Ex Parte Ulrich et al

Board of Patent Appeals and Interferences

Sep 18, 2009

10207739 (B.P.A.I. Sep. 18, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte DENNIS A. ULRICH,
BURTON F. ULRICH, and
SANDRA I. ALLEN
____________

Appeal 2009-002820
Application 10/207,739
Technology Center 3600
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Decided: September 18, 2009
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Before MURRIEL E. CRAWFORD, HUBERT C. LORIN, and
ANTON W. FETTING, Administrative Patent Judges.

LORIN, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2009-002820
Application 10/207,739

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STATEMENT OF THE CASE
Dennis A. Ulrich, et al. (Appellants) seek our review under 35 U.S.C.
§ 134 of the final rejection of claims 1-15. We have jurisdiction under 35
U.S.C. § 6(b) (2002).

SUMMARY OF DECISION
We AFFIRM-IN-PART.1

THE INVENTION
The invention relates to electronically maintaining medical records.
Claims 1 and 9, reproduced below, are illustrative of the subject
matter on appeal.
1. A method of managing a patient encounter using an electronic
medical records system for use by medical personnel within a medical
facility, the method comprising:
a plurality of medical personnel collecting and storing
individual patient medical information in specified fields on a
computer;
assigning an office visit procedure code level to an encounter
with a patient;
entering documentation of the encounter with the patient;
performing an audit of the documentation during the encounter
with the patient; and
providing an indication to a user of a requirement to provide
additional documentation to support the assigned procedure code
level.

1 Our decision will make reference to the Appellants’ Appeal Brief (“Br.,”
filed Oct. 1, 2007) and the Examiner’s Answer (“Answer,” mailed Nov. 20,
2007).
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9. A method of managing a patient encounter using an electronic
medical records system, the method comprising:
providing a care plan dialog screen for creating a time based
care plan;
a medical services provider entering a care plan description at
the care plan dialog screen;
entering a care plan category at the care plan dialog screen; and
entering at least one reminder event for inclusion in the care
plan.

THE REJECTIONS
The Examiner relies upon the following as evidence of
unpatentability:
Tallman
Iliff
US 5,471,382
US 6,022,315
Nov. 28, 1995
Feb. 8, 2000

The following rejections are before us for review:
1. Claims 1-8, 14, and 15 are rejected under 35 U.S.C. §102(b) as being
anticipated by Iliff.
2. Claims 9-13 are rejected under 35 U.S.C. §102(b) as being anticipated
by Tallman.
ISSUES
The issues are whether the Appellants have shown error in the
rejection of claims 1-8, 14, and 15 under 35 U.S.C. §102(b) as being
anticipated by Iliff and claims 9-13 under 35 U.S.C. §102(b) as being
anticipated by Tallman.

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Application 10/207,739

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PRINCIPLES OF LAW
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., Inc. v. Union Oil Co. of Cal., 814 F.2d 628,
631 (Fed. Cir. 1987).
ANALYSIS
The rejection of claims 1-8, 14, and 15 under §102(b) as being anticipated
by Iliff.
We will reverse this rejection for the reasons stated in the Brief.
The difficulty with this rejection is that the Examiner’s reasoning in
support thereof is more appropriate for a rejection under § 103. The
Examiner seems to recognize this. See Answer 13 (“it would have been
obvious to one of ordinary skill in the art at the time of the invention was
made ... .”). Nevertheless, the rejection is under §102 and we are compelled
to review that rejection.
We agree with the Appellants that Iliff does not identically describe
numerous claim limitations. See e.g., Br. 10. For example, claim 1 is drawn
to a method comprising, in part, of a step of “performing an audit of the
documentation during the encounter with the patient.” Br. 10. It is well
settled that in order for the examiner to establish a prima facie case of
anticipation, each and every element of the claimed invention, arranged as
required by the claim, must be found in a single prior art reference, either
expressly or under the principles of inherency. See generally, In re
Schreiber, 128 F.3d 1473, 1477 (Fed. Cir. 1997); Diversitech Corp. v.
Century Steps, Inc., 850 F.2d 675, 677-78 (Fed. Cir. 1988); Lindemann
Maschinenfabrik GMBH v. American Hoist and Derrick, 730 F.2d 1452,
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1458 (Fed. Cir. 1984). Accordingly, to establish a prima facie case of
anticipation, the Examiner would be required to show that Iliff, either
expressly or under the principles of inherency, describes a step of
“performing an audit of the documentation during the encounter with the
patient.”
In that regard, the Examiner states that Iliff teaches
performing an audit of the documentation during the encounter with
the patient (column 66, lines 12-14), i.e. the patient files are
maintained and updated within the computer or on removable storage
devices, (column 73, tines 24-27), i.e. the script engine also collect the
answers from the patient, evaluate the answers, issue a diagnosis, and
update the patient's medical record, (column 4, lines 12-13), i.e, the
MDATA system regularly and frequently updates the treatment aspect
of the system, (column 57, lines 11-13), i.e. the MDATA system 100
maintains a treatment table that can be updated instantaneously to
provide the most current treatment recommendations[.]

