Ex Parte Firminger et al

Patent Trial and Appeal Board

Aug 12, 2015

12590104 (P.T.A.B. Aug. 12, 2015)

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.
12/590,104 11/02/2009 Shawn P. Firminger SE1-1012-US 6675
80118 7590 08/12/2015
Constellation Law Group, PLLC
P.O. Box 580
Tracyton, WA 98393
EXAMINER
BURGESS, JOSEPH D
ART UNIT PAPER NUMBER
3626
MAIL DATE DELIVERY MODE
08/12/2015 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 SHAWN P. FIRMINGER, JASON GARMS,
RODERICK A. HYDE, EDWARD K.Y. JUNG,
CHRIS DEMETRIOS KARKANIAS, ERIC C. LEUTHARDT,
ROYCE A. LEVIEN, RICHARD T. LORD, ROBERT W. LORD,
MARK A. MALAMUD, JOHN D. RINALDO JR.,
CLARENCE T. TEGREENE, KRISTIN M. TOLLE,
and LOWELL L. WOOD JR.
____________

Appeal 2013-000754
Application 12/590,104
Technology Center 3600
____________

Before BIBHU R. MOHANTY, PHILIP J. HOFFMANN, and
BRADLEY B. BAYAT, Administrative Patent Judges.

MOHANTY, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE

The Appellants seek our review under 35 U.S.C. § 134 of the final
rejection of claims 1–4, 7, 9, 13, 17, 19, 32–37, 39, 41, 42, 45–51, 54, 55,
Appeal 2013-000754
Application 12/590,104

2

58, 59, 62, 63, and 125–1321 which are all the claims pending in the
application. We have jurisdiction under 35 U.S.C. § 6(b).
SUMMARY OF THE DECISION
We AFFIRM.

THE INVENTION
The Appellants’ claimed invention is directed to determining health
service options for an individual as well as providing a matching system and
value information for those services (Spec. 5, 6). Claim 1, reproduced
below, is representative of the subject matter on appeal.

1. A system, comprising:
[1] means for accepting an indication of at least one health-
related status of an individual;
[2] means for determining a plurality of health service options
for the individual based on the indication of at least one health-related
status;
[3] means for providing a matching system for procurement of
a desired health service option; and
[4] means for presenting value information about one or more
experiences with the desired health service option.

1 Claim 19, 54, and 55 are included in the Final rejection at pages 7, 13, and
14 as well as being included in the Appellants Appeal Brief Claim Appendix
and are considered to be pending in the Application. The exclusion of those
claims in the status of claims section in the Answer at page 2 is considered
to be a typographical error.
Appeal 2013-000754
Application 12/590,104

3

THE REJECTIONS
The following rejections are before us for review:
1. Claims 1–4, 7, 9, 13, 17, 19, 32–34, 36-37, 41–42, 45–49, 51,
54, 55, 58–59, 62–63, and 125–1322 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Kanai (US 6,807,531 B1, iss. Oct. 19, 2004) and Eaton
(US 2006/0136264 A1, pub. June 22, 2006).
2. Claims 35 and 39 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Kanai, Eaton, and Thomas (US 2004/0015337 A1, Jan.
22, 2004).
3. Claim 50 is rejected under 35 U.S.C. § 103(a) as unpatentable
over Kanai, Eaton, and Weber (US 2008/0154912 A1, pub. June 26, 2008).

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 evidence3.

ANALYSIS
The Appellants argue that the rejection of claim 1 is improper because
the cited prior art fails to disclose claim limitations [1], [2], [3], and [4] as
identified in the claim above, and that the combination would not have been
obvious (Br. 43–72).

2 The Final rejection body lists claims 19, 54, and 55 as being part of this
cited rejection (Final Rej. 7, 13, 14).. The omission from the heading of the
rejection at page 4 of the Final Rejection is considered a typographical error.
3 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 2013-000754
Application 12/590,104

4

In contrast, the Examiner has determined that the rejection is proper
(Final Rej. 3–4, 27–31; Ans. 6–7).
We agree with the Examiner. The Appellants in the Appeal Brief at
pages 18–42, as well as in the Reply Brief and Supplemental Reply Brief,
provided an extensive outline on the framework of the legal standards of
patentability which have been fully considered.
Turning to the specific individual arguments made for claim 1, the
Appellants have argued that all of claim limitations [1]-[4] are not shown by
the prior art (App. Br. 43–63). We have reviewed the rejection of record and
agree with and adopt the Examiners findings that the prior art references
Kanai and Eaton disclose the argued claim limitations.
For example, claim limitation [1] requires “means for accepting an
indication of at least one health-related status of an individual” and this is
disclosed by Kanai at Figure 2 (item 120) and column 5, lines 57–60 which
disclose inputting for example attribute information of the patient including
weight, medical history, and test results. Claim limitation [2] requires
“means for determining a plurality of health service options for the
individual based on the indication of at least one health-related status” and
this has been disclosed by Kanai at Figures 2–4 and column 5, line 60–
column 7, line 6 in which a decision tree gives medical options based on an
analysis as claimed. Claim limitation [3] requires “means for providing a
matching system for procurement of a desired health service option” and this
has been disclosed by Eaton at paragraphs 47 and 68 where such a matching
system is disclosed. Claim limitation [4] requires “means for presenting
value information about one or more experiences with the desired health
service option” and this has been disclosed by Eaton at paragraphs 31, 38, 48
Appeal 2013-000754
Application 12/590,104

5

where factors such as price and discounts are presented. Here, the argued
claim limitations have all been shown in the prior art.
The Appellants have also argued that the combination of prior art is
not proper (Br. 64–71). We disagree. Here, we agree with adopt the
rationale for the combination of references found in the Final Rejection at
page 4. Here, the modification of the medical system of Kanai to include the
ability to ability to compare medical treatment costs would have been an
obvious, predictable modification to reduce costs. For these reasons the
rejection of claim 1 is sustained.
The Appellants have also provided separate arguments for claims 7, 9,
and 42 arguing that the prior art fails to establish a prima facie case for the
rejection of those claims (Br. 73–85). In contrast, the Examiner has
determined that these rejections are proper (Final Rej. 6, 10; Ans. 14–15).
We agree with the Examiner. Claim 7 requires “means for accepting
an indication of at least one medical diagnosis” and this has been disclosed
by Kanai at col. 5:57–60 where diseases and medical history are input.
Claim 9 requires “means for accepting an indication of at least one
symptom” and this is also disclosed by Kanai at column 5, lines 57–60
where medical history, weight, and test results are input and are indicators of
symptoms.
Claim 42 requires “means for providing an auction system for
procurement of the desired health service option by the individual.” Eaton at
para. 29 discloses a bid system for medical suppliers. Eaton at paragraph 47
also discloses the individual looking for health care opportunities based on
price. Here the cited combination would have been an obvious, predictable
Appeal 2013-000754
Application 12/590,104

6

combination of familiar elements to let the user get the lowest price for the
health service though a conventional bid system.
The Appellants have provided the same arguments for the remaining
claims and the rejection of these claims is sustained for the same reasons
given above.

CONCLUSIONS OF LAW
We conclude that Appellants have not shown that the Examiner erred
in rejecting the claims as listed in the Rejection section above.

DECISION
The Examiner’s rejection of claims 1–4, 7, 9, 13, 17, 19, 32–37, 39,
41, 42, 45–51, 54, 55, 58, 59, 62, 63, and 125–132 is sustained.

AFFIRMED
mp