Ex Parte 8,015,025 B2 et al

Patent Trial and Appeal BoardAug 1, 2017

95002172 (P.T.A.B. Aug. 1, 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. 95/002,172 09/12/2012 8,015,025 B2 12771.0076USR1 6461 60683 7590 08/01/2017 Robert Bosch LLC 1800 W. Central Road Mount Prospect, IL 60056 EXAMINER WEHNER, CARY ELLEN ART UNIT PAPER NUMBER 3993 MAIL DATE DELIVERY MODE 08/01/2017 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 ____________________ MEDTRONIC, INC. Requester and Cross-appellant v. Patent of ROBERT BOSCH HEALTHCARE SYSTEMS, INC. Patent Owner and Cross-Appellant ____________________ Appeal 2017-005264 Reexamination Control 95/002,172 and 95/002,276 Patent No. US 8,015,025 B2 Technology Center 3900 ____________________ Before MARC S. HOFF, STEPHEN C. SIU, and ERIC B. CHEN, Administrative Patent Judges. HOFF, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Patent Owner Robert Bosch Healthcare Systems, Inc. appeals under 35 U.S.C. §§ 134(b) and 315(a) (2002) from the rejection of claims 1, 2, and 4–23 as set forth in the Right of Appeal Notice (RAN) mailed December 18, 2014. Patent Owner filed a second replacement brief (“PO App. Br.”) on September 21, 2015. Third Party Requester Medtronic, Inc. filed a brief Appeal 2017-005264 Reexamination Control Nos. 95/002,172 and 95/002,276 Patent No. 8,015,025 B2 2 (“Req. Br.”) on March 19, 2015 appealing from the non-adoption of the proposed rejection of claim 3. Requester also filed a brief in response to Patent Owner (“Req. Resp. Br.”) on October 21, 2015, in support of the rejection of claims 1, 2, and 4–23. Patent Owner filed a rebuttal brief (“PO Reb. Br.”) on August 22, 2016. The Examiner mailed an Examiner’s Answer (“Ans.”) on January 5, 2016 which incorporated the RAN by reference. We have jurisdiction under 35 U.S.C. §§ 134 and 315. We affirm-in-part and enter a new ground of rejection. The ‘025 patent issued to Brown on September 6, 2011 and is currently assigned to Bosch Healthcare Systems, Inc. The ‘025 patent is a health monitoring system, in which a plurality of remote user sites each comprise a health monitoring device, an interactive video device, and a user interface apparatus. A remote computing facility is configured for signal communication with the remote user sites, and receives health monitoring data-related signals from them. At least one computer is configured for signal communication with the remote computing facility. The interactive video device is interactively coupled with the remote computing facility. See Abstract. Claim 1 illustrates the claims appealed by Patent Owner. Claim 3 is the claim appealed by Third Party Requester: 1. A method for communicating with a server, comprising the steps of: (A) collecting information at a device, wherein (i) said device is associated with an individual, (ii) said device comprises a microprocessor-based unit capable of receiving a computer program from said server; and (iii) said computer program, when executed by said device, collects physiological information from said individual; Appeal 2017-005264 Reexamination Control Nos. 95/002,172 and 95/002,276 Patent No. 8,015,025 B2 3 (B) establishing a first communication link between said device and said server, wherein said device is remotely located from said server; (C) transmitting said information from said device to said server and terminating said first communication link; (D) processing said information in said server to generate processed information after said first communication link is terminated; and (E) transmitting health related material based on said processed information from said server to said device after said device establishes a second communication link. 3. The method according to claim 1, wherein said health related material comprises a value calculated in response to said information. The Examiner relies upon the following prior art in rejecting the claims on appeal: Carron US 4,724,521 Feb. 9, 1988 Fu US 4,803,625 Feb. 7, 1989 Gombrich US 4,835,372 May 30, 1989 Wahlquist US 5,367,667 Nov. 22, 1994 Clough US 5,379,057 Jan. 3, 1995 Kirk US 5,390,238 Feb. 14, 1995 Chaco US 5,465,082 Nov. 7, 1995 Throughout this decision, we referto Patent Owner’s Second Replacement Appeal Brief (“PO App. Br.,” filed November 