DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application is being examined under the pre-AIA first to invent provisions.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/process/file/efs/guidance/eTD-info-I.jsp.
Claims 1, 8 and 9 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 8, 9 of U.S. Patent No. 11,145,408. Although the claims at issue are not identical, they are not patentably distinct from each other because the patent claims include all of the limitations of the instant application claims, respectively. The patent claims also include additional limitations. Hence, the instant application claims are generic to the species of invention covered by the respective patent claims. As such, the instant application claims are anticipated by the patent claims and are therefore not patentably distinct therefrom. (See Eli Lilly and Co. v. Barr Laboratories Inc., 58 USPQ2D 1869, "a later genus claim limitation is anticipated by, and therefore not patentably distinct from, an earlier species claim", In re Goodman, 29 USPQ2d 2010, "Thus, the generic invention is 'anticipated' by the species of the patented invention" and the instant “application claims are generic to species of invention covered by the patent claim, and since without terminal disclaimer, extant species claims preclude issuance of generic application claims”).
Claims 1, 8 and 9 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 and 9 of U.S. Patent No. 12,062,439. Although the claims at issue are not identical, they are not patentably distinct from each other because the patent claims include all of the limitations of the instant application claims, respectively. The patent claims also include additional limitations. Hence, the instant application claims are generic to the species of invention covered by the respective patent claims. As such, the instant application claims are anticipated by the patent claims and are therefore not patentably distinct therefrom. (See Eli Lilly and Co. v. Barr Laboratories Inc., 58 USPQ2D 1869, "a later genus claim limitation is anticipated by, and therefore not patentably distinct from, an earlier species claim", In re Goodman, 29 USPQ2d 2010, "Thus, the generic invention is 'anticipated' by the species of the patented invention" and the instant “application claims are generic to species of invention covered by the patent claim, and since without terminal disclaimer, extant species claims preclude issuance of generic application claims”).
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 2, 6, 20 rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 2 recites the limitation "the HL7 protocol" in line 2. There is insufficient antecedent basis for this limitation in the claim.
Claim 6 recites the limitation "the Internet" in line 2. There is insufficient antecedent basis for this limitation in the claim.
Regarding claim 20, it is unclear which antecedent message (input message or output message recited in claim 9) is being referred to by “the message” in claim 20.
Claim Rejections - 35 USC § 102
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of the appropriate paragraphs of pre-AIA 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(b) the invention was patented or described in a printed publication in this or a foreign country or in public use or on sale in this country, more than one year prior to the date of application for patent in the United States.
Claims 1, 3-5, 7-9, 11-12, 14 rejected under pre-AIA 35 U.S.C. 102(b) as being anticipated by Peifer (US 6,112,224).
Regarding claim 1, Peifer discloses a method for facilitating communication between first and second medical devices within a medical information network, the method comprising:
receiving a first input message from a first medical device (via message from a medical device to a central monitoring station via a patient monitoring station including control unit 11 with application software 26, Fig.1-2, col. 3, lines 34-50, col. 4, lines 1-33), the first medical device having generated said input message according to a first communication protocol (via communication protocol of medical device to be translated by software 26 in control unit 11, col. 6, lines 26-38, col. 4, lines 34-38, col. 3, line 66 to col. 4, line 18), said input message identifying a second medical device as an intended recipient of the input message (via network address of central monitoring station connected to network 52, col. 6, lines 26-38);
translating said input message into an output message by applying one or more translation rules, said second medical device being configured to receive and process said output message (col. 6, lines 26-38); and
providing said output message to the second medical device (via analysis at monitoring stations, col. 6, lines 26-38).
Regarding claim 3, Peifer discloses generating said translation rules based upon said input message (via application software 26 includes protocol conversion and data translation routines, col. 6, lines 31-38).
Regarding claim 4, Peifer discloses wherein said translating comprises rearranging at least a portion of the input message (via formatting information into a form suitable for transmission across network 52, col. 6, lines 26-38).
