Ex Parte Lorsch

Patent Trial and Appeal Board

Nov 20, 2017

13767400 (P.T.A.B. Nov. 20, 2017)

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.
13/767,400 02/14/2013 Robert H. Lorsch MMR - P012 1063
133690 7590 11/22/2017
Goodhue, Coleman & Owens, P.C.
12951 University Ave
Suite 201
Clive, IA 50325
EXAMINER
CHNG, JOY POH AI
ART UNIT PAPER NUMBER
3686
NOTIFICATION DATE DELIVERY MODE
11/22/2017 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 2017-0092441
Application 13/767,4002
Technology Center 3600
Before BIBHU R. MOHANTY, KENNETH G. SCHOPFER, and
MATTHEW S. MEYERS, Administrative Patent Judges.
MEYERS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 1—9 and 11—19. We have jurisdiction under 35 U.S.C.
§ 6(b).
We AFFIRM.
1 Our decision references Appellant’s Appeal Brief (“Appeal Br.,” filed
February 22, 2017), and Reply Brief (“Reply Br.,” filed June 14, 2017), the
Examiner’s Answer (“Ans.,” mailed April 14, 2017) and Final Office Action
(“Final Act.,” mailed June 23, 2016).
2 Appellant identifies “MyMedicalRecords, Inc., a subsidiary of
MMRGlobal, Inc. (MMRF)” as the real party in interest (Appeal Br. 3).
Appeal 2017-009244
Application 13/767,400
CLAIMED INVENTION
Appellant’s claims relate generally “to the provision of online medical
records,” and more particularly, “to providing a means for consumers to
request their medical records from health care providers, store the medical
records, and provide for private communications between the consumers and
their health care providers” (Spec. 1,11. 12—15).
Claims 1,16, and 19 are the independent claims on appeal. Claim 1,
reproduced below with bracketing matter added, is illustrative of the subject
matter on appeal:
1. A method for providing a patient with an ability to
access and collect health records associated with the patient in a
secure and private manner, the method comprising:
[a] assigning a phone number to the patient, the phone
number individually associated with the patient, the assigning
performed by a server;
[b] creating by the server a user account for the patient and
associating, by the server, the phone number with the user
account of the patient;
[c] determining by the server an ip address associated with
the patient and associating by the server the ip address with the
user account of the patient;
[d] receiving a fax directed to the phone number at a fax
server, the fax comprising a health record from a health care
provider of the patient;
[e] storing the fax received at the phone number associated
with the user account of the patient as an image file at the server
and associating, by the server, the image file with the user
account of the patient on the server;
[f] providing the patient with access to the image file
through a computing device through a single level of password
log-in if an ip address of the computing device matches the ip
address associated with the patient;
[g] providing an interface on the computing device for the
user configured to access and manage the health records through
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Application 13/767,400
the user account, the interface configured to organize the health
records and the interface configured to provide a message center
for communications with the health care providers of the patient,
the communications including fax communications from the
health care providers of the patient received through the phone
number;
[h] displaying alerts regarding the communications with
the health care providers of the patient in the message center,
wherein the communications include the fax communications
from the health care providers of the patient;
[i] receiving through the interface input from the patient
requesting that an outgoing fax comprising the health record
from the user account of the patient be sent to one of the health
care providers of the patient;
[j] sending through the fax server the outgoing fax
comprising the health record from the user account of the patient
to the one of the health care providers of the patient.
REJECTION
Claims 1—9 and 11—19 are rejected under 35 U.S.C. § 101 as being
directed to non-statutory subject matter.
ANALYSIS
Appellant argues claims 1, 9, and 14 as a group (see Appeal Br. 13—
18; see also Reply Br. 13—18). We select claim 1 as representative. The
remaining claims stand or fall with claim 1. See 37 C.F.R. § 41.37(c)(l)(iv).
