ELWHA LLCDownload PDFPatent Trials and Appeals BoardDec 9, 20212021002160 (P.T.A.B. Dec. 9, 2021) Copy Citation 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. 13/705,311 12/05/2012 Roderick A. Hyde SE2-1341-US 8291 80118 7590 12/09/2021 Constellation Law Group, PLLC P.O. Box 580 Tracyton, WA 98393 EXAMINER TIEDEMAN, JASON S ART UNIT PAPER NUMBER 3626 NOTIFICATION DATE DELIVERY MODE 12/09/2021 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): ISFDocketInbox@intven.com Tyler@constellationlaw.com admin@constellationlaw.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________________ Ex parte RODERICK A. HYDE, EDWARD K.Y. JUNG, JORDIN T. KARE, ERIC C. LEUTHARDT, ROYCE A. LEVIEN, RICHARD T. LORD, ROBERT W. LORD, MARK A. MALAMUD, JOHN D. RINALDO JR., DENNIS J. RIVET, CLARENCE T. TEGREENE, and LOWELL L. WOOD JR. __________________ Appeal 2021-002160 Application 13/705,311 Technology Center 3600 ____________________ Before JAMES P. CALVE, TARA L. HUTCHINGS, and AMEE A. SHAH, Administrative Patent Judges. CALVE, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the decision of the Examiner to reject claims 1, 10, 13, 14, 17, 19–24, 27–33, 35–40, 45, 62, 85, 89, 90, 92, 178, 179, and 183–195.2 See Appeal Br. 1; Non-Final Act. 2. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. 1 “Appellant” refers to “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies Elwha LLC, which is wholly owned by The Invention Science Fund II, LLC, as the real party in interest. See Appeal Br. 3. 2 Claims 2–9, 11, 12, 15, 16, 18, 25, 26, 34, 41–44, 46–61, 63–84, 86–88, 91, 164–175, and 182 are cancelled, and claims 93–163, 176, 177, 180, and 181 are withdrawn. See Appeal Br. 3, 25–63 (Claims App.). Appeal 2021-002160 Application 13/705,311 2 CLAIMED SUBJECT MATTER Claims 1, 40, 62, and 85 are independent. Claim 1 recites: 1. A healthcare information management system comprising: (a) at least one wearable article configured to be worn by an individual, the at least one wearable article including at least (1) a biometric sensor configured to obtain biometric data from the individual while the at least one wearable article is worn by the individual, (2) data indicative of at least a current health status of the individual, and (3) at least one of a visual interface for providing a visual notification to the individual responsive to one or more received communications or an auditory interface configured for providing an auditory notification to the individual responsive to one or more received communications; (b) one or more compliance sensors configured to obtain compliance data indicative of non-compliance by the individual with a health regimen requiring at least one of reduction or omission of one or more behaviors; (c) at least one computing device operatively coupled with the biometric sensor and configured to receive the biometric data; and (d) at least one computer-readable medium bearing one or more instructions that, when implemented in the at least one computing device, configure the at least one computing device to perform operations including at least: (1) obtaining an association between at least some of the biometric data obtained by the biometric sensor while the at least one wearable article is worn by the individual and a record designator, the record designator including a pattern identifying the individual; (2) causing the at least one wearable article to display at least some of the data indicative of the current health status of the individual responsive to the association between the at least some of the biometric data obtained by the biometric sensor and the record designator; (3) creating a communication for transmission to the wearable article to notify the individual of an incentive Appeal 2021-002160 Application 13/705,311 3 responsive at least in part to the compliance data indicative of non-compliance by the individual with the health regimen requiring at least one of reduction or omission of the one or more behaviors; and (4) transmitting a communication to the wearable article to notify the individual of the incentive responsive at least in part to the compliance data indicative of noncompliance by the individual with the health regimen requiring at least one of reduction or omission of the one or more behaviors, wherein the incentive is