Ex Parte Prasad et al

Patent Trial and Appeal Board

Feb 4, 2016

12424826 (P.T.A.B. Feb. 4, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/424,826 04/16/2009
28395 7590 02/08/2016
BROOKS KUSHMAN P,CJFG1L
1000 TOWN CENTER
22NDFLOOR
SOUTHFIELD, MI 48075-1238
FIRST NAMED INVENTOR
Krishnaswamy Venkatesh Prasad
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.
81160154 1289
EXAMINER
COX, THADDEUS B
ART UNIT PAPER NUMBER
3735
NOTIFICATION DATE DELIVERY MODE
02/08/2016 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):
docketing@brookskushman.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte KRISHNASWAMY VENKATESH
PRASAD, MARK SCHUNDER, and THOMAS J. GIULI
Appeal2014-001039
Application 12/424,826
Technology Center 3700
Before DONALD E. ADAMS, JEFFREY N. FREDMAN, and
JACQUELINE T. HARLOW, Administrative Patent Judges.
PERCURIAM
DECISION ON APPEAL 1
This Appeal under 35 U.S.C. § 134(a) involves claims 1---6, 16, 17,
and 20 (App. Br. 4--6). Examiner entered rejections under 35 U.S.C. §101,
35 U.S.C. §112, second paragraph, and 35 U.S.C. §103(a). 2 We have
jurisdiction under 35 U.S.C. § 6(b ).
We AFFIRM-IN-PART.
1 Appellants identify the Real Party in Interest as Ford Global Technologies,
LLC (App. Br. 2).
2 Pending claim 1 stands objected to because of informalities (Final Act. 2).
This is a petitionable matter not before us on appeal.
Appeal2014-001039
Application 12/424,826
STATEMENT OF THE CASE
Appellants' invention "relate [ s] generally to human wellness
monitoring in conjunction with a vehicle-based computing system" (Spec.
1 :6-8). Independent claims 1 and 16 are representative and reproduced in
the Claims Appendix of Appellants' Appeal Brief.
Claims 1-6 stand rejected under 35 U.S.C. § 101 for lacking
patentable utility.
Claims 1-6 and 20 stand rejected under 35 U.S.C. § 112, second
paragraph, as being indefinite.
Claims 1-6 stand rejected under 35 U.S.C. § 103(a) as unpatentable
over the combination of Coulter3 and Quy. 4
Claims 16 and 17 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over the combination of Coulter and Lovitt. 5
Claim 20 stands rejected under 35 U.S.C. § 103(a) as unpatentable
over the combination of Coulter, Lovitt, and Hara. 6
The rejections under 35 US. C. § 1 OJ and§ 112, second paragraph:
ISSUE
Should the rejections under 35 U.S.C. § 101 and§ 112, second
paragraph be summarily affirmed?
3 Coulter, US 7,301,464 B2, issued Nov. 27, 2007.
4 Quy, US 6,602,191 B2, issued Aug. 5, 2003.
5 Lovitt et al., US 7,534,206 Bl, issued May 19, 2009.
6 Hara, US 7,775,453 B2, issued Aug. 17, 2010.
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Application 12/424,826
ANALYSIS
Appellants do not contest the merits of the rejections under 35 U.S.C.
§ 101 and§ 112, second paragraph. Instead, Appellants contend that
"[c]laims 1---6 have been amended to remove the inconsistencies noted by the
Examiner and thus are now believed to be allowable under 35 U.S.C. § 101
and §112" (App. Br. 4). Examiner, however, declined entry of the
amendments relied upon by Appellants (see Ans. 2). Therefore, we are
compelled to summarily affirm the rejections under 35 U.S.C. § 101 and
§ 112, second paragraph.
CONCLUSION OF LAW
The rejections under 35 U.S.C. § 101 and§ 112, second paragraph are
summarily affirmed.
Obviousness:
ISSUE
Does the preponderance of evidence relied upon by Examiner support
a conclusion of obviousness?
FACTUAL FINDINGS (FF)
FF 1. Coulter suggests
[a] vehicle operator condition monitoring system is provided
[that] includes a physical condition monitoring unit such as a
camera, a data processing system, a navigation system, and a
communication system. The physical condition monitoring unit
is mounted in a vehicle to monitor at least one physical trait of a
vehicle operator. The data processing system is coupled to the
physical condition monitoring unit to compare data acquired by
the physical condition monitoring unit with rules indicating types
of action to be taken.
(Coulter, Abstract; see also Final Act. 5.)
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Application 12/424,826
FF 2. Coulter suggests that
the monitoring system determines that there is a medical
emergency based on characteristics of the driver. In such case,
the monitoring system may determine the location of the nearest
emergency response team or hospital [] utilizing the mobile
navigation system [] as an aid. . . . . Depending on the type of
monitoring equipment that the vehicle is equipped with, the
monitoring system may also transmit various vital signs or
characteristics of the driver (e.g., body temperature, pulse,
respiratory rate, blood pressure, etc.) to the emergency response
team.
