Neil L. Mcclure et al.

Patent Trials and Appeals Board

Sep 19, 2019

14738800 - (D) (P.T.A.B. Sep. 19, 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.
14/738,800 06/12/2015 Neil L. McClure TKO US-2 (043961.0009) 1080
27104 7590 09/19/2019
FENNEMORE CRAIG, P.C.
1700 Lincoln Street Suite 2400
DENVER, CO 80203
EXAMINER
YI, ALEXANDER J.
ART UNIT PAPER NUMBER
2643
MAIL DATE DELIVERY MODE
09/19/2019 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 NEIL L. MCCLURE and RALPH DAVID WIELAND
____________________

Appeal 2018-005806
Application 14/738,800
Technology Center 2600
____________________

Before ALLEN R. MacDONALD, ADAM J. PYONIN, and
PHILLIP A. BENNETT, Administrative Patent Judges.

MacDONALD, Administrative Patent Judge.

DECISION ON APPEAL1

STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from a Non-Final
rejection of claims 1–64.2 We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 Appellants indicate the real party in interest is the inventors
Neil L. McClure and Ralph David Wieland. Appeal Br. 1.
2 We find no basis for Appellants’ statement that “[c]laim 3 is withdrawn
from consideration as being directed to a non-elected species.” Appeal
Br. 3.
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Illustrative Claims
Illustrative claims 1 and 17 under appeal read as follows (emphasis,
formatting, and bracketed material added):
1. A system comprising:
[A.] a monitor that is constructed and arranged for
communicating with a mobile device;
[B.] an alert device separate from the mobile device;
[C.] a software application running on the mobile device for
programmatic control of communication with the
monitor;
[D.] wherein the software application periodically
communicates its operational status to the alert device,
and
[E.] the alert device being programmed with logic for delivery
of notification commensurate with the operational status
of the software application.
17. A system, comprising:
[A.] a central monitoring system with wireless communication
capability used for monitoring an entity or process;
[B.] at least one mobile device in communication with the
central monitoring system, said communication
containing parameters associated with the monitored
entity or process;
[C.] the mobile device being capable of communicating the
parameters through a software application that presents
the parameters to a user through a graphical user
interface of the mobile device;
[D.] an independent alert device in communication with the
mobile device;
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[E.] wherein the communication between the mobile device and
the independent alert device indicates of the operational
status of the mobile device and/or the software
application;
[F.] the independent alert device producing an alarm condition
if the operational status of the mobile device and/or the
software application indicates an error condition.
Reference3
Ballantyne et al. US 2013/0317837 A1 Nov. 28, 2013
Rejections4
A.
The Examiner rejected claims 1–8, 12, 13, 15–24, 28–40, 44–56,
and 60–64 under 35 U.S.C. § 103 as being unpatentable over Ballantyne.
Non-Final Act. 6–32, 39, 41–56, 59–61, and 64–65.
Although the Examiner structures this § 103 rejection based solely on
Ballantyne as fifteen separate § 103 rejections, it is in fact a single ground of
rejection with fifteen analyses. The Appellants acknowledge:
In essence, Issue 1 encompasses the independent claims 1,
33 and 49. The language of these claims contain common
features such that they may be discussed as a unit that stands or
falls together on appeal. Thus, the Board’s determination on
Issue 1 is dispositive as to claims 1-16 and 33-64, which include
the independent claims 1, 33 and 49 plus the related dependent
claims. . . .

3 All citations herein to this reference are by reference to the first named
inventor only.
4 All citations herein to the “Non-Final Action” are to a Non-Final Action
mailed on August 3, 2017.
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Of the independent claims, only independent claim 17
lacks the [ipsissimis] verbis recitations of elements found in
claims 1, 33 and 49; however, claim 17 presents essentially the
same concepts stated in alternative language. Accordingly,
claims 17-32 are broken out as a separate group for purposes of
this appeal. Even so, the Office Action under appeal utilizes the
same language and bases for rejecting both groups of claims so
the same arguments apply equally to both groups of claims.
Appeal Br. 12.
Appellants argue separate patentability for claim 1, 17, and 30. To the
extent that Appellants discuss claims 2–8, 12, 13, 15, 16, 18–24, 28, 29, 31–
40, 44–56, and 60–64, Appellants merely repeat or reference the arguments
directed to claims 1 and 17. Such a repeated argument (or referenced
argument) is not an argument for “separate patentability.” Thus, Appellants
do not present separate arguments for claims 2–8, 12, 13, 15, 16, 18–24, 28,
29, 31–40, 44–56, and 60–64. We select claims 1, 17, and 30 as the
representative claims for this rejection. Except for our ultimate decision, we
do not address claims 2–8, 12, 13, 15, 16, 18–24, 28, 29, 31–40, 44–56,
and 60–64 further herein.
B.
The Examiner rejects claims 9–11, 14, 25–27, 41–43, and 57–59
under 35 U.S.C. § 103(a) as being unpatentable over Ballantyne in various
combinations with additional references. Non-Final Act. 32–38, 40–41, 56–
59, and 62–64.
To the extent that Appellants discuss claims 9–11, 14, 25–27, 41–43,
and 57–59, Appellants merely repeat or reference the arguments directed to
claims 1 and 17. Again, such a repeated argument (or referenced argument)
is not an argument for “separate patentability.” Thus, Appellants do not
present separate arguments for claims 9–11, 14, 25–27, 41–43, and 57–59,
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and the rejections of these claims turn on our decisions as to claims 1 and
17. Except for our ultimate decision, we do not address the § 103 rejections
of claims 9–11, 14, 25–27, 41–43, and 57–59 further herein.

Issue on Appeal
Did the Examiner err in rejecting claims 1, 17, and 30 as being
obvious?

ANALYSIS
We have reviewed the Examiner’s rejections in light of Appellants’
arguments (Appeal Brief and Reply Brief) that the Examiner has erred.
We disagree with Appellants’ conclusions.
1.a.
Appellants contend that the Examiner erred in rejecting claim 1 under
35 U.S.C. § 103(a) because: 5
The Office Action commits error in the first instance by
incorrectly determining that Ballantyne teaches the use of a
mobile device when, in fact, the language that the Office Action
relies upon is in paragraph 544 of Ballantyne and actually
teaches away from using a mobile device.
Appeal Br. 13 (emphasis added).
The Office Action commits a fundamental error by
mischaracterizing Ballantyne when it says, in regard to the
embodiment of Fig. 18 (the “first embodiment” of this rejection),
that “[m]onitoring client 1302 can be a tablet, a smart phone, or
a PDA as stated in par. 544” (see the Office Action at p. 4, last
paragraph) and that “the tablet, the smart phone, and the PDA are

5 Although Appellants present this contention in alternative forms, we
reproduce only this one. The result is the same for each alternative for the
same reasons.
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all monitoring clients usable in the configuration shown in Fig.
18[”] page 3 of the Office Action, last paragraph. The Office
Action fails to point to any passage that says the tablet, smart
phone or PDA of the first embodiment is a monitoring client,
so Ballantyne does not provide the asserted support for the
rejection. In particular, the Examiner’s interpretation is
backwards from the actual language of Ballantyne at paragraph
544, which states:
The monitoring client 1302 may be substituted for
any monitoring client described herein, such as
monitoring clients 1, 4, or 11 of FIGS. 1, 3, 5, 7, 8,
monitoring clients 9, 4, or 11 of FIG. 9, a tablet, a
smart phone, a PDA, or the like.
Appeal Br. 16 (emphasis added).
The Examiner responds:
Examiner respectfully disagrees with Appellant’s
argument. Ballantyne states in par. 544, “monitoring client 1302
may be substituted for any monitoring client described herein,
such as . . . a tablet, a smart phone, a PDA, or the like”, wherein
the monitoring client 1302 is a monitoring client described herein
such as a table, a smart phone, a PDA, or the like. Par. 544
explicitly states that any monitoring client described herein are
such as a tablet, a smart phone, a PDA, or the like.
Furthermore, Ballantyne states in par. 95, “monitoring
client may be one of a desk-based device, a portable device, a
hand-held controller, a notebook PC, a netbook PC, a tablet PC,
and a smart phone (~mobile devices).
Ans. 7–8 (emphasis omitted).
Appellants further contend as to paragraph 544 of Ballantyne:
None of the rejections on appeal can be sustained if
Ballantyne does not teach the use of a mobile device as claimed.
Page 3 of the Examiner’s Answer correctly quotes Ballantyne as
saying that monitoring client 1302 may be “substituted for
[emphasis added]” a tablet, smart phone or PDA. The word “for”
connotes a one-way substitution where the mobile devices of a
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tablet, smart phone or PDA are replaced by the new monitoring
client 1302, which is used in lieu of those devices. It necessarily
follows that the monitoring client cannot be a tablet, smart phone
or PDA because those are the things being replaced. Therefore,
the embodiment of Fig. 18 does not include the mobile device as
claimed.
. . .
The Answer next refers to Paragraph 95 of Ballantyne to
propose that that a “monitoring client” may be a mobile device
as claimed. See the Answer in the first paragraph of page 5.
Paragraph 95 resides in the Summary portion of Ballantyne and
merely describes “another embodiment” that is not necessarily
the embodiment of Fig. 18. This use of Paragraph 95 is unwise.
The phrase “another embodiment” is not directed towards any
particular embodiment, especially when it is understood that
Ballantyne contains many different embodiments that are
disclosed in 157 total figures and 823 written paragraphs.
Significantly also, Paragraph 95 of Ballantyne provides no
guidance why the substitution should be made in such a manner
as to ignore the “for” word as discussed above. As to the
embodiment shown in Fig. 18 of Ballantyne, the word “for” is
controlling and negates the more general guidance of
Paragraph 95, which is best read as applying to other
embodiments.
Reply Br. 4–5 (emphasis added).
As to Appellants’ assertion, we disagree. Appellants’ argument is
premised on a strained “one-way” reading of Ballantyne’s paragraph 544
while discounting Ballantyne’s paragraph 95. We conclude that both
premises are contrary to our reviewing courts guidance. “A person of
ordinary skill is also a person of ordinary creativity, not an automaton.” KSR
Int’l Co. v. Teleflex Inc., 550 U.S. 398, 421 (2007). A reference may be
relied upon for all that it would have reasonably suggested to one having
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ordinary skill the art, including non-preferred embodiments. Merck & Co. v.
Biocraft Laboratories, 874 F.2d 804 (Fed. Cir. 1989).
We agree with the Examiner’s findings that (a) “Ballantyne teaches a
system comprising: a dock attached to a monitor that is constructed and
arranged for communicating with a mobile device (In fig. 18, Patient-Care
Device (element 1320/1318) is a monitor that communicates with a mobile
device (Monitoring Client, element 1302)” (Non-Final Act 6), and
(b) Ballantyne at paragraph 95 teaches “monitoring client may be one of a
desk-based device, a portable device, a hand-held controller, a notebook PC,
a netbook PC, a tablet PC, and a smart phone.” Further, contrary to
Appellants’ assertion that Ballantyne “teaches away” from using a mobile
device, we conclude that Ballantyne explicitly teaches that a mobile device
may be used.6
As the United States Court of Appeals for the Federal Circuit has
counseled:
A reference may be said to teach away when a person of ordinary
skill, upon reading the reference, would be discouraged from
following the path set out in the reference, or would be led in a
direction divergent from the path that was taken by the applicant.
. . . [I]n general, a reference will teach away if it suggests that the
line of development flowing from the reference’s disclosure is
unlikely to be productive of the result sought by the applicant.
In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994). “A reference does not teach
away, however, if it merely expresses a general preference for an alternative

6 Even if we were to adopt Appellants’ “one-way” reading of Ballantyne,
ultimately we would arrive at the same result because an artisan would
understand “one-way” substitution to be suggestive of “two-way”
substitution.
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invention but does not ‘criticize, discredit, or otherwise discourage’
investigation into the invention claimed.” DePuy Spine, Inc. v. Medtronic
Sofamor Danek, Inc., 567 F.3d 1314, 1327 (Fed. Cir. 2009) (quotation
omitted).
1.b.
The Examiner Finds:
Patient-Care Device (element 1320/1318) is a monitor that
communicates with a mobile device (Monitoring Client, element
1302); “a wireless dock 1306 having a patient-care device
(~monitor) 1320” . . . “the wireless dock 1306 wirelessly
communicates with the monitoring client 1302 (~mobile
device)”, [0546].
Non-Final Act. 6 (emphasis omitted).
Appellants contend that the Examiner erred in this finding because:
The Office Action then compounds [the Ballantyne teaches the
use of a mobile device] error by determining that the mobile
device communicates directly with the monitor as claimed,
when in fact this is not the case.
What is claimed differs from the disclosure of Ballantyne
because the claimed system is designed for a different purpose
than is that of Ballantyne where Ballantyne does not permit a
user to use a mobile device in monitoring the status of a device,
and the multi-path communications system of the claims is more
robust for this purpose because the mobile device as claimed
communicates with the alert device through a separate and
independent communication channel than is used for the
monitor whereas Ballantyne requires the alert device to facilitate
communication between the purported mobile device and
monitor.
Appeal Br. 13 (emphasis added).
The rejection compounds its error by incorrectly finding
that Ballantyne teaches a mobile device communicating with a
monitor as claimed. Specifically, Ballantyne’s patient care
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device (the Examiner’s proposed monitor) 1320 does not
communicate with the monitoring client 1302 (the Examiner’s
proposed mobile device). As construed by the Examiner in
combining the first and tenth embodiments of Ballantyne,[] only
the wireless dock 1306 communicates with the monitoring client
1302. See page 3 of the Office Action where “[]the wireless dock
1306 wirelessly communicates with the monitoring client,[]”
quoting Ballantyne at paragraph 546. However, the Office
Action ignores the language of this same paragraph, which states
that the “wireless dock 1306 may be similar to or identical to the
dock 1304.” Therefore, only the dock 1306/1304, and more
specifically, the watchdog 1310 (the Examiner’s alert device)
that communicates with the patient care device 1320 (the
Examiner’s monitor) and the monitor client (the Examiner’s
mobile device). The patient care device 1320 does not itself
communicate with the monitor client 1302. This
communication can only occur via the dock 1306/1304. This is
because the wireless dock 1306 is merely a wireless device the
replicates the functionality of the dock 1304, which includes the
watchdog 1310 as the unit providing communications with the
monitoring client 1302.
Appeal Br. 18 (emphasis added, footnote omitted).
The Examiner responds:
Examiner respectfully disagrees with Appellant’s
argument. Ballantyne states in par. 72, “In another embodiment,
the patient care device (~monitor) is configured to wirelessly
communicate with the monitoring client (~mobile device), and
wherein the monitoring client (~mobile device) wirelessly
communicates the at least one patient-care parameter with the
patient-care device (~mobile device)”.
Ans. 8 (emphasis omitted).
Appellants further assert:
[T]he patient care device (the Examiner’s monitor) does not
communicate directly with the monitor client 1302 (the
Examiner’s mobile device) because the wireless communication
must go through the dock.
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Reply Br. 6 (emphasis added).
As to Appellants’ assertion, we disagree. First, Appellants assert
“communicates directly” and “a separate and independent communication
channel” are not shown in Ballantyne. Appeal Br. 13. However, the
argument is not commensurate with the scope of the claim language. The
structure of claim 1 is not explicitly so limited, nor do Appellants explain
how claim 1 would be inherently so limited, nor do we find alternative
language that would similarly mandate the argued limitation. Although, as
discussed immediately infra, we agree with the Examiner and not with
Appellants’ restrictive reading of Ballantyne, even if we were to agree with
Appellants, Appellants’ claim 1 does not preclude communication according
to Appellants’ restrictive reading that “Ballantyne requires the alert device to
facilitate communication between the purported mobile device and monitor.”
Appeal Br. 13.
Second, we agree with the Examiner’s finding that Ballantyne at
paragraph 72 teaches a monitor may wirelessly communicate with a mobile
device. Ans. 8.
1.c.
Appellants also present a number of other assertions as to claim 1
which we address here.
1.c.i.
Appellants assert:
[T]he Office Action applies a “tenth embodiment of Ballantyne”
according to paragraph [0072] thereof, which does not describe
a tenth embodiment in context of any drawing or figure.
Regardless, this communication configuration does not include
an alert device and therefore is irrelevant for citing as a basis of
rejection. Ballantyne utilizes the “monitoring client” in so
