Ex Parte Salwan

Patent Trial and Appeal Board

Jun 11, 2018

15188000 (P.T.A.B. Jun. 11, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
15/188,000 06/21/2016
101173 7590
Angadbir Singh Salwan
10701 Balantre Lane
Potomac, MD 20854
06/11/2018
FIRST NAMED INVENTOR
Angadbir Singh Salwan
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.
SalwanP2P-CA02 5603
EXAMINER
BORISSOV, IGOR N
ART UNIT PAPER NUMBER
3649
MAIL DATE DELIVERY MODE
06/11/2018 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte AN GAD BIR SINGH SAL W AN 1
Appeal 2018-002620
Application 15/188,000
Technology Center 3600
Before MICHAEL L. HOELTER, NATHAN A. ENGELS, and
PAUL J. KORNICZKY, Administrative Patent Judges.
HOELTER, Administrative Patent Judge.
DECISION ON APPEAL 2
1 Appellant identifies the real party in interest as himself. App. Br. 1.
2 The present application is a continuation of Application No. 12/587,101
filed on October 2, 2009. This parent application was the subject of Patent
Trial and Appeal Board Appeal No. 2015-007758, mailed April 29, 2016,
which affirmed the Examiner's rejections. Ans. 5. This Board Decision was
itself appealed to the US Court of Appeals for the Federal Circuit on May
13, 2016. Ans. 5. The Federal Circuit issued an opinion (In re Salwan, 681
Fed. Appx. 938 (Fed. Cir. 2017)) sustaining the Board's finding of patent-
ineligible subject matter but elected not to address the Board's affirmances
on§§ 103 and 112 grounds. Salwan, 681 Fed. Appx. at 940.
Appeal 2018-002620
Application 15/188,000
STATEMENT OF THE CASE
This is a decision on appeal, under 35 U.S.C. § I34(a), from the
Examiner's Final Rejection of claims 1-20. Final Act. 2 (Office Action
Summary). We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
THE CLAIMED SUBJECT MATTER
The disclosed subject matter "relates, generally, to the field of
applying Information Technology for the benefit of [the] healthcare (HC)
industry." Spec. ,r 7. 3 System claims 1, 10, and 20 are independent. Claim
1 is illustrative of the claims on appeal and is reproduced below ( emphasis
omitted).
1. An EMR [ electronic medical record] computing system for
exchanging patient health information among healthcare user
groups or the healthcare user group and patients over a network,
the system comprising:
a central computer program embodied in a computer
readable medium or embodied in a central server and a central
database storing patient EMR data for access by authorized users,
the central computer program configured to:
communicate through at least one computer
program, which includes EMR and billing software, with
at least one private database for a healthcare user group,
the database comprising at least patient EMR and billing
data, and accounting data confidential for the healthcare
user group;
receive from the at least one private database EMR
data including at least one of health problems,
medications, diagnosis, prescriptions, notes written by a
healthcare service provider, diagnostic test results or
patient accounts data for storing in the central database,
3 Reference is made to publication number US 2016/0300031 Al, dated
October 13, 2016. See also App. Br. 2.
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Application 15/188,000
wherein the healthcare user group's confidential accounts
data including one or more insurance companies accounts
data, is not received;
selectively retrieve the stored EMR data, generate
one or more healthcare reports including one or more of
health problem list, medication list, diagnoses report,
prescription, diagnostic test result report, patient billing
report; and
transmit one or more healthcare reports to an
authorized healthcare user group or the authorized patient
for reviewing.
REFERENCES RELIED ON BY THE EXAMINER
Giannini US 5,915,241
Schurenberg et al. US 2002/0007284 Al
Davis et al. US 2003/0028399 Al
Jay et al. US 2003/0050802 Al
White US 2005/0057488 Al
Malhotra et al. US 2005/0251417 Al
Hacker US 6,988,075 Bl
Dugan US 2006/0041450 Al
THE REJECTIONS ON APPEAL
June 22, 1999
Jan. 17,2002
Feb. 6,2003
Mar. 13, 2003
Mar. 17, 2005
Nov. 10, 2005
Jan. 17,2006
Feb.23,2006
Claims 1-20 are rejected under 35 U.S.C. § 112(a) as failing to
comply with the written description requirement. The claims contain subject
matter which was not described in the specification in such a way as to
reasonably convey to one skilled in the relevant art that the inventor had
possession of the claimed invention.