(Coulter 3:28--41; see also Final Act. 5.)
FF 3. Coulter suggests that "[i]f, however, attention is required[], the
monitoring system[] utilizes a Mobile Navigation System[] within the
vehicle and then based on, for example, the location of the vehicle, the time
of day, and the condition of the driver, performs an appropriate action"
(Coulter 2:65-3:2; see also Final Act. 5).
FF 4. Quy suggests
[a] method and apparatus for a wireless health monitoring system
for interactively monitoring a disease or health condition of a
patient by connecting an internet-enabled wireless web device
("WWD") to a health monitoring device which may be a medical
device or other health related device. . . . . The health related
data is transmitted from the WWD to a server using standard
internet protocols.
(Quy, Abstract; see also Final Act. 5-6.)
FF 5. Quy suggests that the "[s]erver []has a base server application[] with
which the same calculates or provides a response based at least in part
on data from [a wireless health-monitoring apparatus]," that the application
may "access data from an external data source," and that the
[ e ]xternal data source [] may be a memory or disk or other such
storage that stores health data, such as healthy and unhealthy
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Application 12/424,826
weight/height ranges, healthy and unhealthy cholesterol counts,
the patient's or subject's prior medical or health history, healthy
and unhealthy blood pressure values, information corresponding
to the caloric and other nutritional content of foods, information
corresponding to the caloric expenditure values of various
exercises, algorithms for calculating various health parameters,
etc. In general, any data that may benefit the health of a subject
or patient may be stored in external data source[]. External data
source [] may also include online access of health information
from external web sites, ftp servers, or other sources.
(Quy 8:9--28; see also Final Act. 5---6.)
FF 6. Lovitt suggests "[a] navigation-assisted fitness device [having] a
location determining component, a fitness monitoring component and a
display" and that "[ t ]he location determining component determines location
data for a user of the device as the user exercises" (Lovitt, Abstract; see also
Final Act. 8).
FF 7. Lovitt suggests that
[t]he device [] may also include ... an infrared port for
wirelessly rece1vmg and transm1ttmg data and other information
from and to nearby electronics, and other information, and even
a cellular or other radio transceiver for wirelessly receiving and
transmitting data from and to remote devices. For example, the
radio transceiver may permit the device [] to communicate with
a remote server[]. . . . . Navigational software, cartographic
maps and other data and information may be loaded in the
navigational device via the I/O ports, the wireless transceivers,
or the infrared port[].
(Lovitt 6:26-47; see also Final Act. 8.)
FF 8. Lovitt suggests that
the information and data can be directly transferred from the
server [] to the device [] via a wired or wireless data link. For
example, the device [] may be equipped with a cellular
transceiver or other wireless data link for communicating directly
with the server or other external computer. Data and information
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Appeal2014-001039
Application 12/424,826
may also be transferred directly to the device [] from a similar
device.
(Lovitt 10:34--40; see also Final Act. 8.)
ANALYSIS
The combination of Coulter and Quy:
Appellants' independent claim 1 requires, inter alia, a vehicle-based
processor configured to (a) "communicate with a wirelessly connected
portable wellness device to receive [driver] wellness information," (b)
"request occupant threshold data from a remote storage location," and ( c)
"compare the received information to the threshold data to determine the
existence of an alert condition" (see Appellants' claim 1). 7
Based on the combination of Coulter and Quy, Examiner concludes
that, at the time of Appellants' invention was made, it would have been
prima facie obvious
to modify the invention of Coulter to have the wellness device be
portable and wireless and to request threshold data from a remote
storage location, as taught by Quy, because this makes the
monitoring less intrusive, as taught by Coulter[], and allows the
system to better determine whether the driver's condition has
changed such that action is warranted [] by communicating with
a remote storage location that may analyze data from the
wellness device[].
(Ans. 6; citing Coulter 3:55---65, 8:35-38, Quy 8:9-15.)
We recognize, but are not persuaded by Appellants' contention that
"there is [no] mention in Coulter and/ or Quy of the device being in
7 We note that Appellants' Claims Appendix does not recite the proper
claims without the amendments that were not entered (see Final Act. 2; Ans.
2).
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Application 12/424,826
communication with a vehicle computing system" (App. Br. 4; FF 1 ("The
data processing system is coupled to the physical condition monitoring
unit")).
We recognize, but are not persuaded by Appellants' contention that
[t]here is no mention or suggestion, however, that the vehicle-
based system of Coulter could communicate with the device(s)
of Quy. The solution presented in Quy, for example, provides a
portable solution using a WWD (wireless web device). To
embed the WWD of Quy into the vehicle of Coulter would render
the system of Quy less effective and defeat a stated purpose of
Quy, namely, "free the patient of the constraints of wired
systems." (col. 3, lines 41--43). Quy explicitly states "the
portable aspect of the WWD is important: to wit, the user may
conveniently carry the WWD on their person wherever they may
go." Integrating this WWD into a vehicle would limit the
portability of the solution of Quy and would not be a step one of
ordinary skill would take[].
(App. Br. 4.) We agree with Examiner that
[ t ]he combination of Coulter and Quy does not embed the device
of Quy into the vehicle of Coulter[]. Instead, the non-portable
non-wireless wellness device of Coulter is replaced by the
portable wireless wellness device of Quy. Thus, the vehicle-
based processor of Coulter communicates with a portable,
wireless wellness device, which allows the wellness monitoring
to be less intrusive (as the wellness device does not need a wired
connection to the processor), while maintaining the teachings of
Quy, relative to portability and wirelessness. The wellness
device can still be "conveniently carr[ied] on [one's] person
wherever they may go," and additionally can be
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Application 12/424,826
used while in the car to watch out for the existence of an alert
condition.
(Ans. 3; citing Quy 5:2-3.) See In re Merck & Co., Inc., 800 F.2d 1091,
1097 (Fed. Cir. 1986) ("Non-obviousness cannot be established by attacking
references individually where the rejection is based upon the teachings of a
combination of references. . . . [The reference] must be read, not in
isolation, but for what it fairly teaches in combination with the prior art as a
whole.").
The combination of Coulter and Lovitt:
Appellants' independent claim 16 requires, inter alia, a vehicle-based
processor configured to (a) "determine a recommended travel route for an
exercise routine," and (b) "transmit the recommended travel route to the at
least one fitness-related wellness device" (see Appellants' claim 16).
Based on the combination of Coulter and Lovitt, Examiner concludes
that, at the time of Appellants; invention was made, it would have been
prima facie obvious
to modify the invention of Coulter to determine a recommended
travel route for an exercise routine and transmit this route to the
fitness-related wellness device [as] taught by Lovitt, because the
processor taught by Coulter is clearly capable of determining
such a route through its navigation system, and it would be useful
to have the device taught by Lovitt, which as [] receives data and
information like maps or directions from an external computer,
receive this information from the processor because the vehicle-
based computer is capable of storing much more information
than the portable device taught by Lovitt, which would allow the
device to receive more detailed and dynamic route information
than it might otherwise have access to.
(Final Act. 8-9.)
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Application 12/424,826
We are not persuaded. Notwithstanding Examiner's assertion to the
contrary, Coulter, at best, suggests a "monitoring system [that] utilizes a
Mobile Navigation System[] within the vehicle" (FF 3), which "may
determine the location of the nearest emergency response team or hospital []
utilizing the mobile navigation system[] as an aid" (FF 2). As Appellants
point out, "the mere fact that the system of Coulter is capable of
recommending a route does not mean that the route is then germane to any
reasonable reason for route generation" and that "[t]here is nothing in the
description of Coulter that would suggest that the processor thereof is
capable of determining a 'recommended travel route for an exercise
routine"' (App. Br. 5; see also Reply Br. 2).
In sum, Examiner failed to establish an evidentiary basis on this
record to support a conclusion that Coulter suggests a vehicle-based
processor configured to "determine a recommended travel route for an
exercise routine," and "transmit the recommended travel route to the at least
one fitness-related wellness device," as required by Appellants' claimed
invention.
The combination of Coulter, Lovitt, and Hara:
The rejection of claim 208 relies upon the underlying obviousness
rejection over Coulter and Lovitt. Having reversed the rejection of claim 16,
we necessarily reverse this obviousness rejection further including Hara,
since Hara is not relied upon to teach "determine a recommended travel
8 For purposes of this Appeal, we will consider claim 20 as being properly
dependent on independent claim 16 (see Final Act. 4, Ans. 2).
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Application 12/424,826
route for an exercise routine," and "transmit the recommended travel route
to the at least one fitness-related wellness device," as required by claim 16.
CONCLUSION OF LAW
The preponderance of the evidence relied upon by Examiner supports
a conclusion of obviousness with respect to claims 1---6.
The rejection of claim 1 under 35 U.S.C. § 103(a) as unpatentable
over the combination of Coulter and Quy is affirmed. Claims 2-5 are not
separately argued and fall with claim 1.
The preponderance of the evidence relied upon by Examiner fails to
support a conclusion of obviousness with respect to claims 16, 17, and 20.
The rejection of claims 16 and 17 under 35 U.S.C. § 103(a) as
unpatentable over the combination of Coulter and Lovitt is reversed.
The rejection of claim 20 under 35 U.S.C. § 103(a) as unpatentable
over the combination of Coulter, Lovitt, and Hara is reversed.
TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED-IN-PART
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