Ex Parte BrownDownload PDFPatent Trial and Appeal BoardDec 19, 201311511793 (P.T.A.B. Dec. 19, 2013) Copy Citation 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. 11/511,793 08/29/2006 Stephen J. Brown 7553.00017 / 06-0453 1471 60683 7590 12/19/2013 Robert Bosch Healthcare Systems, Inc. 2400 GENG ROAD, SUITE 200 PALO ALTO, CA 94303 EXAMINER PAULS, JOHN A ART UNIT PAPER NUMBER 3686 MAIL DATE DELIVERY MODE 12/19/2013 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 2011-012606 Application 11/511,793 Technology Center 3600 ____________ Before BIBHU R. MOHANTY, MEREDITH C. PETRAVICK, and PHILIP J. HOFFMANN, Administrative Patent Judges. MOHANTY, Administrative Patent Judge. DECISION ON APPEAL Appeal 2011-012606 Application 11/511,793 2 STATEMENT OF THE CASE The Appellants seek our review under 35 U.S.C. § 134 (2002) of the Examiner’s final rejection of claims 1, 3-5, 7-17, and 22 which are all the claims pending in the application. We have jurisdiction under 35 U.S.C. § 6(b) (2002). SUMMARY OF THE DECISION We AFFIRM. THE INVENTION The Appellants’ claimed invention is directed to remote health monitoring systems. (Spec. 1:18-20). Claim 1, reproduced below, is representative of the subject matter on appeal. 1. A method for monitoring a condition of a user with a server computer in a communication network, comprising the steps of: (A) storing identification information in a database accessible by said server computer, said identification information being suitable for (i) identifying one or more individuals stored in said database and (ii) if said individuals are not identified as being stored in said database, identifying one or more disease types of said user; (B) if said user is identified as being stored in said database, providing health related information specific to said individual by receiving health related information data about said user from an apparatus, said health related data being received by said server computer from said apparatus, wherein said apparatus is (i) connectable to said communication network, (ii) located distant from said server computer, (iii) equipped with a card reader configured to removably receive a data card, (iv) in communication with a monitoring device configured to (a) produce measurements Appeal 2011-012606 Application 11/511,793 3 of said condition of said user, and (b) transmit said measurements to said apparatus, and (v) equipped with a biometric sensor configured to produce biometric measurements of said user, wherein said biometric measurements are transmitted to said server computer; and (C) if said user is identified as not being stored in said database, providing health related information about said disease type. THE REJECTIONS The following rejections are before us for review: 1. Claims 1, 3-5, 7-17, and 22 are rejected under 35 U.S.C. § 112, first paragraph, as failing to comply with the written description requirement as containing subject matter not described in the specification to convey to one skilled in the art, at the time the application was filed, Appellants had possession of the claimed invention. FINDINGS OF FACT We find the findings of fact in the Analysis section below are supported at least by a preponderance of the evidence.1 ANALYSIS The Examiner has determined that claim 1 fails to comply with the written description requirement by failing to show support in the Specification for claim limitations (A) (ii) and (C). (Ans. 4). In contrast, the Appellants have argued that support for the cited claim limitations is found at page 8, lines 15-20, on page 9, lines 16-18, on page 12, lines 15-22, on page 14, lines 13-17, on page 17, lines 20-23, on page 18, 1 See Ethicon, Inc. v. Quigg, 849 F.2d 1422, 1427 (Fed. Cir. 1988) (explaining the general evidentiary standard for proceedings before the Patent Office). Appeal 2011-012606 Application 11/511,793 4 lines 5-6, on page 19, lines 3-8, on page 23, lines 18-19, on page 24, lines 22-23, on page 24, lines 25-27, on page 26, lines 22-28, on page 27, lines 19-20, on page 28, lines 6-16, on page 34, lines 1-3, and on page 35, lines 17-21 of the Specification, and Figures 7-8. (Br. 11-12). We agree with the Examiner. An applicant shows possession of the claimed invention by describing the claimed invention with all of its limitations using such descriptive means as words, structures, figures, diagrams, and formulas that fully set forth the claimed invention. Lockwood v. American Airlines, Inc., 107 F.3d 1565, 1572 (Fed. Cir. 1997). Here, the cited claim limitations (A) (ii) and (C) require: if said individuals are not identified as being stored in said database, identifying one or more disease types of said user [and] if said user is identified as not being stored in said database, providing health related information about said disease type. (Claim 1 emphasis added). In this case, the Specification at the portions cited above by the Appellants simply does not provide any support for claim limitations (A) (ii) and (C) relating to if the “individuals are not identified as being stored in said database” and if the “user is identified as not being stored in said database.” For these reasons the rejection of claim 1 and its dependent claims is sustained. Claim 17 contains a similar limitation and the rejection of that claim is not sustained for the same reasons. Appeal 2011-012606 Application 11/511,793 5 CONCLUSIONS OF LAW We conclude that Appellants have not shown that the Examiner erred in rejecting claims 1, 3-5, 7-17, and 22 under 35 U.S.C. § 112, first paragraph, as failing to comply with the written description requirement. DECISION The Examiner’s rejection of claims 1, 3-5, 7-17, and 22 is sustained. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). AFFIRMED rvb Copy with citationCopy as parenthetical citation