By Cheryl Beise, J.D.
The Patent Trial and Appeal Board did not err in affirming a patent examiner’s rejection of all pending claims of a patent application claiming methods for transferring patient health information and medical records on the ground that the claims were directed to the abstract idea of billing and the fundamental economic practice of calculating a patient’s bill, the U.S. Court of Appeals for the Federal Circuit has ruled. In addition, the claims merely recited use of generic computer structures for storing and transferring information (In re Salwan, March 13, 2017, per curiam).
Dr. Angadrib Singh Salwan was the sole inventor of Patent Application No. 12/587,101 (“the ’101 application”), which claims methods of transferring patient health information, including electronic medical records (“EMR”), to a patient network that may be accessed by healthcare providers and products suppliers, physicians, patients, and government agencies. In January 2015, the patent examiner issued a Final Rejection of all pending claims (claims 1, 7, 8, 10, 13, 18, 25, 28, 29, 32–34, 41, and 43–71) for lack of patentable subject matter, for lack of written description, and for obviousness. Four claims were also rejected for indefiniteness. The Board affirmed the examiner’s rejections.
The Federal Circuit agreed with the Board that all pending claims were directed to patent-ineligible subject matter under 35 U.S.C. §101. The court analyzed the claims under the Supreme Court’s two-step Alice test for determining subject matter eligibility under Section 101. Alice Corp. Party v. CLS Bank International, 134 S. Ct. 2347 (2014).
Abstract idea. Under the first step of the Alice test, a court must determine if the claims are directed to a patent-ineligible concept: laws of nature, natural phenomena, or abstract ideas. The Federal Circuit determined that the claims at issue were directed to the abstract idea of billing insurance companies and organizing patient health information. The court observed that representative claim 1 of the ’101 application recites storing, communicating, transferring, and reporting patient health information in a network. Among these steps, claim 1 recites using billing software to calculate a patient’s bill based on EMR and insurance information.
Salwan argued that the claims were not directed to an abstract idea because the calculation of a patient’s bill and the transfer of patient EMR are not theoretical concepts, but practical applications for the medical billing industry. However, similar practical concepts have been held to be abstract as fundamental economic and conventional business practices, the court noted. The invention at hand “describes little more than the automation of a ‘method of organizing human activity’ with respect to medical information,” the court said.
Transformative application. Under the second step of Alice, a court must determine whether the element of the claims contains an “inventive concept” sufficient to “transform” the claimed abstract idea into a patent-eligible application.” The court agreed with the Board that the claimed method steps—reciting use of a generic “network,” “computer program,” “central server,” “device,” and “server for processing and transferring”— were directed to generic computer structures for storing and transferring information. Considering the claim elements individually, and as an ordered combination, the claims “merely implement long-known practices related to insurance billing and organizing patient health information on a generic computer,” the court said.
The court accordingly affirmed the Board’s decision under Section 101 and did not reach Salwan’s arguments as to the other grounds for rejection.
The case is No. 2016-2079.
Attorneys: Angadrib Singh Salwan, pro se. Nathan K. Kelly, Office of the Solicitor, USPTO.
MainStory: TopStory Patent FedCirNews
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