Ex Parte D

Patent Trial and Appeal Board

Jan 30, 2013

12061364 (P.T.A.B. Jan. 30, 2013)

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.
12/061,364 04/02/2008 Robert Matthew D'Ambrosia 090706-0104 8350
23524 7590 01/30/2013
FOLEY & LARDNER LLP
3000 K STREET N.W.
SUITE 600
WASHINGTON, DC 20007-5109
EXAMINER
REYES, REGINALD R
ART UNIT PAPER NUMBER
3626
MAIL DATE DELIVERY MODE
01/30/2013 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 ROBERT MATTHEW D’AMBROSIA
____________

Appeal 2010-008492
Application 12/061,364
Technology Center 3600
____________

Before MURRIEL E. CRAWFORD, HUBERT C. LORIN, and
ANTON W. FETTING, Administrative Patent Judges.

LORIN, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Robert Matthew D’Ambrosia (Appellant) seeks our review under 35
U.S.C. § 134 of the final rejection of claims 1-4, 7-9, 11-16, 18-27, 29-34,
36-38 and 40-48. We have jurisdiction under 35 U.S.C. § 6(b) (2012).

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SUMMARY OF DECISION
We AFFIRM-IN-PART and enter a NEW GOUND of rejection
pursuant to 37 C.F.R. 41.50(b).1

THE INVENTION
Claim 1, reproduced below, is illustrative of the subject matter on
appeal.
1. A communication system, comprising:
a network;
a first communication device operated by a first medical
unit by way of said network;
a first medical record server adapted to:
receive an identification number associated with a
data object pertaining to a medical record of a subscriber from
the first communication device; and
in response to receiving said identification number,
send medical information from said data object to said first
communication device by way of said network, wherein said
first communication device is further adapted to receive said
medical information from said first medical record server by
way of said network, receive an annotation to said medical
information from said first medical unit, and modify said
medical information to include said annotation; and
a second medical record server, wherein said first
communication device is adapted to send said annotated

1 Our decision will make reference to the Appellant’s Appeal Brief (“App.
Br.,” filed Dec. 7, 2009) and Reply Brief (“Reply Br.,” filed Mar. 18, 2010),
and the Examiner’s Answer (“Answer,” mailed Jan. 20, 2010).
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medical information to said second medical record server, and
said second medical record server is further adapted to:
receive a request for statistical information related
to medical information pertaining to a plurality of medical
records pertaining to respective subscribers from a second
communication device by way of said network, wherein each of
said medical records includes an annotation from a medical unit
responding to a medical emergency associated with a
corresponding subscriber, and wherein said request includes
input parameters related to said statistical information;
perform an analysis on a basis of said input
parameters to generate said statistical information; and
send said statistical information to said second
communication device by way of said network.

THE REJECTIONS
The Examiner relies upon the following as evidence of
unpatentability:
Johnson
Kolb
Dowling
Barmakian

US 5,664,109
US 6,250,929 B1
US 6,574,239 B1
US 7,213,016 B1
Sep. 2, 1997
Jun. 26, 2001
Jun. 3, 2003
May 1, 2007
The following rejections are before us for review:
1. Claims 1-4, 7-9, 15, 19, 24-27, 32-34, 36-38, 41 are rejected under 35
U.S.C. § 103(a) as being unpatentable over Johnson, Dowling, and
Kolb.
2. Claims 11-14, 16, 18, 20-23, 29-31, 40 and 42-48 are rejected under
35 U.S.C. § 103(a) as being unpatentable over Johnson, Dowling,
Kolb, and Barmakian.
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ISSUE
Has the Examiner established a prima facie case of obviousness of the
claimed subject matter over the prior art disclosures?

ANALYSIS
Claims 7-9
Claims 7-9 are subject to this appeal. However, they are dependent on
cancelled claim 6. Accordingly, we enter a new ground of rejection of
claims 7-9 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.

