Ex Parte Harvey et al

Patent Trial and Appeal Board

Mar 26, 2018

13165147 (P.T.A.B. Mar. 26, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/165,147 06/21/2011
23628 7590 03/28/2018
WOLF GREENFIELD & SACKS, P.C.
600 ATLANTIC A VENUE
BOSTON, MA 02210-2206
FIRST NAMED INVENTOR
David D. Harvey
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.
A0928.70006US01 3266
EXAMINER
PAULS, JOHN A
ART UNIT PAPER NUMBER
3626
NOTIFICATION DATE DELIVERY MODE
03/28/2018 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):
Patents_eOfficeAction@WolfGreenfield.com
WGS_eOfficeAction@WolfGreenfield.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DAVID D. HARVEY, CHIP ACH, MATHEW BLAKE,
CHRISTOPHER BULKLEY, ANGELA CRAWFORD, DEIRDRE
PENICK, MICHAEL MACHENRY, CAL PIEROG, LIBBY CURTIS
WEBB, VAN B. WILLIS, ROBERT KEITH, and KURT SOPATA
Appeal2017-000246 1
Application 13/165,1472
Technology Center 3600
Before CYNTHIA L. MURPHY, KENNETH G. SCHOPPER, and
BRADLEY B. BAY AT, Administrative Patent Judges.
BAY AT, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's final
rejection of claims 1-3 and 5-39, which are all the pending claims in the
application. 3 We have jurisdiction under 35 U.S.C. § 6(b ).
We AFFIRM.
1 Our Decision references Appellants' Appeal Brief ("Br.," filed Jan. 20,
2016), the Examiner's Answer ("Ans.," mailed June 30, 2016), and Final
Office Action ("Final Act.," mailed May 22, 2015).
2 Appellants identify "athenahealth, Inc." as the real party in interest. Br. 2.
3 Claim 4 is canceled. Id. at 14, Claims App'x.
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Application 13/165,147
STATEMENT OF THE CASE
Claimed Subject Matter
Appellants' invention is titled Healthcare Information Communication
System. Method claim 1, system claim 19, and computer readable medium
claim 39 are the independent claims on appeal. Claim 1, reproduced below,
is illustrative of the claimed subject matter and recites:
1. A method of facilitating communication between at
least one patient and a healthcare provider using a practice
management system that includes a communications
management component, a billing management component,
and a health information management component, the method
compnsmg:
storing, by the communications management
component, personal preferences information for each of a
plurality of patients of a plurality of medical practices
associated with the practice management system, wherein at
least one of the plurality of medical practices is associated
with a plurality of healthcare providers;
storing, by the health information management
component, electronic health information for each of the
plurality of patients;
receiving, by the practice management system, updated
data for one or more of the plurality of patients;
generating, in response to receiving the updated data, at
least one automated message, wherein the at least one
automated message is generated based, at least in part, on the
stored electronic health information for the first patient, and
wherein the generating is performed by at least one computer
processor of the practice management system;
determining based, at least in part, on the stored
personal preferences information-for the first patient, a
preferred mode of communication; and
transmitting, by the communications management
component, the at least one automated message to the first
patient using the determined preferred mode of
communication.
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Application 13/165,147
Rejections4
Claims 1-3 and 5-39 are rejected under 35 U.S.C. § 101 as directed to
non-statutory subject matter.
Claims 1-3, 5-7, and 9-18 are rejected under 35 U.S.C. § 112, second
paragraph, as being indefinite.
Claims 19 and 28-31 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Lawless (US 2007 /0168228 Al, published July. 19, 2007)
and Lipscher et al. (US 2006/0031097 Al, published Feb. 9, 2006
(hereinafter "Lipscher").
