Ex Parte ROFF

Board of Patent Appeals and Interferences

Jul 21, 2003

09132285 (B.P.A.I. Jul. 21, 2003)

The opinion in support of the decision being entered today was not written for publication and is not binding
precedent of the Board.
Paper No. 18
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte ROGER R. ROFF
____________
Appeal No. 2001-1517
Application No. 09/132,285
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ON BRIEF
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Before RUGGIERO, DIXON, and SAADAT, Administrative Patent Judges.
DIXON, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal under 35 USC § 134 from the examiner's final
rejection of claims 4-12 and 19-34, which are all of the claims pending in this
application.
We REVERSE.
Appeal No. 2001-1517
Application No. 09/132,285
2
Appellant's invention relates to a system and method for reinforcing regular
chiropractic treatment. An understanding of the invention can be derived from a reading
of exemplary claim 4, which is reproduced below.
4. A method for reinforcing regular chiropractic care with respect to a
patient, said method comprising the steps of:
entering data regarding a patient into a memory of a computer;
setting up a series of appointments for said patient for chiropractic
care, said series of appointments being recorded in a database
maintained in said memory of said computer;
authorizing the issuance of a policy of life insurance on the life of
said patient from an insurance company;
automatically reminding said patient of each appointment in
advance of said each appointment in said series of appointments;
verifying said patient has kept said each appointment; and
automatically making premium payments for said policy of life
insurance on said patient to said life insurance company so long as said
patient keeps said each appointment.
The prior art of record relied upon by the examiner in rejecting the appealed
claims is as follows:
Cummings, Jr. 5,301,105 Apr. 5, 1994
Landry 5,649,117 Jul. 15, 1997
Victoria Sonshine Pasher, “Utah Agents Spill Beans on Bank Ad,” National Underwriter
Property & Casualty, May 6, 1996, p. 9 (Bank Ad).
Erin G. Stone, MD, “Medical Office Software,” JAMA, March 23/30, 1990, Vol. 263, No.
12, pp. 1717-1718 (JAMA).
Appeal No. 2001-1517
Application No. 09/132,285
1 We note that the examiner has incorporated the rejection from the final rejection, dated Dec.
20, 1999, but we do not find a statement of each of the grounds of rejection therein. The final rejection
incorporates the statement of the rejection from the first office action, Paper No. 3, mailed Sep. 22, 1999.
This is improper under MPEP 1208, SECTION “ANSWER”, SUBPARAGRAPH(A). Additionally, the final
rejection merely states a comparison of the claims to previous combinations of claims that were previously
rejected in the first office action. Rather than remand the application for a proper statement of the grounds
of rejection, we will refer the first office action and the references by the examiner.
3
Kavanagh, Kevin T., MD, MS, “PROMOTION OF PATIENT APPOINTMENT
COMPLIANCE IN INDIGENT PEDIATRIC MEDICAL CARE BY USE OF A
MICROCOMPUTER”, Annals of Otology, Rhinology, & Laryngology, pp. 755-760, 1989
(Kavanagh).
Dini, Eugene F. et al., “EFFECTIVENESS OF COMPUTER-GENERATED TELEPHONE
MESSAGES IN INCREASING CLINIC VISITS,” ARCH PEDIATR ADOLESC MED. Vol.
149, pp 902-905, Aug. 1995.
Claims 4-7, 9, 11-13, 19-21, 23, 25-30, 32, and 34 stand rejected under 35
U.S.C. § 103 as being unpatentable over Kavanagh in view of JAMA, Cummings and
Bank Ad. Claims 8, 22, and 31 stand rejected under 35 U.S.C. § 103 as being
unpatentable over Kavanagh in view of JAMA, Cummings and Bank Ad in view of Dini.
Claims 10, 24, and 33 stand rejected under 35 U.S.C. § 103 as being unpatentable over
Kavanagh in view of JAMA, Cummings and Bank Ad in view of Landry.
Rather than reiterate the conflicting viewpoints advanced by the examiner and
appellant regarding the above-noted rejections, we make reference to the examiner's
answer1 (Paper No. 15, mailed Sep. 27, 2000) for the examiner's reasoning in support
of the rejections, and to appellant's brief (Paper No. 14, filed Sep. 5, 2000) and reply
brief (Paper No. 16, filed Oct. 12, 2000) for appellant's arguments thereagainst.
OPINION
Appeal No. 2001-1517
