Ex Parte 8,015,025 B2 et al

Patent Trials and Appeals Board

Aug 1, 2017

95002172 - (D) (P.T.A.B. Aug. 1, 2017)

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.
95/002,172 09/12/2012 8,015,025 B2 12771.0076USR1 6461
60683 7590 08/01/2017
Robert Bosch LLC
1800 W. Central Road
Mount Prospect, IL 60056
EXAMINER
WEHNER, CARY ELLEN
ART UNIT PAPER NUMBER
3993
MAIL DATE DELIVERY MODE
08/01/2017 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
____________________

MEDTRONIC, INC.
Requester and Cross-appellant

v.

Patent of ROBERT BOSCH HEALTHCARE SYSTEMS, INC.
Patent Owner and Cross-Appellant

____________________

Appeal 2017-005264
Reexamination Control 95/002,172 and 95/002,276
Patent No. US 8,015,025 B2
Technology Center 3900
____________________

Before MARC S. HOFF, STEPHEN C. SIU, and ERIC B. CHEN,
Administrative Patent Judges.

HOFF, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Patent Owner Robert Bosch Healthcare Systems, Inc. appeals under
35 U.S.C. §§ 134(b) and 315(a) (2002) from the rejection of claims 1, 2, and
4–23 as set forth in the Right of Appeal Notice (RAN) mailed December 18,
2014. Patent Owner filed a second replacement brief (“PO App. Br.”) on
September 21, 2015. Third Party Requester Medtronic, Inc. filed a brief
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(“Req. Br.”) on March 19, 2015 appealing from the non-adoption of the
proposed rejection of claim 3. Requester also filed a brief in response to
Patent Owner (“Req. Resp. Br.”) on October 21, 2015, in support of the
rejection of claims 1, 2, and 4–23. Patent Owner filed a rebuttal brief (“PO
Reb. Br.”) on August 22, 2016. The Examiner mailed an Examiner’s
Answer (“Ans.”) on January 5, 2016 which incorporated the RAN by
reference. We have jurisdiction under 35 U.S.C. §§ 134 and 315.
We affirm-in-part and enter a new ground of rejection.
The ‘025 patent issued to Brown on September 6, 2011 and is
currently assigned to Bosch Healthcare Systems, Inc. The ‘025 patent is a
health monitoring system, in which a plurality of remote user sites each
comprise a health monitoring device, an interactive video device, and a user
interface apparatus. A remote computing facility is configured for signal
communication with the remote user sites, and receives health monitoring
data-related signals from them. 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 illustrates the claims appealed by Patent Owner. Claim 3 is
the claim appealed by Third Party Requester:
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;
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(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
(E) transmitting health related material based on said processed
information from said server to said device after said device establishes a
second communication link.

3. The method according to claim 1, wherein said health related
material comprises a value calculated in response to said information.

The Examiner relies upon the following prior art in rejecting the
claims on appeal:

Carron US 4,724,521 Feb. 9, 1988
Fu US 4,803,625 Feb. 7, 1989
Gombrich US 4,835,372 May 30, 1989
Wahlquist US 5,367,667 Nov. 22, 1994
Clough US 5,379,057 Jan. 3, 1995
Kirk US 5,390,238 Feb. 14, 1995
Chaco US 5,465,082 Nov. 7, 1995

Throughout this decision, we referto Patent Owner’s Second
Replacement Appeal Brief (“PO App. Br.,” filed November 21, 2015),
Requester’s Replacement Appeal Brief (“Req. Br.,” filed May 5, 2015),
Requester’s Response to Patent Owner’s Second Replacement Appeal Brief
(“Req. Resp. Br.,” filed October 21, 2015), Patent Owner’s Replacement
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Rebuttal Brief (“PO Reb. Br.,” filed August 22, 2016), and the Examiner’s
Right of Appeal Notice (“RAN,” filed December 18, 2014) for their
respective details.
REJECTIONS
The claims stand rejected as detailed below (see RAN 8–10). The
following rejections are made under 35 U.S.C. § 103(a).

