Ex Parte Tran

Patent Trial and Appeal Board

May 22, 2017

11512630 (P.T.A.B. May. 22, 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.
11/512,630 08/30/2006 Bao Q. Tran AFL-009 Healthcare
System
7928
31688 7590
TRAN & ASSOCIATES
P.O. Box 68
Saratoga, CA 95071-0068
05/22/2017 EXAMINER
PATEL, NEHA
ART UNIT PAPER NUMBER
3686
MAIL DATE DELIVERY MODE
05/22/2017 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 BAO Q. TRAN
Appeal 2015-0054001
Application 11/512,6302
Technology Center 3600
Before NINA L. MEDLOCK, BRUCE T. WIEDER, and
MATTHEW S. METERS, Administrative Patent Judges.
MEDLOCK, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 1—19, 21, and 22. We have jurisdiction under 35 U.S.C.
§ 6(b).
We REVERSE.
1 Our decision references Appellant’s Appeal Brief (“App. Br.,” filed
August 7, 2014) and Reply Brief (“Reply Br.,” filed April 24, 2015), and the
Examiner’s Answer (“Ans.,” mailed March 23, 2015) and Final Office
Action (“Final Act.,” mailed February 11, 2014).
2 Appellant identifies the inventor, Bao Tran, as the real party in interest.
App. Br. 2.
Appeal 2015-005400
Application 11/512,630
CLAIMED INVENTION
Appellant’s claimed invention “relates generally to methods and
systems for monitoring a person,” and more particularly to “interoperability
of medical devices” (Spec. 1,11. 9—10).
Claims 1,16, and 21 are the independent claims on appeal. Claim 1,
reproduced below, is illustrative of the claimed subject matter:
1. An interoperable health-care system, comprising:
a network;
a first medical appliance including a first sensor to capture
a first vital information including weight and coupled to the
network, the first medical appliance transmitting the first vital
information conforming to an interoperable format to a base
station; wherein the interoperable format is used by a plurality of
vendors, and
a second medical appliance including a second sensor to
capture a second vital information including blood pressure and
coupled to the network, each of the first and second medical
appliances converting the vital information in accordance with
the interoperable format and processing the first and second vital
information,
wherein the interoperable format enables different
appliances monitoring medical conditions to share medical data,
wherein the interoperable format includes a protocol for the first
and second medical appliances to locate each other’s data and
detect patient health based on a combination of the different first
and second medical condition data captured through the medical
appliances, wherein the network translates data into an
interoperable format accessible by a third medical appliance to
receive at least patient weight and blood pressure generated by
the first and second medical appliances over the network.
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Application 11/512,630
REJECTIONS
Claims 1,16, and 21 are rejected under 35 U.S.C. § 112, first
paragraph, as failing to comply with the written description requirement.
Claims 1—4 and 11 are rejected under 35 U.S.C. § 103(a) as
unpatentable overNunome (US 2001/0037056 Al, pub. Nov. 1, 2001),
Noonan et al. (US 2003/0105389 Al, pub. June 5, 2003, hereinafter
“Noonan”), and Fallows et al. (US 2005/0043620 Al, pub. Feb. 24, 2005)
(hereinafter “Fallows”).
Claim 5 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Nunome, Noonan, Fallows, and Shusterman (US 2004/0193064 Al,
pub. Sept. 30, 2004).
Claim 6 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Nunome, Noonan, Fallows, and Nino et al. (US 2002/0027568 Al,
pub. Mar. 7, 2002) (hereinafter “Nino”).
Claim 7 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Nunome, Noonan, Fallows, Shusterman, and Nino.
Claims 9 and 12 are rejected under 35 U.S.C. § 103(a) as unpatentable
overNunome, Noonan, Fallows, and Feher (US 7,260,369 B2, iss. Aug. 21,
2007).
Claims 8 and 13 are rejected under 35 U.S.C. § 103(a) as unpatentable
over Nunome, Noonan, Fallows, and Official Notice.
Claims 10 and 14 are rejected under 35 U.S.C. § 103(a) as
unpatentable overNunome, Noonan, Fallows, and Scannell
(US 2006/0154642 Al, pub. July 13, 2006).
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Application 11/512,630
Claim 15 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Nunome, Noonan, Fallows, and Shehadeh et al. (US 2005/0192649 Al,
pub. Sept. 1, 2005) (hereinafter “Shehadeh”).
Claims 16, 17, 19, and 22 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Noonan and Scanned.
Claim 18 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Noonan, Scanned, Shusterman, and Nino.
Claim 21 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Noonan and Fallows.
ANALYSIS
Written Description
Whether a specification complies with the written description
requirement of 35 U.S.C. § 112, first paragraph, is a question of fact and is
assessed on a case-by-case basis. See, e.g., Purdue Pharma L.P. v.
