Ex Parte Dean

Patent Trial and Appeal Board

Aug 11, 2014

11566286 (P.T.A.B. Aug. 11, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte DANIEL DEAN
____________

Appeal 2012-003442
Application 11/566,2861
Technology Center 3600
____________

Before BIBHU R. MOHANTY, MICHAEL W. KIM, and BRADLEY B.
BAYAT, Administrative Patent Judges.

BAYAT, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 1–26. We have jurisdiction under 35 U.S.C. § 6(b).

STATEMENT OF THE DECISION
We AFFIRM2.

1The real party in interest is WebMD Corporation (App. Br. 2).

2 Our decision will make reference to Appellant’s Appeal Brief (“App. Br.,”
filed July 5, 2011) and the Examiner’s Answer (“Ans.,” mailed October 7,
2011).
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Application 11/566,286

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THE INVENTION
The Appellant’s claimed invention relates to calculators for
determining projected balances for health savings accounts (Spec. para. 2).
Claim 1, reproduced below with the numbering in brackets added, is
representative of the subject matter on appeal.
1. A computer implemented method for estimating
performance information for a health savings account, the
method comprising:
[1] based on actuarial data for health-care costs,
estimating health-care expenses to be incurred by a person in
each of a plurality of successive future time periods spanning a
plurality of years;
[2] based on the estimated health-care expenses,
estimating a future health savings account balance value for
each of the plurality of successive future time periods; and
[3] presenting information derived from at least one of
the estimated future health-care expenses or estimated future
health savings account balance values.

THE REJECTIONS
The following rejections are before us for review3:
1. Claims 1–3, 6–8, 11–15, 17–21 and 23–26 are rejected under 35
U.S.C. § 103(a) as unpatentable over Schoenbaum et al. (US 2002/0147617
A1, pub. Oct. 10, 2002, hereinafter “Schoenbaum”) in view of Van Remortel
et al. (US 5,136,502, iss. Aug. 4, 1992, hereinafter “Van Remortel”).

3 Upon return of the application to the Examiner, the Examiner may wish to
review the claims for compliance under 35 U.S.C. §101 in light of the
recently issued preliminary examination instructions on patent eligible
subject matter. See “Preliminary Examination Instructions in view of the
Supreme Court Decision in Alice Corporation Ply. Ltd. v. CLS Bank
International, et al.,” Memorandum to the Examining Corps, June 25, 2014.
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2. Claims 4 and 9 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Schoenbaum in view of Van Remortel and further in view
of Williams et al. (US 2006/0149595 A1, pub. July 6, 2006, hereinafter
“Williams”).
3. Claims 5 and 10 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Schoenbaum in view of Van Remortel and further in view
of Williams and Hill et al. (US 2005/0060209 A1, pub. Mar. 17, 2005,
hereinafter “Hill”).
4. Claims 16 and 22 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Schoenbaum in view of Van Remortel and further in view
of Hill.

FINDINGS OF FACT
We have determined that the findings of fact in the Analysis section
below are supported at least by a preponderance of the evidence4.

ANALYSIS
Claims 1–4 and 6–9
Appellant argues claims 1–4 and 6–9 as a group (App. Br. 11). We
select claim 1 as being representative. The remaining claims stand or fall
with claim 1. 37 C.F.R. § 41.37 (c)(1)(vii). In particular, the Appellant
argues that the prior art fails to disclose a “savings account of any kind” and
that there is no motivation to combine the references “because what Van

