Ex Parte Sultan et al

Patent Trial and Appeal Board

Aug 30, 2018

14277037 (P.T.A.B. Aug. 30, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
14/277,037 05/13/2014
93261 7590 09/04/2018
Bey & Cotropia PLLC (Trizetto Customer Number)
ATTN: Dawn-Marie Bey
213 Bayly Court
Richmond, VA 23229
Jay Sultan
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.
TZG0030-DIV1 7651
EXAMINER
CHNG, JOY POH AI
ART UNIT PAPER NUMBER
3686
NOTIFICATION DATE DELIVERY MODE
09/04/2018 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):
dawnmarie@beycotropia.com
bey _cotropia_docketing@cardinal-ip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JAY SUL TAN, HOW ARD DOWNS, and DALE HO ERLE
Appeal2017-004728
Application 14/277,037
Technology Center 3600
Before JEAN R. HOMERE, KARA L. SZPONDOWSKI, and
MICHAEL J. ENGLE, Administrative Patent Judges.
SZPONDOWSKI, Administrative Patent Judge.
Appeal2017-004728
Application 14/277,037
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's
Final Rejection of claims 1-19. App. Br. 2. 1 We have jurisdiction under 35
U.S.C. § 6(b).
We AFFIRM-IN-PART.
STATEMENT OF THE CASE
Appellants' invention is directed to a system and method for
processing payment bundles. Spec. ,r 2. Claim 1, reproduced below, is
representative of the claimed subject matter:
1. A process implemented by a payment bundling administration
system for creating a patient event, triggering a payment bundle
associated with the created patient event and repricing individual
provider claims in accordance with the payment bundle comprising:
receiving, at the payment bundling administration system,
(a) a first web service call from a first core claims
processing system including a claim reimbursement
pricing request, the claim pricing request including at
least one data set including specific data from an
individual provider claim for reimbursement for at least
one medical service rendered to a patient; and
(b) a second web service call from one of the first core
claims processing system, a second core processing
system and a medical service provider including non-
claim information;
analyzing, by payment bundling logic of the payment bundling
administration system, the at least one data set, non-claim information
1 Although the Examiner's statement of the rejection only accounts for
independent claims 1, 9, and 15 (Final Act. 2-3 ), the Examiner indicates in
the Office Action Summary (PTOL-326) that claims 1-19 are rejected.
2
Appeal2017-004728
Application 14/277,037
or the combination of the at least one data set and non-claim
information to determine if a patient event should be created and
trigger an associated payment bundle;
determining, by the payment bundling logic, that a patient event
should be created;
creating, by the payment bundling logic, a patient event and
triggering the associated payment bundle, wherein the patient event
has an associated patient identification (ID) and includes multiple
individual provider claims for medical services rendered to the patient
over a preliminary date range;
searching, by the payment bundling logic, at least a first
database of the payment bundling administration system to identify
any previously received individual provider claims that are included
in the multiple individual provider claims of the associated patient
event, wherein the search compares a patient ID for each previously
received individual provider claim to the associated patient ID and
compares a date for each previously received individual provider
claim to the preliminary date range;
repricing, by a pricing engine of the payment bundling
administration system, an amount that should have been paid to a
provider of each identified previously received individual provider
claim that matches associated patient ID and occurred within the
preliminary date range in accordance with pre-established rules
defining the associated payment bundle; and
responsive to the first web service call, reporting, by the
payment bundling administration system to the first core claims
processing system, the repriced amount that should have been paid to
providers of each identified previously received individual provider
claims in the associated payment bundle.
REJECTIONS
Claims 1-19 stand rejected under 35 U.S.C. § 101 because the
claimed invention is directed to non-statutory subject matter.
3
Appeal2017-004728
Application 14/277,037
ANALYSIS
Independent Claims 1, 9, and 15
To determine whether a claim is eligible under § 101, "[ w ]e must first
determine whether the claims at issue are directed to a patent-ineligible
concept." Alice Corp. v. CLS Bankint'l, 134 S. Ct. 2347, 2355 (2014). One
must keep in mind that "all inventions at some level embody, use, reflect,
rest upon, or apply laws of nature, natural phenomena, or abstract ideas,"
Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 71
(2012), and "describing the claims at ... a high level of abstraction and
untethered from the language of the claims all but ensures that the
exceptions to§ 101 swallow the rule." Enfzsh, LLC v. Microsoft Corp., 822
F.3d 1327, 1337 (Fed. Cir. 2016). Instead, "the claims are considered in
their entirety to ascertain whether their character as a whole is directed to
excluded subject matter." Internet Patents Corp. v. Active Network, Inc.,
790 F.3d 1343, 1346 (Fed. Cir. 2015). "If the claims are not directed to an
abstract idea [or other patent-ineligible concept], the inquiry ends. If the
claims are 'directed to' an abstract idea, then the inquiry proceeds to the
second step of the Alice framework." McRO, Inc. v. Bandai Namco Games
Am. Inc., 837 F.3d 1299, 1312 (Fed. Cir. 2016).