Answer 4. But not only does the Examiner not indicate that the cited Iliff
passages expressly or inherently describe the claim step of performing an
audit but we have carefully reviewed each of the Iliff passages cited and
have not been able to find any disclosure of “performing an audit of the
documentation during the encounter with the patient.” At best, these
passages describe maintaining and updating patient records. An “audit” is
more that just maintaining and updating patient records. The ordinary and
customary meaning of “audit” is “a formal, often periodic examination and
checking of accounts or financial records to verify their correctness.” See
Webster’s New World Dictionary 89 (3rd Ed. 1988.)(Entry 1. for “audit.”)
While it is possible that maintaining patient records as Iliff does would in the
normal course of business necessarily involve an audit, anticipation can not
be based on probabilities. “Inherency, however, may not be established by
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probabilities or possibilities. The mere fact that a certain thing may result
from a given set of circumstances is not sufficient.” Hansgirg v. Kemmer,
102 F.2d 212, 214 (CCPA 1939), quoted in Continental Can Co. USA v.
Monsanto Co., 948 F.2d 1264, 1269 (Fed. Cir. 1991). We are also cognizant
of the fact, that audits of patient records is generally well known in the art of
maintaining patient records. See e.g., the “Medicare audit check” mentioned
in the Specification at [0064]. However, “[i]f it is necessary to reach beyond
the boundaries of a single reference to provide missing disclosure of the
claimed invention, the proper ground is not § 102 anticipation, but § 103
obviousness.” Scripps Clinic & Research Found. v. Genentech, Inc., 927
F.2d 1565, 1577 (Fed. Cir. 1991).

The rejection of claims 9-13 under §102(b) as being anticipated by Tallman.
Claims 9 and 10
We will affirm this rejection of claims 9 and 10 because we do not
find that the Appellants have shown error in the rejection.
We adopt the Examiner findings of fact which do not appear to be in
dispute. See Answer 8-9.
The Appellants argued claims 9 and 10 as a group. Br. 14. We select
claim 9 as the representative claim for this group, and the remaining claim
10 stands or falls with claim 9. 37 C.F.R. § 41.37(c)(1)(vii) (2007).
The Appellants argued that claim 9 requires “entering a care plan
category at the care plan dialog screen” and that this step is not identically
disclosed in Tallman. The Examiner pointed to col. 11, lines 31-34 of
Tallman as evidence that Tallman indeed describes this claim limitation. As
the Examiner correctly found, col. 11, lines 31-34 describes an automated
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process for selecting algorithm via fields such as “category” and
“keywords.” Answer 9. The Appellants disagreed that this disclosure
identically meets the limitation of “entering a care plan category at the care
plan dialog screen”, arguing that the “keywords” and “categories” that
Tallman mentions there at col. 11, lines 31-34 “relate[s] to finding an
appropriate algorithm and are not related to a care plan” (Br. 14).
The Appellants’ argument is not persuasive as to error in the rejection
because the difference between entering a category for a “care plan” as in
claim 9 and entering a category for finding an appropriate algorithm as in
Tallman is a patentably inconsequential distinction rooted in nonfunctional
descriptive material.
The question of whether claimed subject matter is directed to
nonfunctional descriptive material is a question of claim construction. The
question here is not whether Tallman enters a category. That is not in
dispute. The question is whether Tallman describes entering a “care plan”
category. That distinction - that the category in the claimed method is a
“care plan” category rather than a category for something else, e.g., an
algorithm as in Tallman, is one based, at best, on the category’s
informational content. Where the distinction is based on informational
content, the distinction is one of descriptive material.
Patentable weight need not be given to descriptive material absent a
new (and nonobvious) functional relationship between the descriptive
material and the substrate (here the dialog screen). See In re Lowry, 32 F.3d
1579, 1582-83 (Fed. Cir. 1994); In re Ngai, 367 F.3d at 1338. See also Ex
parte Mathias, 84 USPQ2d 1276 (BPAI 2005) (nonprecedential) (Federal
Circuit Appeal No. 2006-1103; WL 2433879 affirmed without written
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opinion Aug. 17, 2006). In that regard, the Appellants have not come
forward with evidence sufficient to show that the structure involved in
entering a category at the dialogue screen is functionally affected by the
category being, specifically, a “care plan category”. Absent such evidence,
it is reasonable to conclude that the “care plan” aspect of the category
entered at the dialog screen is descriptive and not functionally related to any
structure of the claimed system and as such falls under the category of
patentably inconsequential subject matter. See Ex parte Curry, 84 USPQ2d
1272, 1275 (BPAI 2005) (informative)
(Common situations involving nonfunctional descriptive
material are: - a computer-readable storage medium that differs
from the prior art solely with respect to nonfunctional
descriptive material, such as music or a literary work, encoded
on the medium, - a computer that differs from the prior art
solely with respect to nonfunctional descriptive material that
cannot alter how the machine functions (i.e., the descriptive
material does not reconfigure the computer), or - a process that
differs from the prior art only with respect to nonfunctional
descriptive material that cannot alter how the process steps are
to be performed to achieve the utility of the invention.) Thus, if
the prior art suggests storing a song on a disk, merely choosing
a particular song to store on the disk would be presumed to be
well within the level of ordinary skill in the art at the time the
invention was made. The difference between the prior art and
the claimed invention is simply a rearrangement of
nonfunctional descriptive material.).
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Accordingly, we find that the distinction between a “care plan
category” (claim 9) and Tallman’s category a distinction based on
nonfunctional descriptive material. Answer 9. Nonfunctional descriptive
material cannot render an invention patentable that would have otherwise
been anticipated. Cf. In re Gulack, 703 F.2d 1381,1386. (Fed.Cir.1983):
(when descriptive material is not functionally related to the substrate, the
descriptive material will not distinguish the invention from the prior art in
terms of patentability).

Claim 11
We will reverse the rejection of claim 11. Claim 11 requires entering
a lead time from the reminder definition screen. The Examiner points to
claim 18 of Tallman. Answer 10. But Tallman claim 18 indicates only that
a follow-up reminder is provided on a display. We see nothing there that
expressly or inherently describes entering any information from a reminder
definition screen.

Claim 12
We will reverse the rejection of claim 12. Claim 12 requires entering
a repeat count number from the reminder definition screen. The Examiner
points to claim 57 of Tallman. Answer 10. But Tallman claim 57 describes
a patient assessment stored program. We see nothing there that expressly or
inherently describes entering any information from a reminder definition
screen.

Claim 13
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We will reverse the rejection of claim 13. Claim 13 requires entering
a repeat interval time from the reminder definition screen. The Examiner
points to claim 55 of Tallman. Answer 11. But Tallman claim 55 describes
a patient assessment stored program. We see nothing there that expressly or
inherently describes entering any information from a reminder definition
screen.

CONCLUSIONS
We conclude that the Appellants have not shown that the Examiner
erred in rejecting claims 9 and 10 under 35 U.S.C. §102(b) as being
anticipated by Tallman.
We conclude that the Appellants have shown that the Examiner erred
in rejecting claims 1-8, 14, and 15 under 35 U.S.C. §102(b) as being
anticipated by Iliff and claims 11-13 under 35 U.S.C. §102(b) as being
anticipated by Tallman.

DECISION
The decision of the Examiner to reject claims 1-15 is affirmed-in-part.

AFFIRMED-IN-PART

mev
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