Ex Parte Lorsch

Patent Trial and Appeal Board

Jan 24, 2018

11690996 (P.T.A.B. Jan. 24, 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.
11/690,996 03/26/2007 ROBERT H. LORSCH MMR - P020 4929
133690 7590 01/26/2018
Goodhue, Coleman & Owens, P.C.
12951 University Ave
Suite 201
Clive, IA 50325
EXAMINER
RAPILLO, KRISTINE K
ART UNIT PAPER NUMBER
3626
NOTIFICATION DATE DELIVERY MODE
01/26/2018 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):
docketing @ goodhue. com
eofficeaction @ appcoll.com
US PTO @ 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 2017-0108971
Application 11/690,996
Technology Center 3600
Before MURRIEL E. CRAWFORD, NINA L. MEDLOCK, and
AMEE A. SHAH, Administrative Patent Judges.
SHAH, Administrative Patent Judge.
DECISION ON APPEAL2
The Appellant3 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 We note previous appeal 2013-009942, for which a Decision affirming the
Examiner was mailed March 10, 2016. We also note related appeals 2017-
010566 (application 11/512,745) and 2018-000204 (application 12/204,474).
2 Throughout this opinion, we refer to the Appellant’s Appeal Brief
(“Appeal Br.,” filed May 11, 2017), Reply Brief (“Reply Br.,” filed Aug. 21,
2017), and Specification (“Spec.,” filed Mar. 26, 2007), and to the
Examiner’s Answer (“Ans.,” mailed June 20, 2017), and Final Office Action
(“Final Act.,” mailed Oct. 14, 2016).
3 According to the Appellant, the real party in interest is
MyMedicalRecords, Inc. Appeal Br. 6.
Appeal 2017-010897
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 (with bracketing added for sake of reference).
1. A method for maintaining personal health records of a
consumer in a manner that allows the personal health records to
be accessed in an emergency while still allowing the consumer
to control privacy, comprising:
[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;
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Application 11/690,996
[f] 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 login to the account and wherein the emergency password
is designated by the consumer for emergencies; and
[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
[(h)] wherein the account and the personal health records
are only managed and controlled by the consumer through the
account.
Appeal Br. 73 (Claims App.).
REJECTIONS
Claims 1—25 stand rejected under 35 U.S.C. § 101 as directed to non-
statutory subject matter. Final Act. 2.
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”). Final Act. 4.
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”). Final Act. 12.
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Claims 21 and 23 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Fotsch, Dick, Medic Alert, and Gropper. Final Act. 15.
Claim 24 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Fotsch and Medic Alert. Final Act. 17.
ANALYSIS
35 U.S.C. § 101 —Non-statutory Subject Matter
Under 35 U.S.C. § 101, a patent may be obtained for “any new and
useful process, machine, manufacture, or composition of matter, or any new
and useful improvement thereof.” The Supreme Court has “long 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) (quoting Assn for
Molecular Pathology v. Myriad Genetics, Inc., 133 S. Ct. 2107, 2116
(2013)).
The Supreme Court in Alice reiterated the two-step framework, set
forth previously in Mayo Collaborative Services v. Prometheus
Laboratories, Inc., 566 U.S. 66, 78—79 (2012), “for distinguishing patents
that claim laws of nature, natural phenomena, and abstract ideas from those
that claim patent-eligible applications of those concepts.” Alice, 134 S. Ct.
at 2355. The first step in that analysis is to “determine whether the claims at
issue are directed to one of those patent-ineligible concepts.” Id. (citing
Mayo, 566 U.S. at 79) (emphasis added). If so, the second step is to
consider the elements of the claims “individually and ‘as an ordered
combination”’ to determine whether the additional elements “‘transform the
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nature of the claim’ into a patent-eligible application.” Id. (quoting Mayo,
566 U.S. at 79, 78).
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. (alteration in original) (quoting
Mayo, 566 U.S. at 72—73). The Court acknowledged in Mayo, that “all
inventions at some level embody, use, reflect, rest upon, or apply laws of
nature, natural phenomena, or abstract ideas.” Mayo, 566 U.S. at 71. We,
therefore, look to whether the claims focus on a specific means or method
that improves the relevant technology or are instead directed to a result or
effect that itself is the abstract idea, and merely invoke generic processes and
machinery, i.e., “whether the focus of the claims is on [a] specific asserted
improvement in computer capabilities ... or, instead, on a process that
qualifies as an ‘abstract idea’ for which computers are invoked merely as a
tool.” See Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1335—36
(Fed. Cir. 2016).
