Ex Parte 7568246 et al

Patent Trial and Appeal Board

May 26, 2015

95002051 (P.T.A.B. May. 26, 2015)

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.
95/002,051 07/20/2012 7568246 7175-222143 4381
69781 7590 05/26/2015
Barnes & Thornburg LLP (Hill-Rom)
11 S. Meridian Street
Indianapolis, IN 46204
EXAMINER
WHITTINGTON, KENNETH
ART UNIT PAPER NUMBER
3992
MAIL DATE DELIVERY MODE
05/26/2015 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
____________

STRYKER CORPORATION
Requester and Appellant

v.

HILL-ROM SERVICES, INC.
Patent Owner and Respondent
____________

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Technology Center 3900
____________

Before RICHARD M. LEBOVITZ, STEPHEN C. SIU, and
JEFFREY B. ROBERTSON, Administrative Patent Judges.

LEBOVITZ, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on the appeal by the Third Party Requester from the Patent
Examiner’s decision to withdraw the obviousness rejections of claim 13 and
confirm its patentability in the above-identified inter partes reexamination of US
Patent 7,568,246 B2. The Board’s jurisdiction for this appeal is under 35 U.S.C.
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§§ 6(b), 134, and 315. We reverse and enter a new ground of rejection pursuant to
37 C.F.R. § 41.77(b).
I. BACKGROUND
The patent in dispute in this appeal is 7,568,246 B2 (“the ’246 patent”)
which issued Aug. 4, 2009. The Patent Owner and Appellant is Hill-Rom
Services, Inc. (“Patent Owner”). Owner Resp’t Br. 1 (Apr. 17, 2014).
A request for inter partes reexamination of the ’246 patent under 35 U.S.C.
§§ 311-318 and 37 C.F.R. §§ 1.902-1.997 was filed on July 20, 2012 (“Request”).
The Requester is Stryker Corporation (“Requester”), who is also the Appellant in
this appeal. Requester Appeal Br. 1 (Mar. 17, 2014).
Requester also discloses that there are pending reexaminations of related
patents. Id. Appeals to the Patent Trial and Appeal Board of two related
reexaminations have been decided. These are appeals in the reexaminations of US
Patent 5,771,511 (Reexamination 90/012,399; Appeal No. 2014-007778) (“the
’511 Dec.”) and US Patent 7,506,390 (Reexamination 95/002,053; Appeal 2014-
006135).
Requester has disclosed there is pending litigation involving Patent Owner
in the United States District Court for the Southern District of Indiana (Case No.1:
13-CV-00765-JMS-DKL). Requester Appeal Br. 1. According to Requester, the
district court case has been stayed pending the outcome of the reexamination
proceedings. Id.
An oral hearing in this appeal was held April 22, 2015. A transcript will be
entered into the record in due course.
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II. THE CLAIMED INVENTION
Claim 13 is directed to a bed with a communication network which is a peer-
to-peer network. Preferably, the bed, as described in the ’246 patent, is a hospital
or patient care bed. ’246 patent, col. 1, ll. 27-31.
Claim 13 depends from claim 1. Claim 1 was withdrawn from consideration
by the Examiner pursuant to 37 C.F.R. § 1.957(c) because of Patent Owner’s
failure to file a timely response to the Office Action (Aug, 30, 2013) rejecting this
claim. Action Closing Prosecution 3 (Oct. 24, 2013). Dependent claim 14 was
withdrawn from consideration for the same reasons. Id. The Examiner noted that
both claims 1 and 14 would be cancelled when a Reexamination Certificate is
issued. Id.
Claims 1 and 13 are reproduced below:
1. A bed, comprising:

a frame;

a deck coupled to the frame;

a communication network located on the bed and having at least
two modules connected thereto, at least one of the modules being
capable of providing an alarm message to the communication
network, the alarm message being selected from the group consisting
of alarm messages related to patient bed exit, patient weight gain,
patient weight loss, surface pressure loss and bed catastrophic failure,
the catastrophic failure being detected by a diagnostic tool coupled
directly to accessory port module; and

a module having a local alarm, the local alarm being responsive
to the alarm message provided to the communication network.

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13. The bed of claim 1 wherein the communication network is a peer-
to-peer network.

