Ex Parte Flagstad

Board of Patent Appeals and Interferences

Feb 25, 2010

10679749 (B.P.A.I. Feb. 25, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte GEOFFREY FLAGSTAD
____________

Appeal 2009-005845
Application 10/679,749
Technology Center 3600
____________

Decided: February 25, 2010
____________

Before KENNETH W. HAIRSTON, HUBERT C. LORIN, and
ANTON W. FETTING, Administrative Patent Judges.

LORIN, Administrative Patent Judge.

DECISION ON APPEAL
An oral hearing was held on Nov. 5, 2009.
Appeal 2009-005845
Application 10/679,749

2
STATEMENT OF THE CASE
Geoffrey Flagstad (Appellant) seeks our review of the final
rejection of claims 1, 2, and 5-64 under 35 U.S.C. § 134. Claims 3
and 4 have been cancelled. Br. 5. We have jurisdiction under 35
U.S.C. § 6(b) (2002).

SUMMARY OF DECISION
We AFFIRM but denominate the affirmed rejections as NEW
GROUNDS OF REJECTION and enter a NEW GROUND OF
REJECTION pursuant to our authority under 37 C.F.R. § 41.50(b).1

THE INVENTION
The invention “relates generally to a method and apparatus for
obtaining and storing medical records of a patient from an entity
covered by the Health Insurance Portability and Accountability Act of
1996 ("HIPAA") in a form allowing quick disclosure of the patient's
medical history to a third party without restriction or delay by
HIPAA.” Specification: [0001].
The independent claims are method claims 1 and 19 and system
claim 30, on which claims 2, 5-18, 50-54; claims 20-29, 55-59; and,
claims 31-49, 60-64 depend, respectively. Claim 1, reproduced below,
is illustrative of the subject matter on appeal.

1 Our decision will make reference to the Appellant’s Appeal Brief
(“Br.,” filed Jan. 24, 2008) and the Examiner’s Answer (“Answer,”
mailed May 13, 2008).
Appeal 2009-005845
Application 10/679,749

3
1. A method for a service provider to obtain a medical record of
a patient from a covered entity in a form allowing said service
provider to quickly disclose said medical record to a third party
without restriction by the Health Insurance Portability and
Accountability Act of 1996, the method comprising the
following steps carried out by a service provider that is not the
patient or a covered entity:
A. inducing said patient to receive said medical record from a
covered entity;
B. receiving said medical record from said patient in a storage
format, without data processing said medical record;
C. storing said medical record in a memory in a form from
which said medical record can be reproduced in said storage
format, without data processing said medical record;
D. obtaining agreement in advance with the patient that the
service provider shall transmit said medical record to a third
party under defined conditions; and
E. transmitting said medical record to a third party when the
defined conditions occur, without data processing said medical
record.

THE REJECTIONS
The Examiner relies upon the following as evidence of
unpatentability:
Joao
Segal
Mok
Judson
US 6,283,761 B1
US 2001/0041991 A1
US 2003/0140044 A1
US 2005/0026117 A1
Sep. 4, 2001
Nov. 15, 2001
Jul. 24, 2003
Feb. 3, 2005

Official Notice: Examiner takes Official Notice that the
technique of having one party (e.g., intermediary, middle
man, straw man, etc.) perform certain actions on behalf
of another party through an agreement is notoriously well
Appeal 2009-005845
Application 10/679,749

4
known and obvious. For example, a power of attorney, a
proxy agreement, and executor/trustee agreements, are
commonly used to obtain an agreement in advance
between multiple parties to consummate an agreed course
of action (e.g., transmission of medical records, etc.).
Moreover, these techniques were developed and used
prior to Applicant's invention to facilitate transactions.
Answer 5-6.

The following rejections2 are before us for review:
1. Claims 1, 2, 5-8, 11-32, and 35-64 are rejected under 35 U.S.C.
§103(a) as being unpatentable over Segal, Joao, and Official
Notice.
2. Claims 33 and 34 are rejected under 35 U.S.C. §103(a) as being
unpatentable over Segal, Joao, Official Notice, and Judson.
3. Claims 9 and 10 are rejected under 35 U.S.C. §103(a) as being
unpatentable over Segal, Joao, Official Notice, and Mok.

ISSUES
The issue is whether the cited prior art would have led one of
ordinary skill in the art to a method whereby a service provider
induces a patient to receive a medical record from a covered entity;
receives and stores the medical record “without data processing said
medical record”; obtains agreement in advance with the patient such

2 A prior rejection of claims 1, 2, and 5-64 are rejected under 35
U.S.C. §101 as being directed to nonstatutory subject matter has been
withdrawn. Answer 13.
Appeal 2009-005845
Application 10/679,749

5
that the service provider shall transmit the medical record to a third
party under defined conditions; and, transmits the medical record to
the third party “without data processing said medical record” (claim
1), or a method and system whereby the service provider induces a
patient to obtain possession of a medical record from a covered entity;
convert the medical record into a storage format; and store the
medical format in the storage means “without data processing said
medical record by the service provider” (claims 19 and 30).
There is also an issue as to the adequacy of the written
descriptive support for the claim limitation “without data processing
said medical record” in the originally-filed Specification.

FINDINGS OF FACT
We find that the following enumerated findings of fact (FF) are
supported by at least a preponderance of the evidence. Ethicon, Inc. v.
Quigg, 849 F.2d 1422, 1427 (Fed. Cir. 1988) (explaining the general
evidentiary standard for proceedings before the Office).
Claim construction
1. The claims call for a “service provider.”
2. The Specification defines “service provider” as “the person(s)
or entity(ies) carrying out this method [who] induces a patient
to obtain possession of his or her own medical record from a
covered entity.” Specification [0015].
3. Claims 1 and 19 state that a “service provider” “is not the
patient or a covered entity.”
Appeal 2009-005845
Application 10/679,749

6
4. “[C]overed entities” are “physicians, hospitals, health care
clearinghouses (“HCCs”), or other health care entities [which]
cannot release medical information or records about an
individual to third parties without written permission by that
individual.” Specification [0006]
5. Accordingly, a “service provider,” as claimed, can be any
person or entity who is not a patient or a covered entity but who
induces a patient to obtain possession of his or her own medical
record from a covered entity.
6. Step A. of claim 1 calls for the service provider to induce a
patient to receive a medical record from a covered entity.
7. “Inducing” means “persuading.” (See Webster’s New World
Dictionary 689 (3rd College Ed. 1988.)(Entry for “induce.”)
8. Persuading (i.e., inducing) another person to obtain information
is a well-known human activity.
9. For example, where the patient is a family member and the
covered entity is a physician, it is well known for another
family member (i.e., a service provider) to persuade the patient
family member to receive a medical record from the patient
family member’s physician. This is commonly the case when
the patient’s health is of concern to the patient’s family.
10. A more specific example: Where the patient is a child and the
service provider is the child’s parent, it is well known for the
parent to induce the child to receive a medical record from the
child’s doctor. Similarly, it is well known for one spouse
Appeal 2009-005845
Application 10/679,749

7
(service provider) to induce another spouse to receive a medical
record from the spouses’ doctor.
11. Step B. of claim 1 calls for the service provider to receive the
medical record from the patient in a “storage format.”
12. According to the Specification:
[0016] The service provider then acquires the medical
record from the patient in a storage format. (“Storage
format” identifies the form of the record when it is
acquired from the patient by the service provider.) The
storage format of the medical record may be the same as
or different from the format of the medical record
maintained by a covered entity or originally received by
the patient. For one example, the service provider can
acquire the record from the patient in the same format in
which the covered entity provided the record to the
patient. As another example, the patient can provide to
the service provider a record that has been summarized,
abstracted, retyped, redacted, supplemented, converted
from paper to electronic form or vice versa, or otherwise
modified from its original form.
13. Accordingly, in light of the Specification, “storage format”
means anything in any form that contains the medical record.
14. Accordingly, “storage format” could, for example, encompass
an electronic file stored on a recordable CD.
15. Electronic files, be they medical records or of other content,
stored on recordable CDs are well known.
16. Step C. of claim 1 calls for the service provider to store the
medical record “in a memory in a form from which said
medical record can be reproduced in said storage format.”
Appeal 2009-005845
Application 10/679,749

8
17. According to the Specification, the “data storage medium, i.e.
the memory, used by the system may be a portable medium
such as a CD or DVD . . . .” [0027] Emphasis added.
18. It is well known that information from recordable CDs “can be
reproduced” (Step C.) on the CDs.
19. Accordingly, Step C. broadly covers a service provider
maintaining the medical record on the recordable CD received
from the covered entity via the induced patient.
20. Claim 1 requires the service provider to perform Steps B. and
C. “without data processing said medical record.”
21. The Specification does not disclose the phrase “without data
processing said medical record” or explain what it means.
22. One common definition for “data processing” is “preparing,
storing, or manipulating information.” (See Webster’s New
World Dictionary of Computer Terms 146 (8th Ed.
2000.)(Entry for “data processing.”)
23. Accordingly, Steps B. and C. of claim 1 require the service
provider to receive the medical record from the patient on, for
example, a recordable CD and to maintain the medical record
on the recordable CD without “preparing, storing, or
manipulating” the medical record.
24. Step D. of claim 1 calls for the service provider to obtain
“agreement in advance with the patient that the service provider
shall transmit said medical record to a third party under defined
conditions.”
Appeal 2009-005845
Application 10/679,749

9
25. The “defined conditions” are not specified and therefore
broadly encompass any reason for transmitting the medical
record to a third party.
26. The “third party” covers anyone. See Specification [0051]: “the
service provider can obtain the agreement of the patient to
allow transmission of the medical record to a health care
provider, a relative, or another third party under defined
conditions.”
27. Accordingly, where the patient is a child and the service
provider is the child’s mother and the mother persuades the
child to receive a medical record from the child’s doctor, Step
D. covers the mother obtaining the agreement from the child to
allow transmission of the medical record to the child’s father
when the father asks for it.
28. Step E. of claim 1 calls for the service provider transmitting
the medical record to the third party when the defined
conditions occur, “without data processing said medical
record.”
29. Step E. does not limit the storage format in which the medical
record is transmitted. The step covers transmitting the medical
record in any form by any means.
30. “Transmitting” means “to send or cause to go from one person
or place to another.” (See Webster’s New World Dictionary
1421 (3rd College Ed. 1988.)(Entry for “transmit.”)
Appeal 2009-005845
Application 10/679,749

10
31. It is well known to send information without “preparing,
storing, or manipulating” (i.e., “without data processing”) the
information.
32. In the example of FF 27 above, Step E. therefore broadly covers
a mother sending the child’s medical record to the father when
the father asks for it.
33. Claim 19 is drawn to a method broader in scope than claim 1.
34. The method of claim 19 requires the service provider to induce
(i.e., persuade) a patient to (A.) obtain possession of a medical
record from a covered entity; (B.) convert the medical record
into a storage format; and (C.) store the medical format in the
storage means “without data processing said medical record by
the service provider.”
35. Converting information from paper to an electronic form is
well known (e.g., via a scanner).
36. In the example of FF 27 above, claim 19 broadly covers a
mother persuading a child to (A.) obtain a paper version of a
medical record from the child’s doctor; (B.) covert the medical
record into electronic form; and, (C.) store the medical record
on a recordable CD.
37. Claim 30 is a “system” claim comprising a communication
interface and a data storage device comprising a memory
capable of performing the steps of claim 19.
38. A “communication interface” broadly covers a cell phone.
The scope and content of the prior art
Appeal 2009-005845
Application 10/679,749

11
39. Segal relates to a system for managing patient medical records.
40. Segal describes medical records ([0005]) and they are “stored
in traditional paper-based formats” ([0007]).
41. Segal discloses a system that provides an ability for patients to
obtain medical records from covered entities (e.g., physicians)
via electronic means. See [0012], [0014], and [0151].
42. Joao relates to methods and apparatuses for providing
healthcare information to patients.
43. Joao discloses “a patient or individual user communication
device or computer which is associated with a healthcare
patient such as a patient, user, or client who seeks or who is
provided with healthcare ... information.” Col. 3, ll. 17-21.
44. Healthcare providers provide the healthcare information. Joao,
col. 1.
45. Joao indicates that intermediaries may use the system to obtain
healthcare information. Col. 4, ll. 26-32.
Any differences between the claimed subject matter and the
prior art
46. Neither Segal nor Joao discloses the claim phrase “without
data processing said medical record” or the employing a
“service provider” to induce a patient to perform certain
actions.
The level of skill in the art
47. Neither the Examiner nor the Appellant has addressed the level
of ordinary skill in the pertinent art of managing medical
Appeal 2009-005845
Application 10/679,749

12
records. We will therefore consider the cited prior art as
representative of the level of ordinary skill in the art. See
Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001)
(“[T]he absence of specific findings on the level of skill in the
art does not give rise to reversible error ‘where the prior art
itself reflects an appropriate level and a need for testimony is
not shown’”) (quoting Litton Indus. Prods., Inc. v. Solid State
Sys. Corp., 755 F.2d 158, 163 (Fed. Cir. 1985)).
Secondary considerations
48. There is no evidence on record of secondary considerations of
non-obviousness for our consideration.

PRINCIPLES OF LAW
Claim Construction
During examination of a patent application, a pending claim is
given the broadest reasonable construction consistent with the
specification and should be read in light of the specification as it
would be interpreted by one of ordinary skill in the art. In re Am.
Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1369 (Fed. Cir. 2004). “[W]e
look to the specification to see if it provides a definition for claim
terms, but otherwise apply a broad interpretation. As this court has
discussed, this methodology produces claims with only justifiable
breadth. In re Yamamoto, 740 F.2d 1569, 1571 (Fed. Cir. 1984).
Further, as applicants may amend claims to narrow their scope, a
broad construction during prosecution creates no unfairness to the
Appeal 2009-005845
Application 10/679,749

13
applicant or patentee. Am. Acad., 367 F.3d at 1364.” In re ICON
Health and Fitness, Inc., 496 F.3d 1374, 1379 (Fed. Cir. 2007).
Limitations appearing in the specification but not recited in the claim
are not read into the claim. E-Pass Techs., Inc. v. 3Com Corp., 343
F.3d 1364, 1369 (Fed. Cir. 2003).
Obviousness
Section 103 forbids issuance of a patent when ‘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.’
KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007). The question
of obviousness is resolved on the basis of underlying factual
determinations including (1) the scope and content of the prior art, (2)
any differences between the claimed subject matter and the prior art,
and (3) the level of skill in the art. Graham v. John Deere Co., 383
U.S. 1, 17-18 (1966). See also KSR, 550 U.S. at 407 (“While the
sequence of these questions might be reordered in any particular case,
the [Graham] factors continue to define the inquiry that controls.”)
The Court in Graham further noted that evidence of secondary
considerations “might be utilized to give light to the circumstances
surrounding the origin of the subject matter sought to be patented.”
Graham, 383 U.S. at 17-18.

ANALYSIS
The rejection of claims 1, 2, 5-8, 11-32, and 35-64 under 35 U.S.C.
§103(a) as being unpatentable over Segal, Joao, and Official Notice.
Appeal 2009-005845
Application 10/679,749

14
The Appellant argued claims 1, 2, 5-8, 11-32, and 35-64 as a
first group (Br. 19) and separately argued claims 2, 8, 19-29, 31, and
49 (Br. 30). We select claims 1 and 2 as the representative claims for
these groups. The remaining claims stand or fall with claims 1 and 2.
37 C.F.R. § 41.37(c)(1)(vii) (2007).
The obviousness of the claimed subject matter of claims 1 and 2
over the cited prior art turns on the question of claim construction.
“Analysis begins with a key legal question -- what is the invention
claimed? Courts are required to view the claimed invention as a
whole. 35 U.S.C. § 103. Claim interpretation, in light of the
specification, claim language, other claims, and prosecution history, is
a matter of law and will normally control the remainder of the
decisional process.” Panduit Corp. v. Dennison Mfg. Co., 810 F.2d
1561, 1567-68 (Fed. Cir. 1987).
Generally-speaking, the claimed subject matter is directed to
methods and a system for getting a patient’s medical records to a third
party from a covered entity, such as a physician. To accomplish that,
a “service provider”, who is not a patient or covered entity, is called
upon to induce the patient to obtain the medical records from, for
example, the physician. The method of claim 1 further requires the
service provider to receive the medical record from the patient in a
storage format, store it, obtain agreement from the patient to transmit
the medical record to a third party, and transmit it to the third party.
According to the method of claim 2, the service provider also induces
Appeal 2009-005845
Application 10/679,749

15
the patient to convert the received medical record into a storage
format and to store it.
Giving the claims the broadest reasonable construction
consistent with the specification as they would be interpreted by one
of ordinary skill in the art (see FF 1-38), we find that claim 1
reasonably broadly reads on a process by which, for example, a
mother ( “service provider”) persuades (“induces”) her child
(“patient”) to receive a medical record from the child’s doctor
(“covered entity”) on a recordable CD (“storage format”), maintains
the CD (“storing ... without data processing said medical record”),
obtains an agreement from the child to allow transmission of the
medical record to the child’s father (“third party”) when the father
asks for it (“defined conditions”), and when the father asks for it,
sends (“transmits”) the CD to the father. We find that claim 2
reasonably broadly reads on a mother persuading a child to covert a
paper medical record into electronic form.
We now turn to the prior art.
There is no dispute that Segal and Joao disclose ways of
providing heath records to a patient. The question is whether one of
ordinary skill in the art would have been led to the claimed subject
matter given the Segal and Joao disclosures and giving the claims the
broadest reasonable construction in light of the Specification as it
would be interpreted by one of ordinary skill in the art. We agree with
the Examiner that one of ordinary skill in the art would have been led
to the claimed subject matter given the Segal and Joao disclosures and
Appeal 2009-005845
Application 10/679,749

16
given what would have been well known to those of ordinary skill in
the art at the time of the invention.
The difference between the claim subject matter and that of
Segal and Joao is the addition of a service provider as an intermediary
between the patient and a third party to perform certain actions,
namely inducing the patient to obtain and convert the format of the
obtained medical records. Given that a service provider can be anyone
- including, for example, a parent of a child patient - and that one of
ordinary skill would have known that individuals persuade others to
get information - for example, parents persuading children to get
information - one of ordinary skill in the art reading Joao and Segal
would understand that the procedures described therein for a patient to
obtain his/her medical records could be effected via someone other
than the patient or covered entity (i.e.,“service provider”) who would
persuade the patient to obtain his/her medical records.
Another difference which the Appellant emphasizes is that the
claims require certain steps/elements to be performed “without data
processing said medical record.” Setting aside that we find inadequate
written descriptive support for this limitation in the Specification (see
infra), we do not find that such actions as receiving, storing, and
transmitting a medical record, all of which are well known to those of
ordinary skill in the art of managing medical records, are patentably
distinguishable for being performed “without data processing said
medical record.” We note that the Appellant concedes that Step B of
claim 1 “would be performed if the patient scanned her own medical
Appeal 2009-005845
Application 10/679,749

17
record to a make a PDF file, stored the PDF record on a CD, and
handed the CD to the service provider, then the service provider
merely possessed the CD.” Br. 25. The Appellant then argues that
adding steps C and E of claim 1, whereby the service provider also
stores the record in memory and transmits it to a third party, renders
the claimed subject matter nonobvious over the cited prior art.
Notwithstanding that storing information in a memory is well known,
a CD is a “memory” as the Appellant has defined that term (see
FF17). Thus the mere holding of the CD that was produced in Step A.
necessarily meets the requirements of Step C. As to the step of
transmitting medical records to a third party, as we have reasonably
broadly construed this step in the context of claim 1, this is
commonplace. See FF30-32.
In our view, the Examiner was reasonable to reject the claimed
subject matter under §103 over the cited prior art and what would
have been well known to one of ordinary skill in the art of managing
medical records.
Neither the enactment of § 103 nor the analysis in Graham
disturbed this Court's earlier instructions concerning the need for
caution in granting a patent based on the combination of elements
found in the prior art. For over a half century, the Court has held
that a “patent for a combination which only unites old elements
with no change in their respective functions ... obviously
withdraws what is already known into the field of its monopoly
and diminishes the resources available to skillful men.” Great
Atlantic & Pacific Tea Co. v. Supermarket Equipment Corp., 340
U.S. 147, 152, 71 S.Ct. 127, 95 L.Ed. 162 (1950). This is a
principal reason for declining to allow patents for what is obvious.
The combination of familiar elements according to known methods
Appeal 2009-005845
Application 10/679,749

18
is likely to be obvious when it does no more than yield predictable
results.
KSR at 415-416. Emphasis added. Accordingly, the rejection as to
claims 1 and 2 is affirmed. Given that claims 5-8, 11-32, and 35-64
stand or fall with claims 1 and 2, their rejection is also affirmed for
the same reasons.
Nevertheless, we recognize that we have relied on a more
detailed claim construction analysis to show in what way the claimed
subject matter is rendered obvious over the cited prior art and what
was well known. Our reasoning in finding that the claimed subject
matter would have been obvious to one of ordinary skill in the art
departs from that of the Examiner. Accordingly, though we affirm the
rejection of the claims 1, 2, 5-8, 11-32, and 35-64, we denominate the
rejection as a new ground under 37 C.F.R. § 41.50(b).

The rejection of claims 33 and 34 under 35 U.S.C. §103(a) as being
unpatentable over Segal, Joao, Official Notice, and Judson.
The Appellant relied on the arguments challenging the rejection
of claims1, 2, 5-8, 11-32, and 35-64. Br. 32. We affirm the rejection
for the same reasons and because our reasoning in finding that the
claimed subject matter would have been obvious to one of ordinary
skill in the art departs from that of the Examiner, we denominate the
rejection as a new ground.

The rejection of claims 9 and 10 under 35 U.S.C. §103(a) as being
unpatentable over Segal, Joao, Official Notice, and Mok.
Appeal 2009-005845
Application 10/679,749

19
The Appellant relied on the arguments challenging the rejection
of claims 1, 2, 5-8, 11-32, and 35-64. Br. 33. We affirm the rejection
for the same reasons and because our reasoning in finding that the
claimed subject matter would have been obvious to one of ordinary
skill in the art departs from that of the Examiner, we denominate the
rejection as a new ground.

NEW GROUNDS
Pursuant to 37 C.F.R. § 41.50(b), we enter a new ground of
rejection of claims 1, 2, and 5-64 under 35 U.S.C. §112, first
paragraph, as failing to comply with the written description
requirement.
Principle of Law
Written Description
“What is claimed by the patent application must be the same as
what is disclosed in the specification; otherwise the patent should not
issue.” Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co., 535
U.S. 722, 736 (2002). All that is necessary to satisfy the description
requirement is to show that one is “in possession” of the invention.
The decision in Lockwood v. Am. Airlines, Inc., 107 F.3d 1565, 1572
(Fed. Cir. 1997) accurately states the test.
One shows that one is ‘in possession’ of the invention by
describing the invention, with all its claimed limitations,
not that which makes it obvious. Id. (“[T]he applicant
must also convey to those skilled in the art that, as of the
filing date sought, he or she was in possession of the
invention. The invention is, for purposes of the ‘written
Appeal 2009-005845
Application 10/679,749

20
description’ inquiry, whatever is now claimed.”)
(emphasis in original). One does that by such descriptive
means as words, structures, figures, diagrams, formulas,
etc., that fully set forth the claimed invention. Although
the exact terms need not be used in haec verba, see
Eiselstein v. Frank, 52 F.3d 1035, 1038 . . .
(Fed.Cir.1995) (“[T]he prior application need not
describe the claimed subject matter in exactly the same
terms as used in the claims . . . . ”), the specification must
contain an equivalent description of the claimed subject
matter.”
Lockwood v. Am. Airlines, Inc., 107 F.3d at 1572. Compliance with
the written description requirement is a question of fact. Ralston
Purina Co. v. Far-Mar-Co, Inc., 772 F.2d 1570, 1575 (Fed. Cir.
1985).

Analysis
We reject claims 1, 2, and 5-64 under 35 U.S.C. §112, first
paragraph, as failing to comply with the written description
requirement. The independent claims are method claims 1 and 9 and
system claim 30.
The limitation “without data processing said medical record”
was first introduced into steps B., C., and E. of claim 1; step C. of
claim 19; and, storage element B. of claim 30 by the Amendment filed
Jun. 9, 2006. We find there is inadequate written descriptive support
in the originally-filed Specification for this additional claim
limitation.
Appeal 2009-005845
Application 10/679,749

21
The Jun. 9, 2006 Amendment (p.18) states that the limitation
“without data processing said medical record” is supported by the
following passage in the Specification:
[0037] In accordance with an embodiment of the invention, the
medical information of a patient stored in a medical file storage
system is provided by the patient, and is stored as the patient
provides without any change or alteration to its content or
format. In other words, a medical file storage system based on
the present invention copies, stores, retrieves, and delivers
medical information in the storage format as received from the
patient, who obtained his or her own medical information from
a covered entity. Such a medical file storage system is not a
HCC [health care clearinghouse] because it does not process or
facilitate the processing of health information received from a
covered entity; it only receives and stores medical information
of a patient that is provided by the patient himself or herself; ...
.
But the passage describes a medical file storage system that stores
medical information in the format received from the patient. The
passage does not describe any actions taken by a service provider, let
alone that the actions of receiving, storing, and transmitting medical
records by the service provider are to be conducted “without data
processing [of] said medical record.” Also, the passage does not
describe the medical file storage system in terms that precludes it
from processing data. While the “medical file storage system based on
the present invention copies, stores, retrieves, and delivers medical
information in the storage format as received from the patient”
(Specification [0037), there is no indication the storage system
performs these operations, or is limited to operations that perform,
without data processing. The passage does not convey with reasonable
Appeal 2009-005845
Application 10/679,749

22
clarity to those skilled in the art that, as of the filing date sought, that
the Applicant was in possession of the invention as now claimed, that
is, a method whereby a service provider receives (claim 1, step B.),
stores (claim 1, step C.), and transmits (claim 1, step E.) the medical
record - all without data processing the medical record; a method
whereby a service provider induces a patient to store the medical
record without the service provider data processing the medical record
(claim 9, step C.); and, a system comprising a storage device
configured to store the “medical record without data processing said
medical record” (claim 30, element B).

CONCLUSIONS
We conclude that the Appellant’s arguments do not overcome
the rejection of claims 1, 2, 5-8, 11-32, and 35-64 under 35 U.S.C.
§103(a) as being unpatentable over Segal, Joao, and Official Notice;
claims 33 and 34 under 35 U.S.C. §103(a) as being unpatentable over
Segal, Joao, Official Notice, and Judson; and, claims 9 and 10 under
35 U.S.C. §103(a) as being unpatentable over Segal, Joao, Official
Notice, and Mok. Because our reasoning differs substantially from
that of the Examiner we denominate our affirmance of these rejections
as new grounds of rejection.
We enter a new ground of rejection of claims 1, 2, and 5-64
under 35 U.S.C. §112, first paragraph, as failing to comply with the
written description requirement.

Appeal 2009-005845
Application 10/679,749

23
DECISION
The decision of the Examiner to reject claims 1, 2, and 5-64 is
affirmed.
This decision contains new grounds of rejection pursuant to 37
C.F.R. § 41.50(b) (effective September 13, 2004, 69 Fed. Reg. 49960
(August 12, 2004), 1286 Off. Gaz. Pat. Office 21 (September 7,
2004)). 37 C.F.R. § 41.50(b) provides “[a] new ground of rejection
pursuant to this paragraph shall not be considered final for judicial
review.”
37 C.F.R. § 41.50(b) also provides that the appellant, WITHIN
TWO MONTHS FROM THE DATE OF THE DECISION, must
exercise one of the following two options with respect to the new
ground of rejection to avoid termination of the appeal as to the
rejected claims:
• (1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new evidence
relating to the claims so rejected, or both, and have
the matter reconsidered by the examiner, in which
event the proceeding will be remanded to the
examiner . . . .

• (2) Request rehearing. Request that the proceeding
be reheard under § 41.52 by the Board upon the same
record . . . .
No time period for taking any subsequent action in connection
with this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv)
(2007).
AFFIRMED; 37 C.F.R. § 41.50(b)
Appeal 2009-005845
Application 10/679,749

24

mev

MCANDREWS HELD & MALLOY, LTD
500 WEST MADISON STREET
SUITE 3400
CHICAGO IL 60661