Ex Parte Dettinger et al

Patent Trial and Appeal Board

Nov 19, 2012

11241704 (P.T.A.B. Nov. 19, 2012)

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.
11/241,704 09/30/2005 Richard D. Dettinger ROC920050203US1 5524
46797 7590 11/20/2012
IBM CORPORATION, INTELLECTUAL PROPERTY LAW
DEPT 917, BLDG. 006-1
3605 HIGHWAY 52 NORTH
ROCHESTER, MN 55901-7829
EXAMINER
HOLCOMB, MARK
ART UNIT PAPER NUMBER
3686
MAIL DATE DELIVERY MODE
11/20/2012 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 RICHARD D. DETTINGER, DANIEL P. KOLZ, and
RICHARD J. STEVENS
____________________

Appeal 2011-004881
Application 11/241,704
Technology Center 3600
____________________

Before: STEPHEN C. SIU, MICHAEL W. KIM, and THOMAS L.
GIANNETTI, Administrative Patent Judges.

KIM, Administrative Patent Judge.

DECISION ON APPEAL

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STATEMENT OF CASE
Appellants appeal under 35 U.S.C. § 134 from a rejection of claims 1-
271. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
The claims are directed to methods for managing electronic health
records stored by a healthcare records data bank that include providing an
individual with portable transferable access devices (Spec., para. [0002]).
Claim 1, reproduced below, is illustrative of the claimed subject matter:
1. A computer-implemented method of controlling
access to a plurality of electronic medical records related to a
plurality of individuals, comprising:
configuring a network-accessible storage repository to
store the plurality of electronic medical records, wherein the
electronic records for a given individual are associated with an
electronic health records account (EHR account);
providing the individual with at least one portable, EHR
account access device, wherein the access device includes a
predefined authorization key that authorizes an entity presented
with the access device with access to the EHR account;
receiving, over a data-communications network, a
request from a requesting entity, wherein the request includes at
least one transaction to be processed, the predefined
authorization key from the access device given to the requesting
entity by the individual, and a predefined requestor
identification identifying the requesting entity;
authorizing the request based on both the predefined
authorization key and the predefined requestor identification
key; and
performing the at least one transaction included in the
request by use of one or more computer processors for the EHR
account.

1 Our decision will make reference to the Appellants’ Appeal Brief (“App.
Br.,” filed August 16, 2010) and Reply Brief (“Reply Br.,” filed December
20, 2010), and the Examiner’s Answer (“Ans.,” mailed October 27, 2010).
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Claims 13-24 are rejected under 35 U.S.C. § 101 because the claimed
invention is directed to non-statutory subject matter.
Claims 1-3, 5-15, and 17-27 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Hacker (US 6,988,075 B1, iss. Jan. 17, 2006) and
Dutta (US 2003/0037054 A1, pub. Feb. 20, 2003).
Claims 4 and 16 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Hacker, Dutta, and Official Notice.

FINDINGS OF FACT
Specification
FF1. The Specification discloses that embodiments of the invention
may be implemented (including the methods described herein) as computer
software applications and can be contained on a variety of computer-
readable media. Illustrative computer-readable media include, but are not
limited to: (i) information permanently stored on non-writable storage media
(e.g., read-only memory devices within a computer such as CD-ROM disks
readable by a CD-ROM drive); (ii) alterable information stored on writable
storage media (e.g., floppy disks within a diskette drive or hard-disk drive);
or (iii) information conveyed to a computer by a communications medium,
such as through a computer or telephone network, including wireless
communications. The latter embodiment specifically includes information·
across the Internet and other data communications networks. Such
computer-readable media, when carrying computer-readable instructions that
direct the functions of the present invention, represent embodiments of the
present invention (para. [0036]).

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ANALYSIS
Statutory Subject Matter
We are not persuaded the Examiner erred in determining that claims
13-24 fail to recite statutory subject matter (App. Br. 11). Claims 13-24
recite a computer readable medium. The Specification discloses that the
computer readable medium may include wireless communications (FF1).
Wireless communications involve a signal that is not tangible, and thus
covers non-statutory subject matter. See In re Nuijten, 500 F.3d 1346, 1356-
57 (Fed. Cir. 2007). We decline to address arguments concerning
Appellants’ proposed amendment to modify claim 13 to recite “computer-
readable storage medium,” as the amendment is unentered, and thus any
such analysis would be speculative.

Obviousness Rejection
Appellants argue claims 1-3, 5-15, and 17-27 as a group, and
primarily set forth arguments concerning the rejection of independent claim
1 (App. Br. 12-15; Reply Br. 2-4). Accordingly, we choose independent
claim 1 as representative of claims 1-3, 5-15, and 17-27. See 37 C.F.R. §
41.37(c)(1)(vii). We are not persuaded the Examiner erred in asserting that
a combination of Hacker and Dutta teaches or suggests “receiving, over a
data communications network, a request from a requesting entity, wherein
the request includes at least one transaction to be processed, the predefined
authorization key from the access device given to the requesting entity by
the individual, and a predefined requestor identification identifying the
requesting entity,” as recited in independent claim 1. Appellants assert that
Dutta does not disclose transferring the predefined authorization key from
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the access device to the requesting entity (App. Br. 12-15; Reply Br. 2-4).
Regardless of whether Dutta discloses this, however, the Examiner
alternatively asserts that
Hacker also discloses “the predefined authorization key from
the access device given to the requesting entity by the
individual” in Col. 7, wherein the card or bracelet carried by the
patient is scanned at the facility in a request for access. It is the
Examiner’s position that this scanning of a card or bracelet
would be a granting of the authorization key as well as the
access device to the requesting entity by the individual, as the
function of scanning would comprise control and possession[.]
(Ans. 19, emphasis original). Appellants did not address this alternative
position based on Hacker set forth by the Examiner in the Reply Brief.
Accordingly, as Appellants have not met the burden of rebutting the
Examiner’s alternative position concerning the aforementioned aspect of
independent claim 1, we sustain this rejection on those alternative grounds.
See In re Keller, 642 F.2d 413, 425 (CCPA 1981) (“[o]nce a prima facie
case of obviousness [is] established ..., the burden shift[s] to appellant to
rebut it”).

DECISION
The Examiner’s rejections of claims 1-27 is 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). See 37 C.F.R.
§ 1.136(a)(1)(iv).

AFFIRMED

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