Ex Parte Firminger et al

Patent Trial and Appeal Board

Jun 29, 2016

12658056 (P.T.A.B. Jun. 29, 2016)

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.
12/658,056 02/01/2010 Shawn P. Firminger SE1-1024-US 9405
80118 7590 06/29/2016
Constellation Law Group, PLLC
P.O. Box 580
Tracyton, WA 98393
EXAMINER
BURGESS, JOSEPH D
ART UNIT PAPER NUMBER
3626
MAIL DATE DELIVERY MODE
06/29/2016 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 SHAWN P. FIRMINGER, JASON GARMS,
RODERICK A. HYDE, EDWARD K.Y. JUNG,
CHRIS DEMETRIOS KARKANIAS, ERIC C. LEUTHARDT,
ROYCE A. LEVIEN, RICHARD T. LORD, ROBERT W. LORD,
MARK A. MALAMUD, JOHN D. RINALDO JR.,
CLARENCE T. TEGREENE, KRISTIN M. TOLLE, and
LOWELL L. WOOD JR.
____________

Appeal 2013-000626
Application 12/658,0561
Technology Center 3600
____________

Before: JOSEPH A. FISCHETTI, BIBHU R. MOHANTY, and BRADLEY
B. BAYAT, Administrative Patent Judges.

FISCHETTI, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants seek our review under 35 U.S.C. § 134 of the Examiner’s
Final rejection of claims 135–178, 183, 188–193, and 195. We have
jurisdiction under 35 U.S.C. § 6(b).

1 Appellants identify Searete LLC, which is wholly owned by Intellectual
Ventures Management, LLC., as the real party in interest. (Appeal Br. 4).
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SUMMARY OF DECISION
We AFFIRM.
THE INVENTION
Appellants’ claims “relate[] to data capture and data handling
techniques.” (Spec. 9).
Claim 135 reproduced below, is representative of the subject matter
on appeal.
135. A system comprising:
a detector module, including a microprocessor,
configured to detect an indication of at least one attribute of an
individual;
an accepter module configured to accept sensor data
about the individual; and
a presenter module configured to present a set of health
care options at least partially based on detecting the indication
of at least one attribute of an individual and accepting the
sensor data about the individual.

THE REJECTIONS
The Examiner relies upon the following as evidence of
unpatentability:
Thomas et al. US 2004/0015337 A1 Jan. 22, 2004
(hereinafter “Thomas”)
Kanai US 6,807,531 B1 Oct. 19, 2004
Eaton et al. US 2006/0136264 A1 June 22, 2006
(hereinafter “Eaton”)
Leyde et al. US 2007/0150024 A1 June 28, 2007
(hereinafter “Leyde”)
Flaherty et al. US 7,901,368 B2 Mar. 8, 2011
(hereinafter “Flaherty”)

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The following rejections are before us for review.
Claims 135, 136, 139–142, 144–148, 152, 154, 160–168, 172, 188–
193, and 195 are provisionally rejected on the ground of nonstatutory
obviousness-type double patenting as being unpatentable over claims 1, 2, 5,
10–14, 18, 20, 26–34, 38, 54, 56–59, 61, 64, 127, 128, and 132–134 of
copending Application No. 12/657,980.
Claims 135–146, 148–158, 160, 161, 163–174, 176–178, 188–191,
and 195 are rejected under 35 U.S.C. § 102(b) as being anticipated by
Leyde.
Claim 147 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Leyde and Thomas.
Claims 159, 183, 192, and 193 are rejected under 35 U.S.C. § 103(a)
as being unpatentable over Leyde and Eaton.
Claim 162 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Leyde and Flaherty.
Claim 175 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Leyde and Kanai.

FINDINGS OF FACT
1. We adopt the Examiner’s findings as set forth on pages 3–19 of
the Final Action and on pages 5 and 8–9 of the Answer.
2. Concerning claim 135, the Examiner found that Leyde discloses
each claim element as follows:

• a detector module, including a microprocessor, configured to
detect an indication of at least on attribute of an individual (see
at least paragraphs 0016, 0072, sensors are used to detect
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physiological parameters of a patient, interpreted as attributes
of an individual);

• an accepter module configured to accept sensor data about the
individual (see at least paragraph 0064, device, interpreted as
accepter module, accepts sensing signals from patient);

• a presenter module configured to present a set of health care
options at least partially based on detecting the indication of the
at least one attribute of the individual and accepting the sensor
data about the individual (see at least paragraphs 0129-0134,
patient communication device provides multiple
recommendation/instruction outputs regarding appropriate
action to take for epileptic seizure treatment including
medication, behavioral modification, warnings, etc.) (emphasis
omitted).

(Final Act. 4-5).

