Ex Parte Alper et al

Patent Trial and Appeal Board

Nov 30, 2018

13669988 (P.T.A.B. Nov. 30, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/669,988 11/06/2012
23446 7590 12/04/2018
MCANDREWS HELD & MALLOY, LTD
500 WEST MADISON STREET
SUITE 3400
CHICAGO, IL 60661
FIRST NAMED INVENTOR
Paul Alper
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.
24697US02 5204
EXAMINER
BROWN JR, HOW ARDD
ART UNIT PAPER NUMBER
2488
NOTIFICATION DATE DELIVERY MODE
12/04/2018 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):
mhmpto@mcandrews-ip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte PAUL ALPER, JOHN HINES, and DEAN PHILIP
LIMBERT
Appeal2017-002122
Application 13/669,988
Technology Center 2400
Before JEREMY J. CURCURI, JUSTIN BUSCH, and
PHILLIP A. BENNETT, Administrative Patent Judges.
CURCURI, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's
rejection of claims 1-9. Final Act. 1. The case was heard on November 14,
2018. We have jurisdiction under 35 U.S.C. § 6(b).
Claims 1--4, 8, and 9 are rejected under pre-AIA 35 U.S.C. § 103(a) as
obvious over Patterson (US 2007/0083385 Al; Apr. 12, 2007) and Dolan
(US 2010/0173581 Al; July 8, 2010). Final Act. 5-9.
Appeal2017-002122
Application 13/669,988
Claims 5-7 are rejected under pre-AIA 35 U.S.C. § I03(a) as obvious
over Patterson, Dolan, and LeBlond (US 2010/0153374 Al; June 17, 2010).
Final Act. 10-12.
We reverse.
STATEMENT OF THE CASE
Appellants' invention relates to "determining the compliance by
workers with hand hygiene guidelines." Spec. ,r 3. Claim 1 is illustrative
and reproduced below:
1. A method for predetermining the benchmark number of hand
hygiene opportunities for a target facility:
determining a study benchmark number of hand hygiene opportunities
in a studied facility during an observation period;
identifying studied facility characteristics of the studied facility during
the observation period;
identifying study relationships between studied facility characteristics
and the study number of hand hygiene opportunities;
determining target facility characteristics for the target facility; and
determining a benchmark number of hand hygiene opportunities for
the target facility based on study relationships and target facility
characteristics.
PRINCIPLES OF LAW
We review the appealed rejections for error based upon the issues
identified by Appellants, and in light of the arguments and evidence
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Appeal2017-002122
Application 13/669,988
produced thereon. Ex parte Frye, 94 USPQ2d 1072, 107 5 (BP AI 2010)
(precedential).
ANALYSIS
THE OBVIOUSNESS REJECTION OF CLAIMS 1--4, 8, AND 9 OVER PATTERSON
AND DOLAN
Contentions
The Examiner finds Patterson and Dolan teach all limitations of
claim 1. Final Act. 5-7. In particular, the Examiner maps Patterson's
current clinical process for the clinical facility to the "studied facility"
recited in claim 1, and maps Patterson's optimal clinical process for the
clinical facility to the "target facility" recited in claim 1. Final Act. 5---6
( citing Patterson ,r 8); see also Patterson Abstract ("An optimized practice
process model may be defined for a particular clinical procedure, setting
forth an optimal clinical process.").
Among other arguments, Appellants present the following principal
argument: Patterson does not teach a studied facility and a target facility as
recited in claim 1. See Appeal Br. 13-15. For example, Appellants argue
the following:
Patterson's paragraph 8 makes clear that the "optimized
practice process model" is a defined optimal process. Nothing
in Patterson's paragraph 8 suggests that model is a facility or
represents a facility. Patterson identifies only one facility and
discloses optimizing a clinical process only in that facility. For
this reason also, Patterson does not disclose steps of claim 1 as
asserted by the Final Action.
Appeal Br. 14; see also Reply Br. 4--5 (arguing Patterson does not disclose a
target facility).
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Appeal2017-002122
Application 13/669,988
In the Examiner's Answer, the Examiner explains
e. Patterson does disclose optimizing a clinical process in one
facility based on a relationship between characteristics of a
different facility and a clinical process optimized in that other
facility (e.g. current clinical processes are within clinical
facilities is equivalent to a studied facility), and the target
facility (e.g. optimized practice processes models from clinical
facilities is equivalent to a target facility), healthcare facilities
(e.g. clinical facilities that practice healthcare processes are
