Ex Parte Karpf et al

Patent Trial and Appeal Board

Mar 18, 2013

11645067 (P.T.A.B. Mar. 18, 2013)

UNITED STATES PATENT AND TRADEMARKOFFICE
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 INV001Ronald S. Karpf K1620.0001/P001-C 7634
24998 7590 03/18/2013
DICKSTEIN SHAPIRO LLP
1825 EYE STREET NW
Washington, DC 20006-5403
EXAMINER
KUDDUS, DANIEL A
ART UNIT PAPER NUMBER
2164
MAIL DATE DELIVERY MODE
03/18/2013 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.

BUI, Administrative Patent Judge.

DECISION ON APPEAL
Appellants1 seek our review under 35 U.S.C. § 134(a) of the
Examiner’s final rejections of claims 9-18 and 23-25.2 We have jurisdiction
under 35 U.S.C. § 6(b).
We AFFIRM.3

1 Real Party in Interest is Ronald S. Karpf & Arthur B. White.
2 Claims 1-8 and 19-22 have been withdrawn from consideration and are not
on appeal.
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STATEMENT OF THE CASE
Appellants’ Invention
According to Appellants, their invention relates to an electronic
medical records (EMR) system including a treatment instructions
database for storing electronic medical records and information
concerning patients, medical personnel, medical encounters, and other
related information. Spec. ¶ [0004]. The EMR system is accessible to:
(1) a medical personnel to enter treatment instructions at the time of the
examination and (2) a patient to allow the patient to review the patient’s
records at any time subsequent to the examination. Id., ¶ [0005], and
Abstract.
Claims on Appeal
Claims 9 and 23 are the only independent claims on appeal. Claim 9
is representative of the invention, as reproduced below with disputed
limitations emphasized:

9. A method of using an electronic medical records
(EMR) system, the method comprising:

a) forming an EMR database comprising:
al) for at least one patient registered to use the EMR
system, storing: patient identification data; patient password;
and patient personal identification number (PIN);

3 Our decision refers to Appellants’ Appeal Brief filed December 10, 2009
(“App. Br.”); Reply Brief filed April 8, 2010 (“Reply Br.”); Examiner’s
Answer mailed March 2, 2010 (“Ans.”); Final Office Action mailed July 16,
2009 (“FOA.”); and the original Specification filed December 26, 2006
(“Spec.”).
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a2) for at least one medical practitioner registered to use
the EMR system, storing: medical personnel identification data;
and medical personnel password;
a3) for at least one medical encounter between a patient
and medical personnel, storing medical encounter data relating
to the at least one medical encounter, wherein the medical
encounter data includes information related to the at least one
reason for the medical encounter, and at least one diagnosis
by medical personnel corresponding to the medical encounter;

b) allowing access to the EMR database through a
patient program, in which an authorized patient has access
only to information related to the authorized patient, wherein
the authorized patient is assigned a patient PIN in the EMR
database for controlling access to information in the EMR
database related to the patient; and

c) allowing access to the EMR database through a
medical personnel data entry program, in which authorized
medical personnel may access records related to a given patient
only upon entry of input data corresponding to the patient PIN
assigned to the given patient.

Evidence Considered
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Mayaud US 5,845,255 Dec. 1, 1998

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Examiner’s Rejections
(1) Claims 23-25 stand rejected under 35 U.S.C. § 112, first
paragraph, as failing to comply with the written description requirement.4
FOA. 8; App. Br. 7-8.
(2) Claims 9-18 and 23-25 stand rejected under 35 U.S.C. § 112,
second paragraph, as being indefinite. Ans. 3; App. Br. 8-9.
(3) Claims 9-18 and 23-25 stand rejected under 35 U.S.C. § 102(e)
as being anticipated by Mayaud. Ans. 3-10; App. Br. 9-14.

