Ex Parte LOSCALZO et al

Patent Trials and Appeals Board

Feb 28, 2019

13117733 - (D) (P.T.A.B. Feb. 28, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/117,733 05/27/2011 Matthew Joseph LOSCALZO
6449 7590 03/04/2019
ROTHWELL, FIGG, ERNST & MANBECK, P.C.
607 14th Street, N.W.
SUITE 800
WASHINGTON, DC 20005
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.
1954-537 8232
EXAMINER
LULTSCHIK, WILLIAM G
ART UNIT PAPER NUMBER
3626
NOTIFICATION DATE DELIVERY MODE
03/04/2019 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
PTO-PAT-Email@rfem.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MATTHEW JOSEPH LOSCALZO, KAREN LYNN CLARK,
JEFFREY BERTRUM DILLEHUNT, RAYMOND LAWRENCE
STROWBRIDGE, DANIEL P AUAHI SMITH, and
REDMOND HOCHOY RINEHART
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Technology Center 3600
Before CAROLYN D. THOMAS, NABEEL U. KHAN, and
MICHAEL M. BARRY, Administrative Patent Judges.
KHAN, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the final rejection of
claims 1-23. We have jurisdiction under 35 U.S.C. § 6(b ).
We affirm.
1 Appellants identify City of Hope as the real party in interest. App. Br. 1.
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BACKGROUND
THE INVENTION
According to Appellants, the invention relates generally to "systems,
apparatuses and methods for identifying, analyzing, recording and taking
actions through a patient screening system." Spec. ,r 3. "Patients can be
provided with a personal interactive device for surveying patient information
... which is analyzed and transmitted in real-time to make patient care
decisions." Spec. ,r 3.
Exemplary independent claim 1 is reproduced below.
1. An individual screening and triage system comprising:
a patient interactive device;
an administrative server;
a data network operatively connected to at least the patient
interactive device and the administrative server, wherein issues,
prompts, and possible user selectable responses are directed from
the administrative server over the data network to the patient
interactive device and user selected responses are received at the
administrative server from the patient interactive device; and
a triage module;
wherein the patient interactive device presents the issues,
related possible prompts, and selectable responses to a user of
the patient interactive device and transmits the user's one or more
selected responses over the data network;
wherein the transmitted user responses consist of the
user's one or more user selected responses;
wherein the administrative server receives the transmitted
data and information for storage into a patient record; and
wherein the triage module is configured to compare a
user's response data and information with a set of triage rules
and, if the response triggers a triage message, automatically
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9-11.
generate and transmit a patient triage alert to a communication
device of a particular member of the user's care team.
REFERENCES AND REJECTIONS
1. Claims 1-23 stand rejected under 35 U.S.C. § 101. Final Act.
2. Claims 1--4, 6, 9, 10, 12, 15, 16, 20,2 and 23 stand rejected
under 35 U.S.C. § I02(b) as anticipated by Hunkeler (US 2005/0283385 Al;
published Dec. 22, 2005). Final Act. 11-23.
3. Claims 5, 11, and 17 stand rejected under 35 U.S.C. § I03(a) as
unpatentable over Hunkeler and Pristine (US 2004/0138924 Al; published
July 15, 2004). Final Act. 23-24.
4. Claims 7, 13, and 18 stand rejected under 35 U.S.C. § I03(a) as
unpatentable over Hunkeler and Kaplin (US 2011/0231208 Al; published
Sept. 22, 2011 ). Final Act. 24--26.
5. Claims 8, 14, and 19 stand rejected under 35 U.S.C. § I03(a) as
unpatentable over Hunkeler and Cervi (US 2007/0185736 Al; published
Aug. 9, 2007). Final Act. 26-30.
6. Claim 21 stands rejected under 35 U.S.C. § I03(a) as
unpatentable over Hunkeler and Machin (US 6,877,034 B 1; published Apr.
5, 2005). Final Act. 30-31.
2 We note that claim 20 is not listed in the header of the rejection of claims
under 35 U.S.C. § 102, but the Examiner nonetheless addresses claim 20
under this section and in the Response to Arguments. Final Act. 7-8 and 17.
Thus, we treat claim 20 as rejected as anticipated by Hunkeler.
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7. Claim 22 stands rejected under 35 U.S.C. § I03(a) as
unpatentable over Hunkeler and Huyn (US 2002/0035486 Al; published
Mar. 21, 2002). Final Act. 31-32.
