KEEN, Daniel S. et al.

Patent Trials and Appeals Board

Jan 16, 2020

14499512 - (D) (P.T.A.B. Jan. 16, 2020)

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.
14/499,512 09/29/2014 Daniel S. KEEN 090911-
P23418US3-0909346
1015
65656 7590 01/16/2020
KILPATRICK TOWNSEND & STOCKTON LLP/Apple
Mailstop: IP Docketing - 22
1100 Peachtree Street
Suite 2800
Atlanta, GA 30309
EXAMINER
NGUYEN, HIEP VAN
ART UNIT PAPER NUMBER
3686
NOTIFICATION DATE DELIVERY MODE
01/16/2020 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):
KTSDocketing2@kilpatrick.foundationip.com
ipefiling@kilpatricktownsend.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte DANIEL S. KEEN, ELIZA C. BLOCK, and GUY L. TRIBBLE
____________
Appeal 2019–004069
Application 14/499,512
Technology Center 3600
____________

Before HUBERT C. LORIN, AMEE A. SHAH, and
ROBERT J. SILVERMAN, Administrative Patent Judges.

LORIN, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE

Appellant1 seeks our review under 35 U.S.C. § 134 of the Non-Final
Rejection of claims 1–20. We have jurisdiction under 35 U.S.C. § 6(b)
(2002).

SUMMARY OF DECISION
We AFFIRM–IN–PART.

THE INVENTION

1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R.
§ 1.42(a). The Appellant identifies Apple, Inc. as the real party in interest.
Appeal Br. 4.
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Application 14/499,512

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Claim 1 is illustrative, and is reproduced below:
1. A computer-implemented method, comprising:
maintaining, by a computer system, a plurality of data types
associated with data collected by a data collection accessory and
stored on a user device in communication with the data collection
accessory, the data collection accessory linked to a third-party
application of the user device;
transmitting, by the computer system, first health information
associated with at least a subset of the plurality of data types for
storage on the user device;
receiving, from the user device, an indication of receipt of new
health information corresponding to a new data type received by the
user device from the third-party application, the user device
configured to store the new health information on behalf of the third-
party application;
receiving, from the user device, an indication of a third-party
application request, to the user device, for the new health information
that corresponds to the new data type, the third-party application
request including information about the new data type;
identifying that the new data type being requested for use by the
third-party application of the user device is not one of the plurality of
data types; and
providing an asset download to the user device for a
background process of the user device to interpret and for configuring
the background process of the user device to implement the new
data type and manage the new health information corresponding to the
new data type at least in response to the third-party application
request, the asset download identifying the information about the new
data type.
REFERENCE
The prior art relied upon by the Examiner is:
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Application 14/499,512

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Name Reference Date
Nolan US 2008/0104615 A1 May 1, 2008

THE REJECTIONS
The following rejections are before us for review:
Claims 14, 15, and 17–20 are rejected under 35 U.S.C. § 101 because
the claimed invention is directed to non-statutory subject matter.
Claims 1–20 are rejected under 35 U.S.C. § 103 as unpatentable over
Nolan.

