Ex Parte Dvorak et al

Patent Trial and Appeal Board

Oct 31, 2016

12557968 (P.T.A.B. Oct. 31, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/557,968 09/11/2009
91065 7590 11/02/2016
Epic
c/o Boyle Fredrickson S.C.
840 North Plankinton A venue
Milwaukee, WI 53203
FIRST NAMED INVENTOR
Carl D. Dvorak
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.
E09968US (1517.048) 5465
EXAMINER
KANAAN, MAROUN P
ART UNIT PAPER NUMBER
3686
NOTIFICATION DATE DELIVERY MODE
11/02/2016 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@boylefred.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte CARL D. DVORAK, BRIAN M. WEISBERGER,
MATTHEW D. SIDNEY, JANET L. CAMPBELL,
DANIEL J. DONOGHUE, JOHN JI-HOON KIM,
BHAVIK SHAH, and LARRY G. IRWIN II
Appeal2014-006934
Application 12/557,968 1
Technology Center 3600
Before HUBERT C. LORIN, KENNETH G. SCHOPPER and
ROBERT J. SILVERMAN, Administrative Patent Judges.
SILVERMAN, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
The Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's
decision rejecting claims 1-12. We have jurisdiction under 35 U.S.C.
§ 6(b).
We AFFIRM.
1 According to the Appellants, the real party in interest is Epic Systems
Corporation. Appeal Br. 2.
Appeal2014-006934
Application 12/557 ,968
ILLUSTRATIVE CLAIM
1. A computerized system allowing intercommunication
of patients with respect to the treatment of their diseases
compnsmg:
an electronic medical record database providing
electronic medical records of a set of patients as developed by
healthcare professionals, the data in electronic medical records
being updated by the healthcare providers in the course of
treatment of a patient informing diagnoses and
recommendations;
an anonymous electronic medical record database
providing a copy of the electronic medical records of the
electronic medical record database wherein copying the
electronic medical records includes removing patient
identification from each record and linked to an anonymous
identifier for each patient;
a set of terminal devices accessible to the patients
allowing for the electronic exchange of information through a
display and data input device;
a server system communicating between the anonymous
medical record database and the terminal devices and executing
the stored program contained in computer readable memory to:
( 1) generate and provide unique authentication
information including the anonymous identifier for the patient's
electronic medical record in the electronic medical record
database;
(2) associate the unique authentication information with
the electronic medical record in the anonymous electronic
medical database copied from the patient's electronic medical
record in the electronic medical record database;
(3) allow an authenticated connection by a given patient
to the server system through a terminal device and associating
the connection with the anonymous identifier;
( 4) permit authoring by the given patient of a patient site
viewable on a terminal device incorporating medical records
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Application 12/557 ,968
from the anonymous medical record database associated with
the anonymous identifier; and
( 5) identifying to the given patient other patient sites for
other patients having shared medical conditions according to a
predetermined clustering of data of the anonymous medical
record database.
REJECTION
Claims 1-12 are rejected under 35 U.S.C. § 103(a) as unpatentable
over Onuma et al. (US 2005/0236474 Al, pub. Oct. 27, 2005) ("Onuma")
and Poulin et al. (US 2009/0265316 Al, pub. Oct. 22, 2009) ("Poulin").
FINDINGS OF FACT
We rely upon and adopt the Examiner's findings stated in the Final
Office Action at pages 3---6 and the Answer2 at pages 3-5. Additional
findings of fact may appear in the Analysis below.
ANALYSIS
Independent Claim 1
and Dependent Claims 2 and 7
The Appellants (Appeal Br. 13) contend that the Examiner erred in
rejecting claim 1 because Poulin neither teaches nor suggests "generat[ing]
and provid[ing] unique authentication information including the anonymous
identifier for the patient's electronic medical record in the electronic medical
record database," per claim 1. In so arguing, the Appellants argue that the
2 The text referenced herein refers to the Examiner's Answer dated April 2,
2014. The Examiner provided a corrected coversheet for the Answer on
April 16, 2014.
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Application 12/557 ,968
claimed "authentication information" must be stored in the "electronic
medical record." Id.
Yet, claim 1 includes no such requirement and the Appellants do not
indicate whatever claim language might so mandate. In addition, the
Appellants' proposed construction is contrary to the Specification, which
explains that "the system-selected identification number 26 and PIN 28 need
not be contained in" the "logical record 18" that is included in the
"electronic medical records 16." Spec. i-fi-f 19, 23 (emphasis added).
Furthermore, the Examiner's Answer correctly finds that Poulin
teaches the identified limitation. Answer 3--4 (citing Poulin i-fi-f 13-14, 20-
21 ). In particular, Poulin describes "user authentication credentials used to
selectively allow access to stored data" and "identification hashes or keys for
patients and medical practitioners so as to provide a unique ID for patients
and medical practitioners." Poulin i120.
Accordingly, the Appellants' argument is not persuasive of error in
the rejection of claim 1.
With regard to dependent claims 2 and 7, the Appellants rely entirely
upon the argument presented for independent claim 1. Appeal Br. 13.
Therefore, the rejection of claims 1, 2, and 7 under 35 U.S.C. § 103(a) is
sustained.
Dependent Claims 3-6
Claims 3-6 depend (either directly or indirectly) from claim 1 and are
subject to the Appellants' argument regarding claim 1. See Appeal Br. 13.
As explained above, that argument is unpersuasive.
In addition, the Appellants contend that the Examiner erred in