DISCUSSION
REJECTIONUNDER35 U.S.C. § 101
Relevant Law
To determine whether claims are patent eligible under § 101, we apply
the Supreme Court's two-step framework articulated in Alice Corp. v. CLS
Bankint'l, 573 U.S. 208 (2014). First, we determine whether the claims are
directed to a patent-ineligible concept: laws of nature, natural phenomena,
and abstract ideas. Id. at 216-18. If so, we then proceed to the second step
to consider the elements of the claims "individually and 'as an ordered
combination"' to determine whether there are additional elements that
"'transform the nature of the claim' into a patent-eligible application." Id. at
217. In other words, the second step is to "search for an 'inventive
concept'-i.e., an element or combination of elements that is 'sufficient to
ensure that the patent in practice amounts to significantly more than a patent
upon the [ineligible concept] itself."' Id. at 217-18.
The PTO has recently synthesized, for purposes of clarity,
predictability, and consistency, key concepts identified by the courts as
abstract ideas to explain that the "abstract idea" exception includes the
following three groupings:
(a) Mathematical concepts-mathematical
mathematical formulas or equations,
calculations;[]
relationships,
mathematical
(b) Certain methods of organizing human activity-
fundamental economic principles or practices (including
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hedging, insurance, mitigating risk); commercial or legal
interactions (including agreements in the form of contracts; legal
obligations; advertising, marketing or sales activities or
behaviors; business relations); managing personal behavior or
relationships or interactions between people (including social
activities, teaching, and following rules or instructions);[] and
( c) Mental processes- concepts performed in the human
mind[] (including an observation, evaluation, judgment,
opinion).
See 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg.
50, 52 (Jan. 7, 2019) ("USPTO § 101 Memorandum"). According to the
USPTO § 101 Memorandum, "[ c ]laims that do not recite [subject] matter
that falls within these enumerated groupings of abstract ideas should not be
treated as reciting abstract ideas," except in rare circumstances. Id. at 53.
Even if the claims recite any one of these three groupings of abstract ideas,
these claims are still not "directed to" a judicial exception ( abstract idea)
and, thus, are "patent-eligible" if "the claim as a whole integrates the recited
judicial exception into a practical application of that exception." Id.
"[I]ntegration into a practical application" requires an additional element or
a combination of additional elements in the claim to apply, rely on, or use
the judicial exception in a manner that imposes a meaningful limit on the
judicial exception, such that the claim is more than a drafting effort designed
to monopolize the exception. Id. at 54--55.
For example, limitations that are indicative of "integration into a
practical application" include:
(1) Improvements to the functioning of a computer, or to any
other technology or technical field-see MPEP § 2106.05(a);
(2) Applying the judicial exception with, or by use of, a particular
machine-see MPEP § 2106.05(b);
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(3) Effecting a transformation or reduction of a particular article
to a different state or thing-see MPEP § 2106.05(c); and
( 4) Applying or using the judicial exception in some other
meaningful way beyond generally linking the use of the judicial
exception to a particular technological environment, such that the
claim as a whole is more than a drafting effort designed to
monopolize the exception-see MPEP § 2106.05(e).
In contrast, limitations that are not indicative of "integration into a
practical application" include:
(1) Adding the words "apply it" (or an equivalent) with the
judicial exception, or mere instructions to implement an abstract
idea on a computer, or merely uses a computer as a tool to
perform an abstract idea-see MPEP § 2106.05([);
(2) Adding insignificant extra-solution activity to the judicial
exception-see MPEP § 2106.05(g); and
(3) Generally linking the use of the judicial exception to a
particular technological environment or field of use - see MPEP
§ 2106.05(h).
See USPTO § 101 Memorandum, 84 Fed. Reg. at 54--55 ("Prong Two").
When a claim recites a judicial exception and does not integrate that
exception into a practical application, we then look to whether the claim:
Adds a specific limitation or combination of limitations that are not
well-understood, routine, conventional activity in the field,
which is indicative that an inventive concept may be present; or
simply appends well-understood, routine, conventional activities
previously known to the industry, specified at a high level of
generality, to the judicial exception, which is indicative that an
inventive concept may not be present.
USPTO § 101 Memorandum, 84 Fed. Reg. at 56.
