95002199 (P.T.A.B. May. 29, 2015)

Ex Parte 7941327 et al

Patent Trial and Appeal BoardMay 29, 2015

95002199 (P.T.A.B. May. 29, 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. 95/002,199 09/12/2012 7941327 12771.0076USR4 4775 60683 7590 05/29/2015 Robert Bosch Healthcare Systems, Inc. 2400 GENG ROAD, SUITE 200 PALO ALTO, CA 94303 EXAMINER ESCALANTE, OVIDIO ART UNIT PAPER NUMBER 3992 MAIL DATE DELIVERY MODE 05/29/2015 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 ____________________ CARDIOCOM LLC. and MEDTRONIC, INC. Requester and Respondent v. ROBERT BOSCH HEALTHCARE SYSTEMS, INC. Patent Owner and Appellant ____________________ Appeal 2015-001461 Reexamination Control 95/002,199 Patent No. 7,941,327 B2 Technology Center 3900 ____________________ Before MARC S. HOFF, BRADLEY W. BAUMEISTER, and ERIC B. CHEN, Administrative Patent Judges. HOFF, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Patent Owner Robert Bosch Healthcare Systems, Inc. appeals under 35 U.S.C. §§ 134(b) and 315(a) (2002) from the rejection of claims 1-85 as set forth in the Right of Appeal Notice (RAN) mailed November 8, 2013. Patent Owner Robert Bosch Healthcare Systems, Inc. filed a brief (“PO App. Appeal 2015-001461 Reexamination Control 95/002,199 Patent No. 7,941,327 B2 2 Br.”) on March 26, 2014. Third Party Requester Cardiocom LLC and Medtronic, Inc. filed a Respondent’s Brief (“Resp. Br.”) on April 25, 2014. The Examiner mailed an Examiner’s Answer (“Ans.”) on June 20, 2014, which incorporated the RAN by reference. We have jurisdiction under 35 U.S.C. §§ 134 and 315. We affirm. The ’327 Patent issued to Brown on May 10, 2011, and is assigned to Robert Bosch Healthcare Systems, Inc. (App. Br. 3). The ’327 Patent concerns a health care monitoring device used by a patient (a “user”), for example at a patient’s home, that may be remotely monitored by an authorized user (such as a physician or nurse). One or more such remote user-monitoring subsystems are configured for signal communication with a central server. An authorized-user computer is remotely located from the central server and the user monitoring devices. The authorized user may receive reports from the central server based on user-related data collected by the remote user-monitoring subsystem(s), including at least information on the current condition of the remote user(s). Abstract; Spec. cols. 4-6. Claim 1 is exemplary of the claims on appeal: 1. A user-based monitoring system, comprising: (a) at least one remote user-monitoring subsystem configured to facilitate collection of user-related physiological data and including at least one monitoring unit, said remote user-monitoring subsystem comprises a microprocessor-based unit configured to receive a computer program, wherein said computer program, when executed, collects said user-related physiological data; Appeal 2015-001461 Reexamination Control 95/002,199 Patent No. 7,941,327 B2 3 (b) at least one central server remotely located from the remote user-monitoring subsystem and configured for communication with the remote user-monitoring subsystem to (i) receive signal communications therefrom and (ii) send said computer program to said remote user-monitoring subsystem; and (c) at least one authorized-user computer remotely located from, and configured for two-way signal communication with, the central server to allow an authorized- user to communicate with the central server upon transmitting an identifying authorization code and receive reports, based on said user-related physiological data collected by said remote user-monitoring subsystem, from the central server, wherein the reports include at least information on the current condition of a remote user being monitored. The Examiner relies upon the following prior art in rejecting the claims on appeal: Fu US 4,803,625 Feb. 07, 1989 Gombrich US 4,835,372 May 30, 1989 Wahlquist US 5,367,667 Nov. 22, 1994 Clough US 5,379,057 Jan. 03, 1995 Kirk US 5,390,238 Feb. 14, 1995 Chaco US 5,465,082 Nov. 07, 1995 The claims stand rejected over various combinations of prior art references (see PO App. Br. 8-10): References Claims Basis (§) Chaco and Clough 24-29, 38, 52, 53, 59- 62, 66-68, 70-74, 77- 80, 82, 83, and 85 103(a) Appeal 2015-001461 Reexamination Control 95/002,199 Patent No. 7,941,327 B2 4 Chaco, Clough, and Gombrich 30-37, 55-58, 64, 65, 69, and 84 103(a) Chaco, Clough, and Kirk 54, 63, 75, and 81 103(a) Chaco, Clough, Kirk, and Gombrich 76 103(a) Chaco and Wahlquist 24-29, 38, 52, 53, 59- 62, 66-68, 70-74, 77- 80, 82, 83, and 85 103(a) Chaco, Wahlquist, and Gombrich 30-37, 55-58, 64, 65, 69, and 84 103(a) Chaco, Wahlquist, and Kirk 23, 54, 63, 75, and 81 103(a) Chaco, Wahlquist, Kirk, and Gombrich 76 103(a) Gombrich and Clough 1-9, 11-16, 18-22, 24- 41, 44-46, 48-53, 55- 59, 61, 62, 64-74, 77- 80, and 82-85 103(a) Gombrich, Clough, and Kirk 10, 23, 42, 43, 47, 54, 63, 75, 76, and 81 103(a) Gombrich, Clough, and Chaco 17 and 60 103(a) Gombrich and Wahlquist 1-9, 11-16, 18-22, 24- 41, 44-46, 48-53, 55- 59, 61, 62, 64-74, 77- 80, and 82-85 103(a) Gombrich, Wahlquist, and Kirk 10, 23, 42, 43, 47, 54, 63, 75, 76, and 81 103(a) Gombrich, Wahlquist, and Chaco 17 and 60 103(a) Kirk, Gombrich, and Clough 1-85 103(a) Kirk, Gombrich, and Wahlquist 1-85 103(a) Fu, Gombrich, and Clough 1-9, 11-22, 24-41, 44- 46, 48-53, 55-62, 64- 74, 77-80, and 82-85 103(a) Fu, Gombrich, Clough, and Kirk 10, 23, 42, 43, 47, 54, 63, 75, 76, and 81 103(a) Fu, Gombrich, and Wahlquist 1-9, 11-22, 24-41, 44- 46, 48-53, 55-62, 64- 74, 77-80, and 82-85 103(a) Fu, Gombrich, Wahlquist, and Kirk 10, 23, 42, 43, 47, 54, 103(a) Appeal 2015-001461 Reexamination Control 95/002,199 Patent No. 7,941,327 B2 5 63, 75, 76, and 81 ISSUES Patent Owner argues, inter alia, that the rejections fail to provide a legally sufficient rationale for combining the references to include a server that sends computer programs to a remote patient subsystem. With specific reference to the rejection over Kirk, Gombrich, and Clough, Patent Owner argues that transmitting computer programs to a remote user is not “the entire stated advantage of Clough” as asserted by the Examiner (App. Br. 29). Patent Owner further argues that central server 38 of Kirk does not control the operation of remote health support units 30 (Id.). Patent Owner contends that the combination of Kirk, Gombrich, and Clough does not disclose or suggest an authorized-user computer as recited in the claims (App. Br. 30). With respect to dependent claims 13 and 51, Patent Owner asserts that the proposed combination of Kirk, Gombrich, and Clough does not disclose enabling the user to respond using a cursor. Patent Owner argues that the “user” in Gombrich is the health-care professional, not the patient being monitored (App. Br. 23). The arguments made by Patent Owner present us with the following issues: 1. Did the Examiner state a legally sufficient rationale for combining Kirk, Gombrich, and Clough? 2. Does Clough suggest the desirability of transmitting computer programs to remote users? Appeal 2015-001461 Reexamination Control 95/002,199 Patent No. 7,941,327 B2 6 3. Do the claims recite central control of the operation of remote monitoring units? 4. Does the combination of Kirk, Gombrich, and Clough disclose an authorized-user computer as claimed? 