Ex Parte Schoenberg

Patent Trial and Appeal Board

Oct 23, 2017

10824705 (P.T.A.B. Oct. 23, 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.
10/824,705 04/15/2004 Roy Schoenberg TZG0008 6791
93261 7590 10/25/2017
Bey & Cotropia PLLC (Trizetto Customer Number)
ATTN: Dawn-Marie Bey
213 Bayly Court
Richmond, VA 23229
EXAMINER
RAPILLO, KRISTINE K
ART UNIT PAPER NUMBER
3626
NOTIFICATION DATE DELIVERY MODE
10/25/2017 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):
dawnmarie @ beycotropia.com
bey_cotropia_docketing@cardinal-ip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ROY SCHOENBERG
Appeal 2015-0014671
Application 10/824,7052
Technology Center 3600
Before BIBHU R. MOHANTY, MICHAEL W. KIM, and
MATTHEW S. MEYERS, Administrative Patent Judges.
MEYERS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 1, 2, 4—13, 42-44, 47—52, 54, and 55. We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
1 Our decision references Appellant’s Appeal Brief (“Appeal Br.,” filed
May 21, 2014) and Reply Brief (“Reply Br.,” filed November 18, 2014), the
Examiner’s Answer (“Ans.,” mailed September 18, 2014), and Final Office
Action (“Final Act.,” mailed January 3, 2014).
2 Appellant identifies TriZetto Corporation as the real party in interest
(Appeal Br. 2).
Appeal 2015-001467
Application 10/824,705
CLAIMED INVENTION
Appellant’s claims “relate[ ] to automated data entry and, more
particularly, to automated data entry within a medical records management
system” (Spec. 12).
Claims 1, 42, and 49 are the independent claims on appeal. Claim 1,
reproduced below, with minor formatting changes and added bracketed
notations, is illustrative of the subject matter on appeal:
1. A data entry and access method executed using a
record organization system including a key processing module, a
key maintenance module and a record processing module
comprising:
[a] in a computer-based medical record including a
plurality of data fields, defining using the record processing
module one or more data fields for which desired field data is to
be acquired,
[b] receiving by the record organization system from a
patient associated with the computer-based medical record a
defined first access level for a first medical provider through
patient selection, using a key maintenance module, of one or
more data fields and associating each of the selected one or more
data fields with the first access level for the first medical
provider;
[c] generating, by the key maintenance module, a first
individual access key for the first access level;
[d] receiving the first individual access key at the key
processing module, associating the first individual access key
with the first medical service provider and storing the first
individual access key therein,
[e] automatically populating by the record processing
module at least one of the one or more data fields with desired
field data from a data source, said automatically populating
comprising:
[f] receiving, by the record processing module that
is stored to a computer-readable medium and executing on
a processor-based computer, a schedule for contacting said
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data source to prompt said data source for the desired field
data for said at least one data field;
[g] triggering, by said record processing module,
contacting said data source in possession of the desired
field data in accordance with said schedule; and
[h] receiving, by said record processing module, the
desired field data from the data source; and
[i] receiving by the record organization system from the
first medical provider, the first access key and granting access to
the first medical provider to the selected one or more data fields
associated with the first access level.
REJECTIONS
Claims 1, 2, 4—13, 42-44, 47—52, 54, and 553 are rejected under
35 U.S.C. § 101 as directed to non-statutory subject matter.4
Claims 1, 2, and 4—13 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Ross (US 7,076,436 Bl, iss. July 11, 2006), Wheeler (US
2003/0097573 Al, pub. May 22, 2003), and Puchek (US 2003/0091158 Al,
pub. May 15, 2003).
Claims 42-44, 47—52, 54, and 55 are rejected under 35 U.S.C.
§ 103(a) as unpatentable over Hacker (US 6,988,075 Bl, iss. Jan. 17, 2006)
and Wheeler.
3 The Examiner erroneously indicates that claims 1—13, 42-44, and 47—55
are presently rejected (see Ans. 2), however, as Appellant points out, claims
3 and 53 are cancelled (see Reply Br. 2). We treat this typographical error
as harmless error.
4 The Examiner entered the present ground in the Answer as a new ground
of rejection (see Ans. 2).
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ANALYSIS
Non-statutory subject matter
According to Alice step one, “[w]e must first determine whether the
claims at issue are directed to a patent-ineligible concept,” such as an
abstract idea. Alice Corp. Pty. Ltd. v. CLS Bank Inti, 134 S. Ct. 2347, 2355
(2014).
The “directed to” inquiry [] cannot simply ask whether the claims
involve a patent-ineligible concept, because essentially every
routinely patent-eligible claim involving physical products and
actions involves a law of nature and/or natural phenomenon—
after all, they take place in the physical world. See Mayo, 132 S.
Ct. at 1293 (“For all inventions at some level embody, use,
reflect, rest upon, or apply laws of nature, natural phenomena, or
abstract ideas.”) Rather, the “directed to” inquiry applies a stage-
one filter to claims, considered in light of the specification, based
on whether “their character as a whole is directed to excluded
subject matter.” Internet Patents Corp. v. Active Network, Inc.,
790 F.3d 1343, 1346 (Fed. Cir. 2015); see Genetic Techs. Ltd. v.
MerialL.L.C., 818 F.3d 1369, 1375 [] (Fed. Cir. 2016) (inquiring
into “the focus of the claimed advance over the prior art”).
Enfish, LLCv. Microsoft Corp., 822 F.3d 1327, 1335 (Fed. Cir. 2016).
“The ‘abstract idea’ step of the inquiry calls upon us to look at the ‘focus of
the claimed advance over the prior art’ to determine if the claim’s ‘character
as a whole’ is directed to excluded subject matter.” Affinity Labs of Texas,
LLCv. DIRECTV, LLC, 838 F.3d 1253, 1257 (Fed. Cir. 2016) (citingElec.
Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1353 (Fed. Cir. 2016); see
also Enfish, 822 F.3d at 1335.
In rejecting claims 1, 2, 4—13, 42-44, 47—52, 54, and 55 under
35 U.S.C. § 101, the Examiner finds that the claims, considered as a whole,
are “directed to the abstract idea of organizing human activities by allowing
a patient to determine different levels of access to medical providers of their
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patient medical record” without additional elements that transform it into a
patent-eligible application of that idea (see Ans. 2).
In response, Appellant argues that the Examiner’s rejection is
improper because the Examiner “provides absolutely no support or citation
for this determination” (Reply Br. 9 (emphasis omitted)), and further argues
that “[t]he claims clearly go well beyond the Examiner’s over-simplification
of ‘allowing a patient to determine different levels of access to medical
providers of their patient medical record’” (id.). However, we agree with the
Examiner that the claims are directed broadly to the abstract idea of
“allowing a patient to determine different levels of access to medical
providers of their patient medical record[s]” (see Ans. 2). And, to the extent
Appellant argues that the Examiner erred in adequately supporting this
determination by providing support or citation (see Reply Br. 7—9),
Appellant’s argument is unpersuasive.
There is no requirement that the Examiner must provide evidentiary
support in every case before a conclusion can be made that a claim is
directed to an abstract idea. See, e.g., para. IV “July 2015 Update: Subject
Matter Eligibility” to 2014 Interim Guidance on Subject Matter Eligibility
(2014 IEG), 79 Fed. Reg. 74618 (Dec. 16, 2014) (“The courts consider the
determination of whether a claim is eligible (which involves identifying
whether an exception such as an abstract idea is being claimed) to be a
question of law. Accordingly, courts do not rely on evidence that a claimed
concept is a judicial exception, and in most cases resolve the ultimate legal
conclusion on eligibility without making any factual findings.”) (Emphasis
added). We agree that evidence may be helpful in certain situations where,
for instance, facts are in dispute. But it is not always necessary. Based on
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the above analysis set forth by the Examiner, we are unpersuaded it is
necessary in this case.
Instead, we need only look to other decisions where similar concepts
were previously found abstract by the courts. See Amdocs (Israel) Ltd. v.
Openet Telecom, Inc., 841 F.3d 1288, 1294 (Fed. Cir. 2016) (“Instead of a
definition [for what an ‘abstract idea’ encompasses], then, the decisional
mechanism courts now apply is to examine earlier cases in which a similar
or parallel descriptive nature can be seen—what prior cases were about, and
which way they were decided.”)