USPTO Memorandum Step 2A
In rejecting claims 1-23, the Examiner finds the claims are "directed
to providing questions to a patient and determining whether to notify a
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caregiver of the results, which constitutes a basic method of organizing
human activity and thus an abstract idea." Final Act. 9. Analyzing the
claims, the Examiner notes that they involve the steps of "storing a set of
questions and possible responses for different issues, sending at least one
question and possible response to a patient, receiving a selection of a
response from the patient, and notifying a caregiver if the response satisfies
a rule." Final Act. 10; see also Ans. 25-26. As such, the Examiner
analogizes the claims to those in SmartGene, Inc. v. Advanced Biological
Labs., 555 F. App'x 950 (Fed. Cir. 2014) and finds that they involve "the
concept of comparing new and stored information and using rules to identify
options." Ans. 27. Similarly, the Examiner finds the claims involve
"collecting information, analyzing it, and displaying certain results of the
collection and analysis" and thus would be deemed patent ineligible under
Electric Power Group, LLC, v. Alstom, 830 F.3d 1350, 1353 (Fed. Cir.
2016). Ans. 27-28.
Appellants argue that "not a single one of the pending claims recite
any of these four elements; so it can hardly be concluded that claims 1-23
are directed to an abstract idea based on these four elements. This
misstatement of the claim language is clear error and is sufficient to reverse
the rejection under§ 101 on this basis alone." App. Br. 8. Thus, Appellants
argue the Examiner has mischaracterized the claims with an incorrectly
asserted abstract idea. App. Br. 8-9; see also Reply Br. 2-3.
Appellants also take issue with the Examiner's reliance on SmartGene
and Electric Power Group. For example, Appellants argue "that the
detailed, interrelated elements of the pending claims bear absolutely no
resemblance to the claims of the SmartGene patents, and that the
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conclusions of that case correspondingly are unrelated to the patent
eligibility of the pending claims herein." Reply Br. 5. Similarly, Appellants
argue the claims in Electric Power Group are directed to "abstract ideas of a
mental process and mathematical processes" whereas the present claims
"include specific devices, a network, specific related prompts and responses,
and triage rules -- all directed within an individual screening and triage
system and method for addressing a particular problem identified in the
specification." Reply Br. 5
Instead, Appellants analogize the pending claims to those in McRO,
Inc. v. Bandai Namco Games America Inc., 837 F.3d 1299, 1313 (Fed. Cir.
2016), which, according to Appellants involved "the use of rules, rather than
artists" to improve the claimed invention over the prior art. Similarly,
Appellants argue the pending claims "recite comparing a user's response
information with a set of triage rules and, in response, triggering a specific
action." Further, Appellants allege
[b ]y expressly guiding the patient through the screening process and
automatically comparing the patient responses to a set of triage rules
for determining an alert or action, the disclosed and claimed systems
and methods provide for the very same, specific improvement in
computer functionality that was found patent eligible in both McRO
... and Enfish ....
Reply Br. 6.
We agree with the Examiner that claim 1 recites a judicial exception
in the form of certain methods of organizing human activity, and
specifically, here, the claims recite limitations for "managing personal
behavior or relationships or interactions between people (including social
activities, teaching, and following rules or instructions)" as set out in the
US PTO § 101 Memorandum at 52. In particular, the claimed invention
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manages interactions between a patient and the patient's care team by
providing questions and possible responses sent on behalf of the care team to
the patient and then prescribing a set of rules to follow when the responses
are received. For example, claim 1 recites a patient device and a server
where the server transmits to the patient device certain questions and
possible responses. The patient enters a selection from the possible
responses into the patient device which then transmits the responses back to
the server for storage and analysis. A set of triage rules determines whether
the patient's responses require an alert to be sent to the patient's care team.
We find that the claims do not integrate the judicial exception into a
practical application at least because the claims do not recite (i) any
additional elements of the claims reflects an improvement in the functioning
of a computer or to another technological field, (ii) an application of the
judicial exception with, or by use of, a particular machine, (iii) a
transformation or reduction of a particular article to a different state or thing
(iv) or a use of the judicial exception in some other meaningful way beyond
generally linking the use of the judicial exception to a particular
technological environment. Specifically, the claims do not improve the
functioning of either the patient interactive device or the claimed server.
