Ex parte Pham

• Decision Date: 23 June 2020
• Docket Number: 953,Appeal 2019-002755,Application 14/701
• Parties: Ex parte HAI D. PHAM and JARED FABER Technology Center 2600
• Court: Patent Trial and Appeal Board

Ex parte HAI D. PHAM and JARED FABER Technology Center 2600

Appeal 2019-002755

Application 14/701, 953

United States Patent and Trademark Office, Patent Trial and Appeal Board

June 23, 2020

FILING DATE: 05/01/2015

Before CATHERINE SHIANG, BETH Z. SHAW, and JAMES W. DEJMEK Administrative Patent Judges.

DECISION ON APPEAL

DEJMEK, ADMINISTRATIVE PATENT JUDGE.

Appellant^[1] appeals under 35 U.S.C § 134(a) from a Final Rejection of claims 1-8 and 11-21. Appellant has canceled claims 9 and 10. See Amdt 3 (filed April 24, 2018). We have jurisdiction over the remaining pending claims under 35 U.S.C. § 6(b).

We affirm.

STATEMENT OF THE CASE

Introduction

Appellant's disclosed and claimed invention generally relates to the use of a body area network (BAN) in a security access system. Spec. ¶¶ 1, 10. According to the Specification a BAN "is a wireless network of computing devices that are associated with a particular human body or a particular person." Spec. ¶ 2. As an example, the Specification describes that intelligent physiological sensors may be implanted in the body and may communicate desired information to an external device. Spec. ¶ 7. Information transmitted from an implanted device may include information identifying the device and/or the person in whom the device is implanted. Spec. ¶ 14. In a disclosed embodiment, this information may be used by a security access system to open a door (i.e., provide access). Spec. ¶ 14.

Claim 1 is representative of the subject matter on appeal and is reproduced below with the disputed limitation emphasized in italics:

1. A system comprising:

a computer processor configured to:

receive body area network (BAN) data; and

operate a point of entry as a function of the BAN data;

wherein the BAN data are generated by a body area network comprising a wireless network of physiological sensing devices worn by or embedded in a person;

wherein the BAN data comprise identification data for the person associated with the BAN, and the identification data are used to operate the point of entry;

wherein the identification data comprise data relating to an implanted device in the person; and

wherein the data relating to the implanted device in the person comprise data that identify the implanted device.

The Examiner's Rejections

1. Claims 1, 2, 5-8, 11, 12, 15-18, 20, and 21 stand rejected under 35 U.S.C. § 103 as being unpatentable over Moriarty et al. (US 2013/0194092 A1; Aug. 1, 2013) ("Moriarty"); Falck et al. (US 2011/0280224 A1 Nov. 17, 2011) ("Falck"); and Chandra et al. (US 2014/0273829 A1; Sept. 18, 2014) ("Chandra"). Final Act. 3-9.

2. Claims 3, 13, and 19 stand rejected under 35 U.S.C. § 103 as being unpatentable over Moriarty, Falck, Chandra, and Amento et al. (US 8, 908, 894 B2; Dec. 9, 2014) ("Amento"). Final Act. 9-10.

3. Claims 4 and 14 stand rejected under 35 U.S.C. § 103 as being unpatentable over Moriarty, Falck, Chandra, Amento, and Benoit et al. (US 2015/0067792 A1; Mar. 5, 2015) ("Benoit"). Final Act. 11.

ANALYSIS^[2]

In rejecting claim 1, the Examiner finds Moriarty teaches inter alia, a system to receive body area network (BAN) data, wherein the BAN data are generated by a body area network comprising a network of physiological devices worn by or embedded in a person and, further, wherein the BAN data comprise identification data for a person associated with the BAN, the identification data comprising data relating to an implant in a person. Final Act. 3 (citing Moriarty ¶¶ 27-28, 30, 48). The Examiner relies on Falck to teach expressly the use of wireless sensors in a BAN network (Final Act. 3 (citing Falck ¶¶ 5, 62)) and Chandra to teach the use of BAN data for operating a point of entry and providing identification data that identify the device in the person (Final Act. 3 (citing Chandra ¶¶ 12, 15 26, 34)).

Appellant disputes the Examiner's finding that Chandra teaches identification data that identify the implanted device in the person. Appeal Br. 10. In particular, Appellant asserts that Chandra does not relate to implanted devices, but rather describes an ingested device (i.e., a pill comprising a transmitter). Appeal Br. 10. Appellant argues that even under a broadest reasonable interpretation, the claimed implanted device is not taught by Chandra's ingested device. Appeal Br. 10; Reply Br. 2 (disputing the Examiner's proposed broadest reasonable interpretation).

Regardless of whether Chandra teaches an ingested device or an implanted device, we note that the Examiner finds Moriarty teaches an implanted device. Final Act. 3 (citing Moriarty ¶¶ 27-28); Ans. 4 (explaining the Examiner's position that Moriarty is relied to teach the use of an implanted BAN device and that such implantation is a conventional practice (citing Moriarty ¶¶ 28, 35)). We agree with the Examiner that Moriarty teaches an implanted BAN device. See, e.g., Moriarty ¶¶ 28 (describing "implant modules"), 31-32 ("[t]he patient 102 may have internal or external sensors 140 . . ."), 35 ("a wide variety of different types of internal or external sensors may be utilized at different parts of the patient's body").

Moreover, the Examiner finds, and we agree, Moriarty teaches the BAN devices (i.e., the implanted devices) may transmit information identifying the person associated with the BAN device. Final Act. 3 (citing Moriarty ¶ 48 (describing that "medical data and other information (e.g., identity information, contact information, etc.)" may be transmitted by the device and received by an external device)); see also Moriarty ¶ 49 (describing various levels and types of information transmitted from the BAN device).

Non-obviousness cannot be established by attacking references individually where, as here, the ground of unpatentability is based upon the teachings of a combination of references. In re Keller, 642 F.2d 413, 426 (CCPA 1981). Rather, the test for obviousness is whether the combination of references, taken as a whole, would have suggested the patentee's invention to a person having ordinary skill in the art. In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986).

We understand the Examiner's rejection to rely on the combined teachings of, inter alia, Moriarty and Chandra. See Final Act. 3. In particular, Moriarty teaches an implanted device that transmits information identifying the person associated with the BAN device as well as other information, and Chandra teaches that a device internal to the body transmits information to identify the device itself. See Final Act. 3 (citing Moriarty ¶¶ 27-28, 48; Chandra ¶ 12). Thus, we find that the combined teachings of Moriarty and Chandra teach or reasonably suggest an implanted device that transmits information (i.e., identification data) comprising data related to an implanted device in the person (as taught Moriarty) and that the data relating to the implanted device comprise data to identify the device itself (as taught by Chandra).

For the first time in the Reply Brief, Appellant belatedly asserts that Moriarty "is specifically directed towards medical monitoring and not the use of a BAN to control external systems." Reply Br. 2. As such, Appellant argues the Examiner has not shown the prior art (i.e., Moriarty) teaches an implanted device that includes identification data and that can be used to operate a point of entry. Reply Br. 3. In addition, Appellant belatedly argues for the first time in the Reply Brief that there is no reason that one of ordinary skill in the art would modify Moriarty's system with Chandra's device to operate a point of entry. Reply Br. 3. Instead, Appellant asserts that the Examiner has impermissibly relied on hindsight reasoning in support of the proposed combination. Reply Br. 3.

These argument were not made in the Appeal Brief, but could have been, and are not responsive to any new evidence or finding set forth by the Examiner in the Answer. In the absence of a showing of good cause by Appellant, this argument is untimely and deemed waived.

Any argument raised in the reply brief which was not raised in the appeal brief, or is not responsive to an argument raised in the [E]xaminer's answer, including any designated new ground of rejection, will not be considered by the Board for purposes of the present appeal, unless good cause is shown.

37 C.F.R. § 41.41(b)(2); see also Ex parte Nakashima, 93 U.S.P.Q.2d 1834, 1837 (BPAI 2010) (informative) (explaining that arguments and evidence not presented timely in the principal brief, will not be considered when filed in a Reply Brief, absent a showing of good cause explaining why the argument could not have been presented in the principal brief); Ex parte Borden, 93 U.S.P.Q.2d 1473, 1474 (BPAI 2010) (informative) ("[T]he reply brief [is not] an opportunity to make arguments that could have been made in the principal brief on appeal to rebut the Examiner's rejections, but were not.").

Moreover even if we were to consider Appellant's untimely arguments, we do not find them persuasive of Examiner error. As an initial matter, whether Moriarty is used for a different purpose is not persuasive. Our reviewing court guides it is irrelevant that the prior art and the present invention may have different purposes. See Nat'l Steel Car, Ltd. v. Canadian Pac. Ry., Ltd., 357 F.3d 1319, 1339 (Fed. Cir. 2004) ("A finding that two inventions were designed to resolve different problems . . . is insufficient to demonstrate that one invention teaches away from another."). That is, it is sufficient that references suggest doing what Appellant did, although the Appellant's particular purpose was different from that of the references. In re Heck, 699 F.2d 1331, 1333 (Fed. Cir. 1983) (citing In re Gershon, 372 F.2d 535, 538-39 (CCPA 1967)). "Obviousness is not to be...