Ex Parte Wilson

Patent Trial and Appeal Board

Jun 26, 2013

10271144 (P.T.A.B. Jun. 26, 2013)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
10/271,144 10/14/2002 David Wilson 3219-000004 7883
27572 7590 06/27/2013
HARNESS, DICKEY & PIERCE, P.L.C.
P.O. BOX 828
BLOOMFIELD HILLS, MI 48303
EXAMINER
NAJARIAN, LENA
ART UNIT PAPER NUMBER
3686
MAIL DATE DELIVERY MODE
06/27/2013 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 PATENT TRIAL AND APPEAL BOARD
____________

Ex parte DAVID WILSON
____________

Appeal 2010-006110
Application 10/271,144
Technology Center 3600
____________

Before MURRIEL E. CRAWFORD, HUBERT C. LORIN, and
ANTON W. FETTING, Administrative Patent Judges.

LORIN, Administrative Patent Judge.

DECISION ON APPEAL

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STATEMENT OF THE CASE
David Wilson (Appellant) seeks our review under 35 U.S.C. § 134 of
the final rejection of claims 1-10, 12-23, and 25-30. We have jurisdiction
under 35 U.S.C. § 6(b) (2002).

SUMMARY OF DECISION
We AFFIRM-IN-PART and enter a New Ground of Rejection
pursuant to 37 C.F.R. 41.50(b).1

THE INVENTION
Claim 1, reproduced below, is illustrative of the subject matter on
appeal.
1. A computer system to implement an improved health care plan,
comprising:
a medical plan administered by said computer-implemented
system which provides coverage for medical expenses incurred by a
health care recipient, where at least a portion of the medical expenses
are not covered by the medical plan;
an available flexible spending account administered by said
computer-implemented system which provides funds for medical
expenses that are not covered by the medical plan, and

1 Our decision will make reference to the Appellant’s Appeal Brief
(hereinafter “App. Br.,” filed Sep. 8, 2009) and Reply Brief (hereinafter
“Reply Br.,” filed Jan. 13, 2010), and the Examiner’s Answer (hereinafter
“Ans.,” mailed Nov. 30, 2009).
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an available health care reimbursement account administered by
said computer system, where an unused portion of the funds in the
health care reimbursement account may be carried forward by said
computer-implemented system for use by the health care recipient in
subsequent years and reimbursement for uncovered medical expenses
is provided from the health care reimbursement account only when the
funds in the flexible spending account have been expended, wherein
the medical plan requires the health care recipient to pay a deductible
for incurred medical expenses up to a predefined maximum amount
and the health care reimbursement account may not be used to
reimburse any deductible paid by the health care recipient, thereby
providing an incentive for the health care recipient to establish a
flexible spending account.

THE REJECTIONS
The Examiner relies upon the following as evidence of
unpatentability:
Raskin
Javors

US 2001/0037214 A1
US 2002/0152097 A1
Nov. 1, 2001
Oct. 17, 2002
Papke, Leslie E., “Participation in an Contributions to 401(k) Pension
Plans,” The journal of Human Resources; Spring 1995; 30; pp. 311-
325. [Papke]

“Admission discloses where an unused portion of the funds in the
health care reimbursement account may be carried forward for use by
the health care recipient in subsequent years (pages 1-2, paragraph
[0003] of Specification).” Answer 9. [Admitted Prior Art]

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The following rejections are before us for review:
1. Claims 1-10, 12-23, and 25-30 are rejected under 35 U.S.C. §101 as
being directed to non-statutory subject matter.
2. Claims 1-11 are rejected under 35 U.S.C. §112, second paragraph, as
being indefinite for failing to particularly point out and distinctly
claim the subject matter which applicant regards as the invention.
3. Claims 1-9, 12-14, and 16-22 are rejected under 35 U.S.C. §103(a) as
being unpatentable over Raskin, Javors, and Admitted Prior Art.
4. Claims 10 and 15 are rejected under 35 U.S.C. §103(a) as being
unpatentable over over Raskin, Javors, Admitted Prior Art, and Papke.
5. Claims 23 and 25-30 are rejected under 35 U.S.C. §103(a) as being
unpatentable over Raskin and Admitted Prior Art.

