Tracy Ann. Weber et al.

Patent Trials and Appeals Board

Oct 21, 2019

15040265 - (D) (P.T.A.B. Oct. 21, 2019)

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.
15/040,265 02/10/2016 Tracy Ann Weber 065910/474642 1326
147005 7590 10/21/2019
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
MAHMOOD, REZWANUL
ART UNIT PAPER NUMBER
2164
NOTIFICATION DATE DELIVERY MODE
10/21/2019 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):
usptomail@alston.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte TRACY ANN WEBER, DAVID SHELDON, PRASANTH
VIJAYAKUMAR, and GREGORY WILLIAMS
Appeal 2018-008468
Application 15/040,265
Technology Center 2100
Before BETH Z. SHAW, JOYCE CRAIG, and JASON M. REPKO,
Administrative Patent Judges.
SHAW, Administrative Patent Judge.
DECISION ON APPEAL

Pursuant to 35 U.S.C. § 134(a), Appellant,1 appeals from the
Examiner’s decision to reject claims 1, 3, 6–9, 11, 14–17, 19, and 22–24
(“the pending claims”). Final Act. 1. Claims 2, 4, 5, 10, 12, 13, 18, 20, and
21 are canceled. App. Br. Claims App’x. We have jurisdiction under
35 U.S.C. § 6(b).

1 We use the word “Appellant” to refer to “Applicant” as defined in 37
C.F.R. § 1.42(a). Appellant identifies the real party in interest as CHANGE
HEALTH CARE LLC, the assignee of the above-referenced patent
application. App. Br. 2.
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We AFFIRM.
CLAIMED SUBJECT MATTER
The claims are directed to processing claims.
Claim 1, reproduced below, is illustrative of the claimed subject
matter:
1. A method for processing a claim, the method comprising:
processing, via one or more processors, a current claim
line in accordance with a first claims processing rule and a first
support claim line, wherein (a) the first claims processing rule
comprises (i) a rule name, (ii) an indication to not create a case
recommending denial or modification of the current claim line
when the current claim line and the first support claim line
satisfy the requirements for the first claims processing rule, and
(iii) an indication to automatically reference an inclusion table,
in addition to applying the first claims processing rule, to
determine whether to ignore the indication of the first claims
processing rule to not create a case recommending denial or
modification of the current claim line when the current claim
line and the first support claim line satisfy the requirements for
the first claims processing rule, and (b) the inclusion table
comprises a plurality of entries comprising an entry for the first
claims processing rule based at least in part on the rule name for
the first claims processing rule;
automatically determining, via the one or more
processors, whether an entry exists in the inclusion table for the
first claims processing rule based at least in part on the rule
name for the first claims processing rule, wherein the entry in
the inclusion table for the first claims processing rule is specific
to the first claims processing rule and comprises an indication
to create a case recommending denial or modification of the
current claim line thereby ignoring the indication of the first
claims processing rule to not create a case recommending
denial or modification of the current claim line when the current
claim line and the first support claim line satisfy the
requirements for the first claims processing rule;
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responsive to determining that an entry exists in the
inclusion table for the first claims processing rule, determining,
via the one or more processors, whether the current claim line
and the first support claim line satisfy the requirements of the
entry for the first claims processing rule in the inclusion table;
and
responsive to determining that the current claim line and
the first support claim line satisfy the requirements of the entry
for the first claims processing rule, creating, via the one or more
processors, a case recommending denial or modification of the
current claim line thereby ignoring the indication of the first
claims processing rule to not create a case recommending
denial or modification of the current claim line when the current
claim line and the first support claim line satisfy the
requirements for the first claims processing rule.
REFERENCES
The prior art relied upon by the Examiner is:
Chappel US 7,822,621 B1 Oct. 26, 2010
Szlam
Lyle
US 2007/0260646 A1
US 2012/0029950 A1
Nov. 8, 2007
Feb. 2, 2012

