Ex Parte Jung et al

Patent Trial and Appeal Board

Feb 5, 2013

11355517 (P.T.A.B. Feb. 5, 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.
11/355,517 02/16/2006 Edward K.Y. Jung SE1-0528-US 8506
80118 7590 02/05/2013
Constellation Law Group, PLLC
P.O. Box 220
Tracyton, WA 98393
EXAMINER
PAULS, JOHN A
ART UNIT PAPER NUMBER
3686
MAIL DATE DELIVERY MODE
02/05/2013 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 1
___________ 2
3
BEFORE THE PATENT TRIAL AND APPEAL BOARD 4
___________ 5
6
Ex parte EDWARD K.Y. JUNG, ROYCE A. LEVIEN, 7
ROBERT W. LORD, MARK A. MALAMUD, 8
JOHN D. RINALDO JR.., and LOWELL L. WOOD JR. 9
___________ 10
11
Appeal 2011-003905 12
Application 11/355,517 13
Technology Center 3600 14
___________ 15
16
17
Before ANTON W. FETTING, JOSEPH A. FISCHETTI, and 18
MICHAEL W. KIM, Administrative Patent Judges. 19
FETTING, Administrative Patent Judge. 20
DECISION ON APPEAL 21
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STATEMENT OF THE CASE1 1

1 Our decision will make reference to the Appellants’ Appeal Brief (“App.
Br.,” filed August 17, 2010) and the Examiner’s Answer (“Ans.,” mailed
September 14, 2010).
Edward K.Y. Jung, Royce A. Levien, Robert W. Lord, Mark A. 2
Malamud, John D. Rinaldo Jr., and Lowell L. Wood Jr. (Appellants) seek 3
review under 35 U.S.C. § 134 of a final rejection of claims 1, 38-40, 43-56 4
and 58-78, the only claims pending in the application on appeal. We have 5
jurisdiction over the appeal pursuant to 35 U.S.C. § 6(b). 6
The Appellants invented a way of managing health-related data 7
(Specification 3, Technical Field). 8
An understanding of the invention can be derived from a reading of 9
exemplary claim 1, which is reproduced below [bracketed matter and some 10
paragraphing added]. 11
1. A computer-implemented method 12
comprising computer-executable instructions 13
related to health-related data management, the 14
method comprising: 15
[1] providing and/or receiving health 16
regimen information using one or more filtering 17
parameters, 18
[2] wherein the one or more filtering 19
parameters comprises at least an alert relevant to a 20
use of the health regimen information. 21
22
The Examiner relies upon the following prior art: 23
Kirkland US 2004/0254868 A1 Dec. 16, 2004
Kurtz US 2005/0260610 A1 Nov. 24, 2005
Grasso US 2006/0287891 A1 Dec. 21, 2006
Krishna US 2007/0035403 A1 Feb. 15, 2007
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Claims 1, 38-40, 43-56 and 58-78 stand rejected under 35 U.S.C. § 112, 1
second paragraph, as failing to particularly point out and distinctly claim the 2
invention. 3
Claims 1, 40, 43-56 and 58-78 stand rejected under 35 U.S.C. § 101 as 4
directed to non-statutory subject matter. 5
Claims 1, 38-40, 61, and 64-65 stand rejected under 35 U.S.C. § 103(a) 6
as unpatentable over Grasso and Krishna. 7
Claims 43-56, 58-60, 62-63, 66-69, and 73-78 stand rejected under 35 8
U.S.C. § 103(a) as unpatentable over Grasso, Krishna, and Kurtz. 9
Claims 70-72 stand rejected under 35 U.S.C. § 103(a) as unpatentable 10
over Grasso, Krishna, and Kirkland. 11
ISSUES 12
The issue of statutory subject matter turns on whether Appellants 13
presented any substantive arguments as to the rejection. There is no issue of 14
indefiniteness as Appellants do not contest that rejection. The issues of 15
obviousness turn primarily on the breadth of the independent claims and 16
whether Krishna describes a medical record that would predictably be found 17
in a medical database such as that used in Grasso. 18
FACTS PERTINENT TO THE ISSUES 19
The following enumerated Findings of Fact (FF) are believed to be 20
supported by a preponderance of the evidence. 21
Facts Related to the Prior Art 22
Grasso 23
01. Grasso is directed to displaying patient growth data on a 24
computerized growth chart by accessing a database including 25
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growth chart data using that data to display the computerized 1
growth chart. Grasso, para. [0007]. 2
02. With reference to FIG. 4, a method 400 for displaying a 3
pediatric growth chart and patient data according to requests 4
received is shown. At step 402, the appropriate growth chart for 5
the patient is determined based on patient age or diagnosis. At 6
step 404, growth chart definitions for the patient are accessed. At 7
step 406, the growth chart reference curves for the appropriate 8
growth chart for the patient are accessed. At step 408, the 9
patient's electronic medical record is accessed for patient growth 10
data such as, growth chart measurements for the patient. At step 11
410, a request to filter the patient data is received. For example, 12
the patient data may be filtered by only displaying measurements 13
taken at well-baby visits and not using measurements during 14
hospital admissions which include daily weights. Alternatively, 15
the patient data may be filtered by the provider or department that 16
