Ex Parte Wilson et al

Patent Trial and Appeal Board

Jul 28, 2016

13327599 (P.T.A.B. Jul. 28, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/327,599 12/15/2011
826 7590 08/01/2016
ALSTON & BIRD LLP
BANK OF AMERICA PLAZA
101 SOUTH TRYON STREET, SUITE 4000
CHARLOTTE, NC 28280-4000
FIRST NAMED INVENTOR
John Wilson
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.
UHGI.P0551US 1096
EXAMINER
DURANT, JONATHAN W
ART UNIT PAPER NUMBER
3686
NOTIFICATION DATE DELIVERY MODE
08/01/2016 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):
usptomail@alston.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JOHN WILSON, MARTIN EVAN HETU, HASAN! JESS, and
PETER OLSON
Appeal2014-005141
Application 13/327 ,599 1
Technology Center 3600
Before MICHAEL W. KIM, BRUCE T. WIEDER, and
ROBERT J. SILVERMAN, Administrative Patent Judges.
SILVERMAN, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
The Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's
decision rejecting claims 1-22. We have jurisdiction under 35 U.S.C.
§ 6(b ).
We AFFIRM.
1 According to the Appellants, the real party in interest is Optumlnsight, Inc.
Appeal Br. 3.
Appeal2014-005141
Application 13/327,599
ILLUSTRATIVE CLAIM
1. A system for analyzing healthcare data, the system
compnsmg:
a processor configured to:
execute a rule, the rule comprising one or more logical
elements and rule elements, on the healthcare data to
create analyzed healthcare data, wherein executing a rule
compnses:
correlating each rule element with an object model
element; and
defining the object model elements correlated to the
rule elements using one or more localization
indexes linked to the accessed healthcare data; and
return the analyzed healthcare data to an output data
location.
CITED REFERENCES
The Examiner relies upon the following references:
Schoenberg US 2005/0125435 Al June 9, 2005
McCauley et al. US 2005/0251502 Al Nov. 10, 2005
(hereinafter "McCauley")
Zhou et al. US 2007/0130206 Al June 7, 2007
(hereinafter "Zhou")
Harger et al. US 2009/0089332 Al Apr. 2, 2009
(hereinafter "Harger")
Sprecher et al. US 2009/0254337 Al Oct. 8, 2009
(hereinafter "Sprecher")
REJECTIONS
I. Claims 1, 2, 5, 7-11, 14, and 16-20 are rejected under 35
U.S.C. § 103(a) as unpatentable over Schoenberg, Zhou, and McCauley.
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Application 13/327,599
II. Claims 3, 4, 12, 13, 21, and 22 are rejected under 35 U.S.C.
§ 103(a) as unpatentable over Schoenberg, Zhou, McCauley, and Harger.
III. Claims 6 and 15 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Schoenberg, Zhou, McCauley, and Sprecher.
FINDINGS OF FACT
We rely upon and adopt the Examiner's findings stated in the Final
Action at pages 2-3 and the Answer at pages 3 and 5-8. Additional findings
of fact may appear in the Analysis below.
ANALYSIS
The Appellants argue that the Examiner erred in rejecting claim 1
because the combination of Schoenberg, Zhou, and McCauley fails to
disclose, teach, or suggest the recited "processor configured to execute a
rule ... to create analyzed healthcare data." Appeal Br. 6.
The Examiner finds that Schoenberg's searching of various
parameters in a medical record database "execute[ s] a rule ... on the
healthcare data to create analyzed healthcare data," per claim 1. See Final
Action 2-3 (citing Schoenberg i-fi-1 54, 60). Further, the Examiner finds that
Schoenberg, Zhou, and McCauley teach the "correlating ... " and
"defining ... "features that "comprise[]" "executing a rule," as set forth in
claim 1. See id. at 3 (citing Schoenberg i-fi-132, 43, Zhou i-fi-1 42, 44, 46,
McCauley i-f 165).
The Appellants contend that Schoenberg teaches simply an
unmodified text-based search result with no additional analysis performed.
Appeal Br. 7. In support of the position that the claimed "execut[ ing] a
rule ... on the healthcare data to create analyzed healthcare data" requires
such additional analysis, the Appellants point to examples from the
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Application 13/327,599
Specification wherein search results are subject to additional logical
operations or manipulation. Id. (citing Spec. i-f 73). In contrast, the
Appellants argue that Schoenberg's search result "only returns data that
already existed-no data is created." Id. We disagree. "[T]he healthcare
data" of Schoenberg is a set of data (see Spec. i-f l 2) and a search of that data
returns a different set of data, that is, a different set of data is created.
Moreover, the Appellants do not dispute the Examiner's findings (see
Final Action 3) that the Schoenberg, Zhou, and McCauley references teach
the claimed "correlating ... "and "defining ... "steps that "comprise[]"
"executing a rule," which "create[s] analyzed healthcare data." Therefore,
the Appellants cannot persuasively challenge the Examiner's determination
that the cited references teach "creat[ing] analyzed healthcare data" per
claim 1.
Furthermore, the Appellants' argument that Schoenberg fails to teach
claim 1 ;s "creat[ing] analyzed healthcare data;; - because Schoenberg
discloses a search result with no additional analysis performed (Appeal Br.
7)- is also unpersuasive.
To support the position that Schoenberg teaches claim 1 's "analyzed
healthcare data," the Examiner looks to dictionary definitions of "analysis"
and "analyze." Answer 6. The Appellants argue that the same dictionary
definitions bolster the opposing argument. Reply Br. 5. The disagreement
concerning these definitions are misplaced, however, because the
Specification is more helpful in illuminating the meaning of the contested
claim language.
The Specification defines the term "rule" and, in doing so, illustrates
the meaning of "analysis" of "data":
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Application 13/327,599
The term "rule" (also referred to as a business rule) is
defined as a logical statement to be executed on a set of data to
perform a function. Moreover, a rule may include statement [sic]
to find data within a database that has a specific characteristic.
In various embodiments of a nile, the found data may be returned
to the user in the form of a user output, the found data may be
manipulated by the rule, and/or otherwise flagged in the database
for further analysis.
Spec. i-f 12. Although the Specification here contemplates that ''further
analysis" might be performed on the "found data," the quoted passage
nevertheless reveals that "find[ing] data within a database that has a specific
characteristic" constitutes "analysis" and, therefore, such "found data" is
analyzed data. Id. (emphasis added).
Thus, contrary to the Appellants' argument, claim 1 requires no such
"additional analysis," as the Appellants suppose (Appeal Br. 7 (emphasis
added)), such that Schoenberg teaches the limitation in question. Moreover,
as the Examiner correctly points out (Answer 7-8), the Appellants'
examples of additional manipulation of search results are drawn from the
Specification and are not required by claim 1. See In re Self, 671 F .2d 1344,
1350 (CCPA 1982) ("[T]he claims are not limited to devices having these
possibly distinguishing functions, and so appellant cannot rely on them to
establish patentability. ")
Accordingly, the Appellants' argument is not persuasive of error, such
that the rejection of claim 1 is sustained.
The Appellants do not separately argue features of independent claims
10 and 19 or dependent claims 2-9, 11-18, and 20-22. See Appeal Br. 9-
10. Therefore, the rejection of these claims is also sustained.
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Application 13/327,599
DECISION
We AFFIRM the Examiner's decision rejecting claims 1-22 under 35
U.S.C. § 103(a).
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED
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