Ex Parte Wilson

Patent Trial and Appeal Board

Aug 5, 2016

12841490 (P.T.A.B. Aug. 5, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/841,490 07/22/2010
84649 7590 08/09/2016
Symbus Law Group, LLC
Cliff Hyra
11710 Plaza America Drive
Suite 2000
Reston, VA 20190
FIRST NAMED INVENTOR
Geraldine Wilson
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
7068-100 2191
EXAMINER
TRUV AN, LEYNNA THANH
ART UNIT PAPER NUMBER
2435
NOTIFICATION DATE DELIVERY MODE
08/09/2016 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@symbus.com
chyra@symbus.com
mwoodall@symbus.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte GERALDINE WILSON
Appeal2015-001970
Application 12/841,490
Technology Center 2400
Before ALLEN R. MacDONALD, JOSEPH P. LENTIVECH, and JOHN R.
KENNY, Administrative Patent Judges.
LENTIVECH, Administrative Patent Judge.
DECISION ON APPEAL
Appellant seeks our review under 35 U.S.C. § 134(a) of the
Examiner's final rejection of claims 1-29, the only claims pending in the
application on appeal. We have jurisdiction over the pending claims under
35 U.S.C. § 6(b).
We reverse.
STATEMENT OF THE CASE
Appellant's Invention
Appellant's invention generally relates to a portable electronic device
for storing, and preventing unauthorized access to, a person's medical
Appeal2015-001970
Application 12/841,490
information. Spec. 1, Abstract. Claim 1, which is illustrative, reads as
follows:
1. A system, comprising:
a portable mechanical element configured for transport on
a person's body;
a non-transitory computer readable medium physically
coupled to the mechanical element and configured to store:
a person's medical information; and
authentication data;
a communications module coupled to the mechanical
element and configured to communicate over a computer
network with a validating computing device; and
an authorization server configured to receive the
authentication data of the portable mechanical element,
determine a first authentication code associated with the
mechanical element, request from a person having access to the
electronic device a second authentication code, determine that
the second authentication code matches the first authentication
code, and based on the match of the first authentication code with
the second authentication code, issue an authorization for the
electronic device to release confidential patient medical data,
wherein the computer readable medium is configured to
allow access to the person's stored medical information only if
the authorization is issued.
Rejection
Claims 1-29 stand rejected under 35 U.S.C. § 102(e) as being
anticipated by Kohiyama et al. (US 7,596,703 B2; Sept. 29, 2009)
("Kohiyama"). Final Act. 9-17.
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Appeal2015-001970
Application 12/841,490
Issue on Appeal
Did the Examiner err by finding that Kohiyama discloses "an
authorization server configured to ... issue an authorization for the
electronic device to release confidential patient medical data," as recited in
claim 1?
ANALYSIS
Appellant contends the Examiner erred in rejecting claim 1 because
Kohiyama fails to disclose an authorization server that issues an
authorization for the electronic device to release confidential patient medical
data, as required by claim 1. Br. 9-12.
Kohiyama relates to storing information, originally on a secure device
or as a backup at a backup center, so that it secure against leakage (e.g.,
cannot be accessed by an unauthorized user). See Kohiyama, Abstract;
5: 15-17. The Examiner finds:
Kohiyama teaches the present invention is useful in other
environments, for example in a worldwide medical records
system, wherein a user has the secure device as a wallet carried
card, or a card or other data storage carried by a medical alert
necklace, bracelet or the like. Upon entering a medical facility,
for example an emergency room of a hospital, an ambulance or
a doctor's office, the secure device would provide the secure
device ID and the user would provide the user PIN voluntarily or
without knowledge through another person or a carried
identification in the event that the user is incapacitated. The
secure device would irreversibly encrypt the user PIN. The
encrypted user ID and the device ID are then sent to a worldwide
central location, for example over the internet, to provide
valuable medical records to assist the medical personal in
providing diagnosis and treatment. The stored records at the
center, backup center, include encrypted information that could
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Appeal2015-001970
Application 12/841,490
not be decrypted without the PIN and the PIN cannot be extracted
from the irreversibly encrypted user ID. Thus the records are
secure even if leaked (col.7, lines 32-50). Therefore, the secure
device itself allows access to medical information stored on the
secure device.
Final Act. 6. Additionally, the Examiner finds Kohiyama discloses that the
secure device and a user attest by sending a user PIN to a remote location,
for example a web site that in tum sends it to an agent, or by sending the
user PIN directly to the agent itself. Final Act. 3 (citing Kohiyama 9: 13-
15). The Examiner finds Kohiyama further discloses "the user only needs to
know one principle authentication code, PIN, in order to send authentication
[from] the unique secure device (mechanical element) to a remote location
and the secure device will supply personal information as needed to various
web sites." Ans. 12 (citing Kohiyama 10:4--12). Based on these findings,
the Examiner concludes Kohiyama discloses "an authorization server
configured to ... issue an authorization for the electronic device to release
confidential patient medical data," as recited in claim 1. Id.
We, however, agree with Appellants that these findings do not show
that Kohiyama discloses the recited authorization server. In particular, the
Examiner's findings fail to show that Kohiyama discloses that upon
receiving the PIN either the agent or the backup center issues an
authorization for the secure device to release confidential data. Instead,
Kohiyama discloses "[b ]etween the secure device 10 and the backup center
40 the sole confirmation of user identity or authentication is the pair of
irreversibly encrypted unique user ID 17 and unique user secure device ID
11." Kohiyama 11:27-30. Kohiyama further discloses "[t]he user PIN is
never transmitted to or stored, permanently or temporarily, in the backup
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Appeal2015-001970
Application 12/841,490
center." Kohiyama 6:45--47. Regarding the agent, Kohiyama discloses that
the PIN is used to allow the user to access "one SP site after another SP site
without having to reenter the PIN 15." Kohiyama 10: 14--18. The
Examiner's findings do not explain how allowing the user to access a web
site, as disclosed by Kohiyama, discloses issuing an authorization for the
secure device to release personal medical information stored thereon, as
required by claim 1. As such, we are constrained by the record to not sustain
the Examiner's rejection of claim 1 and claims 2-29 which recite similar
limitations. Because we find this issue to be dispositive of the rejection of
claims 1-29, we do not reach Appellant's remaining contentions.
DECISION
We reverse the Examiner's rejection of claims 1-29.
REVERSED
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