Ex Parte Lorsch

Patent Trial and Appeal Board

May 27, 2016

13246948 (P.T.A.B. May. 27, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/246,948 09/28/2011
133690 7590 06/01/2016
Goodhue, Coleman & Owens, P.C.
650 S. Prairie View Dr.
Suite 125, PMB #209
West Des Moines, IA 50266
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-P025 9005
EXAMINER
CHNG, JOY POH AI
ART UNIT PAPER NUMBER
3626
NOTIFICATION DATE DELIVERY MODE
06/01/2016 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@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
Appeal2014-001394
Application 13/246,948 1
Technology Center 3600
Before BIBHU R. MOHANTY, KENNETH G. SCHOPPER, and
ROBERT J. SILVERMAN, Administrative Patent Judges.
SILVERMAN, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
The Appellant appeals under 35 U.S.C. § 134(a) from the Examiner's
decision rejecting claims 1-19. We have jurisdiction under 35 U.S.C.
§ 6(b ).
We AFFIRM.
1 According to the Appellant, the real party in interest is MyMedicalRecords,
Inc. Appeal Br. 1.
Appeal2014-001394
Application 13/246,948
ILLUSTRATIVE CLAIM
1. A system, comprising:
a health care provider computer operatively connected
over a network to a web server, the web server providing a
health care provider portal and an applet stored on a computer
readable storage medium associated with the web server and
executed on the health care provider computer;
a health care practice management system of a health
care provider comprising patient and billing information and
executing on the health care provider computer, wherein the
health care provider computer configures the applet to connect
to the health care practice management system and its
associated patient and billing information;
the applet configured to map a patient name and a unique
patient identifier associated with the patient and billing
information of a first data format used by the health care
practice management system to a second data format associated
with the health care provider portal;
a patient bar code associated with the patient name and
the unique patient identifier, wherein the patient bar code is
printed on a cover sheet and associated with paper medical
records for a patient identified by the patient name and the
unique patient identifier and wherein the cover sheet and the
paper medical records are scanned and the paper medical
records stored in a database accessible by the web server as
scanned medical records;
the health care provider computer configured to access
the scanned medical records through the health care provider
portal and send to the health care provider portal the scanned
medical records associated with the patient name and the
unique patient identifier; and
a patient portal operatively connected to the web server
allowing the patient to access the scanned medical records
associated with the patient name and the unique patient
identifier of the patient.
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Application 13/246,948
CITED REFERENCES
The Examiner relies upon the following references:
Evans
Libin et al.
(hereinafter "Libin")
US 5,924,074 July 13, 1999
US 2007/0138253 Al June 21, 2007
Abousy et al. US 2009/0177495 Al July 9, 2009
(hereinafter "Abousy")
O'Brien US 2010/0004949 Al Jan. 7, 2010
Antonacci et al. US 2010/0086113 Al Apr. 8, 2010
(hereinafter "Antonacci")
Pritchett et al. US 2010/0205005 Al Aug. 12, 2010
(hereinafter "Pritchett")
REJECTIONS
I. Claims 1, 3, 4, 13, 14, and 17 are rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Pritchett, Abousy, Antonacci, and
O'Brien.
II. Claim 2 is rejected under 35 U.S.C. § 103(a) as being
unpatentable over Pritchett, Abousy, Antonacci, O'Brien, and Evans.
III. Claims 5 and 16 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Pritchett and Abousy.
IV. Claims 6, 7, and 15 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Pritchett, Abousy, and Libin.
V. Claims 8-12 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Pritchett, Abousy, and Antonacci.
VI. Claims 18 and 19 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Pritchett and Antonacci.
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Application 13/246,948
FINDINGS OF FACT
We rely upon and adopt the Examiner's findings stated in the Final
Action, at pages 2-21, and the Answer, at pages 3-10. Additional findings
of fact may appear in the Analysis below.
ANALYSIS
Rejection I
The Appellant presents four arguments alleging error by the Examiner
in rejecting claims 1 and 17.2 In view of the Appellant's grouping, claim 1
is selected for discussion. See 37 C.F.R. § 41.37(c)(l)(iv).