rejecting claims 3---6, because the cited prior art references do not teach or
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Application 12/557 ,968
suggest "multiple databases and thus cannot be said to teach or suggest
controlling an operation based on information transferred during an
anonymous copying between the databases." Id. at 14.
In response, according to the Examiner, "the features upon which
applicant relies (i.e., multiple databases and controlling an operation based
on information transferred during an anonymous copying between the
databases) are not recited in the rejected claim(s)," and, in any event, the
Examiner states that Poulin discloses that an "electronic medical record
database (30) copies patient identification data by de-identifying patient
information" and "[t]he de-identified patient data can be transmitted to a
central processor 50," thus teaching the limitation in question. Answer 4
(citing Poulin i-fi-f 12-13, Figs. 1-2). See also Final Action 4 (citing Poulin
i-fi-f 13-14, 21, Fig. 2).
Claim 1 - and, thus, claims 3---6, which depend therefrom (either
directly or indirectly from claim 1) - requires two databases ("an electronic
medical record database" and "an anonymous electronic medical record
database"). However, contrary to the Appellants' argument (Appeal Br. 14),
the portions of Poulin (paragraphs 12-14, Figures 1-2) cited by the
Examiner teach copying patient medical record data from one database to
another. Indeed, the Appellants' assertion is contradicted by the statement
earlier in the Appeal Brief that "Poulin, as recognized by the Examiner,
teaches a 2nd electronic medical database." Appeal Br. 13 (regarding claims
1, 2, 7).
In addition, we agree with the Examiner's characterization (see
Answer 4) of the Appellants' argument, to the extent that none of claims 3-6
requires controlling an operation based on information transferred during
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copying between databases (see Appeal Br. 19--20 (Claims App.)). The
Appellants do not explain how the language of claims 3---6 constitutes the
requirement alleged.
Further, although the Appeal Brief (on page 14) quotes portions of
claims 3-6, the Appeal Brief offers no argument directed to the quoted claim
language. "A statement which merely points out what a claim recites will
not be considered an argument for separate patentability of the claim."
37 C.F.R. §41.37(c)(l)(iv). Further, the Appeal Brief does not address the
analysis in the Final Office Action (pages 3---6) that maps the claims to
identified portions of the cited prior art.
Accordingly, the Appellants' argument is unpersuasive, such that the
rejection of claims 3---6 under 35 U.S.C. § 103(a) is sustained.
Independent Claim 8
and Dependent Claims 9, 11, and 12
The Appellants contend that the Examiner erred in rejecting
independent claim 8 because:
nothing in either Onuma or Poulin teaches or suggests multiple
databases copied and anonymized as described herein. Further,
nothing in either of these references teaches or suggests such an
anonymized database in which anonymous medical records are
linked to an anonymous identifier for each patient and an
anonymous identifier for the patient's physician.
Appeal Br. 15.
Yet, no language of claim 8 requires "multiple databases copied and
anonymized" (id.) and the Appellants identify none. The Appellants'
discussion of claims 8, 9, 11, and 12 begins by quoting language that
appears in claim 1 - not claim 8. Id. at 14--15.
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As to the issue of anonymous identifiers, claim 8 recites:
an anonymous electronic medical record database
including electronic medical records ... having all information
for identifying the patients removed, the records being linked to
a patient anonymous identifier for each patient and a physician
anonymous identifier for the patient's physician.
Appeal Br. 20-21 (Claims App.).
According to the Examiner, Poulin teaches this feature. See Answer 5
(citing Poulin i-f 19 and the Examiner's discussion of claim 1, at Answer 3--4,
which cites Poulin i-fi-113-14, 20-21).
We agree with the Examiner's finding because Poulin discloses
removing information from medical records that identifies patients and
physicians and creating unique identification hashes or keys for patients and
physicians. Poulin i-fi-113, 19, 20.
With regard to dependent claims 9, 11, and 12, the Appellants rely
entirely upon the arguments presented for independent claim 8. Appeal Br.
15. Therefore, the rejection of claims 8, 9, 11, and 12 under 35 U.S.C.
§ 103(a) is sustained.
Dependent Claim 10
Claim 10 recites: "The computerized system of claim 9, further
including allowing searching based on a treatment plan."
Claim 10 depends indirectly from claim 8 and is subject to the
Appellants' arguments regarding claim 8. See Appeal Br. 15. As explained
above, those arguments are unpersuasive.
In addition, the Appellants contend that the Examiner erred in
rejecting claim 10 because Onuma and Poulin neither teach nor suggest
searching by a given physician of the anonymous medical
record database according to search criteria entered by the
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given physician to provide a search result of patients based
specifically on a treatment plan in an electronic medical record.
Id. at 16.
The Appellants' argument is unpersuasive because the Examiner
correctly finds that Poulin teaches the identified limitation. Answer 5 (citing
Poulin i-fi-14, 15-16). For example, Poulin discloses that a physician may
query a database of anonymized medical records based upon "treatment for a
patient ... with a specific ailment." Poulin i-f 16.
The rejection of claim 10 under 35 U.S.C. § 103(a) is sustained.
DECISION
We AFFIRM the Examiner's decision rejecting claims 1-12.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED
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