Ex Parte Moussavi et al

Patent Trial and Appeal Board

Nov 15, 2012

11380459 (P.T.A.B. Nov. 15, 2012)

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.
11/380,459 04/27/2006 Mahcameh Moussavi CRNI.125929 2610
46169 7590 11/16/2012
SHOOK, HARDY & BACON L.L.P.
(Cerner Corporation)
Intellectual Property Department
2555 GRAND BOULEVARD
KANSAS CITY, MO 64108-2613
EXAMINER
FUELLING, MICHAEL
ART UNIT PAPER NUMBER
3626
MAIL DATE DELIVERY MODE
11/16/2012 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 MAHCAMEH MOUSSAVI and MARK A. HOFFMAN
____________________

Appeal 2011-005623
Application 11/380,459
Technology Center 3600
____________________

Before MURRIEL E. CRAWFORD, ANTON W. FETTING, and
NINA L. MEDLOCK, Administrative Patent Judges.

MEDLOCK, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2011-005623
Application 11/380,459

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STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 1-5, 11, 13-18, 20-22, and 25. We have jurisdiction
under 35 U.S.C. § 6(b).

STATEMENT OF THE DECISION
We AFFIRM-IN-PART.1

BACKGROUND
Appellants’ invention relates to computerized systems and methods
for electronically collecting newborn screening results and providing for the
automatic dissemination of results to intended recipients (Spec., para.
[0022]).
Claim 1, reproduced below with added bracketed notations, is
representative of the subject matter on appeal:
1. One or more computer-storage media storing
computer-useable instructions that, when used by
one or more computing devices, cause the one or
more computing devices to perform a method in a
clinical computing environment for
communicating a newborn screening result to one
or more recipients, the method comprising:
[a] receiving a newborn screening result at a
newborn screening manager, wherein the newborn
screening manager is configured to communicate
with at least one of a state laboratory performing

1 Our decision will make reference to the Appellants’ Appeal Brief
(“App. Br.,” filed November 24, 2010) and Reply Brief (“Reply Br.,” filed
February 7, 2011), and the Examiner’s Answer (“Ans.,” mailed
December 6, 2010).
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newborn screening and a state office responsible
for coordinating newborn screening results;
[b] storing the newborn screening result;
[c] identifying one or more recipients of the
newborn screening result;
[d] communicating the newborn screening
result to the one or more recipients by:
[d.1] providing a notification of an
availability of the newborn screen result to the one
or more recipients,
[d.2] receiving, from at least one of the one
or more recipients, a request to access the newborn
screening result, and
[d.3] communicating the newborn screening
result to the at least one of the one or more
recipients based on the request;
[e] determining that the newborn screening
result has not been accessed by at least one of the
one or more recipients within a predetermined
period of time after providing the notification of
the availability of the newborn screening result;
[f] generating an alert notification based on
determining that the newborn screening result has
not been accessed within the predetermined period
of time; and
[g] communicating the alert notification to at
least one of following: the state laboratory and the
state office.

THE REJECTIONS
The following rejections are before us for review:
Claims 1-5, 11, 13-18, 20-22, and 25 stand rejected under
35 U.S.C. § 101 as being directed to non-statutory subject matter.
Claims 1-5, 11, 13-18, 20-22, and 25 stand rejected under
35 U.S.C. § 103(a) as being unpatentable over Cross (US 2004/0030578 A1,
pub. Feb. 12, 2004) in view of Hoffman (US 2004/0199333 A1, pub. Oct. 7,
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Application 11/380,459

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2004) and further in view of Wolfson (“Postrelational Database
Implementation for Newborn Screening and Tracking,” Journal of Medical
Systems, Vol. 12, No.2, 1988).
ANALYSIS
Non-Statutory Subject Matter
We are not persuaded of error on the part of the Examiner by
Appellants’ argument that by defining “computer-readable media” to include
“computer storage media” and “communication media” and further defining
“communication media” to include carrier waves and data signals, the
Specification excludes carrier waves and data signals as “computer storage
media” (App. Br. 7-8 and Reply Br. 4). In particular, we cannot agree with
Appellants that the Specification includes a definition of the term “computer
storage media.” Instead, the Specification merely lists examples of
computer storage media, and explicitly states that this listing is not
exhaustive, i.e., “[c]omputer storage media may include, without limitation, .
. . .” (Spec., para. [0027]).
To determine whether claims are directed to statutory matter, we give
the claims their broadest reasonable interpretation in light of the
specification. See In re Zletz, 893 F.2d 319, 321 (Fed. Cir. 1989). Here, we
agree with the Examiner that the term “computer storage media,” when
given its broadest reasonable interpretation in light of the Specification,
includes transitory embodiments, which are non-statutory subject matter
(Ans. 3). See In re Nuijten, 500 F.3d 1346, 1356-57 (Fed. Cir. 20007)
(transitory embodiments are not directed to statutory subject matter).
Therefore, we will sustain the Examiner’s rejection of claims 1-5, 11, 13-18,
20-22, and 25 under 35 U.S.C. § 101.
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Obviousness
Independent claim 1 and dependent claims 2-5, 11, and 13-18
Appellants argue that the Examiner erred in rejecting claim 1 under
35 U.S.C. § 103(a) because none of Cross, Hoffman, and Wolfson discloses
or suggests “determining that the newborn screening result has not been
accessed by at least one of the one or more recipients within a predetermined
period of time after providing the notification of the availability of the
newborn screening result” and “generating an alert notification based on
determining that the newborn screening result has not been accessed within
the predetermined period of time,” i.e., limitations [e] and [f], as recited in
claim 1 (App. Br. 8-12 and Reply Br. 5-8). The Examiner maintains that the
rejection is proper and further asserts that Appellants have acknowledged
that these limitations would have been known to one of ordinary skill in the
art:
On pp[.] 9 and 10 of its arguments filed on May 3, 2010,
appellant [sic] represented the “predetermined period of time”
would have been obvious to one of ordinary skill in the art. If
one skilled in the art knows what the period of time should be,
one skilled in the art also knows how to make the obvious
determination and notifications, which use such period.

