Ex Parte Haskell et al

Board of Patent Appeals and Interferences

Apr 26, 2010

10252972 (B.P.A.I. Apr. 26, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE 1
___________ 2
3
BEFORE THE BOARD OF PATENT APPEALS 4
AND INTERFERENCES 5
___________ 6
7
Ex parte ROBERT EMMONS HASKELL, GARY HARDEL, and 8
HAROLD KENNETH SHUMAKER 9
___________ 10
11
Appeal 2009-004334 12
Application 10/252,972 13
Technology Center 3600 14
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16
Decided: April 26, 2010 17
___________ 18
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Before MURRIEL E. CRAWFORD, HUBERT C. LORIN, and 20
ANTON W. FETTING, Administrative Patent Judges. 21
FETTING, Administrative Patent Judge. 22
DECISION ON APPEAL 23
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STATEMENT OF THE CASE 1
Robert Emmons Haskell, Gary Hardel, and Harold Kenneth Shumaker 2
(Appellants) seek review under 35 U.S.C. § 134 (2002) of a final rejection of 3
claims 1-28, the only claims pending in the application on appeal. 4
We have jurisdiction over the appeal pursuant to 35 U.S.C. § 6(b) 5
(2002). 6
SUMMARY OF DECISION1 7
We AFFIRM-IN-PART. 8
THE INVENTION 9
The Appellants invented a way of processing organization, location, 10
service and associated information including codes, terms identifiers, 11
business rules and mapping information for use in supporting healthcare or 12
other organization operations (Specification 1:)Field of the Invention. 13
An understanding of the invention can be derived from a reading of 14
exemplary claim 1, which is reproduced below [bracketed matter and some 15
paragraphing added]. 16
1. A system for providing healthcare related information, 17
comprising: 18
[1] at least one database incorporating, 19

1 Our decision will make reference to the Appellants’ Appeal Brief (“App.
Br.,” filed January 16, 2008) and Reply Brief (“Reply Br.,” filed March 13,
2008), and the Examiner’s Answer (“Ans.,” mailed March 13, 2008).
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(a) information identifying a encompassing organization and a 1
plurality of constituent organizations of said encompassing 2
organization including a constituent organization type 3
identifier, and 4
(b) location information identifying a plurality of locations in a 5
constituent organization available to accommodate a patient for 6
different purposes and including a location type identifier, and 7
(c) medical terminology including codes, terms and identifiers 8
supporting consistency of terminology used between said 9
plurality of constituent organizations in identifying a medical 10
condition and an associated service provided at a location of a 11
constituent organization; and 12
[2] an interface processor for employing said at least one 13
database in translating codes, terms or identifiers 14
to be compatible with 15
terminology used by a particular constituent organization 16
in searching data of said particular constituent 17
organization 18
to identify a location of said particular constituent 19
organization providing a particular service associated 20
with a particular medical condition 21
in response to user command to provide location specific 22
healthcare data. 23
24
THE REJECTIONS 25
The Examiner relies upon the following prior art: 26
Sato US 5,911,687 Jun. 15, 1999
Lau US 2002/0129031 A1 Sep. 12, 2002
Johnson US 6,915,265 B1 Jul. 5, 2005
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Claims 24-25 stand rejected under 35 U.S.C. § 112, second paragraph, as 1
failing to particularly point out and distinctly claim the invention. 2
Claims 1-5 and 8-28 stand rejected under 35 U.S.C. § 103(a) as 3
unpatentable over Sato and Lau. 4
Claims 6 and 7 stand rejected under 35 U.S.C. § 103(a) as unpatentable 5
over Sato, Lau, and Johnson. 6
ISSUES 7
The issue of whether the Appellants have sustained their burden of 8
showing that the Examiner erred in rejecting claims 1-5 and 8-28 under 35 9
U.S.C. § 103(a) as unpatentable over Sato and Lau turns on whether Sato 10
and Lau describe medical terminology including codes, terms and identifiers 11
supporting consistency of terminology used between said plurality of 12
constituent organizations in identifying a medical condition and an 13
associated service provided at a location of a constituent organization or 14
searching data of said particular constituent organization to identify a 15
location of said particular constituent organization providing a particular 16
service associated with a particular medical condition. 17
The issue of whether the Appellants have sustained their burden of 18
showing that the Examiner erred in rejecting claims 6 and 7 under 35 U.S.C. 19
§ 103(a) as unpatentable over Sato, Lau, and Johnson turns on the resolution 20
of claim 1 as rejected over Sato and Lau. 21
FACTS PERTINENT TO THE ISSUES 22
The following enumerated Findings of Fact (FF) are believed to be 23
supported by a preponderance of the evidence. 24
