Ex Parte 7,542,878 B2 et al

Patent Trial and Appeal Board

Dec 22, 2016

90010751 (P.T.A.B. Dec. 22, 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.
90/010,751 11/30/2009 7,542,878 B2 14645-4 3683
757 7590
BGL
P.O. BOX 10395
CHICAGO, IL 60610
12/22/2016 EXAMINER
NASSER, ROBERT L
ART UNIT PAPER NUMBER
3992
MAIL DATE DELIVERY MODE
12/22/2016 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
Ex parte CARD GUARD SCIENTIFIC SURVIVAL LTD. Appellant
Appeal 2016-005923
Application 12/706,541
Reexamination Control 90/010,7511
U.S. Patent No. 7,542,878 B2
Technology Center 3900
Before RICHARD M. LEBOVITZ, MICHAEL R. ZECHER, and
JENNIFER S. BISK, Administrative Patent Judges.
LEBOVITZ, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal by the Patent Owner from the Patent
Examiner’s decision to finally reject claims 1, 31, 34, 36, and 37 in the above-
identified ex parte reexamination of U.S. Patent No. 7,542,878 (hereinafter,
1 According to the Appeal Brief, the real party in interest is Card Guard
Scientific Survival Ltd., now known as LifeWatch Technologies Ltd., which
is 100% owned by LifeWatch AG. App. Br. 2. Page 2 of the Appeal Brief
provides additional disclosures about the ownership and relationships between
shareholders of the companies.
Appeal 2012-010812
Application 12/706,541
Reexamination Control 90/010,751
Patent U.S. 7,542,878 B2
“the ’878 patent”). The Board’s jurisdiction for this appeal is under 35 U.S.C.
§§ 6(b) and 134. We affirm.
STATEMENT OF CASE
An appeal to the Board of Patent Appeals and Interferences (now, the
Patent Trial and Appeal Board) from an Examiner’s final rejection in a merged
reissue and ex parte reexamination the ’878 patent was decided January 22, 2013.
Decision in Appeal No. 2012-010812 (hereinafter, “the 10812 Decision”). The
Examiner’s decision was affirmed-in-part. 10812 Decision 1. Subsequently, in
an interview with the Examiner, Patent Owner proposed an amendment to the
claims, including new claims 31—37. Patent Owner Remarks, Feb. 19, 2014.
The Examiner entered the amendment and re-opened prosecution, rejecting all
the pending claims. Non-final Office Action of Oct. 21, 2014. Subsequently, all
claims were canceled, except for claims 1 and 31—37, and various prior art
rejections were set forth by the Examiner. Non-final Office Action of Jan. 16,
2015.
The Examiner denied the claims the benefit of the earlier filed Application
No. 09/261,136 (“the ’136 Application”, filed Mar. 3, 1999) (now U.S. Pat. No,
6,366,871 B1 (“the ’871 patent”))2 and accorded the claims the filing date of Jun.
23, 2004. Non-final Office Action of Jan. 16, 2015, pp. 5—6. The denial of the
benefit of the ’136 Application filing date was based on the determination that
the ’136 Application does not describe a “multi-purpose personal data
accessary,” a requirement of all the pending claims.
2 All references to the written description of the ’136 Application are with
respect to the published ’871 patent.
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Patent U.S. 7,542,878 B2
The Examiner finally rejected all pending claims over various
combinations of prior art. Final Rejection of Aug. 13,2015. Patent Owner filed
a Notice of Appeal on Nov. 13, 2015 from the Examiner’s Final Rejection.
Claims 32, 33, and 35 were cancelled. Claims 1,31, 34, 36, and 37 are all the
pending claims. Appeal Br. 7 (Feb. 16, 2016).
In the Appeal Brief, Patent Owner argues that claims 1, 31, 34, 36, and 37
are entitled to the benefit of the ’136 Application filed March 3, 1999. Appeal
Br. 22. Patent Owner stated “[ejach reference cited by the Examiner, but for
Davis and Rohde, has an effective prior art date after March 3, 1999. Therefore,
none of the cited art, but for Davis and Rohde, can be applied against the present
claims.” Id. Patent Owner further stated that “the Board previously concluded
that neither Davis nor Rohde disclosed all the features of the present claims.” Id.
