Ex Parte Wyatt

Board of Patent Appeals and Interferences

Oct 30, 2008

09544508 (B.P.A.I. Oct. 30, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE 1
____________________ 2
3
BEFORE THE BOARD OF PATENT APPEALS 4
AND INTERFERENCES 5
____________________ 6
7
Ex parte PHIL WYATT 8
____________________ 9
10
Appeal 2008-4061 11
Application 09/544,508 12
Technology Center 3600 13
____________________ 14
15
Decided: October 30, 2008 16
____________________ 17
18
Before WILLIAM F. PATE, III, ANTON W. FETTING and DANIEL S. 19
SONG, Administrative Patent Judges. 20
21
SONG, Administrative Patent Judge. 22
23
DECISION ON APPEAL 24
25
STATEMENT OF THE CASE 26
The Appellant appeals under 35 U.S.C. § 134 (2002) from a Final 27
Rejection of claims 1-10 and 14-19. Claims 11-13 and 20 have been 28
withdrawn from consideration. We have jurisdiction under 35 U.S.C. § 6(b) 29
(2002). 30
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The Appellant claims a method and a system for providing bed 1
availability information of healthcare facilities such as nursing homes, 2
retirement homes and the like. The claimed invention identifies a matching 3
healthcare facility that provides the type of medical care needed by the 4
patient and also has a bed available to receive the patient. 5
Independent claims 1 and 14 read as follows: 6
1. A method for providing bed availability information to a 7
user wherein the user identifies an available bed for a patient 8
and further wherein the bed availability information includes 9
information on beds at a plurality of healthcare facilities 10
wherein the plurality of healthcare facilities receives the patient 11
based on the bed availability at one of the plurality of 12
healthcare facilities, the method comprising the steps of: 13
providing a computer network; 14
providing a database connected to the computer network; 15
inputting bed availability information for a plurality of 16
healthcare facilities wherein each of the plurality of healthcare 17
facilities have beds for providing a plurality of types of medical 18
care and further wherein the bed availability information is 19
input into the database and is accessible by the computer 20
network; 21
providing a first access to the database for determining 22
the available bed for the patient by the user of the database; 23
inputting a medical condition of the patient into the 24
database; 25
searching the bed availability information for the 26
plurality of healthcare facilities in the database; 27
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matching the medical condition of the patient in the 1
database to one of the types of medical care to obtain the bed 2
availability information of the plurality of healthcare facilities 3
based on each of the plurality of healthcare facilities having 4
beds for providing one of the types of medical care to treat the 5
medical condition of the patient; and 6
determining the available bed in the plurality of 7
healthcare facilities for the patient with the medical condition 8
from the bed availability information based upon the medical 9
condition of the patient in the database. 10
11
14. A system for storing and accessing bed availability 12
information to a user wherein the bed availability information 13
includes information for a plurality of healthcare facilities 14
wherein each of the plurality of healthcare facilities has a 15
plurality of beds and receives a patient if a bed is available, the 16
system comprising: 17
a computer network; 18
a database associated with the computer network; 19
means for inputting bed availability information of a 20
plurality of healthcare facilities into the database; 21
means for accessing the bed availability information and 22
retrieving the bed availability information from the database via 23
the computer network; 24
means for inputting information of the patient into a form 25
via the computer network wherein the information of the patient 26
is stored in the database; 27
means for searching the database for the bed availability 28
information of the plurality of healthcare facilities; 29
means for comparing the information of the patient in the 30
database to the bed availability information in the database to 31
obtain each of the plurality of healthcare facilities for treating 32
the patient; and 33
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means for determining if a bed in the plurality of beds at 1
each of the plurality of healthcare facilities for treating the 2
patient is available based on the information of the patient in 3
the database. 4
5
The prior art relied upon by the Examiner in rejecting the claims is: 6
