Ex Parte DePetro

Patent Trial and Appeal Board

Sep 22, 2016

13242840 (P.T.A.B. Sep. 22, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/242,840 09/23/2011
5073 7590
BAKER BOTTS L.L.P.
2001 ROSS A VENUE
SUITE 600
DALLAS, TX 75201-2980
09/26/2016
FIRST NAMED INVENTOR
Matthew DePetro
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.
073338.0909 6637
EXAMINER
HUNTER, SEAN KRISTOPHER
ART UNIT PAPER NUMBER
3626
NOTIFICATION DATE DELIVERY MODE
09/26/2016 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):
ptomaill@bakerbotts.com
ptomail2@bakerbotts.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MATTHEW DEPETRO
Appeal2014-007682
Application 13/242,840
Technology Center 3600
Before: MURRIEL E. CRAWFORD, JOSEPH A. FISCHETTI, and
MICHAEL W. KIM, Administrative Patent Judges.
CRAWFORD, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF CASE
Appellant seeks our review under 35 U.S.C. § 134 from the
Examiner's final rejection of claims 1-25. We have jurisdiction under 35
U.S.C. § 6(b).
We AFFIRM-IN-PART.
Appeal2014-007682
Application 13/242,840
Appellant's invention is directed to a telehealth care verification and
audit logging system (Spec. 1, 11. 3--4 ).
Claim 1 is illustrative:
1. A method for providing telehealth services, comprising:
conducting a telehealth session using a server between a
provider and a patient;
generating metadata using the server, the metadata
associated with the telehealth session; and
providing the metadata associated with the telehealth
session from the server to an auditing system for validating the
telehealth session.
Appellant appeals the following rejection1:
Claims 1-25 are rejected under 35 U.S.C. § 103(a) as unpatentable
over Menschik (US 2004/0034550 Al, pub. Feb. 19, 2004) and Joao (US
2002/0032583 Al, pub. Mar. 14, 2002).
ANALYSIS
Claims 1-3, 8, 9, and 14-17
Appellant argues independent claims 1, 16, and 17 together as a
group, so we select claim 1 as representative. Appeal Br. 18. See 37 C.F.R.
§ 41.37(c)(l)(iv).
We are not persuaded by Appellant's arguments that the parsing of
data and updating of an audit log, disclosed in Menschik, does not disclose
validation of a telehealth session. Appeal Br. 14--16; see also Reply Br. 2-3,
1 The Examiner has withdrawn the rejection under 35 U.S.C. § 101.
(Answer 11).
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Application 13/242,840
Appeal Br. 16-18. We construe claim 1 as providing the metadata
associated with the telehealth session from the server to an auditing system,
and that this metadata is provided for the purpose of validating a telehealth
session. The actual validation of the telehealth session, however, is not a
step performed within the scope of claim 1. Appellant's arguments, thus, are
not commensurate with the broad scope of the claim.
For this reason, we sustain the rejection of claims 1, 16, and 17. We
also sustain the rejection of dependent claims 2, 3, 8, 9, 14, and 15 that were
not separately argued. See Appeal Br. 35.
Claims 4-7and10--13
Each of dependent claims 4--7 and 10-13 recite limitations about the
metadata that is provided. Claim 4, for example, recites "wherein the
generated metadata includes a classification of the type of telehealth
session."
Appellant argues the specific metadata limitations are not disclosed.
Appeal Br. 27-32; see also Reply Br. 7-8. More specifically, Appellant
argues the metadata should be given patentable weight because the metadata,
which is used for validating, is, thus, not merely non-functional descriptive
material, and also is not printed matter, presumably because it is stored
electronically. Appeal Br. 31-32; see also Reply Br. 8.
We are not persuaded by Appellant's arguments. First, as we explain
above at claim 1, the claim scope does not include validating a session,
because it merely provides metadata that may be used for validating. The
metadata, thus, is merely data that seeks to distinguish the claimed method
from prior art methods on the basis of the content of the data itself. The
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Application 13/242,840
data, as essentially printed matter, must be examined to see if it has a
functional relationship to the underlying method.
Our reviewing court has held that nonfunctional descriptive material
cannot lend patentability to an invention that would have otherwise been
anticipated by the prior art. In re Ngai, 367 F.3d 1336, 1339 (Fed. Cir.
2004). Cf In re Gulack, 703 F.2d 1381, 1385 (Fed. Cir. 1983) (noting that
when descriptive material is not functionally related to the substrate, the
descriptive material will not distinguish the invention from the prior art in
terms ofpatentability). King Pharm., Inc. v. Eon Labs, Inc., 616 F.3d 1267,
1279 (Fed. Cir. 2010) ("[T]he relevant question is whether 'there exists any
new and unobvious functional relationship between the printed matter and
the substrate."') (citations omitted).
The content of the specific metadata does not affect the claim steps,
which requires providing metadata. Menschick discloses metadata files
supplied to a central system for the purpose of conducting an audit.
Menschick, para. 7 5. The content of the data itself has no functional impact
on steps of claim 1 that are actually performed within the scope of the claim.
