Ex Parte Weiner et al

Board of Patent Appeals and Interferences

Apr 23, 2012

11015542 (B.P.A.I. Apr. 23, 2012)

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.
11/015,542 12/17/2004 Allison Leigh Weiner 160002XX/YOD
(GEMS:0280)
9520
7590 04/23/2012
Patrick S. Yoder
FLETCHER YODER
P.O. Box 692289
Houston, TX 77269-2289
EXAMINER
FUELLING, MICHAEL
ART UNIT PAPER NUMBER
3626
MAIL DATE DELIVERY MODE
04/23/2012 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 ALLISON LEIGH WEINER and GOPAL B. AVINASH 8
___________ 9
10
Appeal 2010-010176 11
Application 11/015,542 12
Technology Center 3600 13
___________ 14
15
16
Before MURRIEL E. CRAWFORD, ANTON W. FETTING, and 17
BIBHU R. MOHANTY, Administrative Patent Judges. 18
FETTING, Administrative Patent Judge. 19
DECISION ON APPEAL 20
21
Appeal 2010-010176
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STATEMENT OF THE CASE1 1
Allison Leigh Weiner and Gopal B. Avinash (Appellants) seek review 2
under 35 U.S.C. § 134 (2002) of a final rejection of claims 1-5, 7-11, and 3
14-20, the only claims pending in the application on appeal. We have 4
jurisdiction over the appeal pursuant to 35 U.S.C. § 6(b) (2002). 5
The Appellants invented techniques for integrating genetic information 6
with other available data to provide improved healthcare on an 7
individualized basis (Specification ¶ 0001). 8
An understanding of the invention can be derived from a reading of 9
exemplary claim 1, which is reproduced below [bracketed matter and some 10
paragraphing added]. 11
1. A method for generating a genetic knowledgebase 12
comprising: 13
[1] using one or more physical computing devices 14
programmed to perform 15
the steps accessing genetic data 16
defining a plurality of genetic 17
predispositions; 18
[2] accessing health data 19
defining a plurality of known health conditions; 20
[3] accessing response data 21
defining a plurality of responses to the known health 22
conditions; 23
[4] determining relationships 24

1 Our decision will make reference to the Appellants’ Appeal Brief (“App.
Br.,” filed April 14, 2010) and Reply Brief (“Reply Br.,” filed June 30,
2010), and the Examiner’s Answer (“Ans.,” mailed April 30, 2010).
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among 1
the genetic predispositions, 2
the known health conditions 3
and 4
the responses; 5
[5] storing the relationships; 6
and 7
[6] prioritizing a plurality of recommendations 8
for a particular patient 9
based on 10
genetic data 11
of the particular patient 12
and 13
the stored relationships. 14
The Examiner relies upon the following prior art: 15
Davies US 7,529,685 B2 May 5, 2009
Janas US 7,577,573 B2 Aug. 18, 2009
Claims 1-5, 7-11, and 14-20 stand rejected under 35 U.S.C. § 103(a) as 16
unpatentable over Davies and Janas. 17
ISSUES 18
The issue of obviousness turns primarily on whether the applied art 19
describes some form of prioritizing and diagnosis based on genetic 20
predisposition and health condition data, or whether the issue of such data in 21
such prioritizing and diagnosis was predictable to one of ordinary skill. 22
Appeal 2010-010176
Application 11/015,542

