Ex Parte Lorsch

Patent Trial and Appeal Board

Jan 24, 2018

12204474 (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.
12/204,474 09/04/2008 ROBERT H. LORSCH MMR - P021 5054
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 2018-0002041
Application 12/204,474
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
final decision rejecting claims 16-18 and 36. We have jurisdiction under
35 U.S.C. § 6(b). We AFFIRM.
1 We note previous appeal 2013-010061, for which a Decision was mailed
March 22, 2016. We also note related appeals 2017-010566 (application
11/512,745) and 2017-010897 (application 11/690,996).
2 Throughout this opinion, we refer to the Appellant’s Appeal Brief
(“Appeal Br.,” filed July 10, 2017), Reply Brief (“Reply Br.,” filed Oct. 9,
2017), and Specification (“Spec.,” filed Sept. 4, 2008), and to the
Examiner’s Answer (“Ans.,” mailed Aug. 11, 2017) and Final Office Action
(“Final Act.,” mailed Dec. 7, 2016).
3 According to the Appellant, the real party in interest is
“MyMedicalRecords, Inc., a subsidiary of MMRGlobal, Inc. (MMRF).”
Appeal Br. 6.
Appeal 2018-000204
Application 12/204,474
STATEMENT OF THE CASE
The Appellant’s invention generally “relates to the provision of online
medical records,” and more specifically 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. 12-16.
Claims 16 and 36 are the independent claims on appeal.
Claim 16 (Appeal Br. 18-19 (Claims App.)) is exemplary of the
subject matter on appeal and is reproduced below:
16. A method for providing a user with the ability to access and
collect personal health records associated with the user,
comprising:
providing a phone number to the user for fax and voice
communications from a health care provider such that the fax and
voice communications from the health care provider are stored
and made available to the user through a single user account of a
web site stored on a web server;
associating access information with the user account for
the user to use to access the web site through use of a user id and
first password;
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;
receiving a fax communication comprising the personal
health record associated with the user for which the user has
requested and given permission to the health care provider to
send;
converting the fax communication into an image file
format;
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Application 12/204,474
storing the personal health record associated with the user
encoded in the image file format such that the personal health
record associated with the user is accessible through the user
account on the web server;
providing the user with access to the user account web site
using the access information and providing on the web site an
interface to the personal health records of the user for the user to
access the health record;
providing the user with a means to organize health records
into folders on the web site and to specify a subset of the personal
health records for storage in an emergency folder, the subset of
the personal health records stored in the emergency folder being
accessible to the user through the user account by using the first
password;
making available only the personal health records stored
in the emergency folder though a separate element indicative of
an emergency login into the user account on the web site using
an emergency password; and
displaying through the web site an image of the user upon
the emergency login into the web site.
THE REJECTION
Claims 16-18 and 36 stand rejected under 35 U.S.C. § 101 as directed
to non-statutory subject matter. Final Act. 2.
ANALYSIS
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 Int 7, 134 S. Ct. 2347, 2354 (2014) (quoting Assn for
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Application 12/204,474
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
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
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Application 12/204,474
qualifies as an ‘abstract idea’ for which computers are invoked merely as a
tool.” See Enflsh, LLCv. Microsoft Corp., 822 F.3d 1327, 1335-36
(Fed. Cir. 2016).
Under the first step of the Alice analysis, the Examiner looks to the
language of the independent claims and determines that the claims are
directed to maintaining, providing access to, and collecting personal health
records, i.e., organizing, storing, and transmitting data of health records, an
abstract idea. See Final Act. 2; Ans. 3. We agree with and find supported
the Examiner’s determination. The Appellant does not contest the
Examiner’s determination of what the claims are directed to. See Appeal
Br. 14. Rather, the Appellant focuses on the second step of the Alice
analysis and contends that the Examiner’s rejection is in error because
“when looked at as an ordered combination, [the claims] amount to
significantly more than an abstract idea such as using categories to organize,
store and transmit information as contended by the Examiner.” Id.\ see also
Reply Br. 14. We do not agree.
The Examiner determines that the claims limitations, alone or in
combination, do not amount to significantly more than the abstract idea
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 (citing Spec. 29, 48). We agree with and find this supported.
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The recited steps of method claims 16 and 36 of providing a phone
number or address, associating data of access information, providing a
document, and receiving a communication all relate to providing, organizing
(associating), and receiving data icf Appeal Br. 14; Reply Br. 14-15), can
all be performed manually, and are not recited to require a computer or other
technology. The steps of method claims 16 and 36 of storing data relating to
communications, receiving a fax communication, converting data, storing
data of a health record accessible via a website, providing user access to a
website using access data (i.e., logging in), providing a user interface,
providing a means to organize data on the website, making available data of
a subset of the record, and displaying image data are accomplished by
generic servers, computer(s), and fax machine operating performing routine,
well-understood and conventional functions of a generic computer or fax
machine. There is no further specification of technology or 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”).
None of the elements improves the technology of the servers,
computer, or fax machine. Cf Appeal Br. 14. 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; see also Content
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Extraction & Transmission LLC v. Wells Fargo Bank Nat’l Assn., 776 F.3d
1343, 1347-49 (Fed Cir. 2014) (using scanner to convert paper document to
store electronically was conventional, well-understood, and routine activity
and function of scanning technology).
We disagree with the Appellant’s contention that the claims are
directed to patent-eligible subject matter because they use “effectively a
special purpose server configured to provide the web site of Applicant’s
claimed invention.” Appeal Br. 15; see also Reply Br. 16. The claims do
not recite a server or computer configured to provide a web site, or any steps
specifically performed by a server or computer. Further, the programming
or purpose of the computer does not focus on a specific improvement in how
the computer could carry out its basic functions of providing, storing,
organizing, receiving, making accessible, and displaying data. Electric
Power Group, LLCv. Alstom S.A., 830 F.3d 1350, 1354 (Fed. Cir. 2016);
see also EON Corp. IP Holdings LLC v. AT & TMobility LLC, 785 F.3d
616, 623 (Fed. Cir. 2015) (“A microprocessor or general purpose computer
lends sufficient structure only to basic functions of a microprocessor. All
other computer-implemented functions require disclosure of an algorithm”);
and Alice, 134 S. Ct. at 2357-60 (determining that applying an abstract idea,
such as an algorithm, on a general purpose computer is not enough to
transform a patent-ineligible abstract idea into a patent-eligible invention).
We are also not persuaded of Examiner error by the Appellant’s
argument that the claims are not directed to an abstract idea because they are
not “routine or conventional activities previous [sic] known to the pertinent
industry” because they were “found to be nonobvious in a March 22, 2106,
decision by the Patent Trial and Appeal Board (PTAB).” Appeal Br. 15-16;
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see also Reply Br. 16-17. First, the test under § 101 is not whether the
activities are conventional activities known in the industry, but, as discussed
above, whether the steps are conventional, routine, and well-understood
functions of a generic computer. We have determined they are. Second, in
the March 22, 2016 Decision for previous appeal 2013-0010061
(“Decision”), the Board did not find the claims nonobvious, but, rather, did
not sustain the Examiner’s rejection of claims 16-18 and 36 because “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.” Decision 11. Third, an abstract idea does not transform into an
inventive concept just because the prior art does not disclose or suggest it.
See Mayo, 566 U.S. at 91. “Groundbreaking, innovative, or even brilliant
discovery does not by itself satisfy the § 101 inquiry.” Myriad, 133 S. Ct. at
2117. Indeed, “[t]he ‘novelty’ of any element or steps in a process, or even
of the process itself, is of no relevance in determining whether the subject
matter of a claim falls within the § 101 categories of possibly patentable
subject matter.” Diamond v. Diehr, 450 U.S. 175, 188-89 (1981); see also
Mayo, 566 U.S. at 91 (rejecting “the Government’s invitation to substitute
§§ 102, 103, and 112 inquiries for the better established inquiry under
§ 101”).
Thus, we are not persuaded of Examiner error in rejecting
claims 16-18 and 36 under 35 U.S.C. § 101, and we sustain the Examiner’s
rejection.
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DECISION
The Examiner’s rejection of claims 16-18 and 36 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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