Ex Parte Mooney

Board of Patent Appeals and Interferences

Jan 13, 2009

09492398 (B.P.A.I. Jan. 13, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte AL J. MOONEY
__________

Appeal 2008-2550
Application 09/492,398
Technology Center 2100
__________

Decided: January 13, 2009
__________

Before ALLEN R. MACDONALD, JAY P. LUCAS, and
STEPHEN C. SIU, Administrative Patent Judges.

SIU, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
This is a decision on appeal under 35 U.S.C. § 134(a) from the
Examiner’s rejection of claims 50-67. Claims 1-49 have been cancelled and
claims 68-71 have been withdrawn. We have jurisdiction under 35 U.S.C. §
6(b). We affirm-in-part and enter a new ground of rejection under 35 U.S.C.
§ 101, against claims 50-67.
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The Invention
The disclosed invention relates generally to delivering medical
supplies (Spec. 1). Specifically, a medical care provider lists medical
supplies that the provider may prescribe to patients (id. 2). The patient
selects the prescribed supply and submits a payment for the supply to a
vendor (id. 2-3) and the supply is shipped to the patient (id. 3).
Independent claim 50 is illustrative:
50. A method of prescribing and selling a medical supply through a
website associated with a medical care provider comprising:
conducting a medical examination on a patient, wherein the
medical examination is conducted by the medical care
provider;
prescribing the medical supply for the patient, wherein the
medical supply is prescribed by the medical care provider
based on the results of the medical examination;
accessing the website associated with the medical care provider,
wherein the website includes an array of prescription medical
supplies including the medical supply prescribed by the
medical care provider;
ordering the medical supply prescribed by the medical care
provider from the website associated with the medical care
provider; and
wherein the medical care provider that prescribed the medical
supply receives payment for the medical supply ordered from
the website associated with the medical care provider.

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The Reference
The Examiner relies upon the following reference as evidence in
support of the rejection:
Silver US 6,269,339 B1 Jul. 31, 2001
(filed Dec. 29, 1998)

The Rejection
The Examiner rejects claims 50-67 under 35 U.S.C. § 102(e) as being
anticipated by Silver.

ISSUE #1
Appellant asserts that “a medical examination is ‘an appropriate
consultation’ in which the medical care provider conducting the medical
examination makes an informed medical judgment based on the
circumstances of the situation, and on his or her training and experience”
(Revised App. Br. 7). Appellant further asserts that Silver discloses a
“questionnaire [that] includes a number of various common queries designed
to elicit general information about a user’s personal habits and
demographics, which are used for marketing” (id.) which, according to
Appellant, does not constitute a “medical examination” as recited.
The Examiner finds that “completing the questionnaire of Silver
achieves one manner of examination” (Ans. 7).
Did Appellant demonstrate that the Examiner erred in finding that
Silver discloses a medical examination?

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FINDINGS OF FACT
The following Findings of Facts (FF) are shown by a preponderance
of the evidence.
1. Silver discloses a system and method for providing a user with
“personalized wellness options” (Abstract) via an interface to a
program conducted by a physician such as Dr. Michael Roizen,
Chairman, Dept. of Anesthesia & Critical Care (Figure 2).
2. Silver discloses that a medical system prompts a user for answers to
questions pertaining to a “health profile questionnaire” (col. 9, ll. 25-
26) that is “used to assess a user’s relative wellness” (col. 9, ll. 42-
43).
3. Silver further discloses that, based on the patient history, the system
determines “recommendations for a given user based upon
physiological age graphs” (col. 17, ll. 30-31). As one example, the
medical care provider may recommend “taking 250 mg of vitamin C
three times per day” (col. 17, ll. 46-47).
4. Silver discloses providing “commercial sources of vitamin C” (col.
17, l. 48), for example, via “a product database 2506” (col. 17, l. 57).
5. Silver discloses that a user is presented via an interface managed by a
medical care provider (i.e., Dr. Michael Roizen) with “information
on products that can be purchased . . . which directly affect the factor
in question” (col. 17, ll. 43-44).
6. Silver also discloses that the interface provides the user or patient
with a “summary of the products that are associated with the selected
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recommendations” (col. 18, ll. 56-58) along with “a further report . . .
listing the contact information for those merchants that sell products
and services to assist the user in the recommendations that are
selected” (col. 18, ll. 58-61).
7. The term “device” includes anything that is “a piece of equipment or
a mechanism designed to serve a special purpose or perform a special
function” (Merriam-Webster’s Collegiate Dictionary (11th ed.,
2005)).
8. Silver discloses that the “products could be endorsed by the system
manager of the present invention for a fee, which fee would be paid
to the operator of the present invention” (col. 19, ll. 2-4).