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Facts Related to the Prior Art 1
Sato 2
01. Sato is directed to a wide area medical information system by 3
which a patient can receive examination and treatment without 4
going to a doctor at a remote location selected optionally by the 5
patient or can receive various related services from optional 6
medical facilities. Sato 1:6-14. 7
02. Sato describes searching a doctor database on the basis of basic 8
patient information including the condition of the patient, 9
selecting the corresponding doctor, and executing an online 10
examination and treatment including at least queries for diagnosis. 11
Sato 2:16-29. 12
03. Sato searches a database for a doctor. Sato 8:9-15. This 13
searches for a doctor in charge for each clinic section, plus other 14
doctors in that clinic section, under the search condition of case 15
history and desire of the patient based on place of registration, 16
section, specialty, and history. Sato 8:49-56. 17
04. Sato confers the current list file for reserved patients under care 18
and when there is a room in view of the number of patients under 19
care, Sato approves reception of registration. When there is no 20
room, the Sato denies it. Sato 8:65-9:3. 21
Lau 22
05. Lau is directed to managing complex relationships between 23
unique concepts in a health data dictionary. Lau ¶ 0013. 24
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06. Lau describes an exemplary health data dictionary (HDD), that 1
is a database to define or translate clinical data stored in a 2
computer based patient record (CPR), that in turn describes 3
clinical or medical data in all its possible forms, eliminates data 4
ambiguity, and ensures that data is stored in an appropriate format 5
or vocabulary. With the HDD, patient data from multiple sources 6
can be integrated and normalized into a form that is accessible by 7
those sources, and integrates a controlled vocabulary, an 8
information model that defines how medical concepts can be 9
combined to produce medical descriptions, and a knowledge base 10
that describes the complex relationships that may exist between 11
the medical concepts. Lau ¶ 0032. 12
07. Lau’s assurance module searches for dictionary relationship 13
errors such as missing, duplicated, and inappropriate relationships, 14
remedies relationship errors, adds, updates, or deletes 15
relationships within a particular sub-domain, while checking for 16
redundancies and completeness. Lau ¶ 0050. 17
Johnson 18
08. Johnson is directed to an integrated health care system, 19
managing all facets of modern health care, including individual 20
service recipient care, public health, and health care policy. 21
Johnson 2:25-28. 22
PRINCIPLES OF LAW 23
Obviousness 24
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A claimed invention is unpatentable if the differences between it and 1
the prior art are “such that the subject matter as a whole would have been 2
obvious at the time the invention was made to a person having ordinary skill 3
in the art.” 35 U.S.C. § 103(a) (2000); KSR Int’l Co. v. Teleflex Inc., 550 4
U.S. 398, 406 (2007); Graham v. John Deere Co., 383 U.S. 1, 13-14 (1966). 5
In Graham, the Court held that that the obviousness analysis is 6
bottomed on several basic factual inquiries: “[(1)] the scope and content of 7
the prior art are to be determined; [(2)] differences between the prior art and 8
the claims at issue are to be ascertained; and [(3)] the level of ordinary skill 9
in the pertinent art resolved.” 383 U.S. at 17. See also KSR, 550 U.S. at 406. 10
“The combination of familiar elements according to known methods is likely 11
to be obvious when it does no more than yield predictable results.” Id. at 12
416. 13
ANALYSIS 14
Claims 24-25 rejected under 35 U.S.C. § 112, second paragraph, as failing 15
to particularly point out and distinctly claim the invention. 16
The Appellants do not contest the rejection, but instead offer to correct 17
the errors when the claims are allowable over art. Appeal Br. 9. 18
Accordingly, we summarily affirm this rejection. 19
Claims 1-5 and 8-28 rejected under 35 U.S.C. § 103(a) as unpatentable over 20
Sato and Lau. 21
Claims 1-3, 5, 8-11, and 13-15 22
The Appellants argue that neither reference describes medical 23
terminology including codes, terms and identifiers supporting consistency of 24
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terminology used between said plurality of constituent organizations in 1
identifying a medical condition and an associated service provided at a 2
location of a constituent organization or searching data of said particular 3
constituent organization to identify a location of said particular constituent 4
organization providing a particular service associated with a particular 5
medical condition. Appeal Br. 10-14. 6
The Examiner relies on Lau for such medical terminology and the 7
