Ex Parte Zahlmann et al

Patent Trial and Appeal Board

Apr 6, 2016

11741823 (P.T.A.B. Apr. 6, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
111741,823 0413012007
28524 7590 04/08/2016
SIEMENS CORPORATION
INTELLECTUAL PROPERTY DEPARTMENT
3501 Quadrangle Blvd Ste 230
Orlando, FL 32817
FIRST NAMED INVENTOR
Gudrun Zahlmann
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.
2006Pl8787US01 3775
EXAMINER
LONG,FONYAM
ART UNIT PAPER NUMBER
3626
NOTIFICATION DATE DELIVERY MODE
04/08/2016 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):
ipdadmin.us@siemens.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte GUDRUN ZAHLMANN, ANDREW WRONKA,
PAUL BRANDON, and MARKUS SCHMIDT
Appeal2013-010228 1
Application 11/741,823
Technology Center 3600
Before: MURRIEL E. CRAWFORD, JOSEPH A. FISCHETTI, and
MICHAEL W. KIM, Administrative Patent Judges.
KIM, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF CASE
This is an appeal from the final rejection of claims 1-17. We have
jurisdiction to review the case under 35 U.S.C. §§ 134 and 6.
1 Appellants identify Siemens Medical Solutions USA, Inc. as the real party
in interest. App. Br. 2.
Appeal2013-010228
Application 11/741,823
The invention relates generally to "an interface system enabling
bidirectional exchange of data between a hospital clinical information
system and a clinical trial or research information system." Spec. 1, ll, 8-10.
Claim 1 is illustrative:
1. An interface system enabling bidirectional exchange of
data between a patient care system and a clinical trial or research
information system, comprising:
at least one repository including information associating a
clinical trial with patient identifiers, healthcare worker
identifiers, an indicator of individual status of a patient in said
clinical trial and an identifier of a site involved in said clinical
trial;
a configuration processor enabling a user to determine
medical information comprising clinical data elements of a
particular patient available in a hospital clinical information
system, for automatic forwarding to a clinical trial or research
storage repository by enabling a user to link a source system data
element with a corresponding destination system data element
and to determine metadata describing individual data elements of
said medical information used to automatically identify
individual data elements of said medical information compatible
with the type of patient clinical information used by the clinical
trial to communicate to said clinical trial or research storage
repository and to exclude the identified individual data elements
for patients having an inactive individual status in a trial from
communication; and
an interface processor for automatically forwarding said
medical information of said particular patient, available in said
hospital clinical information system, to said clinical trial or
research storage repository by using information derived from
said at least one repository for automatically determining,
said particular patient is enrolled in a clinical trial and
said particular patient participation in said clinical trial is
still current.
2
Appeal2013-010228
Application 11/741,823
Claims 1-3, 5-7, 10, 11, and 13-15 are rejected under 35 U.S.C.
§ 103(a) as unpatentable over Wallach (US 6,904,434 Bl, iss. June 7, 2005),
Dahlin (US 2004/0260577 Al, pub. Dec. 23, 2004), Moore (US
2007/0061393 Al, pub. Mar. 15, 2007), and Stroup (US 2007/0016440 Al,
Jan. 18, 2007).
Claim 8 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Wallach, Dahlin, Moore, Stroup, and Epstein (US 2002/0049738 Al, pub.
Apr. 25, 2002).
Claim 9 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Wallach, Dahlin, Moore, Stroup, and Hoover (US 2005/0193043 Al, pub.
Sept. 1, 2005).
Claims 4 and 12 are rejected under 35 U.S.C. § 103(a) as unpatentable
over Wallach, Dahlin, Moore, Stroup, and Applicant-Admitted Prior Art.
Claims 16 and 17 are rejected under 35 U.S.C. § 103(a) over Wallach,
Dahlin, Moore, Stroup, Epstein, Hover, and Applicant-Admitted Prior Art.2
We REVERSE.
2 Although the statement of rejection at page 2 of the Final Action indicates
independent claims 16 and 17 are rejected along with claim 1, page 12
asserts that "claims 16-1 7 recite substantially similar limitations to claims
1-15 and are rejected using the same reasoning and rationale." Claims 1-15
are covered by four separate rejections (Final Act. 2-12), however, with
some differing references and some common references. We, thus, interpret
the rejection of claims 16 and 17 to rely on all references applied to any of
claims 1-15, rather than just those applied to claim 1.
3
Appeal2013-010228
Application 11/741,823
ANALYSIS
Claims 1-3, 5-7, 10, 11, and 13-15
We begin by construing the "configuration processor" clause of
independent claim 1. The configuration processor is recited as providing the
function of "enabling a user to determine medical information comprising
clinical data elements of a particular patient available in a hospital clinical
information system, for automatic forwarding to a clinical trial or research
storage repository." That function, thus, is the intended use of the processor.
The limitation recites three steps that are performed, based on the "by
enabling" language. We construe the "by enabling" language to indicate
that a configuration processor found in prior art would need to be configured
to permit a user to a) link a source system data element with a corresponding
destination system data element, b) determine metadata describing
individual data elements of said medical information ... , and c) exclude the
identified individual data elements for patients having an inactive individual
status in a trial from communication. The metadata has the intended use of
being "used to automatically identify individual data elements of said
medical information compatible with the type of patient clinical information
used by the clinical trial to communicate to said clinical trial or research
storage repository."
We are persuaded by Appellants' argument that Stroup describes
removing a patient from a study, but not excluding "identified individual
data elements." Br. 14. Stroup, paragraph 15, upon which the Examiner
relies (Final Act. 4--5), "removes patients from the study," and indicates a
status for each patient that may be "inactive, excluded, and expired." Para.
15. This does not address the recited "individual data elements." Therefore,
4
Appeal2013-010228
Application 11/741,823
the Examiner has not established a prima facie case of obviousness that
includes a configuration processor enabled to "exclude the identified
individual data elements for patients having an inactive individual status in a
trial from communication," as claimed. For this reason, we do not sustain
the rejection ofclaim 1, and of dependent claims 2, 3, 5-7, 10, 11, and
13-15 rejected along with claim 1.
Claims 4, 8, 9, and 12
The Examiner has not established on the record that any of Epstein,
Hover, or Applicant-Admitted Prior Art remedy the shortcomings of Stroup
identified above at claim 1. Therefore, we also do not sustain the rejections
of claims 4, 8, 9, and 12 because of their dependence from claim 1.
Claims 16 and 17
Independent claims 16 and 17 each recite a system with a "display
processor," where the processor is for the purpose of "enabling a user ... to
exclude the identified individual data elements for patients having an
inactive individual status in a trial from communication." As functional
language, we are required to give this language weight to the extent that the
prior art is or is not capable of meeting the limitation. In re Schreiber, 128
F.3d 1473, 1477-78 (Fed. Cir. 1997). An obviousness rejection would need
to show a system capable of enabling a user to exclude individual data
elements from data to be communicated.
Similar to claim 1, the Examiner appears to rely only on paragraph 15
of Stroup as disclosing the excluding of data elements. Final Act. 12. In
contrast, however, Stroup only excludes patients, not data elements, and the
5
Appeal2013-010228
Application 11/741,823
Examiner has provided no further analysis or reasoning to indicate that
Stroup is capable of excluding individual data elements of information. For
this reason, we do not sustain the rejection of claims 16 and 17.
DECISION
We REVERSE the rejections under 35 U.S.C. § 103(a) of claims
1-17.
REVERSED
6