Ex Parte Nadler et al

Patent Trial and Appeal Board

Jun 23, 2016

12394391 (P.T.A.B. Jun. 23, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/394,391 0212712009
25537 7590 06/27/2016
VERIZON
PA TENT MANAGEMENT GROUP
1320 North Court House Road
9th Floor
ARLINGTON, VA 22201-2909
FIRST NAMED INVENTOR
Matt NADLER
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.
20090016 2469
EXAMINER
PAULS, JOHN A
ART UNIT PAPER NUMBER
3626
NOTIFICATION DATE DELIVERY MODE
06/27/2016 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):
patents@verizon.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MATT NADLER and ALANA FUTRELL
Appeal2013-007319
Application 12/394,391 1
Technology Center 3600
Before: HUBERT C. LORIN, TARA L. HUTCHINGS, and
AMEE SHAH, Administrative Patent Judges.
LORIN, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Matt Nadler, et al. (Appellants) seek our review under 35 U.S.C.
§ 134 of the Final rejection of claims 1-14, 17-21, 23, 24, and 26. We have
jurisdiction under 35 U.S.C. § 6(b) (2002).
SUMMARY OF DECISION
We AFFIRM-IN-PART.
1 The Appellants identify Verizon Communications Inc., as the real party in
interest. Br. 3.
Appeal2013-007319
Application 12/394,391
THE INVENTION
Claim 1, reproduced below, is illustrative of the subject matter on
appeal.
1. A computing-device implemented method, comprising:
presenting, by a wellness monitoring system running on a
service provider device, a plurality of pre-set monitoring profiles for
selection by a user;
receiving, by the wellness monitoring system, a user selection
of a selected monitoring profile from the plurality of pre-set
monitoring profiles;
synchronizing the monitoring profile between a mobile device
associated with the user and the wellness monitoring system;
receiving, by the wellness monitoring system, wellness
information from the mobile device;
comparing, by the wellness monitoring system, the received
wellness information against the selected monitoring profile
associated with the mobile device, the selected monitoring profile
including a number of rules and each rule including defined criteria
and a result event to be executed when the defined criteria are met;
determining, by the wellness monitoring system, whether the
received wellness information matches the defined criteria in one of
the number of rules; and
executing, by the wellness monitoring system, the result event
when the received wellness information matches the defined criteria
in one of the number of rules.
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THE REJECTIONS
The Examiner relies upon the following as evidence of
unpatentability:
Stutman et al. us 5,416,695 May 16, 1995
(hereinafter "Stutman")
Zhou et al. US 2003/01495526 Al Aug. 7, 2003
(hereinafter "Zhou")
Joffe et al. US 2003/0233250 Al Dec. 18, 2003
(hereinafter "Joffe")
Macielinski et al. US 2007 /0210904 Al Sept. 13, 2007
(hereinafter "Macielinski")
The following rejections are before us for review:
1. Claims 1---6, 8, 9, and 12-14 are rejected under 35 U.S.C. §103(a) as
being unpatentable over Zhou and Joffe.
2. Claims 17-21, 23, and 24 are rejected under 35 U.S.C. §103(a) as
being unpatentable over Zhou and Macielinski.
3. Claim 26 is rejected under 35 U.S.C. §103(a) as being unpatentable
over Zhou, Macielinski, and Joffe.
4. Claims 10 and 11 are rejected under 35 U.S.C. §103(a) as being
unpatentable over Zhou, Joffe, and Macielinski.
5. Claim 7 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Zhou, Joffe, and Stutman.
ISSUES
Did the Examiner err in rejecting claims 1---6, 8, 9, and 12-14 under
35 U.S.C. §103(a) as being unpatentable over Zhou and Joffe; claims 17-21,
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23, and 24 under 35 U.S.C. §103(a) as being unpatentable over Zhou and
Macielinski; claim 26 under 35 U.S.C. § 103(a) as being unpatentable over
Zhou, Macielinski, and Joffe; claims 10 and 11 under 35 U.S.C. § 103(a) as
being unpatentable over Zhou, Joffe, and Macielinski; and, claim 7 under 35
U.S.C. §103(a) as being unpatentable over Zhou, Joffe, and Stutman?
FINDINGS OF FACT
We rely on the Examiner's factual findings stated in the Answer.
Additional findings of fact may appear in the Analysis below.
