Ex Parte Ge et al

Patent Trial and Appeal Board

Mar 14, 2018

12827717 (P.T.A.B. Mar. 14, 2018)

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.
12/827,717 06/30/2010 Y aorong Ge 1498/5/2 5563
25297 7590 03/16/2018
Jenkins, Wilson, Taylor & Hunt, P.A.
3015 Carrington Mill Boulevard
Suite 550
Morrisville, NC 27560
EXAMINER
PATEL, NEHA
ART UNIT PAPER NUMBER
3686
NOTIFICATION DATE DELIVERY MODE
03/16/2018 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):
u sptomail @ j wth. com
wehmig@jwth.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte YAORONG GE and JOHN JEFFREY CARR1
Appeal 2017-000088
Application 12/827,717
Technology Center 3600
Before CAROLYN D. THOMAS, BRADLEY W. BAUMEISTER, and
ADAM J. PYONIN, 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—45, all the pending claims in the
present application. See Claims Appendix. We have jurisdiction over the
appeal under 35 U.S.C. § 6(b).
We AFFIRM.
appellants name Wake Forest University as the real party in interest
(App. Br. 2).
Appeal 2017-000088
Application 12/827,717
The present invention relates generally to personally controlled
sharing of medical image and other health data. See Abstract.
Claim 1 is illustrative:
1. A method for patient-mediated access to patient health
information maintained by different healthcare facilities or other
health record repositories, the method comprising:
using a central key server and plurality of data servers
local to the healthcare facilities or other health record repositories:
at the central key server, maintaining a patient-controlled registry of
access keys that allow access to individual patient health information,
the health information including medical image data, maintained by
different healthcare facilities, each key including a unique identifier
for a patient at a healthcare facility, each patient having an account
with the central key server through which the patient maintains the
patient’s registry of access keys, the access keys being pushed or
uploaded by the facilities to the account for the patient when the
patient requests that the facilities provide for sharing of the patient’s
health information maintained by the facilities, wherein at least some
of the keys allow the patient to define access control to different parts
of a healthcare record of the patient, where different keys are usable to
access different parts of a healthcare record of the patient within the
same facility, wherein the central key server does not store the patient
health information maintained by the different facilities, and wherein
each of the access keys contains content including the unique
identifier for the patient and is digitally signed by the issuing
healthcare facility and the content is only accessible using credentials
of the issuing healthcare facility, thereby making an access key issued
by an issuing healthcare facility unusable to access patient health
information maintained by another healthcare facility, and access keys
issued by different issuing healthcare facilities different from each
other;
receiving, at the central key server and from a data server
of a first healthcare facility, a request for an access key that allows
access to an individual health record for a patient maintained by a
second healthcare facility, the access key including a unique identifier
for the patient at the second healthcare facility; and
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Application 12/827,717
at the central key server, in response to the request,
authenticating credentials of the patient and the first healthcare
facility, verifying permission from the patient to release the access
key to the first healthcare facility, locating, in the patient-controlled
registry, the access key that allows access to the individual health
record for the patient at the second healthcare facility and providing
the access key to the first healthcare facility, wherein the access key,
including the unique identifier for the patient at the second healthcare
facility, is used by the data server of the first healthcare facility to
access the individual health record for the patient directly from the
data server of the second healthcare facility after successful
authentication of the first healthcare facility using the access key and
verification of access permissions granted by the patient.
Appellants appeal the following rejections:
Rl. Claims 1—45 are rejected under 35 U.S.C. § 101 because the
claimed invention is directed to non-statutory subject matter
(Final Act. 2-4);
R2. Claims 1—13, 16—35, and 38-45 are rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Maresh (US 2009/0112882 Al, Apr. 30,
2009), Durski (US 2009/0106823 Al, Apr. 23, 2009), Dettinger
(US 2007/0075135 Al, Apr. 5, 2007), and Conner (US 5,579,393, Nov. 26,
1996); and
R3. Claims 14, 15, 36, and 37 are rejected under 35 U.S.C. § 103(a)
as being unpatentable over Maresh, Durski, Dettinger, Conner, and Mok
(US 2003/0149593 Al, Aug. 7, 2003).
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, 1075 (BPAI 2010)
(precedential).
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Application 12/827,717
ANALYSIS
Rejection under § 101
Claims 1—45
Issue 1: Did the Examiner err in finding that the claims are directed
to non-statutory subject matter?
With respect to independent method claim 1, and similarly, system
claim 22 and computer-readable medium claim 45, the Examiner finds these
claims are directed a “series of step[s] to perform controlled sharing of
medical data” which “can be perform[ed] manually . . . under example of
organizing human activities . . . [and] uses categories to organize, store[,]
and transmit^ information” (Final Act. 3). The Examiner further finds that
“[t]he claims do not include additional elements that are sufficient to amount
to significantly more than the judicial exception . . . [and] amount to no more
than a recitation of A) generic computer structure . . . [and] B) functions that
are well-understood, routine, and conventional activities” {id. at 3—4).
Appellants contend that “the claims are rooted in computer
technology with no direct corresponding offline equivalence ... in order to
overcome a problem specifically arising in the realm of computer
networking and data storage . . . [which] results in ‘reducing the network
bandwidth for image transferring and the storage needs in the centralized
patient record’” (App. Br. 12—13; see also id. at 14 (citing DDR Holdings,
LLCv. Hotels.com, L.P., 773 F.3d 1245 (Fed. Cir. 2014))).
Appellants further contend that each of the independent claims
“recites the involvement and utilization of multiple computer systems that
are in communication and store medical image data and use computer
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Application 12/827,717
technology . . . [which] constitutes significantly more” (App. Br. 13; see also
id. at 15).
We disagree with Appellants’ contentions. Instead, we find that the
Examiner has provided a sufficient response supported by a preponderance
of evidence (Ans. 2—7). As such, we refer to, rely on, and adopt the
Examiner’s findings and conclusions set forth in the Final Action and the
Answer. See Final Act. 2-4, 18—19; Ans. 2—7. Our discussions here will be
limited to the following points for emphasis.
A patent may be obtained for “any new and useful process, machine,
manufacture, or composition of matter, or any new and useful improvement
thereof.” 35 U.S.C. § 101. The Supreme Court has held that this provision
contains an important implicit exception: Laws of nature, natural
phenomena, and abstract ideas are not patentable. Alice Corp. Pty. Ltd. v.
CLS Bank Inti, 134 S. Ct. 2347, 2354 (2014); Gottschalkv. Benson, 409
U.S. 63, 67 (1972) (“Phenomena of nature, though just discovered, mental
processes, and abstract intellectual concepts are not patentable, as they are
the basic tools of scientific and technological work.”). Notwithstanding, that
a law of nature or an abstract idea, by itself, is not patentable, the application
of these concepts may be deserving of patent protection. Mayo
Collaborative Servs. v. Prometheus Labs., Inc., 132 S. Ct. 1289, 1293—94
(2012). In Mayo, the Court stated that “to transform an unpatentable law of
nature into a patent-eligible application of such a law, one must do more
than simply state the law of nature while adding the words ‘apply it.’” Id. at
1294 (citation omitted).
In Alice, the Court reaffirmed the framework set forth previously in
Mayo “for distinguishing patents that claim laws of nature, natural
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phenomena, and abstract ideas from those that claim patent-eligible
applications of those concepts.” Alice, 134 S. Ct. at 2355. The first step in
the analysis is to “determine whether the claims at issue are directed to one
of those patent-ineligible concepts.” Id. If the claims are directed to a
patent-ineligible concept, then the second step in the analysis is to consider
the elements of the claims “individually and ‘as an ordered combination”’ to
determine whether there are additional elements that “‘transform the nature
of the claim’ into a patent-eligible application.” Id. (quoting Mayo, 132 S.
Ct. at 1298, 1297).
In other words, the second step is to “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.’” Id. (brackets in original) (quoting
Mayo, 132 S. Ct. at 1294). The prohibition against patenting an abstract idea
“cannot be circumvented by attempting to limit the use of the formula to a
particular technological environment or adding insignificant post-solution
activity.” Bilski v. Kappos, 561 U.S. 593, 610-11 (2010) (citation and
internal quotation marks omitted). The Court in Alice noted that “‘[sjimply
appending conventional steps, specified at a high level of generality, ’ was
not ‘enough’ [inMayo] to supply an ‘inventive concept.’” Alice, 134 S. Ct.
at 2357 (quoting Mayo, 132 S. Ct. at 1300, 1297, 1294).
Step one: Are the claims at issue directed to a patent-ineligible concept?
Claim 1 recites six steps: (a) using; (b) maintaining; (b) receiving;
(d) authenticating; (e) verifying; (f) locating; and (g) providing. Each of
these steps involve an access key to patient health information. A plurality
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of servers are used to maintain either an access key or health information.
After receiving a request for an access key, authentication, verification,
locating, and providing of the access key is performed to allow sharing of
health information. As such, claim 1 recites the maintaining, receiving, and
outputting of data.
We agree with the Examiner that the claims are directed to “an
abstract idea because [they are] analogous to the court-defined abstract idea
in Cyberfone” (Ans. 4) (emphasis added). For example, in Cyberfone, the
Court held that “using categories to organize, store, and transmit information
is well-established,” and “the well-known concept of categorical data
storage, i.e., the idea of collecting information in classified form, then
separating and transmitting that information according to its classification, is
an abstract idea that is not patent-eligible.” Cyberfone Systems, LLC v. CNN
Interactive Group, Inc., 558 Fed. App’x 988, 992 (Fed. Cir. 2014).
Here, as in Cyberfone, information (e.g., access keys to patient health
information) is received, stored, and transmitted. Therefore, as in
Cyberfone, we agree that claim 1 is directed to an abstract idea, in the form
of collecting, storing, and transmitting information.
In addition, setting aside the claimed requirement to implement the
method using a “central key server” and “plurality of [local] data servers,”
we agree with the Examiner that the method involves handling information
that could be accomplished manually, with the use of pen and paper, because
the claimed method merely maintains information, receives a request for that
information, authenticating credentials, verifying permission, locating the
information, and providing the information.
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The Federal Circuit has held that if a method can be performed by
human thought alone, or by human activity, it is merely an abstract idea and
is not patent-eligible under § 101. CyberSource Corp. v. Retail Decisions,
Inc., 654 F.3d 1366, 1373 (Fed. Cir. 2011) (“[A] method that can be
performed by human thought alone is merely an abstract idea and is not
patent-eligible under § 101.”).
Because the claims are directed to maintaining, collecting, verifying,
locating, and providing information, an abstract idea, the claims at issue are
directed to patent-ineligible subject matter.
Step two: Is there something else in the claims that ensures that they are
directed to significantly more than a patent-ineligible concept?
The Examiner further finds that “[t]he claims do not include
additional elements that are sufficient to amount to significantly more than
the judicial exception . . . [and] amount to no more than a recitation of
A) generic computer structure . . . [and] B) functions that are well-
understood, routine, and conventional activities” (Final Act. see also
Ans. 5—6). We agree with the Examiner.
“A claim that recites an abstract idea must include ‘additional features'
to ensure ‘that the [claim] is more than a drafting effort designed to
monopolize the [abstract idea].”’ Alice, 134 S. Ct. at 2357 (brackets in
original) (quoting Mayo, 132 S. Ct. at 1297). The prohibition against
patenting an abstract idea “cannot be circumvented by attempting to limit the
use of the formula to a particular technological environment or adding
insignificant post-solution activity.” Bilski, 561 U.S. at 610-11 (citation and
internal quotation marks omitted). The recitations in claim 1 pertaining to
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“server” are analogous to the recitation of a conventional “computer”
discussed in Alice.
Additionally, as recognized by the Federal Circuit in Ultramercial,
Inc. v. Hulu, LLC, 772 F.3d 709, 716 (Fed. Cir. 2014), Bilski’s “machine-or-
transformation” (MoT) test can also provide a “‘useful clue’” in the second
step of the Alice framework. See Bilski, 561 U.S. at 611. Under Bilski’s
MoT test, a claimed process can be considered patent-eligible under § 101 if:
(1) “it is tied to a particular machine or apparatus”; or (2) “it transforms a
particular article into a different state or thing.” In re Bilski, 545 F.3d 943,
954 (Fed. Cir. 2008) (citing Gottschalk, 409 U.S. at 70).
Here, Appellants contend that “the claims are rooted in computer
technology” (App. Br. 12 (citing DDR Holdings)) and “recites the
involvement and utilization of multiple computer systems . . . [which]
constitutes significantly more” (id. at 13; see also id. at 15).
In essence, Appellants merely contend that method claim 1 and its
corresponding system and medium claims 22 and 45 are tied to multiple
computer systems and offer improvements to computer technology, but they
do not argue that the claims are involved in any type of transformation of
any particular article.2 Claim 1 merely recites that each step is performed
“at a central key server” (see claim 1). We agree with the Examiner that
claim 1 simply incorporates a generic component, i.e., a computing device,
into the method to perform the abstract concept of maintaining, collecting,
verifying, locating, and providing information.
2 Alice also confirmed that if a patent’s systems claims are no different in
substance from its method claims, they will rise and fall together. Alice, 134
S. Ct. at 2360. The same was true of the Alice patent’s media claims. Id.
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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 2358—59 (concluding claims
“simply instructing] 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.,
GmbHv. 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” not patent eligible); 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)). Limiting such an
abstract concept of “collecting, storing, and transmitting information” to
generic components, such as a computing system, does not make the abstract
concept patent-eligible under 35 U.S.C. § 101.
In addition, we note Appellants’ claims are not rooted in computer
technology as outlined in DDR Holdings. The present application is directed
to sharing medical data in conformance with various requirements and
policies. See Spec. 2:29—30 (“an Affinity Domain which defines a common
set of policies for data sharing and patient identification”); 8:6 (“important
for HIPAA regulations in the United States”). Unlike the situation in DDR
Holdings, there is no indication here that the claimed server component is
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used other than in its normal, expected, and routine manner for maintaining,
collecting, verifying, locating, and providing information. And “after Alice,
there can remain no doubt: recitation of generic computer limitations does
not make an otherwise ineligible claim patent-eligible.” DDR Holdings, 773
F.3d at 1256.
Because Appellants’ independent claims 1, 22, and 45 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—21 and 23^44 under 35 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.
Rejection under § 103(a)
Issue 2: Did the Examiner err in finding that the cited art collectively
teach or suggest maintaining a patient-controlled registry of access keys and
allowing the patient to define access control to different parts of a healthcare
record, as set forth in claim 1 ?
Appellants contend that Durski “does not describe that each patient
has ‘an account with the central key server through which the patient
maintains the patient’s registry of access keys’” (App. Br. 17), “instead, the
authorization passports as described in Durski are used by the physician in
charge of treating the patient” (id.). Appellants also contends that
Dettinger’s physical access device “is not the same as an access key on a
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central key server that grants access to different parts of a healthcare record”
(id. at 18).
In response, the Examiner explains that Durski “having indexes
containing the Access ID and the Verify ID for each patient[] [is the same]
as maintaining a patient-controlled registry of access keys” (Ans. 9), and
Dettinger teaches “scope restrictions such as limiting access to a ‘dental
account,’ ‘medications account’ or other categories” (id. (emphasis
omitted)). We agree with the Examiner.
For example, Durski is “applicable to distributed medical information
systems ... for locating and accessing patient medical records located on
remote data servers” (117). In Durski, “an Access ID and a Verify ID for
each patient in the system” is created such that “each Access ID and Verify
ID pair is unique for each patient” and “the indexes can be searched by the
Access ID and the Verily ID of each patient” (id.). Further, Durski discloses
that “[w]ith unique patient IDs, each patient’s medical records can be
located across a distributed network” (141).
The Examiner interprets, and we agree, Durski’s use of unique patient
Access ID’s to gain access to medical information as being tantamount to
the claimed “maintaining a patient-controlled registry of access keys.” The
claimed “patient-controlled registry of access keys” is broadly written, i.e.,
merely requiring allowing access to individual patient health information,
which Durski teaches. Appellants fail to persuasively explain how Durski’s
Access IDs and Verily IDs are distinguishable from the aforementioned
claim limitation. We further note that claim 1 does not recite that “the
patient maintains” as argued by Appellants, but, rather, more broadly recites
maintaining a patient-controlled registry of access keys.
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Regarding the claimed the keys allow the patient to define access
control to different parts of a healthcare record (see claim 1), the Examiner
finds, and we agree, that Dettinger teaches “scope restrictions such as
limiting access to a ‘dental account,’ ‘medications account’ or other
categories” (Ans. 9 (emphasis omitted)).
For example, Dettinger discloses a method “for controlling access to
electronic health records . . . [whereby] an individual may be provided with
plurality of disposable access devices” (Dettinger, Abstract). Dettinger
further discloses that “a user may request or activate a check with specific
access rules .... Each check 1400 may include a predefined access scope
. . . or scope restrictions such as limiting access to a ‘dental account,’
‘medications account’ or other categories” (1 114). In other words,
Dettinger discloses allowing the patient to define access control to different
parts of a healthcare record, i.e., to only the dental account, for example.
Although Appellants highlight that Dettinger’s physical access device
“is not the same as an access key on a central key server that grants access to
different parts of a healthcare record” (see App. Br. 18), we find that such an
argument loses sight of the undisputed additional findings made by the
Examiner, e.g., Maresh teaches a central key server and maintaining a
registry of access keys thereon (see Final Act. 5—6). Here, the Examiner is
merely importing Dettinger to teach access control to different parts of a
healthcare record, not the central key server or the registry of access keys.
Appellants’ arguments do not take into account what the collective
teachings of the prior art would have suggested to one of ordinary skill in the
art and is, therefore, ineffective to show error in the Examiner’s prima facie
case of obviousness. The predecessor to our reviewing court explained,
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The test for obviousness is not whether the features of a
secondary reference may be bodily incorporated into the
structure of the primary reference; nor is it that the claimed
invention must be expressly suggested in any one or all of the
references. Rather, the test is what the combined teachings of
the references would have suggested to those of ordinary skill
in the art.
See In re Keller, 642 F.2d 413, 425 (CCPA 1981) (Citations omitted).
This reasoning is applicable here because Appellants’ argument
against Dettinger, separate from Maresh, for example, does not persuasively
challenge 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).
Accordingly, we sustain the Examiner’s rejection of claim 1.
Appellants’ arguments regarding the Examiner’s rejection of independent
claims 22 and 45 rely on the same arguments as for claim 1, and Appellants
do not argue separate patentability for the dependent claims. See App. Br.
15—22. We, therefore, also sustain the Examiner’s rejection of claims 2—45.
DECISION
We affirm the Examiner’s § 101 and § 103(a) rejections Rl—R3.
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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