Ex Parte Bodsworth et al

Board of Patent Appeals and Interferences

Sep 9, 2010

09906566 - (D) (B.P.A.I. Sep. 9, 2010)

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APPLICATION NO.
EXAMINER
NAJARIAN, LENA
091906,566 07/16/2001 Andrew William Bodsworth UHGI:421US/11000989 4676
FILING DATE
I ARTUNIT I PAPERNUMBER I
FIRST NAMED INVENTOR
Please find below andlor attached an Office communication concerning this application or proceeding.
NOTIFICATION DATE
The time period for reply, if any, is set in the attached communication.
ATTORNEY DOCKET NO.
DELIVERY MODE
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
aopatent @ fulbright.com
CONFIRMATION NO.
09/13/2010 ELECTRONIC
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
Ex parte ANDREW WILLIAM BODSWORTH,
KELVIN ACKFORD, and
MATTHEW OLIVER BERRYMAN
Appeal 2009-006977
Application 091906,566
Technology Center 3600
Before MURRIEL E. CRAWFORD, ANTON W. FETTING, and
JOSEPH A. FISCHETTI, Administrative Patent Judges.
FETTING, Administrative Patent Judge.
1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. 5 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. 5 41.52, begins to run from the "MAIL DATE"
(paper delivery mode) or the "NOTIFICATION DATE" (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.
Appeal 2009-006977
Application 091906,566
STATEMENT OF THE CASE
Andrew William Bodsworth, Kelvin Ackford, and Matthew Oliver
Berryman (Appellants) seek review under 35 U.S.C. 5 134 (2002) of a final
rejection of claims 1-26, the only claims pending in the application on
appeal.
We have jurisdiction over the appeal pursuant to 35 U.S.C. 5 6(b)
(2002).
We AFFIRM.
THE INVENTION
The Appellants invented a computer-based system for minimizing the
cost of prescribing while maintaining therapeutic effectiveness, and utilizing
the most recent, available data. Specification ¶ 0002.
An understanding of the invention can be derived from a reading of
exemplary claim 1, which is reproduced below [bracketed matter and some
paragraphing added].
1. A system to supply a medical practitioner with possible
alternatives to a proposed prescription, the system comprising
2 Our decision will make reference to the Appellants' Appeal Brief ("App.
Br.," filed October 8, 2008) and Reply Brief ("Reply Br.," filed January 9,
2009), and the Examiner's Answer ("Ans.," mailed November 10, 2008),
and Final Rejection ("Final Rej.," mailed April 15, 2008).
Appeal 2009-006977
Application 091906,566
[I] a means to print a prescription entered by a medical
practitioner in response to indicating the proposed prescription
or an alternative,
[2] means to automatically interrupt instructions of said
means to print said prescription and compare said prescription
to a database of prescriptions upon input of said prescription to
the system,
[3] means to select from said database the proposed
prescription and any possible alternative thereto,
[4] means to present an alternative prescription to the
practitioner, and
[5] means to automatically supply further medical or cost
information to the practitioner regarding the alternatives,
whereby the practitioner may choose between his proposed
prescription and any alternative presented to him,
[5] means to permit the practitioner to enter a prescription
selected from the proposed or an alternative prescription, and
[6] means to automatically resume the instructions of the
means to print the selected prescription.
THE REJECTIONS
The Examiner relies upon the following prior art:
Campbell et al. US 6,208,974 B l Mar. 27, 2001
Suzuki et al. US 6,213,652 B l Apr. 10,2001
Schrier et al. US 6,317,719 B l Nov. 13,2001
Oscar et al. US 200110037216 A1 Nov. 1,2001
Mayaud US 200210042715 A1 Apr. 11,2002
Appeal 2009-006977
Application 091906,566
Claims 1-5, 8, 10, and 12 stand rejected under 35 U.S.C. 5 103(a) as
unpatentable over Mayaud, Schrier, and Suzuki.
Claims 13-16, 18-19, and 26 stand rejected under 35 U.S.C. 5 103(a) as
unpatentable over Mayaud and Schrier.
Claims 6-7 and 9 stand rejected under 35 U.S.C. 5 103(a) as
unpatentable over Mayaud, Schrier, Suzuki, and Oscar.