III. REJECTIONS
There are two sets of non-adopted rejections in this appeal. Request viii-
xviii. The first set involves Travis.1 The second set involves Hill-Rom’s Advance
1000/2000 Service Manual.2 Each of Travis and Advance 1000/2000 is combined
with one or more of Dailey,3 Welch,4 Janke,5 Fulton,6 Heins,7 and Bosch.8 Because
the latter publications are relied upon for the same teaching of a peer-to-peer
communication network, we have considered the rejections relying on each of
those publications together.
We REVERSE the Examiner’s determination that claim 13 would not have
been obvious under 35 U.S.C. § 103(a) over Travis in view of Dailey, Welch,
Janke, Heins, and/or Bosch. It is, therefore, not necessary to reach the rejections
involving Advance 1000/2000. The rejections involving Fulton have also not been
reached.

1 WO Patent Application No. 94/27544, published December 8, 1994, to Stephen
C. Travis et al.
2 SERVICE MANUAL FOR ADVANCE 1000/2000TM BED FROM HILL-ROM® (1993).
3 U.S. Patent No. 5,642,350, issued June 24, 1997, to Timothy E. Dailey.
4 U.S. Patent No. 5,319,363, issued June 7, 1994, to James P. Welch et al.
5 U.S. Patent No. 4,992,926, issued February 12, 1991, to Donald R. Janke et al.
6 U.S. Patent No. 4,680,753, issued July 14, 1987, to Temple L. Fulton et al.
7 U.S. Patent No. 5,596,437, issued January 21,1997, to Erich-Jurgen Heins.
8 Robert Bosch GmbH, CAN SPECIFICATION, VERSION 2.0 (1991).
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Claim 1
As indicated above, claims 1 and 14 were withdrawn from consideration
from the reexamination proceeding because of Patent Owner’s failure to respond to
the rejections of them. Action Closing Prosecution 3. Despite being informed that
claims 1 and 14 were no longer under consideration, Patent Owner filed a Notice
of Appeal and Appeal Brief appealing and arguing the merits of the rejections of
these claims. Patent Owner Appeal Brief, filed March 20, 2014. The Examiner
found that the Appeal was unauthorized and dismissed it. Examiner Action, Jun.
18, 2014. In view of the dismissal of the Appeal, we have not considered Patent
Owner’s arguments concerning claim 1 or the limitations in it. The issues in this
Appeal are thus confined to those raised in Requester’s Appeal Brief with respect
to claim 13.

IV. NON-ADOPTED REJECTIONS INVOLVING TRAVIS
Claim 13 is directed to the bed of claim 1, where “the communication
network is a peer-to-peer network.” Requester proposed rejections of claim 1
based on Travis for its teaching of hospital bed with a network, and then various
additional prior art publications for their teaching of peer-to-peer networks.
Request vii, viii-x.

Claim interpretation
Peer-to-peer communication network
Patent Owner asserts that the proper construction the claim term “peer-to-
peer communication network” is “[a] network of modules where each module can
initiate messages that are sent directly to other modules to which they are
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connected.” Owner Resp’t Br. 3; see also Joint Claim Construction Statement,
Case 1:11-cv-01120-JMS-DKL, U.S. District Court for So. District of Indiana,
May 21, 2012, pg. 6, in which Patent Owner asserted this construction in the
related litigation. We adopted this definition in the decision in the related inter
partes reexamination of US Patent 5,771,511. ’511 Dec. 5. We adopt it here, as
well.
Findings of Fact
The following are pertinent findings of fact from the publications said to
describe peer-to-peer networks:

A. Dailey
D1. Dailey describes a radio repeater system utilizing a peer-to-peer
network. Dailey, col. 1, ll. 6-11.
D2. Dailey describes the advantages of a peer-to-peer network.
Thus, peer-to-peer communications are coordinated in a simplified
fashion so that each device on the network can independently
communicate with any other device on that network using
standardized, industry accepted hardware and protocols.
Dailey, Abstract; Request 76.
D3.
In contrast to a master/slave architecture, a “peer-to-peer
network” permits every device on the network to initiate as well as
receive messages from the other devices on the network. Because all
devices have equal access to the network to send and receive
messages, they are referred to as “peers.”
Dailey, col. 2, ll. 14-19; Request 78.

