Ex Parte Courtney et al

Patent Trial and Appeal Board

Jun 24, 2013

11220162 (P.T.A.B. Jun. 24, 2013)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
11/220,162 09/06/2005 Douglas Courtney 1051007 4788
7590 06/24/2013
Patient Practitioners, LLC
21 Prince Kaarl Lane
Palm Coast, FL 32164
EXAMINER
KANAAN, MAROUN P
ART UNIT PAPER NUMBER
3626
MAIL DATE DELIVERY MODE
06/24/2013 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 PATENT TRIAL AND APPEAL BOARD
____________

Ex parte DOUGLAS COURTNEY and NAOMI F. MELVIN
___________

Appeal 2011-001944
Application 11/220,162
Technology Center 3600
____________

Before, JOSEPH A. FISCHETTI, BIBHU R. MOHANTY, and MEREDITH
C. PETRAVICK Administrative Patent Judges.

PETRAVICK, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2011-001944
Application 11/220,162

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STATEMENT OF THE CASE
Courtney et al. (Appellants) seek our review under 35 U.S.C. § 134 of
the final rejection of claims 2-26 and 29-31. We have jurisdiction under 35
U.S.C. § 6(b).

SUMMARY OF DECISION
We AFFIRM. 1

THE INVENTION
Claim 29 reproduced below with bracketing matter added, is
illustrative of the subject matter on appeal.
29. A personal portable patient healthcare data
base program, on a computer readable medium,
comprising,
[A] a computer operated data base program
on a computer readable medium;
[B] said data base program including a data
base;
[C] said data base including computer
readable data for respective patient identifiable
relatable records;
[D] said data base program including a data
insertion display and a data output display;
[E] said data base program adapted to
connect said patient identifiable relatable records
with said data insertion display and said data

1 Our decision will make reference to the Appellants’ Supplemental Appeal
Brief (hereinafter “App. Br.,” filed May 2, 2010) and Reply Brief
(hereinafter “Reply Br.,” filed Sep. 18, 2010), and the Examiner’s Answer
(hereinafter “Ans.,” mailed Aug. 24, 2010).

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output display, and
[F] adapted to record in said patient
identifiable records, data from said data insertion
display and adapted to display in said data output
display, data from said patient identifiable records;
[G] said data base including computer
readable data of bar coded healthcare facts for a
plurality of respective general healthcare
classifications and for respective specific
healthcare facts within said general healthcare
classifications; and
[H] wherein said data base program,
responsive to at least one bar code for a respective
healthcare fact from said data insertion display, is
adapted to place at least one of said bar coded
healthcare facts in at least one of said respective
patient identifiable relatable records.

THE REJECTIONS
The Examiner relies upon the following as evidence of
unpatentability:
Simmon
Wilkes
US 2002/0040406 A1
US 2004/0010425 A1
Apr. 4, 2002
Jan. 15, 2004

The following rejections are before us for review:
1. Claims 29 and 30 are rejected under 35 U.S.C. § 112, second
paragraph, as being indefinite for failing to particularly point
out and distinctly claim the subject matter which applicant
regards as the invention.2

2 The Examiner lists claim 31 as being rejected as indefinite, however, the
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Application 11/220,162

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2. Claims 2-26 and 29-31 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Simmon and Wilkes.

FINDINGS OF FACT
We find that the findings of fact which appear in the Analysis below
are supported by at least a preponderance of the evidence. Ethicon, Inc. v.
Quigg, 849 F.2d 1422, 1427 (Fed. Cir. 1988) (explaining the general
evidentiary standard for proceedings before the Office).

ANALYSIS
The rejection of claims 29 and 30 under 35 U.S.C. § 112, second paragraph,
as being indefinite
Claim 29
The Examiner rejected independent claim 29 as being indefinite
because the claim recites a “‘data base program including a data insertion
display and a data output display’” (Ans. 3). The Examiner does not explain
why the limitation renders the claim indefinite, but rather, construes the
limitation, stating “[i]t is best understood by [t]he Examiner that the ‘data
insertion display’ is a ‘data insertion field’” (Ans. 3). Thus, the Examiner
has failed to establish that independent claim 29 is indefinite. Accordingly,
we reverse the Examiner’s rejection of claim 29 under 35 U.S.C. § 112,
second paragraph, as being indefinite.

Examiner only addresses the indefiniteness of claims 29 and 30 on pages
3 and 4 of the Answer, and so, for purposes of appeal, we find the instant
rejection to be limited to the indefiniteness of claims 29 and 30.
Appeal 2011-001944
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Claim 30
We are persuaded by the Appellants’ argument (App. Br. 42-46) that
the Examiner erred in rejecting claim 30 as being indefinite. In rejecting
claim 30, the Examiner does no more than assert that the Specification fails
to disclose “an algorithm describing the inter relationship between the fields
in the connecting claim recitations such as ‘said means for processing
connected to said means for data input’ are connected” (Ans. 3-4). Further,
we note that the Examiner provides no explanation as to why the Appellants’
citations to paragraphs [0083] and [0084] of the Specification (See App. Br.
42-43) do not show the necessary corresponding structure. “[A] general-
purpose computer is sufficient structure if the function of a term such as
‘means for processing’ requires no more than merely ‘processing,’ which
any general-purpose computer may do without any special programming.”
Ergo Licensing, LLC v. CareFusion 303, Inc., 673 F.3d 1361, 1365 (Fed.
Cir. 2012) (citing In re Katz Interactive Call Processing Patent Litigation
639 F.3d 1303, 1316-17 (Fed.Cir.2011)).
Accordingly, we reverse the Examiner’s rejection of claim 30 under
35 U.S.C. § 112, second paragraph, as being indefinite.

