Ex Parte Maekawa

Patent Trial and Appeal Board

Jul 22, 2014

10653193 (P.T.A.B. Jul. 22, 2014)

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.
10/653,193 09/03/2003 Masami Maekawa SUT-0225 1753
74384 7590 07/22/2014
Cheng Law Group, PLLC
1100 17th Street, N.W.
Suite 310
Washington, DC 20036
EXAMINER
PORTER, RACHEL L
ART UNIT PAPER NUMBER
3626
MAIL DATE DELIVERY MODE
07/22/2014 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 MASAMI MAEKAWA
____________

Appeal 2011-011727
Application 10/653,193
Technology Center 3600
____________

Before HUBERT C. LORIN, ANTON W. FETTING, and
NINA L. MEDLOCK, Administrative Patent Judges.

LORIN, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Masami Maekawa (Appellant) seeks our review under 35 U.S.C.
§ 134 (2002) of the final rejection of claims 1–20. We have jurisdiction
under 35 U.S.C. § 6(b) (2002).

SUMMARY OF DECISION
We AFFIRM.1

1 Our decision will make reference to the Appellant’s Appeal Brief (“App.
Br.,” filed Feb. 8, 2011) and Reply Brief (“Reply Br.,” filed Jul. 5, 2011),
and the Examiner’s Answer (“Ans.,” mailed May 5, 2011).
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Application 10/653,193

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THE INVENTION
Sole independent claim 1, reproduced below, is illustrative of the
subject matter on appeal.
1. A single nuclear medical examination scheduling program
stored in computer memory and having computer executable
instructions for causing a computer to create a schedule for each
patient including an examination by the nuclear medical
examination apparatus and a medication accompanying the
examination, said program causing said computer to perform:
a function for fetching information on contents of the
examination and an order of examination each patient;
a function for fetching a waiting time from the
medication to an examination set according to a type of
examination; and
a function for creating an examination schedule to avoid
overlapping in time between timing of the medication and the
examination for each patient and timing of medication and
examination for other patients, based on said information on
contents of the examination and an order of examination and
the waiting time.

THE REJECTION
The Examiner relies upon the following as evidence of
unpatentability:
Kameda
White

US 5,923,018
US 2004/0019501 A1
July 13, 1999
Jan. 29, 2004
The following rejection is before us for review:
1. Claims 1–20 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Kameda and White.
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ISSUE
Did the Examiner err in rejecting claims 1–20 under § 103(a) as being
unpatentable over Kameda and White?

FINDINGS OF FACT
We rely on the Examiner’s factual findings stated in the Answer.
Additional findings of fact may appear in the Analysis below.

