Ex Parte Fors et al

Patent Trial and Appeal Board

Jul 10, 2013

11740344 (P.T.A.B. Jul. 10, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte STEVE LAWRENCE FORS, MARK M. MORITA, and
WILLIAM DOUGLAS HUGHES
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Appeal 2011-007836
Application 11/740,344
Technology Center 3600
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Before ANTON W. FETTING, BIBHU R. MOHANTY, and
NINA L. MEDLOCK, Administrative Patent Judges.

MEDLOCK, Administrative Patent Judge.

DECISION ON APPEAL
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Application 11/740,344

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STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 1, 2, 4-7, 9-15, and 17-24. We have jurisdiction under
35 U.S.C. § 6(b).

STATEMENT OF THE DECISION
We AFFIRM-IN-PART.
1

BACKGROUND
Appellants’ invention generally relates to clinical information systems
and, more specifically, to systems and methods for user-configurable range
settings in clinical information systems (Spec., para. [04]).
Claim 1, reproduced below, is representative of the subject matter on
appeal:
1. A clinical information system, the system including:
a user interface operably connected to a computer
processor, the user interface and processor being part of a
clinical information system used in connection with providing
healthcare services, the user interface adapted to allow a user to
configure a custom range for a lab result for a patient
population; and
a custom range storage component operably connected to
the processor, the custom range storage component adapted to
use the processor to store the configured custom range.

1
Our decision will make reference to the Appellants’ Appeal Brief
(“App. Br.,” filed September 27, 2010) and Reply Brief (“Reply Br.,” filed
February 7, 2011) and the Examiner’s Answer (“Ans.,” mailed December 8,
2010).
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THE REJECTION
The following rejection is before us for review:
Claims 1, 2, 4-7, 9-15, and 17-24 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Katz (US 2004/0078240 A1, pub.
Apr. 22, 2004) in view of Johnson (US 2001/0051879 A1, pub. Dec. 13,
2001).

