Ex Parte Whitaker et al

Board of Patent Appeals and Interferences

Jun 18, 2010

10675929 (B.P.A.I. Jun. 18, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE 1
___________ 2
3
BEFORE THE BOARD OF PATENT APPEALS 4
AND INTERFERENCES 5
___________ 6
7
Ex parte CHARLES WHITAKER, 8
BRADLEY WINKING, 9
SCOTT DUNN, and 10
JIM JACKSON 11
___________ 12
13
Appeal 2009-011639 14
Application 10/675,929 15
Technology Center 3600 16
___________ 17
18
Decided: June 18, 2010 19
___________ 20
21
Before ANTON W. FETTING, JOSEPH A. FISCHETTI, and 22
BIBHU R. MOHANTY, Administrative Patent Judges. 23
FETTING, Administrative Patent Judge. 24
DECISION ON APPEAL 25
26
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STATEMENT OF THE CASE 1
Charles Whitaker, Bradley Winking, Scott Dunn, and Jim Jackson 2
(Appellants) seek review under 35 U.S.C. § 134 (2002) of a final rejection of 3
claims 1-27, the only claims pending in the application on appeal. 4
We have jurisdiction over the appeal pursuant to 35 U.S.C. § 6(b) 5
(2002). 6
SUMMARY OF DECISION1 7
We AFFIRM. 8
THE INVENTION 9
The Appellants invented a system and method for using financial 10
transaction processing networks to verify and/or process insurance related 11
information (Specification 1:10-12). 12
An understanding of the invention can be derived from a reading of 13
exemplary claims 1-3, 5, 11, 17, 19, and 22, which are reproduced below 14
[bracketed matter and some paragraphing added]. 15
1. A method of verifying insurance coverage relating to a 16
member, comprising: 17
[1] receiving at a financial transaction processing computer 18
system a member identifier relating to the member; 19

1 Our decision will make reference to the Appellants’ Appeal Brief (“App.
Br.,” filed June 30, 2008) and the Examiner’s Answer (“Ans.,” mailed
March 4, 2009), and Final Rejection (“Final Rej.,” mailed January 29, 2008).
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[2] searching a database to determine if the member 1
identifier is valid; and 2
[3] transmitting from the financial transaction processing 3
computer system authorization information. 4
5
2. The method of claim 1, wherein the financial transaction 6
processing computer system comprises a credit card processing 7
system. 8
9
3. The method of claim 1, wherein the member identifier is 10
received in credit card number format. 11
12
5. The method of claim 4, wherein the individual code is 13
received in a format relating to currency. 14
15
11. A method of verifying insurance coverage relating to a 16
member, comprising: 17
[1] entering member identifier information into a credit card 18
processing device; 19
[2] transmitting the information to a host computer system; 20
and 21
[3] receiving authorization information at the processing 22
device indicating whether the member has insurance coverage. 23
24
17. An insurance card, comprising: 25
[1] an account number in credit card number format; 26
[2] a machine-readable storage medium; and 27
[3] a list of covered members; 28
[4] wherein the insurance card comprises credit card stock. 29
30
19. A method of enrolling a member into medical coverage, 31
comprising: 32
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[1] receiving enrollment information from the member; 1
[2] assigning an account to the member, wherein the account 2
is in credit card format; 3
[3] assigning a code to each covered dependent of the 4
member, wherein each dependent's code is in currency format; 5
and 6
[4] producing a card for the member, wherein the card 7
comprises credit card stock. 8
9
22. A system for processing insurance information, comprising: 10
[1] a credit card processing network; and 11
[2] a host computer system; 12
[3] wherein the host computer system is programmed to 13
receive insurance information from a point-of-sale device via 14
the credit card processing network and verify coverage. 15
16
THE REJECTIONS 17
The Examiner relies upon the following prior art: 18
Pritchard US 4,491,725 Jan. 1, 1985
Doyle, Jr. US 5,070,452 Dec. 3, 1991
Freeman, Jr. US 6,012,035 Jan. 4, 2000
Kenna US 6,108,641 Aug. 22, 2000
19
Claims 19-21 stand rejected under 35 U.S.C. § 101 as being directed 20
towards non-statutory subject matter. 21
