Ex Parte 6343271 et al

Patent Trial and Appeal Board

Feb 27, 2014

90011977 (P.T.A.B. Feb. 27, 2014)

UNITED STATES PATENT AND TRADEMARKOFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
90/011,977 11/14/2011 6343271 18815.16 6844
21999 7590 02/27/2014
KIRTON MCCONKIE
60 EAST SOUTH TEMPLE
SUITE 1800
SALT LAKE CITY, UT 84111
EXAMINER
CARLSON, JEFFREY D
ART UNIT PAPER NUMBER
3992
MAIL DATE DELIVERY MODE
02/27/2014 PAPER
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte PPD DATA, LLC
Patent Owner and Appellant
____________________

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Technology Center 3900
____________

Before ST. JOHN COURTENAY III, THU A. DANG, and
LARRY J. HUME, Administrative Patent Judges.

DANG, Administrative Patent Judge.

DECISION ON APPEAL

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PPD Data, LLC, the owner (hereinafter “Owner”) of the Patent under
reexamination (hereinafter the “’271 Patent”), appeals under 35 U.S.C.
§§ 134(b) and 306 from a final rejection of claims 1, 2, 7, 10, 12, and 17-19.
We have jurisdiction under 35 U.S.C. §§ 134(b) and 306.
We affirm.

I. STATEMENT OF THE CASE
This reexamination proceeding arose from a third-party request for ex
parte reexamination filed by Zachary P. Piccolomini for Proskauer Rose
LLP (Request for Ex Parte Reexamination filed November 14, 2011,
hereinafter “Request”) for Requestor, Athenahealth, Inc.. The ’271 Patent
issued to Brian Peterson, John Kwant, Jr., Vaughn Cecil, and Wayne Provost
on January 29, 2002 from Application 09/118,668 filed on July 17, 1998.
According to the Request, U.S. Application No. 09/952,568 (hereinafter the
“’568 Application”) continued from and claimed the benefit of the ’271
Patent (Request 15). During prosecution of the ’568 Application, now
abandoned, the Examiner rejected the claims as anticipated over U.S. Patent
No. 6,208,973 to Boyer et al. (“Boyer”) (id. at 15-16). Boyer was not cited
during the prosecution of the ’271 Patent (id. at 16). Owner appeals from
the Examiner’s rejection of the claims of the ’271 Patent over Boyer during
reexamination.
We are also informed that the ’271 Patent is the subject of pending
litigation PPS Data LLC v. Athenahealth, Inc., Case No. 11-746
(RBD)(M.D. Fl.). (Id. at 7).

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A. INVENTION
The ’271 Patent relates to automated health claims processing
systems, wherein a health care provider may access information relating to
patients, create and submit claims electronically, learn whether the claims
are to be automatically or manually adjudicated, and receive automated
electronic payment from the claims processing system (col. 1, ll. 8-14).

B. CLAIMS
Claims 1, 2, 7, 10, 12, and 17-19 are subject to reexamination and
have been rejected. Claims 1-27 are original patent claims. Claims 3-6, 8,
9, 11, 13-16, and 20-27 are not subject to reexamination. Claims 1, 7, 10,
and 19 are independent.
Claim 1 is illustrative.
1. In a system comprising a health care benefit
component that stores patient and benefit information and
allows access to stored information by a health care provider,
an automated adjudication component that automatically
adjudicates claims submitted for payment, an automated
payment component that automatically pays adjudicated claims,
a payment tracking component that tracks the status of claims
submitted for automatic payment, and an access terminal
associated with the health care provider, a method for
submitting and adjudicating claims comprising the steps of:
accessing, using the access terminal, the patient and
benefit information stored by the health care benefit component
such that the health care provider can ascertain patient
information in preparation for submitting a claim for treatment
provided to a patient;
creating, using the access terminal, the claim by entering
information regarding treatment provided to said patient into an
electronic claim form that can be submitted for payment;
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before the claim is submitted for adjudication,
performing a claims precheck process to determine whether the
claim will be automatically or manually adjudicated, wherein
claims that are determined to be automatically adjudicable are
routed to an automatic adjudication process that determines
whether the claim is approved for payment without requiring
human review, and claims that are determined to require
manual adjudication are routed to a manual adjudication
process that requires human review to determine whether the
claim is approved for payment;
notifying, using the access terminal, the health care
provider whether the claim will be automatically or manually
adjudicated;
after notifying the health care provider whether the claim
will be automatically adjudicated, receiving user input that
requests submission of the claim;
in response to the user input, transmitting said claim from
the access terminal, thereby submitting said claim for
adjudication; and
if said claim is to be automatically adjudicated and paid
automatically, then tracking the payment status of said claim
using the access terminal.

