Ex Parte Karpf

Patent Trial and Appeal Board

Dec 12, 2013

11074053 (P.T.A.B. Dec. 12, 2013)

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 12/12/2013
DICKSTEIN SHAPIRO LLP
1825 EYE STREET NW
Washington, DC 20006-5403
EXAMINER
KERZHNER, ALEKSANDR
ART UNIT PAPER NUMBER
2162
MAIL DATE DELIVERY MODE
12/12/2013 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 APPEAL

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STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from a final rejection of
claims 26-37. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART and enter a NEW GROUND OF
REJECTION UNDER 37 C.F.R. § 41.50(b).

Introduction
According to Appellant, the invention relates to a computer system
and method for providing patients with access to information needed to
understand and follow post-visit medical care instructions arising from a
medical practitioner visit (Spec. 1).

Exemplary Claim
Claim 26, reproduced below, is illustrative of the claimed subject
matter:
26. An electronic compliance promoter for use in promoting
patient compliance with treatment instructions comprising:

a medical personnel client, wherein said medical
personnel client inputs from medical personnel diagnosis and
treatment information regarding a patient following a medical
appointment with the patient;

a treatment server computer, wherein said treatment
server computer receives diagnosis and treatment information
from said medical personnel client; and

a treatment instructions database, wherein said treatment
instructions database stores the diagnosis and treatment
information received from said treatment server computer;

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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.

REFERENCE
Soll US 7,593,952 B2 Sept. 22, 2009
(filed Apr. 9. 1999)

REJECTION
The Examiner made the following rejection:
Claims 26-37 stand rejected under 35 U.S.C. § 102(e) as being
anticipated by Soll (Ans. 3).

We have only considered those arguments Appellant actually raised in
the Brief. Arguments Appellant could have made but chose not to make in
the Brief have not been considered and are deemed to be waived. See 37
C.F.R. § 41.37(c)(1)(vii)(2011).

ISSUE 1
35 U.S.C. § 102(e): Claims 26 and 28-34
As to claim 26, Appellant asserts the invention is not anticipated by
Soll because Soll discloses a system intended to make health care providers
(e.g., doctors) more productive whereas the claimed invention is directed to
an apparatus used to promote compliance by a patient with particular
treatment instructions (App. Br. 6). Specifically, Appellant argues Soll’s
disclosed “compliance attitudes” does not satisfy the “patient compliance”
limitations of claim 26 (App. Br. 7 (citing Soll, col. 27, ll. 1-61)). Appellant
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further contends Soll’s disclosed module is for automatically interviewing
the patient to obtain their subjective input after a doctor’s visit in order to
determine the effectiveness of the doctor in interacting with the patient (id.
(citing Soll, col. 27, ll. 9-11)). Thus, Appellant argues, Soll’s “compliance
attitudes” does not measure the actual compliance by the patient (e.g., with
treatment instructions, etc.) because it is an exit interview feature for the sole
benefit of the doctor and is not contemplated for use by the patient (App. Br.
8).
In addition, Appellant contends Soll does not teach a “medical
personnel client” for use by medical personnel in inputting “diagnosis and
treatment information” (App. Br. 8). Specifically, Appellant argues Soll
shows the use of a patient module, not a medical personnel module, for use
by the patient in an automated interview process prior to any possible
diagnosis or treatment information generated by a physician (App. Br. 8-9,
(citing Soll, col. 4 and 12)).
Issue 1a: Has the Examiner erred in finding Soll’s module for an
automatic exit interview measuring patient “compliance attitudes” teaches
an “electronic compliance promoter for use in promoting patient compliance
with treatment instructions,” as recited in claim 26?
Issue 1b: Has the Examiner erred in finding Soll’s patient module
teaches the “medical personnel client,” as recited in claim 26?