Claims 1, 2, 7, 10, 12, 14--18, 29, 30, 31, and 39 are rejected under
35 U.S.C. § 103(a) as unpatentable over Grichnik et al. (US 2009/0062621
Al, published Mar. 5, 2009) (hereinafter "Grichnik"), Lawless, and
Lipscher. 5
Claim 3 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Grichnik, Lawless, and Forrest et al. (WO 2010/073208 Al, published
July 1, 2010).
Claims 5, 6, and 9 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Grichnik, Lawless, Lipscher, and Bocionek et al.
(US 2004/0243441 Al, published Dec. 2, 2004 (hereinafter "Bocionek").
Claim 8 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Grichnik, Lawless, Lipscher, and Fox et al. (US 2011/0161097 Al,
published June 30, 2011 ("hereinafter "Fox").
4 We treat the Examiner's inclusion of canceled claim 4 in the statements of
rejection as harmless error.
5 We note the Examiner's inadvertent inclusion of claim 3 in the statement
of rejection.
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Application 13/165,147
Claim 11 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Grichnik, Lawless, Lipscher, and Levine et al. (US 7,756, 722 B2, issued
July 13, 2010).
Claim 13 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Grichnik, Lawless, Lipscher, and Kerr, II (US 2004/0030582 Al, published
Feb. 12, 2004).
Claims 20-23 are rejected under 35 U.S.C. § 103(a) as unpatentable
over Lawless, Lipscher, and Bocionek.
Claims 24 and 25 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Lawless, Lipscher, and Young et al. (US 2011/0270640
Al, published Nov. 3, 2011) (hereinafter "Young").
Claims 26 and 27 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Lawless, Lipscher, Young, and Fox et al. (US
2011/0161097 Al, published June 30, 2011).
Claims 32 and 33 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Lawless, Lipscher, and Krishnan et al., (US 2005/0234740
Al, published Oct. 20, 2005).
Claims 34--38 are rejected under 35 U.S.C. § 103(a) as unpatentable
over Lawless, Lipscher, and Official Notice.
ANALYSIS
Non-Statutory Subject Matter
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: "[l]aws of nature, natural phenomena, and
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abstract ideas" are not patentable. See, e.g., Alice Corp. Pty Ltd. v. CLS
Banklnt'l, 134 S. Ct. 2347, 2354 (2014).
The Supreme Court, in Alice, reiterated the two-step framework
previously set forth in Mayo Collaborative Services v. Prometheus Labs.,
Inc., 132 S. Ct. 1289, 1300 (2012), "for distinguishing patents that claim
laws of nature, natural phenomena, and abstract ideas from those that claim
patent-eligible applications of these concepts." Alice, 134 S. Ct. at 2355.
The first step in that analysis is to "determine whether the claims at issue are
directed to one of those patent-ineligible concepts," id., e.g., to an abstract
idea. If the claims are not directed to an abstract idea, the inquiry ends.
Otherwise, the inquiry proceeds to the second step where the elements of the
claims are considered "individually and 'as an ordered combination'" to
determine whether there are additional elements [that] "'transform the nature
of the claim' into a patent-eligible application." Alice, 134 S. Ct. at 2355
(quoting Mayo, 132 S. Ct. at 1297).
Applying the framework in Alice, and as the first step of that analysis,
the Examiner determined that the claims are "directed to billing and health
information management and storing personal preference information for a
plurality of patients in order to generate an automated message based, at
least in part, on the stored personal preference information using a preferred
mode of communication, which considered in its entirety, contains elements
of a fundamental economic process and a method of organizing human
activities or comparing new and stored information and using rules to
identify options which the courts have found to be an abstract idea." Final
Act. 2. Proceeding to the second step, the Examiner found
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The additional element( s) or combination of elements in
the claim(s) other than the abstract idea per se amount(s) to no
more than: (i) mere instructions to implement the idea on a
computer, and (ii) recitation of generic computer structure that
serves to perform generic computer functions that utilizes
conventional methods of contact (i.e. phone calls or mail) that
are well-understood, routine, and conventional activities
previously known to the pertinent industry. Viewed as a whole,
these additional claim element( s) do not provide meaningful
limitation(s) to transform the abstract idea into a patent eligible
application of the abstract idea such that the claim(s) amounts to
significantly more than the abstract idea itself.
