2019006558 (P.T.A.B. Dec. 4, 2020)

Peter STANGEL

Patent Trials and Appeals BoardDec 4, 2020

2019006558 (P.T.A.B. Dec. 4, 2020)

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. 12/623,128 11/20/2009 Peter STANGEL 079731.010400 5698 22191 7590 12/04/2020 GREENBERG TRAURIG, LLP (DC/ORL) c/o: Greenberg Traurig LLP Chicago Office 77 West Wacker Drive, Suite 3100 Intellectual Property Department Chicago, IL 60601 EXAMINER SOREY, ROBERT A ART UNIT PAPER NUMBER 3626 NOTIFICATION DATE DELIVERY MODE 12/04/2020 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): cadanoc@gtlaw.com clairt@gtlaw.com gtipmail@gtlaw.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte PETER STANGEL Appeal 2019-006558 Application 12/623,128 Technology Center 3600 Before CARL W. WHITEHEAD JR., JASON J. CHUNG, and DAVID J. CUTITTA II, Administrative Patent Judges. CUTITTA, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s decision to reject claims 1–11, 13–32, 34, and 35, all the claims under consideration. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. We newly reject claims 1–11, 13–32, 34, and 35 under 35 U.S.C. § 112, second paragraph, as indefinite. 1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R. § 1.42(a). Appellant identifies the real party in interest as the inventor, Dr. Peter Stangel. Appeal Brief 3. Appeal 2019-006558 Application 12/623,128 2 CLAIMED SUBJECT MATTER Invention Appellant’s claimed subject matter relates to “a web browser interface which enables [a] user to create an entire electronic clinical chart note entirely from a single text field and display the clinical char[t] in clinical chart note format.” Spec. ¶ 3.2 Exemplary Claim Claims 1, 27, and 35 are independent. Claim 1, reproduced below with certain limitations at issue italicized, exemplifies the claimed subject matter: 1. A method for managing electronic medical records, comprising the steps of: receiving, in a computer processor coupled to a data store, data representing a clinical finding of a patient-clinician clinical encounter, wherein the data representing a clinical finding is received via a single field, the single field being a field that is configured to receive text, the single field further being the one and only field in the screen that receives all user input of clinical findings; transforming data by creating, in the computer processor coupled to the data store, data representing a record of the patient-clinician clinical encounter comprising an electronic formatted clinical chart note, said electronic formatted clinical chart note being created solely based on the data representing a clinical finding received via the single field, said electronic formatted clinical chart note comprising a clinical chart note that is structured so as to be organized by a plurality of sections, said plurality of sections including one or 2 We refer to: (1) the originally filed Specification filed November 20, 2009 (“Spec.”); (2) the Final Office Action mailed April 27, 2018 (“Final Act.”); (3) the Appeal Brief filed March 27, 2019 (“Appeal Br.”); and (4) the Examiner’s Answer mailed May 24, 2019 (“Ans.”). Appeal 2019-006558 Application 12/623,128 3 more of: chief complaint, past history, present illness, examination, lab, diagnostic studies, impression, and assessment and plan; wherein the format of each section of the electronic formatted clinical chart note comprises one or more lines, each line displaying at least a parameter with one or more findings describing the parameter, which serve to document said patient- clinician clinical encounter; programmatically generating at least one interactive hierarchal list based upon the data representing a clinical finding received via the single field, the at least one hierarchal list comprising a list derived from a tree where an item in a parent list has child branches and a child branch has its own branches, the hierarchal list comprising a base level comprising a list of the body of possible clinical findings, a parameters level higher than the base level and comprising a subset of possible clinical findings which describe each parameter, a system/groups level higher than the parameters level and comprising a subset of parameters for each subset of clinical findings, and an elements level higher than the system/groups level and comprising a list of the sections of the clinical