configured to provide an incentive for at least one of reduction or omission of the one or more behaviors. Appeal Br. 25–26 (Claims App.). REJECTIONS Claims 1, 10, 13, 14, 17, 19–24, 27–33, 35–40, 45, 62, 85, 89, 90, 92, 178, 179, and 183–195 are rejected under 35 U.S.C. § 112, second paragraph as being indefinite. Claims 1, 10, 13, 14, 23, 28, 31, 33, 38, 40, 45, 62, 85, 89, 90, 179, and 186 are rejected under 35 U.S.C. § 103 as unpatentable over Yuen,3 Hinkamp,4 and Douglas.5 Claim 19 is rejected under 35 U.S.C. § 103 as unpatentable over Yuen, Hinkamp, Douglas, Keppler,6 and Green.7 Claims 20 and 178 are rejected under 35 U.S.C. § 103 as unpatentable over Yuen, Hinkamp, Douglas, and Keppler. 3 US 2012/0083715 A1, published April 5, 2012. 4 US 2007/0046476 A1, published March 1, 2007. 5 WO 00/75748 A2, published December 14, 2000. 6 US 2008/0045806 A1, published February 21, 2008. 7 US 7,716,072 B1, published May 11, 2010. Appeal 2021-002160 Application 13/705,311 4 Claims 21, 22, 29, 30, 36, 37, and 92 are rejected under 35 U.S.C. § 103 as unpatentable over Yuen, Hinkamp, Douglas, and Koverzin.8 Claim 24 is rejected under 35 U.S.C. § 103 as unpatentable over Yuen, Hinkamp, Douglas, and Schmidt.9 Claim 27 is rejected under 35 U.S.C. § 103 as unpatentable over Yuen, Hinkamp, Douglas, and Wendl.10 Claims 32 and 39 are rejected under 35 U.S.C. § 103 as unpatentable over Yuen, Hinkamp, Douglas, and Jacobs.11 Claim 35 is rejected under 35 U.S.C. § 103 as unpatentable over Yuen, Hinkamp, Douglas, and Nguyen.12 Claim 183 is rejected under 35 U.S.C. § 103 as unpatentable over Yuen, Hinkamp, Douglas, and James.13 Claims 184 and 185 are rejected under 35 U.S.C. § 103 as unpatentable over Yuen, Hinkamp, Douglas, and Applicant’s Admitted Prior Art (“AAPA”). Claims 17 and 187 are rejected under 35 U.S.C. § 103 as unpatentable over Yuen, Hinkamp, Douglas, and Koverzin. Claims 188 and 189 are rejected under 35 U.S.C. § 103 as unpatentable over Yuen, Hinkamp, Douglas, and Utley.14 8 US 2010/0286490 A1, published November 11, 2010. 9 US 2009/0112770 A1, published April 30, 2009. 10 US 2006/0004606 A1, published January 5, 2006. 11 US 2012/0330684 A1, published December 27, 2012. 12 US 2008/0303638 A1, published December 11, 2008. 13 US 2008/0176655 A1, published July 24, 2008. 14 US 2011/0263947 A1, published October 27, 2011. Appeal 2021-002160 Application 13/705,311 5 Claims 190, 191, 194, and 195 are rejected under 35 U.S.C. § 103 as unpatentable over Yuen, Hinkamp, Douglas, and Brown.15 Claims 192 and 193 are rejected under 35 U.S.C. § 103 as unpatentable over Yuen, Hinkamp, Douglas, and Benderev.16 ANALYSIS Indefiniteness Rejection of All Claims The Examiner determines that independent claims 1, 40, 62, and 85 are indefinite because it is unclear whether “transmitting a communication” refers to the previously-recited “creating a communication” or to another communication. Non-Final Act. 4. Appellant does not present argument for this rejection. See Appeal Br. 8–24 (requesting review only of the rejections under 35 U.S.C. § 103). Therefore, we summarily sustain this rejection. Claims 1, 10, 13, 14, 23, 28, 31, 33, 38, 40, 45, 62, 85, 89, 90, 179, and 186 Rejected over Yuen, Hinkamp, and Douglas Appellant argues the claims as a group. Appeal Br. 10–22. We select claim 1 as representative. 37 C.F.R. § 41.37(c)(1)(iv) (2019). Regarding claim 1, the Examiner finds that Yuen teaches a system including a wearable article and one or more compliance sensors configured to obtain compliance data indicative of noncompliance by the individual with a health regimen requiring at least one of reduction or omission of one or more behaviors. Non-Final Act. 5–7 (citing Yuen ¶¶ 54, 55, 105, 130, Fig. 7). The Examiner cites Hinkamp to teach biometric pattern association and Douglas to teach offers of incentives for non-compliance with a health regimen. Id. at 8– 12. 15 US 2007/0016447 A1, published January 18, 2007. 