Ex Parte Wartenfeld et al

Patent Trial and Appeal Board

Dec 18, 2018

13208417 (P.T.A.B. Dec. 18, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/208,417 08/12/2011 Robert Wartenfeld
12973 7590 12/20/2018
Medley, Behrens & Lewis, LLC
6100 Rockside Woods Blvd.
Suite 440
Independence, OH 44131
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.
1158.604 80ll
EXAMINER
MORGAN, ROBERT W
ART UNIT PAPER NUMBER
3626
NOTIFICATION DATE DELIVERY MODE
12/20/2018 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):
admin-docketing@medleybehrens.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ROBERT WARTENFELD, ZIV OFEK, EYAL GREENBERG,
ZIV GOME, and SHIRI BEN-TAL
Appeal2017-002135
Application 13/208,417 1
Technology Center 3600
Before BRUCE T. WIEDER, AMEE A. SHAH, and
ROBERT J. SILVERMAN, Administrative Patent Judges.
WIEDER, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134 from the
Examiner's final rejection of claims 1, 3-5, and 7-11. We have jurisdiction
under 35 U.S.C. § 6(b). Oral arguments were presented December 6, 2018.
We AFFIRM.
1 According to Appellants, the real party in interest is Allscripts Healthcare
Solutions, Inc. (Appeal Br. 3.)
Appeal2017-002135
Application 13/208,417
CLAIMED SUBJECT MATTER
Appellants' "invention relates generally to systems for processing
medical information and more particularly to computerized interactions with
EMRs [electronic medical records]." (Spec. 1, 11. 14--15.)2
Claim 1 is the sole independent claim on appeal. It recites:
1. A method of providing health information from a health
information exchange (HIE) system, the method comprising:
(a) storing patient records, including patient record data,
regarding a multiplicity of patients, the patient record data
coming from a plurality of disparate health information system
sources, wherein the HIE system serves a plurality of EMR
systems, each EMR system interacting with an EMR community
including at least one EMR application running on a
computerized device for use by a health provider; and
(b) for each individual EMR system within said plurality
of EMR systems, providing health information from the HIE
system to a health provider within the context of the EMR
application running on the computerized device within the
individual EMR system by,
(i) performing, by an HIE-EMR bridging
application running on a computerized device used by a
health provider on which an EMR application is also
running, a computerized context interception process
using a processor to intercept context from the individual
EMR system and to identify therewithin an event by which
the health provider using the EMR application running on
the computerized device calls up an individual patient's
record from said individual EMR system; and
(ii) responsive to identification of said event,
providing to the health provider, by the HIE-EMR
bridging application running on the computerized device
2 Citations to "Spec." refer to the substitute Specification filed October 25,
2011. Additionally, we note that in two related appeals, i.e., Appeals 2017-
007366 (Application 14/145,903) and 2018-007831 (Application
12/840,806), opinions issued on November 30, 2018.
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Application 13/208,417
used by the health provider on which the EMR application
is also running, health information from the HIE system
including patient record data pertaining to the individual
patient of the identified event,
(iii) wherein said patient record data includes at
least one information item which is tagged to indicate a
source health information system from which said at least
one information item is provided to said HIE system, and
wherein said patient record data provided to the health
provider is filtered so as to filter out said at least one
information item if the health information system source
is said individual EMR system; and
(iv) wherein said EMR application provides
information to the health provider through a graphic user
interface in a first display window generated by the EMR
application, wherein the HIE-EMR bridging application
provides said patient record data to the health provider
through a graphic user interface of a second display
window that is separate from the first display window and
that is generated by the HIE-EMR bridging application;
and wherein the second display window containing the
graphic user interface of the HIE-EMR bridging
application is displayed relative to, and on top of, the
display window containing the graphic user interface of
the EMR application.
REJECTIONS
Claims 1, 3-5 and 7-11 are rejected under 35 U.S.C. § 101 as directed
to a judicial exception without significantly more.
Claims 1, 3-5 and 7-11 are rejected under 35 U.S.C. § I03(a) as
unpatentable in view ofMahesh (US 2006/0074633 Al, pub. Apr. 6, 2006),
Hasan (US 2009/0177492 Al, pub. July 9, 2009), and Brummel
(US 2002/0083075 Al, pub. June 27, 2002).
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Application 13/208,417
The § 101 rei ection
ANALYSIS
"Whoever invents or discovers any new and useful process, machine,
manufacture, or composition of matter, or any new and useful improvement
thereof, may obtain a patent therefor, subject to the conditions and
requirements of this title." 35 U.S.C. § 101. Section 101, however,
"contains an important implicit exception: Laws of nature, natural
phenomena, and abstract ideas are not patentable." Alice Corp. Pty. Ltd. v.