ANALYSIS
35 U.S.C. § 102 REJECTION
Appellants argue that the Examiner has not made a prima facie case of
unpatentability for independent claim 135. (See Appeal Br. 42–54; see also
Reply Br. 3–8 and Supp. Reply Br. 4–14). According to Appellants:
[T]he evidence cited by the USPTO ostensibly to establish a
prima facie case of unpatentability merely cites locations in the
reference in parentheses which are not explained. Importantly,
what the USPTO [E]xaminer has provided here is neither claim
interpretation nor a reasoned application of the cited material to
the claims. Reciting the claims back to an [Appellant] along
with parenthetical locations amounts to a “stab in the dark”
rather than requisite claim interpretation and reasoned
application of the material(s) to the claims.
(Appeal Br. 42). Appellants further allege:
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Insofar that [Appellant] has shown that “at first sight; on the
first appearance; on the face of it; so far as can be judged from
the first disclosure” the USPTO-cited art is very different from
Claim 135, and [Appellant] has noted that the USPTO has not
cited to any objectively verifiable evidence/argument based on
same sufficient to remedy such prima facie differences, the
USPTO-cited technical material does not establish a prima
facie case of the unpatentability of Claim 135 either under the
MPEP or under controlling legal standards.
(Id. at 52, citing definition of “prima facie,” Black’s Law Dictionary 1189
(6th ed. 1990)). In light of the purported absence of objectively verifiable
evidence, Appellants assert that the Examiner’s findings are based on
“[i]nadvertent [i]mpermissible [h]indsight, [p]ersonal [k]nowledge, or
Official Notice.” (Id. at 53).
Appellants’ arguments are not persuasive. The Federal Circuit has
held that the USPTO carries its procedural burden of establishing a prima
facie case when its rejection satisfies the requirements of 35 U.S.C. § 132 by
notifying the applicant of the reasons for rejection, “‘. . . . together with such
information and references as may be useful in judging of the propriety of
continuing the prosecution of [the] application.’” (See In re Jung, 637 F.3d
1356, 1362 (Fed. Cir. 2011)). Thus, “all that is required of the office to meet
its prima facie burden of production is to set forth the statutory basis of the
rejection and the reference or references relied upon in a sufficiently
articulate and informative manner as to meet the notice requirement of
§ 132.” (Id. at 1363).
Here, the Examiner notified Appellants that the sole independent
claim 135 is rejected under 35 U.S.C. § 102(b) as anticipated by Leyde, and
the Examiner cited specific portions of Leyde, by paragraph number, that are
the basis for the rejection. (See Final Act. 4–5; see also Answer 8). The
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cited portions of the references together with the accompanying explanations
(see Answer 8) constitute the objectively verifiable evidence, which
Appellants allege is lacking.
We find that the Examiner has made a prima facie case of
unpatentability for each rejected claim, because the Examiner has made at
least one finding for each claim element that includes a citation to a specific
portion of Leyde and a short explanation of how the cited section meets the
claim element. (Final Act. 4-15). Taking independent claim 135 for
example, the Examiner found that Leyde discloses detector module at
paragraphs 16 and 72, stating, “sensors are used to detect physiological
parameters of a patient, interpreted as attributes of an individual”. (FF. 2).
The Examiner also found that Leyde discloses an accepter module at
paragraph 64 stating, the individual device, “accepts sensing signals from
patient”. Id. The Examiner further found that Leyde discloses a presenter
module at paragraphs 129-134, stating, “patient communication device
provides multiple recommendation/instruction outputs regarding appropriate
action to take for epileptic seizure treatment including medication,
behavioral modification, warnings, etc.).” Id.
At best, Appellants assert,
Leyde recites, inter alia, In [sic] addition to using
the neural state, other patient dependent
parameters, such as patient history, and/or other
physiological signals from the patient may be used
to characterize the propensity for seizure. Some of
the physiological signals that may be monitored
include, temperature signals from other portions of
the body, blood flow measurements in other parts
of the body, heart rate signals and/or change in
heart rate signals, respiratory rate signals and/or
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change in respiratory rate signals, chemical
concentrations of other medications, pH in the
blood or other portions of the body, blood
pressure, other vital signs, other physiological or
biochemical parameters of the patient's body, or
the like).
(Appeal Br. 52).
We are not persuaded by Appellants’ statement here because it does
not tell why the data input about the patient’s condition does not meet the
claim requirements of inputted data. Against this assertion, the Examiner on
page 8 of the Answer, explains how Leyde meets the requirements of claim
135 element by element, which findings we adopt herein as our own.
In view of the foregoing, which is representative of the rejection
throughout, we find that the Examiner establishes a prima facie case of
anticipation. Appellants do not rebut the prima facie case by distinctly and
specifically pointing out supposed error in the Examiner’s action, as well as
the specific distinctions believed to render a claim patentable over the cited
art. (See 37 C.F.R. 41.37(c)(iv) (2015); see also In re Lovin, 652 F.3d 1349,
1357 (Fed. Cir. 2011) (“[W]e hold that the Board reasonably interpreted
Rule 41.37 to require more substantive arguments in an appeal brief than a
mere recitation of the claim elements and a naked assertion that the
corresponding elements were note found in the prior art.”)). Appellants have
failed to carry this burden.
Rather than explaining how the cited portions of Leyde do not
disclose the limitations of claim 135, Appellants merely quote the language
of claim 135 and the cited portions of Leyde and argue that the cited
portions do not disclose the identical claim language. (See Appeal Br. 52
(“[Appellant] has shown by direct quotations that Independent Claim 135
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and the Leyde reference are very different on their faces.”); see also Supp.
Reply Br. 5 (“Applicant/Appellant has tried to show patentability by
demonstrating mismatches between the claim language and the language of
the cited documents.”)). But, simply because the exact language of a claim
is not disclosed in a reference does not mean that the claimed subject matter
is not otherwise described using different words in the reference.
Anticipation “is not an ‘ipsissimis verbis’ test.” In re Bond, 910 F.2d 831,
832-33 (Fed. Cir. 1990) (citing Akzo N.V. v. U. S. Int'l Trade Comm'n, 808
F.2d 1471, 1479 n.11 (Fed. Cir. 1986)). Given that Appellants do not
address the Examiner’s specific findings, apart from their sufficiency to
establish a prima facie case, we are unpersuaded of error in the Examiner’s
determination that Leyde anticipates claim 135. We decline to examine the
claims sua sponte, looking for distinctions over the prior art. (Cf. In re
Baxter Travenol Labs., 952 F.2d 388, 391 (Fed. Cir. 1991) (“It is not the
function of this court to examine the claims in greater detail than argued by
an [A]ppellant, looking for [patentable] distinctions over the prior art.”)).
In view of the foregoing, we sustain the Examiner’s rejection of
independent claim 135 under 35 U.S.C. § 102(b) as anticipated by Leyde.
Appellants’ arguments for dependent claims 138–146, 148–158, 160, 161,
163–165, 167–174, 176–178, 188–191, and 195 assert nothing more than
what Appellants argue in regard to independent claim 135 (see Appeal Br.
53–54, n. 15), and we sustain the Examiner’s rejection of these claims for
the same reasons as claim 135.
Appellants separately address dependent claims 136, 137, and 166.
(Appeal Br. 55–61). In doing so, Appellants again only quote the language
of these claims and the portions of Leyde cited by the Examiner and allege
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that the cited portions do not disclose the identical claim language. (See id.).
Given that Appellants offer no substantive arguments to rebut the
Examiner’s specific findings for these claims (see Final Act. 5, 11; see also
Answer 8–9), Appellants do not establish error in the Examiner’s rejection.
Therefore, we sustain the Examiner’s rejection of claims 136, 137, and 166
under 35 U.S.C. § 102(b) as anticipated by Leyde.

