Ex Parte Karpf et alDownload PDFPatent Trial and Appeal BoardSep 22, 201411645067 (P.T.A.B. Sep. 22, 2014) Copy Citation 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. 11/645,067 12/26/2006 Ronald S. Karpf K1620.0001/P001-C 7634 24998 7590 09/22/2014 DICKSTEIN SHAPIRO LLP 1825 EYE STREET NW Washington, DC 20006-5403 EXAMINER KUDDUS, DANIEL A ART UNIT PAPER NUMBER 2164 MAIL DATE DELIVERY MODE 09/22/2014 PAPER 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. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________________ Ex parte RONALD S. KARPF and ARTHUR B. WHITE ____________________ Appeal 2010-009172 Application 11/645,067 Technology Center 2100 ____________________ Before MAHSHID D. SAADAT, HUNG H. BUI, and MIRIAM L. QUINN, Administrative Patent Judges. PER CURIAM ORDER The United States Court of Appeals for the Federal Circuit vacated and remanded the Board’s Decision affirming the Examiner’s final rejection of claims 9-18 and 23-25 under 35 U.S.C. § 102(e) as being anticipated by Mayaud (US 5,845,255, Dec. 1, 1998). See In re Ronald S. Karpf, __ F.3d __, No. 2014-1035 (Fed. Cir. July 25, 2014). In particular, the Court found that: (1) although Mayaud discloses giving patients the ability to control who Appeal 2010-009172 Application 11/645,067 2 may access their information in an electronic medical records (EMR) system, Mayaud stops short of granting patients actual access to that information, and (2) Mayaud’s disclosure of “patient record access codes” is insufficient to support the finding regarding patient access to patient information. Id. at 9. In light of the Court’s decision, we return the application to the Examiner for further action not inconsistent with the Court’s findings and instructions. The Examiner may find additional facts from Mayaud, other prior art of record, or newly found references, to support the conclusion of obviousness that patients can also have direct access to their own medical information in such an EMR system consistent with the decision in KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398 (2007). For example, FIG. 16 shows an EMR system of Mayaud including a number of user devices 200 and 210 having data access control software and related data files installed therein for access to patient record source data by different types of users, including, for example, (1) patients, (2) care providers and (3) organizations. Decision on Request for Rehearing (“Req. Reh’g”) at 4 (citing Mayaud, col. 15, ll. 10-15; col. 45, ll. 18-25; col. 46, ll. 41-49; and col. 47, ll. 45-46). Appeal 2010-009172 Application 11/645,067 3 FIG. 16 of Mayaud is reproduced below: Fig. 16 of Mayaud shows an ERM system including a host computer facility 206 to provide intelligent services to user devices 200, 201, including data resources available by remote 3rd party databases 210 (e.g., HMOs, hospitals, insurance companies, drug companies, labs, and independent physician groups). As shown in FIG. 16 of Mayaud, the host computer facility 206 “provides data, or access to data, data processing and communications resources for users to draw upon via the user interface devices” 200, 201 and supports ancillary services including patient-directed data access control software to allow a patient at anyone of the user devices 200, 201 to access the database system and control or restrict doctors’ access to patient information by way of “Patient Record Access Codes.” See Mayaud, col. 7, ll. 30-32; col. 10, ll. 20-27; col. 46, ll. 32-49; and col. 47, ll. 45-46. Controlling access to medical information in an EMR system, whether doctors, lab technicians, pharmacies, hospitals, HMOs, insurance companies, or patients, as shown in Fig. 16 of Mayaud, is likely the product not of innovation, but of ordinary skill and common sense. KSR, 550 U.S. at 421. Appeal 2010-009172 Application 11/645,067 4 Accordingly, it is ORDERED that this application is returned to the Examiner for: 1) further actions and/or clarification of the record, as appropriate, for the reasons set forth above; and 2) for such further action as may be appropriate. IT IS SO ORDERED REMANDED lp Copy with citationCopy as parenthetical citation