Ex Parte Brown

Patent Trial and Appeal Board

Jan 23, 2017

13663688 (P.T.A.B. Jan. 23, 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.
1576-1207 2290
EXAMINER
LUBIN, VALERIE
ART UNIT PAPER NUMBER
3626
MAIL DATE DELIVERY MODE
13/663,688 10/30/2012
60683 7590
Robert Bosch LLC
1800 W. Central Road
Mount Prospect, IL 60056
Stephen J. Brown
01/24/2017 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
Ex parte STEPHEN J. BROWN
Appeal 2015-0034401
Application 13/663,688
Technology Center 3600
Before HUBERT C. LORIN, BIBHU R. MOHANTY, and
BRADLEY B. BAYAT, Administrative Patent Judges.
BAYAT, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant2 appeals under 35 U.S.C. § 134(a) from the Examiner’s
final rejection of claims 1—18. We have jurisdiction under 35 U.S.C. § 6(b).
STATEMENT OF THE DECISION
We AFFIRM.
1 Our decision references Appellant’s Appeal Brief (“App. Br.,” filed Oct.
1, 2014), Reply Brief (“Reply Br.,” filed Jan. 26, 2015), the Examiner’s
Answer (“Ans.,” mailed Nov. 25, 2014), and the Final Office Action (“Final
Act.,” mailed Mar. 3, 2013).
2 Appellant identifies the real party in interest as Robert Bosch Healthcare
Systems, Inc. (App. Br. 2).
Appeal 2015-003440
Application 13/663,688
CLAIMED INVENTION
The claimed invention relates to self-care health monitoring (Spec,
para. 2). Claim 1, reproduced below, is representative of the subject matter
on appeal.
1. A networked health-monitoring system comprising:
(a) a plurality of remote patient sites, each remote patient site
including
(i) at least one display,
(ii) a hand held unit configured to facilitate collection of
patient health-related data,
(iii) a memory within said hand held unit, and
(iv) a processor within said hand held unit configured to
execute program instructions stored in said memory, said
program instructions, when executed by said processor at
each remote patient site, generate health-monitoring
related information on the display and collect said patient
health-related data, wherein said program instructions are
stored after being received by said hand held unit from at
least one central server and allow said hand held unit to
update said health-monitoring related information
presented on the display;
(b) at least one remotely located computing facility including
the at least one central server connectable for communication
with the hand held units at the remote patient sites via a first
network connection; and
(c) at least one health care professional computer remote from
the at least one central server configured for signal
communication with the central server via a second network
connection to receive information based on the patient health-
related data collected at the remote patient sites,
wherein hardware and software of the central server (i)
transmit the program instructions to the hand held unit at each of
the plurality of remote patient sites and (ii) can communicate
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with the hand held units to reconfigure programs stored at each
remote patient site; and
wherein the system is configured to transmit a message for
display on at least one remote patient site display.
App. Br. 24—25, Claims Appendix.
REJECTIONS
The Examiner relies upon the following as evidence of
unpatentability:
Fu et al. US 4,803,625 Feb. 7, 1989
(“Fu”)
Beckers US 5,019,974 May 28, 1991
Kirk et al.
(“Kirk”) US 5,390,238 Feb. 14, 1995
The following rejections are before us for review:
Claims 1—10 and 12—18 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Fu and Beckers.
Claim 11 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Fu, Beckers, and Kirk.
ANALYSIS
Independent claim 1
Regarding independent claim 1, the Examiner finds the limitation “at
least one health care professional computer remote from the at least one
central server” in Fu in the CRT terminals 30 shown in Figure 3 and
discussed at column 7, lines 52—55 (Ans. 4, 7—8). According to the
Examiner, “Fu’s CRT terminals are equivalent to the claimed computer
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because they are able to ‘interact’ with the main computer 24” {id. at 7) and
the term “remotely” is a relative term.
Appellant contends that a “‘CRT terminal’ is a well-known user
interface” and “not a computer” (App. Br. 5). Appellant also argues that the
terminals 30 are “located at the same facility” (id.) and thus “the CRT
terminals are neither health care professional computers which are separate
from the alleged server, nor remotely located from the alleged server” {id. at
6).
Fu discloses at column 7, lines 52—55, that “trained medical personnel
interact with the computer 24 via respective terminals 30.” Appellant has
not persuasively explained why a “health care professional computer” does
not encompass a “terminal” used by “trained medical personnel” to interact
with host computer 24 as disclosed in Fu.
