Ex Parte Firminger et al

Patent Trial and Appeal Board

Jun 29, 2016

12590335 (P.T.A.B. Jun. 29, 2016)

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.
12/590,335 11/05/2009 Shawn P. Firminger SE1-1015-US 4527
80118 7590 06/29/2016
Constellation Law Group, PLLC
P.O. Box 580
Tracyton, WA 98393
EXAMINER
BURGESS, JOSEPH D
ART UNIT PAPER NUMBER
3626
MAIL DATE DELIVERY MODE
06/29/2016 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 SHAWN P. FIRMINGER, EDWARD K.Y. JUNG,
ROYCE A. LEVIEN, MARK A. MALAMUD, KRISTIN M. TOLLE,
JASON GARMS, CHRIS DEMETRIOS KARKANIAS,
RICHARD T. LORD, JOHN D. RINALDO JR., LOWELL L. WOOD JR.,
RODERICK A. HYDE, ERIC C. LEUTHARDT, ROBERT W. LORD, and
CLARENCE T. TEGREENE
____________

Appeal 2013-000679
Application 12/590,3351
Technology Center 3600
____________

Before, JOSEPH A. FISCHETTI, BIBHU R. MOHANTY, and
MICHAEL C. ASTORINO, , Administrative Patent Judges.

FISCHETTI, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants seek our review under 35 U.S.C. § 134 of the Examiner’s
final rejection of claims 135–194. We have jurisdiction under 35 U.S.C.
§ 6(b).

1 Appellants identify Searete LLC, which is wholly owned by Intellectual
Ventures Management, LLC., as the real party in interest. (Appeal Br. 5).
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SUMMARY OF DECISION
We AFFIRM.
THE INVENTION
Appellants’ claims “relate[] to data capture and data handling
techniques.” (Spec. 6).
Claim 135 reproduced below, is representative of the subject matter
on appeal.
135. A system comprising:
an accepter module configured to accept an indication of
at least one health-related status of an individual;
a determiner module, including a microprocessor,
configured to determine a plurality of health service options for
the individual at least partially based on accepting the
indication of the least one health-related status of the
individual;
an advertiser module configured for advertising a desire
for at least one selected health service option; and
a provider module configured to provide a matching
system for procurement of a desired health service option.

THE REJECTIONS2
The Examiner relies upon the following as evidence of
unpatentability:

2 The provisional rejection of claims 135, 136, 141–143, 147, 149–151, 153,
154, 156–159, 164–175, 179–186, and 188–192 on the ground of provisional
obviousness-type double patenting as being unpatentable over claims 1, 64,
65, 70, 72, 76, 80, 82, 86, 95–100, 102, 104–106, 110, 113–117, 120–123,
127, 128, and 132–134 of co-pending Application No. 12/590,250 is moot in
view of the July 13, 2015, Notice of Abandonment for Application No.
12/590,250. Accordingly, the appeal will be dismissed as to the claims
rejected under provisional obviousness-type double patenting.

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Henley US 2002/0065758 A1 May 30, 2002
Thomas US 2004/0015337 A1 Jan. 22, 2004
Kanai US 6,807,531 B1 Oct. 19, 2004
Eaton US 2006/0136264 A1 June 22, 2006
Boerger US 2007/0271119 A1 Nov. 22, 2007

The following rejections are before us for review.
Claims 135–139, 141–160, 162–166, 168–170, 173–178, 182, and
184–194 are rejected under 35 U.S.C. § 103(a) as being unpatentable over
Kanai and Eaton.
Claims 140 and 179–181 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Kanai, Eaton, and Henley.
Claim 161 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Kanai, Eaton, and Boerger.
Claims 167, 171, 172, and 183 are rejected under 35 U.S.C. § 103(a)
as being unpatentable over Kanai, Eaton, and Thomas.

FINDINGS OF FACT
1. We adopt the Examiner’s findings as set forth on pages 5–28 of the
Final Action and on pages 9–10 and 13–16 of the Answer.
2. Concerning claim 135, the Examiner found and determined that the
combination of Kanai and Eaton discloses each claim element as follows:

Kanai, as shown, discloses the following
limitations:
• an accepter module configured to accept an
indication of at least one health-related status of
an individual (see at least figure 2, column 5, lines
57-60, patient attribute information is input into
system, interpreted as an accepter module,
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including basic diseases, medical history, and test
results, interpreted as health-related status);
• a determiner module, including a
microprocessor, configured to determine a
plurality of health service options for the
individual at least partially based on accepting the
indication of at the least one health-related status
of the individual (see at least figures 2-4, column
5, line 60 -column 7, line 6, patient attribute
information is used by system to calculate multiple
treatment options, interpreted as a determiner
module);
Kanai does not explicitly recite the following
limitations, but Eaton as shown does:
• an advertiser module configured for advertising a
desire for at least one selected health service
option (see at least paragraphs 0047, 0057, 0068,
system solicits physicians/providers for treatments
that meet criteria of consumers/patients,
interpreted as an advertiser module);
• a provider module configured to provide a
matching system for procurement of a desired
health service option (see at least paragraphs 0047,
0068, system matches treatment criteria of
consumer/patient with available treatments from
physicians/providers, interpreted as a provider
module).
It would have been obvious to one of ordinary skill
in the art at the time of the invention to combine
the medical treatment decision making system of
Kanai with the medical treatment matching system
of Eaton because it allows healthcare consumers
the ability to shop and compare healthcare
treatments based on price, quality and preference
so as to manage his or her wellness and health care
expenditures (Eaton, paragraphs 0006-0007).
(Final Act. 5).
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ANALYSIS
Appellants argue that the Examiner has not made a prima facie case of
unpatentability for independent claim 135. (See Appeal Br. 45–66; see also
Reply Br. 3–8 and Supp. Reply Br. 4–14). According to Appellants:
[T]he evidence cited by the USPTO ostensibly to establish a
prima facie case of unpatentability merely cites locations in the
reference in parentheses which are not explained. Importantly,
what the USPTO examiner has provided here is neither claim
interpretation nor a reasoned application of the cited material to
the claims. Reciting the claims back to an Applicant along with
parenthetical locations amounts to a “stab in the dark” rather
than requisite claim interpretation and reasoned application of
the material(s) to the claims.
(Appeal Br. 45). Appellants further allege:
Insofar that Applicant has shown that “at first sight; on the first
appearance; on the face of it; so far as can be judged from the
first disclosure” the USPTO-cited art is very different from
Claim 135, and Applicant has noted that the USPTO has not
cited to any objectively verifiable evidence/argument based on
same sufficient to remedy such prima facie differences, the
USPTO-cited technical material does not establish a prima
facie case of the unpatentability of Claim 135 either under the
MPEP or under controlling legal standards.
(Id. at 57, citing definition of “prima facie,” Black’s Law Dictionary 1189
(6th ed. 1990); see also id. at 64). Appellants assert that the Examiner’s
findings are based on “inadvertent impermissible hindsight, personal
knowledge, or Official Notice.” (Id. at 58; see also id. at 65).
Appellants’ arguments are not persuasive. The Federal Circuit has
held that the USPTO carries its procedural burden of establishing a prima
facie case when its rejection satisfies the requirements of 35 U.S.C. § 132 by
notifying the applicant of the reasons for rejection, “‘together with such
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information and references as may be useful in judging of the propriety of
continuing the prosecution of [the] application.’” (See In re Jung, 637 F.3d
1356, 1362 (Fed. Cir. 2011) (citation omitted)). Thus, “all that is required of
the office to meet its prima facie burden of production is to set forth the
statutory basis of the rejection and the reference or references relied upon in
a sufficiently articulate and informative manner as to meet the notice
requirement of § 132.” (Id. at 1363).
Here, the Examiner notified Appellants that the sole independent
claim 135 is rejected under 35 U.S.C. § 103(a) as unpatentable over the
combination of Kanai and Eaton, and the Examiner cited specific portions of
the references, by column and line numbers (Kanai) and paragraph number
(Eaton), that are the basis for the rejection. (See Final Act. 4–5; see also
Answer 9–10). The cited portions of the references together with the
accompanying explanations constitute the objectively verifiable evidence,
which Appellants allege is lacking.
We find that the Examiner has made a prima facie case of obviousness
for each rejected claim, because the Examiner has made at least one finding
for each claim element that includes a citation to a specific portion of Kanai
or Eaton with a short explanation of how the cited section meets the claim
element. (Final Act. 4-15). Taking independent claim 135 as an example,
the Examiner made at least one finding for each claim limitation that
includes a citation to a specific portion of one of Kanai or Eaton. (See Final
Act. 5-6). Specifically, the Examiner found that Kanai discloses an accepter
module at Figure 2, and column 5, lines 57-60, stating: “patient attribute
information is input into system, interpreted as an accepter module,
including basic diseases, medical history, and test results, interpreted as
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health-related status.” (FF. 2). The Examiner further found that Kanai
discloses a determiner module at Figures 2-4, and in column 5, line 60 -
column 7, line 6, stating: “patient attribute information is used by system to
calculate multiple treatment options, interpreted as a determiner module.” Id.
The Examiner found that Eaton discloses an advertiser module at at least
paragraphs 0047, 0057, 0068, stating: the system solicits physicians/
providers for treatments that meet criteria of consumers/patients, interpreted
