Ex Parte Ivanoff et al

Patent Trial and Appeal Board

Oct 26, 2018

14954763 (P.T.A.B. Oct. 26, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
14/954,763 11/30/2015
21186 7590 10/30/2018
SCHWEGMAN LUNDBERG & WOESSNER, P.A.
P.O. BOX 2938
MINNEAPOLIS, MN 55402
Kent F. Ivanoff
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.
4497.002US2 1050
EXAMINER
GREGG, MARY M
ART UNIT PAPER NUMBER
3697
NOTIFICATION DATE DELIVERY MODE
10/30/2018 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):
uspto@slwip.com
SLW@blackhillsip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte KENT F. IVANOFF, VINCENT MARTINO, and
NIKOLAUS TROTTA
Appeal 2017-006131 1
Application 14/954,763
Technology Center 3600
Before MURRIEL E. CRAWFORD, MICHAEL W. KIM, and
PHILIP J. HOFFMANN, Administrative Patent Judges.
KIM, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
This is an appeal from the final rejection of claims 1-28. We have
jurisdiction to review the case under 35 U.S.C. §§ 134 and 6.
The invention relates generally "to techniques to acquire or otherwise
access data pertaining to healthcare transactions and to provide business
intelligence functionality and/or information." Spec.~ 2.
1 The Appellants identify iVinci Partners, LLC as the real party in interest.
Appeal Br. 2.
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Application 14/954,763
Claim 1 is illustrative:
1. A method for transformation and processing of healthcare
transaction data provided through a user-interactive graphical
user interface, the method comprising electronic operations
implemented with processor circuitry of a computing system, the
electronic operations comprising:
receiving a first set of healthcare transaction data created
from a first healthcare transaction, the first set of
healthcare transaction data provided from a first
electronic healthcare billing system;
receiving a second set of healthcare transaction data
created from a second healthcare transaction, the
second set of healthcare transaction data provided
from a second electronic healthcare billing system,
wherein the second electronic healthcare billing
system maintains data for a different set of
healthcare transactions than the first electronic
healthcare billing system;
creating an aggregate set of healthcare transaction data
records from a combination of the first set of
healthcare transaction data and the second set of
healthcare transaction data, wherein the aggregate
set of healthcare transaction data is associated with
a user;
creating a payment due data record from the aggregate set
of healthcare transaction data records, wherein the
payment due data record is established at a time of
generation of the graphical user interface, and
wherein payment due data record indicates an
aggregated balance due for open charges of the first
healthcare transaction and the second healthcare
transaction that are tracked by the first electronic
healthcare billing system and the second electronic
healthcare billing system;
creating a repayment decisioning data record for the user,
wherein the repayment decisioning data record is
established at the time of generation of the graphical
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user interface, and wherein the repayment
decisioning data record is established from:
evaluating a set of repayment data records
associated with the aggregate set of
healthcare transaction data records to
generate an aggregate rule set for repayment
of the aggregated balance due, wherein the
aggregate rule set includes a repayment rule
of a third electronic healthcare billing
system;
evaluating a set of user characteristic data records to
determine current repayment characteristics
of the user, wherein the current repayment
characteristics are uniquely evaluated for the
user for repayment of the aggregated balance
due;and
generating a minimum amount due and repayment
characteristics for a repayment of the
aggregated balance due, wherein the
minimum amount due and the repayment
characteristics are constrained to the
repayment rule of the third electronic
healthcare billing system indicated in the
repayment data records and the current
repayment characteristics of the user
indicated in the user characte 1 istic data
records;
generating the graphical user interface, wherein the
graphical user interface:
outputs the aggregated balance due and aggregated
healthcare transaction information including
data from the aggregate set of healthcare
transaction data records; and
outputs multiple available payment options for at
least a portion of the aggregated balance due,
wherein the multiple available payment
options indicate reduced payments that are
customized to the minimum amount due, the
repayment characteristics for the repayment
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of the aggregated balance due, and the current
repayment characteristics of the user;
rece1vmg an indication of a user-configured payment
option from the multiple available payment options,
in response to input by the user in the graphical user
interface;
verifying that the user-configured payment option
complies with the repayment rule associated
with the third electronic healthcare billing
system for the repayment of the aggregated
balance due; and
m response to successful verification of the user-
configured payment option:
transmitting an electronic transaction request to
effectuate an electronic transaction that
transfers financial obligations of the first
healthcare transaction from the first
electronic healthcare billing system to the
third electronic healthcare billing system,
based on the indication of the
user-configured payment option; and
transmitting an electronic payment transaction
request to effectuate multiple electronic
transactions that perform repayment of at
least a portion of the aggregated balance due
for the second healthcare transaction to the
second electronic healthcare billing system
and for the first healthcare transaction to the
third2 electronic healthcare billing system,
based on the indication of the user-
configured payment option.