CLS Bankint'l, 134 S. Ct. 2347, 2354 (2014) (quotingAss'nfor Molecular
Pathology v. Myriad Genetics, Inc., 569 U.S. 576, 589 (2013)).
Alice applies a two-step framework, earlier set out in Mayo
Collaborative Services v. Prometheus Laboratories, Inc., 566 U.S. 66
(2012), "for distinguishing patents that claim laws of nature, natural
phenomena, and abstract ideas from those that claim patent-eligible
applications of those concepts." Alice, 134 S. Ct. at 2355.
Under the two-step framework, it must first be determined if "the
claims at issue are directed to a patent-ineligible concept." Id. If the claims
are determined to be directed to a patent-ineligible concept, e.g., an abstract
idea, then the second step of the framework is applied to determine if "the
elements of the claim ... contain[] an 'inventive concept' sufficient to
'transform' the claimed abstract idea into a patent-eligible application." Id.
at 2357 (citing Mayo, 566 U.S. at 72-73, 79).
With regard to step one of the Alice framework, the Examiner
determines that claim 1 is "drawn to an abstract idea, that abstract idea being
a basic concept of providing healthcare." (Final Action 2.) The Examiner
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also determines that claim 1 is "directed to the abstract idea of using
categories to organize, store and transmit information." (Answer 14.)
Appellants disagree and argue that "the claims include additional
features that ensure that the claims are not a drafting effort designed to
monopolize either the idea of 'a basic concept of providing healthcare' or
the idea of 'using categories to organize, store, and transmit information'."
(Reply Br. 5, emphasis omitted.)
We defer our consideration of the specific claim limitations'
narrowing effect for step two of the Alice framework. See BASCOM Global
Internet Servs., Inc. v. AT&T Mobility LLC, 827 F.3d 1341, 1349 (Fed. Cir.
2016).
Step two of the Alice framework has been described "as a search for
an ' "inventive concept" '-i.e., an element or combination of elements that
is 'sufficient to ensure that the patent in practice amounts to significantly
more than a patent upon the [ineligible concept] itself."' Alice, 134 S. Ct.
at 2355 (citing Mayo, 566 U.S. at 72-73).
The Examiner determines that Appellants' claims merely recite
a generic computer component that performs functions (i.e.,
storing patient records ... , providing health information ... ,
performing a computerized context interception process ... , and
providing to the health provider ... health information ... ). These
are all generic computer functions (i.e., storing, providing,
performing and providing) that are well-understood, routine, and
conventional activities previously known to the healthcare
industry. The claim also recites a health information exchange
(HIE) system, a plurality of EMR systems, at least one EMR
application, and an HIE-EMR bridging application, which do
NOT add meaningful limitations to the idea of using categories
to organize, store and transmit information.
(Answer 15-16.)
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Appellants disagree and argue
that the claims recite more than the performance of routine and
conventional activities previously known to the industry. In
particular, as noted hereinabove, a claim recites a novel
methodology involving "performing, by an HIE/EMR bridging
application running on a computerized device used by a health
provider on which an EMR application is also running, a
computerized context interception process using a processor to
intercept context from the individual EMR system and to identify
therewithin an event by which the health provider using the EMR
application running on the computerized device calls up an
individual patient's record from said individual EMR system".
(Reply Br. 7, emphasis omitted.)
Whether "performing, by an HIE/EMR bridging application running
on a computerized device used by a health provider on which an EMR
application is also running, a computerized context interception process
using a processor to intercept context from the individual EMR system" is a
well-understood, routine, and conventional activity is a question of fact. See
Berkheimerv. HP Inc., 881 F.3d 1360, 1369 (Fed. Cir. 2018) ("Whether
something is well-understood, routine, and conventional to a skilled artisan
... is a factual determination."). Moreover, "[t]he mere fact that something
is disclosed in a piece of prior art, for example, does not mean it was well-
understood, routine, and conventional." Id. at 1369. Here, the Examiner has
not provided sufficient evidence to support a finding that these steps were
well-understood, routine, or conventional to a skilled artisan. Therefore, we
will reverse the rejection of claim 1. For the same reasons we will also
reverse the rejection of dependent claims 3-5 and 7-11.
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The § 103 (a) reiection
In relevant part, claim 1 recites ( emphasis added):
performing, by an HIE-EMR bridging application . . . , a
computerized context interception process using a processor to
intercept context from the individual EMR system and to identify
therewithin an event by which the health provider using the EMR
application ... calls up an individual patient's record from said
individual EMR system.
The Examiner finds that this limitation is disclosed by Mahesh in
paragraph 15, 19, 20, 23, and 28. (Final Action 4.)
Appellants disagree and argue that
the Examiner states that a system of Mahesh "includes a context
manager for obtaining information from [a] plurality of
information sources based on a query". Applicant notes,
however, that a methodology involving obtaining information
from an information source via a query is in clear contrast to the
explicit recitation of obtaining context via interception. which
recitation is supported in the Specification of the present
application by elaborate description of context interception
methodologies.
