Ex Parte Mehus et al

Board of Patent Appeals and Interferences

Feb 16, 2011

11395361 (B.P.A.I. Feb. 16, 2011)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte WILLIAM P. MEHUS, JIMMY R. WILLARD,
and PAUL A. WALTHER
____________

Appeal 2010-001377
Application 11/395,361
Technology Center 3600
____________

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

CRAWFORD, Administrative Patent Judge.

DECISION ON APPEAL1

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.
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STATEMENT OF THE CASE
This is an appeal from the final rejection of claims 1-7, 9-20, and 22-
24. We have jurisdiction to review the case under 35 U.S.C. §§ 134 and 6
(2002).
The claimed invention is generally directed to systems and methods
for use in benefit planning, including providing terms for a number of
benefit plans available to a potential participant, receiving an estimate of
benefits to be used by the potential participant, and displaying together an
estimate of expenses to be incurred by the potential participant under each of
the benefit plans based on the terms and the estimate of benefits to be used
(Spec. Abstr.). Claim 1, reproduced below, is further illustrative of the
claimed subject matter.
1. A computer readable medium including instructions
for causing a device to perform a method, the method
comprising:
providing terms for a number of benefit plans available to
a potential participant;
receiving an estimate of benefits to be used by the
potential participant;
displaying together an estimate of expenses to be
incurred by the potential participant under each of the benefit
plans based on the terms and the estimate of benefits to be used;
determining a recommended level of benefits for the
potential participant from the number of benefit plans, based on
the estimate of benefits to be used by the potential participant;
receiving, while displaying the estimate of expenses, a
selection for enrolling the potential participant into a particular
benefit plan from among the number of benefit plans; and
communicating that the benefit selection fails to meet the
recommended level, in response to receiving from the potential
participant a benefit selection that fails to meet the
recommended level of benefits for the potential participant.

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Claims 1-7, 9-17, and 23-24 stand rejected under 35 U.S.C. § 103(a)
as unpatentable over Schoenbaum (US Pub. 2002/0147617 A1, pub. Oct. 10,
2002) in view of Spears (US Pub. 2002/0128879 A1, pub. Sep. 12, 2002),
and Melnick (US Pub. 2002/0169727 A1, pub. Nov. 14, 2002); and claims
18-20 and 22 stand rejected under 35 U.S.C. § 103(a) as unpatentable over
Schoenbaum in view of Logan (US Pub. 2005/0240613 A1, pub. Oct. 27,
2005) and Spears2.
We REVERSE.

ANALYSIS
We are persuaded that the Examiner erred in asserting that a
combination of Schoenbaum, Spears, Melnick, and Logan renders obvious
“determining a recommended level of benefits for the potential participant
from the number of benefit plans, based on the estimate of benefits to be
used by the potential participant” and “communicating that the benefit
selection fails to meet the recommended level, in response to receiving from
the potential participant a benefit selection that fails to meet the
recommended level of benefits for the potential participant,” as recited in
independent claims 1, 9, 18, and 22 (App. Br. 22-41). The Examiner asserts
that paragraphs [0092] to [0119] of Spears disclose the aforementioned
aspects of independent claims 1, 9, 18, and 22 (Exam’r’s Ans. 4-5, 10-14).
Spears discloses that in a health plan design process, an employee
submits administrative data, and then based on the employer’s basic health
insurance plan, the employee makes desired changes to the employer’s basic

2 The Examiner has withdrawn the rejection of claims 1-7 under 35 U.S.C. §
101 (See Exam’r’s Ans. 2).
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health insurance plan before submitting it for cost appraisal (paras. [0092]-
[0096]; [0106]-[0108]; [0115]-[0116]). From this data, a summary of the
employee designed plan is provided (paras. [0097]-[0099]; [0109]). For due
diligence, the employee can compare the costs of multiple insurers for the
level of benefits requested (paras. [0100]-[0101]; [0111]-[0112]; Fig. 15).
Once satisfied with their preferred level of benefits, costs, and insurance
carrier selection, the employee submits the plan for enrollment and
execution (paras. [0117]-[0119]).
The Examiner has not shown that the cited portions of Spears disclose
“determining a recommended level of benefits for the potential participant
from the number of benefit plans,” as recited in independent claims 1, 9, 18,
and 22. All benefits are chosen by the employee, and thus are not
“recommended.” Even in Figure 15 where multiple insurers are shown, the
level of benefits are the same; it is only the costs that differ. And even if one
were to take the position that the “recommended” level of benefits is the
same as the employee’s desired level of benefits, the Examiner has not
shown that the cited portions of Spears disclose “communicating that the
benefit selection fails to meet the recommended level, in response to
receiving from the potential participant a benefit selection that fails to meet
the recommended level of benefits for the potential participant,” as if the
recommended level of benefits and the employee’s desired level of benefits
are the same, the employee’s desired level of benefits would not fail to meet
the recommended level. See Texas Instr. Inc. v. United States Int'l Trade
Comm'n, 988 F.2d 1165, 1171 (Fed. Cir. 1993) (Claim language cannot be
mere surplusage. An express limitation cannot be read out of the claim).
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The Examiner asserts that Spears discloses “the display of optimal
benefit package option such that the participant is able to see how the
different options compare, thereby communicating to the participant,
feedback on what falls short of the optimal or recommended benefit[s]”
(Exam’r’s Ans. 12). In other words, the Examiner appears to be asserting
that where the costs from multiple insurers from the same level of benefits is
displayed in Spears, whichever option the employee selects is the “optimal”
or “recommended” level of benefits. However, the level of benefits for all
the insurers displayed in Figure 15 are the same, as it is only the cost that
differs. Accordingly, the Examiner is asserting that the employee’s level of
benefits and the recommended level of benefits are the same, which is
impermissible given that the “communicating” step of independent claims 1,
9, 14, and 22 recite that, at least in some scenarios, the two levels of benefits
are different. In Spears, the two levels of benefits are never different, and
thus the “communicating” step would impermissibly be rendered
superfluous. See Unique Concepts, Inc. v. Brown, 939 F.2d 1558, 1563
(Fed. Cir. 1991) (two distinct claim elements should each be given full
effect).
The Examiner further asserts that
[a]ll the information as presented clearly communicates
whether or not the selected benefit option is optimal or at the
recommended level. That the
employee/participant/user/provider is notified before or after a
selection is a design choice. Conceivably, providing such
notification of how the selected choice compares to the
recommended option could be a confirmation mechanism.
Clearly the options generated including the recommended or
optimal option are based on the participant's details, such that
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level of detail including who makes the selection or whether the
comparison is done by providing a comprehensive display of
the possibilities or after a selection is made is a matter of
choice.
(Exam’r’s Ans. 13-14). In our view, Spears does not disclose whether or not
the employee designed level of benefits is optimal or recommended when
only one level of benefits, the employee designed level, is displayed in
Spears. Even under a broadest interpretation of “recommended,” the
selected benefit level and the “recommended” benefit level are always the
same. Accordingly, it is unclear how any “notification of how the selected
choice compares to the recommended option” occurs when Spears only
discloses one benefit level. There is nothing to compare.
We do not sustain the rejections of independent claims 1, 9, 14, and
22, and accordingly we also do not sustain the rejections of dependent
claims 2-7, 10-13, 15-20, and 23-24.

REVERSED

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hh

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