Ex Parte Friedlander et al

Patent Trial and Appeal Board

Aug 8, 2016

13159076 (P.T.A.B. Aug. 8, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/159,076 06/13/2011 ROBERT R. FRIEDLANDER
79230 7590 08/10/2016
Law Office of Jim Boice
3839 Bee Cave Road
Suite 201
West Lake Hills, TX 78746
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
END920110087US 1 1739
EXAMINER
TIEDEMAN, JASON S
ART UNIT PAPER NUMBER
3686
NOTIFICATION DATE DELIVERY MODE
08/10/2016 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address( es):
J ennifer@BoiceIP.com
Emily@BoiceIP.com
Jim@BoiceIP.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ROBERT R. FRIEDLANDER and JAMES R. KRAEMER
Appeal2014-003744 1
Application 13/159,0762
Technology Center 3600
Before JOSEPH A. FISCHETTI, NINA L. MEDLOCK, and
BRADLEY B. BAY AT, Administrative Patent Judges.
MEDLOCK, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's final
rejection of claims 1-20. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.
1 Our decision references Appellants' Appeal Brief ("App. Br.," filed
August 13, 2013) and Reply Brief ("Reply Br.," filed January 30, 2014), and
the Examiner's Answer ("Ans.," mailed December 9, 2013) and Final Office
Action ("Final Act.," mailed May 10, 2013).
2 Appellants identify International Business Machines Corporation as the
real party in interest. App. Br. 2.
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Application 13/159,076
CLAIMED INVENTION
Appellants' claimed invention "relates to the field of computers, and
specifically to the use of computers in the field of medicine" and "more
particularly ... to the use of computers in choosing proper medical
treatment" (Spec. i-f 1 ).
Claim 1, reproduced below, is illustrative of the subject matter on
appeal:
1. A method of creating a recommended course of
medical treatment for a current patient, the method comprising:
receiving, by one or more processors, a current medical
diagnosis of a medical condition being suffered by a current
patient;
identifying, by one or more processors, a cohort for the
current patient, wherein the cohort comprises persons who have
been diagnosed with a same medical condition being suffered by
the current patient;
identifying and retrieving, by one or more processors, past
medical treatment sets of past medical treatment procedures that
\'l/ere used to treat members of the cohort for the same medical
condition being suffered by the current patient, wherein the past
medical treatment sets are stored in a cohort medical treatment
set database;
comparing, by one or more processors, past results and
constraints for members of the cohort to desired results and
constraints for the current patient;
sorting, by one or more processors, the past medical
treatment sets based on how closely the past results and
constraints for members of the cohort match desired results of
the current patient and constraints for the current patient; and
presenting, by one or more processors, the sorted past
medical treatment sets as a recommended course of treatment to
a health care provider for the current patient.
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REJECTIONS3
Claims 1, 2, and 9 are rejected under 35 U.S.C. § 102(b) as anticipated
by Rosales (US 2006/0200010 Al, pub. Sept. 7, 2006).
Claims 3 and 4 are rejected under 35 U.S.C. § 103(a) as unpatentable
over Rosales and Friedlander '523 (US 2009/0240523 Al, pub. Sept. 24,
2009).
Claim 5 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Rosales, and Friedlander '523 as evidenced by Christopher Fundakowski et
al., Disfigurement perception, Quality of Life, and Mental Health in the
Posttreatment Head and Neck Cancer Patient (hereinafter "Fundakowski")
and Elizabeth Hertenstein et al., Quality of life changes following inpatient
and outpatient treatment in obsessive-compulsive disorder: a study with
12 monthsfollow-up, ANNALS OF GENERAL PSYCHIATRY 12:4 (2013)
(hereinafter "Hertenstein"), and Loss of Mobility Found to Impact Quality of
Life and Emotional and Financial Health of Most People Living with
Multiple Sclerosis, BUSINESS WIRE (March 25, 2008) (hereinafter "MS").
Claim 6 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Rosales and Friedlander '523 as evidenced by Nathaniel Katz, The Impact of
Pain Management on Quality of Life, 24 JOURNAL OF p AIN AND SYSTEM
MANAGEMENT S39, Vol. 24, No. IS (July 2002) (hereinafter "Katz"), and
Tahereh Ziaian et al., Treatment burden and health-related quality of life of
children with diabetes, cystic fibrosis and asthma, 42 JOURNAL OF
PEDIATRICS AND CHILD HEALTH 596 (2006) (hereinafter "Ziaian").