References Claims
Fu and Clough 1, 2, 5-15, and 17-23
Fu, Clough, and Kirk 4
Fu, Clough, and Chaco 16
Fu and Wahlquist 1, 2, 5-15, and 17-23
Fu, Wahlquist, and Kirk 4
Fu, Wahlquist, and Chaco 16
Fu and Carron 1, 2, 5-15, and 17-23
Fu, Carron, and Kirk 4
Fu, Carron, and Chaco 16
Chaco and Clough 1, 2, 5, 7-13, and 15-23
Chaco, Clough, and Kirk 4
Chaco, Clough, and Gombrich 14
Chaco and Wahlquist 1, 2, 5, 7-13, and 15-23
Chaco, Wahlquist, and Kirk 4
Chaco, Wahlquist, and Gombrich 14
Chaco and Carron 1, 2, 5, 7-13, and 15-23
Chaco, Carron, and Kirk 4
Chaco, Carron, and Gombrich 14
Kirk and Clough 1, 4-9, 11-13, 15, 17-19, 21, and
22
Kirk, Clough, and Chaco 2, 10, 16, 20, and 23
Kirk, Clough, and Gombrich 14
Kirk and Wahlquist 1, 4-9, 11-13, 15, 17-19, 21, and
22
Kirk, Wahlquist, and Chaco 2, 10, 16, 20, and 23
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Kirk, Wahlquist, and Gombrich 14
Kirk and Carron 1, 4-9, 11-13, 15, 17-19, 21, and
22
Kirk, Carron, and Chaco 2, 10, 16, 20, and 23
Kirk, Carron, and Gombrich 14
Gombrich and Clough 1, 2, 5-9, 11-15, and 17-22
Gombrich, Clough, and Kirk 4
Gombrich, Clough, and Chaco 10, 16, and 23
Gombrich and Wahlquist 1, 2, 5-9, 12-15, and 17-22
Gombrich, Wahlquist, and Kirk 4
Gombrich, Wahlquist, and Chaco 10, 11, 16, and 23
Gombrich and Carron 1, 2, 5-9, 12-15, and 17-22
Gombrich, Carron, and Kirk 4
Gombrich, Carron, and Chaco 10, 11, 16, and 23

The following non-adopted grounds of rejection are appealed by Third
Party Requester:
References Claims
Fu and Clough 3
Fu, Wahlquist, and Clough 3
Fu, Carron, and Clough 3
Chaco, Wahlquist, and Clough 3
Chaco, Carron, and Clough 3
Kirk and Clough 3
Kirk, Wahlquist, and Clough 3
Kirk, Carron, and Clough 3
Gombrich and Clough 3
Gombrich and Wahlquist 3
Gombrich and Carron 3

ISSUES
Appellants’ arguments present us with the following dispositive
issues:
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1. Does the combination of Fu and Clough teach or suggest
“processing said information in said server to generate processed
information after said first communication link is terminated?”
2. Does the combination of Fu and Clough teach or suggest
“transmitting health related material based on said processed information
from said server to said device after said device establishes a second
communication link?”
3. Does the combination of Fu and Clough teach or suggest “wherein
said health related material comprises a value calculated in response to said
information?”

PRINCIPLES OF LAW
We review the appealed rejections for error based upon the issues
identified by Owner in its appeal brief, and in light of the arguments and
evidence produced thereon. Cf. Ex parte Frye, 94 USPQ2d 1072, 1075
(BPAI 2010) (precedential) (citing In re Oetiker, 977 F.2d 1443, 1445 (Fed.
Cir. 1992)). “Any arguments or authorities not included in the briefs
permitted under this section or [37 C.F.R.] §§ 41.68 and 41.71 will be
refused consideration by the Board, unless good cause is shown.” 37 C.F.R.
§ 41.66(c)(1)(vii).