Claims 1-9, 11-12, 14-16, and 22-25 stand rejected under 35 U.S.C. 22
§ 103(a) as unpatentable over Freeman and Pritchard. 23
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Claims 10, 13, 19-20, and 26 stand rejected under 35 U.S.C. § 103(a) as 1
unpatentable over Freeman, Pritchard, and Doyle. 2
Claims 17-18 stand rejected under 35 U.S.C. § 103(a) as unpatentable 3
over Pritchard and Doyle. 4
Claim 21 stands rejected under 35 U.S.C. § 103(a) as unpatentable over 5
Freeman, Pritchard, Doyle, and Kenna. 6
DISPOSITION OF THE APPEAL 7
The Examiner entered a new ground of rejection in the Examiner’s 8
Answer against claims 19-21under 35 U.S.C. §101 as being directed to non-9
statutory subject matter (Ans. 2-4). The Examiner properly gave notice of 10
the new ground of rejection (Ans. 2-4) and the Technology Center Director 11
approved it (Ans. 20). As the Answer indicated (Ans. 19-20), the Appellants 12
were required to respond to the new grounds within two months in either of 13
two ways: 1) reopen prosecution (see 37 CFR 41.39(a)(2)(b)(1)); or 2) 14
maintain the appeal by filing a reply brief as set forth in 37 CFR 41.41 (see 15
37 CFR 41.39(a)(2)(b)(2) ), “to avoid sua sponte dismissal of the appeal as 16
to the claims subject to the new ground of rejection.” (Ans. 19-20). 17
According to the record before us, neither option appears to have been 18
exercised. 19
Accordingly, the appeal as to claims 19-21, subject to the new ground of 20
rejection under §101 as being directed to non-statutory subject matter stands 21
dismissed. 22
Upon return of the application to the Examiner, the Examiner should (1) 23
cancel claims 19-21 subject to the new ground of rejection and (2) notify the 24
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Appellants that the appeal as to claims 19-21, subject to the new ground of 1
rejection under §101, as being directed to non-statutory subject matter, is 2
dismissed and claims 19-21 are cancelled. See Manual of Patent Examining 3
Procedure (MPEP) § 1207.03, 8th ed., Rev. 7, Jul. 2008. 4
5
ISSUES 6
The issue of whether the Examiner erred in rejecting claims 1-9, 11-12, 7
14-16, and 22-25 under 35 U.S.C. § 103(a) as unpatentable over Freeman 8
and Pritchard turns on whether Freeman describes receiving a member 9
identifier at a financial transaction processing computer system and 10
transmitting authorization information from the financial transaction 11
processing system. 12
The issue of whether the Examiner erred in rejecting claims 10, 13, 19-13
20, and 26 under 35 U.S.C. § 103(a) as unpatentable over Freeman, 14
Pritchard, and Doyle turns on whether Freeman describes the currency 15
format element of claim 10. 16
The issue of whether the Examiner erred in rejecting claims 17-18 under 17
35 U.S.C. § 103(a) as unpatentable over Pritchard and Doyle turns on 18
whether Pritchard and Doyle describe limitations [1] and [3] of claim 17. 19
The issue of whether the Examiner erred in rejecting claim 21 under 35 20
U.S.C. § 103(a) as unpatentable over Freeman, Pritchard, Doyle, and Kenna 21
turns on whether the Appellants provide any arguments in support of claim 22
21. 23
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FACTS PERTINENT TO THE ISSUES 1
The following enumerated Findings of Fact (FF) are believed to be 2
supported by a preponderance of the evidence. 3
Facts Related to the Prior Art 4
Freeman 5
01. Freeman is directed to a device and method dedicated to 6
effectuating the provision and management of a cooperative health 7
care system in connecting with an integrated cooperative group of 8
entities (Freeman 1:13-23). 9
02. Freeman describes that a qualified member is issued an 10
electronic card by a financial institution providing a credit level to 11
the member (Freeman 2:27-29 and 7:57-60). The financial 12
institution indicates to providers whether the member is eligible to 13
receive credit (Freeman 2:33-34 and 7:60-63). The member then 14
visits a provider, such as a doctor, and the provider verifies that 15
the member has coverage and credit by swiping the electronic card 16
or by typing the member identification number into a computer 17
terminal (Freeman 7:64-67 and 8:1). The eligibility and credit 18