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B. Welch
W1. Welch describes a network for managing multiple patient care devices
(PCDs). Welch, col. 1, ll. 9-13; col. 2, ll. 1-24.
W2. Although Welch does not use the term “peer-to-peer network,”
Requester provided evidence that Welch described such a network:
A general aspect of the invention is managing multiple devices
that are each suitable for use at a selected one of multiple locations
using a network of links that are each assigned to one of the locations.
Welch, col. 2, ll. 10-13; Request 86-87
W3. Requester also reproduced Figs. 1 and 3 of Welch which were said to
show a plurality of connection points for PCDs. Request 87.
W4. Furthermore, Requester cited the following disclosure from Welch:
The PCDs are connected to and disconnected from the network
without disrupting the operation of the network or the performance of
other PCDs, a must in view of the ever-changing locations in which
the PCDs are used.
Welch, col. 4, ll. 3-7; Requester 87-88.
W5. Welch also teaches that the “devices send and receive messages to
other devices on the network via the links.” Welch, col. 2, ll. 27-28

C. Janke
J1. Janke describes a peer-to-peer communication network. Janke, claim 1.
J2. Janke teaches:
FIG. 2 shows a communications network 21 of the invention
including four programmable logic controllers (PLCs) 1 to 4, although
up to 16 PLC’s can be used. Each of the PLCs includes a control
processor 12, a scan processor 14, and a memory 16. Referring to
FIG. 2, the memory 16, for a device with peer-to-peer
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communications, is further divided into three sections, the normal
memory, image memory and the two port shared memory. It is this
shared memory and its operation that allow these programmable logic
controllers to operate in a peer-to-peer (slave-to-slave) fashion.
Importantly, each of the PLCs further include a communications
processor 18, a local RAM (Random Access Memory) 20 and a local
area network interface 22. The local area network interface 22
connects to high speed image memory transfer network 21.
Janke, col 2, ll. 51-66; Request 40; see also Request 163-164.
J3. The peer-to-peer network transfers registers between devices:
The peer-to-peer network is able to transfer blocks of registers
between 2 to 16 devices and each device sends a different block of
registers. Each block of registers is assigned a mailbox location and
the location of the mailbox is dependent on the identification number
that each device is assigned.
Janke, col. 3, ll. 33-38; Request 59.

D. Bosch
B1. Bosch describes multiple modules, or “units,” connected to a
communication network. Request 41.
B2. For example, Bosch describes how “a number of units may be
connected” to a communication network:
The CAN serial communication link is a bus to which a number of
units may be connected. This number has no theoretical limit.
Practically the total number of units will be limited by delay times
and/or electrical loads on the bus line.
Bosch 40; Request 41.
B3. Bosch teaches that any connected unit may initiate message
transmission:
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Messages
Information on the bus is sent in fixed format messages of different
but limited length (see section 3: Message Transfer). When the bus is
free any connected unit may start to transmit a new message.
Bosch 6; see also at id. at 7, 38.

E. Heins
H1. Heins discloses an X-Ray device including a patient support surface (a
patient table) utilizing a controller area network (“CAN”) for communication
between the modules on the device. Heins Abstract; Request 33-34, 41, 294
(citing Heins, col. 3, ll-41-55).
H2.
The invention relates to an X-ray device including a number of
components to each of which is assigned a data transmission node
working by the CAN protocol whose data input and data output are in
mutual communication with other data transmission nodes via
transmitters and receivers, the data transmission nodes being
connected to the relevant associated components through connection
lines.
Heins, Abstract.
H3.
According to the CAN protocol, each node can transmit data to
each of the other nodes at any time (Multimaster principle) without
having to wait for an authorization to transmit. The exchange of
information accordingly takes place very quickly, which is essential
for at least some components in an X-ray device.
Heins, col. 1, ll. 30-35.
H4.
The high access speed to other nodes provided by systems according
to the CAN protocol is maintained because each of the nodes
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transmitting in the wireless manner can reach each and any of the
other nodes transmitting in the wireless manner at any time.
Heins, col. 2, ll. 24-28 (emphasis added).

Discussion
Claim 1 was rejected by the Examiner as anticipated by Travis’s teaching of
a hospital bed with a communication network. As discussed above, because of
Patent Owner’s failure to respond to the rejection of it, claim 1 is no longer under
consideration. Requester proposed rejections of dependent claim 13 based on
Travis in combination with publications said to describe peer-to-peer networks
(Dailey, Welch, Janke, Heins,). The Examiner adopted the rejections, but
subsequently withdrew them. Non-final Office action of Aug. 30, 2013.

Dailey
The Examiner stated that the Request 1) did not identify which parts of
Dailey are used to teach the peer-to peer network; 2) did not explain how Travis
would be modified with Dailey’s teachings; and 3) failed to provide sufficient
analysis or rationale. RAN 8. The Examiner also stated that the modification
would result in a bed with no local alarm because the bed computer to which the
alarm is connected to would be eliminated since it is a “central master” computer.
Id. at 8-9. The Examiner also argued:
[T]he use of a peer-to-peer network would require a complete change
in structure and nature of every module in 544Travis, a complete
change in the structure of the entire network of 544Travis and the
removal of functionality of the central bed computer. Examiners do
not find such an undertaking is a matter of routine skill nor do
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Examiners find anything predictable about the removal of the
operation of the central bed computer of 544Travis.
Id. at 11.
A declaration by C. Douglass Locke was provided by Requester on Dec. 12,
2012, in support of the obviousness of claim 13 (“Locke Decl.”). Locke has a
Ph.D. in computer science and testified that he has experience in network
implementation. Locke Decl. ¶¶ 4-7. Based on Dr. Locke’s education and
experience, we find that he is qualified to testify on the matters in his declaration.
Specifically, Dr. Locke testified about the level of skill in the art and the
obviousness of utilizing a peer-to-peer communication network in Travis’s hospital
bed.
The Examiner considered the Locke Declaration but did not consider it
persuasive since the Examiner found it would not be routine to use a peer-to-peer
network in Travis, but would require numerous choices and require complex
integration and, therefore, would not be simple substitution as argued by
Requester. RAN 11.
Finally, the Examiner states Requester has not provided a reason why the
different modules would be needed to communicate with each other as would be
the case with a peer-to-peer network. Id. at. 12.

Welch, Janke, Heins, Bosch
In pages 12-66 of the RAN, the Examiner reiterated the same arguments for
each of the additionally cited publications (Welch, Janke, Heins, Bosch) in
refusing to adopt the rejections relying on these cited publications.

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Summary of Examiner’s position
There are two main reasons advanced by the Examiner for determining that
claim 13 is not obvious over Travis in view of Welch, Janke, Heins, and Bosch: 1)
unpredictability and lack of guidance in implementing a peer-to-peer network in
Travis’s bed; and 2) lack of a reason to implement a peer-to-peer network in
Travis. We address each below.

Unpredictability and lack of guidance
In making an obviousness rejection, the level of ordinary skill in the art must
be ascertained. Graham v. John Deere Co., 383 U.S. 1, 17-18 (1966). This
determination is essential when the obviousness is based on a combination of
publications because it must be resolved whether the ordinary skilled worker
would have had reason to modify the prior art as set forth in the rejection or
proposed rejection and whether such skilled worker would have had the skill and
knowledge necessary to make the modification.
The “person of ordinary skill in the art” in § 103 is a “theoretical construct
. . . and is not descriptive of some particular individual.” Endress + Hauser, Inc. v.
Hawk Measurement Sys. Pty. Ltd., 122 F.3d 1040, 1042 (Fed. Cir. 1997) (citing
Custom Accessories, Inc. v. Jeffrey–Allan Indust., Inc., 807 F.2d 955, 963
(Fed.Cir.1986)).
“Factors that may be considered in determining level of ordinary skill
in the art include: (1) the educational level of the inventor; (2) type of
problems encountered in the art; (3) prior art solutions to those
problems; (4) rapidity with which innovations are made; (5)
sophistication of the technology; and (6) educational level of active
workers in the field.” Envtl. Designs, Ltd. v. Union Oil Co., 713 F.2d
693, 696 (Fed. Cir. 1983) (citing Orthopedic Equip. Co. v. All
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Orthopedic Appliances, Inc., 707 F.3d 1376, 1381-82 (Fed. Cir.
1983)). These factors are not exhaustive but are merely a guide to
determining the level of ordinary skill in the art.
Daiichi Sankyo Co. v. Apotex Inc., 501 F3d 1254, 1256 (Fed. Cir. 2007).
“A person of ordinary skill in the art is also a person of ordinary creativity,
not an automaton.” KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 421 (2007). “[I]n
many cases a person of ordinary skill will be able to fit the teachings of multiple
patents together like pieces of a puzzle.” Id. at 420. An obviousness “analysis
need not seek out precise teachings directed to the specific subject matter of the
challenged claim, for a court can take account of the inferences and creative steps
that a person of ordinary skill in the art would employ.” Id. at 418.
In this case, it appears that the Examiner did not adopt the rejection because
Requester did not identify precise teachings in the prior art as to how Travis would
be modified to have made a hospital bed with a peer-to-peer network and because
it was said to be beyond the level of ordinary skill in the art to have made such
modification. However, no findings were made in the RAN about the level of
ordinary skill in the art. In contrast, Requester’s expert Dr. Locke, whose
education and experience in the pertinent field are undisputed,9 provided testimony
about the level of ordinary skill in the art.
The following testimony from Dr. Locke provides evidence of the level of
skill in the art at the time of the invention.

