Ex Parte VAN ARKEL et al

Patent Trial and Appeal Board

Oct 5, 2017

13536489 (P.T.A.B. Oct. 5, 2017)

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.
13/536,489 06/28/2012 John H. VAN ARKEL 20110255 8112
25537 7590
VERIZON
PATENT MANAGEMENT GROUP
1320 North Court House Road
9th Floor
ARLINGTON, VA 22201-2909
EXAMINER
PAULS, JOHN A
ART UNIT PAPER NUMBER
3626
NOTIFICATION DATE DELIVERY MODE
10/10/2017 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):
patents @ verizon.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JOHN H. VAN ARKEL, JAMES J. WAGNER,
CORRINE L. SCHWEYEN, SARALYN M. MAHONE, DAVID D. TAD A,
TERRILL J. CURTIS, and SCOTT HAGINS
Appeal 2016-0004711
Application 13/536,4892
Technology Center 3600
Before MURRIEL E. CRAWFORD, NINA L. MEDLOCK, and
ROBERT J. SILVERMAN, Administrative Patent Judges.
MEDLOCK, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 1—21. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
1 Our decision references Appellants’ Appeal Brief (“Br.,” filed May 12,
2015) and the Examiner’s Answer (“Ans.,” mailed July 31, 2015), Advisory
Action (“Adv. Act.,” mailed January 6, 2015), and Final Office Action
(“Final Act.,” mailed October 31, 2014).
2 Appellants identify Verizon Communications, Inc. and its subsidiary
companies as the real parties in interest. Br. 3.
Appeal 2016-000471
Application 13/536,489
CLAIMED INVENTION
Appellants’ claimed invention relates to a healthcare fraud
management system (Abstract).
Claims 1, 8, and 15 are the independent claims on appeal. Claim 1,
reproduced below, is illustrative of the claimed subject matter:
1. A method comprising:
receiving, by one or more computer devices of a
healthcare fraud management system, healthcare claims
information associated with a particular entity;
receiving, by the one or more computer devices, historical
healthcare information associated with the particular entity;
performing, by the one or more computer devices, data
mining techniques on the historical healthcare information to
produce data mining information associated with the particular
entity, the data mining techniques including:
discovering, based on processing the historical
healthcare information and without using known
structures, groups and structures in the historical
healthcare information that are similar;
performing anomaly detection techniques to
identify particular records in the historical healthcare
information that require further investigation and data
errors in the historical healthcare information that require
further investigation;
performing regression techniques to locate a
function that models the historical healthcare information
with an error that is less than errors associated with other
functions; and
performing summarization techniques to map the
historical healthcare information into subsets with
associated descriptions, the associated descriptions
including at least one of:
fraudulent claims,
suspect claims,
suspect beneficiaries, or
suspect providers;
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generating, by the one or more computer devices, one or
more financial reports, associated with the particular entity, the
one or more financial reports being based on:
the healthcare claims information,
the historical healthcare information, and
the data mining information,
and the one or more financial reports including at least one
of:
a statement that shows a relationship between a cost
of operating the healthcare fraud management system and
a quantity of money that was saved from identifying and
not paying fraudulent healthcare claims,
a statement that shows a relationship between a
quantity of money that was paid for healthcare claims and
a quantity of money that was saved from identifying and
not paying fraudulent healthcare claims, or
a statement that shows a ratio of how much money
was saved from identifying fraudulent healthcare claims
and not paying the fraudulent healthcare claims to the cost
of operating the healthcare fraud management system; and
outputting, by the one or more computer devices, the
generated one or more financial reports to a clearinghouse or a
claims processor.
REJECTIONS3
Claims 1—21 are rejected under 35 U.S.C. § 101 as directed to non-
statutory subject matter.
3 The rejections under 35 U.S.C. §§ 112, second paragraph, 102, and 103(a)
have been withdrawn. Adv. Act. 2
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Application 13/536,489
ANALYSIS
Independent Claim 1 and Dependent Claims 2—7
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: “[l]aws of nature, natural phenomena, and
abstract ideas” are not patentable. See, e.g., Alice Corp. Pty. Ltd. v. CLS
Banklnt’l, 134 S. Ct. 2347, 2354 (2014).
The Supreme Court, in Alice, reiterated the two-step framework
previously set forth in Mayo Collaborative Services v. Prometheus
Laboratories, Inc., 132 S. Ct. 1289, 1300 (2012), “for distinguishing patents
that claim laws of nature, natural phenomena, and abstract ideas from those
that claim patent-eligible applications of those concepts.” Alice Corp.,
134 S. Ct. at 2355. The first step in that analysis is to “determine whether
the claims at issue are directed to one of those patent-ineligible concepts.”
Id. If the claims are not directed to a patent-ineligible concept, e.g., to an
abstract idea, the inquiry ends. Otherwise, the inquiry proceeds to the
second step where the elements of the claims are considered “individually
and ‘as an ordered combination”’ to determine whether there are additional
elements that “‘transform the nature of the claim’ into a patent-eligible
application.” Alice Corp., 134 S. Ct. at 2355 (quoting Mayo, 132 S. Ct.
at 1297).
The Court acknowledged in Mayo, that “all inventions at some level
embody, use, reflect, rest upon, or apply laws of nature, natural phenomena,
or abstract ideas.” Mayo, 132 S. Ct. at 1293. We, therefore, look to whether
the claims focus on a specific means or method that improves the relevant
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technology or are instead directed to a result or effect that itself is the
abstract idea and merely invoke generic processes and machinery.
See Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1336 (Fed. Cir. 2016).
Here, Appellants first argue that the Examiner erred in finding that
claim 1 is directed to an abstract idea because the claim does not “threaten to
‘monopolize’ or ‘preempt’ a ‘fundamental economic practice’” (Br. 10).
That argument is not persuasive.
There is no dispute that the Supreme Court has described “the concern
that drives this exclusionary principle [i.e., the exclusion of abstract ideas
from patent eligible subject matter] as one of pre-emption.” See Alice Corp.,
134 S. Ct. at 2354. But characterizing pre-emption as a driving concern for
patent eligibility is not the same as characterizing pre-emption as the sole
test for patent-eligibility. “The Supreme Court has made clear that the
principle of preemption is the basis for the judicial exceptions to
patentability” and “[f]or this reason, questions on preemption are inherent in
and resolved by the § 101 analysis.” Ariosa Diagnostics, Inc. v. Sequenom,
Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015) (citing Alice, 134 S. Ct. at 2354).
“[Preemption may signal patent ineligible subject matter, [but] the absence
of complete preemption does not demonstrate patent eligibility.” Id.
Contrary to Appellants’ assertions (see Br. 10-11), we also find no
parallel between claim 1 and the claims at issue in DDR Holdings, LLC v.
Hotels.com, L.P., 773 F.3d 1245 (Fed. Cir. 2014). In DDR Holdings, the
Federal Circuit determined that, although the claims at issue involved
conventional computers and the Internet, the claims addressed the problem
of retaining website visitors who, if adhering to the routine, conventional
functioning of Internet hyperlink protocol, would be transported instantly
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away from a host’s website after “clicking” on an advertisement and
activating a hyperlink. DDR Holdings, 773 F.3d at 1257. The Federal
Circuit, thus, held that the claims were directed to statutory subject matter
because they claim a solution “necessarily rooted in computer technology in
order to overcome a problem specifically arising in the realm of computer
networks,” and that the claimed invention did not simply use computers to
serve a conventional business purpose. Id. Rather, there was a change to the
routine, conventional functioning of Internet hyperlink protocol. Id.
Appellants argue that, similar to DDR Holdings, claim 1 addresses a
business challenge (i.e., “the problem of manual review and processing of
healthcare information and a determination of fraudulent claims”) that is
necessarily rooted in computer technology (Br. 10). Yet unlike the situation
in DDR Holdings, there is no indication here that the claimed computer
devices are used other than in their normal, expected, and routine manner for
requesting, receiving, and processing data. And “after Alice, there can
remain no doubt: recitation of generic computer limitations does not make
an otherwise ineligible claim patent-eligible.” DDR Holdings, 773 F.3d
at 1256.
