Ex Parte Lorsch

Patent Trial and Appeal Board

Jan 26, 2017

13736340 (P.T.A.B. Jan. 26, 2017)

United States Patent and Trademark Office
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
13/736,340 01/08/2013 Robert H. Lorsch MMR - P026 2839
133690 7590 01/30/2017
Goodhue, Coleman & Owens, P.C.
650 S. Prairie View Dr.
Suite 125, PMB #209
West Des Moines, IA 50266
EXAMINER
RAPILLO, KRISTINE K
ART UNIT PAPER NUMBER
3626
NOTIFICATION DATE DELIVERY MODE
01/30/2017 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
US PTO @ 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
Appeal 2017-000934
Application 13/736,3401
Technology Center 3600
Before HUBERT C. LORIN, BRUCE T. WIEDER, and
ROBERT J. SILVERMAN, Administrative Patent Judges.
LORIN, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Robert H. Lorsch (Appellant) seeks our review under 35 U.S.C. § 134
of the Examiner’s Final rejection of claims 1, 6, 9-13, 16, 22, 27, 28, and 31.
We have jurisdiction under 35 U.S.C. § 6(b) (2002).
We REVERSE.
1 The Appellant identifies MyMedicalRecords, Inc., as the real party in
interest. App. Br. 4.
Appeal 2017-000934
Application 13/736,340
CLAIMED INVENTION
Appellant’s claimed invention “relates to the collection, storage, and/or
management of online records” (Spec. 11).
Claim 1, reproduced below, is illustrative of the subject matter on
appeal.
Claim 1: A system comprising:
a card comprising (a) a first surface, (b) a second surface
opposite the first surface, (c) a promotional code printed on the second
surface, and (d) a scratch box on the second surface and overlaying
the promotional code;
a web server configured to receive the promotional code on the
card and activate a new, prepaid user account for collecting, storing,
and managing personal health records in response to receiving the
promotional code;
wherein the card further comprises an address associated with
the web server printed on the card, a user identifier area on the first
surface or the second surface of the card for completion by a
registered cardholder to specify a user identifier, an emergency
password area on the first surface or the second surface of the card for
completion by the registered cardholder to specify an emergency
password;
wherein the web server is configured to provide emergency
personnel with access to a subset of the personal health records in the
prepaid user account when the user identifier and the emergency
password are used by the emergency personnel to log into the prepaid
user account; and
product packaging for the card, the produce [sic] packaging
including a back side and an opposite front side, the produce [sic]
packaging including the address associated with the web server and
instructions for using the card as an emergency access card to provide
the emergency personnel with access to the subset of the personal
health records in the prepaid user account when the user identifier and
the emergency password are used by the emergency personnel to log
into the prepaid user account;
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Application 13/736,340
wherein the product packaging includes a code for scanning at a
point of sale.
THE REJECTIONS
The Examiner relies upon the following as evidence of
unpatentability:
Kwan
Malone
Lorsch
Mullen et al.
(“Mullen”)
The following rejections are before us for review:
1. Claims 1, 6, 9—13 and 31 are rejected under 35 U.S.C. § 101 as being
directed to non-statutory subject matter.
2. Claims 1, 6, 11—13, 16, 22, 27 and 31 are rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Mullen, Lorsch, and Malone.
3. Claims 9, 10, and 28 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Mullen, Lorsch, Malone, and Kwan.
ISSUES
Did the Examiner err in rejecting claims 1, 6, 9—13 and 31 under
35 U.S.C. § 101 as being directed to non-statutory subject matter?
Did the Examiner err in rejecting claims 1, 6, 11—13, 16, 22, 27
and 31 under 35 U.S.C. § 103(a) as being unpatentable over Mullen, Lorsch,
and Malone?
Did the Examiner err in rejecting claims 9, 10, and 28 under 35 U.S.C.
§ 103(a) as being unpatentable over Mullen, Lorsch, Malone, and Kwan?
US 2003/0200179 Al
US 6,640,974 B2
US 2007/0233519 Al
US 2011/0276437 Al
Oct. 23, 2003
Nov. 4, 2003
Oct. 4, 2007
Nov. 10,2011
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Application 13/736,340
FINDINGS OF FACT
We rely on the Examiner’s factual findings stated in the Answer.
Additional findings of fact may appear in the Analysis below.
ANALYSIS
The rejection of claims 1, 6, 9—13 and 31 under 35 U.S.C. § 101 as being
directed to non-statutory subject matter.
In challenging the rejection, the Appellant has explained that
some of the very advantages derived from the claimed invention are
due to the physical nature of the card and its packaging. [See]&.g.
Specification, p. 8, lines 16—22; []“First, it may be used to provide a
physical product which can be sold at retail locations such as retail
stores, drug stores, supermarkets, hospitals, hospital gift shops, or
other locations . . . the cardholder may carry the card in their wallet or
on their person.”
App. Br. 12.
The Examiner responded by arguing that
The physical card is merely a physical document which is used to
provide information to the web server; the claims are not an
improvement to technology, but rather a computer function well-
understood, routine, and conventional. The Appellant’s originally
filed [Specification discloses “[a] patient 102 or their proxy can
communicate directly with the web server 108 through a computing
device 109 (which may be, without limitation, a computer, tablet,
smart phone, web-enabled device,) or the fax/voice server 106 using a
phone 117” (page 11, lines 4—7) thus indicating a generic computer
performing functions that are well understood, routine, and
conventional activities previously known to the pertinent industry.
Ans. 2—3.
The Appellant countered:
This is not a fair characterization of the claims. Claim 1 includes
specific language regarding the card such as “a first surface; a second
surface opposite the first surface; a promotional code printed on the
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Application 13/736,340
second surface; a scratch box on the second surface and overlaying
the promotional code.” The card as claimed is certainly more than
merely a physical document and the purpose of the physical card is
more than to provide information to the web server and thus is clearly