(Ans. 8). The Examiner also maintains that “the non-final and Final
rejections were clear that the secondary reference Hoffman teaches the
notification aspects [0046]” (Ans. 8). We agree with Appellants.
First, although the Examiner implies otherwise, Appellants’
arguments in their May 3, 2010 Response were not made in response to an
obviousness rejection; instead, Appellants’ arguments were made in
response to the Examiner’s rejection of claim 1 under 35 U.S.C. § 112,
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second paragraph, as indefinite. Responding to that rejection, Appellants
explained that “one skilled in the art would understand what period of time
within which newborn screening results should be reviewed . . . to ensure
timely treatment of newborns in which a disorder has been detected,” and
Appellants argued that the Examiner’s rejection of claim 1 as indefinite for
failing to describe how to calculate the “predetermined period of time”
should be withdrawn (Response filed May 3, 2010 at 9). We cannot agree
with the Examiner that Appellants have admitted that limitations [e] and [f]
of claim 1 that Appellants now maintain are not disclosed in the cited
references would have been obvious to one of ordinary skill in the art.
Instead, Appellants only acknowledged in their May 3, 2010 Response that
one of skill in the art would know the “predetermined period of time.”
We also cannot agree that paragraph [0046] of Hoffman, on which the
Examiner relies, discloses or suggests limitations [e] and [f], as recited in
claim 1. Hoffman is directed to a system for providing information about
the risk of an atypical clinical event based on genetic testing (Abstract), and
describes in paragraph [0046] that if a genetic test result of a patient is
indicative of a significant risk, a notification message is generated warning
the clinician of the patient’s genetic mutation and its effect. However,
Hoffman does not disclose or suggest in paragraph [0046] that the
notification is generated based on “determining that the [test result] has not
been accessed within the predetermined period of time,” as recited in claim
1.
In view of the foregoing, we will not sustain the Examiner’s rejection
of claim 1 under 35 U.S. C. § 103(a). We also will not sustain the
Examiner’s rejection of dependent claims 2-5, 11, and 13-18.
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Independent claim 20 and dependent claims 21 and 22
Appellants argue that the Examiner erred in rejecting claims 20-22
under 35 U.S.C. § 103(a) because none of the cited references discloses or
suggests “providing the list of newborn screening results pending review to
at least one of a state laboratory performing newborn screening and a state
office responsible for coordinating newborn screening results,” as recited in
claim 20. The Examiner relies on paragraphs [0057] and [0058] of Cross as
disclosing this feature (Ans. 4). We have reviewed these portions of Cross,
and conclude that the Examiner’s finding is reasonable and supported.
Cross discloses in paragraph [0058] that if patient data, e.g., patient
laboratory test results, qualifies for review, the patient data is routed to a
review hierarchy, which is an arrangement of review queues, i.e., a sequence
of stored result values awaiting review and approval. Cross describes in
paragraph [0058] that one or more users are assigned to each review queue
for monitoring, review, and secondary verification, and further describes in
paragraph [0059] that a “user” may be, but is not limited to, “a physician, a
clinical laboratory scientist, a medical technologist, a lab technician, a
pathologist, a chemist, a microbiologist, a laboratory assistant, a
phlebotomist or any other person with authority to approve result values.”
Cross does not disclose that the laboratory test results are “newborn
screening results” or that the list of screening results pending review is
provided “to at least one of a state laboratory performing newborn screening
and a state office responsible for coordinating newborn screening results.”
However, we agree with the Examiner that Appellants’ characterization of
the test results as “newborn screening results” and of the entity responsible
for coordinating the results as a “state” laboratory and a “state” office is non-
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functional descriptive material that does not affect the operation of the
method, and which cannot be relied on for patentability (Ans. 5).
Therefore, we will sustain the Examiner’s rejection of claim 20 under
35 U.S.C. § 103(a). We also will sustain the Examiner’s rejection of
dependent claims 21 and 22, which were not separately argued.

Claim 25
Claim 25 is substantially similar to claim 20 and recites computer-
storage media storing computer-useable instructions that cause a computing
device to perform a method comprising, inter alia, “automatically tracking
whether recipients have accessed newborn screening results from the central
database; and communicating at least one second work queue to one or more
third computing devices of a state office responsible for a newborn screening
program, the second work queue allowing state personnel to view newborn
screening results pending review by a recipient.”
Appellants’ arguments with respect to claim 25 are substantially
identical to Appellants’ arguments with respect to claim 20 (App. Br. 14-
15). Because we found those arguments unpersuasive with respect to claim
20, we find them equally unpersuasive with respect to claim 25. Therefore,
we will sustain the Examiner’s rejection of claim 25 under 35 U.S.C. § 103.

DECISION
The Examiner’s rejection of claims 1-5, 11, 13-18, 20-22, and 25
under 35 U.S.C. § 101 is affirmed.
The Examiner’s rejection of claims 1-5, 11, and 13-18 under
35 U.S.C. § 103(a) is reversed.
Appeal 2011-005623
Application 11/380,459

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The Examiner’s rejection of claims 20-22 and 25 under 35 U.S.C.
§ 103(a) 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-IN-PART

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