Michael Farrell et al.

Patent Trials and Appeals Board

Sep 11, 2019

13967517 - (D) (P.T.A.B. Sep. 11, 2019)

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.
13/967,517 08/15/2013 Michael Farrell RESMED
3.9-065 CC (897)
2774
147311 7590 09/11/2019
Botos Churchill IP Law LLP
430 Mountain Avenue
Suite 401
New Providence, NJ 07974
EXAMINER
DOUGLAS, STEVEN O
ART UNIT PAPER NUMBER
3649
NOTIFICATION DATE DELIVERY MODE
09/11/2019 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
pto@bciplaw.com
rbotos@bciplaw.com
rchurchill@bciplaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte MICHAEL FARRELL,
MALCOLM RONALD HEBBLEWHITE,
DEIRDRE STEWART, ANN TISTHAMMER,
MAYA VANCE, and ROBIN RANDOLPH

____________________

Appeal 2017-011666
Application 13/967,517
Technology Center 3600
____________________

Before EDWARD A. BROWN, JILL D. HILL, and LEE L. STEPINA,
Administrative Patent Judges.

HILL, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Michael Farrell et al. (“Appellants”)1 appeals under 35 U.S.C.
§ 134(a) from the Examiner’s final decision rejecting claims 1–9, 11–15, and
17–21. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 Appellants’ identify the Assignee ResMed Limited, as the real party in
interest. Appeal Br. 2.
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BACKGROUND
Independent claims 1 and 15 are pending. Independent claim 1,
reproduced below, illustrates the claimed invention:
1. An apparatus for assessing patient breathing and
cardiovascular condition of a patient comprising:
a sensor for monitoring the cardiovascular condition of the
patient;
a storage medium for storing data regarding the breathing
and cardiovascular condition of the patient;
a processor in communication with the storage medium,
the processor being configured to prompt the patient with a series
of different queries from a questionnaire relating to patient
demographic, patient breathing and cardiovascular condition;
a display for presenting the patient with the series of
queries; and
a data entry device for receiving responses to the series of
queries from the patient;
wherein the processor is configured to tally positive
responses to the series of queries to generate a sleep disordered
breathing index, compare the sleep disordered breathing index to
one or more thresholds, and determine whether there is a need
for a full sleep disordered breathing assessment.

REJECTIONS
I. Claims 1–9, 11–15, and 17–21 stand rejected under 35 U.S.C.
§ 101 as directed to a judicial exception without significantly more. Ans. 6.
II. Claims 1–6, 9, 11–15, and 17–21 stand rejected under 35
U.S.C. § 103(a) as unpatentable over Wright (US 2002/0185130 A1, pub.
Dec. 12, 2002) and Walker (US 2007/0250345 A1, pub. Oct. 25, 2007).
Final Act. 2.
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III. Claims 7 and 8 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Wright, Walker, and Stahmann (US 2005/0115561 A1,
pub. June 2, 2005). Final Act. 5.
ANALYSIS
Rejection I – Section 101
The Examiner finds that claims 1–9, 11–15, and 17–21 are directed
to a judicial exception without significantly more. Ans. 6. According to the
Examiner, the claims are “directed to a method and apparatus for assessing
breathing and cardiovascular condition of a patient,” which involves “no
more than a human activity that can be manually performed by a practitioner
involving verbal conversation, tallying responses, calculating and
determining steps partly through use of a conventional computing device
that amounts to no more than an abstract idea.” Id. (citing Alice Corp. Pty.
Ltd. v. CLS Bank Int’l, 573 U.S. 208 (2014). The Examiner further finds
that claim 1 “does not include additional elements that are sufficient to
amount to significantly more than the judicial exception because the claim
only requires”: (1) “monitoring the cardiovascular condition of a patient
with a sensor” (e.g., taking a patient’s pulse manually or via a stethoscope,
pulse oximeter, EEG, or flow sensor); “a storage medium” (e.g., a
practitioner’s memory or note pad); (3) “prompting the patient with a series
of different queries with a processor” (e.g., via a conventional computer
having a display and a keyboard); (4) “tallying positive responses to the
series of queries using the processor” (e.g., using the conventional
computer); and (5) “determining whether there is a need for a full sleep
disordered breathing assessment using the processor” (e.g., using the
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conventional computer “to aid the practitioner in making a mental decision
to order a full sleep disordered breathing assessment.”). Id. at 7.
Appellants argue claims 1–9, 11–15, and 17–21 as a group. Reply Br.
7. We select claim 1 as representative. Claims 2–9, 11–15, and 17–21 stand
or fall with claim 1.
Appellants contend that the Examiner has provided “no facts and no
analysis . . . to support [the] conclusory assertions” that the claims are
directed to an abstract idea. Reply Br. 4. According to Appellants “[t]he
Answer simply states that the ‘abstract idea’ allegedly corresponds to
concepts identified as abstract ideas by the court in . . . [Alice], with no
further clarification.” Id. (emphasis omitted). Appellants continue that the
Examiner not explained which “abstract ideas identified in Alice” cover the
claims, and “there is no explanation of how the abstract ideas identified in
Alice correspond to the features of claim 1.” Id. Appellants argue that, even
if “the claims are abstract for being directed to ‘certain methods of
organizing human activities,’ the claimed features do not support this
assertion,” because “claim 1 is directed to an ‘apparatus’ and claim 15 is
directed to ‘a method’ where a processor” tallies and calculates, which are
not methods of organizing human activities. Id. at 4–5 (emphasis omitted).
Appellants conclude that the Examiner’s Alice step 2A analysis is improper,
because “the Examiner does not satisfy the burden of explaining how the
holding of how the relied-upon case law (i.e., Alice) is directly applicable to
the features as claimed.” Id. at 5.
Appellants also argue that “the claims fully satisfy the requirements of
§ 101,” because “the claimed features amount to significantly more than the
purported ‘abstract idea’” and satisfy Alice step 2B. Id. at 5. Appellants
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contend that the “significantly more” includes claim 15’s recitation of (1)
“monitoring . . . with a sensor,” (2) tallying . . . queries with a processor,”
(3) calculating a probability . . . with the processor,” and (4) determining . . .
using the processor.” Id. According to Appellants, “the claimed features
require steps which cannot be performed either mentally or by hand. In fact,
the claims explicitly state that ‘a sensor’ and ‘a processor’ perform entire
steps.” Id.
Appellants further argue that the Examiner’s allegation that the claims
use a conventional computer device is contrary to Federal Circuit holdings,
“such as in DDR Holdings and Enfish, where the Federal Circuit has held
that when a general purpose processor is configured to operate in connection
with an improved method or system, a claim may recite such a processor as
part of patent eligible subject matter.” Id. at 6 (citing DDR Holdings, LLC v.
Hotels.com, L.P., 773 F.3d 1245, 1249 (Fed. Cir. 2014); Enfish, LLC v.
Microsoft Corp., 822 F.3d 1327 (Fed. Cir. 2016)). Appellants argue that
independent claims 1 and 15 are analogous to the claims presented in DDR
Holdings, and satisfy § 101, by yielding a desired result “(e.g., treating
respiratory disorders in cardiovascular disease patients or potential
cardiovascular disease patients” in a way that is not merely routine and
conventional. Id. Appellants also contend that, similar to Enfish, the claims
“are directed to a ‘specific implementation of a solution to a problem’, in
particular ‘to yield a desired result’ (e.g., treating respiratory disorders in
cardiovascular disease patients or potential cardiovascular disease patients.”
Id. at 7 (citing Spec. ¶ 11). Appellants contend that the Specification
“explains throughout how the technology solves the identified problem.” Id.
