Robbins, Jeffrey et al.

Patent Trials and Appeals Board

Jun 2, 2020

13536333 - (D) (P.T.A.B. Jun. 2, 2020)

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.
13/536,333 06/28/2012 Jeffrey Robbins L0734.70000US00 1475
23628 7590 06/02/2020
WOLF GREENFIELD & SACKS, P.C.
600 ATLANTIC AVENUE
BOSTON, MA 02210-2206
EXAMINER
BLOOMQUIST, KEITH D
ART UNIT PAPER NUMBER
2178
NOTIFICATION DATE DELIVERY MODE
06/02/2020 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):
Patents_eOfficeAction@WolfGreenfield.com
WGS_eOfficeAction@WolfGreenfield.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte JEFFREY ROBBINS, GABRIEL N. SCHAFFER,
BRETT J. COHEN, and ARVIND GOYAL
____________

Appeal 2019-001379
Application 13/536,333
Technology Center 2100
____________

Before JOSEPH L. DIXON, ST. JOHN COURTENAY III, and
LARRY J. HUME, Administrative Patent Judges.

COURTENAY, Administrative Patent Judge.

DECISION ON APPEAL
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s
Non-Final Rejection of claims 1–10, 12–22, 24, 53, 55–62, 64, and 66–77,
which constitute all the claims pending in this application. Claims 11, 23,
25–52, 54, 63, and 65 are canceled. We have jurisdiction over the pending
claims under 35 U.S.C. § 6(b).
We affirm.

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42(a). According to Appellant, the real party in interest
is Livedata, Inc. See Appeal Br. 3.

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STATEMENT OF THE CASE2
Introduction
Embodiments of Appellant’s invention relate generally to “enhancing
the safety of surgical procedures and reducing the risk of errors in operating
rooms.” (Spec. 3).
Representative Independent Claim 1
1. A processor-driven method of providing a medical
checklist to a terminal device, the method performed by
operating one or more processors to execute at least one
processor programmed to:
receive a notification that a trigger event has occurred, the
notification comprising an event identifier, a case identifier and
one or more event data items;
obtain a checklist template from a checklist template
repository based on at least one of: the event identifier, the case
identifier and at least one of the one or more event data items,
[L] wherein the checklist template comprises a first plurality of
prompts;
create the medical checklist from the checklist template by
selecting a second plurality of prompts from the first plurality of
prompts of the checklist template based on the case identifier and
at least one of the one or more event data items, the medical
checklist associated with at least one surgical procedure, the
second plurality of prompts being a subset of the first plurality
of prompts and comprising:
at least one first prompt populated with data based
on the event identifier, the case identifier and/or the one or
more event data items;

2 We herein refer to the Non-Final Office Action, mailed May 3, 2018
(“Non-Final Act.”); Appeal Brief, filed June 7, 2018 (“Appeal Br.”);
Supplemental Appeal Brief (correcting the Summary of Claimed Subject
Matter), filed June 29, 2018 (Supp. Appeal Br.); and the Examiner’s
Answer, mailed Oct. 5, 2018 (“Ans.”).
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at least one second prompt requiring at least one
action to be performed in furtherance of the at least one
surgical procedure and/or a response to be provided to
complete the at least one second prompt, and wherein a
user is prevented from proceeding until the at least one
second prompt is completed; and
display at least a portion of the medical checklist on a
terminal device.
Appeal Br. 16, CLAIMS APPENDIX (Bracketed lettering added and disputed
limitation “L” emphasized).
Evidence
The prior art relied upon by the Examiner as evidence is:
Name Reference Date
Sullivan et al. US 2005/0015276 A1 Jan. 20, 2005
Bauer et al. US 2007/0136218 A1 June 14, 2007
Haddad US 2009/0089081 A1 Apr. 2, 2009
Sweeney US 2011/0137680 A1 June 9, 2011
Woolford US 2012/0323597 A1 Dec. 20, 2012

Rejections A, B, and C under Pre-AIA 35 U.S.C. § 103(a)
Rej Claims
Rejected
Pre-AIA
35 U.S.C. §
Reference(s)/Basis
A 1–5, 7–10,
12–17, 19–
22, 24, 53,
64, 74–77
103(a) Sweeney, Haddad, Woolford
B 55–62,
66–73
103(a) Sweeney, Haddad, Woolford, Sullivan
et al. (“Sullivan”)
C 6, 18 103(a) Sweeney, Haddad, Woolford, Bauer et
al. (“Bauer”)
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Issue on Appeal
Did the Examiner err in rejecting claims 1–10, 12–22, 24, 53, 55–62,
64 and 66–77 under pre-AIA 35 U.S.C. § 103(a), as being obvious over the
combined teachings and suggestions of the cited references?

