Ex Parte Dicks et al

Patent Trial and Appeal Board

Dec 23, 2016

11877493 (P.T.A.B. Dec. 23, 2016)

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.
1001.002.999 8000
EXAMINER
NGUYEN, HIEP VAN
ART UNIT PAPER NUMBER
3686
MAIL DATE DELIVERY MODE
11/877,493 10/23/2007
7590
Dr. Gregory J. Gonsalves
2216 Beacon Lane
Falls Church, VA 22043
12/23/2016
Kent Dicks
12/23/2016 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 KENT DICKS, RALPH KENT, ROBERT TRIPP,
TERRY BARTLETT, and THOMAS CROSLEY
Appeal 2015-0014721
Application 11/877,4932
Technology Center 3600
Before BIBHU R. MOHANTY, NINA L. MEDLOCK, and
MATTHEW S. MEYERS, Administrative Patent Judges.
MEYERS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 1—8, 10-18, 20, and 22—28. We have jurisdiction under
35 U.S.C. § 6(b).
1 Our decision references Appellants’ Appeal Brief (“Appeal Br.,” filed
July 7, 2014), Reply Brief (“Reply Br.,” filed November 19, 2014), the
Examiner’s Answer (“Ans.,” mailed September 19, 2014), and Final Office
Action (“Final Act.,” mailed January 7, 2014).
2 Appellants identify MedApps, Inc., as the real party in interest (Appeal
Br. 3).
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Application 11/877,493
We AFFIRM.
CLAIMED INVENTION
Appellants’ claimed invention relates generally “to systems and
methods for wirelessly monitoring medical devices” (Spec. 14).
Claim 1 is the only independent claim on appeal. Claim 1, reproduced
below with added bracketed notations, is illustrative of the subject matter on
appeal:
1. A method comprising:
[a] each of a plurality of medical devices receiving patient
data from a patient;
[b] a first one of said plurality of medical devices
transmitting the patient data using a first one of a plurality of
communications protocols to an intermediary device
simultaneously as a second one of said plurality of medical
devices transmitting the patient data using a second one of the
plurality of communication protocols that is different than said
first communications protocol to said intermediary device;
[c] the intermediary device receiving the patient data
transmitted using said first communication protocol and the
patient data transmitted using the second communication
protocol; and
[d] the intermediary device formatting a message for
transmission to a medical data server, wherein the message
includes the patient data.
REJECTIONS
Claims 1—8, 10-18, 20, and 22—28 are rejected under 35 U.S.C. § 101
as directed to non-statutory subject matter.
Claims 1—8, 10-18, 20, and 22—28 are rejected under 35 U.S.C. § 112,
second paragraph, as indefinite.
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Claims 1—6, 10-18, 20, 22—25, and 28 are rejected under 35 U.S.C.
§ 103(a) as unpatentable over Foshee (US 2007/0135855 Al, pub. June 14,
2007) and Korth (US 2003/0009088 Al, pub. Jan. 9, 2003).
Claims 7 and 8 are rejected under 35 U.S.C. § 103(a) as unpatentable
over Foshee, Korth, and Drinan (US 7,044,911 B2, iss. May 16, 2006).
Claims 26 and 27 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Foshee, Korth, and Jackson (US 7,860,731 B2, iss.
Dec. 28, 2010).
ANALYSIS
Non-statutory subject matter
In rejecting independent claim 1 and dependent claims 2—6, 10-18,
20, 22—25, and 28 under 35 U.S.C. § 101, the Examiner concludes that the
claims, considered as a whole, are directed to an abstract idea of “interfacing
between patient device with a plurality of implantable medical devices”
without additional elements that transform it into a patent-eligible
application of that idea (see Ans. 15—16).
Appellants do not appear to dispute the Examiner’s finding that
claim 1 is directed to an abstract idea. Instead, Appellants argue that “the
claims recite much more than mere instructions to implement an idea on a
computer or a generic computer structure; they recite particular protocols for
communicating in a particular manner among a particular arrangement of
medical devices and an intermediary device” (Reply Br. 8).
Under 35 U.S.C. § 101, an invention is patent-eligible if it claims a
“new and useful process, machine, manufacture, or composition of matter.”
35 U.S.C. § 101. The Supreme Court, however, has long interpreted § 101
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to include an implicit exception: “[l]aws of nature, natural phenomena, and
abstract ideas” are not patentable. See, e.g., Alice Corp. Pty. Ltd. v. CLS
Banklnt’l, 134 S. Ct. 2347, 2354 (2014).
In determining whether independent claim 1 falls within the excluded
category of abstract ideas, we are guided in our analysis by the Supreme
Court’s two-step framework, described in Mayo and Alice. Id. at 2355
(citing Mayo Collaborative Servs. v. Prometheus Labs., Inc., 132 S. Ct.
