Ex Parte Satlow

Board of Patent Appeals and Interferences

Aug 31, 2010

10078780 (B.P.A.I. Aug. 31, 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.
10/078,780 02/19/2002 Marcia Satlow HARTFORD-5 5073
45722 7590 09/01/2010
Howard IP Law Group
P.O. Box 226
Fort Washington, PA 19034
EXAMINER
PHAM, KHANH B
ART UNIT PAPER NUMBER
2166
MAIL DATE DELIVERY MODE
09/01/2010 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
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte MARCIA SATLOW
____________

Appeal 2009-004500
Application 10/078,780
Technology Center 2100
____________

Before JOHN A. JEFFERY, JOSEPH L. DIXON, and
LANCE LEONARD BARRY, Administrative Patent Judges.

DIXON, 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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Application 10/078,780

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The Appellant appeals from the Final Rejection of claims 1, 3-17, 23-
26, 29, and 36 under 35 U.S.C. § 134(a). The claims 2, 18-22, 27, 28 and
30-35 have been canceled. We have jurisdiction under 35 U.S.C. § 6(b).
We Affirm-In-Part.

I. STATEMENT OF THE CASE
The Invention
The invention at issue on appeal relates to a method and system for
gathering, collating, and sorting information items among a plurality of
distributed databases by creating an intermediate database obtaining
information items related to physician claim data, insurance payment data,
and insurance providers (Spec. 2).

The Illustrative Claims
Claims 1 and 36, illustrative claims, read as follows:
1. A method for gathering, collating and sorting information
items distributed among a plurality of databases containing
information items regarding physician treatment/billing claims,
insurance payments, and provider/patient relations over at least
one communication network, said method comprising the steps
of:

(a) creating an intermediate data base of said physician
treatment/billing claim data, insurance payment data, and
insurance provider data, wherein information items among said
databases are cross-referenced with regard to at least one
common information item;
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(b) filtering said intermediate data base using at least one
selected information item contained in said intermediate data
base to create at least one file containing cross-referenced data
items relating to said at least one selected information item;

(c) reporting the cross-referenced data items;

(d) filtering the cross-referenced data items in said at least one
created file to create at least one file containing additional
cross-referenced data items relating to at least one additional
information item;

(e) reporting the additional cross-referenced data items; and

(f) repeating steps (d) and (e) until all gathering, collating and
sorting information items is complete.

36. A method for processing physician related insurance claims
comprising:
loading data indicative of physician claims, insurance payments
and insurance providers from a plurality of databases;
cross-referencing the loaded data;
filtering the loaded data using a first filtering criteria to identify
information items matching the first filtering criteria;
storing the information items-matching the first filtering criteria
of the loaded data, and data that was cross-referenced to the
information items matching the first filtering criteria of the
loaded data;
iteratively filtering the stored information items matching the
first filtering criteria of the loaded data and the data that was
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cross-referenced to the information items matching
the first filtering criteria of the loaded data using additional
filtering criteria;
storing the iteratively filtered information items of the loaded
data; and
reporting the iteratively filtered information items of the loaded
data.
The References
The Examiner relies on the following references as evidence:
Schurenberg US 2002/0007284 A1 Jan. 17, 2002
Chapman US 6,879,959 B1 Apr. 12, 2005

The Rejections
The following rejections are before us for review:
Claims 1, 3-17, 23-26, and 29 stand rejected under 35 U.S.C. §
102(e) as being anticipated by Schurenberg.
Claim 36 stands rejected under 35 U.S.C. § 102(e) as being
anticipated by Chapman.
II. ISSUES
Has the Examiner erred in finding that Schurenberg discloses
“creating an intermediate data base of said physician treatment/billing claim
data, insurance payment data, and insurance provider data, wherein
information items among said databases are cross-referenced with regard to
at least one common information item” as recited in claim 1?
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Has the Examiner erred in finding that Chapman discloses “loading
data indicative of physician claims, insurance payments and insurance
providers from a plurality of databases[, and] . . . iteratively filtering the
stored information items matching the first filtering criteria of the loaded
data” as recited in claim 36?

III. PRINCIPLES OF LAW
Claim Interpretation
The claim construction analysis begins with the words of the claim.
See Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir.
1996). Absent an express intent to impart a novel meaning to a claim term,
the words take on the ordinary and customary meanings attributed to them
by those of ordinary skill in the art. Brookhill-Wilk 1, LLC. v. Intuitive
Surgical, Inc., 334 F.3d 1294, 1298 (Fed. Cir. 2003) (citation omitted).
“Giving claims their broadest reasonable construction ‘serves the
public interest by reducing the possibility that claims, finally allowed, will
be given broader scope than is justified.’” In re Am. Acad. of Sci. Tech Cent.,
367 F.3d 1359, 1364 (Fed. Cir. 2004) (quoting In re Yamamoto, 740 F.2d
1569, 1571 (Fed. Cir. 1984)). “An essential purpose of patent examination
is to fashion claims that are precise, clear, correct, and unambiguous. Only
in this way can uncertainties of claim scope be removed, as much as possible,
during the administrative process.” In re Zletz, 893 F.2d 319, 322 (Fed. Cir.
1989). “Construing claims broadly during prosecution is not unfair to the
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applicant . . . because the applicant has the opportunity to amend the claims
to obtain more precise claim coverage.” Am. Acad., 367 F.3d at 1364
(citation omitted).

Anticipation
“[A]nticipation of a claim under § 102 can be found only if the
prior art reference discloses every element of the claim . . . .” In re King,
801 F.2d 1324, 1326 (Fed. Cir. 1986) (citing Lindemann Maschinenfabrik
GMBH v. American Hoist & Derrick Co., 730 F.2d 1452, 1457 (Fed. Cir.
1984)). “[A]bsence from the reference of any claimed element negates
anticipation.” Kloster Speedsteel AB v. Crucible, Inc., 793 F.2d 1565,
1571 (Fed. Cir. 1986), overruled on other grounds by Knorr-Bremse
Systeme Fuer Nutzfahrzeuge GmbH v. Dana Corp., 383 F.3d 1337
(Fed.Cir. 2004). In rejecting claims under 35 U.S.C. § 102, “[a] single
prior art reference that discloses, either expressly or inherently, each
limitation of a claim invalidates that claim by anticipation.” Perricone v.
Medicis Pharm. Corp., 432 F.3d 1368, 1375 (Fed. Cir. 2005) (citation
omitted).

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IV. FINDINGS OF FACT
The following findings of fact (FFs) are supported by a preponderance
of the evidence.
Schurenberg
1. Schurenberg discloses a Global Master Patient Index (GMPI) that is
used as an index for multiple sites, facilities, businesses, or other
organizations ([0013]). GMPI performs following functions such as locating
patient records or duplicate records for a selected patient, printing a selected
patient record, reconciling potential duplicated patient records, retrieving a
patient’s reconciliation record, maintaining a persistent relationship between
patient records in the GMPI, and maintaining a reconciliation audit trail
([0025]).
2. Schurenberg further discloses that the GMPI interconnects various
database as an interface to increase the efficiency of healthcare business by
detecting the existence of and avoid the creation of duplicate patient records
([0047]-[0050]).
Chapman
3. Chapman discloses a method and computer system of adjudicating a
medical claim for checking the eligibility of a patient of a medical plan
offered by a medical plan provider (insurance company) in real time by
comparing 1) the patient’s medical history to the pending medical claim; 2)
the medical contract between the medical service provider (physician) and
medical plan provider (insurance company) for the proposed medical
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procedure, e.g., customary or fixed amount fees paid by the medical plan
provider, fixed percentage customary fee paid by the medical plan provider,
or predetermined schedule fee paid by the medical plan provider; and 3) the
benefit of the patient entitled in the medical plan (Abstract, col. 6, ll. 6-52;
Fig. 2).
4. Chapman further teaches that “the components of the medical claim
are compared in real time to the requirements and conditions of the first and
second claims . . . after each component is compared in step 340 and
before comparing the next component such that steps 340 and 350 are
repeated several times.” (col. 8, ll. 49-67; Fig. 3) (emphasis added).

V. ANALYSIS
The Appellant has the opportunity on appeal to the Board of Patent
Appeals and Interferences (BPAI) to demonstrate error in the Examiner’s
position. See In re Kahn, 441 F.3d 977, 985-86 (Fed. Cir. 2006) (citing In re
Rouffet, 149 F.3d 1350, 1355 (Fed. Cir. 1998).The Examiner sets forth a
detailed explanation of a reasoned conclusion of unpatentability in the
Examiner’s Answer. Therefore, we look to Appellant’s Briefs to show error
therein. Id.

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Grouping of Claims
The Appellant has elected to argue claims 1, 3-17, 23-26, and 29
together as a group for Schurenberg reference (App. Br. 18). Therefore,
we select independent claim 1 as the representative claim for this group,
and we will address the Appellant’s arguments with respect thereto. 37
C.F.R. § 41.37 (c)(1)(vii). See In re Nielson, 816 F.2d 1567, 1572 (Fed.
Cir. 1987).
35 U.S.C. § 102 rejections
With respect to independent claim 1, the Appellant contends that the
Examiner’s § 102(e) rejection is improper because Schurenberg does not
disclose “creating an intermediate database.” (Reply Br. 5). According to
the Appellant, the GMPI disclosed in Schurenberg is merely an index
assisting matching up patient records by establishing various levels of links
between records. However, the GMPI does not duplicate the
information/records stored in databases 64A, 64B, 64C, 64D, and 64E,
which is the basic function of a database (Reply Br. 6). Therefore, the GMPI
is not an intermediate database (Id.).
We agree with the Appellant’s contentions. We find that Schurenberg
teaches that the GMPI has various functions to treat the records in the
distributed databases (FF 1). However, Schurenberg does not specify that
the GMPI is a database. Nor does Schurenberg specify that the GMPI stores
any information record as a database. Furthermore, we find that
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Schurenberg merely describes the GMPI as an interface that is
interconnected with databases (FF 2). Thus, we conclude that the GMPI is
not an “intermediate database” as alleged by the Examiner (Ans. 14) and
required by independent claim 1.
Because we agree with at least one of the Appellant’s contentions, we
find that the Examiner has not made a requisite showing of anticipation as
required for the invention as recited in claim 1 by Schurenberg. The
rejection of dependent claims 3-16 contains the same deficiency. Appellant,
thus, has demonstrated error in the Examiner’s conclusion of anticipation for
the subject matter of claims 1 and 3-16.
The independent claim 17 contains similar limitations to those found
in independent claim 1. Appellant presents similar arguments as set forth
with respect to independent claim 1 in response to the rejection of
independent claims 17 (App. Br. 16).
As we found above in our discussion with respect to independent
claim 1, we find that Appellant has demonstrated error in the Examiner’s
conclusion of anticipation for the subject matter of independent claim 17.
The rejection of dependent claims 23-26 and 29 contains the same
deficiency.
We, therefore, cannot sustain the rejection of claims 1, 3-17, 23-26,
and 29, under 35 U.S.C. § 102(e).
With respect to claim 36, we start our review by first determining the
appropriate scope of the argued claim limitations in the independent claim.
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First, the claim itself does not define the argued terms. Therefore, we
have an obligation to broadly yet reasonably construe the terms.
Furthermore, in light of the breadth of the Appellant’s Specification,
we broadly but reasonably construe the claimed “physician claim” as any
medical claim from a physician or any medical provider about his/her
service. We also broadly but reasonably construe the claimed “insurance
payment” as any insurance payment paid by recipient of medical service
including lump sum payment, premium, or fee. We also broadly but
reasonably construe the claimed “insurance provider” as any insurance
company or medical plan provider. We further broadly but reasonably
construe the claimed “cross-referencing”2 as referring “from one passage or
part to another.” We also find that these limitations/labels are directed to
non-functional descriptive material describing the data that does not
functionally modify the operation of the claimed invention. See Ex parte
Curry, 84 USPQ2d 1272, 1274 (BPAI 2005) (informative), aff’d, No. 06-
1003 (Fed. Cir. June 12, 2006) (Rule 36) (“wellness-related” data in
databases and communicated on the distributed network did not functionally
change either the data storage system or the communication system used in
the claimed method).
We now address the merits of the Appellant’s contentions under our
claim construction.

2 See WEBSTER’S II New Riverside University Dictionary (1984 ed.), at
330 (“cross-referencing”).
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The Appellant contends that there is no indication of loading at least
insurance payments in the cited paragraphs of Chapman and the payments
relate to a contract and a completed or proposed medical procedure, and not
to previously-made payments (Reply. Br. 8). The Appellant also contends
that Chapman fails to teach “cross-referencing the loaded data” because
Chapman only teaches comparing “items of data already known to be related
to the same patient,” which is not cross-referencing of loaded data (Id. at 9).
The Appellant further contends that Chapman fails to teach claimed
“iteratively filtering” the stored information items (Id. at 10).
We disagree with the Appellant’s contentions. First, Chapman clearly
teaches that a computer system for evaluating an eligibility of a patient for a
medical plan provided by an insurance company in order to approve the
request in real time by comparing various records such as medical history
and benefit of the patient and payments under the contract between
physician and insurance plan provider (FF 3). The fee paid by medical plan
provider is clearly qualified as insurance payment (FF 3). All the records
including insurance payments must be loaded in that computer system in
order to compare. Thus, we conclude that Chapman indeed teaches the
limitation of loading the insurance payments (FF 3). Furthermore, we find
that comparing the information items such as insurance payments, medical
claim of a patient, and the medical claim history of the patient is inevitable
to refer one part of record to another part of the record or another record of
the information items (FF 3). Thus, under our claim construction, it is the
action of cross-referencing of the loaded data items. Finally, regarding
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“iteratively filtering” argued by the Appellant, we find that comparing the
component of a medical claim to the predetermined requirements and
conditions to get a score is a action of “filtering” the medical claim, and
repeatedly comparing the components with the predetermined requirements
and conditions is, under our claim construction, “iteratively filtering” (FF 4).
Therefore, we conclude that the teachings of Chapman are read on the
claimed limitations of claim 1.
Accordingly, we sustain the Examiner’s rejection of representative
claim 1 as being anticipated by Chapman under 35 U.S.C. § 102.
VI. CONCLUSION
We conclude that the Examiner has erred in finding that Schurenberg
discloses “creating an intermediate data base of said physician
treatment/billing claim data, insurance payment data, and insurance provider
data, wherein information items among said databases are cross-referenced
with regard to at least one common information item,” as recited in claim 1.
We also conclude that the Examiner has not erred in finding that
Chapman discloses “loading data indicative of physician claims, insurance
payments and insurance providers from a plurality of databases, [and ] . . .
iteratively filtering the stored information items matching the first filtering
criteria of the loaded data,” as recited in claim 36
VII. ORDER
We reverse the anticipation rejection of claims 1, 3-17, 23-26, and 29
under 35 U.S.C. § 102 (e).
We affirm the anticipation rejection of claim 36 under 35 U.S.C.
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§ 102 (e).
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136 (a). See 37 C.F.R.
§ 1.136(a)(1)(iv).
AFFIRMED in PART

erc

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