Ex Parte Woods et al

Patent Trial and Appeal Board

Aug 21, 2018

12965286 (P.T.A.B. Aug. 21, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/965,286 12/10/2010
8698 7590 08/23/2018
STANDLEY LAW GROUP LLP
6300 Riverside Drive
Dublin, OH 43017
FIRST NAMED INVENTOR
Joe Paul Woods
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.
HUM 2027-095 6503
EXAMINER
GILLIGAN, CHRISTOPHER L
ART UNIT PAPER NUMBER
3626
NOTIFICATION DATE DELIVERY MODE
08/23/2018 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):
s tandleydocketing@standley llp .com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JOE PAUL WOODS and
ELIZABETH TYRA GERLACH HILLIARD
Appeal2016-007583
Application 12/965,286 1
Technology Center 3600
Before HUBERT C. LORIN, NINA L. MEDLOCK, and
ROBERT J. SILVERMAN, Administrative Patent Judges.
SILVERMAN, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
The Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's
decision rejecting claims 1-20. We have jurisdiction under 35 U.S.C.
§ 6(b).
We AFFIRM.
1 The Appellants (Appeal Br. 2) identify Humana, Inc. as the real party in
interest. Because the Appeal Brief does not bear page numbering, we regard
the pages thereof as numbered consecutively, beginning with the first page
(which bears the case caption).
Appeal 2016-007583
Application 12/965,286
ILLUSTRATIVE CLAIM
1. A computerized method for providing enhanced
health benefits to a plurality of members of a health plan
compnsmg:
(a) storing in a plan database data elements for a standard
health plan;
(b) storing in said plan database data elements for an
enhanced health plan;
( c) receiving at a health plan administration server
standard health plan enrollment data for a plurality of members
enrolled in said standard health plan;
( d) receiving at a shared data repository enhanced health
plan enrollment data for at least one member, said data
responsive to an offer presented to all of said plurality of
members to participate in said enhanced health plan;
( e) in response to receiving said enhanced plan
enrollment data, identifying for said member electing to
participate in said enhanced health plan at least one health
activity for determining said member's eligibility for enhanced
benefits under said enhanced health plan;
(f) receiving at said shared data repository an indicator
that said member has completed said at least one health activity;
(g) updating at said shared data repository said enhanced
health plan enrollment data to indicate said member is eligible
for enhanced benefits under said enhanced benefit plan;
(h) adding identifying data for said member to a trigger
file at said shared data repository identifying members
completing prerequisites for said enhanced health plan;
(i) transmitting said trigger file from said shared data
repository to said health plan administration server;
(j) transmitting from said health plan administration
server to a plurality of portals an alert code indicating said
member is eligible for said enhanced benefits; and
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Application 12/965,286
(k) processing at said health plan administration server an
insurance claim for said member according to said enhanced
benefits of said enhanced benefit plan.
REJECTION2
Claims 1-20 are rejected under 35 U.S.C. § 101 as ineligible subject
matter.
FINDINGS OF FACT
The findings of fact relied upon, which are supported by a
preponderance of the evidence, appear in the following Analysis.
ANALYSIS
Laws of nature, natural phenomena, and abstract ideas are deemed
ineligible for patenting, because they are regarded as the basic tools of
scientific and technological work, such that their inclusion within the
domain of patent protection would risk inhibiting future innovation premised
upon them. Ass 'nfor Molecular Pathology v. Myriad Genetics, Inc.,
569 U.S. 576, 589 (2013). Of course, "[a]t some level, 'all inventions ...
embody, use, reflect, rest upon, or apply"' these basic tools of scientific and
technological work. Alice Corp. v. CLS Bankint'l, 134 S. Ct. 2347, 2354
(2014) ( citation omitted). Accordingly, ascertaining ineligible subject
matter involves a two-step framework for "distinguish[ing] between patents
that claim the buildin[g] block[ s] of human ingenuity and those that integrate
the building blocks into something more, ... thereby transform[ing] them
into a patent-eligible invention." Id. (internal quotation marks and citation
2 The Final Office Action (pages 2-3) includes a rejection of claims 1-20
under 35 U.S.C. § 112, first paragraph. This rejection is withdrawn. See
Advisory Action (Mar. 6, 2015) Continuation Sheet.
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Application 12/965,286
omitted). The first step determines whether the claim is directed to
judicially excluded subject matter (such as a so-called "abstract idea"); the
second step determines whether there are any "additional elements" recited
in the claim that ( either individually or as an "ordered combination") amount
to "significantly more" than the identified judicially excepted subject matter
itself. Id. at 2355.
With regard to the first Alice step, the Final Office Action states that
the claims are directed to the abstract idea of "organizing human activities to