Id. at 2-3.
As an initial matter, Appellants argue that the § 101 rejection "should
be reversed because the Final Office Action fails to clearly articulate an
alleged abstract idea to which the claims are directed." Br. 6. According to
Appellants, the Final Office Action merely "recites various claim limitations
and categories that the courts have identified as being abstract without
identifying any particular alleged abstract idea on which the Office is relying
to support the rejections under 35 U.S.C. § 101." Id. We disagree.
35 U.S.C. § 132 sets forth a general notice requirement to ensure that
an applicant is notified of the reasons for a rejection together with such
information as may be useful in judging the propriety of continuing with
prosecution of the application. See, e.g., In re Jung, 637 F.3d 1356, 1362
(Fed. Cir. 2011 ). In this case, the Examiner provided adequate explanation
to meet the notice requirement. The Examiner set forth the statutory basis of
the rejection, applied Alice's two-part framework, and sufficiently
articulated reasoning relating to the Alice analsysis in an informative
manner, thus, meeting the notice requirement of 35 U.S.C. § 132. See
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Chester v. Miller, 906 F.2d 1574, 1578 (Fed. Cir. 1990) (Section 132 "is
violated when a rejection is so uninformative that it prevents the applicant
from recognizing and seeking to counter the grounds for rejection.").
Specifically, the Examiner followed the analysis used by the Supreme
Court and the Federal Circuit by comparing the claimed concepts to prior
decisions to identify an abstract idea More specifically, the Examiner
determined that the claims are "directed to billing and health information
management and storing personal preference information for a plurality of
patients in order to generate an automated message based, at least in part, on
the stored personal preference information using a preferred mode of
communication," and indicated that the claims encompass a fundamental
economic process, a method of organizing human activities, or comparing
new and stored information and using rules to identify options, which courts
have found to be abstract ideas. See Final Act. 2; see also Ans. 3--4. For
example, the Examiner identified the recitation of "a billing management
component" in the independent claims as "a fundamental economic practice
in healthcare accounting." Final Act. 24.
Therefore, Appellants have been provided with adequate notice to
recognize and counter the Examiner's rejection.
Independent claims 1 and 3 9
As to the first step in the Alice framework, Appellants present no
arguments to dispute the Examiner's characterization of the abstract idea. ,
In any event, we agree with the Examiner's determination that the claims are
directed to a patent-ineligible concept-an abstract idea. Here, the claims
presented are similar to those found by the Board, and recently affirmed by
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the Federal Circuit, to be directed to the "abstract idea of billing insurance
companies and organizing patient health information," which "describes
little more than the automation of a 'method of organizing human activity'
with respect to medical information." In re Salwan, No. 2016-2079, 2017
WL 957239 *3 (Fed. Cir. Mar. 13, 2017) (citing Alice, 134 S. Ct. at 2356).
As the Federal Circuit recognized in Salwan, although the concepts recited
in the claims may be "practical concepts," they are nevertheless
"fundamental economic and conventional business practices," and thus, are
abstract ideas. Id.
Step two is "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.
In that regard, Appellants argue that the receiving and generating
"elements of claims 1 and 39, considered either individually or in an ordered
combination, amount to 'significantly more' than any of the alleged abstract
ideas listed in the Final Office Action." Br. 7 ("[T]hese limitations require
that at least one automated message is generated based, at least in part, on
electronic health information stored by a health information management
component of a practice management system and that the at least one
automated message is generated in response to receiving updated data for
one or more patients associated with the practice management system.").
According to Appellants, the integration of a communications management
component, a billing management component, and a health information
management component "by the practice management system enables the
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generation and transmission of automated messages not possible in systems
that do not include such components." Id.
