A counterpoint:

And for every successful appellant, there are 10, 20 or more applicants who sadly accede to final rejections and abandon worthy applications. This is a not a good outcome from a patent system that is intended to promote the progress of technology by issuing patents for meritorious inventions.

Well that’s putting the conclusory cart before the horse, isn’t it?

Typical of such cases, the examiner restated the claimed method even more generally as “collecting, storing, and organizing data.” This is a formula for finding claims to be abstract.

Alice Step One: How unfair the examiner is to ask what the invention is directed to under the first step of the Alice procedure. And how ridiculous to conclude the invention is directed to collecting, storing and organizing data, when the second sentence of the specification states “The present invention is directed to a system and method for electronic record-keeping, organizing, and managing.” If an examiner goes around applying a formula of using the words of the specification in an effort to reject the invention, pretty soon there will be rejections all over the place.

The examiner and the PTAB found IMO’s novel use of pointers and directed graphs, taken out of context, to be merely routine and conventional, without citing any evidence, and they shifted the burden to IMO to prove the contrary.

Alice Step Two: So the specification must have clearly provided a technical teaching as to how to create pointers and directed graphs? Because if one is relying upon previous skill in the art, it can only be that the use is routine and conventional. The only thing that could be unconventional would be a limitation on the TYPE of data it is applied to (medical records data), which does not render something non-abstract per Electric Power Group. But linking data is linking data, and either it was not done before (in which case the specification must provide an enabling teaching) or it was conventionally done.

One would assume that references were cited in the 102/103 prior to them being overcome that probably touched on the issue, but even if not, the specification is evidence in the case. Fairly enough, however, the Berkheimer memo recognizes that this situation could merely be a failure of enablement rather than an abstract idea.

In the course of its work, IMO invented a method of creating and maintaining a “longitudinal” (over the course of several visits) electronic medical record (LEMR) with software that runs on a general purpose (albeit high powered) computer.

So…is the argument that its unconventional for someone to see a doctor more than once? Or is it that it’s unconventional for a doctor to document something in a record beyond the first recording? Or is it that a technological hurdle exists in translating note taking from the analog realm to the computer realm (a la DDR Holdings?) Or that it is unconventional to reference data longitudinally (whither calendars?)? Or is it that it’s unconventional for a computer to link two sets of data? Even a lay person can say all of those are factually untrue.

It appears, in reading the PTAB’s response to argument, that Applicants argued that the claims have “specific technological features” that included data linking, graphing and other features, but none of which they invented. I suppose linking to data has a benefit over copying it, but that really only helps from an abstraction analysis if one invents data linking, not if one applies someone else’s data linking to medical records, which is simply using a conventional tool to achieve an abstract act in a new field of use.

Instead, Applicant prevailed because a rejection in a Final Rejection dated March of 2015 may not have held up to the standard of the Berkheimer Memo (which went beyond the holding of the actual Berkheimer case) released June 2018, and a different director was installed in the three year interim.

Its situations like these which make me turn askance when attorneys exclaim they want a “high quality examination.” This case can be disposed of on its Specification – a Specification which was written before Alice and is exactly the kind of case Alice was designed to take care of – the Specification evidences that there is no technological advancement here, but instead is conventional tools of the art being applied for their usual benefits in a particular field of use. It’s unsurprising this is a TC 3600 case, as its simply a claim using conventional technological acts with a command it be applied to a preexisting business practice. I hope IMO replaced all the words of “medical” and “patient” with “legal” and “client” and filed a corresponding “inventive” legal practice claim, or they missed out on an easy doubling of clientele.

Instead of a technological advancement, once *someone else* invented linking, tagging and graphing, the inventor suggests applying it to *a particular type of data* for the exact same benefits that it has conventionally achieved with data that means something else to a human. That’s precisely the kind of fundamental act (data organization) applied to a particular field of use (electronic medical records) that the abstract idea analysis sought to combat.

The claim will issue not because the rejection was incorrect but because the office commands a not-legally-required particular level of evidence (more than a single reference, not using the Specification except for explicit statements of conventionality) while providing examiners no time to actually gather that evidence. Make no mistake – the same rationale (the specification admits the claim is directed to organizing data, and there is no unconventional technological act to achieve the organization) applied to the same evidence (the specification) in a court would get the claim tossed as either a failure of enablement or an abstract idea.

Don’t get me wrong – I am in favor of the office tossing abstraction, because its less work for me for the same pay. But let’s not pretend its a “pro quality” act, if one views quality as correctly preventing unpatentable claims and correctly allowing patentable claims. It is, to use a term a few posts back, a “pro customer” act, and to a lesser extent a “pro revenue” act, because those maintenance fees don’t pay themselves. Would it have been correct to toss the rejection based on non-compliance with the Berkheimer memo? Sure. Does that mean that the rejection was not based on evidence, or that the claim is ultimately properly seen as eligible? No. It simply means that the office doesn’t want to pay its not-lawyer examiners to consider Alice rejections, which seems to make prosecutors happy, which is confusing to me, because prosecutors are certainly paying examiners to consider all the rejections that could be made.

The above is an understandable difference of opinion based on differing incentives. I can totally understand the…pointlessness of having non-lawyers argue a legal determination with lawyers when you can simply pay engineers to argue engineering and still achieve the correct conclusion a publicly-acceptable amount of the time. I do, however, truly dislike the insinuation of this post that the examiner was being unreasonable (“Several patents were granted to IMO, each directed to a different aspect of the LEMR, before one examiner dug in with a final rejection in the case at bar…Notwithstanding the substantial and growing body of legal authority, however, there will be further erroneous rejections of software patent claims.”) when previous cases couldn’t have rejected under Alice because Alice didn’t exist yet, and a rejection from 2015 didn’t meet a random standard from 2018.

It was a good and appropriate rejection at the time, especially given that it was first formulated less than six months after Alice and yet was upheld against subsequent DDR Holdings and Enfish logic. The complaint *at the time* wasn’t that it lacked evidentiary underpinning (that argument seems to have only appeared *years* after the rejection was made, when the examiner couldn’t have done anything about it if he wanted to) but that it was necessarily rooted in computer technology, so it doesn’t appear to me that the examiner was being unreasonable. It would be just as unfair to criticize a rejection for failing to meet the non-existent Berkheimer memo standard as it would be to highlight a drafter for unwittingly admitting something damaging to their client based on a non-existent Alice step one standard.

Skillful drafting and prosecution go a long way toward obtaining allowance of claims directed to deserving inventions.

[0001] This application is a continuation of U.S. patent application Ser. No. 11/858,241, filed on Sep. 20, 2007.

[0003] The present invention is directed to a system and method for electronic record-keeping, organizing, and managing.

Yet, our reviewing court has repeatedly held that claims directed to collecting, storing and organizing data are patent ineligible.