Ex Parte 8,015,025 B2 et al

Patent Trial and Appeal Board

Dec 29, 2016

90013272 (P.T.A.B. Dec. 29, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO.
90/013,272
60683 7590
Robert Bosch LLC
FILING DATE
06/17/2014
12/29/2016
1800 W. Central Road
Mount Prospect, IL 60056
FIRST NAMED INVENTOR
8,015,025 B2
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
l 737.576REX5 7783
EXAMINER
WEHNER, CARY ELLEN
ART UNIT PAPER NUMBER
3993
MAILDATE 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
Ex parte ROBERT BOSCH LLC
Appeal2016-007271
Reexamination Control 90/013,272
Patent 8,015,025 B2
Technology Center 3900
Before MARC S. HOFF, STEPHEN C. SIU, and ERIC B. CHEN
Administrative Patent Judges.
Opinion for the Board filed by Administrative Patent Judge, HOFF
Opinion Dissenting filed by Administrative Patent Judge, SIU
HOFF, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Patent Owner ("Appellant") appeals under 35 U.S.C. § 134 from the
Examiner's Final rejection of claims 3, 12, 13, and 18-21. Claims 1, 2, 4-
11, 14-17, 22, and 23 are not subject to reexamination. 1 Ans. 2. We have
jurisdiction under 35 U.S.C. §§ 134(b) and 306.
1 Claims 1, 2, 5-15, and 17-23 are rejected in merged inter partes
reexamination proceedings 95/002, 172 and 95/002,276. Claim 3 is the only
claim rejected on prior art grounds in the present proceeding. Ans. 16.
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We REVERSE.
The '025 patent issued to Brown on September 6, 2011, and is
assigned to Robert Bosch LLC. The '025 patent is a health monitoring
system that includes a plurality of remote user sites. Each user site
comprises at least one health monitoring device for collection of user health
monitoring data; an interactive video device; and a user interface apparatus.
At least one remote computing facility is configured to receive health
monitoring data-related signals from the plurality of remote user sites. At
least one computer is configured for signal communication with the remote
computing facility. The interactive video device is interactively coupled
with the remote computing facility. See Abstract.
Claim 1 below illustrates the claims on appeal:
1. A method for communicating with a server, comprising
the steps of:
(A) collecting information at a device, wherein (i) said
device is associated with an individual, (ii) said device
comprises a microprocessor-based unit capable of
receiving a computer program from said server and (iii)
said computer program, when executed by said device,
collects physiological information from said individual;
(B) establishing a first communication link between
said device and said server, wherein said device is
remotely located from said server;
(C) transmitting said information from said device to
said server and terminating said first communication link;
(D) processing said information in said server to
generate processed information after said first
communication link is terminated; and
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(E) transmitting health related material based on said
processed information from said server to said device after
said device establishes a second communication link.
The Examiner relies upon the following prior art in rejecting the
claims on appeal:
Dunning et al. us 4,296,756 Oct.27, 1981
("Dunning")
Fu et al. us 4,803,625 Feb. 7, 1989
("Fu")
Clough et al. us 5,379,057 Jan. 3, 1995
("Clough")
Brown US 7 ,827 ,040 B2 Nov. 2, 2010
("Brown '040")
Brown US 8,712,790 Bl Apr. 29, 2014
("Brown '790")
Throughout this decision, we make reference to Appellant's Brief
("App. Br.," filed March 4, 2016), the Examiner's Answer ("Ans.," mailed
April 20, 2016), and the Reply Brief ("Reply Br.," filed June 20, 2016) for
their respective details.
REJECTIONS
The claims stand rejected as follows: 2
Claim 3 stands rejected under 35 U.S.C. § 103 as being unpatentable
over Fu, Clough, and Dunning. Ans. 17.
2 The § 103 rejection of claims 1, 2, 5-15, and 17-23 has been withdrawn
by the Examiner. Ans. 15. The obviousness-type double patenting rejection
of claim 22 has also been withdrawn by the Examiner. Id.
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Claims 12 and 18 stand rejected under the judicially-created doctrine
of obviousness-type double patenting as being unpatentable over claims 4 7,
64, and 74 of Brown '040 and Dunning. Ans. 4.
Claim 13 stands rejected under the judicially-created doctrine of
obviousness-type double patenting as being unpatentable over claims 4 7, 64,
65, 67, and 70 of Brown '040 and Dunning. Ans. 8.
