Ex Parte Herger et al

Patent Trial and Appeal Board

Feb 13, 2014

12051162 (P.T.A.B. Feb. 13, 2014)

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.
12/051,162 03/19/2008 Lorraine M. Herger YOR920030302US2 1027
48063 7590 02/14/2014
RYAN, MASON & LEWIS, LLP
48 South Service Road
Suite 100
Melville, NY 11747
EXAMINER
PASS, NATALIE
ART UNIT PAPER NUMBER
3686
MAIL DATE DELIVERY MODE
02/14/2014 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 LORRAINE M. HERGER,
EDITH HELEN STERN, and
ROSE MARIE WILLIAMS
____________

Appeal 2012-000701
Application 12/051,162
Technology Center 3600
____________

Before HUBERT C. LORIN, JOHN W. MORRISON, and
NINA L. MEDLOCK, Administrative Patent Judges.

LORIN, Administrative Patent Judge.

DECISION ON APPEAL

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

Appeal 2012-000701
Application 12/051,162

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SUMMARY OF DECISION
We REVERSE and ENTER a New Ground of Rejection pursuant to
37 C.F.R. § 41.50(b).1

THE INVENTION
Claim 1, reproduced below, is illustrative of the subject matter on
appeal.
1. A method for use in accordance with patient care, the method
comprising the steps of:
receiving one or more metrics associated with one or more of a
plurality of patients;
determining one or more priorities associated with the plurality
of patients based at least in part on the one or more metrics;
determining an ordering of the plurality of patients, responsive
to the one or more priorities;
and
responsive to the ordering of the plurality of patients,
transmitting an indicator to at least one receiver;
wherein the step of determining one or more priorities further
comprises the steps of:
accessing information about at least one environmental
condition common to the plurality of patients; and
evaluating the one or more metrics responsive to the
information about the at least one environmental condition; and

1 Our decision will make reference to the Appellants’ Appeal Brief (“App.
Br.,” filed May 11, 2011) and Reply Brief (“Reply Br.,” filed Aug. 8, 2011),
and the Examiner’s Answer (“Ans.,” mailed Jun. 7, 2011).
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Application 12/051,162

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wherein the steps are performed by a computer processor.

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

US 2003/0036683 A1 Feb. 20, 2003
The following rejection is before us for review:
1. Claims 1-20 are rejected under 35 U.S.C. §102(e) as being anticipated
by Kehr.

ISSUE
The issue is whether Kehr describes, expressly or inherently, the
claimed subject matter wherein
the step of determining one or more priorities further comprises the
steps of:
accessing information about at least one environmental
condition common to the plurality of patients; and
evaluating the one or more metrics responsive to the
information about the at least one environmental condition.
Claim 1.
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.

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Application 12/051,162

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ANALYSIS
We focus on method claim 1 as representative of the claims on appeal.
As the Appellants suggest, the issue is whether “Kehr [teaches], or even
suggest[s], the limitations of claim 1 directed to the use of environmental
conditions in determining one or more priorities” (App. Br. 12;
“Independent [apparatus claim 9, article claim 17, system claim 18, and
method claim 19] include similar limitations.”)
Claim 1 includes the limitation:
the step of determining one or more priorities further comprises
the steps of:
accessing information about at least one environmental
condition common to the plurality of patients; and
evaluating the one or more metrics responsive to the
information about the at least one environmental condition.
The Examiner cited to passages [0119]-[0121], [0171], [0181], [0186], and
[0264] of Kehr.
We have reviewed the passages cited by the Examiner but do not see
there the claim limitations at issue.
The question is whether Kehr describes, expressly or inherently, the
use of “information about at least one environmental condition common to
the plurality of patients” (claim 1). This begs the question: what does
“environmental condition” mean? The Specification defines it this way:
 “environmental factors such as temperature, humidity, barometric
pressure, terror alert stage/color as pronounced by Homeland
Security.” Page 9, ll. 3-4.
 “environmental information which may include, but is not limited to,
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weather, politics, terror alert levels, smog levels, barometric
temperature.” Page 14, ll. 6-7.
 “ENVIRONMENTAL FACTORS” (e.g., WEATHER).
To one of ordinary skill in the art reading these disclosures, “environmental
condition” would mean a condition that applies commonly to everyone.
Accordingly, the claim phrase “information about at least one
environmental condition common to the plurality of patients” is reasonably
broadly construed to be limited to information about a condition that applies
commonly to everyone.
Given this claim construction, we now turn to the passages, cited by
the Examiner, said to describe the use of information about an
“environmental condition” as claimed. Based on our review of these
passages, they describe conditions experienced only by particular patients,
not conditions that apply commonly to everyone. “Congestive heart failure”
([0141]), for example, is not a condition everyone experiences. The
“Examiner submits that at least a location and a type of clinical setting can
be interpreted as a shared environmental condition associated with the
patients' external environment.” Ans. 14. But we do not see Kehr using
information about a location and a type of clinical setting to evaluate the
metrics of a plurality of patients as claimed. While it is possible for one to
do so in practicing the Kehr method, “[i]nherency, however, may not be
established by probabilities or possibilities.” Hansgirg v. Kemmer, 102 F.2d
212, 214 (CCPA 1939), quoted in Continental Can Co. USA v. Monsanto
Co., 948 F.2d 1264, 1269 (Fed. Cir. 1991).
For the foregoing reasons, we do not find that a prima facie case of
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anticipation has been made out in the first instance. Accordingly, we do not
sustain the rejection.