Appellants contend that Lau does not translate terminology used by a 8
particular organization to identify a location. Appeal Br. 12. The Examiner 9
relies on Sato for the search and the Appellants contend that Sato only finds 10
a doctor in the vicinity of the patient. Id. 11
As to limitation [1](c), this simply recites a database that incorporates 12
medical terminology. The medical terminology in turn includes codes, 13
terms and identifiers which support consistency of terminology used 14
between constituent organizations in identifying a medical condition and an 15
associated service provided at a location of a constituent organization. The 16
Appellants argue that the terminology in Lau does not provide the type of 17
support disclosed. But limitation [1](c) does not limit the implementation of 18
the support. It is sufficient that whatever terminology is used in the 19
database, some of it supports, in any manner, consistency of terminology. 20
This consistency in turn must be usable, in any manner, in identifying a 21
medical condition and an associated service provided at a location of a 22
constituent organization. The Appellants’ arguments regarding what the 23
Specification describes as the advantages and uses of the invention are not 24
commensurate with the scope of the claim, since such advantages and uses 25
are not limitations in the claim. 26
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Lau describes using a database to define or translate clinical data stored 1
in a computer based patient record (CPR), that in turn describes clinical or 2
medical data in all its possible forms. FF 06. Lau’s database therefore 3
incorporates medical terminology that includes codes, terms and identifiers. 4
Because the terminology in the database is used to define or translate clinical 5
data stored in a computer based patient record, it would support, by virtue of 6
such translation, consistency of terminology in any medical setting, and 7
certainly where the terminology was used between constituent medical 8
organizations in identifying a medical condition and an associated service 9
provided at a location of a constituent organization. Whether Lau actually 10
describes such a conversation is irrelevant, since the claim only recites that 11
the codes, terms, and identifiers provide unspecified support that would be 12
applicable to such a conversation, were such a conversation to present itself. 13
As to limitation [2], this simply recites that the database could be 14
employed in searching data to identify a location. The limitation does not 15
recite that such a search actually is executed. The Examiner found that Sato 16
described executing a search for a medical location. Ans. 4. We agree that 17
Sato describes searching for a doctor based on the patient’s needs and 18
retrieving the clinic section that doctor is assigned to. FF 03. The 19
Appellants argue that Lau simply finds a doctor. Appeal Br. 12. But when 20
Lau finds the doctor, it also returns the specific clinic that doctor is part of, 21
and so identifies a clinic, which has a location, and so implicitly identifies a 22
location where that doctor is found. Thus Lau describes a database that 23
could be employed in searching data to identify a location. Further this 24
location is of the particular constituent organization that provides a 25
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particular service associated with a particular medical condition in response 1
to user query command to provide clinic location specific healthcare data. 2
The Appellants also argue that the combination of Sato and Lau would 3
not result in the claimed invention (Appeal Br. 13), but their arguments are 4
essentially the same as those supra and are therefore equally unpersuasive. 5
The Appellants rely on their arguments in support of claim 1 for the 6
remaining claims and so the rejection for these claims stands with the 7
rejection of claim 1. 8
Claims 4 and 12 9
These claims depend from claim 1 and require that the codes are 10
validated and their translation is via some mapping (claim 4) and a location 11
type identifier identify a location characteristic of clinical significance 12
influencing availability of a particular location to a patient having a 13
particular medical condition (claim 12). 14
The Appellants argue that Lau merely normalizes data rather than 15
validating and mapping the data, and that Lau’s assurance module only 16
ensures that relationships between objects are correct. Appeal Br. 14-15. 17
The Examiner found that Lau’s assurance module provided data 18
validation and that Lau’s relationships form a mapping. Ans. 6. We agree 19
that Lau’s assurance module searches for dictionary relationship errors such 20
as missing, duplicated, and inappropriate relationships, and remedies 21
relationship errors. FF 07. Such relationships map the elements so related 22
to each other. Since these relationships are from the dictionary, such 23