took the patient measurement. Grasso, para. [0050]. 17
Krishna 18
03. Krishna is directed to personal healthcare management. 19
Krishna includes storing a crisis relevant data of a user of a 20
personal communication module on the personal communication 21
module, routing an emergency signal of the user from the personal 22
communication module to a dispatch center, and automatically 23
communicating the crisis relevant data to the dispatch center 24
through the personal communication module. Krishna, para. 25
[0007]. 26
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04. In operation 1804, an alert data may be generated to the 1
healthcare provider based on noncompliance with the regimen. In 2
operation 1806, the health aggregation system may be segmented 3
through a portion of the health history data of the user to create the 4
crisis relevant data (e.g., the crisis relevant data 310, 500 of FIGS. 5
3, 5), an archival data (e.g., the archival data 312 of FIG. 3), and a 6
current data (e.g., the current data 314 of FIG. 3). Krishna, para.¶ 7
[0134]. 8
ANALYSIS 9
Claims 1, 38-40, 43-56 and 58-78 rejected under 35 U.S.C. § 112, second 10
paragraph, as failing to particularly point out and distinctly claim the 11
invention. 12
Appellants do not argue this rejection and so we summarily affirm this 13
rejection. 14
Claims 1, 40, 43-56 and 58-78 rejected under 35 U.S.C. § 101 as directed to 15
non-statutory subject matter. 16
The Examiner rejected claim 1 as directed to an abstract concept and 17
claims 40 and 43-78 as directed to non-statutory signals. Ans. 5-6. 18
Appellants do not argue the Examiner’s reasons for the rejection, instead 19
stating that “Appellants amended Independent Claims 1 and 40 in the 20
Response to Office Action [were] filed on January 7, 2010.” Appeal Br. 22. 21
As Appellants have not contended that Examiner’s rejection was improper, 22
i.e. claim 1 is directed to more than an abstract concept and claims 40 and 23
43-78 as directed to statutory signals, we find Appellants’ argument 24
unpersuasive. 25
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Rejections over art. 1
All of the claims are thus found properly rejected as either indefinite or 2
directed to non-statutory subject matter, or both. Thus, the rejections over 3
art are cumulative to those rejections. Nevertheless, we set forth our 4
findings as to the rejections over art below. 5
6
Claims 1, 38-40, 61, and 64-65 rejected under 35 U.S.C. § 103(a) as 7
unpatentable over Grasso and Krishna. 8
Claims 43-56, 58-60, 62-63, 66-69, and 73-78 rejected under 35 U.S.C. § 9
103(a) as unpatentable over Grasso, Krishna, and Kurtz. 10
Claims 70-72 rejected under 35 U.S.C. § 103(a) as unpatentable over 11
Grasso, Krishna, and Kirkland. 12
Claim 1 recites “providing and/or receiving health regimen information 13
using one or more filtering parameters.” Thus, the information may be 14
either provided or received. All information in any computer system is 15
either provided or received. The claim also does not narrow the manner in 16
which the parameters are used. Although the claim characterizes the 17
parameters as filtering parameters, the claim does not narrow the manner of 18
use to filtering. Thus, the first clause in the claim simply obtains whatever 19
health regimen information is by somehow using a parameter somehow 20
characterized as of a filtering nature. 21
The second clause recites “wherein the one or more filtering parameters 22
comprises at least an alert relevant to a use of the health regimen 23
information.” Thus, one of the parameters, characterized as being of a 24
filtering nature, has to somehow also represent an alert in some manner 25
relevant to a use of the information. 26
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We are not persuaded by the Appellants’ argument that 1
Conclusory statements that a reference "teaches" something 2
beyond its bare recitations/direct disclosure do not constitute 3
ANY evidence of such "teachings" unless they are supported by 4
objective evidence. 5
6
Appeal Br. 36. 7
One skilled in the art is able to read a reference for all that it teaches and 8
not limit a reference to its preferred embodiment. Beckman Instruments, 9
Inc. v. LKB Produkter AB, 892 F.2d 1547, 1551 (Fed. Cir. 1989). Moreover, 10
one skilled in the art is a person of ordinary creativity, not an automaton; as 11
such, the Board can take into account the inferences and creative steps of 12
such a person. KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 418, 421 13
(2011). See also In re Pappas, 214 F2d 172, 176 (CCPA 1954) (Publication 14
is sufficient anticipation if it teaches same inventive concept as application; 15
it need not describe invention in same terms as application.) 16
Appellants go on to argue that 17
as one skilled in the art will appreciate, an alert data may be 18
generated to the healthcare provider based on noncompliance 19