Each of the Appellant's arguments is unpersuasive, for the reasons set
forth below, such that the rejection of claims 1 and 17 is sustained. Because
the Appellant relies upon these same arguments in regard to claims 3, 4, 13,
and 14 (see Appeal Br. 14, 20, 22, 24), the rejection of these claims is also
sustained.
1. The Appellant Contends That The Examiner's Conclusion Of
Obviousness Relies Upon "Mere Conclusory Statements"
The Appellant contends that the Examiner does not provide factual
support for the conclusion of obvious, but instead provides "mere conclusory
statements." Appeal Br. 14. The Appellant points to a passage from the
Final Action, regarding the basis for combining the teachings of Pritchett
and Abousy and wherein the Examiner quoted from Abousy (Final Action 4
(quoting Abousy i-f 15) ), which the Appellant contends to be "a mere
2 With the exception of the Appellant's first argument (Appeal Br. 14--15)
(which does not specify its subject claims and thus appears to be directed to
all of claims 1, 3, 4, 13, 14, and 17), the Appellant addresses claims 1 and 17
together (id. at 15-20, 21-23, 23-24).
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Application 13/246,948
conclusory statement" lacking "articulated reasoning" that "falls far short of
the burden of 'factually supporting' a primafacie conclusion of
obviousness" (Appeal Br. 15 (citing MPEP § 2142)).
The Appellant's argument is unpersuasive because a prior art
reference may provide a reason for combining its teachings with those of
other references, and the Examiner specifically identified such a reason from
Abousy in making the rejection. See WMS Gaming Inc. v. International
Game Tech., 184 F.3d 1339, 1355 (Fed. Cir. 1999). Indeed, "any need or
problem known in the field of endeavor at the time of invention and
addressed by the patent can provide a reason for combining the elements in
the manner claimed." KSR Int 'l Co. v. Teleflex Inc., 550 U.S. 398, 420
(2007).
2. The Appellant Contends That The Cited References Do Not
Teach Two Different Systems On Two Separate Computers
Claim 1 recites, in relevant part: "a health care provider computer
operatively connected over a network to a web server, the web server
providing a health care provider portal" and "a health care practice
management system of a health care provider ... executing on the health
care provider computer."
The Examiner finds that Pritchett teaches these limitations of claim 1.
Final Action 2-3; see also Answer 6-7.
The Appellant contends that claim 1 requires "two different systems -
a 'health care practice management system' and a 'web server providing a
health care provider portal' - residing on two separate computers," which
the cited references fail to teach. Appeal Br. 16. However, the Appellant
does not persuasively identify any error in the Examiner's findings (Final
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Application 13/246,948
Action 2-3; Answer 6-7) that Pritchett teaches the corresponding subject
matter recited in claim 1, including a health care provider computer
operatively connected over a network to a web server. See Appeal Br. 15-
20; Reply Br. 10-15. Therefore, whatever the Appellant intends by the
phrases "two different systems" and "residing on two separate computers" -
which are not found in claim 1 - must not be commensurate with the scope
of the claim and, thus, the Appellant's arguments are unpersuasive. See In
re Self, 671F.2d1344, 1348 (CCPA 1982) ("[A]ppellant's arguments fail
from the outset because ... they are not based on limitations appearing in
the claims.")
Likewise, the Appellant contends that "[t]he Examiner improperly
relies upon O'Brien" (Appeal Br. 19), but does not identify any error in the
Examiner's findings in regard to O'Brien.
According to the Final Action (pages 5---6), 0 'Brien teaches the
following limitation of claim 1:
a health care practice management system of a health
care provider comprising patient and billing information and
executing on the health care provider computer, wherein the
health care provider computer configures the applet to connect
to the health care practice management system and its
associated patient and billing information.
The Appellant argues that "the billing information used by the O'Brien
system is entered by an individual and is not obtained from a health care
practice management system's patient and billing information." Appeal Br.
19 (citing O'Brien i-fi-171-73).