Claims 1-20 are rejected under 35 U.S.C. § 101 because the claimed
invention is directed to non-statutory subject matter. 4
4 The heading on page 3 of the Final Office Action only lists claims 1 and 3-
11 as subject to the § 101 rejection, but the body of the rejection addresses
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Claims 1, 3-5, 10, and 20 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Hacker and Malhotra.
Claims 2, 6, and 16 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Hacker, Malhotra, and Davis.
Claims 7, 8, 12, 15, and 18 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Hacker, Malhotra, and Jay.
Claim 9 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Hacker, Malhotra, and Dugan.
Claim 11 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Hacker, Malhotra, and Giannini.
Claim 13 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Hacker, Malhotra, and Schurenberg.
Claim 14 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Hacker, Malhotra, Schurenberg, and Giannini.
Claim 17 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Hacker, Malhotra, and White.
Claim 19 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Hacker, Malhotra, Jay, and Schurenberg.
ANALYSIS
The rejection of claims 1-20
as failing to comply with the written description requirement
The Examiner, with emphasis added, references the limitation,
"wherein the healthcare user group's confidential accounts data including
each of claims 1-20 and makes clear that the rejection applies to all the
claims. See Final Act. 9; Ans. 10.
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one or more insurance companies accounts data, is not received."5, 6 Final
Act. 3; see also Ans. 7. The Examiner contends the "[ s Jpecification does
not support the recited limitation. Same rationale applied to claims 2-20."
Final Act. 3; see also Ans. 6-7. Appellant disagrees stating, "Figures 1, 2, 3
and 4 clearly show, and paragraphs [0041, 0042, 0043, 0163, and 0168]
precisely disclose" the limitation in question. App. Br. 7; see also Reply Br.
3.
There is ambiguity in these referenced figures and paragraphs as to
whether they "precisely disclose" the limitation that certain confidential data
"is not received" by the central computer. The referenced figures and
paragraphs are silent as to any complete prohibition on any receiving
( sharing) of a user group's confidential accounts data, as recited. See also
App. Br. 9. For example, Paragraph 163 of Appellant's Specification
addresses locally stored patient information stating, "[ u Jpon request, this
information can be transferred to any authorized member within the
network" and that "[ o ]ther confidential medical office data, such as patient
billing data, cannot be shared with outside members."7 Thus, as understood,
while some confidential data is expressly not shared, it is also the case that
some confidential office data is shared. Consequently, these passages do not
5 Appellant's Specification defines "healthcare user group" as including
physicians, hospitals and the like. Spec. 127. This would include a local
medical office that a patient might visit. See Appellant's Figures.
6 Independent claims 1 and 20 both recite the limitation "is not received."
Independent claim 10, however, recites "is not transmitted." Appellant does
focus on their difference, but instead, argues claims 1, 10, and 20 together.
App. Br. 6-11.
7 Appellant's usage of "outside members" is presumed to be those not part of
the network. Claim 1 recites "authorized users," which are understood to
be authorized network users.
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make clear there is a complete prohibition on receiving a local medical
office's confidential accounts data by a central computer.
We note, however, that claim 1, as originally filed, includes this exact
prohibition (i.e., "the healthcare user group's confidential accounts data ...
is not received"). Finding this language in the originally filed claims is
reminiscent of a similar situation discussed in Mentor Graphics Corporation
v. Eve-USA Inc., 851 F.3d 1275 (Fed. Cir. 2017). In that case, our reviewing
court stated:
The very language of claim 1 which the court held was not
supported by the specification was present in the originally-filed
claims. Original claims are part of the original specification and
in many cases will satisfy the written description requirement.
Ariad [Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1349
(Fed. Cir. 2010)]; see ScriptPro LLC v. Innovation Assocs., Inc.,
833 F.3d 1336, 1341 (Fed. Cir. 2016); Crown Packaging [Tech.
v. Ball Metal Beverage, 635 F.3d 1373, 1381 (Fed. Cir. 2011)].
These claims raise none of the genus/species concerns that have
caused us to question whether originally filed claims satisfy
written description. See, e.g., Ariad, 598 F.3d at 1349--51. ....
Like Crown Packaging, the "original claims clearly show that
the applicants recognized and were claiming [ the disputed
limitation]. ... These claims show, as Ariad recognized many
original claims do, that the applicants had in mind the invention
as claimed" and described it. 635 F.3d at 1381. Original claim 1
recites [ the disputed limitation]. This is the precise language the
district court found missing from the . . . specification. See ...
ScriptPro, 833 F.3d at 1341 (finding written description support
when the original claims and the challenged claims recited the
same limitation). We conclude that this original claim language
clearly demonstrates that the inventor possessed an invention
including [the disputed limitation] and described it.
Mentor Graphics, 851 F.3d at 1297.
Accordingly, and following the above holding by our reviewing court
when confronted with a similar situation (i.e., the disputed limitation being
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recited in the originally-filed claims), we do not sustain the Examiner's
rejection of claims 1-20 as failing to comply with the written description
requirement.
The rejection of claims 1-20
as being directed to non-statutory subject matter
Appellant argues this rejection of claims 1-20 together. App. Br. 11-
13. We do the same. See 37 C.F.R. § 4I.37(c)(l)(iv).
The Examiner undertakes and explains, in much detail, both parts of
the two-part test set forth in Alice Corp. Pty. Ltd. v. CLS Banklnt'l, 134 S.
Ct. 2347 (2014) (citing Mayo Collaborative Servs. v. Prometheus Labs.,
Inc., 132 S. Ct. 1289 (2012)). Final Act. 3-9; see also Ans. 7-10. The
Examiner thereafter concludes that claims 1-20 are "directed to non-
statutory subject matter." Final Act. 9; Ans. 10. We need not repeat or
rephrase that analysis here.
Appellant first contends that the Examiner only addressed "the
preamble of the claim." App. Br. 11. However, that is not the case since
the Examiner clearly replicated and addressed the entirety of claim 1. See
Final Act. 4. Appellant next contends that the Examiner wrongfully
compared the "distorted preamble with the concept of 'hedging'" as set
forth in Bilski v. Kappas, 561 U.S. 593, 602 (2010). App. Br. 11. However,
the Examiner was merely correlating the similarity of Appellant's claimed
activity "to the concepts involving human activity relating to commercial
practices," such as those described in Bilski. Final Act. 4. We do not fault
the Examiner for making such a correlation.
Appellant also contends, "[t]he examiner has further given only the
high level generic description of the claim" while "completely ignoring the
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specifics of the claim." App. Br. 11; see also Reply Br. 4. However, as
above, the Examiner considered all the limitations of claim 1, and, in
considering such limitations, the Examiner concluded that they "do not make
[claim 1] less abstract." Final Act. 4; see also Ans. 7. We agree with the
Examiner's analysis because the additional "specifics" that Appellant
addresses are, themselves, quite generic in nature (i.e., "a central server and
a central database," "authorized users," billing software," "private database,"
"healthcare user group," and the like). See SAP Am. Inc. v. InvestPic LLC,
No. 2017-2801, slip op. at 8-9 (Fed Cir. May 15, 2018) ("As many [Federal
Circuit] cases make clear, even if a process of collecting and analyzing
information is 'limited to a particular content' or a particular 'source,' that
limitation does not make the collection and analysis other than abstract.")
(quoting Electric Power, 830 F.3d at 1353, 1355 (citing cases)); accord
Bilski, 561 U.S. at 612 (2010) (explaining that Parker v. Flook, 437 U.S. 584
(1978) "established that limiting an abstract idea to one field of use or
adding token postsolution components did not make the concept
patentable").
Appellant also contends the Examiner "wrongfully equated his high
level generic description to the concept of manipulating information using
mathematical relationships of' Gottschalkv. Benson, 409 U.S. 63 (1972).
App. Br. 12; see also Final Act. 4. However, Appellant does not explain
how the Examiner erred in correlating Appellant's claim language "to the
basic concept of manipulating information using mathematical relationships"
as expressed by the Examiner. Final Act. 4.
Appellant further contends (specific to page 5 of the Examiner's Final
Office Action), the Examiner argued "that claim 1 only performs basic
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computer functions. The rest of [ the Examiner's] arguments on this page are
completely irrelevant to claim 1." App. Br. 12; see also Reply Br. 4.
However, the Examiner was explaining that the recited limitations of
"storing data, communicating data, receiving data, retrieving data, and
transmitting data in the form of a healthcare report" were simply a
recitation of "generic computing elements [that] are known and
conventional." Final Act. 5; Ans. 7. We do not disagree with the
Examiner's assessment that "every off the shelf computer is configured to
do" such function and that using a computer to perform these functions
"does not constitute a meaningful limitation that would amount to
significantly more than the judicial exception." Final Act. 5; see also Ans.
7-8.
Appellant also acknowledges that the Examiner "further cited a
number of court cases," but Appellant contends, "[a]ll of these citations are
completely irrelevant to the claimed subject matter. Therefore, the applicant
does not feel the need to even discuss these citations." App. Br. 12. As is
typical when an Examiner references a court case, the reference was not
cited because both the court case and the pending claims are
indistinguishable. Instead, Examiners cite such court cases because the
analyses and holdings expressed by the court could be analogized to the
present situation, and, here, the cases were relied upon as guidance and
authority regarding issues presented in the Appellant's Application.
