Ex Parte Brown

Patent Trial and Appeal Board

Nov 4, 2016

11528737 (P.T.A.B. Nov. 4, 2016)

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.
11/528,737 09/28/2006 Stephen J. Brown 7553.00026 / 06-0492 7750
60683 7590 11/04/2016
Robert Bosch LLC
1800 W. Central Road
Mount Prospect, IL 60056
EXAMINER
PAULS, JOHN A
ART UNIT PAPER NUMBER
3626
MAIL DATE DELIVERY MODE
11/04/2016 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 2014-0080611
Application 11/528,7372
Technology Center 3600
____________

Before BIBHU R. MOHANTY, MEREDITH C. PETRAVICK, and
NINA L. MEDLOCK, Administrative Patent Judges.

MEDLOCK, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 1–6 and 8–23. We have jurisdiction under 35 U.S.C.
§ 6(b).
We AFFIRM-IN-PART.

1 Our decision references Appellant’s Appeal Brief (“App. Br.,” filed
April 9, 2014) and Reply Brief (“Reply Br.,” filed June 30, 2014), and the
Examiner’s Answer (“Ans.,” mailed April 30, 2014) and Final Office Action
(“Final Act.,” mailed October 10, 2013).
2 Appellant identifies Robert Bosch Healthcare Systems, Inc. as the real
party in interest. App. Br. 2.
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CLAIMED INVENTION
Appellant’s invention “relates generally to a modular interactive
development system and method for reporting on patient management, and
in particular to an automated content delivery program able to connect
remote users across independent platforms to a central database of libraries
whereby a patient's health can be scored dynamically” (Spec. 1, ll. 10–15).
Claims 1, 12, and 17 are the independent claims on appeal. Claim 1,
reproduced below, is illustrative:
1. A method for managing a health related condition
of an individual, comprising the steps of:
selecting a plurality of dialogs from at least one library,
said dialogs comprising one or more question dialogs and one or
more answer dialogs, wherein (A) each of said question dialogs
comprises (i) a question related to at least one of (a) a health
related symptom, (b) a health related behavior and ( c) a health
related knowledge of said individual and (ii) a plurality of
possible answer options, (B) said question dialogs are based on
patient specific information, and (C) each of said answer dialogs
comprises information from said library corresponding to said
plurality of possible answer options;
assembling said dialogs with a computer program running
on a computer;
delivering said dialogs as assembled to one or more of said
individuals;
transferring said dialogs to one or more terminals
corresponding to said one or more of said individuals, wherein
said terminals are remote from said computer; and
automatically generating a report containing a current
condition and condition trends of said one or more of said
individuals based upon selections of said possible answer options
communicated from said terminals to said computer.

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REJECTIONS
Claims 9, 17, 19, and 20 are rejected under 35 U.S.C. § 112, second
paragraph, as indefinite for failing to particularly point out and distinctly
claim the subject matter that Appellant regards as the invention.
Claims 1–6 and 8–23 are rejected under 35 U.S.C. § 102(a) as
anticipated by Iliff (US 6,234,964 B1, pub. May 22, 2001).

