Ex Parte Kanai

Board of Patent Appeals and Interferences

Apr 30, 2003

09288504 (B.P.A.I. Apr. 30, 2003)

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The opinion in support of the decision being entered
today was not written for publication in a law journal
and is not binding precedent of the Board.
Paper No. 18
UNITED STATES PATENT AND TRADEMARK OFFICE

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES

Ex parte KAZUYUKI KANAI

Appeal No. 2002-2066
Application No. 09/288,504

HEARD: APRIL 2, 2003

Before RUGGIERO, BARRY, and LEVY, Administrative Patent Judges.
RUGGIERO, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on the appeal from the final rejection of
claims 1-26, which are all of the claims pending in the present
application.
The claimed invention relates to a decision making system
and method which utilizes a decision tree including branches that
represent actions to be selected in deciding medical treatment
Appeal No. 2002-2066
Application No. 09/288,504
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plans or test plans for a patient. Expectations of the actions
to be selected are calculated in accordance with occurrence
probabilities for corresponding events which may occur as a
result of the selected actions and in accordance with utility
values which reflect the subjective worth the patient attributes
to the corresponding events that may occur.
Claim 9 is illustrative of the invention and reads as
follows:
9. A support system for use in making decisions on medical
treatment or test plans, comprising:
a decision tree data storing section storing a decision
tree, said decision tree having branches that represent available
actions to be selected in deciding on a medical treatment or test
plan for a patient and events that may occur upon selecting an
available action; and
a calculating section calculating expectation values for
each available action of said decision tree based on occurrence
probabilities for events that may occur upon selecting the
corresponding available action and utility values associated with
the events that may occur, such utility values reflecting the
subjective worth the patient attributes to the corresponding
events that may occur,
wherein the occurrence probabilities for events that may
occur upon selecting available action are based on patient
attribute information.

