Ex Parte Domashnev

Board of Patent Appeals and Interferences

Jan 27, 2012

10773912 (B.P.A.I. Jan. 27, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte CONSTANTINE A. DOMASHNEV
____________

Appeal 2010-000473
Application 10/773,912
Technology Center 3600
____________

Before MURRIEL E. CRAWFORD, HUBERT C. LORIN, and BIBHU R.
MOHANTY, Administrative Patent Judges.

MOHANTY, Administrative Patent Judge.

DECISION ON APPEAL
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STATEMENT OF THE CASE
The Appellant seeks our review under 35 U.S.C. § 134 (2002) of the
final rejection of claims 1-221 which are all the claims pending in the
application. We have jurisdiction under 35 U.S.C. § 6(b) (2002).

SUMMARY OF THE DECISION
We AFFIRM.

THE INVENTION
The Appellant’s claimed invention is directed to a system for
generating a prescription on the Internet and inviting bids for the
prescription (Spec. [0001]). Claim 1, reproduced below, is representative of
the subject matter on appeal.

1. An electronic prescription handling system comprising:
(a) a first computer configured to transmit a prescription by a
physician;
(b) a server communicatively connected to the first computer
and functionally distinct therefrom, wherein the server is configured
to receive the prescription from the first computer, wherein the server
is remote from the first computer and is operated by a service
provider;

1 The Appellant has provided arguments for only claims 1, 10-11, 13, and 17
(Br. 5-12). As no arguments have been provided for claims 2-9, 12, 14-16,
and 18-22 in the Amended Appeal Brief any arguments for these claims is
deemed to have been waived. Only those arguments actually made by
Appellant have been considered in this decision. Arguments which
Appellant could have made but chose not to make in the Briefs have not
been considered and are deemed to be waived. See 37 C.F.R.
§ 41.37(c)(1)(vii) (2008)

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(c) a first pharmacy having a first pharmacy computer
communicatively connected to the server, wherein the first pharmacy
computer is configured to: retrieve the prescription from the server;
and transmit a first bid for the prescription to the server, wherein the
first bid is stored on the server;
(d) a second pharmacy having a second pharmacy computer
communicatively connected to the server, wherein: the second
pharmacy computer is configured to: retrieve the prescription from the
server; and transmit a second bid for the prescription to the server,
wherein the second bid is stored on the server; and
(e) a second computer communicatively connected to the
server, wherein the second computer is operated by a patient and is
configured to: retrieve the first bid and the second bid; and
select one of (i) the first bid, and (ii) the second bid, such that when
the first bid is selected, the first pharmacy fills the prescription, and
when the second bid is selected, the second pharmacy fills the
prescription.

THE REJECTIONS
The Examiner relies upon the following as evidence in support of the
rejections:
Chan US 2001/0039503 A1 Nov. 8, 2001
McCormick US 2002/0035484 A1 Mar. 21, 2002
Munoz US 2002/0052760 A1 May 2, 2002
Henley US 2002/0065758 A1 May 30, 2002
Hwangbo US 2003/0154376 A1 Aug. 14, 2003
Henley US 2003/0195838 A1 Oct. 16, 2003
Babowicz US 2005/0039032 A1 Feb. 17, 2005

The following rejections are before us for review:
1. Claims 1, 12-13, and 16 are rejected under 35 U.S.C. § 103(a)
as unpatentable over Munoz and Henley ‘838.
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2. Claims 2-9 and 14-15 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Munoz, Henley ‘838, and Hwangbo.
3. Claims 10-11 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Munoz, Henley ‘838, Hwangbo, and McCormick.
4. Claims 17-22 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Henley ‘758, Chan, and Babowicz.

THE ISSUES
The issue for each claim is if the Appellant has shown that the
rejection of record would not have been obvious taking into consideration
the Declaration of record provided for each respective claim that has been
argued.

FINDINGS OF FACT
We find the following enumerated findings of fact (FF) are supported
at least by a preponderance of the evidence:2
FF1. Munoz has disclosed a system for automated prescription
management (Title).
FF2. Munoz at Fig. 14 at [0070] shows and discloses a physician’s office
computer 300/306 in communication with a pharmacy 318 over telephone
lines 330.

2 See Ethicon, Inc. v. Quigg, 849 F.2d 1422, 1427 (Fed. Cir. 1988)
(explaining the general evidentiary standard for proceedings before the
Patent Office).
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FF3. Henley ‘838 has disclosed a system for the acquisition of medical
services and products (Title) which uses an auction system over a public
network such as the Internet (Abstract).
FF4. Henley ‘838 in Fig. 7 shows buyer and sellers connecting with each
other through a separate system 16.
FF5. Henley ‘758 at [0032] discloses using a computer system for enabling
buyers of medical services to negotiate with providers of those services and
that pharmacy services [0093] may be included.
FF6. Chan has disclosed that a health and wellness program (Abstract) may
use a digital certificate [0073].
FF7. Babowicz has disclosed the use of a secret key 216 as part of an
authentication process [0027].

