Ex Parte Villasenor et al

Patent Trial and Appeal Board

Sep 5, 2013

11608016 (P.T.A.B. Sep. 5, 2013)

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.
11/608,016 12/07/2006 Paul Villasenor 2006P21953 US01 8594
28524 7590 09/05/2013
SIEMENS CORPORATION
INTELLECTUAL PROPERTY DEPARTMENT
170 WOOD AVENUE SOUTH
ISELIN, NJ 08830
EXAMINER
HUNTER, SEAN KRISTOPHER
ART UNIT PAPER NUMBER
3626
MAIL DATE DELIVERY MODE
09/05/2013 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 PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte PAUL VILLASENOR, JOSEPH PICCERILLO JR., and
JANE E. MARLATT
____________________

Appeal 2011-009936
Application 11/608,016
Technology Center 3600
____________________

Before MEREDITH C. PETRAVICK, MICHAEL W. KIM, and
NINA L. MEDLOCK, Administrative Patent Judges.

MEDLOCK, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2011-009936
Application 11/608,016

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STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 1-16. We have jurisdiction under 35 U.S.C. § 6(b).

STATEMENT OF THE DECISION
We AFFIRM.1

BACKGROUND
Appellants’ invention relates to an integrated clinical and medication
reconciliation system for reconciling treatments and medications of a patient
received both prior to, and following admission to a healthcare provider
facility (Spec. 1, ll. 9-11).
Claim 1, reproduced below with added bracketed notations, is
representative of the subject matter on appeal:
1. An integrated clinical and medication reconciliation
system, comprising:
[i] at least one computer system including,
[ii] a medication reconciliation system incorporating a
user interface providing a single display image including a first
image area identifying medications a patient is receiving
following admission to a healthcare provider facility and a
second image area indicating medications said patient received
prior to admission to a healthcare provider facility and a third
image area indicating a consolidated list of medications and
enabling a user to individually select medications to be added
from the first and second image areas to said third image area;
and

1 Our decision will make reference to Appellants’ Appeal Brief (“Br.,” filed
November 9, 20110) and the Examiner’s Answer (“Ans.,” mailed March 2,
2011).
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[iii] an interface supporting automatic communication of
data identifying said consolidated list of medications from said
medication reconciliation system to a treatment order
processing system for ordering prescriptions for said patient, in
response to completion of medication reconciliation.

THE REJECTIONS
The following rejections are before us for review:
Claims 1-16 stand rejected under 35 U.S.C. § 101 as being directed to
non-statutory subject matter.
Claims 1-16 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Brummel (US 2002/0083075 A1, pub. Jun. 27, 2002),
in view of Seliger (US 5,546,580, iss. Aug. 13, 1996).

ANALYSIS
Non-Statutory Subject Matter
We cannot agree with the Examiner that claims 1-16 fail to recite any
structural elements and, thus, fail to fall within any of the statutory classes of
patentable subject matter. The Examiner asserts that the medication
reconciliation system and the interface recited in claims 1, 12 and 13, and
the data processor recited in independent claim 13, “appear to be software”
(Ans. 4). However, the Specification describes that the user interface
includes an input device that permits a user to input information (e.g., a
keyboard and mouse, a touch screen, or a microphone with a voice
recognition program) and an output device (e.g., a display or a speaker) that
permits a user to receive information (Spec. 6, ll. 5-13). The “data
processor” recited in claim 13 also would reasonably be understood by
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persons skilled in the art to constitute a structural element, especially in
combination with the other computer system limitations.
We conclude that claims 1-16 are directed to patent-eligible subject
matter. Therefore, we will not sustain the Examiner’s rejection of
claims 1-16 under 35 U.S.C. § 101.
Obviousness
Independent claim 1
We are not persuaded that the Examiner erred in rejecting claim 1
under 35 U.S.C. § 103(a) by Appellants’ argument that neither Brummel nor
Seliger discloses or suggests
a medication reconciliation system incorporating a user
interface providing a single display image including a first
image area identifying medications a patient is receiving
following admission to a healthcare provider facility and a
second image area indicating medications said patient received
prior to admission to a healthcare provider facility and a third
image area indicating a consolidated list of medications and
enabling a user to individually select medications to be added
from the first and second image areas to said third image area

