Iron Bow Technologies, LLCDownload PDFPatent Trials and Appeals BoardNov 9, 20202019004303 (P.T.A.B. Nov. 9, 2020) Copy Citation 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. 15/439,168 02/22/2017 Peter Pistilli 86741.0008\US1 2753 29693 7590 11/09/2020 WILEY 1776 K STREET N.W. WASHINGTON, DC 20006 EXAMINER ZENATI, AMAL S ART UNIT PAPER NUMBER 2651 NOTIFICATION DATE DELIVERY MODE 11/09/2020 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): ptodocket@wiley.law xsu@wiley.law PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte PETER PISTILLI and ANTHONY MINES ____________ Appeal 2019-004303 Application 15/439,168 Technology Center 2600 ____________ BEFORE KEVIN F. TURNER, JAMES R. HUGHES, and CARL L. SILVERMAN, Administrative Patent Judges. SILVERMAN, Administrative Patent Judge. DECISION ON APPEAL Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s Final2 Rejection of claims 1–16, which constitute all pending claims. We have jurisdiction under 35 U.S.C. § 6(b). We reverse. 1 Throughout this Decision, we use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies Iron Bow Technologies, LLC as the real party in interest. Appeal Br. 2. 2 Page 1 of the Office Action mailed February 8, 2018 does not identify the Action as “Final” or “non-final.” However, Appellant and the Examiner respectively refer to the Action as “final” and “Final.” See Appeal Br. 1; Office Action 7. Appeal 2019-004303 Application 15/439,168 2 STATEMENT OF THE CASE The invention relates to a telemedicine device, including an integrated housing with a codec-independent hardware user interface. Abstract; Spec. ¶¶ 23, 10, 16, 26, 27, 42, and Figs. 1–3. Claim 1, reproduced below, is illustrative of the subject matter on appeal (emphasis added): 1. A telemedicine device implemented in an integrated housing, the telemedicine device comprising: a display; a plurality of input/output ports; a videoconferencing codec; a codec-independent hardware user interface; and a processor configured: to receive an input through the codec-independent hardware user interface; and to translate the received input into an instruction understandable by the videoconferencing codec; and to send the instruction to the videoconferencing codec. Appeal Br. 13 (Claims Appendix). REFERENCES Prior art relied upon by the Examiner: Name Reference Date Mackre US 6,128,317 Oct. 3, 2000 Galindo et al. US 2011/0267418 A1 Nov. 3, 2003 Appeal 2019-004303 Application 15/439,168 3 THE REJECTION Claims 1–16 are rejected under 35 U.S.C. § 103 as being unpatentable over Galindo and Mackre. Final Act. 2–6. ANALYSIS Appellant argues, inter alia, the Examiner errs by finding the combination of Galindo and Mackre teaches the claim 1 limitation “[a] telemedicine device implemented in an integrated housing” (also referred to as “disputed limitation”). Appeal Br. 8–10; Reply Br. 4–5. In particular, Appellant argues Galindo teaches separate elements that are interconnected and distributed across multiple units, rather than contained in a single “integrated housing.” Appeal Br. 8 (citing Galindo ¶ 66, Figs. 1–4). Appellant argues the Examiner does not cite Mackre for teaching the “integrated housing.” Id. at 9. The Examiner finds Galindo teaches the disputed limitation of claim 1. Final Act. 2 (citing Galindo ¶¶ 62, 69, 71, 72, 76). The Examiner finds Mackre teaches other limitations of claim 1. Id. at 3. In the Answer, the Examiner determines the meaning of the term “integrated housing” and finds that this meaning applies to the teachings of Galindo. Ans. 3–4. The Examiner determines the definition of “integrated” is “with various parts or aspects linked or coordinated.” Id. (citing Google search for “integrated” definition). Id. at 3. The Examiner finds this definition is consistent with the Examiner’s interpretation and the Specification. Id. at 4. In particular, the Examiner refers to the Specification: For example, the original [S]pecification shows in [F]igures 1–5, display 14, camera 20, input/output (I/O) ports 16, user interface 18, the rear of housing 12 include a plurality of VESA-compliant Appeal 2019-004303 Application 15/439,168 4 mounting holes; I/O ports 16 can also include an interface, such as a USB interface 16c, for the interconnection of peripherals (e.g., scopes and other examination devices), power adapters, and the like ([see] paragraphs: 0028, and 0029). Also the original [S]pecification states: “A plurality of input/output devices, such as examination tools, cameras, microphones, and speakers, can be coupled to the plurality of input/output ports.” (paragraphs: 0018). Id. at 4. The Examiner then finds that Galindo teaches the claimed “telemedicine device implemented in an integrated housing” because Galindo teaches “a telemedicine system is provided which is capable of being used for integrating multiple medical instruments and capable of transmitting and receiving medical instrument data and real-time or time delayed audio/video data to and from a corresponding telemedicine system (emphasis added).” Id. at 4 (citing Galindo ¶ 413). Appellant argues the telemedicine device of claim 1 includes “an integrated housing” and the “recited elements” (e.g., the display, input/output ports, codec, hardware user interface, and processor) that are part of a single unit (e.g., they are contained by the claimed “integrated housing”). Appeal Br. 8. Appellant argues the Examiner admits Galindo and Mackre disclose distributed interconnected elements and the Examiner incorrectly characterize the claims contemplate “‘a telemedicine device 10 . . . implemented in . . . a group of devices.’” Id. at 9 (citing Final Action 6; Galindo ¶ 140, Figs. 1–4). Appellant argues the Examiner “reads language into the claims that is not present and, for this