We are not persuaded of reversible error here at least because
Appellant has not provided persuasive technical reasoning to support the
argument that a terminal is not a “computer.” Attorney argument cannot
take the place of evidence in the record. See In re Geisler, 116 F.3d 1465,
1470 (Fed. Cir. 1997). Appellant’s arguments also are not commensurate
with the scope of the claim. For example, even assuming that a terminal is a
“user interface,” Appellant has not offered any explanation as to why a “user
interface” terminal is not a “computer” as recited by claim 1.
Appellant’s argument that terminals 30 are located at the same facility
as computer 24 also is not commensurate with the scope of the claim 1,
which does not require the “at least one health care professional computer”
to be located at a different facility than “the at least one central server.”
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For the foregoing reasons, we are not persuaded of error in the
Examiner’s finding for “at least one health care professional computer
remote from the at least one central server” in Fu.
The Examiner finds the claim 1 limitation “wherein the system is
configured to transmit a message for display on at least one remote patient
site display” in Fu at column 1, lines 47-48, column 14, lines 21—23, and
column 8, lines 7—10 (Ans. 4, 8).
Appellant contends that “Fu discloses that messages are displayed”
but not “that the system transmits the message which is displayed.” (App.
Br. 6—7). According to Appellant, communication between the home units
60 and central unit 20 is limited to “transmission of a log from the remote
site to the central server” {id. at 7) (citing Fu at column 14, lines 53—65).
We do not agree. Fu discloses at column 8, lines 7—10, that computer
24 “is preferably programmed with a multi-user, multi-tasking operating
system such as the UNIX system which includes suitable programs . . . and
directing appropriate instructions or data files to the respective home units
60.” We agree with the Examiner that directing instructions or data files to
home units 60 meets the claim limitation of “the system is configured to
transmit a message.”
The Examiner finds the claim 1 limitation that the remote patient site
includes “a hand held unit” in Beckers at column 11, lines 4—5, and
determines that it would have been obvious to include a handheld device as
disclosed by Beckers within Fu (Ans. 4). According to the Examiner, the
combination would provide “a more portable (handheld) patient unit” (Ans.
8).
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The Appellant contends that “[t]he Examiner has failed to clearly
articulate the reasons for obviousness” (App. Br. 8).
We do not agree. The Examiner’s proposed modification is to use the
portable handheld units disclosed in Beckers as home units 20 disclosed in
Fu. We agree with the Examiner that such a modification would have been
obvious. See Application of Lindberg, 194 F.2d 732, 735 (C.C.P.A. 1952)
(“[I]t is not regarded as inventive to merely make an old device portable or
movable without producing any new and unexpected result”) (citation
omitted). Accordingly, we are not persuaded of error in the Examiner’s
determination of obviousness.
The rejection of claim 1 under 35 U.S.C. § 103(a) is sustained for the
reasons set forth above.
Claim 2
Appellant contends that the prior art of record does not disclose
graphical display of data at the remote patient site (App. Br. 10—11; Reply
Br. 2-4). According to Appellant, the Examiner’s construction is
unreasonable (Reply Br. 2) and, in light of the Specification, “claim 2 should
be construed to require display of diagrammatic information” {id. at 4).
The Examiner finds the argued limitation, inter alia, in Beckers at
Figure 2 and at column 10, lines 30—36 (Ans. 5, 9). Figure 2 of Beckers is
reproduced below and shows a full display of the recorder.
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Beckers describes Figure 2 as an LCD having various symbols with
meanings corresponding to different function activation such as “blood
glucose function active” and “insulin function active” (Beckers, col. 3,11. 1—
20). Appellant has not explained how Figure 2 of Beckers does not display
“health-monitoring related information graphically” as required by claim 2.
Appellant also has also not explained how Figure 2 of Beckers does not
display “diagrammatic information,” under Appellant’s proffered
interpretation. We find that the Examiner reasonably broadly construed the
argued limitation of claim 2 as reading on the LCD display of Beckers.
Accordingly, the rejection of claim 2 is sustained.
Claim 5
Claim 5 depends from claim 1 and further requires instructions to
“determine when a test sequence does not proceed in a normal fashion” and
“the message includes a diagnostic indication related to whether the test
sequence has proceeded in a normal fashion.”