i.e., element [ii], as recited in claim 1 (Br. 7-11).
Instead, we agree with and adopt the Examiner’s response to
Appellants’ argument, as set forth at pages 12-14 of the Answer. In this
regard, we note that Brummel discloses an electronic Health Care
Information System (HCIS), including a modular framework and a display
in communication with the modular framework for providing a graphical
user interface to a system user (Brummel, para. [0013]). Brummel describes
that the modular framework includes a plurality of activities, where each
activity provides an aspect of patient care, and also describes that the
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graphical user interface is adaptable for displaying information
corresponding to one or more of the activities (id.) and that multiple
activities within a single workspace may be opened (Brummel, para.
[0023]), i.e., multiple image areas may be provided within a single image
display.
Appellants argue that Brummel does not disclose or suggest the
claimed “single display image” because Brummel teaches tabbed nested
activities that are overlaid within a workspace, and Brummel’s nested
activities are not “concurrently visible” (Br. 9-10). However, as the
Examiner observes, Appellants’ argument is not persuasive because it is not
commensurate with the scope of the claim. There is nothing in claim 1 that
requires the multiple image areas to be concurrently visible (Ans. 13).
We also are not persuaded of error on the part of the Examiner by
Appellants’ argument that neither Brummel nor Selinger discloses or
suggests that the image areas identify medications a patient is receiving
following admission to a healthcare provider facility, medications the patient
received prior to admission to the healthcare provider facility, and a
consolidated list of medications, as recited in claim 1. The informational
content of the image areas does not affect the structure of the claimed
integrated medication reconciliation system. As such, it constitutes non-
functional descriptive material that may not be relied on to distinguish over
the prior art. See In re Ngai, 367 F.3d 1336, 1339 (Fed. Cir. 2004); cf. In re
Gulack, 703 F.2d 1381, 1385 (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).
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In view of the foregoing, we will sustain the Examiner’s rejection of
claim 1 under 35 U.S.C. § 103(a).
Dependent claim 2
Claim 2 depends from claim 1 and recites that “said interface supports
automatic communication of data identifying said consolidated list of
medications from said medication reconciliation system to said treatment
order processing system without user reentry of said data identifying said
consolidated list of medications.”
Appellants argue that claim 2 is patentable because Brummel in
paragraphs [0029] and [0030], on which the Examiner relies, “fail[s] to
suggest . . . a consolidated list of medications at all” (Br. 11). More
particularly, Appellants assert that:
Brummel in paragraph 0030 merely states “appointment entry
172, customer service 174, account maintenance 176, and
electronic messaging 178 activities” “may be triggered
automatically by the system.” Brummel with Seliger does NOT
suggest “automatic communication of data identifying” a
“consolidated list of medications[.]” Brummel with Seliger
further fails to suggest doing this “without user re-entry of said
data identifying said consolidated list of medications[.]”

(Br. 11, emphasis in original).
But again Appellants’ argument is not persuasive because the feature
that Appellants argue is not disclosed in the prior art, i.e., data identifying a
consolidated list of medications, is non-functional descriptive material that
may not be relied on for patentability.
Therefore we will sustain the Examiner’s rejection of claim 2 under
35 U.S.C. § 103(a).
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Dependent claims 3 and 4
Claim 3 depends from claim 1 and recites that “said interface supports
automatic communication of said data identifying said consolidated list of
medications from said medication reconciliation system to a medical record
of said patient using a patient record management system.” Claim 4 also
depends from claim 1 and recites that that the system includes “a pharmacy
information management system” and that “said interface supports
automatic communication of said data identifying said consolidated list of
medications from said medication reconciliation system to said pharmacy
information management system.”
Appellants’ arguments with respect to claims 3 and 4 are substantially
identical to Appellants’ argument with respect to claim 2 (Br. 11-12).
We did not find Appellants’ argument persuasive with respect to
clam 2, and we find that argument equally unpersuasive with respect to
claims 3 and 4.
Appellants assert with respect to claim 4 that “[p]aragraph 0028 of
Brummel merely mentions a pharmacy workspace NOT a pharmacy
information management system” (Br. 12). Yet Appellants do not explain
why a pharmacy workspace as disclosed in Brummel cannot qualify as a
“pharmacy information management system,” as recited in claim 4.
In view of the foregoing, we will sustain the Examiner’s rejection of
claims 3 and 4 under 35 U.S.C. § 103(a).
Dependent claim 5
Claim 5 depends from claim 4 and recites that said pharmacy
information management system comprises a remote retail pharmacy
information system.”
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Appellants argue that claim 5 is allowable based on its dependence on
claims 1 and 4, and further because “[p]aragraph 0028 of Brummel merely
mentions a pharmacy workspace NOT a remote retail pharmacy
information system” (Br. 12-13, emphasis in original). But again Appellants
make no effort to explain why a pharmacy workspace, as disclosed in
Brummel, cannot qualify as a “remote retail pharmacy information system,”
as recited in claim 5.
Therefore, we will sustain the Examiner’s rejection of claim 5 under
35 U.S.C. § 103(a).
Dependent claim 6
Claim 6 depends from claim 1 and recites that the system includes “a
pharmacy information management system” and that “said interface
supports automatic communication of [said] data representing a particular
medication of said consolidated list of medications to said pharmacy
information management system.”
Appellants argue that claim 6 is allowable for the same reasons as set
forth with respect to claims 1 and 4 (Br. 13). We are not persuaded for the
reasons set forth above that the Examiner erred in rejecting claims 1 and 4
under 35 U.S.C. § 103(a).
Therefore, we will sustain the Examiner’s rejection of claim 6 under
35 U.S.C. § 103(a).
Dependent claim 7
Claim 7 depends from claim 6 and recites that “said data representing
said particular medication comprises an electronic prescription for said
particular medication for said patient.”
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Appellants argue that claim 7 is allowable because neither Brummel
nor Seliger discloses or suggests that the data representing the particular
medication comprises “an electronic prescription” (Br. 13).
We agree with the Examiner that Appellants’ argument is not
persuasive because the nature of the data, i.e., that it comprises an electronic
prescription, is non-functional descriptive material that may not be relied on
for patentability (Ans. 8).
Therefore, we will sustain the Examiner’s rejection of claim 7 under
35 U.S.C. § 103(a).
Dependent claim 8
Claim 8 depends from claim 1 and recites that the system includes “a
data processor for parsing stored medication information to automatically
identify medications said patient is receiving following admission to a
healthcare provider facility and are also received by said patient prior to
admission to a healthcare provider facility.”
We are not persuaded that the Examiner erred in rejecting claim 8
under 35 U.S.C. § 103(a) by Appellants’ argument that “Brummel (with
Seliger) in paragraphs 0017, 0022 and 0023 relied on fails to suggest a
consolidated list of medications at all or a system to ‘automatically identify
medications’” (Br. 13, emphasis in original).
The recitation in claim 8 that the data processor is “for parsing stored
medication information to automatically identify medications” constitutes
functional language in that it describes the intended use of the data
processor, as opposed to a structural element of the data processor or of the
claimed system.
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The law is well settled that features of an apparatus may be recited
either structurally or functionally. However, claims directed to an apparatus
must be distinguished from the prior art in terms of structure rather than
function. In re Schreiber, 128 F.3d 1473, 1477-78 (Fed. Cir. 1997).
“[A]pparatus claims cover what a device is, not what a device does.”
Hewlett-Packard Co. v. Bausch & Lomb, Inc., 909 F.2d 1464, 1468 (Fed.
Cir. 1990).
Here, Appellants do not contend that Brummel (with Seliger) fails to
disclose a data processor. Therefore, so long as the disclosed data processor
is capable of “parsing stored medication information to automatically
identify medications,” the limitation of claim 8 is met.
Appellants have not shown here that the data processor is incapable of
performing the claimed parsing function, called for in claim 8. Indeed, even
were we to require the recited data processor to have software specifically
directed to “parsing stored medication information,” that is merely a basic
search function, which is at least an obvious, if not inherent, feature of every
data processor. The rest of the claim recites a result that is satisfied by the
presence of the parsing function.
Therefore, we will sustain the Examiner's rejection of claim 8 under
35 U.S.C. § 103(a).
Dependent claim 9
Claim 9 depends from claim 1 and recites that “said first, second and
said third image areas comprise different sections of one or more image
windows.”
Appellants argue that claim 9 is allowable because
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Brummel (with Seliger) in paragraph 0023 relied on fails to
suggest “said first, second and said third image areas comprise
different sections of one or more image windows” in which the
“first image area” identifies “medications a patient is receiving
following admission” the “second image area” indicates
“medications said patient received prior to admission” and the
“third image area” indicates a “consolidated list of
medications.”

