Ex Parte Blumenfeld

Board of Patent Appeals and Interferences

Jan 21, 2009

10118369 (B.P.A.I. Jan. 21, 2009)

1
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte TRACY HARMON BLUMENFELD
____________

Appeal 2008-3771
Application 10/118,369
Technology Center 3600
____________

Decided: January 21, 2009
____________

Before WILLIAM F. PATE, III, HUBERT C. LORIN, and
JOSEPH A. FISCHETTI, Administrative Patent Judges.

LORIN, Administrative Patent Judge.

DECISION ON REQUEST FOR REHEARING

The Appellant filed a Request for Rehearing under 37 C.F.R. § 41.52
(filed Nov. 10, 2008) of the Decision on Appeal (mailed Sep. 8, 2008).
Appeal 2008-3771
Application 10/118,369

2
In the Decision on Appeal, the Board affirmed the rejection of claims
1, 3-12, 14-21, and 28-31 under 35 U.S.C. §103(a) as being unpatentable
over Benigno and Knight.
As discussed in the Decision on Appeal, the claimed invention is
directed to a method for evaluating the performance and progress of research
trials and more specifically to providing benchmark metrics in real time.
(Decision 2, citing the Specification 1:3-5.) Claim 1, the claim selected to
represent the claims on appeal, sets forth steps “for permitting a sponsor of
an activity to contact a plurality of potential participants in the activity and
for monitoring progress of the activity,” involving storing information
concerning potential participants, storing information submitted by the
sponsor concerning the activity; selecting a participant; storing information
concerning the progress of the activity and displaying some or all of the
information at least to the selected participant; and automatically calculating
benchmarks concerning the progress of the activity once the participant is
selected. The last recited step in claim 1, the subject matter of which is here
at issue, is “g. displaying some or all of the benchmarks at least to the at
least one participant.”
As to this last step of claim 1, the Appellant had argued that “[t]here is
no teaching or suggestion to display the benchmarks to the patient.” (App.
Br. 6; see Decision 8.) We found that Benigno [0025] describes its system as
one which allows a caregiver, such as a doctor or nurse, to review a
proposed clinical pathway and that Benigno [0113] describes its system as
one which can determine optimal clinical pathways based on various criteria
developed from a patient’s history. (Decision 4, Findings of Fact 2 and 3.)
The Appellant conceded that Benigno teaches displaying benchmarks to a
Appeal 2008-3771
Application 10/118,369

3
caretaker or nurse, or to unspecified parties. (Decision 8, referring to App.
Br. 5. and Reply Br. 2-3.) But the Appellant did not find that “the limitation
of step (g) [read] on paragraphs of [Benigno] that do not teach or even
vaguely suggest displaying any benchmarks to the patient.” (App. Br. 5, see
Decision 8).
We responded as follows. First, we found that “[o]ne of ordinary skill
in the art of medical care would have known that most, if not all, caregivers
share health-related information they have gathered on a patient with that
patient herself.” (Decision 5, Finding of Fact 7.) Then, we addressed the
Appellant’s argument.
If we understand the Appellant’s argument
correctly, the Appellant is saying that Benigno,
which describes displaying benchmarks to a nurse
or doctor … would lead one of ordinary skill in the
art to display the benchmarks to the nurse or
doctor but not to the patient. We are not persuaded
as to error in the rejection by this argument. In our
view, the argument falls in the face of common
sense.
Benigno describes a method for determining
the clinical pathways that are optimal for a patient
depending on that patient’s history. (FF 3.)
Patient information is gathered and evaluated
according to criteria for determining an optimal
clinical pathway for the patient and that optimal
clinical pathway is then communicated. Benigno
does not limit communication of the optimal
clinical pathway to nurses and doctors, although
Benigno mentions nurses and doctors as the
caregivers who communicate with the system that
determines the optimal clinical pathways. (FF 2
and 3.) Clearly, the optimal clinical pathway for a
patient must be communicated to a caregiver so
Appeal 2008-3771
Application 10/118,369

4
that the patient may be cared for consistent with
the determined optimal clinical pathway. But there
is nothing in Benigno that limits display of the
determined optimal clinical pathway to a
caregiver. Most if not all caregivers share health-
related information they have gathered on a patient
with that patient herself. That is notoriously well
known in the field of medical care. (FF 7.) One of
ordinary skill in the art reading Benigno alone
would understand its scope and content to be such
that it would cover displaying the optimal clinical
pathways to the patient involved. That Benigno
should be read to suggest that benchmarks be
displayed only to nurses and doctors, and not to
patients, even where a nurse or doctor may be the
very patient being monitored, presumes one of
ordinary skill in the art lacks the common sense to
understand that caregivers share patient
information with their patients. That is not a
presumption we believe can be supported by
objective evidence, especially given that “[a]
person of ordinary skill is also a person of ordinary
creativity, not an automaton.” KSR, 127 S.Ct. at
1742.
Decision 8-9.
We have reviewed the Request for Reconsideration. We see nothing
in the Request for Reconsideration that would give us cause to change or
modify our position.
The Request for Reconsideration states:
In response to the Decision on Appeal, the
Appellant respectfully notes that the display of
some sort of health-related information with the
patient, no matter how well known in the art, is not
the same as the display of benchmarks to the
patient. First, what the reference merely fails to
exclude is not the test for obviousness; otherwise,
Appeal 2008-3771
Application 10/118,369

