Ex Parte Apshago et al

Patent Trial and Appeal Board

Nov 14, 2017

13356329 (P.T.A.B. Nov. 14, 2017)

UNITED STATES PATENT AND TRADEMARK OFFICE
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.
13/356,329 01/23/2012 Bernie Apshago 20111294-US-NP/4244-01200 6805
144995 7590 11/14/2017
Conduent
c/o Conley Rose, P.C.
5601 Granite Parkway
Suite 500
Plano, TX 75024
EXAMINER
PAULS, JOHN A
ART UNIT PAPER NUMBER
3626
MAIL DATE DELIVERY MODE
11/14/2017 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 BERNIE APSHAGO,
LUCAS COCKERHAM, and THOMAS FRYAR
____________

Appeal 2016-008186
Application 13/356,329
Technology Center 3600
____________

Before HUNG H. BUI, JOYCE CRAIG, and
AARON W. MOORE, Administrative Patent Judges.

MOORE, Administrative Patent Judge.

DECISION ON APPEAL

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Application 13/356,329

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STATEMENT OF THE CASE
Appellants1 appeal under 35 U.S.C. § 134(a) from a Final Rejection of
claims 1, 3–6, 8, 10–15, and 19–23, which are all of the pending claims. We
have jurisdiction under 35 U.S.C. § 6(b).
We affirm.

THE INVENTION
The application is directed to “a provider data management and
routing system.” (Spec. ¶ 6.) Claim 1, reproduced below, exemplifies the
subject matter on appeal:
1. A provider data management and routing system comprising:
a communications interface configured to receive healthcare
provider data from a plurality of healthcare providers and to re-
ceive third party data from a plurality of third parties, wherein
the plurality of healthcare providers comprises individuals that
provide healthcare services and organizations that provide
healthcare services, wherein the plurality of third parties com-
prises vendors of healthcare products, vendors of medical prod-
ucts, and data management systems for a healthcare industry, and
wherein the third party data comprises a name, an address, an
electronic mail address, a phone number, a facsimile number, a
social security number, a federal tax identifier, an employer iden-
tifier, and information about registered patients of payers; and
a hardware processor coupled to the communications inter-
face and configured to:
convert a format of the healthcare provider data and the
third party data to generate a first transactional packet;
apply local rules and global rules to the healthcare pro-
vider data and the third party data in the first transactional

