Ex Parte Brown

Patent Trial and Appeal Board

Jun 21, 2016

10605548 (P.T.A.B. Jun. 21, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO.
10/605,548
60683 7590
Robert Bosch LLC
FILING DATE
10/07/2003
06/22/2016
1800 W. Central Road
Mount Prospect, IL 60056
FIRST NAMED INVENTOR
Stephen J. Brown
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.
7553.00100/03-1010 2547
EXAMINER
LUBIN, VALERIE
ART UNIT PAPER NUMBER
3626
MAILDATE DELIVERY MODE
06/22/2016 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
Appeal2014-002742
Application 10/605,548 1
Technology Center 3600
Before NINA L. MEDLOCK, PHILIP J. HOFFMAN, and
ROBERT J. SILVERMAN, Administrative Patent Judges.
SILVERMAN, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
The Appellant appeals under 35 U.S.C. § 134(a) from the Examiner's
decision rejecting claims 1-5, 7, 8, 10, 12-23, 25, 26, 28, and 31-50. Final
Action 1 (Office Action Summary). We have jurisdiction under 35 U.S.C.
§ 6(b).
We AFFIRM.
1 According to the Appellant, the real party in interest is Robert Bosch
Healthcare Systems, Inc. Appeal Br. 2.
Appeal2014-002742
Application 10/605,548
ILLUSTRATIVE CLAHvI
1. A health monitoring system, comprising:
a server computer configured to (i) receive health-related data of a
person via a communications network, (ii) receive from a health care
professional via said communications network identification data, an
authorization code and a selection of one of a plurality of reports, wherein
said health care professional is associated with said person, (iii) generate a
selected one of said reports in accordance with said selection by analyzing
said health-related data and (iv) transmit said selected report via said
communications network to said health care professional in response to both
said identification data and said authorization code, wherein (a) said
identification data identifies said person, (b) said identification data
identifies said health care professional as being permitted to access said
health-related data of said person, ( c) said authorization code identifies said
health care professional as an authorized user of said server computer and
( d) said health care professional is remotely located from said person and
said server computer;
a monitoring device configured to (i) monitor a condition indicative of
a physical well-being of said person and (ii) produce said health-related data,
wherein said monitoring device is (a) located near said person and (b)
remotely located from said server computer; and
a programmable microprocessor-based interactive unit that is (a)
separate from said monitoring device, (b) located near said person, and ( c)
located remotely from said server computer, said programmable
microprocessor-based interactive unit including (i) a display and (ii) a
memory tangibly embodying therein a program of instructions executable by
said programmable microprocessor-based interactive unit,
said program of instructions when executed configuring said
programmable microprocessor-based interactive unit to (i) generate
processed data by processing said health-related data, (ii) present said
processed data on said display to said person in an interactive manner
allowing said person to control operation of said programmable
microprocessor-based interactive unit and (iii) communicate said health-
related data via said communications network to the server computer.
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Application 10/605,548
REJECTION
Claims 1-5, 7, 8, 10, 12-23, 25, 26, 28, and 31-502 are rejected under
35 U.S.C. § 103(a) as unpatentable over Allen (US 4,731,726, issued Mar.
15, 1998) in view of Chaco (US 5,465,082, issued Nov. 7, 1995), Treatch
(US 4,830,018, issued May 16, 1989), and Bittman et al. (US 5,343,871,
issued Sept. 6, 1994) ("Bittman").
FINDINGS OF FACT
We rely upon and adopt the Examiner's findings stated in the Final
Action (at pages 2-11) and the Answer (at pages 3-14). Additional findings
of fact may appear in the Analysis below.
ANALYSIS
Claim 1
The Appellant presents three arguments for alleged error in the
rejection of independent claim 1, which are addressed in tum below.
Because none of these arguments is persuasive, the rejection of claim 1 is
sustained.
1. Receipt of an "Authorization Code" is Not Required
Prior to "Analyzing"
The Appellant contends that claim 1 requires the claimed "server
computer" must be "configured to" "analyz[ e] said health-related data" only
after "receiv[ing] ... an authorization code," and that none of the cited
references teaches this feature. Appeal Br. 7-8.
2 The Final Action (at page 2) includes claims 11 and 29 in the description of
the rejection, although these claims were not then pending.
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In response, the Examiner's Answer states that claim l does not
require such "analyzing" to be contingent upon the receipt of an
authorization code. Answer 10.
