Ex Parte LorschDownload PDFPatent Trial and Appeal BoardJan 23, 201814195406 (P.T.A.B. Jan. 23, 2018) Copy Citation 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. 14/195,406 03/03/2014 Robert H. Lorsch MMR-P031 7198 133690 7590 01/25/2018 Goodhue, Coleman & Owens, P.C. 12951 University Ave Suite 201 Clive, IA 50325 EXAMINER HUNTER, SEAN KRISTOPHER ART UNIT PAPER NUMBER 3626 NOTIFICATION DATE DELIVERY MODE 01/25/2018 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 2018-001644 Application 14/195,406 Technology Center 3600 Before ANTON W. FETTING, BRUCE T. WIEDER, and TARA L. HUTCHINGS, Administrative Patent Judges. FETTING, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE1 Robert H. Lorsch (Appellant) seeks review under 35 U.S.C. § 134 of a final rejection of claims 1 and 3—15, the only claims pending in the application on appeal. We have jurisdiction over the appeal pursuant to 35 U.S.C. § 6(b). 1 Our decision will make reference to the Appellant’s Appeal Brief (“App. Br.,” filed August 2, 2017) and Reply Brief (“Reply Br.,” filed December 1, 2017), and the Examiner’s Answer (“Ans.,” mailed October 6, 2017), and Final Action (“Final Act.,” mailed March 9, 2017). Appeal 2018-001644 Application 14/195,406 The Appellant invented a way of data exchange with a personal health record service. Specification 1:12—14. An understanding of the invention can be derived from a reading of exemplary claim 1, which is reproduced below (bracketed matter and some paragraphing added). 1. A method of interoperability for health records, comprising: [1] registering patient with a personal health record service; [2] generating a medical record number at the personal health record service using a computing device associated with the personal health record service; and [3] electronically sending health data health data between the personal health record service and one or more health information technology systems by sending health data and the medical record number generated by the personal health record service to the one or more health information technology systems; [4] wherein the step of generating a medical record number at the personal health record service comprises generating the medical record number using a destination address associated with the patient on the personal health record service, wherein the destination address is used as a user name to access an account of the patient at the personal health record service and wherein the personal health record service provides for receiving health records directed to the destination address and associating the health records with the account. 2 Appeal 2018-001644 Application 14/195,406 The Examiner relies upon the following prior art: Joao US 2002/0032583 A1 Mar. 14,2002 Yu US 2011/0112970 A1 May 12, 2011 Claims 1 and 3—15 stand rejected under 35U.S.C. § 101 as directed to non-statutory subject matter. Claims 1 and 3—15 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Yu and Joao. ISSUES The issues of eligible subject matter turn primarily on whether the claims recite more than abstract conceptual advice of what a computer is to provide without implementation details. The issues of obviousness turn primarily on whether Yu describes the generation of a medical record number using a destination address associated with the patient of the personal health record service in which the destination address is used as a user name to access an account of the patient. FACTS PERTINENT TO THE ISSUES The following enumerated Findings of Fact (FF) are believed to be supported by a preponderance of the evidence. 3 Appeal 2018-001644 Application 14/195,406 Facts Related to the Prior Art Yu 01. Yu is directed to securely managing and storing individually identifiable information in web-based network environments. Yu para. 2. Joao 02. Joao is directed to processing and/or for providing healthcare information and/or healthcare-related information. Joao para. 2. ANALYSIS Claims 1 and 3—15 rejected under 35 U.S.C. § 101 as directed to non- statutory subject matter Method claim 1 recites registering a patient, generating a number, and sending data. None of the limitations recite implementation details for any of these steps, but instead recite functional results to be achieved by any and all possible means. A series of wherein clauses recite the nature of the data and how the data is used, but generally do not recite or narrow the steps and their performance per se. The first wherein clause does narrow the generating step but only as to the data used in the generation, not the performance per se. Data reception, analysis and modification, and transmission are all generic, conventional data processing operations to the point they are themselves concepts awaiting implementation details. The sequence of data reception-analysis-transmission is equally generic and conventional. The ordering of the steps is therefore ordinary and 4 Appeal 2018-001644 Application 14/195,406 conventional. The remaining claims merely describe parameters for the data, with no implementation details. The Supreme Court set forth a framework for distinguishing patents that claim laws of nature, natural phenomena, and abstract ideas from those that claim patent-eligible applications of those concepts. First, [] determine whether the claims at issue are directed to one of those patent-ineligible concepts. [] If so, we then ask, “[w]hat else is there in the claims before us? [] To answer that question, [] consider the elements of each claim both individually and “as an ordered combination” to determine whether the additional elements “transform the nature of the claim” into a patent- eligible application. [The Court] described step two of this analysis as a 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.” Alice Corp. Pty. Ltd. v. CLS Bank Inti, 134 S. Ct. 2347, 2355 (2014) (citing Mayo Collaborative Services v. Prometheus Laboratories, Inc., 566 U.S. 66 (2012)). To perform this test, we must first determine whether the claims at issue are directed to a patent-ineligible