Ex Parte Cork et al

Patent Trial and Appeal Board

Apr 9, 2018

13748580 (P.T.A.B. Apr. 9, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/748,580 01/23/2013
112722 7590
Becker Patent Law, LLC
5800 Broad Street
Greendale, WI 53129
04/09/2018
FIRST NAMED INVENTOR
William H. Cork
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.
F-6649 8389
EXAMINER
WILLIAMS, TERESA S
ART UNIT PAPER NUMBER
3686
MAILDATE DELIVERY MODE
04/09/2018 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 WILLIAM H. CORK, BRIAN C. CASE,
JONATHAN PRENDERGAST, and JOHN W. BARRY
Appeal2016-007895 1
Application 13/748,580
Technology Center 3600
Before ROBERT E. NAPPI, JOHN P. PINKERTON, and
TERRENCE W. MCMILLIN, Administrative Patent Judges.
PINKERTON, Administrative Patent Judge
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's Final
rejection of claims 1-20. We have jurisdiction under 35 U.S.C. § 6(b ).
We AFFIRM-IN-PART.
1 Appellants identify Fenwal, Inc. as the real party in interest. App. Br. 1.
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STATEMENT OF THE CASE
Introduction
Appellants disclosed and claimed invention relates generally to
medical device management using a mobile device. Spec. i-f 5. 2
Claim 1 is representative and reproduced below (with the disputed
limitations emphasized in italics):
1. A computer-implemented method for medical device
management using a handheld mobile device, said method
compnsmg:
providing, via a handheld mobile device graphical user
interface, a representation of one or more medical devices, the
medical devices comprising at least one of a blood processing
device, an infusion pump, and a drug delivery device, with a
visual indication of a status for each medical device, the
representation visually conveying information regarding each of
the one or more medical devices and selectable by a user to
provide additional information regarding each of the one or
more medical devices;
updating the status for each medical device via wireless
communication with the handheld mobile device;
receiving an indication of an alarm code at the handheld
mobile device, the alarm code representing an alarm or error
condition of one or more of the medical devices; and
providing information at the handheld mobile device to
assist a user in handling the alarm or error condition of the one
or more of medical devices.
2 Our Decision refers to the Final Action mailed May 18, 2015 ("Final
Act."); Appellants' Appeal Brief filed Nov. 17, 2015 ("App. Br.") and Reply
Brief filed Aug. 18, 2016 ("Reply Br."); the Examiner's Answer mailed July
27, 2016 ("Ans."); and the original Specification filed Jan. 23, 2013
("Spec.").
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App. Br. 25 (Claims App.).
Rejections on Appeal
Claims 1-20 stand rejected under 35 U.S.C. § 101 because the
claimed invention is directed to a judicial exception (i.e., a law of nature, a
natural phenomenon, or an abstract idea) without significantly more.
Claims 1-3, 5-12, and 14--20 stand rejected under 35 U.S.C.
§ 102(b) as being anticipated by Gannin et al. (US 8,291,337 B2; issued Oct.
16, 2012) ("Gannin").
Claims 4 and 13 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Gannin and Hood et al. (US 6,488,029 Bl; issued Dec. 3,
2002) ("Hood").
ANALYSIS
Rejection of claims 1-20 under§ 1 OJ
Applicable Law
Under 35 U.S.C. § 101, a patent may be obtained "for any new and
useful process, machine, manufacture, or composition of matter, or any new
and useful improvement thereof." The Supreme Court has "long held that
this provision contains an important implicit exception: Laws of nature,
natural phenomena, and abstract ideas are not patentable." Alice Corp. v.
CLS Bank Int 'l, 134 S.Ct. 2347, 2354 (2014) (quoting Association for
Molecular Pathology v. Myriad Genetics, Inc., 569 U.S. 576, 589 (2013)).
The Supreme Court in Alice reiterated the two-step framework previously set
forth in Mayo Collaborative Services v. Prometheus Laboratories, Inc., 566
U.S. 66, 76-78 (2012), "for distinguishing patents that claim laws of nature,
natural phenomena, and abstract ideas from those that claim patent-eligible
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applications of those concepts." Alice, 134 S.Ct. at 2355. The first step in
the analysis is to "determine whether the claims at issue are directed to one of
those patent-ineligible concepts," such as an abstract idea. Id. The Court
acknowledged in Mayo that "all inventions at some level embody, use,
reflect, rest upon, or apply laws of nature, natural phenomena, or abstract
ideas." Mayo, 566 U.S. at 71. Therefore, we look to whether the claims
focus on a specific means or method that improves the relevant technology or
are instead directed to a result or effect that itself is the abstract idea and
otherwise merely recite generic processes and machinery. See Enfzsh, LLC v.
Microsoft Corp., 822 F.3d 1327, 1336 (Fed. Cir. 2016). If the claims are not
directed to an abstract idea, the inquiry ends. Otherwise, the inquiry
proceeds to the second step, in which the elements of the claims are
considered "individually and 'as an ordered combination' to determine
whether the additional elements 'transform the nature of the claim' into a
patent-eligible application." Alice, 134 S.Ct. at 2355 (quoting Mayo, 566
U.S. at 79--78).
Examiner's Findings
The Examiner finds claim 1 is directed to the abstract idea of "using
categories to organize, store, and transmit information." Ans. 5.
Specifically, the Examiner finds claim 1 provides a representation of one or
more medical devices and updates the status for each, receives an indication
of an alarm code or error condition of one or more of the medical devices,
"where categories of various medical device status (alarm code or error
condition) are organized, stored and transmitted (presented remotely on a
user mobile device indicating the medical device status)," which is similar to
concepts that have been identified as abstract by the courts, such as using
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categories to organize, store, and transmit information. Id. (citing Cyberfone
Systems, LLC v. CNN Interactive Group, Inc., 558 Fed. Appx. 988 (Fed Cir.
2014)). The Examiner also finds that no technological improvements have
been provided within the medical field and, although the recited invention
may improve the process of providing a representation of medical devices
and updating the status for each medical device, receiving an indication of an
alarm code or error condition of one or more of the medical devices (i.e. the
abstract idea), "there is no evidence to show that it improves the structural or
functional properties of the computer itself." Ans. 6. The Examiner also
finds the claims do not include additional elements that are sufficient to
amount to significantly more than the judicial exception because the
computer as recited is a generic computer component that performs generic
computer functions that are well-understood, routine, and conventional
activities previously known to the industry. Id. at 8.
Appellants' Arguments
Appellants argue claim 1 does not organize medical device statuses
into categories; instead, "a status is indicated visually and a status is
updated." Reply Br. 8; see also App. Br. 17. According to Appellants,
Cyberfone is distinguishable because claim 1 does not recite separating data
into different categories. Id. Appellants argue claim 1 "does not claim the
use of categories to organize, store, and transmit information" and, even if
claim 1 were to be categorizing an alarm code or error condition, as stated by
the Examiner, claim 1 is not "directed to" that categorization. Id. at 9.
Instead, Appellants argue:
Claim 1 is "directed to" providing a visual representation of
specific medical devices on a handheld mobile device,
including status, selectable by a user to provide additional
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information, updating the status, receiving an indication of an
alarm code at the handheld representing an alarm or error
condition of the medical device and providing information to
assist a user in handling the alarm or error condition. In short,
there is nothing "abstract" about this combination of features.
Id. at 9.
Appellants also argue claim 1 provides improvements to the
functioning of the handheld computer by addressing the problem of handheld
devices having limited display space for providing data:
Id.
Claim 1 addresses this concern by first displaying
representations of one or more medical devices and then, if
selected by a user, to provide additional information regarding
the medical devices, such as time remaining in an infusion,
elapsed time in an infusion, name of an operator, etc. [See]
present [S]pecification, para. [73]. Thus, the handheld
computer is able to display more information about a pump
with a limited screen size by enabling a user to select a medical
device before receiving the additional information (e.g., in
another screen).
Appellants argue, like the claims in DDR Holdings v. Hotel.com, 773
F.3d 1248 (Fed. Cir. 2014), claim 1 overcomes a problem specifically arising
in the realm of mobile computing devices: displaying a lot of data on a small
screen. Id. at 9--10.