ANALYSIS
Issue 1a:
We are not persuaded by Appellant’s arguments. While features of an
apparatus may be recited either structurally or functionally, claims directed
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to an apparatus must be distinguished from the prior art in terms of structure
rather than function. In re Schreiber, 128 F.3d 1473, 1477-78 (Fed. Cir.
1997) (citations omitted). Here, Appellant attempts to distinguish the claims
directed to an apparatus, i.e., “an electronic compliance promoter” from the
prior art solely in terms function, i.e., “for use in promoting patient
compliance with treatment instructions.” Thus, this argument will not defeat
the Examiner’s finding of anticipation of the claimed apparatus if the prior
art anticipates the structural limitations of the claims.
Further, assuming arguendo, the preamble of claim 26 is not merely
intended use and is to be given patentable weight, we find Soll teaches
“patient compliance with treatment instructions,” as set forth by the
Examiner (Ans. 14). Appellant’s argument ignores the disclosure
immediately following Soll’s discussion of “compliance attitudes” wherein
Soll states 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 (see Soll, col. 27, ll. 57-67 to col. 28, l. 3). Soll
specifically discloses after the exit interview, the patient is given a printed
health summary, including follow-up instructions and personalized health
education materials (see Soll, col. 27, ll. 13-17). Soll also discloses patients
may access the CPM from home via the Internet for triage, screening, or
health education sessions (see Soll, col. 27, ll. 59-60). Further, Soll teaches
when the CPM analysis of new patient information reveals a condition in
need of prompt attention, the patient is instructed to seek care at the end of
their CPM session (see Soll, col. 27, ll. 61-63).
Accordingly, we find Soll teaches “an electronic compliance promoter
for use in promoting patient compliance with treatment instructions”
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because, after the exit interview, the patient is given a problem list with
follow-up instructions (i.e., “treatment information”) wherein the patient
may subsequently access the CPM from home for screening and reveal a
condition in need of prompt attention that causes the CPM to instruct the
patient to seek care at the end of the session (i.e., “patient compliance”).
Thus, the Examiner did not err in finding that Soll’s disclosure of
“compliance attitudes” teaches “patient compliance with treatment
instructions.”

Issue 1b:
We are not persuaded by Appellant’s arguments. A claim containing
a recitation with respect to the manner in which a claimed apparatus is
intended to be employed does not differentiate the claimed apparatus from a
prior art apparatus if the prior art apparatus teaches all the structural
limitations of the claim. Ex parte Masham, 2 USPQ2d 1647 (BPAI 1987)
(citations omitted). Here, “medical personnel client” is merely a client
intended to be employed by medical personnel, i.e., the phrase “medical
personnel” is a non-functional descriptive label. Thus, any client capable of
use by medical personnel reads on the claim limitation “medical personnel
client.”
Assuming arguendo, the phrase “medical personnel” in the “medical
personnel client” claim limitation is not merely non-functional descriptive
label and is to be given patentable weight, we agree with the Examiner’s
findings that Soll teaches doctors input patient information to be stored in a
database (Ans. 15 (citing Soll, col. 26, l. 17 – col. 27, l. 3)). Soll teaches
after the patient examination, problems are defined and management
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options, which are drawn from defined treatment guidelines, are selected by
the physician (see Soll, col. 26, ll. 30-45). Thus, the Examiner did not err in
finding Soll discloses the claimed “medical personnel client” because Soll
teaches after the patient examination, the patient problems are defined (i.e.,
diagnosed) and the physician (i.e., medical personnel) enters treatment
options for the diagnosis by selecting from a displayed list of predefined
treatment guidelines.
Accordingly, we are not persuaded the Examiner erred in rejecting
independent claims 26 and 28 and dependent claims 29-34, not separately
argued, for anticipation by Soll.

ISSUE 2
35 U.S.C. § 102(e): Claim 27
Appellant contends claim 27 is not anticipated by Soll because a
“treatment server computer” outputs to the patient information in a number
of different formats such as: “in the form of a list of links to Web sites” and
“a list of alerts in the form of patient symptoms that would require
immediate medical attention” is absent from Soll (App. Br. 10).
Issue 2: Has the Examiner erred in finding Soll’s disclosure of a
reference on local resources such as a website provided at the exit interview
teaches the treatment server outputting to the patient information “diagnosis
information for the patient in the form of a list of links to Web sites that
have the relevant diagnosis information,” as recited in claim 27?

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ANALYSIS
We are not persuaded by Appellant’s arguments. Claim 27 claims at
least one of “diagnosis information for the patient in the form of a list of
links to Web sites” and “a list of alerts in the form of patient symptoms that
would require immediate medical attention.” Thus, we need not determine
whether Soll discloses the claimed “list of alerts” because a finding of the
claimed “diagnosis information” is sufficient to meet the limitation.
The Examiner finds Soll discloses the claimed “diagnosis
information.” We agree with the Examiner’s findings and adopt them as our
own (Ans. 4 (citing Soll, col. 27, ll. 4-67)). Thus, the Examiner did not err
in finding Soll’s reference on local resources such as a website reads on the
claimed “diagnosis information for the patient in the form of a list of links to
Web sites that have the relevant diagnosis information” (id.).
Accordingly, we are not persuaded the Examiner erred in rejecting
claim 27 for anticipation by Soll.