ANALYSIS
We have considered all of Appellant’s arguments and any evidence
presented. We highlight and address specific findings and arguments for
emphasis in our analysis below.

Rejection A of Claims 1–5, 7–10, 12–17,
19–22, 24, 53, 64, and 74–77 under § 103(a)

Issues: Under 35 U.S.C. § 103(a), we focus our analysis on: (1) the
disputed limitation L regarding Rejection A of claims 1–5, 7–10, 12–17,
19–22, 24, 53, 64, and 74–77, and, (2) the Examiner’s reasons for combining
the cited references. We consider issues (1) and (2) seriatim:
1. Did the Examiner err by finding that Sweeney, Haddad, and
Woolford collectively teach or suggest the disputed, dispositive limitation L:

[L] wherein the checklist template comprises a first
plurality of prompts;
create the medical checklist from the checklist template by
selecting a second plurality of prompts from the first plurality of
prompts of the checklist template based on the case identifier and
at least one of the one or more event data items, the medical
checklist associated with at least one surgical procedure, the
second plurality of prompts being a subset of the first plurality
of prompts,
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within the meaning of representative independent claim 1?3 (Emphasis
added.) See Non-Final Act. 2–5.
2. Did the Examiner err in combining Sweeney, Haddad, and
Woolford because, as alleged by Appellant, the Examiner did not provide an
articulated reason or proper motivation to combine the references? See
Appeal Br. 14.
Limitation L of Claim 1
Appellant disputes the Examiner’s findings regarding limitation L of
claim 1, by contending Sweeney merely discloses obtaining a specific
checklist based on patient-specific data obtained using a handheld device.
Appellant argues that Sweeney makes no mention whatsoever of a checklist
template. See Appeal Br. 12.
Regarding Haddad, Appellant contends:
Haddad describes a process in which a request for surgical plans are
given to a vendor, which in turn provides a custom surgical plan to a
healthcare facility . . . . Even if the surgical plans could be considered
a medical checklist, the surgical plan is not created from a checklist
template in the claimed manner. Specifically, in Haddad, the surgical
plan is produced from a surgical plan request, which is nowhere
disclosed as comprising a plurality of prompts from which a subset
are selected to create the surgical plan.
Appeal Br. 12–13 (emphasis added).
The Examiner disagrees with Appellant, and explains that paragraph
44 of Haddad describes that “a surgical plan includes images relating to the

3 We give the contested claim limitations the broadest reasonable
interpretation (“BRI”) consistent with the Specification. See In re Morris,
127 F.3d 1048, 1054 (Fed. Cir. 1997).

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steps a surgeon is to follow in carrying out the surgical procedure; the
surgical plan thusly received is properly described as a ‘template.’” Ans. 18.
The Examiner additionally notes the teachings of Woolford, as
pertaining to limitation L, by explaining that Woolford’s paragraph 70
describes:
a received interactive checklist document, which contains
prompts for steps in a medical procedure. This interactive
checklist contains prompts for completing a medical procedure;
included in the prompts as described can be decision trees, where
a selection by a surgeon of one or other decision selects a specific
set of prompts unique to that particular tree. This is another
instance where the prior art shows a subset of prompts are
selected from the entirety of prompts delivered as part of a
medical or surgical procedure.

