Ex Parte Gabel et al

Board of Patent Appeals and Interferences

Feb 14, 2011

10846947 (B.P.A.I. Feb. 14, 2011)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
TJnited States Patent and Trademark Office
Add,&: COMMISSIONER FOR PATENTS
P 0 Box 1450
Alexandria, Virginia 22313-1450
www uspto go"
20350 7590 02/16/2011
KILPATRICK TOWNSEND & STOCKTON LLP
EXAMINER
CONFIRMATION NO.
TWO EMBARCADERO CENTER SOREY, ROBERT A
101846,947 05/13/2004 Judi Gabel 020375-045410 1411
ATTORNEY DOCKET NO.
EIGHTH FLOOR
SAN FRANCISCO, CA 941 11-3834
FIRST NAMED INVENTOR APPLICATION NO. FILING DATE
ART UNIT
Please find below andlor attached an Office communication concerning this application or proceeding.
PAPER NUMBER
NOTIFICATION DATE
The time period for reply, if any, is set in the attached communication.
DELIVERY MODE
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
0211 61201 1 ELECTRONIC
Docket @kilpatricktownsend.com
ipefiling @kilpatricktownsend.com
jlhice@kilpatrick.foundationip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
Ex parte JUDI GABEL,
ROBYN BARTLETT,
BEVERLY KENNEDY,
BRADLEY WINKING,
GEORGE NAUMAN, and
JUDY TUREK
Appeal 2009-014765
Application 101846,947
Technology Center 3600
Before MURRIEL E. CRAWFORD, HUBERT C. LORIN, and
JOSEPH A. FISCHETTI, Administrative Patent Judges.
LORIN, Administrative Patent Judge.
DECISION ON APPEAL'
1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. 5 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. 5 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 2009-014764
Application 101846,947
STATEMENT OF THE CASE
Judi Gabel et al. (Appellants) seek our review under 35 U.S.C. 5 134
(2010) of the final rejection of claims 3, 7, 11- 15, and 18. We have
jurisdiction under 35 U.S.C. 5 6(b) (2010). Claims 1-2,4-6, 8-10, 16, and
17 have been canceled.
SUMMARY OF DECISION
We AFFIRM.
THE INVENTION
This invention is an instrument and methods for verifying health
insurance cover eligibility and settlement. Specification [0005]- [008].
Claim 3, reproduced below, is illustrative of the subject matter on
appeal.
3. A health care eligibility and settlement
presentation instrument, comprising:
an information encoding region from which
information is readable by a point-of-sale device,
the information encoding region having encoded
therein one or more account designators that relate
to at least two accounts, a first account being an
eligibility account and a second account being a
payment account, wherein transmission of a first
account designator to a health care eligibility
verification system initiates a process that results
in the return of a health care eligibility verification
2 Our decision will make reference to the Appellants' Appeal Brief ("Br.,"
filed Apr. 6, 2009) and the Examiner's Answer ("Answer," mailed May 12,
2009).
Appeal 2009-014764
Application 101846,947
packet to a provider, and wherein transmission of a
second account designator initiates a process that
results in payment of services to the provider,
wherein the first and second account designators
are different.
THE REJECTIONS
The Examiner relies upon the following as evidence of
unpatentability :
Pritchard US 4,491,725 Jan. 1, 1985
Cooper US 6,308,890 B1 Oct. 30, 2001
Macias US 2002101 16324 A1 Aug. 22,2002
Burks US 6,453,297 B1 Sep. 17,2002
Patricelli US 7,174,302 B2 Feb. 6,2007
The Examiner took official notice "that sending a packet of
information in a manner requested is old and well known in the medical and
insurance industries." Answer 7. [Hereinafter, Official Notice I.]
The Examiner took official notice "that a computer system
programmed to send a packet of information in a manner requested, be it a
primary or secondary pre-selection of available options - which could
comprise facsimile, electronic message, Internet posting, or IVR system - is
old and well known in the medical and insurance industries." Answer 8.
[Hereinafter, Official Notice 11.1
The following rejections are before us for review:
1. Claim 3 is rejected under 35 U.S.C. §103(a) as being
unpatentable over Pritchard, Patricelli, and Cooper.
Appeal 2009-014764
Application 101846,947
2. Claim 11 is rejected under 35 U.S.C. §103(a) as being
unpatentable over Pritchard and Burks.
3. Claims 7 and 12- 15 are rejected under 35 U.S.C. 9 103(a) as
being unpatentable over Pritchard, Burks, Official Notice I and
Official Notice 11.
4. Claim 18 is rejected under 35 U.S.C. §103(a) as being
unpatentable over Pritchard, Patricelli, and Macias.
ISSUES
The first issue is whether claim 3 is unpatentable under 35 U.S.C.
§103(a) over Pritchard, Patricelli, and Cooper. Specifically, the issue is
whether the Appellants have overcome the Examiner's prima facie showing
of obviousness.
The second issue is whether claim 11 is unpatentable under 35 U.S.C.