The rejection of claims 1-4, 7-9, 15, 19, 24-27, 32-34, 36-38, 41 under 35
U.S.C. §103(a) as being unpatentable over Johnson, Dowling, and Kolb.
Claims 7-9
Because claims 7-9 have been deemed indefinite, the prior art
rejection of claims 7-9 is reversed pro forma. See In re Steele, 305 F.2d 859,
862-63 (CCPA 1962).
Claims 1-4, 15, 19, and 24-27
Claims 1-4, 15, 19, and 24-27 are drawn to apparatuses comprising an
element that functions to “receive a request for statistical information related
to medical information pertaining to a plurality of medical records . . .
wherein said request includes input parameters related to said statistical
information.” In the case of independent claim 1, that element is a second
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medical record server. In the case of independent claim 24, that element is a
processor. The Examiner’s position is that this element is not disclosed in
Johnson (Answer 4) but that
Dowling teaches annotating the medical records accordingly
(see for example Dowling column 1 lines 61-62 and column 15
lines 39-47 and Fig. 3). Kolb teaches statistically determining
if the test population has made significant progress than the
control population (see for example Kolb column 5 lines 60-67
and column 6 lines 1-3).
Answer 4.
Notwithstanding the Examiner’s characterization of what Dowling
and Kolb teach, we agree with the Appellant (App. Br. 14 and Reply Br. 13)
that the Examiner has not explained how Dowling and Kolb address the
limitation at issue. The Examiner does not explain how these disclosures to
annotating the medical records (Dowling) and statistical determination
(Kolb) provide for or lead one of ordinary skill in the art to an element that
functions to “receive a request for statistical information related to medical
information pertaining to a plurality of medical records ... wherein said
request includes input parameters related to said statistical information” as
claimed. Because this has not been done, a prima facie case of obviousness
for the subject matter of these claims over the cited prior art combination has
not been made out in the first instance. As a result, the rejection of claims 1-
4, 15, 19, and 24-27 is not sustained.

Claims 32-34, 36-38, and 41
The Appellant has not challenged the rejection of claims 32-34, 36-38,
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and 41. Accordingly, we summarily affirm the rejection of claims 32-34,
36-38, and 41 over the cited prior art combination.

The rejection of claims 11-14, 16, 18, 20-23, 29-31, 40 and 42-48 under 35
U.S.C. §103(a) as being unpatentable over Johnson, Dowling, Kolb, and
Barmakian.
Claims 11-14, 16, 18, and 20-23
Claims 11-14, 16, 18 and 20-23 depend from claim 1, whose rejection
was not sustained. See above. For the same reasons, we will not sustain the
rejections of claims 11-14, 16, 18 and 20-23 over the cited prior art. Cf. In re
Fritch, 972 F.2d 1260, 1266 (Fed. Cir. 1992) (“[D]ependent claims are
nonobvious if the independent claims from which they depend are
nonobvious . . . .”).

Claims 29-31
Claims 29-31 depend from claim 24, whose rejection was not
sustained. See above. For the same reasons, we will not sustain the
rejections of claims 29-31 over the cited prior art. Cf. In re Fritch, 972 F.2d
1260, 1266 (Fed. Cir. 1992) (“[D]ependent claims are nonobvious if the
independent claims from which they depend are nonobvious . . . .”).

Claims 40 and 42
The rejection of claims 40 and 42, which depend from claim 32, will
be sustained. As with claim 32 (see above), the rejection of claims 40 and
42 have not been challenged. Accordingly, we summarily affirm their
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rejection over the cited prior art combination.