5
a species could never be patentable over the genus.
Second the Appellant respectfully submits that the
leap from health-related information in general to
the benchmarks in particular is unwarranted in
light of the applied prior art. The Decision on
Appeal characterizes both of the applied references
as being directed to clinical trials, but does not
explain why benchmarks concerning the progress
of a clinical trial would be of the slightest use or
interest to the patient. Therefore, the Appellant
respectfully maintains her argument that the
combination of references asserted against the
present claimed invention would have lacked that
feature and that the argument set forth in the
Decision on Appeal does not demonstrate
otherwise.
Request for Reconsideration 2-3.
The Appellant argues that “the display of some sort of health-related
information with the patient, no matter how well known in the art, is not the
same as the display of benchmarks to the patient.” Request for
Reconsideration 2. We are not persuaded by this argument that we
misapprehended or overlooked a point in reaching our decision to affirm the
rejection. We never stated that communicating health-related information to
patients is necessarily the same as or sufficient evidence to anticipate sharing
benchmarks with patients. What we stated was that
[m]ost if not all caregivers share health-related
information they have gathered on a patient with
that patient herself. That is notoriously well
known in the field of medical care. (FF 7.) One of
ordinary skill in the art reading Benigno alone
would understand its scope and content to be such
that it would cover displaying the optimal clinical
pathways to the patient involved. That Benigno
should be read to suggest that benchmarks be
Appeal 2008-3771
Application 10/118,369

6
displayed only to nurses and doctors, and not to
patients, even where a nurse or doctor may be the
very patient being monitored, presumes one of
ordinary skill in the art lacks the common sense to
understand that caregivers share patient
information with their patients.

Decision 9. Accordingly, we did not rely solely on the fact that caregivers
share health-related information. Our decision that one of ordinary skill
would be led to share benchmarks with patients relied on (1) caregivers
share health-related information with patients, (2) Benigno teaches
displaying benchmarks to a caretaker or nurse, or to unspecified parties, and
(3) the common sense of one of ordinary skill in the art.
The Appellant further argues that “the reference [i.e., Benigno] merely
fails to exclude is not the test for obviousness; otherwise, a species could
never be patentable over the genus.” Request for Reconsideration 2. We are
not persuaded by this argument that we misapprehended or overlooked a
point in reaching our decision to affirm the rejection. We never stated that
Benigno’s failure to disclose excluding sharing benchmarks with patients
necessarily renders obvious the sharing of that information with patients. In
stating that “nothing in Benigno [ ] limits display of the determined optimal
clinical pathway to a caregiver,” we were simply making an additional point
in support of the obviousness determination, one not too dissimilar to the
point the Appellant made (App. Br. 5: “the cited paragraphs of Benigno et al
teach displaying such benchmarks … to unspecified parties.”). Emphasis
added.

Appeal 2008-3771
Application 10/118,369

7
Finally, the Appellant argues that “the leap from health-related
information in general to the benchmarks in particular is unwarranted in
light of the applied prior art. The Decision on Appeal characterizes both of
the applied references as being directed to clinical trials, but does not explain
why benchmarks concerning the progress of a clinical trial would be of the
slightest use or interest to the patient.” Request for Reconsideration 2. We
are not persuaded by this argument that we misapprehended or overlooked a
point in reaching our decision to affirm the rejection. The Appellant’s
argument appears to suggest that there is something special about the
claimed “benchmarks” that would exclude them from the type of general
health-related information that might be shared with patients. But the
Specification nowhere defines “benchmarks.” The Specification presents
numerous examples (see Specification 13:23 – 14:11) but no explicit
definition. Accordingly, the claim term “benchmarks” should be given a
meaning consistent with its ordinary and customary usage. In that regard,
“benchmarks” means is “a standard or point of reference in measuring or
judging quality, vale, etc..” (See Webster’s New World Dictionary 129 (3rd
Ed. 1988.)(Entry 2 for “benchmark.”) Thus, “benchmarks” is a broad term
encompassing any reference against which a judgment is made. In that
respect, benchmarks are often included as part of any shared health-related
information. Health-related information is often of little use to a patient
without an understanding of the benchmarks against which the shared
information can be judged. For example, when a patient is told his
temperature is high, 98.6 degrees F is a benchmark of interest to the patient.
Contrary to the Appellant’s view, we think one of ordinary skill in the art
would view benchmarks concerning health-related information, for example
Appeal 2008-3771
Application 10/118,369

8
for judging the progress of a clinical trial, to be of great interest to the
patient.
We have considered Appellant’s arguments.
For the foregoing reasons, we find them unpersuasive as to error in
the Decision to affirm the rejection of claims 1, 3-12, 14-21, and 28-31
under 35 U.S.C. §103(a) as being unpatentable over Benigno and Knight.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 CFR § 1.136(a).
DENIED

vsh

BLANK ROME LLP
WATERGATE
600 NEW HAMPSHIRE AVENUE, N.W.
WASHINGTON DC 20037