Ex Parte Cornacchia

Patent Trial and Appeal Board

Nov 26, 2013

11498956 (P.T.A.B. Nov. 26, 2013)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
11/498,956 08/03/2006 Louis G. Cornacchia III DOC 09.01 CIP4 9127
7590 11/26/2013
Dr. Louis Cornacchia
600 Old Country Road, Suite 541
Garden City, NY 11530
EXAMINER
HILLERY, NATHAN
ART UNIT PAPER NUMBER
3715
MAIL DATE DELIVERY MODE
11/26/2013 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 PATENT TRIAL AND APPEAL BOARD
____________

Ex parte LOUIS G. CORNACCHIA III
____________

Appeal 2011-002296
Application 11/498,956
Technology Center 3700
____________

Before JEFFREY S. SMITH, JASON V. MORGAN and
IRVIN E. BRANCH, Administrative Patent Judges.

SMITH, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2011-002296
Application 11/498,956

2
STATEMENT OF THE CASE
This is an appeal under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 1-9 and 11-24, which are all the claims remaining in the
application. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.

Representative Claim
1. A computer-based method of dictating into a report section via
an electronic network, comprising:
marking a first insertion point in a report section at a first user-
selected position, the first user-selected position being selectable to
allow a user to record a dictation at any position in the report section,
the dictation comprising electronic audio signals;
recording a first dictation into the report section at the first
insertion point, the first dictation comprising electronic audio signals;
and
generating an instance of a report including a report header, at
least one report part and at least one report section before marking a
first insertion point in the report section.
Prior Art
Pressly US 2002/0065854 A1 May 30, 2002
Rubin US 2002/0099552 A1 Jul. 25, 2002

Examiner’s Rejections
Claims 1, 3-6, 17, 23, and 24 stand rejected under 35 U.S.C. § 102(b)
as being anticipated by Pressly.
Claims 2, 7-9, 11-16, 18, and 19 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Pressly and Rubin.
Claims 20-22 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Pressly, Rubin, and Fritsch.
Appeal 2011-002296
Application 11/498,956

3
ANALYSIS
Section 102 rejection of claims 1, 3-6, 23, and 24
Claim 1 recites “generating an instance of a report including a report
header, at least one report part and at least one report section before marking
a first insertion point in the report section.” The Examiner finds that Figure
6 of Pressly shows an instance of a report, including a title, or report header,
a report part, and a report section, that is generated before the user marks a
first insertion point in the report section. Ans. 14-15. Appellant contends
that Pressly is silent about whether the instance of the report is generated
before or after the user marks the first insertion point. Reply Br. 4-5.
Pressly describes a data entry screen used by a physician in building a
diagnosis report as shown in Figure 6 and discussed in paragraph 50. Given
that the physician uses the data entry screen in building the report, we find
by a preponderance of the evidence that Pressly displays the data entry
screen before the physician dictates data into the data entry screen. We
agree with the Examiner that the data entry screen shows an instance of a
report, including a report header, a report part, and a report section,
generated before the user uses a cursor to indicate where dictated data
should be inserted and dictates data into the report. See Presley, Fig.6 and
¶ [0051]. We therefore find that Pressly describes “generating an instance of
a report including a report header, at least one report part and at least one
report section before marking a first insertion point in the report section”
within the meaning of claim 1.
We sustain the rejection of claim 1 under 35 U.S.C. § 102. Appellant
does not present arguments for separate patentability of claims 3-6, 23, and
24, which fall with claim 1.
Appeal 2011-002296
Application 11/498,956

4

Section 102 rejection of claim 17
Claim 17 recites “setting an indicator to indicate a mode of dictation.”
The Examiner finds that the scope of this term, when read in light of
Appellant’s Specification, encompasses using a cursor to indicate where
dictated data should be inserted as described by Pressly. Ans. 15-16.
Appellant has not provided persuasive evidence or argument to rebut the
Examiner’s finding.
We sustain the rejection of claim 17 under 35 U.S.C. § 102.

Section 103 rejection of claims 2, 7-9, 11-16, 18, and 19
Appellant presents arguments for patentability of claims 2, 7-9, 11-16,
18, and 19 similar to those presented for claims 1 and 17 which we find
unpersuasive. We sustain the rejection of claims 2, 7-9, 11-16, 18, and 19
under 35 U.S.C. § 103.

Section 103 rejection of claims 20-22
Appellant does not present arguments for separate patentability of
claims 20-22, which fall with independent claim 17.

DECISION
The rejection of claims 1, 3-6, 17, 23, and 24 under 35 U.S.C.
§ 102(b) as being anticipated by Pressly is affirmed.
The rejection of claims 2, 7-9, 11-16, 18, and 19 under 35 U.S.C. §
103(a) as being unpatentable over Pressly and Rubin is affirmed.
Appeal 2011-002296
Application 11/498,956

5
The rejection of claims 20-22 under 35 U.S.C. § 103(a) as being
unpatentable over Pressly, Rubin, and Fritsch is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. §
41.50(f).

AFFIRMED

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