Ex Parte Vonk et al

Board of Patent Appeals and Interferences

May 9, 2011

09881041 (B.P.A.I. May. 9, 2011)

UNITED STATES PATENT AND TRADEMARK OFFICE
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.
09/881,041 06/15/2001 Glenn Philander Vonk P-5013 5157
26253 7590 05/09/2011
David W. Highet, VP & Chief IP Counsel
Becton, Dickinson and Company
1 Becton Drive
MC 110
Franklin Lakes, NJ 07417-1880
EXAMINER
SEREBOFF, NEAL
ART UNIT PAPER NUMBER
3626
MAIL DATE DELIVERY MODE
05/09/2011 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 1
___________ 2
3
BEFORE THE BOARD OF PATENT APPEALS 4
AND INTERFERENCES 5
___________ 6
7
Ex parte GLENN PHILANDER VONK, ANN K. FRANTZ, DAVID 8
JOSHUA WHELLAN, CHRISTOPHER MICHAEL O’CONNOR, 9
GEORGE B. GOLDMAN 10
___________ 11
12
Appeal 2011-001314 13
Application 09/881,041 14
Technology Center 3600 15
___________ 16
17
18
Before HUBERT C. LORIN, ANTON W. FETTING, and 19
JOSEPH A. FISCHETTI, Administrative Patent Judges. 20
FETTING, Administrative Patent Judge. 21
DECISION ON APPEAL 22
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STATEMENT OF THE CASE1 1

