Ex Parte PomerantzDownload PDFPatent Trial and Appeal BoardOct 16, 201411672531 (P.T.A.B. Oct. 16, 2014) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE ___________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ___________ Ex parte ORI POMERANTZ ___________ Appeal 2012–000390 Application 11/672,531 Technology Center 3600 ___________ Before ANTON W. FETTING, BIBHU R. MOHANTY, and NINA L. MEDLOCK, Administrative Patent Judges. FETTING, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE1 Ori Pomerantz (Appellant) seeks review under 35 U.S.C. § 134 of a final rejection of claims 8–14 and 21–33, 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 February 16, 2011) and Reply Brief (“Reply Br.,” filed July 26, 2011), and the Examiner’s Answer (“Ans.,” mailed May 26, 2011). Appeal 2012-000390 Application 11/672,531 2 The Appellant invented a way of handling and processing data entered into a computer controlled system, and particularly in such systems that must protect sensitive and confidential personally identifiable data in a distributed data processing environment, particularly when the processing of data is outsourced (Specification 1: Technical Field). An understanding of the invention can be derived from a reading of exemplary claim 8, which is reproduced below [bracketed matter and some paragraphing added]. 8. A computer controlled data entry method for isolating personally identifiable data from other data comprising: [1] requesting entry of user data into an entry document, wherein a first section in said entry document is for personally identifiable data and a second section in said entry document is for other data; [2] respectively transferring the first section of the document to a first data processor and the second section of the document to a second data processor; [3] processing said other data in said second data processor; [4] processing said personally identifiable data in said first data processor in isolation from said other data to respectively produce processed personally identifiable data and processed other data; and [5] relating the processed personally identifiable data and the processed other data in isolation from said first and second processors. Appeal 2012-000390 Application 11/672,531 3 The Examiner relies upon the following prior art: Bennett US 2008/0052125 A1 Feb. 28, 2008 Shepard US 5,704,371 Jan. 6, 1998 Claims 28–33 stand rejected under 35 U.S.C. § 101 as directed to non– statutory subject matter. Claims 8, 9, 11–14, 21, 22, 24–29, and 31–33 stand rejected under 35 U.S.C. § 102(e) as anticipated by Bennett. Claims 10, 23, and 30 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Bennett and Shepard. ISSUES The issues of statutory subject matter turn primarily on whether the Specification forecloses transitory forms of computer media. The issues of novelty and obviousness turn primarily on the breadth of the final relating limitation [5] in claim 8. FACTS PERTINENT TO THE ISSUES The following enumerated Findings of Fact (FF) are believed to be supported by a preponderance of the evidence. Facts Related to the Prior Art Bennett 01. Bennett is directed to tracking patients or enrollees who are or have been involved in clinical trials of a pharmaceutical or other medical product. Bennett includes a registry that ensures that an enrollee’s contact information is kept current on a periodic, scheduled basis and optionally links an enrollee identifier code to Appeal 2012-000390 Application 11/672,531 4 an enrollee and that enrollee’s location information. Bennett also allows the enrollee to remain anonymous to the company sponsoring the clinical trial but allows the sponsor to have two- way contact with the enrollee. Bennett also protects the confidentiality of patients who undergo genetic testing or medical testing for other conditions, such as HIV and sexually transmitted diseases, for which they do not want the results known by others who have access to their name and contact details. Bennett para 2. 02. Obtaining the contact information for the enrollee in the clinical study may include providing a form that includes a section for providing contact information for the enrollee and at least one placement on the form of a study–patient identifier number. The form may include one or both of a web page for inputting the contact information, an email having a web link, and an email having fields for completing and sending back to the sender. Bennett para 14. 03. Bennett describes a form for requesting a medical test. The form includes: a first section for specifying a request for medical information; a second section for providing patient identifying information; and at least one patient identifier number placed on the form associated with either the first section for specifying the request for medical information or the second section for providing patient identifying information. Bennett para 31–34. 04. Fig. 6 is a flow chart illustrating one implementation of a system for enrolling patients in a patient tracking system in which medical and contact information are collected. Bennett para 44. Appeal 2012-000390 Application 11/672,531 5 05. Fig. 7 illustrates the enrollment form for enrolling in the patient tracking system of Fig. 6. Bennett para 45. 06. Bennett’s tracking system can have an additional function of contacting enrollees to provide and/or obtain safety information and substantive information relating to the clinical study in which they were enrolled. To obtain this information, the company can contact the system by merely specifying the study–patient identifier number. With the study–patient identifier number, the tracking system converts that number into either the patient identifier code and then determines the patient’s contact information, or directly converts the identifier number into the contact information. The tracking system then uses the contact information to contact those enrollees with the specified study– patient identifier numbers and provide the safety information and/or request the sought–after information. If the communication is to obtain information from the patient, the information can be provided to the patient tracking service over the telephone, or by email. Once that information has been obtained, this information is de-identified of any patient identifying information, optionally associated with the study–patient identification number and then can be provided to the company as–is or after further processing and analysis. Bennett para 74–75. 