BPAI affirms obviousness of combining computerized rule processing from three different settings

Takeaway: The Applicant appealed an obviousness rejection of claims directed to rule-based processing of medical records. The Applicant attacked the rationale for combining by focusing on the three very different technology areas in which the references used rule processing. The Board affirmed the rejection, finding that it was obvious to combine teachings about network configuration rules and document management rules to the primary reference's teachings about patient rules. "The Examiner applied Harsham simply to show the unremarkable fact that one of ordinary skill knew that using rules to set parameters in a computer system simplified tasks. ... The Examiner applied Vulpe simply to show how one of ordinary skill might implement the records management required by Kerr, with the aid of Harsham’s rules, by using Vulpe’s architecture for records management." Ex parte Schoenberg, BPAI 2011.

Details:
Ex parte Schoenberg
Appeal 2010006290; Appl. No. 10/825,352; Tech. Center 3600
Decided November 17, 2011

The claims on appeal were directed to processing medical records. A representative independent claim on appeal read:

     1. A rule processing computer-based method comprising:
      [1] receiving user input to a processor-based computer for defining a computer-executable rule ... [which] causes the computer to identify a target group of patients chosen from a group of existing patients;
      [2] receiving user input to the computer defining ... a computer-executable action to be taken by said computer concerning one or more patients within the target group of patients;
      [3] scheduling ... an execution time for the action;
      [4] processing, by the computer, a plurality of computer-based medical records against said computer-executable rule to determine one or more of said medical records that satisfy the rule,
           wherein each of the medical records contain at least a portion of a corresponding patient's medical history stored to computer-readable medium; and
      [5] initiating by the computer, in accordance with the scheduled execution time, the action concerning corresponding patients to which the determined one or more medical records that satisfy the rule relate.
(Emphasis added.)

The independent claims were rejected as obvious over a combination of three references. According to the Examiner, the primary reference Kerr taught everything except elements 1 and 4 (emphasized above). Secondary references Harsham and Vulpe were relied on for elements 1 and 4, respectively. As a motivation for adding Harsham to Kerr, and Examiner offered "having a means of configuring a computer network in an object-oriented manner" as taught by Harsham. As a motivation for adding Vulpe to Kerr and Harsham, the Examiner offered "having a means of determining which records satisfy a particular rule" as taught by Vulpe.

On appeal, the Applicant first argued that the combination did not teach elements 1 and 4, focusing on the fact that neither secondary reference had anything to do with medical records. Harsham was directed to network management and the rules in Harsham were used to define configuration parameters for network devices. "Harsham simply makes no mention or suggestion whatsoever of any rules that pertain in any way to patients or to medical references." Vulpe was directed to document management, and describes intersection rules that relate to document architecture. "Vulpe simply makes no mention or suggestion whatsoever of any rules that pertain in any way to patients or to medical records."

The Applicant then argued the Examiner had not provided sufficient rationale to combine. The Applicant again focused on the fact that the references came from different technology areas: monitoring delivery of drugs to patients; configuring a computer network; and document management. "Sufficient rationale has still not been provided to establish why one ordinary skill in the art would be motivated to combine such disparate teachings in the manner applied by the Examiner absent the use of impermissible hindsight in which the present application is used as a blue print to piece the element together in the manner claimed."

In the Answer, the Examiner maintained the rejection without further explanation.

The BPAI affirmed the obviousness rejection. The Board began by noting that in arguing elements 1 and 4, the Applicant had improperly attacked individual references. "The Appellant contends that Harsham fails to describe medical records, although it is Kerr that is applied for such records. ... The Appellant contends that Vulpe does not suggest medical records. Again, the Appellant is attacking the references separately, even though the rejection is based on the combined teachings of the references."

The Board then commented that the Applicant's attack on the rationale for combining was misplaced. While the Applicant focused on the different technology areas in which rules were used in the three references, the Examiner applied the more general teachings of the reference:

The Examiner applied Harsham simply to show the unremarkable fact that one of ordinary skill knew that using rules to set parameters in a computer system simplified tasks. As Kerr describes a medical computer system, Harsham simply shows that one of ordinary skill new that Kerr’s administration could be simplified by using rules. Vulpe shows how to improve the organization of documents using a document management system. The Examiner applied Vulpe simply to show how one of ordinary skill might implement the records management required by Kerr, with the aid of Harsham’s rules, by using Vulpe’s architecture for records management.

My two cents: I think the Board's rationale is persuasive. But there is a more important lesson here.

My first impression of the Applicant's arguments was: the Applicant completely missed the boat by not addressing the combination. (A topic I have written about before here as "Mistake #5: Failure to address the combination".)

On further reflection, I see failure to address the combination as the symptom of a bigger problem: focusing on the specific teachings of the references rather than the more general understanding which a POSITA would get from the references.The lesson here is thus: be on the lookout for what a reference teaches in general and don't get stuck in the details.

Here, the Applicant focused on the different areas in which the three references applied rules to record processing: healthcare information systems; network management; and document management. By focusing on the different fields of application, the Applicant appeared to miss what a POSITA would see in all three references about rule processing in general.

The Board did a good job of explaining how the secondary reference Harsham, when read with a focus on the big picture rather than the details, fit with the primary reference Kerr. Harsham stood for the general teaching that users can create rules to define parameters and these rules can be applied to data – rather than the specific teaching that users can create rules to define configuration parameters for network devices and these rules can be applied to data describing network devices. When this general teaching in Harsham is combined with Kerr's use of rules in a different context – to identify groups of patients –  the result something that's at least in the ballpark of Applicant's claim limitation 1.

Said another way:

receiving user input defining a rule which causes the computer to
[specific teaching of 2nd reference = ] define network configuration parameters
[generalized to => ] define parameters
[applied to heatlhcare context of 1st reference => ] define parameters which identify a target group of patients chosen from a group of existing patients;

Here, the Examiner did give an important clue as to how he was generalizing the secondary reference – as long as you read the rejection very carefully. After acknowledging that the primary reference did not teach limitation 1, the Examiner asserted that the secondary reference taught not 1, but 1' :

receiving user input to a processor-based computer for defining a computer-executable rule

Thus, it's clear upon careful reading that the Examiner is relying on primary-modified-by-secondary to get from 1' to 1.

A similar analysis holds for limitation 4, taught by the third reference:

[specific teaching of 2nd reference = ] processing document intersection records against the document intersection rule to determine one or more of said document intersection records that satisfy the rule
[generalized to => ] records and rules
applied to heatlhcare context of 1st reference => ] processing medical records against the rule to determine one or more of said medical records that satisfy the rule

Examiners don't always clearly explain how they are abstracting a feature from one reference and applying the abstraction in the specific context of another reference. But I believe many obviousness rejections can best be understood using this sort of framework.

So Applicants, the next time you find yourself saying "X teaches a widget and Y teaches a green blodget, but neither reference teaches my blue widget", I challenge you to step back and think instead about what the reference says about widgets in general, about colors as applied to blodgets, and about how widgets might be similar to blodgets. With this in mind, you can then evaluate whether or not the combination teaches the element in question, and further, whether the combination is proper.