Application No. 09/132,285
2 While the lotteries statement is referenced with an endnote citation, the examiner has
not relied upon this teaching cited in the endnote.
4
In reaching our decision in this appeal, we have given careful consideration to
appellant's specification and claims, to the applied prior art references, and to the
respective positions articulated by appellant and the examiner. As a consequence of
our review, we make the determinations which follow.
Appellant argues that the examiner has not set forth a prima facie case of
obviousness and specifically, that the examiner has not provided any objective teaching
in the prior art for combining these references. (See brief at pages 6-7.) We agree with
appellant. The examiner maintains at pages 4-7 of the first office action that Kavanagh
does not teach or suggest a number facets of steps of the claimed invention, but that it
would have been obvious to one of ordinary skill in the art to have modified the system
of Kavanagh to be used for chiropractic care, using a series of appointments, issuing a
life insurance policy and automatic insurance payments.
While we agree with the examiner that the system of Kavanagh may be extended
to chiropractic care and for a series of appointments, we do not find any teaching or
suggestion by Bank Ad to use a life insurance policy and a series of payments for the
life insurance policy over a span of time/appointments. From our review of Kavanagh,
we find only the one statement in the abstract concerning the implementing of rewards
and at page 756 for eligibility to participate in lotteries.2
Appeal No. 2001-1517
Application No. 09/132,285
5
From our review of the limited discussion in Kavanagh regarding the use of
rewards to improve patient appointment compliance, we find no teaching, suggestion or
convincing line of reasoning why it would have been obvious to one of ordinary skill in
the art to look to the teachings of Bank Ad for a suggestion to use life insurance as a
reward for patients to improve medical appointment attendance.
Additionally, from our review of the teachings of Bank Ad, we find that Bank Ad
merely teaches the use of a free year of homeowner’s insurance for a one time
refinancing of a home loan. While the examiner maintains that Bank Ad teaches the
use of free insurance as an incentive to induce customers to use a bank’s services at
the time of the invention, we find that Bank Ad generally teaches the use of free
mortgage insurance and mentions one use of free life insurance from credit unions for
its members. We are unsure whether if the examiner references the free mortgage
insurance from Zions Bancorp, which we find is not insurance on an individual’s life, but
on the home to protect the bank’s interest in the home, or the life insurance from the
credit union and mistakenly refers to the credit union as a bank. (See final rejection at
pages 4-5.) Either way, we do not find that the examiner has provided a convincing line
of reasoning for providing an extended payment for life insurance as an inducement for
patients to attend their scheduled appointments for chiropractic care. Appellant argues
that the teaching of payment of a first year of mortgage insurance as taught by Bank Ad
is not a motivation or suggestion to provide life insurance as an inducement to attend
Appeal No. 2001-1517
Application No. 09/132,285
6
scheduled medical appointments. (See brief at pages 7-8.) We agree with appellant
and find that the examiner has not provided any convincing line of reasoning beyond
mere conclusion and supposition based upon improper hindsight. Therefore, we cannot
sustain the examiner’s rejection of independent claim 4 and its dependent claims.
Similarly, we cannot sustain the rejection of independent claims 19, 28 and their
dependent claims.
CONCLUSION
To summarize, the decision of the examiner to reject claims 4-12 and 19-34
under 35 U.S.C. § 103 is reversed.
Appeal No. 2001-1517
Application No. 09/132,285
7
REVERSED
JOSEPH F. RUGGIERO )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
JOSEPH L. DIXON ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
MAHSHID D. SAADAT )
Administrative Patent Judge )
Appeal No. 2001-1517
Application No. 09/132,285
8
MICHAEL A. MANN
NEXSEN PRUET JACOBS AND POLLARD
PO DRWR 2426
COLUMBIA, SC 29202