Ex Parte Ikeda

Board of Patent Appeals and Interferences

Oct 19, 2001

08336690 (B.P.A.I. Oct. 19, 2001)

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The opinion in support of the decision being entered
today was not written for publication and is not
binding precedent of the Board.
Paper No. 91
UNITED STATES PATENT AND TRADEMARK OFFICE
________________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
________________
Ex parte SHIGEYUKI IKEDA
________________
Appeal No. 1999-0289
Application No. 08/336,690
________________
HEARD: OCTOBER 9, 2001
________________
Before HAIRSTON, KRASS, and BLANKENSHIP, Administrative Patent
Judges.
KRASS, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the final rejection of
claims 21, 23-29 and 32-42, all of the pending claims.
The invention deals with recording and reproducing personal
medical history of an individual patient on a digital audio tape
(DAT).
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Representative independent claim 21 is reproduced as
follows:
21. In a medical information recording and reproducing
apparatus having a processor connected to an input/output unit, a
medical diagnostic imaging unit, a display unit and a digital
audio tape (DAT) unit using a digital audiotape cassette
including a DAT having a recording area for recording and
reproducing digitized audio signals, a method of forming and
using a personal medical information file, comprising the steps
of:
(a) dividing said recording area of said DAT into a
plurality of areas including an identification information (ID)
area for storing said ID information of a single specified
person, a personal medical history information area for storing
case and therapeutic history information of said single specified
person, a medicative history information area for storing
medicative history information of said single specified person,
an examination image history information area and an examination
image information area for storing examination image information
of said single specified person;
(b) processing medical information including ID information,
case and therapeutic history information, medicative history
information and examination image history information of said
single specified person and examination image information of said
specified person received from said input/output unit and said
medical diagnostic imaging unit respectively to prepare said
information for recording in said DAT;
(c) recording in said ID area of said DAT said ID
information of said single specified person, and recording data
of at least one of said case and therapeutic history information,
said medicative history information, said examination image
history information and said examination images information,
related to a medical treatment said single specified person has
received in one of said ID areas, said personal medical history
information area, said medicative history information area, said
examination image history information area and said examination
image examination image history information area and said
examination image information area corresponding to said data to
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be recorded thereby forming a personal medical information file;
and
(d) reproducing said personal information file of said
single specified person from said DAT when said single specified
person is being diagnosed.
The examiner relies on the following reference:
Ichikawa 4,737,912 Apr. 12, 1988
(filed Sept. 3, 1985)
Claims 21, 23-29 and 32-42 stand rejected under 35 U.S.C.
103 as unpatentable over Ichikawa.
Reference is made to the briefs and answer for the
respective positions of appellant and the examiner.
OPINION
This board has previously rendered a decision (Paper No. 37,
April 5, 1993) on similar claims. The difference between those
claims and the claims presently on appeal, as noted by the
examiner, at page 2 of Paper No. 45, is that the latter claims
recite that the recording area of the DAT is divided into a
plurality of areas, designating the information which is to be
recorded into these areas. The examiner’s response to these
additions was to cite column 4, line 4 et seq. of U.S. Patent No.
4,812,924 to show that it was conventional to provide 128 blocks
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of data per track on a DAT and to number these blocks
sequentially. It is also the examiner’s position that with
regard to the actual content of the information recorded, i.e.,
name, medical history, etc., this is of “no patentable
significance.” The examiner also contended that it would have
been obvious to “select the most common medical information, i.e,
the medical history of the patient” [Paper No. 45, page 2] to be
recorded, given that it would have been obvious to record medical
information on a DAT.
In addition to providing two declarations by Koichi Koike
under 37 CFR 1.132, appellant also makes the following arguments:
1. Ichikawa does not suggest the “single storage medium” of
the claimed invention.
2. Ichikawa does not teach the recording of medical
information pertaining to an “individual” patient (ID
information, case history, medicative history, examination image
history, and examination images) on a single storage medium.
3. The storage medium of Ichikawa is not divided into a
plurality of recording areas, as is the DAT of the instant
claimed invention.
4. It would not have been obvious to record medical
information on a DAT at the time of the instant invention because
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DAT technology at that time related only to the storage of
digitized audio signals in the form of music. There is no prior
art to relate DAT technology to the storage of image information
of any kind at the time of the instant invention. Thus, it would
not have been obvious to store examination image history
information and examination images on a DAT at the time of the
instant invention.
We treat appellant’s arguments in the order presented.
1. It is our view that Ichikawa certainly does suggest a
“single storage medium” for storing medical information.
Ichikawa’s disclosed invention differs from the instant disclosed
invention in that the former stores case histories and clinical
histories and compares the two in order to aid in diagnosis of
illness while the latter is concerned with storing an
individual’s medical history on a DAT which is updated each time
the individual undergoes a medical exam.
However, Ichikawa does disclose, at column 5, lines 23-24,
that clinical information (image and index) may be stored on a
record medium which is separate from the case history
information. Thus, the clinical information may be stored on a
“single storage medium.”
2. While it is true that Ichikawa is interested in storing
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clinical and case studies of a plurality of patients, it is also
clear that only a single individual’s medical information may be
stored. As we pointed out in our earlier decision of April 5,
1993 [page 6], and as indicated by the examiner, even in