ANALYSIS
The rejection of claims 14, 15, and 17–20 under 35 U.S.C. § 101 because
the claimed invention is directed to non-statutory subject matter.
This rejection appears on page 3 of the April 12, 2018 Non–Final
action. We can find no indication that this rejection has been withdrawn.
We note that the Examiner withdrew a separate rejection under 35 U.S.C.
§ 101 for patent–eligibility. See Ans. 12. But this rejection was for another
purpose; that is, “[w]hen the broadest reasonable interpretation of claim
covers a signal per se, the claim must be rejected under 35 U.S.C. 101 as
covering non-statutory subject matter.” Non-Final Act. 5. Accordingly, we
consider this rejection as pending and before us on appeal.
In that regard, it does not appear that Appellant has responded to the
merits of this rejection. Accordingly, it is summarily affirmed.
The rejection of claims 1–20 under 35 U.S.C. § 103 as unpatentable over
Nolan.
The independent claims are 1, 7, and 14. They parallel each other and
the Examiner’s position as to all three is the same. Non–Final Act. 11
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(“Claims 7 and 14 are rejected as the same reason with claim1.”)
Claim 1, and similarly for claims 7 and 14, calls for “[a] data
collection accessory linked to a third-party application of [a] user device.”
The Examiner cites paras. 29 and 51 of Nolan as evidence that Nolan
discloses said limitation. Id. at 6–7. We reproduce said passages below.
[0029] The routine packaging component 214 can provide a number of
different functionalities to aid an application developer in utilizing the
API 200 to create a third party application. For example, the routine
packaging component 214 can tie together a set of commonly utilized
routines into a single call or present them in a packaged presentation to
give the developer what they really need to get started with the API
200. Additionally, routines can be provided to create XML and
associated schemas that are commonly used with the underlying
system, such as a health integration network, to create things such as
data types and different records to be stored in the network. Moreover,
artificial intelligence can be employed to determine the packaging of
routines or creation of additional easier-to-use routines. These created
routines can be a single call provided to the developer to perform a
somewhat enhanced task such as a single call to get related data that is
not necessarily stored together, for example a GetLastExerciseRoutine
can be created to retrieve a user's last exercise session information as
well as any heart rate taken around this time. As mentioned, a
determination can be made (using artificial intelligence for example)
that these functions are often called together, and then to create a single
routine that accesses the data to make it easier for the application
developer who may want this data together. It is to be appreciated that
the aforementioned scenarios are just examples and the subject matter
is not so limited.

[0051] The API 700 can also expose a set of intelligent routines 712.
The intelligent routines 712 can be created and tuned to specific
applications or packages to aid API use in third party application
development. An example routine can help a developer to create an
XML schema for data that the application plans on utilizing. This can
enable a developer to quickly add new possible data values, types, and
containers. This can also be performed in a batch mode and the routine
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Application 14/499,512

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can associate this information with the application. These routines can
also be created by third parties as add-ons to the API 700 to facilitate
simple access to rich data. For example, a company can expose a public
routine to access its proprietary data using its trade name in the routine
call name to additionally create a monetary incentive to promote
development exposing the valuable data. It is to be appreciated that the
API 700 and some routines can be located remotely while others located
proximal, on, or within an accessing application. In fact, some routines
can be downloadable to a device to allow for more expanded
functionality and easier-to-use, more efficient routines. These can come
in packages or individually downloadable, or even as automatic updates
and can also be part of a software development kit.
We have reviewed said Nolan passages and agree with Appellant.
The Examiner does not adequately explain what in Nolan equates to
the claimed “data collection accessory” and “third-party application.”
We note that Nolan discloses “routines [which] can be provided to
create XML and associated schemas that are commonly used with the
underlying system, such as a health integration network, to create things
such as data types and different records to be stored in the network” (para.
29). Assuming the Examiner means to equate the disclosed “routines” with
the claimed “data collection accessory,” the question is whether these
“routines” are, as the claims require, “linked to a third-party application.”
We do not see that disclosed. Para. 51 of Nolan describes other routines
(“intelligent routines 72”) which “can also be created by third parties as add-
ons to the API 700 to facilitate simple access to rich data.” Para. 51. But
this disclosure fails to link those specific routines to a “data collection
accessory.”
Given nothing more by way of evidence disclosing or suggesting to
one of ordinary skill in the art “[a] data collection accessory linked to a
third-party application of [a] user device” as claimed, we do not sustain the
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rejection.
For the foregoing reasons, the rejection of claims 1, 7, and 14 and the
claims depending therefrom is not sustained.
CONCLUSION
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
14, 15,
17–20
101 14, 15, 17–
20

1–20 103 Nolan 1–20
Overall
Outcome
14, 15, 17–
20
1–13, 16

TIME PERIOD FOR RESPONSE
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)(1)(iv).

AFFIRMED–IN–PART