ANALYSIS
The Appellant argued claims 1 and 3–20 as a group (App. Br. 5–12).
We select claim 1 supra as the representative claim for this group, and the
remaining claims 3–20 stand or fall with claim 1. 37 C.F.R.
§ 41.37(c)(1)(vii) (2011).
With respect to the the claim limitations in the preamble of the claim,
i.e., “to avoid overlapping in time between timing of the medication and the
examination for each patient” (in the function mentioned above) and “[a]
single nuclear medical examination,” the Examiner initially stated that they
were directed to an intended use and, therefore, not given patentable weight.
Ans. 5. We agree with the Appellant that the limitation “a single nuclear
medical examination” is “necessary to give life, meaning and vitality” to the
claim, and Examiner incorrectly characterized the limitation “a single
nuclear medical examination" [as having] no patentable weight because the
recitation occurs in the preamble of claim 1.” App. Br. 8. See Pitney
Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298, 1305 (Fed. Cir. 1999)
(Internal quotations and citation omitted). However, notwithstanding the
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Examiner’s initial statement, the Examiner subsequently addressed the
limitation, thereby correcting the error. See Ans. 8.
The Examiner found that Kameda discloses the claim limitations set
forth in the body of the claim—except for
a function for creating an examination schedule to avoid
overlapping in time between timing of the medication and the
examination for each patient and timing of medication and
examination for other patients, based on said information on
contents of the examination and an order of examination and
the waiting time.
Ans. 4. The Examiner relied on White as disclosing said function, finding
that “White discloses a system and application for generating/creating an
examination schedule and patient queues and tracking based upon retrieved
patient data, patient order, and waiting time required for given procedures.”
Id. According to the Examiner, given Kameda and White,
it would have been obvious to one of ordinary skill in the art to
combine the system of Kameda of with the teaching of White to
create an examination schedule based on information on
contents of the examination, an order of examination and the
waiting time. As suggested by White, one would have been
motivated to include this feature to permit the staff members to
define the steps in the medical testing process, to track the flow
of patients from step to step in the medical testing process, to
record the completion of steps as to individual patients, and to
organize priorities for staff members carrying out each step.
Ans. 4.
First, the Appellant challenges the rejection on the ground that the
Examiner erred in finding that White discloses “a function for creating an
examination schedule to avoid overlapping in time between timing of the
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medication and the examination for each patient and timing of medication
and examination for other patients.” Claim 1.
Specifically, the Appellant argues that
[i]n contrast to the present invention, White et al. fails to
disclose the system causing the computer to perform a function
for creating an examination schedule to avoid overlapping in
time between timing of the medication and the examination for
each patient and timing of medication and examination for
other patients. In White et al., the examination schedule is
created by a user, not a computer. The system of White et al.
merely stores and looks up patient records when information is
inputted. Appointments are scheduled by a user on a calendar
displayed by the system, but the system itself does not create
the schedule. In other words, this scheduling system of White
et al. creates a schedule only by a manual operation, i.e.,
inputting patients’ dates and times of appointment considering
available times for diagnosis on a day-to-day or hourly basis
and not automatically.
App. Br. 6–7. “White et al. ‘does not disclose the most important
characteristic of claim 1 in the present application, which is ‘said program
causing said computer to perform . . . a function for creating an
examination schedule [ . . .’].” Id. at 7.
The argument is unpersuasive as to error in the rejection because it
assumes, incorrectly, that the Examiner relied on White to show a computer
performing the function for creating an examination schedule.
The Examiner stated that “Kameda discloses an examination
scheduling program, stored in computer memory and having computer
executable instructions for causing a computer to create a schedule for each
patient.” Ans. 3 (emphasis added). The Examiner further stated that
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“Kameda discloses the program as described above, but does not expressly
disclose a function for creating an examination schedule based upon
contents of the examination for each patient and an order of examination for
each patient, and waiting time.” Id. at 4 (emphasis added). Accordingly,
the Examiner relied on Kameda to show a program causing a computer to a
function for creating an examination schedule. But White was relied upon to
show creating an examination schedule “based on . . . information on
contents of the examination and an order of examination and the waiting
time” (claim 1). This is supported by the discussion in the Answer in
response to the Appellant’s argument; to wit,
The prior art addresses the claimed limitations. Kameda
discloses a computer program with a function for generating
(i.e. displaying) an examination schedule of patients (Figures 4-
5;col. 9, lines 12-52; co1.11, lines 4-20; 36-56). Kameda
displays schedules for patients' medications, medical
examinations, and medical care, but does not expressly disclose
a function for creating an examination schedule based upon
contents of the examination for each patient and an order of
examination for each patient, and waiting time.
White discloses a system and application for
generating/creating a radiological device examination schedule
using patient queues and tracking based upon retrieved patient
data, patient order, and waiting time required for given
procedures (Figs. 2B, 7B, 8B, 9A-B; par. 38-41, 44-45, 49, 54-
55).
Ans. 8.
Second, the Appellant also argues “[i]n addition, claim 1 in the
present application is directed to a nuclear medical examination scheduling
program, which is different in technical field from Kameda et al. and White
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et al.” App. Br. 7. According to the Appellant, Kameda and White “disclose
scheduling programs for use in ordinary examinations at hospitals, which are
irrelevant to the nuclear medical examination scheduling programs to which
the present invention is directed.” Id.
This argument is also unpersuasive as to error in the rejection because,
as the Examiner indicated (Ans. 8, reproduced above), White discloses a
scheduling means where “radiological testing” is involved. See ¶ 11 of
White. See also ¶ 52 (“the radiology field”) and Figs. 9A–B, “Procedure”
column, which shows a “CT” procedure. It is common knowledge that the
field of radiology covers the use of nuclear medicine. Thus, one of ordinary
skill in the art reading White would infer from its discussion of a scheduling
means where “radiological testing” is involved that it applies to nuclear
medical examinations. In evaluating a reference, it is proper to take into
account not only the specific teachings of the reference but also the
inferences which one skilled in the art would reasonably be expected to draw
therefrom. In re Preda, 401 F.2d 825, 826 (CCPA 1968).
Even assuming arguendo that a nuclear medical examination is a
specialized procedure, there is insufficient objective evidence on the record
showing a functional distinction in scheduling a nuclear medical
examination as compared to scheduling an ordinary medical examination.
The difference, if there is one, appears merely to be a matter of the use to
which the scheduling is applied and not as to the scheduling program itself.
The scheduling program as claimed has not been shown to be functionally
affected by employing it in the context of performing a nuclear medical
examination as compared to performing an ordinary medical examination.
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Accordingly, on this record, the claim recitation “nuclear medical” is not a
patentable distinction over a disclosure to scheduling an ordinary medical
examination. Cf. King Pharms., Inc. v. Eon Labs, Inc. 616 F.3d 1267, 1278,
1279 (Fed. Cir. 2010) (“The ‘informing’” limitation adds no novelty to the
method, which is otherwise anticipated by the prior art. . . . This
relationship, however, is not functional. Informing a patient about the
benefits of a drug in no way transforms the process of taking the drug with
food.”)
Finally, the Appellant argues that “White et al. and Kameda et al. fail
to disclose or suggest the feature that the computer makes an arrangement in
a way . . . to avoid overlapping in time between timing of the medication and
the examination for each patient and timing of medication and examination
for other patients.” App. Br. 12. The Appellant explains that, in the instant
claim,
the computer, which contains the processing unit 13 [referring
to Fig. 1 of the Specification], and not the user, creates the
examination schedule.
Furthermore, in order to avoid such overlapping in time
between the timing of the medication and examination for each
patient and the timing of medication and examination for other
patients, the computer creates a schedule automatically based
on information, instead of a manual operation using a GUI.
Id. at 9. In that regard, the Appellant argues that “the system of White et al.
is different in construction from the processing unit of the computer of the
present invention.” Id. at 12.
We do not find the argument persuasive as to error in the rejection for
the reasons given earlier. As with the argument that “White et al. does not
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disclose the most important characteristic of claim 1 in the present
application, which is “said program causing said computer to perform . . . a
function for creating an examination schedule [. . .]” (App. Br. 7), the
argument is similarly misplaced.
The Examiner relied on Kameda, not White, to show a computer
creating a schedule was known in the prior art at the time of the invention.
See Ans. 11–12:
The Kameda patent is drawn toward a computer program for
displaying scheduled patients’ medications, medical
examinations, and medical care. (Figures 4-5; col. 9, lines 12-
52; co1.11, lines 4-20; 36-56). White discloses a system and
computer program for generating/creating an examination
schedule for several radiological procedures on equipment
using patient queues and tracking based upon retrieved patient
data, patient order, and waiting time required for given
procedures (Figs. 2B, 7B, 8B, 9A-B; par. 38-41, 44-45, 49, 54-
55). The scheduling, patient queues and tracking of the White
reference avoids overlapping among patients. White further
discloses an additional prioritization function, which establishes
rules regarding how the cases should be moved in a queue, and
accommodates the need for expedited processing in emergency
situations. (White: par. 47).
Moreover, the question is not whether Kameda or White individually
show a computer for creating a schedule but whether it would have been
obvious over the combination of Kameda and White to provide for a
program
having computer executable instructions for causing a computer
to create a schedule . . . to avoid overlapping in time between
timing of the medication and the examination for each patient

