Ex Parte GOLDENBERG

Patent Trial and Appeal Board

Sep 23, 2016

13627176 (P.T.A.B. Sep. 23, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/627,176 09/26/2012
37013 7590 09/27/2016
Rossi, Kimms & McDowell LLP
20609 Gordon Park Square
Suite 150
Ashburn, VA 20147
FIRST NAMED INVENTOR
David M. GOLDENBERG
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.
DMG0-0001US2 9379
EXAMINER
AL HASHEM!, SANA A
ART UNIT PAPER NUMBER
2156
NOTIFICATION DATE DELIVERY MODE
09/27/2016 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):
mail@rkmllp.com
EOfficeAction@rkmllp.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DAVID M. GOLDENBERG
Appeal2015-006338
Application 13/627,176
Technology Center 2100
Before ST. JOHN COURTENAY III, THU A. DANG, and
LARRY J. HUME, Administrative Patent Judges.
COURTENAY, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
This is a decision on appeal under 35 U.S.C. § 134(a) from the
Examiner's final rejection of claims 1-15. We have jurisdiction under 35
U.S.C. § 6(b).
We affirm-in-part.
Appeal2015-006338
Application 13/627,176
Invention
The disclosed and claimed invention on appeal relates to "an
interactive virtual doctor system using a network." (Spec. i-f 1).
Illustrative Claims 1 and 10
1. An apparatus comprising:
[L 1] a search processor that provides information on a specific
medical subject to a user, wherein said information is not
individualized for the user, and
[L2] a server that receives messages from the user and routes
information between the user and the search processor and
between the user and devices which interface with professional
health care providers.
10. A method of providing one of the group consisting of
medical, veterinary, and other health care information on
subjects of interest to a user; the method comprising:
[L 1] routing information between a user and a search processor;
and
[L2] providing information on a specific medical subject to the
user, wherein said information is based on a request from the
user to the search processor and is not individualized to the user.
(Emphasis and bracketed lettering added to highlight contested
limitations LI and L2 of each claim.).
Rejection
Claims 1-15 are rejected under 35 USC§ 102(e) as anticipated by
Douglas et al. ("Douglas") (US 6,039,688, iss. Mar. 31, 2000).
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Application 13/627,176
ANALYSIS
We have considered all of Appellant's arguments and any evidence
presented.
Rejection of Claim 1under35 U.S.C. §102(e)
Issue: Under 35 U.S.C. § 102(e), did the Examiner err in finding
Douglas expressly or inherently discloses contested limitations L 1 and L2 of
independent claim 1? 1
Regarding limitation L 1, Appellant contends, "Douglas clearly does
not disclose a search processor that provides information on a specific
medical subject to a user, wherein said information is not individualized for
the user." (App. Br. 4, 7, emphasis added).
We note claim 1 is directed to an apparatus. To show anticipation of
an apparatus, the Examiner must provide an express or inherent showing of
the corresponding structure, as found in the reference, arranged as claimed. 2
Here, we find the Examiner has not fully developed the record to
provide a mapping of the contested claimed "search processor" to any
corresponding structure found in Douglas. (Final Act. 2; Ans. 2-3; claim 1).
We decline to make speculative assumptions regarding the Examiner's
1 We give the contested claim limitations the broadest reasonable
interpretation consistent with the specification. See In re Morris, 127 F.3d
1048, 1054 (Fed. Cir. 1997).
2 Claims directed to an apparatus must be distinguished from the prior art in
terms of structure rather than function. In re Schreiber, 128 F.3d 1473,
1477-78 (Fed. Cir. 1997). "[A]pparatus claims cover what a device is, not
what a device does." Hewlett-Packard Co. v. Bausch & Lomb Inc., 909 F.2d
1464, 1469 (Fed. Cir. 1990).
3
Appeal2015-006338
Application 13/627,176
intended mapping of the contested "search processor" to a corresponding
feature in Douglas. We reach a similar finding regarding the "server"
recited in limitation L2. Therefore, on this record, we are persuaded the
Examiner erred regarding the anticipation rejection of apparatus claim 1
over Douglas. 3
Accordingly, we reverse the§ 102 rejection of independent claim 1,
and the rejection of claims 2-9, which depend therefrom.
Rejection of Claim 10 under 35 U.S.C. § 102(e)
Issue: Under 35 U.S.C. § 102(e), did the Examiner err in finding
Douglas expressly or inherently discloses contested limitations L 1 and L2 of
method claim 1 O?
