Ex Parte Coleman Boone et al

Patent Trial and Appeal Board

Aug 1, 2016

13276949 (P.T.A.B. Aug. 1, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/276,949 10/19/2011 Kim Lisa Coleman Boone
26389 7590 08/03/2016
CHRISTENSEN O'CONNOR JOHNSON KINDNESS PLLC
1201 THIRD A VENUE
SUITE 3600
SEATTLE, WA 98101-3029
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
ORIL136206 5144
EXAMINER
NGUYEN, ANT
ART UNIT PAPER NUMBER
2683
NOTIFICATION DATE DELIVERY MODE
08/03/2016 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address( es):
efiling@cojk.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte KIM LISA COLEMAN BOONE, DAVID ALAN
BOONE, ADAM ARABIAN, and MICHAEL ORENDURFF
Appeal2015-002712
Application 13/276,949
Technology Center 2600
Before ST. JOHN COURTENAY III, THU A. DANG, and
LARRY J. HUME, Administrative Patent Judges.
DANG, Administrative Patent Judge.
DECISION ON APPEAL
Appeal2015-002712
Application 13/276,949
l. STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from a final rejection of
claims 1-34. Appellants have withdrawn claims 33 and 34. We have
jurisdiction under 35 U.S.C. § 6(b ).
We AFFIRM.
A. INVENTION
According to Appellants, the disclosed and claimed invention relates
to a fall risk assessment device and method. Title.
B. ILLUSTRATIVE CLAIM
Claim 1 is exemplary:
1. A method for assessing the risk of a patient to fall,
compnsmg:
attaching a pedometer on a patient, wherein the pedometer
includes one or more sensors;
allowing the patient to engage in activities throughout a
predetermined period of time in, at least, an environment the
patient occupies for a majority of the day while the pedometer
senses information relating to steps taken by the patient;
measuring acceleration of a patient and counting a step when
acceleration is within a predetermined range for a
predetermined time;
recording information when a step is counted;
with one or more computers, calculating at least one step
variable from the information of a counted step;
2
Appeal2015-002712
Application 13/276,949
with one or more computers, comparing the at least one
calculated step variable to a model step variable; and
with one or more computers, providing an assessment of the risk
of the patient to fall.
C. REJECTIONS
The prior art relied upon by the Examiner as evidence in rejecting the
claims on appeal is:
Smith
Takenaka
Aminian
Hausdorff
us 5,485,402
us 6,064, 167
us 2005/0010139
US 2012/0101411 Al
Jan. 16, 1996
May 16, 2000
Feb. 7,2012
Apr. 26, 2012
Claims 1-5, 7-18, 20-25, 27 and 29-32 stand rejected under 35
U.S.C. § 103 (a) as being unpatentable over the combination of Smith and
Hausdorff. 1
1 In the event of further prosecution, we leave it to the Examiner to consider
if the claims should also be rejected under 35 U.S.C. § 101. See
CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1371 (Fed. Cir.
2011) (holding that a method for verifying the validity of a credit card
transaction over the Internet to be nonstatutory as an abstract idea capable of
being performed in the human mind or by a human using a pen and paper).
We further refer to Digitech, where the Federal Circuit has provided
additional guidance on the issue of statutory subject matter by holding
claims to a process of organizing information through mathematical
correlations was not tied to a specific structure or machine, and was thus an
abstract idea and ineligible under § 101. Digitech Image Tech., LLC v.
Electr.for Imaging, Inc., 758 F.3d 1344 (Fed. Cir. 2014), aff'd. Abstract
ideas have been identified by the courts by way of example, including
fundamental economic practices, certain methods of organizing human
activities, an idea 'of itself,' and mathematical relationships/formulas. Alice
Corp. Pty. Ltd. v. CLS Bank Int'!, 134 S. Ct. 2347, 2355-56 (2014). In
Alice, the Supreme Court guides: "the mere recitation of a generic computer
3
Appeal2015-002712
Application 13/276,949
Claims 6, 19 and 28 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over the combination of Smith, Hausdorff and Aminian.
