Ex Parte Brown

Patent Trial and Appeal Board

Jul 22, 2014

11610156 (P.T.A.B. Jul. 22, 2014)

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.
11/610,156 12/13/2006 Stephen J. Brown 7553.00044 / 06-0564 2303
60683 7590 07/22/2014
Robert Bosch Healthcare Systems, Inc.
2400 GENG ROAD, SUITE 200
PALO ALTO, CA 94303
EXAMINER
SHAW, PETER C
ART UNIT PAPER NUMBER
2493
MAIL DATE DELIVERY MODE
07/22/2014 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 PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte STEPHEN J. BROWN
____________________

Appeal 2011-012799
Application 11/610,156
Technology Center 2400
____________________

Before: JENNIFER D. BAHR, JOHN C. KERINS, and
CHARLES N. GREENHUT, Administrative Patent Judges.

BAHR, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134 from the Examiner’s
rejection of claims 1–23. We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.

THE CLAIMED SUBJECT MATTER
Claim 1, reproduced below, with emphasis added, is illustrative of the
claimed subject matter:
1. A method of monitoring health supplies, comprising:
A) selecting one of a number of programs stored on a
server;
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Application 11/610,156

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B) transmitting the program to a remotely situated
apparatus through at least one communication network, wherein
the program causes the apparatus to present one or more
queries and one or more predetermined response choices
associated with the one or more queries to an individual and
collect at least one of the predetermined response choices
selected by the individual in response to the one or more
queries;
C) receiving the at least one of the predetermined
response choices selected by the individual through the at least
one communication network and storing the at least one of the
predetermined response choices selected by the individual in
the server;
D) adjusting a schedule at a health supplies supplier for
delivering the health supplies to a home of the individual based
upon the at least one of the predetermined response
choices selected by the individual;
E) monitoring an inventory of the health supplies at the
home of the individual; and
F) scheduling deliveries of the health supplies to the
home of the individual.

REJECTIONS
Claims 1, 2, 5, 12–14, and 17 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over Kail (US 6,225,901 B1, iss. May 1, 2001) and
Kirk (US 5,390,238, iss. Feb. 14, 1995). Ans. 3.
Claims 3, 4, 15, and 16 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Kail, Kirk, and Swedlow (US 5,746,697, iss. May 5,
1998). Ans. 10.
Claims 6–9 and 18–21 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Kail, Kirk, and Smith (US 5,558,086, iss. Sept. 24,
1996). Ans. 11.
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Application 11/610,156

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Claims 10, 11, 22, and 23 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Kail, Kirk, and Mick (US 5,355,893, iss. Oct. 18,
1994). Ans. 13.

OPINION
Both of Appellant’s independent claims 1 and 13 require a program
that causes the apparatus to present one or more queries and one or more
predetermined response choices associated with the one or more queries.
The Examiner found that Kail discloses a method of monitoring health
supplies where a program causes the apparatus to present one or more
queries and one or more predetermined response choices associated with the
one or more queries to an individual, and collect at least one of the
predetermined response choices selected by the individual in response to the
one or more queries. Ans. 4. The Examiner has taken the position that
Kail’s display of choices to a user constitutes a query because the subject
selects an option from a menu of options. Id. at 15. The Examiner’s
position, however, does not take into account that the claims require both
one or more queries and one or more responses associated with the one or
more queries. Id. at 4. A query is a question and the examples of this
functionality in the Appellant’s Specification show actual questions
accompanied by a list of possible responses. Spec. para. 64 and Fig. 5. The
menu of options relied upon by the Examiner might reasonably be
considered to be a presentation of one or more responses. Alternatively, the
presentation of a menu of options might arguably be considered to be a
query, in that it solicits a response. However, this menu of options does not
satisfy the requirements in claims 1 and 13 for both a presentation of a query
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Application 11/610,156

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and a presentation of its predetermined responses. See, e.g., Lantech, Inc. v.
Keip Mach. Co., 32 F.3d 542, 547 (Fed. Cir. 1994) (in infringement context,
a single conveyor held not to meet claim element requiring at least two
conveyors); In re Robertson, 169 F.3d 743, 745 (Fed. Cir. 1999) (claim
requiring three separate means not anticipated by structure containing two
means where one of the two means was argued to meet two of the three
claimed means).
We therefore reverse the rejections of claims 1 and 13 and of their
dependent claims 2–12 and 14–23, because all of these rejections are
predicated in part on the Examiner’s erroneous finding that Kail’s
presentation of a menu of options satisfies the claim requirement of a
program that causes the apparatus to present one or more queries and one or
more predetermined response choices associated with the one or more
queries.

DECISION
For the above reasons, the Examiner’s decision is REVERSED.

REVERSED

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