Ex Parte Olchanski et al

Patent Trial and Appeal Board

Nov 16, 2012

09996475 (P.T.A.B. Nov. 16, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte VLADISLAV OLCHANSKI, VIKTOR E. BOVBJERG,
STEPHEN E. ZIMBERG, LOUIS F. ROSSITER, VADIM POLYAKOV,
and JENNIFER S. GREEN
____________

Appeal 2010-001333
Application 09/996,4751
Technology Center 2400
____________

Before THU A. DANG, CAROLYN D. THOMAS, and
ELENI MANTIS MERCADER, Administrative Patent Judges.

THOMAS, Administrative Patent Judge.

DECISION ON APPEAL

1 The real party in interest is Chironet, LLC.
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STATEMENT OF THE CASE
Appellants seek our review under 35 U.S.C. § 134(a) of the
Examiner’s final decision rejecting claims 1-21 and 23-30, which are all the
claims remaining in the application. Claim 22 is cancelled. We have
jurisdiction over the appeal under 35 U.S.C. § 6(b).
We AFFIRM.
The present invention relates generally to creation and management of
feedback reports for a benchmarking process. See generally Spec., 1:9-10.
Claim 1 is illustrative:
1. A method for collecting and reporting outcomes data for
benchmarking medical procedures comprising the steps of:
collecting first outcomes data sets for one or more
indicators associated with one or more medical procedures for a
plurality of individuals in a first period of time via one or more user
interfaces located at one or more user entities;
establishing a norm based at least in part on an outcomes
data group, the outcomes data group comprising a plurality of the first
outcomes data sets for the one or more indicators associated with one
of the one or more medical procedures for the plurality of individuals;
collecting second outcomes data sets for the one or more
indicators associated with the one of the one or more medical
procedures for the plurality of individuals in a second period of time
via the one or more user interfaces located at the one or more user
entities;
converting at least some of the second outcomes data sets
for the one or more indicators associated with the one of the one or
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more medical procedures for the plurality of individuals into at least
one outcomes result;
comparing a selected one of the at least one outcomes
result to the norm; and
generating at least one outcomes monitoring report
comprising the selected one of the at least one outcomes result and the
norm.

Appellants appeal the following rejection:

Claims 1-21 and 23-30 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Gatts (US 3,675,640, July 11, 1972), Menzie (US
6,650,932 B1, Nov. 18, 2003), and Lin (US 5,835,384, Nov. 10, 1998).

ANALYSIS
Claims 1-21 and 23-30

Appellants essentially argue claims 1-21and 23-30 as a group (App.
Br. 12-77). For claims 2-21 and 23-30, Appellants repeat the same argument
made for claim 1. We will, therefore, treat claims 2-21 and 23-30 as
standing or falling with claim 1. See 37 C.F.R. § 41.37(c)(1)(vii). See also
In re Young, 927 F.2d 588, 590 (Fed. Cir. 1991).

Issue 1: Did the Examiner err in finding that Menzie is prior art?