ANALYSIS
REJECTION OF CLAIMS 1, 2, 5–15, AND 17–23 OVER FU AND CLOUGH
We are not persuaded by Patent Owner’s argument that the
combination of Fu and Clough fails to teach or suggest “processing said
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information in said server to generate processed information after said first
communication link is terminated,” which is recited in independent claims 1,
12, and 19. See App. Br. 12-15.
We agree with Requester that Fu suggests the obviousness of
processing information in the server after the first communication link is
terminated. As noted by the Requester, Fu teaches uploading data to the
central server from the remote home devices of a patient via a phone line,
and Fu further suggests that the phone connection terminates after
transmission of the patient’s data. Req. Resp. Br. 7, citing Fu col. 14:53–65
and Fig. 14. The Stone Declaration supports the Examiner’s conclusion that
it would have been obvious to terminate the communication link, and then
process information in the server. Regardless of whether or not Dr. Stone’s
statement that “it would be illogical and counterintuitive to maintain the
communication link over a telephone line during the entire cycle of
reception of data and preparation of reports” is fully factually supported (see
PO Reb. Br. 5), we agree with Dr. Stone that as of the 1992 priority date of
the patent application that matured into the ‘025 patent, and as of the 1989
issue date of Fu, it would have been obvious to the person having skill in the
art to generate the report at the central computer after the data transfer took
place, and it would have been obvious to close the communication link as
quickly as possible to keep any particular phone line available. See Stone
Decl. ¶¶ 13, 14.
Patent Owner’s argument that the combination of Fu and Clough does
not teach or suggest “transmitting health related material based on said
processed information from said server to said device after said device
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establishes a second communication link,” as recited in independent claims
1, 12, and 19, is also unpersuasive. See PO App. Br. 15-16.
Patent Owner argues that “[n]othing in Fu indicates that a physician
provides instructions to the patient via the microcomputer (i.e. “server”) 24,”
referring to Fu’s teaching that the microcomputer 24 “includes suitable
programs for preparing appropriate reports, and directing appropriate
instructions or data files, to the respective home units 60.” PO App. Br. 15;
Fu col. 8:4-10. Patent Owner’s argument fails to account for Fu’s further
teaching that “the specific test and medication profiles and the specific
questions included in the question and answer sessions will be modified for
each application as requested by the attending physician.” Fu col. 16:37-41;
see Req. Resp. Br. 8. We agree with Requester that “[t]his modification
would obviously come via instructions or data sent by the central server.”
Req. Resp. Br. 8.
We also agree with Requester’s further argument that Fu teaches that
the central unit “generates reports of logged patient parameters for analysis
of and response by trained medical personnel.” Fu 5:36-38; see Req. Resp.
Br. 9. We agree that one of ordinary skill, reading Fu, would understand
that changes to a patient’s remote treatment plan would come after a doctor
looked at the patient’s health reports. Therefore, such changes would be
based on the processed information. Req. Resp. Br. 9.
With respect to claim 6, Patent Owner’s arguments do not persuade us
that the Examiner erred. See PO App. Br. 19. We agree with Requester that
Fu teaches “prompting the patient with selected messages and for storing a
prescribed parameter schedule for selected ones of the health parameters and
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a prescribed medication schedule for at least one medication.” Fu col. 1:47-
50; see Req. Resp. Br. 10. As mentioned supra, Fu teaches that doctors
modify test and medication profiles for their remote patients. See Fu col.
16:37-40. We agree with Requester’s argument that one of ordinary skill,
reading Fu, would understand that data sent from the server to the remote
device would include these messages. Req. Resp. Br. 11; see Fu col. 8:4-10.
Accordingly, such messages would be stored in the server, and transmitted
from the server upon the establishment of communication, as claim 6 recites.
We conclude that the combination of Fu and Clough teaches or
suggests all the limitations of independent claims 1, 12, and 19, as well as
dependent claims 2, 5–11, 13–15, 17, 18, and 20–23, not separately argued.
We sustain the Examiner’s § 103(a) rejection of claims 1, 2, 5–15, and 17–
23 over Fu and Clough.

REJECTION OF CLAIM 4 OVER FU, CLOUGH, AND KIRK
We are not persuaded by Patent Owner’s argument that the Examiner
erred because he did not provide an example of what educational content of
Kirk would be most effectively displayed graphically. See PO App. Br. 20-
21. Claim 4 contains no requirement regarding “effectiveness.” Rather, we
agree with Requester that the Examiner properly relied on prior art teachings
to recognize that it was obvious to display educational content graphically,
as taught by Clough. Req. Resp. Br. 11; see Clough col. 15:15-29, Figures 5
and 9.
Patent Owner’s contention that the exact disclosed implementations of
Kirk and Clough would not combine with Fu without modification is not
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persuasive to show Examiner error. We agree with the Examiner that the
combination suggests presenting the educational material of Kirk in a
graphical manner. See Req. Resp. Br. 11 and RAN 15–16.
Patent Owner’s further assertion that Clough only teaches the use of
pictograms, or simpler objects such as lines or frames, not animation or
other graphics, is not persuasive to show error. See PO App. Br. 21. Patent
Owner has not presented evidence that the pictograms, lines, and frames of
Clough fail to correspond to the “graphical or animated format” recited in
claim 4.
Because we find that the combination of Fu, Clough, and Kirk
suggests all the limitations of claim 4, we sustain the Examiner’s § 103(a)
rejection.
REJECTION OF CLAIM 16 OVER FU, CLOUGH, AND CHACO
Patent Owner does not present separate argument for the patentability
of claim 16, relying instead on the arguments made with respect to claim 12.
As a result, we sustain the Examiner’s § 103 rejection of claim 16 over Fu,
Clough, and Chaco, for the reasons expressed with respect to the § 103
rejection of claim 12 over Fu and Clough, supra.

