Ex Parte Serrano et al

Patent Trial and Appeal Board

Mar 9, 2018

10431548 (P.T.A.B. Mar. 9, 2018)

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.
10/431,548 05/07/2003 Laura Kathleen Serrano CRNI.104358 4795
46169 7590 03/13/2018
SHOOK, HARDY & BACON L.L.P.
(Cerner Corporation)
Intellectual Property Department
2555 GRAND BOULEVARD
KANSAS CITY, MO 64108-2613
EXAMINER
MISIASZEK, AMBER ALTSCHUL
ART UNIT PAPER NUMBER
3624
NOTIFICATION DATE DELIVERY MODE
03/13/2018 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):
IPDOCKET@SHB.COM
IPRCDKT@SHB.COM
BPARKERSON @ SHB .COM
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte LAURA KATHLEEN SERRANO, JOHN LEE MOORE III,
and JUDITH ANN ZAKUTNY
Appeal 2016-005939
Application 10/431,54s1
Technology Center 3600
Before HUBERT C. LORIN, ANTON W. FETTING, and
THOMAS F. SMEGAL, Administrative Patent Judges.
FETTING, Administrative Patent Judge.
DECISION ON APPEAL
1 The real party in interest is Cemer Innovation, Inc. App. Br. 3.
Appeal 2016-005939
Application 10/431,548
STATEMENT OF THE CASE2
Laura Kathleen Serrano, John Lee Moore III, and Judith Ann Zakutny
(Appellants) seek review under 35 U.S.C. § 134 of a final rejection of claims
1-17, 19, and 20, the only claims pending in the application on appeal. We
have jurisdiction over the appeal pursuant to 35 U.S.C. § 6(b).
The Appellants invented a way of correlating pathology specimen results
for breast tissue with mammography reports. Specification para. 3.
An understanding of the invention can be derived from a reading of
exemplary claim 1, which is reproduced below (bracketed matter and some
paragraphing added).
1. A method in a computing environment for associating
mammography reports with pathology results for one or more
patients, the method comprising:
[1] automatically determining on a computing device whether a
patient has both
one or more pathology results for breast tissue
and
one or more mammography reports;
[2] if so, identifying the patient having both and automatically
associating the identified patient’s one or more pathology
results with the identified patient’s one or more mammography
reports,
2 Our decision will make reference to the Appellants’ Appeal Brief (“App.
Br.,” filed September 25, 2015) and Reply Brief (“Reply Br.,” filed May 20,
2016), and the Examiner’s Answer (“Ans.,” mailed March 21, 2016), and
Final Action (“Final Act.,” mailed June 26, 2015).
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Application 10/431,548
wherein the one or more pathology results and the one or
more mammography reports are used to perform a
statistical audit for the at least one patient,
and
wherein the statistical audit determines at least one of
a percentage of the one or more mammography
reports interpreted as positive that have a positive
pathology result
and
a percentage of the one or more mammography
reports interpreted as positive that have a negative
pathology result;
and
[3] presenting simultaneously, in a pathology correlation
window of the computing device, text of the one or more
pathology results and text of the one or more mammography
reports.
Claims 1-17, 19, and 20 stand rejected under 35 U.S.C. § 101 as
directed to non-statutory subject matter.
ISSUES
The issues of eligible subject matter turn primarily on whether the claims
recite more than abstract conceptual advice of what a computer is to provide
without implementation details.
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Appeal 2016-005939
Application 10/431,548
ANALYSIS
The Examiner determines
Claims 1-17, 19, and 20 are directed to associating
mammography reports with pathology results for one or more
patients. The claims do not include additional elements that are
sufficient to amount to significantly more than the judicial
exception because the claims do not amount to an improvement
to another technology or technical field; the claims do not
amount to an improvement to the functioning of a computer
itself; the claims do not move beyond a general link of the use
of an abstract idea to a particular technological environment;
the claims merely amount to the application or instructions to
apply the abstract idea on a computer; and the claims amount to
nothing more than requiring a generic computer to perform
generic computer functions that are well-understood, routine
and conventional activities previously known to the industry.
For example, the claims require only a generic “computer
system” to perform generic computer functions such as
determining, identifying, auditing, and presenting, which are
well-understood, routine and conventional activities previously
known to the industry.
Final Act. 3—4. We adopt the Examiner’s determinations and analysis
from the Final Action and Answer and reach similar legal conclusions. In
reply, Appellants argue the Examiner made new determinations and analysis
in the Answer. Appellants do not directly challenge these determinations
and analysis, but instead argue that their very existence proves the rejection
in the Final Action was deficient. Appellants accordingly argue that this is a
new ground of rejection, but do not request remand to the Examiner to
reopen prosecution, but instead ask for reversal based on the state of the
rejection as of the Final Action. Even though Appellants’ contend that “all