(citing Spec. ¶¶ 46, 48, 49, 70–72). Appellants continue that “the claims
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themselves disclose improvements in existing computer technology such as
an ‘apparatus’ and ‘a method’ where a processor tall[ies] . . . calculate[s]
. . . by comparing,” which “plays a significant part in permitting the claimed
features to be performed to implement the solution to the outlined problem.”
Id.
Section 101 of the Patent Act provides, “[w]hoever invents or
discovers any new and useful process, machine, manufacture, or
composition of matter, or any new and useful improvement thereof, may
obtain a patent therefor, subject to the conditions and requirements of this
title.” 35 U.S.C. § 101. However, the Supreme Court has long interpreted
35 U.S.C. § 101 to include implicit exceptions: “‘[l]aws of nature, natural
phenomena, and abstract ideas”’ are not patentable. E.g., Alice Corp. Pty.
Ltd. v. CLS Bank Int’l, 573 U.S. 208, 216 (2014).
In determining whether a claim falls within an excluded category, we
are guided by the Supreme Court’s two-step framework, described in Mayo
and Alice. Id. at 217–18 (citing Mayo Collaborative Servs. v. Prometheus
Labs., Inc., 566 U.S. 66, 75–77 (2012)). In accordance with that framework,
we first determine what concept the claim is “directed to.” See Alice, 573
U.S. at 219 (“On their face, the claims before us are drawn to the concept of
intermediated settlement, i.e., the use of a third party to mitigate settlement
risk.”); see also Bilski v. Kappos, 561 U.S. 593, 611 (2010) (“Claims 1 and 4
in petitioners’ application explain the basic concept of hedging, or protecting
against risk.”).
Concepts determined to be abstract ideas, and thus patent ineligible,
include certain methods of organizing human activity, such as fundamental
economic practices (Alice, 573 U.S. at 219–20; Bilski, 561 U.S. at 611);
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mathematical formulas (Parker v. Flook, 437 U.S. 584, 594–95 (1978)); and
mental processes (Gottschalk v. Benson, 409 U.S. 63, 67 (1972)). If the
claim is “directed to” an abstract idea, we turn to the second step of the Alice
and Mayo framework, where “we must examine the elements of the claim to
determine whether it contains an ‘inventive concept’ sufficient to
‘transform’ the claimed abstract idea into a patent-eligible application.”
Alice, 573 U.S. at 221 (citation omitted).
The PTO recently published revised guidance on the application of
§ 101. USPTO’s January 7, 2019 Memorandum, 2019 Revised Patent
Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019)
(“Memorandum”). Under that guidance, we first look to whether the claim
recites:
(1) any judicial exceptions, including certain groupings of abstract
ideas (i.e., mathematical concepts, certain methods of organizing human
activity such as a fundamental economic practice, or mental processes); and
(2) additional elements that integrate the judicial exception into a
practical application (see MPEP § 2106.05(a)–(c), (e)–(h)).
Only if a claim (1) recites a judicial exception and (2) does not
integrate that exception into a practical application, do we then look to
whether the claim:
(3) adds a specific limitation beyond the judicial exception that is not
“well-understood, routine, conventional” in the field (see MPEP
§ 2106.05(d)); or
(4) simply appends well-understood, routine, conventional activities
previously known to the industry, specified at a high level of generality, to
the judicial exception.
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See 2019 Revised Guidance.
Step 2A, Prong One
The Memorandum instructs us first to determine whether each claim
recites a judicial exception to patent eligibility. 84 Fed. Reg. at 54. The
Memorandum identifies three judicially-excepted groupings: (1)
mathematical concepts, (2) certain methods of organizing human activity
such as fundamental economic practices, and (3) mental processes. Id. at 52.
The Examiner determines that claim 1 recites an abstract idea. See
Ans. 6 (the claims are “directed to a method and apparatus . . . which
involves ‘no more than a human activity that can be manually performed by
a practitioner . . . partly through use of a conventional computing device that
amounts to no more than an abstract idea.’”). We agree with the Examiner
and, for the reasons given below, determine that claim 1 recites an abstract
idea that encompasses a mental process.
Claim 1 recites a processor configured to “prompt the patient with . . .
queries from a questionnaire relating to patient demographic, patient
breathing and cardiovascular condition,” and “tally positive responses to the
. . . queries to generate a sleep disordered breathing index, compare the sleep
disordered breathing index to one or more thresholds, and determine whether
there is a need for a full sleep disordered breathing assessment.”
The Guidance identifies mental processes as one of the enumerated
groupings of abstract ideas. A claim recites a mental process when it
encompasses acts people can perform using their minds or pen and paper.
See, e.g., CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1372–
73 (Fed. Cir. 2011) (determining that a claim whose “steps can be performed
in the human mind, or by a human using a pen and paper” is directed to an
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unpatentable mental process). This is true even if the claim recites use of a
generic computer component to perform the process steps. See, e.g., Versata
Dev. Grp., Inc. v. SAP Am., Inc., 793 F.3d 1306, 1335 (Fed. Cir. 2015)
(“Courts have examined claims that required the use of a computer and still
found that the underlying, patent-ineligible invention could be performed via
pen and paper or in a person’s mind.”); see also 2019 Eligibility Guidance
84 Fed. Reg. at 52 n.14 (“If a claim, under its broadest reasonable
interpretation, covers performance in the mind but for the recitation generic
computer components, then it is still in the metal process category unless the
claim cannot practically be performed in the mind.”).
The human mind, or a human with a pad and paper, can perform each
of the claimed steps, including “prompt[ing] the patient with . . . queries
from a questionnaire relating to patient demographic, patient breathing and
cardiovascular condition,” and “tally[ing] positive responses to the . . .
queries to generate a sleep disordered breathing index, compar[ing] the sleep
disordered breathing index to one or more thresholds, and determin[ing]
whether there is a need for a full sleep disordered breathing assessment.”
Appellants provide no evidence or explanation to the contrary.
Claim 1 also recites an apparatus for assessing patient breathing and
cardiovascular condition of a patient, the apparatus comprising “a sensor for
monitoring the cardiovascular condition of the patient,” “a storage medium
for storing data regarding the breathing and cardiovascular condition of the
patient,” “a processor in communication with the storage medium,” “a
display for presenting the patient with the series of queries,” and “a data
entry device for receiving responses to the series of queries.”
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We determine that each of these apparatus elements, including the
sensor, processor, storage medium, display, and data entry device are
generic components. Appellants provide no evidence or explanation to the
contrary. As explained above, mental processes remain abstract ideas even
when using a generic computer component to perform the process steps.
Versata, 793 F.3d at 1335 (claims requiring use of a computer may still be
patent-ineligible when they can be performed via pen and paper or in a
person’s mind); see also 2019 Eligibility Guidance, 84 Fed. Reg. at 52 n.14
(a claim covering performance in the mind, but for reciting generic computer
components, is still a mental process unless it cannot practically be
performed in the mind). The recited apparatus elements are merely tools
used to implement the abstract idea. We determine that independent claim 1
recites a mental process. Claim 15, reciting a method having similar steps
performed on similar conventional components, likewise recites a mental
process. Further, the specific queries set forth in dependent claims 2–8 are
mental processes. Likewise, the following limitations are also mental
processes performed on a conventional component: (1) the processor being
configured to report the sleep disordered breathing index (claims 9, 19),
identify a low probability of sleep disordered breathing when the sleep
disordered breathing index is at or below a first threshold of 1 (claims 11,
12, 15), identify a high probability of sleep disordered breathing when the
sleep disordered breathing index at or above a second threshold of 4 (claims
13, 14, 18), or combine the sleep disordered breathing index and an apnea
hypopnea index, and relay the combined information (claim 21); and (2) the
sensor continuously monitoring a cardiovascular condition of the patient
(claim 20).
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Step 2A, Prong Two
Having determined that claims 1–6, 9, 11–15, and 17–21 recite a
judicial exception, our analysis under the Guidance turns on determining
whether the claims include additional elements integrating the exception into
a practical application. See MPEP § 2106.05(a)–(c), (e)–(h). As explained
above, each of the claim limitations is drawn to a mental process, and data
input, output, and storage are performed on generic components. There are
no additional elements in the claims that integrate the exception into a
practical application. The recited monitoring, storing, presenting, and
receiving, steps are data gathering, storage, and display recited generally.
See Elec. Power Grp., LLC v. Alston S.A., 830 F.3d 1350, 1354 (Fed. Cir.
2016) (characterizing certain steps of collecting information, analyzing
information by steps people go through in their minds, and presenting the
results, without more, as abstract ideas).
For these reasons, we determine that the claims do not integrate the
judicial exception into a practical application.
Step 2B
In Alice, step 2, we consider the elements of the claim, both
individually and as an ordered combination, to assess whether any additional
elements transform the nature of the claim into a patent eligible subject
matter, i.e., whether the claims any specific limitations beyond the judicial
exception that is not well-understood, routine, and conventional in the field.
See Memorandum, 84 Fed. Reg. at 56. Appellants contend that their
claimed features “amount to significantly more than the purported ‘abstract
idea’” satisfying Alice step 2B, and that the “significantly more” includes
claim 15’s recitation of (1) “monitoring . . . with a sensor,” (2) tallying . . .
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queries with a processor,” (3) calculating a probability . . . with the
processor,” and (4) determining . . . using the processor.” Reply Br. 5.
According to Appellants, “the claimed features require steps which cannot
be performed either mentally or by hand. In fact, the claims explicitly state
that ‘a sensor’ and ‘a processor’ perform entire steps.” Id. As explained
above, however, each of the claim limitations is drawn to a mental process,
and data input, output, and storage utilize well-known components. The
recited apparatus elements are merely tools used to implement the abstract
idea, and do not transform the nature of the claim into a patent eligible
subject matter.
Unlike DDR Holdings and Enfish, Appellants claim using a processor
to assess “respiratory disorders in cardiovascular disease patients or potential
cardiovascular disease patients” which is not subject matter rooted in
technology given that the Specification describes only the use of generic
computer equipment used in a routine, conventional, and generic manner.
Appellants continue that “the claims themselves disclose
improvements in existing computer technology such as an ‘apparatus’ and ‘a
method’ where a processor” tallies, calculates by comparing, which “plays a
significant part in permitting the claimed features to be performed to
implement the solution to the outlined problem.” Id. Further, the claims in
Enfish were directed to a self-referential data table, which differs from the
scope of Appellants’ claims.
For the reasons set forth above, we sustain the rejection of claims 1–9,
11–15, and 17–21 as directed to a judicial exception without significantly
more.
Rejection II – Obviousness of Claims 1–6, 9, 11–15, and 17–21
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The Examiner finds that Wright discloses an apparatus for assessing
breathing and cardiovascular condition comprising a handheld computer 12
having a storage medium, processor, display, data entry, and sensor 24 for
monitoring the cardiovascular condition of the patient. Final Act. 2. The
Examiner also finds that Wright discloses compiling responses to a series of
queries about patient breathing and cardiovascular condition, the responses
being “tallied by the healthcare professional (i.e. by either mentally or even
by manually writing down a patient’s responses) to determine an implied
sleep disordered breathing index,” the index being “as simple as an
assessment of how ever many positive responses compared to the total
number of questions asked the patient in the series of queries.” Id. (citing
Wright ¶¶ 50–60). The Examiner then finds that, based on the query
responses “an assessment by a trained sleep or respiratory physician
determines whether an in-patient sleep study should be conducted.” Id. at 2–
3 (citing Wright ¶ 61) (emphasis omitted).
