Ex Parte UchikuboDownload PDFBoard of Patent Appeals and InterferencesApr 25, 201110224604 (B.P.A.I. Apr. 25, 2011) Copy Citation UNITED STATES PATENT AND TRADEMARKOFFICE UNITED STATES DEPARTMENT OF COMMERCE United States Patent and Trademark Office Address: COMMISSIONER FOR PATENTS P.O. Box 1450 Alexandria, Virginia 22313-1450 www.uspto.gov APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO. 10/224,604 08/20/2002 Akinobu Uchikubo 15781 1550 7590 04/26/2011 Paul J. Esatto, Jr. Scully, Scott, Murphy & Presser 400 Garden City Plaza Garden City, NY 11530 EXAMINER SEREBOFF, NEAL ART UNIT PAPER NUMBER 3626 MAIL DATE DELIVERY MODE 04/26/2011 PAPER Please find below and/or attached an Office communication concerning this application or proceeding. The time period for reply, if any, is set in the attached communication. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES ____________________ Ex parte AKINOBU UCHIKUBO ____________________ Appeal 2009-008884 Application 10/224,604 Technology Center 3600 ____________________ Before: ANTON W. FETTING, JOSEPH A. FISCHETTI, and BIBHU R. MOHANTY, Administrative Patent Judges. FISCHETTI, Administrative Patent Judge. DECISION ON APPEAL Appeal 2009-008884 Application 10/224,604 2 STATEMENT OF CASE Appellant seeks our review under 35 U.S.C. § 134 (2002) from the Examiner’s final rejection of claims 3-15. Claims 1 and 2 are canceled. We have jurisdiction under 35 U.S.C. § 6(b). We affirm. THE CLAIMED INVENTION Appellant claims a medical information system for creating clinical records where medical treatment information is recorded (Specification 1:12-14). Claim 3 is illustrative of the claimed subject matter: 3. A medical information system comprising: a first controller, which is connected to a surgery system installed in a first surgery room, and is installed in said first surgery room, for receiving information from said surgery system; a communication interface which is provided in said first control1er and is connected to a communication line connected to a second controller installed in a second surgery room; a server which is connected via said communication line, for accumulating identification information for identifying a patient having surgery with said surgery system; and an input device which is connected to said first controller, for inputting said identification information; wherein said first controller sorts and associates said identification information input by said input device with said identification information related to patient information accumulated in said server, and verifies that said sorted and associated identification information is not detected via said communication interface. Appeal 2009-008884 Application 10/224,604 3 REFERENCES The prior art relied upon by the Examiner in rejecting the claims on appeal is: Ballantyne Wang US 5,867,821 US 6,911,916 B1 Feb. 2, 1999 Jun. 28, 2005 REJECTIONS The following rejections are before us for review. The Examiner rejected claims 3-7, 9-12, 14, and 15 under 35 U.S.C. § 102(b) over Wang. The Examiner rejected claims 8 and 13 under 35 U.S.C. § 103(a) over Wang and Ballantyne. ISSUES Did the Examiner err in rejecting claims 3, 10, and 11 under 35 U.S.C. § 102(b) over Wang as disclosing verifying that said sorted and associated identification information is not detected via said communication interface, because Wang discloses verifying devices by detecting presence and absence of devices at the controller? The issue of obviousness centers on whether the references used in the combination under 35 U.S.C. § 103(a) share a common field and are directed to common problems with access to medical information. FINDINGS OF FACT We find the following facts by a preponderance of the evidence. Appeal 2009-008884 Application 10/224,604 4 1. Wang discloses a master controller 12 connected to a slave controller 14 with medical devices 18, 20, 22, 24 and input device 32 attached to one or the other controller, in Figure 1: Figure 1 of Wang showing the master controller 12, slave controller 14, input device 32, and medical devices attached to both controllers. 2. Wang discloses a “surgeon may capture and store images or video, record and store audio, or store text audibly at any time including during surgery or examination. The stored information can then be ‘uploaded’ as part of the patient information in the one or more servers 140l-140p.” (Col. 10 ll. 42-46). Appeal 2009-008884 Application 10/224,604 5 3. Wang discloses information uploaded by a surgeon during surgery includes information identifying a patient, because the “master controller 110 and/or slave device 132 may include software and/or hardware for distinguishing the type of information stored (e.g., X-ray, patient information, etc.) and uploading the different types of information to different servers.” (Col. 10 ll. 47-51). 4. Wang discloses that master and slave controllers monitor and detect the presence of connected devices, by way of: At startup every controller, whether the master 12 or a slave 14 knows the addresses of its communication ports. It sends a query to each communication port to see if a device is connected thereto. If so, an adapter connected to the device specifies the name of the device and an indication that it is functioning properly. (Col. 6 ll. 2-7). 5. Wang discloses a master controller 12 directly or indirectly connected to medical devices in contact with a patient including “[o]ther devices that are intended to be electrically connected to the master controller 12, either directly or via the at least one slave controller 14 include devices that are commonly found in an operating room environment.” (Col. 2 ll. 45-49). 