The Examiner finds the “test sequence” of claim 5 in Fu at column 3,
lines 35—45 and column 12, lines 49-63, and finds the claimed “message” in
Fu at column 1, lines 47-48, column 8, lines 8—10, and column 14, lines 21—
23 (Ans. 5, 9).
Appellant contends that Fu does not disclose “a message displayed at
the remote patient site display including diagnostic indication related to the
test sequence” (App. Br. 13). According to Appellant, “none of the passages
identified by the Examiner disclose a diagnostic routine which is run at the
patient site” (Reply Br. 5; see also App. Br. 14).
We are not persuaded of error in the Examiner’s findings.
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As noted above, the Examiner finds the “message” of claim 1 in Fu at
column 8, lines 8—10, which discloses “directing appropriate instructions or
data files to the respective home units 60.” Fu discloses that the instructions
and data files directed to the respective home units 60 include “a prescribed
parameter schedule for selected ones of the health parameters and a
prescribed medication schedule for at least one medication” (Fu, col. 1,11.
47—50) and “the range of values designated by the physician as normal for a
particular patient” (Fu, col. 3,11. 44-45). Fu discloses at column 12, lines
49-63, that the home units 20 execute a “multiple parameter check routine”
that “checks to determine whether the test results are within the normal
range.”
Appellant has not persuasively explained why the “multiple parameter
check routine” disclosed in Fu does not meet the claimed program
instructions to “determine when a test sequence does not proceed in a
normal fashion,” as recited in claim 5.
Fu further discloses at column 12, lines 49—63 that if the test results
are not within the normal range, the routine determines “whether additional
tests are needed to supplement the log and if so updates the event table to
schedule the additional tests” (Fu, col. 12,11. 55—60). The event table
“stores the time and identification of the next scheduled test” (Fu, col. 10,11.
13—14) and the patient is prompted to take the scheduled tests. For example,
event table can include a “temperature measurement event” in which “the
patient is prompted to use the temperature module 86 to measure the
patient’s body temperature” (Fu, col. 10,11. 40-43).
Appellant has not persuasively explained why prompting the patient
to take additional tests in response to test measurement outside a normal
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range does not meet the limitation of “the message includes a diagnostic
indication related to whether the test sequence has proceeded in a normal
fashion” required by claim 5.
Accordingly, the rejection of claim 5 is sustained.
Claim 7
Claim 7 depends from claim 1 and further recites “wherein the
message is an educational or motivational animation.”
The Examiner determines that this limitation is “non-functional
descriptive material and does not further limit the structure of the claimed
system” (Ans. 5; see also Ans. 10).
Appellant contends that the limitation is functional because “[i]n order
to provide for animated display, however, special software is required, along
with a display capable of properly rendering the animation.” (App. Br. 15).
The difficulty with Appellant’s argument is that claim 7 does not
require an “animated display” or “special software.” Claim 1 requires that
“the system is configured to transmit a message for display.” However,
nothing in claim 1 or claim 7 requires that the “animation” in the message is
actually received and displayed by the remote patient site display. There is
insufficient evidence of record showing a functional relationship between
the language of claim 7 and the system elements. Absent such evidence, it is
reasonable to characterize the message content as descriptive, falling under
the category of patentably-inconsequential subject matter. See Ex parte
Curry, 84 USPQ2d 1272, 1275 (BPAI 2005) (informative). “Non-fimctional
descriptive material cannot render nonobvious an invention that would have
otherwise been obvious.” Id. at 1274 (citing In re Ngai, 367 F.3d 1336, 1339
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(Fed. Cir. 2004)). Cf. In re Gulack, 703 F.2d 1381, 1385 (Fed. Cir. 1983)
(when descriptive material is not functionally related to the substrate, the
descriptive material will not distinguish the invention from the prior art in
terms of patentability).
Accordingly, the rejection of claim 7 is sustained.
Claim 8
The Examiner finds the subject matter of claim 8 in Fu at column 7,
lines 52—55, column 3, lines 41—46, column 4, lines 48—50, and column 8,
lines 4—10, 46—65 (Ans. 10).
