Ex Parte Brimdyr

Board of Patent Appeals and Interferences

Mar 2, 2012

10924504 (B.P.A.I. Mar. 2, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte JOSHUA LOGAN HOWARD BRIMDYR
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Appeal 2010-012373
Application 10/924,504
Technology Center 3600
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Before MURRIEL E. CRAWFORD, ANTON W. FETTING, and
JOSEPH A. FISCHETTI, Administrative Patent Judges.

CRAWFORD, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2010-012373
Application 10/924,504

2
STATEMENT OF THE CASE
Appellant seeks our review under 35 U.S.C. § 134 of the Examiner’s
final decision rejecting claims 1 to 56 and 58. We have jurisdiction over the
appeal under 35 U.S.C. § 6(b).
We REVERSE.
Claim 1 is illustrative:
1. A method for electronically managing patient
referrals, said method comprising in a network of
interconnected computers:
causing a particular computer in the network of
interconnected computers to execute instructions
tied to the particular computer, said instructions
being instructions for submitting a referral request
by a first provider;

causing a particular computer in the network of
interconnected computers to execute instructions
tied to the particular computer, said instructions
being instructions for accepting the referral request
by a second provider;

causing a particular computer in the network of
interconnected computers to execute instructions
tied to the particular computer, said instructions
being instructions for obtaining an insurance
approval of the referral request;

causing a particular computer in the network of
interconnected computers to execute instructions
tied to the particular computer, said instructions
being instructions for importing a medical record
for a patient from a external system and exporting
an updated medical record to the external system;

Appeal 2010-012373
Application 10/924,504

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causing a particular computer in the network of
interconnected computers to execute instructions
tied to the particular computer, said instructions
being instructions for updating the referral request
with diagnostic information; and

causing a particular computer in the network of
interconnected computers to execute instructions
tied to the particular computer, said instructions
being instructions for updating a status of the
referral request.

Appellant appeals the following rejections:
1. Claims 1 to 19 under 35 U.S.C. § 112, second paragraph, as being
indefinite for failing to particularly point out and distinctly claim the
subject matter which Appellant regards as the invention.
2. Claims 1 to 5, 7, 10, 20 to 24, 26, 29, 39 to 43, 47, and 58 under 35
U.S.C. § 103(a) as unpatentable over Saito (US 2002/0026329 A1,
pub. Feb. 28, 2002) in view of Moore (US 2004/0044546 A1, pub.
Mar. 4, 2004).
3. Claims 6, 8, 9, 25, 27, 28, and 44 to 46 under 35 U.S.C. § 103(a) as
unpatentable over Saito in view of Moore and further in view of
Official Notice.
4. Claims 11 to 13, 15 to 19, 30 to 32, 34 to 38, 48 to 50, and 52 to 56
under 35 U.S.C. § 103(a) as unpatentable over Saito in view of Moore
and further in view of O’Rourke (US 2002/0161795 A1, pub. Oct. 31,
2002).
5. Claims 14, 33, and 51 under 35 U.S.C. § 103(a) as unpatentable over
Saito in view of Moore and further in view of O’Rourke and still
further in view of Official Notice.
Appeal 2010-012373
Application 10/924,504

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ANALYSIS
Indefiniteness
The Examiner is of the view that the language in claim 1 of “causing a
particular computer in the network of interconnected computers to execute
instructions tied to the particular computer” is unclear whether these steps
actually happen or are compelled but do not necessarily happen. We agree
with the Appellant that when the claims are read in light of the Specification,
it is clear that the steps actually happen in the method of the invention. For
example, the Specification states on page 6 that the first provider does
indeed submit a referral request and page 8 of the Specification makes it
clear that the referral request is updated. Therefore, in our view, the claims
do set out and circumscribe a particular area with a reasonable degree of
precision and particularity. See In re Johnson, 558 F.2d 1008, 1015 (CCPA
1977). We will not sustain this rejection.

Obviousness
The Appellant argues that Saito does not disclose updating the status
of a referral request. We agree. Appellant’s Specification states that the
status of the referral request is updated when the request is either denied or
approved and that if the request is approved an authorization code is placed
on the request to thereby update the status of the referral request (para. [38];
Fig. 4).
The Examiner relies on Saito for teaching this subject matter and
directs our attention to paragraphs [0115] to [0118]. We agree with the
Appellant that the disclosure of Saito at the above-referenced paragraphs
relates to the updating of the treatment summary and is not related to the
Appeal 2010-012373
Application 10/924,504

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referral request. In addition, although the information on the treatment
summary is updated, there is no disclosure that a status of the treatment
request is updated.
In view of the foregoing, we will not sustain the Examiner’s rejection
of claim 1. We will also not sustain the rejection as is directed to the
remaining claims because these claims also include the requirement of
updating the status of the referral request.

DECISION
The decision of the Examiner is reversed.

REVERSED

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