Nathaniel Solomon. Fox et al.

Patent Trials and Appeals Board

Aug 20, 2019

14006337 - (D) (P.T.A.B. Aug. 20, 2019)

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.
14/006,337 09/20/2013 Nathaniel Solomon Fox 2011P00280WOUS 2228
24737 7590 08/20/2019
PHILIPS INTELLECTUAL PROPERTY & STANDARDS
465 Columbus Avenue
Suite 340
Valhalla, NY 10595
EXAMINER
NGUYEN, HIEP VAN
ART UNIT PAPER NUMBER
3686
NOTIFICATION DATE DELIVERY MODE
08/20/2019 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):
katelyn.mulroy@philips.com
marianne.fox@philips.com
patti.demichele@Philips.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte NATHANIEL SOLOMON FOX,
MANUEL LAURA LAPOINT, and
LEONARDO ALBERTO BALOA WELZIEN1
____________________

Appeal 2018-004601
Application 14/006,337
Technology Center 3600
____________________

Before JENNIFER S. BISK, LARRY J. HUME, and
JULIET MITCHELL DIRBA, Administrative Patent Judges.

BISK, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134(a) of the Non-
Final Rejection of claims 1, 3–7, 9–12, 14–16, and 21–26, which are all
claims pending in the application. Appellants have canceled claims 2, 8, 13,
and 17–20. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.

1 Appellants identify the real party in interest as KONINKLIJKE PHILIPS
ELECTRONICS N.V. Appeal Br. 2.
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BACKGROUND2
Appellants’ disclosed embodiments and claimed invention relate to
increasing a user’s adherence to a therapy regimen. Spec. ¶ 1. Claim 1,
reproduced below, is illustrative of the subject matter on appeal:
1. A system configured to promote user adherence to one or
more therapy regimen, the system comprising one or more
hardware processors configured by machine-readable
instructions to:
[(1)] provide a virtual environment to users such that the
users are able to interact with each other in the virtual
environment;
[(2)] continuously receive, from physical therapeutic
devices, usage information associated with the users,
wherein the usage information associated with a given
user includes information indicating how a respective
physical therapeutic device is used by the given user;
[(3)] identify a match between a group of two or more
users based on the usage information associated with the
users in the group such that users with similar therapeutic
device usage information are matched; and
[(4)] communicate the match to the users in the group to
facilitate interaction in the virtual environment between
users within the group and promote user adherence to
therapy regimens.
Appeal Br. 28 (Claims App’x) (limitation numbering added).