Ichikawa, “when the first person’s data is inputted there is only
a single person’s data on the medium.” As we further indicated
at that section of our decision, both image data and patient
information relating to a single specific patient are retrieved
in Ichikawa and it would have been manifest to artisans that the
relevant information for each patient may be stored on either a
separate recording medium for each individual patient or on a
common, mass storage device wherein information on a plurality of
patients is stored. We would also note that at page 12, lines 21
et seq. of the instant specification, appellant states that while
Figure 1 is described as referring to a DAT which belongs to
individual patients, “the invention is not limited thereto.”
Thus, even appellant does not limit the invention to loading a
DAT with information regarding only a single individual patient.
3. Ichikawa indicates, at column 5, lines 15-21, that while
an optical disk is disclosed, the medical information may be
stored on “other recording medium such as floppy disc, magnetic
tape, magnetic drum, etc.” Clearly then, this is a suggestion
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that the particular storage medium is not important and that it
would have been obvious to provide such medical information on
storage media, such as DAT, which may have not yet been widely
employed, at the time of Ichikawa.
Moreover, Ichikawa describes his floppy disk as being
divided into a plurality of recording areas. While these areas
may store clinical indexes having retrieval information
pertaining to divided areas of the optical disk which stores
clinical images, this would be, in our view, a clear suggestion
to divide a recording medium into a plurality of recording areas,
as claimed. When that storage medium is a DAT, clearly within
the realm of recording media suggested by Ichikawa, the DAT would
clearly have been divided into a plurality of recording areas.
4. While appellant appears to assert that DAT was used only
for recording music at the time of appellant’s invention, since
appellant points to nothing in the instant disclosure alluding to
a new kind of DAT, it would appear that appellant was employing a
conventional DAT, at the time of the invention, to record the
medical information. Thus, it is not clear what appellant relies
on that would indicate that there was something new about
appellant’s DAT which allowed recording of medical images and
information, rather than merely music. Accordingly, we fail to
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find anything unobvious about recording such information on the
conventional DAT. As presented by appellant, it would appear, at
best, that appellant has found a new, but obvious, use for an old
storage medium.
Thus, none of appellant’s arguments are persuasive to us of
the nonobviousness of the instant claimed subject matter and they
do not overcome what we perceive to be a prima facie case of
obviousness established by the examiner.
We turn to the objective evidence, in the form of the Koike
declarations, and view, anew, all of the evidence together with
the claimed subject matter as a whole.
We do not agree with the examiner in giving little weight to
the declarations “because declarant has only graduated from high
school” [Paper No. 67]. We are convinced, from the statements at
pages 1-3 of the supplemental declaration, that Mr. Koike, by
reason of his education, vocation, technical background and
status as a co-patentee on at least nine U.S. patents dealing
with medical imaging, is at least one of ordinary skill in this
art.
After a thorough review of the specification and the claims,
together with the declarations, we find the substance of the
declarations to be convincing of nonobviousness of the instant
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claimed subject matter.
Each of the claims on appeal requires at least that a DAT be
used for recording and reproducing both medical information and
examination image information. Some of the claims, such as
independent claims 28, 34, 39 and 40 also require specific
formatting of, and then converting, these individual types of
information so as to be able to record the different information
in a DAT cassette. While the examiner has set forth a prima
facie case of obviousness in the use of a DAT for recording and
reproducing medical information, by referring to column 5 of
Ichikawa, relating to storage on “another recording medium,” it
is our view that such a prima facie case has been overcome by the
evidence provided by the Koike declarations. In the primary
declaration, Mr. Koike, an artisan involved with, and familiar
with, the recording arts to which the subject application is
directed, states, in paragraphs 18-21, that the state of the art
at the time of the instant invention was such that there was no
contemplation of using a DAT for storing medical information and
images. In particular, at paragraph 19, Mr. Koike, an artisan
whom we hold to be qualified to offer the opinion, affirmatively
states that at the time of the instant invention, “the state-of-
the-art was such that DAT technology was being used only to store
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digitized audio signals in the form of music” [emphasis ours].
Thus, we have the opinion of a qualified practitioner that
DATs were clearly not used for recording and reproducing anything
other than digitized audio signals in the form of music, together
with a description in the instant specification as to specific
formatting used to achieve recording and reproduction of medical
information and images by adapting DAT unit 3 (e.g., pages 7-11).
The examiner had the opportunity to rebut declarant’s allegation
by offering evidence showing the recording and/or reproducing of
information and/or image data on a DAT but the examiner has
failed to provide any such evidence.
Accordingly, in weighing the opinion of a qualified
practitioner in the art against the silence of the examiner with
regard to a specific showing of using a DAT for recording and/or
reproducing anything other than music, we find that the evidence
of record compels a finding for appellant. While we suspect that
the earliest personal computers, dating from the 1970's, prior to
the use of floppy discs, employed audio tape for storing digital
information other than music, we have no evidence of this on
record. Accordingly, while we find for appellant, that finding
is based on the accuracy of declarant’s statement that “the
state-of-the-art was such that DAT technology was being used only
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to store digitized audio signals in the form of music” [emphasis
ours].
The examiner’s decision rejecting claims 21, 23-29 and 32-42
under 35 U.S.C. 103 is reversed.
REVERSED
KENNETH W. HAIRSTON )
Administrative Patent Judge )
)
)
)
)
ERROL A. KRASS ) BOARD OF PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
)
)
HOWARD B. BLANKENSHIP )
Administrative Patent Judge )
Appeal No. 1999-0289
Application No. 08/336,690
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