Ex Parte Brown

Patent Trial and Appeal BoardSep 25, 2014

10818879 (P.T.A.B. Sep. 25, 2014)

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. 10/818,879 04/05/2004 Stephen J. Brown 7553.00105 / 04-0400 4924 60683 7590 09/26/2014 Robert Bosch Healthcare Systems, Inc. 2400 GENG ROAD, SUITE 200 PALO ALTO, CA 94303 EXAMINER PASS, NATALIE ART UNIT PAPER NUMBER 3686 MAIL DATE DELIVERY MODE 09/26/2014 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 ____________________ Ex parte STEPHEN J. BROWN ____________________ Appeal 2012-0110491 Application 10/818,8792 Technology Center 3600 ____________________ Before MURRIEL E. CRAWFORD, BIBHU R. MOHANTY, and NINA L. MEDLOCK, Administrative Patent Judges. MEDLOCK, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellant seeks our review under 35 U.S.C. § 134 of the Examiner’s final rejection of claims 1–17 and 19–23. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. 1 Our decision references Appellant’s Appeal Brief (“Br.,” filed April 9, 2012) and the Examiner’s Answer (“Ans.,” mailed May 3, 2012). 2 Appellant identifies the real party in interest as Robert Bosch Healthcare, Inc. (Br. 3). However, Health Hero Network, Inc. is identified as the assignee of record at Reel/Frame 015398/0960 (recorded November 30, 2004) of the USPTO assignment records. Appeal 2012-011049 Application 10/818,879 2 CLAIMED INVENTION Claim 1, reproduced below, is illustrative of the subject matter on appeal: 1. A system for processing personal health information associated with at least one individual, the system comprising: a plurality of remote devices, each remote device being associated with an individual; and at least one server configured to (i) store content for communication to the plurality of remote devices, the content comprising general health-related information or general non- health-related information, and said plurality of remote devices and said at least one server communicate via a communications network, (ii) communicate the content requested by the individual to the associated remote device via the communication network, (iii) determine personalized health- related information by correlating the content communicated to the individual with a known health condition of the individual and (iv) automatically deliver the personalized health-related information to the individual via the communications network, wherein the personalized health-related information comprises information related to the known health condition of said individual. REJECTIONS Claims 1–5, 11–16, and 19–23 are rejected under 35 U.S.C. § 102(e) as anticipated by Ilsen (US 6,757,898 B1, iss. June 29, 2004). Claims 6, 7, and 10 are rejected under 35 U.S.C. § 103(a) as unpatentable over Ilsen and Iliff (US 6,022,315, iss. Feb. 8, 2000). Claims 8 and 9 are rejected under 35 U.S.C. § 103(a) as unpatentable over Ilsen, Iliff, and Detjen (US 5,970,466, iss. Oct. 19, 1999). Appeal 2012-011049 Application 10/818,879 3 Claim 17 is rejected under 35 U.S.C. § 103(a) as unpatentable over Ilsen and Detjen. ANALYSIS Anticipation Independent claim 1 and dependent claims 2–5 and 11 Appellant argues that the Examiner erred in rejecting claim 1 under 35 U.S.C. § 102(e) because Ilsen does not disclose at least one server configured to: (ii) communicate the content requested by the individual to the associated remote device via the communication network, (iii) determine personalized health-related information by correlating the content communicated to the individual with a known health condition of the individual and (iv) automatically deliver the personalized health-related information to the individual via the communications network, the personalized health-related information comprising information related to the known health condition of the individual[,] as recited in claim 1. See Br. 10–14. More particularly, Appellant maintains that Ilsen fails to disclose that “[] the requested information is sent, [] a correlation is performed based on the sent information and a known health condition of the user and [] the personalized health-related information is automatically delivered to the user’s computer,” as called for in claim 1 (id. at 10–11). The Examiner cites column 6, line 20 through column 7, line 13; column 7, lines 37–45; column 8, lines 37–44; column 16, lines 2–14; column 31, lines 36–37 and 53–54; column 32, lines 1–8; and column 37, lines 59–67 of Ilsen as disclosing the argued features (Ans. 3–4). The Examiner also directs our attention to Ilsen at column 14, lines 43–44 as Appeal 2012-011049 Application 10/818,879 4 disclosing “communicat[ing] the content requested,” column 14, lines 44–46 as disclosing “correlating the content communicated to the individual with a known health condition of the individual,” and column 14, lines 46–49 as disclosing “automatically deliver[ing] the personalized health-related information to the individual” (id. at 12–13). We have carefully reviewed the cited portions of Ilsen, on which the Examiner relies. And we agree with Appellant that none of the cited portions of Ilsen discloses the argued features. Ilsen is directed to a provider-patient interface service center, which dynamically assembles and delivers custom content from a library of information to individual users over the Internet (Ilsen, col. 6, ll. 21–30). Ilsen describes that the selected custom content is delivered to each user based on the user’s patient record (id. at col. 6, ll. 30–34; see also col. 7, ll. 38–45). In particular, Ilsen describes that its service center “associates [a patient’s] own diagnoses, and the procedures which were performed during [the patient’s] visit, with specific post-visit instructions” (id. at col. 14, ll. 27–30); sends an e-mail message notifying the patient that new personalized health-related information is available at the medical practice’s website (id. at col. 14, ll. 31–33); and delivers relevant information to the patient, based on the patient’s record, when the patient clicks on the URL link provided in the notification e-mail message (id. at col. 14, ll. 43–49). There is no dispute that Ilsen discloses communicating the content requested by an individual, along with personalized health-related information. But that information is communicated in a single response. Ilsen does not disclose, expressly or inherently, “(iii) determin[ing] personalized health-related information by correlating the content Appeal 2012-011049 Application 10/818,879 5 communicated to the individual with a known health condition of the individual,” and then “(iv) automatically deliver[ing] the personalized health-related information to the individual,” as claim 1 requires (emphasis added). Therefore, we do not sustain the Examiner’s rejection of claim 1 under 35 U.S.C. § 102(e). See Verdegaal Bros. v. Union Oil Co. of California, 814 F.2d 628, 631 (Fed. Cir. 1987) (“A claim is anticipated only if each and every element as set forth in the claim is found, either expressly or inherently described, in a single prior art reference”). For the same reason, we also do not sustain the rejection of claims 2–5 and 11, each of which ultimately depends from claim 1. Independent claims 12 and 19, and dependent claims 13–16 and 20–23 Independent claims 12 and 19 include language substantially similar to the language of claim 1. Therefore, we do not sustain the Examiner’s rejection under 35 U.S.C. § 102(e) of independent claims 12 and 19, and claims 13–16 and 20–23, which depend from claim 12, for the same reasons set forth above with respect to claim 1. Obviousness Dependent claims 6–10 and 17 Claims 6–10 and 17 depend from independent claims 1 and 12, respectively. The Examiner has not established on this record that either of the additional references, i.e., Iliff and Detjen, relied on in rejecting these dependent claims, cures the deficiencies of Ilsen, as set forth above with respect to independent claims 1 and 12. Appeal 2012-011049 Application 10/818,879 6 Therefore, we do not sustain the Examiner’s rejections of claims 6–10 and 17 under 35 U.S.C. § 103(a) for the same reasons as set forth above with respect to the independent claims. DECISION The Examiner’s rejection of claims 1–5, 11–16, and 19–23 under 35 U.S.C. § 102(e) is reversed. The Examiner’s rejections of claims 6–10 and 17 under 35 U.S.C. § 103(a) are reversed. REVERSED hh