Ex Parte Salwan

Patent Trial and Appeal Board

Apr 28, 2016

12587101 (P.T.A.B. Apr. 28, 2016)

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.
12/587,101 10/02/2009 Angadbir Singh Salwan SALW0101 PUSP1 9016
7590 04/29/2016
Angadbir Singh Salwan
10701 Balantre Lane
Potomac, MD 20854
EXAMINER
LONG, FONYA M
ART UNIT PAPER NUMBER
3626
MAIL DATE DELIVERY MODE
04/29/2016 PAPER
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.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte ANGADBIR SINGH SALWAN
____________

Appeal 2015-007758
Application 12/587,101
Technology Center 3600
____________

Before BIBHU R. MOHANTY, JAMES A. WORTH, and
TARA L. HUTCHINGS Administrative Patent Judges.

MOHANTY, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE

The Appellant seeks our review under 35 U.S.C. § 134 of the Final
rejection of claims 1, 7, 8, 10, 13, 18, 25, 28, 29, 32–34, 41, and 43–71
which are all the claims pending in the application.1 We have jurisdiction
under 35 U.S.C. § 6(b).

1 The Final Rejection was mailed on Jan. 7, 2015 (hereinafter “Final”). The
Appeal Brief was filed on Apr. 3, 2015 (hereinafter “App. Br.”). The
Examiner’s Answer was mailed on June 24, 2015 (hereinafter “Ans.”). The
Reply Brief was filed on Aug. 22, 2015 (hereinafter “Reply Br.”).
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SUMMARY OF THE DECISION
We AFFIRM.

THE INVENTION
The Appellant’s claimed invention is directed to the electronic
communication and transfer of patient health information including clinical
data (Spec. 12). Claim 1, reproduced below, is representative of the subject
matter on appeal.

1. A method for transferring patient health information among
healthcare user groups or patients via a network, the method
comprising:

providing at least one central data storage configured to receive and
store patient health data from one or more private data storages of
healthcare user groups, at least one central computer
program embodied in at least one computer readable medium or
embodied in at least one central server for processing and transferring
patient health information stored in the one or more central data
storages, and at least one device for providing user authorization to
access patient data stored in the one or more central data storages, and
configuring the central computer program or
the central server for:

communicating through at least one computer program, which
includes EMR and billing software, embodied in a computer
readable medium with at least one private data storage storing
electronic medical record (EMR) information originated,
entered and controlled by at least one or more first healthcare
service providers affiliated with the one or more healthcare user
groups, including at least accounts information confidential for
the first healthcare user groups, the confidential information
includes at least accounts information of one or more insurance
companies, which is at least used by the billing software to
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calculate patient portion of the bill, and clinical data generated
by one or more service providers;

receiving from the at least one private data storage the EMR
information for storing, processing and transmission to at least
one of the patients, or one or more second healthcare user
groups, wherein the information confidential for the first
healthcare user groups including at least the accounts
information of one or more insurance companies is not received
and stored at the central data storage;

storing the received EMR information generated by the one or
more service providers including at least one of health
problems, medications, diagnosis, prescriptions, notes written
by the service Providers, diagnostic test results or patient
accounts data in the at least one central data storage;

selectively retrieving the stored EMR information, generating
one or more healthcare reports including one or more of health
problem list, medication list, diagnoses report, prescription,
diagnostic test result report, patient billing report; and

transmitting one or more healthcare reports to at least the
second authorized healthcare user groups or the patient for
reviewing.

(Claim 1 above was reproduced from the Appeal Brief filed Apr. 3, 2015
with the bolding and underlining removed, and stricken-through-text
removed to conform with Appeal Practice).

THE REJECTIONS
The Examiner relies upon the following as evidence in support of the
rejections:
Giannini US 5,915,241 June 22, 1999
Schurenberg US 2002/0007284 A1 Jan. 17, 2002
Henley US 2002/0065758 A1 May 30, 2002
Davis US 2003/0028399 A1 Feb. 6, 2003
Jay US 2003/0050802 A1 Mar. 13, 2003
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McNerney US 2003/0088441 A1 May 8, 2003
Shelton US 2005/0165624 A1 July 28, 2005
Malhotra US 2005/0251417 A1 Nov. 10, 2005
Hacker US 6,988,075 B1 Jan. 17, 2006
Dugan US 2006/0041450 A1 Feb. 23, 2006

