Ex Parte Keresman et al

Board of Patent Appeals and Interferences

Sep 27, 2010

09799650 (B.P.A.I. Sep. 27, 2010)

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.
09/799,650 03/06/2001 Michael A. Keresman III PRAZ 200008US01 3562
27885 7590 09/27/2010
FAY SHARPE LLP
1228 Euclid Avenue, 5th Floor
The Halle Building
Cleveland, OH 44115
EXAMINER
BROWN, CHRISTOPHER J
ART UNIT PAPER NUMBER
2439
MAIL DATE DELIVERY MODE
09/27/2010 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte MICHAEL A. KERESMAN, III, JEFFRY J. BOWMAN,
FRANCIS M. SHERWIN, CHANDRA S. BALASUBRAMANIAN, and
RAVISHANKAR S. BHAGAVATULA
____________________

Appeal 2009-0111061
Application 09/799,650
Technology Center 2400
____________________

Before JOHN A. JEFFERY, JEAN R. HOMERE, and
THU A. DANG, Administrative Patent Judges.

HOMERE, Administrative Patent Judge.

DECISION ON APPEAL2

1 Filed March 6, 2001. The real party in interest is CardinalCommerce,
Corp. (App. Br. 1.) An oral hearing was held in this appeal on July 13,
2010.
2 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.

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I. STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) (2002) from the
Examiner’s final rejection of claims 1 through 15. (App. Br. 3.) Claims 16
through 19 have been canceled. Id. We have jurisdiction under 35 U.S.C.
§ 6(b) (2008).
We affirm.
Appellants’ Invention
Appellants invented a method and system for securely processing an
electronic order of prescription drug. (Spec. 3, para. [0007].) As shown in
Appellants’ Figure 4, upon authenticating the identities of previously
registered participants (110), an agent (10) forwards to a registered
pharmacy (30) a prescription order received from a registered patient (50),
and authorized by a registered physician (40) via the Internet. (Spec. 18,
para. [0063].)
Illustrative Claim
Independent claim 1 further illustrates the invention. It reads as
follows:
1. A method of processing drug prescriptions via
a data communications network, said method comprising:

(a) an agent registering doctors, pharmacies and patients as
participants such that each registered participant's identity is
uniquely defined and determinable;

(b) the agent authenticating registered doctors' identities
from which prescriptions are received via the data
communications network, each of said prescriptions indicating
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a respective registered patient's identity for whom the
prescription is intended;

(c) the agent authenticating registered patients' identities
from which orders are received via the data communications
network, each of said orders indicating the prescription being
ordered; and,

(d) the agent forwarding orders to registered pharmacies via
the data communications network.

Prior Art Relied Upon
The Examiner relies on the following prior art as evidence of
unpatentability:
Adams 6,363,485 B1 Mar. 26, 2002
Kobylevsky US 2002/0052762 A1 May 02, 2002
Portnoy et al. US 2002/0062228 A1 May 23, 2002

Rejections on Appeal
The Examiner rejects the claims on appeal as follows:
1. Claims 1-4 and 6-15 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over the combination of Kobylevsky and Portnoy.3
2. Claims 5 and 13 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over the combination of Kobylevsky, Portnoy, and Adams.

3 Claim 13 appears in both statements of rejection above. However, we note
that the limitations of the claim were only discussed in the second statement
of rejection. Consequently, we treat claim 13 as being included in the second
statement of rejection and not the first.
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Appellants’ Contentions
Appellants contend that Kobylevsky and Portnoy are non-analogous
art, and that the proffered combination fails to teach a data communication
network through which an agent receives a customer’s prescription order, as
well as a physician authorization of the same, as recited in independent
claim 1. (App. Br. 9-10.) According to Appellants, while Kobylevsky
discloses a data communication network, the reference utilizes a voice
network through which the patient sends the prescription order to a central
station. Appellants maintain that the Examiner erred in finding that the
disclosed voice network is a data communication network. (Id.)

