Ex Parte Harris

Patent Trial and Appeal Board

Mar 15, 2013

10216268 (P.T.A.B. Mar. 15, 2013)

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.
10/216,268 08/12/2002 Jeffrey Saul Harris 0003-0002 6648
52226 7590 03/15/2013
CURTIS, NEIL & ELWOOD, LLC
1325 WALLACH PLACE NW
WASHINGTON, DC 20009-4450
EXAMINER
CHEN, TE Y
ART UNIT PAPER NUMBER
2168
MAIL DATE DELIVERY MODE
03/15/2013 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 JEFFREY SAUL HARRIS
____________

Appeal 2012-006956
Application 10/216,2681
Technology Center 2100
____________

Before CAROLYN D. THOMAS, STANLEY M. WEINBERG, and
JOHN A. EVANS, Administrative Patent Judges.

THOMAS, Administrative Patent Judge.

DECISION ON REQUEST FOR REHEARING

1 The real party in interest is Mr. Jeffrey Saul Harris.
Appeal 2012-006956
Application 10/216,268

2
INTRODUCTION
Appellant requests rehearing of the Patent Trial and Appeal Board’s
(“Board”) Decision mailed January 31, 2013 (“Decision”), in which we
affirmed-in-part the rejection of claims 11-15, 17-23, and 25-30 under
35 U.S.C. § 102(e) as being anticipated by Schaeffer (US 7,418,399 B2,
Aug. 26, 2008).

ANALYSIS
In the Request for Rehearing (“Request”), Appellant alleges that the
Board overlooked and did not consider the separate argument regarding the
patentability of claim 25 (Req. 2-3). We disagree.
Specifically, Appellant contends that “on page 16 of the Appeal Brief
the App[ellant] has set out a separate argument as to why claim 25 is
patentable” (id. (emphasis added)). In essence, Appellant argues that
“Schaeffer does not discuss patient ability parameters at all” and “it is not
reasonable for the Examiner to interpret ‘patient ability parameters’ as being
the same as symptoms of an infection” (see App. Br. 16-17). However, we
find that the aforementioned arguments are indistinguishable from the
arguments made for independent claim 20. Claim 25’s recitation of “the
patient ability parameters” has no antecedent basis in claim 20. The closest
antecedent recitation in claim 20 is “patient’s current functional abilities,”
which we have fully considered, as shown below.
For example, in our Decision, we noted that the arguments for claim
20 included:
Appellant contends that “one skilled in the art would
understand that ‘a patient’s current functional abilities’ is not
the same thing as the patient’s medical condition or diagnosis,
Appeal 2012-006956
Application 10/216,268

3
but is instead, the functional (physical) abilities/limitations of a
patient with a particular medical condition/diagnosis” (App. Br.
15). Appellant further contends that “[n]owhere does Schaeffer
discuss a ‘patient’s current functional abilities’” (id.).
(Decision 5). In other words, like dependent claim 25, the arguments for
independent claim 20 concerned whether the claimed “patient’s current
functional abilities” data was the same as the Examiner’s proffered “medical
condition/diagnosis” data.
In response, we found
that the recitation in claim 20: “matching patient’s current
functional abilities to guideline-based criteria” (emphasis
added) merely amounts to non-functional descriptive material
as we are merely matching a first type of data to a second type
of data. . . . as such data does not exhibit a functional
interrelationship with the substrate
(Decision 6). This reasoning is equally applicable to dependent claim 25, as
claim 25 is also comparing a first data to a second data (e.g., patient ability
parameters and stored risk factor information) whereas the data does not
exhibit a functional interrelationship with the substrate, as the type of data
does not affect the compiling a list step nor the sending a message step (see
claim 25).
Our Decision further noted that:
Here, the Examiner properly found that Schaeffer
matches a first data to a second data as Schaeffer at least
discloses “that each bacterium is cross-matched with the
antimicrobial used to treat it” (col. 10, ll. 13-14) and “matching
characteristics between the undiagnosed patient and the
previous persons” (col. 10, ll. 20-21). Therefore, we find that
no patentable weight needs to be given to the claimed
“functional abilities,” as it is enough that Schaeffer discloses
matching a first and second data item.
Appeal 2012-006956
Application 10/216,268

4
(Decision 6-7). In other words, no patentable weight was given to the type
of data claimed.
Therefore, we find Appellant’s argument that we overlooked separate
arguments for claim 25 unavailing, as we found the arguments for claim 20
and for claim 25 indistinguishable from one another, as both arguments
regarded the same type of data (e.g., ability/functional data) and whether
Schaeffer discloses the same. Merely placing an argument in a separate
location with a separate heading from another argument does not necessarily
make it a separate argument for patentability. It is the “substance” of such
arguments that determines a separate argument for patentability. In our
Decision, we found the substance of such arguments were indistinguishable,
and therefore reasonably grouped claim 25 with claim 20. See 37 C.F.R.
41.37(c)(1)(vii). See also In re Young, 927 F.2d 588, 590 (Fed. Cir. 1991).

DECISION
Accordingly, we have granted Appellant’s Request to the extent that
we have reconsidered the original Decision but have DENIED it with respect
to making any changes to the 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)(1)(iv).

REHEARING DENIED

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