Ex Parte Mark

Patent Trial and Appeal Board

Jul 18, 2016

13027158 (P.T.A.B. Jul. 18, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/027, 158 02/14/2011
2512 7590
Perman & Green, LLP
99 Hawley Lane
Stratford, CT 06614
07119/2016
FIRST NAMED INVENTOR
Jacob Mark
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.
l 163P014041-US(PAR) 6277
EXAMINER
NGUYEN, CHUONG M
ART UNIT PAPER NUMBER
2411
MAILDATE DELIVERY MODE
07/19/2016 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 JACOB MARK
Appeal2015-002761
Application 13/027,158
Technology Center 2400
Before ROBERT E. NAPPI, CARLA M. KRIVAK, and
JEFFREY A. STEPHENS, Administrative Patent Judges.
NAPPI, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134(a) of the Final
Rejection of claims 1-33. We have jurisdiction under 35 U.S.C. § 6(b ).
We affirm.
INVENTION
The invention is directed to a workflow and resource management
system with integrated bi-directional communications for controlling process
pathways. See Title and Abstract of Appellant's Specification.
Claim 1 is illustrative of the invention and is reproduced below.
Appeal2015-002761
Application 13/027,158
1. A system for controlling process pathways, the system
compnsmg:
a network;
a system backend communicable with said network
comprising a processor configured to generate a process
pathway embodying a physical process having a predetermined
end, the physical process comprising a series of physical tasks
based on a predefined set of rules reflecting a predetermined
condition and related to the predetermined end, where each
physical task of the series of physical tasks corresponds to
different points along the process pathway, and a series of
notifications corresponding to each physical task of the process
pathway for communication over the network;
at least one mobile device communicable with said
system backend via said network, the at least one mobile device
being configured to receive from said backend via said network
at least one notification, of said series of notifications, the at
least one notification defining a physical task of the series of
physical tasks of the process pathway and provides a user with
authorization to act, and upon which notification the user is
authorized to act;
wherein said at least one mobile device is further
configured to allow said user to modify a state of said at least
one notification with a one-step action;
wherein said at least one mobile device is further
configured to communicate the modified state of the at least one
notification to the system backend over said network; and
wherein said modified state of the at least one
notification causes said processor to effect a change to said
process pathway based upon said modified state.
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Application 13/027,158
REJECTIONS AT ISSUE 1
The Examiner has rejected claims 1 and 23-25 under 35 U.S.C. § 112,
first paragraph as failing to comply with the written description requirement.
Final Act. 7-8.2
The Examiner has rejected claims 1-33 under 35 U.S.C. § 103(a) as
being unpatentable over Bhame et al. (US 2009/0300170 Al; published Dec.
3, 2009) and Cohen et al. (US 2010/0286488 Al; published Nov. 11, 2010).
Final Act. 8-31.
ISSUES
Rejection under 35 U.S.C. § 112, first paragraph
Appellant's arguments on pages 7-10 of the Appeal Brief and pages
2--4 of the Reply Brief, directed to the Examiner's rejection under
35 U.S.C. § 112, first paragraph present us with the following issue:
a) Does Appellant's originally filed Specification demonstrate
Appellant possessed the feature of a predetermined end of a
physical process embodied by a process pathway, as required by
each of the independent claims?
1 Claims 1, 23, and 24 are objected to because of informalities. See Final
Act. 7. Claim objections are petitionable, not appealable, matters and are
not within the jurisdiction of the Board. See MPEP § § 1002 and 1201.
2 Throughout this opinion we refer to the Appeal Brief dated October 6,
2014, the Reply Brief dated December 19, 2014, the Final Action mailed
March 4, 2014, and the Examiner's Answer mailed October 20, 2014.
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Application 13/027,158
Rejection under 35 U.S.C. § 103
Appellant presents several arguments on pages 10-35 of the Appeal
Brief and pages 4--7 of the Reply Brief, directed to the Examiner's rejection
of independent claims 1 and 23-25. These arguments present us with the
following two issues:
b) With respect to claims 1 and 23-25, did the Examiner err in
finding Cohen teaches or suggests generating a process pathway
embodying a physical process having a predetermined end, the
physical process comprising a series of physical tasks based on a
predefined set of rules reflecting a predetermined condition (or on
a set of criteria as recited in claim 25) and related to the
predetermined end, where each physical task of the series of
physical tasks corresponds to different points along the process
pathway?
c) With respect to claims 1, 23, and 24, did the Examiner err in
finding Cohen teaches or suggests at least one notification defining
a physical task of the series of physical tasks of the process
pathway and provides a user with authorization to act, and upon
which notification the user is authorized to act?
Appellant's arguments directed to dependent claims 2-22 and 26-33
present us with the same issues as respective independent claims 1 and 25.
App. Br. 17, 35.
