Ex Parte DelMonego et al

Board of Patent Appeals and Interferences

May 1, 2012

11266557 (B.P.A.I. May. 1, 2012)

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.
11/266,557 11/03/2005 Brian DelMonego 2004P19169 US01 8186
7590 05/02/2012
Siemens Corporation
Intellectual Property Department
170 Wood Avenue South
Iselin, NJ 08830
EXAMINER
FUELLING, MICHAEL
ART UNIT PAPER NUMBER
3626
MAIL DATE DELIVERY MODE
05/02/2012 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 BRIAN DELMONEGO, BETTY FINK,
GARY GRZYWACZ, JAMES PRESSLER,
DONALD TAYLOR, and ARNOLD TERES 1
____________________

Appeal 2011-002607
Application 11/266,557
Technology Center 3600
____________________
Before, ANTON W. FETTING, KEVIN F. TURNER, and
MEREDETH C. PETRAVICK, Administrative Patent Judges.

TURNER, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF CASE2
Appellants appeal under 35 U.S.C. § 134 from a final rejection of
claims 1-8 and 17. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 Siemens Medical Solutions USA, Inc. is the real party in interest.
2 Our decision will make reference to Appellants’ Appeal Brief (“App. Br.,”
filed August 30, 2010) and Reply Br. (“Reply Br.,” filed November 11,
2010), and the Examiner’s Answer (“Ans.,” mailed September 13, 2010).
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THE INVENTION
Appellants’ disclosure relates to a system for managing and allocating
the resources of a hospital or health care facility department in real time.
(Spec. ¶ [0002].)
Claim 1, reproduced below, is illustrative of the claimed subject
matter:
1. A computer implemented radiology financial information
processing system, comprising:
at least one computer system comprising,
a radiology information database identifying revenue associated
with different types of radiology procedure; and
a computer, coupled to said radiology information database,
including, an acquisition processor for acquiring,
data identifying a plurality of radiology procedures performed
in a current time period for a plurality of different patients and
associated reimbursement revenue for individual radiology
procedures of said plurality of radiology procedures and
historical data indicating a plurality of previously performed
radiology procedures previously performed in a previous
corresponding time period and associated reimbursement
revenue for said previously performed radiology procedures,
said computer using information acquired from said radiology
information database for calculating a total reimbursement
revenue value for a specific radiology procedure type of said
individual radiology procedures performed for said plurality
of different patients within said current time period and
a display processor for initiating generation of data representing
a display image presenting said total reimbursement revenue
value associated with said current time period enabling visual
comparison of reimbursement revenue in said current time
period and previous corresponding time period to support
identifying discrepancies and to permit the dynamic
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assignment of a worker based on the total reimbursement
revenue value.
(App. Br., Claims Appendix 16.)

PRIOR ART REJECTIONS
The prior art references relied upon by the Examiner in rejecting the
claims are:
Siegrist, Jr. 5,652,842 Jul. 29, 1997
Crane 5,748,907 May 5, 1998
Javitt 5,918,208 Jun. 29, 1999
DeBusk 5,995,937 Nov. 30, 1999

The Examiner rejected the claims as follows:
Claims 1, 2, 7, 8, and 17 under 35 U.S.C. § 103(a) as unpatentable
over Crane and DeBusk.
Claims 3 and 4 under 35 U.S.C. § 103(a) as unpatentable over Crane,
DeBusk, and Javitt.
Claims 5 and 6 under 35 U.S.C. § 103(a) as unpatentable over Crane,
DeBusk, and Siegrist, Jr.

ISSUES3
Does the combination of Crane and DeBusk teach or suggest the
subject matter of claims 1, 2, 7, 8, and 17 under 35 U.S.C. § 103(a)?
Does the combination of Crane, DeBusk, and Javitt teach or suggest
the subject matter of claims 3 and 4 under 35 U.S.C. § 103(a)?

3 We have considered in this decision only those arguments that Appellants
actually raised in the Briefs. Arguments which Appellants could have made
but chose not to make in the Briefs are deemed to be waived. See 37 C.F.R.
§ 41.37(c)(1)(vii).
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Does the combination of Crane, DeBusk, and Siegrist, Jr. teach or
suggest the subject matter of claims 5 and 6 under 35 U.S.C. § 103(a)?

