In Re: Salwan , 681 F. App'x 938 ( 2017 )

NOTE: This disposition is nonprecedential.
United States Court of Appeals
for the Federal Circuit
______________________
IN RE: ANGADBIR SINGH SALWAN,
Appellant
______________________
2016-2079
______________________
Appeal from the United States Patent and Trademark
Office, Patent Trial and Appeal Board in No. 12/587,101.
______________________
Decided: March 13, 2017
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ANGADBIR SINGH SALWAN, Potomac, MD, pro se.
NATHAN K. KELLEY, Office of the Solicitor, United
States Patent and Trademark Office, Alexandria, VA, for
appellee. Also represented by MAI-TRANG DUC DANG,
KAKOLI CAPRIHAN.
______________________
Before PROST, Chief Judge, MAYER, and MOORE, Circuit
Judges.
PER CURIAM.
Angadbir Singh Salwan appeals from the Patent Trial
and Appeal Board’s (“Board”) decision affirming the
examiner’s rejection of all pending claims of U.S. Patent
2 IN RE: SALWAN
Application No. 12/587,101 (“the ’101 application”).
Because we hold the claims are directed to patent-
ineligible subject matter, we affirm.
BACKGROUND
Dr. Salwan is the sole inventor of the ’101 application,
which claims methods of transferring patient health
information, including electronic medical records (“EMR”),
in a physician to patient network. The specification
discloses that the network can be accessed by, inter alia,
physicians, patients, healthcare product suppliers, and
related government agencies. Users can access the net-
work to schedule appointments, fill out forms, watch
educational video clips, create electronic superbills, sub-
mit insurance claims, bill patients, communicate with
doctors and patients, transfer patient health records,
conference by video, advertise to patients, sell healthcare
products, and rate healthcare providers. The parties
agree that claim 1 is representative:
1. A method for transferring patient health in-
formation among healthcare user groups or pa-
tients via a network, the method comprising:
providing at least one central data storage
configured to receive and store patient
health data from one or more private data
storages of healthcare user groups, at
least one central computer program em-
bodied in at least one computer readable
medium or embodied in at least one cen-
tral server for processing and transferring
patient health information stored in the
one or more central data storages, and at
least one device for providing user author-
ization to access patient data stored in the
one or more central data storages, and
configuring the central computer program
or the central server for:
IN RE: SALWAN 3
communicating through at least
one computer program, which in-
cludes EMR and billing software,
embodied in a computer readable
medium with at least one private
data storage storing electronic
medical record (EMR) information
originated, entered and controlled
by at least one or more first
healthcare service providers affili-
ated with the one or more
healthcare user groups, including
at least accounts information con-
fidential for the first healthcare
user groups, the confidential in-
formation includes at least ac-
counts information of one or more
insurance companies, which is at
least used by the billing software
to calculate patient portion of the
bill, and clinical data generated by
one or more service providers;
receiving from the at least one pri-
vate data storage the EMR infor-
mation for storing, processing and
transmission to at least one of the
patients, or one or more second
healthcare user groups, wherein
the information confidential for
the first healthcare user groups
including at least the accounts in-
formation of one or more insur-
ance companies is not received and
stored at the central data storage;
storing the received EMR infor-
mation generated by the one or
more service providers including
4 IN RE: SALWAN
at least one of health problems,
medications, diagnosis, prescrip-
tions, notes written by the service
Providers, diagnostic test results
or patient accounts data in the at
least one central data storage;
selectively retrieving the stored
EMR information, generating one
or more healthcare reports includ-
ing one or more of health problem
list, medication list, diagnoses re-
port, prescription, diagnostic test
result report, patient billing re-
port; and
transmitting one or more
healthcare reports to at least the
second authorized healthcare user
groups or the patient for review-
ing.
On January 7, 2015, the examiner issued a Final Re-
jection of all pending claims (claims 1, 7, 8, 10, 13, 18, 25,
28, 29, 32–34, 41, and 43–71). The examiner rejected all
pending claims under (1) 35 U.S.C. § 101 for lack of
patentable subject matter; (2) 35 U.S.C. § 112, first para-
graph, for lack of written description; and (3) 35 U.S.C.
§ 103(a) for obviousness. The examiner also rejected
claims 51, 52, 69, and 70 under 35 U.S.C. § 112, second
paragraph, for indefiniteness.
Dr. Salwan appealed to the Board. The Board adopt-
ed the examiner’s analysis and affirmed each of his rejec-
tions. Under § 101, the Board determined that claim 1 is
“directed to the abstract idea of billing and also to a
fundamental economic practice of calculating a patient’s
bill.” J.A. 11. It held that the recited method steps “fail
to transform the nature of the claim as they are directed
to generic computer structures for storing and transfer-
IN RE: SALWAN 5
ring information.” Id. Under § 112, first paragraph, the
Board agreed with the examiner that the specification
fails to provide support for claim 1’s limitations that
(1) the confidential information “is not received and stored
at the central data storage” and (2) the EMR information
is “entered and controlled” by healthcare user groups.