Claim 26 stands rejected under§ 35 U.S.C. § 103(a) as being
unpatentable over the combination of Smith, Hausdorff, and Takenaka.
II. ISSUE
The principle issue before us is whether the Examiner erred in finding
the combination of Smith and Hausdorff teaches or would have suggested
"calculating at least one step variable from the information of a counted
step" and "providing an assessment of the risk of the patient to fall." (claim
1, emphasis added).
III. FINDINGS OF FACT
The following Findings of Fact (FF) are shown by a preponderance of
the evidence.
Smith
1. Smith discloses a pedometer with a sensor for sensing movement
of the monitor relative to the environment of the wearer. (Col. 1, 62 -
Col. 2, 12).
2. Smith's sensor provides the acceleration signal to a step
determination unit which determines whether the wearer has taken a step.
The step determination unit counts steps and interfaces with an acceleration
data unit. (Col. 4, 3-16).
Hausdorff
cannot transform a patent-ineligible abstract idea into a patent-eligible
invention." Id. at 2358.
4
Appeal2015-002712
Application 13/276,949
3. Hausdorff discloses a method of gait data collection and
determines a movement data parameter from this data, which is used in
predicting a near-fall if the movement parameter exceeds the threshold
value. (Abst.).
4. Specifically, Hausdorff discloses using a derivative of gait
acceleration, or other parameters, such as angular velocity or tilt, to
determine near fall and/or gait irregularity. (i-fi-f 16, 153).
5. A Timed Up and Go (TUG) test assesses the tendency of a person
to fall based on a time derivative of vertical acceleration. The tendency of
falling is assessed when the rate of change of the acceleration is above a
threshold. (i-fi-f 18, 209, 154, 155).
6. When gait irregularity is detected the subject person is prompted,
i.e., by audio message or tactile incitement, to adjust and/or stabilize the gait.
(i-fi-f 17' 205, 222).
ANALYSIS
Although Appellants concede that Smith discloses a pedometer,
Appellants contend there is no reason to modify the pedometer of Smith to
have included the near fall detection algorithms of Hausdorff, "because the
prior art does not teach that there is any problem with the pedometer of
Smith." App. Br. 6. According to Appellants, "there are no facts in the
record that indicate Smith was defective in some way, nor do the facts
provide a reason to modify Smith independent of appellants' disclosure," and
thus, "the Examiner appears to have engaged in impermissible hindsight
based on the applicant's disclosure." App. Br. 7.
Appellants also contend "[t]he combination of references does not
teach or suggest 'calculating at least one step variable from the information
5
Appeal2015-002712
Application 13/276,949
from a counted step."' App. Br. 7. Further, according to Appellants, "[t]he
combination of references does not teach or suggest 'an assessment of the
risk of the patient to fall.'" wherein "the Examiner reads out the 'risk'
limitation from the claims." App. Br. 8.
We consider all of Appellants' arguments and evidence presented, and
disagree with Appellants' arguments regarding the Examiner's rejections of
the claims. We adopt as our own: ( 1) the findings and reasons set forth by
the Examiner in the action from which this appeal is taken, and (2) the
reasons and rebuttals set forth in the Examiner's Answer in response to
Appellants' arguments. However, we highlight and address specific findings
and arguments below.
In particular, we find no error with the Examiner's conclusion that it
would have been obvious to modify Smith's monitoring device to include
the detection and alerting features of Hausdorff in order to decrease the
safety concern by further allowing notification of near fall activity before the
fall actually occurs. Ans. 11. We agree with the Examiner that one of
ordinary skill in the art would readily recognize there is a need for a system
to detect a near fall in people vulnerable to falls. Id. That is, we find the
Examiner has provided sufficient articulated reasoning with some rational
underpinning to support the legal conclusion of obviousness.