PRINCIPLES OF LAW
35 U.S.C. § 101
“A claimed process is . . . patent-eligible under § 101 if: (1) it is tied
to a particular machine or apparatus, or (2) it transforms a particular article
into a different state or thing.” In re Bilski, 545 F.3d 943, 954 (Fed. Cir.
2008). However, “even if a claim recites a specific machine or a particular
transformation of a specific article, the recited machine or transformation
must not constitute mere ‘insignificant postsolution activity’.” Id. at 957.

35 U.S.C. § 102
In rejecting claims under 35 U.S.C. § 102, “[a] single prior art
reference that discloses, either expressly or inherently, each limitation of a
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claim invalidates that claim by anticipation.” Perricone v. Medicis Pharm.
Corp., 432 F.3d 1368, 1375 (Fed. Cir. 2005) (citation omitted).
“Anticipation of a patent claim requires a finding that the claim at issue
‘reads on’ a prior art reference.” Atlas Powder Co. v. IRECO, Inc., 190 F.3d
1342, 1346 (Fed Cir. 1999) “In other words, if granting patent protection on
the disputed claim would allow the patentee to exclude the public from
practicing the prior art, then that claim is anticipated, regardless of whether
it also covers subject matter not in the prior art.” (Id.) (internal citations
omitted).

ANALYSIS (ISSUE #1)
Silver discloses a system and method for providing a user with
“personalized wellness options” (Abstract) via an interface to a program
conducted by a physician such as Dr. Michael Roizen, Chairman, Dept. of
Anesthesia & Critical Care (Figure 2). Silver’s medical system prompts a
user for answers to questions pertaining to a “health profile questionnaire”
(col. 9, ll. 25-26) that is “used to assess a user’s relative wellness” (col. 9, ll.
42-43). Hence, Silver discloses a physician (e.g., Dr. Michael Roizen)
conducting a series of inquiries with a patient to obtain a medical history,
which we find to be equivalent to a medical care provider conducting a
medical examination.
Appellant argues that “[m]edical examinations include physical
examinations and tests, and are performed by licensed medical care
providers” (Revised App. Br. 7). A medical examination, construed broadly
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but reasonably, includes any investigation or inquiry into medical-related
issues of a patient. While we agree with Appellant that a medical
examination may include any of a history, a physical examination, or a
diagnostic test, we disagree that a medical examination must include each of
a history, a physical examination, and at least one diagnostic test. Indeed,
taking a history from a patient entails examining the patient over medical-
related issues. In our view, this constitutes a “medical examination.”
For at least the aforementioned reasons, we conclude that Appellant
has not sustained the requisite burden on appeal in providing arguments or
evidence persuasive of error in the Examiner’s rejection of claim 50-67 with
respect to issue #1.

ISSUE #2
Appellant asserts that “Silver simply fails to disclose a doctor
conducting a medical examination as recited in claim 50” (Revised App. Br.
9) because, while Silver discloses “an automated computerized
questionnaire” (Revised App. Br. 8), “the doctor in Silver never poses the
questions to the patient. Instead, the computer does” (id.). Appellant further
asserts that Silver discloses an “automated computerized questionnaire [that]
simply does not fall within the realm of a medical care provider” (id. 9).
Did Appellant demonstrate that the Examiner erred in finding that
Silver discloses a medical care provider conducting a medical examination?

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ANALYSIS (ISSUE #2)
As set forth above, we agree with the Examiner that Silver discloses a
medical care provider (i.e., Dr. Michael Roizen – Figure 2) who conducts a
medical examination (i.e., poses questions to a patient to elicit a medical
history).
Appellant argues that “the doctor in Silver never poses the questions
to the patient. Instead, the computer does” (Revised App. Br. 8). However,
while the medical care provider (i.e., Dr. Michael Roizen) may utilize a
computer to assist in obtaining a medical history from a patient, we agree
with the Examiner that the medical care provider is nevertheless conducting
the examination. Because the medical care provider (Dr. Michael Roizen in
this example) oversees the system and provides the questions to elicit the
patient history in the first place, we find that the medical care provider is
conducting the examination using the computer as a tool to assist in the
administration of the examination rather than the computer itself conducting
the examination independently of any actions taken by the medical care
provider.
For at least the aforementioned reasons, we conclude that Appellant
has not sustained the requisite burden on appeal in providing arguments or
evidence persuasive of error in the Examiner’s rejection of claim 50-67 with
respect to issue #2.