The Appellant's argument is unpersuasive because claim 1 does not
require the alleged feature. The claim recites, in relevant part, "a server
computer configured to ... receive ... identification data, an authorization
code and a selection of one of a plurality of reports" and "generate a selected
one of said reports in accordance with said selection by analyzing said
health-related data." Thus, the claimed "generat[ing] a selected one of said
reports" - and, thus, the "analyzing said health-related data" needed to
"generate" the selected report - must occur after the claimed "selection."
However, there is nothing in the claim language requiring the "generat[ing]"
(or its related "analyzing") to occur after (or at any particular time relative
to) the receipt of the "authorization code." As the Examiner correctly
determines (Answer 11 ), the only feature of claim 1 that requires the
"authorization code" as a predicate is the claimed "transmit[ ting] said
selected report ... in response to both said identification data and said
authorization code" (Appeal Br. 21, Claims App. (emphasis added)).
Further, the Specification does not require the generation of a report (or any
attendant analysis of data) to occur after a receipt of an authorization code.
See Spec. i-fi-1 45--46.
2. The Claim Does Not Require Use of Authorization Codes
to Protect Patient Data
The Appellant contends that none of the cited references teaches the
use of authorization codes to protect patient data. Appeal Br. 9.
This argument is not persuasive of any error by the Examiner because
claim 1 does not recite the use of authorization codes to protect patient data.
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Application 10/605,548
See Answer 11. The Appellant (Appeal Br. 9) apparently mistakes the
Examiner's finding-that the use of authorization codes to protect patient
data provides a reason to combine Chaco' s teachings with those of other
references (Final Action 4; see also Answer 11) - for an interpretation of the
scope of claim 1 that would require a feature not present in the claim.
3. The Rejection Provided a Sufficient Reason for
Combining References
The Appellant contends that the Examiner has not articulated a
sufficient reason for combining the teachings of the cited references. Appeal
Br. 10-12.
In regard to combining the teachings of Allen and Chaco, the
Appellant contends that the Final Action does not explain how using the
security system of Chaco (which monitors access to a location that houses
controlled substances) "would be understood by one of ordinary skill in the
art to be the same function as using an authorization code to authorize
analysis of data." Appeal Br. 10. Yet, as addressed above, claim 1 does not
require an authorization code to authorize analysis of data. See Answer 11-
12.
In regard to the combination of Allen and Chaco, we agree with the
Examiner that the aim of ensuring that only authorized individuals have
access to medical data provides a sufficient reason to combine their
teachings because Allen teaches the communication of patient medical data
to a physician and Chaco teaches the use of security features to prevent
unauthorized access to data and medication. See Answer 12; see also Final
Action 2-3 (citing Allen, col. 4, 11. 38-39, col. 6, 11. 44--46, 54--59, 63---65,
col. 7, 60-65, col. 8, 11. 1-2, Fig. 4, Chaco, col. 8, 11. 48-56, col. 13, 11. 26-
28, 65---67, col 14, 1. 1, col. 26, 11. 4--8, col. 31, 11. 3-5, Fig. 4).
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The Appellant questions the Examiner's reliance upon Bittman, for
selection of one of a plurality of reports, because Allen provides such
function automatically. Appeal Br. 10-11. However, Bittman's
functionality for controlling report generation and formatting would not
impede, prevent, or render redundant the report-creation aspects of Allen.
See Final Action 4 (citing Bittman, col. 10, 11. 26-28, col. 11, 11. 7-21 ); see
also Answer 12. In addition, as the Examiner finds, enabling users to view
data according to their preferences and needs is a sufficient reason for
combining the identified teachings. See Final Action 4.
The Appellant also contends that the reasons for combining the
teachings of Allen and Chaco are deficient because modifying the "simple
home monitoring system of Allen based upon the complex wall-mounted
system of Chaco" would "make the system of Allen more complex." Appeal
Br. 11-12. Yet, the Appellant does not appear to dispute that the data
security reasons identified by the Examiner provide a sufficient motivation
for combining the teachings of the identified references. See Final Action 4;
see also Answer 12-13. Rather, the Appellant seems to contend that the
teachings of Allen and Chaco should not be combined because doing so
would conflict with the nature of Allen's embodiments, which are small,
portable, and suitable for use in a home setting. See Appeal Br. 11-12.