Alice Corp. Pty. Ltd. v. CLS Bank Inti, 134 S. Ct. 2347 (2014)
identifies a two-step framework for determining whether claimed subject
matter is judicially-excepted from patent eligibility under § 101.
According to Alice step one, “[w]e must first determine whether the
claims at issue are directed to a patent-ineligible concept,” such as an
abstract idea. Alice, 134 S. Ct. at 2355.
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The “directed to” inquiry [jcannot simply ask whether the claims
involve a patent-ineligible concept, because essentially every
routinely patent-eligible claim involving physical products and
actions involves a law of nature and/or natural phenomenon—
after all, they take place in the physical world. See Mayo, 132 S.
Ct. at 1293 (“For all inventions at some level embody, use,
reflect, rest upon, or apply laws of nature, natural phenomena, or
abstract ideas.”) Rather, the “directed to” inquiry applies a stage-
one filter to claims, considered in light of the specification, based
on whether “their character as a whole is directed to excluded
subject matter.” Internet Patents Corp. v. Active Network, Inc.,
790 F.3d 1343, 1346 (Fed. Cir. 2015); see Genetic Techs. Ltd. v.
Merial L.L.C., 818 F.3d 1369, 1375 (Fed. Cir. 2016) (inquiring
into “the focus of the claimed advance over the prior art”).
Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1335 (Fed. Cir. 2016). “The
‘abstract idea’ step of the inquiry calls upon us to look at the ‘focus of the
claimed advance over the prior art’ to determine if the claim’s ‘character as a
whole’ is directed to excluded subject matter.’” Affinity Labs of Texas, LLC
v. DIRECTV, LLC, 838 F.3d 1253, 1257 (Fed. Cir. 2016) (citing Elec. Power
Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1353 (Fed. Cir. 2016); see also
Enfish, 822 F.3d at 1335.
In rejecting the claims under 35U.S.C. § 101, the Examiner finds
exemplary independent claim 1 (as well as independent claims 16 and 19) is
directed to “to a series of steps that defines an abstract idea similar to using
categories to organize, store and transmit information, and comparing new
and stored information, and using rules to identify options, which are
concepts that have been previously found by the courts to be abstract” (Final
Act. 2; see also Ans. 3 4). More particularly, the Examiner finds the claims
are directed assigning data, creating data, associating data,
determining data, receiving data, storing data, providing access,
displaying data, receiving data, sending data, which is similar to
an abstract idea of using categories to organize, store and
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transmit information, and comparing new and stored information
and using rules to identify options.
(Final Act. 2).
In response, Appellant argues the claims of the present application are
not directed to an abstract idea because “[n]one of the claims are directed
towards fundamental economic practices, none of the claims are directed
towards ideas themselves (standing alone), none of the claims are directed
towards mathematical relationship s/formulae” (Appeal Br. 13). We are not
persuaded by Appellant’s argument.
At the outset, we note that the Supreme Court in Alice did not rigidly
define or otherwise restrict the universe of abstract ideas to one or more of:
a building block of human ingenuity, a fundamental economic practice, and
an algorithm. See Alice, 134 S. Ct. at 2357 (“we need not labor to delimit
the precise counters of the ‘abstract ideas’ category”). And, here the
Examiner does not find that the claims are directed to a fundamental
economic practice, an idea of itself, or an algorithm. Furthermore, “[a]n
abstract idea can generally be described at different levels of abstraction.”
Apple, Inc. v. Ameranth, Inc., 842 F.3d 1229, 1240 (Fed. Cir. 2016).
Under step one of the framework set forth in Alice, we agree with the
Examiner that the invention is broadly directed to “an abstract idea [of]
using categories to organize, store and transmit information, and comparing
new and stored information and using rules to identify options.” (Final Act.