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ISSUE #3
Appellant asserts that Silver discloses “recommendations . . . [that]
are no more than ‘common sense’ suggestions” (Revised App. Br. 11) but
fails to disclose prescribing a medical supply for a patient because the
“recommendations [of Silver] do not ‘designate or order the use of as a
remedy’” (Revised App. Br. 10).
Did Appellant demonstrate that the Examiner erred in finding that
Silver discloses prescribing a medical supply for a patient?

ANALYSIS (ISSUE #3)
As set forth above, Silver discloses a medical care provider
conducting a medical examination of a patient to obtain a patient history.
Silver further discloses that, based on the patient history, the system
determines “recommendations for a given user based upon physiological age
graphs” (col. 17, ll. 30-31). As one example, the medical care provider may
recommend “taking 250 mg of vitamin C three times per day” (col. 17, ll.
46-47). Thus, Silver discloses a medical care provider determining a course
of treatment for a patient based on a medical examination of the patient and
recommending or “prescribing” the course of action to the patient (e.g.,
taking vitamin C). We find no distinction between the disclosure of Silver
and the claimed feature of a medical care provider prescribing a medical
supply for a patient.
Appellant argues that the “recommendations [of Silver] do not
‘designate or order the use of as a remedy’” (Revised App. Br. 10). We
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disagree. Silver discloses a physician determining, for example, a vitamin C
deficiency in a patient based on the results of a medical examination and
designating the use of a vitamin C supplement as a “remedy.” Appellant has
not demonstrated specific differences, nor do we find any specific
differences, between Silver’s disclosure and the claimed feature of
prescribing a medical supply for a patient.
For at least the aforementioned reasons, we conclude that Appellant
has not sustained the requisite burden on appeal in providing arguments or
evidence persuasive of error in the Examiner’s rejection of claims 50-67
with respect to issue #3.

ISSUE #4
Appellant asserts that while Silver discloses that “a fee . . . is paid to a
system operator” (Revised App. Br. 12), “there is no indication in the patent
to Silver as to who the system managers and operators are” (id.). Therefore,
Appellant argues that Silver fails to disclose that the medical care provider
receives payment for the medical supply ordered from the website.
Did Appellant demonstrate that the Examiner erred in finding that
Silver discloses a medical care provider receiving payment of a medical
supply ordered from a website?

ANALYSIS (ISSUE #4)
As set forth above, Silver discloses a system operated by a medical
care provider (e.g., Dr. Michael Roizen) that recommends or “prescribes” a
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course of action (e.g., taking vitamin C supplements). Silver also discloses
providing “commercial sources of vitamin C” (col. 17, l. 48), for example,
via “a product database 2506” (col. 17, l. 57). Also in this example of
Silver, Dr. Michael Roizen, as the entity who endorsed the recommended
products (e.g., vitamin C “could be endorsed by the system manager” – col.
19, l. 2), may receive a fee, “which fee would be paid to the operator of the
present invention” (col. 19, ll. 3-4). Hence, Silver discloses a medical care
provider who operates a system for recommending a health-related course of
action for a patient based on the results of a medical history and receiving a
fee based on patient selection of products endorsed by the medical care
provider. We find no distinction between Silver’s disclosure and the
claimed feature of a medical care provider receiving payment for a medical
supply ordered from the website.
Appellant argues that “there is no indication in the patent to Silver as
to who the system managers and operators are” (Revised App. Br. 12).
However, Silver discloses that Dr. Michael Roizen (Figure 2), who is a
health care provider, operates the system. Therefore, we agree with the
Examiner that the “system manager” and “system operator” includes the
medical care provider (i.e., Dr. Michael Roizen).
For at least the aforementioned reasons, we conclude that Appellant
has not sustained the requisite burden on appeal in providing arguments or
evidence persuasive of error in the Examiner’s rejection of claims 50-67
with respect to issue #4.

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ISSUE #5
Appellant asserts that Silver fails to disclose that “the medical care
provider . . . not only conducts the medical examination and prescribes the
medical supply, but also receives the order from the user for the prescribed
medical supply” (Revised App. Br. 19).
Did Appellant demonstrate that the Examiner erred in finding that
Silver discloses that the medical care provider that prescribed the medical
supply receives an order through the website for the medical supply?

