Ex Parte Crucs

Board of Patent Appeals and Interferences

Oct 25, 2011

11125930 (B.P.A.I. Oct. 25, 2011)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte KEVIN M. CRUCS
____________________

Appeal 2009-009206
Application 11/125,9301
Technology Center 2100
____________________

Before JOSEPH L. DIXON, JEAN R. HOMERE, and
JAMES R. HUGHES, Administrative Patent Judges.

HUGHES, Administrative Patent Judge.

DECISION ON APPEAL

1 Application filed May 10, 2005. The real party in interest is Apteryx, Inc.
(App. Br. 2.)
Appeal 2009-009206
Application 11/125,930

2
STATEMENT OF THE CASE
Appellant appeals from the Examiner’s rejection of claims 1-36. The
Board of Patent Appeals and Interferences (BPAI) has jurisdiction under 35
U.S.C. § 6(b).
We reverse.
Appellant’s Invention
The invention at issue on appeal relates to a system and method for
automatically generating a query to a Digital Imaging and Communication
in Medicine (DICOM) server. The method (and system) reads patient
identification Information (patient ID) using a bar code scanning device,
forwards the patient ID to a medical software application, and initiates a
DICOM query operation to search a DICOM server. The method performs
the search based on at least on a portion of the patient ID.
(Spec. ¶¶ [0002], [0010], [0011].)2
Representative Claim
Independent claim 1 further illustrates the invention and is reproduced
below with the key disputed limitations emphasized:
1. A method to automatically generate a query to a
Digital Imaging and Communication in Medicine (DICOM)
server, said method comprising:
selecting a DICOM query option from a displayed menu,
provided by a medical software application hosted on a
computer-based platform, to initiate displaying of a query

2 Throughout our decision, we refer to Appellant’s Specification (“Spec.”);
Supplemental Appeal Brief (“App. Br.”) filed April 29, 2008; and Reply
Brief (“Reply Br.”) filed August 15, 2008. We also refer to the Examiner’s
Answer (“Ans.”) mailed June 27, 2008.
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window, wherein said query window includes unpopulated data
fields;
reading patient identification information using a bar
code scanning device, wherein said patient identification
information is encoded in a bar code;
automatically forwarding said read patient identification
information from said bar code scanning device to said medical
software application on said computer-based platform;
automatically populating at least one of said data fields
of said query window with at least a portion of said patient
identification information within said medical software
application; and
initiating a search operation to search at least one
DICOM server, based at least on said populated patient
identification information, using said medical software
application.

References
The Examiner relies on the following references as evidence of
unpatentability:
Muraca US 2002/0055917 A1 May 9, 2002

Melick US 2005/0150944 A1 Jul. 14, 2005
(filed Dec. 17, 2004)

Rothpearl US 2006/0242148 A1 Oct. 26, 2006
(filed Apr. 12, 2005 (U.S. 60/670,326))

Rejections on Appeal
1. The Examiner rejects claims 1-6, 9-14, 16, 17, 20, 21, 23-33,
and 35 under 35 U.S.C. § 102(e) as being anticipated by Rothpearl.
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2. The Examiner rejects claims 7, 8, 18, 22, 34, and 36 under 35
U.S.C. § 103(a) as being unpatentable over the combination of Rothpearl
and Melick.
3. The Examiner rejects claims 15 and 19 under 35 U.S.C.
§ 103(a) as being unpatentable over the combination of Rothpearl and
Muraca.

ISSUE
Based on our review of the administrative record, Appellant’s
contentions, and the Examiner’s findings and conclusions, the pivotal issue
before us is as follows:
Does the Examiner err in finding Rothpearl discloses “reading patient
identification information using a bar code scanning device, . . .
automatically forwarding said read patient identification information . . . to
said medical software application . . . [and] automatically populating at least
one of said data fields of said query window with at least a portion of said
patient identification information” as recited in claim 1?

