Ex Parte 6,968,375 B1 et al

Patent Trial and Appeal Board

Aug 31, 2016

90013273 (P.T.A.B. Aug. 31, 2016)

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.
90/013,273 06/17/2014 6,968,375 B1 1737.578REX5 5540
60683 7590 09/01/2016
Robert Bosch LLC
1800 W. Central Road
Mount Prospect, IL 60056
EXAMINER
NGUYEN, MINH DIEU T
ART UNIT PAPER NUMBER
3992
MAIL DATE DELIVERY MODE
09/01/2016 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte STEPHEN J. BROWN
____________________

Appeal 2016-006040
Reexamination Control 90/013,273
Patent No. US 6,968,375 B1
Technology Center 3900
____________________

Before MARC S. HOFF, STEPHEN C. SIU, and ERIC B. CHEN,
Administrative Patent Judges.

HOFF, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from the rejection of
claims 1, 4, 5, 9–11, 13–19, 21, 25, 28–30, and 32–35. Claims 2, 3, and 20
are confirmed.1 We have jurisdiction under 35 U.S.C. §§ 134(b) and 306.
We affirm-in-part.
The ‘375 patent issued to Brown on Nov. 22, 2005, and is assigned to
Health Hero Network, Inc. The ‘375 patent is a system for remotely
monitoring an individual. A server system generates a script program that is

1 Claims 6–8, 12, 22–24, 26, 27, 31, 36, and 37 are not subject to
reexamination.
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executable by a remote apparatus that displays information and/or a set of
queries to the individual through a user interface. The server system also
includes an automated answering service for providing a series of questions
to the individual, storing responses to each provided question, and providing
a service based on the individual’s response to the questions. See Abstract.
Claim 1 illustrates the claims on appeal:
1. A system for remotely monitoring an individual, the system
comprising:
(a) a remote apparatus for interacting with the individual;
(b) a server system including
(i) a script generator for generating a script program from a set
of health related queries, the script program being executable at the
remote apparatus to communicate the set of queries to the individual;
and
(ii) a database for storing the the queries, the responses to the
queries, and details of the individual; wherein the remote apparatus
includes:
(i) a communication component for receiving the script
program from the server and for transmitting the responses to the
server;
(ii) a user interface having an audio transducer for audibly
notifying the individual and a display, and a processor connected to
the user interface for executing the script program to cause
presentation on the display of queries to the individual.

The Examiner relies upon the following prior art in rejecting the
claims on appeal:
Goodman US 5,827,180 Oct. 27, 1998
Brown US 8,260,630 B2 Sept. 4, 2012
Kaufman et al. EP 0 342 859 A2 May 11, 1989
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Throughout this Decision, we make reference to Appellant’s Brief
(“App. Br.,” filed Feb. 16, 2016) and the Examiner’s Answer (“Ans.,” filed
Mar. 10, 2016) for their respective details.

REJECTIONS
Claims 1, 4, 5, 9, 11, 13–19, 21, 25, 28–30, 32, 33, and 35 stand
rejected on the ground of non-statutory double patenting as being
unpatentable over various of claims 17–19 and 22 of Brown ‘630 in
combination with Kaufman.
Claims 10 and 34 stand rejected on the ground of non-statutory double
patenting as being unpatentable over various combinations of claims 17–19
of Brown ‘630 in combination with Kaufman and Goodman.

ISSUES
Appellant argues that the combination of Brown ‘630 and Kaufman
fails to disclose storing details of the individual at the server, and that it
would not have been obvious to modify Brown ‘630 to do so. App. Br. 13–
15.
Appellant asserts that several claims are improperly rejected because
the Examiner has relied on plural claims in Brown ‘630 that are not in the
same chain of dependency. App. Br. 16, 22–25.
Appellant contends that the “remotely programmable apparatus” of
Brown ‘630 is not “associated with the individual to be queried,” as claim
15 recites. App. Br. 19–20.
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Appellant further argues that the Examiner erred in finding only two
ways to present queries to the user, i.e. “with or without response choices.”
Appellant argues that there are a multitude of ways to present queries. App.
Br. 20.
Appellant further contends that the Examiner erred in finding that
there necessarily must be a display command in the script program that
causes the display of queries. App. Br. 21–22.
Appellant’s arguments present us with the following issues:
1. Does the combination of Brown ‘630 and Kaufman disclose or
fairly suggest storing details of the individual at the server?
2. Did the Examiner err by rejecting several claims based on plural
claims of Brown ‘630 that are not in the same chain of dependency?
3. Is the “remotely programmable apparatus” of Brown ‘630
associated with the individual to be queried?
4. Did the Examiner err in finding a finite number of ways to present
queries to the user?
5. Did the Examiner err in finding that there necessarily must be a
display command in the script program that causes the display of queries?