more than merely a computer function. In particular, the card allows a
for a physical product to be offered which is associated with services,
the card conveys value associated with the services, but in a manner in
which the promotional code is protected (with the scratch box) and the
card may be used as a permanent emergency card for the recipient.
Here the claims include specific limitations other than what is well-
understood, routine, and conventional in the field.
Reply Br. 12—13.
In our view, the Appellant has the better argument. The question is a
simple one: does the claimed subject matter entail an unconventional
technological solution to a technological problem. Cf. Amdocs (Israel)
Limited v. Openet Telecom, Inc., No. 2015-1180, 2016 WL 6440387, *10
(Fed. Cir. Nov. 1, 2016):
[T]his claim entails an unconventional technological solution
(enhancing data in a distributed fashion) to a technological problem
(massive record flows which previously required massive databases).
The solution requires arguably generic components, including
network devices and “gatherers” which “gather” information.
However, the claim’s enhancing limitation necessarily requires that
these generic components operate in an unconventional manner to
achieve an improvement in computer functionality. The enhancing
limitation depends not only on the invention’s distributed architecture,
but also depends upon the network devices and gatherers—even
though these may be generic—working together in a distributed
manner.
In that regard, the claimed combination of a card comprising a first surface
and an opposite second surface with a scratch box, a web server and a
product packaging for the card work together so as to satisfy a “need [for] a
prepaid card for offering services related to personal health records.” Spec.
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Application 13/736,340
1:21—22. While the physical card is used to provide information to the web
server, as the Examiner has argued, the claimed solution (to provide for a
prepaid card for offering services related to personal health records) is
necessarily rooted in the claimed system itself, most notably by providing
a card comprising (a) a first surface, (b) a second surface opposite the
first surface, (c) a promotional code printed on the second surface, and
(d) a scratch box on the second surface and overlaying the
promotional code;[. . .] the card further comprising] an address
associated with the web server printed on the card, a user identifier
area on the first surface or the second surface of the card for
completion by a registered cardholder to specify a user identifier, an
emergency password area on the first surface or the second surface of
the card for completion by the registered cardholder to specify an
emergency password.
Claim 1. Cf. DDR Holdings, LLCv. Hotels.com, L.P., 773 F.3d 1245, 1257
(Fed. Cir. 2014) (“[T]he claimed solution is necessarily rooted in computer
technology in order to overcome a problem specifically arising in the realm
of computer networks.”)
On balance, we find the record better supports the Appellant’s
argument in that the claimed subject matter entails an unconventional
technological solution to a technological problem. For that reason, the
rejection is not sustained.
The rejection of claims 1, 6, 11—13, 16, 22, 27 and 31 under 35 U.S.C.
§ 103(a) as being unpatentable over Mullen, Lorsch, and Malone.
Independent claim 1 calls for a card with a promotional code and “a
web server configured to receive the promotional code on the card and
activate a new, prepaid user account for collecting, storing, and managing
personal health records in response to receiving the promotional code.” The
other independent claim (claim 22) includes a similar limitation.
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The Examiner takes the position that “Figure 9; paragraphs 15, 16, 79,
and 99” of Mullen discloses this. Final Act. 4. The Appellants disagree.
See App. Br. 14 (“Mullen never discloses activating a user account using a
promotional code and does not teach “a web server configured to receive the
promotional code on the card and activate a new, prepaid user account” as
recited in claim 1.”) The Examiner counters by stating that “[t]he Examiner
interprets the entering of the code online at a website to be a form of
activation, as the entering of the code allows management of the user's
payment information.” Ans. 3.
We find the Appellant has the better argument. We agree that “[t]here
is no proper basis for the Examiner to make such an interpretation and the
Examiner[ ] provides no reasoning in support of such an interpretation.”
Reply Br. 15. The fact is that Mullen does not disclose “a web server
configured to receive the promotional code on the card and activate a new,
prepaid user account,” let alone to “activate a new, prepaid user account for
collecting, storing, and managing personal health records in response to
receiving the promotional code” as claimed. Entering a code online at a
website does not necessarily involve activating a new, prepaid user account,
let alone doing so for collecting, storing, and managing personal health
records in response to receiving the promotional code. Mullen’s disclosure
of entering a code online at a website is a broad disclosure that, without
more, would not lead one of ordinary skill in the art to provide for a web
server configured to perform the function as claimed.
For the foregoing reason, the rejection is not sustained.
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Application 13/736,340
The rejection of claims 9, 10, and 28 under 35 U.S.C. § 103(a) as being
unpatentable over Mullen, Lorsch, Malone, and Kwan.
This rejection of dependent claims 9, 10 and 28, is not sustained for
the reasons discussed above in not sustaining the rejection of the
independent claims.
CONCLUSIONS
The rejection of claims 1, 6, 9—13 and 31 under 35 U.S.C. § 101 as
being directed to non-statutory subject matter is reversed.
The rejection of claims 1, 6, 11—13, 16, 22, 27 and 31 under 35 U.S.C.
§ 103(a) as being unpatentable over Mullen, Lorsch, and Malone is reversed.
The rejection of claims 9, 10, and 28 under 35 U.S.C. § 103(a) as
being unpatentable over Mullen, Lorsch, Malone, and Kwan is reversed.
DECISION
The decision of the Examiner to reject claims 1, 6, 9-13, 16, 22, 27,
28, and 31 is reversed.
REVERSED
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