9 Dr. Locke testified that he has “extensive experience in the field of computer
software and hardware engineering, including the design and implementation of
distributed and embedded networks.” Locke Decl. ¶ 5. Dr. Locke also testified
that during his career he has “been actively involved in the development of several
communication and software protocols and specifications.” Id. at ¶ 10.
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17. . . . As with any network design project, one of ordinary skill in
the art would have been confronted with design choices, such as those
described below in Paragraph 22. But these design choices would
have been routine for a person of ordinary skill in the art and are a
normal part of network engineering.
20. . . . The claimed invention relates to a communication network on
a bed that incorporates known components and known communication
protocols. As discussed below, the claimed hardware elements were
readily understood by those of ordinary skill in the art as of August
1995, and electronic components such as these function in predictable,
well-defined ways.
21. . . . The art of communication networks, including for embedded
systems, was well-developed as of August 1995. [Footnote omitted.]
Communication networks were already present in many commercially
available products and systems by this time, and such networks were
prevalent in a wide range of fields, including the medical field. (See,
e.g., Heins ’437 (using a communication network to improve an X-ray
device); Welch ’363 (patient monitoring devices).)
22. . . . By August 1995, a communication network designer of
ordinary skill in the art would have been generally capable of
developing communication networks for a wide variety of
applications. For a particular implementation, a network designer
must make numerous routine design choices, which involve weighing
many of the same design considerations that are common to all
potential implementations.
In paragraph 22, Dr. Locke identified specific choices to made when
developing a communication network for a particular application, including
choosing the “network topology,” “communication protocol,” and “types of
hardware.” Dr. Locke further testified:
28. It is very common for one of ordinary skill in the art to implement
a particular network design utilizing industry standards, such as RS-
232, and yet depart from the precise teachings of the standard. It is
often the case that an implemented design does not follow a particular
standard exactly as defined in the official standard publication, and
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making a slight departure from a published standard for a particular
implementation would not be inventive. A person of ordinary skill in
the art might use the standard as a basis for his or her design and later
modify certain aspects of it to fit into a particular implementation or to
make use of certain commercially available components. . . . It is well
understood that every design has distinct requirements and that
published standards sometimes must be adapted to meet all those
distinct requirements.
Dr. Locke’s testimony provides evidence that one of ordinary skill in the art
had the knowledge level and skill to implement a communication network, such as
a peer-to-peer in a hospital bed. As indicated above, Dr. Locke specifically
identified choices to be made in such implementation and testified they were
commonly carried out by the ordinary skilled worker at the time of the invention.
Dr. Locke also testified that it would have been routine to add a prior art
communication network to a hospital bed.
44. To add a prior art communication network to a hospital bed, one
of ordinary skill in the art would have used known principles of
networking and methods of engineering to make routine design
choices like those described above in Paragraph 22, since
communication networks were well understood, present in many
commercially available products, and already prevalent in a wide
range of fields, including the medical field. (See, e.g., Heins ’437
(using a communication network to improve an X-ray device); Welch
’363 (patient monitoring devices).)
Dr. Locke’s citation to Heins and Welch provides factual support to his
testimony that it would have been routine to adapt a communication network to a
hospital bed since each of these publications utilized a peer-to-peer network (as
defined by Hill-Rom) in a medical device (H4; W3–W5), providing guidance for
the skilled worker to have done the same in a hospital bed.
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Contrary to the Examiner’s conclusion, which is not supported by evidence,
Dr. Locke testified that it was predictable to substitute one known communication
network for another communication network already on a hospital bed “given how
commonplace it was in numerous industries to add communication networks to
existing products and systems.” Locke Decl. ¶ 45.
In view of Dr. Locke’s extensive background in networks and the
communication industry, we find his testimony to be credible evidence about the
level of skill in the pertinent art and the predictability of making the modifications
proposed by Requester. The Examiner did not sufficiently explain why Dr.
Locke’s testimony was inadequate.
Dr. Locke also addressed the non-analogous art issue raised by the
Examiner, testifying that it is “common for an engineer developing a particular
type of communication network in one industry to consult networks implemented
in other industries.” Locke ¶ 48. This testimony is consistent with the evidence
that peer-to-peer networks had been implemented in medical devices as described
in Welch and Heins.

