Ex Parte Henley

Board of Patent Appeals and Interferences

May 29, 2009

09725142 (B.P.A.I. May. 29, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte JULIAN L. HENLEY
____________

Appeal 2008-3199
Application 09/725,142
Technology Center 3600
____________

Decided:1 May 29, 2009
____________

Before MURRIEL E. CRAWFORD, JOSEPH A. FISCHETTI, and BIBHU
R. MOHANTY, Administrative Patent Judges.

MOHANTY, Administrative Patent Judge.
FISCHETTI, dissenting-in-part

DECISION ON APPEAL
STATEMENT OF THE CASE

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, begins to run from the decided date
shown on this page of the decision. The time period does not run from the
Mail Date (paper delivery) or Notification Date (electronic delivery).

Appeal 2008-3199
Application 09/725,142

The Appellant seeks our review under 35 U.S.C. § 134 of the final
rejection of claims 1-17, 21, 30-35, and 50-60 which are all the pending
claims in the application. We have jurisdiction under 35 U.S.C. § 6(b)
(2002). Oral arguments were presented on May 21, 2009.

SUMMARY OF THE DECISION
We AFFIRM-IN-PART.

THE INVENTION
The Appellant’s claimed invention is directed to an online auctioning
process for negotiating a price for the performance of personal professional
services such as, for example, services performed by a physician on a patient
(e.g., as opposed to remotely rendered impersonal services such as the
reading of a medical image). (Spec. 4:1-6). Claim 1, reproduced below, is
representative of the subject matter of appeal.
1. An online computerized method for arranging scheduled
delivery of personal medical services from a provider having verified
qualifications, said method comprising:
registering a medical service provider and automatically
authenticating qualifications of said medical service provider to
perform a proffered medical service upon obtaining registration
information from said provider;
posting online at least one proffered personal medical service in
association with a provider of such service after having verified the
service provider's qualifications for providing such service; and
receiving online bids for such service as proffered by
prospective users of such service.
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THE REJECTIONS
The Examiner relies upon the following as evidence in support of the
rejections:
DiRienzo US 6,006,191 Dec. 21, 1999
Newman US 6,035,276 Mar. 7, 2000
Kenna US 6,108,641 Aug. 22, 2000
Feinberg US 6,366,891 B1 Apr. 2, 2002
Rackson US 6,415,270 B1 Jul. 2, 2002
Ilsen US 6,757,898 B1 Jun. 29, 2004
The following rejections are before us for review:
1. Claims 1-9, 12-17, 21, and 30-35 are rejected under 35 U.S.C.
§ 103(a) as unpatentable over DiRienzo and Newman.
2. Claims 10-11 and 50-57 are rejected under 35 U.S.C. § 103(a)
as unpatentable over DiRienzo, Newman, and Feinberg.
3. Claims 58-60 are rejected under 35 U.S.C. § 103(a) as
unpatentable over DiRienzo, Newman, and Rackson.

THE ISSUE
At issue is whether the Appellant has shown that the Examiner erred
in making the aforementioned rejections.
With regards to claims 1-17 and 30-35 this issue turns on whether the
prior art discloses automatically authenticating qualifications of a service
provider.
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With regards to claim 21 this issue turns on whether the prior art
discloses forwarding a received online bid to an associated medical service
provider together with the information describing the health and/or financial
condition of the prospective patient associated with said forwarded bid.
With regards to claims 50-55 this issue turns on whether feedback
information is provided which is obtained from a service provider regarding
a patient’s compliance with medical procedures or the resultant outcome of
providing the proffered medical service to the patient.
With regards to claims 56-57 this issue turns on whether feedback
information is shown to be provided in the Feinberg reference.
With regards to claims 58-60 this issue turns on whether Rackson
discloses or suggests computing an adjusted bid price based on a relative
multiplier to a CPT code Relative Value Scale.

FINDINGS OF FACT
We find the following enumerated findings of fact (FF) are supported
at least by a preponderance of the evidence2:
FF1. DiRienzo discloses a method of remote access for a medical image
exchange system (Title). The system allows for a diagnostic reading of
electronic medical images by physicians where a bid price is used.
(Abstract).