ISSUE 3
35 U.S.C. § 102(e): Claim 35
Appellant contends claim 35 is not anticipated by Soll. Specifically,
Appellant argues that “rate” is never measured in any way for any aspect of
the patient interaction in Soll (Reply Br. 10).
Issue 3: Has the Examiner erred in finding that Soll’s discloses (1)
the exit interview software monitors the rate of questions and answers; (2)
patient access to the CPM via the Internet uses the same software as the exit
interview; (3) therefore, Soll discloses “measuring a rate at which the patient
reviews treatment information” as recited in claim 35?
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ANALYSIS
We are persuaded by Appellant’s arguments. The Examiner finds the
software used for the exit interview monitors the rate of the answers given
by the patient (Ans. 21). The Examiner reasons the same software used at
the exit interview is used by the patient to access treatment information via
the internet and therefore, like the alleged rate monitoring by the exit
interview software, the rate at which the patient accesses treatment
information is similarly measured (Id.).
We find Soll teaches individualized feedback by the patient in
response to a series of questions posed at the exit interview (see col. 27,
ll. 19-55). Soll does not, however, disclose monitoring the rate at which the
patient responds to these questions (see col. 27, l. 56 - col. 28, l.3). Further,
we do not find Soll teaches the software used to facilitate the exit interview
is the same software used by the patient to access treatment information via
the Internet (id.). Thus, the Examiner erred in finding Soll discloses
“measuring a rate at which the patient reviews treatment information”
because rate is never measured in any way for any aspect of the patient
interaction in Soll.
Accordingly, we are persuaded the Examiner erred in rejecting claim
35 for anticipation by Soll.

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ISSUE 4
35 U.S.C. § 102(e): Claims 36 and 37
Appellant contends claims 36 and 37 are not anticipated by Soll.
Specifically, Appellant argues the cited passage merely relates to patient
screening for common disorders and has nothing to do with patient
compliance or the reminder function trigger by monitoring compliance, as
required by claim 36 (App. Br. 12). Appellant maintains the Examiner
effectively combines references from two totally different modules (patient
home access and the revisit modules) to argue the combination has the single
functionality claimed (Reply Br. 10).
Issue 4: Has the Examiner erred in finding: (1) Soll’s patient home
access module teaches the step of “issuing a reminder to the patient based on
the compliance of the patient monitored” and (2) Soll’s disclosure of
instructing the patient to seek care at the end of their CPM session teaches
“contacting the patient using at least one of: e-mail, mail, phone, beeper, and
cable TV” as recited in claims 36 and 37?

ANALYSIS
We are not persuaded by Appellant’s arguments. The Examiner finds
Soll’s disclosure of instructing the patient to seek care at the end of a CPM
session that reveals a condition in need of prompt attention anticipates the
claimed “reminder” and “contacting the patient using at least one of: e-mail,
mail, phone, beeper, and cable TV” (Ans. 21-22 (citing Soll, col. 27, l. 56 -
col. 28, l. 3, col. 28, ll. 44-67)).
We agree with the Examiner because the patient accesses the CPM in
the interim between the exit interview and the next visit for triage, screening,
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or health education sessions (see Soll, col. 27, ll. 56-61). Upon the patient
providing new information that reveals a new condition, the patient is
instructed to seek care (see Soll, col. 27, ll. 62-64). The patient is instructed
to seek care at the end of the CPM session, which is disclosed as occurring
via the Internet (see Soll, col. 27, l. 59). Thus, we find the patient is
instructed to seek care via information transferred electronically (i.e., e-mail)
because the instruction occurs at the end of the CPM session, which is
conducted via the Internet. As a result, we find Soll describes electronic
mail because information is conveyed electronically.
In addition, we find the patient is instructed (i.e., reminded) to seek
care following monitoring of patient compliance because the instruction to
seek care is issued at the end of the CPM session wherein the patient has
accessed the system for screening and health education sessions. Therefore,
the Examiner did not err in finding Soll’s patient compliance module
anticipates “issuing a reminder to the patient based on the compliance of the
patient monitored” and “contacting the patient using at least one of: e-mail,
mail, phone, beeper, and cable TV.”
Accordingly, we are not persuaded the Examiner erred in rejecting
claims 36 and 37 for anticipation by Soll.

NEW GROUNDS OF REJECTION

Using our authority under 37 C.F.R. § 41.50(b), we reject claim 28
under 35 U.S.C. § 101 as being directed to non-statutory subject matter and
reject claim 35 under 35 U.S.C. § 103(a) as being unpatentable over Soll.

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35 U.S.C. § 101: Claim 28
Claim 28 recites “[t]he article of manufacture comprising a machine-
readable storage medium having stored therein indicia of a plurality of
machine-executable control program steps. The Specification is devoid of
any definition of “machine-readable storage medium” that excludes a signal
propagation medium or transitory medium. Thus, interpreting “machine-
readable storage medium” broadly, but reasonably, in light of the
Specification, we determine the recited “machine-readable storage medium”
encompasses transitory propagating signals (see Ex parte Mewherter, 107
USPQ2d 1857 (PTAB 2013) (precedential)).
Signals are unpatentable under § 101. In re Nuijten, 500 F.3d 1346,
1355 (Fed. Cir. 2007). According to U.S. Patent & Trademark Office
(USPTO) guidelines:
A claim that covers both statutory and non-statutory
embodiments . . . embraces subject matter that is not eligible for
patent protection and therefore is directed to non-statutory
subject matter. Such claims . . . should be rejected under 35
U.S.C. 101, for at least this reason.

