Ex Parte Burton et al

Patent Trial and Appeal Board

Mar 30, 2016

12907346 (P.T.A.B. Mar. 30, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
12/907,346 10/19/2010 PAUL BURTON
79230 7590 04/01/2016
Law Office of Jim Boice
3839 Bee Cave Road
Suite 201
West Lake Hills, TX 78746
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
END920100107US1 1856
EXAMINER
REYES, REGINALD R
ART UNIT PAPER NUMBER
3686
NOTIFICATION DATE DELIVERY MODE
04/01/2016 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address( es):
J ennifer@BoiceIP.com
Emily@BoiceIP.com
Jim@BoiceIP.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Exparte PAUL BURTON,
ROBERT R. FRIEDLANDER,
RICHARD HENNESSY,
JAMES R. KRAEMER, and
STEPHEN R. ZANDER
Appeal2014-000952
Application 12/907 ,346 1
Technology Center 3600
Before HUBERT C. LORIN, TARA L. HUTCHINGS, and
AMEE A. SHAH, Administrative Patent Judges.
LORIN, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Paul Burton, et al. (Appellants) seek our review under 35 U.S.C.
§ 134 of the Examiner's Final rejection of claims 1-16. We have
jurisdiction under 35 U.S.C. § 6(b) (2002).
1 The Appellants identify International Business Machines Corporation as
the real party in interest. App. Br. 2.
Appeal2014-000952
Application 12/907,346
SUMMARY OF DECISION
We AFFIRM-IN-PART.
THE INVENTION
Claim 1, reproduced below, is illustrative of the subject matter on
appeal.
1. A computer implemented method of identifying a public health
care issue for a specific population based on data from a confederated
public health database, the computer implemented method
compnsmg:
a processor creating a confederated public health database from
multi-disciplinary databases, wherein the multi-disciplinary databases
comprise both a medical database and a non-medical database,
wherein the medical database directly describes a public health issue,
and wherein the non-medical database does not describe the public
health issue;
the processor identifying a health care issue for a specific
population based on data from the confederated public health
database;
the processor creating a public health care plan to address the
health care issue; and
the processor transmitting the public health care plan to a public
health official.
THE REJECTIONS
The Examiner relies upon the following as evidence of
unpatentability:
Schaeffer
Sholl
Liew
US 2002/0107641 Al
US 2006/0161392 Al
US 2007 /0054282 Al
The following rejections are before us for review:
2
Aug. 8,2002
July 20, 2006
Mar. 8, 2007
Appeal2014-000952
Application 12/907,346
1. Claims 1, 4, 5, 8, 9, 12, 13, and 16 are rejected under 35 U.S.C.
§ 102(b) as being anticipated by Sholl.
2. Claims 2, 3, 6, 7, 10, and 11 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Sholl and Schaeffer.
3. Claim 14 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Sholl, Schaeffer, and Liew.2
4. Claim 15 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Sholl and Liew.
ISSUES
Did the Examiner err in rejecting claims 1, 4, 5, 8, 9, 12, 13, and 16
under 35 U.S.C. § 102(b) as being anticipated by Sholl?
Did the Examiner err in rejecting claims 2, 3, 6, 7, 10, and 11 under
35 U.S.C. § 103(a) as being unpatentable over Sholl and Schaeffer,claim 14
as being unpatentable over Sholl, Schaeffer, and Liew, and claim 15 under
35 U.S.C. § 103(a) as being unpatentable over Sholl and Liew?
FINDINGS OF FACT
We rely on the Examiner's factual findings stated in the Answer.
Additional findings of fact may appear in the Analysis below.
2 We treat as inadvertent error the omission of Schaeffer from the statement
of rejection of claim 14, noting this claim depends from claim 3, which is
rejected as unpatentable over Sholl and Schaeffer.
3
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Application 12/907,346
ANALYSIS
Claims 1, 4, 5, 8, 9, 12, 13, and 16 are rejected under 35 U.S.C. § 102(b) as
being anticipated by Sholl.
Claims 1, 5, and 9
The Appellants challenge the rejection of "Claims 1-2, 5---6 and 9-1 O"
under Sholl paragraph 102. App. Br. 7. Of those, only claims 1, 5, and 9
were rejected. Accordingly, we address the challenge only with respect to
claims 1, 5, and 9.