with the regimen, does not teach providing and/or receiving 20
health regimen information using one or more filtering 21
parameters, wherein the one or more filtering parameters 22
comprises at least an alert relevant to a use of the health 23
regimen information as claimed. 24
25
Appeal Br. 39. Examiner found that Grasso described the notoriety of 26
using a filtered database retrieval to query data meeting desired criteria in 27
the medical field. Claim 1 does not narrow the scope of “health regimen 28
information” and thus encompasses any data in a database used in the health 29
field. After all, any data in such a database is information related to health 30
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and would be at least indirectly pertinent to some health regimen. The 1
Examiner found that Krishna described providing alert parameters in a 2
medical setting. As one of ordinary skill in the use of medical databases, 3
such as a physician or emergency medical technician would clearly want to 4
use all medical alerts attributable to a patient when diagnosing a condition, 5
the Examiner found it predictable to use Krishna’s alerts in a database such 6
as that of Grasso. 7
Appellants argue only that there are other ways to gain access to such a 8
record. That is not the issue. The issue is whether it was predictable to 9
somehow use alert data to find such data. In Krishna, an alert data may be 10
generated to the healthcare provider based on noncompliance with the 11
regimen. The health aggregation system may be segmented through a 12
portion of the health history data of the user to create the crisis relevant data, 13
an archival data, and a current data. Thus, the generation of the alert data is 14
a use of alert data that provides crisis relevant data, archive data, and current 15
data, all of which, for a patient, are information pertinent to health regimen. 16
In any event, the alert itself is non-functional and cannot distinguish over 17
the art, (see In re Ngai, 367 F.3d 1336, 1339 (Fed. Cir. 2004)) and a use of 18
the health regimen information can be virtually anything imaginable as 19
neither the use nor the specific nature of the information are further 20
narrowed. 21
Appellants also make various arguments that the references may not be 22
combined, but again, Krishna merely provides an exemplary type of record 23
that might be used as criteria in querying Grasso’s database. Again, the 24
claim does not even require that the alert data be used as search criteria. For 25
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example, merely presenting the alert on a screen as in Krishna would satisfy 1
the broad term “using.” 2
Appellants repeat these arguments in support of independent claims 38-3
40. 4
Appellants also repeat these arguments in support of dependent claims 5
43-56 and 58-78. Appellants further argue that the Examiner has not shown 6
the limitation added in each of these claims. Appellants do not allege that 7
Examiner made no findings at all, which would have resulted in a lack of a 8
prima facie case, but that the Examiner’s findings are legally insufficient for 9
the same reasons set forth in claim 1. We find those reasons equally 10
unpersuasive here. We adopt the Examiner’s findings of fact and analysis as 11
to the dependent claims and reach similar legal conclusions. 12
Further, arguments for the dependent claims that simply recite the added 13
limitations and allege they are not found are insufficient to act as a separate 14
argument under 37 C.F.R. § 41.37. As our reviewing court held, 15
we hold that the Board reasonably interpreted Rule 41.37 to 16
require more substantive arguments in an appeal brief than a 17
mere recitation of the claim elements and a naked assertion that 18
the corresponding elements were not found in the prior art. 19
20
In re Lovin, 652 F.3d 1349, 1357 (Fed Cir 2011). 21
CONCLUSIONS OF LAW 22
The rejection of claims 1, 38-40, 43-56 and 58-78 under 35 U.S.C. 23
§ 112, second paragraph, as failing to particularly point out and distinctly 24
claim the invention is proper. 25
The rejection of claims 1, 40, 43-56 and 58-78 under 35 U.S.C. § 101 as 26
directed to non-statutory subject matter is proper. 27
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The rejection of claims 1, 38-40, 61, and 64-65 under 35 U.S.C. § 103(a) 1
as unpatentable over Grasso and Krishna is proper. 2
The rejection of claims 43-56, 58-60, 62-63, 66-69, and 73-78 under 35 3
U.S.C. § 103(a) as unpatentable over Grasso, Krishna, and Kurtz is proper. 4
The rejection of claims 70-72 under 35 U.S.C. § 103(a) as unpatentable 5
over Grasso, Krishna, and Kirkland is proper. 6
DECISION 7
The rejection of claims 1, 38-40, 43-56 and 58-78 is affirmed. 8
No time period for taking any subsequent action in connection with this 9
appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. 10
§ 1.136(a)(1)(iv) (2011). 11
12
AFFIRMED 13
14
15
16
17
Klh 18