Ex Parte Bodin et al

Board of Patent Appeals and Interferences

Feb 27, 2012

11839808 (B.P.A.I. Feb. 27, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte WILLIAM KRESS BODIN, MICHAEL JOHN BURKHART,
DANIEL G. EISENHAUER, DANIEL MARK SCHUMACHER,
and THOMAS J. WATSON
____________________

Appeal 2010-001109
Application 11/839,8081
Technology Center 2400
____________________

Before MARC S. HOFF, CARLA M. KRIVAK, and
ELENI MANTIS MERCADER, Administrative Patent Judges.

HOFF, Administrative Patent Judge.

DECISION ON APPEAL

1 The real party in interest is International Business Machines Corporation.
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Application 11/839,808

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STATEMENT OF CASE
Appellants appeal under 35 U.S.C. § 134 from a Final Rejection of
claims 1-11. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
Appellants’ invention concerns a method and system for
administering devices. The method includes creating a user metric vector
including a plurality of disparate user metrics, and creating a user metric
space including a plurality of metric ranges. Upon a determination that the
user metric vector is outside the user metric space, the method calls for
creating, in dependence upon the user metric vector, a dynamic action list.
At least one action in the dynamic action list is identified and executed
(Spec. 3).
Claim 1 is exemplary of the claims on appeal:
1. A method for administering devices, the method comprising:
creating a user metric vector comprising a plurality of disparate user
metrics;
creating a user metric space comprising a plurality of metric ranges;
determining whether the user metric vector is outside the user metric
space;
if the user metric vector is outside a user metric space, creating, in
dependence upon the user metric vector, a dynamic action list;
identifying at least one action in the dynamic action list; and
executing the action.
The Examiner relies upon the following prior art in rejecting the
claims on appeal:
Phipps US 2003/0216625 A1 Nov. 20, 2003
Miller US 2004/0030531 A1 Feb. 12, 2004
Claims 1-7 and 11 stand rejected under 35 U.S.C. § 102(e) as being
anticipated by Phipps.
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Claims 8-10 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Phipps in view of Miller.
Claims 1-11 stand provisionally rejected under 35 U.S.C. § 101 as
claiming the same invention as claims 12-22, and claims 23-33, of
copending Application No. 10/455,174.
Throughout this decision, we make reference to the Appeal Brief
(“App. Br.,” filed April 14, 2009) and the Examiner’s Answer (“Ans.,”
mailed July 23, 2009) for their respective details.

ISSUES
Appellants argue, inter alia, that Phipps does not teach creating a user
metric vector (App. Br. 4); creating a user metric space (App. Br. 6);
determining whether the user metric vector is outside the user metric space
(App. Br. 7); or, if the user metric vector is outside a user metric space,
means for creating a dynamic action list (App. Br. 9).
Appellants’ contentions, and the Examiner’s findings, present us with
the following issues:
1. Does Phipps teach creating a user metric vector?
2. Does Phipps teach creating a user metric space?
3. Does Phipps teach determining whether the user metric vector is
outside the user metric space?
4. Does Phipps teach creating a dynamic action list?

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FINDINGS OF FACT
Phipps
1. Phipps teaches a medical monitoring device employing software
having the capability to monitor a subject’s vital signs, record, collect, and
store the data (¶ [0011]).
2. Phipps’s monitoring device can be any type of medical monitoring
device, including those which monitor heart rate or pulse, breathing rate,
blood pressure, heart EKG activity, or body temperature (¶ [0025]).
3. Phipps teaches threshold field 70 that includes thresholds for data
collected from the monitoring device, and used to trigger an action by a
personal data unit(PDU) (¶ [0052]).
4. Phipps teaches that instructions field 72 comprises instructions for
the PDU to perform in response to some condition, grouped but not limited
to the categories of autonotification, emergency transmission, data store, and
data download (¶ [0053]).
5. The auto-notification category includes procedures for triggering
output, including displays to the LCD screen, activation of a beeper, and
activation of a vibrator (¶ [0054]). The emergency transmission category
includes procedures for issuing pages or phone calls (¶ [0055]). The data
store category includes procedures for storing data in PDU memory 54 (¶
[0056]). The data download category includes procedures for downloading
data to an external computer via the communications port (¶ [0057]).

PRINCIPLE OF LAW
“‘A rejection for anticipation under section 102 requires that each and
every limitation of the claimed invention be disclosed in a single prior art
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reference.’” See In re Buszard, 504 F.3d 1364, 1366 (Fed. Cir. 2007)
(quoting In re Paulsen, 30 F.3d 1475, 1478-79 (Fed. Cir. 1994)).

ANALYSIS
CLAIMS 1-7 AND 11
We select claim 1 as representative of this group of claims, pursuant
to our authority under 37 C.F.R. § 41.37(c)(1)(iv).
Appellants’ arguments, summarized supra, do not persuade us that the
Examiner erred.
We agree with the Examiner’s finding that Phipps teaches creating a
user metric vector comprising a plurality of disparate user metrics. The
Examiner finds, and Appellants do not contest, that Phipps teaches a medical
monitoring device that monitors multiple characteristics (FF 1, 2).
We agree with the Examiner’s finding that Phipps teaches creating a
user metric space comprising a plurality of metric ranges. Phipps teaches
thresholds for each monitored characteristic (FF 3).
We find that Phipps teaches determining if the “user metric vector” is
outside the “user metric space,” and triggering action if a monitored value is
found to be outside a threshold (FF 3). Appellants argue that Phipps’s
thresholds have no relationship to one another so as to define a space (App.
Br. 7). Such a relationship, however, is not required in order to meet the
claim. Appellants admit that one example of determining whether a user
metric vector is outside the user metric space is to specify that a user metric
vector is outside the user metric space if only one metric value is outside its
corresponding metric range (App. Br. 8).
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We find that Phipps teaches triggering actions, such as activating a
beeper, making a telephone call, and storing data in memory, if the
monitoring device should return a result outside one of those thresholds (FF
4, 5). We agree with the Examiner that such actions amount to creating, in
dependence upon the user metric vector, a dynamic action list (Ans. 15).
We find, therefore, that the Examiner did not err in rejecting claims 1-
7 and 11 as being anticipated by Phipps. We will sustain the § 102(e)
rejection.
CLAIMS 8-10
Appellants assert that these claims are patentable because Phipps does
not disclose all the limitations of independent claim 1 (App. Br. 12).
Because we find supra that Phipps does disclose all the limitations of claim
1, we find that the Examiner did not err in rejecting claims 8-10 under § 103
as being unpatentable over Phipps in view of Miller. We will sustain the
Examiner’s § 103 rejection.

PROVISIONAL DOUBLE PATENTING REJECTION
Appellants present no arguments regarding the Examiner’s
provisional double patenting rejection of claims 1-11. Accordingly, we
sustain pro forma the Examiner’s § 101 provisional double patenting
rejection.

CONCLUSIONS
1. Phipps teaches creating a user metric vector.
2. Phipps teaches creating a user metric space.
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3. Phipps teaches determining whether the user metric vector is
outside the user metric space.
4. Phipps teaches creating a dynamic action list.

ORDER
The Examiner’s rejection of claims 1-11 is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED

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