Ex Parte Gordon et al

Board of Patent Appeals and Interferences

Sep 22, 2009

09985173 (B.P.A.I. Sep. 22, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte TIM H. GORDON,
JANET DAVIDSON,
NANCY A. DUNNE,
ROGER MAZZE,
RACHEL ROBINSON,
GREGG SIMONSON,
PAUL A. UPHAM, and
TODD WEAVER
____________

Appeal 2009-004347
Application 09/985,173
Technology Center 3600
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Decided: September 22, 2009
____________

Before MURRIEL E. CRAWFORD, HUBERT C. LORIN, and
JOSEPH A. FISCHETTI, Administrative Patent Judges.

LORIN, Administrative Patent Judge.

DECISION ON APPEAL
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STATEMENT OF THE CASE
Tim H. Gordon, et al. (Appellants) seek our review under 35 U.S.C. §
134 of the final rejection of claims 1-30. We have jurisdiction under 35
U.S.C. § 6(b) (2002).

SUMMARY OF DECISION
We AFFIRM.1

THE INVENTION
The invention relates to “automatically integrating data with
guidelines to generate displays containing the guidelines and data.”
Specification [0002].
Claim 1, reproduced below, is illustrative of the subject matter on
appeal.
1. A system for integrating guidelines with data, comprising:
a data storage component,
adapted to store guideline data representing at least one of guidelines for
assessing a condition of an entity and guidelines for taking action on said
entity, and

to store feature data representing at least one feature of said entity; and
an output device,
adapted to output at least one diagram representing said guideline data,

said diagram comprising a decision pathway representing said guideline data
enhanced with said feature data integrated into the decision pathway to

1 Our decision will make reference to the Appellants’ Appeal Brief (“Br.,”
filed Feb. 19, 2008) and the Examiner’s Answer (“Answer,” mailed Jun. 19,
2008).
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represent a relationship of at least a portion of said feature data to at least a
portion of said guideline data.

THE REJECTIONS
The Examiner relies upon the following as evidence of
unpatentability:
McIlroy
Schlueter, Jr.
US 5,953,704
US 5,974,124
Sep. 14, 1999
Oct. 26, 1999
The following rejections are before us for review:
1. Claims 11-20 are rejected under 35 U.S.C. §101 as being directed to
nonstatutory subject matter.
2. Claims 1-3, 5-13, 15-23, and 25-30 are rejected under 35 U.S.C.
§102(b) as being anticipated by McIlroy.
3. Claims 4, 14, and 24 are rejected under 35 U.S.C. §103(a) as being
unpatentable over McIlroy and Schlueter, Jr..

DISPOSITION OF THE APPEAL
The Examiner entered a new ground of rejection in the Examiner’s
Answer against claims 11-20 under 35 U.S.C. §101 as being directed to
nonstatutory subject matter. Answer 2. The Examiner properly gave notice
of the new ground of rejection (Answer 9) and the Technology Center
Director approved it. Answer 11. As the Answer indicated (Answer 9-10),
the Appellants were required to respond to the new grounds within two
months in either of two ways: 1) reopen prosecution (see 37 CFR
41.39(a)(2)(b)(1)); or 2) maintain the appeal by filing a reply brief as set
forth in 37 CFR 41.41 (see 37 CFR 41.39(a)(2)(b)(2) ), “to avoid sua sponte
dismissal of the appeal as to the claims subject to the new ground of
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rejection.” Answer 9. According to the record before us, neither option
appears to have been exercised.
Accordingly, the appeal as to claims 11-20 subject to the new ground
of rejection under §101 as being directed to nonstatutory subject matter
stands dismissed.
Upon return of the application to the Examiner, the Examiner should
(1) cancel claims 11-20 subject to the new ground of rejection and (2) notify
the Appellants that the appeal as to claims 11-20, subject to the new ground
of rejection under §101, as being directed to nonstatutory subject matter, is
dismissed and claims 11-20 are cancelled. See Manual of Patent Examining
Procedure (MPEP) § 1207.03, 8th ed., Rev. 7, Jul. 2008.
Given that the appeal as to claims 11-20 stands dismissed, the
rejections before us for review are reduced to as follows:
1. Claims 1-3, 5-10, 21-23, and 25-30 are rejected under 35 U.S.C.
§102(b) as being anticipated by McIlroy. Answer 5.
2. Claims 4 and 24 are rejected under 35 U.S.C. §103(a) as being
unpatentable over McIlroy and Schlueter, Jr.. Answer 7.

ISSUES
Have the Appellants shown that the Examiner erred in rejecting
claims 1-3, 5-10, 21-23, and 25-30 under 35 U.S.C. §102(b) as being
anticipated by McIlroy and claims 4 and 24 under 35 U.S.C. §103(a) as
being unpatentable over McIlroy and Schlueter, Jr.?

