Ex Parte Jakobovits

Patent Trial and Appeal Board

Jun 2, 2016

13434959 (P.T.A.B. Jun. 2, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/434,959 03/30/2012
99434 7590 06/06/2016
McKesson Corporation and Alston & Bird LLP
c/o Alston & Bird LLP
Bank of America Plaza
101 South Tryon St., Suite 4000
Charlotte, NC 28280-4000
FIRST NAMED INVENTOR
Rex Jakobovits
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
050704/417543 3684
EXAMINER
BISKEBORN, KRISTOFER M
ART UNIT PAPER NUMBER
PTAB
NOTIFICATION DATE DELIVERY MODE
06/06/2016 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address( es):
usptomail@alston.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte REX JAKOBOVITS
Appeal2015-000727
Application 13/434,959
Technology Center 2100
Before ST. JOHN COURTENAY III, KRISTEN L. DROESCH, and
JOHNNY A. KUMAR, Administrative Patent Judges.
COURTENAY, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
This is an appeal under 35 U.S.C. § 134(a) from the Examiner's Final
Rejection, mailed September 23, 2013, of claims 1-11. We have jurisdiction
under 35 U.S.C. § 6(b).
We affirm.
Invention
The disclosed invention is directed to "the creation and use of medical
image knowledge bases for decision support, reference, training,
consultation, and collaboration." (Spec. i-f 2.)
Appeal2015-000727
Application 13/434,959
Representative Claim
1. A method comprising:
receiving an email message including a medical image from a
picture archiving and communication system client;
[LI] parsing a subject line and body of the email message to
extract text data included in the electronic message;
parsing a header associated with the medical image to
determine one or more properties of the medical image;
generating a medical case file comprising the medical image;
and
[L2] populating one or more fields of the medical case file with
the extracted text data and the determined properties.
(Emphasis, bracketing, and underlining added regarding the contested
Rejection
Claims 1-11 are rejected under 35 U.S.C. § 103(a) as being obvious
over the combined teachings and suggestions of Hanna et al. (US
2004/0141661 Al; published July 22, 2004) ("Hanna"), and Digital Imaging
and Communications in Medicine (DI COM) Supplement 113 - Email
Transport ("Email Transport").
Grouping of Claims
Based on Appellant's arguments, we decide the appeal of rejected
claims 2, 4, 5, 7, 8, 10, and 11, on the basis of representative claim 1 See 37
C.F.R. § 41.37(c)(l)(iv). We address the rejection of dependent claims 3, 6,
and 9, separately, infra.
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Application 13/434,959
ANALYSIS
We have considered all of Appellant's arguments and any evidence
presented. We disagree with Appellant's arguments, and we adopt as our
own: ( 1) the findings and reasons set forth by the Examiner in the action
from which this appeal is taken, and (2) the reasons and rebuttals set forth in
the Answer in response to Appellant's arguments. However, we highlight
and address specific findings and arguments for emphasis in our analysis
below.
Contested Limitation LI of Claim 1
Issue: Under§ 103, did the Examiner err by finding the cited
combination of Hanna and Email Transport would have taught or suggested
contested limitation L 1: ''parsing a subject line and body of the email
message to extract text data included in the electronic message," within the
meaning of representative claim 1? (Emphasis added.)
Appellant contends that Hanna and Email Transport do not teach
contested limitation L 1 of claim 1:
Although Hanna describes parsing of an image header, neither Hanna
nor Email Transport describes an email parsing process that is
separate and distinct from reading metadata from the image header as
disclosed in Appellant's specification and required in Appellant's
independent claims.
(App. Br. 12).
4):
The Examiner disagrees, and explains the basis for the rejection. (Ans.
Email Transport teaches parsing the subject line of an email for
automatically routing messages that contain DICOM images:
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Application 13/434,959
Subject lines are often modified automatically, e.g., by the
addition of "Re:". Other routing information such as "for
Doctor Fred" is also often included. Automatic [ ... ]
recognition of the special nature of this email can be improved
by requiring that some phrase like "DI COM-ZIP" be part of the
subject line. (Email Transport, p. 13).
In reviewing Appellant's contentions in the Appeal Brief (9-13), and
Reply Brief (2--4), we find Appellant does not substantively traverse the
Examiner's findings regarding the combined teachings and suggestions of
Hanna and Email Transport, as applied to contested limitation L 1. The
contested limitation requires "parsing a subject line and body of the email
message to extract text data included in the electronic message." (Claim 1).
Email Transport (13) teaches parsing an email message subject line.
Additionally, as noted by the Examiner (Ans. 5), Hanna (i-f 42) teaches
extracting textual metadata from DICOM messages.
Given this evidence, we find extending the parsing to the body of an
email message would have been obvious to an artisan possessing an ordinary
