Ex Parte Corvin

Board of Patent Appeals and Interferences

Aug 12, 2010

09747040 (B.P.A.I. Aug. 12, 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.
09/747,040 12/22/2000 Christoph T. Corvin GEMS:0123/yod
15-EC-5764
4691
68174 7590 08/13/2010
GE HEALTHCARE
c/o FLETCHER YODER, PC
P.O. BOX 692289
HOUSTON, TX 77269-2289
EXAMINER
FELTEN, DANIEL S
ART UNIT PAPER NUMBER
3693
MAIL DATE DELIVERY MODE
08/13/2010 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 CHRISTOPH T. CORVIN
____________

Appeal 2009-009415
Application 09/747,040
Technology Center 3600
____________

Before HUBERT C. LORIN, ANTON W. FETTING, and
JOSEPH A. FISCHETTI, Administrative Patent Judges.

LORIN, Administrative Patent Judge.

DECISION ON APPEAL1

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.
Appeal 2009-00941
Application 09/747,040
2

STATEMENT OF THE CASE
Christoph T. Corvin (Appellant) seeks our review under 35
U.S.C. § 134 (2002) of the final rejection of claims 1-9, 11-19, 21-37, 39-43,
and 45-60. We have jurisdiction under 35 U.S.C. § 6(b) (2002).

SUMMARY OF DECISION
We REVERSE and enter a new ground of rejection pursuant to 37
C.F.R. 41.50(b).2

THE INVENTION
The invention is a method for analyzing transactions for medical
resources in a medical facility. Specification 4:3-4.
Claim 1, reproduced below, is illustrative of the subject matter on
appeal.
1. A method for analyzing transactions for
medical resources in a medical facility, the method
comprising:
providing access to financial analysis system
for a medical resource supplier via a network;
providing a network interface for
communication with the financial analysis system,
the network interface including a form for entering
client data for medical resources;

2 Our decision will make reference to the Appellant’s Appeal Brief (“App.
Br.,” filed Dec. 4, 2006) and Reply Brief (“Reply Br.,” filed May 25, 2007),
and the Examiner’s Answer (“Answer,” mailed Mar. 21, 2007).
Appeal 2009-00941
Application 09/747,040
3
receiving the client data from the network
interface via the network, wherein receiving the
client data comprises receiving client trade-in data
for a purchasing transaction for medical resources;
analyzing the client data in the financial
analysis system;
providing a plurality of financial transaction
options tailored to the client data; and
transmitting the plurality of financial
transaction options to a client via the network.

THE REJECTION
The Examiner relies upon the following as evidence of
unpatentability:
Hartley-Urquhart US 6,167,385 Dec. 26, 2000
John McCormack, A worldwide network of supplies, 7 Health Data
Management 54 (1999). [ Hereinafter, McCormack.]
Janet Kalbhen. Buying on the Web. 8Materials Management in Health
Care 16 (1999). [Hereinafter, Kalbhen.]

The following rejection is before us for review:
1. Claims 1-9, 11-19, 21-37, 39-43, and 45-60 are rejected under 35
U.S.C. §103(a) as being unpatentable over Hartley-Urquhart,
McCormack, and Kalbhen.

ISSUE
The issue is whether claims 1-9, 11-19, 21-37, 39-43, and 45-60 are
unpatentable under 35 U.S.C. §103(a) over Hartley-Urquhart, McCormack,
and Kalbhen. Specifically, the issue is whether Hartley-Urquhart teaches: 1)
“providing a plurality of financial transaction options which are tailored to
the client data” and “transmitting the plurality of financial transaction
Appeal 2009-00941
Application 09/747,040
4
options to a client via the network” as recited in independent claims 1, 33,
40, 49, 50 and 53-60 and 2) a “financial analysis module being configured to
evaluate the client data and to generate a plurality of financial transaction
options tailored to the client data” as recited in independent claims 17, 51,
and 52.

ANALYSIS
The Appellant argues that none of Hartley-Urquhart, McCormack, or
Kalbhen teaches: 1) “providing a plurality of financial transaction options
which are tailored to the client data” and “transmitting the plurality of
financial transaction options to a client via the network” as recited in
independent claims 1, 33, 40, 49, 50 and 53-60 and 2) a “financial analysis
module being configured to evaluate the client data and to generate a
plurality of financial transaction options tailored to the client data” as recited
in independent claims 17, 51, and 52. App. Br. 18-19 and Reply Br. 6-7.
In the Answer, the Examiner does not respond to this argument. See
Answer 5-6. However, in the rejection, the Examiner cites to Hartley-
Urquhart to teach this subject matter. Answer 4. The Examiner cites “see
PO, col. 6, ll. 29-37; col. 8, ll. 50+” for the step of providing a plurality of
financial transaction options and cites “col. 8, ll. 50+” for the step of
transmitting the plurality of financial transaction options.
However, we find that these citations do not teach the limitations at
issue. Hartley-Urquhart does teach that a purchase order (PO), which is
mentioned in column 8, lines 50-59, can be transmitted on the network of an
implemented supply chain funding system; however, the purchase order
does not contain a plurality of financial transaction options. Column 6, lines
Appeal 2009-00941
Application 09/747,040
5
29-37 does not relate to the purchase order. This passage teaches that the
supply chain funding system could be structured differently based on the
needs to the trading partners and seems to refer back to Hartley-Urquhart’s
previous discussion of evaluating and setting up the supply chain funding
system. See col. 3, ll. 16 – col. 4, ll. 39. However, Hartley-Urquhart does
not describe that different structure options are transmitted over the network
of supply chain funding system. We fail to see, and the Examiner provides
no other explanation, as to how these cited passages of Hartley-Urquhart
teach the limitations at issue. Accordingly, we find that the Appellant has
overcome the rejection of claims 1, 17, 33, 40, 49-60, and claims 2-9, 11-16,
18, 19, 21- 32, 34-37, 39, 41-43, and 45-48 under 35 U.S.C. §103(a) as
being unpatentable over Hartley-Urquhart, McCormack, Jr., and Kalbhen.

NEW GROUND OF REJECTION
Pursuant to 37 CFR 41.50(b) we enter a new ground of rejection on
claims 56-60.
We reject claims 56-60 under 35 U.S.C. § 101 as being directed to
non-statutory subject matter. Taking claim 56 as representative, claim 56
recites “[a] program” which comprises “a machine readable medium” and
“machine readable code disposed on the medium.” We note that the
Specification is silent as the meaning of “a machine readable medium.”
Giving claim 56 the broadest reasonable construction, we find that claim 56
encompasses forms of the machine readable code being disposed on
Appeal 2009-00941
Application 09/747,040
6
transitory propagating signals per se. 3 A signal does not fit within at least
one of the four statutory subject matter categories under 35 U.S.C. §101. In
re Nuijten, 500 F.3d 1346, 1357 (Fed. Cir. 2007).

DECISION
The decision of the Examiner to reject claims 1-9, 11-19, 21-37, 39-
43, and 45-60 is reversed.
We enter a new ground of rejection on claims 56-60.
This decision contains a new ground of rejection pursuant to
37 C.F.R. § 41.50(b) (effective September 13, 2004, 69 Fed. Reg. 49960
(August 12, 2004), 1286 Off. Gaz. Pat. Office 21 (September 7, 2004)). 37
C.F.R. § 41.50(b) provides “[a] new ground of rejection pursuant to this
paragraph shall not be considered final for judicial review.”
37 C.F.R. § 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 . . . .

3 See Subject Matter Eligibility of Computer Readable Media, 1351 Off.
Gaz. Pat. Office 212 (Feb. 23, 2010).
Appeal 2009-00941
Application 09/747,040
7
REVERSED; 37 C.F.R. § 41.50(b)

mev

GE HEALTHCARE
c/o FLETCHER YODER, PC
P.O. BOX 692289
HOUSTON TX 77269-2289