Ex Parte Blum

Board of Patent Appeals and Interferences

Mar 28, 2009

10273553 (B.P.A.I. Mar. 28, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte HARVEY BLUM
____________

Appeal 2009-0694
Application 10/273,553
Technology Center 3600
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Decided:1 March 30, 2009
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Before MURRIEL E. CRAWFORD, HUBERT C. LORIN, and DAVID B.
WALKER, Administrative Patent Judges.

WALKER, Administrative Patent Judge.

DECISION ON APPEAL

1The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, begins to run from the decided date
shown on this page of the decision. The time period does not run from the
Mail Date (paper delivery) or Notification Date (electronic delivery).

Appeal No. 2009-0694
Application 10/273,553

STATEMENT OF THE CASE
The Appellant seeks our review of the Examiner’s final rejection of claims
18-22 under 35 U.S.C. § 134 (2002). We have jurisdiction under 35 U.S.C. § 6(b)
(2002). The Appellant presented oral arguments on March 17, 2009. We affirm.
Appellant claims a system for reducing health insurance costs including
fraud for patients and for linking a patient to databases including their medical
history (Specification 5:12-16). Claim 18, reproduced below, is representative of
the subject matter on appeal.
Claim 18. A method for preventing healthcare
providers from billing for never-provided services, which
comprises:
providing a card including patient information,
insurance information, and a key for forming a
connection to a computer readable medical history of the
patient;
initially providing said key to a respective patient;
connecting a computer to the medical history with
the connection information;
reading the medical history on the computer;
providing the patient with healthcare treatment by
using the medical history;
billing the patient for the healthcare treatment;
authorizing an insurer to reimburse a healthcare
provider for the healthcare treatment provided by the
healthcare provider by transmitting said key to the
insurer to confirm that the patient has authorized
reimbursement from the insurer for the healthcare
treatment by temporarily giving said key from the patient
to the healthcare provider during the billing step; and

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Application 10/273,553

sending payment from the insurer to the healthcare
provider for the healthcare treatment that had been
provided and authorized by the patient.

THE REJECTIONS
The Examiner relies upon the following as evidence in support of the
rejections:
Pritchard US 4,491,725 Jan. 1, 1985
Keene US 5,325,294 Jun. 28, 1994
1. The Examiner rejected claims 18-21 under 35 U.S.C. § 102(b)
as anticipated by Pritchard.
2. The Examiner rejected claim 22 under 35 U.S.C. § 103(a) as
unpatentable over Pritchard in view of Keene.

ISSUE
Has the Appellant shown that the Examiner erred in finding that Pritchard
teaches transmitting said key to the insurer to confirm that the patient has
authorized reimbursement from the insurer for the healthcare treatment by
temporarily giving said key from the patient to the healthcare provider during the
billing step?

FINDINGS OF FACT
We find the following enumerated findings to be supported by at least a
preponderance of the evidence. Ethicon, Inc. v. Quigg, 849 F.2d 1422, 1427 (Fed.
Cir. 1988) (explaining the general evidentiary standard for proceedings before the
Office).
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Application 10/273,553

1. Pritchard is directed to a medical claim verification and processing system
that reads a medical information card (MEDICARD) to determine a patient’s
background medical and insurance information (Pritchard, Abstract).
2. Pritchard teaches that a patient is issued a MEDICARD by his insurance
carrier or insurance broker that contains security related and vital personal,
medical, and insurance information (Pritchard, col. 7, ll. 7-12). The
MEDICARD can be similar to a conventional credit card or, for greater
information storage and security, it can be what is termed a “smart card”,
which is a similar sized card having an integrated circuit chip molded therein
and accessible by an appropriate communication device (Pritchard, col. 5, l.
67 – col. 6, l. 4).
3. While the patient is at the local site, the MEDICARD is entered into a
reader, and the basic information regarding the patient’s name and insurance
information are read from the card. The patient’s insurance policy number
or type of insurance is read electronically or visually at the local entry
terminal and transmitted via a telecommunications link to a central
brokerage computer. The information is checked against master patient files
to determine if the patient has current insurance coverage and if the patient’s
MEDICARD is valid (Pritchard, col. 7, ll. 12-25).
4. Pritchard further teaches that a display is provided of the patient’s name, the
service provided by the service provider, the name of the patient’s insurance
carrier, and the claim payment that the patient’s MEDICARD-specified
insurance carrier coverage will allow for the particular service performed or
inquiry provided on behalf of the doctor or patient. This information permits
the patient and service provider to be much more informed as to the
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Application 10/273,553

economic considerations of the service or treatment in order to make an
informated decision regarding the assignment of the insurance claim
payment. The service provider also can render an immediate bill to the
patient for any service provided (Pritchard, col. 8, ll. 30-63).
5. The Specification discloses that the card includes a key, preferably a
smartcard chip, required for unlocking a connection to a medical history of
the patient (Specification, 9:7-9).