Because Patent Owner did not provide additional arguments as to why the
rejected claims are patentable over the cited prior art publications, all pending
rejections turn on the question of whether claims 1, 31, 34, 36, and 37 are
entitled to the benefit of the filing date of the ’136 Application.
As explained in detail below, we agree with the Examiner’s decision to
deny claims 1, 31, 34, 36, and 37 the benefit of the filing date of the ’136
Application. Because the benefit of the filing date is denied, all prior art
rejections of claims 1, 31, 34, 36, and 37 are affirmed. The prior art rejections
are listed in the Final Rejection mailed Aug. 3, 2015.
Claim 1, which is representative of the appeal claims, is reproduced
below:
1. A personal health monitor comprising: a physiological data
input device operative to gather physiological data; and a multi­
purpose personal data accessory, whereas the multi-purpose
personal data accessory is adapted to execute health monitoring
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software such as to enable the multi-purpose personal data
accessory to receive the physiological data, process the
physiological data to provide processed physiological data and
control a long range transmission of the processed physiological
data to a remote entity.
Independent claims 31, 34, 36, and 37 each require a multi-purpose
personal data accessory. Consequently, the issue to be resolved in this Appeal is
the same for all the rejected claims, namely, does the ’136 Application describe
the claimed “multi-purpose personal data accessory”?
An oral hearing was held on November 28, 2012. A transcript will be
entered into the record in due course.
Claim 1 is directed to a “person health monitor” comprising (1) “a
physiological data input device” and (2) “a multi-purpose personal data
accessory.” In the 010812 Decision, the term “multi-purpose personal data
accessory” was interpreted as follows:
... to be a device which is adapted to execute the claimed health
monitoring function using hardware, such as a processor, and
which is not solely devoted to performing the heath monitoring
function. That is, the multi-purpose personal data accessory is not
“dedicated” to a single purpose or function, but has a function
other than health monitoring, such as a function conventionally
available on a cellular phone or palm computer.
010812 Decision 7.
We adopt this definition for the purpose of this Appeal.
The Examiner determined that claims 1, 31, 34, 36, and 37 were not
entitled to the priority date of the ’136 Application because the Application
does not describe “a multi-purpose personal data accessory.”
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Patent U.S. 7,542,878 B2
Patent Owner seeks to establish that the “ambulatory patient monitoring
apparatus” described in ’136 Application is a “multi-purpose personal data
accessory” because it is not dedicated to a single purpose or function, “but has
a function other than health monitoring, such as a function conventionally
available on a cellular phone or palm computer.” Appeal Br. 7.
To demonstrate that the ’136 Application describes a health monitor
with an additional and non-health-related function, Patent Owner provided a
declaration by Harry Bims, Ph.D. (“Bims 1 Decl.” dated Nov. 13, 2015). Dr.
Bims stated that he has considerable educational and work experience in
wireless communications. Id., 4—8. Based on his summary of his
education and work experience, we find that Dr. Bims is qualified to testify on
the matters discussed in his declaration.
Dr. Bims testified in this declaration that the “function other than health
monitoring” is that of a cellular phone “that had the functional capability to
place telephone calls to (and receive telephone calls from) other cellular
devices and landline phones through the public telephone network.” Bims 1
Decl. 136. Dr. Bims testified that the person of ordinary skill in the art, who
he refers to as the acronym “POSA,” would have “understood that cellular
monitor 12 could be used for making and/or receiving calls for other, non-
health monitoring purposes.” Id.
Dr. Bims testified in his declaration the “cellular monitor 12” described
in the ’136 Application had the cellular and wireless circuitry that enabled it
to be used as a cellular telephone. Bims 1 Decl. 36—51. Dr. Bims’
testimony is supported by sound scientific reasoning and factual evidence. Id.
Accordingly, we find Dr. Bims’ testimony to credibly establish that the
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monitoring apparatus of the ’136 Application could be used to make and
receive cellular phone calls for other non-health monitoring purposes.
The inquiry as to whether the ’136 Application describes “a multi­
purpose personal data accessory,” however, does not end with Dr. Bims’
conclusion that monitoring apparatus of the ’136 Application could be utilized
as a general purpose cellular phone. In order to be accorded priority under 35
U.S.C. § 120 to a previously filed application, the “invention” must be
“disclosed [in the ‘application previously filed in the United States’] in the
manner provided by the first paragraph of section 112.” 35 U.S.C. § 120 (pre-
AIA). Entitlement to the benefit of the previously filed ’136 Application thus
requires that the later-filed claims of the ’878 patent be described in the’ 136
Application in such a way that the written description requirements of 35
U.S.C. § 112 are met. See Tronzo v. Biomet, Inc., 156 F.3d 1154, 1158 (Fed.