(Br. 13-14, emphasis omitted).

Appellants’ assertions do not rise to the level of a separate argument.
See In re Lovin, 652 F.3d 1349, 1357 (Fed. Cir. 2011) (holding that the
Board reasonably interpreted 37 C.F.R. § 41.37 (c)(1)(vii) as requiring
“more substantive arguments in an appeal brief than a mere recitation of the
claim elements and a naked assertion that the corresponding elements were
not found in the prior art”).
Therefore, we will sustain the Examiner’s rejection of claim 9 under
35 U.S.C. § 103(a).
Dependent claim 10
Claim 10 depends from claim 1 and recites that “said first, second and
said third image areas comprise at least two different image windows.”
Appellants argue that claim 10 is allowable based on its dependence
on claim 1 (Br. 14). We are not persuaded for the reasons set forth above
that the Examiner erred in rejecting claim 1 under 35 U.S.C. § 103(a).
Therefore, we will sustain the Examiner’s rejection of claim 10 under
35 U.S.C. § 103(a).
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Dependent claim 11
Claim 11 depends from claim 1 and recites that “said third image area
enables a user to automatically initiate at least one of, (a) automatic
generation of a printed prescription and (b) automatic communication of an
electronic data file representing a printed prescription, for at least one of said
medications on said consolidated list of medications.”
Appellants argue that claim 11 is patentable because
Brummel (with Seliger) in paragraphs 0024, 0030 and 0044
relied on [by the Examiner] fails to suggest an image area
presenting a “consolidated list of medications” at all and
certainly not together with enabling “a user to automatically
initiate at least one of, (a) automatic generation of a printed
prescription and (b) automatic communication of an electronic
data file representing a printed prescription, for at least one of
said medications on said consolidated list of medications.”

(Br. 14)
Appellants’ assertions do not rise to the level of a separate argument.
See In re Lovin, 652 F.3d at 1357. Therefore, we will sustain the
Examiner’s rejection of claim 11 under 35 U.S.C. § 103(a).
Independent claims 12 and 13
Appellants argue that claims 12 and 13 are allowable “for [the]
reasons given in connection with claims 1 and 2 and because of the
additional feature combination this presents” (Br. 14). We are not persuaded
for the reasons set forth above that the Examiner erred in rejecting claims 1
and 2 under 35 U.S.C. § 103(a).
Therefore, we will sustain the Examiner’s rejection of claims 12 and
13 under 35 U.S.C. § 103(a).
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Dependent claims 14-16
Claims 14-16 depend from claim 13. Appellants argue that claims
14-16 are allowable “based on their dependence on their base claims and
because of the additional features they present” (Br. 14).
We are not persuaded for the reasons set forth above that the
Examiner erred in rejecting claim 13 under 35 U.S.C. § 103(a). Therefore,
we will sustain the Examiner’s rejection of claims 14-16 under 35 U.S.C.
§ 103(a).

DECISION
The Examiner’s rejection of claims 1-16 under 35 U.S.C. § 101 is
reversed.
The Examiner’s rejection of claims 1-16 under 35 U.S.C. § 103(a) 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).

AFFIRMED

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