Examiner’s Findings
The Examiner finds the Kobylevsky’s public service telephone
network (PTSN) is a data communication network. (Ans. 5.) Further, the
Examiner finds that Kobylevsky’s disclosure of transmitting prescriptions
and orders through the Internet teaches the disputed limitations. (Id.)

II. ISSUE
Have Appellants shown that the Examiner erred in combining the
disclosures of Kobylevsky and Portnoy to teach a data communication
network through which an agent receives a customer’s prescription order
and a physician authorization of the same, as recited in independent claim 1?

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III. FINDINGS OF FACT
The following Findings of Fact (FF) are shown by a preponderance of
the evidence:
Kobylevsky
1. As shown in Figure 11, Kobylevsky discloses a remote
prescription refill system wherein a customer (20) uses a telephone unit (20)
to submit a prescription refill order to a central station (30) through a PTSN
(26). Similarly, the disclosed system allows a physician (28) to use a
facsimile (28) to authorize the prescription refill order to the central station
through the PTSN (26). (Para. [0193].) The central station (30), in turn
forwards the order and the authorization to a pharmacy management system
(40) via an XML electronic data interface (42) for authentication. (Id.)
2. Upon receiving the order authorization from the pharmacy
management system (40), the central station (30) communicates with the
customer (20) via the PTSN to complete the order. (Para [0194]). The
central station (30) then communicates the completed order to the pharmacy
management system (40) via the Internet, through which the order is
forwarded to designated pharmacies (60). (Id.)
Portnoy
3. Portnoy discloses a data communications network that
authenticates a patient and a physician thereby allowing the physician to
securely obtain informed consent from the patient. In particular, an
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interactive computer compares the name or ID associated with the physician
and patient with names previously registered in the physician/patient
databases to verify the identities of these individuals. ([0072, 0073, 0076]).
IV. ANALYSIS
Independent claim 1 requires, in relevant part, an agent receiving
prescriptions from registered doctors and orders from registered patients via
a data communications network. (App. Br. 12, Claims App’x.)
As set forth in the Findings of Fact section, Kobylevsky discloses a
telephone network through which a patient and a physician submit
respectively a prescription refill order, and an authorization order to a central
station. (FF. 1.) We agree with the Examiner that Kobylevsky’s telephone
network qualifies as a data communications network since it processes inter
alia voice and fax as data, and it serves to communicate the data from the
patient/physician to the central station agent. (FF. 3-a). Further, Kobylevsky
discloses the Internet as another communications network for transmitting
data between a pharmacy and the physician or the patient. (FF. 2.) We agree
with the Examiner that the claimed communications network does not
preclude the use of Kobylevsky’s telephone network, and even if it did,
Kobylevsky’s disclosure of the Internet would teach that limitation since it is
used as a data communications network through which the patient exchange
data with the pharmacy management system via the central system. We thus
agree with the Examiner that both networks disclosed by Kobylevsky do
qualify as data communications networks.
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Appellants’ argument that that Portnoy and Kobylevsky are non-
analogous prior art is not persuasive. We find both references to be within
the same field of endeavor since they are both concerned with allowing a
physician and a patient to securely communicate with each other via a data
communications network. (FF. 1-3.) It follows that Appellants have not
shown that the Examiner erred in finding that Kim anticipates independent
claim 1.
Appellants argued the rejection of claims 1-15 as a single group.
Therefore, claims 2-15 fall together with claim 1. See 37 C.F.R. § 41.37(c)
(1)(vii).

V. CONCLUSIONS OF LAW
1. Appellants have not established that the Examiner erred in
rejecting claims 1-4, 6-12, 14 and 15 as being unpatentable under 35 U.S.C.
§ 103(a) over the combination of Kobylevsky and Portnoy.
2. Appellants have not established that the Examiner erred in
rejecting claims 5 and 13 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over the combination of Kobylevsky, Portnoy, and Adams.

VI. DECISION
We affirm the Examiner's rejections of claims 1-15.

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No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv) (2009).

AFFIRMED

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