Ex Parte Spertus

Patent Trial and Appeal Board

Sep 23, 2013

10165855 (P.T.A.B. Sep. 23, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
________________

Ex parte JOHN SPERTUS
________________

Appeal 2011-011083
Application 10/165,855
Technology Center 3600
________________

Before MURRIEL E. CRAWFORD, MEREDITH C. PETRAVICK, and
JAMES A. TARTAL, Administrative Patent Judges.

TARTAL, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2011-011083
Application 10/165,855

2

STATEMENT OF THE CASE1
Appellant seeks our review under 35 U.S.C. § 134 of the Examiner’s
decision rejecting claims 63-82.2 We have jurisdiction over the appeal
pursuant to 35 U.S.C. § 6(b).
We REVERSE and enter a NEW GROUND OF REJECTION under
37 C.F.R. § 41.50(b).
Appellant’s claimed invention relates to the fields of clinical treatment
plan assessment and selection, computer software programs, and cardiac
patient care. Spec. 2, ll. 3-11.
Claim 63, reproduced below, is illustrative of the subject matter on
appeal:
63. A program stored in computer readable memory, that
when executed by a computer system, is configured to:
access, using the computer system, a database to retrieve
information regarding a first individual patient;
identify, using the computer system, a disease state of the
first individual patient using information accessed from the
database;
assess, using the computer system, health status
parameters of the first individual patient;

1 Our decision will make reference to Appellant’s Appeal Brief (“App. Br.,”
filed Dec. 21, 2010) and Reply Brief (“Reply Br.,” filed Jun. 15, 2011), and
the Examiner’s Answer (“Ans.,” mailed Apr. 15, 2011).
2 In summarizing the status of claims, Appellant states: “Claims 15-21, 24-
26, and 62-89 are now pending. Claims 15-21, 24-26 are withdrawn
from consideration. Claims 1-14, 22, 23, 27-62 are cancelled. The pending
claims are listed as an appendix.” App. Br. 3. Appellant’s Appendix to the
Appeal Brief does not contain claims 83-89, nor have we found any
indication that claims 83-89 were ever pending. Accordingly, we
understand Appellant’s statement to be a typographical error and, as
indicated on Appellant’s Notice of Appeal, that claims 83-89 are not at issue
in this appeal.
Appeal 2011-011083
Application 10/165,855

3
identify a projected health outcome corresponding to the
first individual patient based upon a preference of the first
individual patient and on a goal of the first individual patient;
access, using the computer system, the database to
retrieve information regarding health status parameters from a
population having similar demographics to the first individual
patient to provide a library of projected health outcomes for a
plurality of treatments for the disease state of the first
individual patient; and
at least partly based on the first individual patient’s goal
and preference, use the computer system to assist the patient
and/or provider in selecting preferred outcomes from the library
of projected health outcomes.
The Examiner relies upon the following evidence:
Dormond US 4,839,822 Jun. 13, 1989
Maggioncalda US 6,012,044 Jan. 4, 2000
Claims 63-82 stand rejected under 35 U.S.C. § 102(b) as being
anticipated by Maggioncalda.
Claims 63-82 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Dormond.
FINDINGS OF FACT
We find that the findings of fact which appear in the Analysis below
are supported by at least a preponderance of the evidence. Ethicon, Inc. v.
Quigg, 849 F.2d 1422, 1427 (Fed. Cir. 1988) (explaining the general
evidentiary standard for proceedings before the Office).

Appeal 2011-011083
Application 10/165,855

4
ANALYSIS
Anticipation based on Maggioncalda
Claims 63-82
Independent claim 63 is directed to a program stored in computer
readable memory. The Examiner maintains that claim 63 recites instructions
that are “not functionally related from the medium,” and therefore does not
distinguish the claim over the cited prior art. See Ans. 4. The Examiner
then relies on Maggioncalda, which discloses a user interface for a financial
advisory system, as an anticipatory reference on the grounds that it
“discloses a medium storing instructions for use by a processor of a
computer.” Id. Contrary to the Examiner’s determination, we agree with
Appellant that there is a functional interrelationship among the data referred
to in claim 63 and the computing processes performed when utilizing that
data. For example, claim 63 requires identifying a patient’s projected health
outcome “based upon a preference of the first individual patient and on a
goal of the first individual patient,” and then using the computer system to
assist the patient and/or provider in selecting preferred outcomes “at least
partly based on the first individual patient’s goal and preference.” Thus,
data concerning a patient’s preference and goal is functionally related to
selecting preferred outcomes, and therefore provides a limitation of the
claim that is not disclosed by Maggioncalda and that cannot be disregarded
as superfluous. Accordingly, we conclude that Appellant has overcome the
Examiner’s rejection of claims 63-82 under 35 U.S.C. § 102(b) as being
anticipated by Maggioncalda.