However, "it is not necessary that the inventions of the references be
physically combinable to render obvious the invention under review." In re
Sneed, 710 F.2d 1544, 1550 (Fed. Cir. 1983). Rather, obviousness is
determined by "what the combined teachings of those references would have
suggested to those of ordinary skill in the art." In re Keller, 642 F .2d 413,
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425 (CCPA 1981). Accordingly, the Appellant's arguments are not
persuasive.
Claims 2-5, 7, 8, 10, 12, 13,
18-23, 25, 28, 31, 36-38, and 4{)-50
The Appellant relies upon the arguments for claim 1, in regard to
dependent claims 2-5, 7, 8, 10, 12, 13, 18, 37, 38, 40-45, 48, and 50.
Appeal Br. 12. Because the rejection of claim 1 is sustained, the rejection of
these dependent claims is also sustained.
The Appellant relies upon the arguments for claim 1 in regard to
independent claim 19 and its dependent claims 20-23, 25, 26, 28, 31, 36, 46,
4 7, and 49. Appeal Br. 16-17. Because the rejection of claim 1 is sustained,
the rejection of these claims is also sustained.
Claim 14
Claim 14 recites:
The system of claim 1, wherein the server computer is
configured to transmit via said communications network at least
one message to said programmable microprocessor-based
interactive unit for presentation on said display.
The Appellant contends (Appeal Br. 13-14) that the Examiner erred
in rejecting claim 14 because the Examiner relies upon Allen's disclosure of
a monitoring unit that displays a message to a patient (Final Action 6 (citing
Allen, col. 7, 11. 35-37)). According to the Appellant, the identified portion
of Allen shows the monitoring unit executing a stored program that displays
screen prompts, as opposed to the claimed recitation of a "server computer"
that "transmit[ s] ... at least one message to said programmable
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microprocessor-based interactive unit for presentation on said display." See
Appeal Br. 13-14.
In response, the Answer states that Allen discloses a physician
remotely (through a modem) reprogramming the monitoring unit, such that
the monitoring unit displays screen prompts based upon the physician's
instructions, thereby teaching the limitations of claim 14. Answer 13 (citing
Allen, col. 6, 11. 63----67, col. 7, 11. 60-65).
The Appellant's Reply Brief argues that Allen is deficient,
nevertheless, because Allen's disclosure does not show that the physician's
transmitted reprogramming instructions themselves are displayed by the
monitoring unit. Reply Br. 2-3.
The Appellant's argument thus relies upon a difference between the
claimed server configured to transmit a message and Allen's disclosure of a
computer that transmits instructions from which a message is generated.
This difference does not distinguish the claimed limitations from Allen's
teachings, however. The Supreme Court has made clear that, when
considering obviousness, "the analysis need not seek out precise teachings
directed to the specific subject matter of the challenged claim, for a court
can take account of the inferences and creative steps that a person of
ordinary skill in the art would employ." KSR Int 'l Co. v. Teleflex Inc., 550
U.S. 398, 418 (2007). Indeed, the Examiner acknowledges that Allen's
displayed screen prompts are "based on instructions received from the
physician computer." Answer 13 (emphasis added). Accordingly, the
Appellant's argument regarding claim 14 is not persuasive.
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Application 10/605,548
The Appellant also relies upon the arguments for claim 1, in regard to
dependent claim 14. Appeal Br. 13. As set forth herein, those arguments
are unpersuasive.
Claims 15-17, 32, 33, and 35
The Appellant relies upon the arguments for claim 14, in regard to
claims 15-17, which depend from claim 14. Appeal Br. 14. Because the
rejection of claim 14 is sustained, the rejection of claims 15-17 is also
sustained.
Claim 32 (which contains a limitation similar to that in claim 14)
depends from independent claim 19. The Appellant relies upon the
arguments for claim 14 and the arguments for claim 19, in regard to
claim 32. Appeal Br. 17-18. Because the rejections of claims 14 and 19 are
sustained, the rejection of claim 32 is also sustained.
The Appellant relies upon the arguments for claim 3 2 in regard to
claims 33 and 35. Appeal Br. 18. Because the rejection of claim 32 is
sustained, the rejection of claims 33 and 35 is also sustained.
Claim 34
Claim 34 recites: "The method of claim 32, wherein the message is
educational or motivational."
In rejecting claim 34, the Examiner determined that claim 34's
limitation of the "message" (which is also recited in claim 32, from which
claim 34 depends) being "educational or motivational" constitutes non-
functional descriptive material that has no patentable weight. Final
Action 6.