ANALYSIS
Indefiniteness
Independent claim 17 is directed to a method for managing a health
related condition, and recites that the method comprises, inter alia, “the
step[ ] of identifying a particular individual among a plurality of individuals
by filtering said individuals with at least one of a plurality of factors of said
health related condition.” Claim 9 depends from independent claim 1, and
recites that the method of claim 1 further comprises a substantially similar
step.
Claim 19 depends from independent claim 17, and recites that “said
factors [of said health related condition] comprise at least one among
(i) a plurality of factors related to a level of risk (ii) a plurality of factors
related to an aspect of care and (iii) a plurality of factors related to an
expression of risk.” Claim 20 depends from claim 19, and recites that the
factors related to an expression of risk comprise at least one among “(i) a
plurality of health related symptom factors reportable by said individuals,
(ii) a plurality of health related behavior factors of said individuals and (iii) a
plurality of health related knowledge factors of said individuals.”
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In rejecting claims 9, 17, 19, and 20 under 35 U.S.C. § 112, second
paragraph as indefinite, the Examiner questions “how a particular individual
[among a plurality of individuals] can be identified based on a single health
condition” (Final Act. 2). The Examiner asserts that “if a plurality of
patients are filtered based on a diagnosis . . . all patients with that diagnosis
would be identified;” the Examiner, thus, reasons that “[o]nly in the case
where a particular patient has a diagnosis (or other factor) that is unique to
the plurality of patients is it possible to identify a particular patient based on
this filtering” (id.). Yet that without more, does not mean that the claims are
indefinite. The Examiner does not dispute, for example, that if there are
only two individuals, i.e., a plurality of individuals, each having a different
factor, it is possible to identify a particular individual using only one factor
of a health related condition (Ans. 2).
The Examiner has not established here that a person of ordinary skill
in the art would not understand what is claimed when the claims are read in
light of the Specification. As such, the Examiner has not established a prima
facie case of indefiniteness. See Orthokinetics, Inc. v. Safety Travel Chairs,
Inc., 806 F.2d 1565, 1576 (Fed. Cir. 1986) (The test for definiteness under
35 U.S.C. § 112, second paragraph, is whether “those skilled in the art
would understand what is claimed when the claim is read in light of the
specification.”).
Therefore, we do not sustain the Examiner’s rejection of claims 9, 17,
19, and 20 under 35 U.S.C. § 112, second paragraph.
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Anticipation
Independent Claim 1 and Dependent Claims 2–4, 6, 8, 10, and 11
We are not persuaded by Appellant’s argument that the Examiner
erred in rejecting claim 1 under 35 U.S.C. § 102(b) because Iliff does not
disclose “transferring said dialogs [as assembled] to one or more [remote]
terminals corresponding to said one or more of said individuals,” as recited
in claim 1 (App. Br. 9–12). Instead, we agree with the Examiner that Iliff
discloses the argued limitation (see Ans. 3–4 (citing Iliff, col. 8, ll. 57–67;
col. 32, ll. 3–6)).
Iliff is directed to a system and method for automated patient disease
management, and discloses that the system uses periodic interactive dialogs
with the patient to obtain health state measurements, evaluate and assess the
progress of the patient’s disease, review and adjust therapy to optimal levels,
and give the patient medical advice for administering treatment and handling
symptom flare-ups and acute episodes of the disease (Iliff, Abstract). Iliff,
thus, discloses that the system selects a question to be asked and outputs the
question to the patient together with a set of possible responses (id. at
col. 32, ll. 3–6). Iliff discloses that a telephone number may be provided so
that the system may be accessed by telephone; alternatively, an appropriate
web address is provided so that the user may access the system via the
Internet using the user’s computer (id. at col. 8, ll. 41–67).
Appellant acknowledges that a user’s computer, as disclosed in Iliff,
can be reasonably described as a remote terminal (App. Br. 10). But
Appellant argues that accessing a system via a remote terminal, as disclosed
in Iliff is “not the same as transferring each of the dialogues which are
assembled to a remote terminal” (id. at 10). In this regard, Appellant
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interprets Iliff’s “medical diagnostic script file” as “the equivalent in Iliff to
the ‘dialogues’ of claim 1” (id.). And Appellant argues that although Iliff
discloses that portions of the script file are successively transferred to the
remote terminal, as needed based on the user’s response, Iliff does not
disclose that the entire medical diagnostic script file is transferred to the
remote terminal (id. at 10–12).
Appellant’s argument is not persuasive of Examiner error at least
because it is not commensurate with the scope of claim 1. As the Examiner
observes, claim 1 requires “selecting one or more questions/answers from a
library related to the health of the user/patient/individual based on
user/patient/individual specific information; [and] assembling and
delivering/transferring the selected questions/answers” (Ans. 4). There is
nothing in the claim language that precludes an iterative approach, nor does
the claim preclude the selection of only one question/answer and then