reason alone, constitutes 3 The Examiner does not cite the source of this quote. However, it appears the quote is taken from Galindo ¶ 41. Appeal 2019-004303 Application 15/439,168 5 reversible error.” Id. (citing Manual of Patent Examining Procedure “MPEP” § 2111.01 (II)). Appellant argues the Examiner’s reference to a Specification description that a camera and/or the input devices can be coupled to the input/output ports does not support the Examiner’s assertion that the claims are directed to “‘a group of devices.’” Id. (citing Final Act. 9). According to Appellant, claim 1 (and independent claim 10) do not recite that the integrated housing incorporates the camera or any other input/output device. Id. Therefore, Appellant argues “[i]n sum, neither Galindo nor Mackre teaches the claimed housing that integrates the recited elements” and “[t]o the contrary, the cited references teach that the recited elements are implemented as separate and distinct devices — a fact that the Examiner admits.” Id. at 9–10. In the Reply Brief, Appellant reiterates and refers to the Specification as consistent with Appellant’s interpretation and inconsistent with the Examiner’s interpretation. Reply Br. 4–5. For example, Appellant argues the Specification and Figures show: the “integrated housing” is not a mere hub, but rather a single unit that incorporates several recited elements (e.g., the display, input/output ports, codec, hardware user interface, and processor). For instance, “FIGS. 1–3 depict a telemedicine device 10, which is implemented in an integrated housing 12. Housing 12 of telemedicine device 10 incorporates a display 14, a plurality of input/output ('1/0') ports 16, and a user interface 18 implemented in hardware . . . .” Specification ¶ [0026]. The Examiner simply ignores this context. Id. at 4. As discussed below, we are persuaded by Appellant’s arguments. During prosecution, claims must be given their broadest reasonable interpretation when reading claim language in light of the Specification as it Appeal 2019-004303 Application 15/439,168 6 would be interpreted by one of ordinary skill in the art. In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). Although we interpret claims broadly but reasonably in light of the Specification, we nonetheless must not import limitations from the Specification into the claims. See In re Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993). Our reviewing court states that “the words of a claim ‘are generally given their ordinary and customary meaning.’” Phillips v. AWH Corp., 415 F.3d 1303, 1312 (Fed. Cir. 2005) (en banc) (citations omitted). However, the broadest reasonable interpretation differs from the broadest possible interpretation. In re Smith Int’l, Inc., 871 F.3d 1375, 1383 (Fed. Cir. 2017). The correct inquiry in giving a claim term its broadest reasonable interpretation in light of the specification is “an interpretation that corresponds with what and how the inventor describes his invention in the specification, i.e., an interpretation that is ‘consistent with the specification.’” Id. at 1382–83 (quoting In re Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997)). Here, the Examiner’s claim interpretation of “integrated housing” is unreasonably broad. The Examiner’s interpretation utilizing “linked or coordinated” focuses on the term “integrated” without regard to the context of the claim. The disputed term is “integrated housing” and the telemedicine device is implemented in the “integrated housing (emphasis added).” The telemedicine device comprising (including) several identified devices (a display, input/output ports, a video conferencing codec, a codec-independent hardware user interface, and a processor; also referred to as “identified devices”). One of ordinary skill in the art would understand the ordinary meaning of the term “integrated housing” to constitute a unitary housing that includes the claimed identified devices. Appeal 2019-004303 Application 15/439,168 7 Additionally, the Specification is consistent with this interpretation and inconsistent with the Examiner’s proposed interpretation. The Specification and Figures describe a unitary housing that includes the claimed identified devices. Spec. ¶¶ 16, 26, 27; Figs. 1–3. For example: Also disclosed herein is a telemedicine device including an integrated housing. The integrated housing, in turn, includes: a display; a plurality of input/output ports; a videoconferencing codec; a codec-independent hardware user interface; and a processor configured to translate user inputs received through the codec- independent hardware user interface into instructions understandable by the videoconferencing codec. Spec. ¶ 16 (emphasis added). Applying a broad and reasonable interpretation, Galindo’s distributed group of interconnected devices does not constitute the claimed “integrated housing.” On the record before us, the Examiner does not sufficiently show that Galindo’s devices constitute the “integrated housing” or that one of ordinary skill in the art would have modified the interconnected devices into the claimed integrated housing. In view of the above, we do not sustain the rejection of claim 1, and independent claim 10 which includes the same disputed limitation discussed supra. We also do not sustain the rejection of dependent claims 2–9 and 11– 16. Cf. In re Fritch, 972 F.2d 1260, 1266 (Fed. Cir. 1992). Because our decision with regard to the disputed limitation is dispositive of the rejections made, we do not address additional arguments raised by Appellant. Appeal 2019-004303 Application 15/439,168 8 CONCLUSION In summary: Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1–16 103 Galindo, Mackre 1–16 REVERSED Copy with citationCopy as parenthetical citation