level of skill in the art. Moreover, we find parsing the body of an email
message would merely yield a predictable result. The Supreme Court guides
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, 401 (2007). 1
This reasoning is applicable here. Therefore, on this record, we are
not persuaded of error regarding the Examiner's underlying factual findings
1 The skilled artisan would "be able to fit the teachings of multiple patents
together like pieces of a puzzle" since the skilled artisan is "a person of
ordinary creativity, not an automaton." KSR, 550 U.S. at 420-21.
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Appeal2015-000727
Application 13/434,959
and ultimate legal conclusion of obviousness regarding contested limitation
L 1 of claim 1.
Contested Limitation L2 of Claim 1
Issue Under§ 103(a), did the Examiner err by finding the cited
combination of Hanna and Email Transport would have taught or suggested
contested limitation L2, ''populating one or more fields of the medical case
file with the extracted text data and the determined properties," within the
meaning of representative claim 1?
Appellant particularly focuses the argument for limitation L2 on
obtaining a second type of data (other than image metadata) for inclusion in
the medical case file (App. Br. 14):
Appellant therefore respectfully submits that even if, arguendo,
Hanna in view of Email Transport is considered to teach parsing of an
email, the combination would then necessarily fail to teach parsing of
an image header, as [] Hanna only teaches a single image metadata
source and nothing in either reference discloses obtaining a second
type of data for inclusion in the medical case file.
However, as noted above, the combination of Hanna and Email
Transport teaches or suggests parsing an email message and extraction of
text data, as we found above regarding contested limitation L 1. Appellant
acknowledges Hanna teaches obtaining metadata from the image header.
(See App. Br. 14: "Hanna only describes obtaining metadata from the image
header .... ") 2 Therefore, we find the combination of Hanna and Email
2 See e.g., Hanna (i-f 16): "evaluating and storing metadata associated with
each image using a set of stored rules .... " (i-f 18) "Metadata associated with
each image is separated from the image and used in the evaluation process."
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Application 13/434,959
Transport at least suggests "populating one or more fields of the medical
case file with the extracted text data, and the determined properties," within
the meaning of contested limitation L2, as recited in claim 1. 3
Therefore, by a preponderance of the evidence, and for the reasons
discussed above, we are not persuaded the Examiner erred regarding the
rejection of independent claim 1. Accordingly, we sustain the§ 103
rejection of representative claim 1. Grouped claims 2, 4, 5, 7, 8, 10, and 11
(not argued separately) fall with claim 1. See "Grouping of Claims," supra.
Claims 3, 6 and 9
Appellant advances a similar argument to that noted above for
contested limitations LI and L2:
Appellant submits that Hanna cannot disclose the use of XML in the
body of an email message to indicate data for inclusion in a medical
record if the reference fails to recite the use of an email message at all.
Although Email Transport discloses the general use of email to send a
DICOl\1 object as an attachment, the reference similarly fails to
provide any teaching or suggestion of the use of XML in an email to
provide data for use in populating a medical case file.
(App. Br. 16).
The Examiner disagrees, and finds the combination of Hanna and
Email Transport teach the use of email messages in combination with
DICOM. (Ans. 5-6). For the reasons noted above regarding the
combination of Hanna and Email Transport (as teaching or suggesting
3 "[T]he question under 35 U.S.C. § 103 is not merely what the references
expressly teach but what they would have suggested to one of ordinary skill
in the art at the time the invention was made." Merck & Co., Inc. v. Biocraft
Laboratories, Inc., 874 F. 2d 804, 807-808 (Fed. Cir. 1989)
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Application 13/434,959
contested limitations L 1 and L2 ), we find a preponderance of the evidence
supports the Examiner's finding the references also teach or at least suggest
the contested markup language limitations recited in dependent claims 3, 6
and 9. 4 Therefore, we agree with and adopt the Examiner's findings and
legal conclusion of obviousness. Accordingly, we sustain the § 103
rejection of dependent claims 3, 6 and 9.
Conclusion
For the reasons discussed above, on this record, and by a
preponderance of the evidence, we are not persuaded of error regarding the
Examiner's underlying factual findings and ultimate legal conclusion of
obviousness, for all claims on appeal.
DECISION
We affirm the Examiner's rejection of claims 1-11 under§ 103(a).
No time for taking any action connected with this appeal may be
extended under 37 C.F.R. § 1.136(a) (1). See 37 C.F.R. § 41.50(±).
AFFIRMED
4 See e.g., Hanna's use of XML (p. 8, Table 3): "B. Each data element is
mapped to an XML tag." See also i-fi-133, 54, 56, and 62, mentioning XML.
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