Ex Parte Teller et alDownload PDFPatent Trial and Appeal BoardFeb 19, 201310638588 (P.T.A.B. Feb. 19, 2013) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________________ Ex parte ERIC TELLER, JOHN M. STIVORIC, CHRISTOPHER D. KASABACH, CHRISTOPHER D. PACIONE, JOHN L. MOSS, CRAIG B. LIDEN, and MARGARET A. McCORMACK ____________________ Appeal 2010-011810 Application 10/638,588 Technology Center 3700 ____________________ Before: MURRIEL E. CRAWFORD, MICHAEL W. KIM, and PHILIP J. HOFFMANN, Administrative Patent Judges. HOFFMANN, Administrative Patent Judge. DECISION ON APPEAL Appeal 2010-011810 Application 10/638,588 2 STATEMENT OF THE CASE Appellants appeal under 35 U.S.C. § 134 from the final rejection of claims 1-6, 13-27, 29, 31, 33-37, 39-43, 45-50, 52, 55, 58, 62, 64, 65, 67-70, 72-74, 76, 79-87, 89-93, 100-113, 115, 117, 119-123, 125-129, 131-135, 138, 141, 144, 145, 148, 150, 151, 153-157, 159, and 161-1641. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. The rejected claims are directed to an apparatus for monitoring human status parameters (Spec. 2-3). Although claims 1 and 85 are the sole independent claims, Appellants argue the independent claims together, and indicate that we may choose one of these claims to decide the appeal (App. Br. 5, 8). Accordingly, we choose claim 1, which is reproduced below, to decide the appeal. 1. An apparatus for monitoring human status parameters, comprising: a. a first sensor capable of generating data indicative of at least a first physiological status parameter relating to an individual; b. a receiver for receiving data indicative of at least a second status parameter relating to said individual; and c. a processor programmed to i. receive at least a portion of said data indicative of said first and second status parameters relating to said individual, and ii. generate a derived third status parameter relating to said individual from said first and second status parameters, 1 Our decision will refer to Appellants’ Specification (“Spec.,” filed Aug. 11, 2003), Appeal Brief (“App. Br.,” filed Mar. 5, 2009), and Reply Brief (“Reply Br.,” filed Feb. 5, 2010), as well as the Examiner’s Answer (“Ans.,” mailed Dec. 8, 2009). Appeal 2010-011810 Application 10/638,588 3 wherein said third parameter is an additional status parameter distinct from said first and second status parameters, and wherein a filter is utilized in said generation of said derived third status parameter. THE REJECTIONS The Examiner rejects the claims as follows: Claims 1 and 85 stand rejected under 35 U.S.C. § 112, second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter that Appellants regard as the invention; and all claims stand rejected under 35 U.S.C. § 102(e) as anticipated by Mault (US 6,478,736 B1, iss. Nov. 12, 2002). ANALYSIS 35 U.S.C. § 112 Rejection The Examiner rejects independent claim 1 under 35 U.S.C. § 112, second paragraph. Specifically, the Examiner states that the limitation in claim 1 of “a filter . . . utilized in said generation of said derived third status parameter” is indefinite (Ans. 3-4, 7-10). The Examiner further states, with reference to the paragraph numbers of the published application, “there are two possible interpretations of the term filter. The first is one of a constant as in paragraph [0065]. The second appears in paragraph [0079] as subset [sic] of data” (Ans. 3-4). In response to the Examiner, Appellants state that paragraph [0079] is understood as not referring to the claimed filter, while paragraph [0065] is understood to describe the claimed filter (App. Br. 5-7, Reply Br. 1-10). Appellants further state that the Examiner has misunderstood paragraph [0065], and consistent with the Declaration under Appeal 2010-011810 Application 10/638,588 4 37 C.F.R. § 1.132 of David Andre filed on June 5, 2006, with reference to the filter described in paragraph [0065]: One skilled in the art would appreciate that the meaning of filter is “a program or section of code that is designed to examine each input or output request for certain qualifying criteria and then process or forward it accordingly and/or ‘pass- through’ code that takes input data, makes some specific decision about it and possible transformation of it, and passes it on to another program in a kind of a pipeline.” (App. Br. 6.) After reviewing the intrinsic evidence, including the application, and the extrinsic evidence, including the Declaration and its attachments, we find there are two possible interpretations of the claim limitation “filter,” as set forth by the Examiner. Specifically, while Appellants attempt to make all sorts of clarifications as to what they mean by “filter,” one of ordinary skill in the art, when reading the Specification, would have