ANALYSIS
In rejecting claims under 35 U.S.C. §§ 102 and 103, it is incumbent
upon the Examiner to establish a factual basis to support the rejection – the
so-called “prima facie” case. See In re Piasecki, 745 F.2d 1468, 1472 (Fed.
Cir. 1984) (the USPTO has the initial burden of proof “to produce the
factual basis for its rejection of an application under sections 102 and 103.”
(quoting In re Warner, 379 F.2d 1011, 1016 (CCPA 1967))). “[T]he
examiner bears the initial burden, on review of the prior art or on any other
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ground, of presenting a prima facie case of unpatentability.” In re Oetiker,
977 F.2d 1443, 1445 (Fed. Cir. 1992).
Appellant has the opportunity on appeal to BPAI to demonstrate error
in the Examiner’s position. See In re Kahn, 441 F.3d 977, 985-86 (Fed. Cir.
2006) (citing In re Rouffet, 149 F.3d 1350, 1355 (Fed. Cir. 1998)). The
Examiner sets forth a detailed explanation of the anticipation and
obviousness rejections in the Examiner’s Answer with respect to Appellant’s
claims (Ans. 3-27) and in particular the anticipation rejection of independent
claim 1 (Ans. 3-5, 25-27). Therefore, we look to the Appellant’s Briefs to
show error in the proffered findings and conclusions. See Kahn, 441 F.3d at
985-86.
Arguments Concerning the Examiner’s Rejection of
Representative Claim 1 Under §102
The Examiner rejects Appellant’s independent claim 1 as being
anticipated by Rothpearl. (Ans. 3-5, 25-27.) Specifically, the Examiner
submits that Rothpearl discloses reading patient identification information
using a bar code scanning device – “the barcode is formatted to include
PatientUID-PatientID” (Ans. 4 (citing Rothpearl, ¶ [0075])) and “[t]he
barcode is preferably read and used to automatically name the fax” (Ans. 4
(citing Rothpearl, ¶ [0080])) – and automatically forwarding the patient
identification information to a medical software application – “[t]he
automated version allows a faxed . . . copy of this paperwork to
automatically perform a database lookup for the patient” (Ans. 4 (citing
Rothpearl, ¶ [0042])). The Examiner further submits that Rothpearl
discloses automatically populating data fields of a query window (for a
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query) with at least a portion of the patient identification information. (Ans.
5, 26-27 (citing Rothpearl, ¶¶ [0042], [0075], [0080]).)
Appellant contends that Rothpearl does not disclose, teach or suggest
“reading patient identification information encoded on . . . a bar code . . . in
order to automatically populate data fields of a DICOM query form or
window to facilitate the automatic search or query of a DICOM server for
patient-related DICOM images or worklists.” (App. Br. 8; see Reply Br. 4.)
Appellant explains that Rothpearl instead describes utilizing patient
identification information read from a bar code to query “a non-DICOM data
base, such as an EFILM database, . . . to retrieve study and patient tables.
Then, the information that has been retrieved from the non-DICOM database
is converted into a DICOM image and sent to the DICOM server.” (App.
Br. 10; see App. Br. 9, 11; Reply Br. 3-7.)
Based on the record before us, we find error in the Examiner’s
anticipation rejection of Appellant’s claim 1. We agree with Appellant that
Rothpearl does not disclose automatically populating data fields of a
DICOM query with at least a portion of the patient identification information
read from a bar code scan in order to initiate a search on a DICOM server as
required by the claim.
Rothpearl, cited by the Examiner as disclosing automatically
populating a DICOM query patient identification information read from a
bar code scan, does not disclose this feature. Instead, Rothpearl describes
using patient identification information obtained from a bar code scan to
automatically search an EFILM database. As Rothpearl explains:
DICOMfaxadder module 310 . . . enables direct or remote
scanning of non-digital paper-based patient data directly into
DICOM imaging examinations. . . . [F]ax server 2 receives fax
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cover pages that are generated with a barcode. . . . FIG. 6 is a
flow chart illustrated that illustrates steps 600 associated with
the workflow in accordance with module 310. At step 602, the
facsimile cover page comprising a bar code is produced by
ancillary software. The fax cover page containing the bar code
is then either automatically uploaded to an FTP server 2 for
download by the remote examination site personnel,
automatically printed at the examination site via a remote
internet printing application, or automatically faxed to the
examination site directly. A technologist at the remote
examination site then uses the fax cover sheet to transmit
corresponding patient paperwork via a simple fax machine to
server 2. The end result is that users can fax the patient
paperwork directly into the patients DICOM examination. . . .
(Rothpearl, ¶ [0068]; Figs. 3, 6.)
FIG. 7 is a flow chart illustrating steps 700 associated
