Ex Parte 8140663 et al

Patent Trial and Appeal Board

Apr 20, 2016

95002178 (P.T.A.B. Apr. 20, 2016)

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.
95/002,178 09/11/2012 8140663 12771.0076USR3 2086
60683 7590 04/21/2016
Robert Bosch Healthcare Systems, Inc.
2400 GENG ROAD, SUITE 200
PALO ALTO, CA 94303
EXAMINER
MENEFEE, JAMES A
ART UNIT PAPER NUMBER
3992
MAIL DATE DELIVERY MODE
04/21/2016 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
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.
95/002,221 09/13/2012 8140663 12771.0076USR3 2544
60683 7590 04/21/2016
Robert Bosch Healthcare Systems, Inc.
2400 GENG ROAD, SUITE 200
PALO ALTO, CA 94303
EXAMINER
MENEFEE, JAMES A
ART UNIT PAPER NUMBER
3992
MAIL DATE DELIVERY MODE
04/21/2016 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.

v.

ROBERT BOSCH HEALTHCARE SYSTEMS, INC.
____________________

Appeal 2016-000252
Reexamination Control 95/002,178 and 95/002,221
Patent No. US 8,140,663 B2
Technology Center 3900
____________________

Before MARC S. HOFF, BRADLEY W. BAUMEISTER, 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 1–15,
18–35, and 38–43 as set forth in the Right of Appeal Notice (RAN) mailed
November 10, 2014. Patent Owner Robert Bosch Healthcare Systems, Inc.
filed a brief (“PO App. Br.”) on February 10, 2015. Third Party Requester
Cardiocom LLC filed a cross-appeal with respect to non-adopted rejections
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(“Req. App. Br.”) on February 10, 2015 and a Respondent’s Brief (“Req.
Resp. Br.”) on April 17, 2015. Patent Owner filed a brief in response to
Requester’s cross-appeal (“PO Resp. Br.”) on March 10, 2015. Requester
filed a rebuttal brief (“Req. Reb. Br.”) on June 1, 2015. Patent Owner filed a
rebuttal brief (“PO Reb. Br.”) on June 1, 2015. The Examiner mailed an
Examiner’s Answer (“Ans.”) on May 1, 2015, which incorporated the RAN
by reference. We have jurisdiction under 35 U.S.C. §§ 134 and 315.
We affirm-in-part.
The ‘663 Patent issued to Stephen J. Brown on March 20, 2012 and is
assigned to Robert Bosch Healthcare Systems, Inc. (App. Br. 3). The ‘663
Patent concerns a system for remote healthcare monitoring of an individual.
The system includes a server system for generating a script program from a
set of queries. The script program is executable by a remote apparatus that
displays information, and/or a set of queries, to the individual through a user
interface. The server system includes an automated answering service for
providing a series of questions from a stored set of questions for an
individual at the remote apparatus to respond to, storing responses to each
provided question in the series, and providing a service based on the
individual’s response to the questions. Abstract.
Claim 1 is exemplary of the claims on appeal:
1. A system for remotely monitoring an individual, the system
comprising:
a remote apparatus for interacting with the individual; and
a server comprising (i) a monitoring application including a
program generator for creating a customized program for the
individual from a set of queries, the program being executable by the
remote apparatus to (A) communicate the set of queries to the
individual and (B) collect a set of responses to the set of queries from
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the individual, wherein said program includes (1) a set of statements
regarding general health conditions and (2) at least one of (a) a portion
specific to the health of said individual and (b) a message
corresponding to said individual from a health care professional
associated with said individual, and (ii) a database for storing (a) the
set of queries and (b) the set of responses to the set of queries from the
individual;
wherein the remote apparatus comprises (i) a user interface, (ii)
a processor connected to the user interface for executing the program
to (a) communicate the set of queries to the individual and (b) receive
the set of responses to the set of queries from the individual, and (iii) a
memory configured to store a unique identification code
corresponding to said individual.

The Examiner relies upon the following prior art in rejecting the
claims on appeal:
Theis US 4,328,396 May 4, 1982
Fu US 4,803,625 Feb. 7, 1989
Clough US 5,379,057 Jan. 3, 1995
Chaco US 5,465,082 Nov. 7, 1995
Wright US 5,704,029 Dec. 30, 1997

The claims stand rejected over various combinations of prior art
references (see RAN 8–10):
References Claims Basis (§)
Fu and Clough 1, 4, 5, 7–15, 18–22,
24–35, and 38–43
103(a)
Fu, Clough, and Theis 2 and 3 103(a)
Fu and Wright 1, 4, 5, 7–15, 18–22,
24–35, and 38–43
103(a)
Fu, Wright, and Theis 2 and 3 103(a)
Chaco and Clough 1, 4, 5, 7–9, 12, 13,
15, 18, 19, 21, 22, 24–
26, 31, 34, 35, 38, 39,
and 43
103(a)
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Chaco, Clough, and Theis 2 and 3 103(a)
Chaco, Clough, and Fu 10, 11, 14, 20, 27–30,
32, 33, and 40–42
103(a)
Chaco and Wright 1, 4, 5, 7–9, 12, 13,
15, 18, 19, 21, 22, 24–
26, 31, 34, 35, 38, 39,
and 43
103(a)
Chaco, Wright, and Theis 2 and 3 103(a)
Chaco, Wright, and Fu 10, 11, 14, 20, 27–30,
32, 33, and 40–42
103(a)

ISSUES – PATENT OWNER’S APPEAL
Patent Owner argues, inter alia, that neither Fu nor Clough discloses a
server comprising a monitoring application that includes a program
generator. PO App. Br. 11. Patent Owner contends that the activity in Fu
and Clough does not correspond to the definition of “monitoring” expressed
by the Examiner. See PO App. Br. 12–14. Patent Owner asserts that, even
combined, Fu and Clough together would not disclose a program generator
included in the monitoring application. PO App. Br. 15.
Patent Owner also argues that neither Fu nor Clough discloses “a
database for storing (a) the set of queries and (b) the set of responses to the
set of queries from the individual,” as is claimed. According to Patent
Owner, the proposed combination modifies the database of Clough, rather
than the server of Fu. PO App. Br. 16.
The arguments made by Patent Owner present us with the following
issues:
1. Does the combination of Fu and Clough disclose or suggest a
server comprising a monitoring application including a program generator?
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2. Does the combination of Fu and Clough disclose or suggest a
database for storing (a) the set of queries and (b) the set of responses to the
set of queries from the individual?

ISSUES – REQUESTER’S APPEAL
Requester argues for a broader construction of claim 6’s term, “based
on.” Where the RAN construed claim 6 to mean that the program recited in
claim 5 is created or generated, based on one or more previous responses
made by an individual, Requester contends that the proper construction
should be that the program can execute differently based on the individual’s
responses. See Req. Br. 12–13.
Based on this proposed claim construction, Requester argues inter alia
that the combination of Fu and Wright renders obvious the subject matter of
claims 6 and 23.
Requester’s arguments present us with the following issue:
3. Does the combination of Fu and Wright disclose or suggest the
subject matter of claim 5, as well as the program being further based on one
or more previous responses made by the individual to at least one previous
query?

PRINCIPLES OF LAW
“[W]hen a patent ‘simply arranges old elements with each performing
the same function it had been known to perform’ and yields no more than
one would expect from such an arrangement, the combination is obvious.”
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KSR Int’l v. Teleflex Inc., 550 U.S. 398, 417 (2007) (quoting Sakraida v. AG
Pro, Inc., 425 U.S. 273, 282 (1976)).
When there is a design need or market pressure to solve a problem
and there are a finite number of identified, predictable solutions, a person of
ordinary skill has good reason to pursue the known options within his or her
technical grasp. If this leads to the anticipated success, it is likely the product
not of innovation but of ordinary skill and common sense. KSR, 550 U.S. at
421.

