Ex Parte Cronrath et al

Patent Trial and Appeal Board

Jun 21, 2016

11911142 (P.T.A.B. Jun. 21, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
111911,142 08/05/2008
63049 7590 06/23/2016
FAEGRE BAKER DANIELS LLP I ROCHE
300 NORTH MERIDIAN STREET
SUITE 2700
INDIANAPOLIS, IN 46204
FIRST NAMED INVENTOR
Christoph Cronrath
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.
ROCHE-P0027 3889
EXAMINER
KANAAN, MAROUN P
ART UNIT PAPER NUMBER
3686
NOTIFICATION DATE DELIVERY MODE
06/23/2016 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address( es):
BOB.NULL@faegrebd.com
inteas@faegrebd.com
pair_roche@firsttofile.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte CHRISTOPH CRONRATH, FERNANDO ANDREAU, and
ALBERTO VAN VINCENTE
Appeal2014-004179 1
Application 11/911, 1422
Technology Center 3600
Before ANTON W. PETTING, MICHAEL W. KIM, and AMEE A. SHAH,
Administrative Patent Judges.
SHAH, Administrative Patent Judge.
DECISION ON APPEAL
The Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's
decision finally rejecting claims 32--41 and 44--58 under 35 U.S.C. § 103(a)
as being unpatentable over Nova (US 2003/0114885 Al, pub. June 19,
2003) and Beck (US 2002/0178126 Al, pub. Nov. 28, 2002). We have
jurisdiction under 35 U.S.C. § 6(b). We REVERSE.
1 Throughout this opinion, we refer to the Appeal Brief ("Appeal Br.," filed
Aug. 26, 2013), the Examiner's Answer ("Ans.," mailed Nov. 22, 2013), the
Final Office Action ("Final Act.," mailed Apr. 23, 2013), and the
Specification ("Spec.," filed Oct. 10, 2007).
2 According to the Appellants, the real party in interest is Roche Diagnostics
Operations, Inc. Appeal Br. 3.
Appeal2014-004179
Application 11/911, 142
STATEMENT OF THE CASE
The Appellants' invention is directed to "monitoring medical data
using a portable medical device and a mobile communications device"
Spec. 1, 11. 10-11.
Claims 32, 49, and 52 are the independent claims on appeal. Claim 32
(Claims App.), reproduced below, is illustrative of the subject matter on
appeal (with added bracketing):
32. A method for monitoring medical data using a portable
medical device and a mobile communications device, the
portable medical device and the mobile communications device
each comprising at least one interface for medical information
transfer, the method comprising the steps of:
[a] establishing a download link between the mobile
communications device and a download server;
[b] detecting, by the download server, a type of the mobile
communications device;
[ c] offering a user a selection of a plurality of
communication software packages associated with the type of the
mobile communications device detected by the download server;
the communication software packages being for controlling
transfer of medical information between a mobile
communications device and a portable medical device;
[ d] selecting a communication software package from the
plurality of communication software packages, the plurality of
communication software packages being stored on a memory
accessible to the download server;
[ e] downloading the communication software package
from the download server to the mobile communications device
over the download link; and
[ f] installing the communication software package on the
mobile communications device.
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Appeal2014-004179
Application 11/911, 142
FINDINGS OF FACT
We have determined that the findings of fact in the Analysis section
below are supported at least by a preponderance of the evidence. 3
ANALYSIS
Claims 32--41, 44-48, and 58
The Appellants contend the rejection of independent claim 32 is in
error because the prior art does not teach or suggest all of the claimed
features. See Appeal Br. 12-16. In relevant part, the Appellants argue that
the Examiner provides contradictory findings regarding which portions of
Nova correspond to the recited mobile communications device and the
portable medical device (see Appeal Br. 12-14), and that Nova, upon which
the Examiner relies solely for limitations [b] and [ c], further does not teach
detecting by the server a type of communications device and offering a
selection of packages associated with the type of device detected, as recited
in limitations [b] and [c] (see id. at 14--16). We agree.
The Examiner "note[ s] that a mobile communications device can be a
portable medical device and vice versa." Ans. 2. As an initial matter, this is
problematic as the claims recite explicit relationships and operations
between the devices. Thus, it would be more appropriate to explicitly
designate the correspondence in the prior art so as to provide a basis from
which to evaluate the intertwined relationships and operations.
3 See Ethicon, Inc. v. Quigg, 849 F.2d 1422, 1427 (Fed. Cir. 1988)
(explaining the general evidentiary standard for proceedings before the
Patent Office).
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Appeal2014-004179
Application 11/911, 142
To that end, the Examiner does appear to find that Nova discloses
communication software for controlling transfer of medical information
between a mobile communications device (i.e., the transducer device that
communicates with the transducer interface of the medical device), and a