Appellant contends that “Fu fails to disclose a system wherein a
particular message is transmitted from the health care professional computer
for remote patient site display” (Reply Br. 6; see also App. Br. 16)
The cited passages of Fu disclose that trained medical personnel
interaction with terminals 30 to enter various information including “the
range of values designated by the physician as normal for a particular
patient” (Fu, col. 3,11. 44^45) and prescribed test and medication profiles
(Fu, col. 8,11. 46—65). As noted above in the discussion of claim 1, Fu
discloses at column 8,11. 7—10 “directing appropriate instructions or data
files to the respective home units 60.” Therefore, Fu discloses that the
trained medical personnel interact with terminals 30 to enter information that
is sent to home units 60. Appellant has not persuasively explained why this
information (e.g., test and medication profiles) is not a “message.”
Accordingly, the rejection of claim 8 is sustained.
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Claim 9
The Examiner finds the subject matter of claim 9 in Fu at column 8,
lines 56—65 (Ans. 6).
The Appellant contends that “while a physician is designating certain
data, nothing in the passage cited by the Examiner discloses that anything is
displayed, nor is there any mention of a message” (App. Br. 18).
We do not find Appellant’s arguments persuasive. Although claim 1
requires that “the system is configured to transmit a message for display,”
nothing in claim 9 requires that the message is actually received and
displayed. In any event, the cited passage discloses that the test and
medication profiles designated by a physician include “questions to be asked
of the patient.” One of ordinary skill would understand this to mean that
home unit 60 asks the patient questions such as by displaying the questions
on display unit 68. Additionally, Appellant fails to persuade us of reversible
error because, although the cited text does not contain the word “message,”
one skilled in the art would understand that the recited claim limitation
encompasses the disclosure cited by the Examiner. See In re Bond, 910 F.2d
831, 832 (Fed. Cir. 1990) (whether a reference teaches a claim limitation “is
not an ‘ipsissimis verbis’ test”).
Accordingly, the rejection of claim 9 is sustained.
Claim 11
Claim 11 depends from claim 9 and requires “wherein the system
enables the patient to choose when to receive the message.”
The Examiner finds this limitation in Kirk at column 4, lines 50—53
(Ans. 7).
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Appellant contends that “Kirk does not disclose a configuration which
allows a patient to determine when a message from a health care
professional computer is displayed by the patient device” (App. Br. 22).
Appellant’s argument fails because Appellant is attacking Kirk
individually; the rejection is based on the combined teachings of the
references, not on any one of them alone. See In re Merck & Co., 800 F.2d
1091, 1097 (Fed. Cir. 1986) (Nonobviousness cannot be established by
attacking the references individually when the rejection is based on the
teachings of a combination of references). As we have already explained
with reference to claims 1, 8, and 9, the Examiner finds that Fu discloses “at
least one health care professional computer” (terminals 30) configured to
transmit a “message” (e.g., instructions, data files, test and medication
profiles) to “a specific remote patient site” (home unit 60). The Examiner
relies on Kirk for disclosing a system that “enables the patient to choose
when to receive” a message, i.e., by setting an alarm time.
Accordingly, the rejection of claim 11 is sustained.
Claim 13
The Examiner finds the “menu” of claim 13 in Beckers in the various
keys shown in Figure 1 and described in associated text at column 2, lines
22—67 (Ans. 6, 10). According to the Examiner, “the displayed symbols are
menu options because they can be removed by user input” (id. at 11).
Appellant contends that “[kjeys’ are not a menu which is displayed.”
(Appeal Br. 19). According to Appellant, the display in Beckers “simply
reflects what has already been selected, not a list of options available” and
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“[sjimply displaying the results of a user selection is not the same as a menu
of options which can be selected” {id. at 20).
Appellant’s arguments are not persuasive because Appellant has not
pointed to any definition of “menu” in the Specification that would exclude
the keys and LCD of Beckers. On the contrary, the Specification discloses
at page 22, lines 20-23, that “it is possible to enter such data by using
switches 30, 32, 34, 36 and 38 in conjunction with menus and selection
screens displayed on display screen 28 of FIG. 1.” Thus, we find that the
Examiner reasonably broadly construed the term “menu” to read on the keys
and LCD shown in Figure 1 of Beckers.
Accordingly, the rejection of claim 13 is sustained.
Claims 3, 4, 6, 10, 12, and 14—18
Appellant relies on arguments addressed above in contesting the
rejection of independent claims 3, 4, 6, 10, 12, and 14—18 (see App. Br. 12,
18, and 20). Therefore, we sustain the rejection of claims 3, 4, 6, 10, 12, and
14—18 for the reasons discussed above.
DECISION
The Examiner’s decision to reject claims 1—18 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).
AFFIRMED
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