Appellants argue the Examiner has not met the initial burden because
the Examiner has made "conclusory statements with no authoritative
support." App. Br. 15-16; Reply Br. 3--4. Appellants further argue the
Examiner has "grossly over-simplified claim 1." App. Br. 13. Appellants
argue claim 1 is not similar to the claims in SmartGene, Inc. v. Advanced
Biological Laboratories, SA, 555 F. App'x 950 (Fed. Cir. 2014) because the
4
Appeal2017-004728
Application 14/277,037
claim "clearly specifies new physical components and functions defined
other than by mentally performable steps." App. Br. 14. In particular,
Appellants argue "claim 1 specifies new physical components, i.e., a
payment bundling administration system including payment bundling logic
and a pricing engine, and numerous non-mental steps, i.e., analyzing,
determining, creating and triggering, among others." App. Br. 15.
We are not persuaded by Appellants' arguments. The US PTO carries
its procedural burden of establishing a prima facie case when its rejection
satisfies the requirements of 35 U.S.C. § 132 by notifying the applicant of
the reasons for rejection, "together with such information and references as
may be useful in judging of the propriety of continuing the prosecution of
[the] application." In re Jung, 637 F.3d 1356, 1362 (Fed. Cir. 2011).
In rejecting claims 1, 9, and 15 under § 101, the Examiner notified
Appellants that the claims are directed to an abstract idea, i.e., triggering a
payment bundle associated with a created patient event, and that the
additional claim elements do not amount to significantly more than the
abstract idea because "the computer as recited is a generic computer
component (i.e. operating system) that performs functions (i.e., receiving
data, analyzing data, determining that a patient event should be created,
creating a patient event, triggering a payment bundle, searching to identify
previously received provider claims, repricing amount that should have been
paid to a provider, reporting the repriced amount)" which "are generic
computer functions (i.e., receiving data, analyzing data, determining data,
creating data, triggering data, searching data, repricing amount data,
reporting data) that are well-understood, routine, and conventional activities
previously known to the industry." Final Act. 2; see also Ans. 3--4. The
5
Appeal2017-004728
Application 14/277,037
Examiner, thus, notified Appellants of the reasons for the rejection "together
with such information and references as may be useful in judging of the
propriety of continuing the prosecution of [the] application." 35 U.S.C.
§ 132. In doing so, the Examiner set forth a prima facie case of
unpatentability for claims 1, 9, and 15.
Appellants have not persuasively rebutted the Examiner's conclusion
that claims 1, 9, and 15 are directed to the abstract idea of triggering a
payment bundle associated with a created patient event that is "described by
the analyzing, determining, creating, triggering, searching, repricing and
reporting steps in claim 1." See Final Act. 2. The Federal Circuit has held
that if a method can be performed by human thought alone, or by a human
using pen and paper, it is merely an abstract idea and generally is not patent-
eligible under § 101. Cy her Source Corp. v. Retail Decisions, Inc., 654 F .3d
1366, 1372-73 (Fed. Cir. 2011) ("[A] method that can be performed by
human thought alone is merely an abstract idea and is not patent-eligible
under§ 101."); Gottschalkv. Benson, 409 U.S. 63, 67 (1972) ("Phenomena
of nature ... , mental processes, and abstract intellectual concepts are not
patentable, as they are the basic tools of scientific and technological work.").
Additionally, mental processes remain unpatentable even when automated to
reduce the burden on the user of what once could have been done with pen
and paper. CyberSource, 654 F.3d at 1375 ("That purely mental processes
can be unpatentable, even when performed by a computer, was precisely the
holding of the Supreme Court in Gottschalk v. Benson.").
Although claim 1 recites various computer components (e.g., a first
core claims processing system, second core claims processing system,
payment bundling administration system, payment bundling logic, database,
6
Appeal2017-004728
Application 14/277,037
and pricing engine), the steps performed by these components ( e.g.,
receiving, analyzing, determining, creating, searching, repricing, and
reporting), all involve acts that can be performed in the human mind,
without the use of any machine, or by a human using pen and paper. Thus,
Appellants have not persuasively explained why these are "non-mental
steps." See App. Br. 15.
Further, Appellants' reliance on a non-precedential PTAB decision
and a decision from the Middle District of Florida are neither binding on the
Board nor persuasive in light of precedent from the Federal Circuit. App.
Br. 17 (citing NRT Technology Corp v. Everi Payments Inc., CBM2015-
00167 (PTAB Jan. 22, 2016) and StoneEagle Servs., Inc. v. Pay-Plus Sols.,
Inc., 113 F. Supp. 3d 1241 (M.D. Fla. 2015)).
In the second step of the Alice framework, we "consider the elements
of each 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." Alice, 134 S. Ct. at 2355 (quoting
Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 78-79
(2012)). The Supreme Court describes this as "a search for an inventive
concept-i.e., an element or combination of elements that is sufficient to
ensure that the patent in practice amounts to significantly more than a patent
upon the ineligible concept itself." Id. (quotation omitted).
Appellants argue "the Examiner has clearly failed to address the
numerous additional elements." App. Br. 16. According to Appellants,
"[t]he claims are directed to a complex process, requiring interaction
between multiple hardware components and multiple parties to analyze data
from various sources and make determinations, create triggering data, trigger
7
Appeal2017-004728
Application 14/277,037
additional action, price and reprice medical claims, etc." App. Br. 16.
Appellants argue "the claims require multiple specifically programmed
processors ... and ordered interactions between elements including:" first
core claims processing system, second core claims processing system,
payment bundling administration system, payment bundling logic, and
pricing engine, which "go well beyond generic computer elements." App.
Br. 16; see Reply Br. 5. Appellants further argue the ordered combination of
the different elements adds something "significantly more" because "[t ]he
claims are directed to a particular method which involves multiple
interactive components, parties and process steps." App. Br. 16-17.
We are not persuaded by Appellants' arguments. Although
Appellants assert the claim "require[ s] multiple specifically programmed
processors" and the various components "go well beyond generic
computers," Appellants do not persuasively explain why this is the case.
The Specification does not indicate that the claim requires any specialized
computer, hardware, software, database, or server to receive, analyze,
determine, create, search, reprice, and report certain data recited in the
claim. See, e.g., Spec. Fig. 1, ,r,r 28-29. The law is clear that simply
programming a computer to perform what would otherwise be an abstract
idea is not sufficient to impart patent eligibility. See Alice, 134 S. Ct. at
2359. In other words, the claim merely implements the abstract idea on a
generic computer. See id.
Accordingly, we are not persuaded the Examiner erred in rejecting
independent claim 1 under 35 U.S.C. § 101. Appellants present substantially
the same arguments for independent claims 9 and 15. See App. Br. 19-29.
8
Appeal2017-004728
Application 14/277,037
Therefore, we sustain the Examiner's 35 U.S.C. § 101 rejection of claims 1,
9, and 15.
Dependent Claims 2---8, 10---14, and 16--19
Appellants argue the elements of each of the dependent claims are not
addressed by the Examiner. App. Br. 17-18, 24, 29-30.
We agree with Appellants that the Examiner has not sufficiently
addressed the dependent claims. Although the Office Action Summary
(PTOL-326) indicates that claims 1-19 are rejected, the body of the rejection
only addresses independent claims 1, 9, and 15, and makes no mention of
the dependent claims. See Final Act. 2-3. In the Answer, the Examiner
determines "[t]he abstract ideas for claims 2-8, 10-14 and 16-19 are similar
to the abstract idea for claims 1, 9, and 19 but further describe aspects of the
non-claim information, data set, comparison criteria, repricing criteria,
reporting criteria, and are, therefore, directed to an abstract idea for similar
reasons as given above." Ans. 4. However, the dependent claims are not
further mentioned in the Answer, particularly as to the second step in the
Alice analysis.
Accordingly, we are constrained by the record to reverse the
Examiner's 35 U.S.C. § 101 rejection of dependent claims 2-8, 10-14, and
16-19.
DECISION
We affirm the Examiner's 35 U.S.C. § 101 rejection of claims 1, 9,
and 15.
We reverse the Examiner's 35 U.S.C. § 101 rejection of claims 2-8,
10-14, and 16-19.
9
Appeal2017-004728
Application 14/277,037
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-IN-PART
10