Ex Parte Lorsch

Patent Trial and Appeal Board

Oct 19, 2018

14580626 (P.T.A.B. Oct. 19, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/580,626 12/23/2014
133690 7590 10/23/2018
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- P019 3491
EXAMINER
LUBIN, VALERIE
ART UNIT PAPER NUMBER
3626
NOTIFICATION DATE DELIVERY MODE
10/23/2018 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
Appeal2018-001600
Application 14/580,626
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, 7-10, and 12-18, 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., a
subsidiary of MMRGlobal, Inc. (Appeal Br. 4).
Appeal2018-001600
Application 14/580,626
THE INVENTION
The Appellant's claimed invention is directed to a method for
consumers to store and request their medical records from healthcare
providers (Spec., page 1, lines 18-21). Claim 1, reproduced below, is
representative of the subject matter on appeal.
1. A method for providing a patient with the ability to access and
collect health image records associated with the patient in a secure
and private manner, the method comprising:
associating an ip address used by the patient with an ip address
previously associated with the patient;
associating access information with the patient for the patient to
use to access a server storing the health image records associated with
the patient in a computer readable storage medium;
electronically receiving at the server a health image record
comprising at least one of a lab report, a prescription, an x-ray, a
patient chart, a test result, a medical image or a dental record
associated with the patient from a health care provider associated with
the patient, wherein the health image record comprises health data of
the patient;
associating the health image record with the patient;
storing the health image record in the computer readable
storage medium;
sending the health image record to a web-enabled device; and
providing a user interface on the web-enabled device to a
patient, wherein the user interface on the web-enabled device is
configured to (a) collect and display prescriptions associated with the
patient, (b) collect and display health care providers associated with
the patient, ( c) collect and display medical conditions associated with
the patient, ( d) collect and display health insurance information
associated with patient, ( e) alert the patient that the health image
record associated with the patient was received, (f) organize health
records stored in the computer readable storage medium into a
plurality of folders as specified by the patient through the user
interface, (g) provide for sending an outgoing fax, and (h) assign a
second password to at least one folder of the plurality of folders.
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Application 14/580,626
THE REJECTIONS
The following rejections are before us for review:
1. Claims 1-5, 7-10, and 12-18 are rejected under 35 U.S.C.
§ 101 as being directed to non-statutory subject matter.
2. Claims 10 and 12-14 are rejected under 35 U.S.C. § 112, first
paragraph, as failing to show possession of the invention.
3. Claims 1-5, 7-9, and 15-17 are rejected under 35 U.S.C. § 112,
second paragraph, as being indefinite.
4. Claims 1-5, 7-9, 15, and 18 are rejected under 35 U.S.C.
§ I03(a) as unpatentable over Segal (US 2001/0041991 Al, published Nov.
15, 2001), Gmelin (US 2005/0216311 Al, published Sep. 29, 2005), Ouye
(US 2003/0154381 Al, published Aug. 14, 2003), and Hirano (US
2005/0159984 Al, published Jul. 21, 2005).
5. Claims 10, 12-14, 16, and 17 are rejected under 35 U.S.C.
§ I03(a) as unpatentable over Segal, Gmelin, Ouye, Hirano, and Angst (US
2004/0186746 Al, published Sep. 23, 2004).
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.
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 14/580,626
Rejection under 35 U.S.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 ( Appeal Br. 16-19, Reply
Br. 16-20).
In contrast, the Examiner has determined that rejection of record is
proper (Final Act. 2-4, Ans. 3-5).
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 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 23 55 ( 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
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Application 14/580,626
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
accessing and collecting health image records. 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. See also In re TL Communications LLC Patent Litigation, 823 F.3d
607, 613 (Fed. Circ. 2016) where classifying and storing digital images in an
organized manner was held to be directed to 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 for example at pages 13 and 14 describes using
generic servers and computing devices 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
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Application 14/580,626
claims which are drawn to similar subject matter and the rejection of these
claims is sustained as well.
Rejection under 35 U.S. C. § 112 (first paragraph)
The Examiner has determined independent claims 1, 12, and 20 recite
"a web-enabled user interface for sending an outgoing fax" and that the
Specification fails to provide support for this (Final Act. 4).
In contrast, the Appellant argues that the Specification provides
support at page 19, lines 8-10, and page 23 line 31 through page 24, line 4
(Appeal Br. 27, 28).
We agree with the Appellant. Here, the above cited portions of the
Specification provide support for the cited claim limitation and this rejection
of record is not sustained.
Rejection under 35 U.S. C. § 112 (second paragraph)
The Examiner has determined that the phrases "provide for sending an
outgoing fax" and "provide the sending of an outgoing fax" is unclear (Final
Rej. 5, Ans.5, 6).
In contrast, the Appellant argues that this rejection is improper
(Appeal Br. 28, 29).
We agree with the Appellant. Here, the above cited claim limitations
are simply not indefinite in the scope of the claim and this rejection is not
sustained.
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Application 14/580,626
Rejection under 35 U.S.C. § 103(a)
The Appellant first argues that the rejection of claim 1 is improper
because the claim does not disclose or suggest the claim limitation for
"alert[ing] the patient that the health image record associated with the patient
was received" (Appeal Br. 30, 31, Reply Br. 34-38).
In contrast, the Examiner has determined that the cited claim
