Ex Parte Zubiller et al

Patent Trial and Appeal Board

Jan 10, 2018

13189166 (P.T.A.B. Jan. 10, 2018)

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.
13/189,166 07/22/2011 Matthew Brayton Zubiller 065910/408322 9665
147005 7590 01/12/2018
Change Healthcare LLC and Alston & Bird LLP
c/o Alston & Bird LLP
Bank of America Plaza
101 South Tryon Street, Suite 4000
Charlotte, NC 28280-4000
EXAMINER
HOLCOMB, MARK
ART UNIT PAPER NUMBER
3686
NOTIFICATION DATE DELIVERY MODE
01/12/2018 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):
u sptomail @ alston .com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MATTHEW BRAYTON ZUBILLER, JIM EVANS,
and ROSE MARIE HIGGINS1
Appeal 2016-007087
Application 13/189,166
Technology Center 3600
Before ALLEN R. MacDONALD, BETH Z. SHAW, and
AMBER L. HAGY, Administrative Patent Judges.
MacDONALD, Administrative Patent Judge.
DECISION ON APPEAL
1 Appellants identify McKesson Financial Holdings as the real party in
interest.
Appeal 2016-007087
Application 13/189,166
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from a rejection of claims
4, 6—11, 13—18, and 20-29. Claims 1—3, 5, 12, and 19 have been canceled.
App. Br. 10-15. We have jurisdiction under 35 U.S.C. § 6(b).
Appellants ’ Invention
The present invention generally relates to systems and methods for
determining, or facilitating determination of, appropriateness of medical
procedures and an appropriate lab/facility to provide medical services to
patients. Spec. 1.
Representative Claim
Representative claim 11 under appeal reads as follows (emphasis and
brackets added).
11. A method comprising:
[A.] receiving one or more proposed medical diagnosis of a
patient;
[B.] applying one or more rules in order to automatically
identify one or more potential medical services to be performed with
respect to the patient, the identified one or more medical services
being deemed relevant to the proposed medical diagnosis;
[C.] receiving selection of a potential medical service from the
identified one or more potential medical services;
[D.] presenting an automated, real-time indication regarding
plan coverage for the selected medical service based on at least one
of the patient, a provider and the paying entity/plan rules of the
patient[;]
[E.] reviewing data relating to one or more transactions
including transactions related to the proposed medical diagnosis, the
potential medical services or the plan coverage based on rules applied
to the transactions;
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[F.] tracking, with a computer processor, a trend or a variation
in utilization, network selection, payment or adjudication and to
compare the variation to a norm based upon the review of the data
relating to one or more transactions;
[G.] utilizing a norm set by a user or the system or established
with reference to another source of data including one or more of a
health information system (HIS), an electronic medical record
(EMR), a lab/facility information system (LIS), a case management
system, a contracts system or a claims management system;
[H.] normalizing the variation that is identified from the review
of the data relating to one or more transactions, wherein normalizing
the variation comprises normalizing the variation per a respective
geographical region, product or network in which the variation
occurs; and
[I.] providing a suggestion or an option to address the variation
that has been identified.
Rejection
The Examiner rejected claims 4, 6—11, 13—18, and 20—29 under
35 U.S.C. § 101 “because the claimed invention is directed to a judicial
exception (i.e., a law of nature, a natural phenomenon, or an abstract idea)
without significantly more” (Feb. 26, 2015 Non-Final Act. 3), i.e., for being
patent-ineligible subject matter.2
2 We select claim 11 as representative. Separate patentability, in compliance
with 37 C.F.R. § 41.37(c)(iv), is not argued for claims 4, 6—10, 13—18, and
20—29. Except for our ultimate decision, this rejection of claims 4, 6—10,
13—18, and 20—29 is not discussed further herein.
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Application 13/189,166
Issue on Appeal
Did the Examiner err in rejecting claim 11 for being directed to
patent-ineligible subject matter?
ANALYSIS
We have reviewed the Examiner’s rejections in light of Appellants’
arguments (Appeal Brief and Reply Brief) that the Examiner has erred. We
disagree with Appellants’ conclusions and concur with the conclusions
reached by the Examiner. Except as noted below, we adopt as our own the
reasoning set forth by the Examiner in the Examiner’s Answer. We
highlight the following points.
