Ex Parte Lassen et alDownload PDFPatent Trial and Appeal BoardAug 30, 201813401681 (P.T.A.B. Aug. 30, 2018) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 13/401,681 02/21/2012 Tobin S. Lassen 33649 7590 08/30/2018 Mr. Christopher John Rourk Jackson Walker LLP 2323 ROSS A VENUE SUITE 600 DALLAS, TX 75201 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. 105501.00020 8210 EXAMINER LULTSCHIK, WILLIAM G ART UNIT PAPER NUMBER 3626 MAIL DATE DELIVERY MODE 08/30/2018 PAPER 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. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte TOBIN S. LASSEN, JOHN W. ADAMS JR., CLAUDIA C. MELENDEZ, SHANNON T. RILEY, YVONNE MARIE BARROW, KAREN L. DAVENPORT, and JUAN N. DE BEDOUT Appeal2016-008142 Application 13/401,681 Technology Center 3600 Before MURRIEL E. CRAWFORD, ROBERT J. SILVERMAN, and ALYSSA A. FINAMORE, Administrative Patent Judges. CRAWFORD, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellants seek our review under 35 U.S.C. § 134(a) of the Examiner's final decision rejecting claims 10-18 and 20-31. We have jurisdiction over the appeal under 35 U.S.C. § 6(b). Appellants appeared for oral argument on August 16, 2018. Appeal2016-008142 Application 13/401,681 BACKGROUND Appellants' invention is directed to "a process for administrating and coordinating patient information, insurance beneficiary information, health care bundle fee schedules, payments for services associated with bundled health care pricing and other aspects of providing bundled services." Spec. 1. Claim 10 is illustrative: 10. A process for administration of bundled healthcare pncmg, compnsmg: electronically receiving and storing one or more data fields in a nontransitory data storage medium with an associated bundled case episode identifier and a initiating a plurality of prospective approved fund transfers for a plurality of individual health care professionals for the bundled case episode identifier; generating a unique case identifier for the bundled case episode identifier; electronically transmitting the unique case identifier to a practice management system associated with the one or more individual health care professionals; associating the one or more individual health care professionals with the unique case identifier; actuating one or more invasive diagnostic devices in response to the unique case identifier and generating diagnostic data; storing the diagnostic data in the practice management system in a data record associated with the unique case identifier; electronically receiving claims from the one or more individual health care professionals associated with the unique case identifier; determining with a data processor whether a claim with a master procedural or a diagnosis code is present in the claims for the unique case identifier; and modifying the bundled case episode identifier for the unique case identifier if the claim with the master procedural 2 Appeal2016-008142 Application 13/401,681 code or the diagnosis code is present to trigger an invoice to a payer for subsequent payment. The Examiner relies on the following prior art references as evidence of unpatentability: Mohlenbrock et al. Spiro Walsh et al. Dang Bryant et al. Ashford et al. Unland et al. Lesswing et al. us 4,667,292 us 5,819,228 US 2005/055240 Al US 2008/0097788 Al US 2008/0208757 Al US 2008/0243546 Al US 2009/0083065 Al US 8,160,905 B2 Appellants appeal the following rejections: May 19, 1987 Oct. 6, 1998 Mar. 10,2005 Apr. 24, 2008 Aug. 28, 2008 Oct. 2, 2008 Mar. 26, 2009 Apr. 17, 2012 Claims 10-18 and 20-31 under 35 U.S.C. § 101 as being directed to a judicial exception to patent-eligible subject matter. Claims 10-18, 28, 30, and 31 under 35 U.S.C. § 112(a), first paragraph, as failing to comply with the written description requirement. Claims 10-17 and 20-27 under 35 U.S.C. § 103(a) as being unpatentable over Dang, Spiro, Ashford, Walsh, and Lesswing. Claim 18 as being unpatentable under 35 U.S.C. § 103(a) over Dang, Spiro, Ashford, Walsh, Lesswing, Bryant, and Unland. Claims 20-27 as being unpatentable under 35 U.S.C. § 103(a) over Dang, Mohlenbrock, Ashford, and Lesswing. Claim 28 as being unpatentable under 35 U.S.C. § 103(a) over Dang, Mohlenbrock, Ashford, Lesswing, Bryant, and Unland. Claim 29 as being unpatentable under 35 U.S.C. § 103(a) over Dang, Spiro, Ashford, Walsh, Lesswing, and Official Notice. 3 Appeal2016-008142 Application 13/401,681 Claims 30 and 31 as being unpatentable over 35 U.S.C. § 103(a) over Dang, Mohlenbrock, Ashford, Lesswing, and Unland. PRINCIPLES OF LAW An invention is patent-eligible if it claims a "new and useful process, machine, manufacture, or composition of matter." 