Appellants' argument that the claimed triage rules, like the rules in McRO,
improve the technological process or computer functionality, is not
persuasive. The rules in McRO were "rendered in a specific way: as a
relationship between sub-sequences of phonemes, timing, and the weight to
which each phoneme is expressed visually at a particular timing .... "
McRO, 837 F.3d at 1315. It was the "structure of the limited rules" that
were "limited to a specific process for automatically animating characters
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using particular information and techniques" that led the Federal Circuit to
conclude that the claims were "directed to a patentable, technological
improvement." McRO, 837 F.3d at 1316. Here, claim 1 itself says very
little about the triage rules other than to indicate that they are used to
determine whether a message should be sent to a member of the patient's
health care team. The claim does not limit or even describe the triage rules
in any detail and, thus, cannot be said to limit the rules in a way that
improves technology. We, therefore, find Appellants' argument
unpersuasive.
USPTO Memorandum Step 2B
The Examiner finds "[t]he claims do not include additional elements
that are sufficient to amount to more than the judicial exception because
generically recited computer elements ( e.g. databases, servers, processors,
etc.) do not add a meaningful limitation since these would be routine in any
computer implementation." Final act. 10. The Examiner supports this
finding by citing to paragraphs 37 and 38 of the Specification which
describe the patient interactive device as an "Apple iPad or Panasonic
Toughbook" or other touch screen device. Similarly, the description of the
server and network indicates that these elements are used in their standard
and well known ways. Spec. ,r 38. Appellants "agree that generic computer
and network components are disclosed in the specification and are included
in the claims." Reply Br. 6-7.
The Examiner's findings satisfy step 2B of the USPTO § 101
Memorandum guidelines. Accordingly, we sustain the Examiner's rejection
of the claims under 35 U.S.C. § 101.
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REJECTION UNDER 35 U.S.C. § 102
Claim 1
Appellants argue that the claimed system transmits "only the selected
responses or indications or data representing only the patient's selected
responses. . . . Only the responses selected by the patient or indications or
data representing only the patient's selected responses are transmitted."
App. Br. 12-13. According to Appellants, Hunkeler "instead provides for a
conventional open format for the patient to enter patient-drafted information
to be sent to the individualized healthcare system of Hunkeler." App. Br.
13. Appellants further argue that "Hunkeler disclose a system that transmits
both selected responses and user drafted narrative." App. Br. 13.
The Examiner finds Hunkeler discloses the claimed limitations by
describing a system that transmits prompts and responses to a user and
allows the user to enter predetermined selectable responses. Final Act. 11-
12 (citing Hunkeler ,r,r 38, 41, 44, 45, 50, 52, Figures 4--7). The fact that
Hunkeler also describes that the user has the option of also entering patient
drafted responses in addition to the predetermined responses, does not
require the user to do so. Ans. 30. We agree with the Examiner. Hunkeler
discloses a system that provides prompts and questions to the user along
with predetermined responses. See Hunkeler, Fig. 4. In addition to
questions with predetermined responses, Hunkeler may also transmit
questions with open-ended responses. Hunkeler, Fig. 4 (illustrating text
boxes where the patient can enter other symptoms not listed elsewhere).
However, Hunkeler does not require the patient to enter additional
symptoms, for example, if no other symptoms exist. Hunkeler ,r 50 ("The
patient may add other symptoms that are not listed in the predefined list of
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symptoms to personalize his profile" ( emphasis added)). Thus, even if the
claim were to be construed as precluding open-ended user responses being
transmitted to the server, Hunkeler still discloses that such would be the
case.
Appellants also argue that Hunkeler' s Figure 5 indicates that a nurse
reviews the patient's answers which, according to Appellants, is contrary to
the automated system of claim 1. We are not persuaded by Appellants'
arguments. Figure 5 of Hunkeler indicates that the patient's responses will
be available to a nurse and that the nurse can review the answers with the
patient at their next contact. This does not contradict the Examiner's finding
that Hunkeler automatically sends triage alerts based on the patient's
answers. Ans. 31 (citing Hunkeler ,r,r 38, 54, and 64).
Accordingly, we sustain the Examiner's rejection of claim 1 under
35 U.S.C. § 102, and for the same reasons, we sustain the rejections of
independent claims 4, 10, and 16, for which Appellants make the same
arguments.
