Ex Parte Hlathein et al

Patent Trial and Appeal Board

Apr 25, 2016

11033590 (P.T.A.B. Apr. 25, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
111033,590 01112/2005
96864 7590 04/27/2016
Bell & Manning LLC,
2801 West Beltline Highway
Ste. 210
Madison, WI 53713
FIRST NAMED INVENTOR
Patrick Hlathein
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
00700-0002(D05590US) 7986
EXAMINER
PORTER, RACHELL
ART UNIT PAPER NUMBER
3626
NOTIFICATION DATE DELIVERY MODE
04/27/2016 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address( es):
docketing@bellmanning.com
cbell@bellmanning.com
pporembski@bellmanning.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte PATRICK HLATHEIN and AARON PATTERSON
Appeal2013-009507 1
Application 11/033,5902
Technology Center 3600
Before BIBHU R. MOHANTY, NINA L. MEDLOCK, and
TARA L. HUTCHINGS, Administrative Patent Judges.
MEDLOCK, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's final
rejection of claims 42-78. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.
1 Our decision references Appellants' Appeal Brief ("App. Br.," filed
May 8, 2013) and Reply Brief ("Reply Br.," filed July 24, 2013), and the
Examiner's Answer ("Ans.," mailed June 20, 2013), Advisory Action
("Adv. Act.," mailed February 6, 2013), and Final Office Action ("Final
Act.," mailed January 3, 2013).
2 Appellants identify Epic Systems Corporation as the real party in interest.
App. Br. 3.
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Application 11/033,590
CLAIMED INVENTION
Appellants' claimed invention "relates generally to health care
management, and more particularly to a system and method for providing a
real-time status for managing encounters in a health care setting" (Spec. i-f 1 ).
Claim 42, reproduced below, is illustrative of the subject matter on
appeal:
42. A computer-readable memory having stored
thereon computer-readable instructions that, when executed by a
computer, cause the computer to:
determine a first scheduled start time and a first scheduled
end time for a first encounter of a plurality of encounters using
scheduling information received from a scheduling system,
wherein the first encounter is any of the plurality of encounters;
present the first scheduled start time and the first
scheduled end time on a display operably coupled to the
computer, wherein the first scheduled start time and the first
scheduled end time are presented by a scheduled bar of a bar
graph;
determine a first projected start time and a first projected
end time for the first encounter using real-time status information
received for the plurality of encounters; and
present the first projected start time and the first projected
end time on the display, wherein the first projected start time and
the first projected end time are presented by a projected bar of
the bar graph, and further wherein both the scheduled bar and the
projected bar are presented on the display for viewing at the same
time and as separately distinguishable bars in the bar graph.
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Application 11/033,590
REJECTION
Claims 42-78 are rejected under 35 U.S.C. § 103(a) as unpatentable
over Brixius (US 2006/0004618 Al, pub. Jan. 5, 2006) and Montemayor
(US 7,113,915 Bl, iss. Sept. 26, 2006).
ANALYSIS
Independent claims 42, 58, and 66 and dependent claims 43--47, 49, 50, 52-
57, 60, 61, 63-65, 67, 68, 70, 71, and 73-78
Appellants do not dispute the Examiner's obviousness determination
of independent claims 42, 58, and 66 based on Brixius and Montemayor.
Instead, Appellants argue Montemayor does not qualify as prior art that can
be used against the claims under§ 103(a) because the subject matter of
claims 42, 58, and 66 was actually reduced to practice before April 9, 2004,
which is the earliest effective filing date to which Montemayor is entitled
(App. Br. 16). As evidence, Appellants point to the Declaration under
3 7 C.F .R. § 1.131 by co-inventors, Patrick Hlathein and Aaron Patterson,
(the "Declaration") filed on January 29, 2013, including the "Real-Time
ORs at a Glance (OAAG)-Proposed development plan" submitted
therewith as Exhibit A (id.).
The Examiner found the Declaration insufficient to establish an actual
reduction to practice prior to the effective filing date of Montemayor,
particularly noting that the submitted Exhibit A "contains [a] single screen
shot[] and 'Summary and Goals' of the OAAG" (Adv. Act. 2). The
Examiner further noted that the Exhibit "discusses the intended design of the
user interface" and "discloses the modifications which need to be made to
complete the interface design" and that the "language of the exhibit indicates
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Application 11/033,590
that the features are future changes to be made, not features which existed at
the time" (id.).
Appellants argue that the screen capture and associated functional
description in Exhibit A, coupled with the inventors' certification (i.e., that
the user interface shown in Exhibit A is a screen capture of a user interface
created by a computer executing computer-readable instructions before
April 9, 2004) is sufficient to demonstrate that the claimed invention was
sufficiently tested to demonstrate that it would work for its intended
purpose, and, thus, sufficient to demonstrate a prior reduction to practice
(App. Br. 17-20). Appellants maintain that this is so, notwithstanding that
Exhibit A includes prospective language - language that Appellants explain
"is describing the functionality that customers will have when the
commercial embodiment is released to them" (id. at 20).
We agree with the Examiner that the Declaration is insufficient to
establish actual reduction to practice prior to the effective filing date of the
Montemayor patent. Rather than providing clear evidence that the claimed
subject matter had been actually reduced to practice, Exhibit A seemingly
refers to future, rather than existing, features of the user interface design and,
as such, falls short of corroborating an actual reduction to practice.
Appellants emphasize that the inventors certified in the Declaration
that the screen capture in Exhibit A was created by a computer executing
computer-readable instructions on a date earlier than April 9, 2004, and that
the Declaration includes an acknowledgement that willful false statements
are punishable by fine or imprisonment and may jeopardize the validity of
the application or any patent issuing thereon (see, e.g., App. Br. 16-17, 19)
But the inventor's statements, without more, are insufficient. And, aside
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Application 11/033,590
from Exhibit A, Appellants offer no independent evidence or testimony to
corroborate an actual reduction to practice. See Loral Fairchild Corp. v.
Matsushita Elec. Indus. Co., 266 F.3d 1358, 1363 (Fed. Cir. 2001) ("In order
to establish an actual reduction to practice, an inventor's testimony must be
corroborated by independent evidence").
Appellants offer no arguments regarding the merits of the rejection of
independent claims 42, 58, and 66; instead, Appellants rely solely on the
Declaration to remove Montemayor as a reference. Therefore, we
summarily sustain the rejection of claims 42, 58, and 66 under 35 U.S.C.
§ 103(a). We also sustain the Examiner's rejection of dependent claims 43-
47, 49, 50, 52-57, 60, 61, 63---65, 67, 68, 70, 71, and 73-78, which are not
argued separately.
Dependent claims 48, 59, and 69
Claim 48 depends from independent claim 42 and recites, inter alia,
that the computer-readable instructions further cause the computer to
present the second projected start time and the second projected
end time on the display without a scheduled start time or a
scheduled end time because the second encounter was not
included in the scheduling information, wherein the second
projected start time and the second projected end time are
presented in a second projected bar of the bar graph.
Claims 59 and 69 depend from independent claims 58 and 66, respectively,
and include language substantially similar to the language of claim 48.
Appellants argue that the Examiner erred in rejecting claims 48, 59,
and 69 under 35 U.S.C. § 103(a) because Brixius, on which the Examiner
relies, "fails to contemplate any such presentation without a scheduled start
time or a scheduled end time because the second encounter was not included
in the scheduling information," as called for in claims 48, 59, and 69 (App.
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Application 11/033,590
Br. 22). Thus, according to Appellants, "[n]owhere does Brixius
contemplate a projected start and end time presented for a task that was
never scheduled" (id.).
We have reviewed cited portions of Brixius on which the Examiner
relies (Final Act. 5 (citing Brixius i-fi-141-51; Figs. 6, 9); see also Ans. 20
(citing Brixius i-fi-141-51; Figs. 4, 6, 9 (steps 906-914))). And although
Brixius discloses determining a schedule for a selected task, including the
order of the task, based on various considerations, e.g., whether there are
predecessor tasks that should be scheduled earlier in order than successor
tasks, we fail to see how, and the Examiner does not adequately explain
how, this discloses or suggests presenting a project start and end time for a
task that was never scheduled, as called for in claims 48, 59, and 69.
Therefore, we do not sustain the Examiner's rejection of claims 48,
59, and 69 under 35 U.S.C. § 103(a).
Dependent claims 51, 62, and 72
Claim 51 depends from independent claim 42 and recites, inter alia,
that the computer-readable instructions further cause the computer to
determine a second projected start time and a second projected
end time for the second encounter using second real-time status
information received for the plurality of encounters, wherein the
second scheduled start time is later in time than the first
scheduled start time and the second projected start time is earlier
in time than the first projected start time.
Claims 62 and 72 depend from independent claims 58 and 66, respectively,
and include language substantially similar to the language of claim 51.
Appellants argue that the Examiner erred in rejecting claims 51, 62,
and 72 under 35 U.S.C. § 103(a) because "Brixius [on which the Examiner
relies] in its entirety, fails to contemplate any such presentation wherein the
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Application 11/033,590
second scheduled start time is later in time than the first scheduled start time
and the second projected start time is earlier in time than the first projected
start time" (App. Br. 23). Thus, according to Appellants, "[n]owhere does
Brixius contemplate conducting a task, which was scheduled after a first
task, before the first task" (id.).
The Examiner cites paragraphs 4, 29-31, and 41-51 and Figures 3, 4,
6, and 9 of Brixius as disclosing the argued subject matter (Final Act. 11 ).
We have reviewed the cited portions of Brixius on which the Examiner
relies. And although we agree with the Examiner that Brixius discloses
readjusting and projecting new start/finish times on a Gantt chart, e.g.,
because a resource becomes available that allows a predecessor task to be
completed earlier, we fail to see how, and the Examiner does not adequately
explain how, this discloses or suggests
determin[ing] a second projected start time and a second
projected end time for the second encounter using second real-
time status information received for the plurality of encounters,
wherein the second scheduled start time is later in time than the
first scheduled start time and the second projected start time is
earlier in time than the first projected start time,
as called for in claims 51, 62, and 72.
Therefore, we do not sustain the Examiner's rejection of claims 51,
62, and 72 under 35 U.S.C. § 103(a).
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DECISION
The Examiner's rejection of claims 42--47, 49, 50, 52-58, 60, 61, 63-
68, 70, 71, and 73-78 under 35 U.S.C. § 103(a) is affirmed.
The Examiner's rejection of claims 48, 51, 59, 62, 69, and 72 under
35 U.S.C. § 103(a) 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)(l )(iv).
AFFIRMED-IN-PART
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