Ex Parte Kobres

Patent Trial and Appeal Board

May 9, 2016

12329191 (P.T.A.B. May. 9, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/329,191 12/05/2008
107681 7590 05/11/2016
NCR Corporation
3097 Satelite Boulevard
Building 700, 2nd Floor, Law Department
Duluth, GA 30096
FIRST NAMED INVENTOR
Erick C. Kobres
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.
14540 8323
EXAMINER
LONG,FONYAM
ART UNIT PAPER NUMBER
3626
NOTIFICATION DATE DELIVERY MODE
05/11/2016 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):
PTOMail.Law@ncr.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ERICK C. KOBRES
Appeal2013-006723
Application 12/329,191
Technology Center 3600
Before: JOSEPH A. FISCHETTI, BIBHU R. MOHANTY, and
MICHAEL W. KIM, Administrative Patent Judges.
KIM, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF CASE
This is an appeal from the final rejection of claims 6, 12-14, and 21-
36. We have jurisdiction to review the case under 35 U.S.C. §§ 134 and 6.
The invention relates generally to "a portable device which stores
personal information of its owner, and transfers selected information to
selected parties in connection with transactions undertaken by the owner."
Spec. 1 :3---6.
Appeal2013-006723
Application 12/329,191
Independent claim 6 is illustrative:
6. A method of operating a cell phone by a person who
owns the cell phone, the method comprising:
maintaining within the cell phone first data which
indicates medical history of the person who owns the cell phone,
the first data being encrypted and requiring a first key for
decryption;
presenting the cell phone to a medical services provider;
after the cell phone has been presented to the medical
services provider, electronically by a processor receiving first
identifying data from the medical services provider, and, if the
first identifying data meets first predetermined criteria, using the
first key to decrypt the first data, and transmitting resulting first
text to the medical services provider to allow the medical
services provider to provide medical services for the person who
owns the cell phone when the person visits a medical clinic of
the medical services provider;
after the cell phone has been presented to the medical
services provider, electronically by a processor receiving the first
identifying data from the medical services provider, and, if the
first identifying data does not meet the first predetermined
criteria, preventing the medical services provider from accessing
the first data;
maintaining within the cell phone second data which
indicates nonmedical information associated with the person
who owns the cell phone, the second data being encrypted and
requiring a second key for decryption;
presenting the cell phone to a non-medical services
provider;
after the cell phone has been presented to the non-medical
services provider, electronically by a processor receiving second
identifying data from the non-medical services provider, and, if
the second identifying data meets second predetermined criteria,
using the second key to decrypt the second data, and transmitting
resulting text to the non-medical services provider to allow the
non-medical services provider to provide non-medical services
for the person who owns the cell phone when the person visits a
facility of the non-medical services provider; and
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Appeal2013-006723
Application 12/329,191
after the cell phone has been presented to the non-medical
services provider, electronically by a processor receiving the
second identifying data from the non-medical services provider,
and, if the second identifying data does not meet the second
predetermined criteria, preventing the non-medical services
provider from accessing the second data.
Claims 6 and 12 are rejected under 35 U.S.C. § 103(a) as unpatentable
over Lacey (US 2007/0074043 Al, pub. Mar. 29, 2007) in view of Schuler
(US 2006/0142057 Al, pub. June 29, 2006);
Claims 21-28 are rejected under 35 U.S.C. § 103(a) as unpatentable
over Lacey, Schuler, and Official Notice;
Claims 13 and 14 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Lacey and Grushka (US 2003/0088439 Al, pub. May 8,
2003); and
Claims 29-36 are rejected under 35 U.S.C. § 103(a) as unpatentable
over Lacey, Grushka, and Official Notice.
We AFFIRM.
ANALYSIS
Obviousness Rejections of Claims 6, 12, and 21-28
We are unpersuaded the Examiner erred in asserting that various
combinations of Lacey, Schuler, and Official Notice discloses or suggests
the subject matter of claims 6, 12, and21-28. App. Br. 8-9; Reply Br. 2-3.
The Appellant asserts that "Lacey teaches away from using microprocessors
and electronics to store medical data," and that "there would be no
motivation to modify Lacey in view of Schuler to provide a cell phone as a
data carrier for medical data, as the Examiner would like to suggest." App.
Br. 8-9. The Appellant assertions are misplaced, as teaching away
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Appeal2013-006723
Application 12/329,191
assertions are only relevant to modifications of references to meet claim
language, and the Examiner does not suggest modifying Lacey "to provide a
cell phone as a data carrier for medical data." Instead, in rejecting
independent claims 6 and 12, the Examiner found that Lacey discloses a cell
phone with medical history of a person. Ans. 2-3, 13-14 (citing Lacey
i-fi-120, 54). Accordingly, since Lacey already discloses "microprocessors
and electronics to store medical data," there is no modification, and, thus,
Lacey cannot be said to teach away from that finding. The Appellant's
teaching away assertions are misplaced and inapplicable.
In the Reply Brief, the Appellant asserts that "[i]n Lacey, the medical
worker operates a cell phone. In the present application, the medical patient
operates a cell phone." Reply Br. 2-3. The Appellant's assertions are
misplaced, because the Examiner admits that "Lacey does not specifically
disclose the person owning the cell phone," but then cites Schuler to remedy
that deficiency of Lacey. Ans. 4. The Appellant does not address Schuler.
The argument that a single reference alone does not disclose the recited
claimed steps is not persuasive because nonobviousness cannot be
established by attacking the references individually when the rejection is
predicated upon a combination of prior art disclosures. See In re Merck &
Co. Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986).
We sustain the rejection of claims 6, 12, and 21-28.
Obviousness Rejections of Claims 13, 14, and 29-36
We are unpersuaded the Examiner erred in asserting that various
combinations of Lacey, Grushka, and Official Notice discloses or suggests
the subject matter of claims 13, 14, and 29-36. App. Br. 9; Reply Br. 3.
The Appellant presents the same arguments as set forth above, but now with
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Appeal2013-006723
Application 12/329,191
respect to a personal digital assistant ("PDA"). The Examiner found that
Lacey discloses a PDA with medical history of a person. Ans. 5---6, 14--15
(citing Lacey, i-fi-17, 20, 27, Fig. 7). The Examiner admits that "[t]he
combination of Lacey and Weeks does not specifically disclose the person
owning a PDA," but then cites Grushka to remedy that deficiency of Lacey.
Ans. 7-8. The Appellants does not address Grushka.
We sustain the rejection of claims 13, 14, and 29-36.
DECISION
We AFFIRM the rejections of claims 6, 12-14, and 21-36.
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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