Ex Parte Dvorak et al

Board of Patent Appeals and Interferences

Jun 28, 2011

10052659 (B.P.A.I. Jun. 28, 2011)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte CARL DVORAK,
KHIANG SEOW, and
CHARLES YOUNG
____________

Appeal 2010-002993
Application 10/052,659
Technology Center 3600
____________

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

LORIN, Administrative Patent Judge.

DECISION ON APPEAL

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STATEMENT OF THE CASE
Carl Dvorak, et al. (Appellants) seek our review under 35 U.S.C.
§ 134 (2002) of the final rejection of claims 1-8 and 14-20. We have
jurisdiction under 35 U.S.C. § 6(b) (2002).

SUMMARY OF DECISION
We AFFIRM.1

THE INVENTION
The invention relates to “a system for distributed computing in a
health care environment.” Specification [0005].
Claim 1, reproduced below, is illustrative of the subject matter on
appeal.
1. In a system for distributed computing in a health care environment
in which multiple different applications are in use connected on a
common computer network, the improvement comprising
a clinical exchange server on the network, the clinical exchange
server including memory, the clinical exchange server programmed (i)
to maintain a patient identification cross reference table, the patient
identification cross reference table including a list of applications on
the network and patient identification numbers used by each
application wherein the patient identification numbers used by the
applications are application distinct patient identification numbers for
the patient, wherein the application distinct patient identification
numbers for the patient include a first patient identification number
used by a first application and a second patient identification number

1 Our decision will make reference to the Appellants’ Appeal Brief (“Br.,”
filed Sep. 1, 2009) and the Examiner’s Answer (“Answer,” mailed Sep. 28,
2009).
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used by a second application where the second patient identification
number is different than the first patient identification number, (ii) to
maintain a list of events reported to it by other applications on the
network and (iii) to respond to inquiries from a first application about
an event recorded by a second application by transmitting a query to
the second application based on the information in the reference table
and the list of reported events.

THE REJECTION
The Examiner relies upon the following as evidence of
unpatentability:
Smithies
Felsher
Moragne

US 5,544,255
US 2002/0010679 A1
US 2005/0102374 A1

Aug. 6, 1996
Jan.24,2002
May 12, 2005

The following rejection is before us for review:
1. Claims 1-8 and 14-20 are rejected under 35 U.S.C. §103(a) as being
unpatentable over Moragne, Felsher, and Smithies.

ISSUE
Did the Examiner err in rejecting claims 1-8 and 14-20 under 35
U.S.C. §103(a) over Moragne, Felsher, and Smithies?

