Ex Parte Bodsworth et alDownload PDFBoard of Patent Appeals and InterferencesSep 9, 201009906566 (B.P.A.I. Sep. 9, 2010) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE UNITED STATES DEPARTMENT OF COMMERCE TJnited States Patent and Trademark Office Add,&: COMMISSIONER FOR PATENTS P 0 Box 1450 Alexandria, Virginia 22313-1450 www uspto go" 32425 7590 09/13/2010 FULBRIGHT & JAWORSKI L.L.P. 600 CONGRESS AVE. SUITE 2400 AUSTIN, TX 78701 APPLICATION NO. EXAMINER NAJARIAN, LENA 091906,566 07/16/2001 Andrew William Bodsworth UHGI:421US/11000989 4676 FILING DATE I ARTUNIT I PAPERNUMBER I FIRST NAMED INVENTOR Please find below andlor attached an Office communication concerning this application or proceeding. NOTIFICATION DATE The time period for reply, if any, is set in the attached communication. ATTORNEY DOCKET NO. DELIVERY MODE Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the following e-mail address(es): aopatent @ fulbright.com CONFIRMATION NO. 09/13/2010 ELECTRONIC PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES Ex parte ANDREW WILLIAM BODSWORTH, KELVIN ACKFORD, and MATTHEW OLIVER BERRYMAN Appeal 2009-006977 Application 091906,566 Technology Center 3600 Before MURRIEL E. CRAWFORD, ANTON W. FETTING, and JOSEPH A. FISCHETTI, Administrative Patent Judges. FETTING, Administrative Patent Judge. 1 The two-month time period for filing an appeal or commencing a civil action, as recited in 37 C.F.R. 5 1.304, or for filing a request for rehearing, as recited in 37 C.F.R. 5 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 2009-006977 Application 091906,566 STATEMENT OF THE CASE Andrew William Bodsworth, Kelvin Ackford, and Matthew Oliver Berryman (Appellants) seek review under 35 U.S.C. 5 134 (2002) of a final rejection of claims 1-26, the only claims pending in the application on appeal. We have jurisdiction over the appeal pursuant to 35 U.S.C. 5 6(b) (2002). We AFFIRM. THE INVENTION The Appellants invented a computer-based system for minimizing the cost of prescribing while maintaining therapeutic effectiveness, and utilizing the most recent, available data. Specification ¶ 0002. An understanding of the invention can be derived from a reading of exemplary claim 1, which is reproduced below [bracketed matter and some paragraphing added]. 1. A system to supply a medical practitioner with possible alternatives to a proposed prescription, the system comprising 2 Our decision will make reference to the Appellants' Appeal Brief ("App. Br.," filed October 8, 2008) and Reply Brief ("Reply Br.," filed January 9, 2009), and the Examiner's Answer ("Ans.," mailed November 10, 2008), and Final Rejection ("Final Rej.," mailed April 15, 2008). Appeal 2009-006977 Application 091906,566 [I] a means to print a prescription entered by a medical practitioner in response to indicating the proposed prescription or an alternative, [2] means to automatically interrupt instructions of said means to print said prescription and compare said prescription to a database of prescriptions upon input of said prescription to the system, [3] means to select from said database the proposed prescription and any possible alternative thereto, [4] means to present an alternative prescription to the practitioner, and [5] means to automatically supply further medical or cost information to the practitioner regarding the alternatives, whereby the practitioner may choose between his proposed prescription and any alternative presented to him, [5] means to permit the practitioner to enter a prescription selected from the proposed or an alternative prescription, and [6] means to automatically resume the instructions of the means to print the selected prescription. THE REJECTIONS The Examiner relies upon the following prior art: Campbell et al. US 6,208,974 B l Mar. 27, 2001 Suzuki et al. US 6,213,652 B l Apr. 10,2001 Schrier et al. US 6,317,719 B l Nov. 13,2001 Oscar et al. US 200110037216 A1 Nov. 1,2001 Mayaud US 200210042715 A1 Apr. 11,2002 Appeal 2009-006977 Application 091906,566 Claims 1-5, 8, 10, and 12 stand rejected under 35 U.S.C. 5 103(a) as unpatentable over Mayaud, Schrier, and Suzuki. Claims 13-16, 18-19, and 26 stand rejected under 35 U.S.C. 5 103(a) as unpatentable over Mayaud and Schrier. Claims 6-7 and 9 stand rejected under 35 U.S.C. 5 103(a) as unpatentable over Mayaud, Schrier, Suzuki, and Oscar. Claim 17 stands rejected under 35 U.S.C. 5 103(a) as unpatentable over Mayaud, Schrier, and Oscar. Claim 11 stands rejected under 35 U.S.C. 5 103(a) as