2 Throughout this Decision we have considered the Specification filed
September 20, 2013 (“Spec.”), the Non-Final Rejection mailed May 31,
2017 (“Non-Final Act.”), the Appeal Brief filed October 13, 2017 (“Appeal
Br.”), the Examiner’s Answer mailed February 7, 2018 (“Ans.”), and the
Reply Brief filed March 28, 2018 (“Reply Br.”).
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REJECTIONS
Claims 1, 3–7, 9–12, 14–16, and 21–26 stand rejected under 35 U.S.C.
§ 101 as being directed to patent-ineligible subject matter. Non-Final
Act. 3–5.
Claims 1, 7, and 12 stand rejected under 35 U.S.C. § 112(a) as lacking
written description support. Non-Final Act. 5–6.
Claims 1, 3–7, 9–12, 14–16, 21, 23, and 25 stand rejected under 35
U.S.C. § 103(a) as being unpatentable over the combination of US
2009/0164917 A1, published June 25, 2009 (“Kelly”) and US 2011/0093404
A1, published April 21, 2011 (“Lawless”). Non-Final Act. 6–12.
Claims 22, 24, and 26 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over the combination of Kelly, Lawless, and US
2009/0020120 A1, published Jan. 22, 2009 (“Schatzl”). Non-Final
Act. 12–13.
ANALYSIS
We review the appealed rejections for error based upon the issues
identified by Appellants, and in light of the arguments and evidence
produced thereon. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010)
(precedential). To the extent Appellants have not advanced separate,
substantive arguments for particular claims, or other issues, such arguments
are waived. 37 C.F.R. § 41.37(c)(1)(iv).
We have considered all of Appellants’ arguments and any evidence
presented. We highlight and address specific findings and arguments for
emphasis in our analysis below.
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Rejection of Claims 1–20 under 35 U.S.C. § 101
Section 101 of the Patent Act provides that “any new and useful
process, machine, manufacture, or composition of matter, or any new and
useful improvement thereof” is patent eligible. 35 U.S.C. § 101. But the
Supreme Court has long recognized an implicit exception to this section:
“‘Laws of nature, natural phenomena, and abstract ideas are not
patentable.’” Alice Corp. v. CLS Bank Int’l, 573 U.S. 208, 216 (2014)
(quoting Ass’n for Molecular Pathology v. Myriad Genetics, Inc., 569 U.S.
576, 589 (2013)). To determine whether a claim falls within one of these
excluded categories, the Court has set out a two-part framework. The
framework requires us first to consider whether the claim is “directed to one
of those patent-ineligible concepts.” Alice, 573 U.S. at 217. If so, we then
examine “the elements of each claim both individually and ‘as an ordered
combination’ to determine whether the additional elements ‘transform the
nature of the claim’ into a patent-eligible application.” Alice, 573 U.S.
at 217 (quoting Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566
U.S. 66, 78, 79 (2012)). That is, we examine the claims for an “inventive
concept,” “an element or combination of elements that is ‘sufficient to
ensure that the patent in practice amounts to significantly more than a patent
upon the [ineligible concept] itself.’” Alice, 573 U.S. at 217–18 (alteration
in original) (quoting Mayo, 566 U.S. at 72–73).
The Patent Office recently issued guidance regarding this framework.
See USPTO, 2019 Revised Patent Subject Matter Eligibility Guidance, 84
Fed. Reg. 50 (Jan. 7, 2019) (“Revised Guidance”). Under the Revised
Guidance, to decide whether a claim is “directed to” an abstract idea, we
evaluate whether the claim (1) recites subject matter falling within an
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abstract idea grouping listed in the Revised Guidance and (2) fails to
integrate the recited abstract idea into a practical application. See Revised
Guidance, 84 Fed. Reg. at 51. If the claim is “directed to” an abstract idea,
as noted above, we then determine whether the claim recites an inventive
concept. The Revised Guidance explains that when making this
determination, we should consider whether the additional claim elements
add “a specific limitation or combination of limitations that are not well-
understood, routine, conventional activity in the field” or “simply append[]
well-understood, routine, conventional activities previously known to the
industry.” Revised Guidance, 84 Fed. Reg. at 56.
For purposes of the § 101 rejection, Appellants argue claims 1–20
together as a group. See App. Br. 5–6; Reply Br. 2–3. Therefore, consistent
with the provisions of 37 C.F.R. § 41.37(c)(l)(iv), we limit our discussion to
independent claim 1. Independent claims 8 and 15 and dependent claims 2–
7, 9–14, and 16–20 stand or fall with independent claim 1.
With these principles in mind, we turn to the Examiner’s § 101
rejection.
The Judicial Exception—Abstract Idea
The Examiner determined the claims are directed to an abstract idea.
Non-Final Act. 4. For the reasons explained below, we are not persuaded the
Examiner erred in this conclusion.
As quoted and enumerated above, claim 1 includes four main
limitations. These limitations recite a system for continuously receiving
usage information from therapeutic devices (limitation (2)), identifying
matches between users based on usage information (limitation (3)), and
communicating the identified match to users (limitation (4)). Limitations
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(2)–(4) of claim 1, under the broadest reasonable interpretation,3 recite
receiving, identifying, and communicating matches between user’s usage of
therapeutic devices. Matching people involved in similar activities (such as
usage of therapeutic devices) is a longstanding practice or organizing human
activity. See Interval Licensing LLC v. AOL, Inc., 896 F.3d 1335, 1345
(Fed. Cir. 2018) (describing, as an abstract idea, “the nontechnical human
activity of passing a note to a person who is in the middle of a meeting or
conversation as further illustrating the basic, longstanding practice that is the
focus of the claimed invention”).
Moreover, each of limitations (2)–(4) recite a process that that people
can perform in their heads or using pen and paper. The recited process is not
meaningfully different from other processes that courts have determined are
mental processes. See, e.g., CyberSource, 654 F.3d at 1373 (determining
that a claim whose “steps can be performed in the human mind, or by a
human using a pen and paper” is directed to an unpatentable mental
process). This is true even though claim 1 recites that “one or more
hardware processors configured by machine-readable instructions” perform
the claimed process. “Courts have examined claims that required the use of
a computer and still found that the underlying, patent-ineligible invention