Claim 17 stands rejected under 35 U.S.C. 5 103(a) as unpatentable over
Mayaud, Schrier, and Oscar.
Claim 11 stands rejected under 35 U.S.C. 5 103(a) as unpatentable over
Mayaud, Schrier, Suzuki, Oscar, and Campbell.
Claims 20-25 stand rejected under 35 U.S.C. 5 103(a) as unpatentable
over Mayaud, Schrier, Oscar, and Campbell.
ISSUES
The issue of whether the Examiner erred in rejecting claims 1-5, 8, 10,
and 12 under 35 U.S.C. 5 103(a) as unpatentable over Mayaud, Schrier, and
Suzuki turns on whether Schrier and Mayaud describe automatically
providing cost and alternative medication information and whether Mayaud
further describes that updating is done online, in real-time, and at regularly.
The issue of whether the Examiner erred in rejecting claims 13-16, 18-
19, and 26 under 35 U.S.C. 5 103(a) as unpatentable over Mayaud and
Schrier turns on whether the Appellants' arguments in support of claim 1 are
found persuasive.
The issue of whether the Examiner erred in rejecting claims 6-7 and 9
under 35 U.S.C. 5 103(a) as unpatentable over Mayaud, Schrier, Suzuki, and
Appeal 2009-006977
Application 091906,566
Oscar turns on whether Oscar describes the updating means of claim 2
comprises suitable preprogrammed means or a CD-ROM.
The issue of whether the Examiner erred in rejecting claim 17 under 35
U.S.C. 5 103(a) as unpatentable over Mayaud, Schrier, and Oscar turns on
whether the Appellants' arguments in support of claim 6 are found
persuasive.
The issue of whether the Examiner erred in rejecting claim 11 under 35
U.S.C. 5 103(a) as unpatentable over Mayaud, Schrier, Suzuki, Oscar, and
Campbell turns on whether Oscar and Campbell describe a means to
calculate any savings made when the practitioner does choose an alternative
prescription and means to record the savings in a further database.
The issue of whether the Examiner erred in rejecting claims 20-25 under
35 U.S.C. 5 103(a) as unpatentable over Mayaud, Schrier, Oscar, and
Campbell turns on whether Mayaud, Schrier, Oscar, and Campbell describe
the claimed reporting functionality.
FACTS PERTINENT TO THE ISSUES
The following enumerated Findings of Fact (FF) are believed to be
supported by a preponderance of the evidence.
Facts Related to the Prior Art
Mayaud
01. Mayaud is directed to professional data management systems
useful in the production of product specification documents such
as prescriptions, service, or parts orders. Mayaud ¶ 000 1.
Appeal 2009-006977
Application 091906,566
02. Mayaud describes a system that receives input from a user on a
user customizable entry screen. Mayaud ¶ 105. The system
includes a drug list, where the drugs are classified according to a
patient condition for which the drugs are effective and an onscreen
drug selection lists multiple drugs for treating each patient
problem. Mayaud ¶ 0027. Alternative drugs may be presented to
a user based on the user's historical prescription activity or a
wider base of historical prescription activity, which could be
nationally or regionally defined or derived from a drugs benefit
house, health maintenance organization, hospital, or other
appropriate institution. Mayaud ¶ 0037. Drug suggestions are
further refined into categories such as relative cost, generic or
brand name. Mayaud ¶ 0038. The system maintains updated
databases on drugs and drug formulary, where updates are
automatically posted across the network and are updated at
frequent intervals. Mayaud ¶'s 0272-0273 and 0369. The system
provides a physician with all available relevant prescribing
information on drugs. Mayaud ¶ 0218. The system is adaptive
such that more frequently prescribed drugs or more frequently
encountered conditions by a physician can be presented to the user
physician in a more prominent manner than those historically less
common. Mayaud ¶ 0 107. The prescription management system
has a built-in, online, statistical reporting functions enabling a
physician user to review theirs, or others, historical experiences
with a particular drug or condition and providing online historical
Appeal 2009-006977
Application 091906,566
review of any other activities or data entrusted to the system.
Mayaud ¶ 01 1 1.
Schrier
03. Schrier is directed to systems and methods for providing
patient-specific drug information. Schrier 1 : 1 1- 12.