The following rejections are before us for review:
1. Claims 1, 7, 8, 10, 13, 18, 25, 28, 29, 32–34, 41, and 43–71 are
rejected under 35 U.S.C. § 112, first paragraph, as failing to comply with the
written description requirement for failure to show possession of the
invention.
2. Claims 51, 52, 69, and 70 are rejected under 35 U.S.C. § 112,
second paragraph, as being indefinite.
3. Claims 1, 7, 8, 10, 13, 18, 25, 28, 29, 32–34, 41, and 43–71 are
rejected under 35 U.S.C. § 101 as beings directed to non-statutory subject
matter.
4. Claims 1, 8, 10, 13, 28, 29, 34, 41, 50, 53, and 71 are rejected
under 35 U.S.C. § 103(a) as being unpatentable over Hacker and Malhotra.
5. Claims 7, 28, 29, 34, 47–49, and 61 are rejected under 35
U.S.C. § 103(a) as being unpatentable over Hacker, Malhotra, and Davis.
6. Claims 18 and 58 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Hacker, Malhotra, and Giannini.
7. Claim 25 is rejected under 35 U.S.C. § 103(a) as being
unpatentable over Hacker, Malhotra, and McNerney.
8. Claim 32 is rejected under 35 U.S.C. § 103(a) as being
unpatentable over Hacker, Malhotra, and Shelton.
9. Claims 33 and 62 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Hacker, Malhotra, and Schurenberg.
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10. Claims 43, 44, 59, 63, and 64 are rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Hacker, Malhotra, and Jay.
11. Claims 45, 46, 51, 52, 54, 55, and 60 are rejected under 35
U.S.C. § 103(a) as being unpatentable over Hacker, Malhotra and official
notice.
12. Claims 56 and 57 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Hacker, Malhotra, official notice, and Dugan.
13. Claims 65 and 67 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Hacker, Malhotra, Giannini, and Jay.
14. Claims 69 and 70 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Hacker, Malhotra, and Henley.

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 U.S.C. § 112, first paragraph
The Examiner has first rejected claim 1 under 35 U.S.C. § 112, first
paragraph for failure to show possession of the claim limitation that
“wherein the information confidential for the first healthcare user groups
including at least the accounts information of one or more insurance
companies is not received and stored at the central data storage” (Ans. 3).

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).
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In contrast, the Appellant has argued that the cited claim limitation is
shown in Figures 1, 2, 3, and 4; and paragraphs 41, 42, 43, 164, and 171
(Reply Brief 14–17).3
We agree with the Examiner. We have reviewed the Reply Brief’s
presentation of the content of paragraphs 41, 42, 43, 164, and 171 cited in
the Reply Brief, and these portions fail to specifically disclose that the cited
account information is not received and stored at the central data storage.
For example, at paragraph 164 it is stated that the health information specific
to the medical practice is stored in the MIOS with the medical office, but
this storing does not specifically prevent the health information from being
stored in the central storage area as well. Also, paragraph 164 states that
upon request, information can be transferred to an outside member, and the
information could include at least some confidential information. A review
of Figures 1, 2, 3, and 4 fails to disclose this as well.
The Examiner has also determined that the Specification fails to
provide support for the claim limitation for “at least one private data
storage storing electronic medical record (EMR) information originated,
entered and controlled by at least one or more first healthcare service
providers affiliated with the one or more healthcare user groups” (Ans. 3).
In making this assertion the Examiner has cited to the Specification at page
10 as describing that a patient’s Personal Health records are “created and

3 The Appellant has presented arguments for the first time in the Reply Brief
that were not made in the Appeal Brief, filed Apr. 3, 2015, but for the sake
of efficiency we will consider them in this Decision. However, Arguments
which Appellant could have made but chose not to make in these Briefs have
not been considered and are deemed to be waived. See 37 C.F.R.
§ 41.37(c)(1)(iv).

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controlled by the individual [patient] or family” but “accessible” to health
care providers (id.).
In contrast, the Appellant has stated that support for this claim
limitation is found in paragraph 164 and that the reference to page 10 made
by the Examiner is in the “Prior Art” Section (Reply Br. 18).
We agree with the Examiner. Here, the citation by the Examiner to
the Specification at page 10 is listed in the “Prior Art” section. However,
the rejection has been maintained and the citation to page 10 in rejection was
made only as an additional way to bolster it, not the basis for the
fundamental rejection itself. The Appellant is still required to show specific
support for the cited claim term in the Specification. Here, the citation by
the Appellant to paragraph 164 does state that patient health care
information is stored at the medical office but this does not specifically show
that is controlled by the first health office. For this reason we agree with the
Examiner.
As we agree with the Examiner, this rejection of claim 1 is sustained.
The Appellant has not provided specific arguments with regard to claims 7,
8, 10, 13, 18, 25, 28, 29, 32, 34, 41, 43–68, and 71and these rejections are
sustained as well.
The Examiner has also determined that in claims 69 and 70 that the
claim limitation for “computing the quality of services provided by the one
or more first healthcare providers to the patients and provide feedback by
monitoring the quality of services to the one or more healthcare user groups”
is not supported (Ans. 4).
In contrast, the Appellant has stated that the Q-rating itself helps
monitor and control the services (Reply Br. 20).
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We agree with the Examiner. The cited claim limitation requires
computing the quality of services by the healthcare providers and providing
feedback by monitoring the quality of services. While the citation to
paragraph 305 made in the Reply Brief at page 20 does show the use a Q-
rating being calculated, it is not specifically disclosed that this information is
used to provide feedback. For instance, the Q-rating could be an internal
review measurement that is not provided to any groups as feedback. For this
reason, this rejection of claims 69 and 70 is sustained.

Rejection under 35 U.S.C. § 112, second paragraph
The Examiner has rejected claims 51 and 52 as being indefinite for
failing to provide antecedent basis for the term “the patient appointment
request” (Ans. 5). The Appellant argues that this rejection is improper and
that the Specification supports such language (Reply Br. 21).
We agree with the Examiner. Here, the respective independent claims
1 and 41 each fail to provide a proper provide antecedent basis for the term
“the patient appointment request” and it is unclear where such an
appointment request is coming from (Ans. 5). For this reason, this rejection
is sustained.
The Examiner has also rejected claims 69 and 70 as being indefinite
for failing to specify how the feedback is provided (Ans. 5, 6). The
Examiner states that it is unclear if the feedback is based on the private
computing of the quality of services when the Specification states that the
computation is based on feedback itself (Ans. 5, 6).
In contrast, the Appellant has determined that the rejection is
improper and that the limitation is not indefinite (Reply Br. 20).
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We agree with the Examiner. Here, it is unclear how the feedback is
provided and which “feedback” is being referred to in the cited rejection.
For this reason, this rejection of record is sustained.

Rejection under 35 U.S.C. § 101
The Examiner has rejected claim 1 under 35 U.S.C. 101 as being
drawn to ineligible subject matter (Ans. 6, 7). The Examiner has determined
that the claim is directed to the abstract idea of a fundamental economic
practice of calculating a patient’s bill and that the additional elements do not
add significantly more as they are drawn to the generic computer structures
and conventional activities known in the industry (Ans. 6, 7).
In contrast the Appellant has argued that this rejection is improper
(Reply Br. 22, 24).
We agree with the Examiner. 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: “laws of nature,
natural phenomena, and abstract ideas” are not patentable. See, e.g., Alice
Corp. Pty Ltd. v. CLS Bank Int’l, 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
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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, the claim is directed to the abstract idea of billing and also to a
fundamental economic practice of calculating a patient’s bill. We next
consider whether additional elements 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
over the Internet, using generic computer components. We conclude that it
does not. The recited method steps of claim 1 fail to transform the nature of
the claim as they are directed to generic computer structures for storing and
transferring information. For this reason, this rejection of claim 1 is
sustained. The Appellant has provided the same arguments for the
remaining claims, and the rejection of these claims is sustained as well.

Rejection under 35 U.S.C. § 103(a)
The Appellant argues that the rejection of claim 1 under 35 U.S.C.
§ 103(a) is improper (Reply Br. 24–36). The Appellant has provided
arguments that: the combination is inoperable, differences exist between the
combination and invention, that the Examiner has made false findings, that
the combination lacks motivation, and that impermissible hindsight has been
used (Reply Br. 29–37).
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In contrast, the Examiner has determined that the rejection of claim 1
is proper (Ans. 7–10, 31, and 32).
We agree with the Examiner. We have reviewed the rejection of
record in the Answer at pages 7–10, and agree with, and adopt, the facts and
reasons articulated for the combination to be determined to have been
obvious. The Appellant has argued in the Reply Brief at pages 29 and 30
that the combination would be inoperable, but we disagree. Here, it is not
the entire teachings of Malhotra combined with Hacker, but only those used
in the rejection of record. The Appellant also argues in the Reply Brief at
pages 30–32 that the cited prior art has differences with the current invention
but attacks the references individually rather than look at the combination of
record used in the rejection. The Appellant’s arguments in this regard attack
references individually, when the rejections are over a combination of
references. See In re Keller, 642 F.2d 413, 426 (CCPA 1981) (“[O]ne
cannot show non-obviousness by attacking references individually where, as
here, the rejections are based on combinations of references.”). The
Appellant argues in the Reply Brief at pages 32 and 33 that the Examiner
has made false statements. We have reviewed the findings of facts used in
showing the required claimed prior art elements in the prior art and agree
with and adopt these facts. The Appellant has argued in the Reply Brief at
pages 34–36 that the rejection of record lacks motivation, uses
impermissible hindsight, and fails to present a prima facie case. As stated
above, we have reviewed the rejection of record in the Answer at pages 7–10
and agree with and adopt the reasons articulated for the combination to be
determined to have been obvious. For these above reasons this rejection of
claim 1 is sustained.
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The Appellant has also argued in the Reply Brief at page 37 that the
rejection of claim 71 is improper because the claim does not require a central
server, program, or data storage and instead requires a first and second data
storage (Reply Br. 37). Here, claim 71 does not exclude the use of a central
server and the rejection accounts for private data storages (first and second
data storage) in the rejection at page 7. We have reviewed the rejection of
claim 71, and agree with and adopt the reasons articulated for the
combination to be determined to have been obvious as well.
The Appellant has provided the same arguments for the remaining
claims 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 the claims as listed in the Rejections section above.

DECISION
The Examiner’s rejection of claims 1, 7, 8, 10, 13, 18, 25, 28, 29, 32–
34, 41 and 43–71 is sustained.
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