previously presented arguments as set forth in the Appellants’ Appeal Brief
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Appeal 2016-005939
Application 10/431,548
filed September 25, [2015] are considered relevant to this Reply Brief’
(Reply Br. 3), Appellants’ argument is itself an admission that the
Examiner’s determinations in the Answer include more than those in the
Final Action and therefore Appellants have not as of the Appeal Brief
argued the determinations in the Answer. Therefore, Appellants admit that
the rejection before us after the Answer differs from that prior to the
Answer.
Appellants argue they have not been provided a ‘“fair opportunity to
react to the thrust of the rejection.’” Reply Br. 6. Appellants, however, fail
to make use of the Reply Brief to do just that. MPEP § 1207.03(b), based on
37 C.F.R. § 41.40, sets out the exclusive procedure for an appellant to
request review of the primary examiner’s failure to designate a rejection in
the Answer as a new ground of rejection via a petition to the Director under
37 C.F.R. § 1.181.
1207.03(b) Petition to Designate a New Ground of Rejection
and to Reopen Prosecution [R-l 1.2013]
[37 C.F.R. § 41.40] Tolling of time period to file a reply brief.
(a) Timing. Any request to seek review of the primary
examiner’s failure to designate a rejection as a new ground of
rejection in an examiner’s answer must be by way of a petition
to the Director under § 1.181 of this title filed within two
months from the entry of the examiner’s answer and before the
filing of any reply brief. Failure of appellant to timely file such
a petition will constitute a waiver of any arguments that a
rejection must be designated as a new ground of rejection.
(b) Petition granted and prosecution reopened. A decision
granting a petition under § 1.181 to designate a new ground of
rejection in an examiner’s answer will provide a two-month
time period in which appellant must file a reply under § 1.111
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Application 10/431,548
of this title to reopen the prosecution before the primary
examiner. On failure to timely file a reply under § 1.111, the
appeal will stand dismissed.
(c) Petition not granted and appeal maintained. A decision
refusing to grant a petition under § 1.181 of this title to
designate a new ground of rejection in an examiner’s answer
will provide a two-month time period in which appellant may
file only a single reply brief under § 41.41.
(d) Withdrawal of petition and appeal maintained. If a reply
brief under § 41.41 is filed within two months from the date of
the examiner’s answer and on or after the filing of a petition
under § 1.181 to designate a new ground of rejection in an
examiner’s answer, but before a decision on the petition, the
reply brief will be treated as a request to withdraw the petition
and to maintain the appeal.
(e) Extensions of time. Extensions of time under § 1.136(a)
of this title for patent applications are not applicable to the time
period set forth in this section. See § 1.136(b) of this title for
extensions of time to reply for patent applications and
§ 1.550(c) of this title for extensions of time to reply for ex
parte reexamination proceedings.
Appellant cannot request to reopen prosecution pursuant to
[37 C.F.R. § 41.39(b)] if the examiner’s answer does not have a
rejection that is designated as a new ground of rejection.
[37 C.F.R. § 41.401 sets forth the exclusive procedure for an
appellant to request review of the primary examiner’s
failure to designate a rejection as a new ground of rejection
via a petition to the Director under [37 C.F.R. § 1.181].
This procedure should be used if an appellant feels an
answer includes a new ground of rejection that has not been
designated as such and wishes to reopen prosecution so that
new amendments or evidence may be submitted in response
to the rejection. However, if appellant wishes to submit only
arguments, the filing of a petition under [37 C.F.R.
§ 1.181] would not be necessary because appellant may
submit the arguments in a reply brief. Any such petition
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Application 10/431,548
under [37 C.F.R. § 1.181] must be filed within two months
from the entry of the examiner’s answer and prior to the filing
of a reply brief.
MPEP § 1207.03(b)(emphasis added). Of particular pertinence is the
phrase “if appellant wishes to submit only arguments, the filing of a petition
under [37 C.F.R. § 1.181] would not be necessary because appellant may
submit the arguments in a reply brief.” As Appellants did not petition to
reopen prosecution, the Examiner’s rejection, including the determinations
and analysis from the Answer, are before us in the record. Appellants do not
argue the Examiner’s determinations and analysis in the Answer. Appellants
therefore do not challenge the rejection as it stands before us. Accordingly,
we summarily affirm the rejection.
CONCLUSIONS OF LAW
The rejection of claims 1-17, 19, and 20 under 35 U.S.C. § 101 as
directed to non-statutory subject matter is proper.
DECISION
The rejection of claims 1-17, 19, and 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)(l)(iv) (2011).
AFFIRMED
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