2). And based on our review of independent claim 1, we also agree with the
Examiner that independent claim 1 involves nothing more than “assigning
data, creating data, associating data, determining data, receiving data, storing
data, providing access, displaying data, receiving data, sending data” (see
id.', see also Ans. 3 4) and is similar to the steps that the Federal Circuit
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determined were patent ineligible in Electric Power Group, LLC v. Alstom
S.A., 830 F.3d 1350 (Fed. Cir. 2016).
In Electric Power, the method claims at issue were directed to
performing real-time performance monitoring of an electric power grid by
collecting data from multiple data sources, analyzing the data, and
displaying the results. Elec. Power Grp. LLC, 830 F.3d at 1351—52. The
Federal Circuit held that the claims were directed to an abstract idea,
explaining that “[t]he advance they purport to make is a process of gathering
and analyzing information of a specified content, then displaying the results,
and not any particular assertedly inventive technology for performing those
functions.” Id. at 1354.
Accordingly, we find that independent claim 1 involves nothing more
than collecting and associating information, receiving and storing
information, providing access to information, and sending and receiving
information, without any particular inventive technology — activities
squarely within the realm of abstract ideas. See, e.g., Elec. Power Grp.,
LLC, 830 F.3d at 1353—54 (when “[t]he focus of the asserted claims” . . . “is
on collecting information, analyzing it, and displaying certain results of the
collection and analysis,” the claims are directed to an abstract idea). See
also Accenture Global Servs., GmbH v. 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).
Step two is “a search for an ‘inventive concept’—i.e., an element or
combination of elements that is ‘sufficient to ensure that the patent in
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practice amounts to significantly more than a patent upon the [ineligible
concept] itself.’” Alice, 134 S. Ct. at 2355 (alteration in original) (citing
Mayo Collaborative Servs. v. Prometheus Labs., Inc., 132 S. Ct. 1289, 1294
(2012)).
And, similar to the situation in Electric Power, we find nothing
sufficient to remove the claims from the class of subject matter ineligible for
patenting. As the court explained in Electric Power, “merely selecting
information, by content or source, for collection, analysis, and display does
nothing significant to differentiate a process from ordinary mental processes,
whose implicit exclusion from § 101 undergirds the information-based
category of abstract ideas.” Elec. Power Grp., 830 F.3d at 1355.
Here, Appellant argues that the claims amount to significantly more
than the abstract idea because the claims include “[a] message center that
allows users to see faxes that have been received from health care providers
in response to matching an ip address of a patient with an ip address of a
computing device when logging on is a non-conventional arrangement”
(Appeal Br. 17; see also Reply Br. 17—18). However, Appellant’s argument
does not establish that the argued limitations add inventiveness, as opposed
to the application of conventional, well-known analytical steps. See
Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 716 (Fed. Cir. 2014) (“[T]he
claimed sequence of steps comprises only ‘conventional steps, specified at a
high level of generality,’ which is insufficient to supply an ‘inventive
concept.’”) (Citing Alice, 134 S. Ct. at 2357) (internal citations omitted).
And, there is no indication in the record that any specialized computer
hardware or other “inventive” computer components are required. Here, we
agree with the Examiner
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Appellant’s [Specification describes conventional
computing/computer hardware for implementing the above
described functions including “[t]he computing device 109 may
be a phone, a tablet, a desktop computer, a notebook computer,
or other type of computing device” (see at least Paragraph
[0045]) and “[t]he system 1000 includes a fax server 1002 that is
used in sending and/or receiving faxes. A server 1004 (which
may be a web server or application server) is in operative
communication with the fax server 1002 such as through a fax
gateway 1006” (see at least Paragraph [0094]). The claims also
recite receiving and sending data at/from a fax server.
Transmission (i.e. sending, receiving) of data from various
electronic devices (i.e. fax servers) is considered well-
understood, routine and conventional activities, previously
known in the industry.
(Ans. 5—6). Thus, independent claim 1 merely employs generic computer
components to perform generic computer functions, i.e., collecting,
associating, storing, and sending/receiving information, which is not enough
to transform an abstract idea into a patent-eligible invention.
