Ex Parte Lorsch

Patent Trial and Appeal BoardOct 16, 2018

14270491 (P.T.A.B. Oct. 16, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 14/270,491 05/06/2014 133690 7590 10/18/2018 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- P017 9563 EXAMINER CHNG, JOY POH AI ART UNIT PAPER NUMBER 3686 NOTIFICATION DATE DELIVERY MODE 10/18/2018 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 Appeal 2018-001811 Application 14/270,491 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. Â§ 134 of the final rejection of claims 1-5 and 7-30 which are all the claims pending in the application. We have jurisdiction under 35 U.S.C. Â§ 6(b). SUMMARY OF THE DECISION We AFFIRM. 1 Appellant identifies the real party in interest as MyMedicalRecords, Inc., a subsidiary ofMMRGlobal, Inc. App. Br. 3. Appeal 2018-001811 Application 14/270,491 THE INVENTION The Appellant's claimed invention is directed to a method of providing consumers a way to store and request their legal documents with legal service providers (Spec., page 1, lines 11-15). Claim 1, reproduced below, is representative of the subject matter on appeal. 1. A method for providing a client of one or more legal service providers with the ability to access and collect legal records associated with the client, comprising: providing a secure web site on a server; associating access information with the client for the client to use to access the secure web site on the server, wherein the secure web site on the server is accessible through use of the access information; providing the client with a document to provide to a legal services provider exercising rights of the client for access to the legal records, the document requesting the legal services provider to send the legal records to a client account associated with the client; assigning through the server a dedicated telephone number unique to the client account for communications from the legal services provider; electronically receiving a communication comprising a legal record from the legal services provider at the server, the communication directed to the client account, the legal record comprising information associated with the client for which the client has requested and given permission to the legal services provider to send; associating the legal record with the client account based, at least in part, on the dedicated telephone number; storing a representation of the legal record on the server as an image file; and providing the client with secure access to the secure web site on the server using the access information and providing on the secure web site an interface to the legal records of the client for the client to access the legal record; wherein the legal records are maintained on the server separately from any legal records maintained by the legal 2 Appeal 2018-001811 Application 14/270,491 services provider and wherein the legal records are managed privately by the client; and wherein the web site interface further provides for organizing and annotating the legal records by the client into separate file folders with functionality for the client to name the file folders with a user-generated file name. THE REJECTION The following rejection is before us for review: Claims 1-5 and 7-30 are rejected under 35 U.S.C. Â§ 101 as being directed to non-statutory subject matter. 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 evidence. 2 ANALYSIS Rejection under 35 USCÂ§ 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 (App. Br. 14--19, Reply Br. 14--20). In contrast, the Examiner has determined that rejection of record is proper (Final Act. 2---6, Ans. 3-7). 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). 3 Appeal 2018-001811 Application 14/270,491 We agree with the Examiner. Under 35 U.S.C. Â§ 101, an invention is patent-eligible if it claims a "new and useful process, machine, manufacture, or composition of matter." 35 U.S.C. Â§ 101. The Supreme Court, however, has long interpreted Â§ 101 to include an implicit exception: "[l]aws of nature, natural phenomena, and abstract ideas" are not patentable. See, e.g., Alice Corp. Pty. 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 2355 (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 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 allowing a person to store and access their legal records. This is a method of organizing human activities and is an abstract idea beyond the scope of Â§ 101. Courts have found claims directed to collecting, recognizing, and storing data in a computer memory to be directed to an abstract idea. Content Extraction and Transmission LLC v. Wells Fargo Bank, Nat 'l Ass 'n, 4 Appeal 2018-001811 Application 14/270,491 776 F.3d 1343 (Fed. Cir. 2014); See also 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. 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 at pages 6 and 7 for instance describes using generic fax, voice, and web servers 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 claims which are drawn to similar subject matter and the rejection of these claims is sustained as well. CONCLUSIONS OF LAW We conclude that Appellant has not shown that the Examiner erred in rejecting claims 1-5 and 7-30 under 35 U.S.C. Â§ 101. 5 Appeal 2018-001811 Application 14/270,491 DECISION The Examiner's rejection of claims 1-5 and 7-30 is sustained. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. Â§ 1.136(a). AFFIRMED 6