Ex Parte Lorsch

Patent Trial and Appeal Board

Oct 22, 2018

13858665 (P.T.A.B. Oct. 22, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/858,665 04/08/2013
133690 7590 10/24/2018
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.
P07286US15 9265
EXAMINER
LUBIN, VALERIE
ART UNIT PAPER NUMBER
3626
NOTIFICATION DATE DELIVERY MODE
10/24/2018 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 1
Appeal2018-002302
Application 13/858,665
Technology Center 3600
Before BIBHU R. MOHANTY, KENNETH G. SCHOPPER, and
MATTHEWS. MEYERS, Administrative Patent Judges.
MOHANTY, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
The Appellant seeks our review under 35 U.S.C. § 134 of the final
rejection of claims 1, 5, 8-11, 14, and 16-18 which are all the claims
pending in the application. We have jurisdiction under 35 U.S.C. § 6(b ).
SUMMARY OF THE DECISION
We AFFIRM.
1 Appellant identifies the real party in interest as MyMedicalRecords, Inc.
App. Br. 4.
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Application 13/858,665
THE INVENTION
The Appellant's claimed invention is directed to a method for users to
integrate health records and genomic testing (Spec., page 1, lines 16-18).
Claim 1, reproduced below, is representative of the subject matter on appeal.
1. A method comprising:
receiving genomics data of an individual from a laboratory
genomics testing facility into a genomics folders of a personal health
record stored on a server, the personal health record associated with a
password protected user account of the individual;
storing the genomics data in the genomics folders at the server;
providing a user interface associated with the password
protected user account to the individual, the user interface allowing
the individual to access the genomics data of the individual through
the user interface associated with the password protected user account,
wherein the user interface comprises a plurality of screens configured
to allow the user to collect, organize, and store health records of the
user including emergency information, laboratory test data including
the genomics data, vaccinations and prescription data;
analyzing, via an analysis system, the genomics data stored in
the genomics folder at the server with disease and health condition
data stored on a predictive medical database relating to the genomics
data to determine a susceptibility profile of the individual; and
generating the predictive medical report from the susceptibility
profile of the individual; and
placing the predictive medical report in the password protected
user account of the individual, wherein a second password may be
associated with the genomics folder to access the predictive medical
report and the genomics data when placed in the genomics folder.
THE REJECTIONS
The following rejections are before us for review:
1. Claims 1, 5, 8-11, 14, and 16-18 are rejected under 35 U.S.C.
§ 101 as being directed to non-statutory subject matter.
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Application 13/858,665
2. Claims 1, 5, and 8-10 are rejected under 35 U.S.C. § I03(a) as
unpatentable over Fey (US 2002/0052761 Al, published May 2, 2002
("Fey")) and Hirano (US 2005/0159984 Al, published July 21, 2005
(Hirano")).
3. Claims 11, 14, and 16 are rejected under 35 U.S.C. § I03(a) as
unpatentable over Fey and Gmelin (US 2005/0216311 A 1, published
September 29, 2005 ("Gmelin")).
4. Claim 17 is rejected under 35 U.S.C. § I03(a) as unpatentable
over Fey, Hirano, and Oesterheld (US 2013/0066649 Al, published March
14, 2013 ("Oesterheld")).
5. Claim 18 is rejected under 35 U.S.C. § I03(a) as unpatentable
over Fey, Gmelin, and Oesterheld.
FINDINGS OF FACT
We have determined that the findings of fact in the Analysis section
below are supported at least by a preponderance of the evidence. 2
ANALYSIS
Rejection under 35 USC§ 101
The Appellant argues that the rejection of claim 1 is improper because
the claim is not directed to an abstract idea and additionally provides
"significantly more" than any alleged abstract idea (App. Br. 12-18; Reply
Br. 11-19).
2 See Ethicon, Inc. v. Quigg, 849 F.2d 1422, 1427 (Fed. Cir. 1988)
( explaining the general evidentiary standard for proceedings before the
Patent Office).
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Application 13/858,665
In contrast, the Examiner has determined that the rejection of record is
proper (Final Act. 3, 4; Ans. 4---6).
We agree with the Examiner. Under 35 U.S.C. § 101, 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 an implicit exception: "[l]aws of
nature, natural phenomena, and abstract ideas" are not patentable. See, e.g.,
Alice Corp. Pty. Ltd. v. CLS Bank Int'!, 134 S. Ct. 2347, 2354 (2014).
In judging whether claim 1 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, 75-78 (2012)).
In accordance with that framework, we first determine whether the claim is
"directed to" a patent-ineligible abstract idea. If so, we then consider the
elements of the claim both individually and as "an ordered combination" to
determine whether the additional elements "transform the nature of the
claim" into a patent-eligible application of the abstract idea. Id. 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. The Court also stated that "the mere recitation of a