APPEAL OF THE NON-ADOPTED PROPOSED REJECTION OF CLAIM 3
We agree with Requester that Fu teaches reports (i.e., health related
material) including at least one value that is calculated in response to
information collected at a device that is associated with an individual
(patient). See Req. Br. 13–15. Fu teaches a UNIX system “which includes
suitable programs for receiving communications from the home units 60,
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preparing appropriate reports, and directing appropriate instructions or data
files to the respective home units 60.” Fu col. 8:4-10; see Req. Br. 14. Fu
teaches a central unit that generates reports of the tests and answers received
from a patient’s home unit. Fu col. 5:36-38; see Req. Br. 14. We agree with
Requester that such reports necessarily include at least one value calculated
based on the information from the patient’s home unit. Req. Br. 14; see
Stone Decl. ¶ 15.
Moreover, we do not agree with Patent Owner’s argument that the
provision of generally “positive and negative indications” do not constitute a
“calculated value,” because such indications are not a numerical quantity.
PO Resp. Br. 8. Claim 3 specifies that the health related material
“comprises a value calculated in response to said information.” In the
invention, said calculations are performed by a computing device, and one
type of value known to be used by conventional computing devices is a
Boolean value that takes on a value of either logically “true” or “false.” As
such, we find that the generally positive and negative indications referred to
in Patent Owner’s arguments fall within the claim scope of “a value
calculated.”
Accordingly, we find that the Examiner erred in not adopting the
proposed rejection of claim 3 over the combination of Fu and Clough.

OTHER REJECTIONS NOT SPECIFICALLY DISCUSSED
In affirming the rejected claims on appeal on these grounds, and
reversing the Examiner’s decision not to adopt a rejection of claim 3, we
decline to address the merits of additional grounds of rejection or non-
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adoption appealed by the Patent Owner and Requester. See Beloit Corp. v.
Valmet Oy, 742 F.2d 1421, 1423 (Fed. Cir. 1984) (having decided a single
dispositive issue, the ITC was not required to review other matters decided
by the presiding officer).

CONCLUSIONS
1. The combination of Fu and Clough suggests “processing said
information in said server to generate processed information after said first
communication link is terminated.”
2. The combination of Fu and Clough suggests “transmitting health
related material based on said processed information from said server to said
device after said device establishes a second communication link.”
3. The combination of Fu and Clough suggests “wherein said health
related material comprises a value calculated in response to said
information.”

ORDER
The Examiner’s decision to reject claims 1, 2, and 4–23 over Fu and
Clough is affirmed.
The Examiner’s decision not to adopt the rejection of claim 3 over Fu
and Clough is reversed.

TIME PERIOD FOR RESPONSE
Pursuant to 37 C.F.R. § 41.77(a), the above-noted reversal with
respect to claim 3 constitutes a new ground of rejection. Section 41.77(b)
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provides that “[a] new ground of rejection . . . shall not be considered final
for judicial review.” That section also provides that 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 proceeding 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. The request for rehearing must address any new
ground of rejection and state with particularity the points
believed to have been misapprehended or overlooked in
entering the new ground of rejection and also state all other
grounds upon which rehearing is sought.

In accordance with 37 C.F.R. § 41.79(a)(1), the “[p]arties to the
appeal may file a request for rehearing of the decision within one month of
the date of: . . . [t]he original decision of the Board under § 41.77(a).” A
request for rehearing must be in compliance with 37 C.F.R. § 41.79(b).
Comments in opposition to the request and additional requests for
rehearing must be in accordance with 37 C.F.R. § 41.79(c)–(d),
respectively. Under 37 C.F.R. § 41.79(e), “[t]he times for requesting
rehearing under paragraph (a) of this section, for requesting further
rehearing under paragraph (c) of this section, and for submitting comments
under paragraph (b) of this section may not be extended.”
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An appeal to the United States Court of Appeals for the Federal
Circuit under 35 U.S.C. §§ 141–144 and 315 and 37 C.F.R. § 1.983 for an
inter partes reexamination proceeding “commenced” on or after November
2, 2002 may not be taken “until all parties’ rights to request rehearing have
been exhausted, at which time the decision of the Board is final and
appealable by any party to the appeal to the Board.” 37 C.F.R. § 41.81; see
also MPEP §§ 2682, 2683 (8th ed., Rev. 8, July 2010).
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
Requests for extensions of time in this inter partes reexamination
proceeding are governed by 37 C.F.R. § 1.956. See 37 C.F.R. § 41.79.
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-IN-PART; 37 C.F.R. § 41.77(b)

sl

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For PATENT OWNER

Robert Bosch LLC
1800 W. Central Road
Mount Prospect, IL 60056

For THIRD PARTY REQUESTER

Merchant & Gould PC
P.O. Box 2903
Minneapolis, MN 55402-0903