Reason to combine
The Examiner stated that Requester did not give adequate reason to combine
the peer-to-peer network prior art with Travis. RAN 8, 12. The Examiner’s
position is not supported by a preponderance of the evidence.
In the Request, it was stated:
In the medical field, a communication network would preferably be
fast, reliable, and standardized in order to provide safe operation and
safe patient care. It was well known in the prior art that peer-to-peer
communication networks met all of these requirements. Numerous
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secondary prior art references teach or otherwise suggest a motivation
to implement peer-to-peer communication networks and standards in
settings where fast, reliable, and standardized communication between
various modules is desired, including medical settings.
Request 60.
In support of this statement, evidence was cited from Dailey, Welch, and
Fulton of the desirability of a peer-to-peer network. Id. at 60-61. See also D2, D3,
W4.
The Request further reasoned:
Design incentives and market forces in the medical field push for
improved ability to monitor patient condition, communicate
information from numerous sources to users, and control various
functions of devices such as hospital beds. Adding or substituting a
peer-to-peer communication network on a bed would respond to each
of these market forces and design incentives. Peer-to-peer
communication networks function the same way on a hospital bed as
they do in a variety of fields, including the medical field. The medical
field, as well as other fields, faces problems associated with
monitoring the status of various subjects and improving control of
various features. As a result, one of ordinary skill in the art would
look to peer-to-peer communication networks from the medical field
as well as other industries to use on a hospital bed.
Request 62.
In sum, contrary to the Examiner’s conclusion, Requester provided sufficient
reasoning in the Request for modifying Travis by replacing its communication
network with a peer-to-peer network.
Dr. Locke also testified about the reason to have utilized a peer-to-peer
network in a hospital bed:
This desire for modularity in electronic data communication systems
contributed significantly to the rise of peer-to-peer networking prior to
August 1995. Many network designers at that time in the medical,
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industrial automation, transportation, and other fields wanted their
networks to have the ability for modules to be added to or removed
from the networks efficiently and without disrupting network
operation.
Locke ¶ 47.
Dr. Locke’s testimony is supported by the fact that both Welch and Heins
utilized peer-to-peer networks in medical devices.

Implementation of peer-to-peer networks
As testified by Dr. Locke, it was routine for one of ordinary skill in the art to
implement a peer-to-peer network in a hospital bed. Consequently, the lack of
detail in how Travis’s communication network would be implemented as a peer-to-
peer network does not make the claimed invention non-obvious to the ordinary,
skilled worker. See RAN 8. Dr. Locke also addressed the differences between
Travis’s “more centralized control system” with Dailey’s “more decentralized
control system,” testifying that the skilled worker “would have been capable of
adopting certain features of two references even if some of the many other features
disclosed in each reference were different.” Locke ¶ 49.
The Examiner’s argument that modifying Travis would result in the loss of
the alarm (RAN 8-9) is unreasonable since the alarm is an alert to patient
attempting to exit the bed (Locke ¶ 32), and it is not logical that the skilled worker
would eliminate this feature from a hospital bed. Alarms are generated in the
PCD’s of Welch’s peer-to-peer network (Welch, col. 1, ll. 45-50) and, thus, are not
exclusive to specific type of network.

