Ex Parte Wang et alDownload PDFPatent Trial and Appeal BoardAug 26, 201612685986 (P.T.A.B. Aug. 26, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 12/685,986 01112/2010 98471 7590 InTouch Health C/O CPA Global P.O.Box 52050 Minneapolis, MN 55402 08/30/2016 FIRST NAMED INVENTOR Yulun Wang 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. POlOC 8610 EXAMINER FIGUEROA, JAIME ART UNIT PAPER NUMBER 3664 NOTIFICATION DATE DELIVERY MODE 08/30/2016 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): clambrecht@intouchhealth.com docketing@cpaglobal.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte YUL UN WANG, CHARLES S. JORDAN, JONATHAN SOUTHARD, and MARCO PINTER Appeal2014-008689 Application 12/685,9861 Technology Center 3600 Before JOHN C. KERINS, STEP AN ST AI CO VICI, and LEE L. STEPINA, Administrative Patent Judges. ST AI CO VICI, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Yulun Wang et al. (Appellants) appeal under 35 U.S.C. § 134(a) from the Examiner's Final decision rejecting under 35 U.S.C. § 103(a) claims 101-120,2 as being unpatentable over Kuno (US 5,802,494, iss. Sept. 1, According to Appellants, InTouch Technologies, Inc. is the real party in interest. Appeal Br. 2 (filed Apr. 1, 2014). 2 Although the Examiner does not include claims 106-109 and 116-119 in the heading of the rejection (see Final Act. 4 (transmitted Mar. 28, 2013)), these claims are discussed in the body of the rejection (see id. at 8-9). We Appeal2014-008689 Application 12/685,986 1998) and Loeb (US 2001/0054071 Al, pub. Dec. 20, 2001). Claims 1-100 are canceled. Appeal Br. 9. We have jurisdiction over this appeal under 35 U.S.C. § 6(b). SUMMARY OF DECISION We AFFIRM-IN-PART. INVENTION Appellants' invention relates to "the field of mobile two-way teleconferencing." Spec. 1, 11. 6-7. Claims 101 and 111 are independent. Claim 101 is illustrative of the claimed invention and reads as follows: 101. A robot system, comprising: a robot that has a camera, a monitor and a speaker, said camera captures a video image; and, a remote station that has a monitor that displays an alert input that can be selected to request access to said robot, said access is not provided to said remote station unless a recipient user grants said request to access said robot. ANALYSIS Claims 101-110 Claim 101 recites, in part, "a remote station that has a monitor that displays an alert input that can be selected to request access to said robot, said access is not provided to said remote station unless a recipient user grants said request to access said robot." thus understand the omission of these claims from the heading as an inadvertent error and consider them in our analysis. 2 Appeal2014-008689 Application 12/685,986 The Examiner finds that Kuno discloses most of the limitations of independent claim 101 including a robot (mobile robot 5), a remote station (monitor station 2), a monitor (monitor console 2), and "an alert input that can be selected to request access to said robot (5) (see fig. 5: start switch - input circuit 41- arranged in the monitor console outputting an image-data request signal)," but that the alert input is not displayed on a monitor. Final Act. 4--5 (citing Kuno, col. 5, 11. 10-30; Figs. 4 and 5). The Examiner relies on Loeb as teaching "an audio/video conference system for electronic care giving having a graphical user interface displaying a plurality of icons to be selected, such as a knocker icon 515 (being broadly interpreted as an alert input claimed) that is selected to make a call." Id. at 5 (citing Loeb i-f 61, Fig. 5). The Examiner concludes that a person of ordinary skill in the art would have readily recognized the desirability and advantages of modifying the system ofKuno by employing the \vell-knov,rn or conventional features of introducing capability of using a display user interface with icons as inputs, as disclosed by Loeb, to provide iconographical options to make a request for videoconference by the caregiver to the patient. Id. at 6. Appellants argue that Kuno' s "'start switch' that the physician pushes to start the video session with the patient is not a request within the meaning of claim 101," and as such, "Kuno' s system does not prompt the patient for permission to start the session after the physician has pressed the start switch." Appeal Br. 7 (citing Kuno, col. 5, 11. 10-16; Fig. 2A). Appellants assert that if Loeb is being relied upon to teach "the notion of not providing access to video unless the request is granted," Appellants then argue that 3 Appeal2014-008689 Application 12/685,986 "modifying Kuno such that 'access is not provided to said remote station unless a recipient user grants said request,' as claimed, would render the system of Kuno unsatisfactory for its intended purpose," because "[i]f the patient's condition were to deteriorate to the point at which he or she could not respond to the request, the physician would be unable begin monitoring the patient." Id. at 7-8. In the Answer, the Examiner responds that Step B of Figure 2A of Kuno prompts "the patient to be monitored: Display message via the robot's screen 'Do you want to be monitored?,"' and that "this message is a prompt for the patient to either accept or decline the possibility of being monitored through the use of the bed-side robot." Ans. 3 (citing Kuno col. 4, 11. 25-33; Fig. 2A). The Examiner maintains that "Loeb teaches an alert input that can be selected to request access to a patient from a remote physician," and that "[t]his is the teaching that is being used to combine with Kuno." Id. at 5. The Examiner thus concludes that "Appellant[s] failed to point out any errors for using this Loeb's teaching to combine with Kuno." Id. In reply, Appellants assert that Kuno's prompt in step B of Fig. 2A "does not originate from the monitoring station," and instead, "is generated automatically when abnormality detection circuit 34 'determines, in step A, whether or not it is necessary for a physician to examine and check the subject's facial expression and physical conditions."' Reply Br. 2-3 (citing Kuno, col. 4, 11. 