ANALYSIS
The rejection of claims 1-6, 8, 9, and 12-14 under 35 U.S.C. §103(a) as
being unpatentable over Zhou and Joffe.
The Brief groups claims 2-6, 8, 9, and 12-14 together (Br. 15) but
challenge their rejection based on the arguments used to challenge the
rejection of claim 1. Accordingly, we select claim 1 as representative of all
the claims here rejected; claims 2---6, 8, 9, and 12-14 standing or falling with
claim 1. 37 C.F.R. § 41.37(c)(l)(iv) (2014).
The method of claim 1 involves the use of two things: (1) a
monitoring system and (2) a mobile device. The Specification suggests
these two things are conventional. The monitoring system ( 1) is designated
as element 100 in Fig. 1, which depicts a combination of well-known
devices for distributing and communicating information. See also the
associated disclosure at para. 14 of the Specification. The mobile device (2)
"may include any suitable device for enabling communication via radio
network 110 and may include a cellular radiotelephone, personal digital
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assistant (PDA), pager with data communications and/or data processing
capabilities." Spec. ,-r 15.
There appears to be no dispute that Zhou discloses a monitoring
system (1) and a mobile device (2). The Examiner cited, for example, para.
24 of Zhou (see Final Act. 3), and it is evident it describes a monitoring
system (see element 300 in Fig. 1, detailed in Fig. 4 and discussed at para.
22) and mobile devices by which "[e]nd users 25 receive []alerts through
any number of alert devices ("Alert Devices"), such as a cellular telephone,
telephone, pager, W AP enabled cellular telephones, Personal Digital
Assistants (PDAs)."
The dispute is over the type of information being communicated via
the monitoring system.
The Brief recites (and only discusses) the first two steps of the
claimed method,
presenting, by a wellness monitoring system running on a
service provider device, a plurality of pre-set monitoring profiles for
selection by a user;
receiving, by the wellness monitoring system, a user selection
of a selected monitoring profile from the plurality of pre-set
monitoring profiles
(claim 1) as an example of what the Appellants consider the cited prior art
does "not disclose" (Br. 10). In effect, the Appellants are arguing that
Zhou' s monitoring system (1) does not (a) "present[ ] a plurality of pre-set
monitoring profiles for selection by a user" and (b) "receiv[ e] a user
selection of a selected monitoring profile from the plurality of pre-set
monitoring profiles" (claim 1 ).
The Appellants point out, accurately, that the Examiner stated that
Zhou does not disclose said first two steps of the claimed method, but relied
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on Joffe instead. Br. 10, cf Final Act. 3. As the Appellants note, the
Examiner relied on paragraphs 73-75, 90, 124, 127, 145, 149, 151-153, and
165. Br. 10, cf Final Act. 3.
Regarding paragraphs 73-75, the Appellants find "this portion of
JOFFE discloses that research is examined by a professional and input into
an evaluation and optimization scheme to analyze patient data and generate
the report (see, e.g., i-f0073)." Br. 10. According to the Appellants, "this
portion of JOFFE does not relate to the receipt of patient monitoring or
wellness information, but rather to a system for generating reports about
various health conditions and the related research." Br. 11.
Similarly, regarding paragraph 90, the Appellants argue that, in
contrast to what is claimed, the section of Joffe "relates to requesting
biological data from a patient in an on-demand or as-needed manner, as
instructed by a healthcare provider (e.g., responsive to analysis by the report
generation module 308)." Br. 11. According to the Appellants, "[a]lthough
this section of JOFFE relates to requesting biological data from a patient in
an on-demand or as-needed manner, as instructed by a healthcare provider
(e.g., responsive to analysis by the report generation module 308), nothing in
this section of JOFFE discloses or suggests [what is claimed]." Br. 11.
Regarding paragraph 124, the Appellants argue that Joffe
discloses a main login module 500 of a website for interfacing with a
user to setup a user profile. The user profile identifies a patient or
healthcare provider and controls access authorization to website 346.
More plainly, the main login module 500 of JOFFE simply allows
users to create logins and security or an authorization level associated
with the level.
Br. 12. According to the Appellants, "[a]lthough [paragraph 124] of JOFFE
mentions the term 'profile,' the use of the term in JOFFE is inconsistent with
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the pre-set monitoring profiles recited in claim 1. Rather, the term 'profile'
in [paragraph 124] clearly relates to patient or user information for allowing
users to create accounts and log into the website of JOFFE." Br. 12.