ISSUES
Regarding the §101 rejection, has the Examiner made out a prima
facie case of nonstatutory subject matter with respected to claims 1-10, 12-
23, and 25-30?
Regarding the §112, second paragraph, rejection, is there antecedent
basis for "said computer-implemented system” in claims 1-10?
Regarding the §103 rejections, are the prima facie cases of
obviousness in error?

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FINDINGS OF FACT
We rely on the Examiner’s factual findings stated in the Answer.
Additional findings of fact may appear in the Analysis below.

ANALYSIS
The rejection of claims 1-10, 12-23, and 25-30 under 35 U.S.C. §101 as
being directed to non-statutory subject matter.
Claims 1-10
The Appellant is correct. The Examiner’s rationale does not apply to
apparatus claims. Accordingly, the rejection under §101 of claims 1-10 is
reversed.
Claims 12-23, 29, and 30
The Examiner’s rationale does apply to these claims and that is not in
dispute.
The law in the area of patent-eligible subject matter for process claims
has been clarified by the Supreme Court in Bilski v. Kappos, 130 S. Ct. 3218
(2010). The Examiner (Ans. 3-4) applied the machine-or-transformation test
to the claimed subject matter to find that the claims recite nonpatentable
subject matter in violation of §101. The Supreme Court stated in Bilski that,
albeit it ‘‘is not the sole test for deciding whether an invention is a patent-
eligible ‘process,’” the machine-or-transformation test is still a ‘‘useful and
important clue’’ and ‘‘investigative tool’’ for determining whether some
claimed methods are statutory processes.
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In that regard, the Examiner correctly concluded that the claimed
processes do not transform underlying subject matter into a different state of
thing and nor are they tied to a particular apparatus.
For his part, the Appellant does not dispute that the claimed processes
are not tied to a particular apparatus. However, the Appellant argues that
“[e]ach of these claims recite at least one step of ‘reimbursing the recipient
for medical expenses that were not covered by the recipient's medical plan
using the funds from one of two distinct reimbursement accounts.’[.]
Reimbursing someone for expenses is not an abstract concept but rather a
real world action. Moreover, these claims recites accounts whose funds are
altered (i.e., reduced) in accordance with the claimed invention. Such
alterations constitute transformation and thus satisfy the transformation
prong of the Bilski test.” Reply Br. 4-5.
We disagree with the Appellant. Reimbursing someone for expenses
is an abstract concept. Nor do we agree that accounts whose funds are
altered amounts to a transformation.
In our view, based on the record before us, there is sufficient
evidence to support a determination that a method claim is directed to an
abstract idea. Accordingly, we will sustain the rejection claims 12-23, 29
and 30 under §101.

Claims 25-28
The rejection of claims 25-28 is reversed pro forma, in light of their
rejection under the second paragraph of §112 (below).

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The rejection of claims 1-11 under 35 U.S.C. §112, second paragraph, as
being indefinite for failing to particularly point out and distinctly claim the
subject matter which applicant regards as the invention.
Claims 1-10
According to the Examiner, “[c]laim 1 recites the limitation ‘said
computer-implemented system’ in lines 3, 6-7, 9-10, and 12. There is
insufficient antecedent basis for this limitation in the claim.” Ans. 7.
We will reverse the rejection. Claim 1 begins with the phrase “[a]
computer system to implement. . . .” This is sufficient antecedent basis. At
the very least the phrase implies the use of a computer-implemented system.
Antecedent basis can be present by implication. See Slimfold Mfg. Co. v.
Kinkead Indus., Inc., 810 F.2d 1113, 1116 (Fed. Cir. 1987).
Claim 11
Claim 11 is included in the statement of the rejection (Ans. 7).
However, claim 11 has been cancelled. Accordingly, we do not treat it.

The rejection of claims 1-9, 12-14, and 16-22 under 35 U.S.C. §103(a) as
being unpatentable over Raskin, Javors, and Admitted Prior Art.
The Appellant argued claims 1-9, 13, 14, and 16-22 as a group (App.
Br. 11-14). We select claim 1 (supra) as the representative claim for this
group, and the remaining claims 2-9, 13, 14, and 16-22 stand or fall with
claim 1. 37 C.F.R. § 41.37(c)(1)(vii) (2007). Claim 12 is separately argued.
We begin by construing the claim 1.

