10580776 (P.T.A.B. Jul. 14, 2014)

Ex Parte Yang et al

Patent Trial and Appeal BoardJul 14, 2014

10580776 (P.T.A.B. Jul. 14, 2014)

UNITED STATES PATENT AND TRADEMARKOFFICE 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. 10/580,776 05/26/2006 Guo Liang Yang 8948P001 7128 7590 07/15/2014 Blakely Sokoloff Taylor & Zafman 7th Floor 12400 Wilshire Boulevard Los Angeles, CA 90025-1026 EXAMINER VO, CECILE H ART UNIT PAPER NUMBER 2169 MAIL DATE DELIVERY MODE 07/15/2014 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 GUO LIANG YANG, WIESLAW L. NOWINSKI, CHOIE CHEIO TCHOYOSON LIM, and BANUKUMAR NARAYANASWAMI _____________ Appeal 2012-002557 Application 10/580,776 Technology Center 2100 ______________ Before DENISE M. POTHIER, DAVID M. KOHUT, and JEREMY J. CURCURI, Administrative Patent Judges. KOHUT, 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 1-4, 6, and 8-37.1 We have jurisdiction under 35 U.S.C. § 6(b). We reverse the Examiner’s rejection of these claims and enter a new ground of rejection under 37 C.F.R. § 41.50(b). 1 Claims 5 and 7 have been previously cancelled. Appeal 2012-002557 Application 10/580,776 2 INVENTION The invention is directed to a method, apparatus, and computer readable storage medium for accessing and retrieving medical images from several sources in different formats and for creating a personal medical image library. Spec. 3-4. Claim 1 is illustrative of the invention and is reproduced below: 1. A method for retrieving medical images from various sources and in different formats, to enable the creation of teaching files and research datasets, for the building of a personal medical image library, the method comprising: (a) directly retrieving a plurality of medical images from various sources; (b) storing the plurality of medical images in a database; (c) generating a database record for the teaching files and research datasets; (d) generating the teaching files and research datasets using at least one medical image of the plurality of medical images and additional information input by a user, the teaching files and research datasets being compliant with at least one predetermined schema; (e) saving the teaching files and research datasets into the database; (f) generating at least one index of the teaching files and research datasets; (g) automatically anonymizing patient identification data when the at least one medical image is retrieved from the various sources, wherein the patient identification data comprises patient sensitive information that is not revealed publicly, wherein the automatic anonymizing of patient identification data includes replacing each item of the patient identification data with an anonymization code; and (h) securely storing a relationship between the anonymization code and the patient identification data in a table in the database. Appeal 2012-002557 Application 10/580,776 3 REFERENCES Stefanescu US 2003/0013951 A1 Jan. 16, 2003 Lei US 2004/0139043 A1 July 15, 2004 Smirniotopoulos US 7,080,098 B2 July 18, 2006 (filed May 2, 2002) Shimura US 7,374,077 B2 May 20, 2008 (filed Apr. 2, 2003) REJECTIONS AT ISSUE Claims 1-4, 6, 8-23, and 30-37 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Shimura, Smirniotopoulos, and Lei. Ans. 4-16 and 18-19; Br. 18. Claims 24-29 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Shimura, Smirniotopoulos, Lei, and Stefanescu.2 Ans. 16- 18; Br. 18. ISSUE3 Did the Examiner err in finding that the combination of Shimura, Smirniotopoulos, and Lei teaches or suggests storing a relationship between an anonymization code and patient identification data in a table, as required by claim 1? 