Alice Step One
We are persuaded by Appellants' arguments that claim 1 is not
"directed to" an abstract idea. We agree with Appellants' argument that
claim 1 "does not claim the use of categories to organize, store, and transmit
information" and that claim 1 is distinguishable from Cybeifone because it
does not separate data into different categories. Reply Br. 9. We also agree
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with Appellants' argument that claim 1 as a whole is not directed to excluded
subject matter because it improves the computer-implemented process of
medical device management by, as Appellants argue, the specifically recited
steps of: (1) providing a visual representation of specific medical devices on
a handheld mobile device, including status, selectable by a user to provide
additional information; (2) updating the status via communication with the
handheld device; (3) receiving an indication of an alarm code at the handheld
device representing an alarm or error condition of the medical device; and (4)
providing information to assist a user in handling the alarm or error
condition. That is, we conclude the focus of claim 1 is on the specific
asserted improvement in computer capabilities and functioning of a handheld
mobile device for medical device management and not on a process that
qualifies as an abstract idea for which computers are invoked merely as a
tool. See Enfzsh, 822 F.3d at 1335-36. Because we find claim 1 is not
directed to an abstract idea, we do not need to proceed to step two of Alice.
Thus, for these reasons, we conclude claim 1, as well as claims 2-20, are
directed to patent-eligible subject matter under § 101.
Rejection of Claims 1-3, 5-12, and 14-20 under§ 102(b)
Claims 1, 5-10, and 14--20
Appellants argue that Gannin fails to disclose providing information
"to assist a user in handling the alarm or error condition of the one or more
medical devices," as recited in claim 1. App. Br. 4. Although Appellants
acknowledge that Gannin discloses generating an alert, Appellants argue
" [a Jn alert, without more, does not comprise 'information to assist a user in
handling an alarm or error condition."' Id. at 4--5 (citing Gannin Fig. 3,
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12:26-36; see also id. at 5-7). Appellants also argue that Gannin is designed
for desktop computer applications and, although Gannin discloses its
personal communication devices include "an in-house phone, a pager, and a
mobile device" (see Gannin 6:7-10), "there is no enabling teaching as to how
one of ordinary skill in the art would arrive at a truly handheld, mobile
device that provides updates, receives an alarm code, and provides
information to assist a user in handling the alarm." Id. at 7-8.
We are not persuaded by Appellants' arguments. Instead, we agree
with the Examiner's finding that Gannin discloses providing information in a
dialogue box "to assist in efforts to clearing a mismatched pump channel
alarm." Ans. 2 (citing Gannin, Fig. 9, 14:23-36). As the Examiner correctly
finds, Gannin discloses the dialogue box "includes an area indicating the
currently associated version of the order 915 and latest version of the order
920" and that a user "may select the latest version button to associate the
pump channel with the latest version of the order for the patient." Id. Thus,
we agree with the Examiner that Gannin discloses providing information "to
assist a user in handling the alarm or error condition of the one or more
medical devices." Id.
We also are not persuaded by Appellants' argument there is no
enabling teaching in Gannin of "a truly handheld, mobile device" with the
features of claim 1. Our reviewing court has held that the Examiner may rely
on disclosures of United States patents. Amgen Inc. v. Hoechst Marion
Roussel, Inc., 314 F.3d 1313, 1355 (Fed. Cir. 2003) ("[W]e hold a
presumption arises that both the claimed and unclaimed disclosures in a prior
art patent are enabled"); In re Antor Media Corp., 689 F.3d 1282, 1289 (Fed.
Cir. 2012) ("[W]e ... hold that ... an examiner is entitled to reject claims as
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anticipated by a prior art publication or patent without conducting an inquiry
into whether or not that prior art reference is enabling .... the burden shifts
to the applicant to submit rebuttal evidence of nonenablement.").
Here, although the burden shifted to Appellants to provide evidence of
nonenablement, Appellants failed to provide persuasive evidence or technical
reasoning showing that a person of ordinary skill in the art could not take the
disclosure of Gannin, in combination with his or her own knowledge of the
art, and be in possession of the invention. 3 See In re Graves, 69 F .3d 114 7,
1152 (Fed. Cir. 1995). Mere attorney arguments and conclusory statements
that are unsupported by factual evidence are entitled to little probative value.
In re Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997); In re De Blauwe, 736
F.2d 699, 705 (Fed. Cir. 1984).
In the Reply Brief, Appellants argue for the first time that Gannin does
not teach or suggest "receiving an indication of an alarm code at the handheld
mobile device, the alarm code representing an alarm or error condition of one
or more of the medical devices," as recited in claim 1. Reply Br. 1-3.
Because this argument is raised by Appellants for the first time in the Reply
Brief not in response to a shift in the Examiner's position or without
3 "The standard for enablement of a prior art reference for purposes of
anticipation under section 102 differs from the enablement standard under
35 U.S.C. § 112." Novo Nordisk Pharmaceuticals., Inc. v. Bio-Technology
General Corp., 424 F.3d 1347, 1355 (Fed. Cir. 2005) (citations omitted).
"While section 112 'provides that the [S]pecification must enable one skilled
in the art to 'use' the invention,[] 'anticipation does not require actual
performance of suggestions in a disclosure. Rather, anticipation only
requires that those suggestions be enabled to one of skill in the art.'[]
'Whether a prior art reference is enabling is a question of law based upon
underlying factual findings."' Id. (citations omitted).
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otherwise showing good cause, it is waived. See 37 C.F.R. § 41.41(b)(2)
(2012); see also Ex parte Borden, 93 USPQ2d 1473, 1474 (BPAI 2010)
(informative) ("[T]he reply brief [is not] an opportunity to make arguments
that could have been made in the principal brief on appeal to rebut the
Examiner's rejections, but were not.").
Thus, for these reasons, we agree with the Examiner's findings that
Gannin discloses "providing information at the handheld mobile device to
assist a user in handling the alarm or error condition of the one or more of
medical devices," as recited in claim 1. Accordingly, we sustain the
Examiner's rejection of claim 1 under§ 102(b ). For the same reasons, we
also sustain the Examiner's rejection of claims 10 and 18, which recite
limitations commensurate to the disputed limitation of claim 1, and
dependent claims 5-9, 14--17, 19, and 20, which are not separately argued.
Claims 2 and 11
Claim 2 recites "further comprises facilitating troubleshooting of an
alarm at one of the one or more medical devices via at least one of an entered
alarm code and a captured image of an alarm condition." App. Br. 25
(Claims App.). In the Final Action, the Examiner relied on Gannin at column
1, line 63---column 2, line 8 and column 5, lines 37--46 as disclosing the
limitations of claim 2. Final Act. 7. In the Answer, the Examiner relies on
column 14, lines 23-36, and Figure 9, of Gannin as disclosing the
"troubleshooting" of claim 2. Appellants argue that "[ n ]either the
'CURRENTLY ASSOCIATED VERSION' nor the 'LATEST VERSION'
[as shown in dialogue box 900 of Figure 9] is an 'entered alarm code' or a
'captured image of an alarm condition."' Reply Br. 3. Appellants also argue
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Gannin merely teaches pressing a button labeled "LATEST VERSION" or a
button labeled "CANCEL," but these are not alarm codes. Id. at 4.
We are persuaded by Appellants' arguments that the Examiner erred.
Thus, we do not sustain the Examiner's rejection of claim 2 under § 102(b ).
For the same reasons, we also do not sustain the rejection of claim 11, which
recites limitations commensurate to claim 2, under § 102(b ).
Claims 3 and 12
Claim 3 recites "displaying an inventory of available products for the
one or more medical devices at a healthcare facility and facilitating inventory
control via the mobile device." App. Br. 25 (Claims App.). The Examiner
finds these limitations are disclosed in Gannin because "[i]n relationship to
managing infusion pumps as a form of medical device, drug product
inventory such as milrinone, norepinephrine and dopamine of milliliters
mentioned in column 14, lines 10-22 serve as the inventory of available
products." Ans. 3
Appellants argue that the cited portion of Gannin describes Figure 8
and also states "[h ]ere there are five infusion pumps and channels connected
that have been associated with orders for the patient." Reply Br. 4.
Appellants also argue, and we agree, "[ s ]howing five pumps currently in use
is not 'displaying an inventory of available products for the medical devices
at a healthcare facility,' nor is it 'facilitating inventory control."' Reply Br.