3 During prosecution, claims must be given their broadest reasonable
interpretation when reading claim language in light of the Specification as it
would be interpreted by one of ordinary skill in the art. In re Am. Acad. of
Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). Under this standard,
we interpret claim terms using “the broadest reasonable meaning of the
words in their ordinary usage as they would be understood by one of
ordinary skill in the art, taking into account whatever enlightenment by way
of definitions or otherwise that may be afforded by the written description
contained in the applicant’s specification.” In re Morris, 127 F.3d 1048,
1054 (Fed. Cir. 1997).
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could be performed via pen and paper or in a person’s mind.” Versata Dev.
Grp., Inc. v. SAP Am., Inc., 793 F.3d 1306, 1335 (Fed. Cir. 2015); see also
Revised Guidance, 84 Fed. Reg. at 52 n.14 (“If a claim, under its broadest
reasonable interpretation, covers performance in the mind but for the
recitation of generic computer components, then it is still in the mental
processes category unless the claim cannot practically be performed in the
mind.”). A person can, using only their mind and senses, receive
information on how others are using therapeutic devices, identify those that
are using similar devices in a similar manner, and communicate that match
to other users.
We, therefore, conclude that claim 1 recites a method of organizing
human activity and also a mental process, each of which are listed in the
abstract idea groupings in the Revised Guidance. See Revised Guidance, 84
Fed. Reg. at 52. Claim 1 thus recites an abstract idea.
Integration of the Judicial Exception into a Practical Application
If a claim recites a judicial exception, we determine whether the
recited judicial exception is integrated into a practical application of that
exception by: (a) identifying whether there are any additional elements
recited in the claim beyond the judicial exception(s); and (b) evaluating
those additional elements individually and in combination to determine
whether they integrate the exception into a practical application. If the
recited judicial exception is integrated into a practical application, the claim
is not directed to the judicial exception.
Here, claim 1 recites the additional elements of “one or more
hardware processors configured by machine-readable instructions,” “provide
a virtual environment to users such that the users are able to interact with
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each other in the virtual environment” (limitation (1)), and “physical
therapeutic devices.” Appeal Br. 28 (Claims App’x). Considering claim 1
as a whole, the additional elements do not apply or use the abstract idea in a
meaningful way such that the claim as a whole is more than a drafting effort
designed to monopolize the exception. The Supreme Court guides that the
“prohibition against patenting abstract ideas ‘cannot be circumvented by
attempting to limit the use of the formula to a particular technological
environment’ or [by] adding ‘insignificant postsolution activity.’” Bilski,
561 U.S. at 610–11 (quoting Diamond v. Diehr, 450 U.S. 175, 191–92
(1981)).
The Specification describes each of the additional elements as generic
components. For example, the Specification states that “client computing
platform 16 may include one or more processors configured to execute
computer program modules” and “may include one or more of a desktop
computer, a laptop computer, a handheld computer, a NetBook, a
Smartphone, a gaming console, and/or other computing platforms.” Spec.
¶ 15. Further, the Specification states that “processor 20 may include one or
more of a digital processor, an analog processor, . . . , and/or other
mechanisms for electronically processing information.” Id. ¶ 19; see also
¶ 30 (similarly describing “processing devices”). Similarly, the
Specification refers to therapeutic devices as generic medical devices used in
the prior art. Id. ¶ 15 (describing “a user’s therapeutic device, such as a
[positive airway pressure (“PAP”)] device”), ¶ 25 (stating a therapeutic
device “may be an airway pressure device such as CPAP BiPAP, etc.”).
As for limitation (1), the Specification defines “virtual environment”
broadly, including in the term essentially any software program that allows