§103(a) over Pritchard and Burks. Specifically, the issue is whether the
Appellants have overcome the Examiner's prima facie showing of
obviousness. The rejection of claims 12- 15 under 35 U.S.C. 9 103(a) as
being unpatentable over Pritchard, Burks, Official Notice I and Official
Notice I1 also turns on this issue.
The third issue is whether claims 7 and 12- 15 are unpatentable under
35 U.S.C. §103(a) over Pritchard, Burks, Official Notice I and Official
Notice 11. Specifically, the issue is whether the Appellants have overcome
the Examiner's prima facie showing of obviousness.
The fourth issue is whether claim 18 is unpatentable under 35 U.S.C.
9 103 (a) over Pritchard, Patricelli, and Macias. Specifically, the issue is
Appeal 2009-014764
Application 101846,947
whether the Appellants have overcome the Examiner's prima facie showing
of obviousness.
ANALYSIS
The rejection of claim 3 under 35 U.S.C. §103(a) as being unpatentable over
Pritchard, Patricelli, and Cooper.
The Appellants argue that Cooper's description of a universal credit
card that allows access to numerous accounts does not teach first and second
account designators that are encoded in an information encoding region and
that function as recited in claim 3. Br. 5-6.
However, the Appellants' argument does not address the prima facie
showing of obviousness established by the Examiner in rejecting 3. In the
rejection, the Examiner relied, not only upon Cooper, but upon the
combination of Pritchard, Patricelli, and Cooper to find that one of ordinary
skill in the art would have been led to the limitation at issue. Answer 4-5.
See also Answer 14-16. The test for obviousness is what the combined
teachings of the references would have suggested to one of ordinary skill in
the art. See In re Young, 927 F.2d 588,591 (Fed. Cir. 1991) and In re
Keller, 642 F.2d 413,425, (CCPA 1981). For example, the Examiner cites
Pritchard to teach an information encoding region that has two or more
account designators (Answer 4-5) and cites Patricelli to a first account that is
an eligibility account and the second account that is a payment account
(Answer 5). The Examiner then reasons that: "It would have been obvious .
. . to combine the teachings of Pritchard and Patricelli et al. with the
rationale of providing a way to store and arrange eligibility and FSA data 'so
Appeal 2009-014764
Application 101846,947
that they relate to one another by way of fields that store common data."
Answer 5-6 (quoting Patricelli col. 7,ll. 18-22).
While the Appellants assert that Cooper does not teach the limitations
at issue, the Appellants do not address the Examiner's finding with regards
to the Pritchard and Patricelli nor do they address the Examiner's articulate
reasoning with rationale underpinning for finding that that one of ordinary
skill would have been led by the teaching of the combination of all of
references to the limitations at issue.
The Examiner has established a prima facie showing of obviousness,
which the Appellants' argument does not address. Accordingly, we find that
the Appellants have not overcome the rejection of claim 3 under 35 U.S.C.
5 103(a) as being unpatentable over Pritchard, Patricelli, and Cooper.
The rejection of claim 11 under 35 U.S. C. $1 03(a) as being unpatentable
over Pritchard and Burks.
Claim 11
The Appellants argue that the cited references do not teach or suggest
a host computer system that acquires an eligibility and coverage information
packet from a payer and sends it to a provider. Br 6. Specifically, the
Appellants argue that the messages described in column 7, lines 20-34 of
Burks, cited by the Examiner, do not teach that the host provides eligibility
and coverage information from the payer to the provider. Id.
Again, the Appellants' argument does not address the prima facie
showing of obviousness established by the Examiner in rejecting 11. In the
rejection, in addition to column 7, lines 20-34, the Examiner cites the
Summary of the Invention, Figures 1-3; column 5, lines 25-52; and column
Appeal 2009-014764
Application 101846,947
7, lines 56-60 of Burks to teach that the system sends messages from the
payer to the provider. Answer 9- 1 1. See also Answer 16- 17. Further, the
Examiner cites Pritchard's column 7, lines 7-24 as teaching returning a
validation message indicating eligibility and coverage in response to a
provider's request. Answer 16. While the Appellants' assert that a single
passage of Burks does not teach the limitations at issue, the Appellants do
not address the Examiner's other findings with regards to Burks or the
Examiner's findings with regard to the Pritchard. Further, the Examiner has
provided some articulate reasoning with rationale underpinning for why a
person with ordinary skill in the art would make the proposed combination
(see Answer 1 I), and the Appellants' argument does not contest this
reasoning. The Examiner has established a prima facie showing of
obviousness, which the Appellants' argument does not address. Accordingly,
we find that the Appellants have not overcome the rejection of claim 11
under 35 U.S.C. 5 103(a) as being unpatentable over Pritchard and Burks.
The rejection of claims 7 and 12-15 under 35 U.S.C. §103(a) as being
unpatentable over Pritchard, Burks, Oficial Notice I, and Oficial Notice II.