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and timing of medication and examination for other patients,
based on said information on contents of the examination and
an order of examination and the waiting time
(claim 1). The Appellant has not provided persuasive argument showing
that the Examiner failed to establish a prima facie case of obviousness for
said claimed subject matter in the first instance given the combined
disclosures of Kameda and White. To the contrary, the Appellant (App.
Br. 6) points out that White discloses that a user can navigate a calendar
display to locate an appointment date and time acceptable to the patient and
then schedule an appointment. Id. (citing ¶ 38 and Fig. 2A of White). The
availability of an appointment date and time is a well-known condition
precedent to finding an acceptable appointment date and time. And an
indication that an appointment date and time is available for scheduling is
commonly understood to mean that said date/time is not in conflict with
another appointment scheduled on that same date and time. Thus, White’s
disclosure that a user can navigate a calendar display to locate an acceptable
appointment date and time implicitly creates a schedule that avoids
overlapping in time the examination of each patient and other patients. In
light of the very disclosure cited by the Appellant, the preponderance of the
evidence weighs in favor of the facts supporting the Examiner’s position.
For the foregoing reasons, the rejection of claim 1 is sustained.

Claim 2
Claim 2 further limits the program of claim 1 such that the “schedule
for each patient is expressed by a pattern having a time span according to the

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type of examination, said pattern presenting the timing of the medication, the
waiting time and the contents of the examination.”
The Examiner found the subject matter of claim 2 disclosed in
Kameda at Figure 8; column 18, lines 9–31; column 9, lines 12–53; and
column 11, lines 4–20. Ans. 6.
The Appellant disagrees.
Kameda et al. only discloses a “table in which the medical care
actions in each one month period are put in one frame 41 of the
table and the columns are arranged over month as shown in
FIG. 8. Other than one month, although a lime unit such as 3
days, one week, one year or 10 years which are easily
understood, can be preferable used here” (see column 18, lines
17-23, of Kameda et al.). In other words, the table of Kameda
et al. uses “an arbitrary time unit” and not a time span
according the type examination as recited in claim 2 (see
column 18, lines 23-27 of Kameda et al.).
App. Br. 12.
The Kameda disclosure at Figure 8 and column 18, lines 9–31, for
example, describes a table with “cell definition data in correspondence with
the amount of the frequency of the medical care actions, [thereby making] it
easy for the operator to visually recognize the aspect of the medical care
actions in a long time span.” Id. at col. 18, ll. 27–31 (referring to Fig. 8). In
Figure 8, one of the cells contains the words “April 15th CARDIOGRAM.”
The column for the cell is labeled “’95 April 3 MONTHS LEAVING
HOSPITAL” and the corresponding row is labeled “TEST.” This appears to
describe “a time span [e.g., 3 months] according to the type of examination
[e.g., “test”]” as claimed. Accordingly, the preponderance of the evidence

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does not support the Appellant’s argument that Kameda does not disclose “a
time span according [to] the type of examination as recited in claim 2”
(App. Br. 12).
No persuasive argument as to error in the rejection having been made,
the rejection of claim 2 is sustained.

DECISION
The decision of the Examiner to reject claims 1–20 is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).
AFFIRMED

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