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The Appellant argues that claim 34 "requires a particular type of data
to be transmitted," which, thus, constitutes a "functional limitation." Appeal
Br. 19.
The Examiner's Answer, in addition to repeating the determination
that the limitation added in claim 34 is non-functional descriptive material,
states that Allen shows the receipt of a message that can be instructions.
Answer 14 (citing Allen, col. 7, 11. 35-59, 63---67). Thus, as an alternative
ground for rejecting claim 34, Allen might teach the feature that "message is
educational or motivational," as recited in the claim.
There is no need to address such a possible alternative ground,
however, because the limitation added in claim 34 constitutes non-functional
descriptive material that has no patentable weight.
According to what is sometimes called the "printed matter" doctrine,
text that is not functionally or structurally related to its physical substrate
may not be relied upon to distinguish over the prior art for purposes of
patentability. In re Distefano, 808 F.3d 845, 848 (Fed. Cir. 2015); In re
Gulack, 703 F.2d 1381, 1385 (Fed. Cir. 1983); Ex parte Nehls, 88 USPQ2d
1883, 1889 (BP AI 2008) (precedential). In applying the printed matter
doctrine, the first step is to determine whether the limitation is, in fact,
directed to printed matter, i.e., whether the limitation claims the content of
information. Distefano, 808 F.3d at 848. If the content of information is
indeed claimed, then "one must then determine if the matter is functionally
or structurally related to the associated physical substrate, and only if the
answer is 'no' is the printed matter owed no patentable weight." Id. at 851.
As to the first step, claim 34 recites that "the message is educational
or motivational," such that the content of the information is being claimed,
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as the Examiner determines. Final Action 6; see also Answer 14. As to the
second step, the Examiner states that the content of the information "does
not further limit the system's ability to display messages." Final Action 6;
see also Answer 14. The Appellant's assertions that the claim requires
transmission of "a particular type of data" and that "specific data is a
functional limitation" (Appeal Br. 19) do not articulate any functional or
structural relationship between the claimed information content (i.e., its
"educational or motivational" nature) and any other feature of the claimed
embodiment. Accordingly, the Appellant's argument is not persuasive of
any error in the Examiner's determination that the limitation added in
claim 34 is non-functional descriptive matter that is entitled to no patentable
weight.
The Appellant also relies upon the arguments for claim 32, in regard
to claim 34. Appeal Br. 19. As set forth herein, the rejection of claim 32 is
not sustained.
Accordingly, the rejection of claim 34 is sustained.
Claim 39
Claim 39 recites:
The system of claim 1, wherein the monitoring device
communicates with said server computer via a radio frequency
transmission.
In the combination of references relied upon in the rejection of
claim 39, the Final Action relies upon Chaco for teaching radio frequency
transmission. Final Action 7 (citing Chaco, col. 9, 11. 59---61 ).
The Appellant contends that Chaco is deficient because it refers to the
operation of "transceiver 1110 of FIG. I la," which "is not a monitor
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(alleged to be the external device 410 of FIG. 4)." Appeal Br. 15. The
Appellant here refers to one of Chaco' s teachings relied upon, as to the
rejection of claim 1. See Final Action 3 (referring to, inter alia, Chaco,
Fig. 4, element 410). The Appellant thus appears to argue that, because the
Examiner's rejection of claim 1 relies upon some of Chaco's teachings
relating to particular structures thereof, any other of Chaco' s teachings relied
upon must involve those same structures. Yet, there is no such constraint as
to how a person of ordinary skill in the art may employ the teachings of a
reference. "It is wen settled that a prior mi reference is relevant for all that it
teaches to those of ordinary skiH in the art." Jn re Fritch, 972 F. 2d 1260,
1264----65 (Fed. Cir. 1992). Indeed, as the Answer states, Chaco's teaching of
radio frequency transmission applies generally to communication between
various types of devices, as it is a known substitute for other forms of
transmission. Answer 13-14. Thus, the Appellant's argument is not
persuasive.
The Appellant also relies upon the arguments for claim 1, in regard to
claim 3 9. Appeal Br. 15. As set forth herein, the rejection of claim 1 is not
sustained.
Accordingly, the rejection of claim 39 is sustained.
DECISION
We AFFIRM the Examiner's decision rejecting claims 1-5, 7, 8, 10,
12-23, 25, 26, 28, and 31-50.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED
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