10956131 (B.P.A.I. Aug. 30, 2010)

Ex Parte Blumenfeld

Board of Patent Appeals and InterferencesAug 30, 2010

10956131 (B.P.A.I. Aug. 30, 2010)

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. 10/956,131 10/04/2004 Tracy Harmon Blumenfeld 114478-00104 8925 27557 7590 08/30/2010 BLANK ROME LLP WATERGATE 600 NEW HAMPSHIRE AVENUE, N.W. WASHINGTON, DC 20037 EXAMINER MOBIN, HASANUL ART UNIT PAPER NUMBER 2168 MAIL DATE DELIVERY MODE 08/30/2010 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 BOARD OF PATENT APPEALS AND INTERFERENCES ____________ Ex parte TRACY HARMON BLUMENFELD ____________ Appeal 2009-004335 Application 10/956,1311 Technology Center 2100 ____________ Before JOHN A. JEFFERY, JOSEPH L. DIXON, and CAROLYN D. THOMAS, Administrative Patent Judges. THOMAS, Administrative Patent Judge. DECISION ON APPEAL2 1 Application filed October 4, 2004. The real party in interest is PCRS Inc. 2 The two-month time period for filing an appeal or commencing a civil action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing, as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE” (paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery mode) shown on the PTOL-90A cover letter attached to this decision. Appeal 2009-004335 Application 10/956,131 2 STATEMENT OF THE CASE Appellant seeks our review under 35 U.S.C. § 134(a) of the Examiner’s final decision rejecting claims 22, 23, 25, and 26, which are all the claims pending in the application, as claims 1-21, 24, and 27 are canceled. We have jurisdiction over the appeal under 35 U.S.C. § 6(b). We AFFIRM. The present invention is directed to a system for evaluating performance and progress of research trails, particularly, providing benchmark metrics in real time. Claim 22 is illustrative: 22. A method for permitting a user to access information on fees charged in that user’s area of work, the method comprising: (a) storing, in a database, the information on the fees; (b) providing a user interface for permitting the user to formulate a query on the fees; (c) searching the database for the information on the fees in accordance with the query; (d) providing to the user the information located in step (c); (e) providing the user with a study budget template to collect information from the user for addition to the database; and (f) updating the database with the information collected through the study budget template. Appeal 2009-004335 Application 10/956,131 3 Appellant appeals the following rejection: Claims 22, 23, 25, and 26 under 35 U.S.C. § 103(a) as unpatentable over Javitt (US Patent Pub. 2001/0041990 A1, Nov. 15, 2001) and Benigno (US Patent Pub. 2002/0087361 A1, Jul. 4, 2002). FACTUAL FINDINGS 1. Benigno discloses a health care data manipulation and analysis system (Title) where “[t]he nurse . . . tracks the patient at home . . . and the information is used to create and update the clinical pathway database records for the patient” (¶ [0028]). 2. In Benigno, “[a]ssessment of the patient’s condition is performed using a[] questionnaire or form generated based upon the current patient’s customized and changeable clinical pathway” (id.). 3. Javitt discloses that “[t]he default fee data used by the invention to perform calculations are based on a database which reflects the Medicare Fee Schedule for aggregated procedures.” (¶ [0056].) 4. Javitt discloses a “per-member-per-month (PMPM) capitation amount” and that “[c]apitation rates considerably higher and lower than this will have obvious effects on total revenue.” (¶ [0027].) 5. Javitt discloses that “[t]he ‘Capitation Rate’ rows of the Main screen permit a user to enter the capitation rates for the machine.” (¶ [0034]; Fig. 5.) Appeal 2009-004335 Application 10/956,131 4 ANALYSIS Claims 22 and 25 Appellant argues claims 22 and 25 as a group (App. Br. 4-5). For claim 25, Appellant repeats the same argument made for claim 22. We will, therefore, treat claim 25 as standing or falling with claim 22. See 37 C.F.R. § 41.37(c)(1)(vii). See also In re Young, 927 F.2d 588, 590 (Fed. Cir. 1991). Issue 1: Did the Examiner err in finding that the combination of cited references, particularly Benigno, discloses “updating the database with the information collected through the study budget template”? Appellant contends that “[i]f the references were combined as proposed in the Final Rejection, the database would still not have information added to it with information collected from the user through the study budget template, since neither of the applied references teach or suggests that feature.” (App. Br. 4) The Examiner found that Benigno discloses “a database that stores and collects data” (Ans. 5). We agree with the Examiner. Appellant reasons that “[w]hile information might well be collected and stored in the database in some fashion, there would have been no teaching or suggesting to collect it in the manner recited in the present claims.” (App. Br. 4-5.) We start by noting that