Ex Parte Friedlander et al

Patent Trial and Appeal Board

Sep 26, 2016

12951139 (P.T.A.B. Sep. 26, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
12/951,139 11/22/2010 ROBERT R. FRIEDLANDER
79230 7590 09/28/2016
Law Office of Jim Boice
3839 Bee Cave Road
Suite 201
West Lake Hills, TX 78746
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.
END920100192US1 9189
EXAMINER
PAULSON, SHEETAL R.
ART UNIT PAPER NUMBER
3686
NOTIFICATION DATE DELIVERY MODE
09/28/2016 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address( es):
J ennifer@BoiceIP.com
Emily@BoiceIP.com
Jim@BoiceIP.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ROBERT R. FRIEDLANDER, JAMES R. KRAEMER, and
EDWARD J. MACKO
Appeal2014-005888 1
Application 12/951,1392
Technology Center 3600
Before JOSEPH A. FISCHETTI, JAMES A. WORTH, and
MATTHEWS. MEYERS, Administrative Patent Judges.
WORTH, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's
Final rejection of claims 1-20. We have jurisdiction under 35 U.S.C. §§ 134
and 6(b).
We AFFIRM-IN-PART.
1 Our decision refers to the Appellants' Appeal Brief ("Appeal Br.," filed
Dec. 2, 2013) and Reply Brief ("Reply Br.," filed Apr. 2, 2014), and the
Examiner's Final Office Action ("Final Act.," mailed Aug. 14, 2013) and
Answer ("Ans.," mailed Feb. 4, 2014).
2 According to Appellants, the real party in interest is International Business
Machines Corporation (Appeal Br. 2).
Appeal2014-005888
Application 12/951, 139
Introduction
Appellants' disclosure relates to "the use of computers in facilitating
the fulfillment of contract terms between parties" in the healthcare
environment (Spec. i-f 1 ).
Claims 1, 11, and 16 are the independent claims on appeal. Claim 1,
reproduced below, is illustrative of the subject matter on appeal:
1. A method of facilitating fulfillment of a term of a
contract between a healthcare provider and a healthcare
authorizer, the method comprising:
a computer receiving a request from the healthcare
provider for the healthcare authorizer to fulfill a term of a
contract between the healthcare provider and the healthcare
authorizer, wherein the healthcare provider provides medical
treatment to patients, wherein the healthcare authorizer
authorizes the medical treatment, and wherein the term of the
contract requires the healthcare authorizer to authorize the
healthcare provider to provide the medical treatment to a
patient;
the computer receiving, from the healthcare
provider, first confidential data related to the request;
the computer receiving, from the healthcare
authorizer, second confidential data related to the request; and
the computer generating a solution that fulfills the
request, wherein the solution is based on the contract, a
healthcare provider profile, a healthcare authorizer profile, the
first confidential data, and the second confidential data, wherein
the healthcare provider profile describes a first set of business
priorities for the healthcare provider, and wherein the
healthcare authorizer profile describes a second set of business
priorities for the healthcare authorizer.
(Appeal Br., Claims App.)
2
Appeal2014-005888
Application 12/951, 139
Rejection on Appeal
The Examiner maintains, and Appellants appeal, the following
rejection:
Claims 1-20 stand rejected under 35 U.S.C. § 102(b) as being
anticipated by Williams (US 2006/0265255 Al, pub. Nov. 23, 2006).
ANALYSIS
Claims 1--4 and 8-18
Appellants argue claims 1--4 and 8-18 together. We select
independent claim 1 as representative, such that claims 2--4 and 8-18 stand
or fall therewith. See 37 C.F.R. 41.37(c)(l)(iv).
We are unpersuaded by Appellants' argument that Williams fails to
disclose a "healthcare authorizer," as recited in independent claim 1, i.e.,
a computer receiving a request from the healthcare provider for
the healthcare authorizer to fulfill a term of a contract between
the healthcare provider and the healthcare authorizer; wherein
the healthcare provider provides medical treatment to patients,
wherein the healthcare authorizer authorizes the medical
treatment, and wherein the term of the contract requires the
healthcare authorizer to authorize the healthcare provider to
provide the medical treatment to a patient
(Appeal Br. 9-10; Reply Br. 2). In particular, Appellants assert that
Williams (e.g., paragraph 57) describes an interaction with an ombudsman
or auditor regarding payment of a bill, as opposed to authorization to provide
medical treatment. The Examiner relies on paragraphs 6, 46, 4 7, 51, 62, 64,
and 84--87 of Williams (Final Act. 2; Ans. 7-8). These portions of Williams
describe an inquiry by a health-system member to an insurer regarding
payment as recited in independent claim 1.
3
Appeal2014-005888
Application 12/951, 139
Particularly, paragraph 4 7 discloses, " ... the health care provider may
be within the insurer's network but the specific service may not have been
pre-approved. These factors may be material to whether the expense may be
reimbursed or the amount e.g., percentage, of the cost that will be
reimbursed."
Thus, according to Williams, services may not be reimbursed if not
pre-approved. We thus find that it is inherent that a third party payor, such
as the insurance company disclosed by Williams who must first authorize
reimbursement for a medical treatment before it is rendered, is inherently the
authorizer of that treatment.
We are unpersuaded by Appellants' argument that Williams fails to
disclose a "healthcare authorizer profile" and a "healthcare provider profile,"
as recited in independent claim 1, i.e.,
... a healthcare provider profile, a healthcare authorizer profile,
. . . wherein the healthcare provider profile describes a first set
of business priorities for the healthcare provider; and wherein
the healthcare authorizer profile describes a second set of
business priorities for the healthcare authorizer
(Appeal Br. 8; Reply Br. 2). Appellants assert that Williams does not teach
incorporating the priorities of the healthcare provider and healthcare
authorizer (id.). The Examiner relies on paragraphs 62 and 67-69 of
Williams. Paragraph 62 describes how the system may assemble an
extensive database of policy terms and coverage determinations, and