Faulding, Inc., 230 F.3d 1320, 1323 (Fed. Cir. 2000) (citing Vas-Cath, Inc.
v. Mahurkar, 935 F.2d 1555, 1561 (Fed. Cir. 1991)). The disclosure, as
originally filed, need not literally describe the claimed subject matter (i.e.,
using the same terms or in haec verba) in order to satisfy the written
description requirement. But the Specification must convey with reasonable
clarity to those skilled in the art that, as of the filing date, Appellant was in
possession of the claimed invention. See id.
During prosecution, Appellant amended independent claims 1,16, and
21 to, in Appellant’s words, “clarify the common sense reading of
interoperability” (App. Br. 7). Specifically, claim 1 was amended to recite
that “the interoperable format is used by a plurality of vendors” and “the
interoperable format includes a protocol for the first and second medical
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Application 11/512,630
appliances to locate each other’s data;” claims 1,16, and 21 were amended
to recite that “the network translates data into an interoperable format
accessible by a third medical appliance to receive at least patient weight and
blood pressure generated by the first and second medical appliances over the
network.”3
The Examiner rejects the claims under § 112, first paragraph, on the
ground that Appellant’s Specification fails to provide written description
support for Appellant’s amendments (Final Act. 3—4). However, we agree
with Appellant that the Specification provides the requisite written
description support, including in the “Summary” and the portions of the
Specification specifically identified by the Examiner (App. Br. 7—8).
Addressing the recitation in amended claim 1 that “the interoperable
format includes a protocol for the first and second medical appliances to
locate each other’s data,” the Examiner acknowledges that the Specification
discloses that the interoperability protocol “allows independently designed
and implemented systems to locate each other, explore each other’s
capabilities,... to negotiate with each other and with the networks that they
will use to determine how a given session will be run, . . . and to then
conduct collaborative operations” (Final Act. 3—4 (citing Spec. 1 54 [15,
11. 8—13)). The Examiner maintains that “locating each other and exploring]
each other’s capabilities is different than locating] each other’s data (id.
at 4). Yet, we agree with Appellant that a person of ordinary skill in the art
3 The language of independent claims 16 and 21 is substantially identical
except that claims 16 and 21 recite that “the network translates data into an
interoperable format accessible by a third medical appliance to receive at
least patient weight and blood pressure generated by other medical
appliances over the network.”
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would reasonably understand that in “exploring each device’s capabilities,
data from two or more appliances need to be located and accessed” so that
the “two devices can . . . negotiate how data is exchanged between the two
devices” (Reply Br. 1).
Further addressing the recitation in amended claims 1,16, and 21 that
the “network translates data into an interoperable format,” the Examiner
finds that the Specification fails to describe this limitation “in such a way as
to reasonably convey to one skilled in the relevant art” that Appellant had
possession of the claimed invention at the time the present application was
filed (Final Act. 4). At the same time, the Examiner acknowledges that the
Specification describes that the translation is performed by the base station
or server {id.), which, as Appellant observes, is part of the network (App.
Br. 8).
We are persuaded that the Examiner erred in rejecting claims 1,16,
and 21 under 35 U.S.C. § 112, first paragraph. Therefore, we do not sustain
the Examiner’s rejection.
Obviousness
Independent Claim 1 and Dependent Claims 2—4 and 11
We are persuaded by Appellant’s argument that the Examiner erred in
rejecting claim 1 under 35 U.S.C. § 103(a) because Noonan, on which the
Examiner relies, does not disclose or suggest “a first medical appliance . . .
to capture a first vital information . . . the first medical appliance
transmitting the first vital information conforming to an interoperable format
to a base station” and “a second medical appliance ... to capture a second
vital information . . . each of the first and second medical appliances
converting the vital information in accordance with the interoperable format
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and processing the first and second vital information,” as recited in claim 1
(App. Br. 9-12).
Noonan is directed to a healthcare data processing system for
processing data acquired from multiple medical devices located at one of
multiple patient bed stations, and discloses, with reference to Figure 1, that
the system comprises one or more patient monitoring systems 101; patient
monitoring system 101 includes a plurality of medical devices 102—104 (i.e.,
bedside medical devices that provide patient related information, e. g., blood
pressure, heart rate, temperature) and a data router 106 (Noonan H 24, 27).
Medical devices 102—104 are coupled to data router 106 via communication
paths 114—116, which are preferably adapted to use one or more medical
device data formats, i.e., protocols, depending on the type and/or
configuration of the medical device {id. 130). Still referring to Figure 1,
patient monitoring system 101 is coupled, via a communication path 118, to
a server 108, which, in turn, is coupled, via communication path 120, to
information systems 110-112 {id. H 28, 29).
