Ex Parte Brown

Patent Trial and Appeal Board

Sep 25, 2014

10818879 (P.T.A.B. Sep. 25, 2014)

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.
10/818,879 04/05/2004 Stephen J. Brown 7553.00105 / 04-0400 4924
60683 7590 09/26/2014
Robert Bosch Healthcare Systems, Inc.
2400 GENG ROAD, SUITE 200
PALO ALTO, CA 94303
EXAMINER
PASS, NATALIE
ART UNIT PAPER NUMBER
3686
MAIL DATE DELIVERY MODE
09/26/2014 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 2012-0110491
Application 10/818,8792
Technology Center 3600
____________________

Before MURRIEL E. CRAWFORD, BIBHU R. MOHANTY, and
NINA L. MEDLOCK, Administrative Patent Judges.

MEDLOCK, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellant seeks our review under 35 U.S.C. § 134 of the Examiner’s
final rejection of claims 1–17 and 19–23. We have jurisdiction under
35 U.S.C. § 6(b).
We REVERSE.

1 Our decision references Appellant’s Appeal Brief (“Br.,” filed April 9,
2012) and the Examiner’s Answer (“Ans.,” mailed May 3, 2012).
2 Appellant identifies the real party in interest as Robert Bosch Healthcare,
Inc. (Br. 3). However, Health Hero Network, Inc. is identified as the
assignee of record at Reel/Frame 015398/0960 (recorded November 30,
2004) of the USPTO assignment records.
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Application 10/818,879

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CLAIMED INVENTION
Claim 1, reproduced below, is illustrative of the subject matter on
appeal:
1. A system for processing personal health
information associated with at least one individual, the system
comprising:
a plurality of remote devices, each remote device being
associated with an individual; and
at least one server configured to (i) store content for
communication to the plurality of remote devices, the content
comprising general health-related information or general non-
health-related information, and said plurality of remote devices
and said at least one server communicate via a communications
network, (ii) communicate the content requested by the
individual to the associated remote device via the
communication network, (iii) determine personalized health-
related information by correlating the content communicated to
the individual with a known health condition of the individual
and (iv) automatically deliver the personalized health-related
information to the individual via the communications network,
wherein the personalized health-related information comprises
information related to the known health condition of said
individual.

REJECTIONS
Claims 1–5, 11–16, and 19–23 are rejected under 35 U.S.C. § 102(e)
as anticipated by Ilsen (US 6,757,898 B1, iss. June 29, 2004).
Claims 6, 7, and 10 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Ilsen and Iliff (US 6,022,315, iss. Feb. 8, 2000).
Claims 8 and 9 are rejected under 35 U.S.C. § 103(a) as unpatentable
over Ilsen, Iliff, and Detjen (US 5,970,466, iss. Oct. 19, 1999).
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Application 10/818,879

3
Claim 17 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Ilsen and Detjen.

ANALYSIS
Anticipation
Independent claim 1 and dependent claims 2–5 and 11
Appellant argues that the Examiner erred in rejecting claim 1 under
35 U.S.C. § 102(e) because Ilsen does not disclose at least one server
configured to:
(ii) communicate the content requested by the individual to the
associated remote device via the communication network,
(iii) determine personalized health-related information by
correlating the content communicated to the individual with a
known health condition of the individual and (iv) automatically
deliver the personalized health-related information to the
individual via the communications network, the personalized
health-related information comprising information related to the
known health condition of the individual[,]
as recited in claim 1. See Br. 10–14. More particularly, Appellant maintains
that Ilsen fails to disclose that “[] the requested information is sent, [] a
correlation is performed based on the sent information and a known health
condition of the user and [] the personalized health-related information is
automatically delivered to the user’s computer,” as called for in claim 1
(id. at 10–11).
The Examiner cites column 6, line 20 through column 7, line 13;
column 7, lines 37–45; column 8, lines 37–44; column 16, lines 2–14;
column 31, lines 36–37 and 53–54; column 32, lines 1–8; and column 37,
lines 59–67 of Ilsen as disclosing the argued features (Ans. 3–4). The
Examiner also directs our attention to Ilsen at column 14, lines 43–44 as
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Application 10/818,879

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disclosing “communicat[ing] the content requested,” column 14, lines 44–46
as disclosing “correlating the content communicated to the individual with a
known health condition of the individual,” and column 14, lines 46–49 as
disclosing “automatically deliver[ing] the personalized health-related
information to the individual” (id. at 12–13).
We have carefully reviewed the cited portions of Ilsen, on which the
Examiner relies. And we agree with Appellant that none of the cited
portions of Ilsen discloses the argued features.
Ilsen is directed to a provider-patient interface service center, which
dynamically assembles and delivers custom content from a library of
information to individual users over the Internet (Ilsen, col. 6, ll. 21–30).
Ilsen describes that the selected custom content is delivered to each user
based on the user’s patient record (id. at col. 6, ll. 30–34; see also col. 7,
ll. 38–45). In particular, Ilsen describes that its service center “associates
[a patient’s] own diagnoses, and the procedures which were performed
during [the patient’s] visit, with specific post-visit instructions” (id. at
col. 14, ll. 27–30); sends an e-mail message notifying the patient that new
personalized health-related information is available at the medical practice’s
website (id. at col. 14, ll. 31–33); and delivers relevant information to the
patient, based on the patient’s record, when the patient clicks on the URL
link provided in the notification e-mail message (id. at col. 14, ll. 43–49).
There is no dispute that Ilsen discloses communicating the content
requested by an individual, along with personalized health-related
information. But that information is communicated in a single response.
Ilsen does not disclose, expressly or inherently, “(iii) determin[ing]
personalized health-related information by correlating the content
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communicated to the individual with a known health condition of the
individual,” and then “(iv) automatically deliver[ing] the personalized
health-related information to the individual,” as claim 1 requires (emphasis
added).
Therefore, we do not sustain the Examiner’s rejection of claim 1
under 35 U.S.C. § 102(e). See Verdegaal Bros. v. Union Oil Co. of
California, 814 F.2d 628, 631 (Fed. Cir. 1987) (“A claim is anticipated only
if each and every element as set forth in the claim is found, either expressly
or inherently described, in a single prior art reference”). For the same
reason, we also do not sustain the rejection of claims 2–5 and 11, each of
which ultimately depends from claim 1.
Independent claims 12 and 19, and dependent claims 13–16 and 20–23
Independent claims 12 and 19 include language substantially similar
to the language of claim 1. Therefore, we do not sustain the Examiner’s
rejection under 35 U.S.C. § 102(e) of independent claims 12 and 19, and
claims 13–16 and 20–23, which depend from claim 12, for the same reasons
set forth above with respect to claim 1.
Obviousness
Dependent claims 6–10 and 17
Claims 6–10 and 17 depend from independent claims 1 and 12,
respectively. The Examiner has not established on this record that either of
the additional references, i.e., Iliff and Detjen, relied on in rejecting these
dependent claims, cures the deficiencies of Ilsen, as set forth above with
respect to independent claims 1 and 12.
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Therefore, we do not sustain the Examiner’s rejections of claims 6–10
and 17 under 35 U.S.C. § 103(a) for the same reasons as set forth above with
respect to the independent claims.

DECISION
The Examiner’s rejection of claims 1–5, 11–16, and 19–23 under
35 U.S.C. § 102(e) is reversed.
The Examiner’s rejections of claims 6–10 and 17 under 35 U.S.C.
§ 103(a) are reversed.
REVERSED

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