C. REJECTION
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Boyer US 6,208,973 B1 Mar. 27, 2001

Claims 1, 2, 7, 10, 12, and 17-19 stand rejected under 35 U.S.C.
§ 103(a) as unpatentable over Boyer.

II. ISSUES
The dispositive issues before us are whether the Examiner has erred in
finding Boyer teaches or would have suggested “before the claim is
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submitted for adjudication, performing a claims precheck process to
determine whether the claim will be automatically or manually adjudicated”
and “notifying, using the access terminal, the health care provider whether
the claim will be automatically or manually adjudicated” as recited in claim
1?

III. FINDINGS OF FACT
The following Findings of Fact (FF) are shown by a preponderance of
the evidence.
Boyer
1. Boyer discloses preadjudication services that allow the
healthcare providers and patients to get a thorough understanding of what
services are covered (col 13, ll. 2-5).
2. Based on the patient’s input and the healthcare provider’s
examination, a preliminary diagnosis can be reached, wherein the healthcare
provider and the patient to consider options with which treatments would be
covered (col 13, ll. 18-28).
3. Once treatment has been provided, the healthcare provider enters
a claim and interactively adjudicates that claim on-line, facilitating the auto-
adjudication process, wherein a certain percentage of claims will not be able
to be auto-adjudicated and thus the healthcare provider may monitor the
process of those claims that must be manually adjudicated (col. 14, ll. 6-15).
4. Boyer also discloses a third party payment system that
determines whether a claim is valid or invalid, and if the claim is invalid,
then it is sent to the Policy Administrator for adjudication, and if the claim is
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valid, then the adjudication engine allocates financial responsibility for the
claim (col. 15, ll. 53-59). At the Policy Administrator, the claim is
converted to a submission format and transmitted for manual external
adjudication (col. 16, ll. 1-2).