FINDINGS OF FACT
Crane
Cr1. Crane is directed to a computerized real-time management
system and method which uses real-time inputs to control the position and
flow of patients, employees, invoicing, appointment scheduling, and
financial costs of a medical clinic or other business. (Abs.)
Cr2. Crane describes that Long Term Memory 106 stores historical
aspects of the clinic such as equipment maintenance, employee schedules
and rosters, initial inventory, operational, labor, and overhead costs, labor
rates per code number, employer, and insurance rates. (Col. 12, l. 66 – Col.
13, l. 3 and Col. 19, ll. 57-64.)
Cr3. Crane states that “memory stores historical data related to the
interaction of the real-time inputs, and the microprocessor compares sensed
real-time information with historical data to determine changes in unknown
operating parameters.” (Abs; See also Fig. 7.)
Cr4. Crane describes that “[c]omparators are used in the automatic
generation of a profit and loss statement for the clinic owner. The overhead
costs per hour, day, and week are compared against the business or monies
generated as the clinic operates. This allows real-time reporting of profit-
loss statements.” (Col. 43, ll. 18-21; see also Col. 41, ll. 58-67.)
Cr5. Crane describes that its processor automatically manages
employees using ID cards and card readers in each room of the clinic to
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obtain real-time data which are compared against historical data stored in
memory 106. (Col. 21, ll. 39-43; Col. 22, ll. 6-14; Col. 25, ll. 16-33.)

DeBusk
D1. DeBusk is directed to a healthcare information system which
allows a user to track the provisioning of health-care, the utilization of
resources, the allocation of resources to perform medical procedures, and
additionally identifies opportunities for enhancing efficiencies therein.
(Abs.)
D2. DeBusk describes that these resources include “labor resources,
equipment owned and maintained by the location and facilities at the
location such as OR’s, radiology, laboratories, etc.” (Col. 11, ll. 17-20.)

Javitt
J1. Javitt is directed to a system for providing medical information
and calculates expected revenue per procedure. (Col. 3, ll. 8-12; See Fig. 3.)

Siegrist, Jr.
S1. Siegrist, Jr. is directed to a system for analyzing and reporting
comparative performances such as costs and revenues of a hospital against
their competition. (Col. 3, ll. 24-31; See Figs. 11 and 13.)

