Ex Parte Logue

Board of Patent Appeals and Interferences

Jun 23, 2011

11013927 (B.P.A.I. Jun. 23, 2011)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
11/013,927 12/17/2004 Joan Logue 067267-0104 8154
22428 7590 06/24/2011
FOLEY AND LARDNER LLP
SUITE 500
3000 K STREET NW
WASHINGTON, DC 20007
EXAMINER
REYES, REGINALD R
ART UNIT PAPER NUMBER
3626
MAIL DATE DELIVERY MODE
06/24/2011 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte JOAN LOGUE
____________

Appeal 2010-004958
Application 11/013,927
Technology Center 3600
____________

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

FISCHETTI, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2010-004958
Application 11/013,927

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STATEMENT OF THE CASE
Appellant seeks our review under 35 U.S.C. § 134 of the Examiner’s final
rejection of claims 1-24. We have jurisdiction under 35 U.S.C. § 6(b) (2002).
A hearing was held on June 7, 2011.

We AFFIRM-IN-PART.

Claim 1, reproduced below, is representative of the subject matter on appeal.

1. A computer implemented method of analyzing third party payments
for provider services, comprising the steps of:
processing, by a computing system, third party payment information
data;
processing, by the computing system, provider services billing data
provided to the third party to request payment;
automatically validating, by the computing system, provider services
billing data against other provider services data including verifying that
all billed services indicated in the billing data match actual services
performed indicated in the other provider services data;
determining, by the computing system, whether any discrepancies exist
between the third party payment information data, the provider services
billing data, and the other provider services data;
generating, by the computing system based on an output of the
determining step, a report listing discrepancies between the third party
payment information data, the provider services billing data, and the
other provider services data; and
outputting, by the computing system, the report for review by at least one
person.

Appeal 2010-004958
Application 11/013,927

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The Examiner relies upon the following as evidence of unpatentability:
Walsh US 6,464,136 B2 Oct. 15, 2002
Lindsay US 6,526,125 B1 Feb. 25, 2003
Walsh US 6,637649 B2 Oct. 28, 2003
Forman US 6,826, 536 B1 Nov. 30, 2004

The Examiner rejected claims 1-9 and 12-20 under 35 U.S.C. § 103(a) as
being unpatentable over U.S. Patent No. 6,655,583 to Walsh et al. in view of U.S.
Patent No. 6,637,649 to Walsh.

The Examiner rejected claims 10 and 11 under 35 U.S.C. § 103(a) as being
unpatentable over Walsh '583 in view of Walsh '649 and U.S. Patent No. 6,826,536
to Forman.

The Examiner rejected claims 21-24 under 35 U.S.C. § 103(a) as being
unpatentable over Walsh '583 in view of Walsh '649 and U.S. Patent No. 6,526,125
to Lindsay.
ANALYSIS
Each of independent claims 1 and 20 require determining, by the computing
system, whether any discrepancies exist between the third party payment
information data, the provider services billing data, and the other provider
services data.
The Examiner found that:

Appeal 2010-004958
Application 11/013,927

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Walsh (U.S. 6,637,649) teaches determining, by the computing
system, whether any discrepancies exist between the third party
payment information data, the provider services billing data, and the
other provider services data (see for example Walsh column 16 lines
34-41); generating, by the computing system…
(Answer 4).
We find that Walsh ‘649 only discloses a verification process such that:
Technologist B logs onto the VEEBAT verification
workstation 20 by using the card swipe reader 23 located
on the VEEBAT verification workstation 20 that uses the
VEEBAT Verification Function (block 64). If
Technologist B is unknown or does not have privilege to
apply treatment, then the Verification Function will
display a message on the VEEBAT verification
workstation 20 indicating the discrepancy.
(Col. 16, ll. 34-41).
We thus disagree with the Examiner because this section of Walsh ‘649 only
discloses that the discrepancy which is determined is made against the
Technologist based on whether he/she has privileges to apply a treatment. In
contrast, independent claims 1 and 20 require a determination to occur as between
three types of data namely, between the third party payment information data, the
provider services billing data, and the other provider services data. We do not
find, and the Examiner has not explained, how the verification process in Walsh
‘649 involves a determination against three different types of data as required by
the claims. Accordingly, we will not sustain the rejection of independent claims 1
and 20.
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Application 11/013,927

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Since claims 2-11 and 21-24 depend from claims 1 and 20, and since we
cannot sustain the rejection of the independent claims, the rejection of the
dependent claims likewise cannot be sustained.
Independent claim 12 requires a validation unit the function of which is
recited in terms of functional language, i.e., “unit that is….”
That is, claim 12 recites in pertinent part
a validation unit, connected to the input unit, that
determines whether any discrepancies exist between the
third party payment information data, other provider
services billing data, and the provider services billing
data so as to validate the provider services billing data
against the third party payment information data and the
other provider services data including verifying that all
billed services indicated in the billing data match actual
services performed indicated in the other provider
services data…
As with functional language, binding precedent allows the Board to find in
the prior art a feature which is capable of performing a function recited in the
claims. See In re Schreiber, 128 F.3d 1473, 1479 (Fed. Cir.1997). As such, we
find that the (VEEBAT) workstation 20 disclosed by Walsh ‘649, responsible for
determining discrepancies, see supra, is capable of performing the recited
determining steps involving three different types of data because Walsh‘649
explicitly discloses that the “VEEBAT process may take various paths based on its
configuration” and that “[a]ny combination of parameters may be configured”,
specifically, on four parameters: “the technologist, the patient, the current day, and
the treatment” (col. 12, ll. 50-67).
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Application 11/013,927

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Since we further find that the content of the third party payment information
data, the provider services billing data, and the other provider services data
constitutes “non-functional descriptive material”, the disclosure in Walsh ‘649 of
data types non-similar to those recited in the claims does not bear on the patentable
weight of the claims. That is, since the claimed third party payment information
data, the provider services billing data, and the other provider services data do not
drive a substantive downstream function, the data is not functionally related to the
computer, and cannot distinguish the invention from the prior art in terms of
patentability. See In re Lowry, 32 F.3d 1579, 1582-83 (Fed. Cir. 1994); In re Ngai,
367 F.3d 1336, 1338 (Fed. Cir. 2004).
Regarding Appellant’s separate arguments to claims 13, 15, 16, and 17, we
preliminarily find that these claims 1) likewise recite the function of the validation
unit using functional language, and thus can be met by prior art capable of
performing the required function, and 2) the content of the data recited in these
claims constitutes “non-functional descriptive material”.
Thus, concerning claim 13, “the technologist, the patient, the current day,
and the treatment” parameters disclosed by Walsh can be read as “external”
relative to the other data parameters.
Claims 15, 16 and 17, all deal with treating different types of data the
content of which we will not consider to patentably distinguish the claims over the
disclosure in Walsh ‘649 for the same reasons discussed above.
We also affirm the rejection of dependent claims 14 and 18 since Appellant
has not challenged such with any reasonable specificity (see In re Nielson, 816
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Application 11/013,927

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F.2d 1567 (Fed. Cir. 1987)).
However, with regard to claim 19, we do not find where Walsh discloses a
feature of the (VEEBAT) workstation 20 which is capable of random selection of
data, and therefore we will not sustain the rejection of claim 19.

DECISION
The decision of the Examiner to reject claims 12-18 is AFFIRMED.
The decision of the Examiner to reject claims 1-11, and 19-24 is REVERSED.

AFFIRMED-IN-PART

MP