Ex Parte Lorsch

Patent Trial and Appeal Board

Oct 16, 2018

13856732 (P.T.A.B. Oct. 16, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/856,732 04/04/2013
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-P013 7155
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---000742
Application 13/856,732
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 1-17 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 ofMMRGlobal, Inc. (App. Br. 4).
Appeal2018---000742
Application 13/856,732
THE INVENTION
The Appellant's claimed invention is directed to a method for
consumers to request and store their medical records from 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 identifying a patient associated with a health record
within a personal health record system using a destination address, the
method comprising:
[ 1] creating, by the personal health record system, a personal
health record user account on a computer readable storage medium
within the personal health record system and accessible to the patient
via web;
[2] electronically receiving a health record of the patient sent
from outside of the personal health record system without a health
care provider logging into the system, the health record directed to the
destination address and the health record received at a computer
associated with the destination address;
[3] storing the health record in a computer readable storage
medium within the personal health record system;
[ 4] using the destination address to determine a user account of
the patient associated with the health record on the personal health
record system, the destination address serving as a unique identifier
for the patient, wherein the step of using the destination to determine
the user account of the patient associated with the health record is
performed by a computer; and
[ 5] providing access to the health record to the patient through
use of access information to log-in to the user account on the personal
health record system;
[ 6] wherein an alert is provided to the patient in response to the
electronic reception of the health record.
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Appeal2018---000742
Application 13/856,732
THE REJECTIONS
The following rejections are before us for review:
1. Claims 1-17 are rejected under 35 U.S.C. § 101 as being
directed to non-statutory subject matter.
2. Claims 1-17 are rejected under 35 U.S.C. § 112, first
paragraph, as failing to show possession of the claimed invention.
3. Claims 1-17 are rejected under 35 U.S.C. § I03(a) as
unpatentable over Segal (US 2001/0041991 Al, published Nov. 15, 2001) in
view of Malik (US 2001/0037219 Al, published Nov. 1, 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 evidence2.
ANALYSIS
Re} ection under 3 5 US. C. § 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. 12-22).
In contrast, the Examiner has determined that rejection of record is
proper (Final Act. 2-3; Ans. 2-3).
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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Appeal2018---000742
Application 13/856,732
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: "laws of nature,
natural phenomena, and abstract ideas" are not patentable. See, e.g., Alice
Corp. Pty Ltd. 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
creating, storing, and using a health record system for a patient 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
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Appeal2018---000742
Application 13/856,732
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
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. The Specification at pages 14 and 17 for example describes using
common computer components such as a web server, a fax/voice server, and
a web site 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. Thus, we
disagree with Appellant's argument that the claims amount to significantly
more than the abstract idea under Alice step two. See App. Br. 13-14; see
also Reply Br. 13-15.
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, 7, and 13 recite
"electronically receiving a health record ... without a health care provider
logging into the system" (Final Act. 3, 4, Ans. 19, 20).
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Appeal2018---000742
Application 13/856,732
In contrast, the Appellant argues that the Specification provides
support for this claim limitation at Figure 1, page 14, lines 1-9 and 22-25
(App. Br. 19).
We agree with the Appellant. Here the citation to the Specification at
page 14 lines 1-9 and 22-25 provides support for the cited claim limitation
by disclosing that the patient can use the computing device 109 to interact
with the web server 108 and that a personal health record can be faxed in to
the system. Accordingly, this rejection is not sustained.
Rejection under 35 USC§ 103(a)
The Appellant argues that the rejection of claim 1 is improper because
the claim does not disclose claim limitations [2] and [ 4] identified in the
claim above (App. Br. 21-26).
In contrast, the Examiner has determined that the cited claim
limitations are disclosed by Segal at paras. 21, 23, 106, 118, (Final Act. 4,
Ans. 5-7).
We agree with the Appellant. Claim limitations [2] and [ 4] require:
[2] electronically receiving a health record of the patient sent
from outside of the personal health record system without a health
care provider logging into the system, the health record directed to the
destination address and the health record received at a computer
associated with the destination address;
[ 4] using the destination address to determine a user account of
the patient associated with the health record on the personal health
record system, the destination address serving as a unique identifier
for the patient, wherein the step of using the destination to determine
the user account of the patient associated with the health record is
performed by a computer.
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Appeal2018---000742
Application 13/856,732
(Claim 1 ). Here the above claim limitations require in part "electronically
receiving a health record of the patient sent from outside of the personal
health record system without a health care provider logging into the system"
and the above citations to Segal fail to specifically disclose this. Segal for
instance at paragraph 106 discloses a physician using an access code which
serves as "logging into the system" in some manner. Thus, the cited
evidence indicates that a physician gains access to the patient's records by
logging in and the Examiner does not explain how Segal discloses that
health records may be received or sent outside of the personal health record
system without a physician accessing the records. Accordingly, the rejection
of claim 1 and its dependent claims is not sustained. The remaining claims
contain a similar limitation and the rejection of these claims is not sustained
as well.
CONCLUSIONS OF LAW
We conclude that Appellant has not shown that the Examiner erred in
rejecting claims 1-17 under 35 U.S.C. § 101.
We conclude that Appellant has shown that the Examiner erred in
rejecting claims 1-17 under 35 U.S.C. § 112, first paragraph, and 35 U.S.C.
§ 103(a) as listed in the Rejections section above.
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Appeal2018---000742
Application 13/856,732
DECISION
The Examiner's rejection of claims 1-17 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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