21, 2015), Requester’s Replacement Appeal Brief (“Req. Br.,” filed May 5, 2015), Requester’s Response to Patent Owner’s Second Replacement Appeal Brief (“Req. Resp. Br.,” filed October 21, 2015), Patent Owner’s Replacement Appeal 2017-005264 Reexamination Control Nos. 95/002,172 and 95/002,276 Patent No. 8,015,025 B2 4 Rebuttal Brief (“PO Reb. Br.,” filed August 22, 2016), and the Examiner’s Right of Appeal Notice (“RAN,” filed December 18, 2014) for their respective details. REJECTIONS The claims stand rejected as detailed below (see RAN 8–10). The following rejections are made under 35 U.S.C. § 103(a). References Claims Fu and Clough 1, 2, 5-15, and 17-23 Fu, Clough, and Kirk 4 Fu, Clough, and Chaco 16 Fu and Wahlquist 1, 2, 5-15, and 17-23 Fu, Wahlquist, and Kirk 4 Fu, Wahlquist, and Chaco 16 Fu and Carron 1, 2, 5-15, and 17-23 Fu, Carron, and Kirk 4 Fu, Carron, and Chaco 16 Chaco and Clough 1, 2, 5, 7-13, and 15-23 Chaco, Clough, and Kirk 4 Chaco, Clough, and Gombrich 14 Chaco and Wahlquist 1, 2, 5, 7-13, and 15-23 Chaco, Wahlquist, and Kirk 4 Chaco, Wahlquist, and Gombrich 14 Chaco and Carron 1, 2, 5, 7-13, and 15-23 Chaco, Carron, and Kirk 4 Chaco, Carron, and Gombrich 14 Kirk and Clough 1, 4-9, 11-13, 15, 17-19, 21, and 22 Kirk, Clough, and Chaco 2, 10, 16, 20, and 23 Kirk, Clough, and Gombrich 14 Kirk and Wahlquist 1, 4-9, 11-13, 15, 17-19, 21, and 22 Kirk, Wahlquist, and Chaco 2, 10, 16, 20, and 23 Appeal 2017-005264 Reexamination Control Nos. 95/002,172 and 95/002,276 Patent No. 8,015,025 B2 5 Kirk, Wahlquist, and Gombrich 14 Kirk and Carron 1, 4-9, 11-13, 15, 17-19, 21, and 22 Kirk, Carron, and Chaco 2, 10, 16, 20, and 23 Kirk, Carron, and Gombrich 14 Gombrich and Clough 1, 2, 5-9, 11-15, and 17-22 Gombrich, Clough, and Kirk 4 Gombrich, Clough, and Chaco 10, 16, and 23 Gombrich and Wahlquist 1, 2, 5-9, 12-15, and 17-22 Gombrich, Wahlquist, and Kirk 4 Gombrich, Wahlquist, and Chaco 10, 11, 16, and 23 Gombrich and Carron 1, 2, 5-9, 12-15, and 17-22 Gombrich, Carron, and Kirk 4 Gombrich, Carron, and Chaco 10, 11, 16, and 23 The following non-adopted grounds of rejection are appealed by Third Party Requester: References Claims Fu and Clough 3 Fu, Wahlquist, and Clough 3 Fu, Carron, and Clough 3 Chaco, Wahlquist, and Clough 3 Chaco, Carron, and Clough 3 Kirk and Clough 3 Kirk, Wahlquist, and Clough 3 Kirk, Carron, and Clough 3 Gombrich and Clough 3 Gombrich and Wahlquist 3 Gombrich and Carron 3 ISSUES Appellants’ arguments present us with the following dispositive issues: Appeal 2017-005264 Reexamination Control Nos. 95/002,172 and 95/002,276 Patent No. 8,015,025 B2 6 1. Does the combination of Fu and Clough teach or suggest “processing said information in said server to generate processed information after said first communication link is terminated?” 2. Does the combination of Fu and Clough teach or suggest “transmitting health related material based on said processed information from said server to said device after said device establishes a second communication link?” 3. Does the combination of Fu and Clough teach or suggest “wherein said health related material comprises a value calculated in response to said information?” PRINCIPLES OF LAW We review the appealed rejections for error based upon the issues identified by Owner in its appeal brief, and in light of the arguments and evidence produced thereon. Cf. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential) (citing In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992)). “Any arguments or authorities not included in the briefs permitted under this section or [37 C.F.R.] §§ 41.68 and 41.71 will be refused consideration by the Board, unless good cause is shown.” 