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Peer-to-peer
Patent Owner argued that cited publications do not describe peer-to-peer
networks. Resp’t Br. 8, 10, 14, 15. This argument is not supported by a
preponderance of the evidence.
Peer-to-peer networks are defined in this proceeding as a network of
modules where each module can initiate messages that are sent directly to other
modules to which they are connected. The characteristic is expressly disclosed in
Dailey (D2, D3), Welch (W5), Janke (J3), Bosch (B3), and Heins (H2-H4; see
’511 Dec. 8-12 finding that Heins describes a peer-to-peer communication
network).
V. SUMMARY
The Examiner’s determination confirming the patentability of claim 13 is
REVERSED. A new ground of rejection of claim is entered as follows: Claim 13
is rejected under 35 U.S.C. § 103(a) as obvious over Travis in view of Dailey,
Welch, Janke, Heins, and/or Bosch.

VI. NEW GROUND OF REJECTION

This decision contains a new ground of rejection pursuant to 37 C.F.R.
§ 41.77(b) which provides that “[a]ny decision which includes a new ground of
rejection pursuant to this paragraph shall not be considered final for judicial
review.” Correspondingly, no portion of the decision is final for purposes of
judicial review. A requester may also request rehearing under 37 C.F.R. § 41.79, if
appropriate; however, the Board may elect to defer issuing any decision on such
request for rehearing until such time that a final decision on appeal has been issued
by the Board.
For further guidance on new grounds of rejection, see 37 C.F.R. § 41.77(b)-
(g). The decision may become final after it has returned to the Board. 37 C.F.R.
§ 41.77(f).
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Patent 7,568,246 B2

20

37 C.F.R. § 41.77(b) also provides that the Patent Owner, WITHIN ONE
MONTH FROM THE DATE OF THE DECISION, must exercise one of the
following two options with respect to the new grounds of rejection to avoid
termination of the appeal as to the rejected claims:
(1) Reopen prosecution. The owner may file a response requesting
reopening of prosecution before the examiner. Such a response must be either an
amendment of the claims so rejected or new evidence relating to the claims so
rejected, or both.
(2) Request rehearing. The owner may request that the proceeding be
reheard under § 41.79 by the Board upon the same record. . . .
Any request to reopen prosecution before the examiner under 37 C.F.R.
§ 41.77(b)(1) shall be limited in scope to the “claims so rejected.” Accordingly, a
request to reopen prosecution is limited to issues raised by the new ground(s) of
rejection entered by the Board. A request to reopen prosecution that includes
issues other than those raised by the new ground(s) is unlikely to be granted.
Furthermore, should the patent owner seek to substitute claims, there is a
presumption that only one substitute claim would be needed to replace a cancelled
claim.
A requester may file comments in reply to a patent owner response.
37 C.F.R. § 41.77(c). Requester comments under 37 C.F.R. § 41.77(c) shall be
limited in scope to the issues raised by the Board’s opinion reflecting its decision
to reject the claims and the patent owner’s response under paragraph 37 C.F.R.
§ 41.77(b)(1). A newly proposed rejection is not permitted as a matter of right. A
newly proposed rejection may be appropriate if it is presented to address an
amendment and/or new evidence properly submitted by the patent owner, and is
presented with a brief explanation as to why the newly proposed rejection is now
necessary and why it could not have been presented earlier.
Compliance with the page limits pursuant to 37 C.F.R. § 1.943(b), for all
patent owner responses and requester comments, is required.
The examiner, after the Board’s entry of a patent owner response and
requester comments, will issue a determination under 37 C.F.R. § 41.77(d) as to
whether the Board’s rejection is maintained or has been overcome. The
proceeding will then be returned to the Board together with any comments and
reply submitted by the owner and/or requester under 37 C.F.R. § 41.77(e) for
reconsideration and issuance of a new decision by the Board as provided by
37 C.F.R. § 41.77(f).

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Reexamination Control 95/002,051
Patent 7,568,246 B2

21

REVERSED; 41.77(b)

peb

PATENT OWNER:
BARNES & THORNBURG LLP (HILL-ROM)
11 S. Meridian Street
Indianapolis, IN 46204

THIRD PARTY REQUESTER:

Robert A. Surrette
MCANDREWS HELD & MALLOY, LTD
500 West Madison Street
Suite 3400
Chicago, IL 60661