1289, 1296—97 (2012)). In accordance with that framework, we first
determine whether the claim is “directed to” a patent-ineligible abstract idea.
If so, we then consider the elements of the claim — both individually and as
an ordered combination — to assess whether the additional elements
transform the nature of the claim into a patent-eligible application of the
abstract idea. Id. This is a search for an “inventive concept” — an element
or combination of elements sufficient to ensure that the claim amounts to
“significantly more” than the abstract idea itself. Id.
Here, we agree with the Examiner that claim 1 is directed generally to
“interfacing between . . . device[s]” (Ans. 15). In this regard, we find that
each step in independent claim 1 is directed essentially to data gathering,
i.e., receiving data and/or transmitting data, whereas the last step of
independent claim 1 generates, i.e., formats, data prior to transmission. Data
gathering and generating is a fundamental building block of human
ingenuity, which, like the concept of risk hedging in Bilski, falls squarely
within the realm of abstract ideas. See Alice Corp., 134 S. Ct. at 2356;
Bilski, 561 U.S. 593, 611 (2010).
We next consider whether additional elements transform the nature of
the claim into a patent-eligible application of the abstract idea, e.g., whether
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the claim does more than simply instruct the practitioner to implement the
abstract idea on generic computer components. We conclude that it does
not.
Independent claim 1 is directed to a method and includes steps wherein
“medical devices receivre] patient data from a patient;” “a first. . . medical
device[] transmits] the patient data using a first. . . communication^
protocol [] to an intermediary device simultaneously as a second . . . medical
device [] transmit fs] the patient data using a second. . . communication
protocol^ that is different than said first communication[] protocol to said
intermediary device;” “the intermediary device receiviesl the patient data
transmitted using said first [and second] communication protocol[s];” and
“the intermediary device formatfsi a message [including the patient data] for
transmission to a medical data server.” Here, considering each of the claim
elements in turn, we find them all to be directed to well-understood, routine,
conventional activities previously known to the industry. And, when viewed
as a whole, the computer components (e.g., “medical devices,” “intermediary
device,” “medical data server”) of Appellants’ method add nothing that is not
already present when the steps are considered separately.
We also note that Appellants’ claims do not purport to improve the
functioning of the system itself. Nor do they effect an improvement in any
other technology or technical field. Instead, independent claim 1 and
dependent claims 2—6, 10-18, 20, 22—25, and 28 amount to nothing
significantly more than an instruction to implement the abstract idea of
“interfacing between patient device with a plurality of implantable medical
devices” using generic computer components, via generic communication
protocols and well-known frequency bands. This is insufficient to transform
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an abstract idea into a patent-eligible invention. “[T]he mere recitation of a
generic computer cannot transform a patent-ineligible abstract idea into a
patent-eligible invention. Stating an abstract idea “while adding the words
‘apply it’” is not enough for patent eligibility.” Alice, 134 S. Ct. at 2358.
In view of the foregoing, we sustain the Examiner’s rejection of
independent claim 1 and dependent claims 2—6, 10-18, 20, 22—25, and 28
under 35 U.S.C. § 101.
Indefiniteness
Independent claim 1 and dependent claims 2—8, 10—18, 20, and 22—28
In rejecting independent claim 1 under 35 U.S.C. § 112, second
paragraph, the Examiner finds
the claim is unclear due to the fact that a first one of said plurality
of medical devices and an intermediary devices are among a
plurality of medical de[vices]. The [Specification does not
provide any specific information related to an intermediary
device as in among a plurality of medical devices.
(Final Act. 3 (citing Spec. 9,11. 1—8).
However, as Appellants point out, “claim 1 does not recite that an
intermediary device is among a plurality of medical devices” (Appeal Br.
10). Nor do we see where the portion of the Specification cited by the
Examiner would suggest an interpretation such as the Examiner’s (see, e.g.,
Spec. 9,11. 1—8). In our view, a person of ordinary skill in the art would
understand what is claimed when independent claim 1 is considered in light
of the Specification, namely, as Appellants point out, that “claim 1 recites a
plurality of medical devices, an intermediary device, and that two different
medical devices transmit patient data using two different communication
protocols to the intermediary device” (see Reply Br. 4). We note that the
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Examiner does not respond to Appellants’ argument in the Examiner’s
Answer.
In view of the foregoing, we do not sustain the Examiner’s rejection
under 35 U.S.C. § 112, second paragraph, of independent claim 1, and
claims 2—8, 10-18, 20, and 22—28 that depend therefrom. See Orthokinetics,
Inc. v. Safety Travel Chairs, Inc., 806 F.2d 1565, 1576 (Fed. Cir. 1986) (The
test for definiteness under 35 U.S.C. § 112, second paragraph, is whether
“those skilled in the art would understand what is claimed when the claim is
read in light of the specification.”).
Obviousness
Independent claim 1 and dependent claims 2—6, 10—18, 20, 22—25, and 28.
