Christopher Henderson et al.Download PDFPatent Trials and Appeals BoardOct 15, 20212021000607 (P.T.A.B. Oct. 15, 2021) Copy Citation 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. 13/246,060 09/27/2011 Christopher Henderson 283191 4238 23460 7590 10/15/2021 LEYDIG VOIT & MAYER, LTD TWO PRUDENTIAL PLAZA, SUITE 4900 180 NORTH STETSON AVENUE CHICAGO, IL 60601-6731 EXAMINER TOMASZEWSKI, MICHAEL ART UNIT PAPER NUMBER 3686 NOTIFICATION DATE DELIVERY MODE 10/15/2021 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): Chgpatent@leydig.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte CHRISTOPHER HENDERSON, STEPHEN BAINES, and ROBERT GRAYBILL ____________ Appeal 2021-000607 Application 13/246,060 Technology Center 3600 ____________ Before NINA L. MEDLOCK, TARA L. HUTCHINGS, and AMEE A. SHAH, Administrative Patent Judges. SHAH, Administrative Patent Judge. DECISION ON REQUEST FOR REHEARING STATEMENT OF THE CASE Pursuant to 37 C.F.R. § 41.52, the Appellant1 filed a Request for Rehearing (“Request” or “Req.”) on August 23, 2021. The Request seeks reconsideration of our Decision on Appeal, mailed June 23, 2021 (“Decision” or “Dec.”) affirming the Examiner’s rejection of claims 1–3, 6–13, and 15–20 under 35 U.S.C. § 101 as being directed to a judicial 1 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42. Appeal 2021-000607 Application 13/246,060 2 exception without significantly more. We have jurisdiction over the Request under 35 U.S.C. § 6(b). DISCUSSION A request for rehearing is properly limited to previously addressed matters that an appellant believes the Board has misapprehended or overlooked. It is not an opportunity to further develop the record through the introduction of new evidence and/or arguments. Neither is it an opportunity to merely express disagreement with the Board’s decision.2 Here, the Board, in its prior Decision agreed with the Examiner’s determination that claim 1,3 taken as representative, recites “an abstract idea 2 “[A] request for rehearing must state with particularity the points believed to have been misapprehended or overlooked by the Board. Arguments not raised, and Evidence not previously relied upon . . . are not permitted in the request for rehearing except as permitted by paragraphs (a)(2) through (a)(4).” 37 C.F.R. § 41.52(a)(1). Permitted new arguments are limited to: (a) a new argument based upon a recent relevant decision of either the Board or a Federal Court; (b) new arguments responding to a new ground of rejection designated pursuant to 37 C.F.R. § 41.50(b); or (c) new arguments that the Board’s decision contains an undesignated new ground of rejection. See 37 C.F.R. § 41.52(a)(2)–(a)(4). 3 Claim 1 recites (with added bracketing for reference): A method, carried out by a networked computer based health care provider ranking system including a database having user information stored therein relating to a health care service consumer, for providing an incentive, based upon a service provider ranking based in-part upon an averaged cost of a particular medical procedure rendered by a particular service provider, for the health care service consumer for using a particular health care service provider, selected from a ranked listing of health care service providers, to perform a medical procedure, the method comprising: [(a)] receiving, by the networked computer based health care provider ranking system, a user identification for the health care service consumer; Appeal 2021-000607 Application 13/246,060 3 [(b)] acquiring, by the networked computer based health care provider ranking system, a user demographic information data set corresponding to the health care service consumer; [(c)] receiving, by the networked computer based health care provider ranking system, a medical procedure selected for the health care service consumer; [(d)] generating, by the networked computer based health care provider ranking system based upon the user demographic information data set and the medical procedure selected for the health care service consumer, a ranking of health care service providers for performing the medical procedure, wherein the ranking includes the particular health care service provider for which the incentive is provided; [(e)] storing as an entry in the database, by the networked computer based health care provider ranking system after the generating, the ranking of health care service providers for performing the medical procedure; [(f)] confirming, by the networked computer based health care provider ranking system, completion of the medical procedure, on the health care service consumer, by the particular health care service provider, wherein the confirming includes comparing data generated as a result of completing the medical procedure to information relating to the ranking; and [(g)] issuing in response to the confirming, by the networked computer based health care provider ranking system, the incentive to a designated recipient, [(h)] wherein the particular health care service provider is a medical facility, [(i)] wherein the medical procedure is associated with at least two distinct codes based upon procedure complexity, and [(j)] wherein the ranking of health care service providers for performing the medical procedure is determined, at least in part, by a weighted average reimbursement to ones of the health care service providers for the medical procedure associated with at least two distinct codes, the weighted average reimbursement for one of the health care service providers being a function of: a quantity of a provider-type sub-component of the medical procedure performed and a contractual allowed reimbursement amount for the provider-type subcomponent for each of the at least two distinct codes based upon procedure complexity. Appeal 2021-000607 Application 13/246,060 4 including mathematical concepts, mental processes and/or certain methods of organizing human activity” and noted that “the Appellant admits that the claim falls within the category of organizing human behavior and thus recites an abstract idea.” Dec. 8–9 (citation omitted). We