Ex Parte Brazzo et al

Patent Trial and Appeal Board

Aug 29, 2016

12655851 (P.T.A.B. Aug. 29, 2016)

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.
12/655,851 01/07/2010 Paul Eugene Brazzo QSS-045 9435
52554 7590 08/30/2016
Southeast IP Group, LLC.
P.O. Box 14156
GREENVILLE, SC 29610
EXAMINER
PATEL, NEHA
ART UNIT PAPER NUMBER
3686
MAIL DATE DELIVERY MODE
08/30/2016 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 PATENT TRIAL AND APPEAL BOARD

____________

Ex parte PAUL EUGENE BRAZZO and
JOHN WILLIAM KRUPA
____________

Appeal 2014-001406
Application 12/655,8511
Technology Center 3600
____________

Before, JOSEPH A. FISCHETTI, MICHAEL C. ASTORINO, and
BRUCE T. WIEDER, Administrative Patent Judges.

FISCHETTI, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellants seek our review under 35 U.S.C. § 134 of the Examiner’s
Final rejection of claims 1–11, 13–30 and 32–36. We have jurisdiction
under 35 U.S.C. § 6(b).

1 Appellants identify J.M. Smith Corporation as the real party in interest.
(Appeal Br. 1).

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SUMMARY OF DECISION
We AFFIRM.
THE INVENTION
Appellants claims “relate[] generally to pharmacy management
systems in retail pharmacies.” Spec. ¶ 1.

Claim 1 reproduced below, is representative of the subject matter on
appeal.
1. A method of generating food recommendations
comprising:

receiving by a pharmacy computer, at or prior to the time of
filling a prescription, patient data including currently
prescribed medications for an individual patient to generate
a patient drug profile:

on said computer, establishing a first database linking
said drug profile with known medical condition(s) to
generate a disease state profile;

on said computer, using said first database to establish
an individual’s medical condition(s), or disease state
profile, based on said patient drug profile;

on said computer, establishing a nutritional database
linking said disease state profile with foods that have been
determined to be beneficial to the treatment of said patient’s
medical condition(s);

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on said computer, utilizing said nutritional database by
said computer to generate food recommendations of at least
one food to consume that have been determined to be
beneficial to the treatment of said patient’s medical
condition(s) based on the individual’s medical condition(s),
or disease state profile; and

displaying the food recommendations.

THE REJECTION
The Examiner relies upon the following as evidence of
unpatentability:
Uecker et al. US 6,240,394 B1 May 29, 2001
(“Uecker”)
Aitken et al. US 2008/0086374 A1 Apr. 10, 2008
(“Aitken”)
Asakawa et al. US 2008/0215371 A1 Sept. 4, 2008
(“Asakawa”)
Badinelli US 2008/0263011 A1 Oct. 23, 2008

The following rejections are before us for review.
1. Claims 1–11, 13, and 17–20 are rejected under 35 U.S.C. § 103(a)
over Asakawa and Uecker. (Final Act. 3).

2. Claims 14–16 are rejected under 35 U.S.C. § 103(a) over Asakawa,
Uecker, and Aitken. (Final Act. 10).

3. Claim 21 is rejected under 35 U.S.C. § 103(a) over Asakawa, Uecker,
and Badinelli. (Final Act. 12).

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4. Claims 22–30, 32, and 36 are rejected under 35 U.S.C. § 103(a) over
Asakawa, Badinelli, and Uecker. (Final Act. 13).

