Yulun Wang et al.

Patent Trials and Appeals Board

Sep 23, 2019

12151740 - (D) (P.T.A.B. Sep. 23, 2019)

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.
12/151,740 05/07/2008 Yulun Wang P027 2493
98471 7590 09/23/2019
InTouch Health
C/O CPA Global
900 2nd Avenue South, Suite 600
Minneapolis, MN 55402
EXAMINER
AMIN, BHAVESH V
ART UNIT PAPER NUMBER
3666
NOTIFICATION DATE DELIVERY MODE
09/23/2019 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 YULUN WANG, CHARLES S. JORDAN,
MARCO PINTER, DANIEL STEVEN SANCHEZ,
and KEVIN HANRAHAN
____________________

Appeal 2019-002507
Application 12/151,740
Technology Center 3600
____________________

Before JOHN C. KERINS, MICHAEL L. HOELTER, and
LEE L. STEPINA, Administrative Patent Judges.

KERINS, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant1 seeks our review under 35 U.S.C. § 134(a) from the
Examiner’s Final Office Action dated June 9, 2016 (“Final Act.”), rejecting
claims 1–10. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 We use the term “Appellant” to refer to “applicant” as defined in 37 C.F.R.
§ 1.42. Appellant identifies the real party in interest as InTouch
Technologies, Inc. Appeal Br. 2.
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THE INVENTION
Appellant’s invention relates to a tele-presence system and a method
for providing a remote medical consultation. Claim 1, reproduced below, is
illustrative of the claimed subject matter.
1. A tele-presence system, comprising:

a boom that is attached to a fixed structure at a first location;

a robot face coupled to said boom, said robot face including a
robot monitor, a robot camera, a robot speaker, and a robot
microphone, said robot camera and said robot monitor are
mechanically coupled such that they move together relative to
said boom, and said robot camera captures a patient image; and,

a remote station located a second location remote from said first
location, said remote station is coupled to said robot face via a
network to receive said patient image, said remote station can
control a movement of said robot face and includes a station
monitor that displays said patient image, a station camera that
captures a user image that is transmitted to said robot and
displayed by said robot monitor, a station speaker that reproduces
sound received by said robot microphone, and a station
microphone that receives sound that is reproduced by said robot
speaker.

THE REJECTIONS
The Examiner rejects:
(i) claims 1–6 and 8–10 under 35 U.S.C. § 103(a) as being
unpatentable over Wang (US 2004/0019406 A1, published Jan. 29, 2004) in
view of Wendt (US 2002/0082498 A1, published June 27, 2002); and
(ii) claim 7 under 35 U.S.C. § 103(a) as being unpatentable over
Wang in view of Wendt and Schulz (US 2005/0110867 A1, published May
26, 2005).
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DISCUSSION
Claims 1–6 and 8–10--§ 103(a)--Wang/Wendt
Appellant argues claims 1–6 and 8–10 as a group, presenting no
arguments for the separate patentability of any individual claim. We take
claim 1 as representative of the group, and claims 2–6 and 8–10 will stand or
fall with claim 1.
The Examiner finds that Wang discloses the limitations in claim 1,
with the exception of the boom carrying the claimed robot face being
attached to a fixed structure, and the remote station being able to control
movement of the claimed robot face. Final Act. 3. The Examiner finds that
both of these features are present in Wendt, and that it would have been
obvious to modify Wang to include those features, with the fixation of the
boom to a static structure providing stability to the robot face, as well as that
it would not take up floor space that is needed in a surgical environment. Id.
at 4; Ans. 11–12. The Examiner further takes the position that the
modification is in the nature of combining known prior art elements
according to known methods, and yielding predictable results. Ans. 11.
Appellant presents several arguments directed to alleged shortcomings
of Wendt vis-à-vis various claim limitations, and argues as well that it would
not have been obvious to modify any embodiment of Wendt to arrive at the
claimed invention. See, e.g., Appeal Br. 5–6; Reply Br. 2–3. The arguments
do not apprise us of Examiner error, in that the Examiner’s rejection does
not involve a proposed modification to any device in Wendt.
Appellant also argues that the proposed modification to Wang in view
of Wendt would render Wang unsatisfactory for its intended purpose.
Appeal Br. 6–8. In particular, Appellant cites to passages in Wang that
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indicate that the holonomic platform of Wang which carries the robot face is
for the purpose of allowing the robot to move about a home or facility to
locate and/or follow a patient. Id.; Reply Br. 3–4. Appellant maintains that
modifying Wang such that the robot is fixed to a static structure or is
otherwise limited in movement would render the Wang robot unsatisfactory
for its intended purpose, and, as such, no motivation or suggestion to make
the proposed modification exists. Appeal Br. 8. Appellant additionally
argues that Wendt does not disclose that mounting a boom to a ceiling would
aid in stabilizing the boom and the device carried by the boom, nor that such
mounting would increase floor space, and, as such, asserts that the rejection
relies on improper hindsight reconstruction. Reply Br. 4.
As noted by Appellant, Wang does evidence that a purpose for
mounting a robot face, via a boom, to a mobile platform or robot is to allow
the robot to be able to move from room to room in a home or medical
facility. Wang, however, also teaches the person of skill in the art an
approach to remotely monitoring a person for medical reasons by providing
a system with cameras, monitors, microphones, and speakers in the
person/patient location and in a remote location, and using controls in the
remote location to control the portion of the system in proximity to the
person/patient. See, e.g., Wang ¶ 20.
Attaching the boom carrying the robot face in Wang to a fixed
structure would, as argued by Appellant, limit the ability to move the robot
face “about a home or facility,” as discussed in Wang. Wang, Abstract.
Doing so would not, however, render the robot face carried by the boom
unsatisfactory for its intended purpose of allowing remote monitoring of a
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person/patient present within the range of motion of the boom and robot
face.
Wendt teaches that it was known to remotely control a video camera
and/or display for monitoring a patient, by attaching the same to a boom that
itself is attached to a ceiling in an operating room or the like. Wendt ¶¶ 54–
55, Figs. 5, 6. Appellant is correct that Wendt does not explicitly state that
using such an arrangement provides stability for imaging or increases
available floor space, but a person of ordinary skill in the art would
understand this even in the absence of explicit disclosure. See In re Jacoby,
309 F.2d 513, 516 (CCPA 1962) (artisan presumed to know something
about art apart from what references expressly disclose); In re Preda, 401
F.2d 825, 826 (CCPA 1968) (proper to take into account not only specific
teachings of reference but also inferences which one skilled in the art would
reasonably be expected to draw therefrom). Accordingly, not only is
Appellant’s contention the rejection relies on improper hindsight not
persuasive, Wendt provides the necessary underpinnings for the combination
of the teachings of the references. In situations in which the monitoring of a
patient is only needed in a particular area, such as an operating room, the use
of a ceiling-mounted boom is demonstrated to be appropriate.
Thus, the Examiner’s proposed modification provides stabilization of
the camera and monitor, and increases floor space, as compared to using the
mobile robot of Wang, in a particular space such as an operating room, at the
expense of a greater range of movement, such as throughout a house or
facility. A given course of action often has simultaneous advantages and
disadvantages, and this does not necessarily obviate motivation to combine.
Allied Erecting and Dismantling Co., Inc. v. Genesis Attachments, LLC, 825
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F.3d 1373 (Fed. Cir. 2016) (quoting Medichem, S.A. v. Rolabo, S.L., 437
F.3d 1157, 1165 (Fed. Cir. 2006); see also, In re Urbanski, 809 F.3d 1237
(Fed. Cir. 2016) (combination did not achieve properties of product in
principal reference, but achieved other desirable properties).
Appellant’s arguments do not apprise us of Examiner error in the
rejection. The rejection of claim 1 as being unpatentable over Wang and
Wendt is sustained. Claims 2–6 and 8–10 fall with claim 1.

Claim 7--§ 103(a)--Wang/Wendt/Schulz
Appellant does not present any additional arguments specifically
directed to claim 7, which depends from rejected claim 1. The rejection is
therefore sustained for the reasons identified above.

DECISION
The rejection of claims 1–6 and 8–10 under 35 U.S.C. § 103(a) as
being unpatentable over Wang in view of Wendt is affirmed.
The rejection of claim 7 under 35 U.S.C. § 103(a) as being
unpatentable over Wang in view of Wendt and Schulz is affirmed.

CONCLUSION
In summary:
Claims
Rejected
Basis Affirmed Reversed
1–6, 8–10 § 103(a) Wang,
Wendt
1–6, 8–10
7 § 103(a) Wang,
Wendt, Schulz
7
Overall Outcome 1–10

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No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED