NOTE: This disposition is nonprecedential.

 

United States Court of Appeals 

for the Federal Circuit ______________________ 

IN RE RONALD S. KARPF

______________________ 

2014-1035

______________________ 

Appeal from the United States Patent and Trademark 

Office, Patent Trial and Appeal Board in Serial No. 

11/645,067.

______________________ 

Decided: July 25, 2014 

______________________ 

CHRISTIAN J. HURT, Nix, Patterson & Roach, LLP, of 

Irving, Texas, argued for appellant. With him on the brief 

was DEREK T. GILLILAND. 

MEREDITH H. SCHOENFELD, Associate Solicitor, United 

States Patent and Trademark Office, of Alexandria, 

Virginia, argued for appellee. With her on the brief were 

NATHAN K. KELLEY, Solicitor, and KRISTI L. R. SAWERT, 

Associate Solicitor. 

______________________ 

Before O’MALLEY, REYNA, and HUGHES, Circuit Judges.

REYNA, Circuit Judge. 

Ronald S. Karpf appeals from a final decision by the 

Patent Trial and Appeal Board (“Board”) of the United 
2 IN RE: KARPF

States Patent and Trademark Office (“PTO”) rejecting all 

pending claims in U.S. Patent Application No. 11/645,067 

(“the ’067 application”) as anticipated by U.S. Patent No. 

5,845,255 (“Mayaud”).1 For the reasons below, we vacate

the Board’s decision and remand for further proceedings.

BACKGROUND

A. The ’067 application

The ’067 application is directed to an electronic medical records (“EMR”) system that doctors may use to access 

patients’ medical records and enter diagnoses and corresponding treatment instructions after patient visits. It 

also allows patients to access their records and receive the 

treatment instructions from their doctors electronically. 

To give patients access to and control over their own 

medical information, patients are given two passwords: 

(1) a patient password that each patient may use to log in 

to the system to access individual medical information, 

including diagnoses and treatment instructions; and (2) a 

patient PIN that each patient can share with those doctors to whom the patient wishes to grant access to his or 

her information and records and from whom the patient 

wishes to receive instructions. Medical personnel may 

only access the information and records of those patients 

for whom they have been provided a patient PIN. After a 

doctor enters treatment instructions for a given patient 

into the system, the system tracks the patient’s access to 

the system to monitor compliance with the treatment

instructions and provide reminders when necessary. 

1 Ex parte Karpf, No. 2010-9172, 2013 WL 1225722 

(P.T.A.B. Mar. 18, 2013) (“Board Decision”), aff’d on reh’g, 

(P.T.A.B. Jul. 26, 2013) (“Reh’g Decision”).

 
IN RE: KARPF 3

Two sets of claims are pending in the ’067 application: 

method claims 9–18 and apparatus claims 23–25.2 Independent claim 9 recites:

9. A method of using an electronic medical records (EMR) system, the method comprising:

a) forming an EMR database comprising:

a1) for at least one patient registered to use 

the EMR system, storing: patient identification 

data; patient password; and patient personal 

identification number (PIN);

a2) for at least one medical practitioner registered to use the EMR system, storing: medical 

personnel identification data; and medical personnel password;

a3) for at least one medical encounter between 

a patient and medical personnel, storing medical encounter data relating to the at least one 

medical encounter, wherein the medical encounter data includes information related to 

the at least one reason for the medical encounter, and at least one diagnosis by medical personnel corresponding to the medical encounter;

b) allowing access to the EMR database through 

a patient program, in which an authorized patient 

has access only to information related to the authorized patient, wherein the authorized patient 

is assigned a patient PIN in the EMR database for 

controlling access to information in the EMR database related to the patient; and

2 Original claims 1–8 and 19–22 were withdrawn in 

response to a restriction/election requirement. 

 
4 IN RE: KARPF

c) allowing access to the EMR database through 

a medical personnel data entry program, in which 

authorized medical personnel may access records 

related to a given patient only upon entry of input 

data corresponding to the patient PIN assigned to 

the given patient.

Claims 10–18 depend from claim 9 and add limitations 

generally directed to the storage or display of treatment 

guidelines, patient compliance information, and other 

patient information. 

Independent claim 23 recites:

23. An article of manufacture comprising at least 

one machine-readable storage medium having 

stored therein indicia of a plurality of machineexecutable control program steps, the control program comprising the steps of:

a) storing patient data, including patient identification data, and patient password;

b) storing medical encounter data relating to at 

least one medical encounter between a medical 

personnel and a patient, wherein the medical encounter data includes at least one reason for the 

medical encounter, and at least one diagnosis by 

medical personnel corresponding to the medical 

encounter; and

c) storing medical condition data relating to at 

least one medical condition that may be deemed 

by medical personnel to relate to a patient as a result of a medical encounter, wherein medical condition data includes general information about a 

given medical condition.

