Ex parte Burks et al.

Board of Patent Appeals and Interferences

Jul 24, 2001

08777805 (B.P.A.I. Jul. 24, 2001)

1
The opinion in support of the decision being entered today was
not written for publication and is not binding precedent of
the Board.
Paper No. 14
UNITED STATES PATENT AND TRADEMARK OFFICE
__________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________
Ex parte JAMES L. BURKS, ROBERT R. SCHICK
and SHEILA H. SCHWEITZER
__________
Appeal No. 1999-2311
Application 08/777,805
___________
HEARD: June 14, 2001
___________
Before JERRY SMITH, BARRETT and BARRY, Administrative Patent
Judges.
JERRY SMITH, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on the appeal under 35 U.S.C. § 134
from the examiner’s rejection of claims 1, 2, 4-14, 16-23, 28,
29, 32-37, 39-43, 46 and 51-54, which constitute all the
claims remaining in the application.
The disclosed invention pertains to a method and
apparatus for communicating medical transactions between a
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plurality of computer stations, some of which are located at
healthcare providers and some of which are located at payors.
The invention particularly relates to permitting transactions
to take place between computers using different formats and
communication protocols.
Representative claim 1 is reproduced as follows:
1. A medical transaction system for communicating
data messages between a plurality of computer stations located
at healthcare providers and payors, comprising:
a communication receiver for receiving data messages
related to patient care activities performed by said
healthcare providers, said messages received from said
computer stations at said healthcare providers in a plurality
of formats and protocols recognized by said communications
receiver;
a compiler for compiling patient care information from
said data messages received from said computer stations to
form a plurality of patient care records having a single
common format that is independent of at least one of said
plurality of formats and protocols recognized by said
communication receiver;
an extractor for extracting ones of said patient care
records in accordance with a computer station identification
code;
a formatter for formatting said extracted patient care
records in a format corresponding to said computer station
identification code; and
a communications transmitter for transmitting said
formatted patient care records to said computer station
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identified by said identification code in a format and
protocol recognized by said identified computer station.
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The examiner relies on the following reference:
Barber et al. (Barber) 4,858,121 Aug. 15, 1989
Claims 1, 2, 4-14, 16-23, 28, 29, 32-37, 39-43, 46 and
51-54 stand rejected under 35 U.S.C. § 103. As evidence of
obviousness the examiner offers Barber taken alone.
Rather than repeat the arguments of appellants or the
examiner, we make reference to the brief and the answer for
the respective details thereof.
OPINION
We have carefully considered the subject matter on
appeal, the rejection advanced by the examiner and the
evidence of obviousness relied upon by the examiner as support
for the rejection. We have, likewise, reviewed and taken into
consideration, in reaching our decision, the appellants’
arguments set forth in the brief along with the examiner’s
rationale in support of the rejection and arguments in
rebuttal set forth in the examiner’s answer.
It is our view, after consideration of the record
before us, that the evidence relied upon would not have
suggested to one of ordinary skill in the art the obviousness
of the invention as set forth in the appealed claims.
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Accordingly, we reverse.
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In rejecting claims under 35 U.S.C. § 103, it is
incumbent upon the examiner to establish a factual basis to
support the legal conclusion of obviousness. See In re Fine,
837 F.2d 1071, 1073, 5 USPQ2d 1596, 1598 (Fed. Cir. 1988). In
so doing, the examiner is expected to make the factual
determinations set forth in Graham v. John Deere Co., 383 U.S.
1, 17, 148 USPQ 459, 467 (1966), and to provide a reason why
one having ordinary skill in the pertinent art would have been
led to modify the prior art or to combine prior art references
to arrive at the claimed invention. Such reason must stem
from some teaching, suggestion or implication in the prior art
as a whole or knowledge generally available to one having
ordinary skill in the art. Uniroyal, Inc. v. Rudkin-Wiley
Corp., 837 F.2d 1044, 1051, 5 USPQ2d 1434, 1438 (Fed. Cir.),
cert. denied, 488 U.S. 825 (1988); Ashland Oil, Inc. v. Delta
Resins & Refractories, Inc., 776 F.2d 281, 293, 227 USPQ 657,
664 (Fed. Cir. 1985), cert. denied, 475 U.S. 1017 (1986); ACS
Hosp. Sys., Inc. v. Montefiore Hosp., 732 F.2d 1572, 1577, 221
USPQ 929, 933 (Fed. Cir. 1984). These showings by the
examiner are an essential part of complying with the burden of
presenting a prima facie case of obviousness. Note In re
