Ex Parte Bobroff

Patent Trial and Appeal Board

Sep 26, 2016

11947399 (P.T.A.B. Sep. 26, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
111947,399 11129/2007
2101 7590 09/28/2016
Sunstein Kann Murphy & Timbers LLP
125 SUMMER STREET
BOSTON, MA 02110-1618
FIRST NAMED INVENTOR
Alec D. Bobroff
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.
161 l/A54 1842
EXAMINER
PATEL,NEHA
ART UNIT PAPER NUMBER
3686
NOTIFICATION DATE DELIVERY MODE
09/28/2016 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):
usptomail@sunsteinlaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ALEC D. BOBROFF
Appeal2014-008559 1
Application 11/947,3992
Technology Center 3600
Before BIBHU R. MOHANTY, JAMES A. WORTH, and
TARA L. HUTCHINGS, Administrative Patent Judges.
WORTH, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner's
Final rejection of claims 1-3, 5-11, 13-19, 21-24, 26-29, 31, and 32. We
have jurisdiction under 35 U.S.C. §§ 134 and 6(b).
We AFFIRM.
1 Our decision refers to the Appellant's Appeal Brief ("Appeal Br.," filed
May 12, 2014) and Reply Brief ("Reply Br.," filed July 31, 2014), and the
Examiner's Final Office Action ("Final Act.," mailed Aug. 12, 2013) and
Answer ("Ans.," mailed June 9, 2014).
2 According to Appellant, the real party in interest is Haemonetics
Corporation (Appeal Br. 3).
Appeal2014-008559
Application 11/947,399
Introduction
Appellant's disclosure relates to "blood and blood product usage, and
particularly to systems and methods for estimating and tracking blood
product usage." (Spec. 1, 11. 12-13).
Claims 1, 9, 17, and 29 are the independent claims on appeal. Claim
1, reproduced below, is illustrative of the subject matter on appeal:
1. A computer-implemented method for
estimating usage of blood and blood products in a
health care facility comprising:
(i) obtaining, using a computer process, a set
of publicly available blood cost and usage data;
(ii) obtaining, using a computer process, a
set of publicly available blood salvage and transfusion
data, the publicly available blood salvage and
transfusion data including an amount of autologous
units reinfused and allogeneic units transfused;
(iii) requesting, using a computer process,
data specific to the health care facility, the data
specific to the health care facility including at least
one selected from the group consisting of data relating
to the health care facility's usage of blood processing
and salvaging equipment and the number and type of
surgical procedures performed by
the health care facility;
(iv) using, in a computer process, data from
the set of publicly available blood cost and usage data
as default data for any data specific to the health care
facility not provided in step (iii); and
( v) estimating, in a computer process, an
amount of blood product usage based upon the set of
publicly available blood cost and usage data, the set of
publicly available blood salvage and transfusion data,
the default data, and data specific to the health care
facility.
(Appeal Br. 17, Claims App.)
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Appeal2014-008559
Application 11/947,399
Rejections on Appeal
The Examiner maintains, and Appellant appeals, the following
rejections:
I. Claims 1, 9, 17, and 29 stand rejected under 35 U.S.C. § 112,
first paragraph, as failing to comply with the written
description requirement.
II. Claims 31 and 32 stand rejected under 35 U.S.C. § 112, first
paragraph, as failing to comply with the enablement
requirement.
III. Claims 1, 9 and 17 are rejected under 35 U.S.C. § 112, second
paragraph, as being indefinite for failing to particularly
point out and distinctly claim the subject matter which
the applicant regards as the invention.
IV. Claims 1-3, 5, 7-11, 13, 15-19, 21, 23, 24, 26, 27, 31, and 32
are rejected under 35 U.S.C. § 103(a) as being
unpatentable over DeBusk (US 5,991,728, iss. Nov. 23,
1999), R. Jain et al., Blood Salvage in total hip and knee
arthroplasty in a community hospital: A retrospective
study, 13(1) JOURNAL OF ORTHOPAEDIC SURGERY (April
2005) 19-26 (hereinafter, "Jain"), and Blood Services:
Cost, Reimbursement and Billing, 4(1) BLOOD COUNTS
(America's Blood Centers Sept. 2005) (hereinafter,
"IN CBC").
V. Claim 29 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over DeBusk and Jain.
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Application 11/947,399
VI. Claims 6, 14, 22, and 28 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over DeBusk, Jain,
ICNBC, and Official Notice.
ANALYSIS
Rejection I (Written Description)
Independent claims 1, 9, 17, and 29
The Examiner finds that the Specification fails to disclose "publicly
available blood salvage and transfusion data including an amount of
autologous units reinfused and allogeneic units transfused," as recited in
independent claim 1. We are unpersuaded by Appellant's argument that the
Specification and figures disclose the recited data. Appellant points to the
following parts of the Specification in support: Figures 8 and 11, page 2,
lines 25-26, page 4, lines 1-3, page 5, lines 10-12, page 6, lines 4--5, page 8,
page 9, lines 6-16 and 19-20, page 11, line 22-page 12, line 14, and page
13, lines 8-10 (Appeal Br. 10). Although we agree with Appellant that
Figures 8 and 11 indicate an amount of allogeneic units transfused (by
providing blanks for a user to fill in on the survey form), none of the cited
portions of the Specification indicate an amount of autologous blood
reinfused. As such, the Specification does not demonstrate that Appellant
was in possession of the autologous blood element of the limitation at the
time of filing. Therefore, we sustain the Examiner's rejection under § 112,
first paragraph, of independent claim 1.
Appellant does not argue the rejection of independent claims 9, 17,
and 29 separately from that of independent claim 1. Therefore, we sustain
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Application 11/947,399
