Ex Parte Bastien et al

Patent Trial and Appeal Board

Apr 24, 2015

10517391 (P.T.A.B. Apr. 24, 2015)

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.
10/517,391 08/23/2005 Philippe Bastien 05725-1204 4451
30678 7590 04/27/2015
NOVAK DRUCE CONNOLLY BOVE + QUIGG LLP
(DC OFFICE)
1875 EYE STREET, N.W.
SUITE 1100
WASHINGTON, DC 20006
EXAMINER
KANAAN, MAROUN P
ART UNIT PAPER NUMBER
3626
MAIL DATE DELIVERY MODE
04/27/2015 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 PHILIPPE BASTIEN, ROLAND JOURDAIN,
and OLIVER DE LACHARRIERE
____________

Appeal 2012-011071
Application 10/517,3911
Technology Center 3600
____________

Before, JOSEPH A. FISCHETTI, NINA L. MEDLOCK, and
CYNTHIA L. MURPHY, Administrative Patent Judges.

FISCHETTI, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants seek our review under 35 U.S.C. § 134 of the Examiner’s
final rejection of claims 1–85 and 92–97. We have jurisdiction under
35 U.S.C. § 6(b).
SUMMARY OF DECISION
We AFFIRM.
1 Appellants identify L‘Oreal S.A. as the real party in interest. Br. 3.

Appeal 2012-011071
Application 10/517,391
THE INVENTION
Appellants’ claims are directed to methods and systems for generating
diagnostic algorithms based on questionnaires (Spec. ¶ 2).
Claim 1 reproduced below, is representative of the subject matter on
appeal.
1. A diagnostic method, the method being executed by a
computer system and comprising:
providing a first question;
receiving first information reflecting an answer to the first
question;
selecting, via the computer system, a second question
according to the first information and according to a diagnostic
algorithm generated using at least one of a multivariate analysis
and a tree segmentation technique;
providing the second question;
receiving second information reflecting an answer to the
second question; and
determining, via the computer system, a diagnosis
according to the diagnostic algorithm.

THE REJECTIONS
The Examiner relies upon the following as evidence of
unpatentability:
Sun et al. US 20020022973 A1 Feb. 21, 2002
Huyn et al. US20020035486 A1 Mar. 21, 2002
Goldman et al. US 20020082738 A1 June 27, 2002
Nicholsonet et al. US 20050130321 A1 June 16, 2005

The following rejections are before us for review.
Claims 1–5, 7–18, and 20–26 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Huyn in view of Goldman.
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Appeal 2012-011071
Application 10/517,391
Claims 19, 27–35, and 62–67 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Huyn in view of Sun.
Claims 6, 36–61, and 68–97 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Huyn in view of Goldman and in further in view of
Nicholson.

FINDINGS OF FACT
1. We adopt the Examiner’s findings as set forth on pages 4–16 of the
Answer.
2. Goldman discloses
In the POEM Application the preceding modelling
is accomplished by using what is referred to as a
process output empirical controller. But other
statistically correlating techniques between an
output and a plurality of inputs such as: Incar
regression, nearest neighbor, clustering,
classification and regression tree (CART), chi-
square automatic interaction detector (CHAID),
decision trees, and neural network empirical
modeling, can be used as well.
(¶ 72).
3. The Examiner made findings as to motivation to combine as
follows:
One of ordinary skill in the art would found it
obvious to update the computer-implemented
questionnaire system Huyn (paragraph 3) using a
multivariate analysis, as found in Goldman
(paragraph, 72), in order to gain the commonly
understood benefits of such adaptation, such as a
more accurate analysis. All this would be
accomplished with no unpredictable results.
(Answer 15).
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Appeal 2012-011071
Application 10/517,391
4. Huyn discloses
A clinical questionnaire system and method
presents medical questions to a subject and
determines additional questions to present based
on the subject's response to previous questions.
Positive responses to primary questions trigger
presentation of secondary and lower-level
questions requesting more specific information
from the subject. Deeper-level questions follow a
medical pathway correlated with a known medical
condition and can prompt presentation of clinical
warnings.
(Abstract).
5. Goldman discloses an intelligent manufacturing system wherein:
. . . target output values of intermediate processes
are dynamically reassigned during the
manufacturing with respect to their initially
designed values, in accordance with the output of
their cooperating processes . . . [such that] . . . a
feedback loop 26 is established automatically and
the controllable inputs are adjusted in an optimized
manner, to shift output towards target.
(Abstract; ¶ 71).
ANALYSIS
35 U.S.C. § 103(a) REJECTION
We affirm the rejection of claims 1–85 and 92–97 under 35 U.S.C. §
103(a).
Appellants’ only substantive arguments are directed to claim 1.
(Appeal Br. 13—14). Thus, we select claim 1 as the representative claim for
this group, and the remaining independent claims stand or fall with claim 1.
37 C.F.R. § 41.37(c)(1)(vii) (2007).
Appellants argue,
Examiner provided no explanation as to how there
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Appeal 2012-011071
Application 10/517,391
would be any combination of the alleged
multivariate analysis and the alleged tree
segmentation technique of Goldman with the
disclosure of Huyn to generate a diagnostic
algorithm used to select a question.
(Appeal Br. 13).
We disagree with Appellants because the Examiner made a finding
that the proposed combination would promote “adaption” in an intelligent
learning questionnaire of Huyn (FF. 3), which we find to be reasonable
given that adaptive learning is an important factor when generating
intelligent questionnaires. Similarly, we find that the system disclosed by
Goldman is also an intelligent system which uses feedback logic to
automatically and controllably adjust inputs in an optimized manner, to shift
output towards a target. (FF. 5). We find that one having ordinary skill in
the art would know to look to an intelligent system, such as the one
disclosed by Goldman, to arrive at a more optimal way of generating the
intelligent, learned-deeper level questions targeted to a patient condition
disclosed by Huyn because in both cases, learning is required to develop a
next step in each process.
Appellants further argue concerning paragraph seventy-two of
Goldman that “[s]uch disclosure bears no relation to the generation of a
diagnostic algorithm used to select a question.” (Appeal Br. 14).
We disagree with Appellants again because we do not find that the
goal to which feedback is directed can distinguish patentability. Rather, it is
the process of refining inputs to arrive either at deeper level questions or the
next tooling procedure, which is important to the analysis.

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Appeal 2012-011071
Application 10/517,391
Claims 36–40, 42–61, 68–72, 74–85, and 92–97
We are further not persuaded by Appellants’ argument that “since
Examiner provided no explanation as to the pertinence of Huyn, Goldman,
or Nicholson with respect to claims 36–40, 42–61, 68–72, 74–85, and 92–
97, he has made no prima facie case of obviousness as to claims 36–40, 42–
61, 68–72, 74–85, and 92–97” (Appeal Br. 17), because the Examiner has
provided such an explanation in the Answer at page 16, mapping the patient
scores in Hyun to the claimed “synthetic variable.” Because Appellants do
not challenge this finding in a Reply Brief, we find that the Examiner has
made a prima facie case, and hence find no error in the rejection. As to
those independent claims in the group listed above that do not recite a
“synthetic variable,” e.g., claims 36, 92, 93, 96, we agree with the Examiner
that these claims “recite substantially similar limitations as that already
addressed in 1–18, 20–26” (Answer 15), and hence have been adequately
treated by the Examiner in the rejection by reference to the rejection of
substantially similar in scope claims 1–18 and 20–26.
We also affirm the rejection of dependent claims 2–35, 41, 62–67, and
73 because Appellants have not challenged such with any reasonable
specificity (see In re Nielson, 816 F.2d 1567, 1572 (Fed. Cir. 1987)).

CONCLUSIONS OF LAW
We conclude the Examiner did not err in rejecting claims 1–85 and
92–97 under 35 U.S.C. § 103.

DECISION
The decision of the Examiner to reject claims 1–85 and 92–97 is
affirmed.
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Application 10/517,391
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).

AFFIRMED
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