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Claim 1 is drawn to a computer system. Claim 1 does not provide any
structural details about the computer system. Rather, claim 1 describes the
computer system functionally; that is, it a computer system that can:
 Administer a plan;
 Administer a first account; and,
 Administer a second account.
Claim 1 provides details about the plan and first and second accounts.
The plan is “a medical plan . . . which provides coverage for medical
expenses incurred by a health care recipient, where at least a portion of the
medical expenses are not covered by the medical plan” (claim 1).
The first account is “an available flexible spending account . . . which
provides funds for medical expenses that are not covered by the medical
plan” (claim 1).
And the second account is “an available health care reimbursement
account ... where ... reimbursement for uncovered medical expenses is
provided from the health care reimbursement account only when the funds in
the flexible spending account have been expended, wherein the medical plan
requires the health care recipient to pay a deductible for incurred medical
expenses up to a predefined maximum amount and the health care
reimbursement account may not be used to reimburse any deductible paid by
the health care recipient, thereby providing an incentive for the health care
recipient to establish a flexible spending account” (claim 1).
These plan and account details do not affect the computer system
structurally or functionally and therefore are best characterized as
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nonfunctional descriptive material which, as such, are not patentably
consequential.
Claim 1 does not limit the computer system in any way, structurally or
functionally, with respect to the administering of a plan and a first account.
Claim 1 does not limit the computer system, functionally only, with respect
to the administering a second account. In that regard, claim 1 requires the
computer system further to carry forward an unused portion of funds in the
second account for use by the health care recipient in subsequent years.
Accordingly, as reasonably broadly construed, claim 1 covers a
computer system capable of administering a plan and two accounts, and with
respect to a second account, further capable of carrying forward an unused
portion of funds.
Now we turn to the rejection.
The Examiner’s position (Ans. 8) is that Raskin discloses a computer
system implemented to administer the plan and two accounts as generally set
forth in claim 1 but not the more specific function of carrying forward an
unused portion of funds in the second account for use by the health care
recipient in subsequent years. In that regard, Javors and the Admitted Prior
Art are relied upon to show “an unused portion of the funds in the health
care reimbursement account may be carried forward for use by the health
care recipient in subsequent years” (Ans. 9). The Examiner concludes that it
would have been obvious to modify Raskin to include the forwarding feature
Javors and the Admitted Prior Art disclose.
The Appellant challenges the rejection on grounds unpersuasive as to
error in the rejection.
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All the arguments in support of the challenge go to steps for
establishing a flexible spending account in the context of paying for medical
expenses partially covered by a medical plan.“[A]pplicant's claimed
invention encourages an employee to establish a flexible spending account
and thus take an active role in planning and budgeting for expected medical
expenses. Absent this incentive, an employee may elect to establish only a
health care reimbursement account. Given the carry forward feature of the
health care reimbursement account, there is no need for the employee to take
an active role in planning and budgeting expected medical expenses.” App.
Br. 13. These steps, per se, are not germane to the claimed subject matter
because what is claimed is a computer system, not a method for establishing
a spending account. “[A]pparatus claims cover what a device is, not what a
device does.” Hewlett-Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464,
1468 (Fed. Cir. 1990).
Not finding any of the arguments challenging the rejection persuasive
as to error in the rejection of system claim 1, and given that the remaining
claims 2-9, 13, 14, and 16-22 stand or fall with claim 1, the rejection is
sustained.
As to claim 12, the Appellant separately argues its patentability. See
App. Br. 14. However, the Examiner specifically treated claim 12 in
rejecting the claims over the cited prior art combination (Ans. 12) and the
Appellant has not responded to the specifics of the Examiner’s position. The
argument does no more than present a general allegation that the art does not
teach any of the claim limitations. This is no more than merely pointing out
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the claim limitations (37 C.F.R. 41.37(c)(1)(vii)) and as such does not
persuasively show error in the rejection.