2 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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FF2. DiRienzo discloses that each radiologist provides a biography with
information such as medical schools attended, publications, affiliations, and
residency (Col. 17:12-15).
FF3. DiRienzo does not disclose that all the physicians in the system are
Board Certified in their fields since they are only “preferably” Board
Certified (Col. 24:2-6) and since all physicians in the system are not
eliminated (Col. 30:39-43).
FF4. DiRienzo discloses that each radiologist provides their own
biographical information (FF2) but does not disclose automatically
authenticating the qualifications of the radiologist.
FF5. DiRienzo does not disclose forwarding a received online bid to a
medical service provider with information describing the health or financial
condition of the prospective patient.
FF6. Newman discloses a system for generating provider application forms
required to be submitted to health care provider organizations by physicians.
Physician credentialing profiles are stored in a system database (Abstract).
FF7. Newman discloses that the invention is directed to a system for
generating credentialing applications tailored to provider organizations (Col.
2:21-24). The system creates a “universal application form” (Col. 2:46-50)
for the physicians.
FF8. Newman discloses that the physicians complete the application form
(Col. 3:46-49).
FF9. Newman discloses that the physicians complete the application form
(FF8) but does not disclose automatically authenticating the qualifications of
the physician.
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FF10. Feinberg discloses an online auction system (Title) in which a field
82 stores information including comments from previous buyers who
purchased items from the seller (Col. 4:47-51).
FF11. Feinberg does not disclose specific feedback information obtained
from a service provider regarding a patient’s compliance with medical
procedures or the resultant outcome of providing a proffered medical service
to the patient.
FF12. Rackson discloses a multiple coordination auction system (Title) in
which the bid price may be adjusted (Col. 16:3-24).
FF13. Rackson does not disclose computing an adjusted bid price based on
a relative value multiplier based upon a CPT code.

PRINCIPLES OF LAW
“Section 103 forbids issuance of a patent when ‘the differences
between the subject matter sought to be patented and the prior art are such
that the subject matter as a whole would have been obvious at the time the
invention was made to a person having ordinary skill in the art to which said
subject matter pertains.’” KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 406
(2007). The question of obviousness is resolved on the basis of underlying
factual determinations including (1) the scope and content of the prior art,
(2) any differences between the claimed subject matter and the prior art, (3)
the level of skill in the art, and (4) where in evidence, so-called secondary
considerations. Graham v. John Deere Co., 383 U.S. 1, 17-18 (1966). See
also KSR, 550 U.S. at 407 (“While the sequence of these questions might be
reordered in any particular case, the [Graham] factors continue to define the
inquiry that controls.”) In KSR, the Supreme Court emphasized “the need
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for caution in granting a patent based on the combination of elements found
in the prior art,” Id. at 415-16.

ANALYSIS
Claims 1-17 and 30-35
The Appellant argues that the rejection of claims 1, 30, and 35 is
improper because DiRienzo and Newman fail to teach or suggest the
automatic verification of a service provider’s purported qualification for
providing the particular services that are posted (Br. 23). The Appellant
argues that claim 1 for example requires automatically authenticating
qualifications of a service provider which is not shown by the prior art. The
Appellant argues that Newman describes only a system for creating and
storing “credentialing profiles” of physicians for the purpose of assisting
physicians with the completion of forms which are automatically filled-in
and generated on of a variety of different possible formats for credentialing
application forms (Br. 25, Reply Br. 3-4).
In contrast, the Examiner has determined that the rejection of claims
1, 30, and 35 is proper because a broadest reasonable interpretation of claim
1 for example would merely require that the medical provider be registered
in a database, wherein accessing the database to see the list authenticates that
the physician is qualified (Ans. 13).
We agree with the Appellant. We first construe the meaning of the
limitation in claim 1 requiring “registering a medical service provider and
automatically authenticating qualifications of said medical service provider
to perform a proffered medical service upon obtaining registration
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information from said provider” as used by the appellant in the claims. We
determine the scope of the claims in patent applications “not solely on the
basis of the claim language, but upon giving claims their broadest reasonable
construction ‘in light of the specification as it would be interpreted by one of
ordinary skill in the art.’” Phillips v. AWH Corp., 415 F.3d 1303, 1316
(Fed. Cir. 2005) (en banc) (quoting In re Am. Acad. of Sci. Tech. Ctr., 367
F.3d 1359, 1364 (Fed. Cir. 2004)). The Specification describes that:
The provider's qualifications for performing the stated medical
services are authenticated by means of a search engine 71 having a
direct link to a qualifier database 72 and/or hyperlinks to one or more
other qualifier databases 72.
The term "search engine", as used herein, means an apparatus (or
method) automatically operable for receiving a user generated label,
searching a directory comprised of one or more databases for a
matching label and identifying databases within the directory which
contain a matching label. The term "qualifier database," as used
herein, means an electronically accessible computer-readable storage
medium containing authentic certification data for medical service
providers. Some examples of qualifier databases include the AMA's
membership roster, a State Medical Licensing Board's roster of
licensed physicians, the American College of Surgeons roster of board
certified surgeons and a roster of Board Certified Plastic and
Reconstructive Surgeons, as well as specific hospital staff privileges
roster.
If the medical service provider is qualified to render the medical
service being offered, the qualifications are authenticated by the
system 16 and the provider-transmitted service and offering price data,
including any restrictions (specifications) are accepted by the system
16 as a conditional offer for sale.
In our view, the claim limitation for “automatically authenticating
qualifications of said medical service provider to perform a proffered
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medical service” should be interpreted as authenticating qualifications in a
qualifier database or some similar medium directly.
Here, DiRienzo merely discloses that each radiologist provides their
own biographical information but does not disclose automatically
authenticating the qualifications of the radiologist (FF4). Similarly,
Newman merely discloses that the physicians complete the application form,
but does not disclose automatically authenticating the qualifications of
the physician (FF9). We note even further that claim 1 requires both
“registering a medical service provider” and “automatically authenticating
qualifications of said medical service provider.” Having the physician enter
their own medical certifications into a database may meet the requirement
for “registration” in the claim 1, but such self-reporting of information into a
database cannot be fairly considered to be “automatically authenticating
qualifications of said medical service provider” when fairly read in light of
the specification as it would be considered by one of ordinary skill in the art.
For these reasons the rejection of claim 1 under 35 U.S.C. § 103(a) as
unpatentable over DiRienzo and Newman is not sustained. Claims 30 and
35 contain limitations similar to those addressed above and the rejections
of these claims is not sustained for the same reasons. The rejection of
dependent claims 2-17 and 31-34 which depend from claims 1 and 30
respectively is not sustained for these same reasons as well.

