Ex Parte 7,252,636 B2 et al

Patent Trial and Appeal Board

Dec 29, 2016

90013104 (P.T.A.B. Dec. 29, 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.
90/013,104 12/23/2013 7,252,636 B2 12771.0076USR7 1031
60683 7590
Robert Bosch LLC
1800 W. Central Road
Mount Prospect, IL 60056
12/29/2016 EXAMINER
MENEFEE, JAMES A
ART UNIT PAPER NUMBER
3992
MAIL DATE DELIVERY MODE
12/29/2016 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
ROBERT
BOSCH HEALTHCARE SYSTEMS, INC.,
Patent Owner
Appeal 2016-007490
Reexamination Control 90/013,104
Patent No. US 7,252,636 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
Patent Owner (“Appellant”) appeals under 35 U.S.C. § 134 from the
rejection of claims 1, 3, 4, 6—8, 11, 16—18, 22, 23, 26, 29, 31, 32, 35, and 39.
We have jurisdiction under 35 U.S.C. §§ 134(b) and 306. An oral hearing
was held on December 14, 2016.
We reverse.
The ’636 patent issued to Brown on August 7, 2007, and is assigned
to Robert Bosch Healthcare Systems, Inc. The ’636 patent is a networked
Appeal 2016-007490
Reexamination Control 90/013,104
Patent No. 7,252,636 B1
system for remote health monitoring of individuals. A server system
generates a script program, for execution at a remote apparatus, from a set of
queries. Responses to the queries, entered through the remote user interface,
are sent to the server system. The server system provides a series of
questions to which the individual at the remote apparatus will respond. The
server provides a service based on the individual’s response to the questions.
See Abstract.
Claim 1 illustrates the claims on appeal:
1. An apparatus for providing a healthcare professional with health-
related information about an individual, the apparatus comprising:
a processor for executing a program received from at least one remote
server via a first communication link through a communication network
connecting the apparatus and the at least one remote server, wherein the
program, when executed by the processor, causes the apparatus to present
one or more health condition related queries to the individual;
a memory that stores the program received from the at least one
remote server; and
a user interface through which the individual can input one or more
responses to the one or more health condition related queries, wherein the
apparatus (i) stores the one or more responses and (ii) transmits the one or
more responses together to the at least one remote server after establishing a
second communication link through the communication network; and
wherein the program, when executed by the processor, causes
transmission of the one or more responses together to the at least one remote
server.
The Examiner relies upon the following prior art in rejecting the
claims on appeal:
Fu
Fujimoto
Clough
Brown (“’028”)
Brown (“’809”)
US 4,803,625
US 5,339,821
US 5,379,057
Feb. 7, 1989
Aug. 23, 1994
Jan. 3, 1995
Nov. 24, 2009
Sept. 27, 2011
US 7, 624,028 B1
US 8,027,809 B2
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Patent No. 7,252,636 B1
Throughout this decision, we make reference to Appellants’ Brief
(“App. Br.,” filed Mar. 21, 2016) and the Examiner’s Answer (“Ans.,” filed
Apr. 15, 2016) for their respective details.
REJECTIONS
Claims 16—18, 22, 23, 26, 29, 31, 32, and 35 stand rejected on the
ground of non-statutory double patenting as being unpatentable over claims
1, 15—17, and 19 of Brown ’028 in combination with Fu.
Claims 1,3,4, 6—8, 11, and 39 stand rejected on the ground of non-
statutory double patenting as being unpatentable over claims 1—20 of Brown
’809.
Claims 1,3,4, 6—8, 11, and 39 stand rejected on the ground of non-
statutory double patenting as being unpatentable over claims 1—20 of Brown
’809 in combination with Fu.
Claims 1,3,4, 6—8, 11, and 39 stand rejected on the ground of non-
statutory double patenting as being unpatentable over claims 1—20 of Brown
’809 in combination with Fujimoto.