portable medical device (i.e., a portable automated external defibrillator
("AED")). See Ans. 2 and Final Act. 4; see also Appeal Br. 14. However,
the Examiner further finds that Nova discloses detecting, by the server, the
type of communications device in disclosing a user selecting a component
package appropriate for the AED's (i.e., the recited medical device's)
intended use (see Final Act. 3; Ans. 3), and that Nova discloses offering a
selection of packages based on the detected device in disclosing integrated
component packages that may be configured to be used for specific medical
devices (see Final Act. 4; Ans. 3). The claim, however, requires that the
server in Nova detect the type of transducer device as opposed to the type of
medical device. 4 Furthermore, while the user in Nova may make a selection
of an appropriate package from a plurality of packages, neither the cited
portions of Nova nor the Examiner indicate the basis for those plurality of
packages - significantly, whether any of those packages are selected based
on whether they are associated with the type of transducer device or medical
device, as required by the claim. For example, the user may merely select
4 The Examiner does insinuate that the roles of the transducer device and
medical device in Nova may be interchangeable with respect to the recited
mobile communications device and portable medical device. The relevant
portions of the Examiner's analysis concerning limitations [b] and [ c],
however, state explicitly that the AED corresponds to the recited portable
medical device.
4
Appeal2014-004179
Application 11/911, 142
from a global list of packages irrespective of any detected device type. See
Appeal Br. 15; see also Nova i-f 57
Thus, we are persuaded of error in the part of the Examiner in
rejecting claim 32, and we do not sustain the rejection of independent claim
32 and its dependent claims 33--41, 44--48, and 58.
Claims 49-52 and 57
The Appellants' argument that the rejection of independent claim 49
is in error for the same reasons discussed with respect to claim 32 (Appeal
Br. 16) is not persuasive because claim 49 does not recite both a
communications device and a medical device or detecting by the server the
type of communications device and offering packages associated with the
detected type of communications device. Rather, claim 49 recites a
communications device, a medical care server, and that "the selected
communication software package depends upon the type of mobile
communications device being utilized." Claims App.
We do find persuasive the Appellants' further argument that the
rejection of claim 49 is in error because the prior art does not teach software
packages being downloaded to the mobile communications device over the
download link between the communications device and the server. See
Appeal Br. 6-7. The Examiner finds that Nova discloses a memory/chipset
in the AED that updates or replaces previously installed instructions,
parameter selections, and patient use data. See Ans. 3--4. The Examiner
further finds that Beck discloses establishing a download link between a
client computing device and a medical device. Final Act. 5. However,
similar to claim 32, it is not clear what the Examiner finds as the
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Appeal2014-004179
Application 11/911, 142
communications device onto which the software package is downloaded -
the AED or the transducer device. Further, although the Examiner
determines that the integrated component package of Nova can be combined
with the facilitation of data retrieval by linking devices as taught by Beck
(see Final Act. 5), the Examiner does not adequately explain how such a
combination would correspond to downloading the selected package to the
communications device.
Thus, we are persuaded of error in the part of the Examiner in
rejecting claim 49, and we do not sustain the rejection of independent claim
49 and its dependent claims 50-52 and 57.
Claims 53-56
The Appellants argue that the rejection of independent claim 53 is in
error for the same reasons discussed with respect to claim 32. See Appeal
Br. 16. Independent claim 53 recites similar limitations to those of claim 32
regarding including a portable medical device, a mobile communications
device, a download server for data transfer between the two devices,
information regarding the type of communication and medical devices, and
choosing an appropriate package based on the type of communications
device or medical device. Claims App. The Examiner provides no separate
findings for claim 53, but finds that claim 53 recites substantially similar
limitations to claim 32 and is rejected for similar reasons. Final Act. 8.
Thus, for the same reasons discussed above with respect to claim 32,
we are persuaded of error in the part of the Examiner in rejecting claim 53,
and we do not sustain the rejection of independent claim 53 and its
dependent claims 54--56.
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Application 11/911, 142
CONCLUSION
The Examiner's decision rejecting claims 32--41 and 44--58 under
35 U.S.C. § 103(a) is REVERSED.
REVERSED
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