Claims 1, 5, and 9 are the independent claims. The Appellants argued
these claims as a group (App. Br. 7-10). We select claim 1 as the
representative claim for this group, and the remaining claims 5 and 9 stand
or fall with claim 1. 37 C.F.R. § 41.37(c)(l)(iv) (2014).
Claim 1 is directed to a method that employs two databases. The
Appellants argue that one of the databases- claimed as a "non-medical
database [that] does not describe [a] public health issue" - is not described
in Sholl. There is no dispute that Sholl expressly describes databases. See
i-f 47. However, according to the Appellants, "Sholl teaches a system that is
directed to examining and evaluating a food contamination event, which is a
public health issue." App. Br. 9. In other words, the Appellants challenge
the rejection on the ground that the Appellants' "database [which] does not
describe [a] public health issue" does not read on, and thus is not anticipated
by, Sholl's databases that do. Id. IO. The challenge is over the content of
information contained in a database; that is, not about a public health issue
(claims) v. about a public health issue (Sholl).
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Application 12/907,346
The argument is unpersuasive as to error in the rejection because the
limitation in question only claims the content of information. It is matter
claimed for what it communicates; i.e., not about a public health issue, and
thus properly characterized as printed matter. Given that printed matter is
not given patentable weight, the argued-over distinction between the
Appellants' "database [which] does not describe [a] public health issue" and
Sholl' s databases that do is not patentably consequential. Cf In re
DiStefano, No. 2015-1453 (Fed. Cir. 2015). See also In re Xiao, 462 Fed.
Appx. 947, 950-52 (Fed. Cir. 2011) (non-precedential):
[T]he Board did not create a new "mental distinctions" rule in
denying patentable weight. ... On the contrary, the Board
simply expressed the above-described functional relationship
standard in an alternative formulation---consistent with our
precedents-when it concluded that any given position label's
function ... is a distinction "discemable only to the human
mind." [See] In re Lowry, 32 F.3d 1579, 1583 (Fed. Cir. 1994)
(describing printed matter as "useful and intelligible only to the
human mind") (quoting Jn re Bernhart, 417 F.2d 1395, 1399
(CCPA 1969)).
Xiao, 462 Fed. Appx. at 951-952. "Thus non-functional descriptive
material, being useful and intelligible only to the human mind, is given no
patentable weight." Ex parte Graf, Appeal 2012-003941, slip op. at 7
(PTAB July 23, 2013) (non-precedential), aff'd, In re Graf, 585 Fed. Appx.
1012 (Fed. Cir. 2014) (Fed. Cir. 2014) (non-precedential). "The rationale
behind this line of cases is preventing the indefinite patenting of known
products by the simple inclusion of novel, yet functionally unrelated
limitations." King Pharms., Inc. v. Eon Labs, Inc., 616 F.3d 1267, 1279
(Fed. Cir. 2010) (citation omitted).
The rejection as to claims 1, 5, and 9 is sustained.
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Application 12/907,346
Claims 4, 8, and 12
Claim 4 includes the limitation "the processor receiving a request for
a preliminary diagnosis for an individual patient, wherein the request
comprises medical symptoms of the individual patient and non-medical
information about the individual patient." Claims 8 and 12 include similar
limitations. The Appellants argue that Sholl does not describe said
limitation. We agree.
The Examiner takes the position that said "processor receiving a
request for a preliminary diagnosis for an individual patient" as claimed is
described at paragraph 77 of Sholl. See Final Act. 4. Said Sholl disclosure
describes "an initial indicator or alert message [ ] indicating the most
extreme indicated condition for the particular day." Sholl i-f 77 (emphasis
added). To accomplish this, "the alert conditions of the food event
management systems may be divided into risk groupings, such as: low risk,
medium risk, and high risk." Id. Each of these groupings correspond to
certain illnesses having certain symptoms. "Often the high alert includes a
definitive diagnosis of the illness source, or at least a determination with a
high probability of accuracy." Id. However, said disclosure does not
describe, expressly or inherently, a "processor receiving a request for a
preliminary diagnosis for an individual patient," as claimed. While it is
possible that there may be a preliminary diagnosis received, especially in the
case of a high alert, "[i]nherency, however, may not be established by
probabilities or possibilities. The mere fact that a certain thing may result
from a given set of circumstances is not sufficient." Hansgirg v. Kemmer,
102 F.2d 212, 214 (CCPA 1939) (citation omitted), quoted in Continental
Can Co. USA v. Monsanto Co., 948 F.2d 1264, 1269 (Fed. Cir. 1991).
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Application 12/907,346
The rejection as to claims 4, 8, and 12 is not sustained.
Claim 13
The rejection of claim 13 is sustained for the same reasons used to
sustain the rejection of claim 1, from which claim 13 depends.
Claim 13 calls for a database that "contains data describing a climate,
past and present military conflicts, police incident report rates and types,
education levels, and median income of a geographical region in which the
specific population is located." The Appellants argue that "Appellants are
unable to find any portion of Scholl that teaches/suggests" said content.
App. Br. 14 (emphasis omitted).
The argument is unpersuasive as to error in the rejection because the
limitation in question only claims the content of information. It is matter
claimed for what it communicates and thus properly characterized as printed
matter. Given that printed matter is not given patentable weight, the argued-
over distinction that said content as claimed is not described in Sholl is not
paten tab 1 y consequential.
Claim 16
The rejection of claim 16 is reversed. We are compelled to do this
because claim 15, from which claim 16 depends, was rejected under§ 103.
See below. Claim 16 includes all the limitations in claim 15 - some
limitations of which were found not to be described in a single reference,
i.e., not in Sholl. See Final Act. 8. Accordingly, by the Examiner's own
admission, claim 16 does not read on Sholl.
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Application 12/907,346
Claims 2, 3, 6, 7, 10, and 11 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Sholl and Schaeffer.
Claim 2
The Appellants do not appear to have challenged the rejection of
claim 2 under § 103 over the cited prior art combination. Accordingly, it is
summarily affirmed.
Claims 3, 7, and 11
The Appellants challenge the rejection of claims 3, 7, and 11. App.
Br. 10-12.
Focusing on claim 3, the Appellants argue that the Examiner's
reliance on Schaeffer as disclosing the claimed "establishing a relationship
between the other populations and the specific population through use of a
Bayesian algorithm that establishes a correlation between shared attributes
and shared health care issues for the other populations and the specific
population" (claim 3, also claims 7 and 11) is misplaced. According to the
Appellants, Schaeffer discloses data mining techniques "such as ... Nai:ve-
Bayesian approaches." Schaeffer i-f 78. We agree.
Notwithstanding that the Examiner (see Final Act. 6-7) has not
established that Schaeffer's Naive-Bayesian approach covers or would lead
one to the claimed "use of a Bayesian algorithm," Schaeffer is directed to
data mining. The claims here rejected are, however, directed to establishing
a relationship. The Examiner has not shown how one of ordinary skill in the
art given a data mining technique as Schaeffer discloses would be led to
establish a relationship as claimed, let alone a "relationship between the
other populations and the specific population through use of a Bayesian
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Application 12/907,346
algorithm that establishes a correlation between shared attributes and shared
health care issues for the other populations and the specific population" (see
claims 3, 7 and 11 ). Final Act. 6.
Accordingly, the rejection is not sustained because a prima facie case
of obviousness has not been made out in the first instance by a
preponderance of the evidence.
Claims 6 and 10
The Appellants do not appear to have challenged the rejection of
claims 6 and 10 under § 103 over the cited prior art combination.
Accordingly, their rejection is summarily affirmed.
Claim 14 is rejected under 35 U.S.C. § 103(a) as being unpatentable over
Sholl, Schaeffer, and Liew.
Claim 14
Because the rejection of claim 3 is not sustained (see above), the
rejection of claim 14, which depends from claim 3, is also not sustained.
Claim 15 is rejected under 35 U.S.C. § 103(a) as being unpatentable over
Sholl and Liew.
Claim 15
Claim 15 provides for identifying, comparing, and determining steps
involving non-medical data for a first country and non-medical data for a
second country in order to predict a public health issue will arise in the
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second country. The Examiner relied on Liew as disclosing said subject
matter. See Final Act. 7-8.