Cir. 1998) (discussing requirements of claiming benefit of priority date of
earlier application under 35 U.S.C. § 120).
To satisfy the written description requirement of 35 U.S.C. § 112, the
inventor must “convey with reasonable clarity to those skilled in the art that,
as of the filing date sought, he or she was in possession of the invention.”
Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555, 1563—64 (Fed. Cir. 1991). “One
shows that one is ‘in possession’ of the invention by describing the invention,
with all its claimed limitations.” Lockwood v. Am. Airlines, Inc., 107 F.3d
1565, 1572 (Fed. Cir. 1997). In describing the claimed invention, there is no
requirement that the wording be identical to that used in the specification as
long as there is sufficient disclosure to show one of skill in the art that the
inventor “invented what is claimed.” Union Oil Co. v. Atlantic Richfield Co.,
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Patent U.S. 7,542,878 B2
208 F.3d 989, 997 (Fed. Cir. 2000). The written description “need not recite
the claimed invention in haec verba but [it] must do more than merely disclose
that which would render the claimed invention obvious.” ICUMed., Inc. v.
Alaris Med. Sys., Inc., 558 F.3d 1368, 1377 (Fed. Cir. 2009). Thus, as long as
a person “of ordinary skill in the art would have understood the inventor to
have been in possession of the claimed invention at the time of filing, even if
every nuance of the claims is not explicitly described in the specification, then
the adequate written description requirement is met.” In re Alton, 76 F.3d
1168, 1175 (Fed. Cir. 1996).
Thus, the critical inquiry is not whether the monitoring apparatus of the
’136 Application could be utilized as a general purpose cellular phone.
Rather, the question is whether the inventors had “possession” of the concept
that the monitoring device could be used by the patient as a general purpose
cellular telephone.
In this case, the only cellular voice function disclosed for the
“ambulatory patient monitoring apparatus” described in ’136 Application is to
provide “voice communications between the patient and a clinician at the
central station.” ’136 Application, col. 1,11. 54—67; col. 2,11. 10-12 (“voice
communications circuitry whereby the patient conducts voice communications
with a clinician at the central health monitoring station”); col. 4,11. 33—34
(“providing a response step includes voice-communicating an instruction to
the patient”).
The patient then establishes a communications link between
monitor 12 and a central medical monitoring station by dialing via
keypad 607 and placing a cellular telephone call which is then
connected to the public telephone network. When a clinician at
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the receiving station answers the call the clinician and patient may
communication by voice . . . The clinician at the receiving station
may analyze the patient's physiological data and may instruct the
patient regarding any actions the patient should take . . .
Id., col. 8,11. 49-60.
Dr. Bims did not provide evidence in his declaration that the ’136
Application describes voice communications between any parties other than
the patient and the clinician at the heath monitoring station. Instead, the
essence of Dr. Bims testimony is that the cellular circuitry enables and allows
the monitoring apparatus to make and receive phone calls from any cell phone
or landline. Dr. Bims stated:
52. A person of ordinary skill in the art would have understood
that the cellular monitor 12, which communicates with the
monitoring station over the public telephone network, could have
likewise communicated over the public telephone network with
other cellular or landline telephones. The teachings of the Geva
Patent certainly do not restrict the purpose of dialing from the
keyboard to exclusively placing a call to a clinician, or otherwise
forbid using the cellular monitor 12 for placing or receiving phone
calls for purposes other than health monitoring.
53. Indeed, the Geva Patent describes that the cellular monitor 12
has a dedicated voice communication channel that is separate from
the data channel. From this, the POS A would have understood that
the dedicated voice communication channel could be used for
communications generally, and was not necessarily restricted to
communications exclusively devoted to health care monitoring . .
54. For at least the foregoing reasons, it is my opinion that the
POS A in March 1999 would have understood that the Geva Patent
described a cellular health monitor that could be used for health
monitoring, as well as a general purpose cellular telephone ... In
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other words, the POSA in March 1999 would have understood that
the cellular monitor described in the Geva Patent could be used for
purposes other than health monitoring.
