Ex Parte Brown

Board of Patent Appeals and Interferences

Oct 18, 2010

10741168 (B.P.A.I. Oct. 18, 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.
10/741,168 12/18/2003 Stephen J. Brown 7553.00023 / 03-1200 1482
60683 7590 10/18/2010
HEALTH HERO NETWORK, INC.
2400 GENG ROAD, SUITE 200
PALO ALTO, CA 94303
EXAMINER
SMITH, CAROLYN L
ART UNIT PAPER NUMBER
1631
MAIL DATE DELIVERY MODE
10/18/2010 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 STEPHEN J. BROWN
__________

Appeal 2010-009834
Application 10/741,168
Technology Center 1600
__________

Before ERIC GRIMES, DONALD E. ADAMS, and JEFFREY N.
FREDMAN, Administrative Patent Judges.

GRIMES, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 from the rejection of claims
1-10, 13-17, 22, 24, 26, and 27, all of the pending claims, for obviousness.
We have jurisdiction under 35 U.S.C. § 6(b). We reverse and enter a new
ground of rejection.
STATEMENT OF THE CASE
This application was the subject of a previous appeal (Appeal 2008-
3677, decided Oct. 29, 2008). That appeal involved claims to an apparatus
Appeal 2010-009834
Application 10/741,168

2
and method for collecting and analyzing data, all of which had been rejected
as obvious based on Nova1 and Quattrocchi2 (2008-3677, at 2-3). The panel
in that appeal determined that Quattrocchi anticipated claim 18, which was
directed to an apparatus, and affirmed the rejection on that basis since the
claims had not been argued separately (id. at 9).
Appellant resumed prosecution and cancelled all of the claims directed
to an apparatus (Amendment filed Apr. 9, 2009). The Examiner reinstated
the § 103 rejection based on Nova and Quattrocchi (Office Action mailed
Oct. 13, 2009). This appeal followed.
Claims 1 and 24 are the only independent claims and read as follows:
1. A method comprising:
(a) allowing one or more human subjects to manipulate an input
device to provide one or more answers as data in response to one or more
questions presented in accordance with a medical research protocol;
(b) collecting data from said one or more human subjects according to
said medical research protocol;
(c) sending data collected from said input device to a server device
relatively remote from said input device via a communication link;
(d) performing a data manipulation technique on data associated with
more than one of said subjects; and
(e) presenting a result of said data manipulation technique at a
presentation device relatively remote from said server device;
wherein step (e) occurs in conjunction with repeatedly performing
step (b).

24. A method comprising:
(a) collecting data from a plurality of human subjects, the collection of
data comprises the following substeps:

1 Nova et al., US 6,329,139 B1, Dec. 11, 2001
2 Quattrocchi, US 5,978,466, Nov. 2, 1999
Appeal 2010-009834
Application 10/741,168

3
(i) associating an input device with at least one subject, the
input device comprising an input element and an output
element;
(ii) presenting questions formulated according to a medical
research protocol to the associated subject via the output
element of the input device; and
(iii) allowing the subject to manipulate the input element of the
input device to provide answers as data in response to the
questions;
(b) sending the collected data from the input device to a server device
relatively remote from the input device via a communication link;
(c) performing a data manipulation technique on data associated with
more than one of said subjects; and
(d) presenting a result of said data manipulation technique at a
presentation device remote from said input device;
wherein step (d) is performed in conjunction with repeatedly
performing step (a).
I.
Issue
The Examiner has rejected all of the pending claims under 35 U.S.C.
§ 103 as obvious in view of Nova and Quattrocchi (Answer 3). The Examiner
finds that Nova discloses most of the limitations of the claimed method (id. at
3-8) and “Quattrocchi describes a person being tested telephoning the
computer system associated with laboratory tests to create an electronic file”
(id. at 8). The Examiner concludes that it would have been obvious to
“modify the method of Nova et al. by presenting structured questions and
answers via the input device as taught by Quattrocchi” (id. at 9).
Appellants argue that “Nova does not teach or suggest any human
subjects or any human subjects that provide one or more answers to one or
more questions, as presently claimed” (Appeal Br. 18) and “since Nova is not
related to testing human subjects at all, there would be no motivation to
Appeal 2010-009834
Application 10/741,168

