Ex Parte 8140663 et al

Patent Trial and Appeal Board

Sep 15, 2016

90013105 (P.T.A.B. Sep. 15, 2016)

UNITED STATES PATENT AND TRADEMARKOFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
90/013,105 02/05/2014 8140663 1737.563REX6 1045
60683 7590 09/15/2016
Robert Bosch LLC
1800 W. Central Road
Mount Prospect, IL 60056
EXAMINER
MENEFEE, JAMES A
ART UNIT PAPER NUMBER
3992
MAIL DATE DELIVERY MODE
09/15/2016 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 STEPHEN J. BROWN
____________________

Appeal 2016-000698
Reexamination Control 90/013,105
Patent 8,140,663 B2
Technology Center 3900
____________________

Before MARC S. HOFF, ERIC B. CHEN, and JUSTIN T. ARBES,
Administrative Patent Judges.

HOFF, Administrative Patent Judge.

DECISION ON REQUEST FOR REHEARING
Appeal 2016-000698
Reexamination Control 90/013,105
Patent No. 8,140,663 B2

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INTRODUCTION
Patent Owner requests rehearing of our Decision mailed April 1, 2016
(“Decision”), in which we affirmed the rejection of claims 16, 17, 36, and
37.1
OPINION
We will maintain the rejections.

PRINCIPLES OF LAW
37 C.F.R. § 41.52 states in relevant part (emphasis added):
(a)(1) Appellant may file a single request for rehearing
within two months of the date of the original decision of the
Board. . . . The request for rehearing must state with particularity
the points believed to have been misapprehended or overlooked
by the Board. Arguments not raised, and Evidence not
previously relied upon, are not permitted in the request for
rehearing except as permitted by paragraphs (a)(2) through
(a)(4) of this section. . . .
(2) Appellant may present a new argument based upon a
recent relevant decision of either the Board or a Federal Court.
(3) New arguments responding to a new ground of
rejection designated pursuant to § 41.50(b) are permitted.
(4) New arguments that the Board’s decision contains an
undesignated new ground of rejection are permitted.

PROSECUTION HISTORY
The Examiner, in the Decision Granting Ex Parte Reexamination
mailed February 20, 2014 (“Reexam. Grant.”), found a substantial new

1 Claims 1, 5, 22, 34, and 35 were conditionally confirmed by the Examiner.
Decision 1; Final Action, mailed January 29, 2015, at 5 (“Final Act.”).
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question of patentability (SNQ) with regard to claims 16, 17, 36, and 37 over
the combination of Chaco, Wright, and Evers PCT, or alternatively over
Evers PCT and Wright. Reexam. Grant. 10. Claims 16 and 17 depend from
independent claim 5. Claims 36 and 37 depend from independent claim 22.
The Examiner also found a SNQ with regard to claims 1, 5, and 22
concerning obviousness-type double patenting over Brown ’440 in
combination with Wright. Reexam. Grant. 13.
Subsequently, the Examiner rejected claims 16, 17, 36, and 37 under
§ 103 as being unpatentable over Chaco, Wright, and Evers PCT. Non-Final
Action, mailed July 9, 2014, at 36. The Examiner also rejected claims 5, 15,
22, 34, and 35 under § 103 as being unpatentable over Evers PCT and
Wright.2 Non-Final Action mailed July 9, 2014, at 44.
In the Final Action, the Examiner withdrew the prior art rejection of
claims 1, 5, 22, 34, and 35 and stated that “for the purpose of [the] instant
reexamination, original claims 1, 5, 22, and 34–35 are confirmed,” although
“[t]he status of claims 1, 5, 22, and 34–35 may change based on [a]
successful Issue of Reexamination Certificate for co-pending Inter parte
reexaminations 95/00,2178 merged with 95/002,221 and ex parte
reexamination 90/013,335.” Final Act. 5. The Examiner maintained the
rejection of claims 16, 17, 36, and 37 over Chaco, Wright, and Evers PCT.
Final Act. 44.
In the Appeal Brief, Appellant stated that “[c]laims 1, 5, 22, 34, and
35 are conditionally confirmed” and that:

2 We observe that claim 1 may have been inadvertently omitted from the
statement of rejection in the Non-Final Action mailed July 9, 2014.
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As discussed in the Patent Owner’s papers in the ‘221
Proceeding, the underlying claims 5, 15, 22, 34, and 35 are
[argued to be] allowable over Chaco and Wright. Because the
modifications of Chaco/Wright proposed by the Examiner in the
Office Action do not cure the deficiencies of the Chaco/Wright
combination with respect to claims 5, 15, 22, 34, and 35, it is
respectfully submitted that the rejections of claims 16, 17, 36,
and 37 should be withdrawn for at least this reason.

