Notice of Pre-AIA or AIA Status
The present application is being examined under the pre-AIA first to invent provisions.
DETAILED ACTION
1. This is in response to the arguments filed on 09/30/2025.
2. Claims 2-21 are pending in the application.
3. Claims 2-21 have been rejected.
4. Claim 1 is cancelled.
Response to Arguments
5. Applicant's arguments with respect to claims 2-21 have been considered but are moot in view of the new ground(s) of rejection.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the claims at issue are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); and In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on a nonstatutory double patenting ground provided the reference application or patent either is shown to be commonly owned with this application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP §§ 706.02(l)(1) - 706.02(l)(3) for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/forms/. The filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to http://www.uspto.gov/patents/process/file/efs/guidance/eTD-info-I.jsp.
Claims 2-21 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-29 of U.S. Patent No. 11907397. Although the claims at issue are not identical, they are not patentably distinct from each other.
Claims 2-21 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-21 of U.S. Patent No. 11893129. Although the claims at issue are not identical, they are not patentably distinct from each other.
Claims 2-21 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 10818385. Although the claims at issue are not identical, they are not patentably distinct from each other.
Claims 2-21 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-25 of U.S. Patent No. 10078728. Although the claims at issue are not identical, they are not patentably distinct from each other.
Claims 2-21 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-36 of U.S. Patent No. 9489486. Although the claims at issue are not identical, they are not patentably distinct from each other.
Claims 2-21 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-18 of U.S. Patent No. 8600776. Although the claims at issue are not identical, they are not patentably distinct from each other.
“A later patent claim is not patentably distinct from an earlier patent claim if the later claim is obvious over, or anticipated by, the earlier claim. In re Longi, 759 F.2d at 896, 225 USPQ at 651 (affirming a holding of obviousness-type double patenting because the claims at issue were obvious over claims in four prior art patents); In re Berg, 140 F.3d at 1437, 46 USPQ2d at 1233 (Fed. Cir. 1998) (affirming a holding of obviousness-type double patenting where a patent application claim to a genus is anticipated by a patent claim to a species within that genus). “ELI LILLY AND COMPANY v BARR LABORATORIES, INC., United States Court of Appeals for the Federal Circuit, ON PETITION FOR REHEARING EN BANC (DECIDED: May 30, 2001).
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
6. Claims 2-21 are rejected under 35 U.S.C. 103 as being unpatentable over Halsted et al hereafter Halsted (US pat. App. Pub. 20080222040) and in view of Kelly et al hereafter Kelly (US pat. App. Pub. 20070038477).
7. As per claim 2, 10, and 18, Halsted discloses a system, one or more computer storage media, and a computer-implemented method comprising one or more computers and one or more storage devices on which are stored instructions that are operable, when executed by the one or more computers, to cause the one or more computers to perform operations comprising: receiving data, from a source, indicating i) a request for medical records for a patient, ii) information for the patient and iii) identification information for the source (paragraphs: 15, 37, 64-65, wherein it emphasizes an interested party attempt to access a patient health related data wherein the access request comprises with indication of patient’s medical records that is going to be accessed, information of the patient and identification information of the accessing party); determining, using the identification information for the patient and from a plurality of storage locations, two or more subsets for the medical records, each subset stored at one of the plurality of storage locations (paragraphs: 11, 20-21, 38, and 63, wherein it elaborates that at least two subsets of medical records will be determined which are located in two different locations by using the patient information); determining for each of the subsets, a level of access assigned by the patient; determining, using i) the identification information for the source and ii) the level of access assigned by the patient, whether access, by the source, is permitted for each subset (paragraphs: 2, 22, 41-42, wherein it discusses that level of access privileges for each subset of the medical record will be determined by using the access party’s identification information, access level which is assigned by the patient); in response to determining that access, by the source, is permitted for at least some subsets, aggregating the permitted subsets; and sending the aggregated subsets for which access is permitted to the source (paragraphs: 10, and 12, wherein it deliberates that some subsets of the medical records are permitted to the interested party then assembled the permitted subsets of the medical records from different locations and provide that assembled medical record to the authorized party). Although, Halsted discusses about the patient information which is broadly teaches the identification information for the patient. However, in the same field of endeavor, Kelly more specifically teaches that identification information for the patient (paragraphs: 40-41, 49-52, and 67-68).
Accordingly, it would been obvious to one of ordinary skill in the network security art before the effective filing date of the claimed invention to have incorporated Kelly’s teachings of identification information for the patient with the teachings of Halsted, for the purpose of effectively protecting the patient information from any unauthored intruders.
8. As per claim 3, Halsted and in view of Kelly discloses the system, the operations comprising:
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in response to determining that access, by the source, is not permitted to any of the subsets, sending a message to the source (Halsted, paragraphs: 12-13, and 15).
9. As per claim 4, Halsted and in view of Kelly discloses the system, wherein the level of access assigned by the patient comprises: a level of access based on a profile provided with the identification information of the source (Halsted, paragraphs: 37-39).
10. As per claim 5, Halsted and in view of Kelly discloses the system, wherein the profile is a level of medical certification (Halsted, paragraphs: 45-46, and 48).
11. As per claim 6, Halsted and in view of Kelly discloses the system, wherein the level of access assigned by the patient comprises: a historical time period defined by the patient (Halsted, paragraphs: 60-62).
12. As per claim 7, Halsted and in view of Kelly discloses the system, wherein the level of access assigned by the patient comprises: one or more individual data entries identified to be inaccessible (Halsted, paragraphs: 17, and 20-21).
13. As per claim 8, Halsted and in view of Kelly discloses the system, the operations comprising: sending, to a device of the patient and using the identification information of the source, a message that indicates the source is requesting access to the medical records of the patient (Halsted, paragraphs: 40-42).
14. As per claim 9, Halsted and in view of Kelly discloses the system, the operations comprising: sending, to a device of the patient and using the identification information of the source, a message that i) indicates the source is requesting access to the medical records of the patient and ii) prompts the patient for approval of access (Halsted, paragraphs: 66-67, and 69).
15. Claims 11-17, and 19-21 are listed all the same elements of claims 2-9. Therefore, the supporting rationales of the rejection to claims 2-9 apply equally as well to claims 11-17, and 19-21.
Citation of References
16. The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. The following references are cited but not been replied upon for this office action:
Schwabe et al (US pat. app. Pub. 20080082536): discusses a web based application makes data conveniently and readily available to individuals dispersed from a common collection site or database. Individuals can access various levels of retrospective or previously stored data in the database only in accordance with pre-defined roles, or levels which can be established at log on.
Pugh (US pat. App. Pub. 20060229919): elaborates that creating, maintaining and selectively accessing medical histories. The system allows a patient and other selected parties to build a medical history, but importantly places the authority to grant access to the medical history solely in the hands of the patient. When the patient's medical history file is created, the patient also pre-authorizes selected parties, including government agencies such as FEMA to have access to at least part of the patient's history. Each selected party is associated with an access module that dictates the level of access the party has to the medical history. Primary care physicians are associated with a full access module, which allows full access to the patient's medical history. Dentists and pharmacies are associated with a limited access module, which limits the party's access to only pertinent portions of the patient's medical history. The present system also includes a fingerprint scanner and/or retina scanner that can be used to identify unconscious patients and patients without an I.D. card.
Conclusion
17. Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any extension fee pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Mohammad W. Reza whose telephone number is 571-272-6590. The examiner can normally be reached on M-F (9:00-5:00).
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Cathy Thiaw can be reached on 571-270-1138. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/MOHAMMAD W REZA/Primary Examiner, Art Unit 2407