selecting the next question/answer based on the response (id.).
Responding to the Examiner’s Answer, Appellant charges in the
Reply Brief that the Examiner has misconstrued claim 1 (Reply Br. 2–3).
Citing a number of definitions of the word, “as,” Appellant asserts that “the
only one that makes sense for the phrase ‘delivering said dialogs as
assembled’ is ‘in the same manner or way’” (id. at 2). Appellant argues that,
by requiring the dialogs to be delivered “as assembled,” i.e., in the same
manner that the dialogs are assembled, claim 1 requires all of the dialog to
be delivered, as an assembled group, at the same time (id. at 2–3). Yet we
fail to see why, and Appellant does not adequately explain why, delivering
the dialogs “in the same manner” as assembled requires, of necessity, that
the dialogs be delivered at the same time.
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Appellant discloses in the Specification that “each dialog contains
questions related to signs and symptoms, behaviors and knowledge with
answers categorized as high, medium or low risk answers” and further
discloses that “logical branching within a dialog is driven by patient
answers.” In our view, the dialogs are delivered “in the same manner as
assembled,” i.e., delivered with the same question/answer combinations and
according to the same logical branching, whether the dialogs are delivered at
the same time or alternatively delivered using an iterative approach.
We also are not persuaded by Appellant’s further argument that Iliff
does not disclose “automatically generating a report containing a current
condition and condition trends of said one or more of said individuals based
upon selections of said possible answer options communicated from said
terminals to said computer,” as recited in claim 1 (App. Br. 12–18).
Appellant notes that “Iliff discloses [at column 12, lines 39–41] that a
user is allowed to optionally request a summary of a consultation to be sent
to a care provider,” and argues that “[a]n option to generate a report is not an
automatic report” (id. at 12). Yet there is nothing in claim 1 that requires the
report to be generated without user intervention or initiation.
Iliff discloses that its disease management system performs disease
management in a “fully automated manner” (Iliff, col. 12, ll. 57–64). Thus,
when a user optionally requests that a summary of a consultation, i.e., a
report, be sent to his/her healthcare provider, that report is “automatically
generated,” i.e., the report is generated by the disease management system,
which, as disclosed in Iliff, operates in a fully automated manner.
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In view of the foregoing, we sustain the Examiner’s rejection of
claim 1 under 35 U.S.C. § 102(a). We also sustain the Examiner’s rejection
of dependent claims 2–4, 6, 8, 10, and 11, which are not argued separately
except based on their dependence from claim 1 (App. Br. 18).
Dependent Claim 5
Claim 5 ultimately depends from claim 1, and recites that dialogs
further comprise, inter alia, “one or more filler dialogs.” In rejecting
claim 5 as anticipated by Iliff, the Examiner notes that Iliff asks a plurality
of questions in a session, and the Examiner interprets “filler dialogs” to
include “[a]ny question that occurs between two other questions.” The
Examiner, thus, reasons that “[s]ince Iliff asks the next questions based on
previous answers, it is inherent that one of these questions may be skipped”
(Final Act. 5–6 (citing Iliff, col. 9, ll. 13–30; col. 13, ll. 36–55)).
Appellant argues that the Examiner has misconstrued claim 5, and that
the term “filler dialog” is defined in paragraph 32 of Appellant’s
Specification as “‘trivia type dialogs, entertainment dialogs etc.’” (App.
Br. 19). Yet rather than defining the term “filler dialog,” the Specification
provides non-limiting examples only:
Options are to force the scheduler to include the dialog
block 744, or to assign dialogs as fillers, block 746. The later
could be the case, for example, with trivia type dialogs,
entertainment dialogs etc.
Spec. ¶ 32.
Appellant further argues for the first time in the Reply Brief that the
term “filler,” as used in paragraph 32 of the Specification, refers to a dialog
that is different from, and has a lower priority than, a required dialog and
that questions within a program that are skipped, as a result of logical
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branching, are not “filler dialogs” that are included or omitted from the
program by the scheduler based upon a priority scheme (Reply Br. 3–4).
That argument is untimely, and is waived here in the absence of any
showing of good cause why the argument could not have been timely
presented in Appellant’s Appeal Brief. See In re Hyatt, 211 F.3d 1367, 1373
(Fed. Cir. 2000) (noting that an argument not first raised in the brief to the
Board is waived on appeal); Ex parte Nakashima, 93 USPQ2d 1834, 1837
(BPAI 2010) (informative) (explaining that arguments and evidence not
timely presented in the Principal Brief, will not be considered when filed in
a Reply Brief, absent a showing of good cause explaining why the argument
could not have been presented in the Principal Brief); Ex parte Borden, 93
USPQ2d 1473, 1477 (BPAI 2010) (informative) (“Properly interpreted, the
Rules do not require the Board to take up a belated argument that has not
been addressed by the Examiner, absent a showing of good cause.”).
We are not persuaded, on the present record, that the Examiner erred
in rejecting claim 5 under 35 U.S.C. § 102(a). Therefore, we sustain the
Examiner’s rejection.
Dependent Claim 9
We are persuaded by Appellant’s argument that the Examiner erred in
