Ex Parte Maschke

Patent Trial and Appeal BoardNov 15, 2012

10952629 (P.T.A.B. Nov. 15, 2012)

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. 10/952,629 09/29/2004 Michael Maschke 2003P11814US 3200 7590 11/15/2012 SIEMENS CORPORATION INTELLECTUAL PROPERTY DEPARTMENT 170 WOOD AVENUE SOUTH ISELIN, NJ 08830 EXAMINER YAO, SAMCHUAN CUA ART UNIT PAPER NUMBER 3769 MAIL DATE DELIVERY MODE 11/15/2012 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 MICHAEL MASCHKE ____________ Appeal 2010-006957 Application 10/952,629 Technology Center 3700 ____________ Before EDWARD A. BROWN, JAMES P. CALVE, and WILLIAM A. CAPP, Administrative Patent Judges. CALVE, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellant appeals under 35 U.S.C. § 134 from the rejection of claims 10-15, 18, 20, 21, and 23. App. Br. 2. Claims 1-9, 16, 17, 19, and 22 were cancelled. Id. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. Appeal 2010-006957 Application 10/952,629 2 CLAIMED SUBJECT MATTER Claim 10 is illustrative of the claimed subject matter on appeal: 10. A patient monitoring system, comprising: a measuring device arranged to record in a recording zone a patient's medical and diagnostic values; a transmitter operatively connected to the measuring device; a plurality of receivers that communicate wirelessly with the transmitter to receive measurements performed by the measuring device; an evaluation unit connected to the measuring device to evaluate at the recording zone data obtained by the measuring device, wherein the evaluation unit is responsive to a message from at least one of the receivers to select and initiate measurements performed by the measuring device, wherein the evaluation unit is disposed in a common housing with the measuring device; a patient control unit responsive to a patient selection to selectively authorize the patient's medical and diagnostic values to be inspected outside the recording zone, the patient's medical and diagnostic values to be inspected received outside the recording zone through at least one of the plurality of receivers; and a telephone module coupled to the measuring device, the evaluation unit, and the transmitter, the telephone module establishing respective alternate wireless communication connections with the receivers and automatically recurrently testing availability of the wireless communication connections, wherein in the event a communication connection failure occurs, a warning message indicative of said connection failure is generated, and measurements performed by the measuring device are transmitted over at least one of the alternate wireless communication connections to at least one of the plurality of receivers. Appeal 2010-006957 Application 10/952,629 3 REJECTIONS Claims 10-15, 18, 20, 21, and 23 are rejected under 35 U.S.C. § 112, first paragraph, for lack of enablement. Claims 10-15, 18, 20, 21, and 23 are rejected under 35 U.S.C. § 112, second paragraph, as being indefinite. Claims 10-13, 18, 20, 21, and 23 are rejected under 35 U.S.C. § 102(e) as being anticipated by West (US 6,544,174 B2; iss. Apr. 8, 2003). Claims 14 and 15 are rejected under 35 U.S.C. § 103(a) as being unpatentable over West and Reuss (US 6,406,426 B1; iss. Jun. 18, 2002). ANALYSIS Claims 10-15, 18, 20, 21 and 23 for lack of enablement The Examiner found the limitation “a patient control unit responsive to a patient selection to selectively authorize the patient’s medical and diagnostic values to be inspected outside the recording zone, the patient's medical and diagnostic values to be inspected received outside the recording zone through at least one of the plurality of receivers” in claims 10, 21, and 23 is not enabled so that a skilled artisan can make and use this invention without resorting to undue experimentation. Ans. 3. The Examiner found that the patient control unit appears to be directed to a computer program under the broadest reasonable interpretation and the only support for this feature is found at paragraph 17 of Appellant’s Specification, which states: The measuring device 2, the evaluation unit 7 and/or the control unit 9 comprise control units (not shown in more detail) which enable the patient to authorize or prohibit inspection of the data present in the measuring device 2 or in the evaluation unit 7 outside of the recording zone 5. Appeal 2010-006957 Application 10/952,629 4 Ans. 4; see also App. Br. 2 (support for this claimed subject matter is found at the last five lines of paragraph [0017]). Because the Specification lacks a computer program or flowchart of a sequence of operations or other details of such a computer program, the Examiner determined that a skilled artisan could not make or use the invention without undue experimentation. Ans. 4 (citing MPEP 2164.06(c)(II) as basis to require program or flowchart). Appellant argues that the Examiner recognizes that the Specification discloses this subject matter in the last five lines of paragraph [0017] but has nonetheless asserted in a conclusory manner that a skilled artisan would not know how to make the claimed