Claim 2
Claim 2 depends from claim 1 and recites "wherein the user can
comprise a patient, a family member of a patient, a member of a patient's
health care team, or a member of a patient's caregiving team." Appellants
argue that Hunkeler
merely describe[s] who can participate in Hunkeler's eCare and care
system. However, none of the cited paragraphs disclose any of the
'user' persons recited in claim 2 making selected responses on a
patient interactive device based on presented issues, related possible
prompts, and selectable responses, as recited in claim 1, from which
claim 2 depends.
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App. Br. 23.
We disagree for the reasons stated in our analysis of claim 1. The
Examiner finds Hunkeler discloses a patient making selected responses
based on presented issues, prompts, and selected responses. Final Act. 11-
13 (citing Hunkeler ,r,r 38, 41, 44, 45, 50, 52, Figures 4--7).
Accordingly, we sustain the Examiner's rejection of claim 2.
Claim 3
Claim 3 depends from claim 1 and recites "wherein a message is
automatically generated and transmitted to at least one member of the user's
caregiving team if an action was not completely performed." The Examiner
finds Hunkeler discloses this limitation by "reminding a patient to refill a
medication and sending a message to the provider if the patient does not
refill the medication." Final Act. 14 ( citing Hunkeler ,r 54) ( emphasis
omitted). Appellants argue that "failure to receive a confirmation from the
patient is not the same feature as a recommended action not being
completely performed." App. Br. 24.
We are unpersuaded by Appellants' argument. Instead, we agree with
the Examiner that a patient not confirming that a prescription has been
refilled discloses a recommended action not being completely performed.
Further, Appellants do not provide persuasive evidence or reasoning that
failure to receive confirmation from a patient about refilling a prescription
does not disclose a recommended action not being completely performed.
Accordingly, we sustain the Examiner's rejection of claim 3 and
claims 9, 15, and 20, which were argued together with claim 3.
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Claim 6
Claim 6 depends from claim 4 and recites "wherein the patient
interactive device comprises a touch screen computer." The Examiner finds
Hunkeler discloses this limitation by describing that the patient devices
include PD As and tablets. Final Act. 17 ( citing Hunkeler ,r 46). Appellants
argue "the cited portion of Hunkeler is silent regarding a touch screen
computer." App. Br. 24. We are unpersuaded by Appellants' argument. In
considering the disclosure of a reference for anticipation, it is proper to take
into account not only specific teachings of the reference but also the
inferences that one skilled in the art would reasonably be expected to draw
therefrom. In re Preda, 401 F.2d 825, 826 (CCPA 1968). We agree with
the Examiner's finding that Hunkeler's disclosure of a patient interactive
device in the form of a tablet or PDA would disclose to the ordinary artisan a
touch screen computer.
Claim 23
Claim 16 recites "triaging, wherein triaging comprises ... performing
at least one of the following: (1) electronically generating and transmitting a
triage message ... to a communication device of a member of the patient's
professional health care team ... and (2) electronically generating and
transmitting a triage message to a communication device of a specific
member of the patient's professional health care team .... " Claim 23
depends from claim 16 and recites "the specific member of the patient's
professional health care team is determined based on the patient's
responses."
The Examiner interprets claim 16 as requiring only one of the above
two actions, i.e. either ( 1) transmitting a triage message to a member of the
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patient's health care team or (2) transmitting a triage message to a specific
member of the patient's health care team. Because dependent claim 23
recites limitations that further limit only the second of the two actions of
claim 16, and the Examiner's interpretation of claim 16 does not require the
second action to be performed if the first action is performed, the Examiner
ultimately finds that the limitations of claim 23 also are not required to be
performed. Final Act. 22. The Examiner, thus, does not provide any
findings regarding claim 23.
Appellants take issue with the Examiner's interpretation and argue
that the reference must actually disclose claim 23 's limitation in order to
anticipate claim 23.
We are unpersuaded by Appellants' arguments. We agree with the
Examiner's interpretation of claim 16 requiring only one of the two actions
being performed. In this case, the Examiner finds Hunkeler discloses the
first of the two actions. Final Act. 21. The Examiner has, therefore,
provided a prima facie case of obviousness of claim 16 without having to
address the second action. Claim 23 depends from claim 16 and limits only
the second action of claim 16. "A claim in dependent form shall be
construed to incorporate by reference all the limitations of the claim to
which it refers." 35 U.S.C. § 112(d). Because claim 23 limits only the
second action of claim 16, and incorporates all the limitations of claim 16,
the Examiner's rejection of claim 16 necessarily also addresses claim 23. In
other words, if claim 23 were written in independent form, the Examiner's
findings regarding the first action would suffice in providing a prima facie
case of anticipation of the claim.