Claim 7
First, the Appellants rely upon their argument used to traverse claim
11, to traverse the rejection of claim 7. For the same reasons as discussed
above, we find that argument unpersuasive.
Second, the Appellants argue that the cited references do not teach
that the host sends the packet in the manner requested by the provider and
that the Final Office Action dismisses this limitation as merely a matter of
design choice. Br. 7.
Appeal 2009-014764
Application 101846,947
The Appellants' argument does not address the prima facie showing
of obviousness established by the Examiner in rejecting 7. In the rejection,
the Examiner took official notice "that sending a packet of information in a
manner requested is old and well known in the medical and insurance
industries" and reasons that:
[i]t would have been obvious . . . to include such forms of
communication as taught by Official Notice with the
system as taught by Pritchard and Burks et al. with the
rationale that is would allow for remote access through
common forms of communication to packet information
and would thereby reduce costs for all users.
Answer 7. The Appellants' arguments do not appear to traverse what
Examiner regards as knowledge that would have been generally available to
one of ordinary skill in the art at the time the invention was made. Even if
one were to interpret applicants' arguments and comments as constituting a
traverse, applicants' arguments and comments do not appear to constitute an
adequate traverse because applicant has not specifically pointed out the
supposed errors in the examiner's action, which would include stating why
the noticed fact is not considered to be common knowledge or well-known
in the art. 27 CFR 1.104(d)(2), MPEP 707.07(a). An adequate traverse must
contain adequate information or argument to create on its face a reasonable
doubt regarding the circumstances justifying Examiner's notice of what is
well known to one of ordinary skill in the art. In re Boon, 439 F.2d 724, 728
(CCPA1971).
Further, the Examiner has provides some articulate reasoning with
rationale underpinning for why a person with ordinary skill in the art would
make the proposed combination (see Answer 7-8), and the Appellants'
argument does not contest this reasoning. The Examiner has established a
Appeal 2009-014764
Application 101846,947
prima facie showing of obviousness, which the Appellants' argument does
not address. Accordingly, we find that the Appellants have not overcome
the rejection of claim 7 under 35 U.S.C. 5 103(a) as being unpatentable over
Pritchard, Burks, Official Notice I, and Official Notice 11.
Claims 12-15
We also shall sustain the standing 35 U.S.C. 5 103(a) rejection of
dependent claims 12- 15 as being unpatentable over Pritchard, Burks,
Official Notice I, and Official Notice I1 since the Appellants have not
challenged such with any reasonable specificity (see Br. 6), thereby allowing
claims 12- 15 to stand or fall with parent claim 1 1 (see In re Nielson, 8 16
F.2d 1567, 1572 (Fed. Cir. 1987)).
The rejection of claim 18 under 35 U.S. C. §103(a) as being unpatentable
over Pritchard, Patricelli, and Macias.
To traverse the rejection of claim 18 the Appellants argue that:
The cited references also do not teach processing
two different transactions, one selected from each
of the recited groups in claim 18. The final Office
Action does not specifically address this type of
segmentation after comparing balances as recited
in the claim, and the Applicants are unable to
locate such a teaching in the references of record.
Hence, claim 18 is believed to be allowable, at
least for this reason.
Br. 7
The Appellants' argument does not address the prima facie showing
of obviousness established by the Examiner in rejecting 18. In the rejection,
the Examiner cites portions of Pritchard, Macias, and Patricelli to teach the
limitation at issue and articulate reasoning with rational underpinnings for
Appeal 2009-014764
Application 101846,947
combining the cited teachings. See Answer 12- 14. For example, the
Examiner cites paragraphs [0002], [0004], [OO 101, and [OO 131 of Macias as
teaching segmenting a transaction into two different credit transactions
(Answer 13) and cites Patricelli to teach debiting a flexible spending account
(Answer 13-14). The Examiner reasoned that "[ilt would have been obvious
. . . to combine the teachings of Pritchard, Patricelli, and Marcias with the
rationale of allowing convenient access to an account that allows the patients
tax savings." Answer 14.
The Examiner has established a prima facie showing of obviousness,
which the Appellants' argument does not address. The Appellants'
argument does not address the Examiner's findings with regards to the
Pritchard, Macias, or Patricelli references nor does it address the Examiner's
articulate reasoning with rationale underpinnings for finding that that one of
ordinary skill would have been led by these references to the limitations at
issue (see Answer 13-14). Accordingly, we find that the Appellants have
not overcome the rejection of claim 18 under 35 U.S.C. 5 103(a) as being
unpatentable over Pritchard, Patricelli, and Macias.
DECISION
The decision of the Examiner to reject claims 3, 7, 11-15, and 18 is
affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. 5 1.136(a). See 37 C.F.R.
5 1.136(a)(l)(iv) (2010).
Appeal 2009-014764
Application 101846,947
AFFIRMED
mev
KILPATRICK TOWNSEND & STOCKTON LLP
TWO EMBARCADERO CENTER
EIGHTH FLOOR
SAN FRANCISCO CA 941 11-3834