Ex Parte Lorsch

Patent Trial and Appeal Board

Mar 18, 2016

12204474 (P.T.A.B. Mar. 18, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/204,474 09/04/2008
133690 7590 03/22/2016
Goodhue, Coleman & Owens, P.C.
650 S. Prairie View Dr.
Suite 125, PMB #209
West Des Moines, IA 50266
FIRST NAMED INVENTOR
ROBERT H. LORSCH
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.
MMR-P021 5054
EXAMINER
RAPILLO, KRISTINE K
ART UNIT PAPER NUMBER
3626
NOTIFICATION DATE DELIVERY MODE
03/22/2016 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@goodhue.com
eofficeaction@appcoll.com
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PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ROBERT H. LORSCH
Appeal 2013-010061 1
Application 12/204,4742
Technology Center 3600
Before MURRIEL E. CRAWFORD, NINA L. MEDLOCK, and
AMEE A. SHAH, Administrative Patent Judges.
SHAH, Administrative Patent Judge.
DECISION ON APPEAL
The Appellant appeals under 35 U.S.C. § 134(a) from the Examiner's
final decision rejecting claims 1-38. We have jurisdiction under 35 U.S.C.
§ 6(b ).
We AFFIRM-IN-PART.
1 Throughout this opinion, we refer to the Appeal Brief ("Appeal Br.," filed
May 22, 2013), the Reply Brief ("Reply Br.," filed Aug. 6, 2013), the
Examiner's Answer ("Ans.," mailed June 14, 2013), the Final Action ("Final
Act.," mailed Mar. 19, 2013), and the Specification ("Spec.," filed Sept. 4,
2008).
2 According to the Appellant, the real party in interest is
MyMedicalRecords, Inc. Appeal Br. 1.
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Application 12/204,474
STATEMENT OF THE CASE
The Appellant's invention "relates to the provision of online medical
records. More particularly, the present invention relates to providing a
means for consumers to request their medical records from health care
providers, store the medical records, provide for private communications
between the consumers and their health care providers, and allow consumers
to selectively provide emergency access to their medical records." Spec. 1,
11. 12-15.
Claims 1, 12, 16, 21, 26, 30, 36, and 37 are the independent claims on
appeal. Claim 1 is exemplary of the subject matter on appeal and is
reproduced below (paragraph bracketing added for reference):
1. A method for maintaining personal health records of a
user in manner that allows the personal health records to be
accessed in an emergency while still allowing the user to
control privacy, comprising:
[a] providing a web site stored on a web server, the web
site allov,ring the user to store a plurality of personal health
records associated with the user in a single user account, the
user account accessible through use of a user id and a first
password associated with the user;
[b] providing the user with a private phone number
associated with the user account for receipt of voicemails and
faxes containing personal health records, wherein the
voicemails and faxes containing the personal health records are
electronically stored and made available to the user on the
website through the user account;
[ c] receiving instructions from the user specifying a
subset of the plurality of personal health records for
emergencies, the subset of the plurality of personal health
records accessible to the user through the user account by
logging into the user account on a screen display on the web
site using the first password;
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[ d] making available only the subset of the plurality of
personal health records on the web site to emergency personnel
through logging into the user account on the screen display on
the web site through a separate element indicative of an
emergency logon using an emergency password.
Appeal Br. 55, Claims App.
REJECTIONS
Claims 1--4, 12-15, and 21-24 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Hacker (US 6,988,075 Bl, iss. Jan. 17,
2006), MedicAlert, Redefining the Patient Record Paradigm, MedicAlert
Foundation; CapMed, A division of Bio-Imaging Technologies, Inc.
(Jan. 2005) (White Paper addressing Timely Access to Patient Records)
(hereafter referred to as "MedicAlert"), and Hamilton (US 6,981,023 B 1, iss.
Dec. 27, 2005). Final Act. 2.
Claims 5-7, 9, and 16-18 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Hacker, MedicAlert, Hamilton, and Segal (US
2001/0041991 Al, pub. Nov. 15, 2001). Final Act. 8.
Claims 11, 25, and 30-35 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Hacker, MedicAlert, Hamilton, and Maus
(US 2001/0044732 Al, pub. Nov. 22, 2001). Final Act. 15.
Claim 10 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Hacker, MedicAlert, Hamilton, and Gruber
(US 2004/0172307 Al, pub. Sept. 2, 2004). Final Act. 23.
Claims 8, 19, and 20 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Hacker, MedicAlert, Hamilton, Segal, and Maus. Final
Act. 24.
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Application 12/204,474
Claim 26 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Hacker and MedicAlert. Final Act. 26.
Claims 27-29 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Hacker, MedicAlert, and Maus. Final Act. 28.
Claims 36-38 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Hacker, MedicAlert, and Segal. Final Act. 30.
FINDINGS OF FACT
We have determined that the findings of fact in the Analysis section
below are supported at least by a preponderance of the evidence. 3
ANALYSIS
Claims 1--4, 12-15, and 21-24
The Appellant contends the Examiner's rejection of claims 1--4, 12-
15, and 21-24 is in error because the Examiner makes only conclusory
statements that do not provide articulated reasoning with rational
underpinning. Appeal Br. 24--25. We disagree with this contention. As
discussed below, we agree with the Examiner's findings that Hacker,
MedicAlert, and Hamilton disclose the limitations of the claims. The
Examiner supports the conclusion of obviousness with articulated reasoning
with rational underpinning in determining, for the independent claims, that
"the claimed invention is merely a combination of old elements, and in the
combination each element merely would have performed the same function
3 See Ethicon, Inc. v. Quigg, 849 F.2d 1422, 1427 (Fed. Cir. 1988)
(explaining the general evidentiary standard for proceedings before the
Patent Office).
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as it did separately, and one of ordinary skill in the art would have
recognized that the results of the combination were predictable." Final Act.
4, 5. See KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398, 415--416 (2007).
Thus, we find the Examiner has established a prima facie case of
obviousness as the Examiner has provided articulated reasoning with
rational underpinning to support a legal conclusion of obviousness of the
claim as a whole. See KSR, 550 U.S. at 418.
The Appellant contends the Examiner's rejection of claim 1 is in error
because the combination of Hacker and MedicAlert does not disclose the
"claimed second password that only accesses the subset of personal health
records designated by the user for emergencies." Appeal Br. 26. We
disagree with this contention for the reasons below.
The Examiner finds Hacker discloses a patient controlled system and
method that stores medical records electronically for patient-controlled
access by a patient supplied identifier and that displays on a computer screen
the record accessed via an ID/password. See Ans. 31-32; see also Final
Act. 2-3. The Examiner finds that "it is implied that a [record's] file title or
label of emergency information may be listed as well." Id. at 32. The
Examiner finds MedicAlert discloses "a secure and portable health record
using USB-flash disc technology" whereby access to a patient's medical
information can be had via a HealthKey coupled with the online network.
Id. The HealthKey, when plugged into an unknown computer of an ER or
ambulance, comprises an element indicative of an emergency password used
with the user ID that provides access only to critical medical information
previously authorized by the patient, i.e., the subset of health records. See
id.; see also Final Act. 4, and MedicAlert i-fi-f 12, 15. The Examiner further
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finds that Hamilton discloses a special purpose private phone number and
the ability to view and listen to voicemails and faxes on a computer. Id.
The Appellant's argument that Hacker teaches away from the
limitation because Hacker provides emergency personnel with an emergency
override that accesses the patient's entire record (id., citing Hacker col. 7, 11.
66----67) is not persuasive. The Appellant considers only a portion of the
reference without considering the reference as a whole. See W.L. Gore &
Assoc., Inc. v. Garlock, Inc., 721F.2d1540, 1550 (Fed. Cir. 1983) (finding
the District Court erred in not considering the references in less than their
entireties). The Appellant cites only Hacker, column 7, lines 66----67 that
discloses the fragment "[t]he patient can also specify an emergency override
of passphrase protection, and notification to the ... " However, the more
comprehensive passage discloses:
Particularly sensitive patient information can be
passphrase protected so that the medical provider must get
permission from the patient to gain access to it. The patient can
also specify an emergency override of passphrase protection,
and notification to the patient can be provided as to what
information was released to emergency medical personnel,
including time, location, pages accessed, etc.
When patients have allowed access, medical providers
140 can view appropriate portions of the patients medical
record, and add information to the patient's medical record
where appropriate. By limiting access to needed information,
the patient's privacy can be increased.
Hacker, col. 7, 1. 63 through col. 8, 1. 8. Hacker does not criticize, discredit
or otherwise discourage allowing access to only a subset of emergency
information, but in fact considers the patient's privacy in allowing access to
only "appropriate portions."