Ans. 18–19 (see also Non-Final Act. 4–5) (emphasis added).
Claim Construction
As an initial matter of claim construction, we turn to the Specification
for context, and find no explicit definition for the recited claim 1 term
“prompt.” Instead, we find only descriptions of non-limiting, exemplary
embodiments, e.g., “a medical checklist comprising a sequence of prompts,
each prompt indicating one or more actions.” Spec. 4, ll. 6–7 (emphasis
added). See generally Spec. 4, ll. 4–19. The claimed “checklist template”
is defined in claim 1 as “compris[ing] a first plurality of prompts.” Claim
1. We emphasize that because “applicants may amend claims to narrow
their scope, a broad construction during prosecution creates no unfairness to
the applicant or patentee.” In re ICON Health and Fitness, Inc., 496 F.3d
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1374, 1379 (Fed. Cir. 2007) (citation omitted).4
Turning to the evidence relied upon by the Examiner, we first note the
following description in Sweeney of a checklist of displayed procedures
(i.e., prompts) for the steps of drawing blood:
[T]he wireless handheld device includes instructions for
dealing with patient-specific conditions. For example, a patient
being treated with anticoagulants (blood thinners) is scheduled
for a blood draw . . . the handheld device displays procedures
for drawing blood from an anti-coagulated patient in checklist
form.
Sweeney ¶ 21 (emphasis added) (see Non-Final Act. 3).
We note Haddad teaches displaying ordered surgical steps (i.e.,
suggesting prompts):
In one embodiment, the custom surgical plan 20 may
include an ordered selection of instructional images that depict
individual surgical steps that make up at least a portion of the
orthopaedic surgical procedure to be performed. The
instructional images may include images of surgical tools and
associated text information . . . .
Haddad ¶ 44 (emphasis added) (see Non-Final Act. 3–4).
Haddad also teaches the literal use of prompts in paragraph 45:
In some embodiments, the surgeon 100 may also interact with
the computing device 62 to control various devices of the
CAOS system 30. For example, the surgeon 100 may interact
with the CAOS system 30 to control user preferences or
settings of the display device 94. Further, the computing device
62 may prompt the surgeon 100 for responses. For example,

4 Claim construction is an important step in a patentability determination.
Medichem, S.A. v. Rolabo, S.L., 353 F.3d 928, 933 (Fed. Cir. 2003) (“Both
anticipation under § 102 and obviousness under § 103 are two-step inquiries.
The first step in both analyses is a proper construction of the claims . . . . The
second step in the analyses requires a comparison of the properly construed
claim to the prior art.” (Internal citations omitted)).
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the computing device 62 may prompt the surgeon to inquire if
the surgeon has completed the current surgical step, if the
surgeon would like to view other images, and/or other surgical
procedure inquiries.
Haddad ¶ 45 (emphasis added).
Similarly, as discussed above, Woolford (¶ 70) teaches an “interactive
checklist” (i.e., suggesting prompts).
(1) Interactive Checklist (IC) — This is a well-validated,
interactive checklist directing the specific procedure to be
performed . . . . In general, the IC displayed on the MFCD
[multi-function color display] is customized to each
procedure, enhancing team communication and active
participation, outlining ideal technique and sequence as
indicated by modern evidence-based medicine and provider
preferences.
Woolford ¶ 70 (emphasis added) (see Non-Final Act. 4; see also Ans. 18–
19).
Based upon our review of the evidence, we find Sweeney’s teachings
(¶ 21) of displaying instructions for dealing with various “patient-specific
conditions” in “checklist form” and Woolford’s teachings of an “interactive
checklist” (¶ 70) “directing the specific procedure to be performed,”
individually, and in combination, teach or suggest a “checklist template
[that] comprises a first plurality of prompts,” as recited in claim 1.
Additionally, we note Haddad’s teaching of a “custom surgical plan”
comprising “an ordered selection of instructional images” (i.e., prompts for
specific steps of the procedure). Haddad ¶ 44 (emphasis added). We note
that paragraph 47 of Haddad, as further relied upon by the Examiner (Non-
Final Act. 4), describes data, such as X-rays, medical images (i.e., “event
data items” — claim 1), patient medical records, and patient identification
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data (i.e., “case identifier” – claim 1), that may be requested and used to
customize a specific surgical procedure for the patient.5
In addition to Haddad’s teaching of customized surgical plans (¶ 44),
we find the claimed “second plurality of prompts” is also suggested by
Woolford’s teaching of “checklist pages [that] permit the addition of
surgeon preferences,” such as a “Surgeon Enhanced Standard of Care
(SESoC) . . . and descriptive/directive notes as deemed necessary to
facilitate the best surgical outcome.” Woolford ¶ 25 (emphasis added).6
See also Ans. 18–19, i.e., the Examiner finds Woolford ¶ 70 teaches or
suggests the claimed “second plurality of prompts being a subset of the first
plurality of prompts.” Claim 1.
Given this evidence, we find the Examiner’s proffered combination of
Sweeney, Haddad, and Woolford teaches or suggests limitation L:
create the medical checklist from the checklist template by
selecting a second plurality of prompts from the first plurality
of prompts of the checklist template based on the case identifier
and at least one of the one or more event data items, the medical
checklist associated with at least one surgical procedure, the
second plurality of prompts being a subset of the first plurality
of prompts.