Claim 21
With regard to claim 21 the Appellant argues that DiRienzo and
Newman fail to disclose automatically accessing online a data source to
obtain information describing the health or financial condition of the
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prospective patient and forwarding that information along with a bid for
services to an associated health provider (Br. 28, Reply Br. 4-5).
The Examiner has determined that these claim limitations are
disclosed by DiRienzo teaching that a physician may access a patient’s
medical image to be used to develop a diagnosis or treatment (Ans. 16).
We agree with the Appellant. In addition to requiring the access to
information describing the health or financial condition of a patient, claim
21 also specifically requires “forwarding a received online bid to an
associated medical service provider together with the information describing
the health and/or financial condition of the prospective patient associated
with said forwarded bid.” DiRienzo does not disclose forwarding a received
online bid to a medical service provider with information describing the
health or financial condition of the prospective patient (FF5) as required by
claim 21.
For these reasons the rejection of claim 21 under 35 U.S.C. § 103(a)
as unpatentable over DiRienzo and Newman is not sustained.

Claims 50-55
With regards to claims 50, 52, and 54 the Appellant argues that
none of the prior art references show feedback information obtained from
a service provider regarding a patients compliance with medical procedures
or the resultant outcome of providing the proffered medical service to the
patient (Br. 31, Reply Br. 7).
In contrast the Examiner has determined that Feinberg discloses a
bidding system in which buyers leave information on sellers (Ans. 20).
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We agree with the Appellant. Feinberg does disclose that feedback or
comments may be used in the online auction system (FF10). We note that
the claims at issue require more than just simple buyer or seller feedback,
but rather specific feedback information obtained from a service provider
regarding a patient’s compliance with medical procedures or the resultant
outcome of providing the proffered medical service to the patient. Feinberg
does not disclose specific feedback information obtained from a service
provider regarding a patient’s compliance with medical procedures or the
resultant outcome of providing the proffered medical service to the patient
(FF11) as required by the claims.
For these reasons the rejection of claim 50, 52, and 54 under
35 U.S.C. § 103(a) as unpatentable over DiRienzo, Newman, and Feinberg
is not sustained. The rejection of dependent claims 51, 53, and 55 which
depend from these claims is not sustained for these reasons as well.
Claims 56 and 57
With regards to claim 56 the Appellant argues that the prior art fails to
show “registering at least one medical service provider” and “collecting into
a database…feedback information….made available online” as required (Br.
30).
In contrast, the Examiner has determined that Feinberg discloses a
bidding system in which buyers leave information on sellers (Ans. 20).
We agree with the Examiner. Claim 56 does not require that any
specific type of feedback be left. Feinberg discloses an online auction
system which stores information including comments from previous buyers
who purchased items from the seller (FF10). The modification of the
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systems of DiRienzo and Newman to have a feedback system as disclosed
by Feinberg and to extend such a system to both the “buyer” and “seller” is
considered an obvious, predictable combination of known elements to have
medical bidding system with a single provider form and comments for future
bidders on the performance provided by each party.
For these reasons the rejection of claim 56 under 35 U.S.C. § 103(a)
as unpatentable over DiRienzo, Newman, and Feinberg is sustained. The
Appellant has not argued the rejection of claim 57 separately and the
rejection of this claim is sustained for these same reasons.