6. Wang discloses downloading patent information from the server to the operating room where the “controller receives one or more user inputs, in response to a user input, transmits a command to a server located outside of the operating room to retrieve patient information, receives the patient information from the server, and displays the patient information on the display device.” (Col. 1 ll. 58-62). Appeal 2009-008884 Application 10/224,604 6 7. Wang discloses a “method and apparatus for accessing and/or capturing medical data during a medical procedure.” (Col. 1 ll. 52-54). 8. Ballantyne discloses “an electronic information system for distribution of medical information and patient services” (Col. 1 ll. 65-67). ANALYSIS Independent Claim 3 The rejection is affirmed as to claim 3. Appellant does not provide a substantive argument as to the separate patentability of claim 4 that depends from claim 3, which is the sole independent claim among those claims. Therefore, we address only claim 3. Claim 4 falls with claim 3. See, 37 C.F.R. § 41.37(c)(1)(vii)(2004). Appellant argues, with respect to the “first controller” limitation, that “Wang does not disclose a first controller for collecting information from devices in contact with the patient, but from the various sources connected to the slave controller 132.” (Appeal Br. 7). Appellant’s arguments fail from the outset because claim 3 does not require that the devices from which the first controller collects information be “in contact with the patient.” In re Self, 671 F.2d 1344, 1348 (CCPA 1982). Rather, claim 3 only requires “a first controller, which is connected to a surgery system installed in a first surgery room” and the Examiner found, and we agree, that Wang discloses at Figure 1, a first/master controller 12, which is connected to a surgery system 10 installed in a first surgery room (operating room table 22), and is installed in said first surgery room, for receiving information from said surgery system (FF 1). Appellant next argues, with respect to the “communication interface” limitation, that the “Wang text at col. 2, lines 37-49 refers to Wang's master Appeal 2009-008884 Application 10/224,604 7 controller 12. Wang's master controller 12 [is] connected to an electro- cautery device 18 and a slave controller 14, the slave controller(s) connected to insufflator 24 or operating room table 22.” (Appeal Br. 7). We are not persuaded by Appellant’s argument because the Examiner found that Wang discloses a communications interface in a wireless networking connection between the first controller/master controller 12 and the second controller/slave medical devices (Answer 3). Our review of the record confirms that Wang’s disclosure meets the claim limitation of a communication interface which is provided in said first controller and is connected to a communication line connected to a second controller installed in a second surgery room because a person with ordinary skill in the art would understand that the wireless communication feature is known to be used to connect devices between rooms, e.g., to a second operating room via an RF link. Appellant next argues, with respect to the “server” limitation, Wang “refers merely to stored information that can be uploaded as part of the patient information in the one or more servers (140). The information referred to by Appellant's claim 3 is information gathered during a surgical procedure by the input device, not stored information ….” (Appeal Br. 7-8). We are not persuaded by Appellants' argument, because we find that Wang discloses information may be captured by the surgeon during surgery and stored on the server (FF 2). Appellant next argues, with respect to the “input device” limitation, Wang “refers to the fact that ‘a surgeon may capture’ information, but the information is different than ‘identification information’ as required by Appellant’s claim 3.” (Appeal Br. 8). Appeal 2009-008884 Application 10/224,604 8 We are not persuaded by Appellant’s argument, because we find Wang discloses that identifying information for identifying a patient having surgery is uploaded by a surgeon during surgery including “patient information” (FF 3), thus meeting the claim limitation. Appellant finally argues, with respect to the “wherein” clause, that Wang teaches “no ‘verification’ as claimed.” (Appeal Br. 8). We interpret the wherein clause as a functional limitation, because a “functional limitation is an attempt to define something by what it does, rather than by what it is (e.g., as evidenced by its specific structure or specific ingredients).” MPEP § 2173.05(g). As functional language, we are required to give this language weight to the extent that the prior art is or is not capable of meeting the limitation. In re Schreiber, 128 F.3d 1473, 1477- 78 (Fed. Cir. 1997). We find that because Wang discloses a means for verifying devices by detecting presence and absence of devices at the controller (FF 4), it is thus also capable of verifying other information, such as sorted and associated identification information not detected via said communication interface. Independent Claim 5 The rejection is affirmed as to claim 5. Appellant does not provide a substantive argument as to the separate patentability of claims 6-9 that depend from claim 5, which