Ex Parte Ritter et al

Board of Patent Appeals and Interferences

May 4, 2010

09951491 (B.P.A.I. May. 4, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte JOHN DAVID RITTER, PETER JULIUS FREYMARK,
JOSEPH HOWARD GATEWOOD, MICHAEL JED GINSBURG,
JOHN ROBERT PREVIS, EVAN INDIANER, and
CHRISTOPHER M. UMBEL
____________

Appeal 2010-006347
Application 09/951,491
Technology Center 2100
____________

Decided: May 4, 2010
____________

Before JOSEPH L. DIXON, LANCE LEONARD BARRY, and
CAROLYN D. THOMAS1, Administrative Patent Judges.

DIXON, Administrative Patent Judge.

DECISION ON APPEAL

1 Judge Blankenship was at the hearing, but is now unavailable. Cf. In re
Bose Corp., 772 F.2d 866, 869 (Fed. Cir. 1985)

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I. STATEMENT OF THE CASE
The Patent Examiner rejected claims 1-46. The Appellants appeal
therefrom under 35 U.S.C. § 134(a). We have jurisdiction under 35 U.S.C.
§ 6(b). Appellants indicated in the originally filed Brief that only the
rejections of claims 10-22, 35, and 41-46 with respect to anticipation are
appealed and the rejection of dependent claims 9 and 32 with respect to
obviousness are appealed. (App. Br. 2 and 7). Therefore, we remanded the
application on June 18, 2009 for Appellants to cancel the non-appealed
claims and rewrite the appealed claims in independent form. Appellants
filed the corrected claims on January 15, 2010 and were indicated as entered
by the Examiner in an Advisory Action, mailed April 9, 2010. We will
therefore address the merits of Appellants’ contentions from the original
Brief, Reply Brief, and Oral Hearing in light of the claims as filed January
15, 2010. Claims 1-8, 23-31, 33, 34, and 36-40, have been canceled.

A. INVENTION
The invention at issue on appeal relates to a system and method
electronic charting system. (Spec. 1.)

B. ILLUSTRATIVE CLAIM
Claims 9 and 44, which further illustrate the invention, follows.

9. A method for recording and retrieving information in electronic
form comprising:

defining a plurality of types of information to be recorded;
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defining a tag for each type of information that tells what kind
of meaning to attach to the information;

defining association members;
collecting the information in a manner such that each type of
information is assigned an associated tag selected from among the
defined tags and also assigned at least one association member;

storing the information in a manner such that each type of
information collected is associated with the assigned tags and is
assigned at least one association member;

issuing access codes to a plurality of users, each access code
associated with at least some of the defined tags; and

providing access for a particular user to only that information
having tags associated with the access code assigned to that user

wherein at least some of the information is collected through
the use of speech recognition software,

44. An improved method of storing patient information in an
electronic patient chart in which text data entered by a user is entered
into an electronic patient chart wherein the improvement comprises:

storing a set of custom patient information entries in a database;

associating each custom patient information entry with at least
one user; and

permitting each user associated with a custom patient
information entry to select that entry and associate that entry with a
patient.

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C. REJECTIONS
Claims 1-8, 10-31, and 33-46 stand rejected under 35 U.S.C. § 102(e)
as being anticipated by Bleicher (US 6,820,235 B1).
Claims 9 and 32 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Bleicher (US 6,820,235 B1) in view of Brown (US
2004/0199409 A1).

II. ISSUE
Has the Examiner erred in the reasoned conclusions of anticipation
and obviousness of the claimed invention?

III. ANALYSIS
We will address Appellants' arguments in the same order they appear
in the Brief.
OBVIOUSNESS
With respect to independent claim 9 and 32, we select claim 9 as the
representative claim for this grouping. See 37 C.F.R. § 41.37(c)(1)(vii).
Appellants argue at page 10 of the Brief that "[o]nly the numbers or other
limited words are recognized" in Brown and this is "quite different from the
system and method claimed by applicants in which patient information is
collected through speech recognition software." Appellants further argue
that the "amount of information collected on a patient chart is vastly greater
than the collection of limited responses disclosed by Brown, the speech
recognition software disclosed by Brown could not be used in Applicants'
system." (App. Br. 10; Reply Br. 1-2). We find Appellants’ argument is not
commensurate in scope with the express language of independent claim 9.
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We find independent claim 9 is limited to a generic method of recording and
retrieving information in electronic form and does not recite a specific
context with regards to a patient chart and furthermore, independent claim 9
merely sets forth "at least some of the information." (emphasis added). We
find that Brown teaches and fairly suggests "some information" would be
input with the use of speech recognition software. Since Appellants have
not argued the merits of limitations of original independent claim 1, we take
those limitations to be admitted.
Additionally, at the oral hearing, Appellants' representative, Mr.
Alstadt, when queried about a combination of the teachings of Bleicher in
combination with the teachings at page 18 of Brown, stated "[w]ell, if we're
looking at Claim[s] 9 and 23, I think you're right. I'll concede the point that .
. . the claim is not limited to specific broader language and so forth, but with
respect to the other claims on appeal . . . .” (See Oral Hr’g Tr. 4).
Appellants, therefore, concede that Brown teaches and fairly suggests that
“at least some of the information is collected through the use of speech
recognition software” as required by independent claim 9. Therefore, we
will sustain the rejection of the independent claim 9 under obviousness and
independent claim 32 grouped therewith.
In the Reply Brief at page 2, Appellants include a separate heading for
dependent claim 32 (now independent claim 32) which was previously
grouped with dependent claim 9 in the principal Brief. Therefore,
Appellants have waived separate arguments to independent claim 32.
Therefore, we will not consider the arguments not previously presented. See
37 C.F.R. § 41.37 (c)(1)(vii). See also In re McDaniel, 293 F.3d 1379, 1383
(Fed. Cir. 2002) (“If the brief fails to meet either requirement [of 37 C.F.R.
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§ 1.192(c)(7)], the Board is free to select a single claim from each group of
claims subject to a common ground of rejection as representative of all
claims in that group and to decide the appeal of that rejection based solely
on the selected representative claim.”). "Considering an argument advanced
for the first time in a reply brief . . . is not only unfair to an appellee . . . but
also entails the risk of an improvident or ill-advised opinion on the legal
issues tendered." McBride v. Merrell Dow and Pharms., Inc., 800 F.2d
1208, 1211 (D.C. Cir. 1986) (internal citations omitted).

ANTICIPATION
With respect to independent claim 10 and dependent claims 11 and
12, we select claim 10 as the representative claim for this group and claims
11 and 12 will be grouped therewith. Claims 10-12 are rejected under
anticipation over Bleicher alone, and Appellants appear to argue the merits
of dependent claim of 11 with regards to the caregiver and patient chart in a
comparison to the teachings of Bleicher and then conclude that the
limitations of independent claim 10 are not taught or suggested by Bleicher.
(App. Br. 10-11; Reply Br 2-3). We find Appellants' arguments to be
unpersuasive of error with respect to independent claim 10. Therefore, we
will sustain the rejection of independent claim 10 and group claims 11 and
12.
With respect to independent claims 13 and claims 14-19, we select
independent claim 13 as the representative claim for this group. Appellants
argue that Bleicher does not teach a qualification standard comprising a list
of tagged information required to be associated with a single association
member and Bleicher relies upon a subsequent review of data by a different
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person to determine if the date is complete and correct. (App. Br. 12; Reply
Br. 3). Appellants argue that Appellants’ system is designed to avoid this
later review by identifying errors and inconsistencies at the time the data is
entered. (App. Br. 12). We find Appellants' argument is not commensurate
in scope with the express language of independent claim 13 wherein
Appellants have not identified any express claim limitations which require
the at least one qualification standard to be performed electronically or at the
time of the initial input of the data. Therefore, Appellants have not
identified any error in the Examiner's reliance upon the clinical data
manager's reviews to insure the data is complete. (Ans. 7). Therefore,
Appellants have not shown error in the Examiner's initial showing of
anticipation of independent claim 13, and we will sustain the rejection
thereof. Claims 14-19 are grouped with representative independent claim
13, and we similarly sustain the rejection thereof. See 37 C.F.R. §
41.37(c)(1)(vii) for proper grouping of claims under a single heading.
Since claims 18 and 19 are not included under a separate heading,
these claims should stand or fall with representative claim 13.

Additionally, with respect to independent claim 18, we note that
Bleicher at column 1 discloses "approval from a regulatory authority, such
as the FDA in the US, must be obtained before it can be made available
through prescription." (ll. 18-20.) (Emphasis added.) Since the FDA is a
Government agency, we find that the FDA is a third-party which would
establish at least one standard corresponding to at least one requirement in
the information to be collected which would be in the check performed by
the clinical data manager reviews. Therefore, we find Appellants' argument
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(App. Br. 12-13; Reply Br. 4) to be unpersuasive of error in the Examiner's
showing of anticipation of independent claim 18, and dependent claimed 19
is grouped therewith.
With respect to independent claim 20 and dependent claim 21, we
select independent claim 20 as the representative claim for this grouping.
With respect to independent claim 20, Appellants argue that all the fields in
each form of Bleicher are presented simultaneously and there is no teaching
or suggestion of displaying and presenting fields in a sequential manner.
(App. Br. 13; Reply Br. 4). We disagree with Appellants and find that
presentation of the various fields as shown in figures 4(A) and 4(B) with the
scroll bar 553 evidences a sequential manner in the presentation of the data
to a user which requires the user to scroll on the singular form for at least
some of the types of information. Since the claim language does not detail
what the express sequential manner is required to be, we find the teachings
of Bleicher to teach dependent claim 20. Therefore, we will sustain the
rejection of independent claim 20 and dependent claim 21 is grouped
therewith.
With respect to independent claim 22, we agree with the Examiner
that the data would be stored by the user so that it is retained in memory.
(Ans. 8). Appellants argue at page 13 of the Brief that an example of this
claimed feature is a patient chart signed by a user which cannot be
subsequently modified. Appellants' argument is not commensurate in scope
with the express language of independent claim 22 and is therefore not
persuasive of error in the Examiner's initial showing of anticipation.
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With respect to independent claim 35, we agree with Appellants'
arguments as set forth on page 14 of the Brief and page 5 of the Reply Brief,
and find that Bleicher does not anticipate independent claim 35.
With respect to independent claim 41, the Examiner maintains that the
program of Bleicher enables a second user to enter information without
requiring the first user to verify what the first user has entered. (Ans. 22).
We agree with the Examiner. While Bleicher discourages inadvertent use of
the system by another person, Bleicher would permit another user to enter
information relating to the same association member without requiring the
first user to verify the information entered by the first user. Therefore,
Appellants have not shown error in the Examiner's initial showing of
anticipation, and we will sustain the rejection of independent claim 41.
With respect to independent claim 42, we agree with Appellants'
arguments as set forth on pages 15-16 of the Brief. We find the Examiner's
stated rejection at pages 14-16 of the Answer to be based upon speculation
and conjecture. We cannot sustain a rejection based upon anticipation with
the noted deficiencies. Dependent claim 43 contains the same limitations as
independent claim 42. Therefore, we cannot sustain the rejection of this
claim for the same reasons.
With respect to independent claim 44 and dependent claims 45 and
46, Appellants argue that the method has three steps, storing a set of custom
patient entries in a database, associating those custom entries with at least
one user, and permitting that user to select and associate such an entry with a
patient. Appellants rely upon the previous arguments that Bleicher does not
teach or suggest creating custom patient information entries that are
associated with a user/caregiver. (App. Br. 16). We disagree with
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Appellants and find that independent claim 44 does not set forth both a
generic or first set of patient information entries and creation of a second set
or custom patient information entries. We find independent claim 44 to be
broad enough to read on the original design and entry of patient information
entries to be custom to that specific study which is being performed by
Bleicher. Therefore, we find Appellants' arguments to be unpersuasive of
error in the Examiner's finding of anticipation by Bleicher.

V. CONCLUSION
For the aforementioned reasons, Appellants have shown error in the
Examiner's initial showing of anticipation of claims 35, 42, and 43, but
Appellants have not shown error in the Examiner's initial showing of
anticipation and obviousness of the remainder of the claims.

VI. ORDER
We affirm the anticipation rejection of claims 10-22, 41, and 44-46
reverse the anticipation rejection of claims 35, 42 and 43 and affirm the
obviousness rejections of claims 9 and 32.

AFFIRMED-IN-PART
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