However, we do not see, and Appellants do not help us see, how
receiving updated data of patients and generating an automated message in
response to receiving the updated data transforms the abstract idea into an
inventive application. The steps of "receiving" data and manipulating
existing data by "generating" additional data for automatic transmission are
functions a generic computer conventionally performs. See Ans. 5---6 (citing
Spec. i-fi-f 124--34). And "[t]aking the claim elements separately, the function
performed by the computer at each step of the process is '[p ]urely
conventional."' Alice, 134 S. Ct. at 2359 (citing Mayo, 132 S. Ct. at 1298).
Considered as an ordered combination, the computer components 6 add
nothing that is not already present when the steps are considered separately.
Id. "[T]he focus of the claims is not on such an improvement in computers
as tools, but on certain independently abstract ideas that use computers as
tools." Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1354 (Fed.
Cir. 2016). As in Salwan, the recited steps fail to transform the nature of the
claims as they are directed to generic computer structures (e.g., computer
processor) for storing and transferring information. Considering the claim
elements individually and as an ordered combination, the claims merely
implement long-known practices related to healthcare management and
patient health information on generic computers.
6 "Computer-executable instructions may be in many forms, such as program
modules, executed by one or more computers or other devices. Generally,
program modules include routines, programs, objects, components, data
structures, etc. that perform particular tasks or implement particular abstract
data types." Spec. i-f 134.
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In view of the foregoing, we sustain the rejection of independent
claims 1 and 39 under 35 U.S.C. § 101, including claims 2, 3, and 5-18,
which are argued based on their dependency on claim 1. See Br. 7.
Independent claim 19
Appellants assert that claim 19 is distinct from claims 1 and 39
because it "does not include any limitations directed to storing personal
preference information for a plurality of patients or generating an automated
message based, at least in part, on stored personal preference information
using a preferred mode of communication." Br. 8. "Rather, claim 19 is
directed to a computer system that includes multiple components including a
health information datastore, a communications management component, a
billing management component, and at least one processor programmed to
provide a web-based user interface." Id. Appellants argue that "[b ]ecause
claim 19 does not include any limitations directed to the above-quoted
alleged abstract idea, claim 19 necessarily cannot be directed to this alleged
abstract idea, and the rejection under 35 U.S.C. § 101 is improper and should
be reversed." Id.
However, we do not see, and the Appellants do not help us see, why
claim 19 is not directed to the abstract idea of "billing and health
information management" regardless of not storing personal preference
information patients or generating a message based on that information. As
discussed above, the recitation of multiple components in the claim, as in
claims 1 and 39, does not alter the analysis under Alice step one. See Ans.
6-7.
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Thus, we sustain the rejection of independent claim 19 under § 101,
including claims 20-38, which are argued based on their dependency on
claim 19. See Br. 8.
Indefiniteness
We are persuaded by Appellants' argument that the Examiner erred in
rejecting claims 1-3, 5-7, and 9-18 under 35 U.S.C. § 112, second
paragraph, as indefinite. Br. 8-9.
The Examiner determined that the limitation in claim 1 of "updated
data of one or more of the plurality of patients" is indefinite because it is
"unclear whether the said updated data is updating data on the personal
preference information for each patient, electronic health information for
each patient, or updating some other information." Final Act. 3.
However, we agree with Appellants, and the Examiner does not
explain in the Answer (see Ans. 7), why a person of ordinary skill in the art
upon reviewing paragraphs 54, 65, and 75 of the Specification would not
understand "that the updated data recited in claim 1 is any data stored by the
practice management system for one or more patients, including personal
preferences information and electronic health information, that may be
updated and may trigger the generation of an automated message." Br. 9.
Even though the claimed updated data broadly encompasses any of the
recited patient information in claim 1, "[b ]readth is not indefiniteness." In
re Gardner, 427 F.2d 786, 788 (CCPA 1970).