Turning to the first step of the Alice framework, the Examiner looks to
the language of the independent claims and determines that the claims are
directed to maintaining, providing access and collection of, and obtaining
personal health records, i.e., storing, transmitting, organizing, and providing
data. See Final Act. 2; Ans. 2—3. We agree with and find supported the
Examiner’s determination.
The preambles of independent claims 1 and 11 direct the claims to a
method and system “for maintaining personal health records.” Appeal
Br. 73, 75 (Claims App.). The preamble of independent claim 15 directs the
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claims to a method and system for providing a service to provide the ability
to access and collect personal health records. Id. at 76. The preamble of
independent claim 18 directs the claim to a method for “containing personal
health records.” Id. at 78. And the preambles of independent claims 24 and
25 direct the claims to a system and method for “maintaining personal health
records.” Id. at 80, 81. The Specification provides that the invention relates
to “the provision of online medical records” and specifically to providing a
means for users to request, store, provide, and allow selective access to
medical records. Spec. 1,11. 11—15. In this context, the claims are directed
to storing, collecting, accessing, and providing data pertaining to medical
records,4 an idea of itself. The claims are similar to those our reviewing
court found to be directed to an abstract idea in Electric Power Group, LLC
v. Alstom S.A., 830 F.3d 1350, 1353—54 (Fed. Cir. 2016) (collecting and
analyzing information and displaying results of the analysis), Intellectual
Ventures I LLC v. Capital One Fin. Corp., 850 F.3d 1332, 1340 (Fed. Cir.
2017) (collecting, displaying, and manipulating data), Intellectual Ventures I
LLCv. Erie Indemnity Co., 850 F.3d 1315, 1327-28 (Fed. Cir. 2017)
(creating an index used to search and retrieve information stored in a
database); id. at 1330 (accessing and retrieving user-specified information);
and In re Salwan, 681 F. App’x. 938 (Fed. Cir. 2017) (billing insurance
companies and organizing patient health information). Here, the claims
involve nothing more than storing, providing, receiving, placing, and making
4 We note that “[a]n abstract idea can generally be described at different
levels of abstraction. . . . The Board’s slight revision of its abstract idea
analysis does not impact the patentability analysis.” Apple, Inc. v.
Ameranth, Inc., 842 F.3d 1229, 1240-41 (Fed. Cir. 2016).
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available data of a specific content and/or from a specific source without any
particular inventive technology — an abstract idea. See Electric Power,
830 F.3d at 1354.
We find unpersuasive the Appellant’s argument that independent
claims 11 and 24 and their dependent claims are patent-eligible under § 101
because they are directed to a system and “[a] system is a machine, not a
process, and thus as claimed here cannot be considered abstract.” Appeal
Br. 21. The Court in Alice made clear that the framework applies to system
and apparatus claims, particularly when “the system claims are no different
from the method claims in substance,” as is the case here. Alice, 134 S. Ct.
at 2360 (“Holding that the system claims are patent eligible would have
exactly [the] result” of having the eligibility “depend simply on the
draftsman’s art.”).
We are also not persuaded by the Appellant’s arguments of Examiner
error that the claims are patent-eligible because they “are more specific than
the abstract idea of using categories to organize store, and transmit
information as stated by the Examiner and do not risk impeding innovation.”
Appeal Br. 22; see also Reply Br. 22—23. The Appellant’s “specific” steps
of providing a web site to allow storage of records, providing a document,
receiving records, placing records on the site, providing a password, and
making available a subset of records, are all directed to and further elaborate
the abstract idea of storing, collecting, accessing, and providing data
pertaining to medical records.
To the extent the Appellant argues that the claims do not pre-empt the
approach in all fields (see Appeal Br. 22; see also Reply Br. 23), preemption
is not a separate test, but is inherently addressed within the Alice framework.
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See Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed.
Cir. 2015). “While preemption may signal patent ineligible subject matter,
the absence of complete preemption does not demonstrate patent eligibility.”
Id.; see also OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1362—63
(Fed. Cir. 2015) (“[T]hat the claims do not preempt all price optimization or
may be limited to price optimization in the e-commerce setting do not make
them any less abstract.”). The aforementioned concept is not sufficiently
limiting so as to fall clearly on the side of patent-eligibility.