3 The rejection of claims 1-14 under 35 U.S.C. § 112, second paragraph,
has been withdrawn (Ans. 3).
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Application 13/159,076
Claims 7 and 8 are rejected under 35 U.S.C. § 103(a) as unpatentable
over Rosales and Guide to History Taking and Examination, UCL Medical
School, University College London (2009-10) (hereinafter "GTHT AE").
Claim 10 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Rosales and David J. Pettitt et al., Comparison of World Health
Organization and National Diabetes Data Group Procedures to Detect
Abnormalities of Glucose Tolerance During Pregnancy, 17 DIABETES CARE
1264 (November 1994) (hereinafter "Pettitt").
Claims 11-13 are rejected under 35 U.S.C. § 103(a) as unpatentable
over Rosales and Cardella (US 2011/0060737 Al, pub. Mar. 10, 2011).
Claim 14 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Rosales.
Claims 15-20 are rejected under 35 U.S.C. § 103(a) as unpatentable
over Friedlander '766 (US 2009/0299766 Al, pub. Dec. 3, 2009).
ANALYSIS
Anticipation
We are not persuaded by Appellants' argument that the Examiner
erred in rejecting claim 1 under § 102(b) because Rosales fails to discloses
"comparing ... constraints for members of the cohort to ... constraints for
the current patient," as recited in claim 1 (App. Br. 9-10). Instead, we agree
with, and adopt the Examiner's findings as set forth in the response to
Appellants' argument at pages 3---6 of the Answer.
In this regard, we agree with the Examiner that the term "constraints"
can be interpreted, under a broadest reasonable interpretation standard, to
include demographic information and Rosales discloses that "clinical data"
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(i.e., data related to a cohort of patients) and "patient data" (i.e., data related
to a particular patient of interest), which include demographic information,
are compared to arrive at an appropriate treatment for the patient (Ans. 3-5
(citing Rosales i-fi-123, 24, 28, 37, 40)).
Referencing the Specification, Appellants argue that demographic
information (e.g., age, sex), as disclosed in Rosales, "is not a constraint
(i.e., what resources are available, how the patient will suffer from the
treatment, etc. - see paragraphs [0033] - [0034] of the present specification),
but rather is a tool for diagnosing and treating a particular patient" (Reply
Br. 2). Yet neither paragraph 33 nor paragraph 34 of the Specification
defines the term "constraints." Instead, those paragraphs provide non-
limiting examples only. Contrary to Appellants' assertions (id. at 3), we also
find nothing in paragraph 33 or paragraph 34 to preclude the Examiner's
broad, but reasonable, interpretation.
Rosales discloses that "patient data" is compared with "clinical data"
to determine an appropriate treatment for the patient based on how previous
patients (cohort members) were treated. And demographic information is
included in that comparison. Accordingly, we agree with the Examiner that,
under a broadest reasonable interpretation, Rosales discloses "comparing ...
constraints for members of the cohort to ... constraints for the current
patient," as recited in claim 1 (see Ans. 4--5 (citing Rosales i-fi-128, 37, 40)).
In view of the foregoing, we sustain the Examiner's rejection of
claim 1under35 U.S.C. § 102(b). We also sustain the rejection of
dependent claims 2 and 9, which are not argued separately.
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Obviousness
Dependent Claims 3-5, 7, and 14
Each of claims 3-5, 7, and 14 ultimately depends from claim 1.
Appellants do not present any arguments in support of the patentability of
these dependent claims. Therefore, we sustain the rejections of claims 3-5,
7, and 14 under 35 U.S.C. § 103(a).
