Ex Parte Valley

Patent Trial and Appeal Board

Oct 21, 2013

10654594 (P.T.A.B. Oct. 21, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte LEROY R. VALLEY
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Appeal 2013-005233
Application 10/654,594
Technology Center 3600
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Before MURRIEL E. CRAWFORD, HUBERT C. LORIN, and MICHELLE
R. OSINSKI, Administrative Patent Judges.

CRAWFORD, Administrative Patent Judge.

DECISION ON APPEAL

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STATEMENT OF THE CASE
Appellant seeks our review under 35 U.S.C. § 134 of the Examiner’s
final decision rejecting claims 1 to 21. We have jurisdiction over the appeal
under 35 U.S.C. § 6(b).
We AFFIRM and denominate our affirmance as a NEW GROUND
OF REJECTION.
BACKGROUND
Appellant’s invention is directed to a method, system, and a computer
program product for managing health services (Spec. 1).
Claim 1 is illustrative:
1. A method for managing health services,
comprising:
receiving, via an input device communicatively
coupled to a data processing system, a patient identifier
that identifies a patient;
receiving, via an input device communicatively
coupled to the data processing system, a caregiver
identifier that identifies an individual performing a health
service;
receiving, via an input device communicatively
coupled to the data processing system, a service identifier
that identifies the health service performed for the
patient;
associating the patient identifier with the caregiver
identifier and the service identifier; and
storing the patient identifier, the caregiver
identifier, and the service identifier in the data processing
system,
wherein receiving the caregiver identifier
comprises receiving the caregiver identifier at the time
the health service is performed for the patient.

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Appellant appeals the following rejections:
Claims 1 to 3, 8 to 10, and 15 to 17 under 35 U.S.C. § 103(a) as
unpatentable over Brown (U.S. 4,857,713; iss. Aug. 15, 1989) and Case
(U.S. 2001/0039502 A1; pub. Nov. 8, 2001).
Claims 4 to 7, 11 to 14, and 18 to 21 under 35 U.S.C. § 103(a) as
unpatentable over Brown, Case, and White (U.S. 7,236,936 B2; iss. Jun. 26,
2007).1

ISSUE
Did the Examiner err in concluding that it would have been obvious at
the time of the invention in view of the teachings of the prior art to receive
the caregiver identifier at the time the health service is performed for the
patient?

FACTUAL FINDINGS
We adopt the Examiner’s findings as our own. Final Rej. 3 to 4.
Additional findings of fact may appear in the Analysis that follows.

ANALYSIS
Claims 1 to 3, 8 to 10, and 15 to 17

1 Claim 11 was not included in the Examiner’s statement of the rejection in
the Final Rejection. However, claim 11 was included in the explanation of
the rejection and the Appellants responded to the rejection of claim 11 in the
Brief. Therefore, we treat the absence of claim 11 in the statement of the
rejection to have been as an oversight.

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We are not persuaded of error on the part of the Examiner by
Appellant's argument that neither Brown nor Case teaches the step of
receiving the caregiver identifier at the time the health service is performed
for the patient, as recited in claim 1.
Claim 1 recites the steps of receiving a patient identifier and receiving
a caregiver identifier and that the caregiver identifier is received at the time
of service.
Brown discloses that the patient identifier is received at the time of
health service (col. 3, ll. 14 to 19). Brown does not disclose that a caregiver
identifier is received.
Case discloses that it is known for a caregiver, who performs the test
at the direction of a physician, to send test samples to a laboratory and to
notify a physician regarding the test results (para. [0003]). In this regard,
Case discloses that a caregiver identifier is associated with each test record
(para. [0060]; Fig. 7).
In our view, as Brown discloses receiving the patient identifier at the
time of the health service and Case discloses the use of a caregiver identifier,
it would have been obvious to receive the caregiver identifier at the time of
the health service.
We are not persuaded otherwise by Appellant’s argument that Case
discloses receiving the caregiver identifier prior to the test because
obviousness does not require the bodily incorporation of the Case method
into the Brown method. Rather, Case is relied on only for teaching the use
of a caregiver identifier associated with medical services and as Brown

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receives the patient identifier at the time of the medical service, it would
have been obvious to receive the caregiver identifier at that time as well.
In addition, as Case teaches that caregivers report the test results to
the physicians and that a caregiver identifier is associated with each test
record, a person of ordinary skill in the art would have known that the step
of receiving the caregiver identifier could occur at three points in time
during the method, i.e., before the service, at the time of the service, or after
the service. In our view, it would have been obvious to try any of the finite
number timing options because each option had a reasonable expectation of
success. See, e.g., KSR Int'l Co. v. Teleflex, Inc., 550 U.S. 398, 421 (2007)
When there is a design need or market pressure to solve a
problem and there are a finite number of identified, predictable
solutions, a person of ordinary skill in the art has good reason to
pursue the known options within his or her technical grasp. If
this leads to the anticipated success, it is likely the product not
of innovation but of ordinary skill and common sense.
In view of the foregoing, we will sustain the Examiner’s rejection of
claim 1 but as our reasoning differs from that used by the Examiner, we
designate our affirmance as a new ground of rejection.
We will also sustain this rejection as it is directed to claims 2, 3, 8 to
10, and 15 to 17 because the Appellant does not advance separate arguments
regarding the patentability of these claims.

Claims 4 to 7, 11 to 14, and 18 to 21
We will sustain the Examiner’s rejection of claims 4, 11, and 18 as
well because a person of ordinary skill in the art would have known that the
receipt of the caregiver identifier could occur before, at the same time or

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after the receipt of the patient identifier and therefore it would have been
obvious to try any of the finite number of timing options because each
option had a reasonable expectation of success.
We will also sustain this rejection as it is directed to claims 5 to 7, 12
to 14, and 19 to 21 because the Appellant does not advance the separate
patentability of these claims.

DECISION
The decision of the Examiner is affirmed.
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 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 § 41.52 by the Board upon the same record . . .

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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).

AFFIRMED; 37 C.F.R. § 41.50(b)

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