Ex Parte Brown

Patent Trial and Appeal Board

Apr 26, 2017

11923793 (P.T.A.B. Apr. 26, 2017)

United States Patent and Trademark Office
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
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APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
7553.00080/07-0145 1149
EXAMINER
JANG, CHRISTIAN YONGKYUN
ART UNIT PAPER NUMBER
3735
MAIL DATE DELIVERY MODE
11/923,793 10/25/2007
60683 7590
Robert Bosch LLC
1800 W. Central Road
Mount Prospect, IL 60056
04/26/2017
Stephen J. Brown
04/26/2017 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 2015-005576
Application 11/923,793
Technology Center 3700
Before HUBERT C. LORIN, BIBHU R. MOHANTY, and
BRADLEY B. BAYAT, Administrative Patent Judges.
BAYAT, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s
Final Rejection of claims 1—4, 6, 7, and 9-27. We have jurisdiction under
35 U.S.C. § 6(b).
SUMMARY OF DECISION
We REVERSE.
1 Appellant identifies Robert Bosch Healthcare Systems, Inc. as the real
party in interest. App. Br. 2.
Appeal 2015-005576
Application 11/923,793
THE INVENTION
Claim 1, reproduced below, is illustrative of the subject matter on
appeal.
1. A self-care blood glucose system, comprising:
(a) a portable blood glucose monitoring module for
sensing a blood glucose level and producing a data signal
representative of the blood glucose level;
(b) a portable microprocessor-based unit that is
separate from and operates in conjunction with the portable
blood glucose monitoring module, wherein said portable
microprocessor-based unit includes (i) an updatable memory
configured to store (A) blood glucose measurements produced
by said portable blood glucose monitoring module, and (B)
program instructions related to processing said blood glucose
level, (ii) a display configured to (A) present to a user
alphanumeric messages of at least one line of text, and (B)
graphs of said blood glucose measurements stored in the
updatable memory, and (iii) program instructions to generate
statistics and trend data based on said blood glucose
measurements;
(c) signal processing circuitry for receiving the data
signal from said portable blood glucose monitoring module and
outputting a digital signal to the portable microprocessor-based
unit; and
(d) a signal interface for coupling the portable blood
glucose monitoring module directly to the portable
microprocessor-based unit.
THE REJECTIONS
The Examiner relies upon the following as evidence of
unpatentability:
Murez US 4,294,496 Oct. 13, 1981
(“Murez”)
Beckers US 5,019,974 May 28, 1991
2
Appeal 2015-005576
Application 11/923,793
(“Beckers”)
Okada et al. US 5,184,830 Feb. 9, 1993
(“Okada”)
Kahn et al. US 5,251,126 Oct. 5, 1993
(“Kahn”)
Stutman et al. US 5,416,695 May 16, 1995
(“Stutman”)
The following rejections are before us for review:
Claims 1—4, 6, and 7 are rejected under 35 U.S.C. 103(a) as being
unpatentable over Kahn and Beckers.
Claims 9—16 and 24—26 are rejected under 35 U.S.C. 103(a) as being
unpatentable over Kahn, Beckers, and Okada.
Claims 17—23 and 27 are rejected under 35 U.S.C. 103(a) as being
unpatentable over Kahn, Beckers, and Stutman2.
ANALYSIS
Independent claim 1
We are persuaded by Appellant’s arguments that the Examiner erred
in rejecting claim 1 under 35 U.S.C. § 103(a) as unpatentable over Kahn and
Beckers. Appellant contends that the Examiner has misconstrued the claim
term “portable” (App. Br. 9). According to Appellant, the personal
computer disclosed in Kahn is a desktop computer and “there is a well-
known distinction between so called ‘desktop computers’ and ‘portable
computers.’” {Id. at 10). We agree.
2 Although the Examiner relied on Okada in the rejection of independent
claim 10, the Examiner does not appear to rely on Okada in rejecting claims
17—23 which depend from claim 10.
3
Appeal 2015-005576
Application 11/923,793
The Examiner construed the term “portable microprocessor-based
unit” to mean “any device that one can move around” (Final Act. 2, 4, and 6)
or “any computing device that can be moved” (Ans. 3). The Examiner does
not indicate the origin of this definition. Relying on this construction, the
Examiner s that because the desktop personal computer 16 disclosed in Kahn
can be moved, it meets the claimed “portable microprocessor-based unit”
(Final Act. 2, 4, and 6).
We find that the Examiner’s interpretation of this claim limitation is