Dependent Claim 6
In rejecting claim 6 under 35 U.S.C. § 103(a), the Examiner
acknowledges that Rosales does not disclose or suggest "weighting ... the
past medical treatment sets according to how closely constraints on
performing the past medical treatment procedures match the current patient's
constraints in terms of incurred time, patient pain, resource use, and
expended money, wherein said weighing adjusts said sorting," as recited in
claim 6, and the Examiner cites Friedlander '523 to cure the deficiency of
Rosales (Final Act. 12). The Examiner finds that Friedlander '523 discloses
the generation of a treatment plan that is optimized for quality of life,
resources and costs, where quality of life includes incurred time, as
evidenced by Ziaian, and pain, as evidenced by Katz (id.; see also Ans. 7
(citing Friedlander '523 i-fi-162, 63; Ziaian, pp. 596-597; Katz, Abstract)).
The Examiner further finds that Friedlander '523 discloses "wherein said
weighing adjusts said sorting" because "optimization removes certain
treatments that do not meet the optimization criteria" and, thus, "adjusts the
treatments by narrowing the available treatments" (see Ans. 7-8). The
Examiner concludes that it would have been obvious to a person of ordinary
skill in the art at the time of Appellants' invention to "combine the noted
features of Friedlander ('523) with [the] teaching of Rosales since the
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combination of the two references is merely combining prior art elements
according to known methods to yield predictable results" (Final Act. 12-13).
Appellants do not deny that Friedlander '523 discloses that patient
pain, resource use, and expended money can be considered when
establishing a pharmaceutical treatment plan. Nor do Appellants deny that
Ziaian discloses that incurred time is a factor to be considered when creating
a medical treatment plan. To the contrary, Appellants admit as much (Reply
Br. 3). Instead, Appellants argue that claim 6 is allowable because
no combination of the cited prior art teaches or suggests
comparing (i.e., determining a match) constraints of a current
patient to constraints to past medical treatment procedures, and
then adjusting the sorting of the past medical treatment sets
accordingly ("weighting, by one or more processors, the past
medical treatment sets according to how closely constraints on
performing the past medical treatment procedures match the
current patient's constraints in terms of incurred time, patient
pain, resource use, and expended money, wherein said weighting
adjusts said sorting").
Id. at 4.
Appellants' argument is not persuasive at least because it does not rise
to the level of a substantive argument for patentability. See 37 C.F.R.
§ 41.37(c)(l)(iv) ("A statement which merely points out what a claim recites
will not be considered an argument for separate patentability of the claim.");
cf In re Lovin, 652 F.3d 1349, 1357 (Fed. Cir. 2011) (holding that "the
Board reasonably interpreted Rule 41.37 to require more substantive
arguments in an appeal brief than a mere recitation of the claim elements and
a naked assertion that the corresponding elements were not found in the
prior art").
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Appellants quote the claim language and argue that the claimed
subject matter is not disclosed or suggested by the cited references. But
Appellants do not present persuasive argument or technical reasoning to
explain why the Examiner's obviousness finding is unreasonable or
unsupported. For example, Appellants do not explain why optimizing a
treatment plan for incurred time, patient pain, resource use, and expended
money does not constitute "weighting," as required by claim 6.
In view of the foregoing, we sustain the Examiner's rejection of
claim 6 under 35 U.S.C. § 103(a).
Dependent Claim 8
Claim 8 depends from claim 1, and recites that the method further
comprises
weighting . . . the past medical treatment sets according to how
closely descriptions for the current patient match descriptions of
cohort members treated by particular medical treatment sets,
wherein the descriptions comprise an experienced trauma that is
not directly attributable to the current medical complaint of the
current patient.
In rejecting claim 8 under 35 U.S.C. § 103(a), the Examiner finds that
Rosales discloses "weighting ... the past medical treatment sets according
to how closely descriptions for the current patient match descriptions of
cohort members treated by particular medical treatment sets" (Final Act. 14
(citing Rosales i-fi-124, 27, 40); see also Ans. 8-9 (explaining that Rosales
discloses that patient histories are part of the "clinical data" and "patient
data" that are compared to arrive at a treatment)). But the Examiner
acknowledges that Rosales does not disclose "wherein the descriptions
comprise an experienced trauma that is not directly attributable to the current
medical complaint of the current patient" (Final Act. 14; see also Ans. 9
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(acknowledging that Rosales does not explicitly disclose that patient history
may comprise experienced trauma that is not directly attributable to a
patient's current medical complaint)). The Examiner cites GTHTAE to cure
the deficiency of Rosales (Final Act. 14--15 (citing GTHTAE, pg. 8);
see also Ans. 10 (noting that GTHTAE discloses that a patient's medical
history will include information about past accidents, injuries, and/or
surgeries/operations, which the Examiner interprets as prior trauma not
attributable to the patient's current medical complaint)). And the Examiner
concludes that it would have been obvious to a person of ordinary skill in the
art at the time of Appellants' invention to "combine the noted features of
GTHTAE with the teaching of Rosales since the combination of the two
references is merely combining prior art elements according to known
methods to yield predictable results" (Final Act. 15).
Appellants argue that even if GTHT AE is broadly read as disclosing
prior trauma that is not attributable to the patient's current medical
complaint, "GTHTAE and the other cited art never teaches [sic] or suggests
[sic] using such unattributable data to weight past medical treatment sets"
(Reply Br. 4). But again, aside from quoting the claim language, and
asserting that the claimed subject matter is not disclosed or suggested by the
cited art (id. at 4--5), Appellants do not provide any persuasive argument or
technical reasoning to explain why the Examiner's findings are unreasonable
or unsupported.
Therefore, we sustain the Examiner's rejection of claim 8 under
35 U.S.C. § 103(a).
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Dependent Claim 10
Claim 10 depends from claim 1, and recites the method of claim 1,
"wherein at least two of the sorted past medical treatment sets are sets of
multiple sequential medical treatment sets for a same medical condition,"
and wherein the method further comprises, inter alia:
selecting, by one or more processors, two of the sets of multiple
sequential medical treatment sets that have a same initial
medical treatment procedure;
determining ... which of the two sets of multiple sequential
medical treatment sets is a matching medical treatment set that
more closely matches the desired results and constraints for the
current patient;
transmitting ... a recommendation to execute the same initial
medical treatment procedure on the current patient at an initial
time; and
transmitting ... a recommendation to execute remaining
medical treatment procedures, from the matching medical
treatment set, on the current patient at a later time.
We are persuaded by Appellants; argument that the Examiner erred in
rejecting claim 10 under 35 U.S.C. § 103(a) because neither Rosales nor
Pettitt discloses or suggests "transmitting ... a recommendation to execute
the same initial medical treatment procedure on the current patient at an
initial time" and "transmitting ... a recommendation to execute remaining
medical treatment procedures, from the matching medical treatment set, on
the current patient at a later time," as recited in claim 10 (App. Br. 14--15;
Reply Br. 5).
The Examiner cites Rosales as disclosing that multiple applicable
treatments are determined based on the cohort analysis (Ans. 11
(citing Rosales i-fi-123, 28, 30, 32, 34, 52)). But the Examiner acknowledges
that Rosales does not explicitly disclose ( 1) that the treatments have an
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initial step and a subsequent step or (2) that the treatments may share an
initial step and have differing subsequent steps (id.). The Examiner cites
Pettitt to cure the deficiency of Rosales (id. (citing Pettitt, p. 1264 as
disclosing two different glucose tests to determine appropriate insulin
treatment where the two tests have an oral swab as their first step and
differing second steps)). And the Examiner concludes that "[g]iven the
broadest reasonable interpretation," the combination of Rosales and Pettitt
discloses the argued limitations (id. at 12).
We agree with Appellants that the cited portions of Rosales do not
disclose or suggest "recommending the execution of an initial medical
treatment procedure on the current patient at an initial time, and the
recommendation that remaining medical treatment procedures, from the
matching medical treatment set, be performed at a later time" (Reply Br. 5).
We also find no such disclosure or suggestion on page 1264 of Pettitt.
Therefore, we do not sustain the rejection of claim 10 under 35 U.S.C.
§ 103(a).
Dependent Claims 11-13
We are persuaded by Appellants' argument that the Examiner erred in
rejecting claims 11-13 under 35 U.S.C. § 103(a) because neither Rosales nor
Cardella discloses or suggests "modifying .... displayed information about
sorted past medical treatment sets according to a profile of the health care
provider for the current patient," as recited in each of claims 11-13 (App.
Br. 15-17; see also Reply Br. 5-6).
