Ex Parte Eisenberger et al

Patent Trial and Appeal Board

May 5, 2014

12147119 (P.T.A.B. May. 5, 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.
12/147,119 06/26/2008 George Eisenberger RSW920040196US2 6371
75949 7590 05/05/2014
IBM CORPORATION
C/O: VanCott Bagley, Cornwall & McCarthy
36 South State Street
Suite 1900
Salt Lake City, UT 84111
EXAMINER
HUNTER, SEAN KRISTOPHER
ART UNIT PAPER NUMBER
3626
MAIL DATE DELIVERY MODE
05/05/2014 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 GEORGE EISENBERGER, EDGAR H. MCCULLOCH, III, and
THOMAS L. RICHARDS, II
___________

Appeal 2012-001589
Application 12/147,119
Technology Center 3600
___________

Before HUBERT C. LORIN, BIBHU R. MOHANTY, and
KEVIN W. CHERRY, Administrative Patent Judges.

CHERRY, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2012-001589
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STATEMENT OF THE CASE1
George Eisenberger, Edgar H. McCulloch, III, and
Thomas L. Richards, II (Appellants) seek review under 35 U.S.C. § 134 of
the Examiner’s decision to reject of claims 1-17, the only claims pending in
the application on appeal. We have jurisdiction over the appeal pursuant to
35 U.S.C. § 6(b).
Appellants’ claimed invention relates to data sharing using a computer
network (Spec., ¶ [0004]).
Claim 1, which is reproduced below, is exemplary (bracketed matter
added).
1. A system for allowing a Subscriber to electronically obtain
data of interest from participating Publishers, comprising:
[(a)] an Administrative Server, implemented by at least one
processor, configured to allow the Subscriber to electronically
provide an electronic topic data request to the Administrative
Server using a web portal and a computer network,
[(b)] wherein the Administrative Server is further configured to
periodically electronically search a plurality of non-public
repositories in a respective plurality of Publishers to identify
data records relevant to the electronic topic data request and
publish the relevant data records to the Subscriber on an
ongoing basis as the relevant data records become available
from the non-public repositories of said Publishers.
(App. Br. 21, Clms. App’x.)
The following rejections are before us on review:
(1) claims 1-6, 8-10, 12, and 13-16 stand rejected under 35 U.S.C. §
103(a) as being unpatentable over Hoover (US 5,560,005, iss. Sep. 24, 1996)

1 Our decision will make reference to the Appellants’ Appeal Brief (“App.
Br.,” filed March 24, 2011) and Reply Brief (“Reply Br.,” filed August 17,
2011), and the Examiner’s Answer (“Ans.,” mailed June 24, 2011).
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and Bruno Nardone, The Healthcare Collaborative Network: Its worth can
be calculated in lives saved, Healthcare Informatics Online (Jan. 2004)
(hereinafter “Nardone”);
(2) claim 7 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Hoover, Nardone, and Eric G. Brown et al., Healthcare
IT’s Next Big Market: Cerner Buys VitalWorks, Moving from Hospital To
Physician To Community, Quick Take (Nov. 30, 2004) (hereinafter
“Brown”)2; and
(3) claims 11 and 17 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Hoover, Nardone, and Woehl (US 6,574,634 B2, iss. Jun.
3, 2003).3
We AFFIRM-IN-PART.

FINDINGS OF FACT
We find the findings of fact in the Analysis section below are supported
at least by a preponderance of the evidence.4

2 The Examiner styled the second rejection as Hoover in view of Brown, but
the analysis following the heading indicates the Examiner is extending the
rejection of claim 6 based on Hoover and Nardone to include the teachings
of Brown (Ans. 9-10). Appellants understood this (App. Br. 19). Thus, we
correct the Examiner’s typographical error and include Nardone.
3 The Examiner styled the third rejection as Hoover in view of Woehl, but
the Examiner’s analysis indicates that the Examiner is extending the
rejection of claim 1 based on Hoover and Nardone to include the teachings
of Woehl (Ans. 10-11). Thus, as with the second rejection, we correct the
Examiner’s typographical error and include Nardone in this rejection.
4 See Ethicon, Inc. v. Quigg, 849 F.2d 1422, 1427 (Fed. Cir. 1988)
(explaining the general evidentiary standard for proceedings before the
Patent Office).
Appeal 2012-001589
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ANALYSIS
Claims 1, 2-3, and 12
Appellants argue that Hoover and Nardone neither alone nor in
combination teach an Administrative Server, configured as recited in claim
limitation (b) of independent claim 1 (App. Br. 11-14, Reply Br. 4-8). In
contrast, the Examiner finds the combination renders the claim obvious
(Ans. 5-6, 13-17).
We agree with the Examiner. Appellants acknowledge that the object
broker of Hoover allows searching of heterogeneous databases and storing
of that information, and that Nardone describes a network where government
agencies can obtain clinical data from hospitals on a request and subscribe
basis (App. Br. 12). Hoover also discloses that the object broker can
ascertain access privileges of a user (i.e., that it can have “subscribers”) and
that “complex searches [of the heterogeneous databases] could be
formulated using Boolean operators upon other types of information to
derive a selected search term that is indexed and maintained at the object
broker 20” (Ans. 14, Hoover, col. 30, ll. 34-38, 41-42). Nardone also
discloses that its request-and-subscribe service for the various subscribers
can take place in “near real time” (Nardone, p. 2). Here, it would have been
obvious at the time of the invention to modify the method of Hoover to use
the centralized server (object broker) of Hoover with its capabilities of
performing and storing complex searches for subscribers to periodically
perform a standing search for certain types of records and deliver them to
particular subscribers as disclosed in Nardone. Such a use would have been
an obvious, predictable modification of the existing search capabilities of the
object broker system and methods disclosed in Hoover with the benefits
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identified in both Nardone and Hoover of allowing rapid and efficient
exchange of information between various entities (Hoover, col. 11, ll. 5-9),
and enhancing patient care and safety (Nardone, p. 2). Thus, we sustain the
rejection of claim 1.
Appellants make no separate arguments, apart from the arguments
discussed above for independent claim 1, for claims 2-3 and 12 and so we
sustain the rejection of those claims as well.

Claims 4-5 and 8-10
Appellants argue that the Examiner erred in rejecting claims 4 and 5
for the additional reason that the combination of Hoover and Nardone fails
to teach or suggest “an electronic topics catalog” as recited in those claims
(App. Br. 14-15, Reply Br. 9). Claims 8-10, which depend on claim 5, have
a similar limitation (App. Br. 22-23, Clms. App’x). In contrast, the
Examiner identifies where this element is found (Ans. 7-8).
We agree with Appellants that the Examiner has failed to show that
cited portion of Hoover discloses an “electronic topics catalog.” Indeed, a
review of the cited portion of Hoover (col. 7, ll. 25-36), shows that this
portion of the reference only lists potential kinds of information that could
be accessed by the system, not that electronic search topics are available in a
catalog for selection by the user. Thus, we cannot sustain the rejection of
claims 4 and 5 and claims 8-10, which depend on them.

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Claim 6
Appellants argue that the Examiner erred in rejecting claim 6 because
the combination of Hoover and Nardone fails to teach or suggest the claim
limitation of claim 6 that requires that “the topic request comprises a
plurality of defined data fields that the Subscriber can specify including at
least two of: a topic name, a topic type, a topic description, a topic time
frame and/or duration, a topic trigger event data field and an associated data
element.” (App. Br. 16). In contrast, the Examiner identifies where this
element is found in Hoover (Ans. 8).
We agree with the Examiner that Hoover (col. 47, ll. 43-47), which
discusses a type of search for patient records possible on the object broker
system of Hoover, discloses this element. In addition, we further note that
the search syntax is shown in Hoover (col. 30, ll. 20-40). Thus, we sustain
the rejection of claim 6.

Claims 13-16
Appellants argue that the Examiner erred in rejecting claim 13 for the
reason that Hoover and Nardone do not disclose or suggest the claim
limitations of “determin[ing] whether each of the participating Publishers
authorizes the Subscriber to receive data relevant to the topic data request
from the electronic repository of that Publisher” or “establish[ing] a
subscription for the Subscriber to each Publisher authorizing the Subscriber
to receive data relevant to the topic data request.” (App. Br. 17-19). In
contrast, the Examiner relies on the reasoning laid out for claim 1 and finds
all the elements present (Ans. 5-7, 11).
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We agree with the Examiner that these claim limitations are present in
the combination of Hoover and Nardone and are laid out in the Examiner’s
analysis of claim 1. For the claim limitation “determin[ing] whether each of
the participating Publishers authorizes the Subscriber to receive data relevant
to the topic data request from the electronic repository of that Publisher,”
Hoover discloses determining “access privileges” (Ans. 5, 14, Hoover, col.
30, ll. 41-42), which teaches this claim element. As for “establish[ing] a
subscription for the Subscriber to each Publisher authorizing the Subscriber
to receive data relevant to the topic data request” (Nardone, p. 2), discloses
creating subscriptions with different publishers and Hoover discloses
sending security parameters to the remote databases to ascertain a user’s
access privileges (Hoover, col. 30, ll. 26-42). Thus, we agree with the
Examiner that the combination of Hoover and Nardone teaches this element
as well. Appellants’ remaining arguments mirror the arguments we rejected
with respect to claim 1 above, so we sustain the rejection of claim 13.
Appellants offer no separate arguments for claims 14-16, which depend from
claim 13, so we sustain the rejection of those claims as well.

Claims 7, 11, and 17
With respect to claims 7, 11, and 17, Appellants argue that Examiner
erred because for the rejections of those claims (rejections 2 and 3 above),
the Examiner omitted reference to Nardone in the title of the rejection. We
disagree as discussed above in footnotes 2 and 3. The only other arguments
for the patentability of these claims are the arguments considered above for
independent claims 1 and 13, which we rejected, so we sustain the rejections
of claims 7, 11, and 17.
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Application 12/147,119

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CONCLUSIONS OF LAW
The rejection of claims 1-3, 6, and 12-16 under 35 U.S.C. § 103(a) as
unpatentable over Hoover and Nardone is not in error.
The rejection of claims 4-5 and 8-10 under 35 U.S.C. § 103(a) as
unpatentable over Hoover and Nardone is in error.
The rejection of claim 7 under 35 U.S.C. § 103(a) as unpatentable over
Hoover, Nardone, and Brown is not in error.
The rejection of claims 11 and 17 under 35 U.S.C. § 103(a) as
unpatentable over Hoover, Nardone, and Woehl is not in error.

DECISION
The rejection of claims 1-3, 6-7, and 11-17 is affirmed.
The rejection of claims 4-5 and 8-10 is reversed.
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) (2011).

AFFIRMED-IN-PART

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