the Examiner's rejection under § 112, first paragraph, of independent claims
9, 17, and 29, for similar reasons as for independent claim 1.
Rejection II (Enablement)
Dependent claims 31and32
Appellant does not contest the Examiner's rejection of claims 31 and
32 under§ 112, first paragraph. Accordingly, we sustain the Examiner's
rejection of claims 31 and 32 under§ 112, first paragraph.
Rejection III (Indefiniteness)
Independent claims 1, 9, and 17
The Examiner rejects independent claim 1 as indefinite, determining
that it requires clarification or correction (see Final Act. 4).
Step (iii) recites "requesting" "data specific to the health care facility"
(Appeal Br. 17, Claims App'x). The Examiner and Appellant are in
agreement that step (iv) of the recited method permits the user to substitute
publicly available data for hospital specific data in step (iii) of the recited
method (Final Act. 4; see also Appeal Br. 11 ). However, the Examiner is
concerned that, in the event that the user relies on the publicly available data
for step (iii), the "estimating" process of step (v) would become redundant
because it also uses publicly available data (see Final Act. 4). Appellant
argues that not all of the data specific to the health care facility will be
replaced with publicly available data.
We disagree with the Examiner that the claim requires clarification.
Step (v) recites "estimating," which differs from step (iii) which recites
"requesting data." In our view, there is no redundancy if there is an
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Application 11/947,399
estimation based on requested data. Further, we do not regard the claim to
be unclear in context. Although the claim does not provide a mathematical
formula for the estimation step, the Specification indicates that publicly
available data are given as averages (see Spec. 8, 11. 4--15). Accordingly, we
determine that the claim is reasonably clear to a person of ordinary skill in
the art when read in light of the Specification. Therefore, we do not sustain
the Examiner's rejection of independent claim 1 under§ 112, second
paragraph.
Independent claims 9 and 1 7 contain similar language and
requirements as independent claim 1. We do not sustain the Examiner's
rejection under§ 112, second paragraph, of independent claims 9 and 17, for
similar reasons as for independent claim 1.
Rejection IV (Obviousness)
Claims 1-3, 5, 7-11, 13, 15-19, 21, 23, 24, 26, 27, 31, and 32
Appellant argues the rejection of claims 2, 3, 5, 7-11, 13, 15-19, 21,
23, 24, 26, 27, 31, and 32 together with that of independent claim 1. We
select claim 1 as representative such that claims 2, 3, 5, 7-11, 13, 15-19, 21,
23, 24, 26, 27, 31, and 32 stand or fall with independent claim I. See 37
C.F.R. § 41.37(c)(l)(iv).
We are unpersuaded by Appellant's argument that De Busk fails to
disclose the use of publicly available data, and in particular of publicly
available data relating to blood usage and cost (Appeal Br. 12-15). The
Examiner instead relies on Jain (p. 22, Table 1) and IN CBC (Fig. 1) for the
use of such publicly available data (see Final Act. 6; see also Ans. 7-8). See
In re Merck & Co., Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986) (One cannot
show non-obviousness by attacking references individually when the
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Application 11/947,399
rejection is based on a combination of references.) Indeed, Jain provides
publicly available data regarding blood salvaging for patients undergoing
total knee arthroplasty, including data on autologous blood transfusion and
allogeneic blood transfusion (p. 22, Table 1 ). Further, IN CBC (Fig. 1)
provides information on the mean fee (in dollars) for red blood cell services
over time. The text accompanying Figure 1 of IN CBC states that in
September 2004, the average cost of red blood cells for hospitals was $178
(id. at 1 ).
Appellant argues that DeBusk (col. 12, 11. 28--42, col. 12, 11. 49---62)
teaches away from the use of publicly available data because, according to
Appellant, billing fees would increase if publicly available data were
substituted for facility specific data (Appeal Br. 14). We find that the
portion of DeBusk relied on discusses billing but does not support
Appellant's proposition, and that, in any event DeBusk does not discourage
or discredit the use of publicly available data when facility specific data is
unavailable.
We agree with the Examiner that it would have been obvious to a
person of ordinary skill in the field of hospital supply to combine the
publicly available data from Jain with DeBusk's method for estimating
usage of medical products for the reasons stated by the Examiner (see Final
Act. 6, 8). Therefore, we sustain the Examiner's rejection under§ 103 of
claims 1-3, 5, 7-11, 13, 15-19, 21, 23, 24, 26, 27, 31, and 32.
Rejection V (Obviousness)
Claim 29
Appellant's arguments for independent claim 29 are similar to those
made with respect to independent claim 1 (see Appeal Br. 15-16).
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Therefore, we sustain the Examiner's rejection under§ 103 of independent
claim 29, for similar reasons as for independent claim 1.
Rejection VI (Obviousness)
Claims 6, 14, 22, and 28
Claims 6, 14, 22, and 28 depend from independent claims 1, 9, and
17, and stand rejected under§ 103 as unpatentable over DeBusk, Jain,
INCBC, and Official Notice. Appellant argues that the Examiner's taking of
Official Notice does not cure the argued deficiency in the Examiner's
rejection of independent claims 1, 9, and 17 over DeBusk, Jain, and INCBC.
Having found no deficiency therein, we sustain the Examiner's rejection
under § 103 of claims 6, 14, 22, and 28, for similar reasons as for
independent claims 1, 9, and 1 7.
DECISION
The Examiner's decision to reject claims 1-3, 5-11, 13-19, 21-24,
26-29, 31, and 32 is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED
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