In Re: Salwan
681 F. App'x 938
Fed. Cir.2017Background
- Inventor Angadbir Singh Salwan appealed the Patent Trial and Appeal Board’s affirmance of an examiner’s rejection of all claims in U.S. Patent Application No. 12/587,101, which claims methods for transferring and reporting patient health information (EMR) via a network.
- Representative claim 1 recites a central data storage, central computer program/server, and user authorization device to receive EMR from private data storages, store and selectively retrieve EMR, generate healthcare reports, and transmit reports to patients or authorized providers; insurance account information is expressly not stored at the central storage.
- Examiner rejected the claims under 35 U.S.C. § 101 (patent-ineligible subject matter), § 112 (written description and indefiniteness), and § 103 (obviousness); the Board affirmed all rejections.
- The Board found claim 1 directed to the abstract idea of billing/organizing patient health information and concluded the recited computer components were generic and insufficient to supply an inventive concept.
- The Federal Circuit reviewed de novo under the Alice two-step framework and affirmed the Board solely on § 101 grounds, declining to reach § 103 and § 112 merits.
Issues
| Issue | Plaintiff's Argument (Salwan) | Defendant's Argument (Board/USPTO) | Held |
|---|---|---|---|
| Whether claims are directed to patent-eligible subject matter under § 101 | Claims recite practical, concrete applications (EMR transfer and billing) used in industry, not abstract ideas | Claims are directed to the abstract idea of billing and organizing patient health information, a fundamental economic/conventional practice | Claims are directed to an abstract idea (Alice step one); not patent-eligible |
| Whether the claims contain an "inventive concept" under Alice step two | Networked computer implementation overcomes manual (fax/paper) shortcomings and adds innovation | Claimed generic computer components (server, program, network) are conventional and do not transform the abstract idea | No inventive concept; generic computer implementation insufficient; claims fail Alice step two |
| Whether dependent features (video conferencing, scheduling, handwritten EMR) render claims eligible | These added features show concrete technological improvements | These features are conventional additions and do not change the claim’s abstract nature | Such dependent features do not alter patent-ineligibility |
| Whether court should address Board’s other rejections (§§ 103, 112) | Error in Board’s factual/legal determinations under §§ 103 and 112 | Board’s rejections on those grounds were affirmed below | Court affirmed on § 101 and did not reach §§ 103 and 112 issues |
Key Cases Cited
- Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 134 S. Ct. 2347 (2014) (establishes two-step test for abstract ideas and holds generic computer implementation insufficient)
- Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66 (2012) (framework for assessing inventive concept to transform abstract idea into patent-eligible application)
- Content Extraction & Transmission LLC v. Wells Fargo Bank, N.A., 776 F.3d 1343 (Fed. Cir. 2014) (claims directed to formation/manipulation of economic relations are abstract)
- In re Ferguson, 558 F.3d 1359 (Fed. Cir. 2009) (de novo review standard for § 101 determinations by the Board)