequent to Kirk’s filing date. 18 27. Exhibit Y is an October 2, 1992 draft of a patent application 19 from the attorneys. No specific details of development activities 20 of the claimed subject matter or of the drafting activities of the 21 patent application are provided. The draft is dated 109 days 22 subsequent to Kirk’s filing date. The draft contains 28 pates of 23 specification and 5 pages for 10 drawings. 24 Appeal 2009-002452 Application 09/237,194 12 28. Exhibit Z is a letter to the attorneys with a handwritten drawing. 1 The letter states that the drawing ought to be in the application. 2 The drawing is a high level diagram of an information flow 3 between a patient and physician and portrays several high level 4 structures through which information passes. No specific details 5 of development activities of the claimed subject matter or of the 6 drafting activities of the patent application are provided. The 7 letter is dated 109 days subsequent to Kirk’s filing date. 8 29. Exhibit AA is an October 31, 1992 invoice from the patent 9 attorneys. The invoice shows that 8.2 hours were spent on 10 October 1 and 2, 1992 (108 and 109 days subsequent to Kirk’s 11 filing date) and 6.6 hours on October 27-29 (134 and 136 days 12 subsequent to Kirk’s filing date). The only activity during the 25 13 days between those dates is a 4.9 hour meeting. No specific 14 details of development activities of the claimed subject matter or 15 of the drafting activities of the patent application are provided. 16 30. Exhibit AB is the instant application filed 155 days subsequent 17 to Kirk’s filing date. 18 31. The Appellant provided evidence of conception of the claimed 19 subject matter prior to Kirk’s filing date. 20 32. The Appellant provided a timeline of the inventor’s activities 21 between Kirk’s filing date and the filing date of the instant 22 application. 23 Appeal 2009-002452 Application 09/237,194 13 33. The Appellant did not provide a timeline of the activities 1 reducing the invention to actual practice between Kirk’s filing 2 date and the filing date of the instant application. 3 34. One cannot discern what activities in actual reduction to 4 practice occurred and when they occurred from the evidence in the 5 record. 6 35. The Appellant did not provide a timeline of the activities 7 reducing the invention to constructive practice between Kirk’s 8 filing date and the filing date of the instant application. 9 36. One cannot discern what activities in constructive reduction to 10 practice occurred and when they occurred from the evidence in the 11 record. 12 37. The second declaration is dated June 8, 2004. Attached to it are 13 exhibits labeled 1 through 9. These exhibits are copies from 14 among those attached to the fist declaration supra. 15 Facts Related To The Application Disclosure 16 38. The instant application was filed January 26, 1999. 17 39. The Application claims priority by way of a continuation in part 18 to Application 07/977,323, filed November 17, 1992. This is the 19 only application in the chain of priority that antedates the applied 20 prior art. 21 40. The Appellant has presented no evidence that the disclosure in 22 the 07/977,323 application provides a 35 U.S.C. § 112 compliant 23 Appeal 2009-002452 Application 09/237,194 14 written description of the inventions as recited in the instant 1 claims. 2 PRINCIPLES OF LAW 3 Obviousness 4 A claimed invention is unpatentable if the differences between it and 5 the prior art are “such that the subject matter as a whole would have been 6 obvious at the time the invention was made to a person having ordinary skill 7 in the art.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007); Graham 8 v. John Deere Co., 383 U.S. 1, 13-14 (1966). 9 In Graham, the Court held that that the obviousness analysis is 10 bottomed on several basic factual inquiries: “[(1)] the scope and content of 11 the prior art are to be determined; [(2)] differences between the prior art and 12 the claims at issue are to be ascertained; and [(3)] the level of ordinary skill 13 in the pertinent art resolved.” Graham, 383 U.S. at 17. See also KSR, 550 14 U.S. at 406. “The combination of familiar elements according to known 15 methods is likely to be obvious when it does no more than yield predictable 16 results.” KSR, 550 U.S. at 416. 17 ANALYSIS 18 The sole issue before us is whether Kirk is a prior art reference. If it is, 19 the Appellant has not argued that the combination of the reference would not 20 render the invention obvious. 21 The Appellant filed a declaration under 37 C.F.R. § 1.131 as evidence of 22 conception prior to Kirk’s filing date and diligence in constructive reduction 23 to practice between the filing dates of Kirk and the instant application. We 24 agree that the declaration includes evidence of conception prior to Kirk’s 25 Appeal 2009-002452 Application 09/237,194 15 filing date. Thus, the issue reduces to diligence in reducing to practice 1 during the 155 days between Kirk’s filing and the effective filing date of the 2 instant application. 