The Examiner finds that Wright fails to disclose (1) queries “from a
questionnaire relating to patient demographic,” (2) using a data entry device
to receive query responses, and (3) using a processor to generate a sleep
disordered index. Id. at 3. The Examiner finds, however, that Walker
discloses an apparatus for treating sleep disorders using queries from a
questionnaire “about patient demographic . . . to compile a complete medical
record.” Id. at 3 (citing Walker ¶¶ 14, 15). The Examiner concludes that it
would have been obvious to a skilled artisan to modify Wright’s patient
queries to include queries about patient demographic in view of the
teachings of the Walker, “to compile a complete medical record.” Id. The
Examiner also finds that Walker uses “a tablet-type computer to aid
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healthcare professionals in tabulating and managing responses relating to
queries relating to a sleep study so that entered information can be assessed
electronically.” Id. (citing Walker ¶¶ 14, 15). The Examiner concludes that
it would have been obvious to a skilled artisan to use a tablet “with its
associated display and processor to receive the responses to the series of
queries and utilize[e] the processor to generate the sleep disordered index in
view of the teachings of Walker . . . to electronically tabulate and manage
responses” to the patient queries “so that entered information can be
assessed electronically,” rather than via conventional manual assessment.
Id. at 3–4 (citing Walker ¶¶ 14, 15).
Appellants argue claims 1–6, 9, 11–15, and 17–21 as a group. Appeal
Br. 6–9. We select claim 1 as representative. Claims 2–6, 9, 11–15, and 17–
21 stand or fall with claim 1. Appellants argue that
Wright fails to disclose a processor configured to (1) prompt
the patient with a series of different queries from a
questionnaire relating to patient demographic, patient breathing
and cardiovascular condition, (2) tally positive responses to the
series of queries to generate a sleep disordered breathing index,
(3) compare the sleep disordered breathing index to one or more
thresholds, and (4) determine whether there is a need for a full
sleep disordered breathing assessment.
Appeal Br. 7.
Appellants further argue that “neither Wright nor Walker, alone or in
combination[,] teaches or suggest[s] a processor that is capable of . . .
determining whether there is a need for a full sleep disordered breathing
assessment.” Appeal Br. 7. According to Appellants, Wright relies on a
physician to determine whether a full sleep disordered breathing assessment
is needed, and Walker assumes that a polysomnogram has already been
conducted before a device is used for data entry. Id. Therefore, Appellants
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argue, a skilled artisan, considered Wright and Walker, would have relied on
a physician to review questionnaire responses, determine a need for a full
sleep assessment, and provide the patient with Walker’s hand-held device
thereafter.
The Examiner responds that Wright discloses the physician
determining whether to do a full sleep disordered breathing assessment, and
Walker discloses using a hand-held computer to receive and tabulate
(“assess”) patient questionnaire responses. Ans. 11. The Examiner reasons
that, in the proposed combination, a physician would use Walker’s “tablet-
type device (i.e. and its processor)” to determine whether there is a need for
a full sleep disordered breathing assessment. Id.
Wright discloses a method and apparatus for assessing patient
breathing and cardiovascular condition. See Wright, Abstract. Wright’s
device includes (1) a sensor for monitoring a cardiovascular condition of the
patient (id. ¶¶ 29, 34), (2) a storage medium for data regarding the breathing
and cardiovascular condition of the patient (id. at 30), (3) a hand-held device
to present a patient with queries and allow responses to be input, the hand-
held device including a data entry device, a display, and a processor (id. ¶¶
29–30, 47 (“a physician can conduct a sleep history assessment of the patient
with the questionnaire appearing on the handheld device”)). Wright’s
processor prompts the patient with a series of queries from a questionnaire,
the questions regarding patient breathing and cardiovascular condition, but
not patient demographic. Wright’s processor generates questions and flags
certain responses that indicate the need for a more detailed physician
assessment. Id. ¶¶ 47, 49–61. Wright also discloses creating an index, and
the index being compared to a threshold, to determine whether a patient has
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apnea. Id. at 61–63. The index, however, is not created merely from query
responses. Id.
