Ex Parte Niwa

Patent Trial and Appeal Board

Feb 6, 2013

11593025 (P.T.A.B. Feb. 6, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte MASAKAZU NIWA
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Appeal 2011-013380
Application 11/593,025
Technology Center 3600
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Before: JOSEPH A. FISCHETTI, MICHAEL W. KIM, and
NINA L. MEDLOCK, Administrative Patent Judges.

KIM, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2011-013380
Application 11/593,025

2
STATEMENT OF THE CASE
This is an appeal from the final rejection of claims 1-19 and 221. We
have jurisdiction to review the case under 35 U.S.C. § 134.
The invention relates to a computer-implemented system and method
for providing a medical device to a patient (Spec. 3).
Claim 1, reproduced below, is further illustrative of the claimed
subject matter.
1. A computer-based method for providing a medical
device to a patient, comprising:
recording, by medical personnel, information specific to
a patient into a medical personnel computer readable storage
medium of a medical personnel computer including medical
personnel computer-executable instructions for directing
processing of the medical personnel computer;
the medical personnel computer automatically
determining medical device parameters and selecting a provider
of a medical device for the patient;
the medical personnel computer automatically selecting a
portion of the recorded patient information;
the medical personnel computer transmitting the selected
portion of the recorded patient information to a medical device
provider computer readable storage medium of medical device
provider computer including medical device provider computer-
executable instruction for directing processing of the medical
device provider computer of the selected medical device
provider;
the medical personnel computer transmitting medical
device order information to the selected medical device
provider computer;

1 Our decision will make reference to the Appellants’ Appeal Brief (“App.
Br.,” filed April 11, 2011) and Reply Brief (“Reply Br.,” filed August 23,
2011), and the Examiner’s Answer (“Ans.,” mailed June 24, 2011).
Appeal 2011-013380
Application 11/593,025

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the medical device provider computer automatically
selecting the medical device based on the transmitted patient
and order information;
the medical device provider computer transmitting
medical device selection information to the medical personnel
computer; and
providing the selected medical device to the patient.

THE REJECTIONS
The Examiner has rejected under 35 U.S.C. § 103(a) claims 1-8, 12-
18 and 22 as unpatentable over Arbogast (US 2003/0009534 A1, pub. Jan. 9,
2003), claims 9-11 as unpatentable over Arbogast and Official Notice, and
claim 19 as unpatentable over DiMaggio (US 2005/0004700 A1, pub. Jan. 6,
2005) and Official Notice.

We REVERSE.

ANALYSIS
We are persuaded the Examiner erred in asserting that Arbogast
discloses or suggests “the medical personnel computer automatically
determining medical device parameters and selecting a provider of a medical
device for the patient” and “the medical device provider computer
automatically selecting the medical device based on the transmitted patient
and order information,” as recited in independent claim 12 (Appeal Br. 9-13;
Reply Br. 4-6). The Examiner cites the web server of Arbogast as

2 As both Appellant and the Examiner argue them together (App. Br. 13;
Ans. 8), we choose independent claim 1 as representative of independent
claims 1, 18, and 22. See 37 C.F.R. § 41.37(c)(1)(vii).
Appeal 2011-013380
Application 11/593,025

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performing functions of both the medical personnel computer and the
medical device provider computer (Ans. 16-19). Specifically, the Examiner
asserts
[s]ince the medical personnel would be using the web site to
access the web server, the web server/system can be considered
an extension of the medical personnel computer
(Ans. 16) and
[t]he actions done by the medical device provider computer are:
1) Receiving an order 2) Selecting a device using order
information and 3) Transmitting confirmation of the order. The
specific label of the computer is not considered limiting, merely
the method steps done by the computer. In this case, the web
server of Arbogast receives an order, selects a device using the
order information, and transmits a confirmation of the order
back to the medical personnel
(Ans. 17). However, at least with respect to those functions, the Examiner’s
application of Arbogast to independent claim 1 impermissibly reads out
either the medical personnel computer or the medical device provider
computer. See Texas Instr. Inc. v. United States Int'l Trade Comm'n, 988
F.2d 1165, 1171 (Fed. Cir. 1993) (claim language cannot be mere
surplusage. An express limitation cannot be read out of the claim); Unique
Concepts, Inc. v. Brown, 939 F.2d 1558, 1563 (Fed. Cir. 1991) (two distinct
claim elements should each be given full effect). While the line between
separate computers may, at times, be amorphous, the Examiner has not set
forth sufficient reasoning as to how the web server of Arbogast performing
certain functions suggests two separate computers performing those
functions, as recited in independent claim 1.
The aforementioned analysis is also applicable to independent claim
15, which recites a medical computer and a provider computer.
Appeal 2011-013380
Application 11/593,025

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As we do not sustain the rejections of independent claims 1, 15, 18,
and 22, we also do not sustain the rejections of dependent claims 2-14, 16,
17, and 19.

DECISION
The decision of the Examiner to reject claims 1-19 and 22 is
REVERSED.
REVERSED

mls