Yet, the Appellant fails to explain how such "en[ try] by an individual"
is inconsistent with the claim language or how it relates to the Appellant's
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assertion that claim 1 requires the "health care practice management system"
and the "web server providing a health care provider portal" to be two
different systems residing on two separate computers. Accordingly, this
argument is unpersuasive.
3. The Appellant Contends That The References
Do Not Teach Mapping A Patient Name And
A Unique Patient Identifier
Claim 1 recites the following limitation, regarding the claimed
"applet":
the applet configured to map a patient name and a unique
patient identifier associated with the patient and billing
information of a first data format used by the health care
practice management system to a second data format associated
with the health care provider portal.
The Examiner finds that Pritchett teaches this limitation of claim 1.
Final Action 3.
According to the Appellant, "no 'mapping' occurs because, in
Pritchett et al., the health practice management system and health care
provider portal are the same system" and "Pritchett et al is a large,
monolithic system which is intended to perform both the health care practice
management functions and the health care provider portal functions."
Appeal Br. 21, 22; see also Reply Br. 16, 17. The Reply Brief also repeats
the argument addressed hereinabove, i.e., that the "health care practice
management system" and "health care provider portal" of the claims must be
"two different systems residing on two separate computers." Reply Br. 17.
Yet, the Appellant identifies no feature of the claim limitation that is
not taught by Pritchett, per the Examiner's findings. According to the
Examiner, "the features upon which the [A ]ppellant relies ... are not recited
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Application 13/246,948
in the rejected claim(s)." Answer 8. We agree. Accordingly, the
Appellant's argument is not persuasive.
4. The Appellant Contends That The Rejection
Fundamentally Alters The Stated Purpose
Of The Pritchett Reference
The Appellant argues that "[a]dapting Pritchett et al. to meet the
limitations of the current claims would fundamentally change the principle
of operation and stated purpose" of the reference. Appeal Br. 23.
According to the Appellant, Pritchett combines the scheduling/billing
functions of a health care practice management system with a portal for
medical data and employs such a "combined infrastructure" to allow patients
to schedule appointments with health care providers. Id. at 23; see also
Reply Br. 19-20 (citing Pritchett i-f 49-50). The Appellant contends that
"using the Pritchett et al. reference to teach two separate systems ... would
terminate the scheduling functionality" because "scheduling data would not
be available to the web server." Appeal Br. 23; see also Reply Br. 20.
According to the Examiner, in response, the Appellant's argument
depends upon (and thus resolves into) the Appellant's contention that the
"health practice management system" and the "health care provider portal"
of claim 1 must be "two separate systems." Answer 9. Because the
Appellant's argument depends upon features not set forth in the claim
language, the argument is unpersuasive.
In addition, the Appellant (Appeal Br. 23) has not explained why, per
the Examiner's reliance on Pritchett' s teachings, "scheduling data would not
be available to the web server" taught by Pritchett. The Appellant's
argument is unpersuasive for this additional reason.
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Application 13/246,948
Rejection II-VI
The Appellant repeats and relies upon the same arguments addressed
above,3 in regard to Rejection II (arguments 1--4) (Appeal Br. 24--25),
Rejection III (arguments 1--4) (id. at 25-32), Rejection IV (arguments 1--4)
(id. at 32-33), Rejection V (arguments 1 and 3) (id. at 33-37), and Rejection
VI (arguments 1,4 2, and 4) (id. at 38--44). For the same or similar reasons
discussed above, in regard to Rejection I, Rejections II-VI (encompassing
claims 2, 5-12, 15, 16, 18, and 19) are sustained.
DECISION
We AFFIRM the Examiner's decision rejecting claims 1-19.
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
3 In the respective corresponding portions of the Appeal Brief, the Appellant
omits the portion of the second argument, discussed above, concerning the
O'Brien reference.
4 The Appellant's argument that the rejection of claims 18 and 19 relies upon
"mere conclusory statements" is further unsupported because it refers to a
rationale set forth in the Final Action for combining Abousy with other
references (Appeal Br. 38-39); however, the rejection of claims 18 and 19
does not rely upon Abousy (see Final Action 17-21 ).
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