DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Response to Arguments
Applicant’s amendments have overcome the 101 rejection of record.
Applicant’s arguments regarding the 103 rejection have been carefully considered and are not deemed persuasive.
Applicant argues: Turning first to claim 1, the applicant notes that that claim recites a computer implemented method for selectively de-identifying protected health information which comprises accessing a first data file, comprising a first data item, "wherein the first data item comprises PHI and first PHI category information." In rejecting claim 1, the Office Action stated that "Gardner does not explicitly recite that the data item includes an indication of the PHI category. " Nevertheless it argued that a data item comprising PHI and first PHI category information, if not inherent, would have been an obvious modification of the teachings of Gardner, "in order to anonymize or modify the data according to the category of sensitivity/protection, without having to look-up the category in a different location, thus preserving time and resources. However, this argument is incorrect, as omitting category information from data items does not mean it would need to be looked up elsewhere. For example, category information could be stored once at the file level in the same file that stores data items, 5 allowing a user to perform category based actions without having to look up category information in any other location.⁶ Thus, the modification proposed in the Office Action, rather than being expected to preserve time and resources, would have been expected to decrease the efficiency of Gardner's system by wasting space storing redundant information at the attribute level rather simply storing it once in a header.
Examiner’s Response: The Examiner respectfully disagrees. There would clearly be an expected benefit of storing the category alongside the PHI in order to have quick access to the category. For example, “Name: John Smith” would be an extremely common type of storage for PHI information. The data would be stored together and would increase efficiency and simplicity. The table of Gardner is merely a way of organizing the data. Whether stored in a header or alongside the PHI, both options would clearly have been in the toolbox of the skilled artisan to store information in either manner. This does not make the claim distinctive over the prior art.
Applicant argues: claim 3 recites "if the protected health information in the first data item is not to be de-identified, the method further comprises: generating a third data item by modifying the first data item by deleting the PHI category information." In its rejections, the Office Action acknowledged that this was not taught in the cited art, but asserted that it would have been obvious "to modify the teachings of Gardner to delete the PHI category information when it is not to be used, thus preserving storage space." However, this cannot justify the rejection of claim 3 for at least two reasons. First, Gardner does not state that PHI category information is not to be used when protected health information is not to be de- identified and so, even if it would have been obvious to delete information which is not to be used, Gardner does not render it obvious to delete PHI category information as recited. Second, because Gardner illustrates storage of category information at the level of columns in a table, 8 deleting category information if PHI from a particular data item (e.g., the "first data item" as recited in claim 3) would undercut the utility of the table itself, not only for the data item whose PHI was not to be deleted, but for every data item the table included.
Examiner’s Response: As discussed regarding claim 1 above, the skilled artisan could easily store the category and PHI as a data item. Whether that information is stored in a header or as “Category: PHI” are both within the toolbox of the skilled artisan and are very common and well-known ways of storing this type of information. Therefore, this would not necessarily undercut the table used by the prior art. The table is merely a way of organizing the data. Deleting unused data, especially PHI data was notoriously well known in the art before the effective filing data of the claimed invention. This is for basic security purposes. This limitation does not distinguish applicant’s claimed invention over the prior art.
Allowable Subject Matter
Claim 20 is allowed.
Claims 17-19 are objected to as being dependent upon a rejected base claim but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
The following is a statement of reasons for the indication of allowable subject matter: The prior art (i.e., Gardner) teaches categories and PHI, as discussed above. However, the prior art does not teach or suggest the specifics of the data file organization claimed in claim 17 or 20, specifically how the data file is organized, or how each data item is specifically organized.
Conclusion
THIS ACTION IS MADE FINAL. 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 nonprovisional extension fee (37 CFR 1.17(a)) 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 mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to LISA C LEWIS whose telephone number is (571)270-7724. The examiner can normally be reached Monday - Thursday 7am-2pm.
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/LISA C LEWIS/Primary Examiner, Art Unit 2495
