Ex Parte Flatt

Board of Patent Appeals and Interferences

Jan 27, 2009

09992764 (B.P.A.I. Jan. 27, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte Jerrold V. Flatt
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Appeal 2008-4096
Application 09/992,764
Technology Center 3600
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Decided: January 27, 2009
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Before, ANTON W. FETTING, DAVID B. WALKER, and BIBHU R.
MOHANTY, Administrative Patent Judges.

MOHANTY, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
The Appellant seeks our review under 35 U.S.C. § 134 of the final
rejection of claims 1-3, 5-18, 20-23, and 25. Claims 4, 19, 24, and 26-27
have been cancelled. We have jurisdiction under 35 U.S.C. § 6(b) (2002).

Appeal 2008-4096
Application 09/992,764

SUMMARY OF THE DECISION
We REVERSE.

THE INVENTION
The Appellant’s claimed invention is directed to web site accessible
by a plurality of health care providers. A request for a patient consultation
from a first health care provider to be given by a second health care provider
is received at the web site. The request may include insurance, patient, and
appointment information. The second health care provider may choose to
accept or decline the request for patient consultation. (Specification, 3:6-7).
Claim 1, reproduced below, is representative of the subject matter of appeal.

Claim 1: A method of managing patient referrals, comprising:

providing a web site accessible to a plurality of health care providers;

receiving through the web site, a plurality of health care provider
registrations each associated with a health care provider;

receiving a request for a patient consultation from a first health care
provider to be performed by a second health care provider, both the
first health care provider and the second health care provider having a
health care provider registration;

notifying the second health care provider of the request for a patient
consultation according to a preferred mode of communication setting
set by the second health care provider on the web site; and

receiving a peer rating from the first health care provider of the
second health care provider.

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THE REJECTIONS
The Examiner relies upon the following as evidence in support of the
rejections:
Kiselik US 2001/0034631 A1 Oct. 25, 2001
Filler US 2001/0051881 A1 Dec. 13, 2001
Bianco US 2002/0082865 A1 Jun. 27, 2002

The following rejections are before us for review:
1. Claims 1-3, 5-18, 20-23 are rejected under 35 U.S.C. § 103(a)
as unpatentable over Filler, Bianco, and Kiselik.
2. Claim 25 is rejected under 35 U.S.C. § 103(a) as unpatentable
over Filler and Bianco.

THE ISSUE
The issue is whether the Appellant has shown that the Examiner erred
in making the aforementioned rejections.
With regards to claims 1-3, 5-17, and 25, the issue turns on whether
Bianco discloses “a preferred mode of communication setting set by the
second health care provider or consulting physician on the web site.”
With regards to claims 18 and 20-23, the issue turns on whether
Bianco discloses “a mode of communication preference set by a referring
health care provider.”

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Application 09/992,764

FINDINGS OF FACT
We find the following enumerated findings of fact (FF) are supported
at least by a preponderance of the evidence1:
FF1. The Specification at pages 19-20, recites “As shown in Fig. 7B, this
web page can show preferences for the mode of notification such as a fax,
pager, and/or e-mail.”
FF2. Fig. 7B of the Specification displays a figure of a webpage in which
boxes for a fax, pager, or e-mail maybe “checked” to be notified.
FF3. Webster’s New World Dictionary, Third College Edition (1988),
defines “preferred” as: 3) to put before something or someone else in one’s
liking, opinion, etc.; like better.
FF4. Webster’s New World Dictionary, Third College Edition (1988),
defines “set” or “setting” as: 3) to put in a certain place or position; cause to
be, lie, stand, etc. in place.
FF5. Bianco discloses a “Message Center” in Figure 11A which only
displays a single e-mail communication mode [0109].
FF6. Bianco discloses that the physician may use a message center similar
to the patients [0135].
FF7. Bianco’s patient registration shown in Figure 9C discloses modes of
communication being through the street address, day time phone number,
evening phone number, and e-mail address. Figure 9C lists possible modes
of communication, but no “preferred mode” is disclosed or identified.

1 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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FF8. Bianco’s physician registration shown in Figures 24A-C discloses
modes of communication being through the street address, day time phone
number, evening phone number, and e-mail address. Figures 24A-C lists
possible modes of communication, but no “preferred mode” is disclosed or
identified.

PRINCIPLES OF LAW
“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., 127 S.Ct. 1727,
1734 (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, (3) the level of skill in the art, and (4) where in evidence, so-called
secondary considerations. Graham v. John Deere Co., 383 U.S. 1, 17-18,
(1966). See also KSR, 127 S.Ct. at 1734 (“While the sequence of these
questions might be reordered in any particular case, the [Graham] factors
continue to define the inquiry that controls.”)