The rejection of claims 2-26 and 29-31 under 35 USC § 103(a) as being
unpatentable over Simmon and Wilkes
The Appellants do not present separate substantive arguments for
independent claims 29-31, and claims 2-26, from which they depend,
respectively. See App. Br. 55-66. Although Appellants do provide separate
headings for many of these claims, Appellants merely reference the
arguments for independent claim 29 or Appellants reference the arguments
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for claim 29 and add a mere recitation of the claim elements with a naked
assertion that the corresponding elements were not found in the prior art.
These are not substantive arguments that these claims are separately
patentable, and as such, will not be considered an argument for separate
patentability of those claims.
Accordingly, we select independent claim 29 as the representative
claim for these claims, and the remaining claims 2-26, 30, and 31 stand or
fall with independent claim 29. See 37 C.F.R. § 41.37(c)(1)(vii). See also
In re Lovin, 652 F.3d 1349, 1357 (Fed. Cir. 2011).
We are not persuaded by the Appellants’ argument that the Examiner
erred in rejecting claim 29 under 35 U.S.C. § 103(a) as being unpatentable
over Simmon and Wilkes (App. Br. 51-52; Reply Br. 3-8). The Appellants
provide no reasoning as to why the portions of Simmon and Wilkes relied on
by the Examiner fail to address independent claim 29 (App. Br. 47-51).
Rather, Appellants’ arguments are limited to a reproduction of the portions
of Simmon and Wilkes relied on by the Examiner, juxtaposed with the
language of the claim, and a conclusory statement that either Simmon or
Wilkes fails to disclose that for which it was cited (App. Br. 47-51; Reply
Br. 3-8).
We are also not persuaded by the Appellants’ argument that the
Examiner has not established a prima face showing of obviousness because
the Examiner does not provide any proper rationale to combine Simmon and
Wilkes (App. Br. 51-55; Reply Br. 3-8). Contrary to the Appellants’
argument, the Examiner identifies paragraphs [0101] and [0107] of Wilkes
and relies on the teachings of the prior art to provide the requisite reasoning
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and rationale to support the combination of Simmon and Wilkes in arriving
at the claimed invention (Ans. 5-6 and 11-12). We agree with the Examiner.
Paragraph [0101] of Wilkes discloses that its system “updates medical
and administrative records, thereby eliminating most, if not all, time-
consuming paperwork” resulting in a system which can “reduce costs and
improves efficiency while possibly saving lives.” Given this disclosure, we
agree with the Examiner that a person of ordinary skill in the art at the time
of the invention would have been motivated to combine the handheld data
retrieval and acquisition system disclosed in Simmon which uses a barcode
reader to obtain and record computer readable data (Abs., paras. [0020],
[0047], [0053], and [0062]) with Wilkes ability to place bar code data
([0107]) to achieve the claimed invention with reasonable success. Thus, we
find that the Examiner has provided an articulated reasoning with some
rational underpinning to support the legal conclusion of obviousness (see
KSR Int’l v. Teleflex, 550 US 398, 418 (2007) (citing In re Kahn, 441 F.3d
977, 988 (Fed. Cir. 2006)).
Additionally, we note that Appellants do not challenge the substance
of this articulated rationale, but rather broadly assert that the “Examiner has
articulated no facts or reasons why one skilled in the medical art” would
combine Simmon and Wilkes (App. Br. 54; Reply Br. 9-10). However, such
an assertion is not persuasive as the person of ordinary skill in the art is not
“one skilled in the medical art,” but rather a hypothetical person who is
presumed to know the relevant prior art. See Custom Accessories, Inc. v.
Jeffrey-Allan Indus., Inc., 807 F.2d 955, 962 (Fed. Cir. 1986).
Lastly, we are not persuaded by the Appellants’ reliance on In re
Sang-Su Lee, 277 F.3d 1338 (Fed Cir. 2002) (App. Br. 52) given that
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Examiner has, in fact, articulated a reasonable basis for the combination with
rational underpinnings drawn from the evidence of record, as discussed
above. See KSR, 550 U.S. at 418. That is, one of ordinary skill in the art at
the time of the invention would have been motivated to combine the
teachings of Wilkes and Simmon in order to eliminate paperwork which
Wilkes discloses can “reduce costs and improves efficiency while possibly
saving lives” (para. [0101]). Therefore, in the absence of any persuasive
arguments or evidence to refute the substance of the evidence relied upon or
the articulated rationale for the combination, we are not persuaded that the
Examiner erred.
Accordingly, the rejection of claims 2-26 and 29-31 under 35 U.S.C.
§ 103(a) as being unpatentable over Simmon and Wilkes is affirmed.

DECISION
The decision of the Examiner to reject claims 29 and 30 under 35
U.S.C. § 112, second paragraph, is reversed.
The decision of the Examiner to reject claims 2-26 and 29-31 under
35 U.S.C. § 103(a) is affirmed.
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)(1)(iv).
AFFIRMED
rvb