16 US 2004/0133463 A1, published July 8, 2004. Appeal 2021-002160 Application 13/705,311 6 Appellant argues that Yuen includes motion and altitude sensors but uses data from those sensors to calculate the calorie burn of the user rather than non-compliance by the individual with a health regimen requiring at least one of a reduction or omission of one or more behaviors, as recited in claims 1, 40, 62, and 85. Appeal Br. 12, 20–22. Appellant also asserts that Hinkamp and Douglas fail to remedy this deficiency of Yuen. Id. at 12. The Examiner responds that this limitation only requires the sensor to be configured to obtain data indicative of noncompliance by the individual with a health regimen requiring at least one of a reduction or omission of one or more behaviors, and Yuen collects motion and altitude data that may be indicative of noncompliance with a health regimen by collecting sensor data to monitor a user’s activity as it relates to athletic training or weight control. Ans. 4 (citing Yuen ¶¶ 228, 258). The Examiner explains that Douglas transmits data, such as the data that Yuen transfers to a portable device for a health regimen, in response to a user not complying with a smoking cessation program. Id. at 5 (citing Yuen ¶ 212; Douglas, 12:32–34); see Non-Final Act. 11–12. In this way, the Examiner determines that the combined teachings of Yuen and Douglas teach compliance sensors configured to obtain compliance data indicative of non-compliance with a health regimen requiring at least a reduction and/or omission of one or more behaviors. See Ans. 5; see also Non-Final Act. 12. The Specification indicates that a health regimen can have medicinal, measurement, omission, exercise, and/or other components. Spec. ¶ 279. A pregnancy regimen may include a no smoking component measured by a smoke detector and a calories consumed rate. Id. ¶ 280. Another regimen measures alcohol consumption omission by using a breathalyzer. Id. ¶ 282. Appeal 2021-002160 Application 13/705,311 7 The Specification also describes a health regimen including an exercise component (id.), and a health regimen including a weight loss component that is indicative of a patient with an eating disorder failing to eat meals (id. ¶ 301) and failing to maintain a body weight (id. ¶ 303). The Examiner reasonably determines that data from the motion and altitude sensors of Yuen are used to monitor a user’s compliance with a health regimen, such as an exercise program (weight training) or a weight control program, and data are uploaded to websites so health professionals, trainers, and weight monitoring and health oriented groups can monitor the data and provide feedback based on the data. Ans. 4 (citing Yuen ¶¶ 228, 258). For a weight training regimen, the sensors monitor the repetitions, sets, time between repetitions/sets, type of exercise, and form. Yuen ¶ 258. For other health regimens, the portable monitoring device provides data for activity levels, steps, and/or sleep quality. Id. ¶ 228. Thus, Yuen teaches and suggests monitoring user compliance with a health regimen. See Ans. 4. The Examiner cites Douglas to teach expressly a system that receives user data and monitors the data for compliance/noncompliance with a health regimen having a reduction or omission component such as a smoking cessation program. Non-Final Act. 10–12; Ans. 5 (citing Douglas 12:32– 34). Douglas’ system receives data from a user and monitors progress in a behavior modification program to include compliance/noncompliance with program objectives such as smoking cessation. Douglas, 12:24–35, 17:1–13. The Examiner determines that it would have been obvious to modify Yuen’s system that monitors users’ activities and provides feedback on their progress with Douglas’ teachings to offer incentives to individuals when their activity data indicates noncompliance with the health regimen. Ans. 5. Appeal 2021-002160 Application 13/705,311 8 Appellant does not dispute or apprise us of error in the Examiner’s findings that Yuen uses sensors to collect user activity data and monitor that data to provide feedback to users on their progress in a health program, or that Douglas provides advertisements to incentivize persons in a health regimen when their collected activity indicates they are noncompliant with a health regimen requiring reduction/omission of a behavior such as smoking cessation. See Non-Final Act. 7–12; Ans. 4–6; Yuen ¶¶ 212, 228, 258; Douglas, 12:24–35, 17:1–13; see also Appeal Br. 11–12 (Yuen collects user activity data from motion and altitude sensors to determine a calorie burn); 14 (Douglas monitors a person’s compliance with a behavior modification program and generates compliance data