Turning to the second step of the Alice framework, we agree with and
find supported the Examiner’s determination that the elements of the claims,
individually or as an ordered combination, do not amount to significantly
more than that abstract idea. See Final Act. 3; Ans. 3. We are not persuaded
of Examiner error by the Appellant’s arguments that assert the opposite. See
Appeal Br. 22—23; see also Reply Br. 23—24.
The steps and functions of claims 1, 11, 15, 18, 24, and 25, of
allowing storage of accessible records, placing records on a web site, making
available a subset of records, converting a communication of an image,
storing the image, receiving a fax, and providing an interface for access to
records and to display information are all routine, well-understood and
conventional functions of a generic computer. The Specification supports
this view. See Spec. 13,1. 16—14,1. 13, 16,1. 20-18,1. 30, Figs. 1, 4; see
also Content Extraction & Transmission LLC v. Wells Fargo Bank Nat 7
Assn., 776 F.3d 1343, 1347-A8 (Fed Cir. 2014).
The recited steps of method claims 1, 15, 18, and 25 of providing a
document, receiving records, receiving instructions, providing a password,
assigning a phone number, associating access information, and granting
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access can all be performed manually and are not recited to require a
computer. We disagree that “[Requiring a legal document sent by a
consumer to send health records to make available in event of an emergency
is not a routine, generic, or conventional activity.” Appeal Br. 23. As noted,
the claims do not require a computer to perform the step and, generally,
requiring a legal document is a routine, conventional, and generic manual
activity.
System claims of 11 and 24 merely describe an electronic system to
perform the functions, without any further specification of technology.
There is no indication in the Specification that any technologically novel or
inventive hardware is required. See Affinity Labs of Texas, LLC v.
DIRECTV, LLC, 838 F.3d 1253, 1263 (Fed. Cir. 2016); see also Enfish,
822 F.3d. at 1336 (focusing on whether the claim is “an improvement to
[the] computer functionality itself, not on economic or other tasks for which
a computer is used in its ordinary capacity”). To the contrary, the
Specification describes and depicts generic fax and web servers, telephone,
databases, and computer. See Spec. 13,1. 16—14,1. 13, 16,1. 20-18,1. 30,
Figs. 1, 4. The computer implementation here is purely conventional and
performs basic functions. See Alice, 134 S. Ct. at 2359—60.
Finally, to the extent the Appellant argues that the Examiner’s
rejection is in error because the Examiner fails to follow the Office
Guidelines (Reply Br. 21—22), we are not persuaded. We note that the
guidelines are not legal requirements. Intellectual Ventures I LLC v. Erie
Indemnity Co., 2017 WL 5041460, No. 2017-1147, * 4 (Fed. Cir. Nov. 3,
2017); In re Fisher, 421 F.3d 1365, 1372 (Fed. Cir. 2005). Moreover, in
rejecting the pending claims under § 101, the Examiner analyzes the claims
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using the Mayo/Alice two-step framework and clearly articulates the reasons
why the claims are not patent-eligible under § 101, as discussed above. See
Final Act. 2—3; Ans. 2-4.
Specifically, the Examiner looks to the language of the claims and
notifies the Appellants that the claims are directed to maintaining, providing
access and collection of, and obtaining personal health records, i.e., storing,
transmitting, organizing, and providing data. See Final Act. 2. The
Examiner likens the claims to those found to be abstract in Cyberfone
Systems, LLC v. CNN Interactive Group, Inc., 558 F. App’x. 988, 992 (Fed.
Cir. 2014) (“using categories to organize, store, and transmit information”)
and Intellectual Ventures I LLC v. Capital One Bank (USA), 792 F.3d 1363,
1369-70 (Fed. Cir. 2106) (tailoring content based on user information).
Ans. 2—3. Thus, we find unpersuasive the Appellant’s argument that the
Examiner’s rejection is in error because “the Examiner failed to cite a court
case from which collecting, displaying, and manipulating data was found to
be abstract.” Reply Br. 21.
