Ex Parte Karpf

Patent Trial and Appeal Board

May 19, 2014

11074053 (P.T.A.B. May. 19, 2014)

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.
11/074,053 03/08/2005 Ronald Steven Karpf K1620.0001/P001-A 3617
24998 7590 05/20/2014
DICKSTEIN SHAPIRO LLP
1825 EYE STREET NW
Washington, DC 20006-5403
EXAMINER
KERZHNER, ALEKSANDR
ART UNIT PAPER NUMBER
2162
MAIL DATE DELIVERY MODE
05/20/2014 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 RONALD STEVEN KARPF
____________________

Appeal 2011-007657
Application 11/074,053
Technology Center 2100
____________________

Before JEAN R. HOMERE, DEBRA K. STEPHENS, and
KRISTEN L. DROESCH, Administrative Patent Judges.

STEPHENS, Administrative Patent Judge.

DECISION ON REQUEST FOR REHEARING

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Appellant filed a Request for Rehearing under 37 C.F.R. § 41.52(a)(1)
(hereinafter “Req. for Reh’g”) for reconsideration of our Decision mailed
December 12, 2013 (hereinafter “Decision”).
Our Decision affirmed the Examiner’s rejection of claims 26-34, 36,
and 37 under 35 U.S.C. § 102(e) as being anticipated by Soll; reversed the
Examiner’s rejection of claim 35 under 35 U.S.C. § 102(e) as being
anticipated by Soll; and entered new grounds of rejection against claim 28
under 35 U.S.C. § 101 and claim 35 under 35 U.S.C. § 103(a).
We have reconsidered our Decision, in light of Appellant’s arguments
in the Request for Rehearing, and we find no errors therein. We decline to
change our prior Decision for the reasons discussed infra.

Appellant requests reconsideration of the following issues believed to
have been misapprehended or overlooked by the Board.

ISSUE 1
We found in our Decision claim 26 was anticipated by Soll (Decision
14).
Appellant asserts the Board overlooked Appellant’s arguments with
respect to claim 26 and requests a new consideration of the arguments (Req.
for Reh’g 2-3, 9-10). Claim 26 recites, in-part: “wherein said treatment
server computer, responsive to access of said treatment server computer by
the patient, outputs to the patient over a network the diagnosis and treatment
information corresponding to the patient.” In the Appeal Brief, Appellant
asserted nothing in Soll describes a treatment server computer that outputs to
the patient over a network the diagnosis and treatment information
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corresponding to the patient, as claimed (App. Br. 9). We are not persuaded
Soll does not anticipate claim 26 for the reasons given in the Decision and as
further explained below.
We found Soll describes patients may access the comprehensive
patient management (“CPM”) system in the interim between the exit
interview and the patient’s next visit to the doctor, from home via the
Internet for triage, screening, or health education sessions (see Decision 5
(citing Soll, col. 27, l. 57–col. 28, l. 3); see also Ans. 9). Soll further
describes the system is used to help physicians to a correct diagnosis of the
complaint and seeks to educate the patient about his/her medical problems
(diagnosis and treatment information) (Abstract).
As the Examiner noted, the CPM includes a patient module, physician
module, and a server/database (Ans. 8, 16). The patient module and
physician module are linked to the server/database—the treatment computer
(id.). Therefore, we find Soll teaches a treatment server computer
(server/database 30, FIG. 1) outputs diagnosis and treatment information
over a network to a patient (patient carrel 10, FIG 1, or patient’s home
computer) in response to access by the patient, as claimed.
Accordingly, we are not persuaded Soll does not disclose “wherein
said treatment server computer, responsive to access of said treatment server
computer by the patient, outputs to the patient over a network the diagnosis
and treatment information corresponding to the patient,” as claimed.
As further support, although not relied upon in affirming the
Examiner, we note Soll describes during the exit interview, the patient
utilizes a patient carrel (10, FIG. 1) to access a server/database (30), which
in response to the patient’s access, provides diagnosis and treatment
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information (see Soll, step 1450 of FIG. 12, where patient is provided with a
health summary, instructions, and educational material; see also FIG. 3,
which shows CPM system server/database 180 providing the patient with
such diagnosis and treatment information).

ISSUE 2
We found in our Decision claim 28 was anticipated by Soll (Decision
14).
Appellant asserts the Board overlooked Appellant’s arguments with
respect to the steps (b) and (c) limitations of claim 28 and requests (1) a new
treatment of the argument and (2) a reconsideration of the new ground of
rejection (Req. for Reh’g 3-4). Specifically, Appellant argues we have
affirmed the Examiner’s rejection of claim 28 for the same reasons provided
for claim 26 and we performed no separate analysis of claim 28, which
recites limitations substantially different from those in claim 26 (id.).
We have considered Appellant’s request for a rehearing, however, we
are not persuaded Appellant’s arguments for claim 28 were overlooked, or
Soll does not anticipate claim 28.
Claim 28 recites, in-part: “(b) determining access of the treatment
information by a patient; and (c) monitoring compliance of the patient based
on access of the treatment information.” Appellant has argued Soll does not
disclose these steps (App. Br. 10-11; Reply Br. 8-9), whereas the Examiner
has maintained Soll does disclose these steps (Ans. 17-20).
In the Decision, we found Soll promotes patient compliance with
treatment instructions by permitting the patient to access a CPM from a
home computer where he or she can access information pertaining to triage,
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screening, and health education sessions (see Decision 5-6). Based on the
patient accessing the CPM from home for screening, the CPM may instruct
the patient to seek care at the end of the session (i.e., “patient compliance”)
(see id.). The patient’s physician receives a notification of the patient’s
updated status as a means to monitor the compliance (see Soll, col. 27,
ll. 22-24, 64-67).
Accordingly, Soll is considered to disclose the steps of “(b)
determining access of the treatment information by a patient; and (c)
monitoring compliance of the patient based on access of the treatment
information,” as claimed.