further determined that the additional elements, beyond the abstract idea comprise the “networked computer based health care provider ranking system including a database,” which is no more than a generic computer system (Dec. 14 (citing Spec. ¶ 27)), and found no error in the Examiner’s determination that the claimed limitations do not integrate the abstract idea into a practical application, as the term is used in USPTO guidance. Id. at 9–17; MPEP § 2106.04. The Appellant asserts in the Request for Rehearing that the Board disregards, simply because the invention arises from the operation of a (uniquely) programmed computer system, the fact that the claimed invention: (1) renders a new type of data that was never previously available, and (2) a new use for the new type of data. Instead, the Decision appears to impose a “hardware” requirement that, if correct, would invalidate thousands of patents that are rooted in new combinations of data and software that processes such data.” Req. 1–2. Specifically, the Appellant “requests reconsideration of the Decision’s: (1) characterization of Appellant’s claimed invention (at page 2 of the Decision), (2) application of a previous decision to Appellant's specifically recited invention (at page 15 of the Decision), and (3) the disregard of separately argued claims 16 and 19.” Id. at 3. Appeal 2021-000607 Application 13/246,060 5 ANALYSIS The Appellant’s request for reconsideration of the Decision’s “characterization of Appellant’s claimed invention (at page 2 of the Decision)” (Req. 3) is not a proper basis for rehearing, because it is a new argument and does not direct our attention to particular matters that we may have misapprehended or overlooked. See Req. 3–4. For example, the Appellant newly argues that the “claimed invention is directed to an improvement to a particular network system that is rootied [sic] in rendering a new type of information.” Id.; see also id. at 4 (“Rendering a key piece of unavailable information that facilitates generating a meaningful output to a user is a technological improvement of an existing system[.]”). We note that at page 2 of the Decision, we simply quoted the Appellant’s Specification as to what the invention relates and reproduced pending claim 1. At pages 11 through 17 of the Decision, we explained why we found unpersuasive the arguments the Appellant presented in the Appeal and Reply Briefs that under USPTO guidance’s Step 2A, Prong Two, the preamble and combination of certain elements (including the wherein clauses) integrate the abstract idea into a practical application in reciting a particular solution and providing a technical improvement in providing information. See Req. 4; Appeal Br. 9–11; Reply Br. 4–7. Further we note that “rendering” information is not claimed and “[i]nformation as such is an intangible.” Elec. Power Grp. LLC v. Alstom S.A., 830 F.3d 1350, 1353 (Fed. Cir. 2016). The Appellant’s argument that its “claimed invention differs from the cited precedent (e.g. BSG Tech LLC v. BuySeasons, Inc., cited at page 15 of the Decision)” (Req. 4 (bolding omitted)) is a new argument and one that Appeal 2021-000607 Application 13/246,060 6 merely expresses disagreement with the Board. We note that the Board cited to BSG Tech. merely as support for the finding that the business problem of “insufficient information to generate a meaningful ranking of providers taking into account cost” existed prior to the Internet. Dec. 15. And Appellant does not persuade us that we misapprehended this matter. We disagree that we disregarded, misapprehended, or overlooked the Appellant’s arguments regarding dependent claims 16 and 19, specifically that “claims 16 and 19 provide yet greater focus on how a cost value is rendered (i.e. more particularly define the new information type) and provides yet additional space for others to provide alternative ways to generate a cost-based ranking of medical service providers for a particular medical procedure.” Req. 5; see also id. at 3. Rather, we stated “we also consider the Appellant’s separate assertions with respect to dependent claims 16 and 19 (see Appeal Br. 11–12).” Dec. 4. We further discussed claims 16 and 19 and the arguments presented for those claims, specifically addressing the Appellant’s argument that dependent “claims 16 and 19 provide yet greater focus on how a cost value is rendered and provide yet additional space for others to provide alternative ways to generate a cost-based ranking of medical service providers for a particular medical procedure,” as presented in the Appeal Brief at page 12 and the Reply Brief at page 8, and determined that providing greater focus and additional space “at best improve[s] the abstract idea and not any claimed technology.” Dec. 17. To the extent the Appellant argues the new information type, we note that is a new argument and not a proper basis for rehearing. Appeal 2021-000607 Application 13/246,060 7 Finally, we note that the Board espoused no opinion on any other application involving data and software. Cf. Req. 2. Rather, the Decision addressed only the claimed invention at issue on appeal. Thus, we have considered the arguments raised by the Appellant in the Request, but the Appellant has not persuaded us that the Board has misapprehended or overlooked the Appellant’s arguments. Although we have considered the Decision in light of the Request for Rehearing, we decline to modify the Decision in any respect. CONCLUSION The Appellant’s Request has been granted to the extent that we have reconsidered our Decision in light of the Appellant’s Request, but is denied in all other respects. Outcome of Decision on Rehearing: Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis Denied Granted 1–3, 6–13, 15–20 101 Eligibility 1–3, 6–13, 15–20 Final Outcome of Appeal after Rehearing: Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1–3, 6–13, 15–20 101 Eligibility 1–3, 6–13, 15–20 Appeal 2021-000607 Application 13/246,060 8 No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv). DENIED Copy with citationCopy as parenthetical citation