Ex Parte Jakobovits

Patent Trial and Appeal Board

Jun 15, 2016

11943388 (P.T.A.B. Jun. 15, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
111943,388 11120/2007
99434 7590 06/17/2016
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.
050704/347254 3381
EXAMINER
HOLLAND, SHERYLL
ART UNIT PAPER NUMBER
2161
NOTIFICATION DATE DELIVERY MODE
06/17/2016 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 1
Appeal2015-000099
Application 11/943,388
Technology Center 2100
Before ALLEN R. MacDONALD, ADAM J. PYONIN, and
AMBER L. HAGY, Administrative Patent Judges.
HAGY, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner's
Final Rejection of claims 1--4, 6-16, and 18-30, which are all of the pending
claims.2 We have jurisdiction over these claims under 35 U.S.C. § 6(b).
We affirm.
1 Appellant identifies McKesson Technologies Inc. as the real party in
interest. (Br. 2.)
2 Claims 5 and 17 were canceled in an Amendment dated January 19, 2011.
Appeal2015-000099
Application 11/943,388
Introduction
According to Appellant, "[e]mbodiments of the invention relate to
medical imaging and client-side image management. More specifically,
embodiments of the invention relate to interactive viewing, asynchronously
retrieving, and annotating of medical images in a generic viewing agent,
such as a web browser." (Spec. 2.)
Exemplary Claim
Claim 1, reproduced below with the disputed limitation italicized, is
exemplary of the claimed subject matter:
1. A method comprising:
retrieving, by a client device, from a server through a
network, a network resource having medical information and
associated medical images, with the server initially including
only a subset of the associated medical images with the retrieved
network resource;
facilitating, by the client device, interactive viewing of the
medical information by a user, including interactive viewing of
the associated medical images, the interactive viewing including
a user interaction with one or more of the medical information or
the associated medical images;
responsive to the user interaction, retrieving, by the client
device and via an asynchronous web service, additional ones of
the associated medical images from the server as the provided
medical images are being interactively viewed, wherein the
retrieved additional ones of the associated medical images are
selected by the client device based at least in part on the user
interaction, and wherein retrieving additional ones of the
associated medical images comprises retrieving additional ones
of the associated medical images without requiring a browser
refresh operation or redirection to another location; and
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Application 11/943,388
facilitating, by the client device, interactive viewing of at
least the additional ones of the associated medical images
without requiring a refresh operation or redirection to another
location.
REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Cheenath
Hunleth
Collins
Ubillos
Gundel
Judd
US 2004/0143645 Al
US 2005/0005241 Al
US 2006/0274928 Al
US 2007 /0035551 Al
US 2008/0084415 Al
US 8,055,636 B2
REJECTIONS
July 22, 2004
Jan. 6,2005
Dec. 7, 2006
Feb. 15,2007
Apr. 10, 2008
Nov. 8, 2011
Claims 1--4, 6, 8, 10-16, 18, 19, and 25-28 stand rejected under 35
U.S.C. § 103(a) as being unpatentabie over Judd and Cheenath. (Final Act.
2-18.)
Claim 7 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Judd, Cheeneth, and Hunleth. (Final Act. 18-20.)
Claim 9 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Judd, Cheenath, and Gundel. (Final Act. 20-21.)
Claims 20-24 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Collins and Cheenath. (Final Act. 22-26.)
Claims 29 and 30 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Judd, Cheenath, and Ubillos. (Final Act. 26-28.)
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Application 11/943,388
ISSUE
Whether the Examiner erred in finding the combination of Judd and
Cheenath teaches or suggests the disputed limitation recited in independent
claim 1. 3
ANALYSIS
We have reviewed the Examiner's rejections in light of Appellant's
arguments the Examiner has erred. We disagree with Appellant's
conclusions and we adopt as our own: (1) the findings and reasons set forth
by the Examiner in support of the rejections under 35 U.S.C. § 103(a) in the
Action from which this appeal is taken (Final Act. 2-28) and (2) the reasons
set forth by the Examiner in support of the rejections under 35 U.S.C.
§ 103(a) in the Examiner's Answer in response to Appellant's Appeal Brief.
(Ans. 2-33.) We concur with the conclusions reached by the Examiner, and
we highlight the following for emphasis. 4
The Examiner finds Judd teaches or suggests the limitations of claim
1, except the Examiner notes "Judd does not explicitly disclose" the disputed
3 Appellant does not present separate substantive arguments for claims 2--4,
6-16, and 18-30. (Br. 8-9.) Therefore, based on Appellant's arguments, we
decide the appeal of claims 2--4, 6-16, and 18-30 based on claim 1. See 37
C.F.R. § 41.37(c)(l)(iv). Except for our ultimate decision, the Examiner's
rejections of these claims are not discussed further herein.
4 Only those arguments made by Appellant have been considered in this
decision. Arguments Appellant did not make in the Brief have not been
considered and are deemed to be waived. See 37 C.F.R. § 41.37(c)(l)(iv).
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Application 11/943,388
limitation of claim 1. (Final Act. 4.) As to that limitation, the Examiner
finds:
Cheenath teaches: responsive to the user interaction, retrieving,
by the client device and via an asynchronous web service,
additional data [Cheenath, par. 0013-18, an asynchronous web
service is invoked on a first thread, the client passes a request to
the web service, after the request is received by the web service
the first thread may be released to allow client processing to
continue while the web service continues to process the request
on a second thread, once processing is completed by the web
service the result is transmitted back to the client at step 340, the
client is notified of the available result at 350, Fig. 3] and wherein