35 U.S.C. § 101. The Supreme Court, however, has long interpreted § 101 to include implicit exceptions: "[l]aws of nature, natural phenomena, and abstract ideas" are not patentable. E.g., Alice Corp. Pty. Ltd. v. CLS Bankint'l, 134 S. Ct. 2347, 2354 (2014) (quoting Ass 'nfor Molecular Pathology v. Myriad Genetics Inc., 569 U.S. 576, 589 (2013)). In determining whether a claim falls within the excluded category of abstract ideas, we are guided in our analysis by the Supreme Court's two- step framework, described in Mayo and Alice. Id. at 2355 ( citing Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 75-78 (2012)). In accordance with that framework, we first determine whether the claim is "directed to" a patent-ineligible abstract idea. See Alice, 134 S. Ct. at 2356 ("On their face, the claims before us are drawn to the concept of intermediated settlement, i.e., the use of a third party to mitigate settlement risk."); Bilski v. Kappas, 561 U.S. 593, 611 (2010) ("Claims 1 and 4 in petitioners' application explain the basic concept of hedging, or protecting against risk."); Diamond v. Diehr, 450 U.S. 175, 184 (1981) ("Analyzing respondents' claims according to the above statements from our cases, we think that a physical and chemical process for molding precision synthetic 4 Appeal2016-008142 Application 13/401,681 rubber products falls within the § 101 categories of possibly patentable subject matter."); Parker v. Flook, 437 U.S. 584, 594-95 (1978) ("Respondent's application simply provides a new and presumably better method for calculating alarm limit values."); Gottschalk v. Benson, 409 U.S. 63, 64 (1972) ("They claimed a method for converting binary-coded decimal (BCD) numerals into pure binary numerals."). The patent-ineligible end of the spectrum includes fundamental economic practices, Alice, 134 S. Ct. at 2357; Bilski, 561 U.S. at 611; mathematical formulas, Parker, 437 U.S. at 594-95; and basic tools of scientific and technological work, Gottschalk, 409 U.S. at 69. On the patent- eligible side of the spectrum are physical and chemical processes, such as curing rubber, Diamond, 450 U.S. at 184 n.7, "tanning, dyeing, making waterproof cloth, vulcanizing India rubber, smelting ores," and a process for manufacturing flour, Gottschalk, 409 U.S. at 69. If the claim is "directed to" a patent-ineligible abstract idea, we then consider the elements of the claim-both individually and as an ordered combination-to assess whether the additional elements transform the nature of the claim into a patent-eligible application of the abstract idea. Alice, 134 S. Ct. at 2355. This is a search for an "inventive concept"-an element or combination of elements sufficient to ensure that the claim amounts to "significantly more" than the abstract idea itself. Id. In addition, the Federal Circuit has held that if a method can be performed by human thought alone, or by a human using pen and paper, it is merely an abstract idea and is not patent-eligible under § 101. Cy her Source Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1373 (Fed. Cir. 2011) ("[A] 5 Appeal2016-008142 Application 13/401,681 method that can be performed by human thought alone is merely an abstract idea and is not patent-eligible under§ 101."). Claims involving data collection, analysis, and display are directed to an abstract idea. Elec. Power Grp. v. Alstom S.A., 830 F.3d 1350, 1353 (Fed. Cir. 2016) (holding that "collecting information, analyzing it, and displaying certain results of the collection and analysis" are "a familiar class of claims 'directed to' a patent ineligible concept"); see also In re TL! Commc 'ns LLC Patent Litig., 823 F.3d 607, 611 (Fed. Cir. 2016); FairWarning IP, LLC v. Iatric Sys., Inc., 839 F.3d 1089, 1093-94 (Fed. Cir. 2016). Claims that recite an improvement to a particular computer technology have been held patent eligible. See, e.g., McRO, Inc. v. Bandai Namco Games Am. Inc., 837 F.3d 1299, 1314-15 (Fed. Cir. 2016) (determining claims not abstract because they "focused on a specific asserted improvernent in computer animation"). ANALYSIS Rejection under 35 U.S. C. §1 OJ The Examiner determines that the claims are directed to processing insurance claims received from the healthcare professionals which is a fundamental economic practice. Final Act. 11. We agree with the Examiner that the claims are directed to a fundamental economic practice. The Examiner also notes that processing information through a clearinghouse and using categories to organize, store, and transmit information have been held to be abstract ideas. Final Act. 11. The Examiner determines that claim 10 recites a process