Ex Parte Rosenberg

Patent Trial and Appeal Board

Nov 21, 2014

12103165 (P.T.A.B. Nov. 21, 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.
12/103,165 04/15/2008 Michael J. Rosenberg 216.0002 1445
27997 7590 11/24/2014
LAW OFFICES OF PETER H. PRIEST, PLLC
5015 SOUTHPARK DRIVE
SUITE 230
DURHAM, NC 27713-7736
EXAMINER
LE, UYEN T
ART UNIT PAPER NUMBER
2157
MAIL DATE DELIVERY MODE
11/24/2014 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 MICHAEL J. ROSENBERG
___________________

Appeal 2012-0048071
Application 12/103,165
Technology Center 2100
____________________

Before JEAN R. HOMERE, KEN B. BARRETT, and JEFFREY S. SMITH,
Administrative Patent Judges.

HOMERE, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 10–18. Claims 1–9 have been withdrawn. App. Br. 2.
We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
Appellant’s Invention
Appellant invented a system for determining whether data previously
collected in the field (source data), and recorded in a database has been
modified. Spec. 2:5–17. In particular, the invention entails comparing

1 Appellant identifies the real party in interest as himself and Health
Decisions, Inc. App. Br. 2.
Appeal 2012-004807
Application 12/103,165

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current database data entries with the source data to detect possible
differences therebetween. Id.

Representative Claim
Independent claim 10 is representative. It reads as follows:
10. A system for performing source data verification as part of a
clinical trial or other process that requires comparison of current values in a
database with source data at a plurality of geographically remote sites
according to a set of procedures or parameters, said system comprising:

(a) a centralized database containing values representing the current,
final product of source data that have been collected and/or recorded in the
field:

(b) means for comparing a value in the database with the
corresponding source data;

(c) means for determining whether the database value agrees with the
corresponding source data; and

(d) means for determining whether, during the period since the
corresponding source data were originally collected, any
queries have been generated with respect to said database value.

Prior Art Relied Upon
Kozam US 2002/0035570 A1 Mar. 21, 2002

Rejection on Appeal
The Examiner rejects claims 10–18 under 35 U.S.C. § 102(b) as being
anticipated by Kozam.
Appeal 2012-004807
Application 12/103,165

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ANALYSIS
We consider Appellant’s arguments seriatim, as they are presented in
the Appeal Brief, pages 6–10, and the Reply Brief, pages 2–7.2

Dispositive Issue: Under 35 U.S.C. § 102, did the Examiner err in
finding Kozam describes comparing a current value in a database with a
corresponding value of source data to determine whether any queries have
been generated with respect to the database value since the source data was
originally collected, as recited in claim 10?
Appellant argues Kozam does not describe the disputed limitations
emphasized above. App. Br. 7, Reply Br. 3. In particular, Appellant argues
that because Kozam discloses comparing second hand information with
already existing entries in the database, Kozam does not describe source data
as defined in the Specification. Reply Br. 4. Further, Appellant argues
although the disclosed comparison describes verifying whether the initial
submission of the information to a database is accurate, Kozam does not
describe the subsequent stage after the source has already been entered in the
database to determine whether the current data matches the source data
previously stored in the database. App. Br. 6–7, Reply Br. 3–4.

2 Rather than reiterate the arguments of Appellant and the Examiner, we
refer to the Appeal Brief (filed June 27, 2011), the Reply Brief (filed
December 5, 2011) and the Answer (mailed October 3, 2011) for the
respective details. We have considered in this Decision only those
arguments Appellant actually raised in the Briefs. Any other arguments
Appellant could have made but chose not to make in the Briefs are deemed
to be waived. See 37 C.F.R. § 41.37(c)(1)(vii).
Appeal 2012-004807
Application 12/103,165

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In response, the Examiner finds Kozam’s disclosure of comparing a
patient’s weight information in a database with original weight data
previously collected for the patient describes the disputed limitations. Ans.
7–9.
On the record before us, we do not find error in the Examiner’s
anticipation rejection of claim 10. We note at the outset although
Appellant’s Specification defines “source data” as the first time a piece of
data is recorded (Spec. 2:7–17), it does not delineate between different types
of media (e.g., paper, mental, electronic) upon which such data can be
recorded. Thus, albeit Kozam discloses that the data can be collected
originally on a piece of paper to then be transmitted or re-recorded on a
computer (Kozam ¶ 8), Kozam also discloses collecting the data originally
via a computer at a remote site. (Kozam ¶ 14). Further, Kozam discloses,
irrespective of how the data is collected originally, comparing the source
data with current data in a centralized database to verify its accuracy.
(Kozam ¶ 15). Additionally, Kozam discloses determining whether
significant changes have been made to user’s personal information (eg., the
person’s weight) since the day it was originally gathered at the primary
collection point. (Kozam ¶ 19.) We find Kozam’s disclosure of collecting
the user’s personal information originally at a computer describes the
claimed source data as it was recorded thereon for the first time. Therefore,
we do not agree with Appellant that the comparison of such source data with
data already stored in the centralized database pertains to a comparison of
second hand information therewith. Consequently, we agree with the
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Application 12/103,165

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Examiner that Kozam’s disclosure of determining whether user information
collected originally (such as the user’s weight) has been changed describes
the disputed limitations. Hence, we find the cumulative weight and the
totality of the evidence on this record reasonably supports the Examiner’s
position that Kozam describes the disputed limitations.
For at least the aforementioned reasons, we find Appellant has not
provided arguments or evidence persuasive of error in the Examiner’s
rejection of representative claim 10. It therefore, follows that Appellant has
not shown that the Examiner erred in finding Kozam anticipates claim 10.
Because Appellant has not presented separate patentability arguments
or have reiterated substantially the same arguments as those previously
discussed for patentability of claim 10 above, claims 11–18 fall therewith.
See 37 C.F.R. § 41.37(c)(1)(vii).
DECISION
We affirm the Examiner’s rejection of claims 10–18 as set forth
above.
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).

AFFIRMED

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