The Appellants argue that
there is no teaching/suggestion in Liew of predicting a particular
public health issue in a second country based on non-medical data for
that second country matching non-medical data for a first country that
is experiencing the particular public health issue ("and in response to
the processor determining that the non-medical data for the first
country and the non-medical data for the second country are equal,
predicting that the public health issue will arise in the second
country").
App. Br. 17.
According to the Examiner,
Liew teaches comparing two populations of individuals to identify
biomarkers of a condition of interest, the populations are chosen such
that the populations share at least one phenotype which is not the
condition of. More preferably the populations have two or more,
three or more, four or more etc. phenotypes in common. By
phenotype is meant any trait which is not the condition of interest, for
example, in a preferred embodiment individuals within the
populations being used to identify biomarkers of a condition are of a
similar age, sex, body mass index (BMI) (Liew Paragraph 44 ).
Final Act. 7-8.
Claim 15 provides for a first type of information (i.e., non-medical
data) for a first object (i.e., first country) experiencing a condition (i.e.,
public health issue), identifying a second type of information (i.e., non-
medical data) for a second object (i.e., second country), comparing the two,
and based on determining that the first and second types of information are
equal, predicting that the same condition (i.e., public health issue) will arise
for the second object (i.e., second country).
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Liew discloses a first type of information (i.e., a phenotype which is
not the condition of) for a first object (i.e., a population of individuals)
experiencing a condition (i.e., a condition of interest), identifying a second
type of information (i.e., a phenotype which is not the condition of) for a
second object (i.e., a population of individuals), and comparing the two.
Liew "identifies a biomaker of a condition of interest" (i-f 33) that is common
to both objects (i.e., two populations of individuals) based on determining
that the first and second types of information (i.e., the phenotypes) are equal.
In another preferred embodiment, when comparing two populations of
individuals to identify biomarkers of a condition of interest, the
populations are chosen such that the populations share at least one
phenotype which is not the condition of. More preferably the
populations have two or more, three or more, four or more[,] etc.
phenotypes in common. By phenotype is meant any trait which is not
the condition of interest, for example, in a preferred embodiment
individuals within the populations being used to identify biomarkers
of a condition are of a similar age, sex, body mass index (BMI).
Liew i144.
Functionally, there is no difference between the steps the claimed
process performs and the steps disclosed in Liew. Both disclose identifying
two types of information for two objects, one object experiencing a
condition, comparing the two types of information, and if equal, predicting
said condition for the second object. The differences between the types of
information between what is claimed (non-medical data) and that of Liew
(phenotypes) would appear to be patentably inconsequential as being
directed to printed matter. But the objects and result are different; that is,
countries and public health issue (for claim 15) and individuals and
biomarker of a condition of interest (for Liew), respectively.
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The question is whether one of ordinary skill the art having the Liew
steps as applied to two populations for identifying a biomarker of a
condition of interest would have been led to modify Sholl so as to include
the same steps but applied to two countries to predict a public health issue in
a second country as claimed. In that regard, the evidence to support the
finding that one of ordinary skill in the art would reach the claimed method,
which is limited to Sholl and Liew, is inadequate. Accordingly, we find that
a prima facie case of obviousness has not been made out in the first instance
by a preponderance of the evidence.
CONCLUSIONS
The rejection of claims 1, 5, 9, and 13 under 35 U.S.C. § 102(b) as
being anticipated by Sholl is affirmed.
The rejection of claims 4, 8, 12, and 16 under 35 U.S.C. § 102(b) as
being anticipated by Sholl is reversed.
The rejection of claims 2, 6, and 10 under 35 U.S.C. § 103(a) as being
unpatentable over Sholl and Schaeffer is affirmed.
The rejection of claims 3, 7, and 11 under 35 U.S.C. § 103(a) as being
unpatentable over Sholl and Schaeffer is reversed.
The rejection of claim 14 under 35 U.S.C. § 103(a) as being
unpatentable over Sholl, Schaeffer, and Liew is reversed.
The rejection of claim 15 under 35 U.S.C. § 103(a) as being
unpatentable over Sholl and Liew is reversed.
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Application 12/907,346
DECISION
The decision of the Examiner to reject claims 1-16 is affirmed-in-
part.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED-IN-PART
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