Ex Parte Docherty et al

Board of Patent Appeals and Interferences

Apr 16, 2010

09968726 (B.P.A.I. Apr. 16, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte JOHN P. DOCHERTY,
DANIEL CARPENTER,
and RICHARD SURLES
___________

Appeal 2009-006264
Application 09/968,726
Technology Center 3600
____________

Decided: April 16, 2010
____________

Before HUBERT C. LORIN, RICHARD M. LEBOVITZ, and
BIBHU R. MOHANTY, Administrative Patent Judges.

LORIN, Administrative Patent Judge.

DECISION ON APPEAL
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STATEMENT OF THE CASE
John P. Docherty et al. (Appellants) seek our review under 35 U.S.C.
§ 134 of the final rejection of claims 1-15, 39, and 41-51. We have
jurisdiction under 35 U.S.C. § 6(b) (2002).

SUMMARY OF DECISION
We AFFIRM. 1

THE INVENTION
This invention is a system and method “for evaluating prescription
practices of a physician in relation to an expert best practice protocol.”
Specification 1:2-4.
Claims 1 and 39, reproduced below, are illustrative of the subject
matter on appeal.
1. A method for providing an intervention
information based on prescription data, said
method comprising the steps of:
maintaining at least one database including a
predetermined comparative metric wherein the
comparative metric includes numeric values
associated with at least one reference guideline;
receiving a prescription data associated with
at least one prescription record;
comparing said prescription data to said
reference guideline on a basis of said comparative

1 Our decision will make reference to the Appellants’ Appeal Brief (“App.
Br.,” filed Jul. 14, 2008) and Reply Brief (“Reply Br.,” filed Nov. 17, 2008),
and the Examiner’s Answer (“Answer,” mailed Sep. 17, 2008).

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metric;
computing a deviation of said comparative metric as a
difference between said prescription data and said reference
guideline;
computing a deviation to a threshold
deviation; and
if said deviation exceeds said threshold
deviation, providing intervention information.

39. A method for providing an intervention
information based on prescription data, said
method comprising the steps of:
maintaining at least one database including
comparative metric associated with at least one
reference guideline;
receiving a prescription data associated with
at least one prescription record;
comparing said prescription data to said
reference guideline on a basis of said comparative
metric;
computing a deviation of said comparative
metric as a difference between said prescription
data and said reference guideline;
comparing said deviation to a threshold
deviation; and
if said deviation exceeds said threshold
deviation, providing intervention information.

THE REJECTIONS
The Examiner relies upon the following as evidence of
unpatentability:
Mayaud US 5,845,255 Dec. 1, 1998
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Teagarden
Reitberg
US 6,014,631
US 2002/0032581 A1
Jan. 11, 2000
Mar. 14, 2002

The following rejections are before us for review:
1. Claims 1 and 39 are rejected under 35 U.S.C. § 101 as being
directed to non-statutory subject matter.
2. Claims 1-11, 39, and 41-51 are rejected under 35 U.S.C.
§102(b) as being anticipated by Mayaud.
3. Claims 12 and 13 are rejected under 35 U.S.C. §103(a) as being
unpatentable over Mayaud and Reitberg.
4. Claims 14 and 15 are rejected under 35 U.S.C. §103(a) as being
unpatentable over Mayaud and Teagarden.

ISSUES
The first issue is whether claims 1 and 39 are directed to statutory
subject matter under 35 U.S.C. § 101. Specifically, the issue is whether
claims 1 and 39 pass the Bilski machine-or-transformation test determining
patent-eligibility of processes under 35 U.S.C. § 101.
The second issue is whether claims 1-11, 39, and 41-51 are
anticipated by Mayaud under 35 U.S.C. § 102(b). Specifically, the issue is
whether Mayaud describe a prescription record. The rejection of claims 12-
15 as obvious over Mayaud and additionally cited references also turn on
this issue.

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FINDINGS OF FACT
We find that the following enumerated findings of fact (FF) are
supported by at least a preponderance of the evidence. Ethicon, Inc. v.
Quigg, 849 F.2d 1422, 1427 (Fed. Cir. 1988) (explaining the general
evidentiary standard for proceedings before the Office).

Claim construction
1. Independent claims 1, 39, and 41 recite a “prescription record.”
2. The Specification does not contain an express definition of
“record.”
3. A definition of the noun “record” is “the state or fact of being
recorded.” See Merriam-Webster’s Collegiate Dictionary 977 (10th
Ed. 1998.)(First entry for “record.”)
4. A definition of the verb record is “to set down in writing: furnish
written evidence of.” See Merriam-Webster’s Collegiate
Dictionary 977 (10th Ed. 1998.)(First entry for “record.”)
Prior art
5. We adopt the Examiner’s finding of fact as it relates to the
disclosures of Mayaud. Answer 5-10.

PRINCIPLES OF LAW
§101 – Patentable Subject Matter – Process
[T]he proper inquiry under §101 is not whether the
process claim recites sufficient “physical steps,”
but rather whether the claim meets the machine-or-
transformation test. As a result, even a claim that
recites “physical steps” but neither recites a
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particular machine or apparatus, nor transforms
any article into a different state or thing, is not
drawn to patent-eligible subject matter.
Conversely, a claim that purportedly lacks any
“physical steps” but is still tied to a machine or
achieves an eligible transformation passes muster
under §101.
In re Bilski, 545 F.3d 943 (Fed. Cir. 2008) (en banc), petition for cert. filed,
77 USLW 3442 (U.S. Jan. 28, 2009) (No. 08-964).
Claim Construction
During examination of a patent application, a pending claim is given
the broadest reasonable construction consistent with the specification and
should be read in light of the specification as it would be interpreted by one
of ordinary skill in the art. In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359,
1364 (Fed. Cir. 2004).
[W]e look to the specification to see if it provides
a definition for claim terms, but otherwise apply a
broad interpretation. As this court has discussed,
this methodology produces claims with only
justifiable breadth. In re Yamamoto, 740 F.2d
1569, 1571 (Fed. Cir. 1984). Further, as applicants
may amend claims to narrow their scope, a broad
construction during prosecution creates no
unfairness to the applicant or patentee. Am. Acad.,
367 F.3d at 1364.
In re ICON Health and Fitness, Inc., 496 F.3d 1374, 1379 (Fed. Cir. 2007).
Limitations appearing in the specification but not recited in the claim are not
read into the claim. E-Pass Techs., Inc. v. 3Com Corp., 343 F.3d 1364,
1369 (Fed. Cir. 2003).

Anticipation
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“A claim is anticipated only if each and every element as set forth in
the claim is found, either expressly or inherently described, in a single prior
art reference.” Verdegaal Bros., Inc. v. Union Oil Co. of Cal., 814 F.2d 628,
631 (Fed. Cir. 1987).

Obviousness
Section 103 forbids issuance of a patent when ‘the
differences between the subject matter sought to be
patented and the prior art are such that the subject
matter as a whole would have been obvious at the
time the invention was made to a person having
ordinary skill in the art to which said subject
matter pertains.
KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007). The question of
obviousness is resolved on the basis of underlying factual determinations
including (1) the scope and content of the prior art, (2) any differences
between the claimed subject matter and the prior art, and (3) the level of skill
in the art. Graham v. John Deere Co., 383 U.S. 1, 17-18 (1966). See also
KSR, 550 U.S. at 407 (“While the sequence of these questions might be
reordered in any particular case, the [Graham] factors continue to define the
inquiry that controls.”) The Court in Graham further noted that evidence of
secondary considerations “might be utilized to give light to the
circumstances surrounding the origin of the subject matter sought to be
patented.” Graham, 383 U.S. at 17-18.

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ANALYSIS
The rejection of claims 1 and 39 under §101 as being directed to non-
statutory subject matter.
The Examiner rejected independent method claims 1 and 39 as being
directed to non-statutory subject matter because “the claim language does
not include the required tie in the body of the claim or transformation.”
Answer 3. The Appellants respond by construing the term “database” by
citing the Merriam Webster definition of “a usually large collection of data
organized especially for rapid search and retrieval (as by a computer),” and
concluding that the recitation of a database “clearly ties the claims to a
particular machine or apparatus.” Reply Br. 21.
First, we note that the Appellants do not dispute the Examiner’s
assertion that claims 1 and 39 are non-statutory as to the transformation
prong of the machine-or-transformation test. See Reply Br. 21. Therefore,
our analysis will focus on the machine prong.
The Appellants seem to argue that claims 1 and 39 are tied to a
particular machine because the recitation of “database” should be construed
as a computer database. We note that claims 1 and 39 do not recite a
computer database but merely a “database.” However, a database per se is
not necessarily a “computer database.” The Appellants’ Merriam Webster’s
definition does not restrict a database to be a computer data, only states “by
a computer” as an example. Further, accordingly, to Webster’s New World
Dictionary of Computer Terms 142 (8th Ed. 2000)(Entry for “database”), a
“database” is defined as:
A collection of related information about a subject
organized in a useful manner that provides a base
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or foundation for procedures, such as retrieving
information, drawing conclusions, making
decisions. Any collection of information that serves
these purposes qualifies as a database, even if the
information isn't stored on a computer. In fact,
important predecessors of today's sophisticated
business database systems were files kept on index
cards and stored in file cabinets. Information
usually is divided into data records, each with one
or more data fields.
(Emphasis added). Thus, the recitation of using a “database” per se in the
method does not necessarily tie the claimed process to a machine, but rather
reads more broadly on other types of databases, including databases of
printed matter. Accordingly, we are not persuaded by the Appellants’
argument that claims 1 and 39 necessarily passes the machine prong of the
(Bilski) machine-or-transformation test and is thereby necessarily a statutory
process under §101.

The rejection of claims 1-11, 39, and 41-51 under §102(b) as being
unpatentable over Mayaud.
Claims 1, 3-11, 39, and 41-51
The Appellants argued claims 1, 3-11, 39, and 41-51 as a group. App.
Br. 17-18. We select claim 1 as the representative claim for this group, and
the remaining claims 3-11, 39, and 41-51, stand or fall with claim 1. 37
C.F.R. § 41.37(c)(1)(vii) (2009).
The Appellants argue that Mayaud does not describe the step of
“receiving a prescription data associated with at least one prescription
record.” App. Br. 17-18 and Reply Br. 18-19. The Appellants argue that
“[t]he term record clearly refers to a preexisting prescription” (App. Br. 17)
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that the portions of Mayaud, cited by the Examiner, instead describe a
prescription that is currently being written (App. Br. 18).
The Examiner cites column 39, lines 55-62 and states that “the
selected drug” is the prescription data. Answer 11. Further, the Examiner
responds that the claims do not require a preexisting prescription. Id.
We begin by construing the term “record.” Anticipation is determined
by first construing the claims and then comparing the properly construed
claims to the prior art. In re Cruciferous Sprout Litigation, 301 F.3d 1343,
1346 (Fed. Cir. 2002). The Specification does not contain an express
definition of “record.” FF 2. We find that the ordinary and customary
meaning of record is something that is the state or fact of being set down in
writing. FF 3-4. Claim 1 is reasonably broadly construed to require a step
of receiving a prescription data associated with a least one prescription that
is in a state or fact of being set down in writing. We note that claim 1 does
not require that the prescription record be a preexisting prescription record,
as argued by the Appellants, and does encompass that the prescription
records be a record for a current prescription, as the Appellants admit is
described in column 39, lines 55-62 of Mayaud (App. Br. 18-19).
Accordingly, we find that the Appellants have not overcome the prima
facie showing of anticipation, and we sustain the rejection of claims 1, 3-11,
39, and 41-51 under §102(b) as being anticipated by Mayaud.

Claim 2
Claim 2 recites “wherein the prescription data comprises: . . . a
dosage.” The Appellants argue that the portion of Mayaud, cited by the
Examiner, teaches dosages that do not relate to a preexisting prescription,
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and therefore, do not anticipate the claim for the same reasons as argued
with regards to claim 1 above. App. Br. 19 and Reply Br. 20. The Examiner
responds that the dosages being related to preexisting prescriptions is not
recited in the claim. Answer 12.
For the same reasons as discussed above, we find that Appellants’
argument unpersuasive. Claim 2 does not require that the dosages be related
to a preexisting prescription. Accordingly, we find that the Appellants have
not overcome the prima facie showing of anticipation, and we sustain the
rejection of claim 2 under §102(b) as being anticipated by Mayaud.

The rejection of claims 12 and 13 under §103(a) as being unpatentable over
Mayaud and Reitberg.
To traverse the rejection of dependent claims 12 and 13, the
Appellants rely upon the same argument made to traverse the rejection of
independent claim 1. See App. Br. 19-20 and Reply Br. 20-21.
Accordingly, because we found the Appellants’ argument unpersuasive as to
that rejection, we find them equally unpersuasive as to error in the rejection
of claims 12 and 13. We find that the Appellants have not overcome the
prima facie showing of obviousness, and we sustain the rejection of claims
12 and 13 under §103(a) as being unpatentable over Mayaud and Reitberg.

The rejection of claims 14 and 15 under §103(a) as being unpatentable over
Mayaud and Teagarden.
To traverse the rejection of dependent claims 14 and 15, the
Appellants rely upon the same argument made to traverse the rejection of
independent claim 1. See App. Br. 19-20 and Reply Br. 20-21.
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Accordingly, because we found the Appellants’ argument unpersuasive as to
that rejection, we find them equally unpersuasive as to error in the rejection
of claims 14 and 15. We find that the Appellants have not overcome the
prima facie showing of obviousness, and we sustain the rejection of claims
14 and 15 under §103(a) as being unpatentable over Mayaud and Teagarden.

CONCLUSIONS OF LAW
We conclude that the Appellants have not overcome the rejection of
claim 1 and 39 under 35 U.S.C. § 101 as being directed to non-statutory
subject matter.
We conclude that the Appellants have not overcome the prima face
showing of anticipation as to the rejection claims 1-11, 39, and 41-51 under
35 U.S.C. §102(b) as being anticipated by Mayaud.
We conclude that the Appellants have not overcome the prima face
showing of obviousness as to the rejection of claims 12 and 13 under 35
U.S.C. §103(a) as being unpatentable over Mayaud and Reitberg and the
rejection of claims 14 and 15 under 35 U.S.C. §103(a) as being unpatentable
over Mayaud and Teagarden.

DECISION
The decision of the Examiner to reject claims 1-15, 39, and 41-51 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)(1)(iv) (2007).

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AFFIRMED

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