Stanis 4,135,241 Jan. 16, 1979 7
Bruno US 6,289,088 B1 Sep. 11, 2001 8
Øhrn US 6,356,874 B1 Mar. 12, 2002 9
10
The Examiner rejected claims 1, 2, 4-9, 14-17 and 19 under 35 U.S.C. 11
§ 103(a) as unpatentable over Øhrn and Stanis. 12
The Examiner also rejected claims 3, 10 and 18 under 35 U.S.C. 13
§ 103(a) as unpatentable over Øhrn, Stanis and Bruno. 14
We AFFIRM-IN-PART. 15
16
ISSUES 17
The following issues have been raised in the present appeal. 18
1. Whether the Appellant has shown that the Examiner erred in 19
rejecting claims 1, 2, 4-9, 14-17 and 19 as unpatentable over Øhrn and 20
Stanis. 21
2. Whether the Appellant has shown that the Examiner erred 22
in rejecting claims 3, 10 and 18 as unpatentable over Øhrn, Stanis and 23
Bruno. 24
25
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FINDINGS OF FACT 1
The record supports the following findings of fact (FF) by a 2
preponderance of the evidence. 3
1. Øhrn describes a computer-based method and system for 4
reserving a room for a hotel or for admissions to a hospital (col. 1, ll. 6-39; 5
col. 10. ll. 22-30). The system uses a communication network I and includes 6
a central data processing device with a database (fig. 1) into which room 7
availability information for a plurality of facilities is inputted and updated 8
(i.e., means for inputting room availability information) (col. 4, ll. 10-20; 9
col. 5, ll. 47-63; fig. 1). In the system of Øhrn, the user inputs information 10
such as location and date into a user terminal (i.e., means for inputting 11
information of the patient) that can include a display for displaying 12
alphanumeric and graphic information (col. 6, ll. 8-24 and 37-46; col. 7, ll. 13
3-15; figs. 8-10). Upon receiving the user input information, the central data 14
processing device accesses and searches the database to determine room 15
availability, and matching facilities are presented to the user (i.e., means for 16
searching, means for comparing and means for determining) (col. 5, ll. 37-17
42; col.7, ll. 27-37). 18
2. Øhrn does not specifically describe that the method includes 19
inputting medical condition information of the patient into the database or 20
matching the medical condition to one of the types of medial care in order to 21
determine the availability of beds from the bed availability information. 22
3. Stanis describes a bed allocation data handling system for a 23
hospital that provides status and nursing station information for the beds of 24
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the hospital so that such information can be used to search for beds (col. 3, 1
ll. 14-25; col. 21, ll. 29-34). 2
3
PRINCIPLES OF LAW 4
“Section 103 forbids issuance of a patent when ‘the differences 5
between the subject matter sought to be patented and the prior art are such 6
that the subject matter as a whole would have been obvious at the time the 7
invention was made to a person having ordinary skill in the art to which said 8
subject matter pertains.’” KSR Int'l Co. v. Teleflex Inc., 127 S.Ct. 1727, 9
1734 (2007). The question of obviousness is resolved on the basis of 10
underlying factual determinations including (1) the scope and content of the 11
prior art, (2) any differences between the claimed subject matter and the 12
prior art, (3) the level of skill in the art, and (4) where in evidence, so-called 13
secondary considerations. Graham v. John Deere Co., 383 U.S. 1, 17-18 14
(1966). In KSR, the Court explained that “[o]ften, it will be necessary for a 15
court to look to interrelated teachings of multiple patents; the effects of 16
demands known to the design community or present in the marketplace; and 17
the background knowledge possessed by a person having ordinary skill in 18
the art, all in order to determine whether there was an apparent reason to 19
combine the known elements in the fashion claimed by the patent at issue.” 20
KSR, 127 S.Ct. at 1740-41. 21
The Court further explained: 22
When a work is available in one field of endeavor, 23
design incentives and other market forces can 24
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prompt variations of it, either in the same field or a 1
different one. If a person of ordinary skill can 2
implement a predictable variation, §103 likely bars 3
its patentability. For the same reason, if a 4
technique has been used to improve one device, 5
and a person of ordinary skill in the art would 6
recognize that it would improve similar devices in 7
the same way, using the technique is obvious 8
unless its actual application is beyond his or her 9
skill. 10
Id. at 1740. 11
