Ex Parte Hawthorne et al

Patent Trial and Appeal Board

May 11, 2016

11086192 (P.T.A.B. May. 11, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
111086,192 0312212005 Jeffrey Scott Hawthorne
86462 7590 05/13/2016
STANLEY J, GRADISAR ATTORNEY AT LAW, LLC
1182 THATCH CIRCLE
CASTLE ROCK, CO 80109
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.
6944-2-DIVl 3795
EXAMINER
RAPILLO, KRISTINE K
ART UNIT PAPER NUMBER
3626
NOTIFICATION DATE DELIVERY MODE
05/13/2016 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):
stan@sjgaalpatentlaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JEFFREY SCOTT HAWTHORNE,
MICHAEL LEONARD IIAMS, GLENN CHARLES TUBB,
RICHARD A. STOLL, GARY ALAN SHOFFNER, and
BRIAN KIRBY PHILLIPS
Appeal2013-005961
Application 11/086, 192
Technology Center 3600
Before MICHAEL L. HOELTER, LISA M. GUIJT, and
ERIC C. JESCHKE, Administrative Patent Judges.
GUIJT, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Jeffrey Scott Hawthorne et al. (Appellants)1 appeal under 35 U.S.C.
§ 134(a) from the Examiner's decision to reject claims 1-23, 25, and 26. Br.
5. We have jurisdiction under 35 U.S.C. § 6(b ).
We AFFIRM.
1 According to Appellants, the real party in interest is Alcohol Monitoring
Systems, Inc. Br. 4.
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Application 11/086, 192
THE CLAIMED SUBJECT MATTER
Claims 1 and 12 are independent. Claim 1, reproduced below, is
illustrative of the subject matter on appeal.
1. A bio-information modem for use with but
independent from a continuous remote bio-information unit
attached to a human subject, and for use with but independent
from a bio-information network, the bio-information modem
compnsmg:
a radio frequency transceiver for communicating bi-
directional radio frequency signals with the continuous remote
bio-information unit when the continuous remote bio-information
unit comes within range of a the bio-information modem, wherein
said radio frequency signals contain a plurality of data;
a central processing unit in communication with said radio
frequency transceiver, wherein said central processing unit
processes said plurality of data to determine if at least one alert
condition exists; and
a bio-information modem chip set in communication with
said central processing unit, wherein when said at least one alert
condition exists, a non radio frequency communication link is
established by said central processing unit through said bio-
information modem chip set to the bio-information network, and
further wherein said central processing unit through
communicates an alert over said non radio frequency
communication link to the bio-information network independently
from the continuous remote bio-information unit.
THE REJECTIONS
Claims 1-23, 25, and 26 stand provisionally rejected on the grounds
of nonstatutory obviousness-type double patenting as being unpatentable
over claims 1-23, 25, and 26 of copending US Application 11/411,694.2
2 US Application 11/411,694, filed on Apr. 25, 2006, was published on
Sept. 14, 2006 as 2006/0202838 Al and issued on Nov. 27, 2012 as US
Patent 8,317,697 B2.
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Application 11/086, 192
Claims 1-9, 12-19, and 26 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Reuss (US 6,364,834B1; iss. Apr. 2, 2002) and Brown
(US 6,168,563; iss. Jan. 2, 2001).
Claims 10, 11, 20-23, and 25 stand rejected under 35 U.S.C. § 103(a)
as unpatentable over Reuss, Brown, and Clark (US 5,408,520; iss. Apr. 18,
1995).
OPINION
Claims 1-23, 25, and 26-Nonstatutory obviousness-type double patenting
Appellants do not contest the Examiner's rejection of claims 1-23, 25,
and 26 on the grounds of nonstatutory obviousness-type double patenting,
and instead submit that "[a] terminal disclaimer may be filed at the proper
time." Br. 37; see also Final Act. 2-3. For this reason, we summarily
sustain the Examiner's rejection of claims 1-23, 25, and 26 on the grounds
of nonstatutory obviousness-type double patenting.
Claims 1-9, 12-19, and 26- Obviousness
Independent claim 12 and dependent claims 13-19 and 26
The Examiner finds that Reuss discloses step (b) of independent claim
12, which recites "processing, by a central processing unit located in the bio-
information modem, the data to determine if at least one alert condition
exists." Br. 41 (Claims App.); Final Act. 4 (citing Reuss, col. 4, 11. 55---60,
col. 5, 11. 13-64, col. 11, 11. 49-65). The passages relied on by the Examiner
in support of the Examiner's finding with respect to step (b) of independent
claim 12 refer to (i) Reuss' remote access device comprising, for example, a
telephone, laptop, or other type of computer (Reuss, col. 4, 11. 55---60); (ii)
Reuss' remote access device communicating bi-directionally to receive and
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forward alarms, or alternatively, operating as a medical alert system in
which the patient monitor directly contacts the remote access device upon
discovering an alarm condition or the patient monitor transmits the
information to the central monitoring system, which transmits the
information to the remote access device (id. at col. 5, 11. 13---64); and (iii)
software (namely, System Control process 40) within Reuss' patient monitor
16 (id. at col. 11, 11. 49---65). Thus, it is apparent that, in this instance, the
Examiner relies on Reuss' remote access device as the claimed bio-
information modem 103. The Examiner determines that because Reuss'
remote access device may be a personal digital assistant (PDA) or laptop,
Reuss' remote access device is known to include a modem, and the
Examiner also notes that Reuss' remote access device may operate as a
medical alert system in which patient monitor 16 contacts remote access
device 200 upon discovering an alarm. Ans. 17 (citing Reuss, col. 5, 11. 38-
42).
Alternatively, the Examiner finds that Reuss' external RF modem
corresponds to the claimed bio-information modem, Reuss' central
monitoring system 14 corresponds to the claimed bio-information network,
and Reuss' patient monitor 16 corresponds to the claimed bio-information
unit. Id. (citing Reuss, col. 13, 1. 56-col. 14, 1. 11); see also id. at 18.
Although the Examiner only relies on Brown in particularity for
teaching a non-radio frequency communication link (see Final Act. 4), the
Examiner also finds more generally that "Brown discloses a method and
system which enables a provider to monitor and manage the health condition
of a patient via a health care provider apparatus and a remotely
programmable patient apparatus, where the monitoring system incorporates
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a micro processing unit." Ans. 18; see also Final Act. 13-14.3 The
Examiner further finds that "Reuss discloses a medical monitoring system
comprising at least one patient monitor, at least one central monitor, and at
least one remote access device tied together through an integrated
communication ink." Ans. 18; see also Final Act. 13-14. The Examiner
reasons that
[i]t would have been obvious ... to include in the medical
monitoring system of Reuss the ability to manage and monitor a
patient's condition as taught by Brown since the claimed
invention is merely a combination of old elements, and in the
combination each element merely would have performed the
same function as it did separately, and one of ordinary skill in the
art would have recognized that the results of the combination
were predictable.
Ans. 18.
Appellants argue, inter alia, that Reuss "does not teach processing
data from Patient Monitor 16 in Remote Access Devices 200 for an alert
condition," but rather that "[s]uch processing ... takes place only in the
Patient Monitor 16 or the Central Monitoring System 14." Br. 15; see also
id. at 12. We agree.
Independent claim 12 requires the CPU in the bio-information modem
(Reuss' remote access device 200) to process data received from a remote
bio-information unit (Reuss' patient monitor 16) to determine if an alert
condition exists. See Br. 40-41 (Claims App.). The Examiner finds that
Reuss' remote access device is contacted by Reuss' patient monitor 16 when
3 Notably, Brown discloses that apparatus 2026 includes a modem and a
CPU, and also that apparatus 2026 is connectable to patient monitoring
devices and also connectable, by a telephone network, to a server. See
Brown, col. 24, 1. 64 to col. 25, 1. 25, Figs. 12, 15.
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an alert condition exists, but fails to find that Reuss' remote access device
processes data from the patient monitor to determine if an alert condition
exists. See Ans. 17. Reuss discloses that
[t]he remote access device can alternatively be operated as a
medical alert system in which either the patient monitor directly
contacts the remote device on discovering an alarm condition or
the patient monitor transmits this information to the central
monitoring system. The central monitoring system, in tum,
transmits the information to the remote access device.
Reuss, col. 5, 11. 38--44. Thus, the Examiner has failed to support the finding
that Reuss' remote access device processes data from the patient monitor to
determine if an alert condition exists, as required by independent claim 12.