Claims 1,3,4, 6—8, 11, and 39 stand rejected on the ground of non-
statutory double patenting as being unpatentable over claims 1—20 of Brown
’809 in combination with Clough.
Claims 16—18, 22, 23, 26, 29, 31, 32, and 35 stand rejected on the
ground of non-statutory double patenting as being unpatentable over claims
1—76 of Brown ’028 in combination with Fujimoto.
ANAFYSIS
Rejection over Brown ’028 and Fu
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Patent No. 7,252,636 B1
The Examiner rejected claims 16—18, 22, 23, 26, 29, 31, 32, and 35
over claims 1, 15—17, and 19 of Brown ’028 in combination with Fu. Final
Act. 5. The Examiner’s rejection fails to identify a single invention for
comparison against the invention under appeal. Claim 15 of Brown ’028
depends from claim 1, and claim 19 also depends from claim 1, but claim 19
does not depend from claim 15. No single claim contains all the limitations
relied upon by the Examiner in rejecting claims 16—18, 22, 23, 26, 29, 31,
32, and 35.
The Manual of Patent Examining Procedure (MPEP) explains 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
at issue;
(C) Determine the level of ordinary skill in the pertinent art;
(D) Evaluate any objective indicia of nonobviousness.
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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 ordi nary 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
hi aim in the patent.
MPEP § 804.11 11.2 (Rev.
js added).
November 2015), “Obviousness Analysis”
-• 7
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).1 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 claims 16—18, 22,
23, 26, 29, 31, 32, and 35 over claims 1, 15—17, and 19 of Brown ’028 in
combination with Fu. We do not sustain the obviousness-type double
patenting rejection of claims 16—18, 22, 23, 26, 29, 31, 32, and 35.
Rejection over Brown ’809
The Examiner rejected claims 1,3,4, 6—8, 11, and 39 over claims 1—
20 of Brown ’809. Final Act. 9. The Examiner’s rejection fails to identify a
1 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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single invention for comparison against the invention under appeal.
Exemplary among the dependent claims, claim 2 of Brown ’809 depends
from claim 1, and claim 3 also depends from claim 1, but claim 3 does not
depend from claim 2. No single claim contains all the limitations relied
upon by the Examiner in rejecting claims 1,3,4, 6—8, 11, and 39.
As analyzed supra, The Manual of Patent Examining Procedure
(MPEP) explains that separate claims that do not depend from each other
cannot be used for a double patenting rejection.
We conclude that the Examiner erred in rejecting claims 1,3,4, 6—8,
11, and 39 over claims 1—20 of Brown ’809. We do not sustain the
obviousness-type double patenting rejection of claims 1,3,4, 6—8, 11, and
39.
Rejection over Brown ’809 and Fu
The Examiner rejected claims 1,3,4, 6—8, 11, and 39 over claims 1—
20 of Brown ’809 in combination with Fu. FinalAct. 11. The Examiner’s
rejection fails to identify a single invention for comparison against the
invention under appeal. Exemplary among the dependent claims, Claim 2 of
Brown ’809 depends from claim 1, and claim 3 also depends from claim 1,
but claim 3 does not depend from claim 2. No single claim contains all the
limitations relied upon by the Examiner in rejecting claims 1,3,4, 6—8, 11,
and 39.
As analyzed supra, The Manual of Patent Examining Procedure
(MPEP) explains that separate claims that do not depend from each other
cannot be used for a double patenting rejection.
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Appeal 2016-007490
Reexamination Control 90/013,104
Patent No. 7,252,636 B1
We conclude that the Examiner erred in rejecting claims 1,3,4, 6—8,
11, and 39 over claims 1—20 of Brown ’809 in combination with Fu. We do
not sustain the obviousness-type double patenting rejection of claims 1,3,4,
6—8, 11, and 39.
