Ex Parte Yasnoff

Patent Trial and Appeal BoardJul 24, 2013

11533209 (P.T.A.B. Jul. 24, 2013)

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. 11/533,209 09/19/2006 William A. Yasnoff 8464-88818-US 4079 22242 7590 07/24/2013 FITCH EVEN TABIN & FLANNERY, LLP 120 SOUTH LASALLE STREET SUITE 1600 CHICAGO, IL 60603-3406 EXAMINER KANAAN, MAROUN P ART UNIT PAPER NUMBER 3626 MAIL DATE DELIVERY MODE 07/24/2013 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 WILLIAM A. YASNOFF ____________________ Appeal 2011-008562 Application 11/533,209 Technology Center 3600 ____________________ Before JOSEPH A. FISCHETTI, MICHAEL W. KIM, and NINA L. MEDLOCK, Administrative Patent Judges. MEDLOCK, Administrative Patent Judge. DECISION ON APPEAL Appeal 2011-008562 Application 11/533,209 2 STATEMENT OF CASE Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s final rejection of claims 1-19. We have jurisdiction under 35 U.S.C. § 6(b). SUMMARY OF THE DECISION We AFFIRM.1 BACKGROUND Appellant’s invention is directed to a centralized store of medically- related information (Spec., para. [0006]). Claim 1, reproduced below with added bracketed notations, is representative of the subject matter on appeal: 1. A method comprising: via an information facilitator apparatus: [a] providing an opportunity for an information- possessing entity, other than a first individual, to submit medically-related information regarding the first individual; [b] receiving the medically-related information from the information-possessing entity to provide received medically- related information; [c] arranging for digital storage of the received medically-related information such that the received medically- related information can be later accessed with respect to medically treating and assisting the first individual; [d] arranging for the information-possessing entity to receive compensation in exchange for the information- possessing entity having provided the medically-related information. 1 Our decision will make reference to Appellant’s Appeal Brief (“App. Br.,” filed November 1, 2010) and Reply Brief (“Reply Br.,” filed April 4, 2011), and the Examiner’s Answer (“Ans.,” mailed February 2, 2011). Appeal 2011-008562 Application 11/533,209 3 THE REJECTION The following rejection is before us for review: Claims 1-19 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Lash (US 2005/0010446 A1, pub. Jan. 13, 2005) in view of Dresel (US 2005/0251426 A1, pub. Nov. 10, 2005). ANALYSIS Independent claim 1 and dependent claims 2-16 Appellant variously argues that the Examiner erred in rejecting claim 1 under 35 U.S.C. § 103(a), because a person of ordinary skill in the art would have had no apparent reason to modify Lash to include a direct compensation scheme, as taught by Dresel (App. Br. 11-14 and Reply Br. 2-5). None of Appellant’s arguments is persuasive. The Examiner found that each of elements [a], [b], and [c] of claim 1 is disclosed in Lash (Ans. 5), and the Examiner relied on Dresel as teaching “arranging for the information-possessing entity to receive compensation in exchange for the information-possessing entity having provided the medically-related information,” i.e., element [d], as recited in claim 1 (Ans. 6). In our view, the Examiner’s articulated rationale for modifying the patient medical data system of Lash to include the compensation exchange for medical data, taught in Dresel, i.e., that “[t]he combination would lead to a medical information system that benefits both parties involved; since one [party] obtains medical information and the other [party] receives compensation for such information,” is adequately supported by rational underpinning (Ans. 6). Appeal 2011-008562 Application 11/533,209 4 Modifying Lash, as the Examiner proposes, also is nothing more than a combination of prior art elements according to their established functions, and yields a predictable result. Therefore, it would have been obvious at the time of Appellant’s invention. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007) (“The combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results”). Appellant argues that “Dresel does not propose a system where patient-specific information is stored to make that information available to future medical service providers for that patient” (App. Br. 11). But that argument is not persuasive because it is not commensurate with the scope of the claim. Claim 1 recites “providing an opportunity for an information- possessing entity, other than a first individual, to submit medically-related information regarding the first individual,” and further recites that “the received medically-related information can be later accessed with respect to medically treating and assisting the first individual.” However, there is nothing in the claim that requires the medically-related information to be “patient-specific,” such that only information regarding a particular patient can be later accessed in medically treating and assisting that patient. Appellant’s argument that the teachings of Dresel “relate to non- identifiable machine parameters,” and that “Dresel does not contemplate that the information collected would ever be used in the care of the patient whose machine parameters have been deposited” is similarly unpersuasive (App. Br. 13). Claim 1 stands rejected under 35 U.S.C. § 103 as obvious over the combination of Lash and Dresel, not over Dresel alone. The argument that a Appeal 2011-008562 Application 11/533,209 5 single reference alone does not disclose all the recited claim limitations is not persuasive because nonobviousness cannot be established by attacking the references individually when the rejection is based on the teachings of a combination of references. See In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986). The Examiner relies on Lash, not Dresel, as disclosing that a medical care professional enters transaction data for a medical event associated with an individual patient, i.e., “providing an opportunity for an information-possessing entity, other than a first individual, to submit medically-related information regarding the first individual,” as recited in claim 1 (Ans. 5, citing Lash, para. [0019]). Appellant’s argument that a person of ordinary skill in the art would have had no reason to combine Lash and Dresel because “Lash proposes a highly decentralized approach whereas Dresel proposes an utterly centralized approach” (App. Br. 12, see also Reply Br. 2) also is unpersuasive. The test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference. Instead, the test is what the combined teachings of those references would have suggested to those of ordinary skill in the art. In re Keller, 642 F.2d 413, 425 (CCPA 1981). See also In re Sneed, 710 F.2d 1544, 1550 (Fed. Cir. 1983) (“[I]t is not necessary that the inventions of the references be physically combinable to render obvious the invention under review.”). Here, as described above, modifying the Lash system to include the payment of compensation for medical data, as taught in Dresel, is nothing more than the combination of known elements and yields a predictable result. Therefore, it would have been obvious at the time of Appellant’s invention. See KSR, 550 U.S. at 416. Appeal 2011-008562 Application 11/533,209 6 We also are not persuaded of error on the part of the Examiner by Appellant’s argument that Lash already includes an “economic incentive,” and Dresel’s compensation “increases the costs of implementation without inspiring any particular corresponding benefit” (App. Br. 13, see also Reply Br. 3). Providing compensation in exchange for information, as disclosed in Dresel (see Ans. 6, citing Dresel, para. [0022]), has the benefit of “inducement to provide the medical operating information” (Dresel, para. [0022]) beyond whatever non-financial motivation exists in Lash, making that inducement a reasonable motivation for the combination. Finally, we are not persuaded by Appellant’s argument that the combination of Lash and Dresel will not work “because there are many significant technical challenges that must be surmounted before such a combination will in fact serve as intended” (Reply Br. 4 and 5). Again, the test for obviousness is not whether the features of one reference may be bodily incorporated into the structure of the other reference. See In re Keller, at 425. Not every feature of Dresel must be combined with every feature of Lash. We agree with the Examiner that “providing compensation [for] a service is old and well known in the medical art and adding the compensation feature of Dresel [in the Lash system] does not destroy the teaching of [Lash]” (Ans. 9). In view of the foregoing, we will sustain the Examiner’s rejection of claim 1 under 35 U.S.C. § 103(a). We also will sustain the Examiner’s rejection of dependent claims 2-16, which were not separately argued. Independent claim 17 and dependent claims 18 and 19 Appellant asserts that “[i]ndependent claim 17 can be distinguished on similar grounds” to those set forth with respect to claim 1 (App. Br. 14). We Appeal 2011-008562 Application 11/533,209 7 are not persuaded, for the reasons set forth above, that the Examiner erred in rejecting claim 1 under 35 U.S.C. § 103(a). Therefore, we will sustain the Examiner’s rejection of claim 17 under 35 U.S.C. § 103(a). We also will sustain the Examiner’s rejection of dependent claims 18 and 19, which were not separately argued. DECISION The Examiner’s rejection of claims 1-19 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 mls