Similarly, Appellants argue that if Reuss' external RF modem is
considered the claimed bio-information modem, Reuss' external RF modem
also "does not do any processing to determine if at least one alert condition
exists," and that Reuss discloses only that Reuss' patient monitor 16 or
central monitoring system 14 detects alert conditions (but does not generate
alert conditions via data processing). Br. 12. The Examiner does not
respond to Appellants' argument, nor can we find support in Reuss for
determining that Reuss' external RF modem processes data from the patient
monitor to determine if an alert condition exists. Reuss simply discloses that
"an external RF modem can be used with conventional bedside monitors ...
to communicate with the central monitoring system 14 instead of requiring a
specially configured patient monitor 16 including RF transceivers or
transmitter and receivers technology." Reuss, col. 13, 11. 56-62.
Appellants further submit that "the Examiner has not put forth any
reasoning ... [that] one skilled in the art [would be motivated] to make any
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modifications to [Reuss] to accomplish [step (b) of independent claim 12]."
Br. 15. We agree.
The Examiner's findings and reasoning, as stated at page 19 of the
Answer and on pages 13-14 of the Final Action, lack specificity as to which
components or methods of Reuss and Brown are relied upon by the
Examiner for disclosing the claimed method and structures recited in
independent claim 12 (i.e., the bio-information modem, remote bio-
information unit, and bio-information network), or as to how Reuss would
be modified in view of Brown's teachings to render obvious the claimed
invention. The Patent Trial and Appeal Board is primarily a tribunal of
review. See Ex Parte Frye, 94 USPQ2d 1072, 1075-77 (BPAI 2010)
(precedential). For that review to be meaningful it must be based on some
concrete evidence in the record to support the Examiner's factual findings
and legal conclusions. In re Zurko, 258 F.3d 1379, 1386 (Fed. Cir. 2001).
A rejection must be set forth in sufficiently articulate and informative
manner as to meet the notice requirement of 35 U.S.C. § 132, such as by
identifying where or how each limitation of the rejected claims is met by the
prior art references. In re Jung, 637 F.3d 1356, 1363 (Fed. Cir. 2011); see
also 37 C.F .R. § 1.104( c )(2) ("The pertinence of each reference, if not
apparent, must be clearly explained and each rejected claim specified.");
Gechter v. Davidson, 116 F.3d 1454, 1460 (Fed. Cir. 1997) (providing that
the PTO nmst create a record that includes "specific fact findings for each
contested limitation and satisfactory explanations for such findings.''). It is
neither our place, nor Appellants' burden, to speculate as to the basis for
rejecting claims. In re Stepan Co., 660 F.3d 1341, 1345 (Fed. Cir. 2011)
(providing that it is the PTfY s obligation to provide prior notice to the
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applicant of all matters of fact and law asse1ied prior to an appeal hearing
before the Board.).
Accordingly, we do not sustain the Examiner's rejection of
independent claim 12 and claims 13-19 and 26 depending therefrom.
Independent claim 1 and dependent claims 2-9
Independent claim 1 recites, in relevant part, a bio-information
modem, which is independent from a remote bio-information unit and bio-
information network, and comprises a CPU that processes data to determine
if an alert condition exists. The Examiner rejects independent claim 1 and
claims 2-9 depending therefrom based on the same findings and reasoning
the Examiner relied upon for rejecting independent claim 12 and claims 13-
19 and 26 depending therefrom. Final Act. 8. Thus, we also do not sustain
the Examiner's rejection of independent claim 1 and claims 2-9 for the
reasons stated supra.
Claims 10, 11, 20--23, and 25-0bviousness over Reuss, Brown, and Clark
The Examiner's reliance on Clark does not cure the deficiencies in the
Examiner's findings with respect to Reuss as applied to independent claims
1 and 12 discussed supra. Therefore, we do not sustain the Examiner's
rejection of claims 10, 11, 20-23, and 25, which depend from independent
claims 1 and 12.
DECISION
The Examiner's decision to reject claims 1-23, 25, and 26 on the
ground ofnonstatutory obviousness-type double patenting is AFFIRMED.
The Examiner's decision to reject claims 1-23, 25, and 26 under 35
U.S.C. § 103(a) is REVERSED.
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No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(l )(iv).
AFFIRMED
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