Applicant also notes that this is not an insignificant
difference, as a methodology such as the one disclosed in
Mahesh which involves obtaining information from an
information source based on a query requires that the information
source be configured to respond to such a query. whereas a
recited HIE-EMR bridging application can be utilized with EMR
applications which are not configured to provide any context
information to an external source in response to a query. as the
bridging application can simply intercept context from the EMR
applications.
(Appeal Br. 9; see also Reply Br. 3-5.) We note that Appellants provide no
citation to the Specification to support this argument.
Mahesh discloses "a method and system for improved diagnostic
reading and workflow in a healthcare environment using rules-based context
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management." (Mahesh, Abstract.) In particular, Mahesh discloses
"retrieving information from at least one of the information systems based
on a request, and filtering the information based on at least one rule." (Id.
,r 22.) Mahesh also discloses "a method for providing rules-based context
management in a healthcare environment includ[ing] creating at least one
context for retrieving information from at least one information source,
defining set [sic] of at least one rule for processing information, and
allowing retrieval of information in the context(s) using the rule(s)." (Id.
,r 23.) In short, Mahesh discloses at least obtaining information from an
information source based on a request/query.
We now construe the claim term "intercept context." Appellants'
Specification defines "context" as "includ[ing] information which may be
shared by or derived from a computerized system such as an EMR."
(Spec. 27, 11. 13-14.) Appellants' Specification also provides the following
definition:
"context interception" - obtaining, for a first computerized
system such as a HIES [health information exchange system]
context from a second computerized system such as an EMR,
e.g., by sharing or deriving, typically including a determination
of how the information from the second computerized system is
to be used or related to by the first computerized system."
(Id. at 27, 11. 18-21; see also id. at 11. 2--4. 3) This definition does not exclude
obtaining context through a query. Applying a broadest reasonable
3 We note that the decision in the appeal of application 14/145 ,903
discussed the claim term "context interception." (See Decision in Appeal
2017-007366, mailed Nov. 30, 2018, at 8.) We also note that the
Specification in that application did not include this definition of the term
"context interception." Claims are construed in light of the specification. In
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interpretation, we conclude that the term "context interception" does not
exclude obtaining, by query, "for a first computerized system ... context
from a second computerized system." (See Spec. 27, 11. 18-19.) Appellants
do not point to any language in the Specification or elsewhere to persuade us
that the claim term "intercept context" should be construed differently from
the term "context interception." Indeed, claim 1 recites a "context
interception process using a processor to intercept context."
Nor are we persuaded by Appellants argument that
obtaining information from an information source based on a
query requires that the information source be configured to
respond to such a query, whereas a recited HIE-EMR bridging
application can be utilized with EMR applications which are not
configured to provide any context information to an external
source in response to a query.
(Appeal Br. 9, emphasis omitted.) Appellants do not point to language in
claim 1 requiring that EMR applications not be configured to provide
context information to an external source in response to a query.
Appellants also argue that the cited references do not disclose the
claimed context interception process, i.e., interception of
context/information and "identification [ within the obtained information] of
an event by which a health provider using an EMR application calls up an
re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004),
quoting In re Bond, 910 F.2d 831, 833 (Fed. Cir. 1990) ("During
examination, 'claims ... are to be given their broadest reasonable
interpretation consistent with the specification, and ... claim language
should be read in light of the specification as it would be interpreted by one
of ordinary skill in the art."') In this case, and in view of this difference in
the specifications, i.e., the explicit definition here, the construction of the
claim term "context interception" is also different.
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individual patient's record." (Appeal Br. 10.) However, Appellants do not
persuasively argue why the Examiner's finding that this limitation is taught
by the cited art is in error. (See Answer 13.) Moreover, we note that
Mahesh discloses obtaining information, i.e., intercepting context, from an
information source (see, e.g., Mahesh ,r,r 19, 23), filtering the information
based on a rule, i.e., identifying an event within the information (see, e.g.,
id.), and calling up/retrieving additional information (see, e.g., id. ,r 23).
Mahesh also discloses that the disclosed invention can be "integrated into a
single unit," i.e., a single device. (Id. ,r 28).
In view of the above, we are not persuaded that the Examiner erred in
rejecting claim 1 under§ 103(a). Appellants "submit[] that claims 1, 3-5,
and 7-11 stand or fall together, with independent claim 1 being
representative of this grouping." (Appeal Br. 7.) Therefore, dependent
claims 3-5 and 7-11 fall with claim 1.
DECISION
The Examiner's rejection of claims 1, 3-5 and 7-11 under 35 U.S.C.
§ 101 is reversed.
The Examiner's rejection of claims 1, 3-5 and 7-11 under 35 U.S.C.
§ 103(a) is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(l )(iv).
AFFIRMED
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