3 The instant application was filed January 26, 199 (FF 38), but has 4 claimed priority by way of continuations to April 26, 1994 and a 5 continuation in part to November 17, 1992 (FF 39). The Appellant has 6 provided no analysis of the differences between the 1992 disclosure and the 7 present application disclosure, or a mapping between the 1992 disclosure 8 and the present claims, to show that the present claims are fully supported by 9 the 1992 disclosure. FF 40. Thus, we first find that the Appellant has not 10 shown that the instant claims are entitled to the benefit of November 1992 11 application filing date. 12 Next, there remains the issue of whether the Appellant invented the 13 claimed subject matter prior to Kirk’s filing date. The first issue as regards 14 invention is whether conception occurred prior to Kirk’s filing date. The 15 Appellant filed two declarations. FF 02 and FF 37. The information in the 16 earlier declaration is essentially a subset of the latter. Both declarations refer 17 to a one page letter as evidence of conception. FF 03. This letter indicates 18 acceptance of an order for Camit 2.5 indicating a desire to begin 19 development on April 26. There are no details of any method or machine 20 other than the names of some devices. There are no details showing the 21 specific components recited in the claim. FF 04. Thus, we have no 22 objective evidence that the specific inventions recited in the claims were 23 conceived prior to the applied art. 24 Appeal 2009-002452 Application 09/237,194 16 The Appellant argues that he exercised diligence in reduction to practice. 1 However, no specific details of development activities of the claimed subject 2 matter are provided in the declarations and their attachments. It would 3 appear the Appellant is arguing that the entire period from the filing date of 4 Kirk to the date the patent attorney began constructive reduction to practice 5 was excused activity. 6 We agree that an inventor does not have to work on reduction to practice 7 every day, if reasonable excuse is provided. “A review of case law on 8 excuses for inactivity in reduction to practice reveals a common thread that 9 courts may consider the reasonable everyday problems and limitations 10 encountered by an inventor.” Griffith v. Kanamaru, 816 F.2d 624, 626 (Fed. 11 Cir. 1987). 12 But this is not a general waiver of the requirement for showing that work 13 was performed in the reduction to practice, particularly when the every day 14 work was done in pursuing commercial development. 15 [E]xcuses [] in the nature of commercial development [are] not 16 accepted as an excuse for delay, [contrasted with] the 17 "hardship" cases. [] Delays in reduction to practice caused by 18 an inventor's efforts to refine an invention to the most 19 marketable and profitable form have not been accepted as 20 sufficient excuses for inactivity. 21 Griffith, 816 F.2d at 627. Many of the activities detailed in the declaration 22 and exhibits bear little direct relation to actually reducing the invention to 23 practice. Many of the activities are directed to establishing intellectual 24 property protection measures, obtaining speaking engagements, and 25 planning for staffing needs. Others, such as proposing development 26 timetables, are tangentially related, but show no actual reduction itself. 27 Appeal 2009-002452 Application 09/237,194 17 The activities that may be considered in a showing of diligence 1 can take a diversity of forms. Precedent illustrates the 2 continuum between, on the one hand, ongoing laboratory 3 experimentation, and on the other hand, pure money-raising 4 activity that is entirely unrelated to practice of the process. [] 5 [E]fforts by the inventor to secure financial backing, by 6 showing the invention to prospective manufacturers over a four 7 year period, did not establish diligence toward reduction to 8 practice. 9 Scott v Koyama, 281 F.3d 1243, 1248 (Fed. Cir. 2002). No specific details 10 of development activities of the claimed subject matter are provided. 11 Simply put, we find no evidence concerning activities supporting the actual 12 reduction of the invention itself to practice in the record before us. This 13 takes us to the constructive reduction that is apparently relied upon. 14 Exhibit W is a September 3, 1992 letter from attorneys to Raya Systems 15 acknowledging that work on the patent application is authorized to begin. 16 The letter indicates that a patentability search that will be used to amend the 17 application is deferred an additional twenty days beyond the date of the 18 letter. No specific details of development activities of the claimed subject 19 matter are provided. This letter, evidencing the beginning of constructive 20 reduction, is dated 80 days subsequent to Kirk’s filing date. FF 25. 21 Exhibit Y is an October 2, 1992 draft of a patent application from the 22 attorneys. No specific details of development activities of the claimed 23 subject matter or of the drafting activities of the patent application are 24 provided. This draft of a constructive reduction is dated 109 days 25 subsequent to Kirk’s filing date and 46 days prior to the filing date of the 26 earliest application in the priority chain. 