Ex Parte Giang et al

Patent Trial and Appeal Board

Apr 19, 2013

11443862 (P.T.A.B. Apr. 19, 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.
11/443,862 05/31/2006 Phan H. Giang 2005P09342US01 4133
28524 7590 04/22/2013
SIEMENS CORPORATION
INTELLECTUAL PROPERTY DEPARTMENT
170 WOOD AVENUE SOUTH
ISELIN, NJ 08830
EXAMINER
CONYERS, DAWAUNE A
ART UNIT PAPER NUMBER
2159
MAIL DATE DELIVERY MODE
04/22/2013 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 PHAN H. GIANG, WILLIAM A. LANDI,
and SATYAKAMA SANDILYA
____________________

Appeal 2010-0110791
Application 11/443,862
Technology Center 2100
____________________

Before JEAN R. HOMERE, MICHAEL J. STRAUSS, and JOHN G. NEW,
Administrative Patent Judges.

HOMERE, Administrative Patent Judge.

DECISION ON APPEAL

1 The real party in interest is Siemens Medical Solutions USA, Inc. (App Br.
1.)
Appeal 2010-011079
Application 11/443,862

2
I. STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
Final Rejection of claims 1-24. (App. Br. 1.) We have jurisdiction under 35
U.S.C. § 6(b).
We affirm.
Appellants’ Invention
Appellants invented a method and system for performing error
tolerant searches and for filtering sensitive medical data in a patient database
to retrieve records corresponding to a search query within a specified
response time. (Abstr.) In particular, upon receiving search criteria within
the search query, a suitable retrieval formula (e.g. a filter) is used to
maximize error tolerance for the search criteria as well as to keep the
retrieved data within the pool size limit and time response requirements.
(Spec. 16, ll. 12-18.)
Illustrative Claim
Independent claim 1 further illustrates the invention. It reads as
follows:
1. A method for data sensitive filtering in patient database
searches, said method comprising the steps of:
providing a search criteria comprising one or more search
locator fields;
determining a retrieval formula from said search criteria
that maximizes error tolerance in said search criteria;
determining, prior to execution of said retrieval formula,
whether said retrieval formula can be executed within a
predetermined time requirement, wherein if no retrieval formula
Appeal 2010-011079
Application 11/443,862

3
can be found that satisfies said response time requirements,
requesting additional search criteria;
retrieving said candidate records from said database;
scoring each said candidate record by comparing a search
criteria locator field with a corresponding retrieved record field;
determining whether said score of said candidate record
exceeds a predefined threshold, and if said candidate score does
exceed said threshold, adding said candidate record to a list of
records to be returned in response to said search criteria.

Prior Art Relied Upon
Cuthbertson US 5,724,597 Mar. 3, 1998
Hunter US 6,018,735 Jan. 25, 2000
Lepien US 6,636,850 B2 Oct. 21, 2003
Borthwick US 2004/0019593 A1 Jan. 29, 2004
Santosuosso US 2005/0108188 A1 May 19, 2005

Rejections on Appeal2
The Examiner rejects the claims on appeal as follows:
1. Claims 1-24 stand rejected under 35 U.S.C. § 112, first paragraph
as failing to comply with the written description requirement.
2. Claims 1-24 stand rejected under 35 U.S.C. § 112, first paragraph
as failing to comply with the enablement requirement.
3. Claims 1-24 stand rejected under 35 U.S.C. § 112, second
paragraph as being indefinite.

2 The Examiner withdrew the non-statutory subject matter rejection
previously entered against claims 1, 8, and 18 under 35 U.S.C. § 101. (Ans.
3.)
Appeal 2010-011079
Application 11/443,862

4
4. Claims 1, 2, 7-19, and 24 stand rejected under 35 U.S.C. § 103(a)
as unpatentable over the combination of Borthwick, Santosuosso,
and Lepien.
5. Claims 3, 6, 20, and 23stand rejected under 35 U.S.C. § 103(a) as
unpatentable over the combination of Borthwick, Santosuosso,
Lepien, and Cuthbertson.
6. Claims 4, 5, 21, and 22 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over the combination of Borthwick, Santosuosso,
Lepien, Cuthbertson, and Hunter.

ANALYSIS
We consider Appellants’ arguments seriatim as they are presented in
the Appeal Brief, pages 8-19.3

Dispositive Issue: Did the Examiner err in concluding that Appellants’
specification does not adequately describe upon determining, prior to
executing a retrieval formula associated with an initial search criteria, that
the retrieval formula cannot be executed within a specified response time
requirement, requesting additional search criteria, as recited in claim 1
thereby (1) causing the claim to fail to comply with the written description
and enablement requirements under 35 U.S.C. § 112 first paragraph, (2)

3 Appellants repeat at pages 6-26 of the Reply Brief substantially the same
arguments, verbatim, previously raised in the Appeal Brief. Therefore, we
will not cite to the Reply Brief.
Appeal 2010-011079
Application 11/443,862

5
rendering the claim indefinite under 35 U.S.C. § 112, second paragraph, and
rendering the claim unpatentable under 35 U.S.C. § 103 (a)?