ANALYSIS
REJECTION OF CLAIMS 1, 4, 5, 7–15, 18–22, 24–35, and 38–43 OVER FU AND
CLOUGH
We are not persuaded by Patent Owner that Fu and Clough fail to
disclose or suggest a monitoring application that includes a program
generator. See PO App. Br. 11.
We agree with the Examiner that Fu’s “PERSONAL HEALTH
MONITOR” discloses monitoring within the meaning argued by Patent
Owner, i.e., to “‘watch, observe, listen to, or check (something) for a special
purpose over a period of time.’” See RAN 5. Fu discloses “a computer
[that] is programmed to prompt a patient to take prescribed medication at
prescribed times, to use the sensors to measure prescribed health parameters,
and to supply answers to selected questions.” Abstract.
We further agree with Requester that the programs of Fu—
“‘programs for receiving communications, from the home units 60,
preparing appropriate reports, and directing appropriate instructions or data
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files to the respective home units’”—in combination may be construed as
corresponding to a monitoring “application.” See RAN 10. We agree that
one of ordinary skill in the art would understand that a computer application
can comprise a single module or multiple modules. Req. Resp. Br. 8.
We agree with Requester’s argument that the combined teachings of
Fu and Clough would have suggested to the skilled artisan that Clough’s
program generator should be included with the monitoring application of Fu.
Req. Resp. Br. 9. As noted by Requester’s expert Dr. Stone, Fu discloses a
monitoring application at a central server, having programs capable of
sending instructions and data files to remote units. Clough discloses that its
program generator would logically be located at a central server. As the
purpose of the program generator is to assist the monitoring of several
remote devices, one having skill in the art would have found it obvious to
include the program generator with the monitoring application. See Stone
Decl. ¶ 23.
We disagree with Patent Owner that the combination of Fu and
Clough fails to disclose or suggest a database for storing (a) the set of
queries and (b) the set of responses to the set of queries. See PO App. Br.
16.
We agree with Requester’s argument that the combined teachings of
the references render this limitation obvious. We find, as discussed in the
Request, that Fu discloses a database capable of storing queries and
responses. Request 49 (citing Fu col. 7, ll. 56–62 and col. 8, ll. 4–10).
While Fu is not explicit that “queries” and “responses” are both stored in its
devices, the Examiner relies on Clough for disclosing a “‘host database’”
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into which collected data is loaded. Request 122 (citing Clough col. 8,
ll. 27–32).
When there is a design need or market pressure to solve a problem
and there are a finite number of identified, predictable solutions, a person of
ordinary skill has good reason to pursue the known options within his or her
technical grasp. If this leads to the anticipated success, it is likely the
product not of innovation but of ordinary skill and common sense. KSR, 550
U.S. at 421. In this case, there are a finite number of ways to store the
queries and the responses to said queries. We agree with Requester that it
would have been obvious, given the combined teachings of Fu and Clough,
to store queries and responses in the same database, as a matter of ordinary
skill and common sense.
We conclude that the Examiner did not err in rejecting claims 1, 4, 5,
7–15, 18–22, 24–35, and 38–43 as being obvious over Fu and Clough. We
sustain the Examiner’s § 103(a) rejection.
REJECTION OF CLAIMS 2 AND 3 OVER FU, CLOUGH, AND THEIS
Patent Owner’s only argument with respect to this rejection is that
Theis does not cure the deficiencies of Fu and Clough. PO App. Br. 17.
Because we conclude supra that the rejection over Fu and Clough is not
deficient, we sustain the rejection of claims 2 and 3 over Fu, Clough, and
Theis for the same reasons given supra.
CROSS-APPEAL BY REQUESTER
CLAIM CONSTRUCTION
We do not agree with the Examiner’s current construction of the
phrase “further based on,” found in claims 6 and 23. The Examiner
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“submits that the claim language appears to be clear that the responses were
received from queries asked to individuals before the creation of the
program and the said program is generated in part based on the queries.”
RAN 141 (emphasis omitted).
We are persuaded, instead, by Requester’s arguments concerning
claim differentiation and description in the Specification. We agree with
Requester’s observation that claim 11 specifically recites that “the program
is created based on information entered by the health care provider,”
whereas claim 6 recites only that “the program is based on one or more
previous responses.” Claim 11 demonstrates that Patentee was aware of the
option to claim that program creation is based on certain information, and
exercised that option in claim 11, but chose not to in claim 6. We also agree
with Requester that the ‘663 Patent provides support for branching
execution of a program “based on one or more previous responses made by
the individual,” but does not contemplate using responses to queries to
generate a program. Req. App. Br. 15.
The ’663 Patent refers to step 202, in which “the server 18 determines
if new script information has been entered through the script entry screen.”
Col. 8, ll. 54–55. Responses to queries are transmitted to the server from a
remote apparatus, not through the script entry screen. Figure 12B refers to
“RECEIVE AND STORE NEW SCRIPT,” step 332, but the corresponding
description makes no mention of the new script being based on responses to
queries. Req. App. Br. 15; ‘663 Patent col. 11, ll. 9–14. The ‘663 Patent
discloses generating “patient report 58 from the responses 42 and the device
measurements 44 received in the server 18,” which is “displayed on the
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workstation 20.” Col. 8, ll. 40–42. That disclosure, again, makes no
mention of program creation.
Patent Owner’s analogy to a movie, novel, or poem (PO Resp. Br. 6)
is not persuasive. Movies, novels, and poems are all linear art forms that
follow a single narrative and have no ability to accept a user’s input, let
alone change the narrative in response to that input. A computer program or
“script” does have the ability to accept user input, evaluate it, and execute
varying program code based on the input received.
We also disagree with Patent Owner’s arguments that Requester’s
construction of claim 6 ignores claim 5, or would result in the same scope as
that of claim 5. PO Resp. Br. 8–9. For example, we do not agree that mere
storage of query responses amounts to changed program execution based on
query responses. Thus, we also disagree that claim 5 inherently requires
such program execution based on responses.
NON-ADOPTED REJECTION OVER FU AND WRIGHT
As a result of our construction of claims 6 and 23, we find error in the
Examiner’s decision not to adopt the proposed rejection over Fu and Wright.
We agree with the Request that the combination discloses execution of the
program based on previously received responses. Fu discloses a personal
health monitor, in which “[d]epending on the questions included in the
question and answer session, patient answers to selected questions may also
be used to select additional tests or questions to be used to supplement the
log.” Req. App. Br. 17; Fu col. 12, ll. 10–13. Wright discloses electronic
forms creation and completion, also including changed script execution
based on user input. Req. App. Br. 17; Wright col. 11, ll. 5–10, 22–39.
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It would have been obvious to modify Fu’s teachings of a health
monitoring system in which medical personnel review responses to queries
and request modification to questions and tests in view of those responses, to
include the form design features of Wright, which suggest creating new
questionnaires based on received data from previous questionnaires. See
Req. App. Br. 18; Wright col. 6, ll. 30–45 and Figs. 5–7. As mentioned
supra, Wright also discloses conditional statements that alter program
execution based on previous responses, such that “skip patterns are always
followed correctly, and that forms are always filled out accurately.” Wright
col. 9, ll. 19–21.
We are unpersuaded by Patent Owner’s arguments for the non-
adoption of this rejection. First, because we construe “further based on,”
supra, to encompass program execution, rather than merely program
creation, Patent Owner’s arguments—that Fu and Wright fail to disclose
program creation based on previous responses—are mooted. Second, we do
not agree with Patent Owner that Fu’s disclosure that certain tasks are
performed by “‘trained medical personnel,’” at a central location, is relevant.
See PO Resp. Br. 11. Rather, we agree with Requester that Fu, considered
as a whole, suggests updating the questions posed to a patient, in response to
answers or data received. See Req. Reb. Br. 12. Dr. Stone also gives
evidence that the teachings of Fu suggest updating questions based on a
physician’s review of a log of responses. Stone Decl. ¶ 25.
We do not sustain the Examiner’s decision not to adopt the proposed
rejection of claims 6 and 23 under 35 U.S.C. § 103(a) as being unpatentable
over Fu and Wright.
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OTHER REJECTIONS
With respect to Patent Owner’s appeal, because our decision is
dispositive regarding unpatentability of all appealed claims, we need not
reach the merits of the Examiner’s decision to also reject the appealed
claims over other combinations of references. With respect to Requester’s
cross-appeal, we also need not consider the propriety of the Examiner’s
adoption or non-adoption of the rejection of claims 6 and 23 based on
grounds not analyzed supra. See Beloit Corp. v. Valmet Oy, 742 F.2d 1421,
1423 (Fed. Cir. 1984) (approving ITC’s determination based on a single
dispositive issue and not reaching other issues not decided by the lower
tribunal).