5 See claim 1: “obtain a checklist template from a checklist template
repository based on at least one of: the event identifier, the case identifier
and at least one of the one more event data items, wherein the checklist
template comprises a first plurality of prompts;” (emphasis added).

6 “[T]he question under 35 USC 103 is not merely what the references
expressly teach but what they would have suggested to one of ordinary skill
in the art at the time the invention was made.” Merck & Co. v. Biocraft
Labs., Inc., 874 F.2d 804, 807 (Fed. Cir. 1989) (emphasis added) (quoting In
re Lamberti, 545 F.2d 747, 750 (CCPA 1976)); see also MPEP § 2123.
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Claim 1 (emphasis added).
Thus, on this record, we find that the Examiner is relying on Sweeney
and Woolford to teach or suggest “the checklist template comprises a first
plurality of prompts,” and Haddad and Woolford to collectively teach or
suggest the limitation:
create the medical checklist from the checklist template by
selecting a second plurality of prompts from the first plurality of
prompts of the checklist template based on the case identifier and
at least one of the one or more event data items, the medical
checklist associated with at least one surgical procedure, the
second plurality of prompts being a subset of the first plurality
of prompts,
within the meaning of claim 1 (see Non-Final Act. 2–5).
For at least the aforementioned reasons, and based upon a
preponderance of the evidence, we are not persuaded the Examiner erred in
finding that Sweeney, Haddad, and Woolford collectively teach or suggest
the disputed limitation L of independent claim 1.
Motivation to Combine Sweeney, Haddad, and Woolford
Appellant contends that Examiner’s proffered motivation to combine
Sweeney, Haddad, and Woolford is:
nothing more than a conclusory statement about the general
combinability of the technology described in these references
. . . . The Office Action simply does not establish a supportable
reason that one of ordinary skill would have modified Sweeney
based on Haddad and Woolford or how one of ordinary skill in
the art would have done so.
Appeal Br. 14.
The Examiner disagrees and explains that because “all of the [claim]
elements are taught in the prior art, one of ordinary skill in the art could
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combine those elements using known programming techniques, and that the
resulting combination of elements in one medical checklist system would be
predictable.” Ans. 19.
We note Sweeney and Woolford are both directed to presenting
medical procedures in a checklist form. Additionally, Haddad and Woolford
both teach customizing existing medical procedures based upon the patient
information or the physician’s preference.
It is our view that the Examiner’s proffered combination of the
respective cited features of Sweeney, Haddad, and Woolford would have
realized a predictable result—and thus it would have been obvious to one of
ordinary skill in the art to modify such pre-existing medical procedures by
including additional physician-specific instructions based upon patient
information. See KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 401 (2007)
(“[A] combination of familiar elements according to known methods is
likely to be obvious when it does no more than yield predictable results.”).
“[W]hen a patent ‘simply arranges old elements with each performing the
same function it had been known to perform’ and yields no more than one
would expect from such an arrangement, the combination is obvious.” KSR,
550 U.S. at 417 (quoting Sakraida v. Ag Pro, Inc., 425 U.S. 273, 282
(1976)).
Further, in KSR, 550 U.S. at 418, the Court stated that when
considering obviousness that “the analysis need not seek out precise
teachings directed to the specific subject matter of the challenged claim, for
a court can take account of the inferences and creative steps that a person of
ordinary skill in the art would employ.” When there is a design need or
market pressure to solve a problem and there are a finite number of
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identified, predictable solutions, a person of ordinary skill has good reason