verification request is transmitted to the financial institution 19
terminals (Freeman 8:1-4 and Fig. 2). The financial institution 20
maintains a database of eligibility and this database is updated by 21
insurance providers (Freeman 8:3-4). The provider requests an 22
authorization code on whether the member is eligible or is likely 23
to default on their bill such that the provider can decide whether to 24
provide services (Freeman 2:29-32 and 8:8-11). After providing 25
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services, the provider sends an electronic claim to the insurance 1
provider, where the claim consists of diagnostic codes and 2
treatment codes (Freeman 2:29-32 and 8:14-20). The insurance 3
company notifies the financial institution to pay the claim 4
(Freeman 2:34-41 and 8:21-25). The financial institution then 5
bills the patient for the patient’s share of the bill that was 6
advanced by the financial institution (Freeman 2:45-46 and 8:26-7
28). 8
03. Insurance pay amount will always be $0.00 when insurance 9
payments are done manually (Freeman 37: MSF #25 Insurance 10
Pay Amount). The patient pay portion is a dollar amount 11
(Freeman 39: MSF #26). 12
Pritchard 13
04. Pritchard is directed to the evaluation of medical insurance 14
coverage, the determination of claim payment schedules, and the 15
processing of insurance payments (Pritchard 1:6-10). 16
05. Pritchard describes a system where a patient name and patient 17
treatment codes are used to determine the patient’s insurance 18
carrier (Pritchard 3:39-43). A code conversion table is read for 19
the selected patient’s insurance carrier to translate the selected 20
treatment code into the corresponding service code for the 21
patient’s insurance carrier (Pritchard 3:43-46). A file for claim 22
payments is read to determine the claim payment for the service 23
code and the determined claim payment is displayed (Pritchard 24
3:46-52). 25
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06. Pritchard also describes the use of a MEDICARD, which is a 1
plastic card corresponding to the size of a conventional credit card 2
(Pritchard 5:18-22). The MEDICARD includes information 3
printed on the surfaces on the card and electronically coded on the 4
card’s magnetic stripe (Pritchard 5:22-25). The information 5
printed or electronically stored includes the patent’s name, 6
patient’s insurance carrier, date of birth, and patient’s 7
MEDICARD number (Pritchard 5:25-32). The MEDICARD can 8
be similar to a convention credit card or store greater information 9
such as a smart card (Pritchard 5:66-67 and 6:1-4). 10
Doyle 11
07. Doyle is directed to a computerized insurance claim processing 12
system that links a physician’s office and insurance provider 13
through a central administration computer (Doyle Abstract). 14
08. Doyle describes that a physician can communicate in real time 15
with the administration computer in order to ascertain whether a 16
given patient is on the roster of covered individuals for a given 17
insurance plan, as well as whether a proposed treatment is 18
reimbursable and the amount of the reimbursement (Doyle 2:10-19
16). An employer can add and delete persons to the roster of 20
those insured (Doyle 2:26-28). The administration computer 21
notifies the physician the dollar amounts of the coverage and 22
whether a deductible amount or a co-payment apply (Doyle 5:57-23
62). 24
Kenna 25
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09. Kenna is directed to data processing methods and apparatus for 1
directing an account management system which incorporates 2
master accounts with a plurality of nested subaccounts having a 3
specific subset of individual properties, and especially to a system 4
having at least one nested subaccount that is a Medical Savings 5
Account (Kenna 1:12-19). 6
Facts Related To The Level Of Skill In The Art 7
10. Neither the Examiner nor the Appellants have addressed the 8
level of ordinary skill in the pertinent art of electronic medical 9
insurance claim processing. We will therefore consider the cited 10
prior art as representative of the level of ordinary skill in the art. 11
See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) 12