The Court noted that “[t]o facilitate review, this analysis should be 12
made explicit.” Id. at 1741, citing In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 13
2006) (“[R]ejections on obviousness grounds cannot be sustained by mere 14
conclusory statements; instead, there must be some articulated reasoning 15
with some rational underpinning to support the legal conclusion of 16
obviousness”). However, “the analysis need not seek out precise teachings 17
directed to the specific subject matter of the challenged claim, for a court 18
can take account of the inferences and creative steps that a person of 19
ordinary skill in the art would employ.” KSR, 127 S.Ct. at 1741. 20
21
ANALYSIS 22
Claims 1, 2, 4-9, 14-17 and 19 23
The Examiner rejects independent claims 1 and 14 stating that Øhrn 24
discloses most of the limitations recited therein, but concedes that Øhrn does 25
not specifically describe entering the individual medical condition of a 26
patient or matching the bed to the medical condition of a patient (FF 1 and 2; 27
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Ans. 3). However, the Examiner finds that Stanis describes searching for 1
available beds and information related thereto for the benefit of managing 2
the status of beds in a hospital (FF 3; Ans. 4). In this regard, the Examiner 3
articulates that it would have been obvious to one of ordinary skill in the art 4
to match patient condition to available beds in the invention of Øhrn as 5
taught by Stanis “for the benefit of accurately placing patients in the correct 6
ward” of the hospital (Ans. 4). 7
8
Claims 1, 2, 4-9 9
Initially, in turning to the Appellant’s arguments, we find the 10
numerous arguments that the prior art teaches away from the claimed 11
invention (App. Br. 14, 16 and 17) to be unpersuasive. Mere description of 12
an implementation in the prior art that differs from the Appellant’s claimed 13
invention, without more, does not show that the prior art is “teaching away” 14
from the invention claimed. See In re Fulton, 391 F.3.d 1195, 1201 (Fed. 15
Cir. 2004). We also disagree with the Appellant’s contention that Øhrn is 16
not in the same field of endeavor as Stanis (Reply Br. 6) because Øhrn 17
clearly discloses the use of the described method and system for admissions 18
to a hospital, which of course, is a healthcare facility (FF 1). We further find 19
unpersuasive, the Appellant’s argument that the combination of Stanis and 20
Øhrn fails to describe a plurality of healthcare providers as recited in claim 1 21
(Reply Br. 5) because Øhrn clearly describes a system having information 22
for a plurality of facilities (FF 1). 23
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Nonetheless, we do not find that combining Øhrn and Stanis in the 1
manner suggested by the Examiner results in the method recited in claim 1. 2
We agree with the Examiner’s contention that providing a modern web 3
interface to the back office system of Stanis would have been obvious (Ans. 4
6), and we also find that Stanis describes searching and matching of beds 5
using bed information (FF 3). However, the described searching and 6
matching of facilities in Øhrn does not relate to the medical condition of the 7
patient or to the type of medical care as recited in claim 1. This deficiency is 8
not remedied by the Examiner’s application of the teachings of Stanis. 9
When Øhrn is modified based on the teachings of Stanis in the manner 10
suggested by the Examiner, the combination results in matching of the 11
patient’s medical condition and corresponding bed assignment within a 12
particular hospital facility, but the matching and bed assignment does not 13
extend beyond the particular facility. In other words, in our view, the 14
combination of Øhrn and Stanis as suggested by the Examiner results in 15
identifying one or more hospital facilities that have available beds based 16
upon the input of the user (e.g., location), selecting the desired facility, and 17
assigning a bed in a ward of the selected hospital based on the medical 18
condition of the patient. We do not equate this resultant combination as 19
satisfying the recitations of claim 1 which requires matching the medical 20
condition of the patient to a type of medical care to obtain bed availability 21
information of a plurality of facilities. 22
The Examiner’s statement that it is well known fact that hospitals 23
have different wards for providing different types of medical care to patients 24
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(Ans. 6) is duly noted, but the Examiner does not articulate a rational reason 1
as to why one of ordinary skill in the art would be motivated to extend this 2
