Ex Parte LORSCH

Patent Trial and Appeal Board

Mar 8, 2016

11690996 (P.T.A.B. Mar. 8, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
111690,996 03/26/2007
133690 7590 03/10/2016
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-P020 4929
EXAMINER
RAPILLO, KRISTINE K
ART UNIT PAPER NUMBER
3626
NOTIFICATION DATE DELIVERY MODE
03/10/2016 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
Appeal2013-009942 1
Application 11/690,9962
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
Non-Final decision rejecting claims 1-25. We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM.
1 Throughout this opinion, we refer to the Appeal Brief ("Appeal Br.," filed
May 9, 2013), the Reply Brief ("Reply Br.," filed Aug. 6, 2013), the
Examiner's Answer ("Ans.," mailed June 7, 2013), the Non-Final Office
Action ("Non-Final Act.," mailed Jan. 30, 2013), and the Specification
("Spec.," filed Mar. 26, 2007).
2 According to the Appellant, the real party in interest is
MyMedicalRecords, Inc. Appeal Br. 1.
Appeal2013-009942
Application 11/690,996
STATEMENT OF THE CASE
The Appellant's invention is directed 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, 11, 15, 18, 24, and 25 are the independent claims on appeal.
Claim 1 is exemplary of the subject matter on appeal and is reproduced
below:
1. A method for maintaining personal health records of a
consumer in manner that allows the personal health records to
be accessed in an emergency while still allowing the consumer
to control privacy, comprising [paragraph bracketing added for
sake of reference]:
[a] providing a web site allowing the consumer to store a
plurality of personal health records associated with the
consumer in a single account and accessible to the consumer
through use of a user id and a first password associated with the
consumer;
[b] providing the consumer with a document to provide
to the health care provider exercising legal rights of the
consumer for access to personal health records of the consumer,
the document requesting the health care provider to send the
personal health records to a destination address;
[ c] receiving the personal health records at the
destination address;
[ d] placing the personal health records on the web site;
[ e] receiving instructions from the consumer to allow the
consumer to select a subset of the plurality of personal health
records;
[ f] providing the consumer with an emergency password,
wherein the emergency password only accesses the subset of
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the plurality of personal health records when used with the user
id to login to the account;
[g] making available the subset of the plurality of
personal health records on the web site through use of the
emergency password in the event of an emergency.
Appeal Br. 46, Claims App.
REJECTIONS
Claims 1-14, 18-20, 22, and 25 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Fotsch (US 2005/0165627 Al, pub.
July 28, 2005), Dick (US 2002/0111833 Al, pub. Aug. 15, 2002) and
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"). Non-Final Act. 3.
Claims 15-17 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Fotsch, Gropper (US 2006/0229911 Al, pub. Oct. 12,
2006), and Blau, Richard H., "One Physician's Journey into Automation,"
Health Management Technology, Atlanta, 25, 6, 16 (June 2004) (hereafter
referred to as "Blau"). Non-Final Act. 10.
Claims 21and23 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Fotsch, Dick, MedicAlert, and Gropper. Non-Final
Act. 13.
Claim 24 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Fotsch and MedicAlert. Non-Final Act. 14.
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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
The Appellant contends the Examiner's rejections are in error because
the Examiner fails to provide a prima face case for obviousness. See Appeal
Br. 13; see also Reply Br. 1. The Appellant argues the Examiner provides
"mere conclusory statements rather than an articulated clear and explicit
reasoning [sic] for the rejection" (Appeal Br. 13) and "the references relied
upon by the Examiner consistently fall far short of what the Examiner states
they stand for" (id. at 14). We disagree with the Appellant's contention as
discussed below.
Claim 1
We find unpersuasive the Appellant's arguments that Fotsch does not
disclose limitation [a] because F otsch "fail[ s] to teach a single account
managed and controlled by a consumer," but rather teaches away from the
Appellant's claimed invention by requiring multiple accounts managed by
any number of physicians rather than a single account maintained by the
customer. Appeal Br. 17 (citing Fotsch i-fi-136, 37, 40, and 81).