REJECTION
The Examiner rejected claims 1, 3, 6–9, 11, 14–17, 19, 22–24 under
35 U.S.C. § 103(a) as unpatentable over Chappel, Szlam, and Lyle. Final
Act. 13.
OPINION
Appellant argues the rejection based on the claims as a group. App.
Br. 10. As permitted by 37 C.F.R. § 41.37, we decide the rejection based on
claim 1. See 37 C.F.R. § 41.37(c)(1)(iv) (2016).
We have reviewed the Examiner’s rejections in light of Appellant’s
arguments that the Examiner has erred. We disagree with Appellant’s
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contentions that the Examiner erred in finding the combination of references
teach the disputed limitations recited in the pending claims.
First, Appellant argues that “by using an inclusion table, the claims
processing system can create cases for rules that are found in the inclusion
table-even when the corresponding claims processing rule indicates that a
case should not be created. In various embodiments, this can avoid the time
and expense of modifying the rules and editing the case after it has been
generated—the approach of Chappel.” App. Br. 14. Yet, the Examiner relies
on Lyle, not Chappel, as teaching the claimed “inclusion tables.” Ans. 4.
Appellant does not address the Examiner’s findings regarding Chappel in the
Reply Brief. In the absence of sufficient evidence or line of technical
reasoning to the contrary, we find no reversible error.
Next, Appellant argues Szlam does not teach or suggest “features of
accessing inclusions tables to potentially override the claims processing
rules.” App. Br. 20 (emphasis added); Reply Br. 6–9. Again, the Examiner
relies on Lyle, not Szlam alone, as teaching the claimed inclusion tables.
Ans. 4. The Examiner relies on Szlam to teach “wherein (a) the first claims
processing rule comprises (i) a rule name ... and (iii) an indication to
automatically reference a ... table in addition to applying the first claims
processing rule ... and (b) the ... table comprises a plurality of entries
comprising an entry for the first claims processing rule based at least in part
on the rule name for the first claims processing rule.” Ans. 6–7 (citing Szlam
¶¶ 11, 16–18, 21, Figures 3–5).
With respect to Lyle, Appellant argues “Lyle notes that exceptions
can be used to ignore standard rules.” App. Br. 25. Appellant repeats the
claim language and states “Lyle simply does not support the Examiner’s
allegation.” Id. at 27. Appellant does not provide any specific reasoning in
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the Appeal Brief to support the allegation that Lyle fails to teach the claim
language. Appellant merely reiterates what the disputed claim limitations
recite and makes general allegations as to the teachings of Lyle. See App.
Br. 25–27. Merely reciting the language of the claims and asserting that the
cited prior art reference does not teach or suggest each claim limitation is
insufficient. See 37 C.F.R. § 41.37(c)(vii) (“A statement which merely
points out what a claim recites will not be considered an argument for
separate patentability of the claim.”); see also In re Lovin, 652 F.3d 1349,
1357 (Fed. Cir. 2011) (“[W]e hold that the Board reasonably interpreted
Rule 41.37 to require more substantive arguments in an appeal brief than a
mere recitation of the claim elements and a naked assertion that the
corresponding elements were not found in the prior art.”).
Finally, Appellant makes a general allegation that the Examiner uses
“impermissible hindsight” and did not consider the claims “as a whole.”
App. Br. 8, 9; Reply Br. 1, 2. We are not persuaded by this conclusory
statement because as the Examiner explains (see Ans. 3):
Any judgment on obviousness is . . . necessarily a
reconstruction based on hindsight reasoning, but so long as it
takes into account only knowledge which was within the level
of ordinary skill at the time the claimed invention was made
and does not include knowledge gleaned only from applicant’s
disclosure, such a reconstruction is proper.
In re McLaughlin, 443 F.2d 1392, 1395 (CCPA 1971). See also Radix Corp.
v. Samuels, 13 USPQ2d 1689, 1693 (D.D.C. 1989) (“[A]ny obviousness
inquiry necessarily involves some hindsight.”).
Here, the Examiner’s reasons for combining teachings from Chappel,
Szlam, and Lyle are based on the teachings of Chappel, Szlam, and Lyle.
See Final Act. 11–12. These reasons do not include knowledge gleaned only
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6
from Appellant’s disclosure. Accordingly, we are not persuaded that one
having ordinary skill in the art would not have been motivated to combine
Chappel, Szlam, and Lyle.
Accordingly, we sustain the Examiner’s rejection of the pending
claims.2
DECISION
The Examiner’s rejection of claims 1, 3, 6–9, 11, 14–17, 19, 22–24 is
affirmed.
DECISION SUMMARY
Claims
Rejected
Basis Affirmed Reversed
1, 3, 6–9,
11, 14–17,
19, 22–24
§ 103(a) 1, 3, 6-9,
11, 14–17,
19, 22–24

FINALITY AND RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).
AFFIRMED

2 In the event of further prosecution, we leave it to the Examiner to consider
whether the claimed subject matter is judicially-excepted from patent
eligibility under 35 U.S.C. § 101. Although the Board is authorized to reject
claims under 37 C.F.R. § 41.50(b), no inference should be drawn when the
Board elects not to do so. See Manual of Patent Examining Procedure §
1213.02 (9th ed., Jan. 2018).