As an initial matter of claim construction, we conclude the claimed
types of "information" ("medical, veterinary, and other health care
information," "routing information," and "providing information") are each
directed to non-functional descriptive material (NFDivI) that is intended for
human perception.4 (Claim 10, emphasis added).
3 Because a rejection under § 103 is not before us on appeal, we do not reach
and express no opinion as to whether claim 1 might be obvious over
additional teachings and suggestions of the Douglas reference, considered
alone, or considered in combination with one or more additional references.
(See e.g., Douglas, Abstract; col. 21 ). In the event of further prosecution of
this application, we leave such consideration to the Examiner. Although the
Board is authorized to reject claims under 37 C.F.R. § 41.50(b), no inference
should be drawn when the Board elects not to do so. See Manual of Patent
Examining Procedure (MPEP) § 1213.02.
4 The l\llanual of Patent Examining Procedure (Yv1PEP) guides: "where the
claim as a whole is directed [to] conveying a message or meaning to a
human reader independent of the intended computer system, and/ or the
4
Appeal2015-006338
Application 13/627,176
We conclude the recited "medical, veterinary, and other health care
information" is not positively recited as actually being used to change or
affect any step or act of method claim 10. (Emphasis added). Therefore,
we find unpersuasive all of Appellant's contentions regarding independent
claim 10, because each contention is premised on the informational content
of the recited "medical, veterinary, and other health care information,"
which is merely intended for human perception. (App. Br. 3-6).
The PT AB has provided guidance in decisions regarding claims that
differ from the prior art based only on NFDM which is data. See Ex parte
Nehls, 88 USPQ2d 1883, 1889 (BPAI 2008) (precedential) ("[T]he nature of
the information being manipulated does not lend patentability to an
otherwise unpatentable computer-implemented product or process."); Ex
parte Mathias, 84 USPQ2d 1276, 1279 (BPAI 2005) (informative)
("[N]onfunctional descriptive material cannot lend patentability to an
invention that would have otherwise been anticipated by the prior art."),
aff'd, 191 Fed. Appx. 959 (Fed. Cir. 2006) (Rule 36); Ex parte Curry, 84
USPQ2d 1272, 1274 (BPAI 2005) (informative) ("Nonfunctional descriptive
material cannot render nonobvious an invention that would have otherwise
been obvious."), aff'd, No. 06-1003 (Fed. Cir. June 12, 2006) (Rule 36).
This reasoning is applicable here, regarding the contested
informational content of the recited "medical, veterinary, and other health
care information" intended for human perception. (Claim 10).
computer-readable medium merely serves as a support for information or
data, no functional relationship exists." MPEP § 2111.05 (III.) (9th Ed., Rev.
07.2015, Last Revised Nov. 2015).
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Appeal2015-006338
Application 13/627,176
Therefore, on this record, and based on a preponderance of the
evidence, we are not persuaded of error regarding the Examiner's finding of
anticipation. (Final Act. 4; Ans. 2-3).
Accordingly, we sustain the Examiner's anticipation rejection of
independent method claim 10.
Rejection of Dependent Claims 11-13 under 35U.S.C.§102(e)
We reverse the Examiner's rejection of claim 11, which recites the
step of "determining by the search processor," for the same reason explained
above regarding claim 1. We find the Examiner has not fully developed the
record to provide a mapping of claimed "search processor" to any
corresponding structure in Douglas.
Accordingly, we reverse the rejection of dependent claim 11, and the
rejection of claims 12 and 13, which depend directly or indirectly from
claim 11. 5
5 In the event of forther prosecution, we leave it to the Examiner to consider
\vhether all claims which recite the limitations, "the level of sophistication of
the user/' "a higher level of service'' and "user-profossional relationship"
either directly or by virtue of their dependency, meet the requirements of
§ 112, second paragraph. Specifically, the scope of these limitations appears
to depend solely on the unrestrained, subjective opinion of a particular
individual purportedly practicing the invention. See Datamize, LLC v.
