Ex Parte Fano

Board of Patent Appeals and Interferences

Feb 28, 2011

10639978 (B.P.A.I. Feb. 28, 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.
10/639,978 08/13/2003 Andrew E. Fano 33836.00.0045 7232
30498 7590 02/28/2011
Vedder Price PC
222 NORTH LASALLE STREET
CHICAGO, IL 60601
EXAMINER
LAM, ELIZA ANNE
ART UNIT PAPER NUMBER
3626
MAIL DATE DELIVERY MODE
02/28/2011 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 ANDREW E. FANO
____________

Appeal 2010-001537
Application 10/639,978
Technology Center 3600
____________

Before HUBERT C. LORIN, JOSEPH A. FISCHETTI, and
BIBHU R. MOHANTY, Administrative Patent Judges.

LORIN, 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 2010-001537
Application 10/639,978

STATEMENT OF THE CASE
Andrew E. Fano (Appellant) seeks our review under 35 U.S.C. § 134
(2002) of the final rejection of claims 1-3, 5-8, and 10-14. We have
jurisdiction under 35 U.S.C. § 6(b) (2002).

SUMMARY OF DECISION
We AFFIRM.2

THE INVENTION
The invention relates to combating insurance fraud.
Claim 1, reproduced below, is illustrative of the subject matter on
appeal.
1. A computer-readable storage medium having stored thereon
executable instructions utilized in a computer that, when executed,
cause the computer to perform a method of determining the legitimacy
of an insurance claim associated with an insured, the method comprised
of:
receiving a first code that identifies a first service for which
payment is requested from an insurance provider;
identifying at least one second code that represents a second
service that is statistically likely to have been confused with the first
service;
identifying at least one first insured observable aspect of the first
service;

2 Our decision will make reference to the Appellant’s Appeal Brief (“App.
Br.,” filed May 12, 2009) and Reply Brief (“Reply Br.,” filed Sep. 8, 2009),
and the Examiner’s Answer (“Answer,” mailed Jul. 6, 2009).
Appeal 2010-001537
Application 10/639,978

3
identifying at least one second insured observable aspect of the
second service;
filtering undifferentiated observables based on a differentiation of
the at least one first insured observable aspect and the at least one
second insured observable aspect to provide a differentiated first
insured observable aspect and a differentiated second insured
observable aspect; and
querying the insured about the occurrence of at least one of: the
differentiated first insured observable aspect and the differentiated
second insured observable aspect.

THE REJECTION
The Examiner relies upon the following as evidence of unpatentability:
Holloway US 5,253,164 Oct. 12, 1993
Hongxing He, Warwick Graco, and XinYao, Application of Genetic
Algorithm and k-Nearest Neighbor Method in Medical Fraud
Detection, 1585 LNCS, 74, 1999. [Yao]
Educators Mutual Insurance Association, Watch for improved
explanation of benefits, BeneFacts, Mar. 2002. [BeneFacts]
The following rejection is before us for review:
1. Claims 1-3, 5-8, and 10-14 are rejected under 35 U.S.C. §103(a) as
being unpatentable over Holloway, Yao, and BeneFacts.

ISSUES
Did the Examiner err in rejecting claims 1-3, 5-8, and 10-14 as
unpatentable under 35 U.S.C. §103(a) as being unpatentable over Holloway,
Yao, and BeneFacts?

Appeal 2010-001537
Application 10/639,978

4
FINDINGS OF FACT
We rely on the Examiner’s factual findings stated in the Answer.
Additional findings of fact may appear in the Analysis below.

ANALYSIS
The Appellant argued claims 1-3, 5-8, and 10-14 as a group (App.
Br. 11-15). We select claim 1 (supra) as the representative claim for this
group, and the remaining claims 2, 3, 5-8, and 10-14 stand or fall with claim
1. 37 C.F.R. § 41.37(c)(1)(vii) (2007).
Claim 1 is a drawn to a computer-readable storage medium having
stored thereon computer-executable instructions to perform a method
comprising (a) a receiving step; (b) a first identifying step; (c) a second
identifying step; (d) a third identifying step; (e) a filtering step; and, (f) a
querying step. The first identifying step requires “identifying at least one
second code that represents a second service that is statistically likely to have
been confused with the first service.”
The Examiner takes the position that Holloway discloses the receiving
((a)) and first identifying ((b)) steps but for that aspect of the identifying step
(b) which requires “identifying at least one second code that represents a
second service that is statistically likely to have been confused with the first
service”. Answer 4. Yao is relied upon as disclosing this limitation missing
from Holloway. The Examiner also takes the position that Holloway and Yao
do not disclose claim steps (c), (d), (e) and (f), for which BeneFacts is relied
Appeal 2010-001537
Application 10/639,978