To that end, as noted above, the Examiner finds the claims are
directed to “allowing a patient to determine different levels of access to
medical providers of their patient medical record[s]” (see Ans. 2). Broadly,
we agree that the Examiner is correct in articulating that the claims are
directed to an abstract idea.
According to Appellant’s Specification, the present “invention relates
to automated data entry and, more particularly, to automated data entry
within a medical records management system” (Spec. 12). And, taking
independent claim 1 as representative, the claimed subject matter is
generally directed to “[a] data entry and access method executed using a
record organization system,” and includes steps for “defining . . . data
fields ... to be acquired,” “receiving . . . from a patient... a defined first
access level for a first medical provider . . . and associating . . . data fields
with the first access level for the first medical provider,” “generating ... a
first individual access key for the first access level,” “receiving the first
individual access key . . ., associating the first individual access key with
the first medical service provider[,] and storing the first individual access
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key,” “automatically populating . . . data fields . . . from a data source,” by
“receiving ... a schedule for contacting said data source to prompt said data
source for the . . . at least one data field,” “triggering . . . contacting said data
source in possession of the desired field data in accordance with said
schedule,” and “receiving ... the desired field data from the data source,”
and then “receiving . . . from the first medical provider, the first access key
and granting access to the first medical provider to the selected . . . data
fields associated with the first access level.”
In this regard, we find that the claims are more precisely directed to
automated data entry system which allows a patient to determine different
levels of access to medical providers of their patient medical records,
although we do not discern that any gap between this finding and that of the
Examiner is of any substantive significance. This concept amounts to a
method of organizing human activity, which, like the concept of risk
hedging in Bilski, falls squarely within the realm of abstract ideas. See
Alice, 134 S. Ct. at 2356; Bilski v. Kappos, 561 U.S. 593, 611 (2010); see
also Accenture Glob. Servs., GmbHv. Guidewire Software, Inc., 728 F.3d
1336, 1339 (Fed. Cir. 2013) (claim to maintaining an “insurance transaction
database containing information related to an insurance transaction
decomposed into a plurality of levels” and “allowing an authorized user to
edit. . . and to update the information related to the insurance transaction”
held to be an abstract idea).
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 (alteration in original) (citing
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Mayo Collaborative Servs. v. Prometheus Labs., Inc., 132 S. Ct. 1289, 1294
(2012)).
Here, Appellant argues
[t]he claims clearly go well beyond the Examiner’s over­
simplification of “allowing a patient to determine different levels
of access to medical providers of their patient medical record.”
Certain claims are directed to a system having discrete
components - clearly not abstract. And the method involve a
complex series of components and steps.
(Reply Br. 9). However, Appellant’s argument does not establish that the
argued limitations add inventiveness, as opposed to the application of
conventional, well-known analytical steps. See Ultramercial, Inc. v. Hulu,
LLC, 772 F.3d 709, 716 (Fed. Cir. 2014) (“[T]he claimed sequence of steps
comprises only ‘conventional steps, specified at a high level of generality,’
which is insufficient to supply an ‘inventive concept.’”) (Citing Alice, 134 S.
Ct. at 2357) (internal citations omitted). Nor does Appellant provide
evidence that the programming related to their modules entails anything
atypical from conventional programming. In this regard, we note that
Appellant’s Specification describes that “key maintenance module” allows a
patient to generate access keys “that not only regulate who has access to
their medical records, but also regulate the level of access (i.e., which
portions of a patient’s medical record are viewable by the medical service
provider to which the key is provided)” (Spec. 17—18). The Specification
further describes that “key processing module” receives access keys
generated and transmitted by patients and stores the keys in a centralized key
repository (Spec. 120). The Specification also describes that “record
processing module” allows medical service providers to access medical
records which are stored on a medical records repository (Spec. Tflf 24, 26).
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We also note there is no indication in the record that any specialized
computer hardware or other “inventive” computer components are required.
In this regard, we note that the Specification discloses that its “system 10
typically resides on and is executed by a computer 26 that is connected to
network 28” (see Spec. 110), and “[c]omputer 26 may be a web server
running a network operating system, such as Microsoft Window 2000
Server™, Novell Netware™, or Redhat Linux™” (id.). Thus, independent
claim 1 merely employs generic computer components to perform generic
data entry and data access functions which is not enough to transform an
abstract idea into a patent-eligible invention. Also, considered as an ordered
combination, we are unclear as to how these computer components/modules
add anything that is not already present when the steps of the method are
considered separately.
In view of the foregoing, we sustain the Examiner’s rejection under
35 U.S.C. § 101 of independent claim 1, and claims 2, 4—13, 42-44, 47—52,
54, and 55, which fall with independent claim 1.
Obviousness
Independent claim 1 and dependent claims 2 and 4 13
We are persuaded by Appellant’s argument that the Examiner erred in
rejecting independent claim 1 under 35 U.S.C. § 103(a) because the
combination of Ross, Wheeler, and Puchek fails to disclose or suggest
limitation [b] of independent claim 1 which recites
receiving by the record organization system from a patient
associated with the computer-based medical record a defined
first access level for a first medical provider through patient
selection, using a key maintenance module, of one or more data
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fields and associating each of the selected one or more data fields
with the first access level for the first medical provider.
(Appeal Br. 5—7; see also Reply Br. 2-4).
The Examiner maintains that the rejection is proper, and cites Ross as
disclosing the argued limitation (see Final Act. 3 (citing Ross, col. 3,11. 35—
45; col. 6,11. 50—64; col. 12,11. 59—62; claims 21 and 32; Fig. 2); see also
Ans. 3^4 (citing Ross, col. 1,11. 17—37; col. 3,11. 35—45; col. 6,11. 50-64;
col. 12,11. 46—58; claim 11; Wheeler 1154)). However, we agree with
Appellant that there is nothing in the cited portions that discloses or suggests
the argued limitation.
Ross is directed to a system for “generat[ing] a comprehensive
document; a full and complete medical record” (Ross, col. 1,11. 45 46).
Ross discloses that its “system has security measures which limits access to
the system. Patients, family members, or others are prevented from looking
into medical records or entering information” (id. at col. 3,11. 35—38). Ross
further discloses that “[personnel using the system must clearly demonstrate
their identity using a variety of methods depending on the system
configuration” (id. at col. 6,11. 50-54). More particularly, Ross discloses
[t]he user’s identity establishes the individual “rights” to use
various functions. For example, physicians may be the only
users given rights to generate prescriptions, nurses could have
rights to implement various medical procedures, ward clerks
might need rights to order labs, but records clerks may be limited
to changing demographic information.
(Id. at col. 6,11. 54—60).
Wheeler is directed to “an improved communication system in which
electronic communications regarding accounts are digitally signed”
(Wheeler 12). Wheeler discloses that “[sjession authentication and
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transaction authentication are generally necessary before the account
authority will grant the account holder with access to the account of the
account holder or to another resource to which the account holder has rights”
(id. 1154).
After reviewing the cited portions of Ross, in view of Wheeler, we
agree with Appellant that there is nothing in the relied upon portions of Ross
or Wheeler that discloses or suggests the argued limitation (see Appeal Br.
5-10; see also Reply Br. 2-4). Although we agree with the Examiner that
Ross discloses security measures which limit different users’ access rights
(Ans. 3 (citing Ross, col. 3,11. 35—45; col. 12,11. 46—58)), the cited portions
of Ross do not disclose who limits the access. Accordingly, we cannot agree
with the Examiner that Ross discloses or suggests limiting access to one or
more data fields selected by the patient, as limitation [b] requires. Thus, we
agree with Appellant that Ross fails to disclose or suggest “the particularly
claimed steps wherein a patient defines access levels to the patient’s medical
record by selecting one or more data fields from the patient’s medical
records that the patient wishes for individual medical provider(s) to be able
to access,” as called for by limitation [b] of independent claim 1 (see Appeal
Br. 7; Reply Br. 3). The Examiner does not rely on either of Wheeler or
Puchek to cure this deficiency.
In view of the foregoing, we do not sustain the Examiner’s rejection
of independent claim 1 under 35 U.S.C. § 103(a). For the same reasons, we
also do not sustain the Examiner’s rejection of claims 2 and 4—13, which
depend therefrom.