indicative of the individual’s progress toward the achievement of the program’s milestones). Appellant argues that there is no motivation to modify Yuen with the disclosure of Douglas in the manner suggested by the Examiner because doing so would require an impermissible change in a principle of operation of Yuen. Appeal Br. 14–15. In particular, Appellant contends that Douglas prompts users to enter their health-related data into the system, and these self-reporting tools (a journal) would impermissibly change a principle of operation of Yuen, which uses sensors to acquire user data. Id. at 14–15. This argument is not persuasive because it misperceives the proposed modification to Yuen. The Examiner is not modifying Yuen’s use of sensors to collect and monitor user data to assess progress in a health program. The Examiner is modifying Yuen to determine whether a user is in compliance with a health regimen based on the collected data from Yuen’s sensors and to offer incentives (advertisements) to users in noncompliance with a health regimen as Douglas expressly teaches. Non-Final Act. 10–12; Ans. 5. Appeal 2021-002160 Application 13/705,311 9 Essentially, the Examiner proposes to improve Yuen, which collects user data related to a health program (athletic training or weight control), to determine whether the user complying with the health regimen and to offer incentives to users whose data indicates that they are not complying with the health regimen to incentivize the users to comply with the health regimen. Non-Final Act. 11–12 (citing Douglas, 17:1–13 (serving advertisements to a user in a smoking cessation program that requires the user to smoke only one cigarette a day when received data indicates that the user is smoking three cigarettes a day to help the user to stop smoking); see also KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007) (the use of a known technique that has been used to improve one device to improve similar devices in the same way is obvious unless its application is beyond the level of ordinary skill in the art). Yuen already collects user data for a health program and transmits feedback and suggestions to the user from professionals who monitor that collected data. Yuen ¶ 228. The Examiner proposes to modify Yuen to offer incentives when the sensed data indicates noncompliance. Appellant argues that Douglas does not transmit a communication to a wearable article to notify a user of an incentive. Appellant asserts that, read in the context in Appellant’s specification, an “incentive” does not include notifications or advertisements as discussed by Douglas. Appeal Br. 18–19. The Examiner responds that “incentives” can include “supplemental therapies or other such services” (Ans. 12 (quoting Spec. ¶ 250); see also Non-Final Act. 11), and Douglas sends advertisements “geared towards nicotine patches or an innovative medication to help kick the smoking habit” and such advertisements correspond to the claimed “incentives” consistent with the Specification (Non-Final Act. 11–12 (quoting Douglas, 17:1–13)). Appeal 2021-002160 Application 13/705,311 10 Appellant’s Specification describes incentives as follows: With reference now to FIG. 26, shown is a system 2600 in which one or more technologies may be implemented. System 2600 may include one or more incentives 2640 represented or manifested (as voltage levels or magnetization states comprising digital expressions, e.g.) on magnetic or other storage media 2652, display media 2654, transmission media 2656, or other media 2605. In some contexts, such expressions may explicitly associate an actual ( accomplished) or prospective incentive 2640 that is physical and tangible: a card or other device-readable medium granting a membership or other temporary access for one or more increments 2611, 2612, 2613 of time; cash or other certificates indicative of points 2616, credits 2617 or other physical media of exchange; medications, nutritional supplements, exercise equipment, or other goods transferred as payments in kind 2618; or other such resources 2619 directly manifesting a physical, tangible benefit 2620 as (at least part of) the incentive. Alternatively or additionally, such incentives can include one or more discounts or other terms 2631, 2632 or conditions 2634, 2635; performance ratings 