(“[T]he absence of specific findings on the level of skill in the art 13
does not give rise to reversible error ‘where the prior art itself 14
reflects an appropriate level and a need for testimony is not 15
shown’”) (quoting Litton Indus. Prods., Inc. v. Solid State Sys. 16
Corp., 755 F.2d 158, 163(Fed. Cir. 1985). 17
Facts Related To Secondary Considerations 18
11. There is no evidence on record of secondary considerations of 19
non-obviousness for our consideration. 20
ANALYSIS 21
Claims 1-9, 11-12, 14-16, and 22-25 rejected under 35 U.S.C. § 103(a) 22
as unpatentable over Freeman and Pritchard 23
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The Appellants first contend that (1) Freeman fails to describe 1
limitations [1] and [3] of claim 1 (App. Br. 6). We disagree with the 2
Appellants. Limitation [1] requires receiving a member identifier at a 3
financial transaction processing computer system. Limitation [3] further 4
requires transmitting authorization information from the financial transaction 5
processing system. 6
Freeman describes a healthcare management system where a member is 7
issued an electronic card by a financial institution (FF 02). The member 8
then visits a healthcare provider for services (FF 02). The provider swipes 9
the electronic card or enters the member identification number into a 10
computer terminal to request eligibility and credit verification information 11
(FF 02). The eligibility and credit verification request is transmitted to the 12
financial institution (FF 02). That is, the financial institution receives the 13
member identification number in a request to verify the member’s eligibility 14
and credit. The financial institution returns an authorization code that 15
indicates whether the member is eligible for credit (FF 02). That is, the 16
financial processing center transmits authorization information. As such, 17
Freeman describes limitations [1] and [3] of claim 1. 18
The Appellants further argue that the cited prior art fails to describe a 19
computer that processes financial transactions being used to verify medical 20
insurance coverage (App. Br. 6). However, Freeman explicitly describes 21
that the financial institution processes insurance claims that require the 22
financial institution to make payments to a provider (FF 02). The financial 23
institution notifies providers of the member’s credit and whether the 24
insurance coverage will cover the services provided by the provider (FF 02). 25
Freeman further describes that the financial institution uses terminals to 26
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communicate with the provider and other systems (FF 02). That is, the 1
financial institution uses a computer to process transactions requested by the 2
insurance provider to pay the healthcare provider. The financial institution 3
also uses computer terminals to communicate with the providers whether the 4
member is eligible for credit. As such, that computer processes financial 5
transactions to verify medical insurance coverage. 6
The Appellants additionally contend that (2) Freeman fails to describe 7
the financial transaction processing computer system comprises a credit card 8
processing system, as required by claim 2 (App. Br. 7). We disagree with 9
the Appellants. As discussed supra, Freeman describes that a financial 10
institution issues a member an electronic card (FF 02). The electronic card 11
is used in determining whether the member is eligible for credit (FF 02). 12
Freeman also describes a financial transaction processing computer system, 13
as discussed supra. Since the issued electronic card is used in determining 14
whether to issue credit, the system is functionally a credit processing system. 15
As such, Freeman describes the limitations of claim 2. 16
The Appellants also contend that (3) Freeman and Pritchard fail to 17
describe the member identifier is received in credit card number format, as 18
required by claim 3 (App. Br. 17). We disagree with the Appellants. We 19
first note that claim 3 does not require any specific number format. 20
Therefore, claim 3 only requires a number format on the card that is used in 21
determining whether to issue credit. Freeman describes an electronic card 22