1 Appellants identify Xerox Business Services, LLC as the real party in
interest. (See App. Br. 3.)
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packet to consolidate the healthcare provider data and the
third party data for a plurality of payers according to the local
rules and the global rules associated with the plurality of pay-
ers, wherein the local rules comprise different requirements
for different payers, wherein the local rules indicate a correct
format for data in the first transactional packet, whether any
errors are present in the first transactional packet, whether any
missing information is needed for the first transactional
packet, and what actions are to be performed on the first trans-
actional packet, wherein the global rules comprise common
requirements for the different payers, wherein the global rules
are based on a common type of the different payers, wherein
a first set of the global rules is based on whether the different
payers are public payers or private payers, wherein a second
set of the global rules is based on a common size of the dif-
ferent payers, wherein a third set of the global rules is based
on whether there is a match between a provider’s zip code and
a provider’s city on record, wherein the local rules override
the global rules in consolidating the healthcare provider data
when the local rules conflict with the global rules, wherein
the local rules comprise a first local rule associated with a first
payer and a second local rule associated with a second payer,
wherein the first local rule and the second local rule require
different information to complete a same action, wherein ap-
plication of the first local rule and the second local rule trig-
gers a workflow to perform a consolidated outreach, wherein
the consolidated outreach is sent to one of the plurality of
healthcare providers and requests that the one of the plurality
of healthcare providers provide the information required by
both the first local rule and the second local rule, wherein the
workf1ow waits for a returned communication from the one
of the plurality of healthcare providers, updates a local data-
base with the returned communication once the returned com-
munication is received from the one of the plurality of
healthcare providers, and sends the returned communication
to the first payer and the second payer, wherein the workflow
with the consolidated outreach is repeated for additional mul-
tiple ones of the different payers, wherein the local rules and
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the global rules trigger workflow actions, wherein the work-
flow actions comprise an electronic mail action, a facsimile
action, a mail action, a call center action, a website action, and
a client action, wherein the electronic mail action comprises
sending an electronic mail to the one of the plurality of
healthcare providers, wherein the facsimile action comprises
sending a facsimile to the one of the plurality of healthcare
providers, wherein the mail action comprises sending mail to
the one of the plurality of healthcare providers, wherein the
call center action comprises sending a pre-recorded call to the
one of the plurality of healthcare providers, wherein the web-
site action comprises requesting information from a website
of the one of the plurality of healthcare providers, and
wherein the client action comprises sending a response ac-
knowledging receiving information from the one of the plu-
rality of healthcare providers;
convert a format of the consolidated healthcare provider
data and the consolidated third party data to generate a second
transactional packet in a second format, wherein the second
format is specified by at least one of the local rules and the
global rules, wherein the second format is based at least in
part on a communications technology used to send the second
transactional packet to the different payers, wherein the sec-
ond transactional packet is in an Ethernet format when the
communications technology used to send the second transac-
tional packet is Ethernet, and wherein the second transac-
tional packet is in an Internet Protocol (IP) format when the
communications technology used to send the second transac-
tional packet is IP;
route the second transactional packet in the second format
to the different payers; and
store the consolidated healthcare provider data and the
consolidated third party data to a common log using a unified
tracking scheme, wherein the common log is configured to
store data changes associated with the consolidated healthcare
provider data and the consolidated third party data and to pro-
vide the data changes to the different payers.
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THE REJECTION2
Claims 1, 3–6, 8, 10–15, and 19–23 stand rejected under 35 U.S.C.
§ 101 “because the claimed invention is directed to a judicial exception (i.e.
a law of nature, a natural phenomenon, or an abstract idea) without
significantly more.” (See Final Act. 2–3.)

ANALYSIS
The Examiner finds the claims directed to the abstract idea of “data
routing according to rules (i.e. using rules to identify options or using
categories to organize, store and transmit information).” (Final Act. 2,
emphasis omitted.) The Examiner further finds
[t]he claims do not include additional elements that are sufficient
to amount to significantly more than the judicial exception
because the additional elements or combination of elements in
the claims other than the abstract idea per se amount to no more
than recitation of A) generic computer structure that serves to
perform generic computer functions that serve to merely link the
abstract idea to a particular technological environment (i.e. a
hardware processor, communications network) and B) functions
that are well-understood, routine, and conventional activities
previously known to the pertinent industry (i.e. receiving,
converting, consolidating and routing data).
(Id. at 3, emphasis omitted.)