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The Appellant's argument that MedicAlert does not teach making
available only the subset of records as claimed because MedicAlert is not
directed to a software system but to a call center (Appeal Br. 27) is not
persuasive because MedicAlert is directed to an electronic-based system
with a website, and because the argument is based on bodily incorporation,
which is not the test for obviousness. See In re Sneed, 710 F .2d 1544, 1550
(Fed. Cir. 1983) ("[I]t is not necessary that the inventions of the references
be physically combinable to render obvious the invention under review.")
(citation omitted); In re Nievelt, 482 F.2d 965 (CCPA 1973) ("Combining
the teachings of references does not involve an ability to combine their
specific structures."). Further, claim 1 does not require that the element
indicative of an emergency password be software-based, as opposed to the
hardware-based element indicative of an emergency password of
MedicAlert.
The Appellant's argument that Medic Alert never mentions
"emergency password" or logging into the user account as recited in
limitation [d] (Appeal Br. 27) is not persuasive. The test of whether a
reference teaches a claim limitation is not whether the exact language is
present. Instead, the relevant inquiry is whether the limitation is taught or
suggested by the reference when the claim is given its broadest reasonable
interpretation in light of the Specification. Cf In re Bond, 910 F .2d 831,
832-33 (Fed. Cir. 1990) (interpretation of references "is not an 'ipsissimis
verbis' test," citingAkzoN.V. v. U.S. Int'! Trade Comm'n, 808F.2d1471,
1479 & n.11 (Fed. Cir. 1986)); Standard Havens Prods., Inc. v. Gencor
Indus., Inc., 953 F.2d 1360, 1369 (Fed. Cir. 1991) ("[A] ... reference ...
need not duplicate word for word what is in the claims."). As discussed
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above, the Examiner interprets the HealthKey as the element indicative of an
emergency login using an emergency password used in that it logs into the
online account and accesses only the subset of the health records authorized
by the patient. The Appellant provides no evidence or technical reasoning as
to why the Examiner's findings and interpretations are unreasonable.
The Appellant presents evidence of the secondary indicia of
nonobviousness of "a method for maintaining personal health records of a
user in a manner that allows only a subset of the [records] to be accessed in
an emergency through a separate element indicative of an emergency login
using an emergency password, thus allowing the user to control privacy"
based on the "recognized value" by others in the industry as described by the
inventor in the Declaration of Robert H. Lorsch ("Declaration"). Appeal Br.
28, 70 (Evidence App.). The Examiner interpreted the Declaration as an
attempt to disqualify the reference MedicAlert based on a relationship
between MedicAlert and MMR, and found it unpersuasive. Ans. 30.
We have fully considered the Declaration provided in support of
secondary considerations and, weighing all evidence of obviousness against
all evidence of non-obviousness, we find the secondary considerations
unpersuasive to rebut the prima facie obviousness determination.
We consider anew the issue of obviousness under 35 U.S.C. § 103,
carefully evaluating and weighing both the evidence relied upon in finding
obviousness and the evidence provided by the Appellant. See In re Piasecki,
745 F.2d 1468, 1472 (Fed. Cir. 1984); Stratojlex, Inc. v. Aeroquip Corp.,
713 F.2d 1530, 1538 (Fed. Cir. 1983). To be given substantial weight in the
determination of obviousness or nonobviousness, evidence of secondary
considerations must be relevant to the subject matter as claimed, and
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therefore we must determine whether there is a nexus between the merits of
the claimed invention and the evidence of secondary considerations.
Ashland Oil, Inc. v. Delta Resins & Refractories, Inc., 776 F.2d 281, 305
n.42 (Fed. Cir. 1985), cert. denied, 475 U.S. 1017 (1986). Here, inventor
Mr. Lorsch' s Declaration merely asserts, in pertinent part, that: 1) "I
understand that one of the references relied upon by the Examiner ... is
MedicAlert;" 2) "MedicAlert ... first entered in to International Value-
Added Reseller and License Agreement with MMR [the real party in
interest] in 2006;" and 3) "That agreement specifically identifies the
provisional patent application to which the present application claims
priority." Declaration i-fi-1 4, 5. The Declaration does not provide any details
regarding the present claims and the Agreement in order to establish a nexus
with the claimed invention. Further, the Declaration does not establish that
the "recognized value" of the method as claimed was the reason why the
parties entered into the Agreement. Consequently, we cannot conclude that
this evidence is commensurate with the scope of the claim. Therefore, we
do not find the Appellant's evidence of secondary considerations outweighs
the prima facie showing of obviousness.