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FINDINGS OF FACT
We rely on the Examiner’s factual findings (see Answer 5-8 and the
Final Rejection 3-4).

PRINCIPLES OF LAW
Anticipation
“A claim is anticipated only if each and every element as set forth in
the claim is found, either expressly or inherently described, in a single prior
art reference.” Verdegaal Bros., Inc. v. Union Oil Co. of Cal., 814 F.2d 628,
631 (Fed. Cir. 1987).
Obviousness
Section 103 forbids issuance of a patent when ‘the differences
between the subject matter sought to be patented and the prior
art are such that the subject matter as a whole would have been
obvious at the time the invention was made to a person having
ordinary skill in the art to which said subject matter pertains.’
KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007). The question of
obviousness is resolved on the basis of underlying factual determinations
including (1) the scope and content of the prior art, (2) any differences
between the claimed subject matter and the prior art, and (3) the level of skill
in the art. Graham v. John Deere Co., 383 U.S. 1, 17-18 (1966). See also
KSR, 550 U.S. at 407 (“While the sequence of these questions might be
reordered in any particular case, the [Graham] factors continue to define the
inquiry that controls.”) The Court in Graham further noted that evidence of
secondary considerations “might be utilized to give light to the
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circumstances surrounding the origin of the subject matter sought to be
patented.” Graham, 383 U.S. at 17-18.

ANALYSIS
The rejection of claims 1-3, 5-10, 21-23, and 25-30 under 35 U.S.C. §102(b)
as being anticipated by McIlroy.
The Appellants argued claims 1-3, 5-10, 21-23, and 25-30 as a group
(Br. 3). We select claim 1 as the representative claim for this group, and the
remaining claims 2, 3, 5-10, 21-23, and 25-30 stand or fall with claim 1. 37
C.F.R. § 41.37(c)(1)(vii) (2007).
We agree with the Examiner (Answer 9) that the Appellants’
argument is not commensurate in scope with what is claimed. The
Appellants argued only that “McIlroy fails to teach or suggest presenting a
diagram comprising a decision pathway representing guideline data
enhanced with patient data integrated into the decision pathway.” Br. 4
(emphasis original). However, there is no mention of patient data in claim 1.
Cf. In re Self, 671 F.2d 1344, 1348 (CCPA 1982) (“Many of appellant’s
arguments fail from the outset because, . . . they are not based on limitations
appearing in the claims.”).
Regarding that part of the argument stressing that McIlroy does not
describe a “diagram comprising a decision pathway”, as the Examiner
(Answer 5) has indicated, McIlroy appears to expressly show a screen
depicting such a diagram. See e.g., Figs. 15 and 16 and associated disclosure
at col. 12, ll. 18-28 and 46-48. However, it should be emphasized that claim
1 does not require presenting a diagram per se, as the Appellant has argued.
Claim 1 is directed to an apparatus comprising an output device. As claimed,
the output device is “adapted to output” the diagram. Nevertheless, given
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that McIlroy appears to expressly describe a screen depicting such a
diagram, it necessarily also describes an output device adapted to output
such a diagram.
Accordingly, the Appellants’ argument does not persuade us as to
error in the rejection of claim 1. Since remaining claims 2, 3, 5-10, 21-23,
and 25-30 stand or fall with claim 1, we reach the same conclusion as to
those claims.

The rejection of claims 4 and 24 are rejected under 35 U.S.C. §103(a) as
being unpatentable over McIlroy and Schlueter, Jr.
The Appellants rely on the argument raised in challenging the
rejection of claims 1-3, 5-10, 21-23, and 25-30. Since for the foregoing
reasons we find that argument unpersuasive as to error in the rejection of
claims 1-3, 5-10, 21-23, and 25-30, we are also not persuaded by that
argument as to error in the rejection of claims 4 and 24.

CONCLUSIONS
We conclude that the Appellants have not shown that the Examiner
erred in rejecting claims 1-3, 5-10, 21-23, and 25-30 under 35 U.S.C.
§102(b) as being anticipated by McIlroy.
We conclude that the Appellants have not shown that the Examiner
erred in rejecting claims 4 and 24 under 35 U.S.C. §103(a) as being
unpatentable over McIlroy and Schlueter, Jr..

DECISION
The decision of the Examiner to reject claims 1-10 and 21-30 is
affirmed.
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AFFIRMED

mev

RICHARD J. RODRICK, ESQ.
BECTON DICKINSON AND COMPANY
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FRANKLIN LAKES NJ 07417-1880