Ex Parte Eisenberger et al

Patent Trial and Appeal Board

Mar 2, 2017

12817779 (P.T.A.B. Mar. 2, 2017)

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.
12/817,779 06/17/2010 GEORGE EISENBERGER RSW920040197US3 6295
75949 7590
IBM CORPORATION
C/O: Fabian Vancott
215 South State Street
Suite 1200
Salt Lake City, UT 84111
03/06/2017 EXAMINER
HARRELL, ROBERT B
ART UNIT PAPER NUMBER
2442
NOTIFICATION DATE DELIVERY MODE
03/06/2017 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):
patents @ fabianvancott.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte GEORGE EISENBERGER, EDGAR H. MCCULLOCH III, and
THOMAS L. RICHARDS II
Appeal 2015-001087
Application 12/817,7791
Technology Center 2400
Before JEAN R. HOMERE, JESSICA C. KAISER, and
KARA L. SZPONDOWSKI, Administrative Patent Judges.
KAISER, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 1—16 and 21—33, all of the pending claims.2 We have
jurisdiction under 35 U.S.C. § 6(b).
We affirm-in-part.
1 According to Appellants, the real party in interest is International Business
Machines Corporation. (App. Br. 2.)
2 Claims 17—20 have been withdrawn. (Final Act. 1—2.)
Appeal 2015-001087
Application 12/817,779
EXEMPLARY CLAIMS
Claims 1, 21, 26, and 31 are independent and are reproduced below.
1. A method for providing controlled levels of
collaborative exchange of data using a hardware computer
network of registered participating Subscribers and Publishers,
comprising:
defining a set of different privacy levels, each privacy
level having associated data sharing parameters that
electronically control a participating Subscriber’s ability to
receive content specific data from each participating Publisher,
and
providing an electronic privacy level register that
identifies for each participating Subscriber what the approved
privacy levels are as selected from the set of different privacy
levels with respect to each participating Publisher to thereby
provide an entitlement based controlled electronic data sharing
protocol between Subscribers and Publishers.
21. A web-based secure data sharing system for
providing and controlling collaborative healthcare data sharing
between Publisher and Subscribe participants over the Internet,
comprising:
a Message Flow Server configured to communicate with
participant healthcare Publisher Gateways and Subscribers over
the Internet; and
an Administrative Server in communication with the
Message Flow Server, the Administrative Server configured to
control electronic communications between participating
Subscribers and Publishers, wherein each participating
Subscriber and Publisher has at least one defined privacy level
selected from a defined set of privacy levels, wherein the
Administrative Server is in communication with an electronic
privacy level register that defines a privacy level for certain
types of patient healthcare data, and wherein the system is
configured to electronically control the communication between
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Subscribers and Publishers based on respective defined privacy
level(s).
26. A healthcare collaborative data sharing computer
network system, comprising:
a Message Flow Server;
a plurality of Publisher participants having access to
electronic patient healthcare records, each Publisher comprising
at least one Publisher Gateway in communication with the
Message Flow Server, wherein a respective Publisher Gateway
is configured with at least one defined privacy level that
electronically controls the Publisher Gateway’s data sharing
protocols with respective Subscribers;
plurality of Subscriber participants in communication
with the Message Flow Server, each Subscriber having a
defined privacy level that electronically controls their access to
healthcare data from participating Publishers;
wherein healthcare data related to a healthcare topic is
automatically selectively electronically forwarded to a
Subscriber from a respective Publisher Gateway by the
Message Flow Server only if the Subscriber has a privacy level
that entitles the Subscriber to healthcare data for that topic.
31. A computer program product for controlling data
sharing in a collaborative data sharing system using a computer
network, the computer program product comprising:
a computer readable storage medium having computer
readable program code embodied in said medium, said
computer-readable program code comprising:
computer readable program code configured to define at
least one privacy level for each Publisher and Subscriber, the at
least one privacy level being selected from a global set of
defined privacy levels, the different privacy levels associated
with different contents of data records;
computer readable program code configured to define
data sharing protocols for Subscribers requesting data and
Publishers having data based on the defined privacy levels; and
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computer readable program code configured to provide a
participant registry of Subscribers and Publishers and defined
privacy levels thereof.