that includes member identification and the member identification is used in 23
determining whether to issue credit (FF 02). As such, Freeman describes an 24
electronic card that transmits a member identifier and a financial institution 25
receives a member identifier in a credit number format. Additionally, 26
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Pritchard describes the use of a plastic card, MEDICARD, which 1
corresponds to the size of a credit card and contains member identification 2
information (FF 06). The MEDICARD can be a conventional credit card 3
(FF 06). As such, Pritchard explicitly describes transmitting a member 4
identifier in a conventional credit card. 5
The Appellants contend that (4) Freeman fails to describe the individual 6
code is received in a format relating to currency, as required by claims 5 and 7
12 (App. Br. 7-8). We disagree with the Appellants. Freeman describes that 8
insurance pay amounts will always be $0.00 when insurance payments are 9
done manually (FF 03). Freeman further describes that patient pay amounts 10
are calculated in dollar amounts (FF 03). The explicit use of the term dollar 11
and the symbol for dollars describes that the currency of dollars is used in 12
the Freeman system. As such, Freeman describes the claims 5 and 12. 13
The Appellants further contend that (5) Freeman fails to describe 14
entering member information into a credit card processing device, as 15
required by claim 11 (App. Br. 8). We disagree with the Appellants. As 16
discussed supra, Freeman describes a member identification is entered 17
manually or by swiping an electronic card (FF 02). As also discussed supra, 18
Freeman describes that the member identification is received by a financial 19
institution which uses computer terminals to process credit transactions. As 20
such, the Appellants argument was not found persuasive in support of claim 21
1 supra and is not found to be persuasive here for the same reasons. 22
The Appellants also contend that (6) Freeman and Pritchard fail to 23
describe limitation [3] of claim 22 (App. Br. 8). We disagree with the 24
Appellants. Limitation [3] requires a point-of-sale device transmits 25
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insurance information to a host computer for the host computer to verify 1
member coverage. As discussed supra, Freeman describes that a provider 2
swipes the member’s electronic card and requests to verify the member’s 3
credit eligibility (FF 02). In this embodiment, the point-of-sale is at the 4
provider and the computer terminals at the provider are the point-of-sale 5
devices. Therefore, the provider computer terminals requesting member 6
credit eligibility is the same as the point-of-sale requesting member 7
eligibility. As such, Freeman describes limitation [3] of claim 22. 8
The Examiner did not err in rejecting claims 1-9, 11-12, 14-16, and 22-9
25 under 35 U.S.C. § 103(a) as unpatentable over Freeman and Pritchard. 10
11
Claims 10, 13, 19-20, and 26 rejected under 35 U.S.C. § 103(a) as 12
unpatentable over Freeman, Pritchard, and Doyle 13
The Appellants contend that Freeman fails to describe the currency 14
format element and the Examiner has improperly failed to give patentable 15
weight to the currency format element of limitation [3] of claim 19 (App. Br. 16
9). We disagree with the Appellants. As discussed supra, Freeman 17
describes the use of the currency of dollars (FF 03). This argument was not 18
found to be persuasive in support of claims 5 and 12, and is not found to be 19
persuasive here for the same reasons. As such, even if giving patentable 20
weight to the currency format element, we find that Freeman describes this 21
element. 22
The Appellants further contend that claims 20-21 depend from 23
independent claim 19 and are allowable for the same reasons. We disagree 24
with the Appellants. The Appellants’ arguments in support of claim 19 were 25
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not found persuasive, and therefore are not found to be persuasive for claims 1
20-21 for the same reasons. 2
The Examiner did not err in rejecting claims 10, 13, 19-20, and 26 under 3
