Ex Parte Uchikubo

Board of Patent Appeals and Interferences

Jul 27, 2010

10230487 (B.P.A.I. Jul. 27, 2010)

1
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte AKINOBU UCHIKUBO
____________

Appeal 2009-013687
Application 10/230,487
Technology Center 3600
____________

Before MURRIEL E. CRAWFORD, BIBHU R. MOHANTY, and
STEPHEN C. SIU Administrative Patent Judges.

MOHANTY, Administrative Patent Judge.

DECISION ON APPEAL1

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.

Appeal 2009-013687
Application 10/230,487

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STATEMENT OF THE CASE
The Appellant seeks our review under 35 U.S.C. § 134 (2002) of
the final rejection of claims 1-20 which are all the claims pending in the
application. We have jurisdiction under 35 U.S.C. § 6(b) (2002). Oral
arguments were presented on July 15, 2010.

SUMMARY OF THE DECISION
We AFFIRM.

THE INVENTION
The Appellant’s claimed invention is directed to a medical
information system having functions for generating clinical records where
medical treatment information is recorded (Spec. 1). Claim 1, reproduced
below, is representative of the subject matter of appeal.
1. A medical information system comprising:
a server for registering patient identification information for
identifying a patient, and accumulating personal information of the
patient; and
a controller which is connected to a plurality of medical devices
for surgery, for communicating with said server, and for creating
clinical record information based upon medical information from said
plurality of medical devices and said personal information from said
server.

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THE REJECTIONS
The Examiner relies upon the following as evidence in support of the
rejections:
Ballantyne US 5,867,821 Feb. 2, 1999
Wang US 6,911,916 B1 Jun. 28, 2005

The following rejections are before us for review:
1. Claims 1-7 and 9-20 are rejected under 35 U.S.C. § 102(b) as
anticipated by Wang.
2. Claim 8 is rejected under 35 U.S.C. § 103(a) as unpatentable
over Wang and Ballantyne.

THE ISSUES
At issue is whether the Appellant has shown that the Examiner erred
in making the aforementioned rejections.
This issue turns on whether Wang discloses the specific limitations
which have been argued for each respective claim in the Appeal Brief, or if
the argued limitations would be inherent in Wang.

FINDINGS OF FACT
We find the following enumerated findings of fact (FF) are supported
at least by a preponderance of the evidence:2

2 See Ethicon, Inc. v. Quigg, 849 F.2d 1422, 1427 (Fed. Cir. 1988)
(explaining the general evidentiary standard for proceedings before the
Patent Office).
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FF1. Wang has disclosed a method for retrieving, accessing, and storing
medical data relating to a patient during a medical procedure. In an
operating room control system a controller receives inputs and transmits a
command to a server located outside the operating room to receive medical
data from the server to a display device (Abstract).
FF2. Wang at Fig. 6 shows a master controller 110 connected to operating
room devices 114, a display 128, a slave device 132, a network 136, and
remote servers 140.
FF3. Wang at Col. 9:8-14 discloses that the system allows the operator
to control operating room devices, retrieve, view, and manipulate patient
records and store information regarding the patient (notes, x-rays, pictures)
and conduct remote surgery.
FF4. Wang at Col. 9:23-40 discloses that the operating room devices may
include devices such as a robotic arm, electrocautery device, camera, and
the like. The system may use speech recognition for receiving audible
commands.
FF5. Wang discloses that a slave device 132 is coupled to the network 136
which is connected to servers 140. The servers 140 may include databases
including MR, CR, x-ray, still-frame, moving frame, ultrasound images and
patient records. Col. 10:6-28).
FF6. Wang at Col. 10:33-51 discloses that the master controller 110 may be
used to for audible commands including “store.” A surgeon may store
images or text that can be uploaded to servers 140.

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PRINCIPLES OF LAW
Principles of Law Relating to Anticipation
“A claim is anticipated only if each and every element as set forth in
the claim is found, either expressly or inherently described, in a single prior
art reference.” Verdegaal Bros. v. Union Oil Co. of California, 814 F.2d
628, 631 (Fed. Cir. 1987).

Principles of Law Relating to Obviousness
“Section 103 forbids issuance of a patent when ‘the differences
between the subject matter sought to be patented and the prior art are such
that the subject matter as a whole would have been obvious at the time the
invention was made to a person having ordinary skill in the art to which said
subject matter pertains.’” KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 406
(2007). The question of obviousness is resolved on the basis of underlying
factual determinations including (1) the scope and content of the prior art,
(2) any differences between the claimed subject matter and the prior art,
(3) the level of skill in the art, and (4) where in evidence, so-called
secondary considerations. Graham v. John Deere Co., 383 U.S. 1, 17-18
(1966). See also KSR, 550 U.S. at 407 (“While the sequence of these
questions might be reordered in any particular case, the [Graham] factors
continue to define the inquiry that controls.”) In KSR, the Supreme Court
emphasized “the need for caution in granting a patent based on the
combination of elements found in the prior art” id. at 415-16.