fact to assign beds in wards of a plurality of different hospitals which have 3
their own different wards that provide various types of medial care. Thus, 4
we find that the combination of Øhrn and Stanis, as applied by the 5
Examiner, does not describe the claimed method. Moreover, we find the 6
Examiner’s articulated reason for combining these references, namely, “for 7
the benefit of accurately placing patients in the correct ward” (Ans. 4 and 6), 8
without more, is insufficient to overcome the noted deficiency of the 9
combination. See KSR, 127 S.Ct. at 1741. Hence, we do not sustain the 10
Examiner’s rejection of independent claim 1. In view of the above, we also 11
do not sustain the Examiner’s rejection of claims 2 and 4-9 that depend from 12
independent claim 1, and we need not specifically address the Appellant’s 13
arguments directed to these dependent claims (App. Br. 23-29). 14
15
Claims 14-17 and 19 16
With respect to independent claim 14, the Appellant presents 17
substantially similar arguments (App. Br. 17-21) as those presented relative 18
to independent claim 1 discussed supra. In this regard, the Appellant 19
contends that neither Øhrn nor Stanis, alone or in combination, describe a 20
means for inputting bed availability information of a plurality of healthcare 21
facilities, a means for searching the database, or a means for inputting 22
information of the patient into a form via the computer network (App. Br. 23
18). However, the Appellant’s argument is not persuasive in that Øhrn 24
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describes these limitations (FF 1; Ans. 4 and 5). The Appellant’s argument 1
distinguishing “hotel room vacancy” of Øhrn from hospital bed availability 2
(Reply Br. 6) is unpersuasive because Øhrn clearly describes applicability to 3
hospitals which are healthcare facilities (FF 1). Moreover, the Appellant 4
does not provide any convincing argument that the recited “bed availability 5
information” is distinguishable from room availability information used by 6
the system and method of Øhrn. 7
The Appellant also argues that claim 14 requires a means for inputting 8
patient’s medical data because claim 14 further recites a means for 9
comparing the patient information to appropriate healthcare facilities, and 10
the claimed system would not be capable of determining the appropriate 11
patient treatment facilities without any information regarding the medical 12
condition of the patient (Reply Br. 7). Thus, the Appellant contends that the 13
neither Øhrn nor Stanis, taken singly or in combination, describes the recited 14
system of claim 14 in which information regarding the medical condition of 15
the patient is inputted (App. Br. 18 and 19; Reply Br. 7). 16
However, the Appellant’s argument is not persuasive because it is not 17
based on limitations appearing in the claims. See In re Self, 671 F.2d 1344, 18
1348 (CCPA 1982). As noted by the Examiner, the apparatus claim 14 19
merely recites “information of the patient” which is broader than the 20
limitation “medical condition of the patient” as now argued by the Appellant 21
(Ans. 4). During prosecution, claims are to be given their broadest 22
reasonable construction in light of the specification as it would be 23
interpreted by one of ordinary skill in the art. In re Am. Acad. of Sci. Tech. 24
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Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). When the broadest reasonable 1
construction of the term “information of the patient” is applied, the 2
geographical information, time of travel and/or price limits inputted by the 3
user into the system of Øhrn clearly satisfy the recited “information of the 4
patient” limitation. Øhrn also describes comparing the inputted information 5
with the information in the database to determine room availability of a 6
plurality of facilities thereby satisfying the remaining structural limitations 7
recited in claim 14 (FF 1). 8
The Appellant further contends that the cited prior art references fail 9
to describe or teach that the bed availability information includes a quantity 10
of beds available, types of beds available, and projection of expected 11
availability of beds as specifically recited in dependent claims 15-17, 12
respectively (App. Br. 34). The Appellant cites In re Gulack which states 13
that the “differences between an invention and the prior art cited against it 14
cannot be ignored merely because the differences reside in the content of the 15
printed matter,” and that the claim must be read as a whole. In re Gulack, 16