37 C.F.R. § 41.66(c)(1)(vii). ANALYSIS REJECTION OF CLAIMS 1, 2, 5–15, AND 17–23 OVER FU AND CLOUGH We are not persuaded by Patent Owner’s argument that the combination of Fu and Clough fails to teach or suggest “processing said Appeal 2017-005264 Reexamination Control Nos. 95/002,172 and 95/002,276 Patent No. 8,015,025 B2 7 information in said server to generate processed information after said first communication link is terminated,” which is recited in independent claims 1, 12, and 19. See App. Br. 12-15. We agree with Requester that Fu suggests the obviousness of processing information in the server after the first communication link is terminated. As noted by the Requester, Fu teaches uploading data to the central server from the remote home devices of a patient via a phone line, and Fu further suggests that the phone connection terminates after transmission of the patient’s data. Req. Resp. Br. 7, citing Fu col. 14:53–65 and Fig. 14. The Stone Declaration supports the Examiner’s conclusion that it would have been obvious to terminate the communication link, and then process information in the server. Regardless of whether or not Dr. Stone’s statement that “it would be illogical and counterintuitive to maintain the communication link over a telephone line during the entire cycle of reception of data and preparation of reports” is fully factually supported (see PO Reb. Br. 5), we agree with Dr. Stone that as of the 1992 priority date of the patent application that matured into the ‘025 patent, and as of the 1989 issue date of Fu, it would have been obvious to the person having skill in the art to generate the report at the central computer after the data transfer took place, and it would have been obvious to close the communication link as quickly as possible to keep any particular phone line available. See Stone Decl. ¶¶ 13, 14. Patent Owner’s argument that the combination of Fu and Clough does not teach or suggest “transmitting health related material based on said processed information from said server to said device after said device Appeal 2017-005264 Reexamination Control Nos. 95/002,172 and 95/002,276 Patent No. 8,015,025 B2 8 establishes a second communication link,” as recited in independent claims 1, 12, and 19, is also unpersuasive. See PO App. Br. 15-16. Patent Owner argues that “[n]othing in Fu indicates that a physician provides instructions to the patient via the microcomputer (i.e. “server”) 24,” referring to Fu’s teaching that the microcomputer 24 “includes suitable programs for preparing appropriate reports, and directing appropriate instructions or data files, to the respective home units 60.” PO App. Br. 15; Fu col. 8:4-10. Patent Owner’s argument fails to account for Fu’s further teaching that “the specific test and medication profiles and the specific questions included in the question and answer sessions will be modified for each application as requested by the attending physician.” Fu col. 16:37-41; see Req. Resp. Br. 8. We agree with Requester that “[t]his modification would obviously come via instructions or data sent by the central server.” Req. Resp. Br. 8. We also agree with Requester’s further argument that Fu teaches that the central unit “generates reports of logged patient parameters for analysis of and response by trained medical personnel.” Fu 5:36-38; see Req. Resp. Br. 9. We agree that one of ordinary skill, reading Fu, would understand that changes to a patient’s remote treatment plan would come after a doctor looked at the patient’s health reports. Therefore, such changes would be based on the processed information. Req. Resp. Br. 9. With respect to claim 6, Patent Owner’s arguments do not persuade us that the Examiner erred. See PO App. Br. 19. We agree with Requester that Fu teaches “prompting the patient with selected messages and for storing a prescribed parameter schedule for selected ones of the health parameters and Appeal 2017-005264 Reexamination Control Nos. 95/002,172 and 95/002,276 Patent No. 8,015,025 B2 9 a prescribed medication schedule for at least one medication.” Fu col. 1:47- 50; see Req. Resp. Br. 10. As mentioned supra, Fu teaches that doctors modify test and medication profiles for their remote patients. See Fu col. 16:37-40. We agree with Requester’s argument that one of ordinary skill, reading Fu, would understand that data sent from the server to the remote device would include these messages. Req. Resp. Br. 11; see Fu col. 8:4-10. Accordingly, such messages would be stored in the server, and transmitted from the server upon the establishment of communication, as claim 6 recites. We conclude that the combination of Fu and Clough teaches or suggests all the limitations of independent claims 1, 12, and 19, as well as dependent claims 2, 5–11, 13–15, 17, 18, and 20–23, not separately argued. We sustain the Examiner’s § 103(a) rejection of claims 1, 2, 5–15, and 17– 23 over Fu and Clough. REJECTION OF CLAIM 4 OVER FU, CLOUGH, AND KIRK We are not persuaded by Patent Owner’s argument that the Examiner erred because he did not provide an example of what educational content of Kirk would be most effectively displayed graphically. See PO App. Br. 20- 21. Claim 4 contains no requirement regarding “effectiveness.” Rather, we agree with Requester that the Examiner properly relied on prior art teachings to recognize that it was obvious to display educational content graphically, as taught by Clough. Req. Resp. Br. 11; see Clough col. 15:15-29, Figures 5 and 9. Patent Owner’s contention that the exact disclosed implementations of Kirk and Clough would not combine with Fu without modification is not Appeal 2017-005264 Reexamination Control Nos. 95/002,172 and 95/002,276 Patent No. 8,015,025 B2 10 persuasive to show Examiner error. We agree with the Examiner that the combination suggests presenting the educational material of Kirk in a graphical manner. See Req. Resp. Br. 11 and RAN 15–16. Patent Owner’s further assertion that Clough only teaches the use of pictograms, or simpler objects such as lines or frames, not animation or other graphics, is not persuasive to show error. See PO App. Br. 21. Patent Owner has not presented evidence that the pictograms, lines, and frames of Clough fail to correspond to the “graphical or animated format” recited in claim 4. Because we find that the combination of Fu, Clough, and Kirk suggests all the limitations of claim 4, we sustain the Examiner’s § 103(a) rejection. REJECTION OF CLAIM 16 OVER FU, CLOUGH, AND CHACO Patent Owner does not present separate argument for the patentability of claim 16, relying instead on the arguments made with respect to claim 12. As a result, we sustain the Examiner’s § 103 rejection of claim 16 over Fu, Clough, and Chaco, for the reasons expressed with respect to the § 103 rejection of claim 12 over Fu and Clough, supra. APPEAL OF THE NON-ADOPTED PROPOSED REJECTION OF CLAIM 3 We agree with Requester that Fu teaches reports (i.e., health related material) including at least one value that is calculated in response to information collected at a device that is associated with an individual (patient). See Req. Br. 13–15. Fu teaches a UNIX system “which includes suitable programs for receiving communications from the home units 60, Appeal 2017-005264 Reexamination Control Nos. 95/002,172 and 95/002,276 Patent No. 8,015,025 B2 11 preparing appropriate reports, and directing appropriate instructions or data files to the respective home units 60.” Fu col. 8:4-10; see Req. Br. 14. Fu teaches a central unit that generates reports of the tests and answers received from a patient’s home unit. Fu col. 5:36-38; see Req. Br. 14. We agree with Requester that such reports necessarily include at least one value calculated based on the information from the patient’s home unit. Req. Br. 14; see Stone Decl. ¶ 15. Moreover, we do not agree with Patent Owner’s argument that the provision of generally “positive and negative indications” do not constitute a “calculated value,” because such indications are not a numerical quantity. PO Resp. Br. 8. Claim 3 specifies that the health related material “comprises a value calculated in response to said information.” In the invention, said calculations are performed by a computing device, and one type of value known to be used by conventional computing devices is a Boolean value that takes on a value of either logically “true” or “false.” As such, we find that the generally positive and negative indications referred to in Patent Owner’s arguments fall within the claim scope of “a value calculated.” Accordingly, we find that the Examiner erred in not adopting the proposed rejection of claim 3 over the combination of Fu and Clough. OTHER REJECTIONS NOT SPECIFICALLY DISCUSSED In affirming the rejected claims on appeal on these grounds, and reversing the Examiner’s decision not to adopt a rejection of claim 3, we decline to address the merits of additional grounds of rejection or non- Appeal 2017-005264 Reexamination Control Nos. 95/002,172 and 95/002,276 Patent No. 8,015,025 B2 12 adoption appealed by the Patent Owner and Requester. See Beloit Corp. v. Valmet Oy, 742 F.2d 1421, 1423 (Fed. Cir. 1984) (having decided a single dispositive issue, the ITC was not required to review other matters decided by the presiding officer). CONCLUSIONS 1. The combination of Fu and Clough suggests “processing said information in said server to generate processed information after said first communication link is terminated.” 