concept. The Examiner finds the claims directed to exchanging data with a personal health record service. Final Act. 3. Although the Court in Alice made a determination as to what the claims were directed to, we find that this case’s claims themselves and the Specification provide enough information to inform one as to what they are directed to. 5 Appeal 2018-001644 Application 14/195,406 The preamble to claim 1 recites that it is a method of interoperability for health records. The steps in claim 1 result in data exchange with a personal health record service. The Specification at 1:12—14 recites that the invention relates to data exchange with a personal health record service. Thus, all this evidence shows that claim 1 is directed to data exchange with a personal health record service, i.e., collecting, analyzing, and transmitting data. This is consistent with the Examiner’s finding. Claims involving data collection, analysis, and display are directed to an abstract idea. Elec. Power Grp. v. Alstom S.A., 830 F.3d 1350, 1353 (Fed. Cir. 2016) (holding that “collecting information, analyzing it, and displaying certain results of the collection and analysis” are “a familiar class of claims ‘directed to’ a patent-ineligible concept”); see also In re TLI Comma ’ns LLC Patent Litig., 823 F.3d 607, 611 (Fed. Cir. 2016); FairWarning IP, LLC v. Iatric Sys., Inc., 839 F.3d 1089, 1093—94 (Fed. Cir. 2016). Claim 1, unlike the claims found non-abstract in prior cases, uses generic computer technology to perform data retrieval, analysis, and transmission and does not recite an improvement to a particular computer technology. See, e.g., McRO, Inc. v. Bandai Namco Games Am. Inc., 837 F.3d 1299, 1314—15 (Fed. Cir. 2016) (finding claims not abstract because they “focused on a specific asserted improvement in computer animation”). As such, claim 1 is directed to the abstract idea of receiving, analyzing, and transmitting data. The remaining claims merely describe parameters for the data. We conclude that the claims at issue are directed to a patent-ineligible concept. 6 Appeal 2018-001644 Application 14/195,406 The introduction of a computer into the claims does not alter the analysis at Mayo step two. the mere recitation of a generic computer cannot transform a patent-ineligible abstract idea into a patent-eligible invention. Stating an abstract idea “while adding the words ‘apply it’” is not enough for patent eligibility. Nor is limiting the use of an abstract idea “‘to a particular technological environment.’” Stating an abstract idea while adding the words “apply it with a computer” simply combines those two steps, with the same deficient result. Thus, if a patent’s recitation of a computer amounts to a mere instruction to “implemen[t]” an abstract idea “on ... a computer,” that addition cannot impart patent eligibility. This conclusion accords with the preemption concern that undergirds our § 101 jurisprudence. Given the ubiquity of computers, wholly generic computer implementation is not generally the sort of “additional featur [e]” that provides any “practical assurance that the process is more than a drafting effort designed to monopolize the [abstract idea] itself.” Alice, 134 S. Ct. at 2358 (citations omitted). “[T]he relevant question is whether the claims here do more than simply instruct the practitioner to implement the abstract idea [] on a generic computer.” Alice, 134 S. Ct. at 2359. They do not. Taking the claim elements separately, the function performed by the computer at each step of the process is purely conventional. Using a computer to collect, analyze, and transmit data amounts to electronic data query and retrieval—one of the most basic functions of a computer. The wherein clauses are not steps, but a recitation of how data is labeled, viz. an 7 Appeal 2018-001644 Application 14/195,406 aspirational use, which is non-functional and undeserving of patentable weight.2 All of these computer functions are well-understood, routine, conventional activities previously known to the industry. In short, each step does no more than require a generic computer to perform generic computer functions. Considered as an ordered combination, the computer components of Appellant’s method add nothing that is not already present when the steps are considered separately. Viewed as a whole, Appellant’s method claims simply recite the concept of collecting, analyzing, and transmitting data as performed by a generic computer. To be sure, the claims recite doing so by advising one to register a patient, generate a number, and send data to a health system using a destination address as a user name. But this is no more than abstract conceptual advice on the parameters for such collecting, analyzing, and transmitting data and the generic computer processes necessary to process those parameters, and do not recite any particular implementation. The method claims do not, for example, purport to improve the functioning of the computer itself. Nor do they effect an improvement in any other technology or technical field. The 7+ pages of Specification do not bulge with disclosure, but only spell out different generic equipment and parameters that might be applied using this concept and the particular steps 2 The data itself, aside from its label, is an arbitrary sequence of binary digits dependent on an encoding scheme. 8 Appeal 2018-001644 Application 14/195,406 such conventional processing would entail based on the concept of collecting, analyzing, and transmitting data under different scenarios. They do not describe any particular improvement in the manner a computer functions. Instead, the claims at issue amount to nothing significantly more than an instruction to apply the abstract idea of collecting, analyzing, and transmitting data using some unspecified, generic computer. Under our precedents, that is not enough to transform an abstract idea into a patent- eligible invention. See Alice, 134 S. Ct. at 2360. We further adopt the Examiner’s findings and analysis from Answer 2, 3, and 10—14 and reach similar legal conclusions. We are not persuaded by Appellant’s argument that As an initial matter, claim 1 is not simply directed to using a category to organize, store, or transmit information as contended by the Examiner. Id. The first two elements of claim 1, registering a patient with a personal health record service and generating a medical record number using a destination address associated with a patient, is not using a category to organize, store, or transmit information. Registering a patient with a personal health record service has nothing to do with using a category to organize, store, or transmit information. Neither does generating a medical record number using a destination address with a computing device. In short, claim 1 is not simply directed to categories for organizing, storing, or transmitting information and thus cannot be said to directed to “an idea of itself,” as was the case in Alice. App. Br. 13. Registering a patient is no more than storing some patient identifier. Generating a number is no more than creating a data element. The Examiner finds the claims directed to exchanging data with a personal health record service, as we find supra. Claims involving data collection, 9 Appeal 2018-001644 Application 14/195,406 analysis, and display are directed to an abstract idea. Elec. Power Grp. v. Alstom S.A., 830 F.3d at 1353. We are not persuaded by Appellant’s argument that claim 1, when looked at as an ordered combination, amounts to significantly more than an abstract idea. For example, generating a medical record number using a destination address which functions as a user name solves a challenge particular to healthcare information technology (IT). In DDR Holdings, the Federal Circuit held that the generation of a web site that combined the “look and feel” of a host website with content from a merchant advertising on the host site solved a “challenge particular to the Internet” and was “necessarily rooted in computer technology in order to overcome a problem specifically arising in the realm of computer networks.” DDR Holdings, at 1257. Regarding claim 1, generating a medical record number using a destination address which functions as a user name solves a challenge particular to healthcare IT by reducing the amount of data required to identify a patient. See id. Reducing the amount of data needed to identify a patient is also “necessarily rooted in computer technology[”]: in that it allows healthcare providers to store more information in the same database, potentially saving healthcare providers significant money. See id. Furthermore, generating the medical record number using a destination address that can function as a user name does not preempt “every application of the idea” of improving interoperability, as users can use other types of identifiers not involving numbers or modify a database in a manner to improve hard drive space. See id. at 1259. App. Br. 13—14. Reducing data to identify a patient is not a technological problem, but an administrative one. The same problem arose prior to computer technology in data transcription among records. Simply put, the more characters in data, the more likely are transcription errors. As to preemption, “[wjhere a patent’s claims are deemed only to disclose patent 10 Appeal 2018-001644 Application 14/195,406 ineligible subject matter under the Mayo [/Alice] framework, as they are in this case, preemption concerns are fully addressed and made moot.” Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015). Claims 1 and 3—15 rejected under 35 U.S.C. § 103(a) as unpatentable over Yu and Joao We are persuaded by Appellant’s argument that “Yu does not teach the generation of a medical record number using a destination address associated with the patient of the personal health record service in which the destination address is used as a user name to access an account of the patient.” App. Br. 15 (emphasis omitted). The Examiner finds that the generation of “a token”, as set forth above, and the ability to generate said “token” in virtually “any practical format or length, depending on the constraints and requirements of the system” would include the ability to generate a medical record number using a destination address where the destination addressed is used as a user name to access an account of the patient. As such, the Examiner respectfully asserts that Yu in view of Joao more than seemingly suggest, “the generation of a medical record number using a destination address associated with the patient of a personal health record service in which the destination address is used as a user name to access an account of the patient”, as recited by the Appellant in the language of independent Claim 1. 11 Appeal 2018-001644 Application 14/195,406 Ans. 15—16.3 The problem for the Examiner is this finding goes only to whether one of ordinary skill could have performed the limitation, not whether one would have thought to do so. “[OJbviousness concerns whether a skilled artisan not only could have made but would have been motivated to make the combinations or modifications of prior art to arrive at the claimed invention.” Beldenlnc. v. Berk-TekLLC, 805 F.3d 1064, 1073 (Fed. Cir. 2015). Neither reference specifically describes the limitation, and the Examiner has not made a finding that either does so. CONCEUSIONS OF FAW The rejection of claims 1 and 3—15 under 35 U.S.C. § 101 as directed to non-statutory subject matter is proper. The rejection of claims 1 and 3—15 under 35 U.S.C. § 103(a) as unpatentable over Yu and Joao is improper. DECISION The rejection of claims 1 and 3—15 is affirmed. 3 Examiner has not raised the issue of whether this limitation is deserving of patentable weight for not being recited as a functional step in a method claim, and in view of the dispositive patentable subject matter rejection, we will not raise it sua sponte. 12 Appeal 2018-001644 Application 14/195,406 No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. § 1.136(a)(l)(iv) (2011). AFFIRMED 13 Copy with citationCopy as parenthetical citation