Welch Allyn, Inc.

Patent Trials and Appeals Board

Jan 11, 2022

2020006583 (P.T.A.B. Jan. 11, 2022)

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. 15/474,782 03/30/2017 James J. DelloStritto 10156.0022USD1 8119 92558 7590 01/11/2022 Merchant & Gould- Welch Allyn P.O. Box 2903 Minneapolis, MN 55402 EXAMINER FAN, HUA ART UNIT PAPER NUMBER 2449 NOTIFICATION DATE DELIVERY MODE 01/11/2022 ELECTRONIC 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. Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the following e-mail address(es): USPTO92558@merchantgould.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE _____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD _____________ Ex parte JAMES J. DELLOSTRITTO, CHAD E. CRAW, SONG Y. CHUNG, RONALD J. BLASZAK, and FRANK LOMASCOLO _____________ Appeal 2020-006583 Application 15/474,782 Technology Center 2400 ______________ Before ERIC S. FRAHM, JOHNNY A. KUMAR, and BETH Z. SHAW, Administrative Patent Judges. FRAHM, Administrative Patent Judge. DECISION ON APPEAL Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s decision to finally reject claims 1-10, which constitute all the claims pending in this Application. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. 1 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42. “The word ‘applicant’ when used in this title refers to the inventor or all of the joint inventors, or to the person applying for a patent as provided in §§ 1.43, 1.45, or 1.46.” 37 C.F.R. § 1.42(a). Appellant identifies the real party in interest as Welch Allyn, Inc. (Appeal Br. 3). Appeal 2020-006583 Application 15/474,782 2 STATEMENT OF THE CASE Appellant’s disclosed and claimed invention, entitle “Dynamic Medical Object Information Base” (see Spec., Title), “relates generally to methods, apparatus and systems for the communication of information among a plurality of network elements, and specifically to a dynamic medical object information base for interoperability of devices and systems” (Spec. ¶ 2), where medical devices perform health assessments using particular subsets of physiological data that may have requirements and data definitions that change or evolve over time (see Spec. ¶¶ 3, 5). Appellant has recognized that a “need[] exist[s] for improved communications protocols for acquisition and communication of data between network elements” and for “methods for interoperability of devices and systems” (Spec. ¶ 9). Sole independent method claim 1 is illustrative, and is reproduced below with emphases added to the key disputed limitations: 1. A method of communicating between devices with a communication protocol, the method comprising: initiating a communication link with a network device; requesting a self-describing data dictionary from the network device; receiving the self-describing data dictionary; and [A] caching the self-describing data dictionary, the self- describing data dictionary including a hierarchical classification scheme for vital signs data, including: [A1] a first level defining a type of vital signs data measured by a vital signs measuring device, the type of vital signs data being one of two or more families of vital signs information supported by the network device; [A2] a second level, subordinate to the first level, defining a type of an action related to the type of vital signs data from the first level; and [A3] a third level, subordinate to the Appeal 2020-006583 Application 15/474,782 3 second level, defining an object of the action from the second level. Appeal Br. 18 (Claims App.) (bracketed information and emphases added). The Examiner’s Rejections (1) The Examiner rejected claims 1, 2, and 5-10 under 35 U.S.C. § 103(a) as being unpatentable over Gendron et al. (US 2002/0023172 A1; published Feb. 21, 2002) (hereinafter “Gendron”) and Bodin et al. (US 2005/0091384 A1; published Apr. 28, 2005) (hereinafter “Bodin”). Final Act. 2-5; Ans. 3-6. (2) The Examiner rejected claims 3 and 4 under 35 U.S.C. § 103(a) as being unpatentable over Gendron, Bodin, and Official Notice.2 Final Act. 5-6; Ans. 6-7. With regard to dependent claim 3, the Examiner takes Official Notice that it was well-known at the time of Appellant’s claimed invention (i) “to match[] a global unique identifier with a cached version of data, and access[] the cached version of data” (Final Act. 6; Ans. 7), and concludes “it would have been obvious for [one of] ordinary skill[] in the art to combine Gendron 2 Although the statement of the heading of the rejection of claims 3 and 4 (which ultimately depend from claim 1, which is rejected over Gendron in view of Bodin) in the Final Office Action avers to rely on “Bodlin . . . further in view of Bodin” (Final Act. 5), this is harmless error, and we consider claims 3 and 4 to be rejected over the combination of Gendron and Bodin, as applied to claim 1, further in view of Official Notice. This is supported by (i) Appellant’s assumption “that the rejection of claims 3-4 is based upon Gendron, Bodin, and Official Notice” (Appeal Br. 14); and (ii) the Examiner’s correction in the Examiner’s Answer that claims 3 and 4 are rejected “as being