ANALYSIS
Claims 1, 2, 7, 8, and 17 rejected under 35 U.S.C. § 103(a) as unpatentable
over Crane and DeBusk.
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Independent claims 1 and 17
Appellants contend that because Crane fails to teach or suggest a
“radiology information database identifying revenue associated with
different types of radiology procedure,” Crane cannot teach or suggest
“calculating a total reimbursement revenue value for a specific radiology
procedure type of said individual radiology procedures performed for said
plurality of different patients,” based on historical data and data from a
current time period, as generally recited by claim 1. (App. Br. 6-7.) This
contention is premised on the fact that Crane fails to explicitly disclose
information related to the medical field of “radiology.” (App. Br. 6-11.)
Additionally, Appellants assert that the costs described in Crane are not
revenues, as presently claimed. (App. 7-8.) Appellants rely on independent
claim 1 for the patentability of independent claim 17. (App. Br. 11.)
We are not persuaded by Appellants’ arguments as the Examiner did
not rely on Crane to teach or suggest a “radiology information database,” but
instead relies on DeBusk to teach this feature. (Ans. 5.) Specifically,
DeBusk is related to a healthcare information system which allows a user to
manage and allocate resources related to medical procedures including those
related to radiology. (FF D1, D2.) Thus, the Examiner relies on the
combination of Crane and DeBusk in making the instant rejection, and as
such, any arguments related to the fact that Crane does not explicitly
disclose “radiology procedures” are unpersuasive. See In re Merck & Co.,
Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986) (the argument that a single
reference alone does not disclose the recited claimed steps is not persuasive
because nonobviousness cannot be established by attacking the references
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individually when the rejection is predicated upon a combination of prior art
disclosures).
Moreover, we find that the type of information used by Appellants’
financial information processing system constitutes non-functional
descriptive material which is unrelated to the underlying system in any
functional way. See In re Ngai, 367 F.3d 1336, 1339 (Fed. Cir. 2004); cf. In
re Gulack, 703 F.2d 1381, 1385 (Fed. Cir. 1983) (when descriptive material
is not functionally related to the substrate, the descriptive material will not
distinguish the invention from the prior art in terms of patentability).
Thus, we find that Appellants’ arguments, regarding the type of information
processed by Appellants’ system, fail to distinguish the claimed subject
matter from the combination of Crane and DeBusk such that the
combination would function any differently. Accordingly, any arguments
directed to the type of “radiology procedure” are unpersuasive.
Consequently, Crane describes that its system records and stores real-
time and historical information regarding a medical clinic’s operational,
labor, and overhead costs, which we interpret to be data identifying
procedures performed during a current time and historically, respectively.
(FF Cr2, Cr3.) Crane describes that its system records information regarding
labor rates per code number, which one of ordinary skill in the art would
understand to be the rate for a procedure based on its billing code. (FF Cr2.)
Using these data, Crane provides profit and loss statements comprised of
current or historical clinic information and compares these data to find
differences and similarities. (FF Cr3, Cr4.)
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While Appellants assert that these profit and loss statements and
operational, labor, and overhead costs are not the same as “reimbursement
revenue,” Appellants have not directed us to any specific meaning for the
term “reimbursement revenue,” which would distinguish the term
“reimbursement revenue” from these statements and costs under the broadest
reasonable interpretation commensurate with the scope of Appellants’
Specification. See In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1364
(Fed. Cir. 2004). Thus, we agree with the Examiner that Crane’s
“preparation of a profit and loss statement suggests performing a number of
old and well known accounting steps, including calculating ‘total
reimbursement revenue value’ for procedures for certain periods of time.”
(Ans. 10.) “Common sense teaches, however, that familiar items may have
obvious uses beyond their primary purposes.” KSR Int’l Inc. v. Teleflex Inc.,
550 U.S. 398, 420 (2007).
Accordingly, Appellants’ arguments have not persuaded us that the
combination of Crane and DeBusk fails to teach or suggest “calculating a
total reimbursement revenue value for a specific radiology procedure type of
said individual radiology procedures performed for said plurality of different
patients,” based on historical data and data from a current time period, as
generally recited by claims 1 and 17.
Additionally, Appellants argue that the combination of Crane and
DeBusk fails to teach or suggest a “display processor for initiating
generation of data representing a display image presenting” a “total
reimbursement revenue value for a specific radiology procedure type” in a
“current time period and previous corresponding time period to support
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identifying discrepancies and to permit the dynamic assignment of a worker
based on the total reimbursement revenue value,” as generally recited by
claims 1 and 17. (App. Br. 8-9.)
We are not persuaded by Appellants argument and, as discussed
supra, find that the combination of Crane and DeBusk teaches or suggests
“total reimbursement revenue value for a specific radiology procedure type”
based on historical data and data from a current time period. (FF Cr2, Cr3.)
Additionally, Crane describes that its system compares and displays real-
time information with historical data to determine changes in unknown
operating parameters (FF Cr3), which we find addresses Appellants’
limitation regarding a “a display processor for initiating generation of data”
and providing a “visual comparison . . . to identify discrepancies.”
Further, while Appellants assert that the combination of Crane and
DeBusk fails to “permit the dynamic assignment of a worker based on the
total reimbursement revenue value,” Appellants have not presented any
objective evidence to support these assertions. An attorney’s arguments in a
brief cannot take the place of evidence. In re Pearson, 494 F.2d 1399, 1405
(CCPA 1974). Thus, Appellants’ arguments have not shown that that the
combination of Crane and DeBusk fails to teach or suggest structure capable
of performing this functional limitation given Appellants’ use of the
functional term “permitting,” and as such, have not persuaded us that the
combination of Crane and DeBusk fails to teach or suggest “permit[ting] the
dynamic assignment of a worker based on the total reimbursement revenue
value,” as presently claimed.
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Accordingly, we sustain the Examiner’s rejection of independent
claims 1 and 17 under 35 U.S.C. § 103(a) as unpatentable over Crane and
DeBusk.

Claim 2
Appellants argue that the combination of Crane and DeBusk fails to
teach or suggest “dynamically assign[ing] at least one of the plurality of
personnel based on the monitored revenue,” as recited by dependent claim 2.
(App. Br. 11.) We are not persuaded by Appellants’ argument and agree
with the Examiner that Crane automatically manages employees using real-
time and historical data to dynamically assign personnel based upon these
data. (FF Cr4, Cr5.) Thus, one of ordinary skill in the art at the time of the
invention would understand and appreciate that Crane’s management system
uses these data to manage the workflow/assignment of its employees in real-
time to increase revenue. (See Ans. 11.) As such, Appellants’ argument is
unpersuasive. “[A]pparatus claims cover what a device is, not what a device
does.” Hewlett-Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 1468
(Fed. Cir. 1990).
Accordingly, we sustain the Examiner’s rejection of claim 2 under 35
U.S.C. § 103(a) as unpatentable over Crane and DeBusk.