Claims 24–25 depend from claim 23 and add limitations 

generally related to determining patient compliance and 

issuing a notification to non-compliant patients. 
IN RE: KARPF 5

B. The Mayaud Prior Art Reference

Mayaud is prior art to the ’067 application under 35 

U.S.C. § 102(e). Mayaud discloses an electronic prescription management system that doctors can use to prescribe 

medications to patients, manage prescriptions, and communicate with pharmacies and patients. Mayaud, Abstract. The system can be used to access patients’ 

prescription history and track the efficacy of particular 

medications to treat the conditions for which they were 

prescribed. See, e.g., id. col. 14 ll. 10–31; col. 21 ll. 42–63.

To ensure that personal information is protected, Mayaud uses “patient record access codes” that can be generated by or provided to patients prior to a doctor’s 

appointment. Id. col. 10 ll. 20–23. Patients can then 

decide whether to share their codes with doctors or other 

third parties on a need-to-know basis, thereby controlling 

access to their personal information and records. Id. col. 

10 ll. 24–26. Mayaud also explains that users may access 

the system from multiple stations by using user-specific 

passwords, which may provide varying degrees of access 

depending on the users’ authorization levels. Id. col. 10 ll. 

12-19, ll. 37–43. Some of the stations may run “patientdirected data access control software” that includes “patient interface components.” Id. col. 46 ll. 41–45. These 

stations are separate from the stations used by prescribers and may be located, for example, in administrative or 

reception areas of health care facilities. Id.

C. Proceedings Before the PTO

During prosecution, the PTO Examiner rejected 

claims 9–18 and 23–25 as anticipated by Mayaud. With 

respect to limitation b) in claim 9 (the “patient access 

limitation”), the Examiner pointed to a discussion in 

Mayaud regarding electronic identifiers (e.g., signature 

recognition) for remote electronic authorization of prescription fulfillment at the pharmacy. See Non-Final 
6 IN RE: KARPF

Office Action at 7–8 (Feb. 4, 2009). The Examiner rejected claim 23 “for the same reason” as claim 9. Id. at 12. 

In response, Mr. Karpf argued that Mayaud did not 

disclose: (1) a system to which a patient, and not simply a 

patient’s doctor, has access; (2) a patient password for a 

patient to gain access to the system and the patient’s own 

records, as opposed to a patient PIN for others to use; and 

(3) the specific information about individual medical 

encounters and other patient-related information recited 

in the claims. See Applicant’s Response at 15–16 (Apr. 30, 

2009). Mr. Karpf also argued that the portion of Mayaud 

cited by the Examiner as anticipating the patient access 

limitation merely referred to security measures used to 

verify the signature of a doctor who has prescribed medicine and, indeed, a pharmacy would not need to verify a 

patient’s signature to determine whether a prescription 

has been authorized. Id. Mr. Karpf additionally noted 

that the Examiner provided no details as to how the 

limitations of claim 23 were specifically met by Mayaud. 

While acknowledging that some aspects of claim 9 may be 

broadly found in claim 23, Mr. Karpf pointed to specific 

limitations in claims 23–25 that he argued were not 

present in Mayaud. Id. at 16. 

The Examiner maintained the anticipation rejection 

of claims 9–18 and 23–25 based on Mayaud. With respect 

to the patient access limitation, the Examiner pointed to 

Mayaud’s disclosure of signature recognition. See Final 

Office Action at 10 (Jul. 16, 2009). The Examiner also 

continued to reject claim 23 “for the same reason” as 

claim 9. Id. at 15. 

Mr. Karpf appealed the anticipation rejection to the 

Board, essentially repeating the same arguments made 

before the Examiner. See Applicant’s Appeal Br. at 9–14

(Dec. 10, 2009). Mr. Karpf emphasized his argument that 

Mayaud fails to disclose both patient access to an EMR 

system and the use of a “patient password” for patients 
IN RE: KARPF 7

themselves to gain access. Id. at 9–10. With respect to 

claims 23–25 in particular, Mr. Karpf argued that patient 

access to the system is implicitly required by the limitation directed to a “patient password.” Id. at 12.

The Board affirmed the Examiner’s anticipation rejection of claims 9–18 and 23–25. Regarding the patient 

access limitation, the Board did not rely on Mayaud’s 

discussion of signature recognition, but found that the 

following paragraph in Mayaud discloses granting patients access to the system: 

Patient record access codes can, in selected instances, be patient provided, or granted by intelligent security control cards, having been 

furnished to the patient by a system administrator, or agent, prior to the physician encounter. 

Physician or other user access to a patient’s record, or to sensitive details thereof, can thereby be 

restricted to a need-to-know basis. Access by 

third parties to physician related data can be similarly protected.

Board Decision at 6 (quoting Mayaud col. 10 ll. 20–27). 

The Board also found that Mayaud discloses password 

protection, including patient passwords, and storing 

patient history files and medical records, including diagnoses and the type of medical encounter data recited in 

the claims. See id. at 7. The Board noted that, to the 

extent that Mayaud did not disclose the specific type of

medical encounter data and other patient-related information recited in the claims, those limitations constituted 

non-functional descriptive material not entitled to any 

weight in the patentability analysis. Id. at 7 n.5. 