The Examiner rejected claims 1-28 under 35 U.S.C. § 112(a) as
failing to comply with the written description requirement.
2 We suspect, based on paragraphs 70, 71, 179, and 232 of the Specification,
cited at Appeal Br. 7, that the payment goes to the first electronic billing
system, not the third, because the third system is making the payments.
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The Examiner rejected claims 1-28 under 35 U.S.C. § 112(b) as
indefinite.
The Examiner rejected claims 1-28 under 35 U.S.C. § 101 as directed
to ineligible subject matter in the form of abstract ideas.
The Examiner rejected claims 1, 5, 7, 8, 11, 13-17, 20-24, 27, and 28
under 35 U.S.C. § 103 as unpatentable over Stamper et al.,
(US 2014/0039905 Al, pub. Feb. 6, 2014) ("Stamper"), Blain et al.,
(US 2012/0179605 Al, pub. July 12, 2012) ("Blain"), and Connell
(US 8,583,492 B2, iss. Nov. 12, 2013).
The Examiner rejected claims 2--4 under 35 U.S.C. § 103 as
unpatentable over Stamper, Blain, Connell, and Franklin et al.,
(US 2007/0100747 Al, pub. May 3, 2007) ("Franklin").
The Examiner rejected claims 6, 18, 23, and 26 under 35 U.S.C. § 103
as unpatentable over Stamper, Blain, Connell, and Feilbogen et al.,
(US 2002/0023045 Al, pub. Feb. 21, 2002) ("Feilbogen").
The Examiner rejected claims 9 and 25 under 35 U.S.C. § 103 as
unpatentable over Stamper, Blain, Connell, and Lidow (US 2005/0177435
Al, pub. Aug. 11, 2005).
The Examiner rejected claim 10 under 35 U.S.C. § 103 as
unpatentable over Stamper, Blain, Connell, and Rosenberg
(US 2013/0103572 Al, pub. Apr. 25, 2013).
The Examiner rejected claims 11 and 12 under 35 U.S.C. § 103 as
unpatentable over Stamper, Blain, Connell, and Teague et al.,
(US 2005/0021462 Al, pub. Jan. 27, 2005) ("Teague").
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The Examiner rejected claim 19 under 35 U.S.C. § 103 as
unpatentable over Stamper, Blain, Connell, and Otterbach et al.,
(US 2006/0116906 Al, pub. June, 1, 2006) ("Otterbach").
We REVERSE.
ANALYSIS
Reiection under 35 U.S.C. § l 12(a)
The Examiner finds that for independent claim 1, "neither the written
description nor the original presentation of claims have support or
possession of the function 'generation of the graphical user interface,"' and
the Appellants "did not have possession of any algorithm to perform the
claimed 'generation of the graphical user interface user interface."' Final
Act. 32. The same reasoning is applied to reject independent claims 14
and 22, and all dependent claims. Id. 33-35.
We are persuaded by the Appellants' argument that "[ o ]ne of ordinary
skill in the art would understand that these webpage graphical user interfaces
are generated when accessed by the client web browser." Appeal Br. 17.
While there is no in haec verba requirement, newly added claim
limitations must be supported in the specification through express, implicit,
or inherent disclosure. The fundamental factual inquiry is whether the
specification conveys with reasonable clarity to those skilled in the art that,
as of the filing date sought, applicant was in possession of the invention as
now claimed. See, e.g., Vas Cath Inc. v. Mahurkar, 935 F.2d 1555, 1563---64
(Fed. Cir. 1991). When an explicit limitation in a claim is not present in the
written description, it must be shown that a person of ordinary skill would
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have understood that the description requires that limitation. Hyatt v. Boone,
146 F.3d 1348, 1353, (Fed. Cir. 1998).
The Specification describes that "the private payment portal
subsystem may generate and provide to a guarantor an electronic statement
for a given period," and, referring to the user interface disclosed in
Appellants' Figure 9, that the "user interface 900 may provide an interactive
overview of an electronic statement that may include an account overview
area 902, an autopay overview area 904, a payment options area 906, and an
account summary area 908." Spec. ,r 162. We are persuaded that the
ordinary artisan would have understood that generating a user interface, such
as in Appellants' Figure 9, would have been done through well-known
techniques at the time of invention, such as those techniques commonly used
for generating a graphical user interface, as now claimed.
The Examiner also finds no written description support for amended
claim language related to a "data record is established at the time of the
generation of the graphical user interface," because of a lack of description
of the generation at "any specific time." Final Act. 33-34.
We are persuaded by the Appellants' argument that the web page user
interfaces are generated when accessed by a user, and thus are described in
the original Specification as "established at a time of generation of the
graphical user interface." Appeal Br. 22. For example, the Specification
describes that:
The interactive overview may be an interactive "statement" of
charges that dynamically changes with user interaction. When a
guarantor first logs in after receiving an electronic notice that a
statement is ready, the interactive overview data may match or
closely match the electronic statement and reflect, for example,
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a presumption that the preset or standard payment configuration
for new charges will likely be utilized by the guarantor.
Spec. ,r 205. This establishes that the user interface is created
"dynamically," which provides support for the amended claim language.
For these reasons, we do not sustain the rejection of claims 1-28 as
failing the written description requirement of 35 U.S.C. § 112(a).
Reiection under 35 U.S. C. § l l 2(b)
The Examiner finds for all claims that "[because] there is no
clarification as to the metes and bounds of the term 'generating the graphical
user interface' the examiner is unable to determine if the term means to
create an interface or for an existing interface in a system to function for
communication." Final Act. 36-38.
We agree with the Appellants that "[ o ]ne of ordinary skill in the art
would read the terms 'generate', 'generation', and 'generating' in the
independent claims as referring to 'creating' or 'producing' the graphical
user interface, which is consistent with the commonly accepted dictionary
definition for each of these terms." Appeal Br. 19 (emphasis omitted). The
Specification, for example, describes that "[ u ]pon login, the user
interface 900 may display to provide a viewing guarantor with an overview
of the guarantor's account and/or any accounts managed by the guarantor."
Spec. ,r 162. The generating of a graphical user interface therefore is merely
displaying information on a device for a user to see, not creating a
communication system.
The Examiner also asserts the "creating step must happen before the
generating step because the generating step outputs the result of the creating
step. However, the claimed limitations are unclear with respect the claimed
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statement 'at the time of generation' and the other steps that seem to be
happening ( concurrently or sequentially)." Answer 5-6.
We agree with the Appellants that the two data records in the
independent claims created at the time the GUI is generated clearly indicates
that the records are generated at approximately the same time the GUI is
prepared for display, rather than, for example, in an earlier batch process, for
essentially the same rationale we set forth above as to the creation of the
user interface.
For these reasons, we do not sustain the rejection of claims as
indefinite under 35 U.S.C. § 112(b).
Re;ections under 35 U.S.C. § 103
We are persuaded by the Appellants' argument that Stamper does not
disclose "transfers [ of] financial obligations of the first healthcare billing
transaction from the first electronic healthcare billing system to the third
information electronic healthcare bill system," as recited in independent
claim 1. Appeal Br. 25. Independent claims 14 and 22 recite similar subject
matter.
In rejecting the corresponding claim language, the Examiner relies on
Stamper, Figure 3, and paragraphs 30, 39, and 42--46. Final Act. 61-62.
Figure 3 is a four-step flow chart that details receiving billing information,
generating a statement, selecting payment options, and sending the statement
and options to the user, but does not transfer any financial obligations to a
third party. Stamper Fig. 3. Paragraph 30 describes aspects of the
reconciliation statement. Paragraph 39 describes Figure 3. Paragraphs 42
and 43 provide additional information about the last two steps of Figure 3.
Paragraphs 44--46 describe the computer system of Figure 4 that may be
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used to implement the Stamper system. None of the cited paragraphs
transfer a financial obligation, as claimed.
The Examiner responds by denoting the billing consolidation and
payment consolidation aspects of Stamper, and asserts that "[b ]illing
information is a financial obligation," and that Stamper meets the claim
language because it discloses "healthcare providers transmitting billing
information." Answer 2 7.
The Specification, though, describes "automatically effectuat[ing]
electronic transactions to transfer title of an accounts receivable asset that
constitutes some or all rights to collect payment for the open charges
balance." Spec. ,r 61. Merely transmitting billing information does not
transfer title of the obligation to a different party. Instead, the invention
requires a different entity to acquire the right to collect on the owed amounts
as the transfer of obligations. Stamper does not address this act, and neither
Blain nor Connell are relied on for this teaching. Therefore, we are
persuaded that the Examiner has not shown sufficiently that the
aforementioned limitation, recited, in some form, in each of independent
claims 1, 14, and 22, is met by the prior art. For this reason, we do not
sustain the rejections of claims 1-28 under 35 U.S.C. § 103.
Reiection under 35 U.S. C. § 1 OJ
The Examiner finds the independent claims "are directed to the
abstract idea of combining billing data received, offering to a client
repayment options according to rules, effecting an obligation transfer of the
bill based on client repayment options selected and rules and requesting
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repayment on bills." Final Act. 39; Ans. 6. 3 The Examiner then parses out
the portions of the claim concerning each of those respective concepts, and
analogizes them to a particular case. The Examiner next determines that
claim elements "beyond the identified abstract concept include a computer
system comprising a memory circuitry, a processor circuitry, a storage
medium including instructions that for execution by the processor circuitry
and memory circuitry recited at a high level of generality to perform well-
understood conventional computer functions." Final Act. 42. The Examiner
also views the claims as a whole, but finds "the claim limitations do not add
limitations other than what is well understood, routine and conventional in
the field, nor [do] the claimed limitations add unconventional steps that
confine the claimed limitation to a particular useful application." Id. at 43.