Claims 58-60
With regards to claim 58 the Appellant argues that Rackson fails to
disclose computing an adjusted bid price based on a relative multiplier to a
CPT code Relative Value Scale (Br. 32, Reply Br. 8).
The Examiner has determined that Rackson teaches computing an
adjusted bid price based on certain factors and that CPT codes are well
known in the art (Ans. 21).
We agree with the Appellant. Claim 58 requires not only the use of
conventionally known CBT codes, but also computing an adjusted bid price
based on a relative multiplier to the CPT code Relative Value Scale.
Rackson does not disclose computing an adjusted bid price based on a
relative value multiplier based upon a CPT code (FF12) as specifically
claimed.
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For these reasons the rejection of claims 58-60 under 35 U.S.C.
§ 103(a) as unpatentable over DiRienzo, Newman, and Rackson is not
sustained.
CONCLUSIONS OF LAW
We conclude that Appellant has shown that the Examiner erred in
rejecting claims 1-9, 12-17, 21, and 30-35 under 35 U.S.C. § 103(a) as
unpatentable over DiRienzo and Newman.
We conclude that Appellant has shown that the Examiner erred in
rejecting claims 10-11 and 50-55 under 35 U.S.C. § 103(a) as unpatentable
over DiRienzo, Newman, and Feinberg.
We conclude that Appellant has failed to show that the Examiner
erred in rejecting claims 56-57 under 35 U.S.C. § 103(a) as unpatentable
over DiRienzo, Newman, and Feinberg.
We conclude that Appellant has shown that the Examiner erred in
rejecting claims 58-60 under 35 U.S.C. § 103(a) as unpatentable over
DiRienzo, Newman, and Rackson.

DECISON
The Examiner’s rejection of claims 1-17, 21, 30-35, 50-55, and 58-60
is reversed.
The Examiner’s rejection of claims 56-57 is affirmed.

AFFIRMED-IN-PART

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Application 09/725,142

FISCHETTI, dissenting-in-part
I respectfully dissent with the conclusion arrived at by the majority
regarding independent claims 1, 30 and 35.
Based on the description in the Specification on page 20, the majority
correctly interprets the limitation in claim 1, registering a medical service
provider and automatically authenticating qualifications of said medical
service provider, to mean “…using a search engine 71 having a direct link
to a qualifier database 72 and/or hyperlinks to one or more other qualifier
databases 72.” The definition offered by the Specification for “qualifier
database” is “…a storage medium containing authentic certification data for
medical service providers.” (Specification 20:20-22).
Newman however similarly discloses using a credentialing managing
organization whose job it is to collect physician credential information and
load this information into a physician credential information database.
(Newman, col.3, l. 46-col.4, l. 5).
Neither the claims nor the Specification require how the credential
data gets into the credential database, only that the data be authentic. Given
that Newman goes out of its way to provide a credential manager, we should
safely infer that one job performed by that person or entity will be to assure
the authenticity of the credential being stored. See KSR Int’l. Co. v. Teleflex
Inc., 127 S.Ct. 1727, 1741 (2007) (In making the obviousness determination
one “can take account of the inferences and creative steps that a person of
ordinary skill in the art would employ”). Moreover, a credential is a
certificate, which by definition, is self-authenticating.
Given that DeRienzo also discloses that each provider has a biography
posted on RAMIX and that a user may select/search these biographies for
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“e.g., a highly reputable specialist in the area of concern.” (DeRienzo,
col.17, ll. 4-15), hyper-linking or searching for provider by a given medical
college attended or by the specialty required would be an obvious expedient
in the art. By virtue of a credential managing organization, such as provided
by Newman to the RAMIX system in DeRienzo, such a search for a provider
listed on the modified RAMIX system would automatically yield an
authentic health care provider.

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv) (2007).

JRG

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