Ex Parte Lencki et al

Board of Patent Appeals and Interferences

Dec 20, 2010

09748359 (B.P.A.I. Dec. 20, 2010)

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.
09/748,359 12/26/2000 Donna K. Lencki 051078-0020US 4094
28977 7590 12/20/2010
MORGAN, LEWIS & BOCKIUS LLP
1701 MARKET STREET
PHILADELPHIA, PA 19103-2921
EXAMINER
PORTER, RACHEL L
ART UNIT PAPER NUMBER
3626
MAIL DATE DELIVERY MODE
12/20/2010 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 1
___________ 2
3
BEFORE THE BOARD OF PATENT APPEALS 4
AND INTERFERENCES 5
___________ 6
7
Ex parte DONNA K. LENCKI, 8
CHRIS HENCHEY, and 9
PATRICK B. MILLER 10
___________ 11
12
Appeal 2010-010104 13
Application 09/748,359 14
Technology Center 3600 15
___________ 16
17
Before MURRIEL E. CRAWFORD, ANTON W. FETTING, and 18
JOSEPH A. FISCHETTI, Administrative Patent Judges. 19
FETTING, Administrative Patent Judge.20
DECISION ON REQUEST FOR REHEARING121

1 The two-month time period for filing an appeal or commencing a civil action, as
recited in 37 C.F.R. § 1.304, or for filing a request for rehearing, as recited in 37
C.F.R. § 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 2010-010104
Application 09/748,359

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STATEMENT OF CASE 1
This is a decision on rehearing in Appeal No. 2010-010104. We have 2
jurisdiction under 35 U.S.C. § 6(b) (2002). 3
Requests for Rehearing are limited to matters misapprehended or overlooked 4
by the Board in rendering the original decision. 37 C.F.R. § 41.52 (2002). 5
ISSUES ON REHEARING 6
Appellants raise the issue of whether a plurality of line items is disclosed or 7
otherwise predictable in the Request for Rehearing. 8
ANALYSIS 9
We found in our decision that claims 1-4, 6-12, 15-17, 20-31, 34-36, 39-40, 42-10
48, 51, 70-73, 75-79, and 82 were unpatentable under 35 U.S.C. § 103(a) over 11
Wizig and Warady and claims 14, 18-19, 33, 37-38, 50, 81, and 106 were 12
unpatentable under 35 U.S.C. § 103(a) over Wizig, Warady, and Spurgeon. 13
(Decision 11). 14
The Appellants argue that Warady does not disclose displaying a plurality of 15
different line items (Request 3). We adopted the findings and analysis in the 16
Examiner’s answer to the arguments set forth in the Appeal Brief (Decision 9) and 17
the Examiner found that the combination of the art described this limitation at Ans. 18
30-31. In particular, Warady presents a drawing of a computer display containing 19
a plurality of different health insurance line items in which, for each health 20
insurance benefit option, a line is displayed that shows both the cost of the benefit 21
plan and the out of pocket co-insurance or deductible amount. Decision 6: FF 07. 22
The Appellants argue that Wizig does not show this plurality of line items, 23
whereas it is Warady that describes this. The Appellants then argue one would not 24
Appeal 2010-010104
Application 09/748,359

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format Wizig’s costs with Warady’s line items, but only refer to Wizig rather than 1
Warady to support this argument. It would appear the Appellants are essentially 2
arguing that one of ordinary skill would not have found plural benefits with their 3
attendant benefit and out of pocket costs to be predictable. But Wizig portrays 4
displaying such plural benefit line items each with out of pocket costs. Decision 7: 5
FF 04; see Wizig Figs. 30 and 31. Given that both Wizig and Warady describe the 6
cost of the benefit as well as the out of pocket cost, adding the cost of the benefit to 7
Wizig’s listing, particularly in view of Warady’s display of such, would be 8
predictable to one of ordinary skill. 9
CONCLUSION 10
Nothing in Appellant’s request has convinced us that we have overlooked or 11
misapprehended the plurality of line items as argued by Appellants. Accordingly, 12
we deny the request to reverse out Decision. 13
DECISION 14
To summarize, our decision is as follows: 15
• We have considered the REQUEST FOR REHEARING. 16
• We DENY the request that we reverse the Examiner as to claims 1-4, 6-12, 17
14-31, 33-40, 42-48, 50, 51, 70-73, 75-79, 81, 82, and 106. 18
No time period for taking any subsequent action in connection with this 19
appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. 20
§ 1.136(a)(1)(iv) (2007). 21
22
23
REHEARING DENIED 24
Appeal 2010-010104
Application 09/748,359

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mev 4
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MORGAN, LEWIS & BOCKIUS LLP 7
1701 MARKET STREET 8
PHILADELPHIA PA 19103-2921 9