ANALYSIS
Claims 1, 13
The Appellant argues that the rejection of claims 1 and 13 is improper
because the claims describe how the “first computer is functionally distinct”
and “is operated by a physician, whereas the server is operated by a service
provider” and that the combination would not have been obvious (Amended
Br. 5-6). The Appellant has also provided a Declaration under 35 C.F.R. §
1.132 with an appendix to show non-obviousness as well.
In contrast, the Examiner has determined that the rejection of record is
proper (Ans. 3-5, 20-29).
We agree with the Examiner. The Appellant argues that that it would
not have been obvious to have the first computer to be “functionally
distinct” from the service provider. The Appellant has not argued that the
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prior fails to disclose a first computer or a server, only that that the
modification to have the first computer be “functionally distinct” from the
server operated by a service provider would not have been obvious
(Amended Br. 5-9). When there is a design need or market pressure to solve
a problem and there are a finite number of identified, predictable solutions, a
person of ordinary skill has good reason to pursue the known options within
his or her technical grasp. If this leads to the anticipated success, it is likely
the product not of innovation but of ordinary skill and common sense. KSR
Int'l Co. v. Teleflex Inc., 550 U.S. 398, 421 (2007). Here, the server can be
located in one of a few finite locations: either with the parties such as the
physician or pharmacy themselves or with a separate service provider. One
of ordinary skill in the art would readily have grasped that by using a
separate service provider the third party could beneficially handle all the
data traffic and be contracted for building contacts with more pharmacies to
obtain a lower price in the auctions as well as handling payment issues and
such a modification would have been readily obvious for these advantages.
For these reasons we consider the Examiner to have established a prima
facie case obviousness.
We recognize that evidence of secondary considerations, such as that
presented by the Appellant must be considered in route to a determination of
obviousness/nonobviousness under 35 U.S.C. § 103. Accordingly, we
consider anew the issue of obviousness under 35 U.S.C. § 103, carefully
evaluating and weighing both the evidence relied upon by the Examiner and
the objective evidence of nonobviousness provided by the Appellant. “An
applicant may rebut a prima facie case of obviousness by providing a
“showing of facts supporting the opposite conclusion.” Such a showing
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dissipates the prima facie holding and requires the examiner to “consider all
of the evidence anew”. In re Kumar 418 F.3d 1361, 1368 (Fed. Cir. 2005).
The Declaration filed under 35 U.SC. § 132 by Constantine
Domashnev has been fully considered, but is not deemed persuasive to show
that the rejection of record is improper after evaluating and weighing all the
evidence relied upon by the Examiner and provided by the Appellant. Note
that the Declaration of Domashnev provides largely opinion as opposed to
factual evidence as to whether the combination would have been obvious.
The Appendix provided with the Declaration provides a survey card stating
that someone or people would be willing to pay $20/month for such a
service but this is not alone an indicator nonobviousness. “While objective
factual evidence going towards a § 103 determination is preferable to
statements of opinion on the issue, the nature of the matter sought to be
established, as well as the strength of the opposing evidence, must be taken
into consideration in assessing the probative value of expert opinion.” In re
Oelrich, 579 F.2d 86, 91 (CCPA 1978). In this case, the Declaration of
Domashnev when viewed anew with all the evidence in the record does not
provide sufficient evidence to reach a conclusion of nonobviousness. For
this reason the rejection of claims 1 and 13, and their dependent claims not
separately argued, is sustained.

Claims 10-11
The Appellant argues that the rejection of claims 10-11 is improper
because the claims relate to “directions and mapping of the pharmacies” and
that the combination of the cited references is improper. In contrast, the
Examiner has determined that the cited rejection is proper (Ans. 14-15).
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We agree with the Examiner. The Appellant has not argued that the
cited prior art fails to teach providing directions and mapping (Amended Br.
9-10). A variety of advertisements are well known in many arts to provide
directions and maps to aid the customer in locating the business to increase
profits. The Examiner has established a prima facie of obviousness with
respect to these claims as well as the cited combination of references would
provide the further benefit of being able to see where the pharmacies were
located. The Declaration of Domashnev when viewed anew with all the
evidence in the record does not provide sufficient evidence to reach a
conclusion of nonobviousness here either for the similar reasons to those
given above. For this reason the rejection of claims 10 and 11 is sustained.

Claim 17
The Appellant has argued that the rejection of claim 17 is improper
but have not argued that the cited prior art fails to disclose any claimed
element (Amended Br. 10) only that the combination would not have been
obvious. The Examiner has determined that the rejection of record is proper
(Ans. 16-18).
We agree with the Examiner. Henley has disclosed using a computer
system for enabling buyers of medical services to negotiate with providers of
those services and that pharmacy services may be included (FF5). Chan has
disclosed using a digital certificate (FF6) and Babowicz has disclosed the
use of a secret key 216 as part of the authentication process (FF7) which
provides authentication security. The modification of Henley’s system to
include the recited features of Chan and Babowicz would have been an
obvious, predictable combination of familiar elements for a more secure
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computer system and prima facie case of obviousness has been established.
The Declaration of Domashnev when viewed anew with all the evidence in
the record does not provide sufficient evidence to reach a conclusion of
nonobviousness here either for similar reasons to those given above. For
this reason the rejection of claims 17 and its dependent claims not separately
argued is sustained.

CONCLUSIONS OF LAW
We conclude that Appellant has not shown that the Examiner erred in
rejecting claims 1-22 as listed in the rejections section above.

DECISION
The Examiner’s rejection of claims 1-22 is sustained.

AFFIRMED

MP