chart note; displaying the programmatically generated at least one interactive hierarchal list via a single screen user interface; displaying a clinical finding corresponding to the data representing a clinical finding in clinical chart note format on said single screen user interface, wherein the clinical chart note format emulates a paper clinical chart note format; and storing the electronic clinical chart note to a server, wherein the receiving step, creating step, displaying step, and storing step are performed on at least one particular machine, said at least one particular machine comprising at least one physical computing device. Appeal Br. 30–31 (Claims Appendix). Appeal 2019-006558 Application 12/623,128 4 REFERENCES The Examiner relies on the following prior art references:3 Name Number / Title Date Thompson US 2006/0059012 A1 Mar. 16, 2006 Morita US 2008/0249374 A1 Oct. 9, 2008 Martin US 2009/0182580 A1 July 16, 2009 Green US 8,050,938 B1 Nov. 1, 2011 Dreyer US 8,756,234 B1 June 17, 2014 REJECTIONS The Examiner makes the following rejections: Claims Statute Basis Final Act. 1–3, 5, 6, 8–10, 13– 19, 21–25, 27–29, 32, 34, 35 § 103(a) Morita, Thompson, Dreyer 5 4, 7, 11, 30, 31 § 103(a) Morita, Thompson, Dreyer, Martin 23 20 § 103(a) Morita, Thompson, Dreyer, Examiner’s Official Notice 25 26 § 103(a) Morita, Thompson, Dreyer, Green 26 OPINION We do not reach the merits of the rejections of claims 1–11, 13–32, 34, and 35 under 35 U.S.C. § 103(a). Before a proper review of the rejections under § 103(a) can be made, the subject matter encompassed by the claims on appeal must be understood reasonably without resorting to speculation. Because we determine claims 1–11, 13–32, 34, and 35 fail to satisfy the requirements under 35 U.S.C. § 112, second paragraph, as explained below, we are constrained to reverse, pro forma, the Examiner’s 3 All citations to the references use the first-named inventor or author only. Appeal 2019-006558 Application 12/623,128 5 rejections under 35 U.S.C. §103(a). See In re Steele, 305 F.2d 859, 862 (CCPA 1962) (a prior art rejection cannot be sustained if the hypothetical person of ordinary skill in the art would have to make speculative assumptions concerning the meaning of claim language). Our decision to reverse the rejections of claims 1–11, 13–32, 34, and 35 under 35 U.S.C. §103(a) is based solely on the indefiniteness of the claims, and does not reflect on the merits of the underlying rejections. New Ground of Rejection Under 35 U.S.C. § 112, first paragraph The first paragraph of pre-AIA 35 U.S.C. 112 provides in part: The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same. MPEP 2161 II. Claim 1 requires “displaying a clinical finding . . . in clinical chart note format on said single screen user interface, wherein the clinical chart note format emulates a paper clinical chart note format.” Appellant has not demonstrated the Specification provides written description support for this limitation under 35 U.S.C. § 112, first paragraph. To satisfy the written description requirement, the Specification must describe the claimed invention in sufficient detail that one skilled in the art can reasonably conclude that the inventor had possession of the claimed invention. Vas- Cath, Inc. v. Mahurkar, 935 F.2d 1555, 1562–63 (Fed. Cir. 1991). Original claims may fail to satisfy the written description requirement when the invention is claimed and described in functional language but the specification does not sufficiently identify how the invention achieves the claimed function. Id.; Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, Appeal 2019-006558 Application 12/623,128 6 1350–52 (Fed. Cir. 2010) (en banc). For software, this can occur when the algorithm or steps for performing the computer function are not explained at all or are not explained in sufficient detail. It is not enough that one skilled in the art could write a program to achieve the claimed function because the specification must explain how the inventor intends to achieve the claimed function to satisfy the written description requirement. Vasudevan Software, Inc. v. MicroStrategy, Inc., 782 F.3d 671, 681–683 (Fed. Cir. 2015); see also Examining Computer-Implemented Functional Claim Limitations for Compliance with 35 U.S.C. § 112, 84 Fed. Reg. 57, 62 (Jan. 7, 2019). Here, the emulating limitation is a computer-implemented functional limitation, because it describes what the claim does; “emulat[ing] a paper clinical chart note format,” rather than any specific structure for performing the emulating function. MPEP 2173.05(g) citing In re Swinehart, 439 F.2d 210, 212 (CCPA 1971) (“A claim term is functional when it recites a feature ‘by what it does rather than by what it is’ (e.g., as evidenced by its specific structure or specific ingredients.”). The Federal Circuit further informs that “[t]he written description requirement is not met if the specification merely describes a ‘desired result.’” Vasudevan, 782 F.3d at 682 (quoting Ariad, 598 F.3d at 1349). Here, the Specification describes a desired result of emulating a paper clinical chart note format and does not disclose any algorithm or steps describing how the desired result is achieved. See, e.g., Spec. ¶ 31. Accordingly, this limitation does not satisfy the written description requirement. Pursuant to our discretionary authority under 37 C.F.R. § 41.50(b), we newly reject independent claim 1 under 35 U.S.C. § 112, first paragraph as being indefinite for failing to satisfy the written description requirement. Appeal 2019-006558 Application 12/623,128 7 We, likewise, newly reject independent claims 27 and 35, which include a similar recitation requiring that “the clinical chart note format emulates a paper clinical chart note format.” Appeal Br. 37, 41. We additionally reject dependent claims 2–11, 13–26, 28–32, and 34, which do not cure the lack of written description support for independent claims 1, 27, and 35. New Ground of Rejection Under 35 U.S.C. § 112, second paragraph A patent “specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor . . . regards as the invention.” Pre-AIA 35 U.S.C. § 112, second paragraph. A claim fails to satisfy this statutory requirement, and is thus indefinite, if its language, when read in light of the specification and the prosecution history, “fail[s] to inform, with reasonable certainty, those skilled in the art about the scope of the invention.” Nautilus, Inc. v. Biosig Instruments, Inc., 134 S. Ct. 2120, 2124 (2014). Claim 1 recites, in relevant part, “transforming data by creating . . . an electronic formatted clinical chart note, said electronic formatted clinical chart note . . . comprising a clinical chart note that is structured so as to be organized by a plurality of sections” and “wherein the clinical chart note format emulates a paper clinical chart note format.” Appeal Br. 30–31. Claim 1 further requires that the plurality of sections include “one or more of: chief complaint, past history, present illness, examination, lab, diagnostic studies, impression, and assessment and plan” and that “the format of each section of the electronic formatted clinical chart note comprises one or more lines.” Id. 30. The metes and bounds of the limitation in claim 1 requiring that “the clinical chart note format emulates a paper clinical chart note format” is Appeal 2019-006558 Application 12/623,128 8 unclear because is open to several different interpretations. Appellant provides no clear definition of a paper clinical chart note format. Nor is it clear how to emulate a paper clinical chart note format, even if that format were defined clearly. Appellant’s Specification discloses: The ECCN [(electronic clinical chart note)] is organized in clinical chart note format, a format which emulates the paper chart clinical chart note format, the format taught in professional schools and used by clinicians to record the patient-clinician clinical encounter. The ECCN note is organized by chart sections which reflect the organization of the paper clinical chart and are called Elements. Elements may include: Chief Complaint, Present Illness, Past History, Examination, Lab Results, Diagnostic Study Results, Impression, and Assessment and Plan. Spec. ¶ 31. The Specification informs that the paper chart clinical chart note format is the format taught in professional schools and used by clinicians to record the patient-clinician clinical encounter, but does not define the metes and bounds of that format. The Specification further informs that the paper chart clinical chart note format is organized by sections that may include one or more of eight sections such as Chief Complaint, Present Illness, Past History, etc. Claim 1 uses