Ex Parte Lorsch

Patent Trial and Appeal Board

Dec 10, 2018

14512745 (P.T.A.B. Dec. 10, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/512,745 10/13/2014
133690 7590 12/12/2018
Goodhue, Coleman & Owens, P.C.
12951 University Ave
Suite 201
Clive, IA 50325
FIRST NAMED INVENTOR
Robert H. Lorsch
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.
MMR-P022 3162
EXAMINER
RAPILLO, KRISTINE K
ART UNIT PAPER NUMBER
3626
NOTIFICATION DATE DELIVERY MODE
12/12/2018 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@goodhue.com
eofficeaction@appcoll.com
USPTO@dockettrak.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ROBERT H. LORSCH
Appeal2017-010566 1
Application 14/512,745
Technology Center 3600
Before MURRIEL E. CRAWFORD, MICHAEL W. KIM, and
PHILIP J. HOFFMANN, Administrative Patent Judges.
CRAWFORD, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
This is an appeal from the final rejection of claims 1-17. We have
jurisdiction to review the case under 35 U.S.C. §§ 134(a) and 6(b ).
The invention relates generally to online medical records. Spec. 1: 13.
Claim 1 is illustrative:
1 The Appellant identifies MyMedicalRecords, Inc. as the real party in
interest. Appeal Br. 5.
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Application 14/512,745
1. A method for providing emergency access to personal health
information of a patient in case of emergency, the method
compnsmg:
maintaining a set of personal health information for the
patient on a computer readable storage medium of a server;
providing a user interface to the patient for accessing and
controlling the set of personal health information using a
computing device in operative communication with the server
over a network;
receiving from the patient and through the user interface
instructions specifying a subset of the personal health
information to display in case of emergency;
displaying on a screen display a screen element indicative
of an emergency;
receiving, from a person, a selection of the screen element
indicative of an emergency, wherein the receiving of the
selection of the screen element indicative of the emergency
causes the server, through the network, to provide an online form
to collect contact information from the person;
collecting contact information from the person making the
selection of the screen element indicative of the emergency and
through the online form and receiving the emergency access to
the subset of the personal health information; and
after receiving the selection of the screen element
indicative of the emergency and after collecting the contact
information, selectively providing access to the subset of the
personal health information from the server.
The Examiner rejected claims 1-17 under 35 U.S.C. § 101 as directed
to ineligible subject matter in the form of abstract ideas.
The Examiner rejected claims 1, 3, 4, 8, 9, 11, and 12 under 35 U.S.C.
§ I03(a) as unpatentable over Mok et al. (US 7,647,320 B2, iss. Jan. 12,
2010) ("Mok") and Ricci (US 2005/0128091 Al, pub. June 16, 2005).
The Examiner rejected claims 2, 5-7, 10, and 13-15 under
35 U.S.C. § I03(a) as unpatentable over Mok, Ricci, and Trice
(US 2002/0120470 Al, pub. Aug. 29, 2002).
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Application 14/512,745
The Examiner rejected claims 16 and 17 under 35 U.S.C. § I03(a) as
unpatentable over Mok, Ricci, and Foladare et al. (US 2009/0176476 Al,
pub. July 9, 2009) ("Foladare").
We AFFIRM.
ANALYSIS
Patentable subiect matter
An invention is patent-eligible if it claims a "new and useful process,
machine, manufacture, or composition of matter." 35 U.S.C. § 101. The
Supreme Court, however, has long interpreted § 101 to include implicit
exceptions: "[l]aws of nature, natural phenomena, and abstract ideas" are
not patentable. E.g., Alice Corp. Pty. Ltd. v. CLS Bank Int 'l, 134 S. Ct.
2347, 2354 (2014).
In determining whether a claim falls within the excluded category of
abstract ideas, we are guided in our analysis by the Supreme Court's two-
step framework, described in Mayo and Alice. Id. at 2355 (citing Mayo
Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 76-78 (2012)).
In accordance with that framework, we first determine whether the claim is
"directed to" a patent-ineligible abstract idea. See Alice, 134 S. Ct. at 2356
("On their face, the claims before us are drawn to the concept of
intermediated settlement, i.e., the use of a third party to mitigate settlement
risk."); Bilski v. Kappas, 561 U.S. 593, 611 (2010) ("Claims 1 and 4 in
petitioners' application explain the basic concept of hedging, or protecting
against risk."); Diamond v. Diehr, 450 U.S. 175, 184 (1981) ("Analyzing
respondents' claims according to the above statements from our cases, we
think that a physical and chemical process for molding precision synthetic
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Application 14/512,745
rubber products falls within the § 101 categories of possibly patentable
subject matter."); Parker v. Flook, 437 U.S. 584, 594--95 (1978)
("Respondent's application simply provides a new and presumably better
method for calculating alarm limit values."); Gottschalk v. Benson, 409 U.S.
63, 64 (1972) ("They claimed a method for converting binary-coded decimal
(BCD) numerals into pure binary numerals.").
The patent-ineligible end of the spectrum includes fundamental
economic practices, Alice, 134 S. Ct. at 2357; Bilski, 561 U.S. at 611;
mathematical formulas, Parker, 437 U.S. at 594--95; and basic tools of
scientific and technological work, Gottschalk, 409 U.S. at 69. On the patent-
eligible side of the spectrum are physical and chemical processes, such as
curing rubber, Diamond, 450 U.S. at 192, "'tanning, dyeing, making
waterproof cloth, vulcanizing India rubber, smelting ores,"' id. at 184 n. 7,
and a process for manufacturing flour, Gottschalk, 409 U.S. at 69.
If the claim is "directed to" a patent-ineligible abstract idea, we then
consider the elements of the claim-both individually and as an ordered
combination-to assess whether the additional elements transform the nature
of the claim into a patent-eligible application of the abstract idea. Alice, 134
S. Ct. at 2355. This is a search for an "inventive concept"-an element or
combination of elements sufficient to ensure that the claim amounts to
"significantly more" than the abstract idea itself. Id.
In addition, the Federal Circuit has held that if a method can be
performed by human thought alone, or by a human using pen and paper, it is
merely an abstract idea and is not patent-eligible under § 101. CyberSource
Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1373 (Fed. Cir. 2011) ("[A]
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Application 14/512,745
method that can be performed by human thought alone is merely an abstract
idea and is not patent-eligible under§ 101.").
Claims involving data collection, analysis, and display are directed to
an abstract idea. Elec. Power Grp. v. Alstom S.A., 830 F.3d 1350, 1353
(Fed. Cir. 2016) (holding that "collecting information, analyzing it, and
displaying certain results of the collection and analysis" are "a farniliar class
of claims 'directed to' a patent-ineligible concept"); see also In re TL!
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).
Claims that recite an improvement to a particular computer
technology have been found patent eligible. See, e.g., McRO, Inc. v. Bandai
Namco Games Am. Inc., 837 F.3d 1299, 1314--15 (Fed. Cir. 2016)
( determining claims not abstract because they "focused on a specific
asserted improvement in computer animation").
The Examiner determines that the claims are directed to a method of
using categories to organize, store, and transmit information. Final Act. 2.
Additionally, the Examiner determines the claims involve collecting,
displaying, and manipulating data. Answer 3.
We are unpersuaded by the Appellant's argument that the claims are
not directed to organizing, storing, and transmitting information, because the
limitations of receiving a selection of a screen element indicative of an
emergency and providing access after receiving the selection are not
accounted for. Appeal Br. 14. The Appellant also argues that receiving
instructions from a user interface to select a subset of information to make
available when requested is more than the abstract idea to which the claim is
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determined to be directed, because it is "directed to a specific purpose."
Reply Br. 15.
Receiving and responding to a request for a category of saved
information is merely a way to organize and transmit some of the
information that is stored, by responding to a request for some of the data.
In addition, this step of receiving and responding to a subset of the data, and
classifying a subset of data as "emergency," is merely like other claims
found to be abstract, where "the gist of the claim involves a user entering a
request for access, looking up the rule for access, determining what
information is needed to apply the rule, obtaining that information, and then
applying the information to the rule to make a decision." Jericho Sys. Corp.
v. Axiomatics, Inc., 2015 WL 2165931, at *4 (N.D. Tex. May 7, 2015), aff'd,
642 Fed. Appx. 979 (Fed. Cir. 2016). The claim is also similar to those
found to be abstract as "an abstract process that includes (1) receiving
identity data from a device with a request for access to resources; (2)
confirming the authenticity of the identity data associated with that device;
(3) determining whether the device identified is authorized to access the
resources requested; and ( 4) if authorized, permitting access to the requested
resources." Prism Technologies LLC v. T-Mobile USA, Inc., 696 Fed. Appx.
1014, 1017 (Fed. Cir. 2017), cert. denied, 138 S. Ct. 689, 199 L. Ed. 2d 538
(2018).
Thus, in spite of the Appellant's arguments directed to the recitation
of setting aside a subset of information, or having a user request that
information, the claims are merely directed to abstract ideas of handling
data. See Elec. Power Grp., 830 F.3d at 1353.
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We are also unpersuaded that the claims are not directed to abstract
ideas because they do not preempt all ways of collecting, displaying, and
manipulating data. Reply Br. 15-16. "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.
The Appellant has therefore failed to show error in the Examiner's
rejection of claims as being directed to abstract ideas, and not reciting
something more that transforms the abstract ideas into eligible subject
matter. For this reason, we sustain the rejection of claims under 35 U.S.C. §
101.
Obviousness Rei ection of Claims 1. 3. 4. 8. 9. 11. and 12
Each of independent claims 1 and 9 recites language substantially
similar to the following steps:
displaying on a screen display a screen element indicative
of an emergency;
receiving, from a person, a selection of the screen element
indicative of an emergency, wherein the receiving of the
selection of the screen element indicative of the emergency
causes the server, through the network, to provide an online form
to collect contact information from the person;
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Application 14/512,745
after receiving the selection of the screen element
indicative of the emergency and after collecting the contact
information, selectively providing access to the subset of the
personal health information from the server.
The Examiner relies on Ricci as disclosing these steps, at paragraphs
7, 8, 14, 15, and 20. Final Act. 4--5. We are persuaded by the Appellant's
arguments that Ricci fails to disclose any of the steps. Appeal Br. 20-23.
Ricci is directed to a method of storing and transporting personal
medical information on a personal storage device in word processing or PDF
format, so a medical provider can access it by using the device on a
computer, via a "menu application." Ricci ,r 14. Ricci, thus, may present a
screen, but selection of an item on the screen does not cause an online form
for collecting contact information to appear, the receipt of which causes
access to the information, as claimed. Instead, when medical personnel need
the information on the device ( such as a USB memory device, per Ricci' s ,r
15), the information is just accessed by computer. Id. ,r 22.
Thus, the Examiner has filed to support adequately that Mok and
Ricci disclose the subject matter of the independent claims. For this reason,
we do not sustain the rejection of the claims as obvious over Mot and Ricci.
Obviousness Reiections of Claims 2. 5-7. 10. and 13-17
The Examiner does not establish on the record that Trice or Foladare
remedy the shortcomings in the combination of Mok and Ricci. For this
reason, we do not sustain the rejections that additionally rely on these
references.
DECISION
We affirm the rejection of claims 1-17 under 35 U.S.C. § 101.
We reverse the rejections of claims 1-17 under 35 U.S.C. § 103(a).
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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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