Ex Parte Lorsch

Patent Trial and Appeal Board

Mar 20, 2017

14323003 (P.T.A.B. Mar. 20, 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.
14/323,003 07/03/2014 Robert H. Lorsch MMR - P024 8688
133690 7590 03/22/2017
Goodhue, Coleman & Owens, P.C.
650 S. Prairie View Dr.
Suite 125, PMB #209
West Des Moines, IA 50266
EXAMINER
CHNG, JOY POH AI
ART UNIT PAPER NUMBER
3686
NOTIFICATION DATE DELIVERY MODE
03/22/2017 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 2017-003645
Application 14/323,0031
Technology Center 3600
Before ANTON W. FETTING, BRUCE T. WIEDER, and
KENNETH G. SCHOPFER, Administrative Patent Judges.
WIEDER, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal under 35U.S.C. § 134 from the final
rejection of claims 1—13. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
CLAIMED SUBJECT MATTER
Appellant’s claimed invention “relates to electronic health records.”
(Spec. 1,1. 11.)
Claims 1,7, 10, and 11 are the independent claims on appeal. Claim 1
is illustrative. It recites (emphasis and some paragraphing added):
1 According to Appellant, “[t]he real party in interest is
MYMEDICALRECORDS, INC.” (Appeal Br. 1.)
Appeal 2017-003645
Application 14/323,003
1. A method for collecting self-reported data from a patient
for use in a clinical trial, the method comprising:
providing a web site stored on a web server, the web site enabling
the patient to store, organize, and access health records
associated with the patient on the web site, the web site further
configured to collect the health records by:
(a) electronically receiving self-reports from the patient
and creating electronic health records from the self-reports,
(b) electronically receiving patient health data from health
monitoring equipment for acquiring data indicative of a health
issue of the patient and creating electronic health records from
the data, and
(c) electronically receiving health records from a health
care provider of the patient;
collecting the health records at the web site, the collecting the
health records comprising
(a) electronically receiving the self-reports from the
patient and creating the electronic health records from the self-
reports,
(b) electronically receiving the patient health data from
the health monitoring equipment indicative of a health issue of
the patient and creating the electronic health records from the
patient health data, and
(c) electronically receiving the health records from the
health care provider of the patient;
storing the health records on a computer readable storage
medium associated with the web site; and
sharing selected health records associated with the patient
with a clinical trial sponsor through a clinical trial portal, wherein
the selected health records are specified by the patient through
the web site.
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Application 14/323,003
REJECTIONS
Claims 1—13 are rejected under 35 U.S.C. § 101 as directed to non-
statutory subject matter.
Claims 1—4, 6, and 11—13 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Thangaraj (US 2003/0208378 Al, pub. Nov. 6, 2003),
Toto (US 2004/0078216 Al, pub. Apr. 22, 2004), and Hufford (US
2002/0143563 Al, pub. Oct. 3, 2002).
Claim 5 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Thangaraj, Toto, Hufford, and Califano (US 2003/0033168 Al, pub.
Feb. 13, 2003).
Claim 7 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Thangaraj, Toto, Hufford, and Khanuja (US 2004/0102683 Al, pub.
May 27, 2004).
Claims 8 and 9 are rejected under 35 U.S.C. § 103(a) as unpatentable
over Thangaraj, Toto, Hufford, Khanuja, Carol Cronin, Personal Health
Records: An Overview of What Is Available To The Public (April 2006),
Califano (US 2003/0033168 Al, pub. Feb. 13, 2003), Mok
(US 2003/0140044 Al, pub. July 24, 2003), and John P. Griffin, The
Textbook of Pharmaceutical Medicine (6th ed. 2009).
Claim 10 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Thangaraj, Mok, Toto, Hufford, and Miller (US 2004/0172447 Al, pub.
Sept. 2, 2004).
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Application 14/323,003
ANALYSIS
The f101 rejection
The Examiner determines that claims 1—13 “are directed to the
abstract idea of collecting data.” (Final Action 2.) More specifically, the
Examiner determines that “claim 1 is directed to a series of functions that
defines an abstract idea similar to using categories to organize, store and
transmit information, which are concepts that have been previously found by
the courts to be abstract.” (Answer 3.) The Examiner also determines that
[t]he 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/or (ii) recitation of generic computer structure that serves to
perform generic computer functions 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.
(Final Action 2.)
Appellant disagrees and argues that “the claims are directed towards
significantly more than the basic concept of ‘data collecting. (Appeal
Br. 12.) Appellant further argues that “the components, elements, features,
and functionality claimed take the claim past the point of merely performing
the abstract idea of data collection on a general computer.” Id.
Prior to this rejection being made, the Supreme Court decided Alice
Corp. Pty Ltd. v. CLSBankInt’l, 134 S. Ct. 2347 (2014). Alice applies a
two-part framework, earlier set out in Mayo Collaborative Servs. v.
Prometheus Labs., Inc., 132 S. Ct. 1289 (2012), “for distinguishing patents
that claim laws of nature, natural phenomena, and abstract ideas from those
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Application 14/323,003
that claim patent-eligible applications of those concepts.” Alice, 134 S. Ct.
at 2355.
Under the two-part framework, it must first be determined if “the
claims at issue are directed to one of those patent-ineligible concepts.” Id.
If the claims are determined to be directed to a patent-ineligible concept,
then the second part of the framework is applied to determine “‘[w]hat else
is there in the claims before us?’ To answer that question, we consider the
elements of each 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.” Id.
The focus of claims 1—13 is on collecting, storing and sharing data.
