Ex Parte Brandt

Board of Patent Appeals and Interferences

Sep 20, 2010

10142470 (B.P.A.I. Sep. 20, 2010)

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.
10/142,470 05/09/2002 Samuel I. Brandt 2001P20047 US01 2515
7590 09/20/2010
Elsa Keller
Intellectual Property Department
Siemens Corporation
186 Wood Avenue South
Iselin, NJ 08830
EXAMINER
MORGAN, ROBERT W
ART UNIT PAPER NUMBER
3626
MAIL DATE DELIVERY MODE
09/20/2010 PAPER
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.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte SAMUEL I. BRANDT
____________

Appeal 2009-010068
Application 10/142,470
Technology Center 3600
____________

Before MURRIEL E. CRAWFORD, JOSEPH A. FISCHETTI, and BIBHU
R. MOHANTY, Administrative Patent Judges.

CRAWFORD, Administrative Patent Judge.

DECISION ON APPEAL1

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 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 2009-010068
Application 10/142,470

2
STATEMENT OF THE CASE
Appellant seeks our review under 35 U.S.C. § 134 (2002) of the
Examiner’s final decision rejecting claims 1 to 20. We have jurisdiction
over the appeal under 35 U.S.C. § 6(b) (2002).
Claim 11 is illustrative:
11. A program storage device readable by a
machine, tangibly embodying a program of
instructions executable by the machine to perform
method steps for providing a displayable list of
services available for order by a healthcare
provider in providing health care to a patient, the
method steps comprising:
automatically deriving search criteria
indicating an identified medical condition of a
patient and a clinically related medical condition
unidentified as a medical condition of said patient
and determined by mapping of said known medical
condition to a clinically related condition using
stored information indicating conditions and
problems of a patient;
automatically applying the search criteria in
searching a database of predetermined services
associated with a plurality of different medical
conditions to identify candidate treatment services
for order by a user in providing health care
addressing a diagnosed medical condition and an
associated medical sub-condition of the particular
patient, said candidate treatment services for order
being for treating said diagnosed medical condition
and said associated medical sub-condition; and
automatically compiling a list of the
identified candidate treatment services.
Appeal 2009-010068
Application 10/142,470

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The reference of record relied upon by the Examiner as evidence of
obviousness is:
Gray US 6,149,585 Nov. 21, 2000
Appellant appeals the following rejections:
1. Claims 1 to 10 under 35 U.S.C. § 101 as being directed to non-
statutory subject matter.
2. Claims 1 to 20 under 35 U.S.C. § 112, first paragraph, as based on
a disclosure that is not enabling.
3. Claims 1 to 4 and 11 to 14 under 35 U.S.C. § 112, second
paragraph, as being indefinite for failing to particularly point out and
distinctly claims the subject matter which the Appellant regards as the
invention.
4. Claims 1 to 20 under 35 U.S.C. § 103(a) as unpatentable over
Gray.

ISSUES
Does the Appellant’s Specification enable the steps of automatically
deriving search criteria and automatically applying the search criteria if the
user initiates the steps?
Are claims 11 to 20 indefinite because the Specification does not
include the phrase “candidate treatment services”?
Does Gray disclose or suggest identifying “candidate treatment
services . . . for treating said diagnosed medical condition”?
Appeal 2009-010068
Application 10/142,470

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FACTUAL FINDINGS
Appellant’s Specification discloses that engine 17 compiles a list of
orderable services for a patient by aggregating and organizing a plurality of
order sets that are associated with a patient’s known medical conditions and
presents a list to the physician based on the patient’s clinical conditions
(Spec. 7). In one embodiment, the method is automatically performed in
response to user command and without manual intervention (Spec. 3). The
list includes candidate services that can be ordered in providing health care
addressing a medical condition of the patient (Spec. 11).
Gray discloses a diagnostic enhancement method and apparatus in
which a list of possible diagnoses is retrieved from a broad set of potential
diagnoses based on predetermined criteria linking observed patient data and
particular diagnoses (col. 5, ll. 44 to 51).

ANALYSIS
The Examiner’s Answer includes a new ground of rejection of claims
1 to 10 under 35 U.S.C. § 101. Our records indicate that Appellants have
failed to respond to the new ground of rejection within two months from the
date of the Answer. Accordingly, the appeal as to claims 1 to 10 is
dismissed. See 37 C.F.R. § 41.39(b) (2010).
We will not sustain the Examiner’s rejection of claims 11 to 20 under
35 U.S.C. § 112, first paragraph. The Examiner questions how a step can be
performed automatically if the user initiates the step. We agree with the
Appellant that the claims recite that search criteria is derived and applied
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Application 10/142,470

5
automatically and as such do not require that the method be initiated without
the actions of the user only that the deriving and applying takes place
automatically. As such, we will not sustain this rejection.
We will not sustain the Examiner’s rejection of claims 11 to 14 under
35 U.S.C. § 112, second paragraph. The Examiner argues that the phrase
“candidate treatment services” is not found in the Specification and thus the
above-referenced claims do not satisfy the requirements of the second
paragraph of 35 U.S.C. The second paragraph of 35 U.S.C. § 112 requires
claims to set out and circumscribe a particular area with a reasonable degree
of precision and particularity. In re Johnson, 558 F.2d 1008, 1015 (CCPA
1977). The Examiner’s argument that the phrase “candidate treatment
services” is not found in the Specification does not establish that the phrase
fails to provide the requisite precision and particularity. Although the exact
phrase is not used in the Specification, the Specification does disclose that
candidate services are provided to address medical conditions of the patient
which is a disclosure that the candidate services include treatment for
medical conditions. In view of this disclosure, it is clear that the treatment
services recited in claim 11 are services to address a medical condition.
We will not sustain the Examiner’s rejection of claims 11 to 20 under
35 U.S.C. § 103(a) because Gray does not disclose the step of identifying
“candidate treatment services . . . for treating said diagnosed medical
condition.” We agree with the Appellant that the disclosure in Gray of
identifying a diagnosis is not identifying a treatment service because the
term “treatment” relates to the application of remedies for a medical
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condition not the diagnosis of a medical condition. In any case, claim 11
clearly recites that the treatment services are “for treating said diagnosed
medical condition” clearly requiring that the candidate services relate to
remedying a medical condition that has already been diagnosed.

DECISION
The appeal as to claims 1 to 10 is dismissed.
We reverse the Examiner’s 35 U.S.C. § 112, first paragraph, § 112,
second paragraph, and § 103(a) rejections.

REVERSED

hh

Elsa Keller
Intellectual Property Department
Siemens Corporation
186 Wood Avenue South
Iselin, NJ 08830