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ANALYSIS
Claims 1-4
The Appellant argues that the rejection of claim 1 is improper because
Wang fails to disclose “creating or generating clinical record information
based on patient or personal information” (Br. 9). The Reply Brief presents
a similar argument at page 2 as well.
In contrast the Examiner has determined that Wang discloses the cited
claims limitations by creating a clinical record (Ans. 3, 14-15).
We agree with the Examiner. Claim 1 requires in part “creating
clinical record information based upon medical information from said
plurality of medical devices and said personal information.” Wang has
disclosed that the servers 140 store patient records or information (FF5).
Wang has disclosed that the controller 110 can control operating devices
such as a camera (FF4) (creating clinical record information from medical
devices). Wang has also disclosed the operator can retrieve, manipulate, and
store patient records and store information regarding the patient (notes, x-
rays, pictures) and conduct remote surgery (FF3) which would create records
from “personal information.” For these reasons the rejection of claim 1, and
dependent claims 2-4 which have not been argued separately, is sustained.

Claims 5-14
The Appellant argues that the rejection of claim 5 is improper because
Wang fails to disclose that the controller “reads out at least one of said
patient diagnosis information and ….medical images….and stores the
information…..in a correlated manner” (Br. 10). With regard to claim 14 the
Appellant argues that Wang fails to disclose a first controller that controls
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the medical devices and monitors the operation status of medical devices
(Br. 11).
In contrast the Examiner has determined that Wang discloses the cited
claims limitations (Ans. 5-6, 15-17).
We agree with the Examiner. Wang has disclosed that the system
allows the operator to view and store information regarding the patient
(notes, x-rays, pictures) (FF3) meeting the cited claim limitation. For these
reasons, the rejection of claim 5 is sustained. The Appellant provides
essentially the same argument for claim 10 (Br. 11) and the rejection of
claim 10 is sustained for these same reasons. Claims 6-9 and 11-13 have not
been argued separately and the rejection of these claims is sustained for
these same reasons as well.
With regard to claim 14 the claim requires that the first controller is
“connected to a plurality of medical devices….and monitors the operation
status of said….medical devices, as well as controlling these devices.”
Wang has disclosed that the system can be used to conduct remote surgery
(FF3) and is connected to robotic arms, a electrocautery device, and a
camera (FF4) which shows control and monitoring of these medical devices
meeting the cited claim limitation. For this reason, the rejection of claim 14
is sustained.
Claim 15
The Appellant argues that the rejection of claim 15 is improper
because Wang fails to disclose a display generating unit “generating display
position” information or “generating clinical record information based on
display position information” (Br. 12).
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In contrast the Examiner has determined that Wang discloses the cited
claims limitations (Ans. 7, 18-19).
We agree with the Examiner. The Appellant has failed to specify
what the claimed term “generating display position” information refers to
(see Br. 12). The Appellant states that support is provided for this term in
the Specification at 18:19:3 (Br. 4-5) however this portion of the
Specification provides no support for the term “generating display position
information.” Given the broadest reasonable interpretation, the term could
simply be construed as generating information on the position for display to
take place. As Wilkes has shown that the master controller 110 is connected
to the display 128, this cited claim limitation is considered shown by Wilkes
and the rejection of claim 15 is sustained.

Claims 16-20
The Appellant argues that the rejection of claim 18 is improper
because Wang fails to disclose a “processor requiring transmission of
clinical record information and integrating the clinical record information
and said in-surgery information as recited in claims 16-18” (Br. 12). With
regard to claim 19 the Appellant argues that Wang does not disclose “a
controller that accesses…a server….and associates a plurality of pieces of
medical information with each other to create a single piece of electronic
clinical record information” (Br. 13).
In contrast the Examiner has determined that Wang discloses the cited
claims limitations (Ans. 8, 11, 19-21).
We agree with the Examiner. Wang has disclosed that the controller
retrieves patient records (FF3) which would require transmission of such
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record information from the servers 140 which store such information (FF5).
Wang has disclosed that the system allows the operator to control operating
room devices, retrieve, view, and manipulate patient records and store
information regarding the patient (notes, x-rays, pictures) and conduct
remote surgery (FF3). Wang has also disclosed that the servers 140 may
include ultrasound images and patient records (FF5) and that a surgeon may
store images or text that can be uploaded to servers 140 (FF6). Since
Wang’s system retrieves the patient records (clinical record information) and
also can provide images from the surgeon (in-surgery information) it is
considered inherent that this would be integrated to create a new piece of
clinical record information in order to label the images for example. Wang
has disclosed that the system may include ultrasound images (FF5) in which
the images for example are frequently labeled with the patient records in
order to identify the images. For these reasons, the rejection of claims 16
and 19-20 is sustained. The Appellant has not argued claims 17-18
separately and the rejection of this claim is sustained for these same reasons.

CONCLUSIONS OF LAW
We conclude that Appellant has shown that the Examiner erred in
rejecting claims 1-7 and 9-20 under 35 U.S.C. § 102(b) as anticipated by
Wang.
We conclude that Appellant has shown that the Examiner erred in
rejecting claim 8 under 35 U.S.C. § 103(a) as unpatentable over Wang and
Ballantyne.

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DECISION
The Examiner’s rejection of claims 1-20 is sustained.

AFFIRMED
JRG

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