The Examiner finds Fotsch discloses a patient getting access to a
website using a user ID and password. Non-Final Act. 3 (citing Fotsch i-fi-1
40, 45, and 108). Fotsch discloses accessing a patient's personal health
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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records through a single, central web site via a user ID and password.
Fotsch i-fi-140, 45. We agree with the Examiner's finding that Fotsch's
accessing a patient's personal health records through a single, central web
site via a user ID and password meets imitation [a] of a single account
accessible to a consumer through a user ID and consumer password. See
Non-Final Act. 3 (citing Fotsch i-fi-140, 45, and 108). We disagree with the
Appellant's contention that Fotsch teaches away from the invention by
having multiple accounts. See Appeal Br. 17. The alternative
solution/embodiment of Fotsch of having separate websites instead of a
single website (Fotsch, i-fi-137, 40, and 45), does not criticize, discredit or
otherwise discourage a single account as claimed, and thus does not
constitute any teaching away. See In re Fulton, 391 F.3d. 1195, 1201 (Fed.
Cir. 2004). We note that claim 1 does not require that the account can only
be "managed and controlled by [the customer]" (Appeal Br. 17), but rather
that a web site is provided allowing the consumer to store a plurality of
records in a single account accessible with a user ID and password. Appeal
Br. 46, Claims App. Further, Fotsch dos not disclose an account "managed
by any number of physicians" (Appeal Br. 17 (citation omitted)), but rather
that the physicians can have access to the health record as provided by the
customer. Fotsch, i-fi-136, 37, 77, 78, and 81. Moreover, Fotsch discloses the
account being managed by the customer who may grant access to his or her
record to a caregiver or other individual, who can then access the single
account of the customer. Fotsch i-fi-177, 78, and 81.
We further find unpersuasive the Appellant's arguments that Fotsch
"fail[ s] to teach receiving instructions from the consumer to select a subset
of the plurality of personal health records" as recited in limitation [ e]
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because F otsch does not use an emergency password as discussed above,
and "actually teach[ es] away from the [] claimed second password that only
accesses the subset of personal health records designated by the consumer
for emergencies." Appeal Br. 18-19. We note that the claim limitation does
not recite "designated by the consumer for emergencies." Fotsch discloses
that the customer can select that access is only granted to a portion of the
records. See Fotsch i-fi-176, 79, and 80. Thus, the Examiner's finding that
Fotsch discloses "receiving instructions from the consumer to allow the
consumer to select a subset of the plurality of personal health records" as
recited by the claim, is reasonable and supported by a preponderance of the
evidence.
The Appellant's arguments that F otsch' s allowance of "access
limitations to be overridden in case of emergency" is not the same as
utilizing an "emergency password" (Appeal Br. 17-18), and that Fotsch does
not disclose "that a user selects the records which are available when
emergency access is utilized" and "utilizing an 'emergency password'
associated with a subset of health records" (id. at 18) appear to be directed to
limitations [ fJ and [g]. These arguments are not persuasive because the
Appellant argues against the references individually when the Examiner
relies on the combination of the references to disclose these limitations. The
test for obviousness is not what any one reference would have suggested, but
rather 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, 426
(CCP A 1981 ). "[O]ne cannot show non-obviousness by attacking references
individually where, as here, the rejections are based on combinations of the
references." Id. (citation omitted).
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The Examiner finds that Fotsch discloses that a patient may choose to
grant or deny access to the individual's health record or portions of the
record and "the portion the patient has elected to make available could
reasonably be emergency information." Ans. 22. The Examiner further
finds that Fotsch discloses making available the subset of the plurality of
personal health records on the web site through use of an emergency
password of the emergency personnel of in the event of an emergency.
Ans. 22; see also Non-Final Act. 3. The Examiner finds Fotsch does not
disclose "providing the consumer with an emergency password, wherein the
emergency password only accesses the subset of the plurality of personal
health records when used with the user id to logon to the account." Non-
Final Act. 3. The Examiner finds MedicAlert discloses this limitation by
disclosing a HealthKey that, when plugged into an unknown computer of an
ER or ambulance, comprises 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 Non-Final
Act. 4; see also Ans. 4, and MedicAlert i-fi-f 12, 15.