07. The contact between the company, the patient and the tracking system can occur through a variety of means. For example, the tracking system can be configured such that the company merely sends an email to the tracking service in a format that includes the Appeal 2012-000390 Application 11/672,531 6 patient identifier code as the local part and the tracking organization as the domain and the tracking system directly or indirectly forwards that email to the patient. Alternatively, the tracking organization can have a secure website that allows the company to enter or click on one or more patient identifier codes and cause those enrollees to be contacted. Such a website could allow the company to contact all of the enrollees in the study by clicking a single button or allow the company to selectively contact enrollees based on demographics of the particular enrollees. For example, the company may seek to determine the accuracy of an assertion in a lawsuit that overweight males older than 55 years have an increased likelihood of bladder cancer if they have taken the particular drug that was the subject of the study. The company can use the demographics of the enrollees, which would include the identifier code, and choose to contact only those enrollees who meet that criteria. In another implementation, the company or sponsor sends an email to the tracking service with a listing of study–patent identifier numbers and instructions as to what type of contact must be made, e.g., a safety update. Bennett para 76. 08. Referring to Figs. 6 and 7, the concepts of Bennett can be used to allow the client company to obtain information at the time of enrollment in a study. Figs. 6 and 7 demonstrate a process by which the patient can provide contact information and medical information on the same form at the time of enrollment while still maintaining confidentiality from the company. Upon enrolling in Appeal 2012-000390 Application 11/672,531 7 the study the enrollee receives a study enrollment form. The Patient study enrollment form has two parts, a remnant part and a stub part. In general, the remnant part contains medical information about the enrollee and the stub part contains contact or other identifying information about the enrollee. During the process, the remnant part and the stub part are separated along a perforation. The remnant part and the stub part each contain the same study–patient identifier number. The stub part additionally includes a patient identifier code. The code can be as described above, a sequential number used to store the forms in the database and as hard copies. The stub part also may include a field for allowing the enrollee to be contacted for purposes not strictly related to the clinical study. For example, the field may request consent of the enrollee to be contacted about additional clinical studies. Bennett para 81. 09. When the patient tracking service receives the form they separate the remnant part and the stub part from each other, thereby separating the medical information from the patient identifying information. The patient tracking service then enters the data from the stub part into a database and either stores the stub part in a secure filing system or destroys the stub. The information from the stub part and the stub part itself may be stored based on the patient identifier code. The remnant part, which includes the medical information, is then sent to the company sponsoring the study or the company they have nominated to perform the data entry. The sponsor then has the Appeal 2012-000390 Application 11/672,531 8 medical information as well as the study–patient identifier number 440 but not any patient identifying information. The patient tracking service, in contrast, has the study–patient identifier, the patient identifying information, but not the medical information. Thus, the patient tracking service knows that the patient enrolled in the tracking service but does not know the medical reason for enrolling. Bennett para 84. 10. Referring to Figs. 8–10, Bennett can be applied to requesting medical information, such as requesting genetic testing, to provide genetic testing privacy for individuals undergoing genetic testing as well as to medical testing in general to provide medical testing privacy for individuals undergoing medical and disease testing, and medical screening. In general, an individual can make a request for medical information with complete anonymity, such as by taking a medical test anonymously and obtaining the medical test results anonymously. The test results are sent anonymously to the individual while maintaining the anonymity of the individual. Bennett para 85. 11. In the basic implementation of Figs. 8–10, there are three entities involved in the process: the individual, the testing laboratory that generates and holds the medical information, and the information processor. The testing laboratory and the information processor may arrange a partnership by which an individual who wishes to be tested by the testing company and goes to a testing laboratory will be provided a registration form that has two parts separated by a perforation: (1) patient Appeal 2012-000390 Application 11/672,531 9 identifying information to be completed by the individual (known as the stub part) and (2) test results fields to be completed by the testing laboratory (known as the remnant part). The form has a unique form identifying number printed on both the stub part and the remnant part to allow both parts of the form to be related or tracked to each other. To obtain the form, the individual downloads the form over the Internet, is given the form by the information processor, or obtains the form at the testing laboratory. The individual completes the stub part and the remnant part of the form. The remnant part includes two primary sections: the testing requirements section and the test results section. The testing requirements section is used by the person to specify the testing that they want performed. The test results section is used by the testing laboratory to provide the test results, although the test results also can be provided on a separate document used in conjunction with the form or the form identifier number. Bennett para 89. ANALYSIS Claims 28–33 rejected under 35 U.S.C. § 101 as directed to non–statutory subject matter Transitory propagating signals are unpatentable under 35 U.S.C. § 101. In re Nuijten, 500 F.3d 1346, 1355 (Fed. Cir. 2007). According to U.S. Patent & Trademark Office (USPTO) guidelines: A claim that covers both statutory and non–statutory embodiments . . . embraces subject matter that is not eligible for patent protection and therefore is directed to non–statutory Appeal 2012-000390 Application 11/672,531 10 subject matter. . . . For example, a claim to a computer readable medium that can be a compact disc or a carrier wave covers a non–statutory embodiment and therefore should be rejected under § 101 as being directed to non–statutory subject matter. U.S. Patent & Trademark Office, Interim Examination Instructions for Evaluating Subject Matter Eligibility Under 35 U.S.C. §101, Aug. 2009, at 2, available at http://www.uspto.gov/web/offices/pac/dapp/opla/2009–08– 25_interim_101_ instructions.pdf (“Interim Instructions”). The USPTO also provides the following guidance: The broadest reasonable interpretation of a claim drawn to a computer readable medium . . . typically covers forms of non– transitory tangible media and transitory propagating signals per se in view of the ordinary and customary meaning of computer readable media, particularly when the specification is silent. . . . When the broadest reasonable interpretation of a claim covers a signal per se, the claim must be rejected under 35 U.S.C. § 101 as covering non–statutory subject matter. David J. Kappos, Subject Matter Eligibility of Computer Readable Media, 1351 Off. Gaz. Pat. Office 212 (Feb. 23, 2010). Independent claim 28 recites, in pertinent part, “[a] computer usable medium having stored thereon, a computer program.” Upon reviewing Appellant’s Specification for context, we find Specification at 13 states “[o]ne skilled in the art should appreciate that the processes controlling the present invention are capable of being distributed in the form of computer readable media of a variety of forms.” Therefore, because Appellant’s Specification is open in this regard, we conclude that the claimed “computer usable medium” can be broadly, but reasonably, construed to encompass both non–transitory tangible media and transitory propagating signals per se. As independent claim 28 covers both statutory and non–statutory embodiments, it embraces subject matter that is Appeal 2012-000390 Application 11/672,531 11 not eligible for patent protection and, therefore, is directed to non–statutory subject matter. Appellant argues that RAM and several alternative non–transitory storage media are described for the storage of program instructions: disk drive, removable optical disks, CD ROM input and floppy disks or the memory of another computer. Although this is so, these are simply listed as examples of the open ended “computer readable media of a variety of forms.” Claims 8, 9, 11–14, 21, 22, 24–29, and 31–33 rejected under 35 U.S.C. § 102(e) as anticipated by Bennett Claims 10, 23, and 30 rejected under 35 U.S.C. § 103(a) as unpatentable over Bennett and Shepard As to claim 8, we are not persuaded by the Appellant’s argument that Bennett fails to disclose the claim element: relating the processed personally identifiable data with the processed other data in isolation from both the first and second data processors. Examiner cites section [0089] of Bennett as the teaching of this relating of data from the first and second processors in isolation from the two processors. However, in this section, other than the individual or patient, there are just two entities, the information processor which makes the original separation of the personal from the medical data, and the laboratory which processes the medical data. Any correlation of the data appears to be done at the original information processor and not in isolation from this original information processor. App. Br. 14. Although we agree with Appellant that Bennett necessarily relates the processed personally identifiable data and the processed other data at one of the two processors, the claim does not preclude plural instances of relating Appeal 2012-000390 Application 11/672,531 12 so long as one of the instances is in isolation from the two processors. The claim also is silent as to whether relating occurs actively or passively. The Examiner, thus, found that Bennett paragraphs 85 and 89 show that the patient receives a test result that, in itself, passively relates the processed personally identifiable data and the processed other data. As this result is a paper notification, it is inherently isolated from the two processors. As to claim 9, reciting assigning separate identifiers respectively to said first section and to said second section; and distributing said first and second sections respectively to two separate and unrelated data handling providers for processing, we are not persuaded by the Appellant’s argument that Examiner cites Section [0084] in Bennett for this teaching. This section only discloses a single patient identifier 440 assigned to the patient personal data. No other identifier is described. App. Br. 15. The Examiner responds that Bennett describes both a study–patient identifier number and a patient identifier code (see para. 81 and Fig. 7 of Bennett). Ans. 9. The claim recites that the identifiers are separate, not that the identifier contents differ. CONCLUSIONS OF LAW The rejection of claims 28–33 under 35 U.S.C. § 101 as directed to non– statutory subject matter is proper. The rejection of claims 8, 9, 11–14, 21, 22, 24–29, and 31–33 under 35 U.S.C. § 102(e) as anticipated by Bennett is proper. The rejection of claims 10, 23, and 30 under 35 U.S.C. § 103(a) as unpatentable over Bennett and Shepard is proper. Appeal 2012-000390 Application 11/672,531 13 DECISION The rejections of claims 8–14 and 21–33 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). See 37 C.F.R. § 1.136(a)(1)(iv) (2011). AFFIRMED Klh Copy with citationCopy as parenthetical citation