claim 22 recites, inter alia, “providing the user with a study budget template to collect information from Appeal 2009-004335 Application 10/956,131 5 the user for addition to the database.” (Emphasis added). However, no particular type of user interface is claimed for collecting the information. All that is required is that the information be collected using a template, which can be an electronic version or a paper copy. In Benigno, a nurse uses a questionnaire/form (i.e., a template) to collect information from the patient to add to the database (FF 1-2). Thus, we find that the claimed “updating the database with information collected through the . . . template” reads on Benigno’s collection of information using a questionnaire/form and whereby the information is used to update the pathway database. On the other hand, claim 25 recites, inter alia, “the user interface provides the user with a study budget template to collect information from the user.” This same “user interface” is being used to formulate the query and provide information to the user located in the database. Thus, the claimed “user interface” suggests that some type of electronic component is being used. Similarly, Benigno discloses in Fig. 1A, element 108, that the answers to the questions are recorded on the computer (i.e., albeit by a user interface). Thus, we find that the claimed “user interface provides . . . template” reads on Benigno’s questionnaire and computer entry of the answers. “What matters is the objective reach of the claim. If the claim extends to what is obvious, it is invalid under § 103.” KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 419 (2007). Here, claim 25 extends to what is already known and obvious as shown in Benigno. Appeal 2009-004335 Application 10/956,131 6 Based on the record before us, we find that the Examiner did not err in rejecting claims 22 and 25. Accordingly, we affirm the rejection of claims 22 and 25. Claims 23 and 26 Appellant argues claims 23 and 26 as a group (App. Br. 5-7). For claim 26, Appellant repeats the same argument made for claim 23. We will, therefore, treat claim 26 as standing or falling with claim 23. See 37 C.F.R. § 41.37(c)(1)(vii). See also In re Young, 927 F.2d 588, 590 (Fed. Cir. 1991). Issue 2: Did the Examiner err in finding that the combination of cited references, particularly Javitt, discloses “information on high, low and average fees”? Appellant contends that “there is nothing in that teaching from the reference that the information located in step(c) or in the database comprises information on high, low and average fees.” (App. Br. 6.) The Examiner found that “[t]he Javitt reference teaches higher and lower fees in Figures 5 and 6. . . . It is obvious to one ordinary skill person in the art how to calculate average fees when there are higher and lower values are [sic] available.” (Ans. 9.) Javitt discloses fee data in a database (FF 3) and different capitation rates (FF 4-5). Thus, the Examiner reasoned that Javitt teaches providing Appeal 2009-004335 Application 10/956,131 7 higher and lower fees from the database and that average fees could reasonably be calculated from such data. We agree with the Examiner. We further add that the claimed “information on high, low[,] and average fees” simply refers to data content that does not exhibit any functional relationship with the substrate. Non-functional descriptive material refers to data content that does not exhibit a functional interrelationship with the substrate and does not affect the way the computing processes are performed. See MPEP § 2106.01. In a precedential decision, an expanded panel held that elements that do not affect the claimed process are non-functional material and are merely descriptive. See Ex parte Nehls, 88 USPQ2d 1883, 1887-88 (BPAI 2008) (precedential). As such, the Examiner need not give patentable weight to descriptive material absent a new and unobvious functional relationship between the descriptive material and the substrate. See In re Lowry, 32 F.3d 1579, 1582- 1583 (Fed. Cir. 1994); In re Ngai, 367 F.3d 1336, 1339 (Fed. Cir. 2004) (nonfunctional descriptive material cannot render nonobvious an invention that would have otherwise been obvious). See also Ex parte Mathias, 84 USPQ2d 1276 (BPAI 2005) (nonprecedential), aff'd, 191 Fed.Appx. 959 (Fed. Cir. 2006). Here, we find that although Javitt reasonably discloses the claimed content data, such data (i.e., information on high, low, and average fees) need not be given patentable weight. Therefore, based on the record before Appeal 2009-004335 Application 10/956,131 8 us, we find that the Examiner did not err in rejecting claims 23 and 26. Accordingly, we affirm the rejection of claims 23 and 26. DECISION We affirm the Examiner’s § 103 rejection. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. § 1.136(a)(1)(iv) (2009). AFFIRMED rwk BLANK ROME LLP WATERGATE 600 NEW HAMPSHIRE AVENUE, N.W. WASHINGTON, DC 20037