IV. ANALYSIS
Although Owner concedes “[p]rior art systems had manual and
automatic adjudication routes,” Owner argues that the prior art systems “did
not inform the user, prior to submission, which route the claim would take
once submitted” (App. Br. 9).
In particular, although Owner concedes that Boyer discloses a
preadjudication step, Owner argues “this preadjudication does not involve
any determination of how a third party payor will adjudicate a particular
claim” (id. at 17). Owner asserts “steps of identifying whether a particular
treatment will be covered only involve identifying that the insurance
company will pay for the particular treatment” and thus “do not involve
informing the health care provider whether a claim for a particular treatment
will or will not require human review” (id.). Thus, Owner asserts that
“Boyer’s pre-check is unrelated to determining whether a human will be
involved in the adjudication of the claim” (id. at 20) since “the health care
provider still will not know whether the health insurance company will
require manual review once the claim is submitted” (id. at 21).
Further, while Owner concedes that Boyer also discloses, at the health
insurance company, determining whether a claim is “to be ineligible for
automatic adjudication (i.e. invalid) and therefore requires manual
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adjudication,” Owner asserts Boyer describes the determining process “after
the claim has already been submitted” (id. at 18). According to Owner,
“whether a claim is valid or invalid . . . is not determined until the health
care provider has submitted the claim” (id. at 19 (emphasis omitted)). That
is, Owner contends “Boyer’s system cannot perform the determination prior
to the claim being submitted by the health care provider” (id. at 21).
Owner then contends “[b]ecause Boyer’s system does not know
whether a claim will be automatically or manually adjudicated until after the
claim is submitted for adjudication,” Boyer is “incapable” of notifying the
health care provider prior to the claim being submitted (id. at 23). Thus,
Owner asserts “the Office Action has failed to identify any teaching or
suggestion in any prior art reference, including Boyer, for providing such
[notifying step] in claim processing systems” (id. at 25).
However, the Examiner finds that, in Boyer, “[t]he healthcare
provider can pre-check a potential claim’s adjudication and automatically
reveal the claim’s coverage and payment responsibilities from the outcome
of this pre-check, . . . thereby determining the claim to be automatically
adjudicable” (Ans. 6). The Examiner also finds that “Boyer et al also
describes the possibility that certain claims might not be capable of
automatic adjudication, thereby requiring manual adjudication” (id. at 8).
The Examiner then concludes that it would have been obvious “to
have notified the healthcare provider and patient that a successfully pre-
checked claim or otherwise automatically-adjudicable claim would be
available for and subject to automatic adjudication” so the parties would
understand not only “whether they could expect timely, automatic, formal
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adjudication” but also “results of that adjudication if they were to submit the
claim formally” (id.). Similarly, the Examiner concludes that it would have
been obvious “to have notified the healthcare service provider that manual
adjudication would be necessary” otherwise “the provider and patient would
wait . . . for what they think is supposed to be automatic and on-the-spot
adjudication” (id. at 17).
We agree with the Examiner’s underlying factual findings and
ultimate legal conclusion of obviousness.
We give the claim its broadest reasonable interpretation consistent
with the Specification. See In re Morris, 127 F.3d 1048, 1054 (Fed. Cir.
1997). However, we will not read limitations from the Specification into the
claims. In re Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993).
Although Owner argues 1) that the prior art systems “did not inform
the user, prior to submission, which route the claim would take once
submitted” (App. Br. 9), 2) that Boyer’s “preadjudication does not involve
any determination of how a third party payor will adjudicate a particular
claim” (id. at 17), and 3) that “Boyer’s system cannot perform the
determination prior to the claim being submitted by the health care provider”
(id. at 21), such arguments are not commensurate in scope with the
specifically recited language of the claims. In particular, representative
claim 1 does not require any informing of “which route the claim would take
once submitted” (id. at 9), or determining how “a third party payor” will
adjudicate (id. at 17), or determining prior to the claim being submitted by
“the health care provider” (id. at 21). Instead, claim 1 merely recites,
“before the claim is submitted for adjudication” by any entity, “performing a
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claims precheck process to determine whether the claim will be
automatically or manually adjudicated” by any entity.
Although claim 1 also recites “wherein claims that are determined to
be automatically adjudicable are routed to an automatic adjudication process
. . . , and claims that are determined to require manual adjudication are
routed to a manual adjudication process that requires human review” (claim
1, emphasis added), we note claim 1 does not recite any routing step or any
step for determining the route. In particular, the claim merely requires that
“wherein” the claims are “routed” to an automatic adjudication process or a
manual adjudication process that requires human review. That is, method
claim 1 does not positively recite any step of routing the claims, but instead,
how the claims are being “routed” is provided in a “wherein” clause
following the positively recited step of “performing a claims precheck
process”.
Given the language used, the “wherein” clause is reasonably
interpreted to identify the resulting conditions that occur when a claims
precheck process is performed. That is, as result of the precheck process,
the claims are designated to a certain route. Thus, the “wherein” clause at
issue is akin to a “whereby” clause that merely states the result of the claims
precheck process. Our reviewing court has concluded that “[a] ‘whereby’
clause that merely states the result of the limitations in the claim adds
nothing to the patentability or substance of the claim.” Texas Instruments,
Inc. v. Int’l Trade Comm’n, 988 F.2d 1165, 1172 (Fed. Cir. 1993) (citation
omitted).
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Nevertheless, as Owner concedes, Boyer discloses both “manual and
automatic adjudication routes” (App. Br. 9). In particular, Boyer discloses
preadjudication services that allow the healthcare providers and patients to
get a thorough understanding of what services are covered and consider
options regarding treatments (FF1- 2). Once treatment has been provided,
the healthcare provider enters a claim and interactively adjudicates that
claim on-line to facilitate the auto-adjudication process, wherein a certain
percentage of claims will not be able to be auto-adjudicated, and thus the
healthcare provider may monitor the process of those claims that must be
manually adjudicated (FF 3). That is, after the healthcare provider enters a
claim in the system, the provider will be able to know whether a claim will
be auto-adjudicated or not (FF 1-3). Thus, claims that are determined to be
automatically adjudicable stay on the current route for an automatic
adjudication process, wherein claims that are determined to not be
automatically adjudicated are routed to a manual adjudication process that
requires human review, as required by claim 1.
Since Boyer determines whether or not the claim is to be
automatically adjudicated or manually adjudicated in order to determine
which route of adjudication the claim must take, the claim is not yet
adjudicated. Thus, Boyer at least suggests that the recited determining is
done “before the claim is submitted for adjudication,” as required by
claim 1.
Accordingly, we agree with the Examiner that Boyer, at the least,
suggests that the healthcare provider can pre-check to determine whether a
claim is to be automatically adjudicable (Ans. 6), or not be capable of
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automatic adjudication, “thereby requiring manual adjudication” (id. at 8).
Thus, we find no error with the Examiner’s finding that Boyer at the least
suggests, “before the claim is submitted for adjudication,” determining
“whether the claim will be automatically adjudicated” as required by claim
1.
Further, in Boyer, the healthcare provider enters a claim on-line and
facilitates the auto-adjudication process, wherein a certain percentage of
claims will not be able to be auto-adjudicated and thus the healthcare
provider may monitor the process of those claims that must be manually
adjudicated (FF 3). We agree with the Examiner’s finding that, in order to
inform the healthcare provider that a claim requires manual adjudication, it
would have been obvious “to have notified the healthcare provider and
patient that . . . [an] automatically-adjudicable claim would be . . . subject to
automatic adjudication” (Ans. 8) or “that manual adjudication would be
necessary” (id. at 9).
The test for obviousness is not what Boyer shows but what Boyer
would have suggested to one of ordinary skill in the art. See In re Merck &
Co., Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986). The Supreme Court has
determined that the conclusion of obviousness can be based on the
background knowledge possessed by a person having ordinary skill in the
art. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007). The skilled
artisan is “a person of ordinary creativity, not an automaton.” Id. at 420-21.
We are not persuaded, and Owner has presented no persuasive evidence that
such precheck “before the claim is submitted” and notification of the
precheck results was “uniquely challenging or difficult for one of ordinary
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skill in the art.” Leapfrog Enters., Inc. v. Fisher-Price, Inc., 485 F.3d 1157,
1162 (Fed. Cir. 2007) (citing KSR, 550 U.S. at 418).
Furthermore, Boyer also discloses a third party payor system that
determines whether a claim is valid or invalid, wherein if the claim is
invalid, then it is sent to the Policy Administrator for manual adjudication,
whereas if the claim is valid, then the adjudication engine performs the
adjudication (FF 4). As Owner concedes, Boyer’s third party payor system
determines whether a claim is “ineligible for automatic adjudication (i.e.
invalid) and therefore requires manual adjudication” (App. Br. 18).
Because the determination is for determining whether a claim is sent
to manual adjudication or stays with automatic adjudication, the claim is not
yet adjudicated. Thus, Boyer, at the least, suggests the determination is done
“before the claim is submitted for adjudication” (claim 1) by the third party
payor system, even though it has already been entered into the system by the
health care provider.
Boyer also discloses that the healthcare provider may monitor the
process of those claims that must be manually adjudicated (FF 3). Thus, we
agree with the Examiner’s finding that, in order to inform the healthcare
provider that a claim requires manual adjudication for monitoring, it would
have been obvious to have notified the provider that the claim is a valid
automatic adjudication (Ans. 8), or that manual adjudication would be
necessary (id. at 9).
Accordingly, we find Owner has not shown the Examiner erred in
rejecting claim 1 over Boyer.
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As for independent claims 7 and 19, Owner repeats the argument that
the claims “require that the health care provider first be notified whether a
claim will be automatically or manually adjudicated,” whereas “[a]s stated
above [with respect to claim 1]”, Boyer does not (App. Br. 28). Owner then
adds, “[t]he claim is never returned to the health care provider to allow the
health care provider to modify the claim” (id.).
However, as discussed above with respect to claim 1, we find no error
with the Examiner’s finding that Boyer suggests notifying the healthcare
provider whether the claim is to be automatically or manually adjudicated
(Ans. 8-9). Further, we find no error with the Examiner’s finding that
“Boyer et al also teaches that the healthcare provider can re-visit the pre-
check adjudication stage as well as make changes between pre-checked
claims and formally submitted claims” (id. at 18). In particular, we find no
error with the Examiner’s conclusion that “[s]uch an iterative approach in
researching possible treatments would have been a predictable way to arrive
at an optimal treatment and resulting claim” (id. at 19).
We therefore find the Examiner also did not err in rejecting claims 7
and 19 over Boyer. Owner does not provide arguments for claims 2, 10, 12,
17, and 18, depending respectively from claims 1 and 7. Thus, claims 2, 10,
12, 17, and 18 fall with claims 1 and 7.
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V. SUMMARY/CONCLUSION
We sustain the Examiner’s rejections of claims 1, 2, 7, 10, 12, and 17-
19.

VI. DECISION
The Examiner’s decision adverse to the patentability of claims 1, 2, 7,
10, 12, and 17-19 is affirmed.
Requests for extensions of time in this proceeding are governed by
37 C.F.R. §§ 1.956 and 41.79(e).

AFFIRMED

bar

Patent Owner:
KIRTON MCCONKIE
60 EAST SOUTH TEMPLE
SUITE 1800
SALT LAKE CITY UT 84111

Third Party Requester:
PROSKAUER ROSE LLP
ONE INTERNATIONAL PLACE
BOSTON, MA 02110