REJECTION
The Examiner has rejected claims 1—16 and 21—33 under 35 U.S.C.
§ 102(e) as being anticipated by Kragh (US 2005/0010442 Al; published
Jan. 13, 2005). (Final Act. 2-4.)
ANALYSIS
Objection to Title of the Specification
Appellants argue the Examiner’s objection to the title of the
Specification should not be sustained. (App. Br. 11.)3 We do not reach
Appellants’ argument because review of an examiner’s objection to the title
of a specification is by petition and not by appeal to the Board. See MPEP
§ 1002.02(c).
Anticipation Rejection
Independent Claim 1
Appellants argue Kragh does not disclose “providing an electronic
privacy level register that identifies for each participating Subscriber what
the approved privacy levels are as selected from the set of different privacy
levels with respect to each participating Publisher,” as recited in claim 1.
App. Br. 11—13; Reply Br. 4—6. Specifically, Appellants argue “claim 1
describes a register that indicates security levels for each Subscriber relative
3 We note it appears the Examiner may have withdrawn this objection in any
event. See Am,. 3.
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to each Publisher. By comparison, Kragh merely describes authorization for
one healthcare facility to have access and nowhere describes a central
repository with all the information for each Subscriber and each Publisher.”
App. Br. 13. Appellants further contend that Kragh’s personal health journal
“is clearly distinct from a register containing information for ‘each
participating Subscriber.’ (Claim 1).” Id.
We are not persuaded. Kragh discloses “[a] healthcare data
management system includes a central processor and a database accessible
by the processor that contains an electronic personal health journal.” Kragh,
Abstract. Kragh further discloses a “predetermined permission level” for the
journal which determines the fields to which a user has access. Id. The
Examiner finds, and we agree, Kragh’s patients disclose the recited
publishers and Kragh’s doctors and medical facilities disclose the recited
subscribers. Ans. 4 (citing Kragh, Fig. 1). The Examiner further finds, and
we agree, Kragh’s permission levels disclose the recited privacy levels. Id.
(citing Kragh, Abstract, || 40, 43, 44, 50, 52, Fig. 7). The Examiner also
finds, and we agree, Kragh discloses a register that identifies for each
participating subscriber what the approved privacy levels are as selected
from the set of different privacy levels with respect to each participating
publisher. Id. at 4—5 (citing Kragh, Figs. 1, 7, 40, 43, 44, 50, 52, 53). As
the Examiner points out, Kragh teaches that a patient (i.e., publisher) may
grant privileges for another party (i.e., subscriber) to access some or all of
the patient’s personal health journal. See Kragh || 40 (“The journal 41 is
accessible only by the patient unless privileges are granted to another party,
and is housed in the central site’s database 21.”), 42 (“A care manager 50
assigned to assist the patient 40 can meet with the patient 40 and access
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limited information at the central site’s database 21, to which the care
manager 50 will have been given privileges, either partial or limited, for and
by the patient 40.”), 43 (“In addition, a relative, associate, or motivational
partner (‘buddy’) 42 of the patient 40 may also be given access.”).
There is no ipsissimis verbis test for determining whether a reference
discloses a claim element, i.e., identity of terminology is not required. In re
Bond, 910 F.2d 831, 832 (Fed. Cir. 1990). We find that Kragh’s permission
levels must be stored in a repository that identifies which subscribers have
access (and what level of access) to Kragh’s patient’s personal health
journal; otherwise, as one example, Kragh’s care manager would not be able
to access limited information “to which the care manager 50 will have been
given privileges” (Kragh 142).
Appellants’ arguments that certain portions of Kragh’s system do not
teach the recited register (Reply Br. 4—6) do not persuasively address
Kragh’s disclosure that a patient can grant limited privileges to others which
must be stored in Kragh’s system for such privileges to be used.
For the reasons discussed above, we sustain the Examiner’s decision
to reject independent claim 1 and dependent claims 2—5 and 12, which
Appellants do not separately argue.
Independent Claim 21
Independent claim 21 recites, in pertinent part, “a Message Flow
Server configured to communicate with participant healthcare Publisher
Gateways and Subscribers over the Internet” and “an Administrative Server
in communication with the Message Flow Server, the Administrative Server
configured to control electronic communications between participating
Subscribers and Publishers.” Appellants argue claim 21 recites “two distinct
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servers that carry out different functions,” but the Examiner “does not
distinguish between the two and relies on the same structure to disclose the
separately claimed elements.” App. Br. 14—15. Appellants further argue
that “[i]f the two servers were in fact one server, then there would be no
communication between them.” Reply Br. 6—7.
We are not persuaded. As the Examiner points out (Ans. 6),
Appellants’ Specification expressly contemplates that the Administrative
Server and Message Flow Server may be combined. Spec. 1 53 (“The
function of all or some of the Administrative Server 1100 can be
incorporated into the Message Flow Server 100.”). We are also not
persuaded that the two cannot communicate if combined into a single
physical node. In particular, Appellants have not persuasively addressed
why the portions of the single node acting as each recited server would not
be in communication with each other.
For the reasons discussed above, we sustain the Examiner’s decision
to reject independent claim 21 and dependent claims 22 and 23, which
Appellants do not separately argue.
Independent Claim 26
Appellants argue Kragh does not disclose “automatically selectively
electronically forwarding healthcare data related to a healthcare topic]” as
recited in claim 26. App. Br. 16. We are persuaded the Examiner has not
adequately shown Kragh discloses this limitation.
“A claim is anticipated only if each and every element as set forth in
the claim is found, either expressly or inherently described, in a single prior
art reference.” Verdegaal Bros., Inc. v. Union Oil Co. of Cal., 814 F.2d 628,
631 (Fed. Cir. 1987). The Examiner cites paragraphs 43 and 47 of Kragh as
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teaching this limitation. Ans. 7. These portions discuss that another person
may be given limited access to a patient’s personal health journal (Kragh
143), and that Kragh’s system may telephone a patient to collect
information to improve compliance in disease management (id. 147). The
Examiner has not adequately explained how these portions disclose
“automatically selectively electronically forwarding healthcare data related
to a healthcare topic]” as recited in claim 26.
For the reasons discussed above, we are constrained to reverse the
Examiner’s decision to reject independent claim 26 and claims 27—30
depending therefrom.4
Independent Claim 31
Claim 31 recites “computer readable program code configured to
define data sharing protocols for Subscribers requesting data and Publishers
having data based on the defined privacy levels.” Appellants refer to their
arguments for claim 26 and contend, without further elaboration, “Kragh
merely teaches a single sharing protocol and fails to teach or suggest
‘sharing protocols for Subscribers . . . and Publishers.’” App. Br. 17; Reply
Br. 8—9. Appellants’ argument does not persuade us of Examiner error
because it is without elaboration. In particular, although Appellants refer to
their arguments regarding claim 26, we observe the limitations of claim 26
are not substantially similar to the limitations of claim 31. In addition,
Appellants do not persuasively address the portions of Kragh cited by the
Examiner.
4 Because we determine the issue discussed above is dispositive as to the
Examiner’s rejection of claims 26—30, we do not reach Appellants’ other
arguments regarding independent claim 26. App. Br. 15—16; Reply Br. 7—8.
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For the reasons discussed above, we sustain the Examiner’s decision
to reject independent claim 31 and dependent claims 32 and 33, which
Appellants do not separately argue.5
Dependent Claim 2
Claim 2 depends from claim 1 and further recites “each Publisher has
at least one defined privacy level selected from the set of different privacy
levels that controls what data that Publisher can publish to Subscribers.”
Appellants argue that the permission level in Kragh is an “access”
permission” rather than a “publish” permission. App. Br. 17.
We are not persuaded. As discussed above, Kragh discloses that a
patient (i.e., publisher) may grant privileges for another party (i.e.,
subscriber) to access some or all of the patient’s personal health journal. See
Kragh || 40, 43, 44 (cited at Final Act. 3). Appellants have not persuasively
addressed why such privileges do not disclose the additional limitation of
claim 2. In particular, we observe that a limited access permission for a
subscriber as disclosed in Kragh (id. 143) would also function to control
what data the publisher can publish to that subscriber (i.e., if a subscriber
does not have access to a portion of the personal health journal, a publisher
cannot publish data in that portion to that subscriber).
For the reasons discussed above, we sustain the Examiner’s decision
to reject dependent claim 2.
5 In the event of further prosecution, the Examiner may want to consider
whether independent claim 31 and its dependent claims 32 and 33 recite
patent ineligible subiect matter (i.e., transitory signals) under 35 U.S.C.
§ 101. See Spec. 147.
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Dependent Claim 4
Claim 4 depends from claim 1 and further recites “each Publisher
comprises a Publisher Gateway that retains its own repository of electronic
patient data records and electronically provides electronic healthcare data to
a Message Flow Server that selectively forwards electronic healthcare data
from a respective Publisher only to those Subscribers having an appropriate
privacy level.” Appellants argue Kragh does not disclose this limitation
because it discloses “each healthcare facility has a permission level granted
by a patient. Merely having permission to access data records clearly cannot
be reasonably interpreted as ‘retaining] its own repository of electronic
patient data records.’” App. Br. 18; Reply Br. 9—10. Appellants further
argue Kragh teaches away from independent maintenance because it teaches
a central repository. Id. at 18—19.
We are not persuaded. Appellants’ argument that each healthcare
facility in Kragh would not retain its own repository is not persuasive
because the Examiner finds Kragh’s healthcare facilities are subscribers, not
publishers. Ans. 4. In addition, we note that “the question whether a
reference ‘teaches away’ from the invention is inapplicable to an
anticipation analysis.” Celeritas Techs., Ltd. v. Rockwell Int’l Corp., 150
F.3d 1354, 1361 (Fed. Cir. 1998).
For the reasons discussed above, we sustain the Examiner’s decision
to reject dependent claim 4.
Dependent Claim 6
Claim 6 depends from claim 1 and further recites
providing an electronic topic catalog of health care topics, each
topic having an assigned privacy level corresponding to one of
the set of different privacy levels so that Subscribers can only
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request data for those topics at their respective privacy
entitlement level and Publishers can only publish data for those
topics at their privacy entitlement level.
Appellants argue Kragh teaches access rights but does not teach allowing
“Publishers . . . [to] publish data for those topics at their privacy entitlement
level.” App. Br. 19—20; Reply Br. 10. The Examiner finds the tabs in
Kragh’s Figure 3 disclose the recited topics and further cites Kragh’s
Paragraph 32 as disclosing that Publishers can only publish data for those
topics at their privacy entitlement level. Ans. 9; Final Act. 4.
We are persuaded of error because the Examiner has not adequately
shown Kragh discloses the additional limitations of claim 6. In particular,
the Examiner has not adequately explained how paragraph 32 of Kragh
discloses “Publishers can only publish data for those topics at their privacy
entitlement level.” That paragraph discusses screen tabs within the personal
health journal as shown in Figure 3, but does not discuss whether or how
Kragh’s permission levels correspond to those tabs.
For the reasons discussed above, we are constrained to reverse the
Examiner’s decision to reject dependent claim 6 and dependent claims 7—11
further depending directly or indirectly therefrom.
Dependent Claim 13
Claim 13 depends from claim 1 and further recites “the plurality of
different privacy levels comprise a first privacy level that allows only patient
de-identified data to be shared between a Publisher and Subscriber and a
second privacy level that allows limited patient data to be shared between a
Publisher and Subscriber.” Appellants argue “Kragh does not describe a
level of access granted wherein de-identified data is shared.” App. Br. 21.
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We are persuaded by Appellants’ argument. We have reviewed the
portions of Kragh cited by the Examiner (Ans. 10—11), and find that none
discloses a privacy level that “allows only patient de-identified data to be
shared between a Publisher and Subscriber,” as recited in claim 13. For this
reason, we are constrained to reverse the Examiner’s decision to reject
dependent claim 13 and dependent claim 14 further depending therefrom.
Dependent claim 15
Claim 15 depends from claim 1 and further recites “allowing a
Subscriber to electronically select a topic of interest from an electronic topic
catalog and electronically automatically trigger a request for publication of
data related to the topic that is then sent over a computer network to
participating Publishers having compliant privacy levels.” Appellants argue
“Kragh describes accessing patient records for a particular patient and does
not describe ‘selecting] a topic of interest. . . [and] requesting] a
publication of data related to the topic.’” App. Br. 22.
We are persuaded by Appellants’ argument. We have reviewed the
portions of Kragh cited by the Examiner (Ans. 11; Final Act. 3—4) and find
that they do not disclose the additional limitations of dependent claim 15. In
particular, the Examiner has not adequately explained how the cited portions
of Kragh disclose “a request for publication of data related to the topic” as
recited in claim 15.
For the reasons discussed above, we are constrained to reverse the
Examiner’s decision to reject dependent claim 15 and dependent claim 16
further depending therefrom.
Dependent Claim 24
Claim 24 depends from claim 1 and further recites
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the Administrative Server communicates with respective
Publishers and Subscribers and the Message Flow Server to
selectively automatically electronically forward healthcare
publication data for a respective topic received from Publishers
to only those Subscribers entitled thereto based on a
subscription thereto, the subscription being Subscriber and
topic specific based on the privacy level associated with the
topic of the healthcare data and the Subscriber privacy level for
each Publisher.
Appellants argue Kragh requires patient permission and thus does not
disclose “automatically electronically forward[ing] healthcare publication
data,” as recited in claim 24. App. Br. 22—23.
As discussed above, the Examiner has not adequately shown Kragh
discloses a similar limitation of independent claim 26. The Examiner’s
explanation of the rejection of claim 24 does not cure this deficiency. See
Ans. 11—12. Accordingly, we are constrained to reverse the Examiner’s
decision to reject dependent claim 24.
Dependent Claim 25
Claim 25 depends from claim 21 and further recites “the
Administrative Server is in communication with a compatibility correlation
matrix that is configured to automatically electronically prevent
unauthorized Subscriber access to Publisher patient healthcare data if the
topic and/or requesting Subscriber has a mismatch in privacy level.”
Appellants argue Kragh fails to disclose a “compatibility correlation matrix”
and fails to disclose “any mechanism to prevent unauthorized access and
relies merely on express grant of authority.” App. Br. 23; Reply Br. 13.
We are not persuaded. As discussed above, Kragh discloses that a
patient (i.e., publisher) may grant privileges for another party (i.e.,
subscriber) to access some or all of the patient’s personal health journal. See
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Kragh Tflf 40, 43, 44 (cited at Ans. 12). Appellants have not persuasively
addressed why such privileges do not disclose the additional limitations of
claim 25. We determine Kragh’s permission levels must be configured to
prevent unauthorized Subscriber access to Publisher patient healthcare data
if the requesting Subscriber has a mismatch in privacy level; otherwise,
Kragh’s system could not implement limited access privileges granted to
another person (see Kragh 143).
For the reasons discussed above, we sustain the Examiner’s decision
to reject dependent claim 25.
DECISION
We affirm the Examiner’s decision to reject claims 1—5, 12, 21—23,
25, and 31—33 under 35 U.S.C. § 102(e).
We reverse the Examiner’s decision to reject claims 6—11, 13—16, 24,
and 26-30 under 35 U.S.C. § 102(e).
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv).
AFFIRMED-IN-PART
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