Ex Parte Robertson

Patent Trial and Appeal Board

Dec 12, 2016

12636390 (P.T.A.B. Dec. 12, 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.
12/636,390 12/11/2009 James A. Robertson 20090265 1249
7590 12/14/201625537
VERIZON
PATENT MANAGEMENT GROUP
1320 North Court House Road
9th Floor
ARLINGTON, VA 22201-2909
EXAMINER
NAJARIAN, LENA
ART UNIT PAPER NUMBER
3626
NOTIFICATION DATE DELIVERY MODE
12/14/2016 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):
patents @ verizon.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JAMES A. ROBERTSON
Appeal 2014-0096051
Application 12/636,390
Technology Center 3600
Before: MURRIEL E. CRAWFORD, JOSEPH A. FISCHETTI, and
MICHAEL W. KIM, Administrative Patent Judges.
KIM, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF CASE
This is an appeal from the final rejection of claims 1—15, 17, 18, 20,
and 22—25. We have jurisdiction to review the case under 35 U.S.C. §§ 134
and 6.
The invention relates generally to remote medical examinations.
Spec, para 1.
1 The Appellant identify Verizon Communications Inc. as the real party in
interest. Appeal Br. 1.
Appeal 2014-009605
Application 12/636,390
Claim 1 is illustrative:
1. A method comprising:
receiving by a user equipment belonging to a user via a
communication network position data corresponding to a
visible mark to be projected onto a human subject who is
a patient;
initiating by the user equipment projection of the mark onto the
subject, wherein the mark specifies placement of a medical
sensor onto the subject without onsite presence of a
healthcare provider; and
collecting measurement data from the medical sensor coupled to
the subject at the mark.
Claim 24 is rejected under 35 U.S.C. § 112, second paragraph, as
indefinite.
Claims 1—15, 17, 18, 20, and 23—25 are rejected under 35 U.S.C.
§ 103(a) as unpatentable over Cosman (US 2002/0065461 Al, pub. May 30,
2002) and Gopinathan (US 7,860,725 B2, iss. Dec. 28, 2010).
Claim 22 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Cosman, Gopinathan, and Konno (US 2006/0251408 Al, pub. Nov. 9,
2006).
We AFFIRM and enter a NEW GROUND of rejection pursuant to
37 C.F.R. § 41.50(b).
ANALYSIS
Rejection of Claim 24 under 35 U.S.C. f 112
We are persuaded by Appellant’s argument that the ordinary artisan
would understand the meaning of the claim. Appeal Br. 6. The Examiner
does not respond to the argument. We agree with Appellant that the
ordinary artisan would interpret the later “marks” as referring to the earlier
“various marks.”
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Appeal 2014-009605
Application 12/636,390
For this reason, we do not sustain the rejection of claim 24 under
35 U.S.C. § 112, second paragraph.
Claims 1—10, 12—15, 17, 18, 20, and 23—25 under 35 U.S.C. £ 103(a)
Appellant argues independent claims 1, 6, 12, and 17 together as a
group (Appeal Br. 12), so we select independent claim 1 as representative.
See 37 C.F.R. § 41.37(c)(l)(iv).
We are not persuaded by Appellant’s argument that the marks in
Cosman do not “specif[y] placement of a medical sensor onto the subject” as
claimed, because, as essentially argued, the devices in Cosman point at the
subject rather than come into contact with the patient. Appeal Br. 7—10.
Cosman discloses projecting a grid onto the surface of a patient,
shown by elements 115 and 117 in Figure 6, shown below:
"*j ??.OC?SSOx
y'S;i
A
JS,3 v-? ST s.
FIG. 6
Figure 6 of Cosman showing illumination system 115 projecting a
visible grid 117 onto a patient P
The grid serves as a marker for purposes of registration of the body
anatomy. See Cosman paras. 75, 85. The grid is used for aiming diagnostic
devices, such as to receive “image scan data taken from CT, MR, ultrasound,
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Appeal 2014-009605
Application 12/636,390
X-ray, PET, simulator, or other modality.” Id. at paras. 75, 91. Cosman,
thus, discloses the claimed projected mark, but primarily discloses
diagnostic sensors that are in the vicinity of the patient, aimed at the patient,
such as an x-ray machine, rather than being in contact with the patient while
gathering sensory data. One machine in Cosman’s list, however, is an
exception: the ultrasound, which is typically in contact with a patient via an
applied gel. Cosman, thus, meets the claim language of “projection of the
mark onto the subject, wherein the mark specifies placement of a medical
sensor onto the subject. . . ; and collecting measurement data from the
medical sensor coupled to the subject at the mark.”
Cosman does not necessarily disclose “without onsite presence of a
healthcare provider,” which is why the Examiner appears to have looked to
Gopinathan. Answer 3^4. We discern that this is because an ultrasound is
not a device typically operated by someone who is not a “healthcare
provider.”
Gopinathan, however, discloses a patient-wearable device 12 that
senses data, such as pulse rate, blood pressure, EKG, blood oxygen
saturation, and temperature of patient when placed directly on the patient’s
body by the patient. Gopinathan col. 5,11. 10-12; see also col. 13,11. 18—34.
We are persuaded that it would, thus, have been obvious to substitute
the wearable device of Gopinathan, which senses while in contact with the
body, in place of the sensor machines of Cosman, with a remote healthcare
provider also in Gopinathan. See Gopinathan col. 13,11.26—29. Therefore,
the combination accounts properly for the claimed language of “projection
of the mark onto the subject, wherein the mark specifies placement of a
medical sensor onto the subject without onsite presence of a healthcare