unreasonably broad and inconsistent with the Specification. During
examination, claims are to be given their broadest reasonable interpretation
consistent with the specification, and the language should be read in light of
the specification as it would be interpreted by one of ordinary skill in the art.
Appellant’s Specification does not provide an express definition for the term
“portable.” As such, Webster’s New World Computer Dictionary (2003)3
defines “portable computer” as “[a] computer with a screen and keyboard
built in and designed to be transported easily from one location to another.”
The Specification consistently describes the “portable microprocessor-
based unit” as a small (e.g., hand-held) device. See, e.g., Spec. para. 14
(“small handheld microprocessor-based unit”), para. 22 (“small handheld
microprocessor units such as a handheld video game system or handheld
microprocessor units of the type often referred to as ‘palmcomputers’ . . .
3 Webster’s New World Computer Dictionary (2003) retrieved from
http:// search, credoreference. com/ content/entry/webstercom/portable_comput
er/0 (Accessed Apr. 18, 2017)
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Appeal 2015-005576
Application 11/923,793
other compact microprocessor units . . . compact video game systems”).
This description in the Specification is consistent with the ordinary meaning
of “portable” in the context of computers. We therefore construe “portable
microprocessor-based unit” as a micro-processor based unit that is designed
to be easily carried or moved.4
The Examiner does not disagree with Appellant’s contention that
Kahn discloses a desktop computer. See Ans. 3^4. Rather, the Examiner’s
discussion of portable toilets, stages, and houses as reasoning for the
Examiner’s interpretation of the claim term falls outside the scope of the
technical field of Appellant’s disclosure. See id. The Examiner does not
offer any explanation, evidence, or technical reasoning to support the finding
that Kahn discloses a portable microprocessor-based unit as required by
claim 1. See id. The Examiner’s finding that Kahn teaches or suggests a
portable microprocessor-based unit is based on an erroneous interpretation,
and thus, not adequately supported in the record.
For the foregoing reasons, the Examiner erred in asserting that the
combination as proffered in the rejection of record is supported by a
preponderance. Thus, we do not sustain the rejection of claim 1 and its
dependent claims.5
4 See Ex Parte Brown, Appeal 2012-008586, slip op. at 6 (PTAB Feb. 20,
2015) (construing “portable microprocessor-based device” as “a
microprocessor-based device that is designed to be easily carried or
moved.”)
5 In the event of further prosecution, the Examiner may wish to consider
whether the claims are indefinite for failing to provide notice to the public
regarding the metes and bound of the claim limitations, viz., whether any of
the claim elements invoke 35 U.S.C. § 112, sixth paragraph?
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Appeal 2015-005576
Application 11/923,793
Independent claims 10 and 24
The Appellant contends that the Examiner has failed to clearly
articulate the reasons for obviousness. App. Br. 17—18,28—29. We agree.
In the rejection of independent claims 10 and 24, the Examiner relies
on the same improper interpretation discussed above with respect to claim 1.
Although the Examiner additionally relies on Okada, which discloses a
hand-held electronic game machine (Final Act. 4, 6), the rejection of claims
10 and 24 remains premised on the finding that Kahn’s desktop computer is
a portable computer under the unreasonably broad interpretation discussed
above. See Final Act. 4, 6 “Kahn teaches ... a portable microprocessor
based unit”; “(any device that one can move around is considered to be
portable”); Final Act. 6, 7 (“obvious ... to further enhance the portability of
the combined device.”). Thus, the Examiner’s reason for combining Kahn
and Okada is not adequately supported in the record because the rejection of
claims 10 and 24 is expressly based on the same erroneous interpretation
relied upon in the rejection of claim 1.
Accordingly, we do not sustain the rejection of claims 10 and 24 and
their dependent claims.
DECISION
The Examiner’s rejections under 35 U.S.C. § 103(a) are reversed.
REVERSED
6