Ex Parte Jagannathan et al

Patent Trial and Appeal Board

Mar 27, 2017

13928776 (P.T.A.B. Mar. 27, 2017)

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.
13/928,776 06/27/2013 Vasudevan Jagannathan M0002-1043 8167
24208 7590
Robert Plotkin, P.C.
1 Broadway, 14th Floor
Cambridge, MA 02142
03/29/2017 EXAMINER
STEVENS, ROBERT
ART UNIT PAPER NUMBER
2164
NOTIFICATION DATE DELIVERY MODE
03/29/2017 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):
mail@rplotkin.com
hdas@rplotkin.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte VASUDEVAN JAGANNATHAN and JUERGEN FRITSCH
Appeal 2016-0083571
Application 13/928,776
Technology Center 2100
Before ELENI MANTIS MERCADER, LARRY J. HUME, and
ALEX S. YAP, Administrative Patent Judges.
YAP, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the final rejection of
claims 1-5, 7-12, and 14,2 which are all the claims pending in this
application. We have jurisdiction under 35 U.S.C. § 6(b)
We reverse.
1 According to Appellants, the real party in interest is MModal IP, LLP.
(Br. 1.)
2 Claims 6 and 13 were cancelled previously. (Br. 28, 30.)
Appeal 2016-008357
Application 13/928,776
STATEMENT OF THE CASE
Introduction
Appellants’ disclosed and claimed inventions “are directed to
computer systems for implementing dynamic, data-driven workflows within
healthcare and other environments.” (June 27, 2013 Specification (“Spec.”)
13.)
Claim 1 is illustrative, and is reproduced below (with minor
reformatting):
1. A method performed by at least one computer processor, the
method comprising:
(A) determining that a trigger condition defined by a
trigger condition definition of a workflow definition
has been satisfied;
(B) in response to the determination in (A):
(B)(1) using a process defined by a data extraction
process definition associated with the
workflow definition to extract, from at least
one data source, data defined by a data
definition associated with the workflow
definition;
(B)(2) storing the extracted data in an evidence
sheet; and
(B)(3) applying, to the extracted data, steps defined
by a workflow process definition associated
with the workflow definition to generate first
workflow output.
Prior Art and Rejection on Appeal
The Examiner relies on the following prior art as evidence in rejecting
the claims on appeal:
Martin et al.
(“Martin”) US 8,805,703 B2 Aug. 12, 2014
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Appeal 2016-008357
Application 13/928,776
Claims 1-5, 7-12, and 14 stand rejected under 35 U.S.C. § 102(e) as
being anticipated by Martin. (See Final Office Action (mailed Sept. 24,
2015) (“Final Act.”) 3-6.)
ANALYSIS
We have reviewed the Examiner’s rejections in light of Appellants’
arguments the Examiner erred. We are persuaded the Examiner erred in
rejecting the claims on appeal for the reasons discussed, infra.
With respect to claim 1, the Examiner finds Martin anticipates the
claim. (Final Act. 3-6.) According to the Examiner, Martin disclose “using
a process ... to extract, from at least one data source . . .” and “applying, to
the extracted data, steps defined by ... to generate first workflow output.”
(Final Act. 4, emphasis omitted.) Specifically, the Examiner explains:
[T]he cited passage in Martin (col. 6 lines 23-30) discusses the
extraction of “specified” data from source records, and providing
that extracted data to corresponding medical care members (e.g.,
a billing department). It states that “some or all of the data
record” can be sent. Furthermore, the ensuing passage at col. 6
lines 30-59 discusses the extraction of required data (and the
omission of unrelated data), and subsequently providing the
extracted data to a billing department in an exemplary
embodiment. It mentions data overload and the need to reduce
the data transmitted. The billing department only gets the portion
of the data it needs because of the workflow definition that
describes what it needs.
(Ans. 5.) Appellants contend Martin does not disclose “applying to the
extracted data “steps defined by a workflow process definition ... to
generate [a] first workflow output.” (Br. 18—20.) According to Appellants,
this limitation is not disclosed in Martin because “[ojnce the system in
Martin extracts data, the data is sent to a recipient without application of any
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Appeal 2016-008357
Application 13/928,776
steps defined by a workflow process definition as recited in the claims.”
(Br. 19.)
Claim 1 requires the “first workflow output” of step (B)(3) be
generated from the extracted data from step (B)(1). Figure 3 of Martin is
reproduced below.
320
\ 310\
Oafs 1
Dissemination
Engine
Date 2
Date 3
Data 4
370
Data 5
Oafs 6 o /
Figure 3
Figure 3 “conceptually illustrates the operation of the dissemination engine
120.” (Martin, 6:18—19.) The Examiner finds the Dissemination Engine
310 uses the dissemination scripts (e.g., Billing Extraction Script 350 and
Research DB Extraction Script 360) to extract some or all of data record 320
“and subsequently providing the extracted data to a billing department in an
exemplary embodiment.” (Ans. 5.) However, based on the record before us,
the Examiner has not shown that before the extracted data is provided to
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Appeal 2016-008357
Application 13/928,776
Billing Department 330 or Research Database 340, step (B)(3) of claim 1
(“applying, to the extracted data, steps defined by ... to generate first
workflow output”) is performed. In other words, the record does not show
that Martin discloses “applying, to the extracted data, steps defined by a
workflow process definition ... to generate first workflow output.” While
the Examiner finds that due to “data overload and the need to reduce the data
transmitted[, t]he billing department only gets the portion of the data it needs
because of the workflow definition that describes what it needs,” (Ans. 5),
this finding is insufficient for anticipation.3 Eli Lilly & Co. v. Zenith
Goldline Pharms., Inc., 471 F.3d 1369, 1375 (Fed. Cir. 2006) (an
anticipating reference must disclose each and every element of the claimed
invention either explicitly or inherently.)
For the foregoing reasons, we are persuaded of at least one Examiner
error in the rejection of claim 1, and on this record, we do not sustain the
35 U.S.C. § 102 rejection of claim l.4 Independent claim 8 contains a
similar limitation at issue, and the Examiner cites to the same passages of
Martin for the limitation, and makes similar findings. (Final Act. 6 (“Claims
8—12 and 14 are substantially similar to claims 1—5 and 7, respectively, and
3 In case of further prosecution, the Examiner should consider whether an
obviousness rejection over Martin would be appropriate in view of the
Examiner’s finding. While the Board is authorized to reject claims under
37 C.F.R. § 41.50(b), no inference should be drawn when the Board elects
not to do so. See Manual of Patent Examining Procedure (MPEP)
§ 1213.02.
4 Because we do not sustain the Examiner’s rejection for the reasons
discussed herein, we need not address Appellants’ further arguments. See
Beloit Corp. v. Valmet Oy, 742 F.2d 1421, 1423 (Fed. Cir. 1984) (finding an
administrative agency is at liberty to reach a decision based on “a single
dispositive issue”).
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Appeal 2016-008357
Application 13/928,776
therefore likewise rejected”)) Thus, for the same reason, we do not sustain
the 35 U.S.C. § 102 rejection of independent claim 8, as well as claims 2-5,
7, 9-12, and 14, which depend from either independent claim 1 or 8.
DECISION
We reverse the decision of the Examiner to reject claims 1-5, 7-12,
and 14.
REVERSED
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