5. Does the combination of Kirk, Gombrich, and Clough disclose enabling a user to respond using a cursor or other indicator? PRINCIPLES OF LAW [W]hen a patent “simply arranges old elements with each performing the same function it had been known to perform” and yields no more than one would expect from such an arrangement, the combination is obvious. KSR Int’l v. Teleflex Inc., 550 U.S. 398, 417 (2007) (quoting Sakraida v. AG Pro, Inc., 425 U.S. 273, 282 (1976)). In KSR, the Supreme Court emphasized “the need for caution in granting a patent based on the combination of elements found in the prior art,” id. at 415, and discussed circumstances in which a patent might be determined to be obvious. In particular, the Supreme Court emphasized that “the principles laid down in Graham reaffirmed the ‘functional approach’ of Hotchkiss, [52 U.S. 248 (1850)],” id. (citing Graham v. John Deere Co., 383 U.S. 1, 12 (1966) (emphasis added)), and reaffirmed principles based on its precedent that “[t]he combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results.” Id. at 416. The Court explained: When a work is available in one field of endeavor, design incentives and other market forces can prompt variations of it, Appeal 2015-001461 Reexamination Control 95/002,199 Patent No. 7,941,327 B2 7 either in the same field or a different one. If a person of ordinary skill can implement a predictable variation, § 103 likely bars its patentability. For the same reason, if a technique has been used to improve one device, and a person of ordinary skill in the art would recognize that it would improve similar devices in the same way, using the technique is obvious unless its actual application is beyond his or her skill. Id. at 417. The operative question in this “functional approach” is thus “whether the improvement is more than the predictable use of prior art elements according to their established functions.” Id. ANALYSIS REJECTION OVER KIRK, GOMBRICH, AND CLOUGH RATIONALE TO COMBINE We are unpersuaded by Patent Owner’s arguments that the Examiner has failed to provide legally sufficient motivation to modify Kirk in view of Gombrich and Clough to arrive at the claimed invention. We agree with the Examiner’s stated rationale that Kirk’s information exchange between the health support unit 30 and the monitoring terminals 44 (Fig. 3) creates a design need or incentive for one of ordinary skill in the art to seek out suitable techniques, such as the distribution of program updates to remote devices mentioned in Clough, to perform these functions (RAN 38; Resp. Br. 13). It does not matter that Clough does not exclusively prefer the transmission of programs over any other method of program transfer (see App. Br. 29); all that is required is that Clough merely discloses such downloading to remote computers. Appeal 2015-001461 Reexamination Control 95/002,199 Patent No. 7,941,327 B2 8 Patent Owner’s argument that Kirk does not disclose a central server that “centrally controls” the operation of the remote subsystem (App. Br. 29) is not persuasive, as it is not germane to the claimed invention. No such “central control” is recited in the claims. AUTHORIZED USER COMPUTER Patent Owner’s contention that the Examiner’s combination does not teach or suggest an “authorized-user computer” (App. Br. 30) is not persuasive. Patent Owner argues that Gombrich does not teach an authorized-user computer that is configured for two-way signal communication with the central server to allow an authorized user to communicate with the central server upon transmitting an identifying authorization code (App. Br. 30). Patent Owner asserts that Gombrich discloses a nurse using bar code reading device 48 to read her own identifying bar code badge to access the system and to identify herself (col. 16, ll. 18-21; App. Br. 20). Patent Owner contends that the Examiner equates terminal 45, not bar code reading device 48, with the authorized-user computer of the claims (App. Br. 20; RAN 22, 73). We agree with the Examiner’s finding, however, that terminal 45 corresponds to the claimed “authorized-user computer.” As discussed supra, Gombrich