Turning to the second step of the Alice analysis, Appellants argue that
even if claim 1 is directed to an abstract idea, claim 1 “amounts to
significantly more than the alleged abstract idea of ‘generating financial
reports’” (Br. 11) because claim 1 improves the functioning of a computer
{id. at 12—13) and also involves an inventive concept (id. at 13—14).
Addressing these arguments in turn, as an initial matter, we cannot
agree that claim 1 improves the functioning of a computer. Referencing
paragraph 22 of the Specification, Appellants tout various alleged
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improvements provided by the claimed computer implementation, and assert
that the claimed features improve the functioning of a computer (id. at 12).
Yet, even accepting that the present invention improves upon previous
methods for detecting fraudulent healthcare claims, there is a fundamental
difference between computer functionality improvements, on the one hand,
and uses of existing computers as tools to perform a particular task, on the
other. Indeed, the Federal Circuit applied this distinction in Enfish in
rejecting a § 101 challenge at the step one stage in the Alice analysis because
the claims at issue focused on a specific type of data structure, i.e., a self-
referential table for a computer database, designed to improve the way a
computer carries out its basic functions of storing and retrieving data, and
not merely on asserted advances in uses to which existing computer
capabilities could be put. Id. at 1335—36.
We find no parallel here between claim 1 and the claims in Enfish nor
any comparable aspect in claim 1 that represents “an improvement to
computer functionality.” The alleged advantages that Appellants tout do not
concern an improvement to computer capabilities but instead relate to an
alleged improvement in identifying fraudulent healthcare claims for which a
computer is used as a tool in its ordinary capacity.
Finally, we are not persuaded of Examiner error by Appellants’
argument that claim 1 involves an inventive concept. Appellants ostensibly
maintain that claim 1 involves an “inventive concept” and recites features
“far exceeding ‘well-understood, routine, conventional Activities’ known in
the industry” because the Examiner found the claim to be novel and non-
obvious (Br. 13—14). But Appellants misapprehend the controlling
precedent.
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Although the second step in the Alice/Mayo framework is termed a
search for an “inventive concept,” the analysis is not an evaluation of
novelty or non-obviousness, but rather, a search for ‘“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.’” Alice Corp., 134 S. Ct. at 2355. “The ‘novelty’ of any element or
steps in a process, or even of the process itself, is of no relevance in
determining whether the subject matter of a claim falls within the § 101
categories of possibly patentable subject matter.” Diamond v. Diehr,
450 U.S. 175, 188—89 (1981). A novel and nonobvious claim directed to a
purely abstract idea is, nonetheless, patent-ineligible. See Mayo, 132 S. Ct.
at 1304.
We are not persuaded for the foregoing reasons that the Examiner
erred in rejecting claim 1 under 35 U.S.C. § 101. Therefore, we sustain the
Examiner’s rejection. We also sustain the rejection of dependent claims 2—
7, which are not argued separately except based on their dependence from
claim 1 (Br. 14).
Independent Claims 8 and 15 and Dependent Claims 9—14 and 16—21
Appellants argue that “independent claims 8 and 15 are directed to
statutory subject matter for at least the reasons set forth” with respect to
claim 1 {id. at 14—15). We are not persuaded for the reasons set forth above
that the Examiner erred in rejecting claim 1 under 35 U.S.C. § 101.
Therefore, we sustain the Examiner’s rejection under § 101 of independent
claims 8 and 15 for the same reasons. We also sustain the Examiner’s
rejection of dependent claims 9-14 and 16—21, which are not argued
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separately except based on their dependence from independent claims 8 and
15 (id. at 15).
DECISION
The Examiner’s rejection of claims 1—21 under 35 U.S.C. § 101 is
affirmed.
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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