2. The combination of Fu and Clough suggests “transmitting health related material based on said processed information from said server to said device after said device establishes a second communication link.” 3. The combination of Fu and Clough suggests “wherein said health related material comprises a value calculated in response to said information.” ORDER The Examiner’s decision to reject claims 1, 2, and 4–23 over Fu and Clough is affirmed. The Examiner’s decision not to adopt the rejection of claim 3 over Fu and Clough is reversed. TIME PERIOD FOR RESPONSE Pursuant to 37 C.F.R. § 41.77(a), the above-noted reversal with respect to claim 3 constitutes a new ground of rejection. Section 41.77(b) Appeal 2017-005264 Reexamination Control Nos. 95/002,172 and 95/002,276 Patent No. 8,015,025 B2 13 provides that “[a] new ground of rejection . . . shall not be considered final for judicial review.” That section also provides that Patent Owner, WITHIN ONE MONTH FROM THE DATE OF THE DECISION, must exercise one of the following two options with respect to the new grounds of rejection to avoid termination of the appeal proceeding as to the rejected claims: (1) Reopen prosecution. The owner may file a response requesting reopening of prosecution before the examiner. Such a response must be either an amendment of the claims so rejected or new evidence relating to the claims so rejected, or both. (2) Request rehearing. The owner may request that the proceeding be reheard under § 41.79 by the Board upon the same record. The request for rehearing must address any new ground of rejection and state with particularity the points believed to have been misapprehended or overlooked in entering the new ground of rejection and also state all other grounds upon which rehearing is sought. In accordance with 37 C.F.R. § 41.79(a)(1), the “[p]arties to the appeal may file a request for rehearing of the decision within one month of the date of: . . . [t]he original decision of the Board under § 41.77(a).” A request for rehearing must be in compliance with 37 C.F.R. § 41.79(b). Comments in opposition to the request and additional requests for rehearing must be in accordance with 37 C.F.R. § 41.79(c)–(d), respectively. Under 37 C.F.R. § 41.79(e), “[t]he times for requesting rehearing under paragraph (a) of this section, for requesting further rehearing under paragraph (c) of this section, and for submitting comments under paragraph (b) of this section may not be extended.” Appeal 2017-005264 Reexamination Control Nos. 95/002,172 and 95/002,276 Patent No. 8,015,025 B2 14 An appeal to the United States Court of Appeals for the Federal Circuit under 35 U.S.C. §§ 141–144 and 315 and 37 C.F.R. § 1.983 for an inter partes reexamination proceeding “commenced” on or after November 2, 2002 may not be taken “until all parties’ rights to request rehearing have been exhausted, at which time the decision of the Board is final and appealable by any party to the appeal to the Board.” 37 C.F.R. § 41.81; see also MPEP §§ 2682, 2683 (8th ed., Rev. 8, July 2010). No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). Requests for extensions of time in this inter partes reexamination proceeding are governed by 37 C.F.R. § 1.956. See 37 C.F.R. § 41.79. In the event neither party files a request for rehearing within the time provided in 37 C.F.R. § 41.79, and this decision becomes final and appealable under 37 C.F.R. § 41.81, a party seeking judicial review must timely serve notice on the Director of the United States Patent and Trademark Office. See 37 C.F.R. §§ 90.1 and 1.983. AFFIRMED-IN-PART; 37 C.F.R. § 41.77(b) sl Appeal 2017-005264 Reexamination Control Nos. 95/002,172 and 95/002,276 Patent No. 8,015,025 B2 15 For PATENT OWNER Robert Bosch LLC 1800 W. Central Road Mount Prospect, IL 60056 For THIRD PARTY REQUESTER Merchant & Gould PC P.O. Box 2903 Minneapolis, MN 55402-0903