Ex Parte Hunt et al

Patent Trial and Appeal Board

Dec 14, 2017

13315857 (P.T.A.B. Dec. 14, 2017)

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.
13/315,857 12/09/2011 William A. Hunt 06-053-A CIP 7689
29694 7590 12/18/2017
Leech Tishman Fuscaldo & Lampl
525 William Penn Place
28th Floor
PITTSBURGH, PA 15219
EXAMINER
ZARE, SCOTT A
ART UNIT PAPER NUMBER
3687
NOTIFICATION DATE DELIVERY MODE
12/18/2017 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):
IPDocket@leechtishman.com
dstevenson@leechtishman.com
trath@leechtishman.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte WILLIAM A. HUNT and JENNIFER HUNT1
Appeal 2016-005427
Application 13/315,857
Technology Center 3600
Before JEAN R. HOMERE, BRADLEY W. BAUMEISTER, and
AMBER L. HAGY, Administrative Patent Judges.
BAUMEISTER, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
Final Rejection of claims 2—4, 7, 8, 10-13, 15, 17—19, and 21—26. App.
Br. 4—29. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
1 Appellants list MedCom Solutions, Inc., as the real party in interest.
Appeal Brief filed October 19, 2015 (“App. Br.”) 2.
Appeal 2016-005427
Application 13/315,857
THE INVENTION
Appellants describe the present invention as a system and “[a]
computer-assisted method for uniformly pricing chargeable items in a
healthcare provider’s chargeable item database []. The method applies
uniform pricing to identical or related chargeable items.” Abstract.
Independent claim 21, reproduced below, is illustrative of the appealed
claims:
21. A computer-assisted method for consistently pricing a
linked group of chargeable items, comprising:
(a) searching, using a processor, a chargemaster of a single
healthcare provider for each item listed in the chargemaster that
is identified by a procedural code, each chargeable item having a
price charged therefor;
(b) creating, using the processor, the linked group based
on results derived from the searching in step (a), the linked group
comprising more than one chargeable item identified by the
procedural code and offered by at least two departments within
the healthcare provider;
(c) comparing, using the processor, the price associated
with each chargeable item within the linked group to determine
if the prices charged for each chargeable item within the linked
group are consistent between the at least two departments within
the healthcare provider;
(d) when the price charged for each chargeable item within
the linked group is not consistent, calculating, using the
processor, a final price to be charged for each chargeable item
within the linked group, wherein the final price is the price
charged for a selected chargeable item selected from the linked
group, wherein the selected chargeable item is one of the
chargeable items offered by the healthcare provider within the
linked group and satisfies a preselected parameter derived from
a revenue data set, wherein the revenue data set comprises
statistical volume data about the chargeable items offered by the
healthcare provider; and
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Application 13/315,857
(e) updating, using the processor, the chargemaster so that
the price charged for each chargeable item within the linked
group is the final price calculated in step (d) to provide consistent
pricing for the chargeable items between the at least two
departments within the healthcare provider.
THE REJECTION AND CONTENTIONS
Claims 2-4, 7, 8, 10-13, 15, 17—19, and 21—26 stand rejected under
35U.S.C. § 101 as being directed to non-statutory subject matter. Final
Act. 2.2 The Examiner finds that the claims are directed to the abstract idea
of a methodology for setting prices. Id. at 4. The Examiner additionally
finds that the claims, when read as a whole, do not amount to significantly
more than the abstract idea because “the claims merely amount to applying
the abstract idea on a computer using a processor.” Id.
Appellants presents multiple arguments in their principle brief, and
the Examiner responds to these arguments in the Answer. Specifically,
Appellants argue that “[t]he Office has failed to make a prima facie case of
non-statutory subject matter.” App. Br. 5—9 (emphasis omitted); but see
Ans. 2—7. Appellants argue that their “[cjlaims ... do not preempt the
abstract idea of pricing.” App. Br. 10-13 (emphasis omitted); but see
Ans. 7—8. Appellants generally argue that their “claims recite additional
elements that amount to significantly more than the abstract idea of pricing,”
and then present five specific arguments in support of this broader
2 Rather than repeat the Examiner’s positions and Appellants’ arguments in
their entirety, we refer to the above-mentioned Appeal Brief, as well as the
following documents for their respective details: the Final Action mailed
April 6, 2015 (“Final Act.”); the Examiner’s Answer mailed March 9, 2016
(“Ans.”); and the Reply Brief filed May 9, 2016 (“Reply Br.”).
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Application 13/315,857
contention. App. Br. 14—25; but see Ans. 9-13. Appellants also argue that
the claimed subject matter is designed to solve a technological problem in
conventional industry practice. App. Br. 25—27; but see Ans. 14. Appellants
argue that “[their] claims are necessarily ‘rooted in computer technology’
and are not the mere recitation of ‘some business practice known from the
pre-internet world along with the requirement to perform it on the internet.’”
App. Br. 27—29 (emphasis omitted); but see Ans. 14—15.
PRINCIPLES OF LAW
We review the appealed rejections for error based upon the issues
identified by Appellants, and in light of the arguments and evidence
produced thereon. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010)
(precedential).
Patent eligibility is a question of law that is reviewable de novo.
Dealertrack, Inc. v. Huber, 674 F.3d 1315, 1333 (Fed. Cir. 2012).
In determining whether the claims set forth patent eligible subject
matter under 35U.S.C. § 101, we first must determine whether the claims at
issue are directed to laws of nature, natural phenomena, or abstract ideas.
Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 714 (Fed. Cir. 2014). If so,
we then must consider whether the claims—both individually and as an
ordered combination—include an element that is sufficient to transform the
nature of the claim into a patent-eligible application. Id.; Alice Corp. Pty.
Ltd. v. CLS Bank Intern., 134 S.Ct. 2347, 2355 (2014).
In applying step two of the Alice analysis, we must
“determine whether the claims do significantly more than simply
describe [the] abstract method” and thus transform the abstract
idea into patentable subject matter. ... We look to see whether
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Application 13/315,857
there are any “additional features” in the claims that constitute
an “inventive concept,” thereby rendering the claims eligible for
patenting even if they are directed to an abstract idea. .. . Those
“additional features” must be more than “well-understood,
routine, conventional activity.”
Intellectual Ventures ILLC v. Erie Indemnity Company, 850 F.3d 1315,
1328 (Fed. Cir. 2017) (citations omitted).
“[Cjlaims [that] merely require generic computer implementation[]
fail to transform [an] abstract idea into a patent-eligible invention.” Id.
(citing Alice, 134 S.Ct. at 2357).
ANALYSIS
Appellants’ arguments are unpersuasive of Examiner error.
Appellants’ arguments appear to derive from the proposition that the
Examiner’s “sole basis for rejection seems to rest on its conclusion that the
claims apply the abstract idea of pricing on a computer using a processor.”
App. Br. 7—8; see also id. at 9 (“The mere recitation of ‘pricing’ and a
‘processor’ in Appellants’] claims does not in and of itself render
Appellants’] claims ineligible for patentability under 35 U.S.C. § 101.”).
Appellants indicate that they view claim 21 ’s method steps of
searching, creating, comparing, calculating and updating as being
substantially more than the abstract idea of pricing,
[tying] the abstract idea (pricing) to the processor’s ability to
create linked groups, select a chargeable item from the linked
group, satisfy a preselected parameter from a data set and update
the chargemaster to provide consistent pricing, thereby adding
meaningful limitations to the abstract idea of pricing and
therefore adding significantly more to the abstract idea than mere
computer implementation.
App. Br. 16.
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As noted above, the Examiner’s Answer addresses all of Appellants’
arguments, and we adopt the Examiner’s reasoning and analysis without
repetition herein. For emphasis, we note in particular that the Examiner’s
position is not that the claimed abstract idea is merely setting a price, as
Appellant argues. We, instead, understand the Examiner’s position to be
that the abstract idea of independent claim 21, for example, entails all
aspects of the following business steps:
(a) searching a printed chargemaster database of a single healthcare
provider for each item listed in the database that is identified by a
procedural code, each chargeable item having a price charged
therefor;
(b) creating, using either mental associations or pencil and paper, a
linked group based on results derived from searching in step (a),
the linked group comprising more than one chargeable item
identified by the procedural code and offered by at least two
departments within the healthcare provider;
(c) mentally comparing the price associated with each chargeable item
within the linked group to determine if the prices charged for each
chargeable item within the linked group are consistent between the
at least two departments within the healthcare provider;
(d) when the price charged for each chargeable item within the linked
group is not consistent, calculating, either mentally or using pencil
and paper, a final price to be charged for each chargeable item
within the linked group, wherein the final price is the price charged
for a selected chargeable item selected from the linked group,
wherein the selected chargeable item is one of the chargeable items
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Application 13/315,857
offered by the healthcare provider within the linked group and
satisfies a preselected parameter derived from a revenue data set,
wherein the revenue data set comprises statistical volume data
about the chargeable items offered by the healthcare provider; and
(e) updating, using a pencil and paper, the printed chargemaster
database so that the price charged for each chargeable item within
the linked group is the final price calculated in step (d) to provide
consistent pricing for the chargeable items between the at least two
departments within the healthcare provider.
That is, we understand the Examiner’s position to be that the only
portions of the claims that do not constitute an abstract idea are the portions
that require the above-outlined mental or manual steps alternatively be
automated through the use of conventional computer components. See
Ans. 13 (“Appellants’] argument is misguided in that it relies upon the
details recited within the abstract idea, rather than addressing how the
additional component in the claim, in this case, the processor, adds
‘significantly more’ to the otherwise abstract idea.”) (emphasis added).
Appellants’ arguments are not directed to the Examiner’s positions, as
articulated in the rejection. Nor are Appellants’ arguments otherwise
persuasive of error in the Examiner’s rejection of the appealed claims for
being directed to patent ineligible subject matter. Accordingly, we sustain
the rejection of claims 2-4, 7, 8, 10-13, 15, 17—19, and 21—26 under
35U.S.C. § 101.
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Application 13/315,857
DECISION
The Examiner’s decision rejecting claims 2-4, 7, 8, 10-13, 15, 17—19,
and 21—26 is affirmed.
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). See 37 C.F.R.
§ 1.136(a)(l)(iv).
AFFIRMED
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