Rejection over Brown ’809 and Fujimoto
The Examiner rejected claims 1,3,4, 6—8, 11, and 39 over claims 1—
20 of Brown ’809 in combination with Fujimoto. FinalAct. 14. The
Examiner’s rejection fails to identify a single invention for comparison
against the invention under appeal. Exemplary among the dependent claims,
Claim 2 of Brown ’809 depends from claim 1, and claim 3 also depends
from claim 1, but claim 3 does not depend from claim 2. No single claim
contains all the limitations relied upon by the Examiner in rejecting claims 1,
3, 4, 6—8, 11, and 39.
As analyzed supra, The Manual of Patent Examining Procedure
(MPEP) explains that separate claims that do not depend from each other
cannot be used for a double patenting rejection.
We conclude that the Examiner erred in rejecting claims 1,3,4, 6—8,
11, and 39 over claims 1—20 of Brown ’809 in combination with Fujimoto.
We do not sustain the obviousness-type double patenting rejection of claims
1, 3, 4, 6—8, 11, and 39.
Rejection over Brown ’809 and Clough
The Examiner rejected claims 1,3,4, 6—8, 11, and 39 over claims 1—
20 of Brown ’809 in combination with Clough. FinalAct. 16. The
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Reexamination Control 90/013,104
Patent No. 7,252,636 B1
Examiner’s rejection fails to identify a single invention for comparison
against the invention under appeal. Exemplary among the dependent claims,
Claim 2 of Brown ’809 depends from claim 1, and claim 3 also depends
from claim 1, but claim 3 does not depend from claim 2. No single claim
contains all the limitations relied upon by the Examiner in rejecting claims 1,
3, 4, 6—8, 11, and 39.
As analyzed supra, The Manual of Patent Examining Procedure
(MPEP) explains that separate claims that do not depend from each other
cannot be used for a double patenting rejection.
We conclude that the Examiner erred in rejecting claims 1,3,4, 6—8,
11, and 39 over claims 1—20 of Brown ’809 in combination with Clough. We
do not sustain the obviousness-type double patenting rejection of claims 1, 3,
4, 6—8, 11, and 39.
Rejection over Brown ’028 and Fujimoto
The Examiner rejected claims 16—18, 22, 23, 26, 29, 31, 32, and 35
over claims 1—76 of Brown ’028 in combination with Fujimoto. FinalAct.
18. The Examiner’s rejection fails to identify a single invention for
comparison against the invention under appeal. Claims 1, 20, 40, and 59 of
Brown ’028 are independent. Further, exemplary among the dependent
claims, Claim 2 of Brown ’028 depends from claim 1, and claim 3 also
depends from claim 1, but claim 3 does not depend from claim 2. No single
claim contains all the limitations relied upon by the Examiner in rejecting
claims 16—18, 22, 23, 26, 29, 31, 32, and 35.
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Reexamination Control 90/013,104
Patent No. 7,252,636 B1
As analyzed supra, The Manual of Patent Examining Procedure
(MPEP) explains that separate claims that do not depend from each other
cannot be used for a double patenting rejection.
We conclude that the Examiner erred in rejecting claims 16—18, 22,
23, 26, 29, 31, 32, and 35 over claims 1—76 of Brown ’028 in combination
with Fujimoto. We do not sustain the obviousness-type double patenting
rejection of claims 16—18, 22, 23, 26, 29, 31, 32, and 35.
ORDER
The Examiner’s decision to reject claims 1,3,4, 6—8, 11, 16—18, 22—
24, 26, 29, 31, 32, 35, and 39 is reversed.
REVERSED
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Appeal 2016-007490
Reexamination Control 90/013,104
Patent No. 7,252,636 B1
ROBERT BOSCH LLC
1800 W. CENTRAL ROAD
MOUNT PROSPECT, IL 60056
Cc: Third Party Requester
MERCAHNT & GOULD PC
P.O. BOX 2903
MINNEAPOLIS, MN 55402-0903
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