The Board agreed with the examiner that the claim
limitation in claims 69 and 70, “computing the quality of
services,” is not supported by the specification. The Board
incorporated the examiner’s analysis for rejecting all
pending claims for obviousness under § 103(a). Lastly,
under § 112, second paragraph, the Board agreed with the
examiner that (1) the limitation “the patient appointment
request” in claims 51 and 52 is indefinite for lack of
antecedent basis, and (2) the limitation “feedback” in
claims 69 and 70 is indefinite because it fails define the
scope of the claim with reasonable certainty.
Dr. Salwan appeals and we have jurisdiction under 28
U.S.C. § 1295(a)(4)(A). Because we conclude that all
pending claims are directed to patent-ineligible subject
matter, we do not reach the merits of Dr. Salwan’s argu-
ments as to the Board’s rejections under §§ 103 and 112.
DISCUSSION
We review the Board’s determination that claims are
directed to patent-ineligible subject matter de novo. In re
Ferguson, 558 F.3d 1359, 1363 (Fed. Cir. 2009). Sec-
tion 101 provides that anyone who “invents or discovers
any new and useful process, machine, manufacture, or
composition of matter, or any new and useful improve-
ment thereof” may obtain a patent. 35 U.S.C. § 101. To
determine whether claims are patent eligible under § 101,
we apply the Supreme Court’s two-step test articulated in
Alice Corp. Party v. CLS Bank International, 134
S. Ct. 2347 (2014). First, we determine whether the
claims are directed to a patent-ineligible concept: laws of
nature, natural phenomena, and abstract ideas. Id.
6 IN RE: SALWAN
at 2354–55. If so, we then proceed to the second step and
“examine the elements of the claim to determine whether
it contains an ‘inventive concept’ sufficient to ‘transform’
the claimed abstract idea into a patent-eligible applica-
tion.” Id. at 2357 (quoting Mayo Collaborative Servs. v.
Prometheus Labs., Inc., 566 U.S. 66, 72–73, 79–80 (2012)).
The Supreme Court has explained that “the mere recita-
tion of a generic computer cannot transform a patent-
ineligible abstract idea into a patent-eligible invention.”
Id. at 2358.
At Alice step one, we hold that the claims are directed
to the abstract idea of billing insurance companies and
organizing patient health information. Representative
claim 1 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. It specifies that account information of
insurance companies is not shared, whereas EMR infor-
mation—which includes, inter alia, medications, diagno-
ses, and test results—is received, stored, and selectively
retrieved to generate reports. This describes little more
than the automation of a “method of organizing human
activity” with respect to medical information. Alice, 134
S. Ct. at 2356.
Dr. Salwan argues that the claims are not directed to
an abstract idea because the calculation of a patient’s bill
and the transfer of patient EMR are not theoretical con-
cepts. He argues the claims recite practical applications
that are employed in a multi-billion dollar medical billing
industry. But while these concepts may be directed to
practical concepts, they are fundamental economic and
conventional business practices. Under the Supreme
Court’s precedent in Alice, such concepts are often held to
be abstract. See, e.g., id. at 2356 (holding the concept of
intermediated settlement is an abstract idea directed to a
“fundamental economic practice long prevalent in our
IN RE: SALWAN 7
system of commerce”) (citation omitted); Content Extrac-
tion and Transmission LLC v. Wells Fargo Bank, Nat.
Ass’n, 776 F.3d 1343, 1347 (Fed. Cir. 2014) (explaining
claims directed to “the mere formation and manipulation
of economic relations” and “the performance of certain
financial transactions” have been held to involve abstract
ideas).
At Alice step two, we agree with the Board that the
recited method steps “fail to transform the nature of the
claim as they are directed to generic computer structures
for storing and transferring information.” J.A. 11. Con-
sidering the claim elements individually and as an or-
dered combination, the claims merely implement long-
known practices related to insurance billing and organiz-
ing patient health information on a generic computer.
Dr. Salwan himself argues that the inventive aspect of
the claims overcomes the exchange of patient health
information “using fax machines, or sending paper docu-
ments by postal mail, which was inefficient, costly and
time consuming.” Appellant’s Br. 37; see also
’101 application at ¶¶ 110–113 (identifying as “main
objectives of the present invention” the ability to enable
electronic communication of tasks “currently done manu-
ally using paper, phone and fax machine”). Given that
the claims are directed to well-known business practices,
the claimed elements of a generic “network,” “computer
program,” “central server,” “device,” and “server for pro-
cessing and transferring” are simply not enough to trans-
form the abstract idea into a patent-eligible invention.
See Alice, 134 S. Ct. at 2358. Dr. Salwan’s reference to
features recited by the dependent claims—such as video
conferencing, patient appointment scheduling, patient
registration forms, health-related advertisements, and
allowing physicians to create handwritten EMR—does not
alter our conclusion. We have considered Dr. Salwan’s
remaining arguments regarding patent eligibility and
conclude they are without merit.
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CONCLUSION
For the foregoing reasons, the Board’s decision is af-
firmed.
AFFIRMED
COSTS
No costs.