04. The system includes a main window for a drug that comprises
several buttons available for a user to select. Schrier 5:25-35 and
Fig. 2. A cost comparison button provides the user with cost
comparison information. Schrier 1 1 :3 1-33. The system extracts a
set of alternative drugs that are commonly used for treating the
patient's condition. Schrier 1 1 :33-36. Drug information is stored
in a structure that is easy to update the drug information. Schrier
21: 1-5.
Suzuki
05. Suzuki is directed to a job scheduling system which schedules
job requests issued from a terminal using a queue and requests a
job execution section to carry out printing processing by passing
the jobs to the job execution section. Suzuki 1 :6-10.
06. Suzuki describes a system where a job processor is capable of
improving processing efficiency by effecting the interruption and
resumption of print processing on a job-by-job basis as well as
easily modifying attributes of a job retained in a queue and
cancelling a specific document included in a one-job
multidocument. Suzuki 5 :34-40.
Appeal 2009-006977
Application 091906,566
Oscar
07. Oscar is directed to a system and method for managing
pharmacy benefits to permit costs to be reduced. Oscar ¶ 0003.
08. Oscar describes a management server that has price information
on related drugs in various classes and a processing module for
correlating claim information with the benefits plan structure
information and the formulary information to identify drugs
dispensed to patients, expenses associated with the drugs in
accordance with the pharmacy benefits plan structure information,
alternative drugs in the same class as the drugs, and expenses
associated with the alternative drugs. Oscar ¶ 0016. Users are
presented with drug cost information and are further presented
with cost saving alternatives. Oscar ¶ 0052. Oscar further
describes the storage of information on hard disks and CD Rom
drives and the transfer of information through downloading
through a database query or a file transfer. Oscar ¶ 0066.
Campbell
09. Campbell is directed to a computer-implemented method for
managing and enrolling new clients in wellness plans. Campbell
1:6-7.
10. The wellness plan stores product and service lists associated
with a particular plan level and type. Campbell 25:3-6. The
product lists include the regular price for an item so that the
wellness plan can estimate cost savings for patient records during
patient visits. Campbell 25:9-24.
Appeal 2009-006977
Application 091906,566
ANALYSIS
Claims 1-5, 8, 10, and 12 rejected under 35 U.S.C. § 103(a) as
unpatentable over Mayaud, Schrier, and Suzuki
The Appellants first contend that (1) Schrier fails to describe
automatically supplying further medical or cost information to the
practitioner regarding the alternative prescription, as per claim 1. App. Br.
12-13 and Reply Br. 2. The Appellants specifically argue that Schrier
requires that a user actively seek out information and therefore does not
automatically supply information. App. Br. 12- 13 and Reply Br. 2. We
disagree with the Appellants. Claim 1 requires automatically supplying
further medical or cost information to the practitioner regarding the
alternatives medications. Claim 1 does not impose any further limitations on
the step being automated or the nature of such automation. As such, this
limitation can be reasonably construed to encompass automatically
supplying medical and cost information upon the user entering a prescription
for a medication. Although the Appellants argue that such a construction is
improperly reading limitations from the specification (Reply Br. 2), the
Appellants fail to provide any rationale that demonstrates that such a claim
construction is unreasonable.
Schrier describes a system that provides detailed information regarding a
medication. FF 03-04. Schrier further describes that a user may select a
cost comparison button that provides the user with information regarding
alternative medications used to treat the patient's condition. FF 04. In other
words, Schrier describes automatically providing alternative medications
and alternative medication information, including cost information, to the
Appeal 2009-006977
Application 091906,566
medication entered by the user. Mayaud also describes a system that
provides a user with a list of medications and medications cost information
that are used to treat specific patient conditions. FF 02. That is, a user
enters a patient's condition and the system automatically retrieves a list of
medications used to treat that condition and displays cost information for the
listed medications. As such, Schrier and Mayaud describe automatically
supplying further medical or cost information to the practitioner regarding
the alternatives medications.