Walker discloses a system and method for diagnosing sleep disorders,
which explicitly prompts a patient with queries regarding patient
demographic. See Walker Abstract. Walker uses computer input of patient
information via a keyboard or GUI, including patient demographic
information. Id. ¶ 14. The patient queries are displayed and answers are
input (id. ¶ 14 (“[t]he method allows for computer input of information in a
user-friendly format eliminating the need for paper records” and directly into
a database ¶¶ 17–23), and stored (id. ¶¶ 24–25)).
Given the disclosure of Wright and Walker, we disagree with
Appellants’ contention that Wright relies on a physician to determine
whether a full sleep disordered breathing assessment is needed. Wright
discloses that:
Upon admission to a rehabilitation clinic, the physician can
conduct a sleep history assessment of the patient with the
questionnaire appearing on the hand-held device and the results
being sent to the apparatus. In conjunction with the assessment,
the apparatus then may recommend particular further tests to be
done, such as oxygen saturation, and overnight sleep studies.
Wright ¶ 47. This disclosure does not explicitly rely on the physician to
input questionnaire responses – indeed, the hand-held device could be
provided to the patient to provide responses. Thus, Wright discloses “a data
entry device for receiving responses to the series of queries from the
patient.” Further, this excerpt established that Wright’s apparatus assesses
questionnaire responses to determine whether an overnight sleep study is
needed. Therefore, we are not persuaded by Appellants argument that
neither Wright nor Walker teaches “a processor that is capable of . . .
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determining whether there is a need for a full sleep disordered breathing
assessment.” Appeal Br. 7.
Further, we discern no error in the Examiner’s conclusion that it
would have been obvious to a skilled artisan to use the disclosed hand-held
computer “to electronically tabulate and manage [query] responses . . . so
that entered information can be assessed electronically,” rather than “what
would have been conventionally done manually in the past.” Final Act. 3–4.
Appellants also argue that the Examiner’s proposed combination of
Wright and Walker employs impermissible hindsight, because it relies on
information gleaned solely from Applicants’ Specification. Appeal Br. 8–9
(citations omitted). According to Appellants, Walker does not determine
whether there is a need for a full sleep disordered breathing assessment,
assuming that such a determination has already been made, and the
Examiner relies on a “general notion of using electronics instead of manual
collection of data to allegedly support the combination of Wright and
Walker in having a processor” determine whether full sleep disordered
breathing assessment is needed. Id. at 9. The Office Action suggests using
Walker’s tablet to do the tasks specifically delegated to the physician in
Wright. Appellants are correct regarding the Examiner’s reasoning, which
derives from Walker disclosing that it is desirable to electronically capture
and store patient data before, during, and after a sleep study (see Walker,
Abstract) using tablet computers with user-friendly GUIs. Walker is
directed more specifically to user-friendly data entry to facilitate paperless
patient data records, not whether the patient or a health care professional is
performing data entry via the GUI. However, Walker’s teaching of
automating patient demographic questionnaire response entry with a tablet
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namely, facilitating paperless patient data records –– provides a rational
reason why a skilled artisan would automate response entry for Wright’s
queries, allowing Wright’s processor to determine a need for a more detailed
physician assessment.
For the reasons explained above, we sustain the rejection of claim 1 as
unpatentable over Wright and Walker. Claims 2–6, 9, 11–15, and 17–21 fall
with claim 1.
Rejection III – Obviousness of Claims 7 and 8
Claims 7 and 8 depend from claim 1. Appellants make no argument
that claims 7 and 8 would be patentable over Wright, Walker, and Stahmann,
if claim 1 is not patentable over Wright and Walker. For the reasons set
forth above in our analysis of Rejection II, we sustain Rejection III.

DECISION
We AFFIRM the rejection of claims 1–9, 11–15, and 17–21 as
directed to a judicial exception.
We AFFIRM the rejection of claims 1–6, 9, 11–15, and 17–21 as
unpatentable over Wright and Walker.
We AFFIRM the rejection of claims 7 and 8 as unpatentable over
Wright, Walker, and Stahmann.

AFFIRMED