Ex Parte Guten et al

Patent Trial and Appeal Board

Jun 16, 2016

12701890 (P.T.A.B. Jun. 16, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
121701,890 02/08/2010 Sharon M. Guten
26360 7590 06/16/2016
Renner Kenner Greive Bobak Taylor & Weber Co., LPA
First National Tower, Suite 400
106 South Main Street
Akron, OH 44308-1412
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.
GOJ.P.263 1980
EXAMINER
DICKERSON, TIPHANY B
ART UNIT PAPER NUMBER
3623
MAILDATE DELIVERY MODE
06/16/2016 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 SHARON M. GUTEN, PATRICIA A. TAYLOR, and
SONIA A. ALEMAGNO
Appeal2014-001064 1
Application 12/701,8902
Technology Center 3600
Before HUBERT C. LORIN, BRADLEY B. BAY AT, and
TARA L. HUTCHINGS, Administrative Patent Judges.
HUTCHINGS, 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 1-18. We have jurisdiction under 35 U.S.C. § 6(b).
1 Our decision references Appellants' Appeal Brief ("App. Br.," filed
Apr. 5, 2013) and Reply Brief ("Reply Br.," filed Oct. 24, 2013), and the
Examiner's Answer ("Ans.," mailed Sept. 26, 2013), Advisory Action
("Adv. Act.," mailed Nov. 20, 2012), and Final Office Action ("Final Act.,"
mailed Aug. 6, 2012).
2 Appellants identify GOJO Industries, Inc. as the real party in interest.
App. Br. 1.
Appeal2014-001064
Application 12/701,890
We REVERSE and enter a NEW GROUND OF REJECTION
pursuant to our authority under 37 C.F.R. § 41.50(b).
CLAIMED INVENTION
Appellants' claimed invention "relates to the establishment and
maintenance of good hand hygiene practices in institutional environments,
by facilitating individuals' improvement in such practices." Spec. 1:3-10.
Claim 1, reproduced below, is the sole independent claim and
representative of the subject matter on appeal:
1. An online method for improving individual hand
hygiene practices within an institution, comprising:
individually interconnecting a participant's internet
communication device with a program manager, said program
manager having a processing unit and software for interactive
communication with the participant, the participant being an
employee of said institution;
uniquely logging said participant into said interactive
communication;
sequentially engaging in a plurality of sessions of self-
assessment by said participant of hand hygiene practices and
development of hand hygiene self-improvement plans based
thereon, said sessions being controlled by said program manager;
and
effecting communications between said program manager
and said participant between said sessions to implement said
hand hygiene self-improvement plans.
REJECTIONS
Claims 1-16 are rejected under 35 U.S.C. § 103(a) as unpatentable
over Bennett (US 2008/0177836 Al, pub. July 24, 2008), and Institute for
Healthcare Improvement, How-to Guide: Improving Hand Hygiene, A Guide
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Application 12/701,890
for Improving Practices among Health Care Workers, available at
www.IHI.org (2007) (hereinafter "Reference U").
Claims 17 and 18 are rejected under 35 U.S.C. § 103(a)
as unpatentable over Bennett, Reference U, and Pesso
(US 2005/0282126 Al, pub. Dec. 22, 2005).
ANALYSIS
Independent claim 1 and dependent claims 2-16
We are persuaded by Appellants' argument that the Examiner erred in
rejecting claim 1under35 U.S.C. § 103(a) because Bennett does not teach
or suggest "sequentially engaging in a plurality of sessions of self-
assessment by said participant of hand hygiene practices and development of
hand hygiene self-improvement plans based thereon," as recited in claim 1.
App. Br. 4--8.
Bennett describes a system and method for managing health and
wellness programs of an organization. Bennett lf 24. The functional
modules include an administrative module, a primary contact module, and a
participant module. Id. i-f 26, Fig. 3. Figure 5 of Bennett shows the
functionality of the primary contact module. See Bennett, Fig. 5, i-fi-128--40.
As shown in Figure 5, the primary contact module allows a primary contact,
such as an administrator of the organization's health and wellness program,
to send a link to a survey to one or more employees, seeking perceptions and
attitudes of one or more of the health and productivity categories. See id.
i-fi-1 29-31. The survey results are aggregated and assessed, and one or more
health and wellness programs are designed and delivered to the organization
based upon the survey results. Id. i-fi-131-33; Fig. 5.
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Bennett's primary contact module also provides e-leaming to the
primary contact. Id. i-f 40, Fig. 5. If the primary contact terminates a session
before completion, the test may be resumed where the primary contact left
off upon resumption. Id. i-f 40. The participant module allows a user to
complete a survey describing his or her view of the health and productivity
climate of the organization. Id. i-f 41. E-leaming functions in Bennett are
only described with respect to the primary contact module. See id.
The Examiner relies on Bennett at Figure 5 and paragraphs 33 and 40
as disclosing the argued limitation. Final Act. 4. Specifically, the Examiner
finds that "[p]aragraph [33] discloses that designed web-based health
promotions [are] delivered to and assessed by the employees" via a survey