operational relationship without undue experimentation. App. Br. 5-6. Appellant also argues that “there is nothing unpredictable and/or that involves complex interactions for implementing ‘a patient control unit responsive to a patient selection to selectively authorize the patient’s medical and diagnostic values to be inspected outside the recording zone.’” App. Br. 6. Appellant further argues that “the claimed operational relationship would be able to be implemented by one even having basic skills in the art” because “the specification need not disclose what is well-known to those skilled in the art and preferably omits that which is well-known to those skilled and already available to the public.” App. Br. 6 (citing MPEP 2164.05(a)). Appellant also contends that the Examiner erred in relying on MPEP 2164.06(c)(II) because this section pertains to cases that occur “in pure data processing applications where the combination of block elements is totally within the confines of a computer, there being no interfacing with external apparatus other than normal input/ output devices.” Reply Br. 1. Appellant asserts that a skilled artisan would appreciate that this is not the type of technology involving the claimed Appeal 2010-006957 Application 10/952,629 5 invention and therefore the underlying facts and circumstances do not support the Examiner’s contention that rule 2164.06(c)(II) is relevant or dispositive regarding the patentability of the claimed invention. Reply Br. 1- 2. Appellant concludes by arguing that the Examiner erred in treating the legal precedent of In re Hayes Microcomputer Prods., Inc., 982 F.2d 1527, 1537-38 (Fed. Cir. 1992) as a mere generality because that opinion provides the standard of enablement and is cited approvingly in the MPEP and other opinions. Reply Br. 2; see also App. Br. 6. The Examiner had a reasonable basis for finding that the scope of protection provided by independent claims 10, 21, and 23 is not adequately enabled by the Appellant’s disclosure and Appellant has not shown that this subject matter is enabled. The absence of any example, schematic, computer program, flowchart, or other disclosure of a patient control unit makes it difficult to assess the nature of the invention, state of the prior art, or level of skill and predictability in the art. Appellant has not provided evidence of any of these factors in the Briefs to persuade us that a skilled artisan could implement this feature without undue experimentation. Appellant discloses that each of the measuring device 2, evaluation unit 7, and/or control unit 9 may comprise “control units” that “enable the patient to authorize or prohibit inspection of the data present in the measuring device or in the evaluation unit 7 outside of the recording zone 5.” Spec. 6, para. [0017]. From this brief disclosure, which merely describes the purpose of the “control units,” it is not clear whether the claimed patient control unit is to be implemented as, for example, hardware, software, or a combination, as part of control unit 9, measuring device 2, and/or evaluation unit 7. Appellant also discloses that data captured by the measuring device 2 may be routed to a transmitter unit Appeal 2010-006957 Application 10/952,629 6 3 that communicates with a receiver unit 4 that is disposed outside of the recording zone (Spec. 2, para. [0006]) and/or data stored in evaluation unit 7 may be inspected (Spec. 6, para. [0017]) and “any encryption algorithms can be used for coding the data stored in the evaluation unit 7 and/or transmitted between the units 3, 4” (Spec. 5, para. [0015]). From this disclosure it is unclear whether a patient controls the inspection of data for the measuring device 2, evaluation unit 7, or both, and which control unit(s) allows a patient to performs this function(s) and in what particular manner. We understand Hayes Microcomputer Prods. to address the issue of whether U.S. Patent No. 4,549,302 met the written description requirement of 35 U.S.C. § 112, first paragraph. See In re Hayes Microcomputer Prods., 982 F.2d at 1533-36. The MPEP cites Hayes as guidance for the written description requirement. MPEP § 2106 V.B.1. and § 2163 II.A.3.(a)(i). Appellant’s attorney arguments that a skilled artisan would be able to implement the claimed patient control unit because there is nothing complex or unpredictable about implementing a “patient control unit responsive to a patient selection to selectively authorize the patient’s medical and diagnostic values to be inspected outside the recording zone” is not evidence of the level of skill or predictability in the art in regard to this feature, nor does it explain how a skilled artisan would do such implementing, particularly in view of the disclosure that The advantage of the invention is in particular that specialist medical staff can dial in at any time via a data communication link to a measurement and analysis system used for patient monitoring in order to inspect data, start or stop measuring processes and specify or modify measurement parameters, whereby the measurement