Regarding para. 127, the Appellants argue that
[a]lthough this section of JOFFE mentions collecting biological data
in relation to qualification, nothing in this section of JOFFE discloses
or suggests presenting a plurality of pre-set monitoring profiles and
receiving a user selection of a selected monitoring profile, let alone
presenting, by a wellness monitoring system running on a service
provider device, a plurality of pre-set monitoring profiles for selection
by a user, and receiving, by the wellness monitoring system, a user
selection of a selected monitoring profile from the plurality of pre-set
monitoring profiles, as recited in claim 1.
Br. 12-13. The same argument, with the same emphasis on the claim
recitation "a plurality of pre-set monitoring profiles for selection by a user,"
is made in addressing paragraph 145.
With regard to paragraph 149, the Appellants argue that Joffe
discloses an indicator report notification module "configured to generate
reports for the health care provider that include information selected by the
health care provider .... in the event that a patient's data exceeds a preset
trigger." Br. 13-14. "The 'preset trigger' of JOFFE does not relate to a pre-
set monitoring profile, let alone a plurality of pre-set monitoring profiles, for
selection by a user." Br. 14.
JOFFE merely discloses configuring individual rules and triggering
event conditions in response to already received patient data. The
configuration of individual rules responsive to received data is not "a
plurality of pre-set monitoring profiles for selection by a user," as
recited in claim 1.
Br. 14.
Regarding paragraphs 151-153, the Appellants argue that
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this section of JOFFE relates to the administration of devices and user
data, nothing in this section of JOFFE discloses or suggests presenting
a plurality of pre-set monitoring profiles and receiving a user selection
of a selected monitoring profile, let alone presenting, by a wellness
monitoring system running on a service provider device, a plurality of
pre-set monitoring profiles for selection by a user, and receiving, by
the wellness monitoring system, a user selection of a selected
monitoring profile from the plurality of pre-set monitoring profiles, as
recited in claim 1.
As already stated, there appears to be no dispute that a difference
exists between the monitoring system (1) and the mobile device (2) used in
the claimed method and that which is disclosed in Zhou.
The dispute is over the type of information being communicated.
In summary, the Appellants argue, in large part, that none of the
passages in Joffe that the Examiner cited as evidence discloses a monitoring
system ( 1) that (a) "present[ s] ... a plurality of pre-set monitoring profiles
for selection by a user" and (b) "receiv[ es] ... a user selection of a selected
monitoring profile from the plurality of pre-set monitoring profiles" (claim
1). Id. at 14--15.
A major difficulty with this argument is that the claim term "pre-set"
does not appear to be mentioned in the Specification. Nor does the
Specification provide a definition for "pre-set monitoring profiles." Rather,
the Specification provides a general discussion of what a "profile" could
comprise. For example, at paragraph 13 of the Specification, it states:
A profile maintained at the service provider and associated with the
device may include rules that identify actions to be executed in the
event of various defined conditions relating to the health and wellness
information. If designated by the defined rules, the service provider
may initiate alerts, notifications, or calls to various individuals,
entities, or devices.
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(Emphasis added). See also paragraph 50 for a similar disclosure. Given
this disclosure, it is reasonable to broadly construe the claim phrase "pre-set
monitoring profiles" as covering text expressing pre-set rules.
In that regard, as the Appellants have conceded (see Br. 13), Joffe
(para. 149) also discloses rules. The difference between the rules that Joffe
discloses and "pre-set monitoring profiles," as that claim phrase is
reasonably broadly construed, is not apparent. The Appellants make various
comments suggesting a difference but the difference is not reflected in the
claim's wording. For example, the Appellants argue that "JOFFE merely
discloses configuring individual rules and triggering event conditions in
response to already received patient data." Br. 14. But this is not
commensurate in scope with what is claimed. Claim 1 does not limit the
"pre-set monitoring profiles" not to be in response to already received
patient data. The claim phrase is much broader in scope than that.
The Appellants appear also to be arguing that Joffe does not disclose
presenting a plurality of pre-set rules - as we reasonably broadly construe
"pre-set monitoring profiles" - from which to make a selection. Rather, it
is argued, Joffe discloses using a filter. But a filter implies a plurality of
items are present and using a filter necessarily involves making a selection.
Cf In re Preda, 401 F.2d 825, 826 (CCPA 1968) ("[I]n considering the
disclosure of a reference, it is proper to take into account not only specific
teachings of the reference but also the inferences which one skilled in the art
would reasonably be expected to draw therefrom.").
Another difficulty with the argument, which also pertains to the
argument that Joffe is directed to biological data rather than patient
monitoring or wellness information as recited in the claim, is that the
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argument revolves around the content of the information. The two steps at
issue call for presenting a first information and receiving a second
information selected from said first information; the first information being
"a plurality of pre-set monitoring profiles" and the second information being
"a selected monitoring profile." As we have reasonably broadly construed
these phrases, the two steps at issue amount to presenting and receiving a
type of textual information, the content of which are expressed as rules.
The content of the textual information recited in claim 1 is subject to a
printed matter analysis.
The first step of the printed matter analysis is the determination that
the limitation in question is in fact directed toward printed matter.
Our past cases establish a necessary condition for falling into the
category of printed matter: a limitation is printed matter only if it
claims the content of information .... Only if the limitation in
question is determined to be printed matter does one tum to the
question of whether the printed matter nevertheless should be given
patentable weight. Printed matter is given such weight if the claimed
informational content has a fi.1nctional or strr1ctural relation to the
substrate.
In re Distefano, 808 F.3d 845, 848-850 (Fed. Cir. 2015).
In that regard, there is insufficient evidence of record showing a
functional relationship between the "plurality of pre-set monitoring profiles"
and the "selected monitoring profile" in claim 1 and the monitoring system
claimed. Absent such evidence, it is reasonable to characterize the type of
information to be presented and received, that is, the rules, as descriptive,
falling under the category of patentably-inconsequential subject matter. See
Ex parte Curry, 84 USPQ2d 1272, 1275 (BPAI 2005) (informative). "Non-
functional descriptive material cannot render nonobvious an invention that
would have otherwise been obvious." Id. at 1274 (citing In re Ngai, 367
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F.3d 1336, 1339 (Fed. Cir. 2004)). Cf Jn re Gulack, 703 F.2d 1381, 1385
(Fed. Cir. 1983) (when descriptive material is not functionally related to the
substrate, the descriptive material will not distinguish the invention from the
prior art in terms of patentability). See also In re Xiao, 462 Fed. Appx. 947,
950-52 (Fed. Cir. 2011) (non-precedential):
[T]he Board did not create a new "mental distinctions" rule in
denying patentable weight. ... On the contrary, the Board
simply expressed the above-described functional relationship
standard in an alternative formulation---consistent with our
precedents-when it concluded that any given position label's
function ... is a distinction "discemable only to the human
mind[;]"[] see In re Lowry, 32 F.3d 1579, 1583 (Fed. Cir. 1994)
(describing printed matter as "useful and[] intelligible only to
the human mind") (quoting In re Bernhart, 417 F.2d 1395,
1399 (CCP A 1969)).
Xiao, 462 Fed. Appx. at 951-952. "Thus non-functional descriptive
material, being useful and intelligible only to the human mind, is given no
patentable weight." Ex parte Graf, Appeal 2012-003941, slip op. at 7
(PTAB July 23, 2013) (non-precedential), aff'd, In re Graf, 585 Fed. Appx.
1012 (Fed. Cir. 2014) (non-precedential). "The rationale behind this line of
cases is preventing the indefinite patenting of known products by the simple
inclusion of novel, yet functionally unrelated limitations." King Pharms.,
Inc. v. Eon Labs, Inc., 616 F.3d 1267, 1279 (Fed. Cir. 2010).
For the foregoing reasons, the arguments in the Brief do not persuade
us as to error in the rejection of claim 1. Accordingly, the rejection as to
claim 1 is sustained. Since claims 2---6, 8, 9, and 12-14 stand or fall with
claim 1, their rejection is also sustained for the same reasons.
We have reviewed the remaining arguments but find them
unpersuasive as to error in the rejection.
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The rejection of claims 17-21, 23 and 24 under 35 U.S.C. §103(a) as being
unpatentable over Zhou and Macielinski.
The rejection of claim 26 under 35 U.S. C. §103 (a) as being unpatentable
over Zhou, Macielinski, and Joffe.