Accordingly, we sustain the Examiner's rejection of claim 23.
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REJECTIONUNDER35 U.S.C. § 103
Claim 5
Claim 5 depends from claim 4 and recites "wherein the triage module
is further configured to generate and transmit a summary report of the
patient's response record to one or more of the communication device and a
printer."
Appellants argue "the cited portion of Pristine merely discloses that
the patient's summary report is printed in the selected treatment room. Both
Hunkeler and Pristine are silent regarding the claimed feature of transmitting
the report to one or more communication devices." App. Br. 26. Appellants
also argue that because Hunkeler discloses allowing for the patient to print a
copy of his or her action plan, but does not explicitly disclose printing of the
patient summary report, the Examiner "has articulated no reason why that
skilled artisan would add report print capabilities over and above those
already provided within the Hunkeler system." App. Br. 28.
We are unpersuaded by Appellants' arguments. Pristine discloses that
"an operator ... of server 5 8 can ... cause report 414 to be output at the
printer 82 corresponding to that selected treatment room." Pristine ,r 5 8.
One of ordinary skill would have understood that in order for the report to be
printed in a selected treatment room, it must be transmitted to the printer in
that room. Thus, we find no error in the Examiner's finding that Pristine's
aforementioned teaching combined with Hunkeler's teaching of transmitting
the report to a communication device of a member of the patient's health
care team, teaches the limitations of claim 5.
We also find unpersuasive Appellants' argument that Hunkeler and
Pristine cannot be properly combined. The fact that Hunkeler teaches
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printing an action plan does not preclude combining Hunkeler with a
reference that teaches printing the patient report as well. Indeed, as the
Examiner finds, Hunkeler's printing of the action plan holster's the
Examiner's combination by suggesting to one of ordinary skill that the
patient summary report could also be printed. Ans. 35.
Accordingly, we sustain the Examiner's rejection of claim 5 and of
claims 11 and 17, which were argued together with claim 5.
Claim 7
Claim 7 depends from claim 4 and recites "wherein an issue can
further comprise a triage threshold and identify a triage alert professional,
wherein the triage message is transmitted to a communication device of the
identified triage alert professional when a patient response to an issue
matches or exceeds the triage threshold associated with the issue."
Appellants argue "[ w ]hile the cited portion of Kapl[i]n discloses a
mechanism to automatically notify care providers if the patient response
triggers a threshold value, the reference fails to disclose how any such a
notification takes place." App. Br. 29. Based on this allegation, Appellants
argue Kaplin fails to enable one of ordinary skill in the art to make the
invention. Appellants also take issue with the Examiner's reason to combine
Hunkeler with Kaplin, arguing that Hunkeler already discloses sending an
alert to a provider for reasons other and thus, "the person of ordinary skill in
possession of the Hunkeler reference knew about transmitting messages to
care providers and would have no reason to add any communication features
recited in claims 7, 13, and 18 from the Kaplin reference." App. Br. 30.
We disagree with Appellants' arguments. The Examiner finds Kaplin
teaches the alert notification is sent by email, thus, Kaplin does teach how
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the notification is sent to the health care professional. We also disagree with
Appellants' argument regarding the Examiner's reason to combine and
instead agree with the Examiner that "the fact that an element was known at
the time of a particular reference but not disclosed as part of that reference
does not support a conclusion that there could be no motivation to add that
element." Ans. 36.
Accordingly, we sustain the Examiner's rejection of claim 7 and of
claims 13, and 18, which were argued together with claim 7.
Claim 8
Claim 8 depends from claim 4 and recites "wherein an issue further
comprises information identifying an educational item, and the
administrative server is further configured to retrieve the identified
educational item from an educational item store and to transmit the
educational item to a printer .... "
Appellants argue "Cervi merely discloses educational material
identified by a physician and given to the patient, which is ne[i]ther the
features recited in claims 8, 14, and 19 .... " App. Br. 32. Appellants
further argue "neither reference discloses the claimed element of retrieving
and transmitting the identified educational item to a printer or location
selected by the patient in response to information representing the patient's
desire for additional information." App. Br. 32.