CONCLUSIONS
1. The combination of Fu and Clough suggests a server comprising a
monitoring application including a program generator.
2. The combination of Fu and Clough suggests a database for storing
(a) the set of queries and (b) the set of responses to the set of queries from
the individual.
3. The combination of Fu and Wright suggests the subject matter of
claim 5, as well as the program being further based on one or more previous
responses made by the individual to at least one previous query.

ORDER
We affirm the Examiner’s decision to reject claims 1–5, 7–15, 18–22,
24–35, and 38–43.
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We reverse the Examiner’s non-adoption of the rejection of claims 6
and 23 under 35 U.S.C. § 103(a) as unpatentable over Fu and Wright.
Pursuant to 37 C.F.R. § 41.77(a), the above-noted reversal constitutes
a new ground of rejection. Section 41.77(b) 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), the times for requesting rehearing under paragraph (a) of this
section, for requesting further rehearing under paragraph (c) of this section,
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and for submitting comments under paragraph (b) of this section may not be
extended.
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 (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)

gvw
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PATENT OWNER:

ROBERT BOSCH HEALTHCARE SYSTEMS, INC.
2400 Geng Road, Suite 200
Palo Alto, CA 94303

THIRD PARTY REQUESTER:

MERCHANT & GOULD PC
P.O. Box 2903
Minneapolis, MN 55402-0903