Accordingly, we do not fault the Examiner for citing case law as authority to
guide the Examiner's analysis.
Appellant, thereafter, provides a dictionary definition of the word
"abstract" which, per Appellant, includes such phrases as "not practical to
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be applied; has no practical application ... " App. Br. 12. Appellant
thereafter argues that the claimed invention has innovation and practical
application because it does not allow "the confidential data to be
transferred from the private database . .. to the central database." App.
Br. 12; see also id. at 13. However, the question is not one of usefulness,
but instead whether Appellant's claim is proper subject matter so as to be
patent-eligible, e.g., is not abstract. Appellant's above comments are not
persuasive on this point.
Accordingly, and based on the record presented, Appellant is not
persuasive that the Examiner erred in concluding that claims 1-20 are
directed to non-statutory subject matter. We sustain the Examiner's
rejection of these claims under 35 U.S.C. § 101.
The rejections of claims 1-20
as being obvious in view of the prior art
Appellant (a) summarizes the Examiner's reasons for the rejection of
claims 1-20; (b) provides a discussion of both patent statues and case law;
and (c) discusses each of Hacker and Malhotra (which are employed in each
35 U.S.C. § 103(a) rejection). See App. Br. 13-18. Appellant's arguments
follow. We address claim 1 when Appellant's arguments are not specific to
any one claim, and we address the separate claims when they are argued
separately. See 37 C.F.R. § 4I.37(c)(l)(iv).
Appellant initially contends the Examiner relied on "impermissible
hindsight" for rejecting "all claims." App. Br. 18. Appellant states that the
Examiner "never described the individual elements/method steps, and how
to combine them" based on Hacker and Malhotra, which "are so different
from each other." App. Br. 18; see also id. at 19. We disagree with
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Appellant because the Examiner did, in fact, address the elements/steps
recited and also correlated them to certain features disclosed in the
references. See Final Act. 10-12 (even providing an alternative reason for
the rejection of claim 1 ). Regarding the asserted difference between the two
references (see supra), we likewise disagree with Appellant's assessment
because both Hacker and Malhotra pertain to a patient's electronic medical
records, including their storage and distribution among various components.
See Abstract and Figure 1 ofboth references; see also Ans. 10-11.
Addressing Appellant's assertion that the Examiner failed to explain "how
to combine" the references (see supra), such an explanation regarding the
actual mechanics by which the two are to be joined is not a pre-requisite for
a finding of obviousness. Instead, for a rejection based on obviousness, the
Supreme Court has provided instructions that "there must be some
articulated reasoning with some rational underpinning to support the legal
conclusion of obviousness." KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398,
418 (2007) (citing In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006). Hence,
the Supreme Court requires "articulated reasoning with some rational
underpinning" and not a detailed account explaining "how to combine" the
references, as Appellant asserts. See supra. Furthermore, we are instructed,
"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, 550 U.S. at 418. In the matter before us, there is no
evidence that the Examiner's suggested combination of Hacker and
Malhotra is beyond the ability of one skilled in the art.
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Appellant also seems to not understand that the Examiner is
combining the teachings of the two references and is not substituting a
teaching of the one reference for the teaching of the other. See App. Br. 19--
20. This is because Appellant contends that Hacker's "patient-controlled
EMR" would be inoperable if, instead, the "physicians are given 'control"'
of the records as in Malhotra. App. Br. 19. The Examiner is not replacing
the one for the other.
Appellant further addresses the "Examiner's Erroneous/False
Statements" such as where the Examiner correlated a disclosure in Hacker
"to the accounts data stored in the private database in my current
invention." App. Br. 21. However, Appellant does not explain how
Hacker's discussion regarding information found on Hacker's "Insurance"
page 436 (which lists such information as "names, addresses, phone
numbers" and the like) is not part of the recited "accounts data" that is stored
locally on the medical office's computer. Hacker 9:54--59. Appellant also
contends that, with respect to Hacker, "[ t ]here is no discloser of any data
transfer from a private database to the central server." App. Br. 21.
However, the Examiner relies on the combination of Hacker and Malhotra
( and not just Hacker alone) for teaching communication with "at least one
physician office computer (private data storage)." Final Act. 10. Further,
the figures of both Hacker and Malhotra illustrate two-way communication
between a physician's office and a remote computer.