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communication between users. Spec. ¶ 13 (“By way of non-limiting
example, a virtual environment may include one or more of a virtual world
or space, an network/online forum, a chat room, a (private) instant
messaging service, an SMS messaging service, a social networking web site,
a micro-blogging service, submission-based user and/or multi-user
messaging, a user and/or multi-user wall, status postings, group-sourced
answers to posted questions, a blog hosting service, and/or other virtual
environments.”). Further, the Specification demonstrates the generic nature
of providing such virtual environment because it does not address any
implementation details. See, e.g., Spec. ¶¶ 12 (referring to providing a
“virtual environment” that “facilitates, and encourages interactions” between
users, without elaboration), 16, 17, 23, 24, 26–28, 31, 34.
Appellants’ arguments do not persuade us claim 1 is “directed to” a
patent-eligible concept. For example, Appellants argue the Examiner failed
to establish a prima facie case of patent ineligibility. Appeal Br. 6–17;
Reply Br. 2–6. We disagree. The Federal Circuit has repeatedly noted that
“the prima facie case is merely a procedural device that enables an
appropriate shift of the burden of production.” Hyatt v. Dudas, 492 F.3d
1365, 1369 (Fed. Cir. 2007) (citing In re Oetiker, 977 F.2d 1443, 1445 (Fed.
Cir. 1992)). The Examiner satisfies the burden of establishing a prima facie
case under 35 U.S.C. § 132 by setting forth a rejection in a sufficiently
articulate and informative manner. See In re Jung, 637 F.3d 1356, 1363
(Fed. Cir. 2011). If the Examiner “adequately explain[s] the shortcomings
. . . the burden shifts to the applicant to rebut the prima facie case with
evidence and/or argument.” Hyatt, 492 F.3d at 1370.
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The Non-Final Office Action adequately explains the § 101 rejection.
See Non-Final Act. 3–5. The Examiner's statements satisfy § 132(a) because
they apply the Alice analytical framework and apprise Appellants of the
reasons for the § 101 rejection under that framework. Appellants have not
responded by alleging a failure to understand the rejection.
Appellants also contend the “instant claims recite a particular
technical solution that uses specific rules in a process specifically designed
to achieve an improved technological result” in the field of “therapy-based
virtual environment[s].” Appeal Br. 7 (internal quotation marks omitted)
(citing McRO, Inc. v. Bandai Namco Games Am., Inc., 837 F.3d 1299 (Fed.
Cir. 2016)).
We are not persuaded that claim 1 improves the functioning of the
computer itself or any other technology or technical field. See MPEP
§ 2106.05(a). In reviewing the record, we find the claims on appeal are
silent regarding specific limitations directed to an improved computer
system, processor, or virtual environment software. Here, the claims focus
on “increas[ing] subject adherence to a therapy regimen.” Spec. ¶ 1.
Improvement in user adherence to a therapy regimen by linking users with
similar regimens is not a technical field, but a human endeavor that pre-dates
computers. There is no indication that any increase in efficiency or accuracy
comes from the recited process itself. See FairWarning IP. LLC v. Iatric
Systems, Inc., 839 F.3d 1089, 1095 (Fed. Cir. 2016) (citing Bancorp
Services, LLC v. Sun Life Assurance Co., 687 F.3d 1266, 1278 (Fed.
Cir. 2012) (“[T]he fact that the required calculations could be performed
more efficiently via a computer does not materially alter the patent eligibility
of the claimed subject matter.”)) (alteration in original); see also Intellectual
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Ventures I LLC v. Erie Indemnity Co., 711 F. App’x 1012, 1017 (Fed. Cir.
2017) (unpublished) (“Though the claims purport to accelerate the process
of finding errant files and to reduce error, we have held that speed and
accuracy increases stemming from the ordinary capabilities of a general-
purpose computer ‘do[] not materially alter the patent eligibility of the
claimed subject matter.’”) (alteration in original) (citation omitted).
Therefore, we find Appellants’ claimed invention does not provide a
solution “necessarily rooted in computer technology in order to overcome a
problem specifically arising in the realm of computer networks,” such as
considered by the court in DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d
1245, 1257 (Fed. Cir. 2014).
Moreover, we do not agree with Appellants’ analogy to McRO.
Appellants contend that claim 1, like McRO uses “specific rules.” Appeal
Br. 7, 18–19. According to Appellants, the rules here include “improv[ing]
a therapy-based virtual environment system’s ability to facilitate interaction
in their respective virtual environment via up-to-date matching of virtual
environment users based on the continuously-received usage information
from physical therapy devices.” Id. at 18–19. However, unlike McRO
where the claimed process uses particular information and techniques to
improve manual three-dimensional animation techniques, we see nothing in
the Specification that describes the details of any rules or how they are
implemented. McRO, 837 F.3d at 1316. Instead, claim 1 simply identifies
similarities within data received from therapeutic devices and communicates
those matches to users.
Finally, we are not persuaded by Appellants’ reliance on Thales.
Appeal Br. 7–8; Reply Br. 10 (citing Thales Visionix Inc. v. United States,
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850 F.3d 1343 (Fed. Cir. 2017). Appellants’ argument appears to be that,
because the claims in Thales involved “an abstract idea and generic,
conventional components,” but were nevertheless determined to be eligible
under § 101, claim 1 should likewise be determined to be eligible. See id.
That argument is not persuasive. The fact that certain claims (of unrelated
patents) involving an abstract idea and conventional components have
previously been determined to recite eligible subject matter, of itself, does
not establish that claim 1 likewise recites eligible subject matter. Critical to
the eligibility determination in Thales was the recitation in the claims of an
“unconventional configuration of sensors.” See, e.g., Thales, 850 F.3d at
1349. Appellants identify no “unconventional configuration of sensors” or
similar subject matter in the claims here that might warrant reversal of the
Examiner's rejection based on Thales. On the contrary, as discussed above
the Specification describes all the additional elements, beyond those that
make up the abstract idea, as generic.
Accordingly, even in combination with all the other recited elements,
the addition of these elements (“one or more hardware processors configured
by machine-readable instructions,” “provide a virtual environment to users
such that the users are able to interact with each other in the virtual
environment,” and “physical therapeutic devices”) does not integrate the
abstract idea into a practical application because it does not impose any
meaningful limits on practicing the abstract idea. For these reasons, we
determine that claim 1 does not integrate the recited abstract idea into a
practical application.
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Inventive Concept
Because we agree with the Examiner that claim 1 is “directed to” an
abstract idea, we consider whether an additional element (or combination of
elements) adds a limitation that is not well-understood, routine, conventional
(“WURC”) activity in the field or whether the additional elements simply
append WURC activities previously known to the industry, specified at a
high level of generality, to the judicial exception. Revised Guidance, 84
Fed. Reg. at 23. The Examiner’s finding that an additional element (or
combination of elements) is WURC activity must be supported with a
factual determination. Id. (citing MPEP § 2106.05(d), as modified by the
Berkheimer Memorandum4).
Whether the additional elements (“one or more hardware processors
configured by machine-readable instructions,” “provide a virtual
environment to users such that the users are able to interact with each other
in the virtual environment” (limitation (1)), and “physical therapeutic
devices”) are WURC activity is a question of fact. See Berkheimer v. HP
Inc., 881 F.3d 1360, 1369 (Fed. Cir. 2018) (“Whether something is well-
understood, routine, and conventional to a skilled artisan . . . is a factual
determination.”).
Appellants argue that “the Examiner has provided no evidence to
show that the claims in the instant application simply automate a well-
understood, routine, conventional activity.” Appeal Br. 19. The Examiner,
however, explained that the Specification, itself, discloses the elements of