18-25). Appellants argue that even if Loeb teaches the claimed alert input, modifying Kuno so "that 'access is not provided to said remote station unless a recipient user grants said request,' as claimed," runs 4 Appeal2014-008689 Application 12/685,986 "counter to Kuno' s stated purpose of providing a system that allows a physician to monitor the patient when necessary." Id. at 4 (emphasis added). Appellants thus argue that "the proposed modification would render Kuno unfit for its intended purpose, and, therefore, there is no reason to combine the cited references in the manner claimed." Id. Although we appreciate that Kuno does provide the opportunity for a patient to decline monitoring, nonetheless, Appellants are correct in that the request for monitoring originates at the robot 5, not at the remote station 2. Specifically, Kuno discloses that sensors 33 installed in the sickroom "output diagnosis signals, representing the physical conditions of the subject." Kuno, col. 4, 11. 10-14. Video signals from robot camera 31 a and sickroom camera 31 b "and the diagnosis signals are input to the signal processor 32," for processing, "thereby generating image data and diagnosis data" that "are supplied to the abnormality decision circuit 34 incorporated in the robot 5." Id. at col. 4, 11. 14--20. Furthermore, Kuno discloses that "[b ]ased on the image data and the diagnosis data the circuit 34 determines, in step A, whether or not it is necessary for a physician to examine and check the subject's facial expression and physical conditions." Id. at col. 4, 11. 20-24. Hence, based on the determination, in step A, the patient is prompted by robot 5 requesting that the patient be monitored by the physician. Id. at col. 4, 11. 25-33. Accordingly, based on a positive response from the patient, or based on presumed consent if the patient does not explicitly respond, the robot alerts/instructs the physician to begin monitoring. Id. at col 4, 1. 34--col. 5, 1. 9, and Fig. 2A. As such, Kuno does not disclose a remote station that is used "to request access to said robot." 5 Appeal2014-008689 Application 12/685,986 Rather, the request to access Kuno' s robot 5 comes from the robot itself based on a determination made by the robot. Hence, modifying Kuno' s system to include Loeb's display user interface would not remedy the deficiency of Kuno because Kuno' s robot 5 would still request access regardless of whether remote station 2 includes Loeb's display user interface. Moreover, we agree with Appellants that it would not have been obvious to modify Kuno to have a remote station that is used to request access to said robot, because doing so would change the principle of operation of Kuno. See Reply Br. 3--4. It is well settled that if the proposed modification or combination of the prior art would change the principle of operation of the prior art invention being modified, then the teachings of the references are not sufficient to render the claims prima facie obvious. In re Ratti, 270 F.2d 810 (CCPA 1959). In this case, Kuno uses a robot to both monitor a patient and alert a physician to observe a subject "only when necessary and proper, so that a physician is relieved from the burden of continuously watching a monitor CRT display." Kuno, col. 1, 11. 49-52. Thus, the Examiner does not adequately explain how a physician located at a remote station would know when it is necessary and proper to monitor the patient and thus, the physician would not be relieved from the burden of continuously watching a monitor CRT display. In other words, because enabling the physician at a remote station to request monitoring instead of the robot would not relieve the physician of continuously monitoring the CRT display, a person of ordinary skill in the art would have been discouraged from using an alert input that can be selected to request access 6 Appeal2014-008689 Application 12/685,986 to a patient from a remote station by the physician. Therefore, the modification proposed by the Examiner of using an alert input that can be selected to request access to a patient from a remote station by a physician in Kuno' s system would not have been obvious to the person of ordinary skill in the art. Accordingly, for the foregoing reasons, we do not sustain the rejection under 35 USC§ 103(a) of claims 101-110 as being unpatentable over Kuno and Loeb. Claims 111-120 Appellants do not appeal the rejection of claims 111-120. Appeal Br. 2, fn. 1. As per the Code of Federal Regulations, an appeal, when taken, is presumed to be taken from the rejection of all claims under rejection unless cancelled by an amendment filed by the applicant and entered by the Office. 37 C.F.R. § 41.3 l(c). Appellants have not cancelled claims 111-120 and do not present arguments or rely upon particular evidence as to these claims and thus, have waived any arguments as to these claims for this appeal. See id. at§ 41.37; see also MPEP 1215.03. Accordingly, we summarily sustain the rejection under 35 USC§ 103(a) of claims 111-120 as being unpatentable over Kuno and Loeb. DECISION The decision of the Examiner to reject claims 101-110 is reversed. The decision of the Examiner to reject claims 111-120 is affirmed. 7 Appeal2014-008689 Application 12/685,986 No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv). AFFIRMED-IN-PART 8 Copy with citationCopy as parenthetical citation