retrieving additional data is completed without requiring a
browser refresh operation of displayed content or redirection to
another location [Cheenath, par. 0013-18, retrieval of the
additional data is achieved by the web service without interaction
with the browser, Fig. 3]; facilitating, by the client device,
interactive viewing of data without requiring a refresh operation
or redirection to another location [Cheenath, par. 0013-18,
retrieval of the additional data is achieved by the web service
without requiring a refresh or redirection to another location, Fig.
3].
(Final Act. 4--5 (emphases added).) The Examiner thus finds "Judd
discloses interactive viewing of related medical images while Cheenath
teaches retrieving additional data via an asynchronous web service, and
freeing up the client to continue other processing while the web service
retrieves additional data." (Final Act. 5.) The Examiner further finds "[i]t
would have been obvious to one of ordinary skill in the art at the time the
invention was made to combine the teachings of Judd and Cheenath in order
to provide a process of interactively viewing images using an asynchronous
web service." (Final Act. 5.)
Appellant argues the Examiner's findings are in error because:
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Application 11/943,388
[T]he system of Judd functions by generating web pages
associated with particular images, and redirecting a browser to
particular network locations to facilitate viewing of the images.
Such a system, combined with Cheenath, would merely result in
a system that employs an asynchronous web service to perform
such redirections. Neither reference, alone or in combination,
provides any teaching or suggestion of using an asynchronous
web service to implement an interactive image viewing system
that eliminates the need of the client to perform browser refresh
operations and redirections to other web pages. The mere
existence of asynchronous web services is insufficient to remedy
the deficiencies of Judd, as Appellant's [sic] submit[ s] that none
of the cited references provide any teaching or suggestion of the
use of an asynchronous web service to implement an interactive
image viewer as described in the independent claims.
(Br. 8 (emphases added).)
Appellant's arguments do not persuade us of Examiner error. In
particular, we disagree with Appellant's unduly narrow reading of Judd as
requiring redirection by the browser to a new network location. As the
Examiner finds, and \Ve agree:
Appellant's assertion that Judd always performs a redirection
when a user is viewing images interactively is not found in Judd.
Judd discloses in claim 1 (col. 11, lines 10-15) displayed images
are refreshed. The term "redirect" is not found in Judd. The
word "refresh" is not defined in Judd as a particular coded event
and therefore must be given its plain meaning "to put (something,
such as a page on the internet) into a computer's memory again
in order to show any new information". Therefore it would be
incorrect to construe Judd as limited to redirection to another
network location during image browsing. Instead, Judd teaches
interactive viewing of medical images using a web browser and
the Internet.
(Ans. 29 (footnote omitted) (citing www.meriam-webster.com).)
Moreover, even if Judd were read to require redirection to a new
network location to display each image, Appellant's argument relies, at least
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Application 11/943,388
in part, on the premise that the references cannot be physically combined in
the manner recited by Appellant's claim. This argument is not persuasive,
because "it is not necessary that the inventions of the references be
physically combinable to render obvious the invention under review." In re
Sneed, 710 F.2d 1544, 1550 (Fed. Cir. 1983) (citing Orthopedic Equip. Co.
Inc. v. U.S., 702 F.2d 1005, 1013 (Fed. Cir. 1983); In re Andersen, 391 F.2d
953, 958 (CCPA 1968)); see also In re Nievelt, 482 F.2d 965, 968 (CCPA
1973) ("Combining the teachings of references does not involve an ability to
combine their specific structures"). "The test for obviousness is not whether
the features of a secondary reference may be bodily incorporated into the
structure of the primary reference . . . . Rather, the test is what the combined
teachings of the references would have suggested to those of ordinary skill
in the art." In re Keller, 642 F.2d 413, 425 (CCPA 1981) (citations
omitted). As the Supreme Court has explained, in many cases, the skilled
artisan would "be able to fit the teachings of multiple patents together like
pieces of a puzzle" because the skilled artisan is "a person of ordinary
creativity, not an automaton." KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398,
420-21 (2007). Here, Appellant has not demonstrated that the Examiner's
proffered combination would have been "uniquely challenging or difficult
for one of ordinary skill in the art." Leapfrog Enters., Inc. v. Fisher-Price,
Inc., 485 F.3d 1157, 1162 (Fed. Cir. 2007) (citing KSR, 550 U.S. at 418).
Appellant otherwise provides only terse statements of what Judd and
Cheenath purportedly disclose, followed by a conclusory statement that the
cited references do not teach the disputed limitation. (Br. 8.) Such
conclusory attorney assertions have little or no value in identifying the
Examiner's alleged error, and, consequently, have little persuasive value.
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Application 11/943,388
See 37 C.F.R. § 41.37(c)(iv) ("A statement which merely points out what a
claim recites will not be considered an argument for separate patentability of
the claim"); see also In re Lovin, 652 F.3d 1349, 1357 (Fed. Cir. 2011).
For the foregoing reasons, we are not persuaded of error in the
Examiner's 35 U.S.C. § 103(a) rejection of claim 1, and we, therefore
sustain that rejection.
DECISION
For the above reasons, the Examiner's 35 U.S.C. § 103(a) rejections
of claims 1--4, 6-16, and 18-30 are affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED
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