4 Robert W. Bahr, Changes in Examination Procedure Pertaining to Subject
Matter Eligibility, Recent Subject Matter Eligibility Decision (Berkheimer v.
HP, Inc.) (2018) (hereinafter “Berkheimer Memorandum”).
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the claim that do not make up the abstract idea are “typical and conventional
computers and devices.” Non-Final Act. 5 (citing Spec. ¶¶ 15, 18–19); see
also Ans. 16–17. Moreover, on the record before us, Appellants have not
shown that claim 1 adds a specific limitation beyond the judicial exception
that is not “well-understood, routine, and conventional” in the field (see
MPEP § 2106.05(d)). Other than asserting that the entirety of the claimed
subject matter is unconventional, Appellants do not point to any particular
claimed element that does not qualify as WURC. Appeal Br. 18–19.
In fact, Appellants’ Specification demonstrates the WURC nature of
these additional limitations, as discussed above, because it indicates they
may be implemented with generic devices. Spec. ¶¶ 12, 13, 15–19, 23–28,
31, and 34. In addition, courts have recognized that receiving or
transmitting data over a network, in a manner similar to that recited in claim
1, is WURC. OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1363
(Fed. Cir. 2015) (sending messages over a network); buySAFE, 765 F.3d at
1355 (computer receives and sends information over a network).
For these reasons, we conclude that claim 1, considered as a whole,
does not include an inventive concept.
Conclusion
Therefore, we sustain the Examiner’s § 101 rejection of independent
claim 1. We also sustain the Examiner’s § 101 rejection of claims 3–7, 9–
12, 14–16, and 21–26, for which Appellants rely on the same arguments
made with respect to claim 1. Appeal Br. 6–20; Reply Br. 2–11.
Rejection of Claims 1, 7, and 12 under 35 U.S.C. § 112(a)
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The Examiner rejects claims 1, 7, and 12 under 35 U.S.C. § 112(a) as
failing to comply with the written description requirement. Non-Final
Act. 6. Specifically, the Examiner contends “the specification includes no
description of ‘continuously receive, from physical therapeutic device[s],
usage information associated with the users.” Id.
Appellants point to the Specification’s disclosure that “each user’s
PAP device may autonomously and periodically compile a usage report of
the user’s usage of the PAP device and submit the usage report to a server”
as supporting “continuously receive, from physical therapeutic devices,
usage information associated with the user.” Appeal Br. 20 (citing Spec.
¶ 25). According to Appellants, one of ordinary skill in the art would
understand that this disclosure “clearly conveys the claim limitation of the
continuous receipt of usage information associate with users from physical
therapeutic devices.” Id. Appellants further explain that because claims 21,
23, and 25 recite “wherein continuously receiving the usage information
comprises receiving additional usage information associated with the users
on a periodic basis from the physical therapeutic devices,” “the term
‘continuously receiving’ must be interpreted as including the scope of
‘periodically receiving’ pursuant to the rule that a patentee is free to act as
his own lexicographer.” Reply Br. 11.
We do not agree with Appellants that the Specification defines the
term “continuous receiving” as meaning anything other than its plain and
ordinary meaning, which does not include “periodically receiving.” See
Merriam Webster online (defining “continuous” as “marked by
uninterrupted extension in space, time, or sequence”). Other than
dependent claims 21, 23, and 25, the Specification does not use the term
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“continuously.” Moreover, dependent claims 21, 23, and 25 discuss
“continuously receiving” “usage information” and add that “additional usage
information” is received on a “periodic basis.” Appeal Br. 33 (Claims
App’x). The plain meaning of this language does not signal that “periodic”
is a subset of or is encompassed by “continuous,” but that usage information
in general is received continuously and additional usage information is
received on a periodic basis.
We, therefore, do not agree with Appellants’ contention that “each
user’s PAP device may autonomously and periodically compile a usage
report of the user’s usage of the PAP device and submit the usage report to a
server” supports the “continuously receiving” limitation. Because
Appellants’ arguments do not persuade us of Examiner error, we affirm this
rejection.
Rejection of Claims 1, 3–7, 9–12, 14–16, and 21–26 under 35 U.S.C. § 103
The Examiner rejects claims 1, 3–7, 9–12, 14–16, and 21–26 under 35
U.S.C. § 103 as obvious over a combination of Kelly and Lawless or Kelly,
Lawless, and Schatzl. Non-Final Act. 6–13. Specifically, the Examiner
relies on Lawless for teaching or suggesting limitation (2)5 of claim 1. Id. at
8–9 (relying on Lawless ¶ 34 for limitation (2) and Lawless ¶¶ 12, 28, 35 for
limitation (3)); see also Ans. 20–21 (additionally citing Lawless ¶¶ 11, 31).
Appellants argue the cited references do not teach or suggest
limitation (2) of claim 1.6 Appeal Br. 21–26. According to Appellants,