5. Claims 33–35 are rejected under 35 U.S.C. § 103(a) over Asakawa,
Badinelli, Uecker, and Aitken.

6. Claims 12, 31, and 37–50 are canceled. (Final Act. 2).
FINDINGS OF FACT
1. We adopt the Examiner’s findings as set forth on pages 2–23 of the
Final Action.
ANALYSIS
35 U.S.C. § 103 REJECTION
The Appellants argued claims 1–11, 13, 19, and 20 as a group,
selecting claim 1 as the representative claim for this group, and the
remaining claims standing or falling with claim 1. See 37 C.F.R.
§ 41.37(c)(1)(iv) (2015).
Appellants argue,
First, the Asakawa electronic chart requires
data entry of a patient’s medical records,
including diagnoses of injuries and disease, as
well as data entry of prescription drug
information. [Appellants’] claimed system
requires no data entry of a patient’s medical
records or diagnoses of injury or disease, and
instead relies solely on input regarding
prescription information, which is generally the
only medical information available to a
pharmacist.
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(Appeal Br. 9).
We disagree with Appellants’ arguments because they are not based
on limitations appearing in claim 1. In other words, claim 1 does not
prohibit data entry of a “patient’s medical records or diagnoses of injury or
disease.” See In re Self, 671 F.2d 1344, 1348 (CCPA 1982).
Appellants also argue, “[s]econdly, as was pointed out in several of
[Appellants’] Responses to Office Actions, the Asakawa reference clearly
and explicitly teaches away from a system that makes positive food
recommendations which actually benefit the person’s recovery or
condition.” (Appeal Br. 9, citing Asakawa, ¶5). Appellants further argue
that, “at best, [Asakawa] only indicates foods that will not negatively affect
the patient.” (Appeal Br. 11).
We disagree with Appellants, because first, the problem discussed in
paragraph 5 of Asakawa, is part of the Background of the Invention, and is
said to be a problem to be overcome by the invention of Asakawa.
(Answer 5, see also Asakawa ¶5). Second, we disagree with Appellants’
arguments that because Asakawa discloses “cautionary food information,
indicating ‘risky foods for particular diseases, intake of which can badly
affect on the patients [sic],’” it teaches away. (Appeal Br. 9). We find that
one of ordinary skill in the art would understand that the claimed “food
recommendations of at least one food to consume that have been determined
to be beneficial to the treatment of said patient’s medical condition(s) based
on the individual’s medical condition(s)” would be an obvious variant of the
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precautionary recommendation against bad foods disclosed by Asakawa
because both are directed to the betterment of the patient’s health.
Appellants also argue that, “Uecker teaches away from the use of a
single computer to perform its functions, and Applicant’s claimed method
includes only a single computer, which represents a significant cost savings
and simplification over the Uecker system.” (Appeal Br. 12).
We disagree with Appellants because Uecker does not actually teach
away from every aspect of all pharmacy computers. See In re Gurley, 27
F.3d 551, 553 (Fed. Cir. 1994). That is, the addition of a second computer to
“eavesdrop” on a data stream, merely adds to the efficiency of extracting
data from the patient profile. Thus, because the combination is not directed
to the discouraged aspects of the particular system matching a profile, which
would be the failure to match patient information with a disease state profile,
there is no teaching away.
Concerning the use of a manual alteration feature in claims 17 and 18,
we find that allowing an alteration in an otherwise automated system such as
taught by Uecker is an occasional use, as suggested by the limitation
“alteration”, and thus we find no teaching away with the Examiner’s use of
the automated system of Uecker.
Concerning claims 14–16, Appellants argue,
…Applicant’s claimed system includes a patient’s
personal and highly confidential medical
information, including the patient’s medical
condition(s) and prescription medications, and
bases the food recommendations on these factors,
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rather than a customer’s normal purchase habits.
Such confidential medical information could not
be included with information regarding purchases
made with a grocery store loyalty card, and thus
the combination proposed by the Examiner would
render the system inoperable, and likely illegal
under existing U.S. law.
(Appeal Br. 15).
That argument is not well taken because the Appellant is attacking
Aitken individually when the rejection is based on a combination of
references and the Examiner relies on Asakawa for disclosing a system
includes a patient’s personal and highly confidential medical information,
including the patient’s medical condition(s) and prescription medications.
(See Answer 3–4). See also In re Keller, 642 F.2d 413, 426 (CCPA 1981);
In re Young, 403 F.2d 754, 757-58 (CCPA 1968).
Appellants’ argument that the Examiner’s rejection of claim 21 failed
to provide a “reason that would have prompted a person of ordinary skill in
the art to combine the elements as the new invention” (Appeal Br. 15–16) is
without merit because the Examiner provides such reasoning on page 13 of
the Final Action.
Concerning claims 22–30, 32, and 36, Appellants argue that the
“Examiner’s proposed combination as set forth herein . . . would destroy the
intended purpose of the Badinelli system.” (Appeal Br. 16). However.
Appellants do not say why the combination would negatively affect the
Badinelli system in that way and hence the argument is not persuasive. See
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In re Baxter Travenol Labs., 952 F.2d 388, 391 (Fed. Cir. 1991) (“It is not
the function of this court to examine the claims in greater detail than argued
by an appellant, looking for [patentable] distinctions over the prior art.”).
Likewise Appellants’ arguments to claims 33–35 asserting improper
hindsight analysis (Appeal Br. 17) is unpersuasive because Appellants do
not advance any specific, technical arguments as to why the motivation is
insufficient or why the proposed combination is more than the predictable
use of prior art elements according to their established functions.
CONCLUSIONS OF LAW
We conclude the Examiner did not err in rejecting claims 1–11, 13–
30, and 32–36 under 35 U.S.C. §103(a).

DECISION
The decision of the Examiner to reject claims 1–11, 13–30, and 32–36
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). See 37 C.F.R.
§ 1.136(a)(1)(iv).
AFFIRMED