Claims 43-48
The rejection of claims 43-48 is reversed for similar reasons to those
we gave above in reversing the rejection of claims based on independent
claims 1 and 24 above. That is to say, independent claims 43, 44, 47 and 48
and claims 45 and 46, dependent on claim 44, all call for apparatuses
comprising an element that functions (in the words of claim 47) to “send a
request for statistical information related to medical information ... wherein
said request includes input parameters related to said statistical information”
which the Examiner has not shown to be disclosed in the cited prior art or
explained how one of ordinary skill in the art would reach it given the
combination of their disclosures.
Col. 7, ll. 7-15 and col. 8, ll. 13-19 of Barmakian is said to disclose
the limitation at issue. Answer 9. The passages are reproduced below.
The database administration function 48 allows certain
agents to control the database and to add, update, or remove
records from the database. In particular, function 48 allows a
database administrator to access and edit a table of agents. This
agent table will be a list of individuals with passwords that
allow them access to the database administration function. The
agent table will include designations of the privileges that will
be given to those individuals listed in the table.
Col. 7, ll. 7-15.
The agent service 44 also includes a work processing
application 50 to enable creation of new documents or editing
of existing forms that need to be sent to some person involved
with the present system. Also included is a report generator 52
for providing statistics on records in various tables,
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chronological or summary reports on transactions for all or
some clients, etc.
Col. 8, ll. 13-19. We do not see and the Examiner does not explain how
these passages provide for or would lead one of ordinary skill to an element
that functions (in the words of claim 47) to “send a request for statistical
information related to medical information ... wherein said request includes
input parameters related to said statistical information.”
Because this has not been done, a prima facie case of obviousness for
the subject matter of these claims over the cited prior art combination has
not been made out in the first instance. As a result, the rejection of claims
43-48 is not sustained.

CONCLUSIONS
Claims 7-9 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.
The rejection of claims 7-9 under 35 U.S.C. §103(a) as being
unpatentable over Johnson, Dowling, and Kolb is reversed pro forma.
The rejection of claims 1-4, 15, 19, and 24-27 under 35 U.S.C.
§103(a) as being unpatentable over Johnson, Dowling, and Kolb is reversed.
The rejection of claims 32-34, 36-38, 41 under 35 U.S.C. §103(a) as
being unpatentable over Johnson, Dowling, and Kolb is affirmed.
The rejection of claims 11-14, 16, 18, 20-23, 29-31, and 43-48 under
35 U.S.C. §103(a) as being unpatentable over Johnson, Dowling, Kolb, and
Barmakian is reversed.
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The rejection of claims 40 and 42 under 35 U.S.C. §103(a) as being
unpatentable over Johnson, Dowling, Kolb, and Barmakian is affirmed.
The rejection of claims 43-48 35 U.S.C. § 103(a) as being
unpatentable over Johnson, Dowling, Kolb, and Barmakian is reversed.

DECISION
The decision of the Examiner to reject claims 1-4, 7-9, 11-16, 18-27,
29-34, 36-38 and 40-48 is affirmed-in-part; that is, the rejection of claims 1-
4, 7-9, 11-16, 18-27, 29-31, and 43-48 is reversed and the rejection of claims
32-34, 36-38, 40-42 is affirmed. Claims 7-9 are newly 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.
37 C.F.R. § 41.52(a)(1) provides that “Appellant may file a single
request for rehearing within two months from the date of the original
decision of the Board.” 37 C.F.R. § 41.50(b) provides that “[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 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
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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. . . .

Should Appellant elect to prosecute further before the Examiner
pursuant to 37 C.F.R. § 41.50(b)(1), in order to preserve the right to seek
review under 35 U.S.C. §§ 141 or 145 with respect to the affirmed rejection,
the effective date of the affirmance is deferred until conclusion of the
prosecution before the Examiner unless, as a mere incident to the limited
prosecution, the affirmed rejection is overcome.
If Appellant elects prosecution before the Examiner and this does not
result in allowance of the application, abandonment or a second appeal, this
case should be returned to the Patent Trial and Appeal Board for final action
on the affirmed rejection, including any timely request for rehearing thereof.

AFFIRMED-IN-PART; 37 C.F.R. § 41.50(b)

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