Regarding claim 5, Peifer discloses wherein said providing comprises providing said output message to the second medical device over a network (via network 52, col. 6, lines 26-38).
Regarding claim 7, Peifer discloses receiving a second input message from the second medical device, the second medical device having generated said second input message according to a second communication protocol; translating said second input message into a second output message by applying different translation rules, said first medical device being configured to receive and process said second output message; and providing said second output message to the first medical device (col. 6, lines 13-25).
Regarding claim 8, Peifer discloses a medical device message translator configured to facilitate communication between first and second medical devices within a medical information network, the translator comprising:
a communication interface module configured to receive a first input message from a first medical device, the first medical device having generated said input message according to a first communication protocol, said input message identifying a second medical device as an intended recipient of the input message (via communication module of patient monitoring station 50 to communicate message from medical device to central monitoring station, Fig. 1-2; col. 3, line 34 to col. 4, line 38; col. 6, lines 26-38);
a rules module, configured to store one or more predetermined translation rules; and a translation module configured to translate said input message into an output message by applying one or more translation rules retrieved from said rules module, said second medical device being configured to receive and process said output message (via rules and translation module of patient monitoring station 50 to translate message from medical device based on rules in software 26 to be sent to monitoring station, col. 6, lines 26-38).
Regarding claim 9, Peifer discloses a method for converting messages communicated between medical devices and a hospital or clinical information system, the method comprising: receiving an input message from a hospital information system that comprises electronic patient medical records, the content of the input message being formatted according to a first set of formatting rules allowed under a medical electronic communication protocol; comparing the input message to a set of transformation rules; generating an output message, the content of the output message being re-formatted according to a second set of formatting rules allowed under the medical electronic communication protocol, wherein the conversion rules control the re-formatting of the content of the output message so as to comply with the second set of formatting rules; and outputting the output message to a medical device (via message from hospital 54 output to medical device, col. 3, line 34 to col. 4, line 38; col. 6, lines 13-25; Figs. 1-2).
Regarding claim 11, Peifer discloses wherein the transformation rules are automatically generated (via software 26, col. 6, lines 13-25).
Regarding claim 12, Peifer discloses requesting a message and automatically determining a type of formatting to be implemented based on said message (via software 26 to translate message requested from medical device, col. 6, lines 26-38).
Regarding claim 14, Peifer discloses the comparing includes parsing the input message (via software 26, col. 6, lines 13-25).
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of pre-AIA 35 U.S.C. 103(a) which forms the basis for all obviousness rejections set forth in this Office action:
(a) A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries for establishing a background for determining obviousness under pre-AIA 35 U.S.C. 103(a) are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
This application currently names joint inventors. In considering patentability of the claims under pre-AIA 35 U.S.C. 103(a), the examiner presumes that the subject matter of the various claims was commonly owned at the time any inventions covered therein were made absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and invention dates of each claim that was not commonly owned at the time a later invention was made in order for the examiner to consider the applicability of pre-AIA 35 U.S.C. 103(c) and potential pre-AIA 35 U.S.C. 102(e), (f) or (g) prior art under pre-AIA 35 U.S.C. 103(a).
Claim 2, 13, 18 rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Peifer, and further in view of Kuhn (US 2006/0004745).
Regarding claim 2, Peifer fails to specifically disclose the first communication protocol comprises the HL7 protocol.
Kuhn teaches that HL7 is a common communication protocol used by medical devices (Para. 41-42).
From the teachings of Kuhn, it would have been obvious to one of ordinary skill in the art at the time the invention was made to modify Peifer to include the first communication protocol comprises the HL7 protocol in order to ensure proper translation of messages from medical devices that use HL7.
Regarding claim 13, Peifer fails to specifically disclose the first set of formatting rules are implemented using HL7.
Kuhn teaches that HL7 is a common communication protocol used by medical devices (Para. 41-42).
From the teachings of Kuhn, it would have been obvious to one of ordinary skill in the art at the time the invention was made to modify Peifer to include the first set of formatting rules are implemented using HL7 in order to ensure proper translation of messages to medical devices that use HL7.