703 F.2d 1381, 1385 (Fed. Cir. 1983). However, the Appellant fails to 17
appreciate that In re Gulack also states “[w]here the printed matter is not 18
functionally related to the substrate, the printed matter will not distinguish 19
the invention from the prior art in terms of patentability. Although the 20
printed matter must be considered, in that situation it may not be entitled to 21
patentable weight.” Id. 22
While the Appellant asserts that the specific information recited in 23
claims 15-17 cannot be ignored because “some of the differences between 24
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Appellant’s system relate to the content of information,” and differences 1
between the invention and the combination of Øhrn and Stanis are 2
significant (App. Br. 35), no detailed arguments are presented as to how the 3
specific information recited in these dependent claims relate to the claimed 4
system or components thereof. The appealed claims 15-17 merely recite that 5
the bed availability information includes specific information rather than 6
functionally relate the recited specific types of information to the structural 7
components of the system claimed. Thus, in our view, claims 15-17 merely 8
recite non-functional descriptive material which cannot render non-obvious 9
an invention that would have otherwise been obvious. See In re Ngai, 367 10
F.3d 1336, 1339 (Fed. Cir. 2004). 11
With respect to dependent claim 19, the Appellant’s argument that the 12
cited prior art does not include a means for accessing the database where a 13
facility enters the bed availability into the database is not persuasive because 14
Øhrn clearly teaches facilities updating of the database to accurately reflect 15
current room availability (FF 1). 16
In view of the above, we find that the Appellant has not shown that 17
the Examiner erred in rejecting the apparatus claims 14-17 and 19 as 18
unpatentable over Øhrn and Stanis. 19
20
Claims 3, 10 and 18 21
The Examiner rejected these dependent claims under 35 U.S.C. 22
§ 103(a) as unpatentable over Øhrn, Stanis and Bruno. With respect to 23
method claims 3 and 10 that depend from independent claim 1, Examiner’s 24
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application of Bruno does not cure the deficiency of Øhrn and Stanis 1
discussed supra. Therefore, we do not sustain the Examiner’s rejection of 2
claims 3 and 10. 3
With respect to the apparatus claim 18 that depends from independent 4
claim 1, the Appellant’s argument that Bruno fails to describe the recited 5
remote server (App. Br. 38) is not well taken because a remote server is 6
described in Bruno (numeral 50; fig. 1A) as well as in Øhrn (fig. 1). In 7
addition, the Examiner articulates that it would have been obvious to utilize 8
the Internet as a less expensive alternative to the long distance service 9
described in the combination of Øhrn and Stanis (Ans. 5 and 6). We find the 10
Examiner’s articulated reason to be rational and conclude that it would have 11
been obvious to one of ordinary skill in the art to provide a website on the 12
internet for implementing the combined system of Øhrn and Stanis. See 13
KSR, 127 S.Ct. at 1741. In this regard, we further note that updating of a 14
prior art system using a technique already known in the art (such as website 15
implementation) is obvious to one of ordinary skill in the art unless its actual 16
application is beyond his or her skill. Id. at 1740; see also Leapfrog Ent., 17
Inc. v. Fisher-Price, Inc., 485 F.3d 1157, 1161 (Fed. Cir. 2007). Therefore, 18
the Appellant has not shown that the Examiner erred in rejecting claim 18. 19
20
CONCLUSIONS 21
1. The Examiner erred in rejecting claims 1, 2 and 4-9 as 22
unpatentable over Øhrn and Stanis. 23
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2. The Appellant has not shown that the Examiner erred in 1
rejecting claims 14-17 and 19 as unpatentable over Øhrn and Stanis. 2
3. The Examiner erred in rejecting claims 3 and 10 as 3
unpatentable over Øhrn, Stanis and Bruno. 4
4. The Appellant has not shown that the Examiner erred in 5
rejecting claim 18 as unpatentable over Øhrn, Stanis and Bruno. 6
7
ORDERS 8
1. The Examiner’s rejections of claims 14-19 are AFFIRMED. 9
2. The Examiner’s rejections of claims 1-10 are REVERSED. 10
No time period for taking any subsequent action in connection with 11
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. § 12
1.136(a)(1)(iv) (2007). 13
14
AFFIRMED-IN-PART 15
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ack 18
cc: 19
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PATENTS+TMS, P.C. 21
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