Similar to arguments made previously, Appellants also argue that
there is no reason to combine Hunkeler with Cervi because Hunkeler already
"provides ... for delivering health information and educational programs on
specific topics and making online education available to patients that is
tailored to the specific needs of the patient." App. Br. 32-33.
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We disagree. Cervi teaches that educational handouts can be printed
by sending an order to a nurse station computer which then prints the
educational handout. Cervi ,r 63. Thus, we find no error in the Examiner's
finding that Cervi teaches transmitting the educational item for printing.
Final Act. 27. Finally, for reasons similar to the ones stated with respect to
claims 5 and 7, we do not find Appellants' argument regarding the
Examiner's reason to combine Hunkeler and Cervi persuasive.
Accordingly, we sustain the Examiner's rejection of claim 8 and of
claims 14 and 19, which were argued together with claim 8.
Claim 21
Claim 21 depends from claim 4 and recites "the patient interactive
device displays the next issue or prompt only after receiving the indication
of the patient's selection of one or more responses." Appellants argue
"requiring a user to answer every question is not equivalent to the feature
recited in claim 21 of displaying the next issue or prompt only after
receiving the indication of the patient's selection of one or more responses."
App. Br. 34. Appellants also argue that there is no reason to combine
Hunkeler and Machin. According to Appellants, "Machin is ... hardly
directed to the same subject matter as the individual screening and medical
triaging system of the present claims." Id. at 35.
We disagree with Appellants. Instead, we agree with the Examiner
that Machin's disclosure of a linear questionnaire where the user is not
allowed to skip questions teaches the limitations of claim 21. Ans. 3 8; see
also Machin 5:24--46. We also agree with the Examiner that "Machin is
analogous prior art because it is concerned with the problem of collecting
information from an individual through questionnaires and/or prompts
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presented to the user." Ans. 38-39. Two separate tests define the scope of
analogous prior art: (1) whether the art is from the same field of endeavor,
regardless of the problem addressed and, (2) if the reference is not within the
field of the inventor's endeavor, whether the reference still is reasonably
pertinent to the particular problem with which the inventor is involved. In re
Klein, 647 F.3d 1343, 1348 (Fed. Cir. 2011). Machin relates to an online
questionnaire, similar to the questionnaire of the claimed invention. Machin
1 :9-14. Although Machin's questionnaire deals with corporate performance
evaluation, rather than patient health, the problem of collecting information
through prompts and responses and making sure users answer each question
before moving on to the next is the same as, or at least reasonably pertinent
to the problem addressed by claim 21.
Accordingly, we sustain the Examiner's rejection of claim 21.
Claim 22
Claim 22 depends from claim 4 and recites "wherein the patient
interactive device displays the next issue, prompt, or patient selectable
responses based on the patient's selection of one or more responses."
Appellants do not dispute that the combination of Hunkeler and Huyn
teach or suggest the limitations of claim 22. See App. Br. 36-37. Instead,
they take issue with the Examiner's reason to combine the two references.
Id. For example, Appellants argue "Hunkeler is silent regarding any need to
dynamically modify its presentation of questions to the patient regarding
their health." App. Br. 37. However, the Examiner finds that Huyn
provides a reason to combine the two references by "provid[ing] questions to
the user dynamically based on the user's actual responses rather than in a
rigid and preset manner." Final Act. 32. "As long as some motivation or
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suggestion to combine the references is provided by the prior art taken as a
whole, the law does not require that the references be combined for the
reasons contemplated by the inventor." In re Beattie, 974 F.2d 1309, 1312
(Fed. Cir. 1992). We find the Examiner has articulated a reason with
rational underpinning for combining the two references and Appellants'
argument focusing on Hunkeler' s silence is not persuasive of Examiner
error.
Accordingly, we sustain the Examiner's rejection of claim 22.
DECISION
The Examiner's rejection of claims 1-23 under 35 U.S.C. § 101 is
affirmed.
The Examiner's rejection of claims 1--4, 6, 9, 10, 12, 15, 16, 20, and
23 under 35 U.S.C. § 102 is affirmed.
TheExaminer'srejectionofclaims 5, 7, 8, 11, 13, 14, 17-19, 21 and
22 under 35 U.S.C. § 103 is affirmed
No time period for taking any subsequent action in connection with
this appeal may be extended. See 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED
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