difficulty in deciphering which definition of “filter” was intended. For example, Appellants assert that paragraph [0065] of “the specification shows that a filter is not necessarily a constant; hence, the Applicants’ usage of the phrase ‘filter or constant’ in the specification” (App. Br. 6). However, by using the words “not necessarily,” Appellants are admitting that “filter” could be a constant, hence the Examiner’s confusion. In another example, Appellants assert that “the paragraph that the Examiner cites (paragraph [0079] in the published application) [in] support of his alternate interpretation does not mention the use of a filter in the context of the generating a derived third parameter” (App. Br. 7). However, paragraph [0079] discloses “[e]ach category summary 156a through 156f presents a pre-selected filtered subset Appeal 2010-011810 Application 10/638,588 5 of the data associated with the corresponding category,” which at least facially appears to be a parameter “filtered” from other parameters. Accordingly, we are not persuaded by Appellants that paragraph [0065] and not paragraph [0079] of the published application is properly understood to describe the claimed filter, and we are not persuaded that the filter described in paragraph [0065] is understood to refer to a program or section of code rather than a constant. Thus, we sustain the Examiner’s rejection of claim 1 under 35 U.S.C. § 112, second paragraph. We also sustain the Examiner’s rejection of claim 85 under 35 U.S.C. § 112, second paragraph, because claims 1 and 85 are argued together. 35 U.S.C. § 102(e) Rejection The Examiner rejects independent claim 1 as anticipated by Mault. Specifically, the Examiner states that Mault discloses using a subset of data, which anticipates the limitation of “a filter . . . utilized in said generation of said derived third status parameter” as recited in independent claim 1 (Ans. 4-6). In response, Appellants do not argue Mault does not disclose a subset of data. Instead, Appellants argue the claimed filter is not understood to use a subset of data, but is properly understood to use [a] program or section of code designed to examine each input or output request for certain qualifying criteria and then process or forward it accordingly and/or “pass-through” code that takes input data, makes some specific decision about it and possible transformation of it, and passing it on to another program in a kind of a pipeline (App. Br. 9). Thus, inasmuch as we do not agree that the claimed filter excludes a subset of data, for the reasons set forth above in our indefiniteness analysis, and Appellants do not argue that Mault does not Appeal 2010-011810 Application 10/638,588 6 discloses a subset of data, we sustain the rejection of independent claim 1 under 35 U.S.C. § 102(e). We also sustain the rejection of independent claim 85 under 35 U.S.C. § 102(e), because claims 1 and 85 are argued together. Notwithstanding the above discussion, we find an independent basis for sustaining the rejection of independent claim 1. Specifically, assuming arguendo the limitation of filter recited in claim 1 is interpreted as [a] program or section of code designed to examine each input or output request for certain qualifying criteria and then process or forward it accordingly and/or “pass-through” code that takes input data, makes some specific decision about it and possible transformation of it, and passing it on to another program in a kind of a pipeline as argued by Appellants, we find that such a filter is anticipated by “[t]he subtraction of calories burned from calories eaten,” which the Examiner alleges is disclosed in Mault (Ans. 6). This is because Mault is understood to “make[] some specific decision about” the calorie information, as the Examiner explains the calorie information may be evaluated on a daily basis, and thus the calorie information used must be related to that particular day (i.e., is “pass[ed]-through”) while calorie information from another day would not be used (id.). Claims 2-6, 13-27, 29, 31, 33-37, 39-43, 45-50, 52, 55, 58, 62, 64, 65, 67-70, 72-74, 76, 79-84, 86, 87, 89-93, 100-113, 115, 117, 119-123, 125- 129, 131-135, 138, 141, 144, 145, 148, 150, 151, 153-157, 159, and 161-164 depend from independent claims 1 and 85. Therefore, we sustain their rejection for the same reasons as the independent claims. Appeal 2010-011810 Application 10/638,588 7 DECISION The Examiner’s rejection of claims 1 and 85 under 35 U.S.C. § 112, second paragraph, is AFFIRMED; and the Examiner’s rejection of all claims under 35 U.S.C. § 102(e) as anticipated by Mault 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)(1)(iv). AFFIRMED mls Copy with citationCopy as parenthetical citation