unpatentable over Mayaud, Schrier, Suzuki, Oscar, and Campbell. Claims 20-25 stand rejected under 35 U.S.C. 5 103(a) as unpatentable over Mayaud, Schrier, Oscar, and Campbell. ISSUES The issue of whether the Examiner erred in rejecting claims 1-5, 8, 10, and 12 under 35 U.S.C. 5 103(a) as unpatentable over Mayaud, Schrier, and Suzuki turns on whether Schrier and Mayaud describe automatically providing cost and alternative medication information and whether Mayaud further describes that updating is done online, in real-time, and at regularly. The issue of whether the Examiner erred in rejecting claims 13-16, 18- 19, and 26 under 35 U.S.C. 5 103(a) as unpatentable over Mayaud and Schrier turns on whether the Appellants' arguments in support of claim 1 are found persuasive. The issue of whether the Examiner erred in rejecting claims 6-7 and 9 under 35 U.S.C. 5 103(a) as unpatentable over Mayaud, Schrier, Suzuki, and Appeal 2009-006977 Application 091906,566 Oscar turns on whether Oscar describes the updating means of claim 2 comprises suitable preprogrammed means or a CD-ROM. The issue of whether the Examiner erred in rejecting claim 17 under 35 U.S.C. 5 103(a) as unpatentable over Mayaud, Schrier, and Oscar turns on whether the Appellants' arguments in support of claim 6 are found persuasive. The issue of whether the Examiner erred in rejecting claim 11 under 35 U.S.C. 5 103(a) as unpatentable over Mayaud, Schrier, Suzuki, Oscar, and Campbell turns on whether Oscar and Campbell describe a means to calculate any savings made when the practitioner does choose an alternative prescription and means to record the savings in a further database. The issue of whether the Examiner erred in rejecting claims 20-25 under 35 U.S.C. 5 103(a) as unpatentable over Mayaud, Schrier, Oscar, and Campbell turns on whether Mayaud, Schrier, Oscar, and Campbell describe the claimed reporting functionality. FACTS PERTINENT TO THE ISSUES The following enumerated Findings of Fact (FF) are believed to be supported by a preponderance of the evidence. Facts Related to the Prior Art Mayaud 01. Mayaud is directed to professional data management systems useful in the production of product specification documents such as prescriptions, service, or parts orders. Mayaud ¶ 000 1. Appeal 2009-006977 Application 091906,566 02. Mayaud describes a system that receives input from a user on a user customizable entry screen. Mayaud ¶ 105. The system includes a drug list, where the drugs are classified according to a patient condition for which the drugs are effective and an onscreen drug selection lists multiple drugs for treating each patient problem. Mayaud ¶ 0027. Alternative drugs may be presented to a user based on the user's historical prescription activity or a wider base of historical prescription activity, which could be nationally or regionally defined or derived from a drugs benefit house, health maintenance organization, hospital, or other appropriate institution. Mayaud ¶ 0037. Drug suggestions are further refined into categories such as relative cost, generic or brand name. Mayaud ¶ 0038. The system maintains updated databases on drugs and drug formulary, where updates are automatically posted across the network and are updated at frequent intervals. Mayaud ¶'s 0272-0273 and 0369. The system provides a physician with all available relevant prescribing information on drugs. Mayaud ¶ 0218. The system is adaptive such that more frequently prescribed drugs or more frequently encountered conditions by a physician can be presented to the user physician in a more prominent manner than those historically less common. Mayaud ¶ 0 107. The prescription management system has a built-in, online, statistical reporting functions enabling a physician user to review theirs, or others, historical experiences with a particular drug or condition and providing online historical Appeal 2009-006977 Application 091906,566 review of any other activities or data entrusted to the system. Mayaud ¶ 01 1 1. Schrier 03. Schrier is directed to systems and methods for providing patient-specific drug information. Schrier 1 : 1 1- 12. 04. The system includes a main window for a drug that comprises several buttons available for a user to select. Schrier 5:25-35 and Fig. 2. A cost comparison button provides the user with cost comparison information. Schrier 1 1 :3 1-33. The system extracts a set of alternative drugs that are commonly used for treating the patient's condition. Schrier 1 1 :33-36. Drug information is stored in a structure that is easy to update the drug information. Schrier 21: 1-5. Suzuki 05. Suzuki is directed to a job scheduling system which schedules job requests issued from a terminal using a queue and requests a job execution section to carry out printing processing by passing the jobs to the job execution section. Suzuki 1 :6-10. 