ANALYSIS
We have reviewed Appellant's arguments in the Briefs, the
Examiner's rejections, and the Examiner's response to Appellant's
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Application 13/027,158
arguments. We disagree with Appellant's conclusion that the Examiner
erred in rejecting claims 1-33 under 35 U.S.C. § 103(a). However, we
concur with Appellant's conclusion that the Examiner erred in rejecting
claims 1 and 23-25 under 35 U.S.C. § 112, first paragraph.
Rejection under 35 U.S.C. § 112, first paragraph
Regarding issue (a), Appellant argues claim 1 recites a
"predetermined end" as part of a process pathway embodying a physical
process having a predetermined end, the physical process comprising a
series of physical tasks based on a predefined set of rules reflecting a
predetermined condition and related to the predetermined end. App. Br. 7;
Reply Br. 3. Appellant provides a detailed explanation on pages 8-10 of the
Appeal Brief and pages 2--4 of the Reply Brief identifying where the
Specification describes the claimed invention. In particular, Appellant cites
Figure 3 and paragraphs 28 and 29 of the originally filed Specification in
support. 3 App. Br. 8, 9; Reply Br. 3. These paragraphs and figure provide
for several predetermined ends as discharge outcomes of "Treat &
Discharge," "Treat & Dis," and "Dis," which terminate a process pathway.
App. Br. 8; see Spec. i-f 28; Fig. 3, outcomes 304, 306. Furthermore, when
no task points of a process pathway remain uncompleted, the process
pathway may terminate for that particular task. App. Br. 8; see Spec. i-f 29.
3 Appellant cites paragraphs 31 and 32 of the US Pre-Grant Publication of
Appellant's Specification (App. Br. 2, 8, 9; Reply Br. 3,citing US
2012/0042039), which correspond to paragraphs 28 and 29 in Appellant's
originally-filed Specification.
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Application 13/027,158
We have reviewed the cited portions of the originally-filed
Specification, and concur with Appellant's argument that the Specification
demonstrates Appellant possessed the claimed predetermined end, as part of
a process pathway embodying a physical process having the predetermined
end, the physical process comprising a series of physical tasks based on a
predefined set of rules reflecting a predetermined condition and related to
the predetermined end, as recited in claim 1. Figures 2, 3, and 3A, and
paragraphs 28 and 29 of the originally-filed Specification describe
predetermined ends as ends of a patient's treatment path in a hospital. See
Spec. i-fi-128, 29, Figs. 2, 3, 3A, outcomes 304, 306, 318.
Accordingly, we do not sustain the Examiner's rejection of
independent claim 1under35 U.S.C. § 112, first paragraph. For the same
reasons as claim 1, we do not sustain the Examiner's 35 U.S.C. § 112, first
paragraph rejection of independent claims 23-25 reciting similar limitations.
Rejections under 35 U.S.C. § 103
Regarding issue (b ), the Examiner finds Cohen's medical process for
treatment of a wound teaches a process pathway embodying a physical
process of treating the wound by a series of physical tasks of changing
bandages, taking medication, and periodically checking vital signs. Ans. 34,
35 (citing Cohen i145); Final Act. 12, 13. The Examiner further finds
Cohen's physical process of treating the wound has a predetermined end of
healing the wound. Ans. 34, 35.
Appellant argues Cohen does not disclose or suggest a process
pathway embodying a physical process having a predetermined end as
required in claim 1. App. Br. 11-16. Rather, Cohen describes "an ongoing
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and continuous" process of "repeated operations of [a] medical routine [that]
will be ongoing and will continue indefinitely," not a process with a
predetermined end. App. Br. 11, 13; Reply Br. 5. We do not agree. Cohen
teaches a patient's medical routines are goal-oriented actions monitored by
health care providers and physicians. See Cohen i-f 45, Abstract. The skilled
artisan would recognize a health care provider or physician would instruct
the patient to perform treatment routines and actions until the patient's
health condition has improved. Ans. 35.
Appellant further argues Cohen's healing a wound by changing
bandages is not a predetermined end as claimed "since the end state must be
determined every time the action repeats and therefore cannot be a
'predetermined end'." App. Br. 15, 16. Appellant's argument is not
commensurate with the scope of claim 1, which does not recite how the
predetermined end is determined or set. We also do not find Appellant's
Specification supports Appellant's proposed narrow interpretation for the
limitation "predetermined end."
Appellant further argues Cohen's medical routines do not teach a
physical process comprising a series of physical tasks corresponding to
different points along a process pathway as recited in claim 1. App. Br. 13-
15. Rather, Cohen describes a routine of "singular operations" that do not
form a series of physical tasks but are "only a singular operation" or
"correspond to the same singular operation." App. Br. 13, 15. Appellant's
argument is not commensurate with the scope of claim 1. Claim 1 recites
the physical process comprises a series of physical tasks each corresponding
to different points along the process pathway, but claim 1 does not require
the tasks to be different, and does not preclude a series of identical tasks
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performed at different times along a process pathway. Additionally we
agree with the Examiner's findings that Cohen's physical process of treating
a wound includes physical tasks-such as changing bandages and taking
medication-at different points along the treatment process pathway. Ans.
