Ex Parte Blechman

Patent Trial and Appeal BoardAug 8, 2018

14588304 (P.T.A.B. Aug. 8, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 14/588,304 12/31/2014 16275 7590 08/10/2018 HolzerIPLaw, PC dba Holzer Patel Drennan 216 16th Street Suite 1350 Denver, CO 80202 FIRST NAMED INVENTOR Elaine Blechman 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. 293002USP 1374 EXAMINER BURGESS, JOSEPH D ART UNIT PAPER NUMBER 3626 NOTIFICATION DATE DELIVERY MODE 08/10/2018 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): hiplaw@blackhillsip.com docket@hpdlaw.com rholzer@hpdlaw.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte ELAINE BLECHMAN Appeal2018-006468 Application 14/588,304 Technology Center 3600 Before MASHID D. SAADAT, ST. JOHN COURTENAY III, and JAMES W. DEJMEK, Administrative Patent Judges. COURTENAY, Administrative Patent Judge. DECISION ON APPEAL Appellant1 appeals under 35 U.S.C. Â§ 134(a) from a final rejection of claims 1-23, which are all the claims pending in this application. We have jurisdiction over the pending claims under 35 U.S.C. Â§ 6(b ). We reverse. 1 According to Appellant, the real party in interest is Elaine Blechman, the named inventor. App. Br. 3. Appeal2018-006468 Application 14/588,304 STATEMENT OF THE CASE Introduction Appellant's invention "relate[s], in general, to information management technology and specifically to health records management systems." (Spec. ,r 2). Illustrative Claim 1. A method of populating an exclusively patient controlled record in a patient controlled electronic health record (PCHR) record repository, the method comprising: processing a request from a patient for a health information artifact; determining a supplier of the health information artifact; generating one or more information request templates required by the supplier of the health information artifact; generating an information request document using one or more of the information request templates; encrypting the information request document; sending the encrypted information request document to the supplier of the health information artifact; receiving the health information artifact; adding the health information artifact to the exclusively patient controlled record stored in the PCHR record repository; and controlling access of a user, human or machine, to the exclusively patient controlled record in the PCHR record repository based on (a) patient authorization of the user for future record access and (b) consent from a registered device in 2 Appeal2018-006468 Application 14/588,304 response to the request of a patient authorized user for current record access, wherein the registered device is a mobile device; receiving a request from the user for access to the exclusively patient controlled record in the PCHR record repository; determining if the user has previously been authorized by the patient for record access and patient-authorized user permissions associated with the record; sending the access request of the patient-authorized user to the registered device; and receiving a consent reply from the registered device. App. Br. 15, Claims Appendix. Rejection Claims 1-23 are rejected under 35 U.S.C. Â§ 101 as being directed to patent-ineligible subject matter. Final Act. 2-5. Issue on Appeal Did the Examiner err in rejecting claims 1-23 under 35 U.S.C. Â§ 101 as being directed to patent-ineligible subject matter? ANALYSIS We have considered all of Appellant's arguments and any evidence presented. We highlight and address specific findings and arguments for emphasis in our analysis below. 3 Appeal2018-006468 Application 14/588,304 The Examiner's Rejection under 35 US.C. Â§ 101 Regarding the first step of the Alice/Mayo analysis, the Examiner concludes claims 1-23 are directed to an abstract idea: 2 The claims are directed to the abstract idea of populating and controlling access to a patient controlled health record because they involve, in part, processing a request from a patient for a health information artifact, determining a supplier of the health information artifact, generating one or more information request templates required by the supplier of the health information artifact, generating an information request document using one or more of the information request templates, encrypting the information request document, sending the encrypted information request document to the supplier of the health information artifact, receiving the health information artifact, adding the health information artifact to the exclusively patient controlled record stored in the PCHR record repository, and controlling access of a user to the exclusively patient controlled record in the PCHR record repository based on (a) patient authorization of the user for future record access and (b) on consent from a registered device in response to the request of a patient-authorized user for current record access, receiving a request from the user for access to the exclusively patient controlled record, determining if the user has previously been authorized by the patient for record access and patient- authorized user permissions associated with the record, sending the access request of the patient-authorized user to the registered device, and receiving a consent reply from the registered device. [paragraph break inserted] This corresponds to the abstract ideas identified by the courts of comparing new and stored information and using rules to identify options (because the limitations outline comparing a patient request for health information with suppliers of health 2 "Patent eligibility underÂ§ 101 presents an issue of law .... " Accenture Glob. Servs., GmbH v. Guidewire Software, Inc., 728 F.3d 1336, 1340 (Fed. Cir. 2013). 