Ex Parte Hawthorne et al

Patent Trial and Appeal Board

Sep 6, 2016

11104810 (P.T.A.B. Sep. 6, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
111104,810 04/13/2005 Jeffrey Scott Hawthorne
86462 7590 09/08/2016
STANLEY J. GRADISAR ATTORNEY AT LAW, LLC
1182 THATCH CIRCLE
CASTLE ROCK, CO 80109
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.
40510.0002USD2 1276
EXAMINER
RAPILLO, KRISTINE K
ART UNIT PAPER NUMBER
3626
NOTIFICATION DATE DELIVERY MODE
09/08/2016 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):
stan@sjgaalpatentlaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JEFFREY SCOTT HAWTHORNE,
MICHAEL LEONARD IIAMS, GLENN CHARLES TUBB,
RICHARD A. STOLL, GARY ALAN SHOFFNER,
and BRIAN KIRBY PHILLIPS 1
Appeal2013-008302
Application 11/104,810
Technology Center 3600
Before STEVEN D.A. McCARTHY, DANIELS. SONG and
MICHAEL L. HOELTER, Administrative Patent Judges.
SONG, Administrative Patent Judge.
DECISION ON APPEAL
1 The real party in interest is Alcohol Monitoring Systems, Inc. (Appeal
Brief (hereinafter "App. Br.") 3).
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Application 11/104,810
STATEMENT OF THE CASE
The Appellants appeal under 35 U.S.C. § 134 the Examiner's final
rejection of claims 1-6, 8-18, and 20-22 in the present application (App. Br.
9). We have jurisdiction under 35 U.S.C. §§ 6(b) and 134.
We AFFIRM.
The claimed invention is directed to a bio-information monitoring
system, and method for using a bio-information network (Abstract; Field of
the Invention). Representative independent claim 11 reads as follows (App.
Br. 38-39, Claims App'x, emphasis added):
11. A method for using a bio-information network to process
raw data received via a bio-information modem from a
continuous remote bio-information unit adapted to be attached
to a human subject, the method comprising the steps of:
(a) receiving in a communication server in the bio-
information network the raw data over a communication link
from the bio-information modem, wherein the raw data is
gathered and stored by the continuous remote bio-information
unit while the human subject goes about their normal activities
and without active participation by the human subject, and the
stored raw data is transmitted to the bio-information modem at
a predetermined scheduled times without active participation by
the human subject;
(b) parsing with a situation analyzer said raw data
through a predetermined set of rules into a plurality of
messages;
(c) determining with a wodiflow instructions and any
historical data relating to similar messages an action to be
applied to each of said plurality of messages;
(d) storing in a treatment provider/subject database said
raw data, an information on the human subject, an information
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on a treatment provider associated with the human subject, a
predetermined notification method, from among a plurality of
notification methods, for notifying a monitoring personnel of
said treatment provider associated with the human subject; and
( e) when said action to be applied to a one of said
messages requires an immediate notification of said monitoring
personnel, executing with a notification server said
predetermined notification method to communicate a one of
said plurality of messages to said monitoring personnel.
The Examiner rejects claims 1---6, 8-18, and 20-22 as unpatentable
under 35 U.S.C. § 103(a) as obvious over the combination of Brown,2
Reuss, 3 and Linberg.4 (Ans. 3; Final Act. 2).
ANALYSIS
Only those arguments actually made by the Appellants have been
considered in this decision. Arguments that the Appellants could have made
but chose not to make have not been considered and are deemed to be
waived. See 37 C.F.R. § 41.37(c)(l)(vii).
The Examiner rejects claims 1---6, 8-18, and 20-22 as obvious over
the combination of Brown, Reuss, and Linberg (Ans. 3). The Appellants
disagree with the rejection, and in their Appeal Brief, present arguments
asserting patentability of independent claim 11 first (App. Br. 10, et seq.).
2 U.S. Patent No. US 6,168,563 Bl issued January 2, 2001 to Brown.
3 U.S. Patent No. US 6,364,834 Bl issued April 2, 2002 to Reuss et al.
4 U.S. Patent No. US 6,497,655 Bl issued December 24, 2002 to Linberg et
al.
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Application 11/104,810
In response, the Examiner addresses claim 11 first (Ans. 3, 14--18). Thus,
we likewise address claim 11 first herein.
Claim 11
In rejecting claim 11, the Examiner cites to various portions of Brown
as disclosing steps "(b )" and "( c )" recited in claim 11 (Final Act. 2-3; Ans.