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Appellants contend that “the invention disclosed and claimed in the
present application was conceived prior to May 15, 2000” (App. Br. 14) and
“Menzie is not a proper prior art reference” (id. at 15).
The Examiner found that “[t]he evident is not enough to satisfy issues
of diligence or conception to practice or an actual reduction to practice”
(Ans. 9.) The Examiner further found that “[w]ithout correlating each
limitations of the independent and dependent claims (e.g., mapping all
limitations) Appellant[s] fail[] to show possession of every feature recited in
the count” (id. at 10).
After reviewing Appellants’ Declarations, as well as the relevant
precedent and authorities, we agree with the Examiner that Appellants’
Declarations are improper and unpersuasive for the reasons that follow.
Title 37 C.F.R. § 1.131 provides that a party, in certain circumstances,
may establish, by a showing of fact, invention prior to a reference applied in
a rejection and thus remove that reference as available prior art. In
connection with the required showing, 37 C.F.R. § 1.131(b) specifies:
The showing of facts shall be such, in character and weight, as to establish
reduction to practice prior to the effective date of the reference, or
conception of the invention prior to the effective date of the reference
coupled with due diligence from prior to said date to a subsequent reduction
to practice of the filing of the application. Original exhibits of drawings or
records, or photocopies thereof, must accompany and form part of the
affidavit or declaration or their absence must be satisfactorily explained.
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For starters, we focus on the issue of conception. As comprehensively
set forth by the Federal Circuit in Burroughs Wellcome Co. v. Barr Labs.,
Inc., 40 F.3d 1223, 1227-28 (Fed. Cir. 1994):
Conception is the touchstone of inventorship, the completion of the
mental part of invention. Sewall v. Walters, 21 F.3d 411, 415, 30
USPQ2d 1356, 1359 (Fed. Cir. 1994). It is “the formation in the mind
of the inventor, of a definite and permanent idea of the complete and
operative invention, as it is hereafter to be applied in practice.”
Hybritech Inc. v. Monoclonal Antibodies, Inc., 802 F.2d 1367, 1376,
231 USPQ 81, 87 (Fed. Cir. 1986) (citation omitted). Conception is
complete only when the idea is so clearly defined in the inventor's
mind that only ordinary skill would be necessary to reduce the
invention to practice, without extensive research or experimentation.
Sewall, 21 F.3d at 415, 30 USPQ2d at 1359; see also Coleman v.
Dines, 754 F.2d 353, 359, 224 USPQ 857, 862 (Fed. Cir. 1985)
(conception must include every feature of claimed invention).
Because it is a mental act, courts require corroborating evidence of a
contemporaneous disclosure that would enable one skilled in the art to
make the invention. Coleman v. Dines, 754 F.2d at 359, 224 USPQ at
862.

Thus to establish conception, the record must show that the inventors
themselves had a permanent idea of every feature of the claimed invention
and provide corroborating evidence that would enable one of ordinary skill
in the art to make the invention.
Here, we have testimony from the inventors that they conceived of the
claimed invention prior to the effective date of May 15, 2000, and
attachments offered as evidence of conception in the form of material
characterized as Exhibit A (Inv. Decl. p. 2). The Examiner found that such
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evidence did not explain how the pages of Exhibit A were relevant to the
specific claim limitations. It is necessary for Appellants to affirmatively
prove that the invention now claimed was actually conceived prior to the
critical date and that due diligence was taken to constructively reduce that
invention to practice by the filing of a patent application directed to that
which was conceived. We find that this has not been done. Given that
Appellants failed to sufficiently relate the claims (i.e., the invention) to the
Exhibits in the Declarations, we agree with the Examiner that such evidence
is insufficient to prove conception.
The Examiner also notes that Appellants did not account for the entire
period during which diligence is required (see Ans. 12-15). We agree.
The Declarants’ assertion of diligence is not supported by evidence
which shows diligence continuously up to the date of filing the present
application. The burden of proof to show diligence rests with Appellants,
not the Examiner or the Board, insofar as they claim under 37 C.F.R. § 1.131
that Menzie is not prior art. While Appellants need only show reasonable
diligence, and do not have to show work toward a constructive reduction to
practice 24 hours a day, 7 days a week, time not accounted for during the
period for diligence weighs against a successful showing of diligence. See,
e.g., In re Mulder, 716 F.2d 1542, 1545 (Fed. Cir. 1983) (a two-day period
with no proof of diligence held fatal to a showing of diligence - “[L]iberality
cannot be extended to the point of eliminating all proof of diligence, no
matter how short the period to be covered.”); In re Nelson, 420 F.2d 1079,
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1081 (CCPA 1970) (unexplained two-month delay fatal to a showing of
diligence). See also Griffith v. Kanamaru, 816 F.2d 624, 626 (Fed. Cir.
1987) (party must account for entire period); Gould v. Schawlow, 363 F.2d
908, 918-19 (CCPA 1966) (“[m]erely stating that there were no weeks or
months that he ‘did not work on the laser’ is not enough, absent supporting
facts showing specifically what that ‘work’ consisted of and when it was
performed,” and “[t]he party chargeable with diligence must account for the
entire period during which diligence is required.”).
Here, the Examiner provided detailed findings and conclusions as to
why Appellants’ Declarations are insufficient to establish diligence (Ans.
11-15), which we adopt and endorse. For the foregoing reasons, Appellants
have not persuaded us that their Declarations under 37 C.F.R. § 1.131 are
proper, nor have they persuaded us that their Declarations were sufficient to
antedate the Menzie reference. Accordingly, we find that the Menzie
reference is prior art available against Appellants’ claimed invention.

Issue 2: Did the Examiner err in finding that the combination of cited
art teaches and/or suggests the claimed limitations as set forth below?
Appellants contend that:
(1) “Gatts fails to disclose, or even suggest, collecting outcomes data
sets ‘associated with one or more medical procedures for a plurality of
individuals,’” (App. Br. 16);
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(2) “Gatts discloses providing a preestablished norm from a memory
bank and fails to disclose . . . ‘establishing a norm based at least in part on
an outcomes data group,” (App. Br. 17);
(3) Menzie “fails to disclose . . . ‘collecting second outcomes data sets
. . .” (App. Br. 18) and “Gatts would teach away from Menzie” (id. at 19);
(4) Gatts and Menzie fail to disclose “a method for medical
benchmarking using one or more user interface” (App. Br. 20); and
(5) “Gatts and Menzie teach away from Lin” (App. Br. 21-22).

Based on the record before us, we find no error in the Examiner’s
obviousness rejection of representative claim 1 essentially for the reasons
indicated by the Examiner. We refer to, rely on, and adopt the Examiner's
findings and conclusions set forth in the Answer (see Ans. 15-31). Our
discussions here will be limited to the following points of emphasis.
Gatts discloses “recordation of test data from large numbers of
individuals to establish dynamic physical performance norms for patients of
many varied types” (Abstract). Gatts further discloses “a pretesting state . . .
then he is subjected to a pre-programmed exertional or exercise test” (col. 7,
ll. 18-21). In other words, Gatts discloses collecting test data (during
pretesting and exercise testing) relating to a medical procedure from a
plurality of individuals and establishing norms for patients of many varied
types.
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Similarly, Menzie discloses using “a plurality of heart rate monitors . .
. to collect physiological data of a patient” (col. 19, l. 56 to col. 20 l. 1).
Also, Lin discloses “inter-laboratory quality control monitoring and
reporting for validation of laboratory analyses” (col. 1, ll. 9-11). Menzie’s
procedure “is employed to a large extent in laboratories which analyze test
samples for medical purposes” (col. 1, l. 27-29).
We find that Appellants’ arguments do not take into account what the
collective teachings of the prior art would have suggested to one of ordinary
skill in the art and is therefore ineffective to rebut the Examiner’s prima
facie case of obviousness. See In re Keller, 642 F.2d 413, 425 (CCPA 1981)
(The test for obviousness is not whether the features of a secondary
reference may be bodily incorporated into the structure of the primary
reference; nor is it that the claimed invention must be expressly
suggested in any one or all of the references. Rather, the test is what
the combined teachings of the references would have suggested to
those of ordinary skill in the art.)

(citations omitted, emphasis added). This reasoning is applicable here.

We find that the Examiner has shown that the combined teachings of
Gatts, Menzie, and Lin teach and/or suggest collecting data sets, establishing
norms, providing outcomes result, comparing outcomes to norms, and
generating reports (see Ans. 15-31).
Appellants further argue that the Gatts and Menzie references “teach
away” from Lin (App. Br. 21.) However, we do not find, and Appellants do
not establish, that Lin’s quality control techniques criticizes, discredits, or
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otherwise discourages dynamic health testing and evaluations as taught by
Gatts and Menzie. “A reference may be said to teach away when a person of
ordinary skill, upon [examining] the reference, would be discouraged from
following the path set out in the reference, or would be led in a direction
divergent from the path that was taken by the applicant.” Para-Ordnance
Mfg., v. SGS Importers Int’l, Inc., 73 F.3d 1085, 1090 (Fed. Cir. 1995)
(quoting In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994)). We do not find
this to be the situation before this Board.
In view of the above discussion, since Appellants have not
demonstrated that the Examiner erred in finding the argued limitations in the
disclosure of Gatts, Menzie, and Lin, the Examiner’s 35 U.S.C. § 103(a)
rejection of representative independent claim 1, as well as claims 2-21 and
23-30 not separately argued by Appellants, is sustained.

DECISION
We affirm the Examiner’s § 103 rejection.

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No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).
AFFIRMED

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