(See Appeal Br. 23—27.) In Electric Power Grp., LLC v. Alstom S.A., “[t]he
focus of the asserted claims ... is on collecting information, analyzing it,
and displaying certain results of the collection and analysis.” Electric Power
Grp., LLCv. Alstom S.A., 830 F.3d 1350, 1353 (Fed. Cir. 2016). “[W]e
have treated collecting information, including when limited to particular
content (which does not change its character as information), as within the
realm of abstract ideas.” Id. The additional steps of storing and
sharing/displaying certain results does not change our determination that the
claims here are directed to an abstract idea for the same reasons as those
provided in Electric Power. See id.
With regard to the second part of the Alice framework, “merely
selecting information, by content or source, for collection, analysis, and
display [or sharing] does nothing significant to differentiate a process from
ordinary mental processes, whose implicit exclusion from §101 undergirds
the information-based category of abstract ideas.” Id. at 1355. Moreover,
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Application 14/323,003
the claims “do not include any requirement for performing the claimed
functions ... by use of anything but entirely conventional, generic
technology. The claims therefore do not state an arguably inventive
concept.” Id. at 1356. In short, each step does no more than require a
generic computer to perform generic computer functions. And considered as
an ordered combination, the computer components of Appellant’s method
add nothing that is not already present when the steps are considered
separately.
Therefore, we are not persuaded that the Examiner erred in rejecting
claims 1—13 under § 101.
The f103 rejections
With regard to the § 103 rejection of claim 1, the Examiner finds that
Hufford discloses:
electronically receiving patient health data from health
monitoring equipment for acquiring data indicative of a health
issue of the patient and creating electronic health records from
the data (where the recitation “for acquiring data indicative of a
health issue of the patient” is considered intended use, and
therefore has little patentable weight) (see at least Fig. 2;
Paragraph 12; Paragraph 13, Paragraph 14, the invention
provides a compliance monitoring device for use in clinical trials,
having a portable electronic device capable of displaying
information and receiving and storing input from a user;
Paragraph 49, the electronic device may be configured to
synchronize with any portable physiological measurement
device to gather data from, or communicate with, the
physiological device; Paragraph 50, portable electronic devices
can optionally track all aspects of their use, resulting in a
comprehensive record of subject compliance with the research
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Application 14/323,003
protocol; Paragraph 81, automatically records desired data for
incorporation in the clinical trial data or compliance data).
(Final Action 5—6.)
Appellant disagrees and argues that
Hufford does not teach or suggest “electronically receiving the
patient health data from the health monitoring equipment
indicative of a health issue of the patient and creating the
electronic health records from the patient health data”. The
Hufford compliance monitoring device has a fundamentally
different function - to query and collect data input from a patient,
and to emit an alarm to remind the patient to enter data.
(Appeal Br. 17—18.) Appellant further argues that “[synchronization would
appear to be used to collect data to assist in determining compliance as
opposed to health data indicative of a ehalth [sic] issue of patient. Moroever
[sic], there is no teaching of Hufford of creating the electronic health record
from the patient health data.” (Reply Br. 19.)
Hufford discloses that
the present invention also allows subjects to administer self-
reports of trial data including subjective reports, such as pain
reduction, objective symptom reporting, such as bowel
movement or asthmatic episode and cognitive measures, such as
arithmetic tasks or reaction time. The electronic device may also
optionally be configured to synchronize with any portable
physiological measurement device to gather data from, or
communicate with, the physiological device.
(Hufford 149.) Hufford also discloses that “[t]he portable electronic device
or a computer preferably automatically records desired data for
incorporation in the clinical trial data or compliance data.” {Id. 181.)
In view of these disclosures in Hufford, we agree with the Examiner
that Hufford discloses electronically collecting physiological data, i.e., data
related to the patient’s health. {See Final Action 17; see also Hufford 149.)
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Even if the data is collected to assist in determining compliance with a trial
protocol as argued by Appellant (Reply Br. 19), this does not persuade us
that the Examiner erred in finding that Hufford discloses electronically
collecting such data. Hufford also discloses automatically recording the data
“for incorporation in the clinical trial data or compliance data.” (Hufford
181.) Appellant does not persuasively argue that the health data
automatically recorded does not include the electronically collected
physiological data.
Therefore, we are not persuaded that the Examiner erred in rejecting
claim 1. Independent claims 7, 10, and 11 contain similar language and
Appellant makes similar arguments. (See Appeal Br. 16—21.) Therefore, for
similar reasons, we are also not persuaded that the Examiner erred in
rejecting claims 7, 10, and 11. Separate arguments are not presented for
dependent claims 2—6, 8, 9, 12, and 13. (See id. at 18, 19.) Therefore,
dependent claims 2—6, 8, 9, 12, and 13 fall with their respective independent
claims. See 37 C.F.R. § 41.37(c)(l)(iv).
DECISION
The Examiner’s rejection of claims 1—13 under 35 U.S.C. § 101 is
affirmed.
The Examiner’s rejections of claims 1—13 under 35 U.S.C. § 103(a)
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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