dictionary codes are validated, at least to the extent of having relationships 24
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assured. Claim 4 does not further narrow the manner in which validation is 1
to occur, so Lau’s relationship validation anticipates this element. 2
As to claim 12, the Examiner found that Sato identified such a location 3
characteristic. Ans. 8. The Examiner referred to the fact that Sato only 4
grants a patient registration when there is a room available. FF 04. While 5
Sato is referring to an electronic hospital and room, such a location would 6
still be within the scope of the claim. Since such a room is aligned with the 7
doctor that Sato found within a clinic that is associated with the patient’s 8
needs, such room availability would indeed be a location characteristic of 9
clinical significance influencing availability of a particular location to a 10
patient having a particular medical condition. 11
Claims 16-18 and 21-23 12
The Appellants repeat their arguments in support of claim 1. The 13
limitations of independent claim 16 are substantially the same as those of 14
claim 1 insofar as the arguments apply, and so we find the Appellants’ 15
arguments equally unpersuasive here. Claims 17, 18, and 21-23 are not 16
separately argued. 17
Claims 19-20 and 24-28 18
Claims 19-20 require that information derived from the database provide 19
processed location specific healthcare information to a destination in a 20
customized update file.2 The Appellants argue that neither reference 21

2 Claim 20 refers back to claim 16 rather than claim 20. We take this to be a
minor typographical error, as claim 20’s customized update file is first
identified in claim 19, not in claim 16, and the intent in claim 20 to refer to
the customized update file in claim 19 is clear. The Appellants should
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describes using such a customized update file. Appeal Br. 19-21. The 1
Examiner found that Lau describes such a customized update file. Ans. 11. 2
Here we must agree with the Appellants, as we cannot find such a 3
customized update file described in Lau, or in Sato. The Examiner refers to 4
the very general descriptions in Lau of database retrieval, which simply do 5
not refer to such a file, and the Examiner has not shown that such a file 6
would be implied from those portions of Lau, and has not responded to the 7
Appellants’ Appeal Brief arguments in the Answer. 8
With respect to claims 24-28, of which claims 24-26 are independent, 9
the Appellants repeat their arguments in support of claim 1. The limitations 10
of independent claims 24-26 are substantially the same as those of claim 1 11
insofar as the arguments apply, and so we find the Appellants’ arguments 12
equally unpersuasive here. Claims 27 and 28 are not separately argued. 13
Claims 6 and 7 rejected under 35 U.S.C. § 103(a) as unpatentable over 14
Sato, Lau, and Johnson. 15
Claims 6 and 7 both further recite a tracking processor, for which the 16
Examiner applied Johnson. Ans. 17. The Appellants repeat their arguments 17
in support of claim 1, from which both of these claims depend, and so we 18
find the Appellants’ arguments equally unpersuasive here. 19

correct this typographical error to have claim 20 refer to claim 19 in any
further prosecution.
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CONCLUSIONS OF LAW 1
The Examiner did not err in rejecting claims 24-25 under 2
35 U.S.C. § 112, second paragraph, as failing to particularly point out and 3
distinctly claim the invention. 4
The Examiner did not err in rejecting claims 1-5, 8-18, and 21-28 under 5
35 U.S.C. § 103(a) as unpatentable over Sato and Lau. 6
The Examiner did err in rejecting claims 19 and 20 under 35 U.S.C. § 7
103(a) as unpatentable over Sato and Lau. 8
The Examiner did not err in rejecting claims 6 and 7 under 35 U.S.C. § 9
103(a) as unpatentable over Sato, Lau, and Johnson. 10
DECISION 11
To summarize, our decision is as follows. 12
• The rejection of claims 24-25 under 35 U.S.C. § 112, second 13
paragraph, as failing to particularly point out and distinctly claim the 14
invention is sustained. 15
• The rejection of claims 1-5, 8-18, and 21-28 under 35 U.S.C. § 103(a) 16
as unpatentable over Sato and Lau is sustained. 17
• The rejection of claims 19-20 under 35 U.S.C. § 103(a) as 18
unpatentable over Sato and Lau is not sustained. 19
• The rejection of claims 6 and 7 under 35 U.S.C. § 103(a) as 20
unpatentable over Sato, Lau, and Johnson is sustained. 21
No time period for taking any subsequent action in connection with this 22
appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv). 23
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AFFIRMED-IN-PART 1
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MP 4
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Siemens Corporation 6
Intellectual Property Department 7
186 Wood Avenue South 8
Iselin NJ 08830 9