4 Appeal2018-006468 Application 14/588,304 information and using rules to determine a supplier for the patient request, comparing the determined supplier with information request templates and using rules to generate information request templates required by the supplier, comparing request information used in the information request template and using rules to generate an information request document, comparing patient information to health information artifacts and using rules to send the health information artifacts to the patient, comparing a request for access to patient controlled records to previously authorized users and using rules to send an access request to a patient registered device), using categories to organize, store and transmit information (because the limitations outline organizing information request templates into information request documents, forming data transactions and transmitting the request documents, organizing health information artifacts into categories based on a particular patient, forming data transactions and transmitting the health information artifacts), and creating a contractual relationship (because the limitations outline the patient granting authorization for user future access to the patient's records and through a registered device providing consent in response to a request from a patient-authorized user for current record access). Final Act. 2-3 ( emphasis added). Regarding the second step of the Mayol Alice analysis, the Examiner finds the claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception, because: The computer system as recited comprises generic computer components that perform generic functions (i.e. processing request, determining supplier, generating template, generating document, encrypting document, sending document, receiving artifact, adding artifact, controlling access, receiving request, determining authorization, sending request, and receiving consent). [paragraph break inserted] 5 Appeal2018-006468 Application 14/588,304 These are generic computer functions that are well-understood, routine, and conventional activities previously known to the industry. The additional elements include a repository, machine, mobile device and/or device, CRM, module, and processor, etc., which are recited at a high level of generality and do not add meaningful limitations to the abstract idea beyond generally linking the system to a particular technological environment, that is, implementation via computers. Final Act. 4 ( emphasis added). For the aforementioned reasons, inter alia, the Examiner concludes that all claims 1-23 on appeal are not patent-eligible under 35 U.S.C. Â§ 101. The Examiner's Answer In the Answer ( 4--5), the Examiner further explains the basis for the rejection: Contrary to McRO, the instant application is merely solving a problem involving "[ fJragmented documentation of healthcare services in the insular ECHR systems of competing healthcare enterprises, largely inaccessible to consumers but subject to frequent illegitimate breaches, burden consumers who must physically transport their health records from one provider to another and cause needless, dangerous and costly errors by healthcare providers acting on inaccurate and incomplete patient information" by providing a patient-controlled electronic health record (PCHR) system that "enables a healthcare consumer to exercise exclusive control over her record in the PCHR system". See specification, ,r [,I] 0032, 0034. Ans. 4--5. In particular, the Examiner finds: "Aggregation of patient electronic health records and patient control over access to those records is well- understood, routine, and conventional activity in the medical prior art, as 6 Appeal2018-006468 Application 14/588,304 would be shown to anyone doing a simple patent search." Ans. 5 ( emphasis added). 