Ex Parte Firminger et al

Patent Trial and Appeal Board

Jun 29, 2016

12657498 (P.T.A.B. Jun. 29, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
12/657,498 0112112010 Shawn P. Firminger
80118 7590 06/29/2016
Constellation Law Group, PLLC
P.O. Box 580
Tracyton, WA 98393
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.
SEl -1022-US 3665
EXAMINER
BURGESS, JOSEPH D
ART UNIT PAPER NUMBER
3626
MAILDATE 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, RICHARDT. LORD, ROBERT W. LORD,
MARK A. MALAMUD, JOHN D. RINALDO JR.,
CLARENCE T. TEGREENE, KRISTIN M. TOLLE, and
LOWELL L. WOOD JR.
Appeal2013-000625
Application 12/657,498 1
Technology Center 3600
Before, JOSEPH A. FISCHETTI, BIBHU R. MOHANTY, and BRADLEY
B. BAY AT, 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 135-183, 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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Application 12/657,498
We AFFIRM.
SUMMARY OF DECISION
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:
an attribute accepter module configured to accept an
indication of at least one attribute of an individual, the attribute
accepter module including a microprocessor;
a data 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 accepting the indication
of at least one attribute of an individual and accepting sensor
data about the individual.
THE REJECTIONS
The Examiner relies upon the following as evidence of
unpatentability:
Thomas et al. US 2004/0015337 Al
(hereinafter "Thomas")
Kanai US 6,807 ,531 B 1
Eaton et al. US 2006/0136264 Al
(hereinafter "Eaton")
Leyde et al. US 2007/0150024 Al
(hereinafter "Leyde")
Flaherty et al. US 7,901,368 B2
(hereinafter "Flaherty")
2
Jan. 22, 2004
Oct. 19, 2004
June 22, 2006
June 28, 2007
Mar. 8, 2011
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Application 12/657,498
The following rejections are before us for review.
Claims 135-139, 142, 144--148, 157, 158, 160-165, 167, 177, 178,
180, 182, 186, 188, 189, and 191-196 are provisionally rejected on the
ground of nonstatutory obviousness-type double patenting as being
unpatentable over claims 1-5, 8, 10-14, 23, 26-31, 33, 43, 44, 54--59, 61,
64, 127, 128, and 132-134 of copending Application No. 12/657,429.
Claims 135-146, 148-158, 160, 161, 163-174, 176-180, 188-191,
and 195 are rejected under 35 U.S.C. § 102(b) as being anticipated by
Ley de.
Claim 147 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Leyde and Thomas.
Claims 159, 181-183, 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 Ley de 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 3-20 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:
• attribute accepter module configured to accept an
indication of at least one attribute of an individual,
the attribute accepter module including a
microprocessor (see at least paragraphs
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0065, 0089, patient communication device accepts
patient inputs including patient states and medical
history, interpreted as attributes);
• a data accepter module configured to accept
sensor data about the individual (see at least
paragraph 0064, device accepts sensing signals
from patient);
• a presenter module configured to present a set of
health care options at least partially based on
accepting the indication of at least one attribute of
an individual and accepting 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. 43-56; 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. 43). Appellants further allege:
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Insofar that [Appellant] has shown that "atjzrst sight; on the
first appearance; on the face of it; so far as can be judged from
the first disclosure" the US PTO-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
US PTO-cited technical material does not establish a prima
facie case of the unpatentability of Claim 13 5 either under the
MPEP or under controlling legal standards.
(Id. at 54, 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 ]now ledge, or
Official Notice." (Id. at 55).
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.
Specifically, we find that the Examiner has made a prima facie case
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--16). Taking independent claim 135 for
example, the Examiner found that Leyde discloses an attribute accepter
module at paragraphs 65, and 89, stating, "patient communication device
accepts patient inputs including patient states and medical history,
interpreted as attributes". (FF. 2). The Examiner also found that Leyde
discloses a data accepter module at paragraph 64 stating, the "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, that
Leyde recites, inter alia, A [sic] patient
communication assembly 18 may be in wireless or
wired communication with device assembly 12 so
as to provide a user interface for one-way or two-
way communication between the patient and other
components of system 10 .... The inputs from the
patient may be used to indicate that a seizure has
occurred, that the patient is having an "aura", or
the like.
(Appeal Br. 53-54).
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We are not persuaded by Appellants' statement here because it does
not tell why the one-way or two-way communications causes the claim not
to be met by Leyde. 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 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.
Appellants, rather than explaining how the cited portions of Leyde do
not disclose the limitations of claim 135, 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. 54 ("Applicant has
shown by direct quotations that Independent Claim 13 5 and the Ley de
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.")). Given that Appellants do not address the Examiner's
specific findings, apart from their allegation of sufficiency to establish a
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prima facie case, we are unpersuaded of error in the Examiner's
determination that Ley de anticipates claim 13 5. 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, 176-180, 188-191, and 195 assert nothing more than
what Appellants argue in regard to independent claim 135 (see Appeal Br.
56, n. 15), and we sustain the Examiner's rejection of these claims for the
same reasons as claim 13 5.
Appellants attempt to separately address dependent claims 136, 137,
and 166 (Appeal Br. 57---63), again merely involves Appellants quoting the
language of these claims and the portions of Leyde cited by the Examiner
and generally alleging 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
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to independent claim 135 (see Appeal Br. 56, n. 15), and we sustain the
Examiner's rejection of these claims for the same reasons as claim 13 5.
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. 17). 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, Applicant respectfully
asserts that PTO must have relied on 'personal knowledge' or taken
improper 'official notice' of one or more factors to reach its assertions.")).
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 is 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
135-139, 142, 144--148, 157, 158, 160-165, 167, 177, 178, 180, 182, 186,
188, 189, and 191-196 on the ground ofnonstatutory obviousness-type
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double patenting as being unpatentable over claims 1-5, 8, 10-14, 23, 26-
31, 33, 43, 44, 54--59, 61, 64, 127, 128, and 132-134 of copending
Application No. 12/657,429.
CONCLUSIONS OF LAW
We conclude the Examiner did not err in provisionally rejecting
claims 135-139, 142, 144--148, 157, 158, 160-165, 167, 177, 178, 180, 182,
186, 188, 189, and 191-196 on the ground ofnonstatutory obviousness-type
double patenting.
We conclude the Examiner did not err in rejecting claims 135-146,
148-158, 160, 161, 163-174, 176-180, 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, 181-183, 192, and 193 under 35 U.S.C. § 103(a).
DECISION
The decision to reject claims 135-183, 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)(l )(iv)).
AFFIRMED
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