Ex Parte Blechman

Patent Trial and Appeal Board

Aug 8, 2018

14588304 (P.T.A.B. Aug. 8, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/588,304 12/31/2014
16275 7590 08/10/2018
HolzerIPLaw, PC
dba Holzer Patel Drennan
216 16th Street
Suite 1350
Denver, CO 80202
FIRST NAMED INVENTOR
Elaine Blechman
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
293002USP 1374
EXAMINER
BURGESS, JOSEPH D
ART UNIT PAPER NUMBER
3626
NOTIFICATION DATE DELIVERY MODE
08/10/2018 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):
hiplaw@blackhillsip.com
docket@hpdlaw.com
rholzer@hpdlaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ELAINE BLECHMAN
Appeal2018-006468
Application 14/588,304
Technology Center 3600
Before MASHID D. SAADAT, ST. JOHN COURTENAY III, and
JAMES W. DEJMEK, Administrative Patent Judges.
COURTENAY, Administrative Patent Judge.
DECISION ON APPEAL
Appellant1 appeals under 35 U.S.C. § 134(a) from a final rejection of
claims 1-23, which are all the claims pending in this application. We have
jurisdiction over the pending claims under 35 U.S.C. § 6(b ).
We reverse.
1 According to Appellant, the real party in interest is Elaine Blechman, the
named inventor. App. Br. 3.
Appeal2018-006468
Application 14/588,304
STATEMENT OF THE CASE
Introduction
Appellant's invention "relate[s], in general, to information
management technology and specifically to health records management
systems." (Spec. ,r 2).
Illustrative Claim
1. A method of populating an exclusively patient controlled
record in a patient controlled electronic health record (PCHR)
record repository, the method comprising:
processing a request from a patient for a health
information artifact;
determining a supplier of the health information artifact;
generating one or more information request templates required
by the supplier of the health information artifact;
generating an information request document using one or
more of the information request templates;
encrypting the information request document;
sending the encrypted information request document to
the supplier of the health information artifact;
receiving the health information artifact;
adding the health information artifact to the exclusively
patient controlled record stored in the PCHR record repository;
and
controlling access of a user, human or machine, to the
exclusively patient controlled record in the PCHR record
repository based on (a) patient authorization of the user for
future record access and (b) consent from a registered device in
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Application 14/588,304
response to the request of a patient authorized user for current
record access, wherein the registered device is a mobile device;
receiving a request from the user for access to the
exclusively patient controlled record in the PCHR record
repository;
determining if the user has previously been authorized by
the patient for record access and patient-authorized user
permissions associated with the record;
sending the access request of the patient-authorized user
to the registered device; and
receiving a consent reply from the registered device.
App. Br. 15, Claims Appendix.
Rejection
Claims 1-23 are rejected under 35 U.S.C. § 101 as being directed to
patent-ineligible subject matter. Final Act. 2-5.
Issue on Appeal
Did the Examiner err in rejecting claims 1-23 under 35 U.S.C. § 101
as being directed to patent-ineligible subject matter?
ANALYSIS
We have considered all of Appellant's arguments and any evidence
presented. We highlight and address specific findings and arguments for
emphasis in our analysis below.
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Application 14/588,304
The Examiner's Rejection under 35 US.C. § 101
Regarding the first step of the Alice/Mayo analysis, the Examiner
concludes claims 1-23 are directed to an abstract idea: 2
The claims are directed to the abstract idea of populating and
controlling access to a patient controlled health record because
they involve, in part, processing a request from a patient for a
health information artifact, determining a supplier of the health
information artifact, generating one or more information request
templates required by the supplier of the health information
artifact, generating an information request document using one
or more of the information request templates, encrypting the
information request document, sending the encrypted
information request document to the supplier of the health
information artifact, receiving the health information artifact,
adding the health information artifact to the exclusively patient
controlled record stored in the PCHR record repository, and
controlling access of a user to the exclusively patient controlled
record in the PCHR record repository based on (a) patient
authorization of the user for future record access and (b) on
consent from a registered device in response to the request of a
patient-authorized user for current record access, receiving a
request from the user for access to the exclusively patient
controlled record, determining if the user has previously been
authorized by the patient for record access and patient-
authorized user permissions associated with the record, sending
the access request of the patient-authorized user to the
registered device, and receiving a consent reply from the
registered device.
[paragraph break inserted]
This corresponds to the abstract ideas identified by the courts
of comparing new and stored information and using rules to
identify options (because the limitations outline comparing a
patient request for health information with suppliers of health
2 "Patent eligibility under§ 101 presents an issue of law .... " Accenture
Glob. Servs., GmbH v. Guidewire Software, Inc., 728 F.3d 1336, 1340 (Fed.
Cir. 2013).
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Application 14/588,304
information and using rules to determine a supplier for the
patient request, comparing the determined supplier with
information request templates and using rules to generate
information request templates required by the supplier,
comparing request information used in the information request
template and using rules to generate an information request
document, comparing patient information to health information
artifacts and using rules to send the health information artifacts
to the patient, comparing a request for access to patient
controlled records to previously authorized users and using
rules to send an access request to a patient registered device),
using categories to organize, store and transmit information
(because the limitations outline organizing information request
templates into information request documents, forming data
transactions and transmitting the request documents, organizing
health information artifacts into categories based on a particular
patient, forming data transactions and transmitting the health
information artifacts), and creating a contractual relationship
(because the limitations outline the patient granting
authorization for user future access to the patient's records and
through a registered device providing consent in response to a
request from a patient-authorized user for current record
access).
Final Act. 2-3 ( emphasis added).
Regarding the second step of the Mayol Alice analysis, the Examiner
finds the claims do not include additional elements that are sufficient to
amount to significantly more than the judicial exception, because:
The computer system as recited comprises generic computer
components that perform generic functions (i.e. processing
request, determining supplier, generating template, generating
document, encrypting document, sending document, receiving
artifact, adding artifact, controlling access, receiving request,
determining authorization, sending request, and receiving
consent).
[paragraph break inserted]
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Application 14/588,304
These are generic computer functions that are well-understood,
routine, and conventional activities previously known to the
industry. The additional elements include a repository,
machine, mobile device and/or device, CRM, module, and
processor, etc., which are recited at a high level of generality
and do not add meaningful limitations to the abstract idea
beyond generally linking the system to a particular
technological environment, that is, implementation via
computers.
Final Act. 4 ( emphasis added).
For the aforementioned reasons, inter alia, the Examiner concludes
that all claims 1-23 on appeal are not patent-eligible under 35 U.S.C. § 101.
The Examiner's Answer
In the Answer ( 4--5), the Examiner further explains the basis for the
rejection:
Contrary to McRO, the instant application is merely solving a
problem involving "[ fJragmented documentation of healthcare
services in the insular ECHR systems of competing healthcare
enterprises, largely inaccessible to consumers but subject to
frequent illegitimate breaches, burden consumers who must
physically transport their health records from one provider to
another and cause needless, dangerous and costly errors by
healthcare providers acting on inaccurate and incomplete
patient information" by providing a patient-controlled
electronic health record (PCHR) system that "enables a
healthcare consumer to exercise exclusive control over her
record in the PCHR system". See specification, ,r [,I] 0032,
0034.
Ans. 4--5.
In particular, the Examiner finds: "Aggregation of patient electronic
health records and patient control over access to those records is well-
understood, routine, and conventional activity in the medical prior art, as
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Application 14/588,304
would be shown to anyone doing a simple patent search." Ans. 5 ( emphasis
added). 3
The Examiner further finds: "it appears Appellant is merely providing
the well-understood, routine and conventional practice of patient-controlled
health records to avoid 'needless, dangerous and costly errors by healthcare
providers acting on inaccurate and incomplete patient information' which
does not amount to "an improved technological result in conventional
industry practice" like McRO." Ans. 6.
Intervening Authority cited in the Reply Brief
In the Reply Brief (3-5), Appellant cites to an intervening authority as
the basis for reconsideration of our affirmance of the Examiner's rejection of
claims 1-23, as being directed to patent-ineligible subject matter:
The examiner further argues that "Applicant is merely
providing the well-understood, routine and conventional
practice of patient-controlled health records." See Examiner's
Answer, page 6. However, the cited references (provided on
page 5 of the Examiner's Answer) do not disclose anything
about ''patient controlled health record" and specifically there
is no discussion about providing the control using the technical
solution where a patient-registered mobile device is used to
control such access to the health records. According to the
Federal Circuit, 11 [ w ]hether something is well-understood,
routine, and convention [ al] to a skilled artisan at the time of the
patent is a factual determination. 11 See Berkheimer v. HP Inc.,
881 F.3d 1360, (Fed. Cir. 2018) at 1369.
3 The patent eligibility inquiry may contain underlying issues of fact.
Mortg. Grader, Inc. v. First Choice Loan Servs. Inc., 811 F.3d 1314, 1325
(Fed. Cir. 2016). In particular, "[t]he question of whether a claim element or
combination of elements is well-understood, routine and conventional to a
skilled artisan in the relevant field is a question of fact." Berkheimer v. HP
Inc., 881 F.3d 1360, 1368 (Fed. Cir. 2018).
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Reply Br. 4--5 (emphasis added).
We note Appellant's Appeal Brief was filed on April 11, 2017. In
reviewing the record, we recognize that Appellant had no opportunity to
argue Berkheimer until after it was decided by the Federal Circuit on
February 8, 2018. Thus, Appellant's first opportunity to argue Berkheimer
as an intervening authority was in the Reply Brief, filed on June 4, 2018.
Accordingly, Appellant's new arguments citing Berkheimer (881 F.3d
at 1369) as an intervening authority (Reply Br. 5) are permitted under our
procedural rule, 37 C.F.R. § 4I.52(a)(2) ("Appellant may present a new
argument based upon a recent relevant decision of either the Board or a
Federal Court."). 4
As additional support for their argument, Appellant (Reply Br. 5) also
cites to the new examination procedure published online by the USPTO on
April 19, 2018, entitled "Changes in Examination Procedure Pertaining to
Subject Matter Eligibility, Recent Subject Matter Eligibility Decision
(Berkheimer v. HP, Inc.)" (hereinafter "USPTO Memorandum").
Appellant contends:
The Applicant respectfully submits that the combination of the
limitations recited in claim 1 regarding controlling access to the
PCHR using a patient registered mobile device is not "well-
understood, routine and conventional activity previously known
to the industry." Furthermore, according to the PTO
4 Although 37 C.F.R. § 41.52(a)(2) was intended for rehearing requests, we
interpret our procedural rule ( which permits the citation of an intervening
authority) as being equally applicable to the timely citation of an intervening
authority in the Reply Brief, and thus we find the timely citation of an
intervening authority establishes a showing of "good cause" under 37 C.F.R.
§ 4I.41(b)(2).
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Memorandum [5] dated April 19, 2018, in a step 2B analysis, an
additional element ( or combination of elements) is not well-
understood, routine or conventional unless the examiner finds,
and expressly supports the rejection in writing with, one or
more of the four methods provided therein.
Reply Br. 5 ( emphasis added).
As noted by Appellant (id.), the USPTO Memorandum sets forth a
new fact finding requirement for Examiners that is applicable to rejections
under § 101. Specifically, Examiners must now provide specific types of
evidence to support a finding that claim elements ( or combinations of
elements) are well-understood, routine, and conventional.
We reproduce below changes to prior examination practice, as set
forth in the April 19, 2018 USPTO Memorandum (3--4):
A. Formulating Rejections: In a step 2B analysis, an
additional element (or combination of elements) is not well-
understood, routine or conventional unless the examiner finds,
and expressly supports a rejection in writing with, one or more
of the following:
1. A citation to an express statement in the specification or
to a statement made by an applicant during prosecution
that demonstrates the well-understood, routine,
conventional nature of the additional element(s). A
specification demonstrates the well-understood, routine,
conventional nature of additional elements when it
describes the additional elements as well-understood or
routine or conventional ( or an equivalent term), as a
commercially available product, or in a manner that
indicates that the additional elements are sufficiently
well-known that the specification does not need to
describe the particulars of such additional elements to
5 "Changes in Examination Procedure Pertaining to Subject Matter
Eligibility, Recent Subject Matter Eligibility Decision (Berkheimer v. HP,
Inc.)." Reply Br. 5.
