Ex Parte Gunn-Beshears et al

Patent Trial and Appeal Board

May 16, 2014

11999542 (P.T.A.B. May. 16, 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.
11/999,542 12/06/2007 Lisa Gunn-Beshears 149-001 8974
37468 7590 05/19/2014
STOCKWELL & SMEDLEY, PSC
861 CORPORATE DRIVE, SUITE 200
LEXINGTON, KY 40503
EXAMINER
MORRISON, JAY A
ART UNIT PAPER NUMBER
2168
MAIL DATE DELIVERY MODE
05/19/2014 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 LISA GUNN-BESHEARS and HEATH PLUM
___________

Appeal 2012-000979
Application 11/999,542
Technology Center 2100
____________

Before JOSEPH F. RUGGIERO, CAROLYN D. THOMAS, and
ERIC B. CHEN, Administrative Patent Judges.

CHEN, Administrative Patent Judge.

DECISION ON APPEAL

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This is an appeal under 35 U.S.C. § 134(a) from the final rejection of
claims 1-7 and 9-20. Claim 8 has been cancelled. We have jurisdiction
under 35 U.S.C. § 6(b). We affirm.

STATEMENT OF THE CASE
Appellants’ invention relates to a wearable identification and
information device that can be used to retrieve previously disclosed
information regarding individuals and their health statuses. The device is
used to search a remote database accessible through the Internet or other
communications networks. The remote database includes specific medical
information related to the wearer of the device associated with that code.
(Abstract.)
Claim 1 is exemplary, with disputed limitations in italics:
1. A medical information tracking system comprising:
a database configured to store a respective record of
medical-related information for each of a plurality of user’s
[sic] wherein each record is associated with a user specific
code and has its data organized into a plurality of different
tiers, wherein each user specific code corresponds to a user-
wearable device;
an interface configured to receive a particular user
specific code from an accessor, wherein the accessor has an
associated tier level corresponding to one of the plurality of
different tiers;
the interface, in response to receiving the particular user
specific code, is further configured to output a portion of the
record associated with the user specific code that corresponds
to the tier level of the accessor; and
wherein the interface includes a web server in
communication with the database.

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Claims 1-7 and 9-20 stand rejected under 35 U.S.C. § 103(a) as
obvious over Mazurik (US 2008/0126417 A1; May 29, 2008) and Bischof
(US 2007/0078688 A1; Apr. 5, 2007).

ANALYSIS
Claims 1, 3-7, and 10-20
We are unpersuaded by Appellants’ arguments (App. Br. 9-10; see
also Reply Br. 3-6) that the combination of Mazurik and Bischof would not
have rendered obvious independent claim 1, which includes the limitations
“a database configured to store a respective record of medical-related
information for each of a plurality of [users] wherein each record is
associated with a user specific code and has its data organized into a
plurality of different tiers” and “the interface, in response to receiving the
particular user specific code, is further configured to output a portion of the
record associated with the user specific code that corresponds to the tier
level of the accessor.”
The Examiner found that the system of Mazurik for managing and
storing records into sections and/or subsections, with a security level
determining module, corresponds to the limitations “a database configured
to store a respective record of medical-related information for each of a
plurality of [users] wherein each record is associated with a user specific
code and has its data organized into a plurality of different tiers” and “the
interface, in response to receiving the particular user specific code, is further
configured to output a portion of the record associated with the user specific
code that corresponds to the tier level of the accessor.” (Ans. 5-6, 14-15;
Mazurik, ¶¶ [0007], [0029].) We agree with the Examiner.
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Mazurik relates to a system “for operating in a mass casualty incident
. . . that enable information providers/users operating in a mass casualty
incident to be able to communicate through a central system and further to
view, enter and modify information in real time.” (¶ [0003].) Mazurik
explains that the system stores “a plurality of records, wherein each of the
plurality of records includes at least one of a section and subsection”
(¶ [0007]), such that “each of the plurality of sections and/or subsections [is]
associated with one of a plurality of patients’ health care record” (¶ [0029]).
Thus, Mazurik teaches the limitation “a database configured to store a
respective record of medical-related information for each of a plurality of
[users] wherein each record is associated with a user specific code and has
its data organized into a plurality of different tiers.” Mazurik further
explains that the system provides “access to at least one of the selected
section and/or subsection in a record” (¶ [0007]) including a “security level
determining module 314 for determining security levels assigned to each of
a plurality of sections and/or subsections associated with a patient’s health
care record” (¶ [0029]). Moreover, in one example, Mazurik explains that “a
personal physician caring for the individual may have access to all of their
health records, where as a hospital registration clerk may have access to
information limited to patient demographics such as name, date of birth etc.”
(¶ [0057]). Thus, Mazurik teaches the limitation “the interface, in response
to receiving the particular user specific code, is further configured to output
a portion of the record associated with the user specific code that
corresponds to the tier level of the accessor.”
First, Appellants argue that “a user in Mazurik may receive all sorts of
information relating to the mass casualty incident, including information
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pertaining to multiple persons, in response to a request” and accordingly,
“Mazurik does not teach these features of claims 1, 12 and 18 because each
packet of information in Mazurik is not limited a single user or person” and
“each packet of information in Mazurik may relate to all sorts of information
relevant to a mass casualty incident.” (App. Br. 10.) Contrary to
Appellants’ arguments, Mazurik explains that the sections and/or
subsections are associated with patient records. (¶ [0029].)
Second, Appellants argue that “Mazurik refers vaguely to a user
having a level of security access, nowhere does the cited portion of Mazurik
teach having information pre-sorted and organized into a plurality of
different tiers corresponding to the associated tier levels of accessors as in
the present claims.” (App. Br. 10.) Contrary to Appellants’ arguments,
Mazurik explains that the sections and/or subsections are associated with
patient records and that security levels are associated with such records.
(¶ [0029].) For example, Mazurik explains that a physician and hospital
registration clerk have different security levels. (¶ [0057].)
Last, Appellants argue that “the presently claimed invention provides
that a ‘user’ activates and enters their own information in anticipation of
possible need in the future for access by an ‘accessor.’” (Reply Br. 3.)
However, Appellants’ arguments are not commensurate in scope with
claim 1, because the claim does not expressly provide a definition for a
“user” or “accessor.” Furthermore, the claimed “user” would correspond to
the patient of Mazurik and the claimed “accessor” would correspond to the
users of Mazurik (e.g., police, firefighters, EMS, hospitals).
Thus, we agree with the Examiner that the combination of Mazurik
and Bischof would have rendered obvious independent claim 1, which
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includes the limitations “a database configured to store a respective record of
medical-related information for each of a plurality of [users] wherein each