ISSUES
Based on Appellants’ arguments, the dispositive issues on appeal are:
(1) Whether the Examiner has erred in rejecting claims 9-18 and
23-25 under 35 U.S.C. § 112, second paragraph, as being indefinite?
(2) Whether the Examiner has erred in rejecting claims 9-18 and
23-25 under 35 U.S.C. § 102(e) as being anticipated by Mayaud?

ANALYSIS
We have reviewed the Examiner’s rejections in light of Appellants’
arguments that the Examiner has erred. Only those arguments actually made
by Appellants in the Appeal Brief have been considered. See 37 C.F.R. §
41.37(c)(1)(vii).

4 The 35 U.S.C. § 112, first paragraph rejection directed to claims 23-25 has
been withdrawn as per Examiner’s Answer, page 11.
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§ 112, Second Paragraph, Rejection of Claims 9-18 and 23-25
Appellants argue that the optional terms “may” and “should” as
recited in claims 9, 15, 17 and 23 are not ambiguous and are consistent with
the permissible use of alternative formats that use terminology such as "OR"
and “OPTIONALLY," as discussed in M.P.E.P. §§ 2173.05(h)(II) and (III).
App. Br. 8-9. In response thereto, the Examiner asserts that these optional
terms render these claims vague and indefinite. Ans. 10. According to the
Examiner, if the medical personnel may not access or review, then nothing
would happen and none of the steps in the claims would work. Id. 10-11.
We disagree with the Examiner. Claims 9, 15, 17 and 23 at issue,
albeit broad, are not indefinite. The mere fact that performance of the
recited steps is dependent on conditions which may not occur does not
establish indefiniteness. See Application of Venezia, 530 F.2d 956, 189
U.S.P.Q. 149 (C.C.P.A. 1976).
For this reason, we do not sustain the rejection of claims 9-18 and 23-
25 under 35 U.S.C. § 112, second paragraph.

§ 102(e) Rejection of Claims 9-18 and 23-25
With respect to independent claim 9, Appellants contend that Mayaud
fails to disclose:
(1) a ‘method of using an electronic medical records
(EMR) system’ in which a patient (and not simply a patient's
doctor) has access to the EMR system” (App. Br. 9; Reply Br.
4-6) (emphasis in original);

(2) “‘patient password’ that would be required for the
patient to gain access to its records or the system as a whole ...
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provide no hint that Mayaud ‘anticipated’ (or even
contemplated) allowing a patient to access Mayaud’s
prescription system” (App. Br. 10) (emphasis in original); and

(3) specific information about individual "medical
encounters" between a patient and medical personnel (e.g., a
doctor): "for at least one medical encounter between a patient
and medical personnel, storing medical encounter data relating
to the at least one medical encounter, wherein the medical
encounter data includes information related to the at least one
reason for the medical encounter, and at least one diagnosis by
medical personnel corresponding to the medical encounter."

(App. Br. 10-11; Reply Br. 6-7).

However, we are not persuaded by Appellants’ arguments. First, and
as correctly found by the Examiner, Mayaud discloses an electronic
prescription creation system in which a patient’s electronic medical record
(EMR) is maintained, and in addition to physicians or other health care
professionals, the patient can also be granted access to the EMR.
Specifically, Mayaud describes:
Patient record access codes can, in selected instances, be
patient provided, or granted by intelligent security control
cards, having been furnished to the patient by a system
administrator, or agent, prior to the physician encounter.
Physician or other user access to a patient's record, or to
sensitive details thereof, can thereby be restricted to a need-to-
know basis. Access by third parties to physician related data
can be similarly protected.

Ans. 3-4; also see Mayaud, col. 10, ll. 20-27 (emphasis added). In other
words, a patient is also authorized to access his or her EMR, via Mayaud’s
prescription creation system. As such, and contrary to Appellants’
contention, we agree with the Examiner’s findings that a patient is
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authorized access to Mayaud’s prescription creation system. Ans. 12-13;
Mayaud, col. 10, ll. 12-15. Second, and in considering Mayaud, it is proper
to take into account not only specific teachings of Mayaud, but also the
inferences which one skilled in the art would reasonably be expected to draw
therefrom. See In re Preda, 401 F.2d 825, 826-27 (CCPA 1968). In this
regard, once a patient is authorized access to Mayaud’s prescription creation
system, “patient passwords” or other forms of password protection operating
hierarchically at one or more levels are also provided, with varying degrees
of access according to the user’s level of authorization, as desired. Ans. 14-
15; also see Mayaud, col. 10, ll. 12-19 and 44-51.
Third, and as correctly found by the Examiner, Mayaud also discloses
storing a patient history file and medical record, including diagnostic
information to assist physicians or health care providers to make informed
decisions regarding a patient. Ans. 15-16; also see Mayaud, col. 8, ll. 21-23
and 33-41; col. 14, ll. 40-65. As such, we agree with the Examiner’s
findings that Mayaud discloses specific type of information (content) about
individual “medical encounters” between a patient and medical personnel
(e.g., a doctor): “for at least one medical encounter between a patient and
medical personnel, storing medical encounter data relating to the at least one
medical encounter, wherein the medical encounter data includes information
related to the at least one reason for the medical encounter, and at least one
diagnosis by medical personnel corresponding to the medical encounter,”5 as
recited in claim 9.

5 Even assuming arguendo that Mayaud does not disclose specific type of
information (content) about patient “medical encounters,” which we do not
believe, Appellants’ arguments are predicated on non-functional descriptive
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With respect to independent claim 23, Appellants further contend that
Mayaud also fails to disclose: (1) storing of a “patient password” used to
grant patient access to data, and (2) specific information about a given
“medical encounter” including: “at least one reason for the medical
encounter, and at least one diagnosis by medical personnel corresponding to
the medical encounter.” App. Br. 12-14; Reply Br. 9-11 (emphasis in
original). However, for reasons discussed supra, we do not find Appellants’
arguments persuasive.
For the reasons set forth above, we do not find error in the Examiner’s
position, and, therefore, sustain the Examiner’s anticipation rejection of
claims 9-18 and 23-25 based on Mayaud.

CONCLUSION
On the record before us, we conclude that the Examiner has erred in
rejecting claims 9-18 and 23-25 under 35 U.S.C. § 112, second paragraph, as
being indefinite. However, we conclude that the Examiner has not erred in

material, i.e., the content of a medical file or a medical record. The
informational content of non-functional descriptive material is not entitled to
weight in the patentability analysis. See In re Lowry, 32 F.3d 1579, 1583
(Fed. Cir. 1994) (“Lowry does not claim merely the information content of a
memory. . . Nor does he seek to patent the content of information resident in
a database.”). See also Ex parte Nehls, 88 USPQ2d 1883, 1887-90 (BPAI
2008) (precedential); Ex parte Curry, 84 USPQ2d 1272 (BPAI 2005)
(informative) (Federal Circuit Appeal No. 2006-1003, aff’d, Rule 36 (June
12, 2006)); Ex parte Mathias, 84 USPQ2d 1276 (BPAI 2005) (informative),
aff’d, 191 Fed. Appx. 959 (Fed. Cir. 2006). Accordingly, we do not find
Appellants’ arguments based on the content of the patient medical record to
be persuasive.
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rejecting claims 9-18 and 23-25 under 35 U.S.C. § 102(e) as being
anticipated by Mayaud.

DECISION
As such, we REVERSE the Examiner’s final rejections of claims 9-18
and 23-25 under 35 U.S.C. § 112, 2nd paragraph. However, we AFFIRM the
Examiner’s final rejection of claims 9-18 and 23-25 under 35 U.S.C. §
102(e).
Because we have affirmed at least one ground of rejection with
respect to each claim on appeal, the Examiner’s decision is affirmed. See 37
C.F.R. § 41.50(a)(1).
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv) (2011).

AFFIRMED

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