Marc Willard et al.

Patent Trials and Appeals Board

Mar 16, 2021

2020002983 (P.T.A.B. Mar. 16, 2021)

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.
12/893,384 09/29/2010 Marc Willard HUM2027-209 4025
8698 7590 03/16/2021
STANDLEY LAW GROUP LLP
6300 Riverside Drive
Dublin, OH 43017
EXAMINER
LAM, ELIZA ANNE
ART UNIT PAPER NUMBER
3686
NOTIFICATION DATE DELIVERY MODE
03/16/2021 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):
standleydocketing@standleyllp.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MARC WILLARD, JAMES GOUGH,
PRANAY VARMA, and RAHUL SOMASUNDERAM
Appeal 2020-002983
Application 12/893,384
Technology Center 3600
Before ELENI MANTIS MERCADER, JUSTIN BUSCH, and
MATTHEW J. McNEILL, Administrative Patent Judges.
BUSCH, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1. We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM.

1 We use the term Appellant to refer to “applicant” as defined in 37 C.F.R.
§ 1.42(a). Appellant identifies the real parties in interest as Certify Data
Systems, Inc. and Humana Inc. Appeal Br. 2.
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CLAIMED SUBJECT MATTER
The claimed subject matter relates to an electronic medical record
exchange system. Spec., Title. More specifically, the claimed subject
matter “relates to an electronic medical record exchange system to provide
universal message exchange between disparate legacy electronic medical
record systems” to address legacy system incompatibility without creating
an entirely new system. Spec. ¶¶ 1–7. Claim 1, reproduced below, is
illustrative of the claimed subject matter:
1. A de-centralized electronic medical record exchange system,
comprising:
a first, special purpose electronic medical record, separate
from but in electronic communication with a first legacy
electronic medical record system comprising a first list of doctors
and a first list of patients, where the first electronic medical
record appliance is adapted to convert data in a first format from
the first legacy electronic medical records system to a common
format to be shared with a remotely located, third, special
purpose electronic medical record appliance; and
a second, special purpose electronic medical record
appliance, separate from but in electronic communication with a
second legacy electronic medical record system comprising a
second list of doctors and a second list of patients, where the
second electronic medical record appliance is adapted to convert
data in a second format from the second legacy electronic
medical records system to the common format to be shared with
the third electronic medical record appliance;
wherein said third, special purpose electronic medical
records appliance is separate from but in electronic
communication with the first and second electronic medical
records appliances as well as a third legacy electronic medical
records system comprising the first and second list of doctors as
well as the first and second list of patients, wherein said third
electronic medical records appliance is configured to convert
data from the common format shared with the first and second
electronic medical record appliance to a third format used by the
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third legacy electronic medical record system for communication
to the third legacy electronic medical records system, wherein
the first, second, and third electronic medical record appliances
form a closed network that exchanges data representing patient
medical history using the common format among said first,
second, and third legacy systems;
wherein said third electronic medical record appliance is
configured to associate one of a number of closed network doctor
identifiers with each doctor in said first and second list of doctors
and one of said closed network patient identifiers with each
patient in said first and second list of patients, wherein said
closed network doctor identifiers are different than assigned
legacy doctor identifiers utilized by the first, second, and third
legacy electronic medical record systems and said closed
network patient identifiers are different than the assigned legacy
patient identifiers utilized by the first, second, and third legacy
electronic medical record systems;
wherein each of the first, second, and third electronic
medical record appliances have a limited interface that inhibits
user inputted operation after setup, said first, second, and third
electronic medical record appliances being dedicated, closed and
sealed systems;
wherein the closed network doctor identifiers and the
closed network patient identifiers are unique within the closed
network and distinct from the legacy doctor identifiers and
legacy patient identifiers utilized by the first, second, and third
legacy electronic medical record systems;
wherein the closed network is operative with the first,
second, and third legacy electronic medical record systems
without synchronization of databases between the first, second,
and third legacy electronic medical record systems;
wherein the first, second, and third electronic medical
record appliances provide compatibility between legacy
electronic medical record systems utilizing different message
formats;
wherein the first, second, and third electronic medical
record appliance maintains an audit trail of electronic medical
record messages exchanged between any of the first, second, and
third legacy electronic medical record systems and the first,
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second, and third electronic medical record appliances by
generating and assigning a unique message identifier to each
electronic medical record message;
wherein the third electronic medical record appliance is
configured to associate each of the closed network doctor
identifiers with one or more of the closed network patient
identifiers;
wherein the third electronic medical record appliance
returns the closed network doctor identifiers to the first and
second electronic medical record appliance.
REFERENCES
The prior art relied upon by the Examiner is:
Name Reference Date
Kilgore US 2002/0072911 Al June 13, 2002
Jackson US 2005/0086527 Al Apr. 21, 2005
Tran US 2008/0004904 Al Jan. 3, 2008
Canessa US 2015/0180707 Al June 25, 2015

REJECTION2
Claim 1 stands rejected under 35 U.S.C. § 103 as obvious over Tran,
Canessa, Kilgore, and Jackson.
ANALYSIS
The Examiner finds the combination of Trans, Canessa, Kilgore, and
Jackson teaches or suggests every limitation recited in claim 1. Final
Act. 2–5; Ans. 3–5. Of particular relevance to this Appeal, the Examiner
finds Tran teaches or suggests the three recited electronic medical record
(EMR) appliances, the three recited legacy EMR systems with which a

2 The Examiner rejected then-pending claims 1 and 9 as obvious. Final
Act. 2–5. Appellant canceled claim 9 and incorporated the limitations of
claim 9 into claim 1. See Appellant’s amendment, filed Mar. 25, 2019.
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respective one of the EMR appliances is in electronic communication, the
recited closed network between the three legacy EMR systems, and the three
EMR appliances providing compatibility between the legacy EMR systems
using different message formats. Final Act. 2–3 (citing Tran ¶¶ 9, 10, 54), 5
(additionally citing Tran ¶ 99).
Tran describes a medical system in which multiple “medical data
collection appliances” collect medical information and transmit the collected
data in “an interoperable format” over a network. Tran, Abstract. Tran’s
“interoperability enables disparate industries to work together to combine
their products and services through connectivity standards.” Tran ¶ 7. Tran
describes various medical appliances or devices that collect patient vital
information (e.g., blood pressure and glucose level), transmitting the
information to a corresponding computer or base station that may convert
the data into an “interoperable format.” Tran ¶¶ 7–10. In other words, Tran
relates to communication between medical devices, appliances, or systems
by using an interoperable format to communicate data over a network
between disparate systems or devices.
Tran’s “base station 20 runs a ‘middleware’ software that hides
protocol and connectivity details from the device” and connects the devices
to a network over which the devices may communicate with other devices,
systems or services. Tran ¶ 69. Tran’s “devices 8, 10 and 40, issue requests
on behalf of themselves and receive responses individually according to
their particular capabilities,” but base station “‘tailors’ the request [from a
remote doctor] to suit the proper device capability before relaying it to the
appropriate device.” Tran ¶ 71.
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We reproduce here Figure 1 including Appellant’s annotations
(Appellant added the text that is outside the elements identifying the EMR
appliances and legacy systems):