ANALYSIS (ISSUE #5)
Silver discloses that a user is presented via an interface managed by a
medical care provider (i.e., Dr. Michael Roizen) with “information on
products that can be purchased . . . which directly affect the factor in
question” (col. 17, ll. 43-44). Silver also discloses that the interface
provides the user or patient with a “summary of the products that are
associated with the selected recommendations” (col. 18, ll. 56-58) along
with “a further report . . . listing the contact information for those merchants
that sell products and services to assist the user in the recommendations that
are selected” (col. 18, ll. 58-61). Therefore, Silver discloses that the medical
care provider provides health-related recommendations to a patient, a list of
products for the patient’s use, and a list of merchants that sell the products.
While we agree with the Examiner that Silver discloses that a medical
provider (e.g., Dr. Michael Roizen) conducts a medical examination on a
patient and prescribes a medical supply to the patient, the Examiner has not
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demonstrated that the medical care provider that prescribed the medical
supply receives an order for the medical supply. Rather, Silver discloses
that the patient orders the product recommended by the medical care
provider via a merchant. The Examiner has not demonstrated that the
merchant is also the medical care provider (i.e., Dr. Michael Roizen).
Accordingly, we conclude that Appellant has met the burden of
showing that the Examiner erred in rejecting claims 62-67 with respect to
issue #5.

ISSUE #6
Appellant asserts that “none of the recommendations [of Silver]
appear to be anything that would require or suggest that the user purchase a
‘medical device’” (Revised App. Br. 14). Thus, Appellant argues that Silver
fails to disclose a supplier of medical devices.
The Examiner finds that “vitamins or packages of vitamins would be
readable as the claimed medical devices, since they are therapeutic in nature
and intended as a medical treatment for a defined problem” (Ans. 8).
Did Appellant demonstrate that the Examiner erred in finding that
Silver discloses a supplier of medical devices?

ANALYSIS (ISSUE #6)
Construing the term “medical device” broadly but reasonably, we find
that a medical device includes any piece of equipment designed to serve a
health-related purpose. While vitamins may be considered a form of
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pharmaceutical regimen, we disagree with the Examiner that vitamins
constitute a “piece of equipment.” Nor does the Examiner demonstrate that
Silver discloses a supplier of any health-related pieces of equipment or
devices.
Accordingly, we conclude that Appellant has met the burden of
showing that the Examiner erred in rejecting claim 52 with respect to issue
#6.

ISSUE #7
Appellant asserts that Silver discloses “that a system manager . . .
could endorse the products for a fee – a fee that is paid to a separate system
operator” (Revised App. Br. 15) but that “there is no indication in Silver as
to whom these entities represent” (id.). Hence, Appellant argues that Silver
fails to disclose that “these entities represent both the medical care provider
and the medical supply vendor, and further, that they are one in the same
entity” (id.).
Did Appellant demonstrate that the Examiner erred in finding that
Silver discloses that the medical supply vendor is the medical care provider?

ANALYSIS (ISSUE #7)
As set forth above, Silver discloses a medical care provider (e.g., Dr.
Michael Roizen) conducting a medical examination, providing
recommendations for health care products based on the medical
examination, and providing a “report to the user listing the contact
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information for those merchants that sell products . . . to assist the user in the
recommendations that are selected” (col. 18, ll. 58-61). We agree that any of
the merchants listed on the report may constitute a “medical supply vendor.”
However, the Examiner has not demonstrated that any of the “merchants that
sell products” or medical supply vendors listed on the report provided by the
medical care provider is the medical care provider.
Accordingly, we conclude that Appellant has met the burden of
showing that the Examiner erred in rejecting claim 54 with respect to issue
#7.

ISSUE #8
Appellant asserts that “Silver fails to disclose that an e-commerce
provider credits or debits the account of the medical supply vendor for the
sale of the prescribed medical supply or device, wherein the e-commerce
provider and the medical care provider are the same entity” (Revised App.
Br. 16).
Did Appellant demonstrate that the Examiner erred in finding that
Silver discloses that the e-commerce provider is the medical care provider?