of storing data with 6 Appeal2016-008142 Application 13/401,681 an associated identifier, initiating fund transfers for health care professionals, receiving claims from the professionals, and modifying the episode identifier if one of the claims contains a master procedural or diagnosis code. Ans. 3. We agree. As such, claim 10 is directed to the collection, storage, and analysis of data and therefore is directed to an abstract idea on this basis as well. The Examiner finds that the recitation of actuating one or more devices only serves to add insignificant extra solution activity, and therefore the claims do not include significantly more than the abstract idea. Final Act. 12. We agree. We are not persuaded that the Examiner erred by Appellants' argument that the Examiner has not provided sufficient analysis of the claims and as such has not met the burden of providing factual support and a reasoned explanation to support the finding that the claims are directed to an abstract idea. Consideration of evidence in making a determination under the first step of the Alice framework has merit See Apple, Inc. v. Ameranth, Inc., 842 F.2d 1229 (Fed. Cir. 2016). But there is no requirement that examiners must provide evidentiary support in every case before a conclusion can be made that a claim is directed to an abstract idea. The courts consider the determination of whether a claim is eligible (which involves identifying whether an exception such as an abstract idea is being clairned) to be a question of law. Accordingly, courts do not rely on evidence that a claimed concept is a judicial exception, and in most cases resolve the ultimate legal conclusion on eligibility without making any factual findings. Evidence may be helpful in certain situations where, for instance, facts are in dispute. 7 Appeal2016-008142 Application 13/401,681 But it is not always necessary. It is not necessary in this case where claim 10 on its face is directed to processing healthcare claims and is clearly directed to collection, analysis and transmission of data vvhich is an abstract idea. See Mortgage Grader, Inc. v. First Choice Loan Servs., Inc., 811 F.3d 1314, 1325-26 (Fed. Cir. 2016) ("[I]t is also possible, as numerous cases have recognized, that a § 101 analysis may sometimes be undertaken without resolving fact issues."). To that end, we are not persuaded that it is needed here. In regard to whether the Examiner provided a reasoned explanation to support the rejection, we conclude that the Examiner's statement, which Appellants acknowledge, is sufficient to place Appellants on notice as to step one of Alice as required under 35 U.S.C. § 132. Further, Appellants' understanding of the Examiner's rejection on this point was manifested by their response to the Office Action. See In re Jung, 637 F.3d 1356 (Fed. Cir. 2011). On the issue ofprima fade notice, particularly to anticipation but also generally, our reviewing court was clear in Jung that: There has never been a requirement for an examiner to make an on-the-record claim constn1ction of every term in every rejected claim and to explain every possible difference between the prior art and the claimed invention in order to make out a prima facie rejection. 637 F.3d at 1363. The Federal Circuit fu1iher stated: "[Section 132] does not mandate that in order to establish prima facie anticipation, the PTO must explicitly preempt every possible response to a section 102 rejection. Section 132 merely ensures that an applicant at least be informed of the broad statutory basis for the rejection of his claims, so that he may deten11ine what the issues are on which he can or should produce evidence." Chester, 906 F.2d at 1578 (inten1al citation omitted). As discussed above, all that is required of the office 8 Appeal2016-008142 Application 13/401,681 Id. to meet its prirna facie burden of production is to set forth the statutory basis of the rejection and the reference or references relied upon in a sufficiently articulate and infi..1rmative manner as to meet the notice requirement of§ 132. As the statute itself instructs, the examiner must "'notify the applicant," "stating the reasons for such rejection," '"together with such information and references as may be useful in judging the propriety of continuing prosecution of his application." 