10294316 (B.P.A.I. Mar. 14, 2011)

Ex Parte Bush

Board of Patent Appeals and InterferencesMar 14, 2011

10294316 (B.P.A.I. Mar. 14, 2011)

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. 10/294,316 11/14/2002 Lawrence P. Bush 12016-213 1662 7590 03/14/2011 Woodard, Emhardt, Naughton, Moriarty and McNett LLP Bank One Center/Tower 111 Monument Circle, Suite 3700 Indianapolis, IN 46204-5137 EXAMINER ALTSCHUL, AMBER L ART UNIT PAPER NUMBER 3686 MAIL DATE DELIVERY MODE 03/14/2011 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 BOARD OF PATENT APPEALS AND INTERFERENCES ____________ Ex parte LAWRENCE P. BUSH ____________ Appeal 2009-008888 Application 10/294,316 Technology Center 3600 ____________ Before MURRIEL E. CRAWFORD, ANTON W. FETTING, and BIBHU R. MOHANTY, Administrative Patent Judges. MOHANTY, Administrative Patent Judge. DECISION ON APPEAL1 1 The two-month time period for filing an appeal or commencing a civil action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing, as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE” (paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery mode) shown on the PTOL-90A cover letter attached to this decision. Appeal 2009-008888 Application 10/294,316 2 STATEMENT OF THE CASE The Appellant seeks our review under 35 U.S.C. § 134 (2002) of the final rejection of claims 46-69. Claims 1-45 and 70-129 have been withdrawn. We have jurisdiction under 35 U.S.C. § 6(b) (2002). SUMMARY OF THE DECISION We REVERSE. THE INVENTION The Appellant’s claimed invention is directed to an insurance claim disbursement system (Spec. 5:2-4). Claim 46, reproduced below, is representative of the subject matter of appeal. 46. A method for administering insurance claims and monitoring claim-related data in a database, comprising the steps of: (a) receiving a claim; (b) determining a dollar value of the claim; (c) issuing a bill-on-redemption card account funded with a point value corresponding to at least a portion of said dollar value of the claim; (d) paying at least some portion of the dollar value of the claim when the card account is used by a card recipient; (e) collecting purchase information from the card account; and (f) entering the purchase information into the database. Appeal 2009-008888 Application 10/294,316 3 THE REJECTIONS The Examiner relies upon the following as evidence in support of the rejections: Tarter US 5,550,734 Aug. 27, 1996 The following rejections are before us for review: 1. Claims 46-69 are rejected under 35 U.S.C. § 101 as directed to non-statutory subject matter. 2. Claims 46-69 are rejected under 35 U.S.C. § 103(a) as unpatentable over Tarter and Applicants Admitted Prior Art. THE ISSUES With regards to the rejection under 35 U.S.C. § 101 the issue turns on whether claim 46 is directed to an abstract idea. With regards to the rejection under 35 U.S.C. § 103(a) the issue turns on whether Tartar discloses the argued claim limitations from claim element “c”. FINDINGS OF FACT We find the following enumerated findings of fact (FF) are supported at least by a preponderance of the evidence:2 FF1. Tartar has disclosed a computerized healthcare accounts receivable purchasing collection securitization and management system (Title). FF2. Tartar at Col. 5:14-39 discloses that companies provide software packages for automatic inputting and formatting of electronic claims. 2 See Ethicon, Inc. v. Quigg, 849 F.2d 1422, 1427 (Fed. Cir. 1988) (explaining the general evidentiary standard for proceedings before the Patent Office). Appeal 2009-008888 Application 10/294,316 4 NCPDP provides standard formats for many electronically transmitted message formats including (1) transaction format for a prescription, (2) response format for eligibility verification or a prescription claim, and (3) a claim reversal format. Other formats include a medicaid claim format and a claim payable response format. FF3. Tartar at Col. 10:11-26 discloses that the system provides service providers and pharmacies access to an on-line adjudication network to obtain in some instances payment for insurance claims. The system uses Automated Clearing House (ACH) system utilized by banks to credit their merchants for credit card sales. FF4. Tartar at Col. 5:14-39 and 10:11-26 does not disclose “issuing a bill- on-redemption card account funded with a point value corresponding to at least a portion of the dollar value of a claim”. ANALYSIS Rejections under 35 U.S.C. § 101 The Examiner has determined that claims 46-69 are directed to non- statutory subject matter under 35 U.S.C. § 101 (Br. 2-4). The Appellant has traversed the rejection and also provided a proposed amendment to the claim (Reply Br. 18). At this stage in prosecution the proposed amendment cannot be entered (See 37 C.F.R. § 41.33). Regardless of the denial of entry of the proposed amendment, the Appellant has traversed the rejection under 35 U.S.C. § 101 (Reply Br. 18) and we determine that claim 46 is not directed only to an abstract idea. Claim 46 is directed to a method or process. In claim 46, step (c) requires Appeal 2009-008888 Application 10/294,316 5 the step of “issuing a bill-on-redemption card account” and this step in the claimed process is not an abstract idea or mere mental step. Considering method step (c) in the context of claim 46 also does not render the step to be insignificant post solution activity. For these reasons the rejection made under 35 U.S.C. § 101 is not sustained. Rejections under 35 U.S.C. § 103(a) The Appellant argues that the rejection of claim 46 is improper because the prior art fails to disclose claim limitation (c) (Br. 9-12, Reply Br. 22). In contrast the Examiner has determined that Tartar discloses claim limitation (c) at Col. 5:14-39 and Col. 10:11-26 (Ans. 5, 11-12). We agree with the Appellant. Claim limitation (c) requires: “issuing a bill-on-redemption card account funded with a point value corresponding to at least a portion of said dollar value of the claim”. Tartar at Col. 5-:14-39 and Col. 10:11-26 does not disclose the cited claim limitation (FF4). Tartar at the Col. 5:14-39 and Col. 10:26 has disclosed providing standard formats for the electronically transmitted messages (FF2) and also that the system uses the Automated Clearing House (ACH) system utilized by banks to credit their merchants for credit card sales (FF3). Tartar’s disclosure of the ACH system used by banks to credit merchants for credit card sales (FF3) does not however specifically disclose the cited claim limitation (c) drawn to “issuing a bill-on-redemption card account funded with a point value corresponding to at least a portion of said dollar value of the claim” (FF4). For these above reasons the rejection of claim 46 and its dependent claims is not sustained. Appeal 2009-008888 Application 10/294,316 6 DECISION The Examiner’s rejection of claims 46-69 is reversed. REVERSED MP Woodard, Emhardt, Naughton, Moriarty and McNett LLP Bank One Center/Tower 111 Monument Circle, Suite 3700 Indianapolis IN 46204-5137