Ex Parte Gottlieb

Patent Trial and Appeal BoardAug 28, 2014

10981116 (P.T.A.B. Aug. 28, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte MEIR GOTTLIEB __________ Appeal 2012-008781 Application 10/981,1161 Technology Center 3600 ____________ Before MURRIEL E. CRAWFORD, HUBERT C. LORIN, and BIBHU R. MOHANTY, Administrative Patent Judges. LORIN, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Meir Gottlieb (Appellant) seeks our review under 35 U.S.C. § 134 (2002) of the final rejection of claims 1–18. We have jurisdiction under 35 U.S.C. § 6(b) (2002). 1 The Appellant identifies Salar, Incorporated as the real party in interest. App. Br. 2. Appeal 2012-008781 Application 10/981,116 2 SUMMARY OF DECISION We REVERSE.2 THE INVENTION Claim 1, reproduced below, is illustrative of the subject matter on appeal. 1. An apparatus generating information related to patient diagnosis comprising: a data entry element sensing a handwritten phrase from a user, each handwritten phrase being generated by the user by writing a series of handwritten characters; a data storage including a first list formed of common medical terms and a second list formed of phrases of several words each phrase defining a patient diagnosis; and a processor adapted to receive a plurality of converted words corresponding to said handwritten phrase, said processor comparing each converted word to said first list to equate each converted word to a common medical term, said processor being configured to assemble the resulting common medical terms into a proposed list and generating a patient diagnosis based on the comparison of said proposed list to said second list. THE REJECTIONS The Examiner relies upon the following as evidence of unpatentability: Platt Becker US 5,812,698 US 2002/0019749 A1 Sept. 22, 1998 Feb. 14, 2002 2 Our decision will make reference to the Appellant’s Appeal Brief (“App. Br.,” filed Nov. 17, 2011) and Reply Brief (“Reply Br.,” filed May 15, 2012), and the Examiner’s Answer (“Ans.,” mailed Mar. 16, 2012). Appeal 2012-008781 Application 10/981,116 3 The following rejections are before us for review: 1. Claims 1–6 and 8–18 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Becker. 2. Claim 7 is rejected under 35 U.S.C. § 103(a) as being unpatentable over Becker and Platt. ISSUE Has the Examiner established a prima facie case of obviousness for the claimed subject matter over the cited prior art? FINDINGS OF FACT We rely on the Examiner’s factual findings stated in the Answer. Additional findings of fact may appear in the Analysis below. ANALYSIS The rejection of claims 1–6 and 8–18 under 35 U.S.C. § 103(a) as being unpatentable over Becker. All the independent claims (claims 1, 5, and 10) include limitations to two different lists of information, the first to be matched and the second to be compared to. Taking claim 1 as representative, it calls for “a data storage including a first list formed of common medical terms and a second list formed of phrases of several words each phrase defining a patient diagnosis.” The Examiner’s found that Becker discloses this at at least, p.5, ¶0077, lines 3-7 and 11-12 (clinician access device includes ... read only memory(ROM)... clinician access Appeal 2012-008781 Application 10/981,116 4 device also uses a random access memory(RAM) ...); and p. 5, ¶0079, line 9 (additional memory may reside off the device). Ans. 5. We have reviewed said Becker passages but are unable to find there any mention of the two lists of information as claimed. In response to the Appellant’s contention that Becker does not disclose said lists (App. Br. 10–11), the Examiner responded, in part, by arguing that the memory as recited in Becker is used to store a wide variety of information that is, or may be, needed to perform the functions of the invention, which include generating information related to patient diagnosis. The Examiner also notes that a "list" as recited and used by the Appellant one word or one medical term, depending on the circumstances. As such said data as being used and stored in the Becker reference would seemingly include "lists" as recited by the Appellant in the body of the claim language. Ans. 15–16. Setting aside the speculation as to whether “the Becker reference would seemingly include ‘lists’ as recited by the Appellant in the body of the claim language” (Ans. 15–16), the claimed subject matter is not directed to information in the form of multiple lists (whether they be words or phrases), but rather is more narrowly directed to information in the form of two different lists having separate functions, one for matching and the other for comparing. The fact that “Becker is used to store a wide variety of information that is, or may be, needed to perform the functions of the invention” is alone insufficient as evidence to support the finding that Becker discloses said more narrowly defined lists as claimed. Appeal 2012-008781 Application 10/981,116 5 We do note that the Examiner conceded that “Becker does not explicitly disclose a processor adapted to [compare]” (Ans. 5). But the comparing limitations in the claim are not addressed. Rather, the Examiner found that Becker discloses a microprocessor having certain functions (none of which relate to performing a comparison) and then reached the conclusion that [i]t would have been obvious to one of ordinary skill in the art at the time of the invention to expand the method of Becker to include comparing each converted word to said first list to equate each converted word to a common medical term, said processor being configured to assemble the resulting common medical terms into a proposed list and generating a patient diagnosis based on the comparison of said proposed list said second list since it would provide for a more reliable and efficient apparatus generating information relating to patient diagnosis. Id. at 6. In our view, the fact that Becker discloses a microprocessor having certain functions (none of which relate to performing a comparison) is insufficient as evidence to support the conclusion that one would have been led to modify Becker’s microprocessor so as to include a comparing function as claimed. For the foregoing reasons, we find that a prima facie case of obviousness has not been established in the first instance by a preponderance of the evidence. The rejection is not sustained. Appeal 2012-008781 Application 10/981,116 6 The rejection of claim 7 under 35 U.S.C. § 103(a) as being unpatentable over Becker and Platt. Claim 7 depends on claim 5, whose rejection was have not sustained for the reasons above. For the same reasons, we will not sustain the rejections of claim 7 over the cited prior art. Cf. In re Fritch, 972 F.2d 1260, 1266 (Fed. Cir. 1992) ("[D]ependent claims are nonobvious if the independent claims from which they depend are nonobvious."). CONCLUSIONS The rejections of claims 1–6 and 8–18 under 35 U.S.C. § 103(a) as being unpatentable over Becker and claim 7 under 35 U.S.C. § 103(a) as being unpatentable over Becker and Platt are not sustained. DECISION The decision of the Examiner to reject claims 1–18 is reversed. REVERSED hh