Ex Parte Ciarniello et al

Patent Trial and Appeal Board

Dec 2, 2016

12418607 (P.T.A.B. Dec. 2, 2016)

United States Patent and Trademark Office
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
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APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
12/418,607 04/05/2009 Anthony Ciarniello 257426 8873
23460 7590 12/06/2016
LEYDIG VOIT & MAYER, LTD
TWO PRUDENTIAL PLAZA, SUITE 4900
180 NORTH STETSON AVENUE
CHICAGO, IL 60601-6731
EXAMINER
MISIASZEK, AMBER ALTSCHUL
ART UNIT PAPER NUMBER
3624
NOTIFICATION DATE DELIVERY MODE
12/06/2016 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
Chgpatent @ ley dig. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ANTHONY CIARNIELLO,
LONNY REISMAN,
and CHARLES BLANKSTEEN
Appeal 2014—002265
Application 12/418,607
Technology Center 3600
Before ANTON W. FETTING, NINA L. MEDLOCK, and
BRUCE T. WIEDER, Administrative Patent Judges.
FETTING, Administrative Patent Judge.
DECISION ON REQUEST FOR REHEARING
STATEMENT OF THE CASE
This is a decision on rehearing in Appeal No. 2014-002265. We have
jurisdiction under 35 U.S.C. § 6(b).
Requests for Rehearing are limited to matters misapprehended or
overlooked by the Board in rendering the original decision, or to responses
to a new ground of rejection designated pursuant to § 41.50(b). 37 C.F.R.
§41.52.
Appeal 2014-002265
Application 12/418,607
ISSUES ON REHEARING
Appellants contend that Knaus does not teach or suggest “deriving
clinical information” from the health plan claims data, “reflecting the
presence of a medical condition based on an analysis of at least the claims
data.” Request 3.
ANALYSIS
We found in our decision that the rejection of claims 1—33 is proper.
Decision 11.
The Appellants argue that Specification paragraphs 14, 41, 47, and 62
describe this “deriving” differently than in the prior art. Request 3^4.
The only one of these paragraphs Appellants argued previously before us
is paragraph 14. App. Br. 14—15; Reply Br. 3. Arguments related to the
remaining paragraphs are accordingly deemed waived as we were not placed
in a position to consider them.
As to paragraph 14, Appellants contend that “deriving clinical
information from claims data requires that the data be stored in ‘a unique
data repository, called the Data Vault.’” Request 3. The claims make no
mention of a data vault. The closest the claims come to this is aggregating
data in a computer, an inherent requirement of any data processing process.
Paragraph 14 recites that “[t]he present invention securely aggregates and
standardizes clinical data derived from a variety of sources and stores it on a
patient-specific basis in a unique data repository, called the Data Vault.”
Spec. para. 14. Of this, claim 1 recites the aggregation from plural sources,
and even that is not in the “deriving” limitation argued. Appellants chose to
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Appeal 2014-002265
Application 12/418,607
omit the remaining characteristics from paragraph 14 to broaden the claim
scope.
Though understanding the claim language may be aided by
explanations contained in the written description, it is important
not to import into a claim limitations that are not part of the
claim. For example, a particular embodiment appearing in the
written description may not be read into a claim when the claim
language is broader than the embodiment.
Superguide Corp. v. DirecTV Enterprises, Inc., 358 F.3d 870, 875 (Fed. Cir.
2004).
The Appellants’ arguments are not commensurate with the scope of the
claims as drafted.
CONCLUSION
Nothing in Appellants’ request has convinced us that we have
overlooked or misapprehended the prior art and claim limitations as argued
by Appellant. Accordingly, we deny the request.
DECISION
To summarize, our decision is as follows:
• We have considered the REQUEST FOR REHEARING
• We DENY the request that we reverse the Examiner as to claims 1—
33.
REHEARING DENIED
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