A. Section 101
Under 35 U.S.C. § 101, a patent may be obtained for “any new and
useful process, machine, manufacture, or composition of matter, or any new
and useful improvement thereof.” The Supreme Court has “long held that
this provision contains an important implicit exception: Laws of nature,
natural phenomena, and abstract ideas are not patentable.” Alice Corp. v.
CLS BankInt’l, 134 S. Ct. 2347, 2354 (2014) (quoting Ass’n for Molecular
Pathology v. Myriad Genetics, Inc., 133 S. Ct. 2107, 2116 (2013)). 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 these concepts.” Alice, 134 S. Ct. at 2355. The first
step in that analysis is to “determine whether the claims at issue are directed
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Application 13/189,166
to one of those patent-ineligible concepts,” such as an abstract idea. For
example, a fundamental economic practice is an abstract idea.
[In Bilski v. Kappas], the Court grounded its conclusion that all
of the claims at issue were abstract ideas in the understanding
that risk hedging was a “ ‘fundamental economic practice.’ ” 561
U.S., at 611, 130 S.Ct. 3218.
Alice, 134 S.Ct. at 2357.
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
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). If
the claims are not directed 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 the additional elements ‘transform the nature of the claim’ into a
patent-eligible application.” Alice, 134 S. Ct. at 2355 (quoting Mayo, 132 S.
Ct. at 1298, 1297).
B. Alice/Mayo - Step 1
The Examiner concludes claim 11 is
directed to a series of steps, elements or instructions related to
determine heatlh [sic] plan coverage for a patient and to track
statistical variation in relevant data, which is an abstract idea.
Feb. 26, 2015 Non-Final Act. 3.
Appellants contend claim 11
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define[s] a [] method [] in substantially greater detail including a
number of different acts that work in combination so as to go
well beyond the abstract idea as alleged by the Official Action
and to, instead, define statutory subject matter.
App. Br. 6.
Applicant notes that [claim 11] include[s] a lengthy recitation of
a particular technique for determining plan coverage for a
selected medical service and for otherwise analyzing data
relating to transactions involving the proposed medical
diagnosis.
App. Br. 8.
[T]he particular technique that is the subject of [claim 11]
determines the plan coverage and presents a real-time indication
such that any modifications or corrections of the plan coverage
can be performed in a timely manner and without undesired
further expenditure of processing resources in conjunction with
the processing associated with plan coverage that is subsequently
determined to be incorrect or insufficient.
App. Br. 8.
The Examiner responds:
[Claim 11] merely encompasses the abstract ideas of generating
rule-based tasks for processing an insurance claim (determining
plan coverage and related statistical information); comparing
new (received diagnosis) and stored information (rules, plan
rules, transaction data) and using rules to identify options (rules
used to identify potential medical services based on diagnosis, to
present coverage determination based on potential medical
service, rules to track a trend or variation, normalize the variation
and provide information on variation) (Smartgene [555 Fed.
Appx. 950 (Fed. Cir. 2014)]); and/or using categories to
organize, store and transmit information (data is labeled in
particular categories to such as rules, medical diagnosis, etc. in
order to assemble, process and communicate information to the
user).
Ans. 6—7.
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We are unpersuaded by Appellants’ arguments. Contrary to
Appellants’ assertion, we conclude the character of claim 11 as a whole is
directed to a fundamental economic practice in the form of a method for
determining, or facilitating determination of, appropriateness of medical
procedures and an appropriate lab/facility to provide medical services to
patients.
Further, Appellants’ Specification is replete with discussion of the
claimed fundamental economic practices in the form of “eligibility,
payment, contract, and benefits rules.” Spec. 2:15—19. “[T]he system may
be tuned by the user to produce optimized results or outcomes based on
quality, cost, outcomes, use and benefit.” Spec. 14:22—24.
[T]he rules developed and applied in the system may be
interconnected and tie the areas/departments that manage a
benefit together from utilization management to network
management to risk, payment, and claims management.
Exemplary embodiments of the present invention may therefore
create a closed logic loop. In this regard, the rules may be
represented as knowledge packs for clinical policy, medical
policy, network policy, contract policy, and payment policy.
Spec. 14:25-30.
C. Alice/Mayo - Step 2
Turning to the second part of the Alice!Mayo analysis, the Examiner
concludes claim 11 does
not include additional elements that are sufficient to amount to
significantly more than the judicial exception because 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:
(i) mere instructions to implement the idea on a computer and/or
(ii) recitation of generic computer structure that serves to
perform generic computer functions that are well-understood,
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routine, and conventional activities previously known to the
pertinent industry.