paragraph 69 provides information as to whether a service provider is "In-
network/Out-network, etc." We find that the system's descriptions of the
insurer policy and the healthcare provider status meets the "healthcare
authorizer profile" and "healthcare provider profile" limitations. We,
4
Appeal2014-005888
Application 12/951, 139
therefore, sustain the Examiner's rejection under 35 U.S.C. § 102(b) of
claims 1--4 and 8-18.
Dependent claim 5
We are unpersuaded by Appellants' argument that Williams fails to
disclose "dynamically adjusting the healthcare authorizer profile according
to a current financial state of the healthcare authorizer," as recited in
dependent claim 5 (Appeal Br. 9). Appellants argue that paragraphs 80-81
and 102 of Williams disclose that a patient may update policy information
and obtain a coverage summary, but there is not a suggestion of taking into
account the financial state of the healthcare authorizer when adjusting the
healthcare authorizer's profile (id.). However, paragraph 62 of Williams
(relied on by the Examiner with respect to independent claim 1, from which
claim 5 depends) discloses that "[c]overage terms may continue to evolve
and be amended." Further, paragraph 55 of Williams, as background,
discloses an embodiment in which "the member's costs may vary with
usage." We find that this disclosure meets the argued limitation of a policy
change in response to a change in the financial state of the healthcare
authorizer. We, therefore, sustain the Examiner's rejection of dependent
claim 5.
Dependent claim 6
Appellants argue that Williams fails to disclose a change in the
healthcare provider profile in response to a change in the financial state of
the health care provider, as recited in dependent claim 6, i.e., "in response to
a change to a current financial state of the healthcare provider, the computer
dynamically adjusting the healthcare provider profile to create a new
healthcare provider profile." However, paragraph 46 of Williams, also
5
Appeal2014-005888
Application 12/951, 139
discussed with respect to independent claim 1, discloses that managed care
providers maintain a list of pre-qualified or pre-approved healthcare
providers, and paragraph 45 of Williams describes how the role of such
managed care companies has changed with greater sharing of costs as the
costs of medical treatments have increased. We determine that it is inherent
in this disclosure that the profile of health care providers has changed with
the changes in the cost of health insurance (see id.). We, therefore, sustain
the Examiner's rejection of dependent claim 6.
Dependent claim 7
Appellants argue that Williams fails to disclose a change in healthcare
authorizer profile in response to a change in the number of healthcare
providers, as recited in dependent claim 7, i.e., "in response to a change in a
number of healthcare providers that are parties to the contract, the computer
dynamically adjusting the healthcare authorizer profile to create a new
healthcare authorizer profile." We are unpersuaded by this argument for
similar reasons as for independent claim 1 and dependent claims 5 and 6. In
particular, we find that it is inherent that the insurer's list of in-network and
out-network providers will change when the number of such providers
change. We, therefore, sustain the Examiner's rejection of dependent claim
7.
Dependent claim 19
We are unpersuaded by Appellants' argument that Williams fails to
disclose transmitting a request for authorization of treatment based on a
keyword in a patient's medical history, as recited in dependent claim 19, i.e.,
the computer associating a key word in the entry with a
medical history of a particular patient;
6
Appeal2014-005888
Application 12/951, 139
the computer determining a course of treatment for the
particular patient based on the key word and the medical history
of the particular patient; and
the computer automatically transmitting a request to the
healthcare authorizer for authorization for the course of
treatment for the particular patient.
(Appeal Br. 12-13). Appellants argue that Williams only discloses
modifying a prescription record and adding a new prescription (Appeal Br.
13). The Examiner relies on paragraphs 64 and 105-106 (Final Act. 6).
Paragraph 64 describes the "live chat" feature of the customer service. We
agree with the Examiner and find that it is inherent in the "live chat" feature
that a patient can discuss authorization for payment based upon a description
of the ailment containing a "keyword" as part of the description. We,
therefore, sustain the Examiner's rejection of dependent claim 19.
Dependent claim 20
We are persuaded by Appellants' argument that Williams fails to
disclose business priorities of the healthcare authorizer, such as maintenance
of cash levels required by a statute, as recited in dependent claim 20, i.e.,
"the second set of business priorities for the healthcare authorizer includes
maintenance of cash levels required by a statute" (Appeal Br. 14--15).
Appellants assert that paragraphs 62 and 67----fJ9 of Williams generally
disclose business practices, payment of obligations, the use of Health
Savings Accounts, and policy deductibles (Appeal Br. 15). The Examiner
relies on paragraphs 62 and 67-69 of Williams. We agree with Appellants
that the portions of Williams relied on by the Examiner describe insurance
practices but do not disclose maintenance of a cash level required by a
statute, as recited in dependent claim 20. On the basis of the current record,
there is insufficient information as to the statutory requirements in place at
7
Appeal2014-005888
Application 12/951, 139
the time of the Williams record. Accordingly, we do not sustain the
Examiner's rejection under§ 102 of dependent claim 20. 3
DECISION
The Examiner's decision to reject claims 1-19 is affirmed.
The Examiner's decision to reject claim 20 is reversed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED-IN-PART
3 In the event of further prosecution, including prosecution for allowance,
the Examiner may wish to consider compliance with the requirements of 35
U.S.C. § 103.
8