Ex Parte Smith

Patent Trial and Appeal Board

Feb 28, 2017

12658578 (P.T.A.B. Feb. 28, 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.
12/658,578 04/05/2010 Arthur Laurence Smith JR. EMRS-01ORD 5220
51951 7590
The Luther Law Firm
8149 N 87th Place
Scottsdale, AZ 85258
EXAMINER
ROSSITER, SEAN D
ART UNIT PAPER NUMBER
2133
NOTIFICATION DATE DELIVERY MODE
03/02/2017 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):
luther_law_docketing@cardinal-ip.com
bjl@lutherlaw.us
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ARTHUR LAURENCE SMITH JR.
Appeal 2017-003402
Application 12/658,578
Technology Center 2100
Before JOSEPH L. DIXON, KRISTEN L. DROESCH, and JOYCE CRAIG,
Administrative Patent Judges.
DIXON, Administrative Patent Judge.
DECISION ON APPEAL
Appeal 2017-003402
Application 12/658,578
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from a rejection of claims
1 and 6. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
The claims are directed to a portable personal electronic medical
records. Claim 1, reproduced below, is illustrative of the claimed subject
matter:
1. A device for storing a patient's medical records,
comprising:
a) a flash drive configured to connect to a USB port and
be read by a computer;
b) a first record[] of data on the flash drive, the first
record of data comprising non-password protected data, the
non-password protected data comprising emergency
information, the emergency information comprising
information to facilitate stabilizing the patient or transporting
the patient to a medical facility, the first record of data intended
for a paramedic or emergency room staff, including any of the
patient's medication list, medical allergies, current health
concerns, pertinent medical history, surgical history, blood
group/type, organ donor status, name of the primary physician,
emergency contacts, and/or a photo stored on the flash drive
and combinations thereof, the first record of data displayed
immediately by the computer when the flash drive is inserted
into the USB port
c) a second record of the data on the flash drive
comprising password protected data, the password protected
data comprising the patient's detailed medical records to
facilitate a healthcare provider in determining suitable
healthcare decisions for the patient, suitable healthcare
decisions comprising any of diagnoses, treatments,
prescriptions, procedures and combinations thereof;
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d) a database of medical information translated into a
plurality of languages; and
e) software on the flash drive for operating on the
medical information database and for enabling translation of
medical information into multiple languages.
REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Owurowa et al.
Apostolides
Doyle
Lubell et al.
US 2004/0103000 Al
US 2005/0075968 Al
US 2009/0030729 Al
US 8,195,480 B2
May 27, 2004
Apr. 7, 2005
Jan. 29, 2009
June 5, 2012
REJECTIONS
The Examiner made the following rejections:
Claims 1 and 6 stand rejected under 35 U.S.C. § 102(b) based upon a
public use or sale of the invention.
Claims 1 and 6 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Owurowa in view of Doyle, Lubell, and Apostolides.
ANALYSIS
35 U.S.C. § 102(b)
With respect independent claim 1 and dependent claim 6, Appellant
presents similar arguments addressing each claim regarding the public use
rejection. (App. Br. 11—13, 15—16.) As a result, we address the claims
together.
The Examiner maintains “the confidentiality agreements submitted
7/9/2013, which are indicated in paragraph 12 of the Affidavit
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Application 12/658,578
[(declaration)] provided 7/9/2013 as being confidentiality agreements of
people who purchased the data storage devices, the earliest date of sale is
5/7/2007 which is more than 1 year and 10 months prior to the filing of the
provisional application.” (Ans. 2.)
Appellant contends:
Appellant used his limited swom-to-confidentiality
customer base to determine if the claimed invention — storing
and providing portable medical records - actually worked as
intended. Noting that he would need to obtain the best
information for this product, the inventor obtained signed
confidentiality agreements from the buyers. The Appellant’s
rationale was that confidential disclosure along with user
feedback would lead to a viable product that would fill an
important gap in the medical marketplace. As claimed, the
invention is not just a USB drive but a functioning improved
storage device to accept patient data and display separate areas
of data, one record with basic information for emergency care
(not password protected), and a second record with password
protected complete data set.
As further context to the sale acknowledgment, the
Appellant’s intent was to determine if the invention was usable
by lay people. The list of questions in Appellant’s sworn
Affidavit indicates he had important questions whose answers
were necessary to the final product development.
(App. Br. 12.) Appellant further contends “[t]he Patent Office has failed to
establish aprima facie case of anticipation under 35 USC § 102 because 1)
[t]he Appellant established that such public use was a protected
experimental use and 2) non-secret use, as analyzed by the courts is not
inherently a ‘public use’ activity.” (App. Br. 15.) Appellant argues:
The Appellant has proven that his use was confidentially given
to determine if it would serve its intended purpose, with his
non-disclosure agreements as a symbol that he must test his
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Application 12/658,578
invention to determine whether it could realistically be put into
practice. From the sworn facts, it is clear that the inventor was
testing the features of his invention.
(App. Br. 16.)
While we agree with Appellant that in Appellant’s attempts to
“determine whether it could realistically be put into practice,” Appellant has
not shown a nexus of the claimed invention to the proffered testing. The
Examiner maintains:
The [AJppellant points to the non-disclosure agreement
as evidence of such, however, this appears to be for refining the
software's presentation, and not actually to ensure that the
software can run on a USB drive. The non-disclosure
agreement fails to show how user feedback is intended be used
to discover whether software that displays data with and
without password protection will work. USB drives that contain
software that present non-confidential data to certain
individuals and confidential data requiring passwords has been
commonly known in the art as evidence by Owurowa et al (US
PG Pub 2004/0103000) used in the current 35USC[§]103
rejection. The [AJppellant fails to provide any evidence that the
non-disclosure agreement was intended to “discover whether
the product works for its intended use” but rather to refine data
presentation as stated in the [AJppellant’s appeal brief “the
Appellant’s intent was to determine if the invention was usable
by lay people (page 12).” Software on an UBS drive only needs
to be usable by the system itself, not “lay people,” in order to
work properly.
(Ans. 8-9.)
The Examiner further questions Appellant regarding the sale of the 24
units and maintains:
[“JMere offering of a device for sale on a website seldom
amounts to sales or even many visitors to the website in the
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hands of an Internet inexperienced individual such as
Appellant.” Commercial success or lack thereof “is irrelevant
to 35 U.S.C. [§] 102 rejections and thus cannot overcome a
rejection so based. [In re Wiggins, 488 F.2d 538, 543 (CCPA
1973)].” The fact is that the unit was commercially available
online for the public to purchase more than a year prior to the
application for patent.
(Ans. 9.)
Appellant does not specifically respond to the Examiner’s inquiry
(App. Br. 12) and Appellant does not file a Reply Brief to respond to the
Examiner’s further clarifications in the public use rejection nor to respond to
the Examiner’s questioning regarding any offer for sale beyond the limited
sales and confidentiality agreements.
From our review of Appellant’s “affidavit” (which is actually a
declaration rather than an affidavit), filed July 9, 2013, and the associated
confidentiality agreements, we find statements 1—10 set forth the
background of the inventor and his understanding of the Health Care record
management field. Statement 11 is the only substantive declaration and
states:
Because putting health care records management in the hands
of the patient has NEVER BEEN DONE BEFORE, even after
years of developments, I could not be sure if it functioned as
intended in the hands of patients. I needed to assess patient
understanding and operation of the E-MedStick in order to
confirm that this revolutionary idea was working as intended.
For example, had I removed all the confusing medical jargon,
and could patients input their own information without undue
questions, let alone time wasting?
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Statements 12 and 13 set forth the sale and recordation of commentary by
the purchasers of the 24 data storage units. Statements 14—18 contain
hearsay commentary by users of the device. Finally, Statement 19 provides
a statement as to how the claim language is intended to be understood as
data rather than actual “machines and actions.” Consequently, Appellant’s
declaration does not provide any factual basis to support Appellant’s
contention regarding determining whether “the claimed invention—storing
and providing portable medical records—actually worked as intended.”
(App. Br. 12.)
As a result, we agree with the Examiner that the experimental use
exception would apply to determining if the invention, as claimed,
functionally worked as intended. Because the claimed invention merely sets
forth the basic structure, we cannot agree with the Appellant’s proffered use
as an “experimental use exception” in the instant factual situation. (App. Br.
12.) Rather, we agree with the Examiner that inventor’s use was
for refining the software's presentation, and not actually to
ensure that the software can run on a USB drive. The non­
disclosure agreement fails to show how user feedback is
intended be used to discover whether software that displays
data with and without password protection will work. USB
drives that contain software that present non-confidential data
to certain individuals and confidential data requiring passwords
has been commonly known in the art as evidence by Owurowa
et al[.] (US PG Pub 2004/0103000) used in the current 35 USC
[§] 103 rejection.
(Ans. 8-9.)
Therefore, Appellant has not shown error in the Examiner’s finding of
a public use more than one year prior to the critical date, and we sustain the
rejection of claims 1 and 6.
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35 U.S.C. § 103(a)
With respect to the obviousness rejection of independent claims 1 and
6, Appellant presents similar arguments regarding the obviousness rejection
of both claims. (App. Br. 13—15, 16—18.) As a result, we address the claims
together. Appellant contends:
Although the cited systems mention a flash drive storing
medical information, these references disclose systems that are
directed to a different purpose and are differently equipped to
lack all of the claimed elements of the invention. In particular,
the systems and methods taught by the combination of
Owurowa, Doyle, Lubell, and Apostolides fail to teach a first
record of the patient's medical data accessible without a
password and a second record of the patient's medical data
accessible only with a password, as in the claimed invention.
(App. Br. 14.) Appellant further contends that the filed application Figures
1—3 shows the design and which is self-contained and requires no special
software to implement the use of the product. (App. Br. 15.) We find
Appellant’s general argument to be based upon limitations not expressly
found in the language of independent claim 1 or dependent claim 6. As a
result, Appellant’s arguments do not show error in the Examiner’s factual
findings or conclusion of obviousness.
Appellant further contends that the prior art references identify a
“market gap for an invention.” (App. Br. 17.) Appellant further identifies
the individual differences in the prior art and generally concludes the
Examiner has failed to build a prima facie case of obviousness. (App. Br.
18—19.) We disagree with Appellant and find Appellant generally argues the
references individually.
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The Examiner maintains that Appellant’s arguments do not address
the claim limitations. (Ans. 9—10.) We agree with the Examiner and further
agree with the Examiner that nonobviousness cannot be established by
attacking the references individually when the rejection is predicated upon a
combination of prior art disclosures. See In re Merck & Co., Inc., 800 F.2d
1091, 1097 (Fed. Cir. 1986); see In re Keller, 642 F.2d 413, 426 (CCPA
1981) (“one cannot show nonobviousness by attacking references
individually where, as here, the rejections are based on combinations of
references” (citations omitted)). Additionally, “the combination of familiar
elements according to known methods is likely to be obvious when it does
no more than yield predictable results.” KSR Int’l Co. v. Teleflex, Inc., 550
U.S. 398, 416 (2007). Furthermore, the artisan is not compelled to blindly
follow the teaching of one prior art reference over the other without the
exercise of independent judgment. See Lear Siegler, Inc. v. Aeroquip Corp.,
733 F.2d 881, 889 (Fed. Cir. 1984).
As a result, Appellant’s general arguments for patentability do not
show error in the Examiner’s factual findings or conclusion of obviousness,
and we sustain the rejections of independent claim 1 and dependent claim 6.
CONCFUSIONS
The Examiner did not err in rejecting claims 1 and 6 based upon
public use under 35 U.S.C. § 102(b), and the Examiner did not err in
rejecting claims 1 and 6 based upon obviousness under 35 U.S.C. § 103(a).
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DECISION
For the above reasons, we sustain the Examiner’s rejections of claims
1 and 6 under 35 U.S.C. §§ 102 and 103.
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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