Digest of In re Ronald S. Karpf, No. 2014-1035 (Fed. Cir. July 25, 2014) (nonprecedential). On appeal from the USPTO (PTAB). Before O’Malley, Reyna, and Hughes.

Procedural Posture: Applicant appealed Patent Trial and Appeal Board’s (“PTAB”) decision rejecting all pending claims in an application as anticipated. The CAFC vacated the PTAB’s decision and remanded for further proceedings.

  • Anticipation: Claim 9 was directed to a method of using an electronic medical records system and included a claim element that required providing a patient with access to the patient’s medical information. The PTAB held that this limitation was found in a prior art reference that disclosed giving a patient control over who may access the data. The CAFC found that although the reference disclosed giving patients control over access to their information, the reference “stops short of granting patients actual access.” Thus, the CAFC held that the PTAB’s decision was not supported by substantial evidence and vacated the PTAB’s decision.
  • Anticipation: The PTAB rejected independent claim 23 for the “same reason” as rejecting claim 9. The CAFC vacated this rejection because the PTAB did not identify any grounds of rejection specific to claim 23, and additionally did not address one of the Applicant’s arguments regarding claim 23.