generic computer cannot transform a patent-ineligible abstract idea into a
patent-eligible invention." Id. at 2358.
Here, we determine that the claim is directed to the concept of storing
health data for an individual and analyzing the data to make a medical report
that can be accessed by the individual. This is a method of organizing
human activities and a fundamental economic practice long prevalent in our
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Application 13/858,665
system of commerce and is an abstract idea beyond the scope of§ 101. See
Electric Power Group, LLC v. Alstom S.A., 830 F.3d 1350, 1353 (Fed. Cir.
2016) where collecting information, analyzing it, and displaying results from
certain results of the collection and analysis was held to be an abstract idea.
See also In re Meyer, 688 F.2d 789, 795-96 (CCPA 1982), which held that
"a mental process that a neurologist should follow" when testing a patient
for nervous system malfunctions was not patentable.
We next consider whether additional elements of the claim, both
individually and as an ordered combination, transform the nature of the
claim into a patent-eligible application of the abstract idea, e.g., whether the
claim does more than simply instruct the practitioner to implement the
abstract idea using generic computer components. We conclude that it does
not. For example, the Specification at pages 8 and 9 describes using servers
and a computing device in a conventional manner for their known functions.
Considering each of the claim elements in tum, the function
performed by the computer system at each step of the process is purely
conventional. Each step of the claimed method does no more than require a
generic computer to perform a generic computer function.
For these above reasons the rejection of claim 1 is sustained. The
Appellant has provided the same or similar arguments for the remaining
claims, which are drawn to similar subject matter, and the rejection of these
claims is sustained as well.
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Application 13/858,665
Rejection under 35 USC§ 103(a)
The Appellant argues that the rejection of claim 1 is improper because
the genomics data is not non-functional descriptive material; fails to identify
a known method to combine Fey and Hirano to arrive at the claimed
invention; that the cited combination would require changing the principle of
operation of Fey; and that there is no reasonable expectation of success in
the combination (App. Br. 21-28; Reply Br. 27-30).
In contrast, the Examiner has determined the rejection to be proper
(Final Act. 4, 5; Ans. 6-8).
We agree with the Examiner and adopt the rationale for the rejection
of record. Here, in claim 1 the term "genomics data" is non-functional
descriptive material that does not change how the underlying substrate
functions. Fey also does disclose "genetic health data management system"
in the Abstract as used in the combination. We have reviewed the
Appellant's arguments that the cited combination is improperly made and
would change the operation of the Fey reference but disagree and determine
that the combination is properly made for the reasons set forth in the
rejection of record, and accordingly the rejection of claim 1 is sustained.
The Appellant provides similar arguments for claim 11, but also
further argues that Gmelin does not teach or suggest "sending a fax
comprising the lab data from the personal health record system and the
predictive medical report as specified by the user using the user interface of
the personal health record system" (App. Br. 32-34).
In contrast, the Examiner has determined that this claim limitation is
met in the combination Gmelin at para. 24 and known data transmission
(Final Act. 7).
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Application 13/858,665
We agree with the Examiner's determination that Gmelin teaches the
use of fax transmissions and that known data transmission techniques would
have been obvious in the cited combination in the rejection of record. The
Appellant's remaining arguments for claim 11 are similar to those made for
claim 1 addressed above. Here, we have reviewed the Appellant's
arguments for claim 11 but deem the rejection of record to be properly made
and adopt the rationale set forth in the rejection. Accordingly, the rejection
of record is sustained.
The Appellant has provided the same or similar arguments for the
remaining rejected claims and the rejection of these claims is sustained for
the same reasons given above.
CONCLUSIONS OF LAW
We conclude that Appellant has not shown that the Examiner erred in
rejecting claims 1, 5, 8-11, 14, and 16-18 under 35 U.S.C. § 101.
We conclude that Appellant has not shown that the Examiner erred in
rejecting claims 1, 5, 8-11, 14, and 16-18 under 35 U.S.C. § 103(a) as listed
in the Rejections section above.
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Application 13/858,665
DECISION
The Examiner's rejection of claims 1, 5, 8-11, 14, and 16-18 is
sustained.
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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