FINDINGS OF FACT
We rely on the Examiner’s factual findings stated in the Answer.
Additional findings of fact may appear in the Analysis below.
ANALYSIS
The Appellants argued claims 1-4 as a group (Br. 5). We select claim
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1 as the representative claim for this group, and the remaining claims 2-4
stand or fall with claim 1. 37 C.F.R. § 41.37(c)(1)(vii) (2007).
Claim 1 is drawn to an apparatus comprising a computer network and
a server. Specifically, claim 1 provides for an improvement to a distributive
computing system whereby a server with a memory is programmed to do
three things: (i) maintain a table with a list of applications on the network
and a list having two different patient-specific numbers that correspond to
two distinct applications that use them respectively; (ii) maintain a list of
events reported to the server by other applications on the network; and (iii)
respond to inquiries from a first application about an event recorded by a
second application by transmitting a query to the second application based
on the information in the table (see (i)) and the events list (see (ii)).
The Examiner takes the position that Moragne discloses the claimed
distributive computing system but for the recited server. In that regard, the
Examiner relies on Felsher, citing [0266]-[0268] and [0279]. According to
the Examiner, Felsher discloses a server programmed to maintain a table,
maintain a list of events, and respond to inquiries from a first application
about an event recorded by a second application by transmitting a query to
the second application based on the information in the table and the events
list. Answer 4.
Felsher is directed to an information record infrastructure for
maintaining, in particular, medical records. As is typical, such records have
been stored in a database on a server. See e.g., [0063]. Felsher seeks to
improve on such systems so that confidentiality of those records are
maintained - by employing a certification authority, encryption, and
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passwords. [0279]. At [0266], Felsher describes a database architecture
“that provides data relating to patient transactions. ... Each transaction is
indexed by patient identifier.” According to [00267], a transaction may be a
record containing any type of medical-related data. [00268] discloses a
central index “for each patient, the location of the transactions and access
rules therefor.” The index relates patient identifier with database records.
See [0279].
The Appellants dispute that Felsher discloses a server programmed to
maintain a cross-reference table as claimed. Br. 6.
The cross-reference table as claimed contains two pieces of
information: (a) a list of applications and (b) numbers used by each
application (“patient identification numbers”). According to the claim, the
numbers comprise two different numbers: a first number (“first patient
identification number used by a first application”) used by a first application
and a second number (“second patient identification number) used by a
second application.
By contrast, Felsher discloses an index with transactions related to
patient identifiers.
Felsher would lead one of ordinary skill in the art to a server with a
database to maintain an index of data representing different types of medical
information that can be related or cross-referenced to each other.
Accordingly, the question boils down to whether Felsher’s index would lead
one of ordinary skill in the art to the claimed table.
The Appellants do not explain the patentable distinction between an
“index” as Felsher calls it and a “table” as that term is used in the claims and
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it is not readily apparent. At best, a “table” refers to the form the data is to
be placed in. In that regard, indexes in the form of a table are well known to
those skilled in the art and given that Felsher’s index resides in a database,
which conventionally orients records in the form of tables (e.g.,
spreadsheets), it would have been obvious over Felsher’s index to maintain
records in the form of a table.
We are equally unpersuaded that Felsher fails to disclose or render
obvious maintaining a table of list of applications and numbers. Again, the
Appellants do not explain the patentable distinction between an “index” as
Felsher calls it and a “list” as that term is used in the claims and it is not
readily apparent. In fact, an index is ordinarily understood to mean a list.
The ordinary and customary meaning of “index” is a list, e.g. “an
alphabetical list of names, [etc.].” (See Webster’s New World Dictionary
686. (3rd Ed. 1988.)(Entry 4 a) for “list.”)
As to the difference between the claimed table listing applications and
numbers used by each application where the numbers comprise two different
numbers: a first number used by a first application and a second number
used by a second application as claimed and Felsher’s index of
“transactions” and patient identifiers related to each other, it appears to be a
matter of nonfunctional descriptive material. Both the claimed system and
that of Felsher comprise servers programmed to maintain information. The
difference is in the type of information the claimed server maintains as
compared to the type of information Felsher is maintaining. There is
otherwise no difference between the servers. The fact that the claim requires
a list of “applications” and “numbers” does not change the fact that it is list
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of data maintained on the server. The difference between data representing
“applications” and “numbers” maintained on the server of the claimed
system and data representing “transactions” and “identifiers” as stored in
Felsher’s database is a matter of a difference in the informational content of
the data. That informational aspect of the data which is characterized as
“applications” and “numbers” is properly considered to be nonfunctional and
descriptive. Also, the Appellants have not come forward with evidence
sufficient to show that the structure of the data is functionally affected by it
being, specifically, an “application” and/or “number”. Absent such
evidence, it is reasonable to conclude that the “application” and “number”
aspect of the maintained data is descriptive and not functionally related to
any structure of the claimed invention and as such falls under the category of
patentably inconsequential subject matter. See Ex parte Curry, 84 USPQ2d
1272, 1275 (BPAI 2005) (informative) (“Common situations involving
nonfunctional descriptive material are: - a computer-readable storage
medium that differs from the prior art solely with respect to nonfunctional
descriptive material, such as music or a literary work, encoded on the
medium, - a computer that differs from the prior art solely with respect to
nonfunctional descriptive material that cannot alter how the machine
functions (i.e., the descriptive material does not reconfigure the computer),
or - a process that differs from the prior art only with respect to
nonfunctional descriptive material that cannot alter how the process steps are
to be performed to achieve the utility of the invention. Thus, if the prior art