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Independent claims 42 and 49, and dependent claims 43, 44, 47, 48, 50—52,
54, and 55
We are not persuaded by Appellant’s argument that the Examiner
erred in rejecting independent claims 42 and 49 under 35 U.S.C. § 103(a)
because the combination of Hacker and Wheeler fails to disclose or suggest
the subject matter of independent claims 42 and 49 (see Appeal Br. 10-15;
see also Reply Br. 5—7). Instead, we agree with, and adopt the Examiner’s
findings and rationale, as set forth at pages 9—11 of the Final Action, and the
Examiner’s response to Appellant’s arguments, as set forth at pages 4—5 of
the Answer. We add the following discussion for emphasis.
Hacker is directed “to a system and service for centrally storing
patients medical records electronically on a database for patient-controlled
remote access by both patients and medical providers” (Hacker, col. 1,11. 5—
8). Hacker’s system allows “[pjatients [to] control access to their record by
providing a unique access identification means to a system server connected
to the database” {id. at col. 7,11. 25—27). Hacker discloses
[w]hen patients have allowed access, medical providers
140 can view appropriate portions of the patient[’]s medical
record, and add information to the patient’s medical record where
appropriate. By limiting access to needed information, the
patient's privacy can be increased. For example, pharmacists 140
would have access to prescription information but typically
would not be given access to information concerning allergies,
heart or liver conditions, age, weight, etc. since the
checking/screening of this interaction information can be
provided by software on the server 120. When a medical
provider 140 feels they need access to blocked portions, the
medical provider 140 can ask the patient for a patient-selected
passphrase, and the patient can decide whether or not to grant
access.
{Id. at col. 8,11. 4—17). Hacker also discloses
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[p]atients can also get second opinions without the
embarrassment of asking the first physician to forward their
medical record to the second physician. In this scenario, the
patient supplied identifier the[y] can be used by the second
physician to allow access the patient’s medical record on the
database without the involvement of the first physician.
{Id. at col. 11,11. 14—18).
We also are not persuaded by Appellant’s argument that the Examiner
erred because “Hacker provides no details or description regarding the
underlying components which might enable the patient to supply the
passphrase” (Appeal Br. 13; see also Reply Br. 5—7). More particularly,
Appellant argues that the combination of Hacker and Wheeler cannot render
obvious the subject matter of independent claims 42 and 49, because
“Hacker is non-enabling both for its own disclosed concepts and most
certainly for the components implementing the functions recited in the
claims” (Appeal Br. 14). We cannot agree.
At the outset, we note that Hacker does not appear to be non-enabling
on its face, and Appellant has failed to show with any argued specificity that
it is. Furthermore, it is well settled that published subject matter is prior art
for all that it teaches in obviousness determinations—even if the reference
itself is not enabling. See In re Antor Media Corp., 689 F.3d 1282, 1292
(Fed. Cir. 2012) (citing Symbol Techs. Inc. v. Opticon Inc., 935 F.2d 1569,
1578 (Fed. Cir. 1991)). Although non-enabled references cannot anticipate
a claimed invention, they nevertheless may be considered in obviousness
determinations, as is the case here. See Symbol Techs., 935 F.2d at 1578
(“While a reference must enable someone to practice the invention in order
to anticipate under § 102(b), a non-enabling reference may quality as prior
art for the purpose of determining obviousness under § 103.”). Thus, we see
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no error in the Examiner’s reliance on Hacker as disclosing the argued
subject matter of independent claims 42 and 49 under a broadest reasonable
interpretation (cf. Spec. 17—18, 20, 24, 26).
In view of the foregoing, we sustain the Examiner’s rejection of
independent claims 42 and 49 under 35 U.S.C. § 103(a). For the same
reasons, we also sustain the Examiner’s rejection of claims 43, 44, 47, 48,
50-52, 54, and 55, which depend therefrom.
DECISION
The Examiner’s rejection of claims 1, 2, 4—13, 42-44, 47—52, 54, and
55 under 35 U.S.C. § 101 is sustained.
The Examiner’s rejection of claims 1, 2, and 4—13 under 35 U.S.C.
§ 103(a) is not sustained.
The Examiner’s rejection of claims 42-44, 47—52, 54, and 55 under
35 U.S.C. § 103(a) 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
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