and analysis system is disposed in a particularly operationally reliable manner in the vicinity of the Appeal 2010-006957 Application 10/952,629 7 patient and so is autonomously capable of operation, independently of the data communication link. Spec. 3-4, para. [0011]. Thus, Appellant’s Specification discloses that remote inspection of patient data is an advantage of the invention but argues that this feature with patient control unit authorization is fully enabled because it represents well-known, predictable technology. Appellant also appears to argue that the patient control unit represents well-known, predictable technology because Appellant has not disclosed any features of the control unit. This argument is inconsistent with the disclosure of this feature as an inventive aspect of the patient monitoring system and leaves unanswered the question of exactly what type of well-known control unit is used and how such control unit is implemented in the patient monitoring system. We are not persuaded that the Examiner erred in relying on MPEP 2164.06(c)(II). Appellant has not identified any features of a patient control unit that are inconsistent with this finding. The Examiner reasonably found that the patient control unit could be interpreted to cover a software program and that Appellant has not provided sufficient disclosure to enable a skilled artisan to make and use this feature without undue experimentation or shown that another control unit is intended. For the foregoing reasons, Appellant has not shown that a skilled artisan could have made and used the claimed patient control unit without undue experimentation based on Appellant’s disclosure. See In re Buchner, 929 F.2d 660, 661 (Fed. Cir. 1991) (where the examiner had a reasonable basis to doubt that claimed invention could be carried out based on the disclosure, applicant had burden of overcoming the rejection and failed to do so); In re Swartz, 232 F.3d 862, 864 (Fed. Cir. 2000) (same); In re Wright, 999 F.2d 1557, 1561-62 (Fed. Cir. 1993) (same). We sustain the rejection of claims 10-15, 18, 20, 21, and 23. Appeal 2010-006957 Application 10/952,629 8 Claims 10-15, 18, 20, 21 and 23 as being indefinite The Examiner determined that the limitation “a patient control unit responsive to a patient selection to selectively authorize the patient’s medical and diagnostic values to be inspected outside the recording zone, the patient’s medical and diagnostic values to be inspected received outside the recording zone through at least one of the plurality of receivers” in claims 10, 21, and 23 is indefinite because “control unit” does not inherently refer to a controller, a processor, or microprocessor, or a software algorithm or computer program. Ans. 5. The Examiner also found that the broadest reasonable interpretation of this term is not limited to a tangible medium and/or a computer or controller programmed to carry out a software program but includes only an intangible software program. Ans. 5, 15. Appellant argues that it is apparent that the other claimed elements (i.e., the measuring device, the transmitter, the receivers, the evaluation unit, the telephone module) are tangible, real elements but the patient control unit is the only element in the claimed invention that somehow is a non-tangible (ethereal) element. App. Br. 7. Appellant also asserts that “it appears that the Office Action is trying to improperly impose a written description requirement into the claims (by requiring that the claims specify minutia that would be viewed as trivial by one skilled in the art).” App. Br. 7. Appellant argues that the claimed invention complies with the threshold requirements of clarity and precision under 35 U.S.C. §112, second paragraph. Id. The test for definiteness under 35 U.S.C. § 112, second paragraph, is whether “those skilled in the art would understand what is claimed when the claim is read in light of the specification.” Orthokinetics, Inc. v. Safety Travel Chairs, Inc., 806 F.2d 1565, 1576 (Fed. Cir. 1986). Merely that a App App claim F.2d 1971 is am justi boun § 11 1207 10, 2 “[a] furth parti the m the o emb unit eal 2010-0 lication 10 is broad 1008, 101 ); In re Ga enable to fied in req ds of the i 2, second p , 1211-12 A skilled 1, and 23 control un er detail) i cular for s onitor 8.” nly figure Appellan odiment of Appellan 7 and/or th 06957 /952,629 does not m 6 n.17 (CC rdner, 42 two or mo uiring an a nvention b aragraph, (BPAI 20 artisan w are read in it 9 (comp s provided etting mea Spec. 4, provided t’s Figure a patient t also disc e control ean that it PA 1977) 7 F.2d 786 re plausib pplicant to y holding as indefin 08) (prece ould not u light of A rising cont for contro surement p para. [001 with the Sp is a schem monitoring loses that unit 9 com 9 is indefin ; In re Mi , 788 (CC le claim co more pre the claim ite. Ex pa dential). nderstand ppellant’s rol elemen lling the m arameters 3]. Appel ecificatio atic repre system. “[t]he mea prise cont ite. See In ller, 441 F PA 1970). nstruction cisely defi unpatentab rte Miyaza what is cl Specifica