Ex Parte Brown

Board of Patent Appeals and Interferences

Feb 8, 2011

09810334 (B.P.A.I. Feb. 8, 2011)

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.
09/810,334 03/14/2001 Stephen J. Brown 7553.00019 / 01-0310 6688
60683 7590 02/08/2011
HEALTH HERO NETWORK, INC.
2400 GENG ROAD, SUITE 200
PALO ALTO, CA 94303
EXAMINER
KOPPIKAR, VIVEK D
ART UNIT PAPER NUMBER
3686
MAIL DATE DELIVERY MODE
02/08/2011 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 1
___________ 2
3
BEFORE THE BOARD OF PATENT APPEALS 4
AND INTERFERENCES 5
___________ 6
7
Ex parte STEPHEN J. BROWN 8
___________ 9
10
Appeal 2009-012201 11
Application 09/810,334 12
Technology Center 3600 13
___________ 14
15
Before HUBERT C. LORIN, ANTON W. FETTING, and 16
BIBHU R. MOHANTY, Administrative Patent Judges. 17
FETTING, Administrative Patent Judge. 18
DECISION ON APPEAL1 19

1 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.

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STATEMENT OF THE CASE2 1

2 Our decision will make reference to the Appellant’s Appeal Brief (“App.
Br.,” filed March 12, 2009) and Reply Brief (“Reply Br.,” filed June 11,
2009), and the Examiner’s Answer (“Ans.,” mailed April 14, 2009).
Stephen J. Brown (Appellant) seeks review under 35 U.S.C. § 134 2
(2002) of a final rejection of claims 1-7, 9-16, and 18-22, the only claims 3
pending in the application on appeal. We have jurisdiction over the appeal 4
pursuant to 35 U.S.C. § 6(b) (2002). 5
The Appellant invented an automated content delivery program able to 6
connect remote users across independent platforms to a central database of 7
libraries whereby a patient's health can be scored dynamically (Specification 8
¶ 0001). An understanding of the invention can be derived from a reading 9
of exemplary claim 10, which is reproduced below [bracketed matter and 10
some paragraphing added]. 11
10. A method for providing customized health information to 12
an individual, said method comprising the steps of: 13
(A) generating a questionnaire comprising 14
(i) one or more questions for determining an expression 15
of risk for said individual, 16
(ii) a first number of answer options to each of said 17
questions and 18
(iii) one or more follow-up actions, 19
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wherein said expression of risk concerns at least 1
one of 2
a physical condition of said individual, 3
a mental condition of said individual, and 4
a behavior of said individual; 5
(B) associating each of said answer options with one of a 6
second number of values representing a level of risk, 7
wherein said second number is greater than said first 8
number; 9
(C) transferring said questionnaire from a server to an 10
apparatus, 11
wherein said apparatus is 12
(i) associated with said individual and 13
(ii) remotely located from said server; 14
(D) accessing a database in a storage medium, 15
said database containing model information relating to 16
(i) an aspect of care, 17
(ii) said expression of risk and 18
(iii) said level of risk; 19
(E) generating a profile for said individual based on one or 20
more of 21
said aspects of care, 22
responses to said questions, 23
said expression of risk and 24
said levels of risk associated with said individual; and 25
(F) sending health related information to said individual based 26
on said profile, 27
wherein data relating to said physical condition of said 28
individual comprises 29
patient information 30
from one or more medical claims 31
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received by said server 1
from a medical claims paying organization 2
associated with said individual. 3
The Examiner relies upon the following prior art: 4
Papageorge US 6,584,445 B2 Jun. 24, 2003
Claims 1-8, 10-16, and 18 stand rejected under 35 U.S.C. § 101 as 5
directed to non-statutory subject matter. 6
Claims 1-7, 9-16, and 18-22 stand rejected under 35 U.S.C. § 102(e) as 7
anticipated by Papageorge. 8
ISSUES 9
The issue of statutory subject matter turns on whether claim 10 recites 10
operation of some device and whether claim 1 is directed to software per se. 11
The issue of novelty turns on whether Papageorge describes the level of risk 12
associations recited in claims 1 and 10 and whether Papageorge describes 13
the icon linkages recited in claim 19. 14
FACTS PERTINENT TO THE ISSUES 15
The following enumerated Findings of Fact (FF) are believed to be 16
supported by a preponderance of the evidence. 17
Facts Related to the Prior Art - Papageorge 18
01. Papageorge is directed to a tool to help patients reach the best 19
treatment options taking into consideration the patient's lifestyle 20
and personal choices, the cost and effectiveness, and the 21
physician's assessment of each option in terms of patient specific 22
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data. The patient inputs individual information and 1
concerns/desires, and the physician inputs clinical data and a 2
preliminary treatment plan. The computerized health evaluation 3
system has statistical information about the particular medical 4
condition, the various treatment options, the treatment 5
effectiveness, financial impact, and current disease-related data 6
from the medical literature. The system outputs a report for 7
evaluation by the patient and doctor for a discussion and review 8
session and allows complex medical decisions to be made more 9
effectively and with more confidence. Papageorge 3:66-4:26. 10
02. On electronic platforms, Papageorge’s system explains the 11
disease and all treatment options. The patient then answers a 12
questionnaire about his/her functional status and how much it may 13
be impaired; whether work, family, lifestyle, and/or future plans 14
are affected; and treatment preferences, given the different 15
probable risks associated with each one. Papageorge 6:66-7:7. 16
03. Papageorge’ system develops a patient questionnaire to elicit 17
treatment preferences and their bases, e.g., economic, family, 18
lifestyle, and fear of surgical risk, pain, etc., which may change 19
his/her risk tolerance level, and a physician questionnaire on 20
patients' clinical condition, severity level, planned treatment, and 21