Dependent claims 7 and 8
Appellants do not separately argue claims 7 and 8, which depend from
independent claim 1, and so we sustain the rejection of claims 7 and 8 under
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35 U.S.C. § 103(a) as unpatentable over Crane and DeBusk for the same
reasons we found as to claim 1 supra.

Dependent claims 3 and 4 under 35 U.S.C. § 103(a) as unpatentable over
Crane, DeBusk, and Javitt.
Appellants argue that the combination of Crane, DeBusk, and Javitt
fails to teach or suggest that “said accumulated reimbursement revenue
comprises at least one selected from the group consisting of: an average
value, a mean value and an expected value,” as recited by claim 3. (App. Br.
11-12.) Specifically, Appellants contend that Javitt’s “computation does not
‘support identifying discrepancies’ to ‘permit the dynamic assignment of a
worker.’” (App. Br. 13.) Appellants rely on claim 3 for the patentability of
claim 4. (App. Br. 13.) We cannot agree.
Javitt is not relied on to “identify discrepancies” or “dynamic
assignment,” but instead relied on to teach calculating an expected revenue
per procedure. (FF J1; see also Ans. 9.) See In re Merck & Co., 800 F.2d at
1097; In re Keller, 642 F.2d 413, 426 (CCPA 1981) (“one cannot show non-
obviousness by attacking references individually where, as here, the
rejections are based on combinations of references”).
Additionally, as discussed supra, there is no specific definition of the
terms “reimbursement revenue” or “accumulated reimbursement revenue”
set forth in the Specification which would persuade us that that the profit and
loss statements described in Crane combined with the expected revenue
calculations taught by Javitt are not sufficient to meet a broadest reasonable
interpretation of an “accumulated reimbursement revenue” such that it
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renders dependent claim 3 obvious. Therefore, Appellants’ arguments are
unpersuasive.
Accordingly, we sustain the Examiner’s rejection of claims 3 and 4
under 35 U.S.C. § 103(a) as unpatentable over Crane, DeBusk, and Javitt.

Claims 5 and 6 rejected under 35 U.S.C. § 103(a) as unpatentable over
Crane, DeBusk, and Siegrist, Jr.
Appellants argue that the combination of Crane, DeBusk, and Siegrist,
Jr. fails to teach or suggest that “said acquisition processor acquires data
identifying staff associated with performing said radiology procedures in
said current time period and said display image presents data indicating said
identified staff associated with performing said radiology procedures in said
current time period,” as recited by claim 5. (App. Br. 13-14.) Appellants
rely on claim 5 for the patentability of claim 6. (App. Br. 14.)
We are not persuaded by Appellants’ argument and agree with the
Examiner that the combination of Crane, DeBusk, and Siegrist, Jr. teaches or
suggests the subject matter of claim 5. Specifically, we find that Crane
describes managing and identifying employee locations, employee schedules
and rosters, and storing these data for processing. (FF Cr2, Cr5.) While
Crane and DeBusk do not explicitly address displaying images of these data,
the Examiner relies on Siegrist, Jr. to address this limitation. (Ans. 9.)
Siegrist, Jr. describes a system for analyzing and reporting comparative
performances and depicts displaying these reports using graphs and charts.
(FF S1.) Thus, we find that the combination of Crane, DeBusk, and Siegrist,
Jr. teaches or suggests the subject matter of claim 5.
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Accordingly, we sustain the Examiner’s rejection of claims 5 and 6
under 35 U.S.C. § 103(a) as unpatentable over Crane, DeBusk, and Siegrist,
Jr.

CONCLUSIONS
We conclude that the combination of Crane and DeBusk teaches or
suggests the subject matter of claims 1, 2, 7, 8, and 17 under 35 U.S.C.
§ 103(a).
We conclude that the combination of Crane, DeBusk, and Javitt
teaches or suggests the subject matter of claims 3 and 4 under 35 U.S.C.
§ 103(a).
We conclude that the combination of Crane, DeBusk, and Siegrist, Jr.
teaches or suggests the subject matter of claims 5 and 6 under 35 U.S.C.
§ 103(a).

DECISION
We affirm the Examiner’s rejection of claims 1-8 and 17.
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.
§ 1.136(a)(1).

AFFIRMED
ack