link and login information. Adv. Act. 2. And the Examiner reasons that
"[t]he surveys sent to the employees may be [an] E-Leaming online test used
to survey the users' knowledge (paragraph 40)" and "[t]he various tests may
be stored and re-accessed later, and the user's progress may be tracked over
multiple sessions." Id.
However, we agree with Appellants that e-leaming in Bennett is
described with reference to the primary contact module, not the participant
module, as required by claim 1. Moreover, even assuming arguendo that
Bennett suggests that the participant has access to an e-leaming module,
Bennett does not teach or suggest that the primary contact would develop the
health and wellness plan based on participant engagement in e-leaming.
Accordingly, the relied upon paragraphs fail to adequately support the
Examiner's finding that Bennett discloses "sequentially engaging in a
plurality of sessions of self-assessment by said participant ... development
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Application 12/701,890
of hand hygiene self-improvement plans based thereon, said sessions being
controlled by said program manager," as recited in claim 1.
In view of the foregoing, we do not sustain the Examiner's rejection
of independent claim 1under35 U.S.C. § 103(a). For the same reasons, we
also do not sustain the Examiner's rejection of dependent claims 2-16.
Dependent claims 17 and 18
Claims 17 and 18 ultimately depend from independent claim 1. The
Examiner's rejection of claims 17 and 18 based on Pesso, in combination
with Bennett and Reference U, does not cure the deficiency in the
Examiner's rejection of claim 1. Therefore, we do not sustain the
Examiner's rejection of claims 17 and 18 under 35 U.S.C. § 103(a).
New Ground of Rejection
We enter the following new ground of rejection pursuant to our
authority under 37 C.F.R. § 41.50(b).
1Von-Statutory Subject J\lfatter
Alice Corp. Pty. Ltd. v. CLS Banklnt'l, 134 S. Ct. 2347 (2014)
identifies a two-step framework for determining whether claimed subject
matter is judicially-excepted from patent eligibility under § 101. According
to Alice step one, "[w]e must first determine whether the claims at issue are
directed to a patent-ineligible concept," such as an abstract idea. Alice
Corp., 134 S. Ct. at 2355. Taking claim 1 as representative of the claims on
appeal, the claimed subject matter is directed to self-improvement. Self-
improvement is a fundamental building block of human nature, akin to a law
of nature. As such, it is directed to an abstract idea.
Step two is a search for an "'inventive concept"' - an element or
combination of elements sufficient to ensure that the claim amounts to
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Application 12/701,890
"significantly more" than the abstract idea itself. Id. We see nothing in the
subject matter claimed that transforms the abstract idea of self-improvement
into an inventive concept. Given that the correlation between health and
hygiene is notoriously well-known, narrowing the objective for self-
improvement to "individual hand hygiene practices within an institution"
(claim 1) is not patentably transformative. And the information-gathering
system that is employed, as claimed, is well-known. Any internet-capable
general-purpose computer available at the time the application was filed
would have satisfied the information-gathering system as claimed; that is,
one comprising: (a) an "internet communication device with a program
manager, said program manager having a processing unit and software for
interactive communication"; (b) a capability of "unique logging"; ( c) the
program manager controlling sequential sessions whereby information is
gathered; and ( d) a capability of communicating information based on said
gathered information via the program manager. We see nothing in the
Specification that would suggest otherwise. The discussion therein
describes giving a series of online presentations (e.g., quizzes) via a general
purpose computer. See Spec. 9-14.
Therefore, we enter a new ground of rejection of claims 1-18 under
35 U.S.C. § 101.
DECISION
The Examiner's rejections of claims 1-18 under 35 U.S.C. § 103(a)
are reversed.
We enter a NEW GROUND OF REJECTION of claims 1-18 under
35 U.S.C. § 101, pursuant to our authority under 37 C.F.R. § 41.50(b).
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37 C.F.R. § 41.50(b) provides that "[a] new ground of rejection ...
shall not be considered final for judicial review." 37 C.F.R. § 41.50(b) also
provides that the Appellants, WITHIN TWO MONTHS FROM THE DATE
OF THE DECISION, must exercise one of the following two options with
respect to the new ground of rejection to avoid termination of the appeal as
to the rejected claims:
( 1) Reopen prosecution. Submit an appropriate amendment of the
claims so rejected or new evidence relating to the claims so rejected, or both,
and have the matter reconsidered by the examiner, in which event the
proceeding will be remanded to the Examiner.
(2) Request rehearing. Request that the proceeding be reheard under
§ 41.52 by the Board upon the same record.
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).
REVERSED; 37 C.F.R. § 41.50(b)
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