06. Suzuki describes a system where a job processor is capable of improving processing efficiency by effecting the interruption and resumption of print processing on a job-by-job basis as well as easily modifying attributes of a job retained in a queue and cancelling a specific document included in a one-job multidocument. Suzuki 5 :34-40. Appeal 2009-006977 Application 091906,566 Oscar 07. Oscar is directed to a system and method for managing pharmacy benefits to permit costs to be reduced. Oscar ¶ 0003. 08. Oscar describes a management server that has price information on related drugs in various classes and a processing module for correlating claim information with the benefits plan structure information and the formulary information to identify drugs dispensed to patients, expenses associated with the drugs in accordance with the pharmacy benefits plan structure information, alternative drugs in the same class as the drugs, and expenses associated with the alternative drugs. Oscar ¶ 0016. Users are presented with drug cost information and are further presented with cost saving alternatives. Oscar ¶ 0052. Oscar further describes the storage of information on hard disks and CD Rom drives and the transfer of information through downloading through a database query or a file transfer. Oscar ¶ 0066. Campbell 09. Campbell is directed to a computer-implemented method for managing and enrolling new clients in wellness plans. Campbell 1:6-7. 10. The wellness plan stores product and service lists associated with a particular plan level and type. Campbell 25:3-6. The product lists include the regular price for an item so that the wellness plan can estimate cost savings for patient records during patient visits. Campbell 25:9-24. Appeal 2009-006977 Application 091906,566 ANALYSIS Claims 1-5, 8, 10, and 12 rejected under 35 U.S.C. § 103(a) as unpatentable over Mayaud, Schrier, and Suzuki The Appellants first contend that (1) Schrier fails to describe automatically supplying further medical or cost information to the practitioner regarding the alternative prescription, as per claim 1. App. Br. 12-13 and Reply Br. 2. The Appellants specifically argue that Schrier requires that a user actively seek out information and therefore does not automatically supply information. App. Br. 12- 13 and Reply Br. 2. We disagree with the Appellants. Claim 1 requires automatically supplying further medical or cost information to the practitioner regarding the alternatives medications. Claim 1 does not impose any further limitations on the step being automated or the nature of such automation. As such, this limitation can be reasonably construed to encompass automatically supplying medical and cost information upon the user entering a prescription for a medication. Although the Appellants argue that such a construction is improperly reading limitations from the specification (Reply Br. 2), the Appellants fail to provide any rationale that demonstrates that such a claim construction is unreasonable. Schrier describes a system that provides detailed information regarding a medication. FF 03-04. Schrier further describes that a user may select a cost comparison button that provides the user with information regarding alternative medications used to treat the patient's condition. FF 04. In other words, Schrier describes automatically providing alternative medications and alternative medication information, including cost information, to the Appeal 2009-006977 Application 091906,566 medication entered by the user. Mayaud also describes a system that provides a user with a list of medications and medications cost information that are used to treat specific patient conditions. FF 02. That is, a user enters a patient's condition and the system automatically retrieves a list of medications used to treat that condition and displays cost information for the listed medications. As such, Schrier and Mayaud describe automatically supplying further medical or cost information to the practitioner regarding the alternatives medications. The Appellants also contend that (2) Mayaud fails to describe (a) the claim 2 updating means comprises an online