Appeal 2011-011083
Application 10/165,855

5
Obviousness based on Dormond
Claims 63-82
The Examiner maintains that Dormond (col. 7, ll. 5-25) discloses
“identify[ing] a projected health outcome corresponding to the first
individual patient based upon a preference of the first individual patient and
on a goal of the first individual patient.” Ans. 5. The Examiner further
explains that:
Attention is directed to Dormond, where, a projected health
outcome (ability to tolerate surgery, to heal properly, etc) is
identified (col 7 ln 5-15) which corresponds to a patient’s
preference and goal (“goals” at col 7 ln 65) also col 8 ln 1-15
where the user chooses a treatment based, inter alia, on
statistical analysis of likely complications of each treatment
depending on patient characteristics.
Ans. 10. The Examiner has not shown how portions of the references cited
disclose the claimed feature. Dormond (col. 7, ll. 5-25) discusses obtaining
information from a patient about treatment concerns. Dormond (col. 7, l.
63-66) states that “[w]hen the inference engine has gathered all the
necessary information, it completes its tasks by achieving certain ‘goals’,
and then returns temporary control to the application program.” Dormond
(col. 8, ll. 1-15) discusses treatments suggested by the inference engine.
While the Examiner has shown that Dormond uses the word “goals,” that is
not enough where the claim recites “a goal of the first individual patient,”
and Dormond uses “goals” in reference to tasks completed by an inference
engine. Accordingly, we conclude that Appellant has overcome the
Examiner’s rejection of claims 63-82 under 35 U.S.C. § 103(a) as being
unpatentable over Dormond.
Appeal 2011-011083
Application 10/165,855

6
NEW GROUND OF REJECTION UNDER 37 C.F.R. § 41.50(b)
Pursuant to our authority under 37 C.F.R. § 41.50(b), we enter a new
ground of rejection under 35 U.S.C. § 101 for claims 63-82. The only
independent claim, claim 63, recites “[a] program stored in computer
readable memory.” Claims 63-82 are rejected under 35 U.S.C. § 101 as
being directed to non-statutory subject matter (e.g., an intangible and/or
transitory computer readable medium).
Claims 63-82 are drawn to non-statutory subject matter because the
broadest reasonable interpretation, in light of the Specification (Spec. 7, ll.
20-26), is that the program stored in computer readable memory could be
embodied as transmission media that are transitory and/or intangible. See
Subject Matter Eligibility of Computer Readable Media, 1351 Off. Gaz. Pat.
Office 212 (Feb. 23, 2010). When the broadest reasonable interpretation of
a claim covers a signal per se, the claim must be rejected under 35 U.S.C.
§ 101 as covering non-statutory subject matter. See In re Nuijten, 500 F.3d
1346, 1356-57 (Fed. Cir. 2007) (transitory embodiments are not directed to
statutory subject matter); see also Ex parte Mewherter, Appeal No. 2012-
007692 (PTAB May 08, 2013) (precedential) (holding a claim must be
rejected if it covers transitory media). In view of the foregoing, claims 63-
82 encompass non-statutory subject matter, and are therefore ineligible
under § 101.
DECISION
We REVERSE the decision of the Examiner to reject claims 63-82
under 35 U.S.C. § 102(b) as being anticipated by Maggioncalda and
under 35 U.S.C. § 103(a) as being unpatentable over Dormond.
Appeal 2011-011083
Application 10/165,855

7

We have entered a NEW GROUND OF REJECTION of claims 63-82
pursuant to 37 C.F.R. § 41.50(b). 37 C.F.R. § 41.50(b) provides “[a] new
ground of rejection pursuant to this paragraph shall not be considered final
for judicial review.” 37 C.F.R. § 41.50(b) also provides that the 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
37 C.F.R. § 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). See 37 C.F.R.
§ 1.136(a)(1)(iv).
REVERSED; 37 C.F.R. § 41.50(b)

mls