Feb. 26, 2015, Non-Final Act. 3^4.
Appellants contend claim 11 recites significantly more because:
[T]he independent claims address particular technological
problems arising out of the determination of plan coverage, such
that the claims encompass subject matter that has been identified
as “significantly more” by the Federal Circuit (see, e.g., DDR
Holdings v. Hotels.com).
App. Br. 8.
Additionally, the instant invention addresses problems
attributable to variations in utilization, network selection,
payment or adjudication such that the manner in which the
transactions related to a medical diagnosis are handled can be
performed consistently, if so desired, without undesired further
expenditure of processing resources in conjunction with the
processing of transactions that are subsequently determined to be
incorrect due to the underlying variations. Thus, similar to DDR,
the claims are directed to overcoming a problem specifically
arising in the realm of computer technology, namely, issues
relating to the timely determination of plan coverage and the
tracking of variations and the provision of suggestions or options
for addressing the identified variations.
App. Br. 8.
[T]he [] method [] of [claim 11 is] “necessarily rooted in
computer technology” to overcome a problem specifically
arising in computer systems that determine plan coverage and
analyze data regarding transactions related to proposed medical
diagnosis.
App. Br. 9.
We do not agree. 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. As to claim 1 l’s “computer
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processor” and “network,” Federal Circuit precedent states that “generic
computer components such as an ‘interface,’ ‘network,’ and ‘database’ ....
do not satisfy the inventive concept requirement.” Mortg. Grader, Inc. v.
First Choice Loan Servs. Inc., 811 F.3d 1314, 1324—25 (Fed. Cir. 2016). In
light of Appellants’ Specification, we conclude the claimed computer
components are generic. As to the claimed “computer processor,”
Appellants’ Specification states the invention can “be embodied in one or
more processing elements, such as one or more of a laptop computer,
desktop computer, server computer or the like” and, as to the claimed
“network,” it states:
The networked services can comprise any of a number of
different combinations of one or more different types of
networks, including social, data and/or voice networks. For
example, the network(s) can include one or more data networks,
such as a local area network (LAN), a metropolitan area network
(MAN), and/or a wide area network (WAN) (e.g., Internet), and
include one or more voice networks, such as a public-switched
telephone network (PSTN).
Spec. 5.
Further, Appellants’ argument overlooks that, to impart eligibility
under § 101, the claimed “solution” must be a technical solution. Bascom
Global Internet Servs., Inc. v. AT&T Mobility LLC, 827 F.3d 1341, 1351
(Fed. Cir. 2016). Appellants’ argument does not explain how either the
problem or claimed solution here are technical. Unlike the claims at issue in
cases such as DDR Holdings LLC v. Hotelscom LP, 773 F.3d 1245, 1257
(Fed. Cir. 2014) (claims at issue are “necessarily rooted in computer
technology in order to overcome a problem specifically arising in the realm
of computer networks”), and Enfish, LLC v. Microsoft Corp., 822 F.3d 1327,
1339 (Fed. Cir. 2016) (claims at issue are “directed to a specific
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implementation of a solution to a problem in the software arts”), Appellants
merely address a business issue through the use of generic, computer-related
recitations that do not add meaningful limitations to steps otherwise directed
to an abstract idea.
Appellants also overlook that our reviewing court has cautioned
against Appellants’ position in the DDR Holdings decision.
We caution, however, that not all claims purporting to address
Internet-centric challenges are eligible for patent. For example,
in our recently-decided Ultramercial opinion, the patentee
argued that its claims were “directed to a specific method of
advertising and content distribution that was previously
unknown and never employed on the Internet before.” 772 F.3d
at 714. But this alone could not render its claims patent-eligible.
In particular, we found the claims to merely recite the abstract
idea of “offering media content in exchange for viewing an
advertisement,” along with “routine additional steps such as
updating an activity log, requiring a request from the consumer
to view the ad, restrictions on public access, and use of the
Internet.” Id. at 715—716.
DDR Holdings, 773 F.3d at 1258. The DDR Holdings decision required
more from a “solution” before finding a claim to be rooted in computer
technology.
