Liotta, Lance A. et al.

Patent Trials and Appeals Board

Sep 2, 2020

10130402 - (D) (P.T.A.B. Sep. 2, 2020)

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.
10/130,402 10/17/2002 Lance A Liotta IMMU 200076US01 2387
27885 7590 09/02/2020
FAY SHARPE LLP
1228 Euclid Avenue, 5th Floor
The Halle Building
Cleveland, OH 44115
EXAMINER
SOREY, ROBERT A
ART UNIT PAPER NUMBER
3626
NOTIFICATION DATE DELIVERY MODE
09/02/2020 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):
uspto@faysharpe.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte LANCE A. LIOTTA and TYSON LIOTTA
____________

Appeal 2019-003109
Application 10/130,402
Technology Center 3600
____________

Before MURRIEL E. CRAWFORD, JOSEPH A. FISCHETTI, and
NINA L. MEDLOCK, Administrative Patent Judges.

CRAWFORD, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant1 seeks our review under 35 U.S.C. § 134 of the Examiner’s
non-final rejection of claims 14–16, 27–29, 32, 37, 38, 40–43, 49, 52–62,
and 64–73. We have jurisdiction under 35 U.S.C. § 6(b).
SUMMARY OF DECISION
We AFFIRM.

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. Appellant identifies the real party in interest as
INSTANTDX, LLC. (Appeal Br. 1).
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THE INVENTION
Appellant claims a system and method for real-time delivery of
medical tests and related data from laboratories or similar sources to portable
communication devices. (Spec. 1, ll. 6–9; Title).
Claim 14 is representative of the subject matter on appeal.
14. A method for physician use of a portable
communications device to prepare and submit a prescription,
said method comprising:
receiving medical test data having test results for a
plurality of medical tests for a patient;
receiving a comparison of each test result with a data
range which determines severity and the data range defines
normal standard test data results;
displaying to a physician a list of the compared test
results ranked in order of severity via an Internet browser of
said portable communications device;
receiving a request to generate a prescription for the
patient after displaying the list of the test results;
displaying to the physician a list of drugs in response to
the request using said portable communications device;
receiving by said portable communications device input
from said physician relating to a drug selected from said list of
drugs;
displaying to said physician using said portable
communications device at least one predefined default
electronic prescription for said selected drug, the at least one
predefined default electronic prescription including
identification of a drug, an amount of the drug, and dosing
information for a patient, the dosing information identifying the
frequency with which the patient takes the drug;
receiving by said portable communications device input
from said physician that one of: (i) accepts one of said at least
one predefined default electronic prescriptions; (ii) modifies
one of said at least one of said predefined default electronic
prescription, or (iii) generates at least one electronic
prescription that is not predefined;
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sending one of said accepted, modified, or generated
electronic prescriptions to a pharmacy using said portable
communications device; and
periodically receiving a reminder message when the sent
electronic prescription requires that the patient submit to
additional lab testing.

THE REJECTIONS2
Claims 14–16, 27–29, 32, 37, 38, 40–43, 49, 52–62, and 64–73 are
rejected under 35 U.S.C. § 101 as directed to a judicial exception without
significantly more.3
Claim 72 is rejected under 35 U.S.C. § 112, fourth paragraph, as being
of improper dependent form for failing to further limit the subject matter of
the claim upon which it depends.
Claims 14, 15, 27–29, 32, 37, 38, 40–43, 60, 64, 67–70, and 73 are
rejected under 35 U.S.C. § 103(a) as being unpatentable over Mayaud (US
5,845,255; December 1, 1998), Levine (US 4,852,570; August 1, 1989),
Surwit (US 6,024,699; February 15, 2000), and Zarom (US 6,356,529 B1;
March 12, 2002).
Claims 16 and 59 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Mayaud, Levine, Surwit, Zarom, and Wong (US
6,115,690; September 5, 2000).

2 The Examiner has withdrawn the rejection of claims 27–29, 32, 40, 42, 43,
64, 69, and 70 under 35 U.S.C. § 112, first paragraph.
3 Newly added claims 67-73 are not listed with the claims rejected under
35 U.S.C. §101 in the Non-Final action. However, claim 73 is discussed in
the Non-Final Action and the Answer (Non-Final Act. 44; Ans. 73) and
claims 69, 71 and 73 are discussed in the Appeal Brief (Appeal Br. 17, 21).
Therefore, we treat the absence of these claims in the listing of the claims
rejected under 35 U.S.C. §101 as inadvertent.
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Claims 49, 53, 54, 61, 62, 65, 66, 71, and 72 are rejected under
35 U.S.C. § 103(a) as being unpatentable over Mayaud, Zarom, and Wong.
Claims 52 and 56–58 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Mayaud and Zarom.
Claim 55 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Mayaud, Zarom, and Levine.

ANALYSIS
35 U.S.C. § 101 REJECTION
We will sustain the rejection of claims 14–16, 27–29, 32, 37, 38, 40–
43, 49, 52–62, and 64-73 under 35 U.S.C. § 101.
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, . . . 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.”
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Alice Corp. v. CLS Bank Int’l, 573 U.S. 208, 217–18 (first and last
alterations in original) (citing Mayo Collaborative Servs. v. Prometheus
Labs., Inc., 566 U.S. 66, 72–73 (2012)) (citations omitted).
To perform this test, we must first determine whether the claims at
issue are directed to a patent-ineligible concept. The Federal Circuit has
explained that “the ‘directed to’ inquiry applies a stage-one filter to claims,
considered in light of the [S]pecification, based on whether ‘their character
as a whole is directed to excluded subject matter.’” See Enfish, LLC v.
Microsoft Corp., 822 F.3d 1327, 1335 (Fed. Cir. 2016) (quoting Internet
Patents Corp. v. Active Network, Inc., 790 F.3d 1343, 1346 (Fed. Cir.
2015)). It asks whether the focus of the claims is on a specific improvement
in relevant technology or on a process that itself qualifies as an “abstract
idea” for which computers are invoked merely as a tool. See id. at 1335–36.
In so doing we apply a “directed to” two prong test: 1) evaluate
whether the claim recites a judicial exception, and 2) if the claim recites a
judicial exception, evaluate whether the judicial exception is integrated into
a practical application. 2019 Revised Patent Subject Matter Eligibility
Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019) (“Guidance”).
In the briefing, Appellant refers to prior USPTO guidance regarding
§ 101, including, for example: Memorandum on Subject Matter Eligibility
Decisions dated November 2, 2016 (“the 2016 Memorandum”). (Appeal
Br. 18). However, the 2016 Memorandum and other prior guidance,
including: (1) 2014 Interim Guidance on Patent Subject Matter Eligibility,
79 Fed. Reg. 74,618 (December 16, 2014); (2) July 2015 Update on Subject
Matter Eligibility, 80 Fed. Reg. 45,429 (July 30, 2015) (“the 2015 Update”)
and (3) May 2016 Subject Matter Eligibility Update, 81 Fed. Reg. 27,381
(May 6, 2016) have been superseded by the 2019 Revised Guidance. See
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2019 Revised Guidance, 84 Fed. Reg. at 52. As such, our analysis will not
address the sufficiency of the Examiner’s rejection against the cited prior
guidance. Rather, our analysis will comport with the Guidance as discussed
below.
The Examiner determines that claim 14 is directed to receiving
medical test data having test results, a comparison of test results to severity
data ranges, a comparison of test results to severity data ranges to list the
compared test results in order of severity, and displaying a list of the
compared test results. The Examiner determines that this correlates to
collecting information (receiving medical test data having test results),
analyzing it (comparison of test results to severity data ranges to list the
computer test results), and displaying certain results of the collection and
analysis (displaying a list of the compared test results). (Non-Final Act. 3).
The Examiner determines that the claims are directed to a fundamental
medical practice which correlates to an idea of itself and a mental process.
(Id. at 4).
The Specification discloses that the present invention enables
physicians to access test results remotely as soon as they become available
by exchanging information with portable devices. (Spec. 1, ll. 11–12). The
Specification also discloses that, with particular reference to mobile
telephones, no prior systems are known to exist for receiving and
transmitting medical information and/or transaction data. (Id. at 3, ll. 2–4).
The Specification summarizes the invention as a method for delivery and use
of medical test data which includes receiving medical test data related to at
least one patient. The test data are stored on a medical server and the
physician is notified that the test data are available and the test data are sent
to the communications device of the physician. (Id. at 3, ll. 18–27). The
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physician uses the test results to develop a treatment regimen which may
include prescription or pharmacological treatment. (Id. at 9, ll. 5–8). The
physician develops an electronic prescription and sends the prescription
electronically to a pharmacy. (Id. at 9, ll. 9–16). The Specification also
discloses that a physician is presented with an overview of lab results from
his/her patient in the form of a list which lists patients in order of lab result
severity. (Id. at 13, ll. 25–33). As such, the disclosure in the Specification
supports the Examiner’s determination regarding the recitations of claim 14.
The method of claim 14 manages the personal behavior, relationship
or interactions between a physician and a patient which is one of certain
methods of organizing human activity that are judicial exceptions as
identified in the Guidance 84 Fed. Reg. at 53.
Alternately, this is an example of concepts performed in the human
mind as mental processes because the steps of generating, receiving,
analyzing, and displaying data mimic human thought processes of
observation, evaluation, judgment, and opinion, perhaps with paper and
pencil, where the data interpretation is perceptible only in the human mind.
See In re TLI Commc'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).
We thus agree with the Examiner’s determination that claim 14 recites
judicial exceptions.
Also, we determine that the steps of claim 14 constitute “analyzing
information by steps people go through in their minds, or by mathematical
algorithms, without more, as essentially mental processes within the
abstract-idea category.” Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d
1350, 1354 (Fed. Cir. 2016); see also buySAFE, Inc. v. Google, Inc., 765
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F.3d 1350, 1355 (Fed. Cir. 2014) (claims directed to certain arrangements
involving contractual relations are directed to abstract ideas). Thus, we
determine that claim 14 recites the judicial exception of methods of
organizing human activity and in the alternative, a mental process.
Turning to the second prong of the “directed to” test, claim 14
requires a “portable communications device” which is disclosed as a web-
enabled mobile telephone. (Spec. 3, l. 30). The recitation of a “portable
communications device” does not impose “a meaningful limit on the judicial
exception, such that the claim is more than a drafting effort designed to
monopolize the judicial exception.” Guidance 84 Fed. Reg. at 53. We find
no indication in the Specification, nor does Appellant direct us to any
indication, that the operations recited in independent claim 14 invoke any
inventive programming, require any specialized computer hardware or other
inventive computer components, i.e., a particular machine, or that the
claimed invention is implemented using other than generic computer
components to perform generic computer functions. See DDR Holdings,
LLC v. Hotels.com, L.P., 773 F.3d 1245, 1256 (Fed. Cir. 2014) (“[A]fter
Alice, there can remain no doubt: recitation of generic computer limitations
does not make an otherwise ineligible claim patent-eligible.”).
We also find no indication in the Specification that the claimed
invention effects a transformation or reduction of a particular article to a
different state or thing. Nor do we find anything of record, short of attorney
argument, that attributes any improvement in the portable communications
device and/or functionality to the claimed invention or that otherwise
indicates that the claimed invention integrates the abstract idea into a
“practical application,” as that phrase is used in the Guidance. See
Guidance, 84 Fed. Reg. at 55.
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In this regard, the recitation does not effect an improvement in the
functioning of the portable communications device or other technology, does
not recite a particular machine or manufacture that is integral to the claims,
and does not transform or reduce a particular article to a different state or
thing. Id. Thus, claim 14 is directed to judicial exceptions that are not
integrated into a practical application and thus claim 14 is directed to
“abstract ideas.”
Turning to the second step of the Alice analysis, because we find that
claim 14 is directed to abstract ideas, the claims must include an “inventive
concept” in order to be patent eligible, i.e., there must be an element or
combination of elements that is sufficient to ensure that the claim in practice
amounts to significantly more than the abstract idea itself. See Alice,
573 U.S. at 217–18 (quoting Mayo, 566 U.S. at 72–73).
The introduction of a computer in the form of a portable
communications device into the claims does not alter the analysis at Alice
step two.
[T]he 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
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process is more than a drafting effort designed to monopolize
the [abstract idea] itself.”
Alice, 573 U.S. at 223 (alterations in original) (citations omitted).
Instead, “the relevant question is whether [claim 14] do[es] more than
simply instruct the practitioner to implement the abstract idea . . . on a
generic computer.” Id. at 225. It does not.
Taking the claim elements separately, the function performed by the
computer in the form of the portable communication device at each step of
the process is purely conventional. Using a computer to retrieve, select, and
apply decision criteria to data and modify the data as a result amounts to
electronic data query and retrieval—one of the most basic functions of a
computer. All of these computer functions are well-understood, routine,
conventional activities previously known to the trading industry. See Elec.
Power Grp., 830 F.3d at 1354; see also In re Katz Interactive Call
Processing Patent Litig., 639 F.3d 1303, 1316 (Fed. Cir. 2011) (“Absent a
possible narrower construction of the terms ‘processing,’ ‘receiving,’ and
‘storing,’ . . . those functions can be achieved by any general purpose
computer without special programming”). In short, each step does no more
than require a generic computer to perform generic computer functions. As
to the data operated upon, “even if a process of collecting and analyzing
information is ‘limited to particular content’ or a particular ‘source,’ that
limitation does not make the collection and analysis other than abstract.”
SAP Am. Inc. v. InvestPic, LLC, 890 F.3d 1016, 1022 (Fed. Cir. 2018).
Considered as an ordered combination, the computer component of
Appellant’s claims add nothing that is not already present when the steps are
considered separately. The sequence of data reception-analysis-
access/display is equally generic and conventional or otherwise held to be
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abstract. See Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 715 (Fed. Cir.
2014) (sequence of receiving, selecting, offering for exchange, display,
allowing access, and receiving payment recited an abstraction), Inventor
Holdings, LLC v. Bed Bath & Beyond, Inc., 876 F.3d 1372, 1378 (Fed. Cir.
2017) (holding that sequence of data retrieval, analysis, modification,
generation, display, and transmission was abstract), Two-Way Media Ltd. v.
Comcast Cable Commc’ns, LLC, 874 F.3d 1329, 1339 (Fed. Cir. 2017)
(holding sequence of processing, routing, controlling, and monitoring was
abstract). The ordering of the steps is, therefore, ordinary and conventional.
Claim 14 does not, for example, purport to improve the functioning of
the portable communications device itself. As we stated above, claim 14
does not effect an improvement in any other technology or technical field.
The Specification spells out different generic equipment and parameters that
might be applied using this concept and the particular steps such
conventional processing would entail based on the concept of information
access under different scenarios. (See, e.g., Spec. 3, l. 30; 11 ll. 12–15).
Thus, claim 14 amounts to nothing significantly more than instructions to
apply the abstract ideas using some unspecified, generic computer. Under
our precedents, that is not enough to transform an abstract idea into a patent-
eligible invention. See Alice, 573 U.S. at 226.
We have reviewed all the arguments (Appeal Br. 14–34; Reply Br. 2–
16) Appellant has submitted concerning the patent eligibility of the claims
before us that stand rejected under 35 U.S.C. § 101. We find that our
analysis above substantially covers the substance of all the arguments, which
have been made. But, for purposes of emphasis, we will address various
arguments in order to make individual rebuttals of same.
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We are not persuaded of error on the part of the Examiner by
Appellant’s argument that claim 14 recites a technical improvement because
the present application results in lower electrical power burden on a portable
communications device, improves the speed at which relevant data can be
assessed, and reduces the amount of data needed to be processed in a
computer network. In making this argument, Appellant argues that the
instant claims are similar to the claims in Core Wireless Licensing S.A.R.L.
v. LG Elecs., Inc., 880 F.3d 1356 (Fed. Cir. 2018). (Appeal Br. 15).
We do not consider claim 14 to improve efficiency of a particular
machine or in a particular technology as were the claims in Core Wireless.
In Core Wireless the court held that claims which recited an interface were
patent eligible as the claims recited specific limitations of the interface such
as: an application summary that can be reached through a menu, the data
being in a list and being selectable to launch an application, and additional
limitations directed to the actual user interface displayed and how it
functions. Core Wireless, 880 F.3d at 1363. The court found that the claims
were directed to an improved user interface and not the abstract concept of
an index as the claim “limitations disclose a specific manner of displaying a
limited set of information to the user, rather than using conventional user
interface methods to display a generic index on a computer.” Id. Further, an
improvement in efficiency alone does not render claim 14 patent eligible.
“While the claimed system and method certainly purport to accelerate the
process of analyzing audit log data, the speed increase comes from the
capabilities of a general-purpose computer, rather than the patented method
itself. See Bancorp Servs., L.L.C. v. Sun Life Assurance Co. of Can. (U.S.),
687 F.3d 1266, 1278 (Fed. Cir. 2012) (‘[T]he fact that the required
calculations could be performed more efficiently via a computer does not
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materially alter the patent eligibility of the claimed subject matter.’).”
FairWarning IP, LLC, 839 F.3d at 1095.
In regard to Appellant’s argument that the claims reduce the electrical
power load and amount of data needed to be processed, we note that we can
find no basis for it in the claim or the Specification. Appellant has not
directed us to a disclosure in the Specification about a problem of electrical
power load that has been solved by following the recited steps of the claimed
method on a generic computer. Therefore, this argument is not only not
commensurate in scope with what is claimed but, because the record does
not reflect it, amounts to mere attorney argument. Attorney argument,
however, cannot take the place of record evidence. See In re Geisler,
116 F.3d 1465, 1470 (Fed. Cir. 1997); Johnston v. IVAC Corp., 885 F.2d
1574, 1581 (Fed. Cir. 1989).
We are not persuaded of error on the part of the Examiner by
Appellant’s argument that the features of the claims were not previously
known and improve medical computer networks and devices that provide
real-time delivery of medical tests and related data. (Appeal Br. 18–19). In
making this argument, Appellant relies on McRO, Inc. v. Bandai Namco
Games America Inc., 837 F.3d 1299 (Fed. Cir. 2016).
We agree with the Examiner’s response to this argument and adopt
same as our own. (Ans. 6–8). In addition, we are not persuaded that the
claimed invention is analogous to the claimed invention in McRO. The
claims in McRO were directed to a specific asserted improvement in
computer animation, i.e., the automatic use of rules of a particular type.
McRO, 837 F.3d at 1313. By contrast,claim 14 under appeal recite only
receiving, processing, and analyzing information.
We are not persuaded of error on the part of the Examiner by
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Appellant’s argument that the claims do not unduly preempt the field.
(Appeal Br. 24–25). “While preemption may signal patent ineligible subject
matter, the absence of complete preemption does not demonstrate patent
eligibility.” Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371,
1379 (Fed. Cir. 2015); see also OIP Techs., Inc. v. Amazon.com, Inc.,
788 F.3d 1359, 1362–63 (Fed. Cir. 2015) (“[T]hat the claims do not preempt
all price optimization or may be limited to price optimization in the e-
commerce setting do not make them any less abstract.”). And, “[w]here a
patent’s claims are deemed only to disclose patent ineligible subject matter
under the Mayo framework, as they are in this case, preemption concerns are
fully addressed and made moot.” Ariosa, 788 F.3d at 1379.
In view of the foregoing, we will sustain this rejection as it is directed
to claim 14 and claims 15, 16, 37, 38, 59, 60, 67–68 dependent therefrom.
We will also sustain the rejection as it is directed to claims 27–29, 32, 40–
43, 52–58, 61, 62, 64, and 65 because Appellant has not argued the separate
eligibility of these claims.
In regard to claim 49, Appellant argues that the claim effects a
particular treatment of prophylaxes for a disease or medical condition by
“generating an electronic prescription” for a disease or medical condition.
(Reply Br. 15). Appellant does not explain how claim 49 effects a particular
treatment. The Guidance includes a ‘treatment/prophylaxis’ consideration,
under which a claim can integrate a judicial exception into a practical
application by applying or using the judicial exception to effect a particular
treatment or prophylaxis for a disease or medical condition.”). Guidance,
84 Fed. Reg. at 55. Claim 49, however, does not recite applying a specific
compound at specific doses to treat a particular medical condition for
specific patients in a manner analogous to the eligible treatment method.
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See Vanda Pharm. Inc. v. W.-Ward Pharm. Int’l Ltd., 887 F.3d 1117, 1136
(Fed. Cir. 2018) (“At bottom, the claims here are directed to a specific
method of treatment for specific patients using a specific compound at
specific doses to achieve a specific outcome.”). In contrast, claim 49,
considered as a whole, is directed to creating an electronic prescription for
some condition which includes steps directed to transmitting, analyzing,
storing, and displaying information. As indicated in the preamble of
claim 49, the method can be used to generate an electronic prescription, but
claim 49 does not recite any steps related to treating any determined
condition. Therefore, we will sustain the rejection as it is directed to
claim 49.
In regard to claims 69 and 71, Appellant argues that the claims
improve the technical functioning by reducing the electrical power burden
on the portable communications device. This argument is not persuasive for
the same reasons given above in response to this argument as it is directed to
claim 14.
We are not persuaded of error on the part of the Examiner in rejecting
claim 73 by Appellant’s argument that the features of claim 73 minimize
memory usage of the portable communications device. This argument fails
for the same reasons given in response to Appellant’s argument that
claim 14 results in reduced power load and reduced data processed, i.e., we
can find no basis for it in the claim or the Specification. Appellant has not
directed us to a disclosure in the Specification about a problem of memory
usage that has been solved by following the recited steps of claim 73 on a
generic computer. The argument is not only not commensurate in scope
with what is claimed but, because the record does not reflect it, amounts to
mere attorney argument. As such, we will sustain the rejection as it is
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directed to claim 73.
35 U.S.C. §112, FOURTH PARAGAPH REJECTION
The Examiner rejects claim 72, determining that because “it is
possible to infringe on the electronic device [recited in claim 72] separately
from the method claimed in the parent claim [(i.e., claim 49)], claim 72 fails
to further limit the claim from which it depends as required by 35 U.S.C.
§ 112, fourth paragraph. (Final Act. 7; Ans. 18-19).
We will not sustain this rejection because in our view claim 72 is
directed to an electronic device that is programmed in such a way as to
perform the method of claim 49. The claim is to an electronic device
programmed to perform a particular method. The phrase “method of
claim 49” is used as shorthand to identify the method that the claimed
electronic device is programmed to perform, and not to further limit
independent claim 49. As such, claim 72 is an independent claim and as
such the requirements of 35 U.S.C. §112, fourth paragraph are not
applicable.

35 U.S.C. §103(a) REJECTIONS
Rejection of claims 14, 15, 27–29, 32, 37, 38, 40–43, 60, 64, 67–70, and 73.
We will not sustain this rejection because we agree with Appellant
that the cited prior art does not disclose “periodically receiving a reminder
message when the sent electronic prescription requires that the patient
submit to additional lab testing.”
The Examiner relies on Mayaud for teaching this subject matter at
column 28, lines 19–29 and 38–49; column 31, lines 33–49; column 44,
lines 11–18, column 50, lines 18–23; and column 51, line 65 to column 52,
line 26. (Non-Final Act. 9–10).
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We find that the relied on portion of column 28 of Mayaud describes a
notification of fulfillment of a prescription and an alert that the prescription
has expired but does not describe a reminder message that the prescription
requires that the patient submit to additional lab testing. We find that the
relied on portion of column 31 of Mayaud describes an alert sent to the
physician if they prescribe an offending agent, but does not describe a
reminder message that the prescription requires that the patient submit to
additional lab testing. We find that the relied on portion of column 44
describes a more complex embodiment of the invention that integrates
applications for prescription management with equivalent applications for
diagnostic tests, laboratory analysis, and radiological studies but does not
describe a reminder message that the prescription requires that the patient
submit to additional lab testing. We find that the relied on portion of
column 50 does not describe a message, but rather states that it will be
appreciated that the invention can be beneficially applied to the specification
of other therapies and technical remedies. We find that relied on portions of
columns 51 to 52 describe a method in which a patient’s history can drive
the selection and establishment of optimal diagnostic test matrix for
identifying a patient condition or conditions with good specificity and
confidence but does not describe a reminder message that the prescription
requires that the patient submit to additional lab testing.
In view of the foregoing, we will not sustain this rejection as it is
directed to claim 14 and claims 15, 37, 38, 60, 67–70, and 73 dependent
therefrom.
In regard to claim 27, the Examiner relies on the same paragraphs of
Mayaud for teaching the step of recommending one or more lab tests based
at least in part upon the sent electronic prescriptions. As detailed above,
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Application 10/130,402
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these paragraphs describe various aspects of the Mayaud invention,
however, we find that these portions of Mayaud do not describe the
recommending steps of claim 27. Column 52 does recite suggesting further
testing but it is not based on a prescription. Therefore, we will not sustain
this rejection as it is directed to claim 27 and claims 28, 29, 32, 40–43, and
64 dependent therefrom.

Rejection of claims 16 and 59

Claims 16 and 59 depend from claim 14 and thus require a periodic
reminder message. We will not sustain this rejection for the same reasons
given in our discussion of the 35 U.S.C. §103(a) of claim 14 because each of
these claims requires a reminder message that the prescription requires that
the patient submit to additional lab testing and the Examiner relies on
Maynaud for teaching this subject matter.

Rejection of claims 49, 53, 54, 61, 62, 65, 66, 71, and 72
Each of these claims requires the patient to submit to medical tests
when the sent prescription requires additional lab testing and the Examiner
relies on Mayaud for teaching this subject matter. Therefore, we will not
sustain this rejection as it is directed to claims 49, 53, 54, 61, 62, 65, 66, 71,
and 72 for the same reasons given in our discussion of the rejection of claim
14 under 35 U.S.C. §103(a) because each of these claims requires a reminder
message that the prescription requires that the patient submit to additional
lab testing and the Examiner relies on Maynaud for teaching this subject
matter.

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Application 10/130,402
19

Rejection of claims 52, and 56–58
Claims 52, like claim 14 recites “receiving a reminder message”
requiring the patient to submit to additional lab testing. The Examiner relies
on Mayaud for describing this subject matter. Therefore, we will not sustain
this rejection for the reasons given above in our discussion of the rejection of
claim 14 under 35 U.S.C. §103(a).

CONCLUSIONS OF LAW
We conclude the Examiner did not err in rejecting the appealed claims
under 35 U.S.C. § 101.
We conclude the Examiner did not err in rejecting claim 72 under
35 U.S.C. §112, fourth paragraph.
We conclude the Examiner did err in rejecting the appealed claims
under 35 U.S.C. §103(a).

CONCLUSION
In summary:
Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
14–16, 27–
29, 32, 37,
38, 40–43,
49, 52–62,
64–66
101 Eligibility 14–16, 27–
29, 32, 37,
38, 40–43,
49, 52–62,
64–73

72 112, fourth
paragraph
72
14, 15, 27–
29, 32, 37,
38, 40–43,
60, 64, 67–
103(a) Mayaud, Levine,
Surwit, Zarom
14, 15, 27–
29, 32, 37,
38, 40–43,
60, 64, 67–
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70, 73 70, 73
16, 59 103(a) Mayaud, Levine,
Surwit, Zarom,
Wong
16, 59
49, 53, 54,
61, 62, 65,
66, 71, 72
103(a) Mayaud, Zarom,
Wong
49, 53, 54,
61, 62, 65,
66, 71, 72
52, 56–58 103(a) Mayaud, Zarom 52, 56–58
55 103(a) Mayaud, Zarom,
Levine
55
Overall
Outcome
14–16, 27–
29, 32, 37,
38, 40–43,
49, 52–62,
64-73

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).
AFFIRMED