5
upon (see first Office Action, p. 6)3. In particular, the Examiner found the
first and second insurable aspects as claimed are disclosed at paragraph 4
(“Member focus”) of BeneFacts. Paragraphs 4 and 5 read:
Perhaps less noticeable, but equally as important, are the
changes planned for the front of the form, particularly more
specific service descriptions. Educators has taken the
thousands of procedure codes with which providers bill and
divided them into roughly 300 categories, based on headings in
the American Medical and American Dental Associations’
coding books. Those category descriptions will soon print on
the EOB [explanation of benefits (EOB) statement] under the
benefits heading, where you might previously have seen a more
generic description such as “medical service.”
This will make it easier for you to compare your EOB
with the actual services you received and with you provider’s
billing.
All the claim limitations having been addressed, the Examiner
concluded that “[i]t would have been obvious to one of ordinary skill in the art
at the time of the invention to modify Holloway and Yao with BeneFacts
since the combination would reduce the occurrence of mis-itemization by
using the patients[’] first hand account.” Answer 5.
The Appellant argues that the claim limitations “identifying at least one
second insured observable aspect of the second service” and “filtering
undifferentiated observables based on a differentiation of the at least one first

3 The discussion at Answer 3-4 and Final Rejection 2-3, which lay out the
Examiner’s position, appears to be a misprint. The discussion there credits
Holloway with disclosure of the first and second insured observables. But that
is inconsistent with the Examiner’s original position and the position taken
with respect to claim 10. See Answer 7. The Appellant’s argument, which
focuses on BeneFacts, implicitly recognizes this.
Appeal 2010-001537
Application 10/639,978

6
insured observable aspect and the at least one second insured observable
aspect to provide a differentiated first insured observable aspect and a
differentiated second insured observable aspect” are not taught by the cited art
combination. App. Br. 13. In particular, the Appellant disputes that
“BeneFacts [discloses] the presently claimed “at least one first insured
observable aspect of the first service” and “at least one second insured
observable aspect of the second service.” App. Br. 13-14. According to the
Appellant, “BeneFact’s category descriptions [in the EOB] are clearly based
on first service, not the second service.” App. Br. 14 (emphasis original).
This argument does not persuade us that the Examiner erred in rejecting
claims 1-3, 5-8, and 10-14 as unpatentable under 35 U.S.C. §103(a) as being
unpatentable over Holloway, Yao, and BeneFacts. The rejection is over a
combination of references, not over BeneFacts alone. The Examiner very
clearly cited Holloway as disclosing first and second codes representing first
and second services. This has not been disputed and thus we take that as
accepted. There is also no dispute that BeneFacts discloses insured
observable aspects of a service. There appears to be no dispute that one of
ordinary skill in the art with the cited art combination in hand would have
been led to further identify an insured observable aspect corresponding to
Holloway’s first service represented by the first code. The question is
whether one of ordinary skill in the art with the cited art combination in hand
would have been led to do so for Holloway’s second service represented by
the second code. In our view, given the BeneFacts categories, i.e., multiple
insured observable aspects, one of ordinary skill in the art would have
understood that whereas one would be led to identify an insured observable
aspect corresponding to Holloway’s first service represented by the first code,
Appeal 2010-001537
Application 10/639,978

7
it can duplicated for the second. There is insufficient evidence of an
unexpected result from duplicating the identifying of an insured observable
aspect corresponding to Holloway’s first service represented by the first code
for the second service represented by the second code.
Because we find that the Examiner did not err in finding that one of
ordinary skill in the art with the cited art combination in hand would have
been led to identify an insured observable aspect corresponding to Holloway’s
first and second services represented by the first and second code, we also find
no error in the conclusion that the cited art combination would have led on of
ordinary skill in the art at the time of the invention to
a computer-readable storage medium having stored thereon computer-
executable instructions to perform a method comprising the filtering (e) and
querying (f) steps.
For the foregoing reason, we will sustain the rejection of claim 1.
Because the remaining claims 2, 3, 5-8, and 10-14 stand or fall with claim 1,
their rejection will also be sustained for the same reasons.

DECISION
The decision of the Examiner to reject claims 1-3, 5-8, and 10-14 is
affirmed.

AFFIRMED

mev
Appeal 2010-001537
Application 10/639,978

8

VEDDER PRICE PC
222 NORTH LASALLE STREET
CHICAGO IL 60601