5, 6; see also App. Br. 10-11.
We are persuaded by Appellants' arguments that the Examiner erred.
Thus, we do not sustain the rejection of claim 3 under § 102(b ). For the same
reasons, we also do not sustain the rejection of claim 12, which recites
limitations commensurate with those of claim 3, under § 102(b ).
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Rejection of Claims 4 and 13 under§ 103(a)
Claim 4 recites "providing training to a medical device operator via the
mobile device." App. Br. 25, (Claims App.). The Examiner finds the
limitations of claim 4 are taught or suggested by the combination of Gannin,
which teaches the mobile device, and Hood, which teaches the "maintenance
requirements for the transportable life support system are preferably
automated and integrated into the system such that notification of a
particular requirement is provided upon the display thereof, as well as
instructions for performing such maintenance, if desired." Ans. 4 (citing
Hood 26:65-27:4). The Examiner also finds the automated instructions of
Hood "serve as training to operate a medical device." Ans. 4. The Examiner
further finds "Gannin's method and system mobile device is combine[d] with
Hood's provided medical device training to provide a faster way to
troubleshoot infusion pump problems while treating patients." Id.
Appellants argue Hood is directed to a self-contained, transportable life
support system, and the display containing the maintenance requirements and
instructions "is the display of the transportable life support system," which
"does not teach providing training via the mobile device." App. Br. 12; see
also Reply Br. 7. Appellants also argue Hood teaches away from combining
its teachings with Gannin because "Hood criticizes care systems which
'require skilled operators having extensive training."' App. Br. 12-13 (citing
Hood 26:65-27:4); see also Reply Br. 7 (arguing "Hood teaches away from
requiring extensive training to use its life support system" and, therefore, one
of ordinary skill would not look to Hood for solutions to providing training
via a handheld device).
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We are not persuaded by Appellants' arguments. First, we are not
persuaded by Appellants' argument that Hood's display "does not teach
providing training via the mobile device" because the rejection is based on
the combined teachings of Gannin and Hood and the Examiner relies on
Gannin as teaching the "mobile device." App. Br. 12. Non-obviousness
cannot be established by attacking references individually where the rejection
is based upon the teachings of a combination of references. In re Merck &
Co. Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986). The relevant inquiry is
whether the claimed subject matter would have been obvious to those of
ordinary skill in the art in light of the combined teachings of the references.
See In re Keller, 642 F.2d 413, 425 (CCPA 1981).
Second, we are not persuaded by Appellants' argument that Hood
"teaches away" from being combined with Gannin. Hood teaches it is
desirable to "minimize" the amount of skill and training required for medics
and medical care givers in battlefield situations. See Hood 4:67-5:3. Hood,
therefore, does not criticize or discredit all training, including "training to a
medical device operator," as recited in claim 4. Claim 4 does not recite
"extensive" training. Hood also states, "it is desirable to provide a mobile
intensive care system which requires minimal skill and training for such
battlefield applications." See Hood 5:5-7. Hood accomplishes this goal by
providing maintenance instructions, i.e., training information, on the display
of the life support system itself. See Hood 26:65-27:4. Thus, contrary to
Appellants' argument, we find that Hood's teachings of providing an
intensive care system with an integrated display with maintenance
instructions for the system are entirely consistent with claim 4 's feature of
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providing training to a medical device operator of one of the medical devices
recited in claim 1.
Accordingly, we agree with the Examiner's (1) findings that the
combined teachings of Gannin and Hood teach or suggest the limitations of
claim 4 and (2) conclusion that the combination of references renders claim 4
unpatentable under§ 103(a). Thus, we sustain the Examiner's rejection of
claim 4. For the same reasons, we sustain the Examiner's rejection of claim
13, which recites limitations commensurate to those of claim 4, under
§ 103(a).
DECISION
We reverse the Examiner's rejection of claims 1-20 under 35 U.S.C.
§ 101.
We affirm the Examiner's rejection of claims 1, 5-10, and 14--20
under 35 U.S.C. § 102(b).
We reverse the Examiner's rejection of claims 2, 3, 11, and 12 under
35 U.S.C. § 102(b).
We affirm the Examiner's rejection of claims 4 and 13 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-IN-PART
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