Ex Parte Accardi et al

Patent Trial and Appeal BoardJun 30, 2014

11416778 (P.T.A.B. Jun. 30, 2014)

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. 11/416,778 05/03/2006 Kenneth Lawrence Accardi 15SV4769-2 (GEMS:0029) 7483 68174 7590 06/30/2014 GE HEALTHCARE c/o FLETCHER YODER, PC P.O. BOX 692289 HOUSTON, TX 77269-2289 EXAMINER NGUYEN, THU V ART UNIT PAPER NUMBER 2452 MAIL DATE DELIVERY MODE 06/30/2014 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 KENNETH LAWRENCE ACCARDI, DEBORAH ANN BABULA, GEORGE PETER GESIOR, HENRY JOHN HUMMEL JR., IANNE MAE HOWARDS KORITZINSKY, SCOTT MATT MCOLASH, GEORGE TZORTZOS, and HUBERT ANTHONY ZETTEL ________________ Appeal 2012-000619 Application 11/416,778 Technology Center 2400 ________________ Before STEPHEN C. SIU, ANDREW J. DILLON, and JEREMY J. CURCURI, Administrative Patent Judges. CURCURI, Administrative Patent Judge. DECISION ON APPEAL Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s rejection of claims 45-58. App. Br. 2. We have jurisdiction under 35 U.S.C. § 6(b). Appeal 2012-000619 Application 11/416,778 2 Claims 45-47, 49-54, and 58 are rejected under 35 U.S.C. § 103(a) as obvious over Jago (U.S. 5,938,607; issued Aug. 17, 1999) and Rice (U.S. 2002/0007356 A1; published Jan. 17, 2002). Ans. 5-9. Claim 48 is rejected under 35 U.S.C. § 103(a) as obvious over Jago, Rice, and Elliott (U.S. 4,853,946; issued Aug. 1, 1989). Ans. 9-10. Claims 55-57 are rejected under 35 U.S.C. § 103(a) as obvious over Jago, Rice, and Shah (U.S. 6,473,659 B1; issued Oct. 29, 2002). Ans. 10- 11. We affirm. STATEMENT OF THE CASE Appellants’ invention relates to medical diagnostic and imaging systems. Spec. 1:6-11. Claim 45 is illustrative and reproduced below: 45. A method for providing remote service to a medical diagnostic system, the method comprising the steps of: receiving a service request for operational servicing of a medical diagnostic system at a service facility via a network connection, wherein the service request originated via a user interface in the medical diagnostic system; and acknowledging receipt of the service request automatically by the service facility via an electronic message to the medical diagnostic system, wherein the electronic message comprises a user-readable message containing information relating to a processing status of the service request for operational servicing of the medical diagnostic system. Appeal 2012-000619 Application 11/416,778 3 ANALYSIS THE OBVIOUSNESS REJECTION OF CLAIMS 45-47, 49-54, and 58 OVER JAGO AND RICE The Examiner finds Jago and Rice teach all limitations of claim 45. Ans. 5-7. The Examiner relies on Jago for all limitations except for the recited acknowledging receipt of the service request automatically via an electronic message, for which the Examiner relies on Rice. Ans. 6 (citing Rice, ¶¶ 15-16). The Examiner reasons “[i]t therefore would have been obvious to one of ordinary skill in the art to have modified Jago’s email system to include Rice’s automated response functionality. Such a modification improves Jago’s system by removing the need to have a person respond to every service request from an ultrasound machine.” Ans. 6. Appellants present the following principal arguments: (i) “Rice does not disclose automated responses in the services context. By way of contrast, Rice discloses manually reviewing and responding to service requests.” App. Br. 7. “While Rice does teach automatically emailing previously prepared emails, it does so outside of the service context.” App. Br. 7; see also Reply Br. 3. (ii) Rice is non-analogous art. App. Br. 9-10; see also Reply Br. 3-4. In response, the Examiner explains “Rice discloses that when a message is categorized as being of an ‘automatic’ type, a predetermined response is sent to the user . . . .” Ans. 12 (citing Rice ¶ 73). The Examiner further explains Rice’s invention directed to pre-processing incoming email messages is analogous to Appellants’ claimed invention. Ans. 14. Appeal 2012-000619 Application 11/416,778 4 We are not persuaded of Examiner error because the combined teachings of Jago and Rice teach the argued limitations and Rice is not non- analogous art. The test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference; nor is it that the claimed invention must be expressly suggested in any one or all of the references. Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art. In re Keller, 642 F.2d 413, 425 (CCPA 1981). Here, the Examiner relies on Jago for teaching receiving a service request and acknowledging receipt of the service request. Ans. 5-6 (citing, Jago, col. 8, ll. 7-11; col. 8, ll. 15-34). The Examiner relies on Rice for teaching acknowledging receipt of the service request automatically via an electronic message. Ans. 6 (citing Rice, ¶¶ 15-16). The Examiner explains, and we agree, that reasons modifying Jago’s system to include Rice’s automated response functionality would have been obvious and would improve Jago’s system by removing the need to have a person respond to every service request. Ans. 6-7. Regarding Appellants’ argument (i), we find this argument unavailing because the combined teachings of Jago and Rice teach the argued limitations. Rice discloses automated responses, while Jago discloses the services context. Regarding Appellants’ argument (ii), we find this argument unavailing because Rice is in the field of processing electronic messages and is, therefore, analogous art. Further, modifying Jago’s system to include Rice’s automated response functionality, in view of Jago’s and Rice’s Appeal 2012-000619 Application 11/416,778 5 collective teachings, is a predictable use of prior art elements according to their established functions — an obvious improvement. As the U.S. Supreme Court has explained, “[w]hen a work is available in one field of endeavor, design incentives and other market forces can prompt variations of it, either in the same field or a different one. If a person of ordinary skill can implement a predictable variation, § 103 likely bars its patentability.” KSR Int’l, Co. v. Teleflex, Inc., 550 U.S. 398, 417 (2007). We, therefore, sustain the Examiner’s rejection of claim 45, as well as claims 46, 47, 49-54, and 58, which are not separately argued with particularity. THE OBVIOUSNESS REJECTION OF CLAIM 48 OVER JAGO, RICE, AND ELLIOTT Appellants do not separately argue claim 48. See App Br. 4-10; Reply Br. 2-4. We, therefore, sustain the Examiner’s rejection of claim 48. THE OBVIOUSNESS REJECTION OF CLAIM 55-57 OVER JAGO, RICE, AND SHAH Appellants do not separately argue claims 55-57. See App Br. 4-10; Reply Br. 2-4. We, therefore, sustain the Examiner’s rejection of claim 48. ORDER The Examiner’s decision rejecting claims 45-58 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). Appeal 2012-000619 Application 11/416,778 6 AFFIRMED ELD