means as per claim 3, (b) the database of claim 3 is updated on a real-time basis, as new information becomes available to a central source as per claim 4, and (c) the database is updated periodically as per claim 5. App. Br. 13- 15 and Reply Br. 3. We disagree with the Appellants. Mayaud describes that medication lists are maintained in databases and updates to these databases are automatically posted across a network. FF 02. This is done in order to provide physicians with the most up to date information on medications. FF 02. As such, Mayaud describes that the updates are performed online, as new information becomes available, and the information is available immediately so that physicians can have the most current information available. The Appellants further argue that posting updates across a network is not "online" (Reply Br. 3), however the claims to not limit the meaning of the term "online" nor does the specification provide a special definition for "online." As such, the term "online" can be reasonable construed to mean being connected to a network. Therefore, Mayaud describes that updates are "online." Appeal 2009-006977 Application 091906,566 Claims 13-16, 18-19, and 26 rejected under 35 U.S. C. § 103(a) as unpatentable over Mayaud and Schrier The Appellants contend that claims 13 and 15-16 are allowable for the same reasons as claims 1 and 3-4. App. Br. 13-15. We disagree with the Appellants. The Appellants' arguments supra were not found persuasive and are not found persuasive here for the same reasons. Claims 6- 7 and 9 rejected under 35 U.S. C. § 103(a) as unpatentable over Mayaud, Schrier, Suzuki, and Oscar The Appellants first contend that (1) claims 6-7 and 9 are allowable for the same reasons asserted in support of claims 1-5, 8, 10, and 12. App. Br. 15. We disagree with the Appellants. The Appellants' arguments supra were not found persuasive and are not found persuasive here for the same reasons. The Appellants further contend that (2) Oscar fails to describe the updating means of claim 2 comprises suitable preprogrammed means or a CD-ROM as per claims 6-7. App. Br. 16 and Reply Br. 4. We disagree with the Appellants. Mayaud describes a system that uses databases that store medication lists and these databases are updated from data sources across the network at frequent intervals with relevant information. FF 02. Schrier also describes a system that provides alternative drug information and the drug information is stored in such a way that it is easily updated. FF 04. Oscar describes the storage of information on hard disks or CD Rom drives and the downloading of information through a database query or a file transfer. FF 08. As such, Mayaud and Schrier describe the updating of information through a preprogrammed means of a network at frequent intervals and Appeal 2009-006977 Application 091906,566 Oscar describes that this downloading or transfer of information can be down through a database query or file transfer. Oscar further describes the use of CD Roms for the storage and maintenance of information or databases and therefore the combination of Mayaud, Schrier, and Oscar describe the updating means is a preprogrammed means or a CD-Rom. Claim 17 rejected under 35 U.S.C. § 103(a) as unpatentable over Mayaud, Schrier, and Oscar The Appellants contend that claim 17 is allowable for the same reasons asserted in support of claim 6. App. Br. 16. We disagree with the Appellants. The Appellants' arguments supra were not found persuasive and are not found persuasive here for the same reasons. Claim 11 rejected under 35 U.S.C. § 103(a) as unpatentable over Mayaud, Schrier, Suzuki, Oscar, and Campbell The Appellants contend that Oscar and Campbell fail to describe a means to calculate any savings made when the practitioner does choose an alternative prescription and means to record the savings in a further database. App. Br. 17-18 and Reply Br. 5-6. We disagree with the Appellants. Oscar describes a pharmacy management system that provides a user with drug cost information and further provides a user with cost saving alternatives. FF 08. Campbell describes a wellness planning system that calculates cost savings from retail prices and stores these savings in records that describe patient visits. FF 10. As such, the combination of Mayaud, Schrier, Suzuki, Oscar, and Campbell describe the required limitations of claim 1 1. Appeal 2009-006977 Application 091906,566 Claims 20-25 rejected under 35 U.S.C. § 103(a) as unpatentable