34 (citing Cohen i-f 45). Cohen's actions of changing bandages and taking
medication are also commensurate with the broad description of the terms
"physical tasks" and "points" in Appellant's Specification. 4
Appellant's further argument that Cohen's treatment routine steps are
not physical tasks related to a predetermined end because "each medical
routine and/or single action [in Cohen] is disparate relative to each other" is
similarly not commensurate with the scope of claim 1. App. Br. 14. Claim
1 does not recite that the physical tasks are not disparate relative to each
other, and claim 1 does not preclude tasks that are individually unrelated to
each other.
Appellant additionally argues Cohen does not teach a predefined set
of rules for the series of physical tasks, as required in claim 1. Reply Br. 4.
We do not agree. Appellant's arguments do not address the Examiner's
specific findings that Cohen's "data related to the management of the
patient's medical treatment, such as the schedules, dosages, instructions and
4 Appellant's Specification provides "a process pathway for a job may take
the form of, for instance, a series of task points or path points associated
with, for instance, the treatment plan for a patient, or any other task in any
other context. The series of task points or path points may ... correspond to
a discrete task to be done in the furtherance of the job, for instance a specific
step in the treatment of a[] patient in an emergency room" (Spec. i-f 21
(emphasis added)).
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identification of medications" are a predefined set of rules reflecting a
predetermined medical or treatment condition of the patient. Final Act. 12,
13 (citing Cohen i-f 45). We agree with the Examiner's findings.
Accordingly, we are not persuaded the Examiner erred in finding
Cohen teaches or makes obvious generating a process pathway embodying a
physical process having a predetermined end, the physical process
comprising a series of physical tasks based on a predefined set of rules
reflecting a predetermined condition and related to the predetermined end,
where each physical task of the series of physical tasks corresponds to
different points along the process pathway, as required by claim 1.
Regarding issue ( c ), the Examiner finds Cohen's mobile device
requests for a user/patient to measure vital signs, take medication, perform
physical therapy activities, and change bandages are notifications that define
physical tasks as required in claim 1. Final Act. 14 (citing i-f 45). The
Examiner further finds Cohen's notifications provide the patient with
authorization to act as directed by medical staff because such notification "to
take medicine implies that the patient is authorized to take the prescribed
type of medication ONLY, under the specifically authorized dosage and
frequency." Ans. 35.
Appellant argues Cohen at most provides helpful advice or reminders,
which are different from the claimed notification providing authorization to
act because "nothing about the reminder as provided in Cohen binds the
actions of the patient in any way" and the "patient does not need
'authorization to act' and ... [is] free to do as they wish." App. Br. 17;
Reply Br. 6. Appellant's argument is not commensurate with the scope of
claim 1, which does not require the authorization to bind the user's actions.
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Claim 1 recites the notification provides the user with authorization to act
and upon the notification the user is authorized to act, however, claim 1 does
not preclude the user from ignoring the provided authorization; claim 1 also
does not require the user to act upon receiving the authorization. Ans. 35.
Additionally, we agree with the Examiner that Cohen's instructions and
requests for the patient provide an authorization to act in accordance with
parameters set by the medical staff. Ans. 35. Further, Cohen's Abstract and
paragraphs 49 and 50 disclose "instructions to a user to perform certain
medical actions" and "required instructions and requests ... to confirm the
performance of the instructions or requests," also teaching notifications that
provide a user with authorization to act. See Cohen i-fi-149, 50, Abstract.
Accordingly, we are not persuaded the Examiner erred in finding
Cohen teaches or makes obvious a notification that provides a user with
authorization to act, and upon receipt of which the user is authorized to act,
as required by claim 1.
As Appellant's arguments regarding issues (b) and (c) have not
persuaded us of error in the Examiner's rejection of claim 1, we sustain the
Examiner's rejection of independent claim 1 and independent claims 23 and
24, for which Appellant provides the same arguments. App. Br. 17-30.
With respect to claim 25, Appellant's arguments are substantially the
same as those provided for independent claim 1 with respect to issue (b ).
App. Br. 30-35. Thus, for the same reasons as claim 1, we also sustain the
Examiner's rejection of independent claim 25.
Appellant has not presented additional arguments with respect to the
rejections of dependent claims 2-22 and 26-33. App. Br. 17, 35.
Accordingly, we similarly sustain the Examiner's rejection of these claims.
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DECISION
We reverse the Examiner's rejection of claims 1 and 23-25 under
35 U.S.C. § 112, first paragraph.
We affirm the Examiner's rejection of claims 1-33 under
35 U.S.C. § 103.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED
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