PRINCIPLES OF LAW
“A claim is anticipated only if each and every element as set forth in the
claim is found, either expressly or inherently described, in a single prior art
reference.” Verdegaal Bros. v. Union Oil Co. of California, 814 F.2d 628, 631
(Fed. Cir. 1987), cert. denied, 484 U.S. 827 (1987).
“Section 103 forbids issuance of a patent when ‘the differences between
the subject matter sought to be patented and the prior art are such that the subject
matter as a whole would have been obvious at the time the invention was made to a
person having ordinary skill in the art to which said subject matter pertains.’” KSR
Int'l Co. v. Teleflex Inc., 127 S.Ct. 1727, 1734 (2007). The question of
obviousness is resolved on the basis of underlying factual determinations including
(1) the scope and content of the prior art, (2) any differences between the claimed
subject matter and the prior art, (3) the level of ordinary skill in the art, and (4)
where in evidence, so-called secondary considerations. Graham v. John Deere
Co., 383 U.S. 1, 17-18 (1966). See also KSR, 127 S.Ct. at 1734 (“While the
sequence of these questions might be reordered in any particular case, the
[Graham] factors continue to define the inquiry that controls.”).
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In rejecting claims under 35 U.S.C. § 103(a), the examiner bears the initial
burden of establishing a prima facie case of obviousness. In re Oetiker, 977 F.2d
1443, 1445 (Fed. Cir. 1992). See also In re Piasecki, 745 F.2d 1468, 1472 (Fed.
Cir. 1984). Only if this initial burden is met does the burden of coming forward
with evidence or argument shift to the appellant. Id. at 1445. See also Piasecki,
745 F.2d at 1472. Obviousness is then determined on the basis of the evidence as a
whole and the relative persuasiveness of the arguments. See Oetiker, 977 F.2d at
1445; Piasecki, 745 F.2d at 1472.

ANALYSIS
Rejection of claims 18-21 under 35 U.S.C. § 102(b) as anticipated by Pritchard
The Appellant argues claims 18-21 as a group. We treat claim 18, the only
independent claim, as representative.
The Appellant argues that Pritchard does not teach that the MEDICARD is
required to authorize a claim (Br. 13). The Examiner responds that Pritchard
teaches that the patient is issued a MEDICARD and, while the patient is at the
local site, the card is entered into a reader and the card is verified by a central
brokerage computer (Answer 6, citing Pritchard, col. 7, ll. 12-16 and 20-25). The
Examiner found that from the beginning of the process the patient and provider use
the MEDICARD together to get information, submit the form, and get the
verification for identification and coverage (Answer 7, citing Pritchard, col. 4, ll.
43-48, Figures 2 and 3, col. 7, ll. 12-24).
We agree with the Examiner that Pritchard teaches reading the MEDICARD
at the local site and verifying the card with a central brokerage computer (Finding
of Fact 3). Pritchard further teaches that a display is provided of patient’s name,
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the service provided by the service provider, the name of the patient’s insurance
carrier, and the claim payment that the patient’s MEDICARD-specified insurance
carrier coverage will allow for the particular service performed or inquiry provided
in behalf of the doctor or patient. The service provider also can render an
immediate bill to the patient for any service provided (Finding of Fact 4). We find
that Pritchard therefore teaches transmitting said key to the insurer to confirm that
the patient has authorized reimbursement from the insurer for the healthcare
treatment by temporarily giving said key from the patient to the healthcare
provider during the billing step.
The Appellant further argues that Pritchard does not provide a system that
would prevent a criminal healthcare provider from gaining the patient’s health
insurance information (i.e. policy number) during a normal visit and subsequently
presenting fake claims to steal the reimbursement for never provided, fraudulent
services (Br. 13). The Examiner responds that “preventing the criminal healthcare
provider from logging the policy number and submitting a claim without the
medicard after the patient had left” is not recited in the claims. We agree that
the Appellant’s argument is not commensurate with the scope of the claims.
In the Reply Brief, the Appellant argues that Pritchard does not teach
temporarily giving a key or any time period for holding or returning a key (Reply
Br. 5). The Examiner found that Pritchard teaches temporarily giving said key
from the patient to the healthcare provider during the billing step (Answer 4, citing
Pritchard, col. 7, ll. 7-16 and col. 8, ll. 30-36 and 57-63). The Specification
discloses that the card includes a key, preferably a smartcard chip, required for
unlocking a connection to a medical history of the patient (Finding of Fact 5).
Pritchard teaches reading the MEDICARD at the local site and verifying the card
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Application 10/273,553

with a central brokerage computer (Finding of Fact 3). For the reasons stated
above, the Appellant’s argument is not persuasive as Pritchard teaches transmitting
said key to the insurer to confirm that the patient has authorized reimbursement
from the insurer for the healthcare treatment by temporarily giving said key from
the patient to the healthcare provider during the billing step.
The Appellant has not shown that the Examiner erred in rejecting claim 18
as anticipated by Pritchard. Claims 19-21 were not argued separately, and fall with
claim 18. See 37 C.F.R. § 41.37(c)(1)(vii). See also In re Young, 927 F.2d 588,
590 (Fed. Cir. 1991).

Rejection of claim 22 under 35 U.S.C. § 103(a) as unpatentable over Pritchard
in view of Keene
The Appellant argues exclusively that Keene does not teach or suggest the
feature discussed previously with regard to claim 18 and, accordingly, Pritchard in
light of Keene does not make obvious claim 22, which depends from claim 18. For
the reasons stated above in connection with the anticipation rejection of claim 18,
the Appellant’s arguments as to the deficiencies of Pritchard are not persuasive.
The Appellant thus has failed to show that the Examiner erred in rejecting claim 22
as unpatentable over Pritchard in view of Keene.

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CONCLUSIONS
We conclude that the Appellant has not shown that the Examiner erred in
finding that Pritchard teaches transmitting said key to the insurer to confirm that
the patient has authorized reimbursement from the insurer for the healthcare
treatment by temporarily giving said key from the patient to the healthcare
provider during the billing step.

DECISION
The decision of the Examiner to reject claims 18-21 under 35 U.S.C.
§ 102(b) as anticipated by Pritchard is affirmed. The decision of the Examiner to
reject claim 22 under 35 U.S.C. § 103(a) as unpatentable over Pritchard in view of
Keene 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). See 37 C.F.R.
§ 1.136(a)(1)(iv) (2007).

AFFIRMED
JRG

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