rejecting claim 9 under 35 U.S.C. § 102(b) because Iliff does not disclose
“identifying a particular individual among a plurality of said individuals by
filtering said individuals using at least one of a plurality of factors of said
health related condition,” as recited in claim 9 (App. Br. 21–23).
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The Examiner cites column 7, line 67 through column 8, line 10 of
Iliff as disclosing the argued limitation (Final Act. 7). However, that portion
of Iliff merely discloses identifying a patient registered with the system by
prompting the patient or the patient’s assistant for an identification number.
We agree with Appellant that an identification number is not a factor
of a health-related condition, i.e., an element contributing to health, as called
for in claim 9 (App. Br. 21–22). Therefore, we do not sustain the
Examiner’s rejection of claim 9 under 35 U.S.C. § 102(a).
Independent Claim 12 and Dependent Claims 13, 15, and 16
Appellant argues that claim 12 is allowable for the same reasons set
forth with respect to claim 1 (App. Br. 23–24). We are not persuaded for the
reasons set forth above that the Examiner erred in rejecting claim 1 under
35 U.S.C. § 102(a). Therefore, we sustain the Examiner’s rejection of
claim 12 under 35 U.S.C. § 102(a). We also sustain the rejection of
dependent claims 13, 15, and 16, which are not argued separately except
based on their dependence from claim 12 (id. at 24).
Dependent Claim 14
We are persuaded by Appellant’s argument that the Examiner erred in
rejecting claim 14 under 35 U.S.C. § 102(a) because Iliff does not disclose
“identifying said particular individual by filtering a plurality of names of
said individuals,” as recited in claim 14 (App. Br. 24–26).
The Examiner cites column 7, line 67 through column 8, line 10 of
Iliff as disclosing the argued limitation (Final Act. 7). However, as
described above with respect to claim 9, that portion of Iliff discloses
identifying a patient registered with the system by prompting the patient or
the patient’s assistant for an identification number.
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We agree with Appellant that an identification number is not the same
as a name of an individual (App. Br. 25). Therefore, we do not sustain the
Examiner’s rejection of claim 14 under 35 U.S.C. § 102(a).
Independent Claim 17 and Dependent Claims 18 and 21
Appellant argues that claim 17 is allowable for the same reasons set
forth with respect to claims 5 and 12 (App. Br. 26–27). We are not
persuaded for the reasons set forth above that the Examiner erred in rejecting
either of claims 5 and 12 under 35 U.S.C. § 102(a). Therefore, we sustain
the Examiner’s rejection of claim 17 under 35 U.S.C. § 102(a). We also
sustain the rejection of dependent claims 18 and 21, which are not argued
separately except based on their dependence from claim 17 (id. at 27).
Dependent Claims 19 and 20
Claim 19 depends from independent claim 17, and recites that factors
of a health related condition used to identify a particular individual among a
plurality of individuals, as recited in claim 17, “comprise at least one among
(i) a plurality of factors related to a level of risk[;] (ii) a plurality of factors
related to an aspect of care[;] and (iii) a plurality of factors related to an
expression of risk.”
We are not persuaded by Appellant’s argument that the Examiner
erred in rejecting claim 19 under 35 U.S.C. § 102(a) (App. Br. 27–30).
Instead, we agree with the Examiner that Iliff discloses the claimed subject
matter at column 16, lines 28–55 (Final Act. 14–15).
Iliff discloses a process at column 16, lines 28–55 of Iliff in which a
patient is asked whether she is having any significant symptoms; if the
answer is “yes,” a table look-up is performed to determine whether the
reported symptom is related to the disease for which the patient is being
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managed. Iliff, thus, identifies patients with and without significant related
symptoms.
Appellant argues that the Iliff process does not meet the claim
language because “the ‘filtering’ described in column 16[,] lines 28–55
occurs after a patient has been specifically identified” (App. Br. 29).
Appellant, thus, asserts that“[a] process wherein an individual is uniquely
identified, and is then somehow ‘filtered’ to once again uniquely identify the
individual is not the same as filtering a group of individuals to identify a
specific one of the individuals using one or more of a level of health risk, an
aspect of care, and an expression of risk” (id.).
The difficulty with Appellant’s argument is that it is not
commensurate with the language of claim 19. In our view, the filtering
process disclosed in Iliff meets the language of the claim under a broadest
reasonable interpretation. Iliff discloses filtering patients according to their
symptoms and describes that this process, when completed, “has . . .
identified patients with and without significant related symptoms” (Iliff,
col. 16, ll. 54–55).
In view of the foregoing, we sustain the Examiner’s rejection of
claim 19 under 35 U.S.C. § 102(a). We also sustain the rejection of
claim 20, which is not argued separately except based on its dependence
from claim 19 (App. Br. 30).
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DECISION
The Examiner’s rejection of claims 9, 17, 19, and 20 under 35 U.S.C.
§ 112, second paragraph, is reversed.
The Examiner’s rejections of claims 1–6, 8, 10–13, and 15–23 under
35 U.S.C. § 102 (a) is affirmed.
The Examiner’s rejection of claims 9 and 14 under 35 U.S.C. § 102(a)
is reversed.
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-IN-PART