Reply Br. 4 (Appellant’s annotated version of Tran’s Figure 1 depicting
various medical appliances 8, 10, 40, base station/local server 20 with
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various modules, patient interface 90, networks 100, 101, remote server 200,
and a third party interface 210).
More specifically, Tran’s Figure 1 depicts “an exemplary patient
monitoring system” that “can operate in a home, a care facility, a nursing
home, or a hospital,” which includes various appliances or devices (e.g.,
“one of multiple portable physiological transducer[s], such as a blood
pressure monitor, . . . or a signal from an exercise machine, such as a heart
rate”) having “a single or bidirectional wireless communication link.” Tran
¶ 54. Tran’s devices may transmit data to a base station, and the devices
may register with the base station to “provide information regarding the
capabilities of the device, including, for example device type (EKG, EMG,
blood pressure sensor, etc.) memory size, processing capacity, and supported
protocols and connectivity.” Tran ¶¶ 54, 71. Tran’s devices may continue
to operate and collect and store information when not connected to a
network, then upload data when it reconnects. Tran ¶¶ 247, 279.
In one example, Tran discloses that a hospital or clinic may register
devices with base stations, and “a doctor at a hospital, clinic or doctor office
registers and authenticates with the remote server 200,” then “server 200
polls the base station for the latest information and displays the patient
screens for the doctor.” Tran ¶¶ 89–97. Tran’s “base station performs auto-
translation among devices”—“[f]or example, devices, a hospital EKG device
can store time series EKG data in XML format, while a home based EKG
device can store compressed EKG data. The base station can translate the
Open EKG format to the uncompressed XML data.” Thus, when the doctor
at the hospital who “accesses data stored in the XML format wishes to view
an ECG monitoring device at home,” the server “automatically performs the
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data format decompression and conversion and transmits the data to the
doctor’s station.” Tran ¶ 99.
Similarly, if a doctor registers as an authorized user, the “doctor can
be running his/her own computer system” and “[t]he doctor base station in
turn communicates with devices in the doctor’s office” that “capture patient
information.” Tran ¶ 100. “To allow the remote person such as a physician
or a family member to monitor a patient, a plurality of user interface
modules enable the remote person to control each appliance and to display
the data generated by the appliance.” Tran ¶ 101. For example, an EKG
sensor may communicate its data to a patient base station that may be
transmitted to a doctor’s station at which the doctor may view and analyze
the information. Tran ¶ 101.
Appellant acknowledges that Tran teaches vitals monitoring devices
that transmit information to base stations in a network to allow a doctor or
other person to monitor multiple patients. Appeal Br. 7 (citing Tran ¶¶ 5–6,
Fig. 15A. Appellant argues, however, that “Tran fails to provide the
limitations of claim 1 which require at least three respective EMR
appliances, each in communication with one of at least three respective
legacy EMR systems.” Appeal Br. 8.
In particular, Appellant contends the claims require “that information
be communicated back-and-forth between the EMR appliances and the
legacy EMR systems,” whereas Tran “only teaches that the base stations are
capable of receiving information from the various patient monitoring
devices,” but “there is no indication in Tran that information is shared back
into the patient monitoring devices, or that the patient monitoring devices
are even capable of receiving such information.” Appeal Br. 10. Appellant
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identifies limitations relating to exchanging messages or data between EMR
systems and appliances and the limitation that recites the third EMR
appliance returning identifiers to the other two appliances and asserts these
limitations demonstrate that the claims require two-way communication.
Reply Br. 2–3.
We are not persuaded that Tran fails to teach two-way communication
with its vitals monitoring devices. As discussed above, Tran discloses that
many different devices may be used as monitoring devices, including
devices that monitor various physiological parameters. See Tran ¶¶ 7–10,
54; id. ¶¶ 11–32 (describing various devices for monitoring information and
types of information that may be monitored). One particular example
discussed throughout Tran is a “wearable appliance such as a wrist-watch
[that] includes sensors 40, for example devices for sensing ECG, EKG,
blood pressure, sugar level, among other[ things].” Tran ¶ 56.
As part of the process of registering a device with a base station,
Tran’s devices may “provide information regarding the capabilities of the
device, including, for example device type (EKG, EMG, blood pressure
sensor, etc.) memory size, processing capacity, and supported protocols and
connectivity” to the base station. Tran ¶¶ 54, 71. Notably, the setup process
alone requires two-way communication between the device and the base
station because the base station “queries the device for its identity.” Tran
¶ 54.
Moreover, as also discussed above, Tran discloses that “base station
20 runs a ‘middleware’ software” so that base station acts as a proxy to
request and return information from remote server 200 or elsewhere when
the devices want to obtain services. Trans ¶¶ 69–70; see also id. ¶ 71 (“the
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devices 8, 10 and 40, issue requests on behalf of themselves and receive