Figure 2 of Noonan is a block diagram of data router 106. As shown
in the figure, the data router comprises, inter alia, a processor 200 (including
a medical device to server data router 212 and a server to medical device
data router 214); medical device data interfaces 202—204 for receiving data
from and sending messages to medical devices 202—204, respectively, over
communication paths 114—116, respectively; and a server data interface 208
{id. 31—33). Medical device to server data router 212 and server to
medical device data router 214 are coupled, via communication path 210, to
server data interface 208, which receives messages from, and sends
messages, to server 108 over communication path 118 {id.).
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In rejecting claim 1 under § 103(a), the Examiner cites paragraph 34
of Noonan as disclosing the argued limitation (Final Act. 6—7). There,
Noonan discloses that medical device to server data router 212 routes data
from any one of medical devices 202—204 to server 108 by performing two
functions: (1) converting the data format (i.e., protocol) of the messages
from the medical device data format to the I.P. data format; and (2)
appending fields of information to the converted messages related to the
source of the messages, i.e., the model of the data router sending the
messages, the make and model of the medical device sending the messages,
and the data interface port location on data router 106 of the medical device
sending the messages (Noonan 134).
The Examiner equates the combination of medical device 102 and
data router 106 to the claimed “first medical appliance” and equates the
combination of medical device 103 and data router 106 to the claimed
“second medical appliance” (Final Act. 7 (citing Noonan 134)). And the
Examiner notes that in the preferred embodiment, the medical device data
format is the RS232 protocol, which Noonan discloses is converted by data
router 106 to the I.P. data format {id. (citing Noonan || 30, 34)).
Responding to Appellant’s arguments, the Examiner asserts that the
claim does not define “format;” therefore, the Examiner reasons that the
claimed “format” could be any format, including the I.P. data format
(Ans. 10). The Examiner further asserts that the term “interoperability” also
is not defined; therefore, “it could be the ability of the component parts of a
system to operate together and Noonan disclose[s] [this] by enabling]
communication between various devices as disclosed in paragraph [0034]”
{id.).
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During prosecution, the USPTO gives claims their broadest
reasonable interpretation consistent with the specification. See In re Hyatt,
211 F.3d 1367, 1372 (Fed. Cir. 2000). And claim language is properly
interpreted as it would be understood by a person of ordinary skill in the art.
See In re Am. Acad. ofSci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004).
Here, the term “interoperable” is generally understood to mean “[rjelating to
systems, especially of computers or telecommunications, that are capable of
working together without being specially configured to do so,” see The
American Heritage® Dictionary of the English Language, 5th Ed. (2016),
accessed at http://www.thefreedictionary.com/interoperability (last visited
on May 2, 2017), and we find no indication in the Specification that
Appellant has given the term a meaning different from its ordinary and
customary meaning.
As described above, the Examiner equates communication over a
network, i.e., Noonan’s conversion of medical device data format to the I.P.
format, to interoperability. However, we agree with Appellant that a person
of ordinary skill in the art would not consider the conversion involved in
enabling communication, e.g., mere transmission of data over a router and/or
a RS232 serial port, between various devices, to constitute “converting the
vital information in accordance with the interoperable format,” as recited in
claim 1 (App. Br. 9—10).
In view of the foregoing, we do not sustain the Examiner’s rejection
of independent claim 1 under 35 U.S.C. § 103(a). For the same reasons, we
also do not sustain the Examiner’s rejection of dependent claims 2—A and 11.
Cf. In reFritch, 972 F.2d 1260, 1266 (Fed. Cir. 1992) (“dependent claims
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are nonobvious if the independent claims from which they depend are
nonob vious”).
Independent Claims 16 and 21
Independent claims 16 and 21 include language substantially similar
to the language of independent claim 1, and stand rejected based on the same
rationale with respect to Noonan applied with respect to claim 1 (see Final
Act. 23—24, 30). Therefore, we do not sustain the Examiner’s rejections of
independent claims 16 and 21 under 35 U.S.C. § 103(a) for the same reasons
set forth above with respect to claim 1.
Dependent Claims 5—10, 12—15, 17—19, and 22
Each of claims 5—10, 12—15, 17—19, and 22 depends, directly or
indirectly, from one of independent claims 1 and 16. The rejections of these
dependent claims do not cure the deficiency in the Examiner’s rejection of
independent claims 1 and 16. Therefore, we do not sustain the Examiner’s
rejection under 35 U.S.C. § 103(a) of claims 5—10, 12—15, 17—19, and 22 for
the same reasons set forth above with respect to the independent claims.
DECISION
The Examiner’s rejection of claims 1,16, and 21 under 35 U.S.C.
§112, first paragraph, is reversed.
The Examiner’s rejections of claims 1—19, 21, and 22 under 35 U.S.C.
§ 103(a) are reversed.
REVERSED
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