Ex Parte Bak

Patent Trial and Appeal Board

May 31, 2013

11647515 (P.T.A.B. May. 31, 2013)

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.
11/647,515 12/28/2006 Jeff Bak 9279-000001/US 9238
27572 7590 06/03/2013
HARNESS, DICKEY & PIERCE, P.L.C.
P.O. BOX 828
BLOOMFIELD HILLS, MI 48303
EXAMINER
BROWN, SHEREE N
ART UNIT PAPER NUMBER
2163
MAIL DATE DELIVERY MODE
06/03/2013 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 JEFF BAK1
____________________

Appeal 2010-009733
Application 11/647,515
Technology Center 2100
____________________

Before JASON V. MORGAN, ERIC B. CHEN, and LARRY J. HUME,
Administrative Patent Judges.

HUME, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134(a) of the Final
Rejection of claims 1-4 and 6-15. Appellant has previously canceled claims
5 and 16-18. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.

1 The Real Party in Interest is HealthPlan Services, Inc. (App. Br. 3.)
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STATEMENT OF THE CASE 2
The Invention
Appellant’s invention relates to a system for administering insurance.
Spec. ¶ [0001] (“FIELD”).
Exemplary Claims
Claims 1 and 10 are exemplary claims representing aspects of the
invention which are reproduced below (emphases added):
1. A computer-implemented system for administering
insurance products for customers associated with different
groups, comprising:
a hierarchical data structure residing in a memory that
stores insurance information for a plurality of insurance
customers, the data structure comprised of
a group level having a data record for each group of
insurance customers;
a billing level having a data record for each billing
location associated with a group, where each data record has
a child relationship to one of the data records in the group
level;
a customer level having a data record for each
insurance customer, where each data record has a child
relationship to one of the data records in the billing level; and
a policy level having a data record for each of the
insurance policies held by an insurance customer, where each
data record includes an identifier for the insurer whom issued
the insurance policy and has a child relationship to one of the
data records in the customer level, such that insurance

2 Our decision refers to Appellant’s Appeal Brief (“App. Br.,” filed
Dec. 30, 2009); Reply Brief (“Reply Br.,” filed May 4, 2010); Examiner’s
Answer (“Ans.,” mailed Mar. 4, 2010); Final Office Action (“FOA,” mailed
May 12, 2009); and the original Specification (“Spec.,” filed Dec. 28, 2006).
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customers within a group can have insurance policies from
different insurance insurers;
a billing module embodied as computer executable
instructions on a computer memory that traverses the data
structure and generates a bill for a given group of insurance
customers; and
a print bill module embodied as computer executable
instructions on a computer memory that receives the bill from
the billing module and send an electronic message containing
the bill to the group.

10. A computer-implemented system for administering
insurance products for customers associated with different
groups, comprising:
a pay calendar data store for storing schedules for when
bills are to be generated;
a hierarchical data structure residing in a computer
memory that stores insurance information for a plurality of
insurance customers, where the plurality of insurance customers
are organized into groups and each group is linked to a schedule
in the pay calendar; and
a billing module embodied as computer executable
instructions in a computer memory that traverse the pay
calendar data store and generate a bill for a given group of
insurance customers based on the billing schedule for the
given group.
Prior Art
The Examiner relies upon the following prior art in rejecting the
claims on appeal:
Lash US 2005/0010446 A1 Jan. 13, 2005
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Rejections on Appeal3
Claims 1-4 and 6-15 stand rejected under 35 U.S.C. § 102(e) as being
anticipated by Lash.
ISSUES AND ANALYSIS
We have reviewed the Examiner’s rejections in light of Appellant’s
arguments that the Examiner has erred. We agree with Appellant’s
conclusions with respect to claims 1-4 and 6-9. With respect to claims 10-
15, we disagree with Appellant, and adopt as our own (1) the findings and
reasons set forth by the Examiner in the action from which this appeal is
taken and (2) the reasons and rebuttals set forth by the Examiner in the
Examiner’s Answer in response to Appellant’s Arguments.
We highlight and address specific findings and arguments regarding
claims 1 and 10 for emphasis as follows.
1. Rejection of Claims 1-4 and 6-9
Issue 1
Appellant argues (App. Br. 11-13; Reply Br. 2-3) that the Examiner’s
rejection of claim 1 under 35 U.S.C. § 102(e) as being anticipated by Lash is
in error. These contentions present us with the following issue:
Did the Examiner err in finding that Lash anticipates
Appellant’s claimed computer-implemented system for
administering insurance products for customers associated with
different groups by disclosing, inter alia, “a hierarchical data

