Ex Parte Kerpelman et al

Board of Patent Appeals and Interferences

Feb 6, 2009

09470344 (B.P.A.I. Feb. 6, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE 1
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BEFORE THE BOARD OF PATENT APPEALS 4
AND INTERFERENCES 5
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Ex parte DANIEL I. KERPELMAN, RICHARD L. FROWEIN, HUBERT 8
ANTHONY ZETTEL, JAMES F. KOHLI, and JOHN M. HEINEN 9
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Appeal 2009-0393 12
Application 09/470,344 13
Technology Center 3600 14
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Decided:1 February 6, 2009 17
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Before ANTON W. FETTING, JOSEPH A. FISCHETTI, and BIBHU R. 20
MOHANTY, Administrative Patent Judges. 21
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FETTING, Administrative Patent Judge. 23
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DECISION ON APPEAL 26
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STATEMENT OF THE CASE28

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, begins to run from the decided date
shown on this page of the decision. The time period does not run from the
Mail Date (paper delivery) or Notification Date (electronic delivery).
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Application 09/470,344

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Daniel I. Kerpelman, Richard L. Frowein, Hubert Anthony Zettel, 1
James F. Kohli, and John M. Heinen (Appellants) seek review under 2
35 U.S.C. § 134 of a final rejection of claims 1-3 and 5-60, the only claims 3
pending in the application on appeal. 4
We have jurisdiction over the appeal pursuant to 35 U.S.C. § 6(b) 5
(2002). 6
7
We REVERSE. 8
The Appellants invented a technique for exchanging information 9
within a medical facility via an improved topology linking various 10
equipment and networks into a data exchange infrastructure (Specification 11
1:6-10). 12
An understanding of the invention can be derived from a reading of 13
exemplary claim 1, which is reproduced below [bracketed matter and some 14
paragraphing added]. 15
1. A medical facility data communications system, the system 16
comprising: 17
[1] an internal data communications network; 18
[2] a plurality of clients coupled to the internal network and 19
uniquely addressed on the internal network, 20
the clients include a plurality of medical diagnostic 21
imaging modalities configured to produce image data; 22
and 23
[3] a data communications control system coupled to the 24
internal network for 25
receiving client data from the clients, 26
transmitting client data to a remote service provider, 27
receiving addressed data from the remote service 28
provider, and 29
distributing the addressed data to the clients. 30
31
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This appeal arises from the Examiner’s Final Rejection, mailed July 1
24, 2007. The Appellants filed an Appeal Brief in support of the appeal on 2
September 24, 2007. An Examiner’s Answer to the Appeal Brief was 3
mailed on December 11, 2007. A Reply Brief was filed on February 11, 4
2008. 5
PRIOR ART 6
The Examiner relies upon the following prior art: 7
DiRienzo US 6,006,191 Dec. 21, 1999 8
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REJECTION 10
Claims 1-3 and 5-60 stand rejected under 35 U.S.C. § 103(a) as 11
unpatentable over DiRenzo. 12
13
ISSUES 14
The issue pertinent to this appeal is whether the Appellants have 15
sustained their burden of showing that the Examiner erred in rejecting claims 16
1-3 and 5-60 under 35 U.S.C. § 103(a) as unpatentable over DiRenzo. 17
The pertinent issue turns on whether DiRienzo describes a plurality of 18
medical diagnostic imaging modalities coupled to a data communications 19
control system that are uniquely addressed on an internal network. 20
21
FACTS PERTINENT TO THE ISSUES 22
The following enumerated Findings of Fact (FF) are believed to be 23
supported by a preponderance of the evidence. 24
DiRienzo 25
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01. DiRienzo is directed to directing diagnostic medical images 1
from patients to diagnostic physicians while producing 2
decentralized diagnostic medical image distribution with control 3
totally in the hands of the patients and the providers (DiRienzo 4
1:13-18). 5
02. DiRienzo identifies what a modality is in the context of medical 6
imaging. DiRienzo describes that modalities are diagnostic 7
instrumentalities to aid the physician in identification of the 8
patient's medical problem. These modalities include X-Ray, 9
EKG, EEG, MRI, CT, NM, PET, blood tests, microscope images, 10
etc. Each of these modalities produces a characteristic diagnostic 11
medical image (DiRienzo 2:11-16). 12
03. DiRienzo portrays the network for its system in Fig. 3, which 13
illustrates a clearinghouse computer (CHC) connected to an 14
imaging center by a communication link that may be a local area 15
network or metropolitan area network. The CHC is also 16
connected to a physician and gatekeeper computer by modem 17
linked communication channels (DiRienzo 18:37 – 19:64). 18
Facts Related To Differences Between The Claimed Subject Matter And 19
The Prior Art 20
21
04. DiRienzo does not describe multiple medical diagnostic 22
imaging devices connected in an internal network, but only shows 23
an imaging center connected to a clearinghouse computer. 24
05. DiRienzo does not describe a data communications control 25
system that distributes data to individually addressed clients in an 26
internal network from a remote system. 27
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Facts Related To The Level Of Skill In The Art 1
06. Neither the Examiner nor the Appellants has addressed the level 2
of ordinary skill in the pertinent arts of systems analysis and 3
programming, medical diagnostic system design, digital network 4
design, or digital communication control systems design. We will 5
therefore consider the cited prior art as representative of the level 6
of ordinary skill in the art. See Okajima v. Bourdeau, 261 F.3d 7
1350, 1355 (Fed. Cir. 2001) (“[T]he absence of specific findings 8
on the level of skill in the art does not give rise to reversible error 9
‘where the prior art itself reflects an appropriate level and a need 10
for testimony is not shown’”) (quoting Litton Indus. Prods., Inc. v. 11
Solid State Sys. Corp., 755 F.2d 158, 163 (Fed. Cir. 1985). 12
Facts Related To Secondary Considerations 13
07. There is no evidence on record of secondary considerations of 14
non-obviousness for our consideration. 15
16
PRINCIPLES OF LAW 17
Claim Construction 18
During examination of a patent application, pending claims are 19
given their broadest reasonable construction consistent with the 20
specification. In re Prater, 415 F.2d 1393, 1404-05 (CCPA 1969); In 21
re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). 22
Limitations appearing in the specification but not recited in the claim 23
are not read into the claim. E-Pass Techs., Inc. v. 3Com Corp., 343 F.3d 24
1364, 1369 (Fed. Cir. 2003) (claims must be interpreted “in view of the 25
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specification” without importing limitations from the specification into the 1
claims unnecessarily). 2
Although a patent applicant is entitled to be his or her own 3
lexicographer of patent claim terms, in ex parte prosecution it must be 4
within limits. In re Corr, 347 F.2d 578, 580 (CCPA 1965). The applicant 5
must do so by placing such definitions in the specification with sufficient 6
clarity to provide a person of ordinary skill in the art with clear and precise 7
notice of the meaning that is to be construed. See also In re Paulsen, 30 8
F.3d 1475, 1480 (Fed. Cir. 1994) (although an inventor is free to define the 9
specific terms used to describe the invention, this must be done with 10
reasonable clarity, deliberateness, and precision; where an inventor chooses 11
to give terms uncommon meanings, the inventor must set out any 12
uncommon definition in some manner within the patent disclosure so as to 13
give one of ordinary skill in the art notice of the change). 14
15
Obviousness 16
A claimed invention is unpatentable if the differences between it and 17
the prior art are “such that the subject matter as a whole would have been 18
obvious at the time the invention was made to a person having ordinary skill 19
in the art.” 35 U.S.C. § 103(a) (2000); KSR Int’l Co. v. Teleflex Inc., 127 S. 20
Ct. 1727, 1729-30 (2007); Graham v. John Deere Co., 383 U.S. 1, 13-14 21
(1966). 22
In Graham, the Court held that the obviousness analysis is bottomed 23
on several basic factual inquiries: “[(1)] the scope and content of the prior art 24
are to be determined; [(2)] differences between the prior art and the claims at 25
issue are to be ascertained; and [(3)] the level of ordinary skill in the 26
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pertinent art resolved.” 383 U.S. at 17. See also KSR, 127 S. Ct. at 1734. 1
“The combination of familiar elements according to known methods is likely 2
to be obvious when it does no more than yield predictable results.” Id. at 3
1739. 4
“When a work is available in one field of endeavor, design incentives 5
and other market forces can prompt variations of it, either in the same field 6
or a different one. If a person of ordinary skill can implement a predictable 7
variation, § 103 likely bars its patentability.” Id. at 1740. 8
“For the same reason, if a technique has been used to improve one 9
device, and a person of ordinary skill in the art would recognize that it would 10
improve similar devices in the same way, using the technique is obvious 11
unless its actual application is beyond his or her skill.” Id. 12
“Under the correct analysis, any need or problem known in the field 13
of endeavor at the time of invention and addressed by the patent can provide 14
a reason for combining the elements in the manner claimed.” Id. at 1742. 15
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ANALYSIS 17
Claims 1-3 and 5-60 rejected under 35 U.S.C. § 103(a) as unpatentable over 18
DiRienzo. 19
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The Appellants argue independent claims 1, 17, 32, 46, and 55 as a 21
group. Accordingly, we select claim 1 as representative of the group. 22
37 C.F.R. § 41.37(c)(1)(vii) (2007). 23
The Examiner found that DiRienzo described the limitation of claim 24
1, except that it did not explicitly refer to a data communications control 25
system. The Examiner found that DiRienzo’s description of the 26
transmission of data between a medical diagnostic facility and a 27
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clearinghouse computer (a remote provider) via a network required a 1
network/communication interface, which is the recited data communication 2
control system, and that one of ordinary skill knew that such a control 3
system assisted in the transmission process by facilitating the reliability of 4
physician accessing and reviewing patient data (Answer 3-4). 5
The Appellants contend that DiRienzo does not describe a plurality of 6
medical diagnostic imaging modalities coupled on an internal network (Br. 7
13: ¶ 1); or a data communications control system (Br. 15: ¶ 2). 8
We agree with the Appellants. The Appellants contend that DiRienzo 9
fails to teach or suggest a plurality of medical diagnostic imaging modalities 10
coupled to and uniquely addressed on an internal network. Instead, 11
DiRienzo only addresses the acquisition of images from health care facilities 12
and by no means discloses a network of medical diagnostic imaging 13
modalities (Br. 13: Bottom ¶). 14
To respond to this we must first construe what a modality is. The 15
Specification provides no definition. DiRienzo however, as a prior art 16
reference portraying the knowledge in the art of medical diagnostic imaging, 17
provides an interpretation. DiRienzo describes that modalities are diagnostic 18
instrumentalities to aid the physician in identification of the patient's medical 19
problem, such as X-Ray, EKG, EEG, MRI, or CT. Each of these modalities 20
produces a characteristic diagnostic medical image (FF 02). 21
The Examiner found that DiRienzo portrayed the internal network in 22
limitation [2] in DiRienzo’s Fig. 3, and taught that many diagnostic 23
instrumentalities produce diagnostic medical images. The Examiner inferred 24
from this that the physician’s office and gatekeeper’s office in DiRienzo Fig. 25
3 would have multiple medical diagnostic imaging modalities (Answer 3-4). 26
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The Examiner went on to find that because DiRienzo describes several 1
different types of networks, that might connect the clients in DiRienzo’s Fig. 2
3, this implied all addresses are unique on such networks (Answer 26). 3
As the Appellants argued, the Examiner’s findings are not supported 4
by DiRienzo. The Examiner finds the internal network in the connection of 5
the clearinghouse computer to the imaging center which may be a local or 6
metropolitan area network in DiRienzo’s Fig. 3 (Answer 3). The Examiner 7
then found the plurality of imaging modalities in the clearinghouse, 8
physician, and gatekeeper computers (id.). But DiRienzo describes the 9
physician and gatekeeper computers as display stations, not medical 10
diagnostic imaging stations, such as CAT or MRI scanners. The only 11
diagnostic imaging modality suggested in DiRienzo’s Fig. 3 is the imaging 12
center, and there are no details to describe whether there are plural devices 13
connected in an internal network within that center. DiRienzo does not 14
describe multiple medical diagnostic imaging devices connected in an 15
internal network, but only shows an imaging center connected to a 16
clearinghouse computer (FF 04). 17
The Examiner then found the data communications control system 18
was obviated rather than present in DiRienzo (Answer 27). DiRienzo shows 19
the link from the remote computers to the clearinghouse computer as modem 20
linked communication channels (FF 03). This does not describe a data 21
communications control system that distributes data to individually 22
addressed clients in an internal network from a remote system (FF 05). 23
Remaining independent claims 17, 32, 46, and 46 require a plurality 24
of medical diagnostic imaging modalities coupled on an internal network, 25
and thus we do not sustain the rejection of those claims for the reasons set 26
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forth above. All of the dependent claims carry these limitations in them by 1
virtue of incorporating the limitations of the independent claims, and their 2
rejections are also in error. The Appellants have sustained their burden of 3
showing that the Examiner erred in rejecting claims 1-3 and 5-60 under 35 4
U.S.C. § 103(a) as unpatentable over DiRienzo. 5
6
CONCLUSIONS OF LAW 7
The Appellants have sustained their burden of showing that the 8
Examiner erred in rejecting claims 1-3 and 5-60 under 35 U.S.C. § 103(a) as 9
unpatentable over the prior art. 10
DECISION 11
To summarize, our decision is as follows: 12
• The rejection of claims 1-3 and 5-60 under 35 U.S.C. § 103(a) as 13
unpatentable over DiRienzo is not sustained. 14
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REVERSED 16
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GE HEALTHCARE 27
c/o FLETCHER YODER, PC 28
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HOUSTON, TX 77269-2289 30
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