2638 or favorable referrals 2641, 2642; policies, rebates, or other eligibilities 2646, 2647; or supplemental therapies or other such services 2648. In some contexts, as exemplified below, a combination of such incentives may be necessary or helpful for motivating qualified patients to comply with a testing or treatment regimen 2331- 2339 or for motivating others to explain or otherwise facilitate an individual’s participation or enrollment in a testing or treatment program. Spec. ¶ 250 (emphasis added). Douglas teaches the use of advertisements to incentivize and motivate persons who are noncompliant with a health regimen to become compliant. The advertisements may be geared toward “nicotine patches or an innovative medication to help kick the smoking habit.” Douglas, 17:6–7. The ads may offer the opportunity to purchase such items via e-commerce. Id. at 13:7–8. Appeal 2021-002160 Application 13/705,311 11 The Examiner’s finding that advertisements for nicotine patches or innovative medication in Douglas correspond to the claimed incentive, as interpreted in light of the Specification’s description of such incentives as including “supplemental therapies or other such services,” is supported by a preponderance of evidence. Appellant’s arguments do not apprise us of error in the Examiner’s findings. Moreover, advertisements commonly are understood to be used to incentivize behavior and to offer discounts, credits, rebates, or favorable referrals, all of which features are described in the Specification as types of “incentives.” See Spec. ¶ 250. Advertisements also may include “terms and conditions,” which the Specification describes as another type of incentive. See id. Douglas’ use of advertisements to incentivize non-compliant users to comply with a health regimen requiring at least one of reduction or omission of one or more behaviors, where such advertisements correspond to the claimed incentives consistent with the Specification’s description of such incentives, thus teaches and suggests this claimed feature. Accordingly, we sustain the rejection of claim 1 and claims 10, 13, 14, 23, 28, 31, 33, 38, 40, 45, 62, 85, 89, 90, 179, and 186, which are not argued separately. See Appeal Br. 19–22; see also 37 C.F.R. § 41.37(c)(1)(iv). Rejections of Dependent Claims Appellant does not present arguments for the other rejections of the remaining dependent claims. See Appeal Br. 19 (arguing the patentability of claims dependent on claim 1 based on the patentability of claim 1), id. at 22 (arguing the patentability of claims dependent on independent claim 40 based on the patentability of that claim). Thus, we summarily sustain the rejections of those claims. Appeal 2021-002160 Application 13/705,311 12 CONCLUSION The Examiner’s decision to reject claims 1, 10, 13, 14, 17, 19–24, 27– 33, 35–40, 45, 62, 85, 89, 90, 92, 178, 179, and 183–195 is affirmed. DECISION SUMMARY In summary: Claim(s) Rejected 35 U.S.C. § References/Basis Affirmed Reversed 1, 10, 13, 14, 17, 19–24, 27–33, 35– 40, 45, 62, 85, 89, 90, 92, 178, 179, 183–195 112(b) Indefiniteness 1, 10, 13, 14, 17, 19–24, 27–33, 35– 40, 45, 62, 85, 89, 90, 92, 178, 179, 183–195 1, 10, 13, 14, 23, 28, 31, 33, 38, 40, 45, 62, 85, 89, 90, 179, 186 103 Yuen, Hinkamp, Douglas 1, 10, 13, 14, 23, 28, 31, 33, 38, 40, 45, 62, 85, 89, 90, 179, 186 19 103 Yuen, Hinkamp, Douglas, Keppler, Green 19 20, 178 103 Yuen, Hinkamp, Douglas, Keppler 20, 178 21, 22, 29, 30, 36, 37, 92 103 Yuen, Hinkamp, Douglas, Koverzin 21, 22, 29, 30, 36, 37, 92 24 103 Yuen, Hinkamp, Douglas, Schmidt 24 27 103 Yuen, Hinkamp, Douglas, Wendl 27 32, 39 103 Yuen, Hinkamp, Douglas, Jacobs 32, 39 Appeal 2021-002160 Application 13/705,311 13 Claim(s) Rejected 35 U.S.C. § References/Basis Affirmed Reversed 35 103 Yuen, Hinkamp, Douglas, Nguyen 35 183 103 Yuen, Hinkamp, Douglas, James 183 184, 185 103 Yuen, Hinkamp, Douglas, AAPA 184, 185 17, 187 103 Yuen, Hinkamp, Douglas, Koverzin 17, 187 188, 189 103 Yuen, Hinkamp, Douglas, Utley 188, 189 190, 191, 194, 195 103 Yuen, Hinkamp, Douglas, Brown 190, 191, 194, 195 192, 193 103 Yuen, Hinkamp, Douglas, Benderev 192, 193 Overall Outcome 1, 10, 13, 14, 17, 19–24, 27–33, 35–40, 45, 62, 85, 89, 90, 92, 178, 179, 183–195 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 Copy with citationCopy as parenthetical citation