Dependent claims 4--7 and 10-13 merely recite what the "metadata
includes," without further steps recited for the method of claim 1. The
content of the metadata does not affect the providing step, because the
providing is performed for all metadata used in Menschick. As a result,
Appellant's claimed metadata does not distinguish the claimed invention
from the prior art.
It has been repeatedly held that an applicant cannot create a novel
product by attaching printed matter to it, even if that printed matter itself is
new. See, e.g., Ngai. Thus, adding instructions to a kit that describe a
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Application 13/242,840
method of using it does not make the kit patentable over the same kit with a
different set of instructions. There are cases in which the descriptive
material can form a functional relationship with the underlying substrate.
For example, in In re Miller, the addition of printed matter to the outside of a
cup permitted an otherwise ordinary cup to be used like a measuring cup to
half recipes. In re Miller, 418 F.2d 1392, 1396 (CCPA 1969). The printed
matter in Miller served as a computing or mathematical recipe conversion
device permitting a cook to perform calculations automatically with no
further thought. However, the claim before us is more like the claim in Ngai
than Miller. The claimed metadata merely describes a new, non-functional
feature for a method that already exists.
To agree with Appellant's reasoning would mean that each potentially
novel metadata type is sufficient to warrant a separate patent even if the
remainder of the invention is unchanged. This would result in Appellant's
content of metadata distinguishing over the prior art, as would every single
unique type of metadata. To give effect to Appellant's argument, we would
need to ignore our reviewing court's concerns with repeated patenting. We
decline to do so.
The rationale behind this prior art rejection is preventing the repeated
patenting of essentially a known product by the mere inclusion of novel non-
functional descriptive material. King Pharm., Inc. v. Eon Labs, Inc., 616
F.3d 1267, 1279 (Fed. Cir. 2010) ("The rationale behind this line of cases is
preventing the indefinite patenting of known products by the simple
inclusion of novel, yet functionally unrelated limitations.") Cf In re Ngai,
367 F.3d 1336, 1339 (Fed. Cir. 2004) ("If we were to adopt Ngai's position,
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Application 13/242,840
anyone could continue patenting a product indefinitely provided that they
add a new instruction sheet to the product.").
We agree with the Examiner that the prior art renders obvious claim 1
because the cited art teaches or suggests each and every limitation of the
claim. Any argued difference between the prior art and the claimed
invention is simply a substitution of one piece of data for a different data
type, which does not change the "providing [of the] the metadata associated
with the telehealth session from the server to an auditing system".
Therefore, we sustain the Examiner's rejection of claims 4--7 and IO-
13 under 35 U.S.C. § 103(a).
Claims 18-25
Independent claims 18, 24, and 25 each recite "determining a level of
certainty related to the validity of the telehealth session."
We are persuaded by Appellant's argument that Menschik does not
disclose or suggest the determining of a level of certainty. Appeal Br. 25-
26. The Examiner does not appear to directly address this limitation in the
rejection. Instead, after finding that Menschik does not disclose the
determining of the level of certainty, and citing paragraph 27 of Menschik,
the Examiner concludes it "would have been obvious to one of ordinary skill
at the time of the invention to expand the method of Menschik to further
include, conducting a telehealth session between a provider and a patient, as
taught by Joao." Answer 9; see also Final Act. 9.
The Examiner further explains, based on Menschik' s disclosure of
"authenticated and authorized users," that the "Examiner understands the
concepts of authenticated and authorized users, along with patient data
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security, high reliability, etc. to include 'a level of certainty related to the
validity'. As such, Menschik in view of Joao seemingly suggest[s],
'determining a level of certainty related to the validity of the telehealth
session'." Answer 18.
We do not agree that the mere mention of "authenticated and
authorized users," in paragraph 27 of Menschik, suggests the act of
"determining a level of certainty related to the validity of the telehealth
session," as claimed, because the cited paragraph of Menschik does not
disclose the making of a determination. Although a level of certainty could
be inherent in the concept of user authentication and authorization, the claim
requires the step of making a determination, which the Examiner has failed
to sufficiently address.
For this reason, we do not sustain the rejection of claims 18, 24, and
25, nor of dependent claims 19-23 that depend from claim 18.
DECISION
We reverse the rejection of claims 18-25.
We affirm the rejection of claims 1-17.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED-IN-PART
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