3 The Examiner further finds: "it appears Appellant is merely providing the well-understood, routine and conventional practice of patient-controlled health records to avoid 'needless, dangerous and costly errors by healthcare providers acting on inaccurate and incomplete patient information' which does not amount to "an improved technological result in conventional industry practice" like McRO." Ans. 6. Intervening Authority cited in the Reply Brief In the Reply Brief (3-5), Appellant cites to an intervening authority as the basis for reconsideration of our affirmance of the Examiner's rejection of claims 1-23, as being directed to patent-ineligible subject matter: The examiner further argues that "Applicant is merely providing the well-understood, routine and conventional practice of patient-controlled health records." See Examiner's Answer, page 6. However, the cited references (provided on page 5 of the Examiner's Answer) do not disclose anything about ''patient controlled health record" and specifically there is no discussion about providing the control using the technical solution where a patient-registered mobile device is used to control such access to the health records. According to the Federal Circuit, 11 [ w ]hether something is well-understood, routine, and convention [ al] to a skilled artisan at the time of the patent is a factual determination. 11 See Berkheimer v. HP Inc., 881 F.3d 1360, (Fed. Cir. 2018) at 1369. 3 The patent eligibility inquiry may contain underlying issues of fact. Mortg. Grader, Inc. v. First Choice Loan Servs. Inc., 811 F.3d 1314, 1325 (Fed. Cir. 2016). In particular, "[t]he question of whether a claim element or combination of elements is well-understood, routine and conventional to a skilled artisan in the relevant field is a question of fact." Berkheimer v. HP Inc., 881 F.3d 1360, 1368 (Fed. Cir. 2018). 7 Appeal2018-006468 Application 14/588,304 Reply Br. 4--5 (emphasis added). We note Appellant's Appeal Brief was filed on April 11, 2017. In reviewing the record, we recognize that Appellant had no opportunity to argue Berkheimer until after it was decided by the Federal Circuit on February 8, 2018. Thus, Appellant's first opportunity to argue Berkheimer as an intervening authority was in the Reply Brief, filed on June 4, 2018. Accordingly, Appellant's new arguments citing Berkheimer (881 F.3d at 1369) as an intervening authority (Reply Br. 5) are permitted under our procedural rule, 37 C.F.R. Â§ 4I.52(a)(2) ("Appellant may present a new argument based upon a recent relevant decision of either the Board or a Federal Court."). 4 As additional support for their argument, Appellant (Reply Br. 5) also cites to the new examination procedure published online by the USPTO on April 19, 2018, entitled "Changes in Examination Procedure Pertaining to Subject Matter Eligibility, Recent Subject Matter Eligibility Decision (Berkheimer v. HP, Inc.)" (hereinafter "USPTO Memorandum"). Appellant contends: The Applicant respectfully submits that the combination of the limitations recited in claim 1 regarding controlling access to the PCHR using a patient registered mobile device is not "well- understood, routine and conventional activity previously known to the industry." Furthermore, according to the PTO 4 Although 37 C.F.R. Â§ 41.52(a)(2) was intended for rehearing requests, we interpret our procedural rule ( which permits the citation of an intervening authority) as being equally applicable to the timely citation of an intervening authority in the Reply Brief, and thus we find the timely citation of an intervening authority establishes a showing of "good cause" under 37 C.F.R. Â§ 4I.41(b)(2). 8 Appeal2018-006468 Application 14/588,304 Memorandum [5] dated April 19, 2018, in a step 2B analysis, an additional element ( or combination of elements) is not well- understood, routine or conventional unless the examiner finds, and expressly supports the rejection in writing with, one or more of the four methods provided therein. Reply Br. 5 ( emphasis added). As noted by Appellant (id.), the USPTO Memorandum sets forth a new fact finding requirement for Examiners that is applicable to rejections under Â§ 101. Specifically, Examiners must now provide specific types of evidence to support a finding that claim elements ( or combinations of elements) are well-understood, routine, and conventional. We reproduce below changes to prior examination practice, as set forth in the April 19, 2018 USPTO Memorandum (3--4): A. Formulating Rejections: In a step 2B analysis, an additional element (or combination of elements) is not well- understood, routine or conventional unless the examiner finds, and expressly supports a rejection in writing with, one or more of the following: 1. A citation to an express statement in the specification or to a statement made by an applicant during prosecution that demonstrates the well-understood, routine, conventional nature of the additional element(s). A specification demonstrates the well-understood, routine, conventional nature of additional elements when it describes the additional elements as well-understood or routine or conventional ( or an equivalent term), as a commercially available product, or in a manner that indicates that the additional elements are sufficiently well-known that the specification does not need to describe the particulars of such additional elements to 5 "Changes in Examination Procedure Pertaining to Subject Matter Eligibility, Recent Subject Matter Eligibility Decision (Berkheimer v. HP, Inc.)