Bims 1 Decl. Tflf 52—54 (emphasis added).
Simply because the ’136 Application’s health monitor “could be used
for communications generally” and does not “restrict" or “forbid” the patient
from using the “ambulatory patient monitoring apparatus” for communication
channels other than between patient and doctor (see above) does not mean that
the inventors had “possession” of the claimed invention. Vas-Cath, 935 F.2d
at 1563—64. “Possession” requires a description of all the claimed features of
the invention. Lockwood, 107 F.3d at 1572. Dr. Bims did not provide
evidence, or even testily, that the ’136 Application describes the claimed
“multi-purpose personal data accessory” having “a function other than health
monitoring.” Rather, Dr. Bims merely stated that the ’136 Application does
not “restrict" or “forbid” the monitoring apparatus from being used to place
and receive calls from other cellular and landlines calls. Bims 1 Decl. 52—
54. Indeed, Dr. Bims repeated states that the cellular health monitor “could
be” used a cellular phone, but does not state that it was used for this purpose
nor that the inventors recognized it as such. The ’136 Application’s silence as
to whether the health monitor could be used as a general purpose cellular
telephone {id., 1 54) does not demonstrate “possession” of the claimed “multi­
purpose personal data accessory” because silence is not a description of “the
invention, with all its claimed limitations” as required to comply with the
written description requirement 35 U.S.C. § 112, first paragraph. Lockwood,
107 F.3d at 1572.
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Application 12/706,541
Reexamination Control 90/010,751
Patent U.S. 7,542,878 B2
While it is true that the ’136 Application does not have to describe the
claimed invention in the identical wording utilized in the later filed claims, it
must do more than provide disclosure that would have made the claimed
invention obvious to one of ordinary skill in the art. Union Oil Co., 208 F.3d
at 997; ICU Med., 558 F.3d at 1377.
[I]t is the specification itself that must demonstrate possession.
And while the description requirement does not demand any
particular form of disclosure, Carnegie Mellon Univ. v. Hoffmann-
La Roche Inc., 541 F.3d 1115, 1122 (Fed. Cir. 2008), or that the
specification recite the claimed invention in haec verba, a
description that merely renders the invention obvious does not
satisfy the requirement, Lockwood v. Am. Airlines, 107 F.3d 1565,
1571-72 (Fed. Cir. 1997).
Ariad Pharmaceuticals, Inc. v. Eli Lilly and Company, 598 F.3d 1336, 1352
(Fed. Cir. 2010).
The thrust of Dr. Buns’ testimony is that the health monitor disclosed in
the ’136 Application had the necessary cellular components and circuitry so
the monitor “could also be used for making and/or receiving call for other,
non-health monitoring purposes.” Bims 1 Decl. 136 (emphasis added); see
also id., 153 (testifying that the health monitor “could be used for
communications generally”). However, while capability to perform a non­
health care function might have made it obvious to have implemented the
function on the disclosed health care monitor, the fact that the monitor in Dr.
Bims’ own words “could ... be used ... for other, non-health monitoring
purposes” does not establish that the inventors had possession of the non­
health care function as of the filing date of the ’136 Application. Indeed, we
have not been directed to evidence, nor could we find such evidence, that the
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Patent U.S. 7,542,878 B2
inventors described using the “ambulatory patient monitoring apparatus” of
the ’136 Application for a function other than health care monitoring. Patent
Owner did not demonstrate the inventors knew, and recognized as part of
their invention, that the monitoring apparatus could be used by the patient as a
general purpose phone for making phone calls to any desired party.
Merely because a later-claimed feature can be deduced from a prior
filed application does not establish that the prior filed application describes
the feature in such a way that meets the written description requirement of 35
U.S.C. § 112. In Goeddel v. Sugano, 617 F.3d 1350 (2010), the sole count of
rgw interference was a “DNA [deoxyribonucleic acid] encoding a mature
human fibroblast interferon [“hFIF”] having a total of 166 amino acids of the
sequence” which was “unaccompanied by a human fibroblast interferon
presequence.” Goeddel, 617 F.3d at 1352. Sugano was awarded priority as to
the count of the interference based on the benefit of the filing date of its initial
Japanese patent application. Id., 1351. Although the Japanese patent
application did not disclose expressly a mature sequence lacking a
presequence, the Board of Patent Appeals and Interferences “held that one
skilled in this field ‘should have been able to envision’ the DNA molecule that
would encode mature hFIF unaccompanied by its presequence”. . . “in view of
the Japanese Application’s description of the precursor hFIF and a scientific
article by Knight that is referenced in the Japanese Application.” Id., 1354—
55. The Board held the Japanese Application described the mature hFIF of
the count because “Knight’s partial sequence of the first 13 amino acids of
mature hFIF would allow a person skilled in the field of the invention to
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determine where in the 187 amino acid precursor the presequence ends and
the mature sequence begins.” Id.