The Appellant's argument that the deficiencies of F otsch are not
overcome by MedicAlert because MedicAlert is not directed to a software
system (Appeal Br. 20) is not persuasive because MedicAlert is directed to
an electronic-based system, 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
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combine their specific structures."). Further, claim 1 does not require that
the password be software-based, as opposed to the hardware-based password
of MedicAlert.
The Appellant's argument that MedicAlert does not mention an
emergency password or making available a subset of the records (Appeal Br.
20-21) is not persuasive. As discussed above, the Examiner interprets the
HealthKey as the password used with the user ID that 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.
We also find unpersuasive the Appellant's argument that the
deficiencies of Fotsch are not overcome by Dick, because Dick teaches away
from the claimed invention of "allowing a consumer to control privacy by
limiting requests for personal health records" by disclosing that a request for
medical information "may originate with any party desiring the medical
information." Appeal Br. 20. The invention is not directed to nor is it
claimed that the consumer control privacy by limiting requests for records,
but rather that the consumer controls privacy by limiting access to the
records. Claim 1, Spec. 7, 11. 14-18. Further, assuming arguendo that Dick
discloses a request originating with any party desiring medical information
(id.), Dick does not criticize, discourage or disparage limiting access to the
records, but rather recognizes the need for patient record privacy by
requiring a release form. See Dick i-fi-f 11, 19, and 24.
We find unpersuasive the Appellant's argument that the Examiner
makes only conclusory statements that do not provide articulated reasoning
with rational underpinning. Appeal Br. 21-22. As discussed above, we
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agree with the Examiner's findings that Fotsch, Dick, and MedicAlert
disclose the limitations. The Examiner supports the conclusion of
obviousness with articulated reasoning with rational underpinning in
determining that "the claimed invention is merely a combination of old
elements, and in the combination each element merely would have
performed the same function as it did separately, and one of ordinary skill in
the art would have recognized that the results of the combination were
predictable" (Non-Final Act. 4). 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 at 418. The Appellant's contention that the
Examiner does not consider the claim as a whole (Appeal Br. 22) is
unsupported by evidence. The Appellant's contention that the references do
not teach the significant advantage of "allowing an individual to maintain
complete medical records without requiring different health care providers to
maintain electronic health records instead of paper-based records, without
requiring different health care providers to log-on to a specific system, and
without requiring the health care provider to do anything other than their
legal obligations under ... [HIP AA]" (Appeal Br. 22-23) is also
unpersuasive because it is not supported by the evidence. The combination
of F otsch, Dick, and MedicAlert provides such a system that has the benefit
of allowing individuals to maintain privacy and control access to electronic
health records in an emergency situation and without requiring providers to
log on to a specific system in an emergency. See Ans. 23.
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Based on the foregoing reasons, the Examiner's rejection of claim 1 is
sustained.
Claims 2-10
The Appellant argues the rejection of dependent claims 2-10 are in
error based on their dependence from claim 1. Appeal Br. 23. Thus, the
rejection of claims 2-10 are sustained for the same reasons the rejection of
claim 1 is sustained.
The Appellant further argues the rejection of dependent claim 3 is in
error because the wallet card of F otsch does not disclose an emergency
password and web site identifier. Appeal Br. 24. Conversely, the Examiner
finds that F otsch discloses a wallet card with emergency information
including a password associated with the consumer. Non-Final Act. 5. The
Examiner determines that although "Fotsch does not explicitly disclose a
website identifier located on the wallet card, however, it would be obvious
to include this feature on the card with the motivation of secure electronic
medical records by providing control of accessibility of the records to the
patient." Id.
Fotsch discloses a wallet card "which contains information such as
blood type, allergies, and emergency contact information for the patient, as
well as any other information which the patient has selected to be contained
in the wallet card." F otsch i-f 81. Further, "the user ID and password may be
provided by an emergency contact identified in the health record or 'wallet
card.'" Id. i-f 82. Thus, we agree with the Examiner that Fotsch renders
obvious a wallet card comprising emergency information associated with the
consumer including an emergency password and that can also include the
website identifier, and sustain the Examiner's rejection of claim 3.
