Yulun Wang et al.

Patent Trials and Appeals Board

Dec 22, 2020

2020003656 (P.T.A.B. Dec. 22, 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.
10/962,829 10/11/2004 Yulun Wang P010 9716
98471 7590 12/22/2020
Teladoc Health
C/O CPA Global
900 2nd Avenue South, Suite 600
Minneapolis, MN 55402
EXAMINER
FIGUEROA, JAIME
ART UNIT PAPER NUMBER
3664
NOTIFICATION DATE DELIVERY MODE
12/22/2020 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):
clambrecht@teladochealth.com
docketing@cpaglobal.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte YULUN WANG, CHARLES S. JORDAN,
JONATHAN SOUTHARD, and MARCO PINTER
____________

Appeal 2020-003656
Application 10/962,829
Technology Center 3600
____________

Before WILLIAM A. CAPP, JEREMY M. PLENZLER, and
BRANDON J. WARNER, Administrative Patent Judges.

CAPP, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellant1 seeks our review under 35 U.S.C. § 134(a) of the non-final
rejection of claims 83–92. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42(a). Appellant identifies InTouch Technologies, Inc. as the real
party in interest. Appeal Br. 2.
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Application 10/962,829
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THE INVENTION
Appellant’s invention relates to telecommunications. Spec. ¶ 1.
Claim 83, reproduced below with paragraph indentation added, is illustrative
of the subject matter on appeal.
83. A robot system, comprising:
a mobile robot that has a robot monitor and a robot camera;
and,
a remote station that is coupled to said mobile robot via a
packet-switched network, said remote station includes a station
camera and a station monitor,
said station monitor displays a display user interface, said
display user interface includes
a robot view field that displays a video image captured
by said robot camera,
a station view field that displays a video image provided
by said station camera, and
a graphical input that can be selected to display a still
image on said robot monitor,
wherein said still image is an image captured by said
robot camera and said display user interface is displayed
within a single application window on said station monitor.
THE REJECTIONS
The Examiner relies upon the following as evidence in support of the
rejections:
NAME REFERENCE DATE
Kuno US 5,802,494 Sept. 1, 1998
Segan US 2002/0029252 A1 Mar. 7, 2002
Terada US 2002/0109770 A1 Aug. 15, 2002
Kamoto US 2004/0153211 A1 Aug. 5, 2004
Akers US 7,956,894 B2 June 7, 2011
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The following rejections are before us for review:
1. Claims 83–86 and 88–91 are rejected under 35 U.S.C. § 103 as
being unpatentable over Kuno, Terada, and either of Akers or Segan.
2. Claims 87 and 92 are rejected under 35 U.S.C. § 103 as being
unpatentable over Kuno, Terada, Akers, Segan, and Kamato.
OPINION
Unpatentability of Claims 83–86 and 88–91
over Kuno, Terada, and either of Akers or Segan
Appellant argues claims 83–86 and 88–91 as a group. Appeal
Br. 7–14. Claim 83 is representative. See 37 C.F.R. § 41.37(c)(1)(iv).
The Examiner finds that Kuno discloses a robot system substantially
as claimed except for: (1) explicitly mentioning a packet-switched network;
(2) a view field from a station camera; (3) a graphic input to select display of
a still image on the robot monitor; (4) and displaying a user interface within
a single application window. Non-Final Act. 5–11. The Examiner finds that
packet-switched networks are well-known in the prior art. Id. at 8–9. The
Examiner relies on Terada as displaying a video image from a station
camera. Id. at 9. The Examiner relies on Akers as disclosing a telemedicine
application where the patient and doctor can each view a patient’s still
picture at their respective remote locations. Id. at 11–13. The Examiner
relies on Segan as disclosing the combining of multiple application windows
into a single application window. Id. at 15.
The Examiner concludes that it would have been obvious to a person
of ordinary skill in the art at the time of the invention to combine the
teachings of the prior art to achieve the claimed invention. Id. at 9–15.
According to the Examiner, a person of ordinary skill in the art would have
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done this: (1) to take advantage of well-known data transfer and
communication techniques (id. at 9); (2) to allow the physician and patient to
see each other and share information (id. at 11); (3) to allow the physician to
control the camera at the patient’s location (id. at 13); and (4) to provide an
application viewing window that combines multiple views (id. at 15).
Appellant first argues that the prior art does not teach or suggest a
packet-switched network. Appeal Br. 8. Appellant alludes to the possibility
that Kuno transmits analog, not digital, information. Id. Appellant argues
that modifying Kuno to transmit digital data over a packet-switched network
would require a significant redesign effort. Id. at 9.
In response, the Examiner points out that packet-switched networks
have been well-known since the 1960’s. Ans. 20. The Examiner further
points out that there is no evidence to support Appellant’s contention that
Kuno transmits analog signals or that modifying Kuno to transmit over a
packet-switched network would require significant modification. Id. at 21.
The Examiner refers us to Appellant’s own disclosure as lacking any
detailed teaching disclosure regarding the use of packet-switched networks,
the implication being that Appellant, at the time of filing its disclosure,
presumed that skilled artisans were already familiar with packet-switched
network technology. Id. at 21–22.
In reply, Appellant argues that merely pointing out that packet-
switched networks were well-known is not sufficient to establish
obviousness. Reply Br. 2. Appellant does not otherwise dispute the
Examiner’s position that packet-switched networks were well-known at the
time of the invention. See generally Appeal Br., Reply Br.
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The term “packet-switched network” does not appear anywhere in
Appellant’s Specification. See generally Spec. The Specification briefly
mentions that robot 12 connects to “the network.” Id. at 7. “Network 18” is
mentioned only once in the Specification in connection with coupling
remote station 16 to server 54. Id. at 9.
Referring to Appellant’s Figure 1, Appellant discloses a “patient
environment” and an “operator environment.” Fig. 1. Interposed between
the two environments is network 18 that also has access to server 54. Id.
Persons of ordinary skill in the art understand that packet switching is a
technique that breaks larger data files into smaller “packets,” each with a
packet header. The packets are transmitted individually and then
reassembled at the destination. Information in the packet headers facilities
the reassembly process. Persons familiar with telecommunications
technology know that packet switching is widely used in internet, mobile
telecommunications, and local computer network applications. Packet
switching facilitates efficient transmission of information and takes
advantage of system bandwidth to allow multiple users to transmit
information more-or-less simultaneously over a communications channel.
Appellant’s packet-switched network argument is unpersuasive.
Essentially, Appellant transmits data back and forth from point A (the
patient environment) to point B (the operator environment). By claiming to
do so over a packet-switched network, Appellant is essentially just
specifying and limiting the scope of the claimed invention to a well-known
and widely-used conventional communication channel. We agree with the
Examiner that it would have been obvious to use a packet-switched network
and that, to the extent that Kuno’s silence on the matter may suggest a
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different type of communication channel, that modification of Kuno to use a
packet-switched network would have required no more than ordinary skill
and would not have produced any unexpected results.
Next, Appellant argues that Akers fails to disclose a graphical user
interface that includes both a remote video image and a local video image
“as well as a graphical input that can be selected to transfer an image in [a]
single application window.” Appeal Br. 11.
In response, the Examiner points out that Appellant’s Specification
does not mention, much less describe, a “single application window.”
Ans. 23. The Examiner notes that, to the extent that there is any written
description support for a “single application window,” such exists only in
the drawings. Id. The Examiner notes that Appellant provides no evidence
of criticality regarding using a single application window instead of multiple
application windows. Id. The Examiner further notes the absence of any
evidence submitted by Appellant that would tend to show that using a single
application window instead of multiple application windows produces
unexpected results. The Examiner directs our attention to paragraph 69 of
Terada as disclosing moving images of both participants of a video
conference. Id. at 24; see also Terada, Fig. 4.
In reply, Appellant argues, unconvincingly, that criticality is not a
relevant consideration in an obviousness analysis. Reply Br. 6.
Figure 4 of Terada depicts window 300 for a video conference which
is opened as a child window simultaneously with a viewer window 222.
Terada ¶ 69 (see also ¶¶ 64–81). Terada’s window 300 features partner’s
moving image 302 and user’s own moving image 304, which images relate
to the participants of a two-way video conference. Terada ¶ 69, Fig. 4.
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Images 302 and 304 reasonably correspond to Appellant’s claimed robot
view field and station view field respectively. Id. Window 300 also
includes a plurality of user interface control buttons. Id. Terada’s
window 300 constitutes a “single application window” within the meaning
of Appellant’s claim 83, as broadly but reasonably construed. See In re Am.
Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004) (explaining
that during prosecution, pending claims are given their broadest reasonable
construction consistent with the specification).
With respect to displaying a still image on a robot monitor, the
Examiner finds that Akers teaches a computer-implemented telemedicine
diagnostic imaging tool. Ans. 24. The Examiner further finds that Akers’
camera 104 is remotely controlled by a physician to take a patient’s still
picture. Id. at 25. The Examiner finds that such still picture can be
annotated by both parties and shared. Id. The Examiner further finds that
Akers discloses a communications-and-image-capture window 308. Akers,
col. 5, line 48 – col. 6, line 20. The Examiner further finds that Akers’
image window 306 constitutes a “single application window” within the
meaning of claim 83. Ans. 26–29.
Appellant argues that Akers fails to include all of the claimed features
of a user interface within a single application window. Appeal Br. 11.
According to Appellant:
Figure 3 of Akers illustrates a graphical user interface 300
that includes several distinct windows, including a records
window 302, an episode information window 304, an imaging
window 306, and a communications-and-image-capture
window 308. Id., 5:52-54. Only two of these-the imaging
window 306 and the communications-and image-capture
window 308-display images. The imaging window 306
provides neither video from a remote (or robot) camera nor a
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local (or station) camera, but rather “image(s) associated with
the most recent episode-of-care ....” Id., 5:43-45. The
communications-and-image-capture window 308, on the other
hand, merely displays an image selected for transfer to a
connected party at a remote device. Id., 9:57-61, 11:26-36.
Thus, the imaging window 306 amounts to nothing more than a
window for reviewing stored images. And the
communications-and-image-capture window 308 merely
displays an image captured by either a remote camera or a local
camera, but not both. Akers neither teaches nor suggests a
graphical user interface that includes both a remote video image
and a local video image as well as a graphical input that can be
selected to transfer an image in single application window.
Id.
Claim 83 requires that all of the features of the user interface are
included in a single application window. Claims App. (“said user interface
includes . . .”). Thus, Akers’ imaging window 306, taken alone, fails to
satisfy the single application window limitation because it does not
incorporate all of the features listed in claim 83 within imaging window 306.
Nevertheless, we view Appellant’s critique of the Akers reference as
an individual attack on a single reference in a rejection that is based on a
combination of references. It is well settled that non-obviousness cannot be
established by attacking references individually where the rejection is based
upon the teachings of a combination of references. In re Merck & Co., 800
F.2d 1091, 1097 (Fed. Cir. 1986); In re Keller, 642 F.2d 413, 425
(CCPA 1981). In the instant case, Terada discloses a single window
application that includes images from two different, remotely situated
cameras, together with associated user interface controls. Terada, Fig. 4,
¶¶ 64–84. Terada displays both moving and still images. Id. When the
teachings of Kuno are combined with those of Terada and Akers, all of the
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features of claim 83 following the phrase “display interface includes . . .” are
found in the Examiner’s proposed combination.
Finally, Appellant argues that there is no reason to combine the prior
art in the manner proposed by the Examiner. Appeal Br. 13. Appellant
identifies a number of operational control aspects of the various references
and argues that they constitute differences between the prior art and the
claimed invention that are sufficiently significant that combining and
modifying them would change the principle of operation of the prior art
references. Appeal Br. 14 (citing MPEP § 2143.01 (VI)).
Appellant’s combinability argument is not persuasive. Appellant
never identifies or explains what the so-called “principles of operation” of
the various references are, much less how such principles would be changed
by the proposed combination. Kuno is directed to a patient monitoring
system. Figure 3 of Kuno shows a “sickroom.” Kuno, col. 2, ll. 13–14. The
sickroom is equipped with a robot that has a video camera, microphone,
speaker, and display. Id. col. 3, ll. 33–56. Data that is communicated to and
from the robot in the sickroom is exchanged with medical personnel situated
in a monitor room. Id. Fig. 5, col. 3, line 57 – col. 4, line 4. The principle
of operation of Kuno entails providing two-way remote communication
between a patient and medical personnel. This principle is not changed by
making relatively minor modifications to Kuno’s user interface displays and
controls, following the teachings of Terada, Akers, and Segan, to achieve the
claimed invention.
The Examiner’s findings of fact are supported by a preponderance of
the evidence and the Examiner’s legal conclusion of unpatentability is well-
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founded. In view thereof, we sustain the Examiner’s unpatentability
rejection of claims 83–86 and 88–91.
Unpatentability of Claims 87 and 92
over Kuno, Terada, Akers, Segan, and Kamato
Claim 87 depends from independent claim 83 and claim 92 depends
from independent claim 88. Claims App. Neither claim is separately
argued. We sustain the Examiner’s rejection. 37 C.F.R. § 41.37(c)(1)(iv)
(failure to separately argue claims constitutes a waiver of arguments for
separate patentability).
CONCLUSION
Claims
Rejected
§ References Affirmed Rev’d
83-86, 88-91 103 Kuno, Terada, Akers, Segan 83-86, 88-91
87, 92 103 Kuno, Terada, Akers, Segan,
Kamato
87, 92
Overall
Outcome
83-92

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).
AFFIRMED