Ex Parte Yasnoff

Patent Trial and Appeal Board

Jul 24, 2013

11533209 (P.T.A.B. Jul. 24, 2013)

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.
11/533,209 09/19/2006 William A. Yasnoff 8464-88818-US 4079
22242 7590 07/24/2013
FITCH EVEN TABIN & FLANNERY, LLP
120 SOUTH LASALLE STREET
SUITE 1600
CHICAGO, IL 60603-3406
EXAMINER
KANAAN, MAROUN P
ART UNIT PAPER NUMBER
3626
MAIL DATE DELIVERY MODE
07/24/2013 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 WILLIAM A. YASNOFF
____________________

Appeal 2011-008562
Application 11/533,209
Technology Center 3600
____________________

Before JOSEPH A. FISCHETTI, MICHAEL W. KIM, and
NINA L. MEDLOCK, Administrative Patent Judges.

MEDLOCK, Administrative Patent Judge.

DECISION ON APPEAL

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STATEMENT OF CASE
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 1-19. We have jurisdiction under 35 U.S.C. § 6(b).

SUMMARY OF THE DECISION
We AFFIRM.1

BACKGROUND
Appellant’s invention is directed to a centralized store of medically-
related information (Spec., para. [0006]).
Claim 1, reproduced below with added bracketed notations, is
representative of the subject matter on appeal:
1. A method comprising:
via an information facilitator apparatus:
[a] providing an opportunity for an information-
possessing entity, other than a first individual, to submit
medically-related information regarding the first individual;
[b] receiving the medically-related information from the
information-possessing entity to provide received medically-
related information;
[c] arranging for digital storage of the received
medically-related information such that the received medically-
related information can be later accessed with respect to
medically treating and assisting the first individual;
[d] arranging for the information-possessing entity to
receive compensation in exchange for the information-
possessing entity having provided the medically-related
information.

1 Our decision will make reference to Appellant’s Appeal Brief (“App.
Br.,” filed November 1, 2010) and Reply Brief (“Reply Br.,” filed April 4,
2011), and the Examiner’s Answer (“Ans.,” mailed February 2, 2011).
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THE REJECTION
The following rejection is before us for review:
Claims 1-19 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Lash (US 2005/0010446 A1, pub. Jan. 13, 2005) in view
of Dresel (US 2005/0251426 A1, pub. Nov. 10, 2005).