suggests storing a song on a disk, merely choosing a particular song to store
on the disk would be presumed to be well within the level of ordinary skill in
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the art at the time the invention was made. The difference between the prior
art and the claimed invention is simply a rearrangement of nonfunctional
descriptive material.).” See also Ex parte Mathias, 84 USPQ2d 1276 (BPAI
2005) (informative).
The Appellants also argue that “Felsher clearly does not teach or
suggest that a second query is generated for a second application in response
to reception of a first query at an exchange server.” Br. 6. However, this is
not precisely what claim 1 calls for. Claim 1 calls for a server programmed
to “respond to inquiries from a first application ... by transmitting a query to
the second application.” Claim 1 does not necessarily require generating a
second query for a second application in response to reception of a first
query. Claim 1 reasonably broadly covers transmitting a query per se to a
second application in response to an inquiry from a first application.
Be that as it may, the question is whether it would have been obvious
over the cited prior art combination to transmit a query to a second
application in response to an inquiry from a first application. The
Specification uses the term “application” to mean programs. See [00026].
Accordingly, the issue is whether it would have been obvious over the cited
prior art combination to transmit a query to a second program in response to
an inquiry from a first program.
The Examiner cited the passage at [0264] of Felsher is support of
finding that Felsher discloses transmitting a query to a second application in
response to an inquiry from a first application. Answer 4. The Appellants
agree that Felsher “teaches a system that includes a custodian medical record
system that renders records related to medical transactions (see paragraph
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264) available to different applications.” Br. 6. But, the Appellants argue,
only “a single query is provided to the custodian system (see paragraph 264)
and the custodian system can use the index to directly access the record in
the database.” Br. 6. We disagree. [0264] of Felsher describes a trustee
system by which a recipient’s query for a medical record within the
custodian network is transmitted from the recipient to a trustee system and
then to the custodial system. Accordingly, it describes a system
programmed to transmit a query per se to a second application (i.e.,
Felsher’s trustee system) in response to an inquiry from a first application
(i.e., Felsher’s custodial system) as claim 1 is reasonably broadly construed.
The Appellants further argue that even if Felsher would lead one to a
system programmed to transmit a query to a second application in response
to an inquiry from a first application, Felsher does not do so “based on the
information in the reference table and the list of reported events” (claim 1).
Br. 7. We disagree. The system as claimed does not require the server to
perform any action to access information in the server and then use that
particular information to generate a second query. The system as claimed
requires only that the server transmit a query to a second application “based”
on such information. In that regard, Felsher’s custodial system transmits a
recipient’s query for a medical record it has received to a trustee system.
Given that such a query necessarily seeks information stored in the system’s
medical records database, Felsher custodial system transmits a recipient’s
query for a medical record it has received to a trustee system “based” on
such information. Also, the Appellants’ construction of the claim is too
narrow - the system as claimed is not limited to transmitting a second query
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different from a first query. Claim 1 is reasonably broadly construed to
cover transmitting to the second application the same query made to the first
application. As we previously explained, Felsher describes a trustee system
by which a recipient’s query for a medical record within the custodian
network is transmitted from the recipient to a trustee system and then to the
custodial system. This disclosure would lead one to a server programmed
“to respond to inquiries from a first application about an event recorded by a
second application by transmitting a query to the second application based
on the information in the reference table and the list of reported events” as
claimed.
Finally, the Appellants challenge the relevance of Smithies.
According to the Appellants, “Smithies fails to teach or suggest what the
other references lack.” Br. 8. First, “Smithies fails to teach or suggest a
reference table like the one in claim 1 that includes both a list of applications
and associated patient identifiers.” Br. 7-8. And, second, “Smithies fails to
teach or suggest responding to an inquiry from a first application by
transmitting a query to a second application based on information in the
reference table (i.e., based on the application list and associated or
corresponding patient identifiers in the table).” Br. 8-9. We have already
addressed these two arguments with respect to what Flesher discloses and
found them unpersuasive. Accordingly, we are not are not persuaded by
these arguments directed at Smithies alone that the prima facie case of
obviousness for the claimed subject matter over the cited prior art
combination as a whole was established in error.
Accordingly, we affirm the rejection of claim 1 and the claims 2-4
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which stand or fall with it.
As to claims 5-8 and 14-20, the Appellants state merely that “each [of
independent claims 5, 14, 18, 19, and 20] is believed to be non-obvious for
essentially the same reasons described above with respect to claim 1.” Br. 9.
Since we found the arguments challenging the rejection of the
“system” claims 1-4 unpersuasive, given no other argument, we find them
equally unpersuasive, for the same reasons, as to error in the rejection of the
“computer network” claims 5-8 and “system” claims 19 and 20.
Claims 14-18 are, however, method claims. Though arguments in
favor of the patentability of apparatus claims do not necessarily apply to
method claims (see Hewlett-Packard Co. v. Bausch & Lomb Inc., 909 F.2d
1464, 1468 (Fed. Cir. 1990) (“apparatus claims cover what a device is, not
what a device does.”), here no argument separately challenging the rejection
of method claims 14-18 has been provided. Cf. Ernst Haas Studio, Inc. v.
Palm Press, Inc., 164 F.3d 110, 112 (2d Cir. 1999) ("Appellant's Brief is at
best an invitation to the court to scour the record, research any legal theory
that comes to mind, and serve generally as an advocate for appellant. We
decline the invitation.") Accordingly, since we found the arguments
challenging the rejection of the “system” claims 1-4 unpersuasive, given no
other argument, we find them equally unpersuasive, for the same reasons, as
to error in the rejection of the “method” claims 14-18.

DECISION
The decision of the Examiner to reject claims 1-8 and 14-20 is
affirmed.
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AFFIRMED

MP