with processing a facsimile that is received by Fax server 2. At
step 702, a new FAX arrives [at] the Fax server 2. Thereafter,
Fax server 2 invokes DICOMFaxAdder module 310 and passes
parameters thereto, including, for example, path, folder, base
name and barcode. . . . [T]he barcode is formatted to include
PatientUID-PatientID. . . . [A]t step 714, a query is performed,
for example, to an EFILM database to retrieve corresponding
study and patient tables. . . . [I]f data are returned from the
query, then the information retrieved from the database[,] each
frame in a corresponding TIFF file, except the first one
(representing the FAX cover), is converted into a DICOM
image and sent to DICOM Server 2 (step 718).
(Rothpearl, ¶ [0075]; Fig. 7 (emphasis added).) At most, Rothpearl
discloses using patient identification information from a bar code scan to
automatically search a database generally.
Rothpearl does not disclose utilizing patient identification information
from a bar code scan to automatically search a DICOM database, much less
utilizing the information to automatically populate data fields of a DICOM
query (for searching a DICOM database). Absent some additional
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explanation to support the Examiner’s findings, we cannot agree that
Rothpearl’s general disclosure of using patient identification information
from a bar code scan to automatically search a database anticipates
Appellant’s recited claim features.
Consequently, we are constrained by the record before us to conclude
that the Rothpearl does not disclose each recited feature of Appellant’s claim
1. Therefore, the rejection of claim 1 fails to establish a prima facie case of
anticipation.
Appellant’s independent claims 13 and 23 include limitations of
similar scope. Claim 13 recites using “said read patient identification
information from said reading device . . . to automatically generate a
DICOM query.” (App. Br. 16.) Claim 23 recites using “initiating a DICOM
query operation to search at least one DICOM server, based at least on a
portion of said patient identification information” from a “reading device.”
(App. Br. 17.) Dependent claims 2-6 and 9-12 (dependent on claim 1), 14,
16, 17, 20, and 21 (dependent on claim 13), and 24-33 and 35 (dependent on
claim 23) stand with their respective base claims. Thus, based on the record
before us and for the reasons set forth with respect to claim 1, we find that
the Examiner erred in finding Rothpearl discloses the disputed limitations
recited in Appellant’s claims 2-6, 9-12, 14, 16, 17, 20, 21, 24-33, and 35.
Accordingly, we reverse the Examiner’s anticipation rejection of claims 1-6,
9-14, 16, 17, 20, 21, 23-33, and 35.
The Examiner’s Rejections
Under §103
The Examiner rejects Appellant’s claims 7, 8, 18, 22, 34, and 36 as
being obvious over the combination of Rothpearl and Melick. (Ans. 19-23.)
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The Examiner rejects Appellant’s claims 15 and 19 as being obvious over
the combination of Rothpearl and Muraca. (Ans. 23-25.) We find (supra)
that the Examiner erred in rejecting independent claims 1, 13, and 23 as
being anticipated by Rothpearl because the reference does not disclose
utilizing patient identification information from a bar code scan to
automatically search a DICOM database. Neither Melick nor Muraca cures
this deficiency. Procedurally, claims 7 and 8 (dependent on claim 1); claims
15, 18, 19, and 22 (dependent on claim 13); and claims 34 and 36
(dependent on claim 23) stand with their respective independent claims.
Thus, based on the record before us and for the reasons set forth with
respect to claim 1, we find that the Examiner erred in concluding Rothpearl
in combination with either Melick or Muraca would have taught or
suggested the disputed limitations recited in Appellant’s claims 7, 8, 15, 18,
19, 22, 34, and 36. Accordingly, we reverse the Examiner’s obviousness
rejection of these claims.3

CONCLUSIONS OF LAW
Appellant has shown that the Examiner erred in rejecting claims 1-6,
9-14, 16, 17, 20, 21, 23-33, and 35 under 35 U.S.C. § 102(e). The Examiner

3 We note that claims 13 and 23 and their dependent claims only recite
generating or initiating a DICOM query. They do not include the limitation
of automatically populating data fields in a DICOM query as claim 1 does.
We do not address the issue whether Rothpearl’s general disclosure of using
patient identification information from a bar code scan to automatically
search a database would have at least suggested generating a DICOM query
utilizing patient identification information from a reading device (bar code)
which was not raised by the Examiner.
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also erred in rejecting claims 7, 8, 15, 18, 19, 22, 34, and 36 under 35 U.S.C.
§ 103(a).

DECISION
We reverse the Examiner’s rejection of claims 1-6, 9-14, 16, 17, 20,
21, 23-33, and 35 under 35 U.S.C. § 102(e).
We reverse the Examiner’s rejection of claims 7, 8, 15, 18, 19, 22, 34,
and 36 under 35 U.S.C. § 103(a).

REVERSED

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