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satisfy 35 U.S.C. § 112(a). A finding that an element is
well-understood, routine, or conventional cannot be
based only on the fact that the specification is silent with
respect to describing such element.
2. A citation to one or more of the court decisions discussed
in MPEP § 2106.05( d)(II) as noting the well-understood,
routine, conventional nature of the additional element( s ).
3. A citation to a publication that demonstrates the well-
understood, routine, conventional nature of the additional
element(s). An appropriate publication could include a
book, manual, review article, or other source that
describes the state of the art and discusses what is well-
known and in common use in the relevant industry. It
does not include all items that might otherwise qualify as
a "printed publication" as used in 35 U.S.C. § 102.[]
Whether something is disclosed in a document that is
considered a "printed publication" under 35 U.S.C. § 102
is a distinct inquiry from whether something is well-
known, routine, conventional activity. A document may
be a printed publication but still fail to establish that
something it describes is well-understood, routine,
conventional activity. See Exergen Corp., 2018 WL
1193529, at *4 (the single copy of a thesis written in
German and located in a German university library
considered to be a "printed publication" in Hall "would
not suffice to establish that something is 'well-
understood, routine, and conventional activity previously
engaged in by scientists who work in the field"'). The
nature of the publication and the description of the
additional elements in the publication would need to
demonstrate that the additional elements are widely
prevalent or in common use in the relevant field,
comparable to the types of activity or elements that are so
well-known that they do not need to be described in
detail in a patent application to satisfy 35 U.S.C.
§ 112(a). For example, while U.S. patents and published
applications are publications, merely finding the
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additional element in a single patent or published
application would not be sufficient to demonstrate that
the additional element is well-understood, routine,
conventional, unless the patent or published application
demonstrates that the additional element are widely
prevalent or in common use in the relevant field.
4. A statement that the examiner is taking official notice of
the well-understood, routine, conventional nature of the
additional element(s). This option should be used only
when the examiner is certain, based upon his or her
personal knowledge, that the additional element( s)
represents well-understood, routine, conventional activity
engaged in by those in the relevant art, in that the
additional elements are widely prevalent or in common
use in the relevant field, comparable to the types of
activity or elements that are so well-known that they do
not need to be described in detail in a patent application
to satisfy 35 U.S.C. § 112(a). Procedures for taking
official notice and addressing an applicant's challenge to
official notice are discussed in MPEP § 2144.03.
Applying the procedural guidance of the USPTO Memorandum (id.)
here, and based upon our review of the record, we agree with Appellant that
"an additional element ( or combination of elements) is not well-understood,
routine or conventional unless the [E]xaminer finds, and expressly supports
the rejection in writing with, one or more of the four methods provided
therein." Reply Br. 5 ( emphasis added).
Thus, Appellant's assertion is correct that the various statements in
the record by the Examiner as to what is purportedly well-understood,
routine or conventional, without more, do not provide any of the types of
factual evidence required by the USPTO Memorandum (3--4), which
officially implemented the guidance of Berkheimer (881 F.3d at 1369).
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Therefore, after reviewing the arguments articulated by Appellant in
the Reply Br. (4--5), we find Appellant's arguments persuasive, based upon:
(1) the intervening authority Berkheimer (881 F.3d at 1369), and, (2) the
intervening USPTO Memorandum, which changed patent examination
practice and procedure to be compliant with the guidance of Berkheimer.
Accordingly, for essentially the same reasons articulated by Appellant
in the Reply Brief ( 4--5), as pertaining to intervening controlling authority of
Berkheimer, and the additional mandatory examination practice and
procedure changes set forth in the USPTO Memorandum, we are constrained
on this record to reverse the Examiner's rejection of claims 1-23 under 35
U.S.C. § 101, as being directed to patent-ineligible subject matter.
CONCLUSION
The Examiner erred in rejecting claims 1-23, under 35 U.S.C. § 101,
as being directed to patent-ineligible subject matter.
DECISION
We reverse the Examiner's decision rejecting claims 1-23 under 35
U.S.C. § 101.
REVERSED
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