Appellant also states, "[ m ]y claimed invention has both the EMR and
billing software on the private computing system that belongs to the
physicians group." App. Br. 22. However, claim 1 also recites that "billing
software" is communicated with the "central computer program." Thus,
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claim 1 does not require the billing software to reside only locally, a
distinction Appellant seeks to make. Appellant also contends, "Malhotra
teachings are contrary (and lead away from the invention)." App. Br. 22.
However, Appellant simply makes this assertion without clarifying how
Malhotra actually criticizes, discredits, or otherwise discourages
investigation into the claimed solution. See In re Fulton, 391 F.3d 1195,
1201 (Fed. Cir. 2004).
Appellant thereafter contends the Examiner provided "erroneous
reasoning" because "Malhotra is referring to reduction of labor by
eliminating double entry of patient data" and that this is "not applicable to
Hacker" which "has only one central computer program." App. Br. 23.
Appellant seems to disregard the various ancillary systems/devices in
communication with Hacker's main system (and illustrated in Fig. 1 ), and
Appellant does not explain how the Examiner's reason ("for the benefit of
reducing the amount of labor required to enter data for billing purposes"
(Final Act. 10)) is not applicable during the use of all these various
components.
Appellant also contends that, as regarding Hacker and Malhotra,
"each system has [a] different objective/purpose." App. Br. 23. However,
the test of obviousness is not what the references may or may not
specifically disclose, but instead, the test is what the references would
reasonably suggest to one skilled in the art. In other words, "[t]he use of
patents as references is not limited to what the patentees describe as their
own inventions or to the problems with which they are concerned. They are
part of the literature of the art, relevant for all they contain." In re Heck, 699
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F.2d 1331, 1333 (Fed. Cir. 1983) (quoting In reLemelson, 397 F.2d 1006,
1009 (CCPA 1968)).
Appellant further contends the Examiner relied on "Impermissible
Hindsight" (App. Br. 24), but Appellant does not explain that which was
only gleaned from Appellant's disclosure. See In re McLaughlin, 443 F.2d
1392, 1395 (CCPA 1971); see also Ans. 11. Appellant also contends that
the Examiner failed to provide a prima facie case of obviousness because
"the examiner has never given any explicit analysis to support his
conclusion of obviousness." App. Br. 25. However, Appellant's contention
is not persuasive since we are instructed that the Examiner satisfies the
initial procedural burden of establishing a prima facie rejection by
adequately explaining the shortcomings it perceives so that the applicant is
properly notified and able to respond. See In re Jung, 637 F.3d 1356, 1362
(Fed. Cir. 2011 ). There is no indication the Examiner failed to indicate the
perceived shortcomings or failed to properly notify Appellant of same.
Appellant also fails to explain how the Examiner's analysis was not made
"explicit."
When discussing independent claim 20, Appellant renders many of
the same arguments previously presented and addressed. One distinction
between claim 1 and claim 20 that Appellant notes is that claim 20 "does not
claim any central server, central computer program or central
database." App. Br. 25. Instead, in claim 20, patient data is "transferred
between a first database ... and a second database." However,
identifying the various components via different terminology does not render
the Examiner's rejection inapt. In other words, Appellant does not explain
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how the Examiner's underlying logic and rationale fails to be equally
applicable to both the limitations of claim 1 and those of claim 20.
Appellant further contends (relying on case law that predates the
Supreme Court's decision in KSR) that "[t]he teaching or suggestion to make
the claimed combination and the reasonable expectation of success must
both be found in the prior art." App. Br. 26. This is not a proper
understanding of present case law which no longer requires the cited art
itself to express the reason for the combination. See KSR, 55 U.S. at 419.
Accordingly, and based on the record presented, we are not persuaded
the Examiner erred in combining the teachings of Hacker and Malhotra, or
in concluding that their combination renders obvious the limitations recited
in claims 1, 3-5, 10, and 20. Appellant does not present arguments
regarding the Examiner's additional reliance on Davis, Jay, Dugan,
Giannini, Schurenberg, and White. Accordingly, we are not persuaded the
Examiner erred in additionally rejecting dependent claims 2, 6-9, and 11-19
whose rejections relied on these additional references.
DECISION
The Examiner's rejection of claims 1-20 under 35 U.S.C. § 112(a) as
failing to comply with the written description requirement is reversed.
The Examiner's rejection of claims 1-20 under 35 U.S.C. § 101
because the claimed invention is directed to non-statutory subject matter is
affirmed.
The Examiner's art rejections of claims 1-20 under 35 U.S.C.
§ 103(a) are affirmed.
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No time period for taking any subsequent action in connection with
this appeal may be extended as set forth in 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED
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