3 We note that the rejection of claims 1-4, 6, 7, 8, and 9 under 35 U.S.C.
§ 103(a) as being indefinite has been withdrawn by the Examiner. Ans. 2.
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structure residing in a memory that stores insurance information
for a plurality of insurance customers, the data structure
comprised of a group level . . . a billing level having a data
record . . . where each data record has a child relationship to
one of the data records in the group level; a customer level
having a data record . . . where each data record has a child
relationship to one of the data records in the billing level; and a
policy level having a data record . . . where each data record . . .
has a child relationship to one of the data records in the
customer level . . . ,” as recited in claim 1?
Analysis
Appellant contends that Lash does not disclose the specific hierarchy
in a data structure between a group level, a billing level, a customer level
and a policy level, as recited in claim 1. App. Br. 12. In particular,
Appellant contends (App. Br. 11-12) that a child relationship is recited as
existing in each of the hierarchical levels below the group level, i.e.,
Appellant’s contend that their claimed hierarchy may be diagrammed as
follows:
Group → Billing location → Insurance customer → Plan (or policy)
Appellant also contends (App. Br. 12) this type of data structure is not
disclosed by Lash, but instead, Lash discloses having groups of insurance
customers associated with a particular health plan, thus disclosing the
following different hierarchy:
Plan → Group → Insured
Thus, Appellant argues that the groups disclosed in Lash are different
than the hierarchy recited in the claims such that Lash fails to disclose
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Appellant’s recited hierarchical data structure as recited in claim 1,
particularly that Lash does not disclose the claimed child relationships. Id.
In response to Appellant’s contentions, the Examiner asserts that Lash
discloses the various hierarchical levels recited in claim 1, i.e., a group level,
a billing level, a customer level, and a policy level, as well as the ability to
group individuals together. Ans. 11. However, as argued by Appellant in
the Reply (Reply Br. 2), the Examiner does not provide an explanation or
other interpretation of the cited art with respect to how Lash’s disclosed
groups or levels teaches the specifically recited child relationships in each of
the billing level, customer level, and policy level (Ans. 4 and 11-12). We
agree with Appellant that the Examiner has not established anticipation of
claim 1 and claims depending therefrom.
Anticipation of a claim under 35 U.S.C. § 102 occurs when each
claimed element and the claimed arrangement or combination of those
elements is disclosed, inherently or expressly, by a single prior art reference.
Therasense, Inc. v. Becton, Dickinson & Co., 593 F.3d 1325, 1332 (Fed.
Cir. 2010).
Appellant’s original disclosure discusses the claimed hierarchical data
structure, including specifically recited child relationships. Spec. ¶¶ [0013]-
[0018] and Fig. 1. We find nothing in the art of record that discloses,
teaches, or suggests the disclosed and claimed hierarchical data structure of
claim 1. Therefore, we find that the Examiner has not established that Lash
discloses the variously recited hierarchical levels in each of the billing level,
customer level, and policy level, and particularly that the Examiner has not
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established that the cited art discloses the specific child relationships
claimed at each of the billing, customer, and policy levels.
Accordingly, since Appellant has persuaded us of at least one
reversible error in the Examiner’s characterization of the cited art and related
claim construction, we cannot sustain the Examiner’s anticipation rejection
of independent claim 1.
For essentially the same reasons argued by Appellant, supra, we
reverse the Examiner's rejection of independent claim 8, which recites the
disputed limitation in commensurate form. For the same reasons, we also
reverse the rejections of all claims that depend from claims 1 and 8.
2. Rejection of Claims 10-15
Issue 2
Appellant argues (App. Br. 13-14; Reply Br. 3) that the Examiner’s
rejection of claim 10 under 35 U.S.C. § 102(e) as being anticipated by Lash
is in error. These contentions present us with the following issue:
Did the Examiner err in finding that Lash discloses Appellant’s
claimed computer-implemented system for administering
insurance products for customers associated with different
groups including, “a pay calendar data store for storing
schedules for when bills are to be generated . . . [and] a billing
module embodied as computer executable instructions in a
computer memory that traverse the pay calendar data store and
generate a bill for a given group of insurance customers based
on the billing schedule for the given group,” as recited in
claim 10?
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Analysis
Appellant contends that “[t]he system in Lash is not concerned with
generating bills for insurance customers . . . and thus fails to teach or suggest
that different groups of insurance customers are linked to different pay
calendars as recited in this claim.” App. Br. 13-14. Appellant further
contends “[t]he Examiner’s general reference to calendars is not sufficient to
teach generating a bill in the manner recited in this claim.” App. Br. 14.
In connection with the rejection of claim 1, also applicable to the
recitation in claim 10 of a billing module, Appellant argues that Lash is only
concerned with managing health benefits for an individual and processing
invoices received from service providers, but does not generate bills which
are sent to a billing location associated with a group, as recited. App. Br. 13.
Appellant also states that the Examiner has cited portions of Lash which