enroll in a health plan and the fundamental economic practice of processing
insurance claims." Final Action 4.
Id.
As to the second Alice step, the Final Office Action states:
The additional element(s) or combination of elements in the
claim( s) other than the abstract idea per se amount( s) to no
more than: recitation of generic computer structure that serves
to perform generic computer functions that are well-understood,
routine, and conventional activities previously known to the
industry. Viewed as a whole, these additional claim element( s)
do not provide meaningful limitation(s) to transform the
abstract idea into a patent eligible application of the abstract
idea such that the claim( s) amounts to significantly more than
the abstract idea itself.
Disputing the rejection, the Appellants present two arguments in the
Appeal Brief. Because the Appellants argue claims 1-20 collectively, the
following analysis refers specifically to independent claim 1. See 3 7 C.F .R.
§ 4I.37(c)(l)(iv).
First, the Appellants argue:
The Examiner has identified not one, but two, abstract
ideas to which the claims are directed. The Examiner notes
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Application 12/965,286
the claims relate to both enrolling in a health plan as well as
processing of insurance claims, each of which is associated
with a different abstract idea. The Examiner's identification of
two different types of activities as abstract ideas indicates the
claims are not directed to "an abstract idea" and are in fact,
directed to significantly more than "an abstract idea."
Appeal Br. 5---6.
In response, the Examiner states:
[E]ven if the claims were said to be directed to more than one
abstract idea, the presence of multiple abstract ideas in a claim
is not, alone, sufficient to transform the claim into patent-
eligible subject matter. Appellant has not shown, nor is the
examiner aware of, any authority to support such a position.
Answer 3.
The Appellants' first argument is not persuasive of error. As
explained above, all inventions employ fundamental building blocks, such as
abstract ideas. See Alice, 134 S. Ct. at 2354. The Appellants concede that
such a building block, in isolation, would not be eligible for patenting, but
argues that combinations thereof should be eligible. See Appeal Br. 5---6.
However, the Appellants do not explain why the asserted compounding of
abstract ideas, here, would elevate the subject matter above the level of an
abstract idea.
As a second argument, the Appellants contend that "[t]he claims are
much more specific and detailed than the two abstract ideas of enrolling in a
health plan and processing insurance claims," specifically including steps
that are not well-understood, routine, and conventional in the area ofhealth-
insurance plan processing and enrollment. Appeal Br. 6. This second
argument, which focuses on the second step of the Alice framework,
identifies three claim elements as amounting to significantly more than the
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identified abstract ideas: a "shared data repository" including "an indicator
that said member has completed said at least one health activity"; a "trigger
file" to (1) identify members that have completed prerequisites for an
enhanced health plan and (2) accomplish communication with the health
plan administration server; and an "alert code indicating said member is
eligible for said enhanced benefits" that is sent to multiple portals. Appeal
Br. 6 ( emphasis added). The Appellants also submit that, on account of
these recited elements, the claimed subject matter is "rooted in computer
technology." Id.
However, as the Examiner explains - leaving aside the extent to
which the Appellants' identified claim elements coincide with the health-
insurance-enrollment abstract idea - these claim elements are routine
computer functionalities that do not amount to significantly more than the
abstract idea. See Answer 3--4. The Examiner explains:
For example, with respect to claim 1, storing data in a data
base, routing data through a server, receiving and updating data
in a shared data repository, adding data to a file, transmitting
data between a data repository and a server, transmitting a code
between a server and a portal, and processing data on a server
are all well-understood, routine, and conventional activities of
generic computer-network-based systems. Such generic
computer-network-based system merely serve to generally link
the abstract idea to a particular technological environment.
Id. at 4. Indeed, "limiting the use of an abstract idea to a particular
technological environment" is "not enough for patent eligibility." Alice,
134 S. Ct. at 2358 (internal citations and quotation omitted). Accordingly,
the Appellants' second argument is not persuasive of error in the rejection.
Therefore, in view of the foregoing analysis, we sustain the rejection
of claims 1-20 under 35 U.S.C. § 101.
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DECISION
We AFFIRM the Examiner's decision rejecting claims 1-20 under
35 U.S.C. § 101.
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
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