For example, machine readable media can encompass non-
statutory transitory forms of signal transmission, such as, a
propagating electrical or electromagnetic signal per se. See In
re Nuijten, 500 F.3d 1346, 84 USPQ2d 1495 (Fed. Cir. 2007).

Manual of Patent Examining Procedures (“MPEP”) § 2106(I) (8th ed.,
2001, Rev. 2012).

The USPTO also provides the following guidance:
The broadest reasonable interpretation of a claim drawn to a
computer readable medium . . . typically covers forms of non-
transitory tangible media and transitory propagating signals per
se in view of the ordinary and customary meaning of computer
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readable media. . . . When the broadest reasonable
interpretation of a claim covers a signal per se, the claim must
be rejected under 35 U.S.C. § 101 as covering non-statutory
subject matter.
David J. Kappos, Subject Matter Eligibility of Computer Readable Media,
1351 Off. Gaz. Pat. Office 212 (Feb. 23, 2010).

Therefore, we conclude claim 28 is not directed toward statutory
subject matter under 35 U.S.C. § 101.
We have made the rejection regarding independent claim 28 under 37
C.F.R. § 41.50(b). However, we have not reviewed the remaining claims
29-37 to the extent necessary to determine whether these claims are directed
to non-statutory subject matter. We leave it to the Examiner to determine
the appropriateness of any further rejections based on these or other
references. Our decision not to enter a new ground of rejection for all claims
should not be considered as an indication regarding the appropriateness of
further rejection or allowance of the non-rejected claims.

35 U.S.C. § 103(a): Claim 35
We find Soll anticipates base claim 28. Soll does not specifically
disclose measuring the rate at which the patient reviews treatment
information (see Soll col. 27, ll. 60-61). However, upon review of Soll’s
teachings, we conclude incorporating this feature would have been obvious
to an ordinarily skilled artisan at the time of the invention in light of Soll.
Specifically, we determine Soll describes a system that tracks when a patient
returns to the CPM (see e.g. col. 8, ll. 39-44). Therefore, we determine
Soll’s system would inherently time stamp the patient’s access of the CPM
system because such systems necessarily record the time at which the system
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has been accessed by a user or at least suggest tracking the time a user
accesses information , we determine an ordinarily skilled artisan would find
Soll suggests such a feature. Thus, we conclude it would have been obvious
to one of ordinary skill in the art (e.g., a network engineer) to include in the
system of Soll, recording the number of times the patient has accessed the
CPM over a given time period, i.e., measure the rate the patient has reviewed
the health information sessions, to provide a doctor information to assess the
weight the system should give to the user’s information or how often the
patient is seeking advice. In other words, the doctor may be given
information that helps the doctor assess if at the rate at which the patient has
accessed the system, for example, whether more weight is given to the
patient information because the information is likely to be more accurate;
whether the patient may be closely following instructions; or whether the
patient continues to assess the information because the patient is confused by
the instructions.

DECISION
The Examiner’s rejection of claims 26 and 28-34 under 35 U.S.C.
§ 102(e) as being anticipated by Soll is affirmed.
The Examiner’s rejection of claim 27 under 35 U.S.C. § 102(e) as
being anticipated by Soll is affirmed.
The Examiner’s rejection of claim 35 under 35 U.S.C. § 102(e) as
being anticipated by Soll is reversed.
The Examiner’s rejection of claims 36 and 37 under 35 U.S.C.
§ 102(e) as being anticipated by Soll is affirmed.
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We have entered new grounds of rejection against claim 28 under 35
U.S.C. § 101 and claim 35 under 35 U.S.C. § 103(a).

37 C.F.R. § 41.50(b)
This decision contains new grounds of rejection pursuant to 37 C.F.R.
§ 41.50(b). 37 C.F.R. § 41.50(b) provides “[a] new ground of
rejection pursuant to this paragraph shall not be considered final for judicial
review.”
37 C.F.R. § 41.50(b) also provides the Appellant, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new grounds of rejection to
avoid termination of the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new evidence relating
to the claims so rejected, or both, and have the matter
reconsidered by the examiner, in which event the proceeding
will be remanded to the examiner ....

(2) Request rehearing. Request the proceeding be
reheard under § 41.52 by the Board upon the same record ....

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv) (2011).

AFFIRMED-IN-PART
37 C.F.R. § 41.50(b)

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