Ex Parte Abraham-Fuchs et al

Board of Patent Appeals and Interferences

Mar 12, 2010

10395246 (B.P.A.I. Mar. 12, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte KLAUS ABRAHAM-FUCHS,
EVA RUMPEL, and
DANIEL TIETZE
____________

Appeal 2009-012278
Application 10/395,246
Technology Center 3600
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Decided: March 12, 2010
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Before MURRIEL E. CRAWFORD, HUBERT C. LORIN, and
BIBHU R. MOHANTY, Administrative Patent Judges.

LORIN, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2009-012278
Application 10/395,246

2
STATEMENT OF THE CASE
Klaus Abraham-Fuchs, et al. (Appellants) seek our review under 35
U.S.C. § 134 (2002) of the final rejection of claims 1, 2, 4-12, 15-18, 21-27,
29, and 32-40. We have jurisdiction under 35 U.S.C. § 6(b) (2002).

SUMMARY OF DECISION
We REVERSE.1

THE INVENTION
The invention relates to a method for automated recording of patient
actions.
Claim 1, reproduced below, is illustrative of the subject matter on
appeal.
1. A method for recording of patient actions for tracking patient
progress of participants in the course of clinical studies suitable for
trialing the effectiveness of drugs, comprising:
providing medical equipment able to obtain patient medical
data from the patient at a treatment facility with a recording device for
acquiring patient identification information from an electronic
wirelessly communicating patient identification device carried by the
patient, wherein said medical equipment is unaware of patient
identification information prior to acquisition of said identification
information;
acquiring, from said patient identification device, data for
identifying a patient and a patient location address;

1 Our decision will make reference to the Appellants’ Appeal Brief (“Br.,”
filed Feb. 11, 2008) and the Examiner’s Answer (“Answer,” mailed Apr. 1,
2008).
Appeal 2009-012278
Application 10/395,246
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automatically associating data obtained during use of the
medical equipment in a clinical study with the data identifying the
patient and patient location address; and
automatically communicating said associated data via a
communications network to an evaluation station for monitoring
progress of the participants in the clinical study; and
storing said associated data in a storage device.

THE REJECTIONS
The Examiner relies upon the following as evidence of
unpatentability:
Brown
Herdeg
US 5,997,476
US 6,141,609
Dec. 7, 1999
Oct. 31, 2000
The following rejections are before us for review:
1. Claims 1, 4-12, 162, 26, 29, 32, 33, and 35-40 are rejected under 35
U.S.C. §102(b) as being anticipated by Brown.
2. Claims 2, 15, 17, 18, 21-25, 27, and 34 are rejected under 35 U.S.C.
§103(a) as being unpatentable over Brown and Herdeg.

ISSUES
The issue is whether the claim step “providing medical equipment
able to obtain patient medical data from the patient at a treatment facility ...
wherein said medical equipment is unaware of patient identification
information prior to acquisition of said identification information” recited in
Claim 1 is described, expressly or inherently, in the disclosure of Brown at
col. 2, ll. 53-65.

2 Claim 16 is missing from the statement of the rejection but included in the
discussion of the §102 rejection. Answer 3 and 6.
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Application 10/395,246
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FINDINGS OF FACT
We rely on the Examiner’s factual findings. Answer 3-12.
Col. 2, ll. 53-65 of Brown is reproduced below:
The invention presents a networked system for remotely
monitoring an individual and for communicating information to
the individual. The system includes a server and a remote
interface for entering in the server a set of queries to be
answered by the individual. The server is preferably a world
wide web server and the remote interface is preferably a
personal computer or network terminal connected to the web
server via the Internet. The system also includes a remotely
programmable apparatus for interacting with the individual. The
apparatus is connected to the server via a communication
network, preferably the Internet. The apparatus interacts with
the individual in accordance with a script program received
from the server.

PRINCIPLES OF LAW
Anticipation
“A claim is anticipated only if each and every element as set forth in
the claim is found, either expressly or inherently described, in a single prior
art reference.” Verdegaal Bros., Inc. v. Union Oil Co. of Cal., 814 F.2d 628,
631 (Fed. Cir. 1987).