discloses that bar codes may be used for user access authentication as well as such other uses as patient and medication tracking (col. 16, ll. 18-21). Gombrich further discloses that terminal 45 is equipped with bar code wand 123 (Fig. 1; col. 12, ll. 40-43). It is clear, then, that an authorized user located at, for example, a nurses’ station (see col. 9, l. 38), Appeal 2015-001461 Reexamination Control 95/002,199 Patent No. 7,941,327 B2 9 may authenticate his or her use of the authorized-user computer (terminal 45) using bar code reader 123, just as a nurse working in a patient’s room (col. 16, ll. 18-21) may do. We, therefore, find that Gombrich discloses terminal 45 allowing an authorized user to communicate with the central server upon transmitting an identifying authorization code, as the claims recite. Because we are not persuaded that the Examiner erred in rejecting claims 1-12, 14-50, and 52-85, we sustain the § 103 rejection over Kirk, Gombrich, and Clough. CLAIMS 13 AND 51 We do not find Patent Owner’s argument concerning claims 13 and 51 persuasive to establish that the Examiner erred. Patent Owner contends that Gombrich does not disclose that a patient or other user being monitored is enabled to use keypad 356 or portable device 320, and argues that Gombrich discloses that portable device 320 is limited to use by hospital staff, not the patient or user being monitored (App. Br. 23; Gombrich col. 27, ll. 16-25). The ’327 Patent’s specification does not specify the identity of the “user” in the manner that Patent Owner argues. The ’327 Patent, at various points, refers to “remote user-monitoring” (e.g. claim 1 and 24) and “allow[ing] an authorized user to communicate with the central server” (e.g. claims 24 and 39). We agree with Requester that the broadest reasonable interpretation of “user” in claims 13 and 51, therefore, may refer to either a patient (a remote user being monitored) or a health care professional (an authorized user who communicates with the central server) (Resp. Br. 10). Appeal 2015-001461 Reexamination Control 95/002,199 Patent No. 7,941,327 B2 10 Gombrich discloses such an “authorized user” enabled to use a keypad (RAN 79-80; Gombrich cols. 28-30). We conclude that the Examiner did not err in rejecting claims 13 and 51 over Kirk, Gombrich, and Clough, and we sustain the rejection. REJECTIONS BASED ON OTHER PRIOR ART COMBINATIONS Affirmance of the rejection of claims 1-85 based on Kirk, Gombrich, and Clough renders it unnecessary to reach the propriety of the Examiner’s decision to reject those claims on a different basis. Cf. In re Gleave, 560 F.3d 1331, 1338 (Fed. Cir. 2009). CONCLUSIONS 1. The Examiner stated a legally sufficient rationale for combining Kirk, Gombrich, and Clough. 2. Clough suggests the desirability of transmitting computer programs to remote users. 3. The claims do not recite central control of the operation of remote monitoring units. 4. The combination of Kirk, Gombrich, and Clough discloses an authorized-user computer as claimed. 5. The combination of Kirk, Gombrich, and Clough discloses enabling a user to respond using a cursor or other indicator. Appeal 2015-001461 Reexamination Control 95/002,199 Patent No. 7,941,327 B2 11 ORDER The Examiner’s rejection of claims 1-85 is affirmed. In the event neither party files a request for rehearing within the time provided in 37 C.F.R. § 41.79, and this decision becomes final and appealable under 37 C.F.R. § 41.81, a party seeking judicial review must timely serve notice on the Director of the United States Patent and Trademark Office. See 37 C.F.R. §§ 90.1 and 1.983. AFFIRMED peb PATENT OWNER: ROBERT BOSCH HEALTHCARE SYSTEMS, INC. 2400 Geng Road, Suite 200 Palo Alto, CA 94303 THIRD PARTY REQUESTOR: MERCHANT & GOULD PC P.O. Box 2903 Minneapolis, MN 55402-0903