." Reply Br. 5. 9 Appeal2018-006468 Application 14/588,304 satisfy 35 U.S.C. Â§ 112(a). A finding that an element is well-understood, routine, or conventional cannot be based only on the fact that the specification is silent with respect to describing such element. 2. A citation to one or more of the court decisions discussed in MPEP Â§ 2106.05( d)(II) as noting the well-understood, routine, conventional nature of the additional element( s ). 3. A citation to a publication that demonstrates the well- understood, routine, conventional nature of the additional element(s). An appropriate publication could include a book, manual, review article, or other source that describes the state of the art and discusses what is well- known and in common use in the relevant industry. It does not include all items that might otherwise qualify as a "printed publication" as used in 35 U.S.C. Â§ 102.[] Whether something is disclosed in a document that is considered a "printed publication" under 35 U.S.C. Â§ 102 is a distinct inquiry from whether something is well- known, routine, conventional activity. A document may be a printed publication but still fail to establish that something it describes is well-understood, routine, conventional activity. See Exergen Corp., 2018 WL 1193529, at *4 (the single copy of a thesis written in German and located in a German university library considered to be a "printed publication" in Hall "would not suffice to establish that something is 'well- understood, routine, and conventional activity previously engaged in by scientists who work in the field"'). The nature of the publication and the description of the additional elements in the publication would need to demonstrate that the additional elements are widely prevalent or in common use in the relevant field, comparable to the types of activity or elements that are so well-known that they do not need to be described in detail in a patent application to satisfy 35 U.S.C. Â§ 112(a). For example, while U.S. patents and published applications are publications, merely finding the 10 Appeal2018-006468 Application 14/588,304 additional element in a single patent or published application would not be sufficient to demonstrate that the additional element is well-understood, routine, conventional, unless the patent or published application demonstrates that the additional element are widely prevalent or in common use in the relevant field. 4. A statement that the examiner is taking official notice of the well-understood, routine, conventional nature of the additional element(s). This option should be used only when the examiner is certain, based upon his or her personal knowledge, that the additional element( s) represents well-understood, routine, conventional activity engaged in by those in the relevant art, in that the additional elements are widely prevalent or in common use in the relevant field, comparable to the types of activity or elements that are so well-known that they do not need to be described in detail in a patent application to satisfy 35 U.S.C. Â§ 112(a). Procedures for taking official notice and addressing an applicant's challenge to official notice are discussed in MPEP Â§ 2144.03. Applying the procedural guidance of the USPTO Memorandum (id.) here, and based upon our review of the record, we agree with Appellant that "an additional element ( or combination of elements) is not well-understood, routine or conventional unless the [E]xaminer finds, and expressly supports the rejection in writing with, one or more of the four methods provided therein." Reply Br. 5 ( emphasis added). Thus, Appellant's assertion is correct that the various statements in the record by the Examiner as to what is purportedly well-understood, routine or conventional, without more, do not provide any of the types of factual evidence required by the USPTO Memorandum (3--4), which officially implemented the guidance of Berkheimer (881 F.3d at 1369). 11 Appeal2018-006468 Application 14/588,304 Therefore, after reviewing the arguments articulated by Appellant in the Reply Br. (4--5), we find Appellant's arguments persuasive, based upon: (1) the intervening authority Berkheimer (881 F.3d at 1369), and, (2) the intervening USPTO Memorandum, which changed patent examination practice and procedure to be compliant with the guidance of Berkheimer. Accordingly, for essentially the same reasons articulated by Appellant in the Reply Brief ( 4--5), as pertaining to intervening controlling authority of Berkheimer, and the additional mandatory examination practice and procedure changes set forth in the USPTO Memorandum, we are constrained on this record to reverse the Examiner's rejection of claims 1-23 under 35 U.S.C. Â§ 101, as being directed to patent-ineligible subject matter. CONCLUSION The Examiner erred in rejecting claims 1-23, under 35 U.S.C. Â§ 101, as being directed to patent-ineligible subject matter. DECISION We reverse the Examiner's decision rejecting claims 1-23 under 35 U.S.C. Â§ 101. REVERSED 12