ANALYSIS
Claim Construction
We first construe the meaning of the phrase “a preferred mode of
communication setting set by the second health care provider on the web
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site” as used by the Appellant in the claim 1. We determine the scope of the
claims in patent applications “not solely on the basis of the claim language,
but upon giving claims their broadest reasonable construction ‘in light of the
specification as it would be interpreted by one of ordinary skill in the art.’”
Phillips v. AWH Corp., 415 F.3d 1303, 1316 (Fed. Cir. 2005) (en banc)
(quoting In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir.
2004)). We must be careful not to read a particular embodiment appearing
in the written description into the claim if the claim language is broader than
the embodiment. See Superguide Corp. v. DirecTV Enterprises, Inc., 358
F.3d 870, 875 (Fed. Cir. 2004).
The Specification at page 20, lines 1-2, recites “As shown in Fig. 7B,
this web page can show preferences for the mode of notification such as a
fax, pager, and/or e-mail” (FF1). Fig. 7B of the Specification displays a
figure of a webpage in which boxes for a fax, pager, or e-mail maybe
“checked” to be notified (FF2). Further a conventional definition of the
word “preferred” is “to put before something or someone else in one’s
liking, opinion, etc.; like better” (FF3). A conventional definition of “set” or
“setting” is “to put in a certain place or position; cause to be, lie, stand, etc.
in place.” Giving the phrase “a preferred mode of communication setting set
by the second health care provider on the web site” its broadest reasonable
interpretation in light of the Specification, we find that the word “preferred”
to require there to be more than one possible mode of communication since
some “preference” is required to take place and that some mode be identified
as “preferred.” We also find the phrase “setting set” to require that
something is “set” or “put into position” in the system. Claims 18 and 25
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contain phrases similar to that identified in claim 1 and are similarly
construed.
Claim Analysis
The Appellant argues that the rejections of claims 1, 18, and 25 under
35 U.S.C. § 103(a) as unpatentable over Filler, Bianco, and Kiselik are
improper because the Bianco reference fails to disclose the “preferred mode
of communications” be a “setting set” by the “health care provider.” (Reply
Br. 6-7). The Appellant argues that in Bianco’s disclosure that a physician
enters a list of possible contact information instead of a preferred mode of
communication (Reply Br. 7, emphasis added). The Appellant further
clarifies his argument by stating:
“The selection of a preferred mode of communications as described
in the context of the claimed invention therefore relates to a selection
between one or more different possible modes of communication via
the website, not merely a physician contemplating which email
address to input into the system (Br. 4).
In contrast, the Examiner has found that Bianco does disclose “a
preferred mode of communications” by the e-mail address and registration
features disclosed by Bianco in paragraphs 0109, 0135, 0102 and Fig. 9C.
The Examiner argues that Bianco discloses the cited claimed limitations
under the broadest reasonable interpretation of the claims (Ans. 18-19). The
Examiner has also found that the physician could enter a message stating the
preferred mode of communication in the General Comments section of the
website (Ans. 19).
We agree with the Appellant. Claim 1 requires “a preferred mode of
communication setting set by the second health care provider on the web
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site.” Bianco discloses several modes of communication being entered such
as the street address, day time phone number, evening phone number, and
an e-mail address (FF7, FF8) however this only lists possible modes of
communication, and no “preferred mode” is disclosed as the claim requires.
Bianco also discloses a “Message Center” in Figure 11A but this only
discloses one mode of communication which by e-mail (FF5). Thus in the
embodiment of Bianco in Figure 11A, there is not “a preferred mode or
communication setting set by the second health care provider on the web
site” since the single e-mail address is the only mode of communication
entered and a preferred mode of communication setting set by the health
care provider has not taken place. With regards to the Examiner’s position
that the “General Comments” section of the Bianco website could be used to
enter a preferred mode of communication, we determine this to be the use of
improper hindsight and not supported by the reference. For the above
reasons, the rejection of claim 1 under 35 U.S.C. § 103(a) as unpatentable
over Filler and Bianco is not sustained. Claim 18 contains limitations
similar to claim 1 and the rejection of this claim is not sustained for the same
reasons. The rejection of dependent claims 2-3, 5-17, 21-23 is not sustained
for the same reasons given above.
Claim 25 contains limitations similar to claim 1 and the rejection of
claim 25 under 35 U.S.C. § 103(a) as unpatentable over Filler and Bianco is
not sustained for the same reasons given above.

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Appeal 2008-4096
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CONCLUSIONS OF LAW
We conclude that Appellant has shown that the Examiner erred in
rejecting claims 1-3, 5-18, and 20-23 under 35 U.S.C. § 103(a) as
unpatentable over Filler, Bianco, and Kiselik.
We conclude that Appellant has shown that the Examiner erred in
rejecting claim 25 under 35 U.S.C. § 103(a) as unpatentable over Filler and
Bianco.

DECISON
The Examiner’s rejection of claims 1-3, 5-18, 20-23, and 25 is not
sustained.

REVERSED

JRG

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