35 U.S.C. § 103(a) as unpatentable over Freeman, Pritchard, and Doyle. 4
5
Claims 17-18 rejected under 35 U.S.C. § 103(a) as unpatentable over 6
Pritchard and Doyle 7
The Appellants contend that Pritchard and Doyle fail to describe 8
limitations [1] and [3] of claim 17 (App. Br. 10). We disagree with the 9
Appellants. Limitation [1] requires an account number in credit card 10
number format. Limitation [3] further requires a list of covered members. 11
As discussed supra, Pritchard describes the use of a MEDICARD that is 12
similar to a conventional credit card (FF 06). As such, Pritchard describes 13
limitation [1]. Doyle describes that a provider can ascertain whether a given 14
patient is on the roster of covered individuals for a given insurance plan (FF 15
08). The provider of insurance coverage, such as an employer, can add and 16
subtract individuals from the roster of covered persons (FF 08). As such, 17
Doyle describes a list or roster of covered members as required by limitation 18
[3]. 19
The Appellants further argue that Doyle fails to describe that the list is 20
on the credit card (App. Br. 10). However, the Examiner relies on Pritchard 21
to describe an insurance card and combines this insurance card with Doyle’s 22
description of the use of a roster of members that are insured. Therefore, the 23
Appellants’ contention does not persuade us of error on the part of the 24
Examiner because the Appellants respond to the rejection by attacking the 25
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references separately, even though the rejection is based on the combined 1
teachings of the references. Nonobviousness cannot be established by 2
attacking the references individually when the rejection is predicated upon a 3
combination of prior art disclosures. See In re Merck & Co. Inc., 800 F.2d 4
1091, 1097, (Fed. Cir. 1986). 5
The Examiner did not err in rejecting claims 17-18 under 35 U.S.C. 6
§ 103(a) as unpatentable over Pritchard, and Doyle. 7
8
Claim 21 rejected under 35 U.S.C. § 103(a) as unpatentable over 9
Freeman, Pritchard, Doyle, and Kenna 10
The Appellants have not argued this rejection in the Brief. We take this 11
as indicating the Appellants have waived arguments as to this rejection and 12
as such we summarily sustain the Examiner in rejecting claim 21 under 35 13
U.S.C. § 103(a) as unpatentable over Freeman, Pritchard, Doyle, and Kenna. 14
15
CONCLUSIONS OF LAW 16
The Examiner did not err in rejecting claims 1-9, 11-12, 14-16, and 22-17
25 under 35 U.S.C. § 103(a) as unpatentable over Freeman and Pritchard. 18
The Examiner did not err in rejecting claims 10, 13, 19-20, and 26 under 19
35 U.S.C. § 103(a) as unpatentable over Freeman, Pritchard, and Doyle. 20
The Examiner did not err in rejecting claims 17-18 under 35 U.S.C. 21
§ 103(a) as unpatentable over Pritchard, and Doyle. 22
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The Examiner did not err in rejecting claim 21 under 35 U.S.C. § 103(a) 1
as unpatentable over Freeman, Pritchard, Doyle, and Kenna. 2
3
DECISION 4
To summarize, our decision is as follows: 5
• The rejection of claims 1-9, 11-12, 14-16, and 22-25 under 35 U.S.C. 6
§ 103(a) as unpatentable over Freeman and Pritchard is sustained. 7
• The rejection of claims 10, 13, 19-20, and 26 under 35 U.S.C. 8
§ 103(a) as unpatentable over Freeman, Pritchard, and Doyle is 9
sustained. 10
• The rejection of claims 17-18 under 35 U.S.C. § 103(a) as 11
unpatentable over Pritchard, and Doyle is sustained. 12
• The rejection of claim 21 under 35 U.S.C. § 103(a) as unpatentable 13
over Freeman, Pritchard, Doyle, and Kenna is sustained. 14
Upon return of the application to the Examiner, the Examiner should (1) 15
cancel claims 19-21 subject to the new ground of rejection and (2) notify the 16
Appellants that the appeal as to claims 19-21, subject to the new ground of 17
rejection under §101, as being directed to non-statutory subject matter, is 18
dismissed and claims 19-21 are cancelled. 19
No time period for taking any subsequent action in connection with this 20
appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv). 21
22
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AFFIRMED 1
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