ANALYSIS
Independent claim 1 and dependent claims 2-16
Appellant variously argues that the Examiner erred in rejecting
claim 1 under 35 U.S.C. § 103(a), because a person of ordinary skill in the
art would have had no apparent reason to modify Lash to include a direct
compensation scheme, as taught by Dresel (App. Br. 11-14 and Reply
Br. 2-5). None of Appellant’s arguments is persuasive.
The Examiner found that each of elements [a], [b], and [c] of claim 1
is disclosed in Lash (Ans. 5), and the Examiner relied on Dresel as teaching
“arranging for the information-possessing entity to receive compensation in
exchange for the information-possessing entity having provided the
medically-related information,” i.e., element [d], as recited in claim 1
(Ans. 6). In our view, the Examiner’s articulated rationale for modifying the
patient medical data system of Lash to include the compensation exchange
for medical data, taught in Dresel, i.e., that “[t]he combination would lead to
a medical information system that benefits both parties involved; since one
[party] obtains medical information and the other [party] receives
compensation for such information,” is adequately supported by rational
underpinning (Ans. 6).
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Modifying Lash, as the Examiner proposes, also is nothing more than
a combination of prior art elements according to their established functions,
and yields a predictable result. Therefore, it would have been obvious at the
time of Appellant’s invention. See KSR Int’l Co. v. Teleflex Inc., 550 U.S.
398, 416 (2007) (“The combination of familiar elements according to known
methods is likely to be obvious when it does no more than yield predictable
results”).
Appellant argues that “Dresel does not propose a system where
patient-specific information is stored to make that information available to
future medical service providers for that patient” (App. Br. 11). But that
argument is not persuasive because it is not commensurate with the scope of
the claim.
Claim 1 recites “providing an opportunity for an information-
possessing entity, other than a first individual, to submit medically-related
information regarding the first individual,” and further recites that “the
received medically-related information can be later accessed with respect to
medically treating and assisting the first individual.” However, there is
nothing in the claim that requires the medically-related information to be
“patient-specific,” such that only information regarding a particular patient
can be later accessed in medically treating and assisting that patient.
Appellant’s argument that the teachings of Dresel “relate to non-
identifiable machine parameters,” and that “Dresel does not contemplate that
the information collected would ever be used in the care of the patient whose
machine parameters have been deposited” is similarly unpersuasive (App.
Br. 13). Claim 1 stands rejected under 35 U.S.C. § 103 as obvious over the
combination of Lash and Dresel, not over Dresel alone. The argument that a
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single reference alone does not disclose all the recited claim limitations is
not persuasive because nonobviousness cannot be established by attacking
the references individually when the rejection is based on the teachings of a
combination of references. See In re Merck & Co., 800 F.2d 1091, 1097
(Fed. Cir. 1986). The Examiner relies on Lash, not Dresel, as disclosing that
a medical care professional enters transaction data for a medical event
associated with an individual patient, i.e., “providing an opportunity for an
information-possessing entity, other than a first individual, to submit
medically-related information regarding the first individual,” as recited in
claim 1 (Ans. 5, citing Lash, para. [0019]).
Appellant’s argument that a person of ordinary skill in the art would
have had no reason to combine Lash and Dresel because “Lash proposes a
highly decentralized approach whereas Dresel proposes an utterly
centralized approach” (App. Br. 12, see also Reply Br. 2) also is
unpersuasive. The test for obviousness is not whether the features of a
secondary reference may be bodily incorporated into the structure of the
primary reference. Instead, the test is what the combined teachings of those
references would have suggested to those of ordinary skill in the art. In re
Keller, 642 F.2d 413, 425 (CCPA 1981). See also In re Sneed, 710 F.2d
1544, 1550 (Fed. Cir. 1983) (“[I]t is not necessary that the inventions of the
references be physically combinable to render obvious the invention under
review.”). Here, as described above, modifying the Lash system to include
the payment of compensation for medical data, as taught in Dresel, is
nothing more than the combination of known elements and yields a
predictable result. Therefore, it would have been obvious at the time of
Appellant’s invention. See KSR, 550 U.S. at 416.
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We also are not persuaded of error on the part of the Examiner by
Appellant’s argument that Lash already includes an “economic incentive,”
and Dresel’s compensation “increases the costs of implementation without
inspiring any particular corresponding benefit” (App. Br. 13, see also Reply
Br. 3). Providing compensation in exchange for information, as disclosed in
Dresel (see Ans. 6, citing Dresel, para. [0022]), has the benefit of
“inducement to provide the medical operating information” (Dresel, para.
[0022]) beyond whatever non-financial motivation exists in Lash, making
that inducement a reasonable motivation for the combination.
Finally, we are not persuaded by Appellant’s argument that the
combination of Lash and Dresel will not work “because there are many
significant technical challenges that must be surmounted before such a
combination will in fact serve as intended” (Reply Br. 4 and 5). Again, the
test for obviousness is not whether the features of one reference may be
bodily incorporated into the structure of the other reference. See In re
Keller, at 425. Not every feature of Dresel must be combined with every
feature of Lash. We agree with the Examiner that “providing compensation
[for] a service is old and well known in the medical art and adding the
compensation feature of Dresel [in the Lash system] does not destroy the
teaching of [Lash]” (Ans. 9).
In view of the foregoing, we will sustain the Examiner’s rejection of
claim 1 under 35 U.S.C. § 103(a). We also will sustain the Examiner’s
rejection of dependent claims 2-16, which were not separately argued.
Independent claim 17 and dependent claims 18 and 19
Appellant asserts that “[i]ndependent claim 17 can be distinguished on
similar grounds” to those set forth with respect to claim 1 (App. Br. 14). We
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are not persuaded, for the reasons set forth above, that the Examiner erred in
rejecting claim 1 under 35 U.S.C. § 103(a). Therefore, we will sustain the
Examiner’s rejection of claim 17 under 35 U.S.C. § 103(a). We also will
sustain the Examiner’s rejection of dependent claims 18 and 19, which were
not separately argued.

DECISION
The Examiner’s rejection of claims 1-19 under 35 U.S.C. § 103(a) 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)(1)(iv).

AFFIRMED

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