Ex Parte Martinez et al

Patent Trial and Appeal Board

Sep 20, 2016

12349738 (P.T.A.B. Sep. 20, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
12/349,738 0110712009 Pedro Martinez
86000 7590 09/22/2016
Fox Rothschild LLP I G, Nelson
997 Lennox Drive
Building 3
Lawrenceville, NJ 08648
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.
9957-3-1 (59089-00008) 5608
EXAMINER
COBANOGLU, DILEK B
ART UNIT PAPER NUMBER
3626
NOTIFICATION DATE DELIVERY MODE
09/22/2016 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):
ipdocket@foxrothschild.com
svieau@foxrothschild.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte PEDRO MARTINEZ and NOEL GUILLAMA
Appeal2014-005876
Application 12/349,738
Technology Center 3600
Before HUBERT C. LORIN, BIBHU R. MOHANTY, and
BRADLEY B. BAY AT, Administrative Patent Judges.
MOHANTY, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
The Appellants seek our review under 35 U.S.C. § 134 of the final
rejection of claims 1-8 and 10-20 which are all the claims pending in the
application. We have jurisdiction under 35 U.S.C. § 6(b).
SUMMARY OF THE DECISION
We REVERSE.
THE INVENTION
The Appellants' claimed invention is directed to scheduling and
record handling, particularly in the context of healthcare management (Spec.
Appeal2014-005876
Application 12/349,738
i12). Claim 1, reproduced below, is representative of the subject matter on
appeal.
1. A computer-based system for patient scheduling and
record handling, the system comprising:
at least one electronic data processor;
a network interface connected with the processor for
communicatively linking the processor with at least one
database for storing electronic data; and
a scheduling module configured to execute on the
processor for providing two-way scheduling for a patient and a
healthcare provider,
wherein the scheduling module is further configured to
select a time to schedule an activity for the patient with the
healthcare provider based on a method of payment by the
patient.
THE REJECTIONS
The Examiner relies upon the following as evidence of
unpatentability:
Crici
Larsen
Dvorak
Maughan
US 2005/0027580 Al
US 2007/0226010 Al
US 7,337,123 B2
US 7,756,728 B2
The following rejections are before us for review1:
Feb.3,2005
Sept. 27, 2007
Feb.26,2008
July 13, 2010
1. Claims 1-8 and 10-20 stand rejected under 35 U.S.C. § 112, first
paragraph, as failing to comply with the written description requirement.
1 We are unable to review the new matter objection made in the Answer as
this is drawn to a petitionable matter and not an appealable matter. See
M.P.E.P. 1201.
2
Appeal2014-005876
Application 12/349,738
2. Claims 1-5, 11-16, and 18-20 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Larsen and Crici.
3. Claims 6 and 7 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Larsen, Crici, and Dvorak.
4. Claims 8, 10, and 17 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Larsen, Crici, and Maughan.
FINDINGS OF FACT
We have determined that the findings of fact in the Analysis section
below are supported at least by a preponderance of the evidence2.
ANALYSIS
Written Description
The Examiner has rejected claims 1-8 and 10-20 under 35 U.S.C.
§ 112, first paragraph, as failing to comply with the written description
requirement because the Specification does not disclose "select[ing] a time
to schedule an activity for the patient with the healthcare provider based on a
method of payment by the patient" (Final Act. 3; Ans. 3--4 ).
The Appellants contend that the rejection is improper because
paragraphs 7, 17, and 20 of the Specification provide support for this
limitation (Br. 10). We agree with the Appellants that paragraphs 7, 17, and
20 provide support for the cited claim limitation. Here, paragraph 20
discloses that "the scheduling module 112 can be configured to provide
2 See Ethicon, Inc. v. Quigg, 849 F.2d 1422, 1427 (Fed. Cir. 1988)
(explaining the general evidentiary standard for proceedings before the
Patent Office).
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Appeal2014-005876
Application 12/349,738
patient-specific profiles correlating treatment interaction type with forms of
payment and to optimize scheduling for the healthcare provider based upon
the correlation." We agree with the Appellants that this disclosure provides
adequate support for the cited limitation.
Accordingly, the rejection of claims 1-8 and 10-20 for lack of written
description support is not sustained.
Obviousness
The Appellants argue that the rejection of claim 1 is improper because
Crici does not disclose "a scheduling module configured to select a time to
schedule an activity for the patient with the healthcare provider based on a
method of payment by the patient" as required by claim 1 (Br. 14--20).
The Examiner has, however, determined that the cited claim limitation
is disclosed by Crici in the abstract and at paragraphs 28 and 32 (Final Act.
6-7; Ans. 5).
We agree with the Appellants. Here, claim 1 requires selecting "a
time to schedule an activity" based on "a method of payment by the patient."
This is described in the Specification at paragraphs 8 and 20. Paragraph 20
provides that a "method of payment can indicate whether the patient is a
'self-pay,' privately insured patient, or a Medicare or Medicaid recipient."
In contrast, Crici at paragraph 28 discloses allowing an appointment to be
scheduled if any form of payment is received.
The Examiner has also determined that "[t]he 'method of payment by
patient' in claims represents a nonfunctional descriptive material and it does
not alter the recited structural elements" (Final Act. 4 ).
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Appeal2014-005876
Application 12/349,738
We do not agree. In claim 1, the term "method of payment by the
patient" is not non-functional descriptive material but rather an express
claim limitation drawn to the function of selecting performed by the
scheduling module. Here, the term "method of payment by the patient" is
not drawn to printed matter or other type of mere data and does not
constitute non-functional descriptive material in relation to any kind of
substrate in the claim.
The remaining claims contain a similar limitation, and the rejection of
these claims is not sustained for these same reasons.
CONCLUSIONS OF LAW
We conclude that the Appellants have shown that the Examiner erred
in rejecting the claims as listed in the Rejections section above.
DECISION
The Examiner's rejections of claims 1-8 and 10-20 are reversed.
REVERSED
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