equivalent to healthcare facilities).
Ans. 13 (citing Patterson ,r 8).
Our Review
Appellants' arguments persuade us that the Examiner erred in finding
Patterson teaches a studied facility and a target facility as recited in claim 1.
Turning to claim 1, claim 1 requires "a studied facility." Claim 1
further requires "a target facility." Thus, the actual language of claim 1
requires two different facilities. Appellants' Specification also supports this
interpretation of the language of claim 1. See Spec. ,r 3 8 ( emphases added)
("Benchmark relationships are determined between the benchmarks
determined by observation and characteristics and activity of the facility.
Based on these benchmark relationships, benchmarks may be predetermined
for other facilities in which activities occur for which the guidelines apply
based on the characteristics and activity of the other facility for which
benchmark relationships have been determined."). Thus, we conclude that
the broadest reasonable interpretation of claim 1 requires two different
facilities-a studied facility and a target facility.
Turning to Patterson, Patterson discloses
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Appeal2017-002122
Application 13/669,988
Systems, methods, and graphical user interfaces are
provided for identifying, analyzing, and adopting opportunities
for optimizing clinical processes within clinical facilities. An
optimized practice process model may be defined for a
particular clinical procedure, setting forth an optimal clinical
process. In addition, critical levers may be identified within the
optimal clinical process, representing the activities that have the
greatest impact on outcomes. Clinical facilities may collect
current measures for the critical levers, and the current
measures may be compared against an optimal, benchmark,
and/or target measure. Based on the comparison, opportunities
for clinical process optimization may be identified. Those
opportunities may then be analyzed and prioritized for adoption
into a facility's current practice. Clinical processes within
healthcare facilities may be further improved by continuously
monitoring facility data and identifying further opportunities of
optimization. Further, collected data may be used to refine the
optimized practice process model, allowing for further
optimization.
Patterson Abstract. Patterson further discloses "Embodiments of the present
invention relate to systems, methods, and graphical user interfaces that
provide a comprehensive and adaptive approach to optimizing current
clinical processes within clinical facilities based on optimized practice
process models ... a potential opportunity for improving a current clinical
process within a clinical facility." Patterson ,r 8.
Thus, Patterson's disclosures describe a single facility in which there
is a current clinical process and a corresponding optimal process. See
Patterson ,r 8.
Given our construction for claim 1 requiring two different facilities-
a studied facility and a target facility-we find Patterson's single facility
does not teach a studied facility and a target facility as recited in claim 1.
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Appeal2017-002122
Application 13/669,988
We, therefore, do not sustain the Examiner's rejection of claim 1.
Accordingly, we also do not sustain the Examiner's rejection of claims 2--4,
8, and 9, which depend from claim 1.
THE OBVIOUSNESS REJECTION OF CLAIMS 5-7 OVER PATTERSON, DOLAN,
AND LEBLOND
The Examiner does not find LeBlond cures the deficiency of Patterson
discussed above when addressing claim 1. See Final Act. 10-12.
We, therefore, do not sustain the Examiner's rejection of claims 5-7.
ORDER
The Examiner's decision rejecting claims 1-9 is reversed. 1
REVERSED
1 That we do not sustain the Examiner's decision to reject claim 1 should not
be viewed as indication that the claim is patentable. Rather, our decision is
based only on the Examiner's improper reliance on Patterson as teaching
two separate facilities. The Patent Trial and Appeal Board is a review body,
rather than a place of initial examination. Therefore, we leave to the
Examiner to determine whether claim 1 is ineligible as directed to merely a
mental process without adding significantly more. See 35 U.S.C. § 101. We
leave it to the Examiner to ascertain the appropriateness of any further
rejections under 35 U.S.C. § 101. Our decision not to enter a new ground of
rejection should not be considered an indication regarding the
appropriateness of further rejection or allowance of the non-rejected claims.
See MPEP § 1213.03.
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