ANALYSIS
Independent claim 1
Appellants argue that the Examiner erred in rejecting claim 1 under
35 U.S.C. § 103(a) because neither Katz nor Johnson discloses or suggests
a “user interface adapted to allow a user to configure a custom range for a
lab result for a patient population,” as recited in the claim (App. Br. 5-7 and
Reply Br. 3-9).
The Examiner maintains that the rejection is proper and cites
paragraphs [0016], [0041], and [0042] and Figures 3-12 of Katz as
disclosing a user interface adapted to allow a user to configure a custom
range for a lab result. The Examiner concedes that Katz does not
specifically disclose the custom range being configured for a patient
population, and relies on paragraphs [0360] – [0367], [0381], and [0530] of
Johnson to cure this deficiency (Ans. 4-5 and 8-11).
We have reviewed the portions of Katz and Johnson cited by the
Examiner, and we conclude that the Examiner’s findings as set forth at
pages 8-11 of the Answer are reasonable and supported. Katz discloses a
method and apparatus that allows a user to build a cumulative record of his
or her clinical data over time (Katz, Abstract), and explicitly describes at
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paragraph [0016] that the clinical data may include medical tests and that
high and low test result values can be specified for each test. Johnson
describes configuring test results that meet certain criteria, e.g., date range,
patient group, location, ordering physician, for a particular patient or group
of patients, i.e., a patient population (Johnson, para. [0381]).
Appellants argue that “not only does Katz fail to disclose configuring
a custom lab result range for a patient population, Katz disparages and
teaches away from more complex systems, such as the one recited in
claim 1.” Therefore, according to Appellants, “Katz is not properly
modified or combined with another reference to arrive at the invention
recited in claim 1” (App. Br. 6). We disagree.
Katz distinguishes prior systems that are:
focused upon the needs of health care providers (i.e., doctors
[sic] offices, laboratories) and/or require a complex technical
support infrastructure (e.g., complex databases, connectivity to
multiple remote data sources, etc.) and/or specialized
knowledge that is not available to an individual patient
interested in viewing trends in the patient’s own personal
medical treatment
(Katz, para. [0006]). However, a teaching away requires criticism and/or
discouragement. Appellants have not shown that Katz criticizes or
discourages configuring a custom lab result range for a patient population
and, therefore, has not shown that Katz teaches away from this feature. See
In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994) (“[a] reference may be said
to teach away when a person of ordinary skill, upon [examining] the
reference, would be discouraged from following the path set out in the
reference, or would be led in a direction divergent from the path that was
taken by the applicant”).
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Appellants further argue that the proposed modification:
would render Katz unsatisfactory for its intended purpose (i.e.,
allowing patients with basic computer skills and minimal
medical vocabulary to build a cumulative record of their
clinical data over time and to prepare tabular and graphic
reports that provide a clear view of trends related to their
treatment) and would change the principle of operation of the
Katz system
(Reply Br. 5, emphasis in original). However, we agree with the Examiner
that Katz and Johnson disclose complementary approaches, and that the
proposed combination is nothing more than a combination of prior art
elements according to their established functions, and yields a predictable
result (Ans. 9). Therefore, it would have been obvious at the time of
Appellants’ invention. See KSR Int’l Co. v. Teleflex Inc., 550 U. S. 398, 416
(2007) (“The combination of familiar elements according to known methods
is likely to be obvious when it does no more than yield predictable results”).
Appellants’ further argument that paragraphs [0381] and [0530] of
Johnson only disclose “customizing reports to allow the user to create
patient categories that include trends in a patient population for obtaining
statistical information” (App. Br. 6) also is unpersuasive. In creating the
custom lab reports for a patient population, Johnson allows the user to enter
custom ranges for lab reports (see Johnson, paras. [0360] – [0367] and
[0381] (allowing a user to specify a date range for a lab result)).
Appellants argue that a date range is not a lab result range and that
“Johnson’s alleged disclosure of a custom date range fails to disclose ‘a
custom range for a lab result for a patient population,’ as set forth in
Appellant’s independent claim 1” (Reply Br. 8). However, we agree with
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the Examiner that the phrase “a custom range for a lab result for a patient
population,” as reasonably broadly construed, covers a range of dates.
In view of the foregoing, we will sustain the Examiner’s rejection of
claim 1 under 35 U.S.C. § 103(a).
Independent claims 14, 19, and 22
Appellants’ arguments with respect to claims 14, 19, and 22 are
substantially similar to Appellants’ arguments with respect to claim 1 (App.
Br. 5-7 and Reply Br. 3-9). We found Appellants’ arguments unpersuasive
with respect to claim 1, and we find them equally unpersuasive as to
claims 14, 19, and 22. Therefore, we will sustain the Examiner’s rejections
of claims 14, 19, and 22 under 35 U.S.C. § 103(a).
Dependent claims 2, 15, and 23
Appellants argue claims 2, 15, and 23 as a group (App. Br. 8). We
select claim 2 as representative. The remaining claims stand or fall with
claim 2. 37 C.F.R. § 41.37(c)(1)(vii).
Claim 2 depends from claim 1, and recites that “the user interface is
adapted to allow the user to associate the custom range with a patient
population that is indicated to have a certain disease.”
We are not persuaded that the Examiner erred in rejecting claim 2
under 35 U.S.C. § 103(a) (App. Br. 8 and Reply Br. 9-10). After carefully
considering Appellants’ arguments, we agree with, and adopt the Examiner’s
findings and rationales as set forth at page 5 of the Answer. We note in
particular that Johnson teaches that a user can “customize the search criteria