4
combine Nova with Quattrocchi, which does involve human subjects” (id. at
19).
We agree with Appellant that the Examiner has not adequately
explained why a person of ordinary skill in the art would have combined the
methods disclosed by Nova and Quattrocchi. Nova relates to
“[c]ombinations of matrix materials with programmable data storage . . . ,
and assays using these combinations. . . . These combinations serve as a
common platform for all aspects of drug discovery, including synthesis,
screening and storage.” (Nova, col. 4, ll. 59-65.)
The Examiner points to several passages from Nova that she interprets
as “represent[ing] allowing a human subject to manipulate an input device to
provide an answer as data in response to a query presented in accordance
with a medical research protocol” and other passages that she interprets as
“represent[ing] collecting data for a plurality of human subjects according to
a medical research protocol” (Answer 4). In our view, however, the claim
language cannot reasonably be interpreted to read on the disclosures of Nova
that the Examiner points to, which do not involve collecting data provided by
a human subject in response to questions.
The Examiner apparently relies on Quattrocchi only to provide a
reason to “modify the method of Nova et al. by presenting structured
questions and answers via the input device” (Answer 9). We agree with
Appellant, however, that the Examiner has not adequately explained the
reason that a skilled worker would have made that modification, in view of
the very different subject matter disclosed by Nova and Quattrocchi. The
Appeal 2010-009834
Application 10/741,168

5
rejection of claims 1-10, 13-17, 22, 24, 26, and 27 under 35 U.S.C. § 103 is
reversed.
II.
We enter the following new ground of rejection: Claims 1 and 24 are
rejected under 35 U.S.C. § 102(b) as anticipated by Quattrocchi.
Findings of Fact
FF1. Quattrocchi discloses a method for anonymous testing of a
sample for, e.g., HIV infection (Quattrocchi, col. 3, ll. 14-23).
FF2. In Quattrocchi’s method, “the person being tested uses a
telephone station 68 to interface with the computer system 48 as through a
conventional communication facility 70 to create the accessible electronic
file 50 in the computer system 48” (id. at col. 8, ll. 49-53).
FF3. “As is conventional, alphabetic and numeric designations are
provided on the buttons 76 of the telephone station 68” (id. at col. 8, ll. 61-
62).
FF4. “By using the push buttons 76 of the telephone 72, the user
registers or creates the electronic file 50 in the computer system 48” (id. at
col. 9, ll. 3-5).
FF5. “Considering the computer system 48 in somewhat greater detail,
the communication facility 70 is coupled to an interface unit 78. The
interface unit 78 is coupled to a suitable computer 80 through a voice
generator 82.” (Id. at col. 9, ll. 6-9.)
FF6. “[T]he voice generator 82 functions to selectively provide voice
messages through the interface unit 78 and the communication facility 70 to
Appeal 2010-009834
Application 10/741,168

6
prompt certain responses from the caller through use of the telephone station
68” (id. at col. 9, ll. 15-18).
FF7. “The computer 80 . . . receives detailed data from the caller and
stores the data in the electronic file 50” (id. at col. 9, ll. 12-14).
FF8. “[T]he electronic file 50 is a computer database file that holds all
the relevant non-identifying data about the person being tested” (id. at col. 9,
ll. 55-57).
FF9. “When the person being tested telephones to create the electronic
file 50 . . . , the telephone automated software program 84 of the computer
system 48 collects demographic information. . . . Organizations like a local
health department and/or the Center for Disease Control in Atlanta, Ga. can
then use this information for statistical purposes in its monitoring of the
AIDS epidemic.” (Id. at col. 9, ll. 37-50.)
FF10. “In the instance where the caller wants to initially set-up an
electronic file 50 in the computer system 48, . . . the caller would input a
personal code . . . by pushing those buttons 76 on the telephone station 68
corresponding to the code 44 associated with the kit 10” (id. at col. 12, l. 63
to col. 13, l. 1).
FF11. “[I]f the person being tested is calling to access the test results,
. . . the caller responds to prompts from the computer program to obtain
results as by inputting the correct code” (id. at col. 13, ll. 35-39).
FF12. The code input by the caller is one associated with a particular
test kit (id. at col. 13, ll. 39-42).
FF13. “[T]he computer program 84 checks the code entered against a
predetermined valid set of codes” (id. at col. 13, ll. 43-44).
Appeal 2010-009834
Application 10/741,168