The Examiner cites Rosales as disclosing that "clinical data" and
"patient data" include medical records (Ans. 12 (citing Rosales i-fi-f 19, 24,
27)), and that the medical records further consist of data regarding
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treatments incurred by a patient (id. (citing Rosales if 18)). The Examiner
interprets the content of treatment data to include information regarding the
provider that performed the treatment, and further broadly interprets "profile
of the healthcare provider," as claimed, to be any information associated
with the provider (id.).
Referencing paragraph 39 of Rosales, the Examiner notes that Rosales
discloses that clinical data may be analyzed in view of patient data and that
the analysis may use clinical records that are considered to be
probabilistically relevant for "the variable of interest and the function to be
maximized" (id. at 13). The Examiner interprets the "variable of interest" to
be the diagnosis of the patient and the "function to be maximized" to be a
constraint, which the Examiner asserts is any information contained within
the clinical data, including provider information (id. (citing Rosales iii! 28,
30, 37, 38)). The Examiner, thus, concludes that, under a broadest
reasonable interpretation, "Rosales teaches modifying (i.e., optimizing based
on a constraint) the past treatment sets according to a profile of the health
care provider" (id.).
The difficulty with the Examiner's reasoning is that we find nothing
in the cited portions of Rosales that expressly discloses using descriptive
information about the patient's healthcare provider to modify "information
about sorted past medical treatment sets" (see Reply Br. 5-6). And, to the
extent that the Examiner relies on inherency, more than speculation is
required. In particular, the Examiner must provide evidence and/or technical
reasoning that makes "clear that the missing descriptive matter is necessarily
present in the thing described in the reference, and that it would be so
recognized by persons of ordinary skill." Continental Can Co. USA, Inc. v.
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Monsanto Co., 948 F.2d 1264, 1268 (Fed.Cir.1991). "lnherency ... may not
be established by probabilities or possibilities. The mere fact that a certain
thing may result from a given set of circumstances is not sufficient." Id. at
1269 (quoting In re Oelrich, 666 F.2d 578, 581(CCPA1981)). No such
evidence or technical reasoning is presented here.
Therefore, we do not sustain the Examiner's rejection of claims 11-13
under 35 U.S.C. § 103(a).
Independent Claims 15 and 18 and Dependent Claims 16, 17, 19, and 20
We are persuaded by Appellants' argument that the Examiner erred in
rejecting claims 15 and 18 under 35 U.S.C. § 103(a) because
Friedlander '766, on which the Examiner relies, does not disclose or suggest
"instructions to sort the past medical treatment sets based on matches, of
past results and constraints for members of the cohort, to desired results of
the current patient and constraints for the current patient," as recited in
claim 15 and similarly recited in claim 18 (App. Br. 18-19; Reply Br. 6).
The Examiner cites paragraphs 12, 56, and 168 of Friedlander '766 as
disclosing the argued limitations (Ans. 14). Yet paragraph 12 merely
discloses establishing a plurality of cohorts and the degree to which a patient
belongs in the plurality of cohorts. And paragraph 56 only discloses that
cohorts are used frequently to test the effectiveness of medical treatments.
Friedlander '7 66 discloses an optimization analyzer in paragraph 168
that performs optimization to maximize one or more parameters against one
or more other parameters, e.g., cost against probability of success. But we
fail to see how, and the Examiner does not adequately explain how
establishing a treatment plan by maximizing one or more parameters against
one or more other parameters discloses or suggests "sort[ing] the past
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medical treatment sets based on matches, of past results and constraints for
members of the cohort, to desired results of the current patient and
constraints for the current patient," as called for in claims 15 and 18.
Therefore, we do not sustain the Examiner's rejection of claims 15
and 18 under 35 U.S.C. § 103(a). For the same reasons, we also do not
sustain the Examiner's rejection of claims 16 and 17 and claims 19 and 20,
which depend from claims 15 and 18, respectively. Cf In re Fritch,
972 F.2d 1260, 1266 (Fed. Cir. 1992) ("dependent claims are nonobvious if
the independent claims from which they depend are nonobvious").
DECISION
The Examiner's rejection of claims 1, 2, and 9 under 35 U.S.C.
§ 102(b) is affirmed.
The Examiner's rejections of claims 3-8 and 14 under 35 U.S.C.
§ 103(a) are affirmed.
The Examiner's rejections of claims 10-13 and 15-20 under
35 U.S.C. § 103(a) are reversed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED-IN-PART
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