Regarding claim 18, Peifer fails to disclose determining whether the input message complies with the HL7 standard.
Kuhn teaches that HL7 is a common communication protocol used by medical devices (Para. 41-42).
From the teachings of Kuhn, it would have been obvious to one of ordinary skill in the art at the time the invention was made to modify Peifer to include determining whether the input message complies with the HL7 standard in order to allow faster message protocol identification by comparing the message protocol with a commonly used protocol first.
Claim 6 rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Peifer, and further in view of Novak (US 2004/0143677).
Regarding claim 6, Peifer discloses providing said output message to the second medical device over network, but fails to disclose the network is the Internet.
Novak teaches using the Internet to allow remote communications between devices (Para. 36 with emphasis on last sentence).
From the teachings of Novak, it would have been obvious to one of ordinary skill in the art at the time the invention was made to modify Peifer to include the network is the Internet in order to allow communication remotely anywhere where Internet connections are available.
Claim 10 rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Peifer, and further in view of Gessner (US 2005/0267655).
Regarding claim 10, Peifer fails to disclose the transformation rules are manually inputted.
Gessner teaches that a communication translator can be either automatic or manual to allow direct translation from a particular protocol, which makes processing of translations faster (Para. 39).
From the teachings of Gessner, it would have been obvious to one of ordinary skill in the art at the time the invention was made to modify Peifer to include the transformation rules are manually inputted in order to make protocol conversion and/or translation faster.
Claim 15 rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Peifer and further in view of Black (US 2006/0047682).
Regarding claim 15, Peifer fails to disclose the comparing includes separating formatting and content of input message.
Black teaches that data objects can be compared by parsing them and identifying differences in the content and formatting (Para. 38).
From the teachings of Black, it would have been obvious to one of ordinary skill in the art at the time the invention was made to modify Peifer to include the comparing includes separating formatting and content of input message in order to allow accurate identification of communication protocol of messages received.
Claim 16-17 rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Peifer.
Regarding claim 16, Peifer teaches using protocol conversion and data translation on messages received or outputted to ensure compatibility of communications received and sent (col. 6, lines 13-38).
Therefore, it would have been obvious to one of ordinary skill in the art at the time the invention was made to modify Peifer to include the input message and output message use the same protocol but have different formats in order to make sure they are compatible with particular medical devices.
Regarding claim 17, Peifer teaches using protocol conversion and data translation on messages received or outputted to ensure compatibility of communications received and sent (col. 6, lines 13-38).
Therefore, it would have been obvious to one of ordinary skill in the art at the time the invention was made to modify Peifer to include the input message and output message use different protocol in order to make sure they are compatible with particular medical devices.
Claim 19 rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Peifer, and further in view of Watts (US 6,836,890)
Regarding claim 19, Peifer fails to disclose said generating comprises substituting field delimiter characters.
Watts teaches a system and method to parse and translate messages, wherein translating includes substituting field delimiter characters to reduce the load on a processor performing the translations (see Abstract, col. 2, lines 1-21 and claims 1 and 2).
From the teachings of Watts, it would have been obvious to one of ordinary skill in the art at the time the invention was made to modify Peifer to include said generating comprises substituting field delimiter characters in order to reduce the load on the translator, thereby improve speed of outputting messages.
Claim 20 rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Peifer, and further in view of de la Huerga (US 5,903,889).
Regarding claim 20, Peifer fails to disclose the message comprises an admit discharge transfer (ADT) message.
Huerga teaches hospitals typically include ADT systems connected to the hospital computer network (col. 6, lines 24-34).
From the teachings of Huerga, it would have been obvious to one of ordinary skill in the art at the time the invention was made to modify Peifer to include the message comprises an admit discharge transfer (ADT) message in order to allow communication with a medical device in an ADT system.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to YONG HANG JIANG whose telephone number is (571)270-3024. The examiner can normally be reached Monday - Friday 9:30-6 EST.
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/YONG HANG JIANG/Primary Examiner, Art Unit 2689