The Examiner further finds that “the additional elements or
combination of elements in the claims” do not transform the abstract idea
into a patent-eligible invention, because they
amount to no more than a recitation of A) generic computer
structure that serve to perform generic computer functions that
serve to merely link the abstract idea to a particular technological
environment (i.e. computers, network, internet, servers,
processors). . . . and B) functions that are well-understood,
routine, and conventional activities previously known to the
pertinent industry (i.e. receiving, providing, transmitting,
generating).
Final Act. 3.
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The Federal Circuit has held that the USPTO carries its procedural
burden of establishing a prima facie case when its rejection satisfies the
requirements of 35 U.S.C. § 132 by notifying the applicant of the reasons for
rejection, “together with such information and references as may be useful in
judging of the propriety of continuing the prosecution of [the] application.”
See In re Jung, 637 F.3d 1356, 1362 (Fed. Cir. 2011). Here we find that the
Examiner has set forth the statutory basis of the rejection in a sufficiently
articulate and informative manner as to meet the notice requirement of § 132
as to why the claims are patent-ineligible. Id.', see also Chester v. Miller,
906 F.2d 1574, 1578 (Fed. Cir. 1990) (Section 132 “is violated when a
rejection is so uninformative that it prevents the applicant from recognizing
and seeking to counter the grounds for rejection”). The Appellant does not
contend that the Examiner’s § 101 rejection was not understood. Instead,
the Appellant’s understanding of the rejection is clearly manifested by the
Appellant’s responses as set forth in the Briefs.
Thus, we are not persuaded of Examiner error in rejecting claims 1—25
under 35 U.S.C. § 101, and we sustain the Examiner’s rejection.
35 U.S.C. § 103 - Obviousness
The Appellant contends that the Examiner’s rejections of independent
claims 1, 11, 15, 18, 24, and 25 are in error because the prior art does not
teach selecting a subset of personal health records to make available or
accessible through the use of an emergency password designated by the
users or user ID with a designated emergency password in the event of an
emergency, as recited in limitations (e), (I), and (g) of independent claim 1,
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and similarly required by independent claims 11, 15, 18, 24, and 25. Appeal
Br. 24—27, 36-38, 4AA6, 50-51, 56-58, 62-63, 66-68. We agree.
The Examiner acknowledges that “Fotsch does not disclose an
emergency password,” but finds that “the process of granting a password to
an individual by a patient is performed [in] the same” manner as the Fotsch’s
process of the patient generating a temporary ID and password for
authorized individuals to access the patient’s health record. Final Act. 4.
The Examiner further finds that MedicAlert teaches “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 login to the account,” in providing a health key as
the user ID “and the unknown computer providing] the emergency access.”
Id. at 6. However, the Examiner does not explain, such that one of ordinary
skill in the art would understand, how the prior art teaches designating a
password that makes available the subset, i.e., patient-authorized,
information in an emergency.
The prior art discloses that a patient can designate a password for an
individual, and that, in an emergency, the system can override the denial of
access and provide critical, patient-authorized information. Fotsch teaches
that a user can grant access to a personal health record or a section thereof to
a person or healthcare provider by generating a temporary ID and password
for the person or provider to use or access the record for a defined number or
length of time. Fotsch || 77, 78. Fotsch discloses that, in the case of an
emergency, the provider can access the patient’s health record by an
“override” capability or by being provided the patient’s user ID and
password by the emergency contact identified on the record or card,
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distinguishing emergency providers from providers granted access. Id. 1 82.
As such, we do not see where, or how, Fotsch reasonably teaches that the
user designates or is provided a specific password for emergency use that,
when used with the user ID, provides a selected subset of information. See
Appeal Br. 26—27; cf. Ans. 5. MedicAlert discloses storing a personal health
record on a USB-flash device, that, when plugged into an unknown
computer such as a computer of an emergency room or ambulance, only
critical, pre-authorized information is retrieved. MedicAlert || 12, 15.
Although MedicAlert teaches providing a selected subset of information in
an emergency, we do not see where, or how, MedicAlert teaches the use of a
user-designated or emergency password to access the critical information.
Based on the foregoing reasons, we do not sustain the Examiner’s
rejections of independent claims 1, 11, 15, 18, 24, and 25. We also do not
sustain the rejections of dependent claims 2—10, 12—14, 16, 17, and 19-23,
which rely on the same inadequately supported findings.
DECISION
The Examiner’s rejection of claims 1—25 under 35 U.S.C. § 101 is
AFFIRMED.
The Examiner’s rejections of claims 1—25 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
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