Based on the foregoing reasons, the Examiner's rejection of claim 1 is
sustained. The Appellant argues the rejection of dependent claims 2--4 is in
error based on their dependence from claim 1 (Appeal Br. 28), and the
rejection is thus sustained for the same reasons the rejection of claim 1 is
sustained. The Appellant also argues the rejection of claims 12-15 and 21-
24 is in error for the same or similar reasons as the rejection of claim 1 is in
error, and the rejection is thus sustained for the same reasons the rejection of
claim 1 is sustained. See Appeal Br. 29-31.
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Claims 5-7 and 9
The Appellant's arguments that the rejection of dependent claims 5-7
and 9 is in error for the same or similar reasons as the rejection of claim 1 is
in error (see Appeal Br. 32) are unpersuasive for the reasons discussed above
with reference to the rejection of claim 1. The Appellant further argues that
Segal does not disclose "collecting contact information associated with an
individual or organization accessing the subset of the plurality of personal
health records through use of the emergency password," as recited in claim
5, because Segal discloses collecting contact information of the patient. Id.
Conversely, the Examiner finds that Segal discloses collecting, storing,
retrieving, and transmitting medical data on behalf of the patient subscriber,
the patient granting access to physicians, users entering into an agreement
when registering to access or use the system, and providing access to users
based on access types set by the patient. See Ans. 34; see also Final Act. 33.
Segal discloses a patient having the option of giving physicians access
to view and update a subset of files in the patient's health record (Segal
i-fi-125, 106), the records including emergency records (id. i1 99). Figures 5c,
5o, 5p, 5s, and 5u of Segal disclose displaying information regarding the
physician that diagnosed a medical problem or entered a report, including
the physician's town and state. See Segal i-f 112 (cited by the Examiner).
During examination, "claims ... are to be given their broadest
reasonable interpretation consistent with the specification, and ... claim
language 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, 1364 (Fed. Cir. 2004) (citations omitted). Here, the
Specification provides no definition for what comprises "contact
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information." Thus, we find that Segal discloses collecting contact
information associated with an individual accessing a subset of records
through use of a password by collecting information of the diagnosing or
reporting physician's name, town, and state, and disagree that Segal only
teaches collecting patient information (Appeal Br. 33). Further, we note that
it is the combination of references that teaches the limitations of claim 5.
Thus, we sustain the Examiner's rejection of claim 5, and claims 6, 7,
and 9, which depend therefrom and are not argued separately.
Claims 16--18 and 36
The Appellant's arguments that the Examiner's rejection of claims
16-18is in error for the same or similar reasons as the rejection of claim 1 is
in error (see Appeal Br. 34--36) are unpersuasive for the reasons discussed
above with reference to the rejection of claim 1. The Appellant's further
argument that Segal, upon which the Examiner relies, does not teach the
recited limitation of "providing the user with a document to provide to the
health care provider exercising legal rights of the user for access to the
health records, the document requesting the health care provider to send the
health records to the phone number" as required in claim 16 (id. at 36-37), is
persuasive.
Segal discloses that a patient completes a registration form, i.e.,
document, and provides it to the physician. Segal i-f 103. The registration
form requests information including a telephone number. Id. i-f 102.
However, the Examiner does not explain how the registration document of
Segal requests the health care provider to send the records to the phone
number, as claimed. See Final Act. 14.
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Thus, we do not sustain the Examiner's rejection of claims 16-18.
Claims 36 recites a limitation substantially similar to the limitation of
claim 16 regarding providing the user with a document (see Appeal Br. 53,
65), and thus we also do not sustain the Examiner's rejection of claim 36 for
the same reason we do not sustain the rejection of claim 16.
Claims 8-11, 19, 20, 25-35, 37, and 38
The Appellant's arguments that the rejections of claims 8-11, 19, 20,
25-35, 37, and 38 are in error for the same or similar reasons as the rejection
of claim 1 is in error (see Appeal Br. 38--48, 51-53) are unpersuasive for the
reasons discussed above with reference to the rejection of claim 1, and are
thus sustained.
DECISION
The Examiner's rejections of claims 1-15, 19-35, 37, and 38 under
35 U.S.C. § 103(a) are AFFIRMED.
The Examiner's rejections of claims 16-18 and 36 under 35 U.S.C.
§ 103(a) are REVERSED.
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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