Also, considered as an ordered combination, we are unclear as to how
these computer components add anything that is not already present when
the steps of the method are considered separately. Here, Appellant argues
that “using an ip address along with a password to verify a user identity” and
“providing a message center capable of alerting users when recent faxes
from health care providers arrive” (Appeal Br. 17; see also Reply Br. 17)
establish a “‘nonconventional and non-generic arrangement of known,
conventional pieces,’ [which] transform[s] the claim into a patent-eligible
application of technology” (Appeal Br. 17—18; see also Reply Br. 17—18).
However, Appellant does not adequately show how the claimed steps
are technically done such that they are not routine, conventional functions of
a generic computer. See Intellectual Ventures, 792 F.3d 1363, 1370 (Fed.
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Cir. 2015) (“Rather, the ‘interactive interface’ simply describes a generic
web server with attendant software, tasked with providing web pages to and
communicating with the user’s computer.”). In this regard, Appellant has
not established that the claimed invention relates to a software-based
invention that improves the performance of the computer system itself. And
it is well-settled that “merely recit[ing] the abstract idea . . . with the
requirement to perform it on a set of generic computer components . . .
would not contain an inventive concept.” See BASCOM Global Internet
Servs., Inc. v. AT&T Mobility LLC, 827 F.3d 1341, 1350 (Fed. Cir. 2016).
Appellant also argues that the claims are not directed to an abstract
idea because they
are all clearly directed to improvements in health information
technology, namely technology which allows a patient with the
ability to access and collect their health records as well as
disseminate them in a secure and private manner regardless of
what health information technology systems their health care
providers use.
(Appeal Br. 16 (citing Enfish, LLC v. Microsoft Corp., 822 F.3d 1327 (Fed.
Cir. 2016); see also Reply Br. 16—17). We cannot agree.
In Enfish, the Federal Circuit rejected a § 101 challenge at step one of
the Alice test because the claims at issue focused not on asserted advances in
uses to which existing computer capabilities could be put, but on a specific
type of data structure, i.e., a self-referential table for a computer database,
designed to improve the way a computer carries out its basic functions of
storing and retrieving data. Enfish, 822 F.3d at 1335—36.
Here, we find no evident parallel between Appellant’s claims and the
claims in Enfish that represent an improvement to computer functionality
nor have Appellant’s set forth any such parallel. The record does not
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indicate, for example any improvement to the way the computer of
independent claim 1 carries out its basic functions, i.e., accesses and collects
health records, nor is it apparent that the claims focus on a specific means or
method that improves the relevant technology.
Appellant last argues that the claims are not directed to an abstract
idea because “the claims clearly do not attempt to tie up an abstract idea
such that others cannot practice it” (Appeal Br. 14—16; see also Reply Br.
14—16). Appellant’s argument is not persuasive.
Although the Supreme Court has described “the concern that drives
this exclusionary principle [i.e., the exclusion of abstract ideas from patent
eligible subject matter] as one of pre-emption,” Alice, 134 S. Ct. at 2354,
characterizing pre-emption as a driving concern for patent eligibility is not
the same as characterizing pre-emption as the sole test for patent eligibility.
“The Supreme Court has made clear that the principle of preemption is the
basis for the judicial exceptions to patentability” and “[f]or this reason,
questions on preemption are inherent in and resolved by the § 101 analysis.”
Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir.
2015) (citing Alice, 134 S. Ct. at 2354). Although “preemption may signal
patent ineligible subject matter, the absence of complete preemption does
not demonstrate patent eligibility.” Id.
In view of the foregoing, we sustain the Examiner’s rejection under
35 U.S.C. § 101 of independent claim 1, and claims 2—9 and 11—19, which
fall with independent claim 1.
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DECISION
The Examiner’s rejection of claims 1—9 and 11—19 under 35 U.S.C.
§ 101 is 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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