Ex Parte Brown et alDownload PDFPatent Trial and Appeal BoardMay 25, 201610435619 (P.T.A.B. May. 25, 2016) Copy Citation 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. 10/435,619 05/08/2003 Stephen J. Brown 03-0500 / 7553.00099 8441 60683 7590 05/25/2016 Robert Bosch LLC 1800 W. Central Road Mount Prospect, IL 60056 EXAMINER MORGAN, ROBERT W ART UNIT PAPER NUMBER 3626 MAIL DATE DELIVERY MODE 05/25/2016 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, JULIE C. CHERRY, and GEOFFREY CLAPP ____________ Appeal 2014-000531 Application 10/435,619 Technology Center 3600 ____________ Before HUBERT C. LORIN, BIBHU R. MOHANTY, and BRADLEY B. BAYAT, Administrative Patent Judges. BAYAT, Administrative Patent Judge. DECISION ON APPEAL1 STATEMENT OF THE CASE Appellants2 appeal under 35 U.S.C. § 134(a) from the final rejection of claims 1–25. We have jurisdiction under 35 U.S.C. § 6(b). STATEMENT OF THE DECISION We AFFIRM-IN-PART. 1 Our decision references Appellants’ Appeal Brief (“Br.,” filed May 2, 2013), and the Examiner’s Answer (“Ans.,” mailed July 23, 2013). 2 Appellants identify the real party in interest as Robert Bosch GmbH. Br. 2. Appeal 2014-000531 Application 10/435,619 2 CLAIMED INVENTION The claimed invention relates to “a multi-user remote health monitoring system.” Spec. 1:23. Claims 1 and 14 are independent. Claim 1, reproduced below, is illustrative of the subject matter on appeal. 1. A remote monitoring and data management system, the system comprising: a server having a database and a program generator; a client station separate from and in communication with the server and configured to enter a plurality of queries into the server to monitor a disease; and a plurality of remotely located microprocessor-based apparatuses separate from and in communication with the server, each of the microprocessor-based apparatuses being configured to (i) transmit a respective one of a plurality of identity codes corresponding to a respective one of a plurality of individuals to the server, (ii) receive a plurality of program instructions from the server in response to transmitting the respective identity code, the program instructions coding the queries, (iii) execute the program instructions to communicate the queries to the respective individual, (iv) receive a corresponding one of a plurality of responses to each of the queries from the respective individual, and (v) transmit the responses with the respective identity code of the respective individual to the server, wherein the server (a) stores the responses with the respective identity code received from each of the microprocessor-based apparatuses in the database, (b) stores the queries received from the client station in the database, (c) generates the program instructions using the program generator, the program instructions being generated based on (i) the queries and (ii) the respective identity code of the respective individual such that the program instructions are customized to the respective individual, (d) generates a plurality of values representative of a respective one of a plurality of risk levels by analyzing the responses stored in the database and (e) categorizes the values into a plurality of categories, the categories including (i) a symptoms category regarding one or more symptoms of the individuals caused by the disease that is being monitored from Appeal 2014-000531 Application 10/435,619 3 the client station, (ii) a behavior category regarding behavior of the individuals to treat the disease and (iii) a knowledge category regarding knowledge of the individuals concerning how the behavior influences the disease, and wherein the values of the risk levels in each of the categories provide information at the client station to predict potential health risks. Br. 23–24, Claims App. REJECTIONS The Examiner relies upon the following as evidence of unpatentability: Hoenig Fu US 4,323,064 US 4,803,625 Apr. 6, 1982 Feb. 7, 1989 Evers Minturn Peters Novak Fuerst Bagne US 5,558,638 US 5,692,501 US 5,893,098 US 5,965,449 US 6,189,029 B1 US 6,516,288 B2 Sept. 24, 1996 Dec. 2, 1997 Apr. 6, 1999 Oct. 12, 1999 Feb. 13, 2001 Feb. 4, 2003 The following rejections are before us for review. 1. Claims 1 and 14 stand rejected under 35 U.S.C. §112, first paragraph, for lack of written description. 2. Claims 1–3, 11–14, and 23 stand rejected under 35 U.S.C. §103(a) as being obvious over Fuerst, Minturn, and Peters. 3. Claims 4, 5, 9, and 10 stand rejected under 35 U.S.C. §103(a) as being obvious over Fuerst, Minturn, Peters, and Fu. 4. Claims 6 and 7 stand rejected under 35 U.S.C. §103(a) as being obvious over Fuerst, Minturn, Peters, Fu, and Evers. 5. Claim 8 stands rejected under 35 U.S.C. §103(a) as being obvious over Fuerst, Minturn, Peters, Fu, Evers, and Hoenig. Appeal 2014-000531 Application 10/435,619 4 6. Claims 15 and 22 stand rejected under 35 U.S.C. §103(a) as being obvious over Fuerst, Minturn, Peters, and Novak. 7. Claims 16–18 stand rejected under 35 U.S.C. §103(a) as being obvious over Fuerst, Minturn, Novak, and Fu. 8. Claims 19 and 20 stand rejected under 35 U.S.C. §103(a) as being obvious over Fuerst, Minturn, Peters, Novak, Fu, and Evers. 9. Claim 21 stands rejected under 35 U.S.C. §103(a) as being obvious over Fuerst, Minturn, Peters, Fu, Novak, Evers, and Hoenig. 10. Claims 24, and 25 stand rejected under 35 U.S.C. §103(a) as being obvious over Fuerst, Minturn, Peters, and Bagne. ANALYSIS Written Description Rejection The Examiner maintains the rejection under 35 U.S.C. § 112, first paragraph, because the original disclosure fails to provide adequate written description support for independent claims 1 and 14 (Ans. 2–3). In particular, the Examiner finds that the Specification does not sufficiently support Appellants’ claim amendments further defining: “(i) a symptoms category regarding one or more symptoms of the individuals caused by the disease that is being monitored from the client station, (ii) a behavior category regarding behavior of the individuals to treat the disease and (iii) a knowledge category regarding knowledge of the individuals concerning how the behavior influences the disease.” Id. Appellants contend that “[e]ach of these limitations is fully disclosed in the [S]pecification as originally filed” (Br. 7). Regarding the “symptoms category,” Appellants point to the following portions of the Specification for Appeal 2014-000531 Application 10/435,619 5 support: Spec. 12:25–13:14 as disclosing measurements of various physical parameters that Appellants equate to “symptoms” (Br. 7); Spec. 9:14–19 as disclosing that “symptoms data is passed to the client station 16 which provides reports” (Br. 8); Spec. 9:2–10:2 and Fig. 2 as disclosing that “the programs and data are stored on a server 52” (Br. 8); and Spec. 14:18–20 as disclosing “a symptoms risk category” (Br. 9). Appellants conclude that the sum of these disclosures amounts to written description support for: the programs stored in the server are used to categorize the values received from the remotely programmable device 18, including the symptoms data, into a plurality of risk categories, the categories including a symptoms risk category regarding one or more symptoms of the individuals caused by the disease that is being monitored from the client station. Id. Regarding the “behavior category,” Appellants point to the following portions of the Specification for support: Spec. 15:18–23, discussing an example regarding the number of pillows, as disclosing “the remotely programmable device in the form of the PDA22 obtains data regarding the behavior of an individual to treat a disease” (Br. 9); Spec. 9:14–19 as disclosing that “the behavior data is passed to the client station 16 which provides reports on the received data” (Br. 10); Spec. 9:2–10:2 and Fig. 2 as disclosing that “the programs and data are stored on a server 52” (Br. 10); and Spec. 14:18–20 as disclosing “a behavior risk category” (Br. 10). Appellants conclude that the sum of these disclosures amounts to written description support for “the programs stored in the server are used to categorize the values received from the remotely programmable device 18, including the behavior data, into a plurality of risk categories, the categories Appeal 2014-000531 Application 10/435,619 6 including a behavior risk category regarding behavior of the individual to treat the condition being monitored” (Br. 10). Regarding the “knowledge category,” Appellants point to the following portions of the Specification for support: Spec. 11:2–7, discussing an example of a question about “feeling thirsty,” as disclosing “the remotely programmable device obtains data regarding the knowledge of the individual as to how the behavior of the individual influences the disease” (Br. 11); Spec. 9:14–19 as disclosing that “the knowledge data is passed to the client station 16 which provides reports on the received data” (Br. 11); Spec. 9:2– 10:2 and Fig. 2 as disclosing that “the programs and data are stored on a server 52” (Br. 12); and Spec. 14:18–20 as disclosing “a knowledge risk category” (Br. 12). Appellants conclude that the sum of these disclosures amounts to written description support for “the programs stored in the server are used to categorize the values received from the remotely programmable device, including the knowledge data, into a plurality of risk categories, the categories including a knowledge risk category regarding the individual’s knowledge of how the behavior of the individual influences the disease” (id.). Appellants also rely on U.S. Provisional Application Serial No. 60/379,330 (“the ‘330 provisional”), incorporated by reference in the Specification (Spec. 1:16–17), as additional support for the claimed categories (Br. 14–15). Appellants point to various portions of the ‘330 provisional and contend that “the incorporated application explicitly discusses how the individual’s symptoms, behaviors, and knowledge of how the individual’s behavior affects a monitored disease/disease symptoms is obtained and categorized according to risk” (id. at 15). Appellants conclude Appeal 2014-000531 Application 10/435,619 7 that “[c]onsequently, the Appellant’s application, as originally filed, is sufficiently complete to enable one of ordinary skill in the art to make and use the claimed invention without undue experimentation” (id.). Contrary to Appellants’ conclusion, the written description requirement of 35 U.S.C. §112, first paragraph, is a separate and independent inquiry from the enablement requirement (see Ariad Pharmaceuticals, Inc. v. Eli Lilly and Co., 598 F.3d 1336, 1340 (Fed. Cir. 2010)(en banc.) (“We now reaffirm that § 112, first paragraph, contains a written description requirement separate from enablement.”). The written description requirement applies to both original and amended claims, requiring that the specification objectively demonstrate that the applicant actually invented and was in possession of the claimed subject matter (id. at 1349). As stated in TurboCare Div. of Demag Delaval Turbomachinery Corp. v. General Elec. Co., 264 F.3d 1111, 1118 (Fed. Cir. 2001): The written description requirement and its corollary, the new matter prohibition of 35 U.S.C. § 132, both serve to ensure that the patent applicant was in full possession of the claimed subject matter on the application filing date. When the applicant adds a claim or otherwise amends his specification after the original filing date[,] the new claims or other added material must find support in the original specification. It is well settled, however, that “[i]n order to satisfy the written description requirement, the disclosure as originally filed does not have to provide in haec verba support for the claimed subject matter at issue” (Purdue Pharma L.P. v. Faulding, Inc., 230 F.3d 1320, 1323 (Fed. Cir. 2000)). Nonetheless, where the disclosure does not provide word-for-word support for claimed subject matter, “a description that merely renders the invention obvious does not satisfy the requirement” (Ariad v. Lilly, 598 F.3d at 1352). Thus, “the Appeal 2014-000531 Application 10/435,619 8 written description must include all of the limitations[,] or the applicant must show that any absent text is necessarily comprehended in the description provided and would have been so understood at the time the patent application was filed” (Hyatt v. Boone, 146 F.3d 1348, 1354–55 (Fed. Cir. 1998)). Independent claim 1 recites a server that “generates a plurality of values representative of a respective one of a plurality of risk levels by analyzing the responses” and “categorizes the values into a plurality of categories, the categories including” “a symptoms category,” “a behavior category,” and “a knowledge category.” Independent claim 14 contains similar limitations. Appellants’ arguments do not persuade us that an ordinary artisan would have understood that the Specification describes a system that “generates a plurality of values representative of a respective one of a plurality of risk levels by analyzing the responses” and “categorizes the values into a plurality of categories, the categories including” the “symptoms,” “behavior,” and “knowledge” categories as recited in the claims. We have reviewed the passages cited by Appellants in support, but we do not find written description support for categorizing values representative of risk levels into question categories. The Specification and ‘330 provisional describe two distinct types of categorizing: (1) “category of question,” i.e., question categories and (2) “category of answers from a given patient,” i.e., response categories (Spec. 4:23–25). The ‘330 provisional provides a “Question Taxonomy” at page 24, which is annotated and reproduced below. Appeal 2014-000531 Application 10/435,619 9 Questions (“queries” in the claims) are assigned to question categories of “symptom,” “behavior,” and “knowledge” (‘330 provisional at 22). For example, page 22 of the ‘330 provisional provides examples of a “behavior question,” a “symptom question,” and a “knowledge question.” Answers (“responses” in the claims) are assigned to risk categories (“risk levels” in the claims) of “high,” “medium,” and “low” levels of risk. For example, page 24 of the ‘330 provisional provides examples of “a low risk answer,” “a high risk answer,” and “a moderate risk answer.” Claims 1 and 14 require categorizing values representative of risk levels into the question categories of “symptom,” “behavior,” and “knowledge.” However, as set forth above, Appellants’ disclosure provides that the author of each dialogue assigns each question to a question category (‘330 provisional at 22) and assigns each answer to a risk level (‘330 provisional at 24). In other words, those sections relied upon for support in the original disclosure fall short of conveying with reasonable clarity that Appellants possessed the claimed categorization of values representative of risk levels into question categories, as recited in claims 1 and 14. In view of the foregoing, we are not persuaded that the Examiner erred in rejecting claims 1 and 14 for failing to comply with the written Appeal 2014-000531 Application 10/435,619 10 description requirement. Therefore, we sustain the Examiner’s rejection of claims 1 and 14 under 35 U.S.C. §112, first paragraph, for lack of written description. Obviousness Rejections Appellants argue variously that Minturn does not disclose the claimed knowledge categorization (Br. 18–20) as proffered by the Examiner in the rejections under 35 U.S.C. §103(a). According to Appellants, “Minturn merely disclose[s] asking individuals what they did, not if they understood how what they did affected a disease” (Br. 20). On page 24 of the Answer, the Examiner disagrees, asserting that: There are many examples of a patient’s knowledge of how their behavior influences the disease in Minturn, one of which is knowledge of family history. Figure 6, as cited in the Office Action dated 10/03/2012, shows a ranking of patient’s attitude toward health and fitness, basic outlooks and behaviors, personal habits, and health and family history. These are ranked according to how they contribute to health and fitness. A person’s knowledge of how their attitudes, habits, and history will affect their health risk. For example, if a patient is aware that they have a family history of diabetes, they will know that controlling their diet (behavior) will help them avoid the disease. Although we agree with the Examiner that the user of Minturn’s system may be provided with “knowledge of how their attitudes, habits, and history will affect their health risk,” we fail to see and the Examiner has not adequately shown how the system of Minturn is configured to perform any categorization based on such knowledge, as required by independent claims 1 and 14. Therefore, we do not sustain the rejection of independent claims 1 and 14 under 35 U.S.C. §103(a) as unpatentable over Fuerst, Minturn, and Peters. We do not sustain the rejections of claims 2–13 and 15–25, because Appeal 2014-000531 Application 10/435,619 11 dependent claims are also nonobvious when the independent claims from which they depend are nonobvious. Objection to Enter an Amendment Appellants contend that the Examiner’s refusal to enter an amendment is appealable because “the objection to the amendment and the written description rejection in the Office Action turn on the same issue of whether the claim language (both prior to and after Appellant’s April 2, 2013 amendment) finds adequate support in the original disclosure” (Br. 6 (citing MPEP 2163.06(II))). New matter issues are appealable when both the claims and specification contain new matter, and the Examiner enters an associated rejection and objection. That is not the case here because the Appellants’ proposed “amendment to claim 1 raises another possible U.S.C. 112 written description rejection” (see Advisory Action 2, mailed April 9, 2013), which differs materially from the current grounds articulated in the § 112, first paragraph rejection, and lacks an associated objection. Thus, the Examiner’s refusal to enter the amendment is not an appealable matter before us. DECISION The Examiner’s decision to reject claims 1 and 14 under 35 U.S.C. §112, first paragraph is affirmed. The Examiner’s decision to reject claims 1–25 under 35 U.S.C. §103(a) is reversed. Appeal 2014-000531 Application 10/435,619 12 No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. § 1.136(a)(1)(iv). AFFIRMED-IN-PART Copy with citationCopy as parenthetical citation