Plumtree Software, Inc., 417 F.3d 1342, 1350 (Fed. Cir. 2005) ("The scope
of claim language cannot depend solely on the unrestrained, subjective
opinion of a particular individual purportedly practicing the invention; see
also Application of Musgrave, 431 F.2d 882, 893 (1970) (noting "[a] step
requiring the exercise of subjective judgment without restriction might be
objectionable as rendering a clairn indefinite.). S'ome objectrve standard
must be provided in order to allow the public to detennine the scope of the
claimed invention." (Emphasis added)), abrogated on other grouncl.~· by
Nautilus, Inc. v. Biosig Instruments, Inc., 134 S. Ct. 2120 (2014). Our
reviewing court recently reaffirmed (post Nautilus) that claim terms of
6
Appeal2015-006338
Application 13/627,176
Rejection ofDependent Claim 14 under 35 U.S.C. § 102(e)
Appellant does not provide separate, substantive arguments regarding
dependent claim 14, which depends directly from independent claim 10.
Arguments not made are considered waived. See 37 C.F.R. § 41.37(c)(l)(iv).
Therefore, we sustain the Examiner's rejection of claim 14, which falls with
claim 10.
Rejection of Dependent Claim 15 under 35 U.S.C. § 102(e)
Claim 15 recites:
A method according to claim 14, further comprising effecting a
change in body function or chemistry of the user. (Emphasis
added).
The Examiner concludes the broadest reasonable interpretation of the
claim limitation "body function or chemistry of the user" is either or both
"chemistry of the user" and "body function of the user," because of the
,..J. • • • " " (A 4 h . ,..J ,..J ,..J) 6 coorumatmg conJunchon or. ,- _ns. -; emp __ as1s auueu/"
Applying this construction, the Examiner finds Douglas's devices,
which interface with professional healthcare providers and effect a change in
degree "necessarily call[] for a comparison against some baseline." Liberty
Ammunition, Inc., v. U.S., Nos. 2015-5057, 2015-5061, 2016 WL 4488151,
at *5 (Fed. Cir. August 26, 2016). During examination before the USPTO,
"if a claim is amenable to two or more plausible claim constructions, the
USPTO is justified in requiring the applicant to more precisely define the
metes and bounds of the claimed invention by holding the claim ...
indefinite." Ex parte Miyazaki, 89 USPQ2d 1207, 1211 (BPAI 2008)
(precedential).
6 When a claim covers several alternatives, the claim may be unpatentable if
any of the alternatives within the scope of the claim are taught by the prior
art. See Brown v. 3M, 265 F.3d 1349, 1351 (Fed. Cir. 2001).
7
Appeal2015-006338
Application 13/627,176
the body function or chemistry, disclose the contested limitation(s). (Final
Act. 4, citing Douglas, col. 9, 27-36, Fig. 13).
In reviewing the record, we are not persuaded the Examiner's claim
interpretation is overly broad or unreasonable,7 because Appellant does not
point to any limiting definition, in the claim, or in the Specification, that
would preclude the Examiner's reading on Douglas. (Id.). 8 We find the
scope of the contested limitation "effecting a change in body function or
chemistry of the user" reads on Douglas's monitoring of the patient's
exercise, anxiety (emotion), measuring cholesterol levels, etc. (Id. ). 9
Therefore, we find a preponderance of the evidence supports the Examiner's
finding of anticipation. Accordingly, we sustain the Examiner's rejection of
dependent claim 15.
7 Because "applicants may amend claims to narrow their scope, a broad
construction during prosecution creates no unfairness to the applicant or
patentee." In re ICON Health and Fitness, Inc., 496 F.3d 1374, 1379 (Fed.
Cir. 2007) (citation omitted).
8 It is the Appellants' burden to precisely define the invention, not the
PTO's. In re Morris, 127 F.3d 1048, 1056 (Fed. Cir. 1997). Although a
patent applicant is entitled to be his or her own lexicographer of patent claim
terms, in ex parte prosecution it must be within limits. In re Corr, 34 7 F .2d
578, 580 (CCPA 1965). The applicant must do so by placing such
definitions in the Specification with sufficient clarity to provide a person of
ordinary skill in the art with clear and precise notice of the meaning that is to
be construed. See also In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994).
9 "Anticipation of a patent claim requires a finding that the claim at issue
'reads on' a prior art reference." Atlas Powder Co. v. IRECO, Inc., 190 F.3d
1342, 1346 (Fed Cir. 1999).
8
Appeal2015-006338
Application 13/627,176
DECISION
We reverse the Examiner's decision rejecting claims 1-9, and 11-13
under§ 102(e).
We affirm the Examiner's decision rejecting claims 10, 14, and 15
under§ 102(e).
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). See 37 C.F.R.
§ 41.50(±).
AFFIRMED-IN-PART
9