Ex Parte Wong et al

Patent Trial and Appeal Board

Aug 31, 2016

13184149 (P.T.A.B. Aug. 31, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/184,149 07/15/2011
26379 7590 09/02/2016
DLA PIPER LLP (US )
2000 UNIVERSITY A VENUE
EAST PALO ALTO, CA 94303-2248
FIRST NAMED INVENTOR
David Wong
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.
371363-991100 9789
EXAMINER
NGUYEN, TRANG T
ART UNIT PAPER NUMBER
3686
NOTIFICATION DATE DELIVERY MODE
09/02/2016 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):
PatentDocketing US-PaloAlto@dlapiper.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DAVID WONG, RAJNISH GUPTA, ARUN RAJAN, and
LAURENT BORTOLAMIOL
Appeal2014-005678
Application 13/184,149 1
Technology Center 3600
Before BIBHU R. MOHANTY, JAMES A. WORTH, and
BRADLEY B. BAY AT, Administrative Patent Judges.
BAY AT, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
This is an appeal from the final rejection of claims 1-20. We have
jurisdiction to review the case under 35 U.S.C. §§ 134 and 6.
STATEMENT OF THE DECISION
We AFFIRM.
1 Appellants identify the real party in interest as Snapshot Dermatology
Holdings Inc. Appeal Br. 1 (filed Dec. 19, 2013).
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Application 13/184,149
CLAIMED INVENTION
The invention relates "generally to a method and apparatus for
providing remote dermatological services that are integrated with a patient
records management system." Spec. 1:2-3. Claims 1 and 11 are the only
independent claims on appeal. Independent claim 1, reproduced below with
added bracketed matter, is illustrative of the claimed subject matter.
1. A system for providing dermatologic telemedicine
services compnsmg:
[a] a computer for displaying a web page generated by
a server and for receiving digital photos of a patient's skin
condition and condition information entered with user interface
controls provided by the web page;
[b] the server configured to receive the digital photos
and condition information from the computer and to generate a
new dermatologic case for the patient, wherein the server
comprises an assignment module for assigning the case to one
of a plurality of treating physicians;
[ c] wherein said assignment module comprises lines
of code to create a queue for each of said plurality of treating
physicians and to place the case in at least one of the queues;
and
[ d] wherein said server is coupled to a data store for
storing said condition information and digital photos and
further comprises a notification engine for informing the patient
that the case has been completed by one of said plurality of
treating physicians.
REJECTIONS
I. Claims 1-7, 11, 14, and 16 are rejected under 35 U.S.C.
§ 103(a) as unpatentable over Rubinsky (US 2011/0034209 Al,
pub. Feb. 10, 2011), Napora (US 2009/0132586 Al, pub. May
21, 2009), and Pak (US 2005/0251415 Al, pub. Nov. 10, 2005).
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Appeal2014-005678
Application 13/184,149
IL Claims 8-10 and 19 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Rubinsky, Napora, Pak, and Prodanovic (US
2012/0197657 Al, pub. Aug. 2, 2012).
III. Claims 12, 13, 15, and 17 are rejected under 35 U.S.C. § 103(a)
as unpatentable over Rubinsky, Napora, Pak, and Arnaud (US
2002/0186818 Al, pub. Dec. 12, 2002).
IV. Claims 18 and 20 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Rubinsky, Napora, Pak, Arnaud, and
Prodanovic.
Answer 2-14 (mailed Jan. 30, 2014).
ANALYSIS
Rejection I
We are not persuaded by Appellants' assertion that N apora does not
disclose limitation [ c] of independent claim 1. Appeal Br. 6. Instead, we
agree with the findings and response to argument set forth on pages 15-16 of
the Examiner's Answer. Accordingly, we adopt them as our own. We note
that Appellants do not address these findings in the Reply Brief (filed March
31, 2014).
Therefore, we sustain the rejection of independent claim 1, and
independent claim 11, which recites a substantially similar limitation and is
similarly argued. See Appeal Br. 6. We also sustain the rejection of
dependent claims 2-7, 14, and 16, which are not separately argued except
for their dependency on claims 1 and 11. Appeal Br. 6.
Rejection II
Appellants' contend that Prodanovic does not disclose a "pre-
diagnosis engine" as required by claims 8-10. Appeal Br. 7-8. In
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Application 13/184,149
particular, Appellants argue that "[i]n the present application, the pre-
diagnosis engine analyzes the case information and 'generates an automated
diagnosis based on the picture properties and case data,"' but "[t]his is in
contrast to Prodanovich [sic]." (Appeal Br. 7 (citing Spec. 7:14--19)).
Appellants' argument is not persuasive at least because it is not
commensurate with the scope of the claims. Claims 8-10 do not require
"generat[ing] an automated diagnosis based on the picture properties and
case data." We decline to read this argued limitation from the Specification
into the claims, because limitations not appearing in the claims cannot be
relied upon for patentability.2
Appellants acknowledge that Prodanovic describes information that is
presented to a physician, but argue "it does not indicate that a pre-diagnosis
is provided to the physician, unlike the subject claims." Reply Br. 4.
Appellants fail to persuade us of error because although the cited paragraph
in Prodanovic does not repeat the argued claim term verbatim, one skilled in
the art would understand the recited claim term "pre-diagnosis"
encompasses the disclosure cited by the Examiner. For instance, Appellants
do not explain why pre-diagnosis does not encompass information used to
identify the patient problem for assisting in the arrival at a diagnosis, and
determining the testing necessary to attain a definitive diagnosis, as taught
by Prodanovic. See Answer 18 (citing Prodanovic i-f 70).
Therefore, we sustain the rejection of claims 8-10. We also sustain
the rejection of claim 19, which is not separately argued except for its
dependency on claim 11. See Appeal Br. 7.
2 SeelnreSelf, 671F.2d1344, 1348(CCPA1982).
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Application 13/184,149
Rejection III
Claim 15 recites "moving the case forward in the at least one queue
based on a determination that a current waiting time for the case exceeds a
predetermined threshold." Appeal Br. 14 (Claims Appendix). Appellants
contest the Examiner's finding as to claim 15, arguing that "reassigning a
case from one entity to another entity when a threshold is exceeded ...
do[es] not disclose 'moving the case forward' within a queue." Appeal Br.
8; Reply Br. 5 ("the case is moved forward within the queue in question, and
not moved from one entity to another.").
We agree with the Examiner that claim 15 does not require that the
case move forward "within a queue," but rather "in the at least one queue"
(see Answer 19 (emphasis omitted)), and thus, Appellants' argument fails at
least because it exceeds the scope of the claim. We note that independent
claim 11, which claim 15 ultimately depends from, requires placing the case
into at least one queue from a queue for each of a plurality of physicians.
Furthermore, the Specification indicates that priority treatment to place a
case in a higher location when a predetermined threshold is exceeded
includes "assign[ing] the case to the 'next available' physician" (Spec.
14:23-24), or reassigning a case from one entity to another, as proffered by
the Examiner. As such, we are not apprised of error on the part of the
Examiner.
Therefore, we sustain the rejection of claim 15. We also sustain the
rejection of claims 12, 13, and 17, which are not separately argued except
for their dependency on claim 11. See Appeal Br. 8.
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Application 13/184,149
Rejection IV
In contesting Rejection IV, Appellants rely on substantially similar
arguments presented for Rejection II. See id. at 8-9. Thus, we sustain
Rejection IV for the same reasons discussed above with respect to Rejection
II.
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)(l).
AFFIRMED
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