unpatentable over Gendron-Bodin, as applied to claim 1 above, and further in view of ON (Official Notice)” (Ans. 6). Appeal 2020-006583 Application 15/474,782 4 with [the officially noticed facts,] in order to improve efficiency by using cached data for the same identified object” (Final Act. 6; Ans. 6). The Examiner cites Bittinger et al. (US 6,148,340; issued Nov. 14, 2000) (hereinafter, “Bittinger”) and Sheffi et al. (US 2012/0166586 A1; published June 28, 2012) (hereinafter “Sheffi”) as evidence to show the officially noticed facts were well-known, citing to column 5, paragraph 2 of Bittinger, and claim 16 and paragraph 456 of Sheffi in support, with no further explanation as to how or why the cited portions of either reference teaches or suggests the noticed facts (see Final Act. 6; Ans. 6-7, 11-12). With regard to dependent claim 4, the Examiner takes Official Notice as to “the known practice at the time of the invention to obtain data identified by a globally unique identifier from a remote data source when the data is not available locally, in order to expand availability of data providing” (Final Act. 6; Ans. 7). The Examiner cites Holdswoth (US 2007/0106619 A1; published May 10, 2007) as evidence to show the officially noticed facts were well-known, citing to paragraph 22 of Holdsworth in support, with no further explanation as to how or why the cited portions of Holdsworth teaches or suggests the noticed facts (see Final Act. 6; Ans. 7, 12). Principal Issues on Appeal Based on Appellant’s arguments in the Appeal Brief (Appeal Br. 10- 17), the following dispositive issues are presented on appeal: (1) Has Appellant shown that the Examiner erred in rejecting claims 1-10 under 35 U.S.C. § 103(a) because the combination of Gendron and Bodin fails to teach or suggest caching a self-describing data dictionary having a hierarchical classification scheme for vital signs data (see claim 1 Appeal 2020-006583 Application 15/474,782 5 limitation A), including “a first level defining a type of vital signs data measured by a vital signs measuring device, the type of vital signs data being one of two or more families of vital signs information supported by the network device,” as recited in claim 1 (see claim 1, limitation A1)? (2) Has Appellant shown that the Examiner erred in rejecting claims 3 and 4 under 35 U.S.C. § 103(a) because the Examiner’s prima facie case of obviousness for claims 3 and 4 over the combination of Gendron, Bodin, and Official Notice has been overcome? ANALYSIS We have reviewed Appellant’s arguments in the Appeal Brief (Appeal Br. 10-17), the Examiner’s Final rejection (Final Act. 2-6; see also Ans. 3- 7), and the Examiner’s response (Ans. 8-12) to Appellant’s arguments in the Appeal Brief. Claim 1 We are persuaded by Appellant’s contentions that the Examiner has not sufficiently shown that the combination of Gendron and Bodin teaches or suggests the subject matter recited in limitation A1 of claim 1 (see Appeal Br. 10-14). Our reasoning follows. The USPTO “must examine the relevant data and articulate a satisfactory explanation for its action including a rational connection between the facts found and the choice made.” Motor Vehicle Mfrs. Ass’n v. State Farm Mut. Auto. Ins. Co., 463 U.S. 29, 43 (1983) (internal quotation marks and citation omitted); see Synopsys, Inc. v. Mentor Graphics Corp., 814 F.3d 1309, 1322 (Fed. Cir. 2016) (stating that, as an administrative agency, the PTAB “must articulate logical and rational Appeal 2020-006583 Application 15/474,782 6 reasons for [its] decisions” (internal quotation marks and citation omitted)). We will not resort to speculation or assumptions to cure the deficiencies in the Examiner’s fact finding. See In re Warner, 379 F.2d 1011, 1017 (CCPA 1967). The Examiner does not sufficiently explain how one would modify Gendron, or why it would be obvious, to perform the operation of limitation A1 in claim 1 (caching self-describing dictionary data in a hierarchical fashion, where the first level of hierarchical data defines measured vital sign data that is one of two or more families of vital sign information supported by a network device). Although Gendron’s invention provides self- describing patient data (see Gendron ¶ 7), such as “medical imaging data” (see Gendron, Abstr.), arranged in a “hierarchical fashion” (Gendron ¶ 52), Gendron is silent as to applying the hierarchical structure to vital signs data that is one of two families of vital signs data, as claimed. Therefore, regarding limitation A1 in claim 1, the Examiner makes insufficient findings as to how/why Gendron discloses, teaches, or suggests a “self-describing data dictionary including a hierarchical classification scheme for vital signs data, including: a first level defining a type of vital signs data measured by a vital signs measuring device, the type of vital signs data being one of two or more families of vital signs information supported by the network device,” as required by claim 1 (see claim 1, limitations A and A1). At best, the Examiner’s proposed combination leaves us to speculate as to how or why one of ordinary skill in the art would