Ex Parte Faulkner et al

Patent Trial and Appeal Board

May 14, 2018

12391130 (P.T.A.B. May. 14, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/391,130 02/23/2009
91065 7590 05/16/2018
Epic
c/o Boyle Fredrickson S.C.
840 North Plankinton A venue
Milwaukee, WI 53203
FIRST NAMED INVENTOR
Judith R. Faulkner
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.
E09130US (1517.046) 6456
EXAMINER
NG, JONATHAN K
ART UNIT PAPER NUMBER
3686
NOTIFICATION DATE DELIVERY MODE
05/16/2018 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):
docketing@boylefred.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JUDITH R. FAULKNER, CARL D. DVORAK, BRIAN M.
WEISBERGER, JANET L. CAMPBELL, TIMOTHY W. ESCHER,
DUSTIN L. GAGE, SEAN CONRAD, BHA VIK SHAH,
MICHAEL J. KANTOR, and MATTHEW D. SIDNEY 1
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Application 12/391, 130
Technology Center 3600
Before CARLA M. KRIVAK, CAROLYN D. THOMAS, and
PHILLIP A. BENNET, Administrative Patent Judges.
THOMAS, Administrative Patent Judge.
DECISION ON APPEAL
Appellants seek our review under 35 U.S.C. § 134(a) of the
Examiner's Final Rejection of claims 1-11 and 13-21, all the pending
claims in the present application. Claim 12 is canceled. See Claims
Appendix. We have jurisdiction over the appeal under 35 U.S.C. § 6(b).
We AFFIRM.
1 The Appellants name Epic Systems Corporation as the real party in interest
(App. Br. 3).
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Application 12/391, 130
The present invention relates generally to a healthcare portal
aggregator that collects data from healthcare portals to provide patients with
a comprehensive view of their healthcare information. See Abstract.
Claim 1 is illustrative:
1. A health data portal aggregator comprising:
at least one electronic computer electronically connected
to a computer network communicating with at least two health data
portals, each portal providing access by a patient to clinical records of
the patient from electronic medical record systems associated with a
single corresponding healthcare institution, the electronic computer
executing a stored program to:
(a) receive authentication information from a patient;
(b) retrieve stored access information for the health data
portals based on the authentication information, the stored access
information including unique access information for each health data
portal generated by an administrator of that health data portal:
use the authentication information together with unique
access information for the health data portals to collect clinical
records from the electronic medical record systems of the healthcare
institutions over the computer network, the clinical records providing
clinical medical data having datatypes and including an identification
of a healthcare provider that created the clinical medical data based on
interaction with the patient;
( c) display the clinical medical data visually aggregated
by datatypes; and
( d) visually associate the visually aggregated clinical
medical data with information identifying the healthcare institutions
sourcing the clinical medical data, the healthcare institution being
different from the healthcare provider;
wherein the stored program further uses the
authentication information to request and receive appointment
information from at least two health data portals, each portal
corresponding to a different healthcare institution; the appointment
information including a listing of previously scheduled upcoming
appointments at the corresponding healthcare institutions,
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wherein the appointment data is visually aggregated by
an appointment time and visually associated with information
identifying the healthcare institutions related to the appointments.
Appellants appeal the following nine (9) rejections:
RI. Claims 1-11and13-21 are rejected under 35 U.S.C. § 101
because the claimed invention is directed to non-statutory subject matter
(Final Act. 2-3);
R2. Claims 1, 2, 5-9, 14, and 15 are rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Mok (US 7,647,320 B2, Jan. 12, 2010),
Urali (US 2008/0109361 Al, May 8, 2008), Robinson (US 2007/0185797
Al, Aug. 9, 2007), and Wheeler (US 2005/0261942 Al, Nov. 24, 2005)
(Final Act. 4--13);
R3. Claim 3 is rejected under 35 U.S.C. § 103(a) as being
unpatentable over Mok, Urali, Robinson, Wheeler, and Nawaz (US
5,959,621, Sept. 28, 1999) (Final Act. 14);
R4. Claim 4 is rejected under 35 U.S.C. § 103(a) as being
unpatentable over Mok, Urali, Robinson, Wheeler, Nawaz, Wizig (US
7,899,689 Bl, Mar. 1, 2011) (Final Act. 15-16);
R5. Claim 10 is rejected under 35 U.S.C. § 103(a) as being
unpatentable over Mok, Urali, Robinson, Wheeler, Patterson (US
2006/0259324 Al, Nov. 16, 2006) (Final Act. 16);
R6. Claim 11 is rejected under 35 U.S.C. § 103(a) as being
unpatentable over Mok, Urali, Robinson, Wheeler, Hasan (US 7 ,428,494 B2,
Sept. 23, 2008) (Final Act. 17);
R7. Claim 13 is rejected under 35 U.S.C. § 103(a) as being
unpatentable over Mok, Urali, Robinson, Wheeler, Crici (US 2005/0027580
Al, Feb. 3, 2005) (Final Act. 18);
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R8. Claim 16-18 rejected under 35 U.S.C. § 103(a) as being
unpatentable over Mok, Urali, Robinson, Wheeler, Sidney (US
2006/0117021 Al, June 1, 2006) (Final Act. 19--20); and
R9. Claim 19--21 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Mok, Urali, Robinson, Wheeler, Smitherman (US
2006/0129435 Al, June 15, 2006) (Final Act. 21-22).
We review the appealed rejections for error based upon the issues
identified by Appellants, and in light of the arguments and evidence
produced thereon. Ex parte Frye, 94 USPQ2d 1072, 107 5 (BP AI 2010)
(precedential).
ANALYSIS
Re} ection under § 101
Issue 1: Did the Examiner err in finding that the claims are directed
to non-statutory subject matter?
Alice Corp. Pty. Ltd. v. CLS Bank International, 134 S. Ct. 2347
(2014) identifies a two-step framework for determining whether claimed
subject matter is judicially-excepted from patent eligibility under § 101.
According to Alice step one, "[ w ]e must first determine whether the claims
at issue are directed to a patent-ineligible concept," such as an abstract idea.
Alice, 134 S. Ct. at 2355.
In this regard, with respect to independent apparatus claims 1 and 15,
the Examiner finds that the claims are directed to "the abstract idea of
aggregating and organizing patient data from different sources ... because it
is analogous to comparing new and stored information and using rules to
identify options" (Final Act. 2; see also Ans. 2). The Examiner adds that
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"this information is intangible and therefore, collecting information,
including when limited to particular content (which does not change its
character as information), is within the realm of abstract ideas" (Ans. 3,
citing Classen, CyberSource, Content Extraction, and SmartGene ). The
Examiner further finds that "the claims in question are unlike the claims in
Enfzsh ... Here, ... the focus of the claims are on abstract ideas that use
computers as tools and not on an improvement in computers as tools" (Ans.
3--4).
Appellants challenge said findings on two grounds: (a) the claims are
tied to a specific application, i.e., medical records, that does not preempt;
and (b) the Examiner's findings ignore specific limitations.
Regarding (a), Appellants contend that "the use of the clinical medical
records ... is in no way a generic use of the abstract ... [and is tied] to a
specific application [that] does not preempt its use in general" (App. Br.
13).
Even assuming this is true (without deciding), the fact that the claim
may not preempt a particular abstract idea does not make the claim patent
eligible. See Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371,
13 79 (Fed. Cir. 2015) ("While preemption may signal patent ineligible
subject matter, the absence of complete preemption does not demonstrate
patent eligibility."); OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359,
13 62---63 (Fed. Cir. 2015) ("[T]hat the claims do not preempt all price
optimization or may be limited to price optimization in the e-commerce
setting do not make them any less abstract."). In other words, we find
unavailing Appellants' contention that their claims do not preempt as
absence of preemption does not demonstrate patent eligibility.
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Regarding (b ), Appellants contend that "the Examiner's description of
the claims ... ignores all of the specific limitations of the claims and ignores
the requirement that the specific limitations must be well-understood,
routine and conventional" (App. Br. 13; see also id. at 16).
We find the Examiner properly and reasonably found that claim 1 is
directed to "aggregating and organizing patient data from different sources"
(Ans. 2), which is an abstract idea. Under the first step of the Alice
framework, "[ w ]e must first determine whether the claims at issue are
directed to a patent-ineligible concept," such as an abstract idea. Alice, 134
S. Ct. at 2355. However the concept is described, Appellants have not
adequately shown that claim 1 is not directed to an abstract idea. That the
claim includes more words than the phrase the Examiner uses as an
articulation of the abstract idea is insufficient for persuasively arguing that
claim 1 is not directed to an abstract idea.
We note that claim 1 recites a health data portal aggregator including
a computer for performing four steps: (1) receive authentication information;
(2) retrieve stored access information; (3) display the clinical medical data;
and ( 4) visually associate medical data with healthcare institutions. These
four steps present a scheme for integrating separately maintained health
records with associated institutions, i.e., "aggregating and organizing patient
data from different sources."
Information collection and analysis, including when limited to
particular content, is within the realm of abstract ideas. See, e.g., Elec.
Power Grp. LLC v. Alstom S.A., 830 F.3d 1350, 1353 (Fed. Cir. 2016)
(holding that "collecting information, analyzing it, and displaying certain
results of the collection and analysis" are "a familiar class of claims
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'directed to' a patent-ineligible concept"); FairWarning IP, LLC v. Iatric
Sys., Inc., 839 F.3d 1089, 1093-94 (Fed. Cir. 2016); Internet Patents Corp.
v. Active Network, Inc., 790 F.3d 1343, 1349 (Fed. Cir. 2015); Digitech
Image Techs., LLC v. Elecs.for Imaging, Inc., 758 F.3d 1344, 1351 (Fed.
Cir. 2014); and CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366,
1370 (Fed. Cir. 2011). Because the instant claims are directed to collecting
information, analyzing it, correlating it, and providing it to users, we agree
with the Examiner that claim 1 is directed to an abstract idea.
We now tum to the second step of the Alice framework: "a search for
an 'inventive concept' --i.e., an element or combination of elements that is
'sufficient to ensure that the patent in practice amounts to significantly more
than a patent upon the [ineligible concept] itself."' Alice, 134 S. Ct. at 2355
(citing Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66
(2012)).
Appellants contend that "medical records are a special type of data
that is traditionally tightly held ... [and the claims include] unconventional
steps that confine the claim to a particular useful application specific to
electronic medical records" (App. Br. 15). Appellants further contend that
"the Examiner has not shown that the present claims do no more than his
generic interpretation as was found in the Smartgene [sic] case" (App. Br.
16).
The Examiner finds, and we agree, that in the claims "this information
is intangible and therefore, collecting information, including when limited to
particular content (which does not change its character as information), is
within the realm of abstract ideas" (Ans. 3), and there is "not any particular
assertedly inventive technology for performing those functions" (id.)
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because the claims "use computers as tools and not [as] an improvement in
computers" (id. at 4).
As recognized by the Supreme Court, "the mere recitation of a generic
computer cannot transform a patent-ineligible abstract idea into a patent-
eligible invention." See Alice, 134 S. Ct. at 2359 (concluding claims
"simply instruct[ing] the practitioner to implement the abstract idea of
intermediated settlement on a generic computer" not patent eligible); see
also Ultramercial, 772 F.3d at 715-16 (claims merely reciting abstract idea
of using advertising as currency as applied to particular technological
environment of the Internet not patent eligible); Accenture Global Servs.,
GmbH v. Guidewire Software, Inc., 728 F.3d 1336, 1344--45 (Fed. Cir.
2013) (claims reciting "generalized software components arranged to
implement an abstract concept [of generating insurance-policy-related tasks
based on rules to be completed upon the occurrence of an event] on a
computer" are not patent eligible); and Dealertrack, Inc. v. Huber, 674 F.3d
1315, 1333-34 (Fed. Cir. 2012) ("[s]imply adding a 'computer aided'
limitation to a claim covering an abstract concept, without more, is
insufficient to render [a] claim patent eligible" (internal citation omitted)).
Here, Appellants fail to persuasively rebut the Examiner's finding that
generic components are being used merely as tools to implement the abstract
idea.
Similarly, our reviewing court found that the claims at issue in
SmartGene were patent ineligible because they did "no more than call on a
'computing device,' with basic functionality for comparing stored and input
data and rules, to do what doctors do routinely." SmartGene, 555 Fed.
Appx. at 954. We agree with the Examiner that, in the instant case,
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"[ n ]othing in the claims ... requires anything other than off-the-shelf,
conventional computer, network, and display technology for gathering,
sending, and presenting the desired information" (Ans. 4).
In other words, the claimed steps do not rely on an inventive device
or technique for displaying information or new techniques for analyzing
information, but rather constitute "'a set of generic computer components'
and display devices" (id.). The instant facts are also similar to those in
SmartGene because the claims at issue in SmartGene relied upon "expert
rules" for "'evaluating and selecting' from a stored 'plurality of different
therapeutic treatment regimens."' SmartGene, 555 Fed. Appx. at 951-952.
The "expert rules" in SmartGene are analogous to using "the authentication
information together with unique access information" to "collect clinical
records" in claim 1. In neither SmartGene nor the instant claims is there any
evidence of record that specific rules or factors were/are required. The
claims thus encompass the use of any rule or factor known or desired for use
in the computing device.
Because Appellants' independent claims 1 and 15 are directed to a
patent-ineligible abstract concept and do not recite something "significantly
more" under the second prong of the Alice analysis, we sustain the
Examiner's rejection of these claims as well as respective dependent claims
2-11, 13, 14, and 16-21under35 U.S.C. § 101 as being directed to non-
statutory subject matter in light of Alice and its' progeny.
For the foregoing reasons, Appellants' contentions are unpersuasive
as to error in the rejection under 35 U.S.C. § 101.
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Rejection under§ 103(a)
Issue 2: Did the Examiner err in finding that the combined teachings
of the cited references teach or suggest receiving information from at least
two healthcare portals, each portal corresponding to a different healthcare
institution, as set forth in claim 1?
Appellants contend that Wheeler "is directed to a patient check in
kiosk for a medical facility and clearly only accesses local information ...
and does not teach accessing records at different healthcare facilities" (App.
Br. 18). Appellants further contend that "[ n ]othing in Wheeler teaches or
suggests that any of these databases are associated with different healthcare
institutions ... are accessed to aggregate data ... requiring different
authentications to access this data" (id. at 19), rather Wheeler teaches an
"interface with various types of single databases" (id.).
In response, the Examiner finds that "one cannot show
nonobviousness by attacking references individually ... [because at least]
[ t ]he combination of Robinson and Wheeler was used to teach multiple
databases associated with different facilities are accessed to aggregate data
from multiple databases requiring different authentications" (Ans. 5). We
agree with the Examiner.
Appellants' argument against Wheeler separately from the other cited
art does not persuasively rebut the combination made by the Examiner. One
cannot show non-obviousness by attacking references individually, where
the rejections are based on combinations of references. In re Merck & Co.,
Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986); In re Keller, 642 F.2d 413,
425-26 (CCPA 1981 ).
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For example, the Examiner finds Robinson teaches "providing
authentication information to log into a user data account aggregation
system" (Final Act. 7, citing Robinson i-fi-1 46, 4 7, and 51; see also Ans. 5)
and Wheeler teaches "consolidating medical data" and accessing "various
medical record networks, or portals" (id. at 8, citing Wheeler i-fi-136, 37 and
claim 2; see also Ans. 5---6, citing i-fi-16-9 and Fig. 1 ). Furthermore, the
Examiner finds that Urali teaches both "an aggregator may sign in to
multiple health record portals to aggregate a patient's health records" (Final
Act. 6, citing Urali i-fi-1 66 and 221) and "a user can require identity
verification" (id., citing Urali i1227) and Mok teaches receiving
authentication information, identification of a healthcare provider, and
visually aggregating datatypes (id. at 4--5).
In other words, at least the combined teachings of Robinson and
Wheeler teach or suggest using authentication information to receive
information from at least two health data portals, each portal corresponding
to a different healthcare institution. Thus, we find unavailing Appellants'
contention that Wheeler fails to teach or suggest the argued limitations given
that the Examiner relied upon the combined teachings.
Accordingly, we sustain the Examiner's rejection of claim 1.
Appellants' arguments regarding the Examiner's rejection of independent
claim 15 rely on the same arguments as for claim 1, and Appellants do not
argue separate patentability for the dependent claims. We, therefore, also
sustain the Examiner's rejection of claims 2-11 and 13-21.
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DECISION
We affirm the Examiner's§ 101 rejection RI of claims 1-11 and
13-21.
We affirm the Examiner's§ 103(a) rejections R2-R9 of claims 1-11
and 13-21.
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
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