Appellants argue that because the Examiner’s rejections are
improperly based upon the unsupported conclusion that the Specification
does not adequately describe the emphasized limitations above, the
rejections are in error. (App. Br. 8-16.) In particular, Appellants argue that
“[p]ages 9-13 of the specification disclose various retrieval formulae that
balance the number of records to be retrieved, i.e. the retrieval time, and the
error tolerance.” (Id. at 8.) According to Appellants, because the retrieval
time is sensitive to the number of records retrieved, what applies to the
record size requirement also applies to the time requirement. (Id.) First,
Appellants cite to page 13 of the specification as describing detecting the
record size before executing a search request. (Id. at 8-9.) Second,
Appellants cite to pages 13 and 14 of the specification as describing
tabulating string occurrence frequencies and their conversion to
probabilities. (Id. at 9.) Third, Appellants cite to page 16 of the specification
as describing finding a filtering condition that meets a time response
requirement as well as searching additional criteria if no retrieval formula is
found to satisfy the response time requirement. (Id.) Consequently,
Appellants submit that the aforementioned portions of the specification fully
describe the disputed limitations.
In response, the Examiner concludes that because Appellants’
specification does not describe determining, prior to executing a retrieval
Appeal 2010-011079
Application 11/443,862

6
formula, that the formula can satisfy a response time requirement, and
otherwise requesting additional search criteria, the claim fails to comply
with the written description and enablement requirements. (Ans. 27-30.)
For this same reason, the Examiner concludes that the claim is further
indefinite, and in light of such indefiniteness, the Examiner declines to reject
the disputed limitation on the basis of prior art. (Id. at 30-34.)
As set forth above, the dispositive issue in this appeal turns on
whether Appellants’ specification adequately describes the disputed
limitations emphasized above. Based upon our review of the record before
us, we agree with the Examiner, and Appellants have not shown that the
specification adequately describes the afore-cited limitations. We note at the
outset that while Appellants discuss numerous portions of the specification,
Appellants were not able to offer any direct citation that supports the
disputed limitations. Rather, Appellants’ case is conjectural at best. That is,
Appellants take the position that because the retrieval time is sensitive to the
record size, and the specification describes performing a partial search
(before an SQL query is executed) to determine if the record size
requirement is met, the specification somehow describes that determining
that the time response requirement is also met. Nonetheless, Appellants
acknowledge that the relationship between the record size and the response
time is not a linear one. (App. Br. 8.) Further, Appellants take the position
that such support is buttressed in the description in the specification of
finding a filtering condition that upon determining that the time response
Appeal 2010-011079
Application 11/443,862

7
requirement is not satisfied, additional search criteria are obtained from the
user. We do not agree with Appellants.
Our reviewing court guides that “[a] description which renders
obvious the invention for which an earlier filing date is sought is not
sufficient.” Lockwood v. American Airlines, Inc., 107 F.3d 1565, 1572 (Fed.
Cir. 1997). “[I]t is ‘not a question of whether one skilled in the art might be
able to construct the patentee’s device from the teachings of the disclosure....
Rather, it is a question whether the application necessarily discloses that
particular device.’” Id. (quoting Martin v. Mater, 823 F.2d 500, 504 (Fed.
Cir. 1997)).
We agree with the Examiner that the specification at best supports that
prior to executing the retrieval formula (SQL query) against the entire
database, a dictionary of high frequency strings is built to allow a partial
search of the input string thereagainst. If the partial search does not satisfy
the record size requirements, additional strings from the input query are
searched until a satisfactory result is obtained. (Spec. 13, ll. 9-17.) We find
this cited portion of the specification appears to support that a determination
of whether the record size requirement is met can be performed prior to
executing the SQL query. However, we find no description or indication in
the specification that such partial search (prior to executing the retrieval
formula) also helps determine whether the time requirement is met.
Although such outcome is conjecturally possible based on the so-called
relationship between the record size and retrieval time requirement, it would
only show that the specification discusses the possibility of such occurrence
Appeal 2010-011079
Application 11/443,862

8
(as opposed to a probability thereof), which under the controlling case law
would be insufficient to show that the specification describes the limitation.
Additionally, given the fact that the relationship between the response time
requirement and the record size is not linear, the ordinarily skilled artisan
would have no way of ascertaining the exact response time for a particular
record size beyond the general notion that the bigger the record size is, the
longer the response time will be. Further, although the specification
discusses that a determination of whether the response time requirement
being met based on a filtering condition (Spec. 16), the specification does
not indicate that such determination is made prior to executing the formula
associated with the filtering condition. It follows that Appellants have not
shown that the Examiner erred in concluding that the specification fails to
support the disputed limitations. Consequently, we affirm the Examiner’s
§ 112 rejections as set forth above.
Regarding the prior art rejections of claims 1-24, the Examiner admits
that in light of the ambiguities surrounding the claims, a prior art rejection of
the disputed limitations is not proper. (Ans. 32.) However, despite the
noted deficiencies, the Examiner nonetheless rejects the cited claims
including the disputed limitations. (Id. at 9.) We agree with the Examiner
that in light of the ambiguities surrounding the scope of the disputed
limitations, the prior art rejections of the cited claims are improper.
Consequently, we pro forma reverse the outstanding prior art rejections of
claims 1-24. The subject matter encompassed by the claims on appeal must
be reasonably understood without resort to speculation. Presently,
Appeal 2010-011079
Application 11/443,862

9
speculation and conjecture must be utilized by us and by the artisan
inasmuch as the claims on appeal do not adequately reflect what the
disclosed invention is. Note In re Steele, 305 F.2d 859, 862 (CCPA 1962)
(A prior art rejection cannot be sustained if the hypothetical person of
ordinary skill in the art would have to make speculative assumptions
concerning the meaning of claim language.); Note also In re Wilson, 424
F.2d 1382, 1385 (CCPA 1970).
DECISION
We affirm the Examiner’s § 112 rejections of claims 1-24 as set forth
above. However, we reverse the Examiner’s prior art rejections of claims 1-
24 as set forth above.
Because we have affirmed at least one ground of rejection with
respect to each claim on appeal, the Examiner’s decision is affirmed. See
37 C.F.R. § 41.50(a)(1).
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).

AFFIRMED

msc