ts which a easuring and also lant illustr n and repr sentation Spec. 4, p suring de rol units (n re Johnso .2d 689, 6 However s, the USP ne the met le under 3 ki, 89 US aimed whe tion, which re not sho device 2, display pa ates this fe oduced be of an exem ara. [0012 vice 2, the ot shown n, 558 93 (CCPA , if a claim TO is es and 5 U.S.C. PQ2d n claims discloses wn in in rameters o ature in low: plary ]. evaluation in more f Appeal 2010-006957 Application 10/952,629 10 detail) which enable the patient to authorize or prohibit inspection of the data present in the measuring device 2 or in the evaluation unit 7 outside of the recording zone 5.” Spec. 6, para. [0017]. These disclosures do not specify whether the “patient control unit” refers to control unit 9 and/or one or more “control units” of control unit 9, measuring device 2 or evaluation unit 7, implemented in hardware, software, or a combination of hardware and software. Appellant also discloses “[d]ata captured by means of the measuring device is routed to a transmitter unit which communicates wirelessly with a receiver unit disposed outside of the recording zone” and “[i]t is also possible to inspect the data stored in the evaluation unit 7 over a relatively long period of time, for example several days, from the receiver unit 4 and consequently track in particular the trend of measured patient data.” Spec. 2, para. [0006]; Spec. 6, para. [0017]. It is unclear from these disclosures whether the “patient control unit” authorizes inspection of medical and diagnostic values generated by measuring device 2 or inspection of data stored in evaluation unit 7, or both, and which “control unit(s)” authorize(s) which inspection(s). A skilled artisan would not be able to determine which of these alternative claim constructions of “patient control unit” is intended by the language of claims 10, 21, and 23. We sustain the rejection of claims 10-15, 18, 20, 21, and 23. Claims 10-13, 18, 20, 21 and 23 as anticipated by West The Examiner found that West discloses a measuring device with a transmitter (monitor 22a), a plurality of receivers that communicate wirelessly with the transmitter, an evaluation unit, a patient control unit that allows a patient to selectively authorize inspection of the patient’s medical and diagnostic values outside the recording zone (by selecting the stand- Appeal 2010-006957 Application 10/952,629 11 alone mode of operation, col. 31, ll. 11-37), and a telephone module coupled to the measuring device, evaluation unit, and the transmitter. Ans. 6-8. Appellant argues that West does not disclose “a patient control unit responsive to a patient selection to selectively authorize the patient’s medical and diagnostic values to be inspected outside the recording zone.” App. Br. 8-9. In particular, Appellant argues that the portion of West relied upon by the Examiner at column 31, lines 11-37 “merely describe that the monitors of West can operate as part of a network or as stand alone units” and “West then describes automated techniques for restoring lost communications” but “[n]owhere do the foregoing excerpts of West describe a patient control unit responsive to a patient selection, as set forth in the claimed invention.” App. Br. 9. Appellant also argues that the Examiner’s interpretation is “akin to saying if the patient shuts off the patient monitor, then no data transfer will occur and no one will receive data” and a skilled artisan would not construe “‘a patient control unit responsive to a patient selection to selectively authorize the patient’s medical and diagnostic values to be inspected outside the recording zone’ to be analogous to shutting of the patient monitor.” App. Br. 9. Because the Examiner and Appellant disagree whether West discloses a patient control unit and we find that the use of this term in independent claims 10, 21, and 23 renders those claims indefinite, the rejection of claims 10-13, 15, 18, 20, 21, and 23 must fall because it is necessarily based on a speculative assumption as to the meaning of those claims. See In re Steele, 305 F.2d 859, 862-63 (CCPA 1962). Our reversal of these rejections is based solely on the indefiniteness of the claimed subject matter, not on a review of the merits of the rejections. Appeal 2010-006957 Application 10/952,629 12 Claims 14 and 15 as unpatentable over West and Reuss Appellant argues that Reuss fails to remedy the deficiencies of West noted supra as to claim 10 from which claims 14 and 15 depend. See App. Br. 10. Because we do not sustain the rejection of claims 10-13, 18, 20, 21, and 23 as anticipated by West for the reasons set forth supra, we also do not sustain the rejection of claims 14 and 15, which also include the limitation of a patient control unit. DECISION We AFFIRM the rejections of claims 10-15, 18, 20, 21, and 23 under 35 U.S.C. § 112, first paragraph, for lack of enablement and under 35 U.S.C. § 112, second paragraph, for indefiniteness and REVERSE the prior art rejections of claims 10-15, 18, 20, 21, and 23. 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 mls