limitation would have been obvious in view of Segal at para. 104 and one of
ordinary skill in the art knowing the advantage of sending communications
and emails to patients to inform them of relevant events such as when a new
document arrives in their accounts (Final Act. 5-8, Ans. 6).
We agree with the Examiner's rejection of record that the cited claim
limitation would have been obvious in the cited combination. Here, in the
cited combination it would have been obvious to one of ordinary skill in the
art to alert a patient when their health record was received to keep them
updated. In KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398 (2007) the Court
stated that when considering obviousness that "the analysis need not seek
out precise teachings directed to the specific subject matter of the challenged
claim, for a court can take account of the inferences and creative steps that a
person of ordinary skill in the art would employ." KSR at 418. We agree
with the Examiner that one of ordinary skill in the art would have seen the
advantage in making the above modification.
The Appellant secondly argues that the rejection of claim 1 is
improper because the prior art does not teach "a user interface configured to
provide for sending an outgoing fax" (Appeal Br. 31-35, Reply Br. 38-42).
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In contrast, the Examiner has determined that the argued claim
limitation is suggested by Gmelin at paras 18, 24, and 34 and Segal ( Ans. 7,
8).
We agree with the Examiner's findings and rationale. Here, Gmelin
at paras. 24 and 34 shows the use of a fax device, and the use of it to
transmit information would have been obvious as a conventional method of
transmitting information effectively. Accordingly, this rejection of claim 1
is sustained.
The Appellant argues thirdly that the rejection of claim 3 is improper
because Segal does not teach "a destination address for a health image
record that is a phone number or an e-mail address" (Appeal Br. 35, 36,
Reply Br. 42-44).
In contrast, the Examiner has determined that this is suggested by
Segal at paras. 106, 118, and 140 (Ans. 8, 9).
We agree with the Examiner. Segal at para. 140 discloses that a user
can make requests for health images by email. Email and telephone
numbers are used in a wide variety of arts for effective data transmission.
The use of conventional email to send the images would have been an
obvious and readily inferred modification to one of ordinary skill in the art
for a low cost and effective transmission of the data. Email and telephone
numbers are used in a wide variety of arts for effective data transmission.
Accordingly, this rejection of claim 3 is sustained.
The Appellant argues that the rejection of claim 15 is improper
because the cited prior art fails to disclose or teach "alerting the patient that
a health image record associated with the patient was received" and "a user
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Application 14/580,626
interface on a web enabled device configured to provide for the sending of
an outgoing fax" (Appeal Br. 36-41, Reply Br. 44-52).
In contrast, the Examiner has determined that the cited claim
limitations are suggested in the combination by Gmelin at paras. 24 and 34
(6-8).
We agree with the Examiner. As noted above, Gmelin at paras. 24
and 34 shows the use of a fax device. Also as noted above, we agree with
the Examiner that one of ordinary skill in the art would have known the
advantages of sending communications and emails to patients to inform
them of relevant events such as when a new document arrives in their
accounts and that such a modification would have been obvious.
Accordingly, this rejection of claim 15 is sustained.
The Appellant argues that the rejection of claim 18 is improper
because the cited prior art fails to disclose or teach "a user interface
configured on a web-enabled computing device to provide communications
management features for managing with health care providers" and "a user
interface on a web-enabled computing device configured for sending an
outgoing fax" (Appeal Br. 41-46, Reply Br. 52-60).
In contrast, the Examiner has determined that the rejection of record is
proper and suggested by Segal at Fig. 5i and paras. 21, 106, and 113 (Ans. 9,
10).
We agree with the Examiner. As noted above, Gmelin at paras. 24
and 34 shows the use of a fax device. Segal at para. 106 discloses that the
patient controls access to their medical records using passwords and codes.
Segal at para. 106 also discloses a physician is granted permission to view or
update their health record. Segal at para. 104 discloses that the system can
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be used on the Internet via a computer workstation. Thus, the controlling of
access to the health records on the computer serves as the argued
"communication management feature" for health care providers chosen to be
able to access the patient's records. Regardless, the use of such a feature to
manage communication preferences would have been an obvious
modification to one of ordinary skill in the art for a central communication
control location. For these reasons the rejection of claim 18 is sustained.
The Appellant has argued at page 46 of the Appeal Brief that the
rejection of claims 10, 12, 16, and 17 lacks a suitable rationale to support a
finding of obviousness, but provides no specific arguments in this regard and
this argument is not deemed persuasive.
The Appellant has provided the same or similar arguments for the
remaining claims and the rejection of these claims is sustained for the same
reasons given above.
CONCLUSIONS OF LAW
We conclude that the Appellant has not shown that the Examiner
erred in rejecting claims 1-5, 7-10, and 12-18 under 35 U.S.C. § 101.
We conclude that the Appellant has shown that the Examiner erred in
rejecting the claims under 35 U.S.C. § 112, first paragraph, and 35 U.S.C. §
112, second paragraph as listed in the Rejections section above.
We conclude that the Appellant has not shown that the Examiner
erred in rejecting claims 1-5, 7-10, and 12-18 under 35 U.S.C. § 103(a) as
listed in the Rejections section above.
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Application 14/580,626
DECISION
The Examiner's rejection of claims 1-5, 7-10, and 12-18 is sustained.
No time period for taking any subsequent action in connection with this
appeal may be extended under 3 7 C.F .R. § 1.13 6( a).
AFFIRMED
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