The Court of Appeals to the Federal Circuit, however, held that the
Board in Goeddel “erred in ruling that priority is established if a person of
skill in the art could ‘envision’ the invention of the counts.” Rather, the court
held:
That a modified gene encoding the 166 amino acid protein could
have been “envisioned” does not establish constructive reduction
to practice of the modified gene. The question is not whether one
skilled in this field of science might have been able to produce
mature hFIF by building upon the teachings of the Japanese
Application, but rather whether that application “convey[ed] to
those skilled in the art that the inventor had possession of the
claimed subject matter as of the filing date.” Ariad Pharm., Inc. v.
Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en banc);
see also Lockwood v. American Airlines, Inc., 107 F.3d 1565, 1572
(Fed. Cir. 1997) (in claiming priority under § 120, “[a] description
which renders obvious the invention for which an earlier filing
date is sought is not sufficient”); Bradford Co. v. Conteyor North
Am., Inc., 603 F.3d 1262, 1269 (Fed. Cir. 2010) (same).
Id., 1356 (emphasis added).
In this case, Dr. Bims testified that the “ambulatory patient monitoring
apparatus” could be used as a general purpose cellular telephone, but Dr. Bims
did not explain how such ability conveyed to the ordinary skilled worker that
the inventors possessed the concept of utilizing the monitoring apparatus to
place and receive phone calls for non-health care purposes. As already
discussed “voice communication circuitry” is described in the ’136
Application, but the circuitry is used to communicate with a central health
monitoring station. ’136 Application, col. 2,11. 10—12.
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Patent U.S. 7,542,878 B2
The ’878 patent’s mention of the ’136 Application in the discussion of
the ’878 invention is consistent with the conclusion that the Application does
not describe “a general purpose cellular telephone.” See Bims 1 Decl. 1 54.
The ’878 patent discloses:
Various remote medical centers are also known as central
medical monitoring stations and are known in the art. Such a
center is described at U.S. Pat. No. 6,366,871 [the ’136
Application] titled “Personal ambulatory cellular health monitor
for mobile patient” of Geva, which incorporated herein by
reference. It is noted that Geva describes a monitor that is capable
of vocal communication with the person, and this feature can be
implemented by using the cellular phone 210 [of the ’878 patent;
see ’878 patent, col. 6,11. 5—7].
’878 patent, col. 8,11. 10-17.
The ’878 patent does not characterize the cellular health monitor of the
’136 Application as a cellular phone, but rather states that the voice
communication in the Application can be “implemented” with the cellular
phone 210 of the ’878 patent (see e.g., Fig. 3 showing cellular phone 210).
This cited disclosure serves as additional independent evidence that the
inventors later recognized, only after filing the application that led to the ’878
patent, that a general purpose cellular telephone used to place and receive
phone calls for non-health care purposes could be used in place of the voice
communications circuitry of the ’136 Application (see ’136 Application, col.
2,11. 1-21).
SUMMARY
The Examiner’s decision to deny claims 1, 31, 34, 46, and 37 the
benefit of the filing date of the ’136 Application is affirmed.
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All the prior rejections fall with the decision to deny the ’878 patent the
March 3, 1999 filing date of the ’136 Application (see Answer 9).
TIME PERIOD FOR RESPONSE
Requests for extensions of time in this ex parte reexamination
proceeding are governed by 37 C.F.R. § 1.550(c). See 37 C.F.R. § 41.50(f).
AFFIRMED
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Appeal 2012-010812
Application 12/706,541
Reexamination Control 90/010,751
Patent U.S. 7,542,878 B2
Patent Owner:
BRINKS HOFER GILSON & LIONE
P.O. BOX 10395
CHICAGO, IL 60610
Third Party Requester:
HARRITY & HARRITY, LLP
11350 RANDOM HILLS ROAD, SUITE 600
FAIRFAX, VA 22030
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