ISSUE 3
With respect to claim 28, Appellant further asserts the Board
overlooked Appellant’s arguments with respect to the “entering treatment
information” limitation of claim 28 and requests a reconsideration of the
argument (Req. for Reh’g 4-5). Specifically, Appellant argues we have
improperly affirmed the Examiner’s rejection of claim 28 for the reasons
provided for claim 26, although claim 28 recites limitations substantially
different from those in claim 26 (id.). Appellant contends the Examiner’s
citation to Soll (Ans. 5, citing col. 27, ll. 4-18) is directed to a patient “Exit
Interview”. Id. Appellant further argues entering of treatment information
must be performed by a physician, not a patient. Req. Reh’g 5.
We decline to grant the request for a rehearing on this issue. Initially
we note Appellant did not present these same arguments in the Appeal Brief.
Instead, Appellant generally asserts “the passages in Soll . . . relied upon in
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the Office Action (at 6-7 and 10-12) never describe any attempt to enter the
claimed ‘treatment information’ whatsoever. App Br. 11. Thus, the Board
is not required to address these new arguments that could have been
presented in the principal Brief. Nevertheless, analysis of this limitation was
covered in the discussion of claim 26, which claims “input[ting] . . .
treatment information” (see Decision 6-7). To emphasize, we found Soll
discloses doctors input patient information to be stored in a database
(Decision 6; Ans. 15; see also Soll, Abstract). We further found Soll teaches
after the patient examination, the patient problems are defined (i.e.,
diagnosed) and the physician enters treatment options for the diagnosis by
selecting from a displayed list of predefined treatment guidelines (Decision
7(citing Soll col. 26, ll. 30-45); Ans. 15). Moreover, we note claim 28 does
not specify who/what inputs treatment information—a term not explicitly
defined in the Specification.
Accordingly, we are not persuaded Soll does not disclose “entering
treatment information” recited in claim 28.

ISSUE 4
We introduced a new ground of rejection for claim 28 under
35 U.S.C. § 101 (Decision 15). Appellant requests reconsideration (Req. for
Reh’g 4), but has not provided sufficient substantive reasons for such
reconsideration. Thus, we decline to reconsider the new ground of rejection
under 35 U.S.C. § 101 for claim 28.

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ISSUE 5
We found in our Decision claim 27 was anticipated by Soll (Decision
14).
Appellant asserts the Board misapprehended claim 27 (Req. for Reh’g
5). Specifically, Appellant argues we have affirmed the Examiner’s
rejection of claim 27 without the Examiner or the Board providing any
analysis of the arguments. We are unpersuaded by this assertion inasmuch
as both the Examiner (Ans. 16-17) and the Board (Decision 7-8) have
already addressed Appellant’s arguments in respect to claim 27.
Accordingly, we decline to grant the request for a rehearing on this issue.

ISSUE 6
We found in our Decision claim 36 was anticipated by Soll (Decision
14).
Appellant asserts the Board misapprehended claim 36, and
specifically, Soll does not anticipate claims 36 (Req. for Reh’g 5-8). We are
unpersuaded by this assertion inasmuch as the Decision already addressed
Appellant’s arguments in respect to claim 36 (see Decision 10-11). Claim
36 recites “issuing a reminder to the patient based on the compliance of the
patient monitored in said monitoring step.” The Examiner relied on Soll,
column 27, line 56 to column 28, line 3 and column 28, lines 44-67 (Ans.
21). We found Soll’s CPM issuing instructions to a patient (alert) to seek
care following monitoring of patient compliance corresponded to the
claimed “reminder” (see Decision 11; see also col. 27, ll. 61-64).
Accordingly, we decline to grant the request for a rehearing on this issue.

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ISSUE 7
We found in our Decision claim 37 was anticipated by Soll (Decision
14).
Appellant asserts the Board misapprehended claim 37, and
specifically, Soll does not anticipate claim 37 (Req. for Reh’g 8-9). We are
unpersuaded by this assertion inasmuch as the Decision already addressed
Appellant’s arguments in respect to claim 37 (see Decision 10-11). Claim
37 recites, inter alia, “said issuing step (d) is performed by contacting the
patient using . . . e-mail.” We found Soll’s CPM issuing instructions to a
patient to seek care following monitoring of patient compliance
corresponded to the claimed “e-mail” (see Decision 11). That is,
instructions transmitted to a patient electronically, such as via the Internet,
are broadly interpreted as electronic mail (id.). Accordingly, we decline to
grant the request for a rehearing on this issue.

CONCLUSION
We have considered the arguments raised by Appellant in the Request
for Rehearing, but find none of these arguments persuasive that our original
Decision was in error. It is our view Appellant has not identified any points
the Board has misapprehended or overlooked. Based on the record before
us, we are still of the view the invention set forth in claims 26-34, 36, and
37 is anticipated by the applied prior art, the invention set forth in claim 35
is obvious over the applied prior, and the invention set forth in claim 28 is
directed to non-statutory subject matter. We have reconsidered our Decision
but decline to grant the relief requested.
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Our decision remains AFFIRMED-IN-PART with new grounds of
rejection pursuant to 37 C.F.R § 41.50(b).
This Decision on Appellant’s Request for Rehearing is deemed to
incorporate our earlier Decision (mailed December 12, 2013) by reference.
See 37 C.F.R. § 41.52(a)(1).

DECISION
We have granted Appellant’s request to the extent we have
reconsidered our Decision of December 12, 2013, but we deny the request
with respect to making any changes therein.

REHEARING DENIED

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