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The Appellant's argument that the rejection of dependent claim 10 is
in error because Fotsch does not disclose "using the claimed emergency
password, let alone disclose the functions that can and cannot be performed
using it" (Appeal Br. 24) is not persuasive because it is an argument against
the references individually when the Examiner relies on the combination of
the references to disclose the limitation. The Examiner finds the
combination Fotsch, Dick, and MedicAlert teaches the method of claim 10,
which includes use of the emergency password to make available a subset of
information. The Examiner further finds "F otsch teaches a method wherein
the emergency password provides access for reading but not modifying,
adding, deleting, or re-organizing personal health records." Non-Final
Act. 6 (citing Fotsch, Fig. 9, i-f 17). Fotsch discloses at paragraph 17:
Access rights that may be granted (or denied) via the health
record permission grant request may include read, write (e.g.,
including delete), and/or forwarding privileges. Even where a
patient or caregiver has not granted access rights to a particular
healthcare provider (or has specifically denied access rights to
the healthcare provider), this state may be overridden in
emergency situations, in accordance with one embodiment.
Fotsch further discloses that the patient may choose to grant or deny
permissions to providers to access and use the record, including reading,
writing, deleting and forwarding privileges. Id. i-f 90, Fig. 9 ("906"). Thus,
we find the Examiner's finding reasonable and supported by a
preponderance of the evidence, and sustain the Examiner's rejection of
claim 10.
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Claims 11-14
The Appellant argues the rejection of independent claim 11 and
dependent claims 12 and 13 is in error for the same or similar reasons as the
rejection of claim 1 is in error. See Appeal Br. 29. Thus, the Examiner's
rejection of claims 11-13 is sustained for the same reasons the rejection of
claim 1 is sustained.
The Appellant's arguments that the rejection of dependent claim 14 is
in error because the rejection of claim 11 is in error (Appeal Br. 25), and
because Fotsch does not disclose a wallet card comprising emergency
password and a web site identifier (id. at 26), are not persuasive for the same
reasons discussed above with reference to claims 1 and 3. Thus, the
Examiner's rejection of claim 14 is sustained.
Claims 18-25
The Appellant argues the rejections of independent claims 18, 24, and
25 are in error for the same or similar reasons as the rejection of claim 1 is in
error (see Appeal Br. 27-31, 32-35, and 42--45), and the rejections of
dependent claims 19-23 are in error based on their dependency from
claim 18 (id. at 31, 41 ). Thus, the rejections of claims 18-25 are sustained
for the same reasons the rejection of claim 1 is sustained.
Claims 15-17
The Appellant's argument that the rejection of independent claim 15
is in error for the same or similar reasons as the rejection of claim 1 is in
error (see Appeal Br. 35-31) is unpersuasive for the reasons discussed above
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with reference to the rejection of claim 1. The Appellant's further argument
that Blau does not disclose the provider faxing records to a specified number
after every visit by the consumer to a provider (Appeal Br. 40) is not
persuasive. The Examiner relies on Blau for disclosing "the document
requesting the health care provider to fax the health records to the phone
number after every visit by the consumer to the health care provider." Non-
Final Act. 12 (citation omitted). Blau discloses that "Office notes are
completed at the time of the patient visit" and can be faxed before the patient
leaves. Blau i-f 15. Thus, we find the Examiner's finding reasonable and
supported by a preponderance of the evidence. The Appellant's argument
that Blau teaches away from the invention "of allowing a consumer to
control privacy, by instead granting a physician the ability to view a patient's
entire medical history at home" (Appeal Br. 40 (citation omitted)) is not
persuasive, because Blau does not criticize, discredit or otherwise discourage
having consumers control access to records by physicians, but rather
provides that physicians, when given access rights, can access the record at
various computers.
Thus, for the above reasons, the Examiner's rejection of claim 15 is
sustained. The Appellant argues the rejections of dependent claims 16 and
17 are in error based on their dependency from claim 15 (Appeal Br. 41 ),
and are thus sustained for the same reasons.
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DECISION
The Examiner's rejections of claims 1-25 under 35 U.S.C. § 103(a)
are affirmed.
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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