35 U.S.C. § 132. We conclude the Examiner's analysis and reasoning vvas more than sufficient to meet this burden as to Alice step one. \Ve are not persuaded of error on the part of the Exarniner by Appellants' argument that the recitation of "actuating one or more invasive diagnostic devices in response to the unique case identifier and generating diagnostic data" is a recitation of significantly more than the abstract idea. \Ve agree with the Examiner that recitation of actuating diagnostic devices is a recitation of extra-solution activity. The actuation of the diagnostic devices is a conventional step and is recited at a high level of generality. In this regard, actuation of diagnostic devices is done routinely in the field of patient care. The prohibition against patenting an abstract idea "cannot be circmnvented by attempting to limit the use of the formula to a particular technological environment or adding insignificant post-solution activity." Bilski v. Kappas, 561 U.S. 593, 610----11 (2010) (internal citation and quotation marks omitted). The Court in Alice noted that '" [ s]imply appending conventional steps, specified at a high level of generality,' was not ·enough' [ in l\ilayo] to supply an ' "inventive concept." "' Alice, 134 S. Ct. at 2357 (quoting Afayo, 566 U.S. at 82-83, 77-78, 72-73). In view of the foregoing, we will sustain the Examiner's rejection under 35 U.S.C. § 101 of claim 10. We will also sustain this rejection as His 9 Appeal2016-008142 Application 13/401,681 directed to the remaining claims because the Appellants have not argued the separate eligibility of these claims. Rejection under 35 U.S. C. § 112, first paragraph The Examiner rejects claims 10 stating that there is no support in the Specification for the transmitting, actuating, and storing steps. In regard to the transmitting and storing steps the Examiner states that the Specification does not provide support for the recitation that the unique case identifier is transmitted to the practice management system associated with the one or more individual health care providers. Final Act. 15. We agree with the Appellants that the Specification discloses this subject matter. In this regard, paragraph 31 discloses that the system generates a unique case ID, identifies a specific claim with diagnosis codes and then matches the claims to the unique case ID. The system then calculates the case rate based in part on this data. This calculation requires that the unique case ID for each claim that includes diagnosis data be stored for at some period of time in order for the calculation to be done. In regard to the actuating step, Appellants argue that the recitation is disclosed in paragraph 39 and Table 1. App. Br. 15. Paragraph 39 discloses that fees for a health care bundle may be paid to a physician by an administrative entity and that the administrative entity may collect fees for the health care bundle. This paragraph also discloses that the administrative entity may collect information on actual health care bundles for the database including diagnosis, surgical procedures, postoperative courses, medical history information, and personal demographic data. There is no disclosure in this paragraph regarding actuating one or more diagnostic devices nor of 10 Appeal2016-008142 Application 13/401,681 actuating the diagnostic devices in response to the unique case identifier. Table 1 is described as a sample of potential procedural codes which may be bundled into case or packaged rules. Invasive diagnostic is listed as one of the procedures. However, nothing in this Table relates to actuating diagnostic devices much less of actuating diagnostic devices in response to the unique case identifier. We will sustain the Examiner's 35 U.S.C. §112, first paragraph because, as we have explained above, we agree with the Examiner that the Specification does not disclose actuating one or more diagnostic devices in response to the unique case identifier as required by claim 10. We will also sustain this rejection as it is directed to claims 11-17 which depend from claim 1 0 for the same reason. In regard to claim 18, the Examiner additionally determines that there is no support in the Appellants' Specification for the recitation of migrating a first subset of data fields without user interaction using a non-HIPAA compliant communications process. Final Act. 16. Appellants direct our attention to paragraph 94 of the Specification that discloses that "the submitted charges are automatically migrated to the BMSO claims processing system" for teaching this subject matter. We agree with the Examiner that although this portion of the Specification discloses automatically migrating charges, it does not necessarily show that the Appellants had possession of migrating charges without user interaction since we agree with the finding of the Examiner that automatic migration may still involve some form of user interaction. We also agree with the Examiner that the disclosure in the