to produce only the results that best meet the user’s practice requirements.
For example, the user can generate a listing of all the patients who had
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abnormal or high HDL cholesterol readings over a period of time” (Johnson,
para. [359]).
In view of the foregoing, we will sustain the Examiner’s rejection of
claim 2 under 35 U.S.C. § 103(a). We also will sustain the Examiner’s
rejection of claims 15 and 23, which stand or fall with claim 2.
Dependent claim 9
Claim 9 depends from claim 1 and recites that “the user interface is
adapted to allow a second custom range to be configured for the lab result,
the custom range being a normal range for the lab result and the second
custom range being an acceptable but less desirable range for the lab result.”
We are persuaded that the Examiner erred in rejecting claim 9 under
35 U.S.C. § 103(a) by Appellants’ argument that neither Katz nor Johnson
discloses or suggests a user interface that allows two custom ranges to be
configured for a lab result for a patient population, the first custom range
being a normal range for the lab result and the second custom range being an
acceptable but less desirable range for the lab result, as recited in the claim.
(App. Br. 8-9).
The Examiner cites Figures 8, 10, and 12 of Katz as disclosing a
second custom range configured for the lab result but acknowledges that
Katz does not disclose that the second custom range is an acceptable but less
desirable range for the lab result (Ans. 5). The Examiner relies on
paragraphs [0290] through [0295] and [0615] of Johnson to cure the
deficiency of Katz (Ans. 5-6). But we find nothing in any of the cited
portions of Katz and Johnson that discloses or suggests a user interface that
allows two custom ranges to be configured for a lab result for a patient
population, the first custom range being a normal range for the lab result and
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the second custom range being an acceptable but less desirable range for the
lab result, as recited in claim 9.
Katz discloses configuring a custom range for a lab result, and
discloses a user interface for editing a previously defined range (see, e.g.,
Figure 8). Paragraphs [0290] through [0295] of Johnson are directed to
compiling a “results report,” including a column heading “Normal Range,”
and paragraph [0615] of Johnson discloses a filter for narrowing search
results. But none of these cited portions of Katz and Johnson discloses a
user interface that allows two custom ranges to be configured for a lab result
for a patient population, as recited in claim 9.
Therefore, we will not sustain the Examiner’s rejection of claim 9
under 35 U.S.C. § 103(a).
Dependent claim 10
Claim 10 depends from claim 1 and recites that “the user interface is
adapted to allow the user to configure the custom range to be applied for a
limited duration.”
We are persuaded that the Examiner erred in rejecting claim 10 under
35 U.S.C. § 103(a) (App. Br. 9 and Reply Br. 11-13). The Examiner cites
paragraph [0017] of Katz as disclosing this feature. However, we find
nothing in that paragraph that discloses or suggests allowing a user to
configure a custom range to be applied for a limited duration, as recited in
claim 10. Instead, paragraph [0017] of Katz merely discloses producing a
custom report that includes test data from tests conducted during a specified
date range.
Therefore, we will not sustain the Examiner’s rejection of claim 10
under 35 U.S.C. § 103(a).
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Dependent claim 11
Claim 11 depends from claim 1 and recites that the claimed system
includes “an alert component adapted to alert a healthcare provider based at
least in part on the custom range and a lab value for the lab result.”
We are not persuaded that the Examiner erred in rejecting claim 11
under 35 U.S.C. § 103(a) (App. Br. 9 and Reply Br. 13-14). The Examiner
cites Johnson as teaching that a healthcare provider may configure a listing
of all patients who had abnormal or high HDL cholesterol readings over a
period of time (Ans. 6 and 12, citing Johnson at para. [0359]). We agree
with the Examiner that configuring such a listing constitutes an alert
component, as recited in claim 11. Katz also describes in paragraph [0016]
that “[t]est result values that exceed minimum or maximum values specified
for the test are automatically marked so that the patient is alerted to the out
of range values.”
In view of the foregoing, we will sustain the Examiner’s rejection of
claim 11 under 35 U.S.C. § 103(a).
Dependent claims 12, 18, 21, and 24
Appellants argue claims 12, 18, 21, and 24 as a group (App. Br. 9-10).
We select claim 12 as representative. The remaining claims stand or fall
with claim 12. 37 C.F.R. § 41.37(c)(1)(vii).
Claim 12 depends from claim 1, and recites that the claimed system
further includes “a profile component adapted to allow a profile including a
plurality of custom lab result ranges to be associated with the patient
population.”
We are not persuaded that the Examiner erred in rejecting claim 12
under 35 U.S.C. § 103(a) (App. Br. 9-10 and 14-15). Katz teaches a profile
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including a plurality of custom lab result ranges (Katz, Figs. 5 and 6). Katz
does not specifically disclose that the custom ranges are associated with a
patient population. However, Johnson describes configuring test results that
meet certain criteria, e.g., date range, patient group, location, ordering
physician, for a particular patient or group of patients, i.e., a patient
population (Johnson, para. [0381]). We agree with the Examiner that the
proposed combination of Katz and Johnson is nothing more than a
combination of prior art elements according to their established functions,
and yields a predictable result (Ans. 7). Therefore, it would have been
obvious at the time of Appellants’ invention. See KSR, 550 U.S. at 416.
Therefore, we will sustain the Examiner’s rejection of claim 12 under
35 U.S.C. § 103(a). We also will sustain the Examiner’s rejection of
claims 18, 21, and 24, which stand or fall with claim 12.

DECISION
The Examiner’s rejection of claims 1, 2, 4-7, 11-15, and 17-24 under
35 U.S.C. § 103(a) is affirmed.
The Examiner’s rejection of claims 9 and 10 under 35 U.S.C. § 103(a)
is reversed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1) (2011).

AFFIRMED-IN-PART

ELD