to pursue the known options within his or her technical grasp. See id. at 421.
Moreover, it is sufficient that references suggest doing what
Appellant did, although the Appellant’s particular purpose was different
from that of the references. In re Heck, 699 F.2d 1331, 1333 (Fed. Cir.
1983) (citing In re Gershon, 372 F.2d 535, 539 (CCPA 1967)). For a prima
facie case of obviousness to be established, the reference need not recognize
the same problem solved by the Appellants. See In re Kemps, 97 F.3d 1427,
1430 (Fed. Cir. 1996). [N]either the particular motivation nor the avowed
purpose of the [Appellant] controls” when performing an obviousness
analysis. KSR, 550 U.S. at 419 (2007).
This reasoning is applicable here. In reviewing the record, we are not
persuaded the Examiner erred because Appellant does not point to any
evidence of record that shows combining the teachings of Sweeney, Haddad,
and Woolford in the manner proffered by the Examiner (Non-Final Act. 5)
would have been “uniquely challenging or difficult for one of ordinary skill
in the art” or would have “represented an unobvious step over the prior art.”
Leapfrog Enters., Inc. v. Fisher-Price, Inc., 485 F.3d 1157, 1162 (Fed.
Cir. 2007) (citing KSR, 550 U.S. at 418).
Appellant has not identified knowledge gleaned only from the present
application that was not within the level of ordinary skill at the time the
claimed invention was made. See In re McLaughlin, 443 F.2d 1392 (CCPA
1971). Moreover, Appellant has not provided any objective evidence of
secondary considerations (e.g., unexpected results), which our reviewing
court guides “operates as a beneficial check on hindsight.” Cheese Sys., Inc.
v. Tetra Pak Cheese & Powder Sys., Inc., 725 F.3d 1341, 1352 (Fed.
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Cir. 2013). Nor has Appellant filed a Reply Brief to further rebut the
Examiner’s responsive explanations. See Ans. 17–19.
We find one of ordinary skill in the art would have understood that
familiar medical procedures may be customized for a specific patient in
order to safeguard patient safety. Thus, we find the Examiner sets forth a
sufficient rational underpinning explaining why an artisan would have
combined the teachings of Sweeney, Haddad, and Woolford. See Non-Final
Act. 5.
Therefore, on this record, and based upon a preponderance of the
evidence, we are not persuaded of error regarding the Examiner’s underlying
factual findings and ultimate legal conclusion of obviousness regarding
Rejection A of independent representative claim 1.
Accordingly, we sustain the Examiner’s Rejection A of independent
representative claim 1, and also Rejection A of independent claim 13, which
recites similar limitations of commensurate scope. See Non-Final Act. 5.
The remaining grouped dependent claims also rejected under Rejection A
(and not argued separately) fall with representative independent claim 1. See
37 C.F.R. § 41.37(c)(1)(iv). Accordingly, we sustain the Examiner’s
obviousness Rejection A of claims 1–5, 7–10, 12–17, 19–22, 24, 53, 64, and
74–77.
Rejections B and C of claims 6, 18, 55–62, and 66–73 under § 103(a)
In view of the lack of any substantive, separate arguments directed to
Rejection B of claims 55–62 and 66–73, and Rejection C of claims 6 and 18
under § 103(a) (see Appeal Br. 14–15), we sustain the Examiner’s
Rejection B of claims 55–62 and 66–73, and Rejection C of claims 6 and 18.
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Arguments not made are waived. See 37 C.F.R. § 41.37(c)(1)(iv).

CONCLUSION
The Examiner did not err in rejecting claims 1–10, 12–22, 24, 53,
55–62, 64, and 66–77 as being obvious under pre-AIA 35 U.S.C. § 103(a),
over the cited combinations of references.

DECISION SUMMARY
Claims
Rejected
Pre-AIA
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1–5, 7–10,
12–17, 19–
22, 24, 53,
64, 74–77
103(a) Sweeney, Haddad,
Woolford
1–5,7–10,
12–17, 19–
22, 24, 53,
64, 74–77

55–62, 66–73 103(a) Sweeney, Haddad,
Woolford, Sullivan
55–62, 66–73
6, 18 103(a) Sweeney, Haddad,
Woolford, Bauer
6, 18
Overall
Outcome
1–10,
12–22, 24,
53, 55–62, 64
66–77

FINALITY AND RESPONSE
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). See 37
C.F.R. § 41.50(f).
AFFIRMED