Ex Parte LorschDownload PDFPatent Trial and Appeal BoardMar 18, 201612204474 (P.T.A.B. Mar. 18, 2016) Copy Citation 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 USPTO@dockettrak.com 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. Appeal2013-010061 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; 2 Appeal2013-010061 Application 12/204,474 [ 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. 3 Appeal2013-010061 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). 4 Appeal2013-010061 Application 12/204,474 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 5 Appeal2013-010061 Application 12/204,474 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." 6 Appeal2013-010061 Application 12/204,474 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 7 Appeal2013-010061 Application 12/204,474 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 8 Appeal2013-010061 Application 12/204,474 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. 9 Appeal2013-010061 Application 12/204,474 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 10 Appeal2013-010061 Application 12/204,474 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. 11 Appeal2013-010061 Application 12/204,474 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 12 Copy with citationCopy as parenthetical citation