Specification at paragraph 81 of sending claims electronically using a HIP AA compliant electronic data interchange 11 Appeal2016-008142 Application 13/401,681 format does not establish that the Appellants had possession of the recitation in claim 18 of migrating data fields using a non-HIP AA compliant communications process. Appellants argue that because the Specification does not disclose that the charges are sent with a HIP AA compliant communications process, it establishes that the Appellants had possession of sending charges using a non-HIP AA compliant communications process. Appellants direct our attention to Figure 7 which depicts communication being sent via email, phone/fax which are non-HIPAA compliant modes of communication. We agree with the Examiner that these forms of communication are not inherently non-HIP AA compliant forms of communication as HIP AA does not prohibit sending information through these communication mechanisms. We also note that claim 18, by virtue of its dependence from claim 1, also lacks written description support for actuating a diagnosis device in response to the unique case identifier. In view of the foregoing, we will sustain the Examiner's rejection of claim 18. We will also sustain the rejection as it is directed to claims 28, 30, and 31 because each of these claims also recites migrating data using a non- HIP AA compliant process. Rejections under 35 U.S.C. § 103 We will not sustain these rejections because we agree with the Appellants that the prior art does not disclose a plurality of prospective fund transfers. The Examiner relies on Spiro at column 2, lines 47-67, column 3, lines 4-7, and column 7, lines 34-48 for teaching this subject matter. Final Act. 21. Column 2, lines 4 7-67 of Spiro teaches that members of the health 12 Appeal2016-008142 Application 13/401,681 plan fund a diagnostic imaging provider account through fixed payments per month. The diagnostic imaging provider is credited with an episode of care for all imaging studies performed on a given member within the sixty-day period. This disclosure indicates that while the members may pay a prospective monthly payment, the providers are paid for past services. Column 3, lines 4-7 teaches that each provider's percentage of the total intensity adjusted episode of care is calculated monthly, and each provider is paid from the funds collected from the members on a monthly basis. The intensity is calculated based on the complexity of each imaging study and is weighed by assigning relative value units to each of the studies. Thus, a provider who performs more complicated or more in depth studies is given greater intensity than those performing simple studies. This portion of Spiro also teaches that providers are paid for services provided in the past not prospectively. Column 7, lines 34-48 also discloses that providers are paid based on past services by teaching that each provider gets paid by the pool group he is in, the episodes of care done by the entire pool, and those done by him. In view of the foregoing, we will not sustain this rejection of the Examiner as it is directed to claim 10. We will also not sustain this rejection as it is directed to claims 11-17 and 20-27 because each of these claims requires prospective fund transfers. We will also not sustain the rejection of claim 18 because claim 18 requires prospective fund transfers and the Examiner relies on Spiro for teaching this subject matter. We will not sustain the rejection of claim 29 for the same reason. 13 Appeal2016-008142 Application 13/401,681 In the rejections of claims 20-28, 30, and 31, the Examiner relies on Mohlenbrock at column 6, lines 15-23 and 44-49 for teaching prospective funds transfers. Final Act. 33, 47-48. We have examined these portions of Mohlenbrock and agree with the Appellants that the Mohlenbrock system determines the amount of compensation that is given a hospital for treating a patient whose diagnosis and/or procedures cause a particular Diagnosis Related Group to be designated. There is no disclosure in this portion of Mohlenbrock of making a payment in advance of treatment. Therefore, we will not sustain these rejections as well. DECISION We affirm the Examiner's rejection of claims 10-18 and 2 0-31 under 35 U.S.C. § 101. We affirm the Examiner's rejection of claims 10-18, 28, 30, and 31 under 35 U.S.C. § 112, first paragraph. We do not affirm the Examiner's rejection of claims 10-18 and 20-31 under 35 U.S.C. §103(a). TIME PERIOD No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § l .136(a). See 37 C.F.R. § l.136(a)(l) (2009). ORDER AFFIRMED 14 Copy with citationCopy as parenthetical citation