The Examiner's approach is problematic, because while we are
cognizant that a claim can be directed to multiple abstract ideas, we are the
persuaded that it is improper to eliminate claim language on a concept by
concept basis, as we are persuaded that goes against our reviewing court's
instruction to consider the claim as a whole. Put practically, for two given
abstract ideas claimed in combination, one of those abstract ideas may
represent something "significantly more" relative to the other abstract idea.
Having said that, we are in agreement with the Examiner's implicit
assessment that the some of the proffered concepts, even when evaluated
3 In doing so, the Examiner adopts a formulation of claim 1 similar, but not
identical, to that set forth by the Board in a prior decision. Ex parte i Vinci
Partners, LLC, Appeal 2017-004177, slip op. at 10 (PTAB July 13, 2018)
("Therefore, for claim 1, we would reformulate the Examiner's finding to be
that claim 1 is directed to consolidating billing information, offering to the
user periodic payment options for the amount due, and permitting the user to
alter the periodic payment amount the payments are based on.").
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under the above rubric, are not patent-eligible. For example, we are
unpersuaded that the concepts of "combining billing data received" and
"offering to a client repayment options according to rules" are anything
other than abstract ideas. See, e.g., In re Salwan, 681 F. App'x 938, 941
(Fed. Cir. 2017), cert. denied sub nom. Salwan v. Mata!, 138 S. Ct. 278, 199
L. Ed. 2d 178 (2017), reh'gdenied, 138 S. Ct. 496, 199 L. Ed. 2d 379
(2017); LendingTree, LLC v. Zillow, Inc., 656 F. App'x 991, 996 (Fed. Cir.
2016); Credit Acceptance Corp. v. Westlake Servs., 859 F.3d 1044, 1054
(Fed. Cir. 2017); CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d
1366, 1373 (Fed. Cir. 2011). Furthermore, it is plausible that the concept of
"combining billing data received" does not add "significantly more" to the
abstract idea of "offering to a client repayment options according to rules,"
because the former can perhaps be characterized as merely data gathering,
which has held by the courts as not constituting "significantly more." Id.
at 1370 ("We have held that mere '[data-gathering] step[s] cannot make an
otherwise nonstatutory claim statutory."').
The more difficult concept, however, is "effecting an obligation
transfer of the bill based on client repayment options selected and rules and
requesting repayment on bills," where each independent claim recites
language substantially similar to:
in response to successful verification of the user-configured
payment option: transmitting an electronic transaction request to
effectuate an electronic transaction that transfers financial
obligations of the first healthcare transaction from the first
electronic healthcare billing system to the third electronic
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healthcare billing system, based on the indication of the user-
configured payment option.
For these limitations, the Examiner asserts that this is similar to "( ( creating a
contract) (buySafe); comparing new and stored information and using rules
to identify options (SmartGene))." Final Act. 42. We are unclear as to how
the case law cited relates to "effecting an obligation transfer of the bill based
on client repayment options selected[,] and rules and requesting repayment
on bills." For buySafe, while the obligation transfer certainly involves
creating a contract, that is but one aspect of the outlined concept. And for
SmartGene, while certainly the repayment option chosen by the client is
identified, that, again, is but one aspect of the outlined concept.
Furthermore, even if the above limitations are evaluated under Step 2
of Alice, the Examiner has not identified any evidence in the record, or
provided a sufficient analysis, to show that it would not constitute
"significantly more" with respect to either of the other concepts identified
above under Step 1 of Alice as abstract ideas, namely, "combining billing
data received" or "offering to a client repayment options according to rules."
For example, when selling receivables amounts to a third party, the
Examiner has not identified any evidence in the record, or provided a
sufficient analysis, to show that it is well-understood, routine, and
conventional to base a transfer of the financial obligation of the receivables
on the user's selection of a financing option, as claimed. At best,
paragraph 232 of the Specification describes the practice of "factoring";
however, there, receivables balances are not sold based on user selection, as
claimed.
For these reasons, we do not sustain the rejection of claims 1-28
under 35 U.S.C. § 101.
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DECISION
We REVERSE the rejection of claims 1-28 under 35 U.S.C. § 112(a)
as failing the written description requirement.
We REVERSE the rejection of claims 1-28 under 35 U.S.C. § 112(b)
as indefinite.
We REVERSE the rejections of claims 1-28 under 35 U.S.C. § 103.
We REVERSE the rejection of claims 1-28 under 35 U.S.C. § 101.
REVERSED
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