2 We note that claims 24-29 are dependent upon claim 21. The Examiner’s statement of rejection should have included the references used to reject independent claim 21. As such, we have added them in the statement of the rejection here. 3 Appellants make additional arguments with respect to the independent claims 1, 21, and 37. App. Br. 25-28. However, we do not address the additional issues as the stated issue is dispositive of the Appeal. Appeal 2012-002557 Application 10/580,776 4 ANALYSIS Claims 1-4, 6, and 8-37 Claim 1 requires storing a relationship between an anonymization code and patient identification data in a table. Independent claims 21 and 37 recite similar limitations. Claims 2-4, 6, and 8-20 depend upon independent claim 1; and claims 22-36 depend upon independent claim 21. The Examiner finds that Lei discloses receiving a query, determining if the query references a restricted attribute, and then masking the restricted attributes, if any, in a table that is provided to user 210. Ans. 19 (citing Lei ¶ [74]). Further, the Examiner finds that if the query does reference a restricted attribute, the restricted attribute metadata is replaced with a masking value, such as an integer zero, and the modified data is stored in masked result set 233 in table form. Ans. 19 (citing Lei ¶ [74]). Appellants contend that Lei’s masking value, such as the integer zero in Table 1, has no relationship with the actual underlying data of the restricted attribute, but instead is related to the data type of the restricted attribute. App. Br. 24. Specifically, Appellants argue that “for a restricted attribute ‘SALARY’, regardless of the amount of salary, the masking value is an integer zero as shown in Table 2 of Lei.” App. Br. 24. We agree with Appellants (App. Br. 24-25) because the Examiner has not shown, nor can we find, any indication that Lei discloses storing a relationship between the anonymization code and the patient identification data that has been masked in the table (i.e., Table 1). Lei discloses storing modified data in a table that includes names and an anonymization code, e.g., “0,” that stands in place of salary attribute data corresponding to the listed name. Lei ¶¶ [74]-[76]. However, there is no Appeal 2012-002557 Application 10/580,776 5 mention of any relationship between the integer zero and the underlying salary data. Thus, Lei falls short of disclosing storing a relationship between the anonymization code, e.g., “0,” and the anonymized patient identification data in a table (e.g., the underlying salary attribute data), as required by claim 1. As for claims 24-29, the Examiner does not rely on Stefanescu to cure the above-noted deficiency. Ans. 16-18. Accordingly, we cannot sustain the Examiner’s rejection of claims 1-4, 6, and 8-37. New Ground of Rejection Under 35 U.S.C. § 101 Independent claim 37 is directed to a “computer readable storage medium.” Appellants’ Specification does not define this limitation. Thus, under the claim’s broadest reasonable interpretation consistent with Appellants’ Specification, the term “computer readable storage medium” encompasses a transitory signal. Accordingly, claim 37 is directed to non- statutory subject matter and is rejected under 35 U.S.C. § 101. See In re Nuijten, 500 F.3d 1346, 1357 (Fed. Cir. 2007). We designate our analysis as a new ground of rejection. CONCLUSION The Examiner erred in finding that the combination of Shimura, Smirniotopoulos, and Lei teaches or suggests storing a relationship between an anonymization code and patient identification data in a table, as required by independent claim 1 and similarly recited in independent claims 21 and 37. Appeal 2012-002557 Application 10/580,776 6 SUMMARY The Examiner’s decision to reject claims 1-4, 6, and 8-37 under 35 U.S.C. § 103(a) is reversed. We enter a new ground of rejection for claim 37 as being directed to non-statutory subject matter under 35 U.S.C. § 101. TIME PERIOD This decision contains new grounds of rejection pursuant to 37 C.F.R. § 41.50(b). 37 C.F.R. § 41.50(b) provides “[a] new ground of rejection pursuant to this paragraph shall not be considered final for judicial review.” 37 CFR § 41.50(b) also provides that Appellants, WITHIN TWO MONTHS FROM THE DATE OF THE DECISION, must exercise one of the following two options with respect to the new ground of rejection to avoid termination of the appeal as to the rejected claims: (1) Reopen prosecution. Submit an appropriate amendment of the claims so rejected or new evidence relating to the claims so rejected, or both, and have the matter reconsidered by the examiner, in which event the proceeding will be remanded to the examiner. . . . (2) Request rehearing. Request that the proceeding be reheard under § 41.52 by the Board upon the same record . . . . 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). REVERSED 37 C.F.R. § 41.50(b) rwk