Ex Parte Prasad et al

Patent Trial and Appeal Board

Jul 23, 2018

12581490 (P.T.A.B. Jul. 23, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/581,490 10/19/2009
826 7590 07/25/2018
ALSTON & BIRD LLP
BANK OF AMERICA PLAZA
101 SOUTH TRYON STREET, SUITE 4000
CHARLOTTE, NC 28280-4000
FIRST NAMED INVENTOR
Badri N. Prasad
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.
054642/451940 2691
EXAMINER
NG, JONATHAN K
ART UNIT PAPER NUMBER
3686
NOTIFICATION DATE DELIVERY MODE
07/25/2018 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):
usptomail@alston.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte BADRI N. PRASAD, ARCHELLE GEORGIOU,
and GERALD L. LUTGEN
Appeal2017-001812
Application 12/581,490
Technology Center 3600
Before BIBHU R. MOHANTY, KENNETH G. SCHOPPER, and
AMEE A. SHAH, Administrative Patent Judges.
MOHANTY, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
The Appellants seek our review under 35 U.S.C. § 134(a) of the final
rejection of claims 31-36, which are all the claims pending in the
application. We have jurisdiction under 35 U.S.C. § 6(b ).
SUMMARY OF THE DECISION
We AFFIRM.
THE INVENTION
The Appellants' claimed invention is directed to a method for
identifying high-risk members in a healthcare plan (Spec., page 1, lines 9
Appeal2017-001812
Application 12/581,490
and 10). Claim 31, reproduced below, is representative of the subject matter
on appeal.
31. A computer-implemented method for high risk
member identification, the method comprising:
identifying, by one or more processors executing a software
application, a plurality of members based at least in part on selection
criteria;
determining, by the one or more processors executing the
software application, a relative risk value for each member of the
plurality of members, each relative risk value (a) indicative of the
corresponding member's predicted future healthcare resource
utilization and (b) determined by dividing the corresponding
member's predicted future healthcare resource utilization by an
average healthcare utilization for the plurality of members;
identifying, by the one or more processors executing the
software application, a subset of members from the plurality of
member with members relative risk values that satisfy a threshold
value of relative risk, thereby identifying a subset of the plurality of
members for potential intervention;
after identifying the subset of members, extracting, by the one or more
processors executing the software application, healthcare claim data
for each of the subset members, wherein (a) the extracted healthcare
claim data for each of the subset of members comprises medical
diagnoses and healthcare utilization patterns for the corresponding
subset member and (b) the medical diagnoses and healthcare
utilization patterns for each of the subset of members are derived from
physician claims, facility claims, and pharmacy claims associated with
the corresponding subset member during a selected period of time;
analyzing, by the one or more processors executing the software
application, for each of the subset of members, the corresponding
member's extracted healthcare claim data to ascertain the presence of
each of a plurality of intervenability factors, wherein the
intervenability factors are identified based at least in part on the
corresponding member's extracted healthcare claim data that are
amenable to intervention;
assigning, by the one or more processors executing the software
application, each of the subset of members a number of intervenability
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Application 12/581,490
factors representing a total number of the intervenability factors
present in the corresponding subset member's extracted healthcare
claim data;
assigning, by the one or more processors executing the software
application, a relative risk ranking to each of the subset members
based at least in part on each of the assigned number of intervenability
factors;
identifying, by the one or more processors executing the
software application, a set of the subset of members based on one or
more criteria comprising the relative risk ranking of each of the subset
members; and
providing for display (a) a listing of the set of subset members
ordered by relative risk ranking and (b) the relative risk value for each
of the set of subset of members.
THE REJECTION
The following rejection is before us for review:
Claims 31-36 are rejected under 35 U.S.C. § 101 as being directed to
non-statutory subject matter.
FINDINGS OF FACT
We have determined that the findings of fact in the Analysis section
below are supported at least by a preponderance of the evidence 1.
1 See Ethicon, Inc. v. Quigg, 849 F.2d 1422, 1427 (Fed. Cir. 1988)
( explaining the general evidentiary standard for proceedings before the
Patent Office).
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ANALYSIS
Rejection under 35 USC§ 101
The Appellants argue that the rejection of claim 31 is improper
because the claim is not directed to an abstract idea (App. Br. 4--17, Reply
Br. 1-13). The Appellants also argue that the claim is "significantly more"
than the alleged abstract idea (App. Br. 17-30).
In contrast, the Examiner has determined that the rejection is proper
(Final Act. 2---6; Ans. 2--4).
We agree with the Examiner. Under 35 U.S.C. § 101, 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 an implicit exception: "laws of nature,
natural phenomena, and abstract ideas" are not patentable. See, e.g., Alice
Corp. Pty Ltd. v. CLS Bank Int'!, 134 S. Ct. 2347, 2354 (2014).
In judging whether claim 31 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, 70-71 (2012)).
In accordance with that framework, we first determine whether the claim is
"directed to" a patent-ineligible abstract idea. If so, we then consider the
elements of the claim both individually and as "an ordered combination" to
determine whether the additional elements "transform the nature of the
claim" into a patent-eligible application of the abstract idea. Id. 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. The Court also stated that "the mere recitation of a
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Application 12/581,490
generic computer cannot transform a patent-ineligible abstract idea into a
patent-eligible invention." Id at 2358.
Here, we determine that the claim is directed to the concept of
identifying high risk members in a group. This is a method of organizing
human activities or fundamental economic practice long prevalent in our
system of commerce, and is an abstract idea beyond the scope of§ 101. The
Specification at page 1, lines 9 and 10 states that the invention is directed to
a method for identifying high-risk members in a healthcare plan. The
preamble of the claim states the claim is directed to a "method for high risk
member identification." The claim is similar to Electric Power Group, LLC
v. Alstom S.A., 830 F.3d 1350, 1353 (Fed. Cir. 2016) where collecting
information, analyzing it, and displaying results from certain results of the
collection and analysis was held to be an abstract idea.
We next consider whether additional elements of the claim, both
individually and as an ordered combination, transform the nature of the
claim into a patent-eligible application of the abstract idea, e.g., whether the
claim does more than simply instruct the practitioner to implement the
abstract idea using generic computer components. We conclude that it does
not.
Considering each of the claim elements in tum, the function
performed by the computer system at each step of the process is purely
conventional. Each step of the claimed method does no more than require a
generic computer to perform a generic computer function.
The Appellants have argued at page 29 of the Appeal Brief that the
claim is "rooted in computer technology." We disagree and, rather, find the
claim directed to the abstract concept of identifying high risk members in a
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group and that the claim language fails to transform this abstract nature of
the claim. The Appellants in the Reply Brief have also cited to Enfzsh, LLC
v. Microsoft Corp., 822 F.3d 1327 (Fed. Cir. 2016) to show that the claim is
not abstract, but the claims in that case were not similar in scope to those
here and in contrast, were directed to a self-referential data table. The
Appellants have also cited to McRO, but the claims in that case are
distinguished from this case in being directed to rules for lip sync and facial
expression animation.
For these above reasons, the rejection of claim 31 is sustained. The
Appellants have provided the same arguments for the remaining claims
which are directed to similar subject matter and the rejection of these claims
is sustained as well.
CONCLUSIONS OF LAW
We conclude that Appellants have not shown that the Examiner erred
in rejecting claims 31-36 are rejected under 35 U.S.C. § 101.
DECISION
The Examiner's rejection of claims 31-36 is sustained.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED
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