NEW GROUND
We enter a new ground of rejection under 35 U.S.C. §103 of claims 1-
20 over Kehr and Official Notice.
Taking claim 1 as representative, Kehr discloses all the claim
limitations but for the step of determining one or more priorities further
comprises the steps of:
accessing information about at least one environmental
condition common to the plurality of patients; and
evaluating the one or more metrics responsive to the
information about the at least one environmental condition.
We take Official Notice of the facts that (a) common information
about environmental conditions (e.g., news, weather) is well known and (b)
it is well known that environmental conditions can impact a plurality of
patients’ metrics.
Given that environmental conditions can impact a patient’s metrics, it
would have been obvious to modify Kehr to “access[ ] information about at
least one environmental condition common to the plurality of patients” so as
to include this well-known common information about environmental
conditions in “evaluating the one or more metrics responsive to the
information about the at least one environmental condition.” The
combination of Kehr and Official Notice would yield, as expected, patient
care that accounts for environmental conditions, e.g., news and weather,
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which can impact that care. “The combination of familiar elements
according to known methods is likely to be obvious when it does no more
than yield predictable results.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398,
415-16 (2007).
We address the “ordering” argument the Appellants have made in
challenging the §102 rejection, which likely would be argued in challenging
this rejection.
The Appellants argue that
Kehr is merely determining whether a given patient's condition is
sufficiently severe to warrant notification of a caregiver or family
member by applying an absolute threshold (i.e., whether the given
patient is stable or unstable), rather than determining an ordering of a
plurality of patients (i.e., the condition of a given patient relative to
the conditions of other patients associated with that caregiver).
App. Br. 10. The difficulty with this reasoning is that the claim limitation at
issue reads “an ordering of the plurality of patients,” nothing more. Setting a
notification depending on the severity of a condition necessarily places an
emphasis on that patient with the more severe condition. That distinction in
condition-severity necessarily amounts to an “ordering of the plurality of
patients” as reasonably broadly claimed.

DECISION
The decision of the Examiner to reject claims 1-20 under 35 U.S.C.
§102 is reversed.
We enter a new ground of rejection of claims 1-20 under 35 U.S.C.
§103 over Kehr and Official Notice.
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NEW GROUND
This decision contains a new ground of rejection pursuant to
37 C.F.R. § 41.50(b). 37 C.F.R. § 41.50(b) provides “[a] new ground of
rejection pursuant to this paragraph shall not be considered final for judicial
review.” 37 C.F.R. § 41.50(b) also provides that the Appellants, WITHIN
TWO MONTHS FROM THE DATE OF THE DECISION, must exercise
one of the following two options with respect to the new ground of rejection
to avoid termination of the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new evidence relating to the
claims so rejected, or both, and have the matter reconsidered by the
examiner, in which event the proceeding will be remanded to the
Examiner . . . .
(2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same record . . . .
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).

REVERSED; 37 C.F.R. § 41.50(b)

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