App. Br. 5, 9. The Appeal Brief then presented detailed arguments for the
patentability of claims 16, 17, 36, and 37, but did not present detailed
arguments for the patentability of claims 5 and 22, with the exception that an
argument was made that the rejection of claim 5 in the ‘221 Proceeding
(Reexamination Control No. 95/002,221) presumes that nurse notepad
terminal 2310/2710 of Chaco constitutes the claimed “remote apparatus,”
but that patient microcomputer 414 of Chaco, as modified by Wright, does
not constitute, and is not asserted to constitute, the claimed “remote
apparatus.” App. Br. 13–14.
The Board’s Decision in the co-pending Merged Reexamination
Proceeding, Appeal No. 2016-000252, Control Nos. 95/002,178 and
95/002,221 (“’221 Decision”), affirmed the rejection of claims 5 and 22 over
the combination of Fu and Clough. ’221 Decision 6–8. The ’221 Decision
did not reach Patent Owner-Appellant’s arguments that claims 5 and 22 are
patentable over Chaco and Wright. See id. at 12; ’221 Patent Owner Appeal
Brief, dated February 10, 2015, at 33–38.
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ARGUMENTS IN REQUEST FOR REHEARING
In the Request for Rehearing, Appellant now argues that because the
Board “has declined to affirm the rejections of underlying claims 5 and 22 in
the ’221[] Decision, arguments are presented herein with respect to that
issue.” Req. Reh’g 2. Appellant first argues that neither Chaco nor Wright
teach or suggest “a monitoring application [in a server] including a program
generator,” as claimed in claim 5. See id. at 3–7. Second, Appellant argues
that neither Chaco nor Wright teach or suggest “executing a customized
program for the individual,” as claimed in claim 5. See id. at 7–9. Appellant
makes similar arguments for claim 22. Id. at 9–10. Last, Appellant
contends that the Board misapprehended Appellant’s argument in the Appeal
Brief that the underlying rejections of claims 5 and 22 are in error. Id. at 10.
ANALYSIS
Appellant’s arguments in the Request for Rehearing are not
persuasive, for two distinct reasons. First, Appellant’s substantive
arguments concerning the patentability of claims 5 and 22 do not concern
points misapprehended or overlooked by the Board, as required by 37 C.F.R.
§ 41.52. Second, Appellant’s substantive arguments were not raised in the
Appeal Brief and therefore are not permitted under § 41.52 to be raised in
the Request for Rehearing.
Appellant, in his arguments concerning Chaco and Wright, does not
raise any points misapprehended or overlooked by the Board, because
Appellant did not present separate argument in favor of the patentability of
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claims 5 and 22 over Chaco and Wright in the Appeal Brief.3 Appellant’s
short statement that he believes claims 5 and 22 to be “allowable over Chaco
and Wright” (App. Br. 9), without any detailed explanation, does not
constitute a separate argument for the patentability of claims 5 and 22 that is
entitled to be given weight by the Board. Whether or not the Board decision
in the ‘221 Proceeding addressed or did not address the patentability of
claims 5 and 22 over Chaco and Wright does not bear on the Request for
Rehearing in the instant reexamination. Further, Patent Owner-Appellant
requested rehearing in the ‘221 Proceeding, and raised no argument in that
rehearing concerning any need for the rejection over Chaco and Wright to be
addressed.
Appellant’s arguments concerning the patentability of claims 5 and 22
over Chaco and Wright were not presented in Appellant’s Brief on Appeal.
Under 37 C.F.R. § 41.52(a)(1), “[a]rguments not raised [in the appeal brief] .
. . are not permitted in the request for rehearing except as permitted by
paragraphs (a)(2) through (a)(4) of this section.” Sections 41.52(a)(3) and
41.52(a)(4) are inapplicable because no new ground of rejection was entered
in the Decision. Section 41.52(a)(2) states that “[a]ppellant may present a
new argument based upon a recent relevant decision of either the Board or a
Federal Court.” Although Appellant has not invoked this subsection to
justify consideration of the Request for Rehearing, we nonetheless

3 As explained above, Appellant argued that the rejection of claim 16 should
be reversed because the Examiner’s finding with respect to the claimed
“remote apparatus” for claim 16 was inconsistent with what the Examiner
found for parent claim 5. App. Br. 12–15. We addressed this argument in
the Decision. Dec. 5–7.
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independently consider § 41.52(a)(2) inapplicable, because we consider a
“relevant” decision under § 41.52(a)(2) to be a decision that offers some new
interpretation, extension, or reversal of statute, regulation, or existing case
law, not merely any Board decision that may concern a related patent
application or reexamination. Because we find no applicable exception to §
41.52(a)(1)’s prohibition on arguments not raised in the Appeal Brief, we
conclude that Appellant is not entitled to raise the arguments he has
attempted to raise concerning the patentability of claims 5 and 22 over the
combination of Chaco and Wright.
Appellant’s alternative ground for rehearing, that Patent
Owner-Appellant allegedly did raise the argument that claims 5 and 22 are
allowable over Chaco and Wright, but that the Board did not address the
rejection (Req. Reh’g 10), also is unpersuasive. As discussed supra,
Appellant’s Appeal Brief states that “the modifications of Chaco/Wright
proposed by the Examiner in the Office Action do not cure the deficiencies
of the Chaco/Wright combination with respect to claims 5, 15, 22, 34, and
35.” App. Br. 9. This statement merely alleges the allowability of claims 5
and 22, and does not argue with particularity why the rejection over Chaco
and Wright was alleged to be in error. Appellant’s Appeal Brief thus did not
present separate argument for the patentability of claims 5 and 22, and
Appellant’s bare mention fails to constitute a point that the Board
misapprehended or overlooked.
We therefore, conclude that Appellant has not shown any points
which we misapprehended or overlooked in our Decision.

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CONCLUSION
We have granted Appellant’s request for rehearing to the extent that
we have reconsidered our decision affirming the rejection of claims 16, 17,
36, and 37, but we decline to modify the decision in any way.
Pursuant to 37 C.F.R. § 41.79(d), this decision is final for the purpose
of judicial review. 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. § 90.2.

REHEARING DENIED

Patent Owner:
ROBERT BOSCH HEALTHCARE SYSTEMS, INC.
2400 GENG ROAD, SUITE 200
PALO ALTO, CA 94303

Third Party Requestor:
STERNE, KESSLER, GOLDSTEIN & FOX PLLC
1100 NEW YORK A VENUE, NW
WASHINGTON, DC 20005