ANALYSIS
The rejection of claims 1, 4-12, 16, 26, 29, 32, 33, and 35-40 under 35
U.S.C. §102(b) as being anticipated by Brown.
The Examiner indicates that the claim step “providing medical
equipment able to obtain patient medical data from the patient at a treatment
facility ... wherein said medical equipment is unaware of patient
Appeal 2009-012278
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identification information prior to acquisition of said identification
information” (claim 1) can be found at col. 2, ll. 53-65 of Brown. See
Answer 3 and 17. The Examiner takes the same position as to the other
independent claim, claim 33, also requiring the medical equipment to be
unaware of patient identification information prior to acquisition of said
identification information but where the information is acquired via
recording a predetermined biometric feature of a patient
In order for Brown to anticipate the claimed subject matter it must
describe, expressly or inherently, the claim step “providing medical
equipment able to obtain patient medical data from the patient at a treatment
facility ... wherein said medical equipment is unaware of patient
identification information prior to acquisition of said identification
information”. (Claim 1; See also claim 33).
Col. 2, ll. 53-65 of Brown (See supra) does not expressly describe the
claim step at issue. Accordingly, the only question is whether col. 2, ll. 53-
65 of Brown inherently describes the claim step at issue. The Examiner
nowhere states that col. 2, ll. 53-65 of Brown inherently describes the claim
step at issue but that appears to be what the Examiner attempted to show by
explaining how Brown remotely monitors an individual and communicates
information to that individual. See Answer 7. The difficulty with the
explanation is that we do not see and the Examiner does not indicate that
“providing medical equipment able to obtain patient medical data from the
patient at a treatment facility ... wherein said medical equipment is unaware
of patient identification information prior to acquisition of said identification
information” (claim 1; See also claim 33) necessarily flows from remotely
monitoring an individual and communicating information to that individual
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as Brown describes. When relying upon the theory of inherency, the
examiner must provide a basis in fact and/or technical reasoning to
reasonably support the determination that the allegedly inherent
characteristic necessarily flows from the teachings of the applied prior art.
See Ex parte Levy, 17 USPQ2d 1461, 1464 (BPAI 1990). As evidence the
claim step at issue does not necessarily flow from the Brown method, we
note that Brown describes providing monitors programmed to execute
assigned script programs from a server that contains a list of patients to be
monitored and, for each patient, a unique patient identification code and a
respective pointer to the script program assigned to the patient. Brown, col.
5, ll. 14-28. Thus Brown’s monitors are aware of patient identification
information prior to acquisition of said identification information. That is
not to say that it would not be possible to operate Brown’s monitors such
that they would be unaware of patient identification information prior to
acquisition of said identification information. But “inherency, however,
may not be established by probabilities or possibilities. The mere fact that a
certain thing may result from a given set of circumstances is not sufficient.”
Hansgirg v. Kemmer, 102 F.2d 212, 214 (CCPA 1939), quoted in
Continental Can Co. USA v. Monsanto Co., 948 F.2d 1264, 1269 (Fed. Cir.
1991). “[T]he [prior art] reference must clearly and unequivocally disclose
the claimed [invention] or direct those skilled in the art to the [invention]
without any need for picking, choosing, and combining various disclosures
not directly related to each other by the teachings of the cited reference.” In
re Arkley, 455 F.2d 586, 587 (CCPA 1972)
Because the claim step “providing medical equipment able to obtain
patient medical data from the patient at a treatment facility ... wherein said
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medical equipment is unaware of patient identification information prior to
acquisition of said identification information” (claim 1; See also claim 33) is
not described, expressly or inherently, in the disclosure at col. 2, ll. 53-65 of
Brown as the Examiner has asserted, a prima facie case of anticipation for
the subject matter of claims 1, 4-12, 16, 26, 29, 32, 33, and 35-40 has not
been established in the first instance.

The rejection of claims 2, 15, 17, 18, 21-25, 27, and 34 under 35 U.S.C.
§103(a) as being unpatentable over Brown and Herdeg.
The claims here rejected under §103 depend from claims 1 and 33
whose rejection under §102 was not sustained. The Examiner does not
appear to have argued that the claim step “providing medical equipment able
to obtain patient medical data from the patient at a treatment facility ...
wherein said medical equipment is unaware of patient identification
information prior to acquisition of said identification information” (claim 1;
See also claim 33) would have been obvious over the cited combination of
references. According the Examiner appears to continue to rely on the
position that col. 2, ll. 53-65 of Brown necessarily describes this step. Since
that position is untenable, we find that a prima facie case of obviousness has
also not been established in the first instance for the subject matter of claims
2, 15, 17, 18, 21-25, 27, and 34.

CONCLUSIONS
Neither the rejection of claims 1, 4-12, 16, 26, 29, 32, 33, and 35-40
under 35 U.S.C. §102(b) as being anticipated by Brown nor the rejection of
claims 2, 15, 17, 18, 21-25, 27, and 34 under 35 U.S.C. §103(a) as being
unpatentable over Brown and Herdeg is sustained.
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DECISION
The decision of the Examiner to reject claims 1, 2, 4-12, 15-18, 21-27,
29, and 32-40 is reversed.

REVERSED

mev

KLAUS ABRAHAM-FUCHS
GRASLITZER STRASSE 17
91058 ERLANGEN, GERMANY