over Mayaud, Schrier, Oscar, and Campbell The Appellants first contend that (1) claim 20 is allowable for the same reasons asserted in support of claim 17. App. Br. 18 and Reply Br. 5-6. We disagree with the Appellants. The Appellants' arguments supra were not found persuasive and are not found persuasive here for the same reasons. The Appellants further contend that (2) Mayaud and Schrier fail to describe the step of analyzing the further database to establish and report on the regularity of which selections of alternative prescriptions for an input prescription are being used and the analyzing is carried out on combined data from several medical practices, as per claims 22-23. App. Br. 19-20 and Reply Br. 6. We disagree with the Appellants. As discussed supra, Schrier describes providing a user with a list of alternative medications for an input prescription. FF 04. Mayaud also describes providing alternative medications and further describes that the system is adapted such that more frequently prescribed drugs and more frequently prescribed conditions are presented to a user. FF 02. Mayaud further describes that other physician prescription frequency reports are available to the user physician and a historical perspective of prescriptions can include a wider base, such as regional or national. FF 02. As such, Mayaud and Schrier describe analyzing and reporting prescription information on the frequency or regularity of the selection of alternative prescriptions for the user physician and other physicians on the system. The Appellants additionally contend that (3) Mayaud and Oscar fail to describe the step of analyzing the further database to establish and report on Appeal 2009-006977 Application 091906,566 cost savings produced by which selections of an alternative prescription for an input prescription and the analyzing is carried out on combined data for several medical practices, as per claims 24-25. App. Br. 21 and Reply Br. 6. We disagree with the Appellants. As discussed supra, Oscar and Campbell describe determining cost savings based on the selection of alternative medications and saving the cost saving information. FF 08 and 10. As also discussed supra, Mayaud describes presenting a user physician with the frequency or regularity of selecting alternative medications by that physician or other physician. As such, Mayaud, Oscar, and Campbell describe analyzing and reporting cost saving information for alternative medication selection by a user physician and other physicians connected to the system. CONCLUSIONS OF LAW The Examiner did not err in rejecting claims 1-5, 8, 10, and 12 under 35 U.S.C. 5 103(a) as unpatentable over Mayaud, Schrier, and Suzuki. The Examiner did not err in rejecting claims 13- 16, 18- 19, and 26 under 35 U.S.C. 5 103(a) as unpatentable over Mayaud and Schrier. The Examiner did not err in rejecting claims 6-7 and 9 under 35 U.S.C. 5 103(a) as unpatentable over Mayaud, Schrier, Suzuki, and Oscar. The Examiner did not err in rejecting claim 17 under 35 U.S.C. 5 103(a) as unpatentable over Mayaud, Schrier, and Oscar. The Examiner did not err in rejecting claim 1 1 under 35 U.S.C. 5 103(a) as unpatentable over Mayaud, Schrier, Suzuki, Oscar, and Campbell. The Examiner did not err in rejecting claims 20-25 under 35 U.S.C. 5 103(a) as unpatentable over Mayaud, Schrier, Oscar, and Campbell. Appeal 2009-006977 Application 091906,566 DECISION To summarize, our decision is as follows: The rejection of claims 1-5, 8, 10, and 12 under 35 U.S.C. 5 103(a) as unpatentable over Mayaud, Schrier, and Suzuki is sustained. The rejection of claims 13-16, 18-19, and 26 under 35 U.S.C. 5 103(a) as unpatentable over Mayaud and Schrier is sustained. The rejection of claims 6-7 and 9 under 35 U.S.C. 5 103(a) as unpatentable over Mayaud, Schrier, Suzuki, and Oscar is sustained. The rejection of claim 17 under 35 U.S.C. 5 103(a) as unpatentable over Mayaud, Schrier, and Oscar is sustained. The rejection of claim 11 under 35 U.S.C. 5 103(a) as unpatentable over Mayaud, Schrier, Suzuki, Oscar, and Campbell is sustained. The rejection of claims 20-25 under 35 U.S.C. 5 103(a) as unpatentable over Mayaud, Schrier, Oscar, and Campbell is sustained. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. 5 1.136(a). See 37 C.F.R. 5 1.136(a)(l)(iv) (2007). AFFIRMED mev Appeal 2009-006977 Application 091906,566 1 Address 2 FULBRIGHT & JAWORSKI L.L.P. 3 600 CONGRESS AVE. 4 SUITE 2400 5 AUSTIN TX 78701 Copy with citationCopy as parenthetical citation