Ex Parte Herger et alDownload PDFPatent Trial and Appeal BoardFeb 13, 201412051162 (P.T.A.B. Feb. 13, 2014) Copy Citation 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 2 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). Appeal 2012-000701 Application 12/051,162 3 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. Appeal 2012-000701 Application 12/051,162 4 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, Appeal 2012-000701 Application 12/051,162 5 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 Appeal 2012-000701 Application 12/051,162 6 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, Appeal 2012-000701 Application 12/051,162 7 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. Appeal 2012-000701 Application 12/051,162 8 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) tkl Copy with citationCopy as parenthetical citation