ANALYSIS (ISSUE #8)
As set forth above, Silver discloses a medical care provider operating
a medical care interface through which the medical care provider conducts a
medical examination and provides recommendations and product
information to patients based on the medical examination. Silver also
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discloses that the “products could be endorsed by the system manager of the
present invention for a fee, which fee would be paid to the operator of the
present invention” (col. 19, ll. 2-4). Hence, Silver discloses that the medical
care provider (e.g., Dr. Michael Roizen), who operates and manages an
interface and who is therefore a “system manager,” endorses a product and
receives a fee for endorsing the product from the vendor of the product. We
agree with the Examiner that if a medical care provider manages and
operates a system that collects a fee from a product vendor, the medical care
provider, by collecting the fee, debits the account of the product vendor and
credits the account of the medical care provider.
Appellant argues that “[t]here is no indication as to who these entities
[system manager and system operator] represent, and certainly no indication
of who pays these entities” (Revised App. Br. 17). However, the medical
care provider (i.e., Dr. Michael Roizen) of Silver manages and operates the
system and therefore constitutes a “system manager” or a “system operator.”
Also, because Silver discloses that a fee is paid to the operator because the
operator endorses a product, we agree with the Examiner that it is clear that
the fee, being paid in exchange for endorsing the product, is paid by an
entity that manufactures or sells that product.
For at least the aforementioned reasons, we conclude that Appellant
has not sustained the requisite burden on appeal in providing arguments or
evidence persuasive of error in the Examiner’s rejection of claim 57 with
respect to issue #8.

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ISSUE #9
Appellant asserts that “Silver does not disclose that an e-commerce
provider credit or debit the account of the medical care provider” (Revised
App. Br. 18).
Did Appellant demonstrate that the Examiner erred in finding that
Silver discloses a provider that credits or debits an account associated with
the medical supply vendor and an account associated with the medical care
provider?

ANALYSIS (ISSUE #9)
We agree with the Examiner that Silver discloses an e-commerce
provider who credits or debits an account of a medical supply vendor and an
account of a medical care provider for reasons set forth above.
Therefore, we conclude that Appellant has not sustained the requisite
burden on appeal in providing arguments or evidence persuasive of error in
the Examiner’s rejection of claim 60 with respect to issue #9.

NEW GROUND OF REJECTION -- 37 C.F.R. § 41.50(b)
We reject claims 50-67 under 35 U.S.C. § 101 as being directed to
non-statutory subject matter.
The Court of Appeals for the Federal Circuit recently held that “the
applicable test to determine whether a claim is drawn to a patent-eligible
process under §101 is the machine-or-transformation test set forth by the
Supreme Court and clarified herein . . . .” In re Bilski, 545 F.3d at 966.
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Appellant’s claims 50-67 do not transform physical subject matter. To the
extent that Appellant’s claims may transform data, we note that
transformation of data, without a particular machine, is insufficient to
establish patent-eligibility under § 101. See In re Bilski, at 961 (“[E]ven a
claim that recites ‘physical steps’ but neither recites a particular machine or
apparatus, nor transforms any article into a different state or thing, is not
drawn to patent-eligible subject matter.”).
We conclude that Appellant’s claimed invention does not require a
particular machine or apparatus, nor do these claims transform any article
into a different state or thing and is therefore not directed to statutory subject
matter under 35 U.S.C. § 101.

CONCLUSION OF LAW
Based on the findings of facts and analysis above, we conclude that
Appellant has failed to demonstrate that the Examiner erred in finding that:
1. Silver discloses a medical examination (issue #1),
2. Silver discloses a medical care provider conducting a medical
examination (issue #2),
3. Silver discloses prescribing a medical supply for a patient (issue
#3),
4. Silver discloses a medical care provider receiving payment of a
medical supply ordered from a website (issue #4),
5. Silver discloses that the e-commerce provider is the medical
care provider (issue #8),
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6. Silver discloses a provider that credits or debits an account
associated with the medical supply vendor and an account associated with
the medical care provider (issue #9),
However, Appellant has demonstrated that the Examiner erred in
finding that Silver discloses that the medical care provider that prescribed
the medical supply receives an order through the website for the medical
supply (issue #5), that Silver discloses a supplier of medical devices (issue
#6), and that Silver discloses that the medical supply vendor is the medical
care provider (issue #7).

DECISION
We affirm the Examiner’s decision rejecting claims 50, 51, 53, 55-61
under 35 U.S.C. § 102(e). We reverse the Examiner’s decision rejecting
claims 52, 54, and 62-67 under 35 U.S.C. § 102(e).
In a new ground of rejection, we have rejected claims 50-67 under 35
U.S.C. § 101 as being directed to non-statutory subject matter.
In addition to reversing the Examiner’s rejection(s) of one or more
claims, this decision contains a new ground of rejection pursuant to
37 C.F.R. § 41.50(b). 37 C.F.R. § 41.50(b) provides that “[a] new ground of
rejection pursuant to this paragraph shall not be considered final for judicial
review.”
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37 C.F.R. § 41.50(b) also provides that Appellant, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new ground 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 that 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).

AFFIRMED-IN-PART
37 C.F.R. § 41.50(b)

msc

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