why others are not appropriate for a given patient. This system 22
applies a risk tolerance scale to the reasons for preferences to 23
construct a risk tolerance profile of the patient. Papageorge 8:55-24
67. 25
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04. Papageorge’s system then formats a report showing the 1
responses and conditional text, the patient's risk tolerance profile, 2
patient and physician treatment preferences, how they compare to 3
that found to be most cost-effective, and the factors supporting 4
their choice. This shows the patient's severity level based on 5
aggregate scores of the clinical indicators. Papageorge 9:9-16. 6
05. Papageorge’s questionnaires examine risk values based on data 7
entered by patients and physicians, and are shown numerically and 8
scored on the patient risk tolerance scale ranging from 0 to 9. The 9
output report is an aid in deciding the need for, timing, and type of 10
treatment. It informs physicians and patients of the costs, risks, 11
and benefits of all treatments, and records the reasons for their 12
choice. Papageorge 9:48 – 10:10. 13
06. During processing, Papageorge’s system costs the formulas for 14
a set time frame for each treatment option; assigns discount rates 15
to responses to quantify each patient's risk tolerance; computes 16
pre-assigned levels of risk (0-9 scale) for each possible response; 17
and selects different data sets of post-treatment complication 18
incidence rates depending on the type of lesion. Papageorge 19
11:15-25. 20
21
22
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ANALYSIS 1
Claims 1-8, 10-16, and 18 rejected under 35 U.S.C. § 101 as directed to 2
non-statutory subject matter. 3
The Examiner found that claim 10 was a method claim that failed to 4
recite a specific device and claim 1 was an apparatus claim that merely 5
included software per se. Ans. 4. 6
Claim 10 recites “(C) transferring said questionnaire from a server to an 7
apparatus, wherein said apparatus is (i) associated with said individual and 8
(ii) remotely located from said server.” We agree with the Appellant that 9
this step transfers data between two physically distinct devices and so recites 10
more than an abstract idea. Reply Br. 5. While in some instances this might 11
be considered insignificant activity, such a transfer is directly relevant to the 12
use of the questionnaire in this claim. Thus, while we see the Examiner’s 13
point and find the issue is legitimately raised, in this case the subject matter 14
claimed provides the context required for patent eligible subject matter. 15
Claim 1 recites a server comprising a questionnaire generator, a 16
database, and a profile generator. We agree with the Appellant that the 17
Examiner only found that the server might contain software. Reply Br. 4. A 18
server is a device and as such is more than software per se. 19
Claims 1-7, 9-16, and 18-22 rejected under 35 U.S.C. § 102(e) as 20
anticipated by Papageorge. 21
Independent claims 1 and 10 require generating a questionnaire with 22
questions and a first number of answer options, and associating each of those 23
answer options with one of a second number of values representing a level 24
of risk, wherein said second number is greater than said first number. The 25
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Examiner found that Papageorge described this, citing two separate portions, 1
viz. Papageorge 8:4-9:33; 11:15-30 (Ans. 5); and 9:55-65 (Ans. 11). The 2
Appellant argues that none of these cited portions describes the limitation at 3
issue. Appeal Br. 13. We agree with the Appellant. The Examiner has done 4
little more than provide the citations without explaining how those portions 5
describe the limitations and we are unable to discern how those portions, 6
aside from generating a questionnaire with questions and answers with some 7
association to risk (FF 03), might do so. As the Appellant argues, 8
“Papageorge appears to be silent that fewer options exist in the questionnaire 9
than the multiple levels of risk.” Appeal Br. 13. While Papageorge does 10
limit the number of values representing levels of risk to 10 (FF 06), 11
Papageorge is silent as to the number of answer options. As this is a 12
rejection under novelty, the absence of any finding regarding this number 13
shows lack of a prima facie case. 14
Independent claim 19 requires linking icons of a particular question, a 15
particular answer, a particular follow-up action and particular follow-up 16
responses. The Examiner found that Papageorge described this, citing two 17
separate portions, viz. Papageorge 8:4-9:33; (Ans. 9); and 6:55-7:33 (Ans. 18
11). The Appellant argues that none of these cited portions describe the 19
limitation at issue. Appeal Br. 22. We agree with the Appellant. The 20
Examiner has done little more than provide the citations without explaining 21
how those portions describe the limitations and we are unable to discern how 22
those portions, aside from questions and answers (FF 03 and 04), might do 23
so. As the Appellant argues, “the cited text, and the rest of Papageorge 24
appears to be silent regarding linking of icons.” Appeal Br. 22. 25
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CONCLUSIONS OF LAW 1
Rejecting claims 1-8, 10-16, and 18 under 35 U.S.C. § 101 as directed to 2
non-statutory subject matter is in error. 3
Rejecting claims 1-7, 9-16, and 18-22 under 35 U.S.C. § 102(e) as 4
anticipated by Papageorge is in error. 5
DECISION 6
To summarize, our decision is as follows. 7
• The rejection of claims 1-8, 10-16, and 18 under 35 U.S.C. § 101 as 8
directed to non-statutory subject matter is not sustained. 9
• The rejection of claims 1-7, 9-16, and 18-22 under 35 U.S.C. § 102(e) 10
as anticipated by Papageorge is not sustained. 11
No time period for taking any subsequent action in connection with this 12
appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. 13
§ 1.136(a)(1)(iv) (2007). 14
15
REVERSED 16
17
18
19
mev 20
21
Address 22
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HEALTH HERO NETWORK, INC. 1
2400 GENG ROAD, SUITE 200 2
PALO ALTO CA 94303 3