27 Appeal 2009-002452 Application 09/237,194 18 The only evidence of work that the patent attorney provided in the 1 period between commencement and this draft is an October 31, 1992 2 invoice. No specific details of development activities of the claimed subject 3 matter or of the drafting activities of the patent application. FF 29. This 4 shows just under 7 hours of work performed on October 1. The period from 5 September 3 to 30 is unaccounted for. Further, no activity is shown between 6 October 7 and October 27. To establish diligence for constructive reduction 7 to practice, the attorney’s diligence must be shown. 8 “[R]easonable diligence can be shown if it is established that the 9 attorney worked reasonably hard on the particular application in question 10 during the continuous critical period.” Bey v. Kollonitsch 806 F.2d 1024, 11 1027 (Fed. Cir. 1986). “[The inventor’s] records did not show the exact 12 days when activity specific to this application occurred. Thus, we cannot 13 say that the board clearly erred in finding that "the documented activities 14 with regard to [the present application] are insufficient by themselves to 15 prove diligence." Bey, 806 F.2d at 1028. 16 It may have been that the attorney had a backlog to take care of between 17 September 3 and 30. 18 [I]t may not be possible for a patent attorney to begin working 19 on an application at the moment the inventor makes the 20 disclosure, because the attorney may already have a backlog of 21 other cases demanding his attention. Thus, the courts have 22 recognized that reasonable diligence is all that is required of the 23 attorney. [] Generally, the patent attorney must show that 24 unrelated cases are taken up in chronological order, thus, the 25 attorney has the burden of keeping good records of the dates 26 when cases are docketed as well as the dates when specific 27 work is done on the applications. 28 Appeal 2009-002452 Application 09/237,194 19 Bey, 806 F.2d at 1028. But there is no evidence of such a backlog or that if 1 there was a backlog that it was taken up in chronological order. There is 2 also no evidence showing that the period subsequent to the last documented 3 attorney activity on October 29 up to the date of filing was excused activity. 4 We are left with a large number of days in which no documented attorney 5 activity occurred and no evidence that those days were excusable. 6 Taking all of this evidence together, we have a claim to priority of a 7 continuation-in-part for which there is no showing that the earlier 8 application provides an adequate written description. The earlier application 9 was further filed subsequent to the applied art. We have no evidence that the 10 specific details of any of the claims were conceived prior to the applied art, 11 no specific details of development activities of the claimed subject matter or 12 of the drafting activities of the patent application, and no evidence that the 13 attorney was diligent in constructive reduction. 14 We cannot say that the documented activities with regard to the present 15 application are sufficient to prove diligence or conception. Even if they 16 were sufficient, there is no evidence that the 1992 application provided an 17 adequate written description for the instant claims. We conclude that all of 18 the references, and Kirk in particular, constitute prior art against the instant 19 claims. The Appellant presents no arguments that the claims are not obvious 20 over the art as applied. 21 CONCLUSIONS OF LAW 22 The Examiner did not err in rejecting claims 34-41, 45-50, 52, 54-59, 23 61-63, 65, 66, 69-75, 77-84, 88-93, 95, 97-102, 104-106, 108, 109, and 112-24 118 under 35 U.S.C. § 103(a) as unpatentable over Fu, Lee, and Kirk. 25 Appeal 2009-002452 Application 09/237,194 20 The Examiner did not err in rejecting claims 42, 44, 85, and 87 under 35 1 U.S.C. § 103(a) as unpatentable over Fu, Lee, Kirk, and Beckers. 2 The Examiner did not err in rejecting claims 51, 53, 60, 64, 67 94, 96, 3 103, 107, 110, and 111 under 35 U.S.C. § 103(a) as unpatentable over Fu, 4 Lee, Kirk, and Fujimoto. 5 The Examiner did not err in rejecting claims 43 and 86 under 35 U.S.C. 6 § 103(a) as unpatentable over Fu, Lee, Kirk, and Official Notice. 7 The Examiner did not err in rejecting claims 76 and 119-138 under 35 8 U.S.C. § 103(a) as unpatentable over Fu, Lee, Kirk, and Official Notice. 9 DECISION 10 To summarize, our decision is as follows. 11 • The rejection of claims 34-41, 45-50, 52, 54-59, 61-63, 65, 66, 69-75, 12 77-84, 88-93, 95, 97-102, 104-106, 108, 109, and 112-118 under 35 13 U.S.C. § 103(a) as unpatentable over Fu, Lee, and Kirk is sustained. 14 • The rejection of claims 42, 44, 85, and 87 under 35 U.S.C. § 103(a) as 15 unpatentable over Fu, Lee, Kirk, and Beckers is sustained. 16 • The rejection of claims 51, 53, 60, 64, 67 94, 96, 103, 107, 110, and 17 111 under 35 U.S.C. § 103(a) as unpatentable over Fu, Lee, Kirk, and 18 Fujimoto is sustained. 19 • The rejection of claims 43 and 86 under 35 U.S.C. § 103(a) as 20 unpatentable over Fu, Lee, Kirk, and Official Notice is sustained. 21 • The rejection of claims 76 and 119-138 under 35 U.S.C. § 103(a) as 22 unpatentable over Fu, Lee, Kirk, and Official Notice is sustained. 23 Appeal 2009-002452 Application 09/237,194 21 No time period for taking any subsequent action in connection with this 1 appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv). 2 3 AFFIRMED 4 5 6 7 mev 8 9 Address 10 HEALTH HERO NETWORK, INC. 11 2400 GENG ROAD, SUITE 200 12 PALO ALTO CA 94303 13