35 U.S.C. § 103 REJECTIONS
Appellants’ arguments for dependent claims 147, 159, 162, 175, 181–
183, 192, and 193 assert nothing more than what Appellants allege in regard
to independent claim 135 (see Appeal Br. 53–54, n. 15), and we sustain the
Examiner’s rejection of these claims for the same reasons as claim 135.

DOUBLE PATENTING REJECTION
Appellants’ arguments to the double patenting rejection are nothing
more than unsubstantiated assertions that the Examiner “provided no
objectively verifiable evidence, nor argument based on objectively verifiable
evidence, ... .” (Appeal Br. 16). Appellants also assert that the Examiner’s
determinations are insufficient because the claims of the copending
application do not include the claim limitations verbatim. (See id. (“Insofar
as the cited copending references do not literally recite what PTO asserts
would have been ‘obvious’ based on their disclosures, [Appellant]
respectfully asserts that PTO must have relied on ‘personal knowledge’ or
taken improper ‘official notice’ of one or more factors to reach its
assertions.”)).
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But, the Examiner made specific determinations in regards to the
obviousness double patenting rejection (see Final Act. 3–4; see also Answer
5), which we adopt herein as our own. Appellants do not directly address
these determinations and explain why the claims of the co-pending
application cause those of the instant application to be rejection under a
double patenting rejection. Even Appellants’ argument to lacking verbatim
claim limitations is misplaced because this an obvious, and not a statutory
double patenting rejection.
As such, Appellants do not apprise us of error in the Examiner’s
rejection, and we sustain the Examiner’s provisional rejection of claims 135,
136, 139–142, 144–148, 152, 154, 160–168, 172, 188–193, and 195 on the
ground of nonstatutory obviousness-type double patenting as being
unpatentable over claims 1, 2, 5, 10–14, 18, 20, 26–34, 38, 54, 56–59, 61,
64, 127, 128, and 132–134 of copending Application No. 12/657,980.

CONCLUSIONS OF LAW
We conclude the Examiner did not err in provisionally rejecting
claims 135, 136, 139–142, 144–148, 152, 154, 160–168, 172, 188–193, and
195 on the ground of nonstatutory obviousness-type double patenting.
We conclude the Examiner did not err in rejecting claims 135–146,
148–158, 160, 161, 163–174, 176–178, 188–191, and 195 under 35 U.S.C.
§ 102(b).
We conclude the Examiner did not err in rejecting claims 147, 159,
162, 175, 183, 192, and 193 under 35 U.S.C. § 103(a).
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DECISION
The decision to rejection claims 135–178, 183, 188–193, and 195 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). (See 37 C.F.R.
§ 1.136(a)(1)(iv)).
AFFIRMED