7
FF14. “If the caller responds with a proper code . . . , the computer
program proceeds to allow the caller to telephonically obtain the test results”
(id. at col. 13, ll. 51-53).
FF15. “If the test results reported by the laboratory are negative, the
program 84 in the computer system 48 operates the voice generator 82 to so
inform the person calling for the results” (id. at col. 13, ll. 62-64).
FF16. “If the test results reported by the laboratory are positive, the
computer program 84 shifts the program to step 134 whereat a counselor
informs the caller of the test results” (id. at col. 14, ll. 12-14).
Analysis
Claim 1 is directed to a method having five steps:
(1) allowing a human subject to “manipulate an input device to provide
. . . answers as data in response to . . . questions presented in
accordance with a medical research protocol”;
(2) collecting data from the human subject according to the medical
research protocol;
(3) sending the collected data via a communication link to a server
remote from the input device;
(4) performing a data manipulation technique on data that is
associated with more than one subject; and
(5) presenting a result of the data manipulation at a presentation
device remote from the server.
Claim 1 also states that the presentation step “occurs in conjunction
with repeatedly performing” the data-collecting step. Claim 24 is directed to
substantively the same method, although the first two steps of claim 1 are
expressed in claim 24 as a single step with appropriate substeps.
Appeal 2010-009834
Application 10/741,168

8
The method disclosed by Quattrocchi comprises steps that are
encompassed by the terms of claims 1 and 24:
(1) Quattrocchi’s method allows human subjects to manipulate a
telephone (an “input device” with numbered buttons, FF3) to provide
answers or input (FF4), when prompted by a voice generator (FF6), to
questions presented in accordance with a medical research protocol (e.g.,
demographic questions that are used by health departments or the CDC for
statistical tracking of the AIDS epidemic, FF9). With regard to claim 24, a
telephone also includes a speaker, or output element.
(2) Quattrocchi’s method collects data to set up each subject’s
electronic file (FF8).
(3) Quattrocchi’s method includes sending data from the input device
to a server (“computer 80,” FF5) via a communication link (FF2).
(4) Quattrocchi’s method includes comparing a code entered by a
subject calling to obtain test results “against a predetermined valid set of
codes” (FF13). Since each of the predetermined valid codes is associated
with a different electronic file, each of which is associated with a different
subject, this step corresponds to “performing a data manipulation technique”
(comparing an input code to a set of valid codes) “on data associated with
more than one of said subjects” (the set of codes corresponding to different
electronic files).
(5) In Quattrocchi’s method, a counselor informs the caller of positive
test results (FF16). The method therefore necessarily includes presenting the
result of the code-comparison (i.e., the electronic file containing a positive
test result) at a presentation device (e.g., a computer monitor or a telephone)
Appeal 2010-009834
Application 10/741,168

9
to inform the counselor that a caller has positive results and needs to be
counseled. The presentation device is not a part of, and therefore “remote
from,” the computer storing the electronic files.
Finally, the presentation step occurs in conjunction with repeatedly
collecting data because the electronic file containing the positive test results
is only one of a set of electronic files (corresponding to the predetermined
valid codes referred to by Quattrocchi), each of which requires collection of
data. We find that Quattrocchi discloses a method that meets all the
limitations of claims 1 and 24.
SUMMARY
We reverse the rejection of claims 1-10, 13-17, 22, 24, 26, and 27 as
obvious based on Nova and Quattrocchi. We enter a new ground of rejection
of claims 1 and 24 for anticipation. Although we have only applied the new
rejection to the independent claims, if examination of this application is
resumed, the Examiner should consider whether it should also be applied to
any of the dependent claims.
TIME PERIOD FOR RESPONSE
This decision contains a new ground of rejection pursuant to 37 CFR
§ 41.50(b) (effective September 13, 2004, 69 Fed. Reg. 49960 (August 12,
2004), 1286 Off. Gaz. Pat. Office 21 (September 7, 2004)). 37 CFR
§ 41.50(b) provides “[a] new ground of rejection pursuant to this paragraph
shall not be considered final for judicial review.”
Appeal 2010-009834
Application 10/741,168

10
37 CFR § 41.50(b) also provides that the appellant, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new ground of rejection to
avoid termination of the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new evidence relating to
the claims so rejected, or both, and have the matter reconsidered
by the examiner, in which event the proceeding will be
remanded to the examiner. . . .
(2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same record. . . .

REVERSED; 37 C.F.R. § 41.50(b)

lp

HEALTH HERO NETWORK, INC.
2400 GENG ROAD, SUITE 200
PALO ALTO CA 94303