as an advertiser module.” Id. The Examiner further found that Eaton
discloses a provider module at at least paragraphs 0047, 0068, stating the
“system matches treatment criteria of consumer/patient with available
treatments from physicians/providers, interpreted as a provider module.” Id.
The Examiner further made a determination as to why one of ordinary skill
in the art would combine Kanai and Eaton to meet the claim requirements.
Id. Our review of the latter determination by the Examiner reveals that it
would have been reasonable and obvious to allow a heath care customer the
ability to shop and compare treatments in the management of the individual
healthcare expenditures as this is just good business practice.
In view of the foregoing, which is representative of the rejection
throughout, we find that the Examiner establishes a prima facie case of
obviousness. Appellants do not rebut the prima facie case by distinctly and
specifically pointing out supposed error in the Examiner’s action, as well as
the specific distinctions believed to render a claim patentable over the cited
art. (See 37 C.F.R. 41.37(c)(iv) (2015); see also In re Lovin, 652 F.3d 1349,
1357 (Fed. Cir. 2011) (“[W]e hold that the Board reasonably interpreted
Rule 41.37 to require more substantive arguments in an appeal brief than a
mere recitation of the claim elements and a naked assertion that the
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corresponding elements were not found in the prior art.”)). Appellants have
failed to carry this burden. Rather than explaining how the cited portions do
not disclose the limitations of claim 135, Appellants merely quote the
language of claim 135 and the cited portions of the references and argue that
the cited portions do not disclose the identical claim language. (See, e.g.,
Appeal Br. 57 (“Applicant has shown by direct quotations that Independent
Claim 135 and the Kanai reference are very different on their faces.”); see
also Supp. Reply Br. 5 (“Applicant/Appellant has tried to show patentability
by demonstrating mismatches between the claim language and the language
of the cited documents.”)). Given that Appellants do not address the
Examiner’s specific findings, we are unpersuaded of error in the Examiner’s
determination that the combined teachings of Kanai and Eaton renders
obvious the subject matter of claim 135. We decline to examine the claims
sua sponte, looking for distinctions over the prior art. (Cf. In re Baxter
Travenol Labs., 952 F.2d 388, 391 (Fed. Cir. 1991) (“It is not the function of
this court to examine the claims in greater detail than argued by an appellant,
looking for [patentable] distinctions over the prior art.”)).
Appellants also argue that the Examiner has provided conclusory
statements only and has failed to provide articulated reasoning with some
rational underpinning to support the obviousness conclusion. (Appeal Br.
66–68, citing KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398 (2007)).
We disagree with Appellants. Here, the Examiner found and we agree
that a person of ordinary skill would have been motivated to combine the
teachings of Kanai and Eaton because the combination would “allow[]
healthcare consumers the ability to shop and compare healthcare treatments
based on price, quality and preference so as to manage his or her wellness
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and healthcare expenditures” (Final Act. 5, citing Eaton, paras. 6–7), and
Appellants do not specifically address the Examiner’s articulated reason for
combining Kanai and Eaton.
Appellants further contend that the Examiner’s proposed combination
of Kanai and Eaton is improper because it would change the principle of
operation of the components being modified (Appeal Br. 68–71), and would
render the modified components unsatisfactory for their intended purpose
(id. at 71–74). These arguments are not persuasive because they are merely
conclusory statements and lack any explanation why the Examiner’s
proposed combination would change the principle of operation or render the
modified components unsatisfactory for their intended purpose. (See id.).
Further, these arguments similarly fail at least because they are based on
bodily incorporation, which is not the test for obviousness. (See In re Sneed,
710 F.2d 1544, 1550 (Fed. Cir. 1983) (“[I]t is not necessary that the
inventions of the references be physically combinable to render obvious the
invention under review.”); In re Nievelt, 482 F.2d 965 (CCPA 1973)
(“Combining the teachings of references does not involve an ability to
combine their specific structures.”)).
In view of the foregoing, we sustain the Examiner’s rejection of
independent claim 135 under 35 U.S.C. § 103(a) as unpatentable over Kanai
and Eaton. Appellants’ arguments for dependent claims 136–139, 142, 144–
159, 162–166, 168–170, 173–178, 182, and 184–194 assert nothing more
than what Appellants argue in regard to independent claim 135 (see Appeal
Br. 75, n. 15), and we sustain the Examiner’s rejection of these claims for
the same reasons as claim 135.
Appellants separately address dependent claims 141, 143, and 160.
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(Appeal Br. 75–83). In doing so, Appellants quote the language of these
claims and the portions of Kanai and Eaton cited by the Examiner and allege
that the cited portions do not disclose the identical claim language. (See id.).
But, simply because the exact language of a claim is not disclosed in a
reference does not mean that the claimed subject matter is not otherwise
described using different words in the reference. Anticipation “is not an
‘ipsissimis verbis’ test.” In re Bond, 910 F.2d 831, 832-33 (Fed. Cir. 1990)
(citing Akzo N.V. v. U. S. Int'l Trade Comm'n, 808 F.2d 1471, 1479 n.11
(Fed. Cir. 1986)). Given that Appellants offer no substantive arguments to
rebut the Examiner’s specific findings for these claims (see Final Act. 7–8,
12; see also Answer 15–16), Appellants do not apprise us of error in the
Examiner’s rejection. Therefore, we sustain the Examiner’s rejection of
claims 141, 143, and 160 under 35 U.S.C. § 103(a) as unpatentable over
Kanai and Eaton.
CONCLUSIONS OF LAW
We conclude the Examiner did not err in rejecting claims 135–194
under 35 U.S.C. § 103(a).

DECISION
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