The ’399 patent’s claims are different enough in substance from
those in Ultramercial because they do not broadly and
generically claim “use of the Internet” to perform an abstract
business practice (with insignificant added activity). Unlike the
claims in Ultramercial, the claims at issue here specify how
interactions with the Internet are manipulated to yield a desired
result—a result that overrides the routine and conventional
sequence of events ordinarily triggered by the click of a
hyperlink. Instead of the computer network operating in its
normal, expected manner by sending the website visitor to the
third-party website that appears to be connected with the clicked
advertisement, the claimed system generates and directs the
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visitor to the above-described hybrid web page that presents
product information from the third-party and visual “look and
feel” elements from the host website. When the limitations of the
’399 patent’s asserted claims are taken together as an ordered
combination, the claims recite an invention that is not merely
the routine or conventional use of the Internet.
773 F.3d at 1258—59 (emphasis added). In other words, the claimed
invention in DDR Holdings did not merely use the Internet, but rather
changed how interactions on the Internet operated.
D. Other 101 Arguments
1
Appellants contend, as to claim 11, “the claims do not preempt every
application of an idea.” App. Br. 8 (emphasis added). Appellants’
pre-emption argument overlooks that the Court’s Alice two-step (abstract
idea/significantly more) analysis is the Court’s framework for determining
pre-emption.
[W]e set forth a frame-work for distinguishing patents that claim
laws of nature, natural phenomena, and abstract ideas from those
that claim patent-eligible applications of those concepts.
Alice, 134 S. Ct. at 2355. Contrary to Appellants’ argument, the Examiner
applied this Alice framework in the February 26, 2015, Non-Final Action.
2
Appellants also contend as to claim 11:
[T]he failure of the Official Action to raise any prior art
rejection is evidence that the claims include “a specific limitation
other than what is well-understood, routine and conventional in
the field” and include “unconventional steps that confine the
claim to a particular useful application”.
App. Br. 9 (emphasis added).
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We are not persuaded by Appellants’ argument. Although the second
step in the Alice!Mayo analysis includes a search for an inventive concept,
the analysis is not an evaluation of novelty or nonobviousness, 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, 134 S. Ct. at 2355 (quoting
Mayo, 132 S. Ct. at 1294). A novel and nonobvious claim directed to a
purely abstract idea is, nonetheless, patent-ineligible. See Mayo, 132 S. Ct.
at 1303—1304 (rejecting the suggestion that Sections 102, 103, and 112
might perform the appropriate screening function and noting that in Mayo
such an approach “would make the ‘law of nature’ exception ... a dead
letter”). Further, “under the Mayo/Alice framework, a claim directed to a
newly discovered law of nature (or natural phenomenon or abstract idea)
cannot rely on the novelty of that discovery for the inventive concept
necessary for patent eligibility.” Genetic Techs. Ltd. v. Merial L.L.C., 818
F.3d 1369, 1376 (Fed. Cir. 2016).
3
Appellants also contend as to claim 11
as recently highlighted by the Federal Circuit in Bascom Global
Internet Services, Inc. v. ATT Mobility LLC, [827 F.3d 1341]
(June 27, 2016), the claim elements must not only be considered
individually as set forth in "B)" on page 8 of the Examiner's
Answer, but also in combination as even conventional elements
may be combined in unique and patentable manners.
Reply Br. 3 (emphasis added).
We are not persuaded by Appellants’ argument. Although Appellants
allege the combination of claim elements is “unique and patentable” (i.e.,
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more than a claim to the abstract idea itself), Appellants fail to provide any
reasoning or support for this conclusory assertion.
The “inventive concept” may arise in one or more of the individual
claim limitations or in the ordered combination of the limitations. Alice, 134
S. Ct. at 2357. However, we concur with the Examiner’s conclusion. Here,
unlike the claims at issue in Bascom, claim 11 does not introduce a
technological advance or improvement. It contains nothing that “amounts to
significantly more than a patent upon the [abstract idea] itself.” Id. See
Synopsys, Inc. v. Mentor Graphics Corporation, 839 F.3d 1138, 1152
(2016).
CONCLUSION
(1) The Examiner has not erred in rejecting claims 4, 6—11, 13—18,
and 20—29 under 35 U.S.C. § 101, as being directed to patent-ineligible
subject matter.
(2) Claims 4, 6—11, 13—18, and 20—29 are not patentable.
DECISION
The Examiner’s rejection of claims 4, 6—11, 13—18, and 20—29 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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