is the sole independent claim among those claims. Therefore, we address only claim 5. Claims 6-9 fall with claim 5. See, 37 C.F.R. § 41.37(c)(1)(vii)(2004). Claim 5 recites, in pertinent part, a controller for collecting information from medical devices used in contact with a patient; input means which are connected to said controller, for inputting information for Appeal 2009-008884 Application 10/224,604 9 identifying said patient; patient information accumulation means for accumulating patient identification information; and communication means tor connecting said controller with said patient information accumulation means; wherein said controller sorts and associates information for identifying said patient, which is read out from said patient information accumulation means, with patient information which is input from said input means, and reads out related information of the same patient from said patient information accumulation means. Appellant argues “that Wang does not disclose a first controller for collecting information from devices in contact with the patient, but from the various sources connected to the slave controller 132 at col. 10, lines 33-44” (Appeal Br. 11). We are not persuaded by Appellant’s argument, because we find Wang discloses a first controller/master controller 12 that directly or indirectly connects to any medical device commonly found in an operating room, including those in contact with a patient (FF 5), thus meeting the claim limitation. Appellant also argues Wang does not disclose “input means which are connected to said controller, for inputting information for identifying said patient (col. 10, lines 43-45).” (Appeal Br. 11). We are not persuaded by Appellants' argument, because the Examiner found Wang discloses a variety of input devices connected to the first controller/master controller, including a keyboard (Answer 4), which input devices we confirm that a person with ordinary skill in the art would understand meets the claim limitation. Appellant finally argues: Appeal 2009-008884 Application 10/224,604 10 Wang involves the function to view information, and not sorting and associating information for identifying the patient to read out related information. Wang, at most, discloses at Col. 11, line 55-65, that slave device 132 may deactivate a portion of the display 126 pertaining to angiography information to indicate that the information is not available. (Appeal Br. 11). We are not persuaded by Appellant’s argument. The Examiner found the patient information accumulation means at a server (Answer 4), the communication means at the local area network (Answer 5), and the wherein clause at column 10 lines 47-51 (Answer 5). Our review of Wang confirms the Examiner’s findings that Wang discloses the server (FF 2, 6) and the network at gateway 500 (FF 1). We further find Wang discloses the action of the controller that sorts and associates information from the server with patient information input by the input means, and reads out related information from the server, because Wang receives input on patient identity and, using that input, downloads patient medical information from the server for viewing in the operating room (FF 6), meeting the final claim requirement. Independent Claim 10 Appellant argues, “Wang does not disclose a first controller for collecting information from devices in contact with the patient, but from the various sources connected to the slave controller 132, at col. 10, lines 33-44, nor input means which are connected to said controller, for inputting information for identifying said patient (col. 10, lines 43-45).” (Appeal Br. 12). We are not persuaded by Appellant’s argument, for the same reasons set forth at claim 5, above. Appeal 2009-008884 Application 10/224,604 11 Appellant further argues, Wang does not disclose “patient information accumulation means for accumulating patient identification information (line 10, 44-46), or communication means for connecting said controller with said patient information accumulation means (col. 10, lines 6-8).” (Appeal Br. 13). We are not persuaded by Appellant’s argument, for the same reasons set forth at claim 5, above. Finally, Appellant argues, as to the wherein clause, “[a]t most, Wang discloses that if an image is not available, the image is not displayed on element 126. However, this is not the same as confirming that information for identifying the same patient is not detected then the first control reads out information.” (Appeal Br. 13). As we set forth at claim 3, we interpret the wherein clause as a functional limitation, because a “functional limitation is an attempt to define something by what it does, rather than by what it is (e.g., as evidenced by its specific structure or specific ingredients).” MPEP § 2173.05(g). As functional language, we are required to give this language weight to the extent that the prior art is or is not capable of meeting the limitation. In re Schreiber, 128 F.3d 1473, 1477-78 (Fed. Cir. 1997). We find that because Wang discloses verifying devices by detecting presence and absence of devices at the controller (FF 4), it is capable of confirming that information for identifying the same patient as the above patient is not detected with said other controllers, thus meeting the functional language of the claim limitation. Appeal 2009-008884 Application 10/224,604 12 Independent Claim 11 The rejection of claim 11 is affirmed for the same reasons set forth at claims 3, 5, and 