4 See Ethicon, Inc. v. Quigg, 849 F.2d 1422, 1427 (Fed. Cir. 1988)
(explaining the general evidentiary standard for proceedings before the
Patent Office).
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Remortel calculates is not useful or relevant to what Schoenbaum addresses”
(Id. at 11–13).
In contrast, the Examiner has determined that the rejection of record is
proper (Ans. 4–6, 17–19).
We agree with the Examiner. We are not persuaded that the Examiner
erred in rejecting claim 1 under 35 U.S.C. § 103(a) by Appellant’s argument
that Schoenbaum and Van Remortel cannot be properly combined to teach
“estimating a future health savings account balance value for each of the
plurality of successive future time periods,” as recited in the claim (App. Br.
11–13).
In rejecting claim 1 under 35 U.S.C. § 103(a), the Examiner cited
Schoenbaum as disclosing claim limitation [3], and relied on Van Remortel
as teaching claim limitations [1] and [2] (Ans. 5). The Examiner concluded
that
it would have been obvious to one of ordinary skill in the art, at
the time of the invention, to have modified the system of
Schoenbaum so as to have included estimating future health
care expense and account balance, in accordance with the
teaching of Van Remortel, in order to provide an analytical and
management capabilities for controlling the funding program
(Van Remortel – column 2, lines 48-49), to have improved the
efficiency of the system, since so doing could be performed
readily and easily by any person of ordinary skill in the art, with
neither undue experimentation, nor risk of unexpected results[.]
(Id. at 6).
The arguments presented by Appellant attacks the references
individually (App. Br. 11–13). Here the Appellant fails to address the
Examiner’s actual rejection to establish an insufficiency in the combined
teachings of the references. Nonobviousness cannot be established by
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attacking the references individually when the rejection is predicated upon a
combination of prior art disclosures. See In re Merck & Co. Inc., 800 F.2d
1091, 1097 (Fed. Cir. 1986).
Schoenbaum is directed to a method for calculating and outputting
optimal flexible savings account contributions to a user based on an actuarial
analysis of health care use and costs (para. 9). Although Appellant argues
Schoenbaum does not disclose a savings account in which the balance
carries over from year to year (App. Br. 11), this feature which Appellant
relies upon is not recited in claim 1. Moreover, because claim limitation [3]
is recited in the alternative, Schoenbaum’s estimation and presentation of
annual out-of-pocket health-care costs teaches that limitation (paras. 8, 148–
149).
With regards to the combination of Schoenbaum and Van Remortel,
generally, Van Remortel “utilizes a funding system to fund present and
future health care liabilities and includes the capability of projecting,
investing, tracking and reporting on the performance of the funding system”
(1:7–10). Here, we agree with the Examiner that the cited combination is
proper and would have been obvious. Both Schoenbaum (paras. 2–7) and
Van Remortel (2:20–49) are directed to health-care financing and are
relevant analogous art. We find that Van Remortel is directed to utilizing
actuarial data to analyze, calculate, and project funding of present and future
health-care liabilities (1:6–10). Van Remortel and the claimed invention are
directed to common problems in projecting or estimating future health-care
costs to be incurred by an individual (6:44–52, 8:3–43). As such, Van
Remortel is from the same field of endeavor as the claimed invention
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because in order to perform company-wide liability analysis, individual
employee analysis and liability must be calculated (7:47–53). In fact,
calculating health-care liability for a family or group would encompass
determining health-care costs and liabilities for each member. Thus,
Schoenbaum and Van Remortel both embark on actuarial analysis of health-
care costs and expenses incurred by individuals to calculate and manage
future health-care funding. Here, the modification of the system of
Schoenbaum to include a mechanism to calculate and project future annual
medical expenses as taught by Van Remortel is considered an obvious
combination of familiar elements for the predictable result and benefit of
offering the individual projected future savings account contributions
information.
Claims 11–26
The Appellant’s arguments for claims 11 and 17 simply list the claim
limitation related to “discrete time periods” and state that the prior art does
not disclose said limitation (App. Br. 14–15). A statement that merely
points out what a claim recites will not be considered an argument for
separate patentability of the claim. 37 C.F.R. 41.37(c)(1) 2008. Regardless,
we have reviewed the rejection of record with regard to the cited claim
limitation and find it proper. We adopt the Examiner’s findings for the
rejection of claims 11 and 17 found in the Answer at pages 8, 9, and 17.
Thus, the rejections of claims 11–26 under 35 U.S.C. § 103(a) are sustained
for the reasons stated above.
Claims 5 and 10
With regards to claims 5 and 10, Appellant argues that although Hill
discusses estimating a remaining lifespan of a person, there is no motivation
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for the combination of the references (App. Br. 15–16). In addition,
Appellant argues that Williams does not teach recommended amount of
funds to contribute to the health savings account (Id. at 16–17).
In contrast, the Examiner has determined that the rejection is proper
(Ans. 11–13, 18).
We disagree with the Appellant’s contention. Instead, we agree with
the Examiner that including the estimated remaining lifespan of the person
as part of the calculation would be desirable in order to improve the efficacy
of the projected future health care costs as taught by Hill in paragraph 40.
Indeed, estimating the remaining lifespan of an individual in projecting
future health-care financing is imperative in light of advances in medicine
and the rate of mortality improvement, as per teachings of Hill (para. 3).
Although Williams does not explicitly recite “recommendations” for a
health savings account, Williams integrates a subscriber’s health care
savings account information with health plan information (Abstract). By
facilitating the management of both types of information, the subscriber of
Williams can track and efficiently manage the health savings account “to
ensure that there are sufficient funds to pay for accrued medical expenses”
(para. 8). Therefore, we determine, one of ordinary skill in the art would
have been motivated to provide recommendations for contributions to the
health savings account because a subscriber’s medical expenses related to a
medical claim may exceed the account balance and “the transaction request
may be denied because of insufficient funds” (para. 91).
In view of the foregoing, we sustain the Examiner’s rejection of
claims 1–26 under 35 U.S.C. § 103(a).

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CONCLUSIONS OF LAW
We conclude that Appellant has not shown that the Examiner erred in
rejecting the claims as listed in the Rejections section above.

DECISION
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).
AFFIRMED

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