3--4). The Appellants disagree that Brown discloses steps "(b )"and"( c ),"
and assert that the Examiner has failed to establish a prima facie case of
obviousness (App. Br. 9, 21-22).
Step "(b) "
The Appellants argue that the portion of Brown cited by the Examiner
(Brown, col. 16, 1. 32---col. 17, 1. 2), fails to disclose the step of "parsing with
a situation analyzer said raw data through a predetermined set of rules into a
plurality of messages" as recited in paragraph "(b )" of claim 11 (App. Br.
14). Specifically, the Appellants argue that while Brown does teach
gathering raw data, as well as some processing of the raw data (App. Br. 14--
15), the only data processing disclosed in Brown is the same as that
performed by the self-care monitoring system of Figure 1, which merely
processes blood glucose data for display on a screen (App. Br. 15-16).
Hence, the basis of the Appellants' argument is that processing of blood
glucose data would not require parsing.
The Examiner disagrees with the Appellants, and finds that Brown
does disclose the limitation at issue, stating:
Figure 1 of Brown shows two additional monitoring devices
connected for communication with data management unit; the
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Application 11/104,810
monitoring devices may include glucose meters, respiratory
flow meters, electronic weight scales, blood pressure cuffs, and
pulse rate monitors (column 11, lines 40 - 66). As Brown
discloses the use of at least one monitoring unit, the
measurements will be parsed or categorized separately and
analyzed separately (i.e. data from a blood glucose monitor,
peak flow meter as shown in Figure 1 of Brown). The analysis
of the results (along with the responses (i.e. messages)) or
instructions (messages) from the physician are transmitted to
the patient (column 16, lines 32 through column 17, line 2).
(Ans. 14).
We agree with the Examiner's findings. As even the Appellants
concede (App. Br. 15), Brown discloses "additional monitors 22 to provide
health monitoring for asthma and various other previously mentioned
chronic conditions." (Brown, col. 12, 11. 25-29; Fig. 1). Data from such
various monitoring devices are provided to data management unit 10
(Brown, Fig. 1 ). Brown discloses that such data from various monitoring
devices are stored in clearinghouse 54, can be processed and analyzed by
computer 62, and the analyzed data transmitted to a remotely located
healthcare professional (Brown, col. 16, 11. 32-54). In order for such data
from different monitoring devices to be stored, processed and analyzed as
described in Brown, such data must be parsed based on rules such as
programming utilized by the health monitoring system to distinguish data of
one type of monitoring device from another type of monitoring device.
Correspondingly, we agree with the Examiner that Brown reasonably
discloses the step of "parsing with a situation analyzer said raw data through
a predetermined set of rules into a plurality of messages" as recited in claim
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11. 5 The Appellants' argument based on the blood glucose monitor is
unpersuasive to establish that the Examiner erred.
The Appellants also argue that the Examiner failed to set forth a prima
facie case of obviousness as to the recited step "(b )" under Graham v. John
Deere Co., 383 U.S. 1, 17-18 (1968), because the Examiner has not:
determined the scope and content of the prior art; or ascertained the
difference between the claimed invention and the prior art; thereby "making
it impossible to resolve the level of ordinary skill in the pertinent art." (App.
Br. 9; id. at 16-17). The Appellants' arguments are unpersuasive.
Contrary to the Appellants' assertions, the Examiner clearly
determined the scope and content of the prior art by identifying what Brown
(Final Act. 2-3; Ans. 3--4, 16), Reuss (Final Act. 3; Ans. 4, 16), and Linberg
(Final Act. 4; Ans. 5, 16), each disclose. In addition, the Examiner
ascertained the difference between the claimed invention and the prior art,
5 The Appellants do not appear to define the term "parse" as used in claim
11, either in their Specification or their arguments. The Appellants do not
provide any persuasive explanation why the Examiner's interpretation might
be unreasonably broad. Even had the term "parse" been defined by the
Appellants narrowly so as to require that a digital signal be resolved into
component parts (see, e.g., IEEE, IEEE 100 THE AUTHORITATIVE
DICTIONARY OF IEEE STANDARD TERMS (7th edition 2000) ("parse," def'n
2)), Brown's clearinghouse 54 necessarily would have parsed or resolved
into component parts the "digitally encoded information [received] from a
user 58" (Brown, col. 15, 11. 64---66), that is, the digital signal telephonically
conveying the raw data, which originated at multiple monitoring devices,
from storage in a user's health monitoring system 58 to the clearinghouse
(see id., 11. 40--49), before "processing the information as required" (id., 11.
66). Any such parsing would have been performed on the basis of a
predetermined set of rules for determining where each component part of the
digitally encoded information began and ended.