responses individually according to their particular capabilities”). Thus, the
devices may request services available from other servers or devices and,
accordingly, Tran’s base station receives requests for information or services
from the devices registered with it, obtains the requested information or
service and transmits the responsive information or service back to the
monitoring devices. Accordingly, we disagree with Appellant.
Appellant also asserts “those of skill in the art would recognize patient
vitals monitoring devices to be something different from legacy EMR
systems” because such systems “store, and provide access on demand to,
historical vitals information collected from one or more prior visits or
appointments” whereas Tran’s vitals monitoring devices “simply track and
transmit information,” but “are not configured to keep a record, much less a
long, detailed history of measurements taken and provide on-demand access
to such historical information.” Appeal Br. 9–10; see also id. at 10 (“EMR
systems require particularized components, such as but not limited to, non-
transient storage mediums, to provide such features.”). Appellant’s
annotated version of Tran’s Figure 1, which is reproduced above, identifies
Tran’s vitals monitoring devices 8, 10, 40 as teaching the first and second
legacy EMR systems, the base stations 20 as teaching the first and second
EMR appliances, and remote server 200 as teaching the third EMR
appliance. Appellant argues that, in such a mapping, Tran’s system does not
include the recited third legacy EMR system. Reply Br. 3–5.
We agree with and adopt the Examiner’s findings regarding the
recited “legacy electronic medical record system[s].” As the Examiner
finds, “[t]he patient monitoring devices of Tran ‘capture patient information’
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[0099] and have ‘memory size, processing capacity, and supported protocols
and connectivity’ [0071].” Ans. 4; see also Appeal Br. 7 (“Tran essentially
teaches a series of patient vitals monitoring devices which transmit vitals
information”). Contrary to Appellant’s assertion that Tran’s vitals
monitoring devices “simply track and transmit information,” Appeal Br. 10,
Tran discloses that the monitoring devices also store the collected
information indefinitely—i.e., at least until the devices connect to a network.
E.g., Tran ¶¶ 247, 279. Furthermore, consistent with Appellant’s
construction of a legacy EMR system as a system that can provide on-
demand access to historical vitals information, Tran discloses that authorized
individuals may access information from the monitoring devices on demand.
E.g., Tran ¶¶ 71 (disclosing a base station may tailor requests from “a doctor
who polls the server 200 on the status of the patient” to the individual
monitoring devices before relaying the tailored requests to the respective
devices); 80–88 (disclosing a process by which a cell phone requests
application data regarding EKG information, the base station searches for a
device that can provide that information, relaying the request to the
identified device to request information, the device capturing the EKG data
and sending it to the base station, then the base station reformatting the data
and sending it to the requesting cell phone via SMS (short message service)),
89–99 (disclosing a process in which a doctor at a clinic requests data from a
server that forwards the request to a base station; the base station finds,
forwards the request to, and receives a response from a responsive device;
the base station reformats and forwards the data to the clinic). In
combination with Tran’s disclosure that devices may store collected
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information, Tran at least suggests that this on-demand information may
include both real-time and historical vitals information.
Finally, it is not clear whether Appellant’s annotated Figure 1 is
consistent with the Examiner’s findings. As Appellant initially noted, the
rejection apparently finds “that the patient vitals monitoring devices read
onto the claimed legacy electronic medical records (‘EMR’) systems, and
that the base stations read onto the claimed EMR appliances.” Appeal Br. 7.
Thus, contrary to Appellant’s annotations, the recited third EMR appliance
would be taught by another one of the multiple base stations and the recited
third legacy EMR system would be taught by one of the various other
monitoring devices. Nevertheless, accepting Appellant’s understanding
depicted in the annotated version of Tran’s Figure 1 in which remote server
200 teaches or suggests the recited third EMR appliance, authorized third
party 210 (i.e., “doctor, . . . hospital, nursing home, call center, etc.”) teaches
or suggests the recited third legacy EMR system. As Appellant explains in
the Specification’s background, it was well-known that “a physician’s office
may have a first legacy system that is incompatible with a second legacy
system at a hospital.” Spec. ¶ 4. Accordingly, the doctor, hospital, nursing
home, or other third party depicted in Figure 1 at least suggests a legacy
EMR system through which the doctor or other authorized third party
accesses the medical records.
For the reasons discussed above, we are not persuaded the Examiner
erred in rejecting claim 1 as obvious over the cited art. Accordingly, we
sustain the rejection of claim 1 under 35 U.S.C. § 103 as obvious over Tran,
Canessa, Kilgore, and Jackson.
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DECISION SUMMARY
Claim(s)
Rejected
35 U.S.C. § References/Basis Affirmed Reversed
1 103 Tran, Canessa,
Kilgore, Jackson
1

RESPONSE
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