Claim 17, and therefore also claims 19-21, 23, 24, and 26, include the
following limitations:
transmit, based on the monitoring profile, an on duty message
to the notification receiving device indicating an on duty status of the
notification receiving device,
wherein receipt of the on duty message causes the notification
receiving device to display an on duty indicator, and
wherein the notification includes a duration of a duty interval
associated with the on duty status
Given our construction of the monitoring profile as covering textual
information expressed as a rule, said limitations describe transmitting an on
duty message to a notification receiving device based on monitoring profile
(i.e., a rule) causing the notification receiving device to display an on duty
indicator, and "wherein the notification includes a duration of a duty interval
associated with the on duty status." Claim 17 calls for "a notification
receiving device to receive notifications associated with result events."
Accordingly, "the duration of a duty interval associated with the on duty
status" that is included in the notification is "associated with result events"
that the notification receiving device receives; the result events being those
"when[] received wellness information matches []defined criteria in one of
[]number of rules" included in the monitoring profile. App. Br. 28-29.
The Examiner relies on Macielinski's disclosure of an "operator
action" which, for example,
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may be a proposed number of On-Duty hours the operator should
perform over the course of the trip. In one embodiment, the
advisement logic 502 operates to propose the operator action. For
example, the proposed operator action may be derived from pre-stored
information that is intended to produce the most efficient operation of
the vehicle over the course of the trip.
Para. 105. According to the Examiner,
Macielinski as shown discloses an hours of service management
system which includes sending messages (i.e. an indicator) to a device
when the user of the device should go on-duty (i.e. an on duty
message indicating an on duty status) or off-duty and including the
number of hours the recipient is expected to be on-duty (i.e. a duration
of duty interval). The messages are sent in response to rules for
compliance with regulations (i.e. a monitoring profile).
Final Act. 8.
The Appellants argue that
[a]lthough [Macielinski's] notification may relate to a proposed action
to go "on-duty" by modifying the proposed action, this does not
correspond to a service provider device configured to transmit, based
on the monitoring profile; an on duty message to the notification
receiving device indicating an on duty status of the notification
receiving device, wherein receipt of the on duty message causes the
notification receiving device to display an on duty indicator, and
wherein the notification includes a duration of a duty interval
associated with the on duty status, as recited in claim 1
Br. 16-17. We agree.
Macielinski may disclose transmitting a message based on a rule but
that is insufficient as evidence for finding that Macielinski discloses what is
claimed. Sending a message does not necessarily lead to displaying an on
duty indicator on a notification receiving device, let alone "includ[ing] a
duration of a duty interval associated with the on duty status" in a
notification "associated with result events" that the notification receiving
device receives, as claimed.
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Accordingly, we do not find that a prima facie case of obviousness
has been made out in the first instance by a preponderance of the evidence.
The rejections of claim 17 and claims 19-21, 23, 24, and 26
depending therefrom are not sustained.
The rejection of claims 10 and 11under35 U.S.C. §103(a) as being
unpatentable over Zhou, Joffe, and Macielinski.
This rejection of claims 10 and 11, which depend from claim 1, is not
sustained for the reasons discussed in not sustaining the rejection of claim
1 7. Claim 10 and claim 11 that depends therefrom contain the same
"notification" limitation at issue with respect to claim 17.
The rejection of claim 7 under 35 U.S.C. §103(a) as being unpatentable over
Zhou, Joffe, and Stutman.
This rejection is sustained for the reasons given in sustaining the
rejection of claim 1. The Brief relies solely on the arguments challenging
the rejection of claim 1 to challenge the rejection of claim 7. See Br. 21-22.
However, those arguments were found unpersuasive.
CONCLUSIONS
The rejection of claims 1---6, 8, 9, and 12-14 under 35 U.S.C. § 103(a)
as being unpatentable over Zhou and Joffe is affirmed.
The rejection of claims 17-21, 23, and 24 under 35 U.S.C. § 103(a) as
being unpatentable over Zhou and Macielinski is reversed.
The rejection of claim 26 under 35 U.S.C. § 103(a) as being
unpatentable over Zhou, Macielinski, and Joffe is reversed.
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The rejection of claims 10 and 11 under 35 U.S.C. § 103(a) as being
unpatentable over Zhou, Joffe, and Macielinski is reversed.
The rejection of claim 7 under 35 U.S.C. § 103(a) as being
unpatentable over Zhou, Joffe, and Stutman is affirmed.
DECISION
The decision of the Examiner to reject claims 1-14, 17-21, 23, 24, and
26 is affirmed-in-part.
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-IN-PART
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