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the Examiner identifying what Brown and Reuss fail to disclose (Final Act
3; Ans. 4). The Examiner did not identify any difference between the
teachings of Brown and the step recited in paragraph (b) of claim 11 because
there is no difference. Brown describes the step. Correspondingly, the
Appellants' further argument that the Examiner's failure to determine the
content of the prior art and the differences makes it impossible to resolve the
level of ordinary skill (App. Br. 17) is also unpersuasive.
Step "(c)"
The Appellants argue that various portions of Brown (see Ans. 3)
cited by the Examiner fails to disclose the step of "determining with a
workflow instructions and any historical data relating to similar messages an
action to be applied to each of said plurality of messages" as recited in step
"( c )" of claim 11 (App. Br. 17-19). While conceding that Brown teaches a
user using menus to communicate with clearinghouse 54, which "identifies
the hand held unit 12 and determines if any messages need to be sent to this
particular unit, and if so, sends the message," the Appellants argue that
Brown does not disclose the limitation at issue (App. Br. 18).
The Examiner disagrees with the Appellants, and finds that Brown
satisfies this recited limitation because it discloses that the clearinghouse is
programmed to generate a menu allowing the healthcare professional to
select the manner in which information is sent to the clearinghouse, and to
display past readings or trends for a patient, and further discloses forwarding
such analysis to the healthcare professional in a report (Ans. 3, citing Brown,
col. 7, 1. 59---col. 8, 1. 14; col. 9, 11. 2-19; col. 17, 1. 64---col. 18, 1. 35; col. 23,
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1. 65---col. 24, 1. 26; Ans. 17, citing Brown, col. 7, 1. 59---col. 8, 1. 14; col. 16,
11. 32--40, 55---63; col. 21, 1. 55---col. 22, 1. 44; col. 23, 1. 65---col. 24, 1. 26).
We agree with the Examiner's findings. Brown discloses, inter alia, a
method in which:
the microprocessor-based unit used by the healthcare
professional can be programmed and arranged to allow
information to be stored in the cartridge for return to and
retrieval by the user of the healthcare monitoring system. The
stored information can include messages (e.g., instructions for
changes in medication dosage) and/or program instructions for
reconfiguring the program included in the cartridge so as to
effect changes in the treatment regimen, the analyses or reports
to be generated by the healthcare monitoring system ...
(Brown, col. 9, 11. 8-17).
In addition to providing analyses and reports to the remotely located
healthcare professional (Brown, col. 16, 11. 42--45) as discussed above
relative to step "(b );" Brown also discloses that the menu system can be
utilized to provide messages or instructions to the patient, which are stored
and then transmitted (col. 16, 11. 55---63; see also col. 17, 1. 64---col. 18, 1. 35;
col. 18, 11. 40--46). Correspondingly, Brown reasonably discloses the
pertinent limitation by applying an action to a message based on workflow
instruction (i.e., programming or interface) and historical data (i.e., past
readings/ data as required to determine trends). The Appellants' arguments
to the contrary are unpersuasive to establish that the Examiner erred.
The Appellants also argue that the Examiner failed to set forth a prima
facie case of obviousness as to the recited step "( c )" under Graham because
the Examiner has not: determined the scope and content of the prior art; or
ascertained the difference between the claimed invention and the prior art;
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thereby "making it impossible to resolve the level of ordinary skill in the
pertinent art." (App. Br. 9; id. at 19-20). However, the Appellants'
arguments are unpersuasive as to Examiner error as discussed supra relative
to step "(b ). "
Claims 12-18 and 20-22
The Appellants rely on the patentability of independent claim 11 for
patentability of dependent claims 12-18 and 20-22 that ultimately depend
from claim 11 (App. Br. 22). Because the Appellants have not persuaded us
of Examiner error in rejecting independent claim 11, dependent claims
12-18 and 20-22 fall with claim 11.
Claims 1---6 and 8-10
The issues raised and arguments presented by the Appellants with
respect to the apparatus claim 1 are substantively identical to those raised
with respect to the method claim 11 discussed supra (see App. Br. 23-34;
Ans. 12, 18-19). We find the Appellants' arguments unpersuasive for
reasons substantively identical to those discussed supra relative to claim 11.
Moreover, because the Appellants rely on the patentability of independent
claim 1 for patentability of dependent claims 2---6 and 8-10 that ultimately
depend from claim 1 (App. Br. 34), dependent claims 2---6 and 8-10 fall with
claim 1.
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ORDER
The Examiner's rejection of claims 1-6, 8-18, and 20-22 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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