The rejection of claims 10 and 15 under 35 U.S.C. §103(a) as being
unpatentable over Raskin, Javors, Admitted Prior Art, and Papke.
The Appeal Brief does not appear to address this rejection.
Accordingly, we sustain it.

The rejection of claims 23 and 25-30 under 35 U.S.C. §103(a) as being
unpatentable over Raskin and Admitted Prior Art.
Claims 23, 29, and 30
Only claim 23 is addressed. See App. Br. 15. However, the argument
for its patentability is said to be for the reason that claim 12 is patentable.
Examiner specifically treated claim 23 in rejecting the claims over the cited
prior art combination (Ans. 16-17) and the Appellant has not responded to
the specifics of the Examiner’s position. The argument does no more than
present a general allegation that the art does not teach any of the claim
limitations. This is no more than merely pointing out the claim limitations
(37 C.F.R. 41.37(c)(1)(vii)) and as such does not persuasively show error in
the rejection of claim 23. The rejection of claims 29 and 30 is also affirmed.

Claims 25-28
The rejection of claims 25-28 is reversed pro forma, in light of their
rejection under the second paragraph of §112 (below). See In re Steele, 305
F.2d 859, 862-63 (CCPA 1962).
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NEW GROUNDS OF REJECTION
Claims 25-28 are rejected under 35 U.S.C. §112, second paragraph, as
being indefinite for failing to particularly point out and distinctly claim the
subject matter which applicant regards as the invention.
The dependency of claim 25 was changed to depend from claim 24
(see Response, filed May 21, 2008). Claim 24 has since been cancelled but
the dependency of claim 25 on claim 24 remains. Since a claim cannot
depend from a cancelled claim, claim 25 and claims 26-28 that depend from
it, are rejected under 35 U.S.C. §112, second paragraph, as being indefinite.

CONCLUSIONS
The rejection of claims 1-10 and 25-28 under 35 U.S.C. §101 as being
directed to non-statutory subject matter is reversed.
The rejection of claims 12-23, 29, and 30 under 35 U.S.C. §101 as
being directed to non-statutory subject matter is affirmed.
The rejection of claims 1-10 under 35 U.S.C. §112, second paragraph,
as being indefinite for failing to particularly point out and distinctly claim
the subject matter which applicant regards as the invention is reversed.
The rejection of claims 1-9, 12-14, and 16-22 under 35 U.S.C. §103(a)
as being unpatentable over Raskin, Javors, and Admitted Prior Art is
affirmed.
The rejection of claims 10 and 15 under 35 U.S.C. §103(a) as being
unpatentable over over Raskin, Javors, Admitted Prior Art, and Papke is
affirmed.
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The rejection of claims 23, 29, and 30 under 35 U.S.C. §103(a) as
being unpatentable over Raskin and Admitted Prior Art is affirmed.
The rejection of claims 25-28 under 35 U.S.C. §103(a) as being
unpatentable over Raskin and Admitted Prior Art is reversed.
Claims 25-28 are newly rejected under the second paragraph of 35
USC §112.

DECISION
The decision of the Examiner to reject claims 1-10, 12-23, 29, and 30
is affirmed.
The decision of the Examiner to reject claims 25-28 is reversed.

NEW GROUNDS
This decision contains a new ground of rejection pursuant to 37 C.F.R. §
41.50(b). 37 C.F.R. § 41.50(b) provides “[a] new ground of rejection
pursuant to this paragraph shall not be considered final for judicial
review.” 37 C.F.R. § 41.50(b) also provides that the Appellant, WITHIN
TWO MONTHS FROM THE DATE OF THE DECISION, must exercise
one of the following two options with respect to the new ground of rejection
to avoid termination of the appeal as to the rejected claims:

(1) Reopen prosecution. Submit an appropriate amendment of
the claims so rejected or new evidence relating to the claims
so rejected, or both, and have the matter reconsidered by the
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examiner, in which event the proceeding will be remanded to
the examiner . . . .
(2) Request rehearing. Request that the proceeding be reheard
under
§ 41.52 by the Board upon the same record . . . .

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).

AFFIRMED-IN-PART 37 C.F.R. § 41.50(b)

rvb