10, where similar arguments were presented. Appellant does not provide a substantive argument as to the separate patentability of claims 12 and 13 that depend from claim 11. Thus claims 12 and 13 fall with claim 11. See, 37 C.F.R. § 41.37(c)(1)(vii)(2004). Independent Claim 15 Claim 15 recites in pertinent part , a medical system comprising: a surgery system including a plurality of medical devices for surgery and a first controller for monitoring operation status of said plurality of medical devices; a server for registering and accumulating identification information for identifying a patient having surgery with said surgery system; an input device for inputting said identification information; and a second controller which communicates with said server and is connected to said first controller and said input device, for sorting and associating said identification information from said server with said identification information from said input device. Appellant argues, Wang’s “phrase ‘operating room devices’ is a phrase with a much broader scope than that which Appellant understands to be ‘surgical medical devices” as claimed (Appeal Br. 17). We are not persuaded by Appellant’s argument, because we find Wang’s operating room devices are medical devices for surgery because such devices are found in a surgical operating room, such as Wang’s electro- cautery 18 and insufflator 24 (FF 1). Appellant next argues, “Wang's controller is for receiving data retrieval and device commands, and transmits same to a server, but must Appeal 2009-008884 Application 10/224,604 13 work in conjunction with Wang's voice input device, described in detail at lines 34-39.” (Appeal Br. 17). We are not persuaded by Appellant’s argument, because we find Wang discloses a first/slave controller for monitoring operation status of medical devices, because the slave controller detects connected devices (FF 3), which detecting is a form of monitoring. Appellant next argues, with respect to the server limitation, that the “information referenced to by Appellant's claim 15 is information gathered during a surgical procedure by the input device, not stored information as appears to be the case for Wang.” (Appeal Br. 17). We are not persuaded by this argument for the same reasons set forth for a similar argument above at claim 3. Appellant next argues they “cannot see how their medical information processing system as limited by the claim language of independent claim 15 can also be an operating room control system with voice input devices such as the microphone set forth at Wang's col. 14, lines 6-9.” (Appeal Br. 18). We are not persuaded by Appellant's argument, because the Examiner found Wang discloses an input device for inputting said identification information in the form of a microphone (Answer 8), and our review of Wang confirms that the microphone is one of several possible input devices Wang discloses for use with its controller to input patient identifying information (FF 6), thus meeting the claim language for an input device tor inputting said identification information. Appellant finally argues, the “Wang method does not disclose Appellant's second controller for communicating with Appellant's server and connected to the first controller and the input device for sorting and Appeal 2009-008884 Application 10/224,604 14 associating identification information from said server with the identification information from said input device, as claimed.” (Appeal Br. 18). We are not persuaded by Appellant’s argument, because Wang discloses a second/master controller which communicates with said server (FF 6) and is connected to said first/master controller (FF 1) and said input device (FF 6), for sorting and associating said identification information from said server with said identification information from said input device (FF 2, 3, 6), thus meeting the claim language. Dependent Claims 8 and 13 Dependent claims 8 and 13 recite, in pertinent part, wherein said input means is one of a magnetic card reader, optical card reader, IC card reader, and bar-code reader. Claim 8 depends from claim 6, which depends from independent claim 5. Claim 13 depends from independent claim 11. To the extent that Appellant argues shortcomings of Wang, we are not persuaded for the reasons set forth at claim 5. Appellant further argues hindsight in the combination of Wang and Ballantyne because “Appellants' disclosure is not intended to automatically distribute medical services, but to verify information to prevent errors by detecting whether two rooms have the same patient information, and provide an alarm.” (Appeal Br. 20). We are not persuaded of error because the prior art references applied by the Examiner share a common field, and are directed to common problems with access to medical information (FF 7, 8); and the Examiner’s modification of the references is based on a reasonable explanation, namely, “in order to provide a more automated system for distribution and administration of medical services” (Answer 9, 10). Appeal 2009-008884 Application 10/224,604 15 CONCLUSIONS OF LAW The Examiner did not err in rejecting claims 3-7, 9-12, 14, and 15 under 35 U.S.C. § 102(b) over Wang. The Examiner did not err in rejecting claims 8 and 13 under 35 U.S.C. § 103(a) over Wang and Ballantyne. DECISION The Examiner’s rejection of claims 3-15 is AFFIRMED. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv) (2010). AFFIRMED MP Copy with citationCopy as parenthetical citation