Claims 19-21 stand rejected under the judicially-created doctrine of
obviousness-type double patenting as being unpatentable over claims 1, 4,
18, 24, and 26 of Brown '040 and Dunning. 3 Id.
Claim 19 stands rejected under the judicially-created doctrine of
obviousness-type double patenting as being unpatentable over claims 1-3
and 12 of Brown '790 and Dunning. Ans. 12.
Claim 20 is rejected on the ground of nonstatutory double patenting as
being unpatentable over claims 1, 4, 18, 24, 26 and 22 of Brown '040 and
Dunning. Ans. 12.
ANALYSIS
REJECTION OF CLAIM 3 OVER Fu, CLOUGH, AND DUNNING
We are persuaded by Appellant's arguments that it would not have
been obvious to modify Fu and Clough with the teachings of Dunning.
Claim 3, dependent from claim 1, includes the limitations of claim 1
of "collecting information at a device ... associated with an individual,"
3 The nonstatutory double patenting rejection of claim 22 over claims 1, 4,
18, 24, and 26 of Brown '040 in combination with Dunning has been
withdrawn by the Examiner. Ans. 15.
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where the device executes a computer program that collects physiological
information from said individual; transmitting said physiological
information from said device to a server; processing said physiological
information in said server to generate processed information; transmitting
health related material based on said processed information from said server
to said device (which is associated with an individual), wherein the health
related material comprises a value calculated in response to said
physiological information.
The Examiner relies on Dunning for the final limitation, contained in
claim 3, "wherein said health related material comprises a value calculated
in response to said information." "Said information" finds antecedent basis
in the "physiological information" collected from the individual "associated"
with the device. Thus claim 3 calls for calculating a value in response to
physiological information collected from an individual at the location of one
of the devices of claim 1, which are typically located in individuals' homes.
We agree with Appellant that Dunning teaches complex calculations
that are "not of the type that would be sent to a home monitoring patient."
App. Br. 28. Dunning teaches the calculation of pulmonary function data
including "PVC, FEV 0.5, FEV1, FEV3, FEVi/FVC, FEF2s, FEFso, FEF7s,
FEF2s-7s, FEF(max), comparisons of these values with predicted normal for
the patient's age, height, etc., and a verbal description of the interpretations
of these values." Dunning col. 9, 11. 29-33. We agree with Appellant that
these calculations are not "useful to or even comprehensible to a non-
medically trained patient."
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The Examiner finds that "Dunning does disclose that the patient may
be the operator of the remote device," quoting Dunning that "[t]he patient
then is instructed on how to perform the maneuver." Ans. 19 (citing
Dunning col. 11: 14--15). The Examiner fails to quote the entire relevant
passage, however: "[ t ]he patient then is instructed on how to perform the
maneuver by the display and by the technician or doctor running the test,
fitted with nose clips and placed in the sitting position." Dunning col.
11: 14--18. "The display provides the technician and the patient with positive
feedback for correct maneuver performance." Dunning col. 11 :21-23. We
therefore agree with Appellant that Dunning "teaches a device operated by a
technician or doctor," not a device "intended for home health monitoring."
Reply Br. 7.
Dunning thus does not teach tests that are designed for unsupervised
use by a patient, and we agree with Appellant that "the Examiner cannot
establish that one would modify Fu to carry out the tests taught by Dunning"
(Reply Br. 7), or modify Fu to transmit health related material comprising a
value calculated in response to (physiological) information, as recited in
claim 3. Accordingly, we do not sustain the Examiner's§ 103 rejection of
claim 3 over Fu, Clough, and Dunning.
DOUBLE PA TENTING REJECTION OF CLAIMS 12 AND 18 OVER CLAIMS 4 7, 64,
AND 74 OF BROWN '040 AND DUNNING
Claim 12 requires that "said one or more computers [to which health
related material is transmitted from the server] are remotely located from
both (i) said device and (ii) said server." Claim 18 depends from claim 12.
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The Examiner finds that "the [healthcare professional] computer is
remote from the central server" because " [ c] laim 7 4 specifies that the
healthcare professional computer receives a report after transmitting an
authorization code to the 'central' server," and because "it would be
inconvenient to locate all of the healthcare professional computers in the
same location (near the server) because the healthcare professionals would
have to leave their offices to get the reports generated by the central server."
Ans. 22. We do not agree with the Examiner's findings, because claims 47,
64, and 74 of Brown '040 do not recite transmitting health related material
from said server to "one or more computers" that are remotely located from
both the server and the "devices" that collect individual physiological
information. We agree with Appellant that the fact that the "healthcare
professional computer" of Brown '040 transmits information to a central
server does not mean that it is remotely located from the server. See App.
Br. 31-32. Dunning does not remedy this deficiency of the Examiner's
rejection.
Accordingly, we do not sustain the obviousness-type double patenting
rejection of claims 12 and 18 over claims 4 7, 64, and 7 4 of Brown '040 in
combination with Dunning.
REJECTION OF CLAIM 13 OVER CLAIMS 47, 64, 65, 67, AND 70 OF BROWN '040
AND DUNNING
Claims 67 and 70 of Brown '040 do not depend from each other.
Claims 67 and 70 of Brown '040 each depend from claim 64, which itself
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ultimately depends from independent claim 47. Claims 67 and 70 therefore
do not define a single prior claimed invention.
MPEP § 804 states, in pertinent part:
[T]he factual inquiries set forth in Graham v. John Deere
Co.,[ of Kansas City] 383 U.S. 1,[] 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) Detennine 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 detem1ined in (A) and the c lairn in the
application at issue:
(C) Determine the level of ordinary skill in the pertinent art;
and
(D) Evaluate any objective indkia of nonobviousness"
Any nonstatutory double patenting rejection made under the
obviousness analysis should make clear:
(A) The di fforences 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.
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T'vfPEP § 804JI.B.2 (Rev. 7i 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).4 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.
Accordingly, the Examiner erred in rejecting appealed claim 13 over
plural claims (67 and 70) of Brown '040, not in the same chain of
dependency, in an obviousness-type double patenting rejection. We do not
sustain the Examiner's obviousness-type double patenting rejection of claim
13 over Brown '040 in combination with Dunning.
REJECTION OF CLAIMS 19-21 OVER CLAIMS 1, 4, 18, 24, AND 26 OF BROWN
'040 IN COMBINATION WITH DUNNING
Appellant correctly points out that claims 24 and 26 of Brown '040 do
not depend from each other. App. Br. 39. Claims 24 and 26 of Brown '040
each depend from claim 18, which itself depends from independent claim 1.
Claims 1, 4, 18, 24, and 26 do not define a single prior claimed invention.
As explained supra, the steps of the obviousness analysis enumerated
in the MPEP make clear at every pertinent step that a single patent claim
4 See, e.g., In re Basel! Poliolefine Italia SP.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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shall be compared with a claim in the application under examination (or
appeal). 5 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.
Accordingly, the Examiner erred in rejecting appealed claims 19-21
over plural claims (24 and 26) of Brown '040, not in the same chain of
dependency, in an obviousness-type double patenting rejection. We do not
sustain the Examiner's obviousness-type double patenting rejection of
claims 19-21 over Brown '040 in combination with Dunning.
DOUBLE PATENTING REJECTION OF CLAIM 19 OVER CLAIMS 1-3 AND 12 OF
BROWN '790 AND DUNNING
Claim 3 of Brown '790 depends from claim 2, which depends from
independent claim 1. Claim 12 of Brown '790 depends only from
independent claim 1. Similar to the rejection of claims 19-21 over claims of
Brown '040 in combination with Dunning, analyzed supra, the Examiner
erred in rejecting appealed claim 19 over plural claims (3 and 12) of Brown
'790, not in the same chain of dependency, in an obviousness-type double
patenting rejection. We do not sustain the Examiner's obviousness-type
double patenting rejection of claim 19 over Brown '790 and Dunning.
5 See, e.g., In re Basel! Poliolefine Italia SP.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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The Examiner's decision to reject claims 3, 12, 13, and 18-21 is
reversed.
REVERSED
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UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ROBERT BOSCH LLC
Appeal2016-007271
Reexamination Control 90/013,272
Patent 8,015,025 B2
Technology Center 3900
Before MARC S. HOFF, STEPHEN C. SIU, and ERIC B. CHEN
Administrative Patent Judges.
SIU, Administrative Patent Judge, dissenting
I respectfully dissent from my colleagues' opinion and would affirm
the Examiner's rejection of claim 3 under 35 U.S.C. § 103(a) as
unpatentable over Fu, Clough, and Dunning. Ans. 1 7.
Claim 3, which depends from claim 1, recites transmitting information
from a remote device to a server, processing the information at the server to
generate processed information, and transmitting health related material
from the server to the remote device, the health related material being based
on the processed information and comprising a value calculated in response
to the information.
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The Examiner states that Fu discloses a remote device, transmitting
information from the remote device to the server, processing the information
in the server, and transmitting health related material that is "based on the
processed information" to the device from the server. Ans. 2-3. The
Examiner finds that Dunning also discloses a "central computer [that]
interprets the information [received from a remote device] and sends a report
(health related material) ... to the remote computer" and that the health
related material sent from the central computer contains "values [that] are
calculated based on the information." Ans. 4 (citing Dunning 9:27-33). The
cited portion of Dunning discloses that a "central computer" receives data
and calculates, based on the received data, various pulmonary function test
parameters that are "sent immediately back to the remote unit." Dunning
9:27-33.
As the Majority points out, Patent Owner argues that the pulmonary
function test parameters disclosed by Dunning "are not 'useful to or even
comprehensible to a non-medically trained patient.'" Maj. Op. 5. In other
words, Patent Owner argues that Dunning fails to disclose transmitting
health related material from the server to the remote device wherein the
health related material is useful or comprehensible to a non-medically
trained patient. I note that claim 1 (and dependent claim 3) recites that the
transmitted health related material is based on processed information and
comprises a value calculated in response to information. Neither claim 3 nor
claim 1 also recites or otherwise requires that the health related material
must be useful or comprehensible to any specific person much less a "non-
medically trained patient." For at least the reason, I am not persuaded by
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Patent Owner's argument and I would affirm the Examiner's rejection of
claim 3.
Also, even assuming that claim 1 (and claim 3) recites that the health
related material must be useful and comprehensible to a non-medically
trained patient, in my view, Patent Owner does not demonstrate sufficiently
that parameters from a pulmonary function test in a patient with a pulmonary
medical condition would be "incomprehensible" to every such "non-
medically trained patient." In my view, one of skill in the art would not
understand that every pulmonary patient (even if "non-medically trained")
would not understand results of a pulmonary function test. Given that
patients with a chronic pulmonary medical condition would have likely had
extensive experience with their own illness, it is likely that at least a portion
of those patients would understand or "comprehend" their test results.
In any event, even assuming that claim 1 (and claim 3) recites that the
health related material must be useful and comprehensible to each and every
patient, including those patients who do not understand their test results, I
note that Dunning discloses that the pulmonary function test parameters are
calculated and sent to the remote unit and that the central computer also
includes a "verbal description of the interpretation of these values." Dunning
9:32-33. In my view, one of ordinary skill in the art would understand that a
"verbal description of the interpretation of these [incomprehensible] values"
would be comprehensible to the patient because it would be contrary to
common sense to include a description of the interpretation of results in a
fashion that would be incomprehensible.
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The Majority also points out that Patent Owner argues that "Dunning
'teaches a device operated by a technician or doctor,' not a device 'intended
for home health monitoring"' and agrees with Patent Owner that "Dunning
thus does not teach tests that are designed for unsupervised use by a patient."
Maj. Op. 6 (citing Reply Br. 7). Claim 3 (or claim 1) recites transmitting
health related material based on processed information from a server to a
remote device. Claim 3 (or claim 1) does not also recite "tests that are
designed for unsupervised use by a patient" or any specific use of such (non-
recited) tests. For at least this reason, even assuming that Dunning, in fact,
fails to disclose or suggest "tests that are designed for unsupervised use by a
patient," I cannot agree with the Majority or Patent Owner.
In any event, as described above, the Examiner relies on Fu for
disclosing or suggesting various limitations recited in independent claim 1.
To the extent that Patent Owner argues that Dunning fails to disclose or
suggest one of the specific claim limitations recited in independent claim 1, I
am not persuaded by Patent Owner's argument because one cannot show
nonobviousness by attacking references individually where the rejections are
based on combinations of references. In re Keller, 642 F.2d 413, (CCPA
1981); In re Merck & Co., Inc., 800 F.2d 1091 (Fed. Cir. 1986).
Therefore, I would affirm the Examiner's rejection of claim 3 under
35 U.S.C. § 103(a) as unpatentable over Fu, Clough, and Dunning.
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ROBERT BOSCH LLC
1800 W. CENTRAL ROAD
MOUNT PROSPECT, IL 60056
Cc: Third Party Requester
KYLE E. CONKLIN
STERNE, KESSLER, GOLDSTEIN & FOX PLLC
1100 NEW YORK A VENUE, NW
WASHINGTON, DC 20005
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