Ex Parte Geller

Patent Trials and Appeals Board

Jul 23, 2013

10287957 - (R) (P.T.A.B. Jul. 23, 2013)

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.
10/287,957 11/05/2002 Jacob Geller 340005-2015.1 6856
20999 7590 10/30/2013
FROMMER LAWRENCE & HAUG
745 FIFTH AVENUE- 10TH FL.
NEW YORK, NY 10151
EXAMINER
NGUYEN, TRAN N
ART UNIT PAPER NUMBER
3626
MAIL DATE DELIVERY MODE
10/30/2013 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 PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte JACOB GELLER
____________________

Appeal 2012-003060
Application 10/287,957
Technology Center 3600
____________________

Before MURRIEL E. CRAWFORD, ANTON W. FETTING, and
NINA L. MEDLOCK, Administrative Patent Judges.

MEDLOCK, Administrative Patent Judge.

DECISION ON REQUEST FOR REHEARING
Appeal 2012-003060
Application 10/287,957

2
STATEMENT OF THE CASE1
Appellant filed a Request for Rehearing (hereinafter “Request”) dated
September 23, 2013, of the Patent Trial and Appeal Board’s (hereinafter “the
Board”) Decision, mailed July 23, 2013 (hereinafter “Decision”), in which
we affirmed the Examiner’s rejection of claims 40 and 41 under 35 U.S.C.
§ 103(a) as unpatentable over Brown (US 6,032,119, iss. Feb. 29, 2000) in
view of Appellant Admitted Prior Art.2 We have jurisdiction over the
Request under 35 U.S.C. § 6(b).
ANALYSIS
Appellant alleges in the Request that, in affirming the rejection of
claims 40 and 41, and particularly in adopting the Examiner’s reasoning that
it would have been obvious to modify Brown to include information useful
for diagnosing a patient’s condition, the Board misapprehended or
overlooked that Brown fails to teach or suggest any diagnostic use
(Request 2-3). More particularly, Appellant maintains that by relying on
diagnostic uses of information to justify modifying Brown, the Board
impermissibly modified Brown’s principle of operation, transforming a
simple tool for giving information to a patient into a diagnostic system for
healthcare providers (Request 3-4).

1 This decision will refer to the Appellant’s Appeal Brief (“App. Br.,” filed
August 29, 2011) and Reply Brief (“Reply Br.,” filed December 6, 2011).
2 The Board also reversed the rejection of claim 38 under 35 U.S.C. § 112,
first paragraph, and affirmed the rejections of claims 33-39 under 35 U.S.C.
§ 103(a). Appellant requests rehearing only with respect to the Board’s
decision to affirm the rejection of claims 40 and 41 under 35 U.S.C.
§ 103(a).
Appeal 2012-003060
Application 10/287,957

3
Even assuming arguendo that this argument was overlooked, as
Appellant maintains, that does not mean that the rejection of claims 40 and
41 under 35 U.S.C. § 103(a) must be reversed.
Claim 40 depends from claim 39, which in turn depends from the sole
independent claim 33. Claim 33 is directed to a method of managing
information related to health care for a patient, and recites the method
comprises, inter alia, “acquiring, by a first computer system located at the
patient’s premises, a first medical record, related to the patient, from a first
provider of health care services” and “acquiring, by the first computer
system, a second medical record, related to the patient, from a second
provider of health care services.”
Claim 39 recites that the method of claim 33 further comprises
“acquiring, by the first computer system, a third record . . . ,” and claim 40
recites that “the third record comprises information that identifies a member
of the patient’s family who is not the patient.” Claim 41 depends from
claim 40, and recites that “the third record comprises a medical record
related to the member of the patient’s family.”
There can be no dispute but that claims 40 and 41 merely describe the
nature of the information that constitutes the third record. Such mere
descriptions of data are not entitled to patentable weight unless the
information functionally affects, or otherwise alters, the manner in which the
claimed method is performed. See Ex parte Nehls, 88 USPQ2d 1883, 1888
(BPAI 2008) (precedential).
Here, that the third record comprises “information that identifies a
member of the patient’s family who is not the patient,” as recited in
claim 40, or “a medical record related to the member of the patient’s
Appeal 2012-003060
Application 10/287,957

4
family,” as recited in claim 41 does not affect nor in any way alter the
manner in which the claimed method is performed. As such, the claimed
limitations constitute non-functional descriptive material that may not be
relied on to distinguish the claimed invention from the prior art in terms of
patentability. 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).
For this reason, we decline to modify our prior Decision.

DECISION
Appellant’s Request has been granted to the extent that we have
reconsidered our Decision in light of Appellant’s Request, but is denied in
all other respects.
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)(iv).

DENIED

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