2 Rejections of claims 1, 3–6, 8, 10–15, and 19–23 under 35 U.S.C. § 112,
second paragraph, and claims 1, 3–6, 8, 10–15, 19, and 20 under 35 U.S.C.
§ 103(a) were overcome by an amendment after final. (See December 4,
2015 Advisory Action.)
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Appellants argue the Examiner’s findings and conclusion of
ineligibility are in error for four reasons, which we address in the order
presented.
First, Appellants argue the claims are not directed to an abstract idea
because they “are rooted in computer technology to overcome a problem
specifically arising in the realm of computer networks” in that
(1) local rules and global rules trigger workflow actions, wherein
the workflow actions comprise an electronic mail action, a fac-
simile action, a mail action, a call center action, a website action,
and a client action; and (2) a second format is based at least in
part on a communications technology . . . wherein the second
transactional packet is in an Ethernet format when the communi-
cations technology used to send the second transactional packet
is Ethernet, and . . . is in an Internet Protocol (IP) format when
the communications technology used to send the second transac-
tional packet is IP.
(App. Br. 16–17.)
Regarding the use of rules, the Federal Circuit in McRO, Inc. v.
Bandai Namco Games Am. Inc., 837 F.3d 1299 (Fed. Cir. 2016), held claims
directed to use of rules patent-eligible as not directed to an abstract idea.
However, the rule-based method in that case “allow[ed] computers to
produce ‘accurate and realistic lip synchronization and facial expressions in
animated characters’ that previously could only be produced by human
animators” providing “an improved technological result in conventional
industry practice.” Id. at 1313, 1316. We do not find in Appellants’ claims
an “improved technological result.” Instead, we find Appellants’ rules to
simply define how data is manipulated and transmitted and, accordingly,
insufficient to make the claims not abstract. See, e.g., Accenture Global
Services, GmbH v. Guidewire Software, Inc., 728 F.3d 1336, 1345 (Fed. Cir.
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2013) (holding ineligible claims directed to “a database of tasks, a means to
allow a client to access those tasks, and a set of rules that are applied to that
task on a given event”); Elec. Power Grp. v. Alstom S.A., 830 F.3d 1350,
1353 (Fed. Cir. 2016) (holding that “collecting information, analyzing it, and
displaying certain results of the collection and analysis” are “a familiar class
of claims ‘directed to’ a patent-ineligible concept”).
Regarding the “workflow actions,” recitations of conventional
technologies (e.g., e-mail, Ethernet) arranged or used in an ordinary way are
not sufficient to make a claim not abstract. See, e.g., Content Extraction &
Transmission LLC v. Wells Fargo Bank, Nat. Ass’n, 776 F.3d 1343, 1347
(Fed. Cir. 2014) (rejecting the patent owner’s attempt “to distinguish its
claims from those found to be abstract in Alice and other cases by showing
that its claims require not only a computer but also an additional machine—a
scanner”).
Second, Appellants argue the claims “include[] significantly more
than an abstract idea itself” because they
recite that global rules comprise common requirements for
different payers, wherein a first set of the global rules is based on
whether the different payers are public payers or private payers,
wherein a second set of the global rules is based on a common
size of the different payers, and wherein a third set of the global
rules is based on whether there is a match between a provider’s
zip code and a provider’s city on record.
(App. Br. 19–20.) We do not agree, as claim recitations regarding the
manipulation of data, including by application of rules, are insufficient to
confer patent eligibility. See, e.g., Digitech Image Techs., LLC v. Elecs. for
Imaging, Inc., 758 F.3d 1344, 1350–51 (Fed. Cir. 2014) (finding ineligible a
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claim that “recites a process of taking two data sets and combining them into
a single data set”); Accenture, 728 F.3d at 1345.
Third, Appellants contend the claims “are also directed to
significantly more than an abstract idea itself” because they “improve an
existing technological process,” namely a provider data management and
routing process.” (App. Br. 22.) We do not agree that these claims are
directed to an improvement to a “technological process”; instead, we find
they are directed to a business process that uses a conventional computer for
speed or convenience, which is insufficient, because “merely adding
computer functionality to increase the speed or efficiency . . . does not
confer patent eligibility on an otherwise abstract idea.” Intellectual Ventures
I LLC v. Capital One Bank (USA), 792 F.3d 1363, 1370 (Fed. Cir. 2015); see
also LendingTree, LLC v. Zillow, Inc., 656 F. App’x 991, 997 (Fed. Cir.
2016) (holding ineligible claims to a computerized method of speeding up a
loan-application process).
Finally, Appellants argue the claims “do not seek to pre-empt or tie-up
the alleged abstract idea” and instead “add specific additional features to the
abstract idea to prevent all uses of the abstract idea from being tied-up by the
claims.” (App. Br. 26.) This is not a persuasive argument because, although
“preemption may signal patent ineligible subject matter, the absence of
complete preemption does not demonstrate patent eligibility.” Ariosa
Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015).
“Where a patent’s claims are deemed only to disclose patent ineligible
subject matter” under the Alice/Mayo framework, “preemption concerns are
fully addressed and made moot.” Id.
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Because we find Appellants’ arguments unpersuasive, we sustain the
rejection of claims 1, 3–6, 8, 10–15, and 19–23 under 35 U.S.C. § 101.

DECISION
The rejection of claims 1, 3–6, 8, 10–15, and 19–23 is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED