Ex Parte Chiappe

Patent Trials and Appeals Board

May 2, 2019

13189326 - (D) (P.T.A.B. May. 2, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/189,326 07/22/2011 Andrea Chiappe
22858 7590 05/02/2019
CARSTENS & CAHOON, LLP
P.O. Box 802334
DALLAS, TX 75380-2334
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
ASYST.0135 9951
EXAMINER
REYES, REGINALD R
ART UNIT PAPER NUMBER
3626
MAIL DATE DELIVERY MODE
05/02/2019 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 ANDREA CHIAPPE
Appeal2018-000394
Application 13/189,326
Technology Center 3600
Before ST. JOHN COURTENAY III, JENNIFER S. BISK, and
STEVEN M. AMUNDSON, Administrative Patent Judges.
AMUNDSON, Administrative Patent Judge.
DECISION ON APPEAL
Appellant1 seeks our review under 35 U.S.C. § 134(a) from a final
rejection of claims 1-30, i.e., all pending claims. We have jurisdiction under
35 U.S.C. § 6(b ).
We reverse.
1 Appellant identifies the real party in interest as Systemware, Inc. Br. 3.
Appeal2018-000394
Application 13/189,326
STATEMENT OF THE CASE
The Invention
According to the Specification, the "invention relates to healthcare
payment processing systems and, more specifically, to a medical banking
system and method that optimizes healthcare remittance processing." Spec.
,r 5. 2 The Specification explains that the invention "decrease[s] the overall
administrative costs and requirements of the healthcare remittance process"
and "improve[ s] the overall accuracy of the remittance process" through
"manual verification and correction" of incorrect data resulting from
scanning "an explanation of benefits (EOB) or an explanation of payments
(EOP) [paper] document." Id. ,r,r 8-9.
Exemplary Claim
Independent claim 1 exemplifies the claims at issue and reads as
follows:
1. A method for optimizing healthcare remittance
processmg compnsmg:
accepting a scanned image of a paper explanation of
benefits (EOB) or a paper explanation of payments (EOP)
document, wherein the scanned image contains a plurality of
original data points related to the provision of healthcare
services rendered by a provider;
converting, with a computing device, the original data
points to a computer readable format, wherein the conversion
process results in computation of a statistical confidence value
related to the accuracy of the conversion of each original data
point,
2 This decision uses the following abbreviations: "Spec." for the
Specification, filed July 22, 2011; "Final Act." for the Final Office Action,
mailed December 2, 2016; "Br." for the Appeal Brief, filed May 2, 2017;
and "Ans." for the Examiner's Answer, mailed July 19, 2017.
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Application 13/189,326
determining an optimal confidence threshold value with
an exemplar document, wherein conversion of data points of the
exemplar document comprises predictable and verifiable data
points and wherein any converted data point having an
associated confidence value that is below the optimal
confidence threshold value is a low confidence data point;
applying balancing checks, with the computing device, to
check for unbalanced entries in the converted data points,
wherein the balancing checks compute balances in rows and
columns of the original data points;
providing a user interface that comprises a first view
adjacent to a second view, wherein the first view displays the
scanned image of the paper EOB or paper EOP document, and
wherein the second view displays a spreadsheet comprising one
or more recognized text field overlays of the converted data
points;
accepting, with the user interface, manual validation
instructions from the user to verify and correct low confidence
data, wherein the first view of the user interface displays the
scanned image of the paper EOB or paper EOP document, and
wherein the second view displays the converted data points;
presenting, with the user interface, the unbalanced entries
to a user, wherein the unbalanced entries are highlighted to
enable manual balancing and correction by the user;
accepting, with the user interface, manual balancing and
correcting instructions from the user to correct the unbalanced
entries; and
creating, with the computing device, a remittance file
comprising the validated computer readable data points,
wherein the remittance file is in a format suitable for the
provider's practice management system;
evaluating, with the computing device, whether the user
selected one of automatic transmission of the remittance file
and manual transmission of the remittance file.
Br. 23-24 (Claims App.).
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Application 13/189,326
The Prior Art Supporting the Rejections on Appeal
As evidence ofunpatentability under 35 U.S.C. § I03(a), the
Examiner relies on the following prior art:
Ichikawa et al. ("Ichikawa")
Sarkar et al. ("Sarkar")
Provost et al. ("Provost")
US 2001/0043740 Al
US 2004/0010758 Al
US 2007 /0033137 Al
The Re} ections on Appeal
Nov. 22, 2001
Jan. 15,2004
Feb. 8,2007
Claims 1-30 stand rejected under 35 U.S.C. § 101 as directed to
patent-ineligible subject matter. Final Act. 5-7.
Claims 1-30 stand rejected under 35 U.S.C. § I03(a) as unpatentable
over Provost, Sarkar, and Ichikawa. Final Act. 7-19.
ANALYSIS
We have reviewed the rejections in light of Appellant's arguments
that the Examiner erred. Based on the record before us and for the reasons
explained below, we disagree with the Examiner's conclusions concerning
ineligibility under§ 101 and unpatentability under§ I03(a). We provide the
following to address and emphasize specific findings and arguments.
The§ 101 Rejection of Claims 1-30
INTRODUCTION
The Patent Act defines patent-eligible subject matter broadly:
"Whoever invents or discovers any new and useful process, machine,
manufacture, or composition of matter, or any new and useful improvement
thereof, may obtain a patent therefor, subject to the conditions and
requirements of this title." 35 U.S.C. § 101. In Mayo Collaborative
Services v. Prometheus Laboratories, Inc., 566 U.S. 66, 70 (2012), and Alice
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Corp. v. CLS Bank International, 573 U.S. 208,216 (2014), the Supreme
Court explained that § 101 "contains an important implicit exception" for
laws of nature, natural phenomena, and abstract ideas. See Diamond v.
Diehr, 450 U.S. 175, 185 (1981). In Mayo and Alice, the Court set forth a
two-step analytical framework for evaluating patent-eligible subject matter:
First, "determine whether the claims at issue are directed to" a judicial
exception, such as an abstract idea. Alice, 573 U.S. at 217. If so, "consider
the elements of each claim both individually and 'as an ordered
combination' to determine whether the additional elements" add enough to
transform the "nature of the claim" into "significantly more" than the
judicial exception. Id. at 217-18, 221-22 (quoting Mayo, 566 U.S.
at 78-79).
Patent-ineligible abstract ideas include mathematical formulas, mental
processes, and certain methods of organizing human activity, such as
fundamental economic practices. See, e.g., Alice, 573 U.S. at 219-20
(fundamental economic practice of intermediated settlement); Bilski v.
Kappas, 561 U.S. 593, 612 (2010) (fundamental economic practice of
hedging or protecting against risk); Parker v. Flook, 437 U.S. 584, 585-86,
596-98 (1978) (mathematical formula for calculating updated alarm limit);
Gottschalkv. Benson, 409 U.S. 63, 65-67 (1972) (mental process of
converting binary-coded-decimal representation to binary representation).
In contrast to patent-ineligible abstract ideas, patent-eligible concepts
include physical and chemical processes, such as "molding rubber products."
See, e.g., Diehr, 450 U.S. at 191.
Step one in the Mayo/Alice framework involves looking at the "focus"
of the claims at issue and their "character as a whole." SAP Am., Inc. v.
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InvestPic, LLC, 898 F.3d 1161, 1167 (Fed. Cir. 2018). Step two involves
the search for an "inventive concept." Alice, 573 U.S. at 217-18, 221; Univ.
of Fla. Research Found., Inc. v. Gen. Elec. Co., 916 F.3d 1363, 1366 (Fed.
Cir. 2019). "[A]n inventive concept must be evident in the claims."
RecogniCorp, LLC v. Nintendo Co., 855 F.3d 1322, 1327 (Fed. Cir. 2017).
Further, an "inventive concept" requires more than "well-understood,
routine, conventional activity already engaged in" by the relevant
community. Rapid Litig. Mgmt. Ltd. v. CellzDirect, Inc., 827 F.3d 1042,
1047 (Fed. Cir. 2016) (quoting Mayo, 566 U.S. at 79-80). But a
"non-conventional and non-generic arrangement of known, conventional
pieces" may provide an "inventive concept" satisfying step two. BASCOM
Global Internet Servs., Inc. v. AT&T Mobility LLC, 827 F.3d 1341, 1350
(Fed. Cir. 2016).
In January 2019, the PTO issued revised guidance for determining
whether claims are directed to a judicial exception, i.e., an abstract idea, a
law of nature, or a natural phenomenon. See 2019 Revised Patent Subject
Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019) ("2019
Guidance"). The 2019 Guidance applies to the Board. Id. at 50-51, 57 n.42;
see 35 U.S.C. § 3(a)(2)(A) (investing the Director with responsibility "for
providing policy direction" for the PTO). Neither the Examiner nor
Appellant had the benefit of the 2019 Guidance when advocating their
respective positions concerning subject-matter eligibility.
The 2019 Guidance specifies three groupings of abstract ideas:
mathematical concepts, certain methods of organizing human activity, and
mental processes. 84 Fed. Reg. at 51-52. The Guidance identifies the
following as mathematical concepts: "mathematical relationships,
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mathematical formulas or equations, mathematical calculations." Id. at 52.
The Guidance identifies the following as methods of organizing human
activity: (1) "fundamental economic principles or practices";
(2) "commercial or legal interactions," such as "agreements in the form of
contracts," "marketing or sales activities or behaviors," and "business
relations"; and (3) "managing personal behavior or relationships or
interactions between people," such as "social activities, teaching, and
following rules or instructions." Id. The Guidance identifies the following
as mental processes: "concepts performed in the human mind," such as "an
observation, evaluation,judgment, [or] opinion." Id. (footnote omitted).
In addition, the 2019 Guidance specifies two prongs for the analysis
under Mayo/Alice step one (PTO step 2A). 84 Fed. Reg. at 54--55. The first
prong requires evaluating "whether the claim recites a judicial exception,
i.e., an abstract idea, a law of nature, or a natural phenomenon." Id. at 54.
"If the claim does not recite a judicial exception, it is not directed to a
judicial exception," and it satisfies § 101. Id. "If the claim does recite a
judicial exception, then it requires further analysis" under prong two. Id.
Prong two requires evaluating "whether the claim as a whole integrates the
recited judicial exception into a practical application of the exception." Id.
"When the exception is so integrated, then the claim is not directed to a
judicial exception," and it satisfies § 101. Id. "If the additional elements do
not integrate the exception into a practical application, then the claim is
directed to the judicial exception," and it "requires further analysis" under
Mayo/Alice step two (PTO step 2B). Id.
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MAYO/ALICE STEP ONE: PTO STEP 2A PRONG ONE
For Mayo/Alice step one, the Examiner determines that the
"accepting, converting, determining, applying, creating, evaluating and
presenting" limitations in independent claims 1, 11, and 21 are directed to
the following abstract ideas: "using categories to organize, store, and
transmit information," like the claims in Cyberfone; and "comparing new
and stored information and using rules to identify options," like the claims in
SmartGene. 3 Ans. 3; see Final Act. 6. In addition, the Examiner determines
that those limitations parallel the following abstract ideas: "collecting,
displaying, and manipulating data," like the claims in Capital One
Financial; and "collecting information, analyzing it and displaying certain
results of the collection and analysis," like the claims in Electric Power
Group. 4 Ans. 3.
Appellant argues that claims 1, 11, and 21 are not directed to an
abstract idea because they "are drawn to patent eligible machines and
processes that improve the functioning of real-time automated and
augmented character recognition systems." Br. 10. Appellant asserts that
optical character recognition produces a "digital version" of a physical
document "sent through a series of machines." Id. at 11. Appellant also
asserts that optical character recognition "is specific and inextricably tied to
computer technology because computers require character recognition in
3 See Cyberfone Sys., LLC v. CNN Interactive Grp., Inc., 558 F. App'x 988,
992 (Fed. Cir. 2014); SmartGene, Inc. v. Advanced Biological Labs., SA,
555 F. App'x 950, 955 (Fed. Cir. 2014).
4 See Intellectual Ventures I LLC v. Capital One Fin. Corp., 850 F.3d 1332,
1340 (Fed. Cir. 2017); Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d
1350, 1353 (Fed. Cir. 2016).
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order to analyze documents that have not be [sic] inputted into the computer
or the system by a human." Id. Further, Appellant urges that the abstract
ideas the Examiner identifies are "not recited in the claims." Id.
We determine that claims 1, 11, and 21 recite abstract ideas. Each
claim does so in the "converting," "determining," "applying," and
"evaluating" limitations. See Br. 23-24, 26-27, 30-31 (Claims App.).
The "converting" limitation requires "converting ... the original data
points to a computer readable format" with "the conversion process
result[ing] in computation of a statistical confidence value related to the
accuracy of the conversion of each original data point." Br. 23, 26, 30
(Claims App.). Computing "a statistical confidence value" constitutes a
mathematical calculation. The 2019 Guidance identifies a mathematical
calculation as a mathematical concept, and thus an abstract idea. 84 Fed.
Reg. at 52.
The "determining" limitation requires determining whether a
"converted data point ha[ s] an associated confidence value that is below the
optimal confidence threshold value." Br. 23, 26, 30 (Claims App.). That
determination encompasses an evaluation the human mind may perform,
e.g., comparing two numbers to discern their respective magnitudes. The
2019 Guidance identifies an evaluation the human mind may perform as a
mental process, and thus an abstract idea. 84 Fed. Reg. at 52.
The "applying" limitation requires "applying balancing checks" to
"compute balances in rows and columns of the original data points." Br. 23,
26, 30 (Claims App.). Computing "balances in rows and columns"
constitutes a mathematical calculation. The 2019 Guidance identifies a
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mathematical calculation as a mathematical concept, and thus an abstract
idea. 84 Fed. Reg. at 52.
The "evaluating" limitation requires "evaluating ... whether the user
selected one of automatic transmission of the remittance file and manual
transmission of the remittance file." Br. 24, 27, 31 (Claims App.). That
evaluation encompasses an evaluation the human mind may perform, e.g.,
recognizing a particular option a user has selected from among a limited
number of options. The 2019 Guidance identifies an evaluation the human
mind may perform as a mental process, and thus an abstract idea. 84 Fed.
Reg. at 52.
MAYO/ALICE STEP ONE: PTO STEP 2A PRONG Two
Because we determine that claims 1, 11, and 21 recite abstract ideas,
we consider whether each claim as a whole integrates the recited abstract
ideas into a practical application. See 84 Fed. Reg. at 54--55. "Only when a
claim recites a judicial exception and fails to integrate the exception into a
practical application, is the claim 'directed to' a judicial exception .... " Id.
at 51.
The Examiner finds "the invention increases the accuracy of the
medical remittance process." Final Act. 3, 4; Ans. 5---6. But the Examiner
also finds that the improvement relates "to the process and not to the
technology." Final Act. 3, 4; Ans. 6.
Appellant contends that claims 1, 11, and 21 include "additional
elements that represent improvements to conventional character recognition
systems." Br. 9-10. Appellant also contends that the claims include "an
entire body of elements setting forth specific technical steps for improving
conversion accuracy using an exemplar document." Id. at 11.
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We determine that each claim as a whole integrates the recited
abstract ideas into a practical application. Each claim does so because the
"accepting," "providing," "presenting," and "creating" limitations in each
claim use the recited abstract ideas in a meaningful way beyond generally
linking their use to a particular technological environment. See 84 Fed. Reg.
at 55. Among other things, each claim requires:
"providing a user interface" with various views;
"check[ing] for unbalanced entries";
"presenting, with the user interface, the unbalanced
entries to a user" with the unbalanced entries
"highlighted to enable manual balancing and correction
by the user"; and
"accepting, with the user interface, manual balancing and
correcting instructions from the user to correct the
unbalanced entries."
Br. 23-24, 26-27, 30-31 (Claims App.). Due to these features and others,
the invention "decrease[ s] the overall administrative costs and requirements
of the healthcare remittance process" and "improve[s] the overall accuracy
of the remittance process." See Spec. ,r,r 8-10; see also Final Act. 3, 4;
Ans. 5---6.