ANALYSIS
CLAIMS 1, 4, AND 5
We are not persuaded by Appellant’s argument that combining the
storing of details of the patient in a remote patient device, as disclosed by
Kaufman, with the server-based storage disclosed by Brown ‘630, would not
have arrived at the claimed invention. See App. Br. 13. Instead, we agree
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with the Examiner’s findings that Brown ‘630 discloses the structure of the
server system including a database for storing information, as claimed, and
that Kaufman discloses storing “details of the individual,” albeit at a remote
device rather than the server. See Ans. 38. We agree with the Examiner that
it would have been obvious to combine the references in order to achieve
storage of details of the individual in Brown ‘630’s server-based database,
which would have achieved the predictable result of “storing another field . .
. in the database” (Ans. 38), a potentially more economical approach to data
storage.
Appellant’s further argument that the Examiner’s proposed
combination is erroneous because one would need to modify the server of
Brown ‘630 beyond the functions disclosed in either Brown ‘630 or
Kaufman – for example, “to accommodate the indexing, access and cross-
correlation of ‘queries,’ ‘responses to the queries,’ and ‘details of the
individual’” (App. Br. 15–16) is also unpersuasive. The test of obviousness
is not whether the features of a secondary reference may be bodily
incorporated into the structure of the primary reference, nor is it that the
claimed invention must be expressly suggested in any one or all of the
references. Rather, the test is what the combined teachings of the references
would have suggested to those of ordinary skill in the art. In re Keller, 642
F.2d 413, 425 (CCPA 1981). We agree with the Examiner’s conclusion that
the combined teachings of Brown ‘630 and Kaufman would have suggested
storing details of the individual at Brown ‘630’s server-based database.
We conclude that the Examiner did not err in rejecting claim 1, or
claims 4 and 5 dependent therefrom, as unpatentable over claim 18 of Brown
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‘630 in combination with Kaufman. We sustain the Examiner’s
obviousness-type double patenting rejection.
CLAIMS 9, 10, 11, 13, AND 14
The Examiner has rejected claim 9 over claims 17, 18, and 19 of
Brown ‘630 in combination with Kaufman. We agree with Appellant that
the Examiner’s rejection fails to identify a single invention for comparison
against the invention under appeal. Claim 18 depends from claim 17, and
claim 19 depends from claim 17, but claim 19 does not depend from claim
18. No single claim contains all the limitations relied upon by the Examiner
in rejecting claim 9.
The Examiner’s argument that the MPEP permits reliance upon plural
claims not in the same chain of dependency is not well taken. See Ans. 39.
Contrary to the Examiner’s position, MPEP § 804 does in fact “state or . . .
imply” that separate claims that do not depend from each other cannot be
used for a double patenting rejection.
[T]he factual inquiries set forth in Graham v. John Deere Co.,
383 U.S. 1, 148 USPQ 459 (1966) that are applied for
establishing a background for determining obviousness under
35 U.S.C. 103 should typically be considered when making a
nonstatutory double patenting analysis based on "obviousness."
See MPEP § 2141 for guidelines for determining obviousness.
These factual inquiries are summarized as follows:
(A) Determine the scope and content of a patent claim relative
to a claim in the application at issue;
(B) Determine the differences between the scope and content of
the patent claim as determined in (A) and the claim in the
application at issue;
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(C) Determine the level of ordinary skill in the pertinent art;
and
(D) Evaluate any objective indicia of nonobviousness.
Any nonstatutory double patenting rejection made under the
obviousness analysis should make clear:
(A) The differences between the inventions defined by the
conflicting claims — a claim in the patent compared to a claim
in the application; and
(B) The reasons why a person of ordinary skill in the art would
conclude that the invention defined in the claim at issue would
have been an obvious variation of the invention defined in a
claim in the patent.
MPEP § 804.II.B.2 (Rev. 7, November 2015), “Obviousness Analysis”
(emphasis added).
The steps of the obviousness analysis enumerated in the MPEP make
clear at every pertinent step that a single patent claim shall be compared with
a claim in the application under examination (or appeal).2 An applicant
presented with a rejection over plural patent claims not in the same chain of
dependency would not be able to resolve the conflict in scope between the
various patent claims asserted against the application claim.
We conclude that the Examiner erred in rejecting claim 9 over claims
17, 18, and 19 of Brown ‘630 in combination with Kaufman. We do not
sustain the obviousness-type double patenting rejection of claim 9, nor the

2 See, e.g., In re Basell Poliolefine Italia S.P.A., 547 F.3d 1371, 1379 (Fed.
Cir. 2008), which makes clear that a single “reference” patent claim is
compared with the various claims of the patent under reexamination.
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rejection of claims 11, 13, and 14, each of which depend from claim 9. We
also do not sustain the obviousness-type double patenting rejection of claim
10 over claims 17, 18, and 19 of Brown ‘630 in combination with Kaufman
and Goodman.
CLAIMS 15 AND 16
We do not agree with Appellant’s argument that Brown ‘630 fails to
disclose “[a] remote apparatus associated with the individual to be
queried,” or “a display associated with the individual to be queried.” See
App. Br. 19–20.
The Examiner rejects claim 15 over claim 18 of Brown ‘630, which
depends from claim 17, in combination with Kaufman. Brown ‘630 claim
17 recites a “remotely programmable apparatus” that comprises “a user
interface for communicating the set of queries to the user and for receiving
the responses to the set of queries from the user.” Brown ‘630 claim 18
recites that said user interface “comprises a display for displaying the
queries, and user input buttons for entering the responses.” Accordingly, we
agree with the Examiner’s finding that Brown ‘630 discloses a remote
apparatus, and a display, that is associated with the individual to be queried.
See Ans. 40–41.
We conclude that the Examiner did not err in rejecting claim 15, as
well as dependent claim 16 not separately argued, as unpatentable over
Brown ‘630 claim 18 in combination with Kaufman. We sustain the
obviousness-type double patenting rejection.

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CLAIMS 17, 18, 28–30, AND 35
We are not persuaded by Appellant’s argument that the Examiner
erred in concluding that “a display [that] includes at least one response
choice for at least one of the queries” would have been obvious because
there are only a finite number of ways to display the queries to a user,
specifically with responses or without responses. App. Br. 20. Appellant
has already conceded that Brown ‘630 discloses a display for displaying
queries per se. The only limitation remaining to be argued is the inclusion
of at least one response choice. We agree with the Examiner that only two
possibilities exist: response choice(s) are either included, or not included.
Ans. 42. We also agree with the Examiner that the user input buttons recited
in claim 18 of Brown ‘630 may be characterized as part of the display that is
claimed. Ans. 43.
We, thus, agree with the Examiner’s conclusion that, under either of
these rationales, Brown ‘630 claim 18 in combination with Kaufman renders
obvious the subject matter of claim 17 of the patent under reexamination, as
well as claims 18, 28–30, and 35 not separately argued. We sustain the
Examiner’s obviousness-type double patenting rejection.
CLAIM 19
We are unpersuaded by Appellant’s argument that Brown ‘630 does
not inherently disclose a script program that includes display commands to
cause display of a plurality of queries and at least one response choice for at
least one of the queries. App. Br. 21–22. We agree with the Examiner’s
finding that Brown ‘630 claim 18, which depends from and incorporates all
the limitations of claim 17, recites “a script generator for generating a
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particular one of a plurality of script programs”; “a communication device
for receiving the particular script program from the server”; and “a processor
connected to the communication device, the user interface, and the memory
for executing the particular script program to . . . communicate the set of
queries to the user” [and receive responses], in claim 17. Claim 18 recites
that “the user interface comprises a display for displaying the queries, and
user input buttons for entering the responses.”
Brown ‘630 claim 18, therefore, discloses a script program that
communicates a set of queries to the user, and a user interface that includes a
display for displaying those exact queries. We agree with the Examiner that
“[t]o display the queries, there necessarily must be a display command that
causes the display.” Ans. 44.
CLAIMS 21, 25, AND 32–34
The Examiner’s rejections of claims 21, 25, 32, and 33 relies on
claims 18 and 22 of Brown ‘630, which are not in the same dependency
chain. The Examiner’s rejection of claim 34 relies on claims 17, 18, and 19
of Brown ‘630, but claims 18 and 19 of Brown ‘630 are not in the same
dependency chain. As discussed supra, with reference to the rejection of
claim 9, no single claim of Brown ‘630 contains all of the limitations relied
upon by the Examiner. The Examiner has, therefore, failed to set forth the
prima facie unpatentability of claims 21, 25, 32, and 33. We do not sustain
the Examiner’s obviousness-type double patenting rejection of these claims
over claims 18 and 22 of Brown ‘630 in combination with Kaufman. For the
same reasons, we do not sustain the obviousness-type double patenting
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rejection of claim 34 over claims 17, 18, and 19 of Brown ‘630 in
combination with Kaufman and Goodman.

CONCLUSIONS
1. The combination of Brown ‘630 and Kaufman suggests storing
details of the individual at the server.
2. The Examiner erred by rejecting several claims based on plural
claims of Brown ‘630 that are not in the same chain of dependency.
3. The “remotely programmable apparatus” of Brown ‘630 is
associated with the individual to be queried.
4. The Examiner did not err in finding a finite number of ways to
present queries to the user.
5. The Examiner did not err in finding that there necessarily must be a
display command in the script program that causes the display of queries.

ORDER
The Examiner’s decision to reject claims 1, 4, 5, 15–19, 28–30, and
35 is affirmed. The Examiner’s decision to reject claims 9–11, 13, 14, 21,
25, and 32–34 is reversed.
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-IN-PART

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For Patent Owner:

ROBERT BOSCH LLC
1800 W. CENTRAL ROAD
MOUNT PROSPECT, IL 60056

For Third Party Requestor

STERNE, KESSLER, GOLDSTEIN & FOX PLLC
1100 NEW YORK AVENUE, NW
WASHINGTON, DC 20005