modify Gendron to meet limitation ii recited in claim 1. See In re Warner, 379 F.2d at 1017; Ex parte Braeken, 54 USPQ2d 1110, 1112 (BPAI 1999) (unpublished) (“The review authorized by 35 U.S.C. [§] 134 is not a process Appeal 2020-006583 Application 15/474,782 7 whereby the examiner . . . invite[s] the [B]oard to examine the application and resolve patentability in the first instance.”). Even if one of ordinary skill in the art would have understood it to be obvious to apply Bodin’s vital sign data to Gendron’s method, the resultant combination would only provide a single supported type of vital data or family of vital sign information. Again, this leaves us to speculate as to how the combination of Gendron and Bodin would be modified in order to meet limitations A and A1 of claim 1. In view of the foregoing, we agree with Appellant’s contentions (see Appeal Br. 10-14) that the Examiner has not adequately shown that Gendron, alone or in combination with Bodin, teaches or suggests the vital signs data limitation A1 of claim 1. As a result, based on the record before us, Appellant has shown the Examiner erred in rejecting independent claim 1, and thus claims 2 and 5-10 depending from claim 1, under 35 U.S.C. § 103(a), and we cannot sustain the Examiner’s obviousness rejection of claims 1, 2, and 5-10 over Gendron and Bodin. For similar reasons, because claims 3 and 4 ultimately depend from claim 1, and based on Appellant’s reliance on the arguments presented as to claim 1 as to the patentability of claims 3 and 4, we, likewise, cannot sustain the Examiner’s obviousness rejection of claims 3 and 4 over the same base combination of Gendron and Bodin, further in view of Official Notice. Claims 3 and 4 As to dependent claims 3 and 4, Appellant contends (see Appeal Br. 14-16) the Examiner has not adequately shown that any of the cited references disclose the recited features. More specifically, Appellant argues Appeal 2020-006583 Application 15/474,782 8 that the references cited as supporting the officially noticed facts (namely, most of the features of claims 3 and 4), do not do support a conclusion of obviousness. Namely, Appellant disputes the Examiner’s findings with regard to Bittinger’s column 5, paragraph 2, Sheffi’s claim 16 and paragraph 456, and Holdsworth’s paragraph 22 (see Appeal Br. 15-16). Notably, the Examiner’s rejection of claims 3 and 4 fails to explain how or why the cited portions of the references relied on for Official Notice support the findings made (see Final Act. 6; Ans. 6-7).3 And, the Examiner’s response to Appellant’s arguments in this regard (see Ans. 11- 12) fails to respond or otherwise address the specific portions of Bittinger, Sheffi, and/or Holdsworth relied upon in the rejection. An adequate traverse of the Examiner’s taking of Official Notice must contain sufficient information or argument to create on its face a reasonable doubt regarding the circumstances justifying the Examiner’s notice of what is well known to one of ordinary skill in the art. In re Boon, 439 F.2d 724, 728 (CCPA 1971). As to the rebuttal of the Examiner’s Official Notice required by Appellant, the MPEP sets forth the following: C. If Applicant Challenges a Factual Assertion as Not Properly Officially Noticed or Not Properly Based Upon Common Knowledge, the Examiner Must Support the Finding With Adequate Evidence To adequately traverse such a finding, an applicant must specifically point out the supposed errors in the examiner’s 3 “Where a reference is relied on to support a rejection whether or not in a ‘minor capacity,’ there would appear to be no excuse for not positively including the reference in the statement of the rejection.” In re Hoch, 428 F.2d 1341, 1342 n.3 (CCPA 1970). Appeal 2020-006583 Application 15/474,782 9 action, which would include stating why the noticed fact is not considered to be common knowledge or well-known in the art. See 37 CFR [§] 1.111(b). See also Chevenard, 139 F.2d at 713 . . . (“[I]n the absence of any demand by appellant for the examiner to produce authority for his statement, we will not consider this contention.”). A general allegation that the claims define a patentable invention without any reference to the examiner’s assertion of official notice would be inadequate. If applicant adequately traverses the examiner’s assertion of official notice, the examiner must provide documentary evidence in the next Office action if the rejection is to be maintained. See 37 CFR [§]1.104(c)(2). See also Zurko, 258 F.3d at 1386 . . . (“[T]he Board [or examiner] must point to some concrete evidence in the record in support of these findings” to satisfy the substantial evidence test). If the examiner is relying on personal knowledge to support the finding of what is known in the art, the examiner must provide an affidavit or declaration setting forth specific factual statements and explanation to support the finding. See 37 CFR [§] 1.104(d)(2). MPEP § 2144.03(C) (9th ed., rev. 08.2017, Jan. 2018) (underlining and italicized emphases added). Therefore, in the instant case, Appellant has met the required burden in both briefs (see Appeal Br. 14-16), as discussed above. As to the requirements of the Examiner’s statement of Official Notice and support to be provided thereof, the MPEP sets forth the following: B. If Official Notice Is Taken of a Fact, Unsupported by Documentary Evidence, the Technical Line of Reasoning Underlying a Decision To Take Such Notice Must Be Clear and Unmistakable In certain older cases, official notice has been taken of a fact that is asserted to be “common knowledge” without specific reliance on documentary evidence where the fact noticed was readily verifiable, such as when other references of record Appeal 2020-006583 Application 15/474,782 10 supported the noticed fact, or where there was nothing of record to contradict it. See In re Soli, 317 F.2d 941, 945-46, . . . (CCPA 1963) (accepting the examiner’s assertion that the use of “a control is standard procedure throughout the entire field of bacteriology” because it was readily verifiable and disclosed in references of record not cited by the Office); In re Chevenard, 139 F.2d 711, 713 . . . (CCPA 1943) (accepting the examiner’s finding that a brief heating at a higher temperature was the equivalent of a longer heating at a lower temperature where there was nothing in the record to indicate the contrary and where the applicant never demanded that the examiner produce evidence to support his statement). If such notice is taken, the basis for such reasoning must be set forth explicitly. The examiner must provide specific factual findings predicated on sound technical and scientific reasoning to support the conclusion of common knowledge. See Soli, 317 F.2d at 946 . . . ; Chevenard, 139 F.2d at 713 . . . . The applicant should be presented with the explicit basis on which the examiner regards the matter as subject to official notice so as to adequately traverse the rejection in the next reply after the Office action in which the common knowledge statement was made. MPEP § 2144.03(B) (9th ed., rev. 08.2017, Jan. 2018) (underlining and italicized emphases added). In the instant case, the Examiner has failed to produce specific evidence that any of the references cited as supporting the Official Notice teach or suggest the noticed limitations of claims 3 and 4. This is because the Examiner fails to explain the portions of the references cited in support of the Official Notice statement provided, and the Examiner has not presented Appellant with an explicit basis, nor provided “"specific factual findings predicated on sound technical and scientific reasoning to support the conclusion of common knowledge” (MPEP § 2144.03 (citing Soli, 317 F.2d at 946; Chevenard, 139 F.2d at 713)). And, notably, Appellant is Appeal 2020-006583 Application 15/474,782 11 correct that the Examiner has not sufficiently shown the Official Notice teaches or suggests the salient and disputed limitations recited in claims 3 and 4. At best, the Examiner leaves us to speculate as to how or why one of ordinary skill in the art would modify the combination of Gendron and Bodin with Bittinger and/or Sheffi, or Holdsworth, to meet the disputed limitations of claims 3 and 4. We will not resort to speculation or assumptions to cure the deficiencies in the Examiner’s fact finding and reasoning. See Warner, 379 F.2d at 1017; Ex parte Braeken, 54 USPQ2d 1110, 1112 (BPAI 1999) (unpublished) (“The review authorized by 35 U.S.C. [§] 134 is not a process whereby the examiner . . . invite[s] the [B]oard to examine the application and resolve patentability in the first instance.”). As a result, the Examiner has not provided “a satisfactory explanation for its action including a ‘rational connection between the facts found and the choice made’” (see Motor Vehicle Mfrs. Ass’n, 463 U.S. at 43), nor has the Examiner “articulate[d] logical and rational reasons for” the findings regarding Official Notice (see Synopsys, Inc., 814 F.3d at 1322). In this light, the Examiner has not articulated a satisfactory explanation as to how or why the combination of Gendron and Bodin, as modified by (i) Bittinger and/or Sheffi (claim 3), or (ii) Holdsworth (claim 4), teaches or suggests the disputed limitations in claims 3 and 4.4 As a result, we agree with Appellant (Appeal Br. 14-6) that the Examiner has not 4 See supra n.3. Appeal 2020-006583 Application 15/474,782 12 adequately shown that any of the cited references disclose the officially noticed facts. In view of the foregoing, Appellant’s contentions (Appeal Br. 14-16) that the Examiner’s reliance on Official Notice is improper are persuasive. Thus, Appellant has shown the Examiner erred in rejecting claims 3 and 4 depending respectively therefrom as being unpatentable under 35 U.S.C. § 103(a) over Gendron, Bodin, and Official Notice. Summary Based on the record before us, we cannot sustain the Examiner’s obviousness rejections of independent claim 1, as well as claims 2-10 ultimately depending therefrom. CONCLUSION For all of the reasons above, we hold as follows: Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1, 2, 5-10 103(a) Gendron, Bodin 1, 2, 5-10 3, 4 103(a) Gendron, Bodin, Official Notice 3, 4 Overall Outcome 1-10 REVERSED