Claims 1, 11, and 21 are directed to a particular manner of identifying
incorrect data, presenting incorrect data, and correcting incorrect data.
Hence, we conclude that each claim is not directed to a judicial exception
and, therefore, satisfies§ 101 under Mayo/Alice step one. See Core Wireless
Licensing S.A.R.L. v. LG Elecs., Inc., 880 F.3d 1356, 1362---63 (Fed. Cir.
2018) ( deciding that claims "directed to a particular manner of summarizing
and presenting information in electronic devices" satisfied § 101 under
Mayo/Alice step one).
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SUMMARY
For the reasons discussed above, we do not sustain the§ 101 rejection
of claims 1, 11, and 21. For the same reasons, we do not sustain the § 101
rejection of dependent claims 2-10, 12-20, and 22-30.
The§ 103(a) Rejection of Claims 1-30
Appellant argues that the Examiner erred in rejecting claims 1, 11,
and 21 because "Provost, Sarkar, Ichikawa, or a combination thereof' does
not teach or suggest the "determining" limitation in each claim. See Br. 17-
21. Specifically, Appellant asserts that the Examiner maps the claimed
"optimal confidence threshold value" to Sarkar' s threshold operating point.
Id. at 18. Appellant then asserts that "Sarkar shows that the threshold
operating point does not involve and is not based on an exemplar document
with known and predictable data" as the claims require. Id. In addition,
Appellant contends that "Sarkar does not discuss how the threshold
operating point is selected or on what grounds or basis the threshold
operating point model selects the threshold operating point." Id. Appellant
also contends that in Sarkar "[t]here is no mention of quantification of the
threshold operating point, as compared to the optimal confidence threshold
value" recited in the claims. Id. at 19.
In response, the Examiner explains that "[t]he points in the instant
claims where it is based on a document with known and predictable data,
however the data being predictable and verifiable are non-functional and
descriptive of that data." Ans. 7; see Final Act. 5. The Examiner then
explains that "the threshold operating point with high confidence is
interpreted as [the] optimal confidence threshold value." Ans. 7 (citing
Sarkar ,r 37); see Final Act. 5.
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Based on the record before us, we agree with Appellant that the
Examiner has not adequately explained how the cited portions of Sarkar
teach or suggest "determining an optimal confidence threshold value with an
exemplar document" and using the exemplar-based threshold value for
comparison purposes to identify low-confidence data points. Sarkar
paragraph 37 describes a "text passage error threshold operating point
model" that "is used to select a threshold operating point that will, with high
confidence, satisfy customer-specified quality requirements while
minimizing the labor needed to process document text passages that are not
triaged." Sarkar ,r 37. But paragraph 37 does not disclose that the threshold
operating point results from analysis of an exemplar document. Id. In
addition, Sarkar describes a "predetermined threshold error rate" that differs
from the threshold operating point the Examiner cites. Id. ,r,r 11, 37, 46, 60,
66, 69. Sarkar uses the "predetermined threshold error rate" for comparison
purposes to identify low-confidence data points. See id. ,r,r 11, 45--46, 69.
The Examiner has not adequately demonstrated that Sarkar also uses the
threshold operating point for comparison purposes to identify low-
confidence data points. See Final Act. 5, 10-12; Ans. 6-8.
Hence, we do not sustain the§ 103(a) rejection of claims 1, 11,
and 21. 5 For the same reasons, we do not sustain the§ 103(a) rejection of
dependent claims 2-10, 12-20, and 22-30.
5 We note that claim 11 lacks an antecedent basis for the term "computing
device" in the claim's last limitation. In the event of continued prosecution,
the Examiner should consider the applicability of 35 U.S.C. § 112 ,r 2 to
claim 11.
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Because the preceding determinations resolve the appeal for all
pending claims, we need not address Appellant's other arguments regarding
Examiner error. See, e.g., Beloit Corp. v. Valmet Oy, 742 F.2d 1421, 1423
(Fed. Cir. 1984) (explaining that an administrative agency may render a
decision based on "a single dispositive issue").
DECISION
We reverse the Examiner's decision rejecting claims 1-30.
REVERSED
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