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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
Facts Related to Appellants’ Disclosure 4
01. The processing performed by the response system 22 may rely 5
upon simple comparisons of values, ranges of values, matches 6
among textual data, and so forth, but may also include highly 7
complex rules and algorithms for defining responses. These may 8
include, for example, algorithms for recognizing exact matches 9
among data, algorithms for selecting features of interest within 10
data, rules for permitting partial matches among data, rules for 11
inclusion or exclusion of certain responses (i.e., limiting false 12
positives or false negatives), and rules for prioritizing 13
recommendations for responses. Specification 5: ¶ 0017. 14
02. Where a diagnosis or potential diagnosis is made based upon the 15
IGKB and the personal information from a particular patient, 16
various recommendations may be made, and these may be made in 17
a prioritized fashion. Specification 14: ¶ 0040. 18
Facts Related to the Prior Art 19
Davies 20
03. Davies is directed to storing and retrieving patient data in a 21
database connected to a network by storing clinical data in the 22
database, extracting data from the clinical data, querying the 23
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database using a taxonomy that includes inclusive or exclusive 1
search criterion, and receiving a result set. Davies 1:18-25. 2
04. In Davies, diagnostic data includes past diagnosis and treatment 3
data, medical history data, biochemical data, physiologic data, 4
proteonomic data, family history data, dietary data, exercise data, 5
demographic data, drug response history data, genotype data or 6
haplotype data such as a chromosome structure, a DNA sequence, 7
a length of a specific gene or region, a gene expression, or at least 8
one single nucleotide polymorphism (SNP). The data is related to 9
a genetic-based disease and includes oncology data, urology data, 10
cardiology data, gastroenterology data, orthopedic data, 11
immunology data, rheumatology data, neurology data, 12
pulmonology data, internal medicine data, family practice 13
medicine data, and demographic data. Davies 5:15-30. 14
05. Davies provides suggestions for diagnostic, genetic testing, and/or 15
treatment. Davies also provides methods for searching and 16
correlating the information, and identifying patient populations 17
that share common attributes. Davies 6:42-48. 18
Janas 19
06. Janas is directed to service provider support in providing services 20
involving complex interplay of factors, recommendations and 21
guidelines and requirements from a range of sources, including 22
judgment decisions, and in particular for information, decisions 23
and reporting support in the providing of medical services. Janas 24
1:5-10. 25
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07. A Medical Support Process (MSP) may also include a 1
Recommendations Phase to assist the practitioner in determining a 2
course of treatment for the patient, based upon currently accepted 3
guidelines and standards of practice in the field and for the 4
condition of interest. These procedures may provide guidelines 5
regarding possible medications and recommended medication 6
levels, including the effects, side effects and interaction effects of 7
the medications, reminders of medications that have been used 8
previously or other medications currently being used by the 9
patient for other reasons, suggestions for forms of treatment, 10
suggestions for further tests and similar procedures, and so on. 11
Janas 9:4-16. 12
ANALYSIS 13
We are not persuaded by the Appellants’ argument that the art fails to 14
describe prioritizing a plurality of recommendations for a particular patient 15
based on genetic data of the particular patient and the stored relationships. 16
Appeal Br. 12. The Examiner found that Davies described prioritizing 17
medical procedures as evidence of its notoriety. Ans. 4. The Examiner 18
further found that “[t]he appellant does not provide any algorithm for its 19
’prioritizing’ and hence the limitation must be broadly interpreted.” Ans. 20
11. 21
The appellant's written description contains the word 22
"prioritizing" in only one instance (i.e., p. 5, [0017], last line "* 23
* *, and rules for prioritizing recommendations for responses."). 24
The appellant's written description does not provide any 25
examples of its "rules for prioritizing recommendations." 26
Similarly, the appellant's drawings reflect making 27
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recommendations as a 'black box' (i.e., Fig. 5 stand alone block 1
118 'Lifestyle Recommendations') and the appellant's drawings 2
do not include 'prioritizing' recommendations. In light of 3
appellant's failure to disclose any algorithm for its prioritizing, 4
or give any examples of its prioritizing, the examiner 5
reasonably concluded prioritizing generally means deciding 6
what to do first. Davies, in the field of medical records and 7
genetic testing for patients, fairly teaches or suggests 8
prioritizing medical recommendations. Example 3 in Davies 9
(C20, L30-65) illustrates prioritizing recommendations based 10
on genetic testing Janas, in the field of medical records, teaches 11
a 'Recommendations Phase' 38 (C9, L4), as detailed above in 12
the grounds of rejection, which is analogous to appellant's 118 13
'Lifestyle Recommendations'. Alternatively, Janas teaches a 14
Medical Support Process 10MSP, which in itself implicitly 15
includes prioritized medical recommendations (C9, L23 16
separate recommendations phase may not be necessary), and is 17
exemplified by i) first a diagnosis of hyperlipidemia (C13, L8 18
and Fig. 4A); ii) next a consideration of other / secondary 19
causes of hyperlipidemia (C13, L29 and Figs. 41 & 4J) and iii) 20
followed by "criteria for recommended periods" for testing a 21
patient's lipid levels (C13, L33 and Fig. 4K). 22
Id. We agree that construing prioritization consistent with the breadth of 23
its description in the disclosure simply means deciding on a sequence, as the 24
first in sequence is implicitly higher in performance priority than those that 25
follow. Janas describes creating a course of treatment (FF 07) which would 26
be such a sequence of treatment procedures. 27
We are not persuaded by the Appellants’ argument that the art fails to 28
describe genetic predispositions, health conditions, and the relationships 29
among those and responses. Appeal Br. 14-15. Davies explicitly recites 30
several forms of genetic data and health conditions data (FF 04), which 31
inherently also forms genetic predisposition data. The genetics implies its 32
own predispositions. Data concerning different areas of medicine such as 33
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internal medicine similarly implicitly refers to health conditions that area 1
deals with. The claim does not narrow the manner in which the data is 2
represented. Davies explicitly correlates its information. FF 05. In any 3
event, the art clearly shows acquiring various forms of medical data, 4
correlating it, and using that to form a course of treatment. Any form of 5
medical data, including genetic predisposition and health condition data, 6
commonly used for medical diagnosis would be predictable forms of the 7
data the applied art would use. 8
CONCLUSIONS OF LAW 9
The rejection of claims 1-5, 7-11, and 14-20 under 35 U.S.C. § 103(a) as 10
unpatentable over Davies and Janas is proper. 11
DECISION 12
The rejection of claims 1-5, 7-11, and 14-20 is affirmed. 13
No time period for taking any subsequent action in connection with this 14
appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. 15
§ 1.136(a)(1)(iv) (2007). 16
17
AFFIRMED 18
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MP 22