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Appeal 2014-009605
Application 12/636,390
provider; and collecting measurement data from the medical sensor coupled
to the subject at the mark.”
We are not persuaded by Appellant’s argument that the Examiner’s
motivation to combine Gopinathan’s remote, virtual consultation with
Cosman is flawed, because the cited section only refers to making repeated
office visits easier so that few antibiotics are prescribed, which would not
require remote sensing. Appeal Br. 10—11.
Instead, we discern that the ordinary artisan would recognize the
benefit of using Gopinathan’s direct-contact sensor and remote physician
guidance, with the aiming method of Cosman, without the requirement that
this be done in a situation to avoid antibiotic prescriptions. Gopinathan
teaches, for example, the general benefit that “instead of a patient traveling
to see a doctor, the doctor can virtually come to the patient and maintain a
face-to-face relationship even if cities, countries, or continents separate
them.” Gopinathan col. 3,11. 5—8, col 4,11. 25—30.
Appellant argues placing the glove from Gopinathan in the path of the
x-ray machine of Cosman would impede the x-ray machine and render
Cosman unsuitable for its intended purpose. Appeal Br. 11—12. However,
we are not persuaded by Appellant’s argument, because substituting
Gopinathan’s device for Cosman’s device, as indicated above, would not
have this effect.
We also are not persuaded by Appellant’s arguments that the cited
marks in Cosman are not on the patient but instead on the instrumentation,
and, thus, do not signify the location for placement of a direct-contact sensor
on the patient. Reply Br. 3^4. As we noted above, Cosman discloses an
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Appeal 2014-009605
Application 12/636,390
embodiment with grid image 117 projected onto the patient, which is used in
locating medical devices.
We finally are not persuaded by Appellant’s arguments that neither of
the cited references discloses a motivation to combine their teachings.
Reply Br. 5—6. To the extent Appellant seeks an explicit suggestion or
motivation in the reference itself, this is no longer the law in view of the
Supreme Court’s recent holding in KSR Int’l Co. v. Teleflex Inc., 550 U.S.
398, 419 (2007). In any case, the Examiner provides a rationale for the
modification, with explicitly cited support from Gopinathan. Ans. 4.
For these reasons, we sustain the rejection of independent claims 1, 6,
12, and 17. We also sustain the rejection of dependent claims 2—5, 7—10,
13—15, 18, 20, and 23—25 rejected along with their respective independent
claim 1, because they were not argued separately. Appeal Br. 12.
However, because we rely on the projected image in paragraph 75 of
Cosman, and the sensor device of Gopinathan, rather than the portions of
Cosman and Gopinathan cited by the Examiner, we designate our affirmance
as a new ground of rejection.
Dependent Claim 11
Dependent claim 11 recites an apparatus, “wherein the apparatus is a
mobile phone and further comprises: a camera coupled to the processor and
configured to generate the image; and a projector coupled to the processor
and configured to project the mark.” Claim 11 depends indirectly from
claim 8, which specifies a device that projects a mark also will “cause
capturing of an image of the subject.”
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Appeal 2014-009605
Application 12/636,390
We are not persuaded by Appellant’s argument that the Examiner’s
finding of a cell phone in Gopinathan, substituted into Cosman, would
require converting the entire x-ray machine in Cosman into a mobile phone.
Appeal Br. 12—13. Based on our findings above, it is not the x-ray machine
of Cosman, or the glove sensor device of Gopinathan, that is substituted with
a mobile phone, but rather the cameras and projector 115 that are located in
a mobile phone. We are persuaded that one of ordinary skill would have
known that a simple projector, and image-capture device such as a camera,
would have been combinable into a mobile phone, so as to realize the
benefits of a hand-held device. See Ans. 7. They would replace the video
camera of Cosman (para. 91), not the x-ray machine.
For this reason, we sustain the rejection of dependent claim 11.
Dependent Claim 22
Appellant argues Konna fails to overcome the alleged deficiencies of
Cosman and Gopinathan of independent claim 1, from which claim 22
ultimately depends. Appeal Br. 13; see also Reply Br. 7—8. Because we
find no deficiencies, we sustain the rejection of dependent claim 22.
DECISION
We AFFIRM the rejections of claims 1—15, 17, 18, 20, and 22—25
under 35 U.S.C. § 103(a).
We REVERSE the rejection of claim 24 under 35 U.S.C. § 112.
This decision contains new grounds of rejection pursuant to 37 C.F.R.
§ 41.50(b) (2008). 37 C.F.R. § 41.50(b) provides “[a] new ground of
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Application 12/636,390
rejection pursuant to this paragraph shall not be considered final for judicial
review.”
37 C.F.R. § 41.50(b) also provides that the appellant, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new ground of rejection to
avoid termination of the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new evidence relating to
the claims so rejected, or both, and have the matter reconsidered
by the examiner, in which event the proceeding will be remanded
to the examiner....
(2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same record ....
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: 37 C.F.R, $ 41.50(b)
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