Ex Parte Claus et alDownload PDFPatent Trial and Appeal BoardAug 16, 201611839074 (P.T.A.B. Aug. 16, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 111839,074 08/15/2007 33357 7590 08/18/2016 ABBOTT MEDICAL OPTICS INC. 1700 E. ST. ANDREW PLACE SANTA ANA, CA 92705 FIRST NAMED INVENTOR Michael J. Claus 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 ATTORNEY DOCKET NO. CONFIRMATION NO. 27681 7850 EXAMINER RAJ,RAJIV J ART UNIT PAPER NUMBER 3626 NOTIFICATION DATE DELIVERY MODE 08/18/2016 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): PatentMGR@abbott.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte MICHAEL J. CLAUS and JOSEPH K. LIU Appeal2014--001839 Application 11/839,074 Technology Center 3600 Before ANTON W. PETTING, BIBHU R. MOHANTY, and TARA L. HUTCHINGS, Administrative Patent Judges. PETTING, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE1 Michael J. Claus and Joseph K. Liu (Appellants) seek review under 35 U.S.C. § 134 of a final rejection of claims 1-32, the only claims pending in the application on appeal. We have jurisdiction over the appeal pursuant to 35 U.S.C. § 6(b). The Appellants invented a way of managing and distributing user profiles within surgical systems. Specification para. 1. 1 Our decision will make reference to the Appellants' Appeal Brief ("Appeal Br.," filed August 19, 2013) and Reply Brief ("Reply Br.," filed November Appeal2014-001839 Application 11/839,074 An understanding of the invention can be derived from a reading of exemplary claim 1, which is reproduced below (bracketed matter and some paragraphing added). 1. A system for maintaining a set of medical system profiles, compnsmg: a central server system comprising: and [ 1] a medical profile directory configured to maintain the set of medical system profiles comprising a medical practitioner's desired settings for operating a medical device; [2] a medical profile manager configured to update and maintain medical system profiles comprising the medical practitioner's desired settings for operating the medical device within the medical profile directory; a server [3] configured to interface with the medical profile manager to facilitate medical system profile maintenance; wherein the server is configured [ 4] to receive information from at least one client device and [5] enable the medical profile manager to direct profile maintenance actions to at least one medical system profile comprising the medical practitioner's desired settings for operating the medical device in the medical profile directory. 21, 2013), and the Examiner's Answer ("Ans.," mailed September 25, 2013), and Final Action ("Final Act.," mailed February 19, 2013). 2 Appeal2014-001839 Application 11/839,074 The Examiner relies upon the following prior art: Pavlatos US 2007 /0255584 Al Kelley US 2008/0319798 Al Nov. 1, 2007 Dec. 25, 2008 Claims 1-32 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Kelley and Pavlatos. ISSUES The issues of obviousness tum primarily on whether the references describe the structure recited in claims 1-20 and 28-32 and the steps recited in claims 21-27. FACTS PERTINENT TO THE ISSUES The following enumerated Findings of Fact (FF) are believed to be supported by a preponderance of the evidence. Facts Related to the Prior Art Kelley 01. Kelley is directed to managing an individual's personal medical information, with an emphasis on preparedness for a medical emergency by using a physical credit card sized medical information card and a medical information database that can be updated via the internet. The physical credit card sized medical information card includes directions to access the medical information database so that health care providers can view 3 Appeal2014-001839 Application 11/839,074 additional medical information and images for an individual they are treating. Kelley para. 2. 02. Kelley describes an individual entering and storing their personal medical information in a database over the internet accessible via any handheld device that has internet capabilities, using template screens that guide them through this process. The template screens prompt the individual to input the necessary information by asking questions and providing answer options and/or exemplary answers. Kelley para. 23. 03. Kelley describes creating a virtual medical information card once an individual's personal online medical information record is created. The card includes the individual's key medical information that would be most needed in times of medical emergency and directions for accessing the individual's personal online medical record. A physical medical information card is then created which is an exact physical replica of the individual's virtual medical information card. The individual's physical medical information card is a credit card size card sent to the individual to alert emergency health care providers as to the individual's personal medical information most needed in times of emergency to treat the individual. It also provides health care providers with instructions for gaining a more complete online medical record relating to the individual. Kelley para. 24. 04. Kelley describes an individual updating or changing their personal online medical information record. Once the individual's 4 Appeal2014-001839 Application 11/839,074 online medical information record is updated, a virtual medical information card is again created and a physical copy printed. Kelley para. 26. 05. Kelley describes an individual including additional information such as documents or images to his or her online medical information record. Kelley para. 27. 06. Kelley describes an online template for inputting an individual's medical information. Upon access to the medical information card program and registration with the service, individuals are presented with a medical information questionnaire in order to input and store their personal medical information. The medical information questionnaire surveys for the presence of certain important medical conditions which would impact an individual's emergency medical care. Since the credit card sized medical information card functions as an emergency medical record and space on the card is limited, the questionnaire prioritizes certain medical conditions and information. Additional information not found on the questionnaire may still be entered by an individual and later made available to treating health care providers on the website associated with the medical information card. Kelley para. 28. 07. Kelley describes a medical devices category in the medical information questionnaire. This would query for a list of specific device or treatments which may affect decisions made by the individual's treating care provider. This information can help a 5 Appeal2014-001839 Application 11/839,074 treating provider assess the functional status of an implanted medical device. The manufacturer and model number of any implanted medical device can be entered and listed on the individual's online medical information record which can be viewed by a treating care provider by accessing the website associated with the medical information card. Kelley para. 39. Pavlatos 08. Pavlatos is directed to providing health assistance based on information in a patient's health record. An interface is provided for providing assistance which includes a patient health record section and a banner section that performs health assistance- related functions based on the content of the patient health record section. Pavlatos para. 5. 