As to Appellants' hindsight contentions (App. Br. 7), we are mindful
the Supreme Court has clearly stated the "combination of familiar elements
according to known rnethods is likely to be obvious when it does no more
than yield predictable results.~' KSR Int'l Co. v. Teleflex, Inc., 550 U.S. 398,
416 (2007). "In determining whether the subject matter of a patent claim is
6
Appeal2015-002712
Application 13/276,949
obvious, neither the paiiicular motivation nor the avowed purpose of the
patentee controls." Id. at 419.
We conclude that the skilled artisan, upon reading Smith's teaching of
a monitoring device (FF 1, 2) would have found it obvious to also include
Hausdorff's fall detecting and alerting features (FF 6). Thus, we find no
error with the Examiner's ultimate legal conclusion that it would have been
obvious to the skilled artisan at the time the invention was made to modify
Smith's monitoring device to include an alarm notifying the user of near fall
detection. (Ans. 12).
Appellants have provided no evidence that modifying Smith's
monitoring device to include Hausdorff's gait irregularity detection and
alerting the user of a near fall situation was "uniquely challenging or
difficult for one of ordinary skill in the art," Leapfrog Enters., Inc. v. Fisher-
Price, Inc., 485 F.3d 1157, 1162 (Fed. Cir. 2007). Nor have Appellants
presented evidence that this incorporation of such a teaching in the same
field of endeavor yielded more than expected results.
Rather, we find AppeHants' invention is simply a modification of
familiar prior art practices or acts (as taught or suggested by the cited
combination of references) that would have realized a predictable result
The skilled miisan is '"a person of ordinary creativity, not an automaton."
KSR at 421.
Regarding Appellants' argument that the combination of references
doesn't teach calculating at least one step variable (App. Br. 7), we find no
error with the Examiner's reliance on Hausdorff for teaching and suggesting
the contested limitation. In particular, we agree with the Examiner's finding
(Ans. 12) that Hausdorff's movement parameter (FF 3), derivative of
7
Appeal2015-002712
Application 13/276,949
acceleration parameter, angular velocity parameter or tilt parameter (FF 4)
teach or at least suggest the disputed "step variable," as recited in claim 1.
We are also unpersuaded by Appellants' argument that the
combination of references does not teach an assessment of the risk of the
patient to fall. (App. Br. 8). In particular, we agree with the Examiner's
finding (Ans. 12-13) that Hausdorff s TUG test assessment of the tendency
of a person to fall based on a rate of change of acceleration above a
threshold (FF 5) teaches or at least suggests the disputed limitation
"assessment of the risk of the patient to fall," as recited in claim 1.
Thus, we find the preponderance of evidence supports the Examiner's
finding the combination of Smith and Hausdorff teaches or at least suggests
the contested limitations of claim 1. (Ans. 12-13).
For these reasons, we agree with the Examiner's conclusion that the
combination of Smith and Hausdorff would have taught or at least suggested
the contested limitations of claim 1. Accordingly, on this record, we find no
error in the Examiner's rejection of independent claim 1 and the not
separately argued claims 2-5, 7-18, 20-25, 27 and 29-32, rejected on the
same basis as claim 1.
As Appellants have not provided separate arguments with respect to
claims 6, 19, and 28, rejected as being unpatentable over the combination of
Smith, Hausdorff and Aminian, we similarly sustain the Examiner's rejection
of these claims under 35 U.S.C. § 103(a). (App. Br. 9).
Appellants do not address the rejection of claim 26 under 35 U.S.C.
§ 103 (a) as being unpatentable over the combination of Smith, Hausdorff,
8
Appeal2015-002712
Application 13/276,949
and Takenaka, in their Brief. Arguments not made are considered waived.
See 37 C.F.R. § 41.37(c)(l)(iv).
V CONCLUSION AND DECISION
We affirm the Examiner's decision rejecting claims 1-32 under 35
U.S.C. § 103(a).
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED
9