We are persuaded by Appellants’ argument that the Examiner erred in
rejecting independent claim 1 under 35 U.S.C. § 103(a) because the
combination of Foshee and Korth fails to disclose or suggest limitation [b]
of independent claim 1 which recites:
[b] a first one of said plurality of medical devices transmitting
the patient data using a first one of a plurality of communications
protocols to an intermediary device simultaneously as a second
one of said plurality of medical devices transmitting the patient
data using a second one of the plurality of communication
protocols that is different than said first communications
protocol to said intermediary device.
(See Appeal Br. 11—14; see also Reply Br. 5—7).
In the Final Office Action, the Examiner finds that Foshee discloses
the argued limitation (see Final Act. 4 (citing Foshee 125, 32)).
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Foshee is directed “to a patient management device for portably
interfacing with a plurality of implantable medical devices” (Foshee 11; see
also id. 125). More particularly, Foshee discloses
interfacing to a dedicated patient management device 125 or
programmer 126, the portable patient management device 121
serves as a form of wireless wand that relays patient data,
including physiological measures, parametric data, and
environmental parameters, from and to the IMDs 123, such as
further described below with reference to FIG. 6. The portable
patient management device 121 can be used, for instance, as a
form of shared ambulatory programmer to portably interrogate a
plurality of IMDs 123, such as in a clinical setting, for later
download to a patient management device 125 or programmer
126.
{Id. 132). Foshee also discloses “[w]hen interfacing to a database 128 via a
database server 127, the portable patient management device 121 processes
patient data downloaded from IMDs 123 for storage in patient medical
records in the database 128” {id. 133). Foshee further discloses that “[t]he
processing can include normalization and structuring of the data into a
format compatible with the database schema” (id. ).
Korth is directed to “a monitoring system for patients with at least one
device for the recording of medical and diagnostic values of the patient”
(Korth 11). Korth discloses that its data recording is “connected with [a]
data processing device via a telecommunication link, in particular a radio
connection of an existing mobile phone network or via a server” {id. 19).
Korth also discloses its “measuring device [can] transmit the set of data of
measured values to the mobile phone by means of existing wireless
transmission interfaces such as infrared, radio or by way of BlueTooth®
technology” {id. 112). Korth further discloses
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it is possible that the performance of the measurements and/or
the action and in particular the taking of the medication can be
monitored in a nearly real-time manner. It is possible to
provision for the data processing device to monitor measuring
values and/or messages within a time frame or in a time-specific
manner and generate an alarm message also in the event of
missing or insufficient measuring values or messages. This
message can be sent to the monitor 17 and directly to mobile
phone 20 of the treating physician or back to mobile phone 14 of
the patient via telecommunication device 18.
{Id. 128).
We have reviewed the cited portions of Foshee and agree with
Appellants that Foshee fails to disclose or suggest the argued limitation.
More particularly, we agree with Appellants “[t]he mere fact, as noted by the
Examiner, that Forshee discloses different medical devices does not indicate
that these devices transmit patient data with different protocols at the same
time to the same intermediary device” (Reply Br. 6—7), as required by
limitation [b] of independent claim 1. Thus, we fail to see, and the Examiner
does not adequately explain, how Forshee’s disclosure regarding “a patient
management device for portably interfacing with a plurality of implantable
medical devices” (Foshee 11; see also id. 25, 32) discloses or suggests “a
first. . . medical device [] transmitting the patient data using a
first. . . communication^ protocol[] to an intermediary device
simultaneously as a second . . . medical device[] transmitting the patient data
using a second . . . communication protocol[] that is different than said first
communications protocol to said intermediary device,” as called for by
limitation [b] of independent claim 1. The Examiner does not rely on Korth
to address this limitation.
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In view of the foregoing, we do not sustain the Examiner’s rejection
of independent claim 1 under 35 U.S.C. § 103(a). For the same reasons, we
also do not sustain the Examiner’s rejections of claims 2—6, 10-18, 20, 22—
25, and 28, which depend therefrom.
Dependent claims 7, 8, 26, and 27
Each of claims 7, 8, 26, and 27 ultimately depends from independent
claim 1. The Examiner’s rejections of these dependent claims do not cure
the deficiency in the Examiner’s rejection of independent claim 1.
Therefore, we do not sustain the Examiner’s rejections of claims 7, 8, 26,
and 27 under 35 U.S.C. § 103(a) for the same reasons set forth above with
respect to independent claim 1.
DECISION
The Examiner’s rejection of claims 1—8, 10—18, 20, and 22—28 under
35 U.S.C. § 101 is affirmed.
The Examiner’s rejection of claims 1—8, 10—18, 20, and 22—28 under
35 U.S.C. § 112, second paragraph, is reversed.
The Examiner’s rejections of claims 1—8, 10-18, 20, and 22—28 under
35 U.S.C. § 103(a) are reversed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv).
AFFIRMED
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