Mr. Karpf requested rehearing on the grounds that 

the Board misapprehended the distinction between giving 

a patient control over who may access data (as in Mayaud) and giving a patient access to the data (as required 

in the claims). Applicant’s Request for Rehearing at 2
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(May 13, 2013). The Board denied rehearing, reasoning 

that patient control necessarily requires that the patient

have access to the system in order to create controls or 

restrictions for doctors to access patient’s records. Reh’g 

Decision at 3–4. The Board also pointed, for the first 

time, to Figure 16 in Mayaud, which the Board argued 

showed devices having “patient-directed data access 

control software” to allow patients to access the system by 

way of the “patient record access codes.” Id. at 4 (citing 

Mayaud col. 45 ll. 18–25; col. 46 ll. 32–49; col. 47 ll. 45–

46). Finally, the Board rejected Mr. Karpf’s argument 

that no due consideration was given to additional limitations in the dependent claims, reaffirming its view that 

much of Mr. Karpf’s arguments were predicated on nonfunctional descriptive material. Id. at 5. 

Mr. Karpf timely appealed to this court. We have jurisdiction pursuant to 28 U.S.C. § 1295(a)(4)(A). 

DISCUSSION

We vacate the Board’s decision that Mayaud anticipates claims 9–18 and 23–25. The Board’s factual finding 

that Mayaud discloses an EMR system that patients can 

use to access their own information is unsupported by

substantial evidence.3 

Claims 9–18 require an EMR system “in which an authorized patient has access only to information related to 

the authorized patient[.]” According to the specification, 

patient access to the EMR system is to be distinguished 

from access by medical personnel. While medical personnel may use the system to update patient information or 

enter treatment instructions, patient access is required 

3 See In re Gleave, 560 F.3d 1331, 1335–36 (Fed. 

Cir. 2009) (the Board’s determination regarding anticipation is a question of fact that we review for substantial 

evidence). 

 
IN RE: KARPF 9

for the patient to be able to review treatment instructions 

and receive reminders to comply with the instructions. 

Although Mayaud discloses giving patients the ability 

to control who may access their information, it stops short 

of granting patients actual access to that information 

through the prescription system. The closest disclosure in 

this regard is the single reference to a “patient interface” 

of the “patient-directed data access control software” that 

runs in stations located in administrative or reception 

areas of health care facilities. See Mayaud col. 46 ll. 35–

45. That discussion, however, is silent regarding who 

uses the patient interface or whether patients can use it 

to view their individual information. Indeed, the one use 

of the “patient interface” that is described in Mayaud is 

allowing the reading of data access rights off a patient’s 

data access control card, which does not require direct 

interaction between a patient and the system. See id.

col. 46 ll. 46–49. 

Likewise, Mayaud’s disclosure of “patient record access codes” is insufficient to support the Board’s finding

regarding patient access to patient information. All 

Mayaud teaches is that patients may use the codes to 

restrict doctors’ access to patient information by sharing 

the codes with doctors on a need-to-know basis. See 

Mayaud col. 10 ll. 20–27. There is no suggestion that 

patients may use the codes to access their own information through the system. Indeed, other portions of 

Mayaud explain that user access to system workstations 

is password-protected, and there is no mention of patients 

receiving passwords. See id. col. 10 ll. 32–43. 

In sum, the Board’s finding that Mayaud anticipates 

the patient access limitation of claims 9–18 lacks substantial evidence. We therefore need not address Mr. Karpf’s 

argument that the Board raised a new ground of rejection 

in its rehearing decision by pointing to Figure 16 in 

Mayaud for the first time. 
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With respect to claims 23–25, the Examiner’s rejection did not clearly specify any particular grounds for 

rejecting claim 23 beyond the “same reason” for rejecting 

claim 9. The Board also did not identify any grounds of 

rejection specific to claim 23. While the patient access

limitation of claim 9 is not expressly recited in claim 23, 

Mr. Karpf argued before the Board that the “patient 

password” limitation of claim 23 implicitly requires patient access. The Board, however, did not address Mr. 

Karpf’s argument and treated the grounds of rejection for 

claim 9 as if they applied equally to claim 23. Because 

the record is not clear regarding the grounds on which the 

Board relied to reject claim 23, we vacate the rejection of 

claims 23–25 and remand for the Board to consider in the 

first instance whether Mayaud’s failure to disclose patient 

access is relevant to the anticipation of those claims.4 

CONCLUSION 

The Board’s finding that Mayaud discloses an EMR 

system that patients can use to access their own information is unsupported by substantial evidence. 

VACATED AND REMANDED

4 See Getcher v. Davidson, 116 F.3d 1454, 1459 

(Fed. Cir. 1997) (remanding to the Board for lack of a 

claim construction analysis as well as conclusory anticipation findings).