The Appellants also contend that (2) Mayaud fails to describe (a) the
claim 2 updating means comprises an online means as per claim 3, (b) the
database of claim 3 is updated on a real-time basis, as new information
becomes available to a central source as per claim 4, and (c) the database is
updated periodically as per claim 5. App. Br. 13- 15 and Reply Br. 3. We
disagree with the Appellants. Mayaud describes that medication lists are
maintained in databases and updates to these databases are automatically
posted across a network. FF 02. This is done in order to provide physicians
with the most up to date information on medications. FF 02. As such,
Mayaud describes that the updates are performed online, as new information
becomes available, and the information is available immediately so that
physicians can have the most current information available. The Appellants
further argue that posting updates across a network is not "online" (Reply
Br. 3), however the claims to not limit the meaning of the term "online" nor
does the specification provide a special definition for "online." As such, the
term "online" can be reasonable construed to mean being connected to a
network. Therefore, Mayaud describes that updates are "online."
Appeal 2009-006977
Application 091906,566
Claims 13-16, 18-19, and 26 rejected under 35 U.S. C. § 103(a) as
unpatentable over Mayaud and Schrier
The Appellants contend that claims 13 and 15-16 are allowable for the
same reasons as claims 1 and 3-4. App. Br. 13-15. We disagree with the
Appellants. The Appellants' arguments supra were not found persuasive
and are not found persuasive here for the same reasons.
Claims 6- 7 and 9 rejected under 35 U.S. C. § 103(a) as unpatentable
over Mayaud, Schrier, Suzuki, and Oscar
The Appellants first contend that (1) claims 6-7 and 9 are allowable for
the same reasons asserted in support of claims 1-5, 8, 10, and 12. App. Br.
15. We disagree with the Appellants. The Appellants' arguments supra
were not found persuasive and are not found persuasive here for the same
reasons.
The Appellants further contend that (2) Oscar fails to describe the
updating means of claim 2 comprises suitable preprogrammed means or a
CD-ROM as per claims 6-7. App. Br. 16 and Reply Br. 4. We disagree with
the Appellants. Mayaud describes a system that uses databases that store
medication lists and these databases are updated from data sources across the
network at frequent intervals with relevant information. FF 02. Schrier also
describes a system that provides alternative drug information and the drug
information is stored in such a way that it is easily updated. FF 04. Oscar
describes the storage of information on hard disks or CD Rom drives and the
downloading of information through a database query or a file transfer. FF
08. As such, Mayaud and Schrier describe the updating of information
through a preprogrammed means of a network at frequent intervals and
Appeal 2009-006977
Application 091906,566
Oscar describes that this downloading or transfer of information can be
down through a database query or file transfer. Oscar further describes the
use of CD Roms for the storage and maintenance of information or
databases and therefore the combination of Mayaud, Schrier, and Oscar
describe the updating means is a preprogrammed means or a CD-Rom.
Claim 17 rejected under 35 U.S.C. § 103(a) as unpatentable over
Mayaud, Schrier, and Oscar
The Appellants contend that claim 17 is allowable for the same reasons
asserted in support of claim 6. App. Br. 16. We disagree with the
Appellants. The Appellants' arguments supra were not found persuasive
and are not found persuasive here for the same reasons.
Claim 11 rejected under 35 U.S.C. § 103(a) as unpatentable over
Mayaud, Schrier, Suzuki, Oscar, and Campbell
The Appellants contend that Oscar and Campbell fail to describe a
means to calculate any savings made when the practitioner does choose an
alternative prescription and means to record the savings in a further
database. App. Br. 17-18 and Reply Br. 5-6. We disagree with the
Appellants. Oscar describes a pharmacy management system that provides a
user with drug cost information and further provides a user with cost saving
alternatives. FF 08. Campbell describes a wellness planning system that
calculates cost savings from retail prices and stores these savings in records
that describe patient visits. FF 10. As such, the combination of Mayaud,
Schrier, Suzuki, Oscar, and Campbell describe the required limitations of
claim 1 1.
Appeal 2009-006977
Application 091906,566
Claims 20-25 rejected under 35 U.S.C. § 103(a) as unpatentable over
Mayaud, Schrier, Oscar, and Campbell
The Appellants first contend that (1) claim 20 is allowable for the same
reasons asserted in support of claim 17. App. Br. 18 and Reply Br. 5-6. We
disagree with the Appellants. The Appellants' arguments supra were not
found persuasive and are not found persuasive here for the same reasons.
The Appellants further contend that (2) Mayaud and Schrier fail to
describe the step of analyzing the further database to establish and report on
the regularity of which selections of alternative prescriptions for an input
prescription are being used and the analyzing is carried out on combined
data from several medical practices, as per claims 22-23. App. Br. 19-20
and Reply Br. 6. We disagree with the Appellants. As discussed supra,
Schrier describes providing a user with a list of alternative medications for
an input prescription. FF 04. Mayaud also describes providing alternative
medications and further describes that the system is adapted such that more
frequently prescribed drugs and more frequently prescribed conditions are
presented to a user. FF 02. Mayaud further describes that other physician
prescription frequency reports are available to the user physician and a
historical perspective of prescriptions can include a wider base, such as
regional or national. FF 02. As such, Mayaud and Schrier describe
analyzing and reporting prescription information on the frequency or
regularity of the selection of alternative prescriptions for the user physician
and other physicians on the system.
The Appellants additionally contend that (3) Mayaud and Oscar fail to
describe the step of analyzing the further database to establish and report on
Appeal 2009-006977
Application 091906,566
cost savings produced by which selections of an alternative prescription for
an input prescription and the analyzing is carried out on combined data for
several medical practices, as per claims 24-25. App. Br. 21 and Reply Br. 6.
We disagree with the Appellants. As discussed supra, Oscar and Campbell
describe determining cost savings based on the selection of alternative
medications and saving the cost saving information. FF 08 and 10. As also
discussed supra, Mayaud describes presenting a user physician with the
frequency or regularity of selecting alternative medications by that physician
or other physician. As such, Mayaud, Oscar, and Campbell describe
analyzing and reporting cost saving information for alternative medication
selection by a user physician and other physicians connected to the system.
CONCLUSIONS OF LAW
The Examiner did not err in rejecting claims 1-5, 8, 10, and 12 under 35
U.S.C. 5 103(a) as unpatentable over Mayaud, Schrier, and Suzuki.
The Examiner did not err in rejecting claims 13- 16, 18- 19, and 26 under
35 U.S.C. 5 103(a) as unpatentable over Mayaud and Schrier.
The Examiner did not err in rejecting claims 6-7 and 9 under 35 U.S.C.
5 103(a) as unpatentable over Mayaud, Schrier, Suzuki, and Oscar.
The Examiner did not err in rejecting claim 17 under 35 U.S.C. 5 103(a)
as unpatentable over Mayaud, Schrier, and Oscar.
The Examiner did not err in rejecting claim 1 1 under 35 U.S.C. 5 103(a)
as unpatentable over Mayaud, Schrier, Suzuki, Oscar, and Campbell.
The Examiner did not err in rejecting claims 20-25 under 35 U.S.C.
5 103(a) as unpatentable over Mayaud, Schrier, Oscar, and Campbell.
Appeal 2009-006977
Application 091906,566
DECISION
To summarize, our decision is as follows:
The rejection of claims 1-5, 8, 10, and 12 under 35 U.S.C. 5 103(a) as
unpatentable over Mayaud, Schrier, and Suzuki is sustained.
The rejection of claims 13-16, 18-19, and 26 under 35 U.S.C. 5 103(a)
as unpatentable over Mayaud and Schrier is sustained.
The rejection of claims 6-7 and 9 under 35 U.S.C. 5 103(a) as
unpatentable over Mayaud, Schrier, Suzuki, and Oscar is sustained.
The rejection of claim 17 under 35 U.S.C. 5 103(a) as unpatentable
over Mayaud, Schrier, and Oscar is sustained.
The rejection of claim 11 under 35 U.S.C. 5 103(a) as unpatentable
over Mayaud, Schrier, Suzuki, Oscar, and Campbell is sustained.
The rejection of claims 20-25 under 35 U.S.C. 5 103(a) as
unpatentable over Mayaud, Schrier, Oscar, and Campbell is sustained.
No time period for taking any subsequent action in connection with this
appeal may be extended under 37 C.F.R. 5 1.136(a). See 37 C.F.R.
5 1.136(a)(l)(iv) (2007).
AFFIRMED
mev
Appeal 2009-006977
Application 091906,566
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2 FULBRIGHT & JAWORSKI L.L.P.
3 600 CONGRESS AVE.
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