1 Our decision will make reference to the Appellants’ Appeal Brief (“App.
Br.,” filed May 13, 2010) and Reply Brief (“Reply Br.,” filed October 4,
2010), and the Examiner’s Answer (“Ans.,” mailed August 3, 2010).
Glenn Philander Vonk, Ann K. Frantz, David Joshua Whellan, 2
Christopher Michael O’Connor and George B. Goldman (Appellants) seek 3
review under 35 U.S.C. § 134 (2002) of a final rejection of claims 1-7, the 4
only claims pending in the application on appeal. We have jurisdiction over 5
the appeal pursuant to 35 U.S.C. § 6(b) (2002). 6
The Appellants invented a way for healthcare managers and providers to 7
interactively cooperate with patients to monitor and evaluate patient status to 8
provide the most appropriate treatment for the patients in the most cost-9
effective manner. Specification ¶ 0003. 10
An understanding of the invention can be derived from a reading of 11
exemplary claim 1, which is reproduced below [bracketed matter and some 12
paragraphing added]. 13
1. A system for monitoring health-related conditions of 14
patients, comprising: 15
[1] a plurality of remote monitoring stations, 16
each being configured to receive patient health-related 17
data pertaining to a respective patient; and 18
[2] a computer network comprising 19
a database containing accumulated health-related 20
data pertaining to health-related conditions and 21
treatments that reveals population trends and 22
outcomes and 23
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at least one data access device configured to 1
provide a health care provider access to said 2
computer network and said database, 3
said computer network configured to 4
receive said patient health-related data pertaining 5
to respective patients from said remote monitoring 6
stations and 7
provide a health care provider with electronic 8
treatment establishment tools to establish treatment 9
programs for said patients 10
based on their respective patient health-11
related data and said accumulated health-12
related data, and 13
said computer network configured to 14
revise said accumulated health-related data 15
based on said patient health-related data 16
for identification of improvements in 17
standards of care and medical practices that 18
can be made for different ones of the health-19
related conditions; 20
[3] said remote monitoring stations being configured with 21
electronic self-management tools for receiving from a 22
respective patient said patient health-related data 23
relating to integration of a selected one of said treatment 24
programs into the patient's lifestyle comprising 25
at least one of questions concerning health or 26
treatment and responses to questions concerning 27
health or treatment that are generated using said 28
electronic self-management tools; 29
[4] said computer network being configured with electronic 30
assessment tools 31
to allow a health care provider to assess said patient 32
health-related data to determine 33
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progress of the patient on the selected treatment 1
program and 2
whether information, which relates to the selected 3
treatment program and is selected to advise the 4
patient on how to improve the integration of the 5
selected treatment program into the patient's 6
lifestyle, 7
needs to be conveyed to the patient in 8
response to said progress determination. 9
The Examiner relies upon the following prior art: 10
Ballantyne US 5,867,821 Feb. 2, 1999
Summerell US 5,937,387 Aug. 10, 1999
Joao US 6,283,761 B1 Sept. 4, 2001
Claims 1-7 stand rejected under 35 U.S.C. § 112, first paragraph, as 11
lacking a supporting written description within the original disclosure. 12
Claims 1-7 stand rejected under 35 U.S.C. § 112, second paragraph, as 13
failing to particularly point out and distinctly claim the invention. 14
Claims 1-7 stand rejected under 35 U.S.C. § 103(a) as unpatentable over 15
Ballantyne, Joao, and Summerell. 16
ISSUES 17
The issues of written description and indefiniteness turn on whether the 18
tools in limitation [4] are supported by the Specification and whether their 19
scope is unknown. The issue of obviousness turns on whether the art 20
describes the tools in limitation [4]. 21
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FACTS PERTINENT TO THE ISSUES 1
The following enumerated Findings of Fact (FF) are believed to be 2
supported by a preponderance of the evidence. 3
01. We adopt and incorporate by reference Findings of Fact 4
numbers 1-28 from the prior appeal decision 2009-003953 in this 5
application. 6
Further Facts Related to the Prior Art 7
Joao 8
29. Joao can be utilized by any provider, patient, and/or 9
intermediary, to evaluate and/or monitor treatments and evaluate 10
patients. Joao 29:9-15. 11
30. Joao’s comprehensive database provides a data and/or 12
information source which can be accessed by any provider, from 13
anywhere in the world, and at any time, in order to obtain 14
information about a patient in his, her, or its care. For example, a 15
patient traveling far from home and out of reach by his or her 16
current healthcare provider can be treated by another provider who 17
can access the central processing computer 10, from any location, 18
and at any time, and obtain up-to-date and/or comprehensive 19
patient healthcare and/or medical and family history information, 20
current healthcare and/or medical condition, current treatment 21
and/or care and/or any other information which can facilitate 22
optimal healthcare and/or medical treatment. Joao 30:9-21. 23
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ANALYSIS 1
Claims 1-7 rejected under 35 U.S.C. § 112, first paragraph, as lacking a 2
supporting written description within the original disclosure. 3
We are persuaded by the Appellants’ argument that the Specification 4
supports the claim 1 limitation [4] of the “computer network being 5
configured with electronic assessment tools to allow a health care provider 6
to assess said . . .data to determine . . .whether information, which . . . is 7
selected to advise the patient on how to improve the integration of the 8
selected treatment program into the patient's lifestyle, needs to be 9
conveyed.” 10
The Appellants cite several paragraphs to contend that the cited portions 11
of the Specification “provides explicit support for information that relates to 12
a selected treatment program and is selected to advise a patient on how to 13
improve the integration of the selected treatment program into the patient's 14
lifestyle.” Appeal Br. 7-8; Reply Br. 4-8. We find these paragraphs in the 15
Specification do support the limitation at issue. Paragraphs [0045], [0051], 16
and [0093] are particularly pertinent. 17
Claims 1-7 rejected under 35 U.S.C. § 112, second paragraph, as failing to 18
particularly point out and distinctly claim the invention. 19
We are persuaded by the Appellants’ arguments that the phrase “advise 20
the patient on how to improve the integration” does not render the claim 21
indefinite. Appeal Br. 8-10; Reply Br. 8-9. The Examiner found that the 22
advice to be non-functional descriptive material and afforded no patentable 23
weight. Ans. 4. This phrase comes from the same limitation in the written 24
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description rejection, supra, and simply characterizes the tools, which are 1
the actual structural limitation in the whole of limitation [4]. 2
The issue then is whether the scope of tools that allow one to do what is 3
recited in limitation [4] is indefinite. Although very broad, since any 4
diagnostic tool would at least allow such activity, the scope would be 5
understood by one of ordinary skill. While we agree with the Examiner that 6
advice is non-functional descriptive material, the mere inclusion of such 7
material, which is given no patentable weight, does not render a claim 8
indefinite. 9
Claims 1-7 rejected under 35 U.S.C. § 103(a) as unpatentable over 10
Ballantyne, Joao, and Summerell. 11
We are unpersuaded by the Appellants’ argument that the applied art 12
fails to describe limitation [4] of claim 1. Appeal Br. 10-11; Reply Br. 9-10. 13
The Appellants contend that the information in limitation [4] is directed to 14
the patient; whereas Joao directs information instead to a payer. Joao directs 15
its information to many parties including the patient. FF 29 & 30. The 16
Appellants further contend that Joao’s information is limited to that of 17
payment and reasons. We find that Joao provides information that support 18
their assessments as claimed. Id. 19
Finally, in the Reply Brief, the Appellants contend that although Joao 20
does provide tools for assessment and diagnosis, Joao does not do so to 21
assess whether information needs to be conveyed. We find that whether 22
Joao explicitly conveys or describes needing to convey such information is 23
not dispositive, since the claim limitation only requires such tools that would 24
allow assessment for such necessity. Clearly, any diagnostic tool would at 25
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least allow for such an assessment, and Joao’s tools go much further than 1
mere primitive diagnostics. 2
CONCLUSIONS OF LAW 3
The rejection of claims 1-7 under 35 U.S.C. § 112, first paragraph, as 4
lacking a supporting written description within the original disclosure is 5
improper. 6
The rejection of claims 1-7 under 35 U.S.C. § 112, second paragraph, as 7
failing to particularly point out and distinctly claim the invention is 8
improper. 9
The rejection of claims 1-7 under 35 U.S.C. § 103(a) as unpatentable 10
over Ballantyne, Joao, and Summerell is proper. 11
DECISION 12
To summarize, our decision is as follows. 13
 The rejection of claims 1-7 under 35 U.S.C. § 112, first paragraph, as 14
lacking a supporting written description within the original disclosure 15
is not sustained. 16
 The rejection of claims 1-7 under 35 U.S.C. § 112, second paragraph, 17
as failing to particularly point out and distinctly claim the invention is 18
not sustained. 19
 The rejection of claims 1-7 under 35 U.S.C. § 103(a) as unpatentable 20
over Ballantyne, Joao, and Summerell is sustained. 21
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No time period for taking any subsequent action in connection with this 1
appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. 2
§ 1.136(a)(1)(iv) (2007). 3
4
AFFIRMED 5
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