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many ways that is it impossible to tell from the generic language
of paragraph [0072] just what embodiment is being discussed,
nor is the paragraph [0072] of particular relevance.
Appeal Br. 16 (emphasis added). Appellants also assert:
It is revealing that the Answer also attempts to conceal the large
number of other embodiments found in Ballantyne.
Reply Br. 5 (emphasis added).
Essentially, Appellants attack Ballantyne because it teaches too much.
Based on this argument, we are not persuaded of Examiner error. “That [a]
patent discloses a multitude of effective combinations does not render any
particular formulation less obvious.” Merck v. Biocraft Labs, 874 F.2d at
807. “The criterion [] is not the number of references, but what they would
have meant to a person of ordinary skill in the field of the invention.” In re
Gorman, 933 F.2d 982, 982 (Fed. Cir. 1991).
1.c.ii.
Appellants also assert:
[W]hat is claimed separates the two communication channels
for both content and method.
Appeal Br. 20–21 (emphasis added). At page 1 of the Reply Brief,
Appellants present drawings and assert:
The communications structure shown above places the mobile
device in the middle of two communications channels.
Reply Br. 1 (emphasis added).
This argument is not commensurate with the scope of the claim
language. The structure of claim 1 is not explicitly so limited, nor do
Appellants explain how claim 1 would be inherently so limited, nor do we
find alternative language that would similarly mandate the argued limitation.
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1.c.iii.
Appellants further assert:
Paragraphs 551 and 552 of Ballantyne fully considered use of a
mobile device in the embodiment of Fig. 18, but the mobile
device in actual use there differs from what is claimed because
Ballantyne solved a different problem--a hallmark of
nonobviousness.
Reply Br. 7 (emphasis added).
As to Appellants’ assertion, we unpersuaded. “[A]ny need or problem
known in the field of endeavor at the time of invention and addressed by the
patent can provide a reason for combining the elements in the manner
claimed.” KSR, 550 U.S. at 420. Appellants’ argument is directly contrary
to the Supreme Court’s explicit guidance.
2.
Appellants contend that the Examiner erred in rejecting claim 17
under 35 U.S.C. § 103(a) because:
[T]he patient care device of Ballantyne is not a central
monitoring system because it consists of a singular unit that is
not centralized in the sense of centrally monitoring several such
individual units.
Appeal Br. 25 (emphasis added).
This argument is not commensurate with the scope of the claim
language. The structure of claim 17 is not explicitly so limited, nor do
Appellants explain how claim 17 would be inherently so limited, nor do we
find alternative language that would similarly mandate the argued limitation.
Claim 17 requires “at least one” unit, not several as argued.
3.
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3.
Claim 30 recites: “The system of claim 17, wherein the software
application communicates its operational status to an alert device.” The
Examiner Finds:
Ballantyne teaches wherein a software application
communicates its operational status to an alert device (“In the
event the monitoring client 1 determines the cable 110 is
unavailable as a communications link, the monitoring client 1
may issue an alarm or alert using a speaker and/or a vibration
motor, an alarm or alert signal may be sent to the remote
communicator 11 to alarm or alert the remote communicator
using a speaker and/or a vibration motor”, [0354]).
Non-Final Act. 60 (emphasis omitted).
Appellants contend that the Examiner erred in rejecting claim 30
under 35 U.S.C. § 103(a) because:
Here the Examiner introduces a “remote communicator” as an
additional element of the rejection, but this remote
communicator is different from the watchdog 1310 of the first
and tenth embodiments, and the Examiner fails to explain how
this device would be introduced to that combination or even why
it would be introduced.
Appeal Br. 29.
Essentially Appellants’ argument is premised on a “physical” or
“bodily” incorporation of the “remote communicator” into the other
teachings of Ballantyne. This is not the standard. “The test for obviousness
is not whether the features of a secondary reference may be bodily
incorporated into the structure of the primary reference . . . . Rather, the test
is what the combined teachings of those references would have suggested to
those of ordinary skill in the art.” In re Keller, 642 F.2d 413, 425 (CCPA
1981); see also In re Sneed, 710 F.2d 1544, 1550 (Fed. Cir. 1983) (“[I]t is
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not necessary that the inventions of the references be physically combinable
to render obvious the invention under review.”).
The Examiner did not suggest the “remote communicator” should be
bodily incorporated. Rather, the Examiner relied on the “remote
communicator” to show it is known in the prior art to have “a software
application communicate[] its operational status to an alert device.”
Non-Final Act. 60. Appellants go beyond this to incorporate features of the
entire “remote communicator,” which were not relied upon by the Examiner.
Appellants then argue the features the Examiner did not rely upon. We are
unpersuaded by this form of argument.

CONCLUSIONS
(1) The Examiner has not erred in rejecting claims 1–64 as being
unpatentable under 35 U.S.C. § 103(a).
(2) Claims 1–64 are not patentable.

DECISION
The Examiner’s rejections of claims 1–64 are affirmed.

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