The Examiner relies on the following prior art:
Dormond et al. (Dormond) 4,839,822 Jun. 13, 1989
Appeal No. 2002-2066
Application No. 09/288,504
1 The Appeal Brief was filed December 28, 2001 (Paper No. 11). In
response to the Examiner’s Answer dated March 11, 2002 (Paper No. 12), a Reply
Brief was filed May 9, 2002 (Paper No. 13), which was acknowledged and entered
by the Examiner as indicated in the communication dated May 16, 2002 (Paper
No. 14).
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Jacob W. Ulvila et al. (Ulvila), “Decision Analysis Comes of
Age,” Harvard Business Review, pp. 1-10 (Sep/Oct 1982).
Claims 1-26, all of the appealed claims, stand finally
rejected under 35 U.S.C. § 103(a) as being unpatentable over
Ulvila in view of Dormond.
Rather than reiterate the arguments of Appellant and the
Examiner, reference is made to the Briefs1 and Answer for the
respective details.
OPINION
We have carefully considered the subject matter on appeal,
the rejection advanced by the Examiner and the evidence of
obviousness relied upon by the Examiner as support for the
rejection. We have, likewise, reviewed and taken into
consideration, in reaching our decision, Appellant’s arguments
set forth in the Briefs along with the Examiner’s rationale in
support of the rejection and arguments in rebuttal set forth in
the Examiner’s Answer.
It is our view, after consideration of the record before us,
that the evidence relied upon and the level of skill in the
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Application No. 09/288,504
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particular art would not have suggested to one of ordinary skill
in the art the invention as set forth in claims 1-26.
Accordingly, we reverse.
In rejecting claims under 35 U.S.C. § 103, it is
incumbent upon the Examiner to establish a factual basis to
support the legal conclusion of obviousness. See In re Fine,
837 F.2d 1071, 1073, 5 USPQ2d 1596, 1598 (Fed. Cir. 1988). In so
doing, the Examiner is expected to make the factual
determinations set forth in Graham v. John Deere Co., 383 U.S. 1,
17, 148 USPQ 459, 467 (1966), and to provide a reason why one
having ordinary skill in the pertinent art would have been led to
modify the prior art or to combine prior art references to arrive
at the claimed invention. Such reason must stem from some
teaching, suggestion or implication in the prior art as a whole
or knowledge generally available to one having ordinary skill in
the art. Uniroyal Inc. v. Rudkin-Wiley Corp., 837 F.2d 1044,
1051, 5 USPQ2d 1434, 1438 (Fed. Cir.), cert. denied, 488 U.S. 825
(1988); Ashland Oil, Inc. v. Delta Resins & Refractories, Inc.,
776 F.2d 281, 293, 227 USPQ 657, 664 (Fed. Cir. 1985), cert.
denied, 475 U.S. 1017 (1986); ACS Hosp. Sys., Inc. v.
Montefiore Hosp., 732 F.2d 1572, 1577, 221 USPQ 929, 933 (Fed.
Cir. 1984). These showings by the Examiner are an essential part
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Application No. 09/288,504
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of complying with the burden of presenting a prima facie case of
obviousness. Note In re Oetiker, 977 F.2d 1443, 1445, 24 USPQ2d
1443, 1444 (Fed. Cir. 1992).
With respect to each of the appealed independent claims 1,
9, and 18, the Examiner, as the basis for the obviousness
rejection, proposes to modify the decision tree analysis system
disclosed by Ulvila. According to the Examiner (Answer, page 3),
Ulvila discloses the claimed invention except for the use of the
described decision tree support system “... for medical treatment
plans or test plans.” To address this deficiency, the Examiner
turns to Dormond which, in the Examiner’s view (id.), discloses a
“... a support system for making decisions on medical treatment
plans based in part on attribute information of the person to be
inspected (see column 16, lines 58-61 and figure 20).” In the
Examiner’s analysis (id.), the skilled artisan would have been
motivated and found it obvious to combine Ulvila with Dormond
“... for the purpose of using decision tree analysis in the
medical field ....”
Appellant’s arguments (Brief, pages 13-15; Reply Brief,
pages 3 and 4) in response to the obviousness rejection assert
that a prima facie case of obviousness has not been established
since there is no suggestion or motivation in the disclosures of
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Application No. 09/288,504
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the Ulvila and Dormond references for the Examiner’s proposed
combination. In addition, Appellant contends (Brief, pages 8-12;
Reply Brief, pages 2 and 3) that even assuming, arguendo, that
Ulvila and Dormond could be combined, the resulting combination
would not provide all of the elements of appealed independent
claims 1, 9, and 18.
Upon careful review of the applied prior art in light of the
arguments of record, we are in general agreement with Appellant’s
stated position in the Briefs. The mere fact that the prior art
may be modified in the manner suggested by the Examiner does not
make the modification obvious unless the prior art suggested the
desirability of the modification. In re Fritch, 972 F. 2d 1260,
1266, 23 USPQ2d 1780, 1783-84 (Fed. Cir. 1992).
Initially, we find puzzling the Examiner’s proposed
rationale for combining Ulvila with Dormond, i.e., to provide a
decision tree in the medical field, since Dormond’s medical
treatment support system already has a decision tree (Figure 20)
in place. Further, while the Examiner correctly points out
(Answer, page 11) that Ulvila, at page 9, lines 19-21 and 33-41,
suggests the application of the disclosed decision tree analysis
techniques to fields other than that explicitly described, it is
noteworthy that none of the mentioned application fields involve
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Application No. 09/288,504
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medical treatment plans. In our view, while evidence may indeed
exist that would convince us of the obviousness to the skilled
artisan of applying Ulvila’s particular disclosed decision tree
analysis technique to medical treatment decision making, no such
evidence is forthcoming from the Examiner in this case.
We also agree with Appellant that the decision making
systems disclosed by Ulvila and Dormond would not, even if
combined, teach all of the elements of the appealed independent
claims. A review of the language of independent claims 1, 9, and
18 reveals that they require, inter alia, a decision tree with
branches representing actions to be selected and events which may
occur as a result of the selected actions. A further requirement
is the calculation of expectations of the selected actions in
accordance with occurrence probabilities for the events and
utility values which either “... reflect intentions of the person
to be inspected on the events” (claim 1) or reflect “... the
subjective worth the patient attributes to the corresponding
events that may occur” (claims 9 and 18).
Our review of Ulvila reveals a generalized discussion of a
“personalized” decision tree analysis technique. We find,
however, no disclosure of any calculated expectations of actions
to be selected based on event occurrence probability and utility
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Application No. 09/288,504
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values influenced by subjective input from a patient or a person
to be inspected as claimed.
We find a similar deficiency in the disclosure of Dormond.
While inquiries are made to a patient, which in at least some
instances require a subjective response from a patient (Figures
11 and 12), the answers to these inquiries are not part of the
decision tree evaluation but, rather, are input to Dormond’s
expert system which results in suggested treatment choices for a
particular patient (Figure 16). A decision tree (Figure 20) is
subsequently developed which displays the likelihood of success
of each of the suggested treatment choices. While entries
farther down in the tree may be considered “events” occurring as
a result of choices made at higher branches in the tree, the
values associated with these lower branches are not based on an
inspected person’s intentions or a subjective worth that a
patient attributes to the events. Rather, the branch values are
based on certainty or success factors and weighted values related
to the hierarchical position of a particular branch in the tree.
In view of the above discussion, it is our view that, since
all of the limitations of the appealed claims are not taught or
suggested by the applied prior art Ulvila and Dormond references,
the Examiner has not established a prima facie case of
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Application No. 09/288,504
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obviousness. Accordingly, the 35 U.S.C. § 103(a) rejection of
independent claims 1, 9,and 18, as well as claims 2-8, 10-17, and
19-26, is not sustained.
In conclusion, we have not sustained the Examiner’s 35
U.S.C. § 103(a) rejection of any of the claims on appeal.
Therefore, the decision of the Examiner rejecting claims 1-26 is
reversed.
REVERSED

JOSEPH F. RUGGIERO )
Administrative Patent Judge)
)
)
)
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LANCE LEONARD BARRY )BOARD OF PATENT
Administrative Patent Judge) APPEALS AND
)INTERFERENCES
)
)
)
STUART S. LEVY )
Administrative Patent Judge)
JFR/dal
Appeal No. 2002-2066
Application No. 09/288,504
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