show that bills are generated during a reimbursement process, but contends
that these bills are not generated by Lash’s software, so that Lash cannot
serve as an anticipatory reference to claim 10. Id.
In response to Appellant’s contentions in the Appeal Brief cited
above, the Examiner finds and sets forth in detail (Ans. 13 (citing Lash
¶¶ [0005], [0051]-[0052], [0087], [0096]-[0097], [0105]-[0106], [0108], and
[0110]; and Figs. 8, 10, and 15B-D)) that Lash anticipates the claim
limitations in dispute, particularly by disclosing billing procedures, i.e.
billing the plan directly (see Lash ¶ [0087]), and accounting for amounts
paid and billed by the provider (see Lash ¶ [0096]). We also note that Lash
discloses the provider either billing the plan directly or billing the individual
for any amount not covered by the plan. Lash ¶ [0105].
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In addition, the Examiner finds that Lash discloses a medical record
wizard for a doctor’s office visit which identifies the purpose of the visit,
provider name, description of the event, identity of any applicable plans, and
any payments made and, if there is an applicable plan, the user will then be
asked whether a claim has been or will be submitted, and who has
responsibility for payment being made after, inter alia, receipt of an invoice.
Ans. 13 (citing Lash ¶¶ [0096]-[0097]). The Examiner thereby concludes
that Lash discloses a billing module for generation of bills.
Finally, in response to the Examiner’s finding that Lash discloses a
pay calendar (Ans. 14 (citing “interactive calendar” in Lash ¶¶ [0124]-
[0126]; and Fig. 17)), Appellant contends that “[p]roviding a calendar
function for an individual user as taught by Lash cannot be construed as
linking a pay schedule to a group of insurance customers and generating a
bill based on the schedule as asserted by the Examiner.” Reply Br. 3. In the
above finding, the Examiner states that Lash discloses a calendar or
reminder list that may also be used to remind the user to refill prescriptions,
to remind the user of medical appointments, to submit claims, etc. Ans. 14
(citing Lash ¶ [0125]).
We note that our reviewing court has held that the Examiner need not
give patentable weight to descriptive material absent a new and unobvious
functional relationship between the descriptive material and the substrate.
See In re Ngai, 367 F.3d 1336, 1338 (Fed. Cir. 2004). Further, we find that
this particular limitation of claim 10 argued by Appellant is immaterial to
the issue of patentability. Namely, the claim language “a pay calendar data
store for storing schedules for when bills are to be generated” limits only the
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invention’s informational content or intended use, and is merely non-
functional descriptive material. See, e.g., In re Lowry, 32 F.3d 1579, 1583
(Fed. Cir. 1994) (stating informational content of non-functional descriptive
material is not entitled to patentable weight); see also Ex parte Mathias, 84
USPQ2d 1276, 1279 (BPAI 2005) (informative) (“[N]onfunctional
descriptive material cannot lend patentability to an invention that would
have otherwise been anticipated by the prior art.”), aff’d, 191 Fed. Appx.
959 (Fed. Cir. 2006) (Rule 36); Ex parte Curry, 84 USPQ2d 1272, 1274
(BPAI 2005) (informative) (“Nonfunctional descriptive material cannot
render nonobvious an invention that would have otherwise been obvious.”),
aff’d, No. 06-1003 (Fed. Cir. 2006) (Rule 36).
We find that generating calendar reminders for refilling a prescription
is merely generating information, and the intended use, e.g., generating a
billing reminder as in claim 10, or generating a prescription reminder as in
Lash, does not change the process of generating the reminder, and thus does
not distinguish the claimed invention from Lash.
During examination, a claim must be given its broadest reasonable
interpretation consistent with the Specification, as one of ordinary skill in
the art would interpret it. Because applicant has the opportunity to amend
claims during prosecution, giving a claim its broadest reasonable
interpretation will reduce the possibility that the claim, once issued, will be
interpreted more broadly than is justified. In re Yamamoto, 740 F.2d 1569,
1571 (Fed. Cir. 1984); In re Zletz, 893 F.2d 319, 321 (Fed. Cir. 1989)
(“During patent examination the pending claims must be interpreted as
broadly as their terms reasonably allow.”).
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Under the broadest reasonable interpretation standard, and based upon
the Examiner’s findings and our analysis, supra, we thereby find that Lash
discloses “a billing module embodied as computer executable instructions in
a computer memory that traverse the pay calendar data store and generate a
bill for a given group of insurance customers based on the billing schedule
for the given group.”
Accordingly, Appellant has not persuaded us of any reversible error in
the Examiner’s characterization of the cited art and related claim
construction. Therefore, we sustain the Examiner’s anticipation rejection of
independent claim 10. As Appellant has not provided separate arguments
with respect to dependent claims 11-15 , we similarly sustain the Examiner’s
rejection of these claims under 35 U.S.C. § 102(e).
CONCLUSIONS
(1) The Examiner erred with respect to the rejection of claims 1-4
and 6-9 under 35 U.S.C. § 102(e) as being anticipated by Lash, and the
rejection is not sustained.
(2) The Examiner did not err with respect to the rejection of claims
10-15 under 35 U.S.C. § 102(e) as being anticipated by Lash, and the
rejection is sustained.
DECISION
The decision of the Examiner to reject claims 1-4 and 6-9 is reversed.
The decision of the Examiner to reject claims 10-15 is affirmed.
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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-IN-PART

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