Ex Parte Skupin

Patent Trial and Appeal Board

Sep 15, 2017

12126584 (P.T.A.B. Sep. 15, 2017)

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.
12/126,584 05/23/2008 Horst Skupin 02581-P0945B 6720
131672 7590
Whitmyer IP Group LLC
600 Summer Street
3rd Floor
Stamford, CT 06901
09/18/2017 EXAMINER
SEREBOFF, NEAL
ART UNIT PAPER NUMBER
3626
MAIL DATE DELIVERY MODE
09/18/2017 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 HORST SKUPIN
Appeal 2016-004714
Application 12/126,584
Technology Center 3600
Before ANTON W. FETTING, BIBHU R. MOHANTY, and
ALYSSA A. FINAMORE, Administrative Patent Judges.
FETTING, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE1
Horst Skupin (Appellant) seeks review under 35 U.S.C. § 134 of a final
rejection of claims 1—8, 10, 11, 16, 17, 19-22, 24, and 25, the only claims
pending in the application on appeal. Oral arguments were presented on
1 Our decision will make reference to the Appellant’s Appeal Brief (“App.
Br.,” filed October 13, 2015) and Reply Brief (“Reply Br.,” filed March 31,
2016), and the Examiner’s Answer (“Ans.,” mailed February 1, 2016), and
Final Action (“Final Act.,” mailed May 12, 2015).
Appeal 2016-004714
Application 12/126,584
August 31, 2017. We have jurisdiction over the appeal pursuant to
35 U.S.C. § 6(b).
The Appellant invented a device and a process for central monitoring
and/or control of at least one apparatus, which is used during a medical
intervention. Spec. 12.
An understanding of the invention can be derived from a reading of
exemplary claim 16, which is reproduced below (some paragraphing added).
16. A process for controlling and/or monitoring at least one
apparatus in a medical intervention, including the following
steps:
— providing a first control unit for controlling at least one
security relevant apparatus,
— providing a second control unit for controlling non-security
relevant apparatuses, said second control unit in communication
with said first control unit,
— providing an interface unit, said interface unit being
connected to the first and second control units and to the non­
security relevant apparatuses,
— providing access to data specific to the intervention, which
include data predetermined independently of a user on the
parameter values to be entered on the at least one security
relevant apparatus during a predetermined intervention,
— retrieving the data specific to the intervention upon demand
by the user,
— display of the data specific to the intervention on a display
unity,
— testing the plausibility of the data specific to the intervention,
— transmitting the data specific to the intervention to the at least
one security relevant apparatus through said first control unit
after actuation of a confirming element by the user,
2
Appeal 2016-004714
Application 12/126,584
— adjusting the condition of the at least one apparatus according
to the transmitted data specific to the intervention;
— detecting errors in said second control unit through said first
control unit;
and
— transmitting signals from said first control unit to the non­
security relevant apparatuses upon detecting an error of said
second control unit via the interface unit,
and
wherein said at least one security relevant apparatus is medical
device,
wherein said non-security relevant apparatuses are non-medical
devices.
Claims 1—8, 10, 11, 16, 17, 19—22, 24, and 25 stand rejected under 35
U.S.C. § 101 as directed to non-statutory subject matter.
Claims 1—8, 10, 11, 16, 17, 19—22, 24, and 25 stand rejected under 35
U.S.C. § 112(a) as lacking a supporting written description within the
original disclosure.
Claims 1—8, 10, 11, 16, 17, 19—22, 24, and 25 stand rejected under 35
U.S.C. § 112(b) as failing to particularly point out and distinctly claim the
invention.
Claim 21 stands rejected under 35 U.S.C. § 112(d) as failing to include
all the limitations of the claim upon which it depends.
3
Appeal 2016-004714
Application 12/126,584
ISSUES
The issues of eligible subject matter turn primarily on whether the claims
are directed to some non-abstract subject matter.
The issues of written description matter turn primarily on whether the
Specification provides adequate support for the claims.
The issues of indefiniteness matter turn primarily on whether the
Specification describes the structures behind the limitations expressed as
means plus function.
ANALYSIS
Claims 1—8, 10, 11, 16, 17, 19—22, 24, and 25 rejected under 25 U.S.C.
§ 101 as directed to non-statutory subject matter
Claims 1 and 16 are the independent claims on appeal, with the rest of
the claims on appeal depending therefrom.
The Examiner rejects these claims according to the two step procedure in
Alice Corp., Pty. Ltd. v CLS Bank International, 134 S. Ct. 2347 (2014). As
to the first step, the Examiner finds that the claims are directed to organizing
human activities. Final Act. 2. We disagree. The preamble to claim 16
recites that the claim is to a process for controlling and/or monitoring at least
one apparatus. The steps in claim 16 result in controlling one device with
information from a separate device. The Specification at paragraph 2
describes the invention as being related to a process for central monitoring
and/or control of at least one apparatus, which is used during a medical
4
Appeal 2016-004714
Application 12/126,584
intervention. Thus, it is unclear that the claim is directed to an abstract idea.
Claim 1 is an apparatus claim similar in scope to claim 16.
The second step of the Alice test requires the consideration of “the
elements of each claim both individually and ‘as an ordered combination’ to
determine whether the additional elements ‘transform the nature of the
claim’ into a patent-eligible application.” Alice, 134 S. Ct. at 2355 (quoting
Mayo Collaborative Servs. v. Prometheus Labs., Inc., 132 S. Ct. 1289, 1298,
1297 (2012)).
Independent claim 16 inserts an intermediary between two otherwise
directly communicating devices and recites “detecting errors in said second
control unit through said first control unit.” Independent claim 1 recites
similar limitations. According to the Appellant, the claims
provide a system and a process for controlling and/or
monitoring apparatuses in medical interventions, where in such
a system or process, on the one hand, access is possible to
generally valid apparatus configurations and parameters that are
proved to be optimal in a number of comparable interventions,
while on the other hand there is an assurance that the physician
has taken positive note of them in every intervention.
Spec. 110.
Examiner finds that
The additional element(s) or combination of elements in the
claim(s) other than the abstract idea per se amount(s) to no
more than: mere instructions to implement the idea on a
computer.
Viewed as a whole, these additional claim element(s) do
not provide meaningful limitation(s) to transform the abstract
idea into a patent eligible application of the abstract idea such
5
Appeal 2016-004714
Application 12/126,584
that the claim(s) amounts to significantly more than the abstract
idea itself.
Final Act. 2. The Examiner does not sufficiently establish that the “ordered
combination” of the recited elements also fails to ‘“transform the nature of
the claim’ into a patent-eligible application.” Alice, 134 S. Ct. at 2355.
“[A]n inventive concept can be found in the non—conventional and non­
generic arrangement of known, conventional pieces,” even if these pieces
constitute generic computer—related components. Bascom Global Internet
Servs., Inc. v. AT&T Mobility LLC, 827 F.3d 1341, 1350 (Fed. Cir. 2016).
The instant claims are similar to those in Bascom in that as in Bascom, an
intermediary is inserted between two otherwise conventional nodes to move
the location where a process is otherwise ordinarily executed. In Bascom it
was filtering and in the instant claims it is checking critical parameters in
medical intervention. The reasons for moving are similar in both cases and
are rooted in the ways of internet technology.
As discussed above, the Appellant explains that the claimed architecture
(i.e., the ordered combination and arrangement of the recited elements)
provides a particular technical advantage. The Examiner does not
persuasively challenge the Appellant’s position on this matter.
Accordingly, the Examiner has not sufficiently established, on the
record before us, that independent claims 1 and 16 (and the claims
depending therefrom) do not pass muster under step two of the Alice test.
6
Appeal 2016-004714
Application 12/126,584
Claims 1—8, 10, 11, 16, 17, 19—22, 24, and 25 rejected under 35 U.S.C.
§ 112(a) as lacking a supporting written description within the original
disclosure
We are persuaded by Appellant’s argument that Specification paragraph
37 supports both testing the plausibility of the data specific to the
intervention and detecting errors in said second control unit through said
first control unit by providing examples. App. Br. 15. The Examiner does
not respond to show why these examples are insufficient.
Claims 1—8, 10, 11, 16, 17, 19—22, 24, and 25 rejected under 35 U.S.C.
§ 112(b) as failing to particularly point out and distinctly claim the
invention
The Examiner makes two separate rejections. The Examiner first finds
that the limitation “security relevant” is a relative term that renders the
claims indefinite. Final Act. 5. Specification paragraphs 46 and 47 provide
guidance as to how to interpret this limitation. Security relevant apparatuses
are apparatuses such as endoscopic light sources, insufflators, irrigation and
suction pumps, high voltage generators, and OP table control. Non-security-
relevant and non-medical devices are those such as jalousies, image
archiving, room lighting, telephone, air conditioning, pagers, Internet, and
material administration. Spec. 146.
The Examiner also rejects limitations expressed as means plus function
for failing to have a corresponding description in the Specification. As to
the first and second control units, they are again described by the control
7
Appeal 2016-004714
Application 12/126,584
units for the particular devices and equivalents described in Specification
paragraph 46. As to the monitoring measures for testing the plausibility,
they are described by examples in Specification paragraph 37. As to the
confirming element, this is described by the switch in Specification
paragraph 79. As to the reception means, this is part of every conventional
general purpose computer. As to the authentication means, this is described
by the biometric readers in Specification paragraph 21.
Claim 21 rejected under 35 U.S.C. § 112(d) as failing to include all the
limitations of the claim upon which it depends
We are persuaded by Appellant’s argument that claim 21 incorporates all
the limitations of its parent claim 19.
CONCLUSIONS OF LAW
The rejection of claims 1—8, 10, 11, 16, 17, 19-22, 24, and 25 under 35
U.S.C. § 101 as directed to non-statutory subject matter is improper.
The rejection of claims 1—8, 10, 11, 16, 17, 19—22, 24, and 25 under 35
U.S.C. § 112(a) as lacking a supporting written description within the
original disclosure is improper.
The rejection of claims 1—8, 10, 11, 16, 17, 19—22, 24, and 25 under 35
U.S.C. § 112(b) as failing to particularly point out and distinctly claim the
invention is improper.
The rejection of claim 21 under 35 U.S.C. § 112(d) as failing to include
all the limitations of the claim upon which it depends is improper.
8
Appeal 2016-004714
Application 12/126,584
DECISION
The rejection of claims 1—8, 10, 11, 16, 17, 19—22, 24, and 25 is
reversed.
REVERSED
9