Therefore, we do not sustain the rejection under 35 U.S.C. § 112,
second paragraph.
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Independent claim 19
Obviousness
In contesting the Examiner's rejection of independent claim 19 as
obvious over Lawless and Lipscher, Appellants argue that "neither Lawless
nor Lipscher discloses or suggests a health information datastore configured
to store electronic health information for patients of a plurality of medical
practices, at least one of which is associated with a plurality of healthcare
providers, as required by claim 19." Br. 10-11 (citing Lipscher i-f 31 as
disclosing "management of a single medical practice").
In response to Appellants' argument, the Examiner asserts that
Lipscher discloses that
records may be acquired from other systems, for example, from
third-party payers, the patient's previous healthcare providers or
the patients themselves. (0038, 0051, 0053 and 0054). This
reasonably conveys storing data for a plurality of patient[ s] of a
plurality of medical practices, wherein at least one of the
plurality of medical practices is associated with a plurality of
healthcare providers, as claimed.
Ans. 8.
Appellants do not dispute this finding, as such, we are not apprised of
Examiner error. We note that paragraph 53 of Lipscher does disclose that
healthcare providers, such as nurses and physicians, are provided with an
interface to enter patient findings and medical history, wherein findings
acquired from a patient and provided by healthcare providers are combined
and stored in a database. Because Appellants have not shown error as to the
Examiner's findings, we sustain the rejection of claim 19 as obvious over
Lawless and Lipscher, including claims 20-38, which are argued based on
their dependency on claim 19. See Br. 11.
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Independent claims 1 and 3 9
Appellants assert that "each of claims 1 and 39 recites, 'storing, by
the communications management component, personal preferences
information for each of a plurality of patients of a plurality of medical
practices associated with the practice management system, wherein at least
one of the plurality of medical practices is associated with a plurality of
healthcare providers."' Br. 11. In contesting the Examiner's rejection of
independent claims 1 and 39 as obvious over Grichnik, Lawless and
Lipscher, Appellants simply assert that none of these references "discloses
or suggests a practice management system associated with a plurality of
medical practices, at least one of which is associated with a plurality of
healthcare providers, the purported combination of Grichnik, Lawless, and
Lipscher necessarily also fails to disclose or suggest the above-quoted
portion of claims 1 and 39." Id.
In response to Appellants' argument, the Examiner provides a detailed
analysis as to how and why the above contested limitation is disclosed by the
cited prior art. See Ans. 9-12.
Appellants may well disagree with how the Examiner interpreted and
applied the references, but Appellants offer no substantive arguments to
rebut these specific underlying factual findings made by the Examiner in
support of the ultimate legal conclusion of obviousness. And we decline to
examine the claims sua sponte, looking for distinctions over the prior art.
Cf In re Baxter Travenol Labs., 952 F.2d 388, 391 (Fed. Cir. 1991) ("It is
not the function of this court to examine the claims in greater detail than
argued by an appellant, looking for [patentable] distinctions over the prior
art."). In the absence of a more detailed explanation, we are not persuaded
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of error on the part of the Examiner. See Jung, 637 F.3d. at 1365 ("[I]t has
long been the Board's practice to require an applicant to identify the alleged
error in the examiner's rejections," (citing Ex Parte Frye, 94 USPQ2d 1072
(BP AI 2010) (precedential) ("The panel then reviews the obviousness
rejection for error based upon the issues identified by appellant, and in light
of the arguments and evidence produced thereon.")).
Accordingly, we sustain the rejection of independent claims 1 and 39
under 35 U.S.C. § 103(a), including claims 2, 3, and 5-18, which are argued
based on their dependency on claim 1. Br. 11.
DECISION
The rejection under 35 U.S.C. § 101 is affirmed.
The rejection under 35 U.S.C. § 112, second paragraph, is reversed.
The rejections under 35 U.S.C. § 103 are 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)(l )(iv).
AFFIRMED
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