Ex Parte Lorsch

Patent Trial and Appeal Board

Oct 16, 2018

13857234 (P.T.A.B. Oct. 16, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/857,234 04/05/2013
133690 7590 10/18/2018
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- P014 1026
EXAMINER
LUBIN, VALERIE
ART UNIT PAPER NUMBER
3626
NOTIFICATION DATE DELIVERY MODE
10/18/2018 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
Appeal2018-001079
Application 13/857 ,234
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, 8-13, and 15-20 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., a
subsidiary of MMRGlobal, Inc. App. Br. 4.
Appeal2018-001079
Application 13/857,234
THE INVENTION
The Appellant's claimed invention is directed to a method for
consumers to store and request their medical records with healthcare
providers (Spec., page 1, lines 17-20). Claim 1, reproduced below with the
numbering in brackets added, is representative of the subject matter on
appeal.
1. A method for providing a patient with the ability to
collect and manage personal health records, the method
compnsmg:
[ 1] dedicating a phone number to a user account of a
patient, the phone number serving as a unique identifier for the
user account of the patient in a health record system;
[2] electronically receiving a personal health record and
the phone number into the health record system at a server;
[3] identifying the personal health record as belonging to
the user account of the patient using the phone number so as to
associate the patient with the personal health record within the
health record system;
[ 4] providing electronic access to the personal health
record to the patient through a user account after the patient
logs in to the user account using the phone number;
[5] providing electronic access to messages for the
patient through an interactive voice response system which the
patient accesses through dialing the phone number associated
with the user account of the patient.
THE REJECTIONS
The following rejections are before us for review:
1. Claims 1-5, 8-13, and 15-20 are rejected under 35 U.S.C.
§ 101 as being directed to non-statutory subject matter.
2. Claims 1-5, 8-13, and 15-20 are rejected under 35 U.S.C.
§ 112, first paragraph, for failure to show possession of the invention.
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Application 13/857,234
3. Claims 1--4, 8-13, 15, and 17-20 are rejected under 35 U.S.C.
§ I03(a) as unpatentable over Essin (US 7,802,183 Bl, issued Sept. 21,
2010), Segal (US 2001/0041991 Al, issued Nov. 15, 2001), and James (US
2005/0119941 Al, published June 2, 2005).
4. Claims 5 and 16 are rejected under 35 U.S.C. § I03(a) as
unpatentable over Essin, Segal, James, and Morgan (US 2001/0041567 Al,
published Nov. 15, 2001).
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. 12-15, Reply
Br. 12-15).
In contrast, the Examiner has determined that rejection of record is
proper (Final Act. 2, 3, Ans. 3, 4).
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,
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 13/857,234
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. v. CLS Bankint'l, 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., 132 S. Ct. 1289, 1296-97
(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
collecting and managing personal health records for a user. This is a method
of organizing human activities, and is an abstract idea beyond the scope of
§ 101. See Electric Power Group, LLC v. Alstom S.A., 830 F.3d 1350 (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.
We next consider whether additional elements of the claim, both
individually and as an ordered combination, transform the nature of the
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Application 13/857,234
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 page 14 describes the use of generic
servers and network components 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.
Rejection under 35 USC§ 112 (first paragraph)
The Examiner has determined independent claims 1, 12, and 20 recite
"a server uniquely identifying a user account with a phone number" and that
the Specification fails to provide support for this (Final Act. 4 ).
In contrast, the Appellant argues that the Specification provides
support at Figure 4 and page 17, lines 21-26 (App. Br. 19-21).
We agree with the Appellant. Here the citation to the Specification at
page 17, lines 21-26, provides support for the cited claim limitation, and this
rejection is not sustained.
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Application 13/857,234
Rejections under 35 USC§ 103(a)
The Appellant argues that the rejection of claim 1 is improper because
the cited prior art of record does not disclose claim limitations requiring:
[ 4] providing electronic access to the personal health
record to the patient through a user account after the patient
logs in to the user account using the phone number;
[ 5] providing electronic access to messages for the
patient through an interactive voice response system which the
patient accesses through dialing the phone number associated
with the user account of the patient.
(App. Br. 22-25, Reply Br. 22-25).
In contrast, the Examiner has determined that the cited claim
limitation is disclosed by Essin at col. 4:31-35 and col. 5, lines 31-15;
James at paras. 64, 79, 80; Segal at paras. 106, 140 (Ans. 5-8).
We agree with the Appellant. James at para. 80 for example does
disclose using a user's telephone number as a "user identifier." However,
even if the user's phone number is used as a valid identifier it is not
specifically disclosed that it is used in the specific manner that claim
limitation [5], identified above, requires. For these reasons the rejections of
claim 1 and its dependent claims are not sustained. The remaining claims
include a similar limitation and the rejections of these claims are not
sustained as well.
CONCLUSIONS OF LAW
We conclude that Appellant has not shown that the Examiner erred in
rejecting claims 1-5, 8-13, and 15-20 under 35 U.S.C. § 101.
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Application 13/857,234
We conclude that Appellant has shown that the Examiner erred in
rejecting claims 1-5, 8-13, and 15-20 under 35 U.S.C. § 112, first
paragraph, and 35 U.S.C. § 103, as listed in the Rejections section above.
DECISION
The Examiner's rejection of claims 1-5, 8-13, and 15-20 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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