similar “one or more” language to describe these same sections and thus neither the claim nor the Specification defines the paper chart clinical chart note format as requiring all eight sections. Rather, both the claim and the Specification merely require any one or more sections in combination, thus making it impracticable to ascertain how to emulate a paper chart clinical chart note having a variable and thus unclear scope. Even if the scope of the format were defined clearly in the claim as requiring specific sections, it still would be unclear how to emulate the paper chart clinical chart note format given that the required format is already Appeal 2019-006558 Application 12/623,128 9 proscribed by the claim. If Appellant’s position is that emulating the paper format means including particular sections in the ECCN that are already recited in the claim, then reciting the ECCN format within the claim to include those particular sections would be sufficient, rendering the emulating the paper format limitation superfluous. If we alternatively find that emulating the paper format refers to something other than emulating a particular format by including particular sections, such as emulating the look of paper similar to an electronic parchment product; then here also, the Specification provides no guidance as to the metes and bounds of that emulating function. To summarize, claim 1 is amenable to multiple plausible claim constructions. “[I]f a claim is amenable to two or more plausible claim constructions, the USPTO is justified in requiring the applicant to more precisely define the metes and bounds of the claimed invention by holding the claim unpatentable under 35 U.S.C. § 112[, second paragraph], as indefinite.” Ex parte Miyazaki, 89 USPQ2d 1207, 1211 (BPAI 2008) (precedential); see also Ex parte McAward, Appeal No. 2015-006416, 2017 WL 3669566 (PTAB Aug. 25, 2017) (precedential). Pursuant to our discretionary authority under 37 C.F.R. § 41.50(b), then, we newly reject independent claim 1 under 35 U.S.C. § 112, second paragraph as being indefinite for failing to reasonably set forth the metes and bounds of claim protection being sought. Ex parte Kristensen, 10 USPQ2d 1701 (BPAI 1989) (where a claim directed to a device can be read to include the same element twice, the claim may be indefinite.). We, likewise, newly reject independent claims 27 and 35, which include a similar recitation requiring that “the clinical chart note format emulates a paper clinical chart Appeal 2019-006558 Application 12/623,128 10 note format.” Appeal Br. 37, 41. We additionally reject as indefinite, dependent claims 2–11, 13–26, 28–32, and 34, which do not cure the noted ambiguity of in the scope of independent claims 1, 27, and 35. DECISION SUMMARY In summary: Claims Rejected 35 U.S.C. § Reference(s)/ Basis Affirmed Reversed New Ground 1–3, 5, 6, 8–10, 13– 19, 21– 25, 27– 29, 32, 34, 35 103(a) Morita, Thompson, Dreyer 1–3, 5, 6, 8–10, 13– 19, 21–25, 27–29, 32, 34, 35 4, 7, 11, 30, 31 103(a) Morita, Thompson, Dreyer, Martin 4, 7, 11, 30, 31 20 103(a) Morita, Thompson, Dreyer, Examiner’s Official Notice 20 26 103(a) Morita, Thompson, Dreyer, Green 26 112, first paragraph Written Description 1–11, 13– 32, 34, 35 112, second paragraph Indefiniteness 1–11, 13– 32, 34, 35 Overall Outcome 1–11, 13– 32, 34, 35 1–11, 13– 32, 34, 35 Appeal 2019-006558 Application 12/623,128 11 FINALITY AND RESPONSE This decision contains a new ground of rejection pursuant to 37 C.F.R. § 41.50(b). Rule 37 C.F.R. § 41.50(b) provides “[a] new ground of rejection pursuant to this paragraph shall not be considered final for judicial review.” Rule 37 C.F.R. § 41.50(b) also provides that the Appellant, WITHIN TWO MONTHS FROM THE DATE OF THE DECISION, must exercise one of the following two options with respect to the new ground of rejection to avoid termination of the appeal as to the rejected claims: (1) Reopen prosecution. Submit an appropriate amendment of the claims so rejected or new Evidence relating to the claims so rejected, or both, and have the matter reconsidered by the examiner, in which event the prosecution will be remanded to the examiner. . . . (2) Request rehearing. Request that the proceeding be reheard under § 41.52 by the Board upon the same record. . . . 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)(iv). REVERSED 37 C.F.R. § 41.50(b)