Ex Parte Uchikubo

Board of Patent Appeals and Interferences

Apr 25, 2011

10224604 (B.P.A.I. Apr. 25, 2011)

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

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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.

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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.
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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).
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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).
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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
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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).
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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
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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:
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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.
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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.
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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
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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
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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).
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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