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Oetiker, 977 F.2d 1443, 1445, 24 USPQ2d 1443, 1444 (Fed. Cir.
1992). If that burden is met, the burden then shifts to the
applicant to overcome the prima facie case with argument
and/or evidence. Obviousness is then determined on the basis
of the evidence as a whole and the relative persuasiveness of
the arguments. See Id.; In re Hedges, 783 F.2d 1038, 1039,
228 USPQ 685, 686 (Fed. Cir. 1986); In re Piasecki, 745 F.2d
1468, 1472, 223 USPQ 785, 788 (Fed. Cir. 1984); and In re
Rinehart, 531 F.2d 1048, 1052, 189 USPQ 143, 147 (CCPA 1976).
Only those arguments actually made by appellants have been
considered in this decision. Arguments which appellants could
have made but chose not to make in the brief have not been
considered [see 37 CFR
§ 1.192(a)].
With respect to each of independent claims 1, 14, 20
and 39, the examiner finds that Barber teaches the essential
aspects of the claimed invention. The examiner finds that any
differences between the claimed invention and Barber would
have been obvious to the artisan [answer, pages 4-5].
Appellants argue that Barber fails to show any
capability for transmitting or receiving information in a
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plurality of formats and protocols as claimed. Appellants
argue that Barber requires that all incoming messages from
healthcare providers be in a single standard format.
Appellants also argue that there is no suggestion on this
record that Barber should be modified to support different
formats and protocols. In fact, appellants note that the
prior art of record in this case suggests that such
modification of Barber would be difficult or impossible
[brief, pages 6-15].
The examiner responds that although Barber does not
teach that the computer terminals generate messages in a
plurality of different formats and protocols, it would have
been obvious to do so in view of the well known methods of
generating, transferring and receiving data in a plurality of
formats and protocols at the time of appellants’ invention.
The examiner also responds that a plurality of computer
stations each having a format would meet the claimed plurality
of formats and protocols as claimed. The examiner observes
that his proposed modification of Barber would improve the
performance of Barber’s system. Finally, the examiner takes
“official notice” that many systems prior to the claimed
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invention have been used to facilitate communications and
conversions between dissimilar networks or protocols and many
systems have been used for converting data from one format to
another format [answer, pages 9-13].
We agree with appellants that the record in this case
does not support the examiner’s rejection. As noted above,
the examiner has the burden of initially presenting a prima
facie case of obviousness. The examiner cannot satisfy this
burden by simply dismissing differences between the claimed
invention and the teachings of the prior art as being obvious.
In this case, the examiner must either present a cogent
rationale why the artisan would have been motivated to modify
the teachings of Barber to arrive at the claimed invention
which is supported by the record, or the examiner must present
us with an evidentiary record which independently supports the
finding of obviousness. The examiner’s only rationale for
modifying Barber is that the proposed modification would
enhance the overall system of Barber {answer, page 11]. The
fact that a claimed invention enhances a prior art system is
not evidence that the enhancement would have been obvious
within the meaning of 35 U.S.C. § 103. It does not matter how
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strong the examiner’s convictions are that the claimed
invention would have been obvious, or whether we might have an
intuitive belief that the claimed invention would have been
obvious within the meaning of 35 U.S.C. § 103. Neither
circumstance is a substitute for evidence lacking in the
record. Whether there is prior art available which would
render these appealed claims unpatentable we cannot say.
Whether the examiner could have developed a reasonable basis
for asserting the obviousness of the claimed invention based
on the present record we will not speculate. We can say,
however, that the record presently before us does not support
the rejection as formulated by the examiner. Therefore, we do
not sustain the examiner’s rejection of independent claims 1,
14, 20 and 39 or of claims which depend therefrom based on
Barber and the rationale provided by the examiner.
For the reasons discussed above, the decision of the
examiner rejecting claims 1, 2, 4-14, 16-23, 28, 29, 32-37,
39-43, 46 and 51-54 is reversed.
REVERSED
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)
JERRY SMITH )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
LEE E. BARRETT )
Administrative Patent Judge ) APPEALS AND
)
) INTERFERENCES
)
LANCE LEONARD BARRY )
Administrative Patent Judge )
THOMAS H. HUMPHREY
WOOD, HERRON AND EVANS
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