5 Limitation (2) states: “continuously receive, from physical therapeutic
devices, usage information associated with the users, wherein the usage
information associated with a given user includes information indicating
how a respective physical therapeutic device is used by the given user.”
6 Claims 7 and 12 substantively similar limitations.
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Lawless indicates that it receives data from devices, but makes no
suggestion that the received data includes how those devices are used by the
user. Appeal Br. 24–25; Reply Br. 12. Appellants add although Lawless
describes using data related to “frequency of use of diagnostic or therapy
devices,” to “generate a parameter indicative of the level of expertise of the
user,” Lawless does not describe this data coming from the device itself, but
that it is obtained from the user, for example from a user questionnaire or
other survey. Reply Br. 12–13 (citing Lawless ¶ 31). Moreover, Appellants
contend that Lawless does not describe the continuous receipt of data from
the device. Appeal Br. 24–25; Reply Br. 12–13.
The Examiner responds that because Lawless generates a level of
expertise using “factors such as frequency of use of diagnostic or therapy
devices,” it “discloses continuous reception, from physical therapeutic
devices, usage information associated with the users.” Ans. 20–21.
Based on the record before us, we agree with Appellants that the
Examiner has not adequately explained how the cited portions of Lawless
teach or suggest limitation (2). We see nothing in the cited portions of
Lawless that teach or suggest that the system receives “information
indicating how a respective physical therapeutic device is used by the given
user” from a therapeutic device as recited by limitation (2). Moreover, we
agree that nothing in the cited portions of Lawless teach or suggest that data
from the devices is received “continuously.” We agree that paragraph 34 of
Lawless discloses receiving “input” from devices. Lawless ¶ 34. However,
nothing in this paragraph discusses how often, continuously or periodically,
that data is received. Id. In addition, the type of data received from the
devices is not discussed. Id.
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Moreover, we agree with Appellants that although paragraph 31 of
Lawless discusses using “factors such as frequency of use of diagnostic or
therapy devices,” the only discussion in Lawless of where this information
comes from is in paragraph 27, which describes providing users with a
questionnaire that “may relate to various aspects of the user’s 101 health,
including but not limited to . . . use of diagnostic devices, use of therapy
devices such as stimulators or injection devices . . .” Lawless ¶¶ 27, 31.
The Examiner does not explain how these disclosures of Lawless
would lead a person of ordinary skill in the art to understand that Lawless
teaches or suggests continuous receipt of data from a device or that the data
received from the device or that the received data “indicat[es] how a
respective physical therapeutic device is used by the given user.” We,
therefore, do not agree that the Examiner has shown that Lawless teaches or
suggests limitation (2) of claim 1.
Because this determination resolves the § 103 rejection for all pending
claims, we need not address Appellants’ other arguments regarding
Examiner error. See, e.g., Beloit Corp. v. Valmet Oy, 742 F.2d 1421, 1423
(Fed. Cir. 1984) (explaining that an administrative agency may render a
decision based on “a single dispositive issue”).
CONCLUSION
We sustain the rejection of claims 1, 7, and 12 under 35 U.S.C.
§ 112(a).
We reverse the rejection of claims 1, 3–7, 9–12, 14–16, and 21–26
under 35 U.S.C. § 103(a).
We sustain the rejection of claims 1, 3–7, 9–12, 14–16, and 21–26
under 35 U.S.C. § 101.
Appeal 2018-004601
Application 14/006,337

19
DECISION
Because we affirm at least one ground of rejection with respect to
each claim on appeal, we affirm the Examiner’s rejection of claims 1, 3–7,
9–12, 14–16, and 21–26.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv). See 37
C.F.R. § 41.50(f).
AFFIRMED