09. Pavlatos describes a physician clicking a banner to automatically connect, or to schedule a connection, to an audio, visual, or other interactive conference with a drug company's representative. The drug company's representative is selected based on the information in the patient health record section and/or the physician's preferences. Pavlatos para. 53. 10. Pavlatos describes connectivity to drug assistance programs provided by various pharmaceutical companies for patients that cannot afford the medication the physician-user is considering prescribing. Pavlatos uses an Enterprise Master Patient Index (EMPI) and stores demographic information on the patient which allows patient information to automatically be generated in drug 6 Appeal2014-001839 Application 11/839,074 assistance program request forms. To perform this task, the banner may display a drug assistance request template or form that may be automatically populated with the patient's health information. Pavlatos para. 54. 11. Pavlatos describes allowing a physician-user to customize the banner to shows drugs or drug-related advertising the physician- user wants displayed based on experiences with such drugs or other reasons. For example, the physician can choose one of ten drugs he or she may wish to have on their drug list banner. This process allows the physician-user to control the direct target marketing at the point of service based on the physician-user's own interests, preferences, and/ or experiences. The list may be customizable using any selection method. Pavlatos para. 55. ANALYSIS Claims 1-20 and 28-32 are directed to machines referred to as systems. Claim 1 recites a central server with a program that manages a profile database and a server that retransmits data from a data entry device to the central server's profile database. Claim 11 recites similar profile database and manager components except the central server reference is omitted and the server is here recited as being able to transmit from the central server profile to some surgical system. Claim 28 again recites the central server, but not the second server, and adds surgical systems having device operational settings configurable by a surgeon. 7 Appeal2014-001839 Application 11/839,074 Claim 21 is a method claim causing a device to transmit profile settings for operating a device to a surgical system. As to structural inventions, such claims must be distinguished from the prior art in terms of structure rather than function, see, e.g., In re Schreiber, 128 F.3d 1473, 1477-78 (Fed. Cir. 1997). In order to satisfy the functional limitations in an apparatus claim, however, the prior art apparatus as disclosed must be capable of performing the claimed function. Id. at 1478. When the functional language is associated with programming or some other structure required to perform the function, that programming or structure must be present in order to meet the claim limitation. Typhoon Touch Techs., Inc. v. Dell, Inc., 659 F.3d 1376, 1380 (Fed. Cir. 2011) (discussing Microprocessor Enhancement Corp. v. Texas Instruments, Inc., 520 F.3d 1367 (Fed. Cir. 2008)). In some circumstances generic structural disclosures may be sufficient to meet the functional requirements, see Ergo Licensing, LLC v. CareFusion 303, Inc., 673 F.3d 1361, 1364 (Fed. Cir. 2012) (citing Telcordia Techs., Inc. v. Cisco Sys., Inc., 612 F.3d 1365, 1376-77 (Fed. Cir. 2010)). No patentable weight is accorded the modifier "surgical" therefore because it is at best a description of the use to which the parts are put and does not limit the structure of the parts. Also, a structural invention is not distinguished by the work product it operates upon, such as data in a computer. "[E]xpressions relating the apparatus to contents thereof during an intended operation are of no significance in determining patentability of the apparatus claim." Ex parte Thibault, 164 USPQ 666, 667 (Bd. App. 1969). Furthermore, "inclusion of 8 Appeal2014-001839 Application 11/839,074 material or article worked upon by a structure being claimed does not impart patentability to the claims." In re Otto, 312 F .2d 937, 940 (CCP A 1963). The Examiner finds that Kelley describes the central server and server of claim 1 and that Pavlatos shows it was predictable for a physician as well as patient to use such a combination. Final Act. 3-5. The Examiner makes similar findings as to claims 11, 21, and 28. Id. at 8-10, 13-15, and 16-17. Appellants argue that the references fail to describe the medical practitioner's desired settings for operating a medical device. Appeal Br. 6- 11. We agree with the Examiner that Kelley describes the use of a database server managing profile data and a server that communicates with other equipment. This is the extent of the structure recited in claims 1 and 11. Again, the mental interpretation of the data is given no weight and the data labels recited impart no functional limitations on the structure. Although claim 11 also recites "the server is configured to transmit the medical practitioner's desired settings for operating the medical device from at least one medical system profile to a surgical system, thereby enabling the surgical system to employ the medical practitioner's desired settings for operating the medical device," the capacity that is recited is that of data transmission alone. Any use the transmitted data is intended for is aspirational rather than functional and outside the scope of the structure recited. Similarly, who operates such a device is aspirational and no more than a label for the operator, again having no part in defining the structure. Claim 21 on the other had recites a step of "causing the computing device to transmit said one medical system profile and the medical 9 Appeal2014-001839 Application 11/839,074 practitioner's desired settings for operating the medical device to at least one surgical system pursuant to predetermined propagation parameters." Claim 28, although a structural claim, still recites "surgical systems each having a plurality of surgeon desired medical device operational settings configurable by a surgeon." Even if one gives no weight to the term "surgical," each of these claims requires a device with configurable operation settings where the device is separate from where the settings are maintained. We agree with Appellants that the Examiner has not shown that the references describe this recitation. CONCLUSIONS OF LAW The rejection of claims 1-20 under 35 U.S.C. § 103(a) as unpatentable over Kelley and Pavlatos is proper. The rejection of claims 21-32 under 35 U.S.C. § 103(a) as unpatentable over Kelley and Pavlatos is improper. DECISION The rejection of claims 1-20 is affirmed. The rejection of claims 21-32 is reversed. 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)(l)(iv) (2011). AFFIRMED-IN-PART 10 Copy with citationCopy as parenthetical citation