record is associated with a user specific code and has its data organized into
a plurality of different tiers” and “the interface, in response to receiving the
particular user specific code, is further configured to output a portion of the
record associated with the user specific code that corresponds to the tier
level of the accessor.”
We are further unpersuaded by Appellants’ arguments (App. Br. 11-
12) that the combination of Mazurik and Bischof would not have rendered
obvious independent claim 1, which includes the limitation “wherein each
user specific code corresponds to a user-wearable device.”
The Examiner acknowledged that Mazurik does not disclose the
limitation “wherein each user specific code corresponds to a user-wearable
device” (Ans. 6) and thus, relied upon Bischof for teaching a physical
identification device carried by a subscriber for accessing a database.
(Ans. 6; Bischof, ¶ [0009].) The Examiner concluded that “[i]t would have
been obvious . . . to combine Mazurik and Bischof” to provide “the user the
advantage of a convenient and secure way of providing information.”
(Ans. 6.) We agree with the Examiner.
As discussed previously, Mazurik relates to a system “for operating in
a mass casualty incident . . . that enable information providers/users
operating in a mass casualty incident to be able to communicate through a
central system and further to view, enter and modify information in real
time.” (¶ [0003].)
Bischof relates to “system for allowing a person . . . to provide service
providers with access to extensive amounts of personal and private data,
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quickly and securely,” including medical information. (¶ [0004].) In one
embodiment, the system of Bischof includes a physical identification device
carried by a subscriber (¶ [0009]) such that a “Database 3 associates
subscriber information with a subscriber ID” (¶ [0041]). Thus, Bischof
teaches the limitation “wherein each user specific code corresponds to a
user-wearable device.”
A person of ordinary skill in the art would have recognized that
incorporating the physical identification device of Bischof, which is
associated with a subscriber ID, with the mass casualty incident system of
Mazurik, provides the advantage of quick and secure access to individual
medical information. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 417
(2007). Thus, we agree with the Examiner (Ans. 6) that modifying Mazurik
to include the physical identification device of Bischof would have been
obvious.
Appellants argue that modifying Mazurik “would not be appropriate
for the system in Mazurik because the information stored and communicated
in Mazurik relates to a mass casualty event and not to a specific record for a
particular user or subscriber” (App. Br. 11-12) and “it is improper to
combine the teachings of two references if such combination would
impermissibly change the principle or mode of operation of the system
described or render it inoperable for its intended purpose” (App. Br. 12).
However, other than making conclusory statements, Appellants have not
provided any persuasive arguments or evidence to support the argument that
combining Mazurik and Bischof would fundamentally change the operation
of Mazurik. Arguments of counsel cannot take the place of factually
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supported objective evidence. See, e.g., In re Huang, 100 F.3d 135, 139-140
(Fed. Cir. 1996).
Thus, we agree with the Examiner that the combination of Mazurik
and Bischof would have rendered obvious independent claim 1, which
includes the limitation “wherein each user specific code corresponds to a
user-wearable device.”
Accordingly, we sustain the rejection of independent claim 1 under
35 U.S.C. § 103(a). Claims 4-7, 10, and 11 depend from claim 1, and
Appellants have not presented any substantive arguments with respect to
these claims. Therefore, we sustain the rejection of claims 4-7, 10, and 11
under 35 U.S.C. § 103(a), for the same reasons discussed with respect to
independent claim 1.
Independent claims 12 and 18 recite limitations similar to those
discussed with respect to independent claim 1, and Appellants have not
presented any substantive arguments with respect to these claims. We
sustain the rejection of claims 12 and 18, as well as dependent claims 14-17,
19 and 20, for the same reasons discussed with respect to claim 1.
We find untimely Appellants’ additional arguments in the Reply Brief
with respect to dependent claims 3 and 13. (Reply Br. 5-6.) We note that
these new arguments were raised by Appellants for the first time in the
Reply Brief, and they are not in response to a new issue brought up by the
Examiner in the Answer. We therefore, find these new arguments
unavailing. Appellants are reminded that:
The purpose of a reply brief is to ensure the Appellant the
opportunity to have the last word on an issue raised by the
Examiner. The reply brief enables the Appellant to address any
new grounds of rejection the Examiner may have raised in the
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answer, or to address changes or developments in the law that
may have occurred after the principal brief was filed. The reply
brief is not an opportunity to make arguments that could have
been made during prosecution, but were not. Nor is the reply
brief an opportunity to make arguments that could have been
made in the principal brief on appeal to rebut the Examiner’s
rejections, but were not.

Giving cognizance to belated arguments in a reply would
vitiate the force of the requirement in Board Rule 37(c)(1)(vii)
that “[a]ny arguments or authorities not included in the brief . . .
will be refused consideration by the Board, unless good cause is
shown.” The reference in that section to the “reply brief filed
pursuant to § 41.41” does not create a right for the Appellant to
raise an argument in the reply brief that could have been raised
in the principal brief but was not. Rather, that reference merely
puts Appellants on notice that arguments that could be made in
the reply brief, but are not, are waived.
Ex parte Borden, 93 USPQ2d 1473, 1474 (BPAI 2010) (informative).

Dependent Claim 2
We are unpersuaded by Appellants’ arguments (App. Br. 12-13; see
also Reply Br. 6-7) that the combination of Mazurik and Bischof would not
have rendered obvious dependent claim 2, which includes the limitation
“wherein the plurality of different tiers includes four tiers.”
The Examiner found that the plurality of sections and/or subsections
associated with a patient’s health care record of Mazurik corresponds to the
limitation “wherein the plurality of different tiers includes four tiers.”
(Ans. 7, 17-18; Mazurik, ¶ [0029].) We agree with the Examiner.
Mazurik explains that “[s]oftware application(s) 314 may include
security level determining module 314 for determining security levels
assigned to each of a plurality of sections and/or subsections associated with
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a patient’s health care record.” (¶ [0029].) Because the security level
determining module 314 of Mazurik determines security levels for a
“plurality” (i.e., more than one in number) of sections and/or subsections,
Mazurik teaches the limitation “the plurality of different tiers includes four
tiers.”
Appellants argue that “[n]owhere do the cited portions of Mazurik
teach specifically ‘four tiers’ of security access with information sorted or
organized according to these tiers.” (App. Br. 12; see also Reply Br. 6.)
However, as discussed previously, the limitation “wherein the plurality of
different tiers includes four tiers” is broad enough to encompass the security
level determining module 314 of Mazurik that determines security levels for
a “plurality” (i.e., more than one in number) of sections and/or subsections.
Thus, we agree with the Examiner that the combination of Mazurik
and Bischof would have rendered obvious dependent claim 2, which
includes the limitations “wherein the plurality of different tiers includes four
tiers.”
Accordingly, we sustain the rejection of dependent claim 2 under
35 U.S.C. § 103(a).

Dependent Claim 9
We are unpersuaded by Appellants’ arguments (Reply Br. 7) that the
combination of Mazurik and Bischof would not have rendered obvious
dependent claim 9, which includes the limitation “wherein such access
permits the owner to modify the respective record associated with that user
specific code.”
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The Examiner found that the Central Information Repository database
of Mazurik, in which an individual can access a personal information record,
corresponds to the limitation “wherein such access permits the owner to
modify the respective record associated with that user specific code.”
(Ans. 18; Mazurik, ¶ [0058].)
Mazurik explains that persons can enter information into a Central
Information Repository database to access their personal information
record (PIR) (¶ [0055]), such that “[a]n individual may have access to all of
their personal information record but may only be allowed to ‘read-write’
selected areas, for example contact information or place of residence”
(¶ [0058]). Mazurik further explains that personal records can include date
of birth, address, and allergies. (¶ [0060].) Because Mazurik explain that
the individual can access personal information (e.g., date of birth, address,
and allergies) in the “read-write” area, Mazurik teaches the limitation
“wherein such access permits the owner to modify the respective record
associated with that user specific code.”
Appellants argue that “entering medical or health information into the
system of Mazurik in response to a mass casualty event would be reserved
for a physician or other appropriate ‘information provider’ using the system”
but “claim 9 provides that the owner of the device associated with a user-
specific code (i.e., the ‘user’) would be able to modify their record of
medical-related information.” (Reply Br. 7.) However, as discussed
previously, the claim limitation “wherein such access permits the owner to
modify the respective record associated with that user specific code” is
broad enough to encompass the personal information of Mazurik (e.g., date
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of birth, address, and allergies), because such information assists medical
personnel in providing treatment.
Thus, we agree with the Examiner that the combination of Mazurik
and Bischof would have rendered obvious dependent claim 9, which
includes the limitations “wherein such access permits the owner to modify
the respective record associated with that user specific code.”
Accordingly, we sustain the rejection of dependent claim 9 under
35 U.S.C. § 103(a).

DECISION
The Examiner’s decision to reject claims 1-7 and 9-20 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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