Ex Parte Magnus

Patent Trial and Appeal Board

Nov 5, 2018

11700129 (P.T.A.B. Nov. 5, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
11/700,129 01/31/2007 Neal Magnus
4372 7590 11/07/2018
ARENT FOX LLP
1717 K Street, NW
WASHINGTON, DC 20006-5344
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.
025943-00011 8451
EXAMINER
NORMAN, SAMICA L
ART UNIT PAPER NUMBER
3697
NOTIFICATION DATE DELIVERY MODE
11/07/2018 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):
patentdocket@arentfox.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte NEAL MAGNUS
Appeal 2017-006271 1
Application 11/700, 1292
Technology Center 3600
Before HUBERT C. LORIN, NINA L. MEDLOCK, and
TARA L. HUTCHINGS, Administrative Patent Judges.
MEDLOCK, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner's final
rejection of claims 1-33 and 46-49. We have jurisdiction under 35 U.S.C.
§ 6(b ).
We AFFIRM.
1 Our decision references Appellant's Appeal Brief ("App. Br.," filed
July 25, 2016) and Reply Brief ("Reply Br.," filed February 15, 2017), and
the Examiner's Answer ("Ans.," mailed December 15, 2016) and Final
Office Action ("Final Act.," mailed November 25, 2015).
2 Appellant identifies Medtrx Capital, LLC as the real party in interest.
App. Br. 2.
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CLAIMED INVENTION
Appellant's claimed invention "relates to a method and system for
submission, processing and resolution of insurance-related claims"
(Spec. ,r 2).
Claims 1, 21, 22, and 33 are the independent claims on appeal.
Claim 1, reproduced below, is illustrative of the claimed subject matter:
1. A method for integrated healthcare coverage claim
processing implemented on a computer network, the computer
network comprising a computer including a processor and an
accessible repository, the method comprising:
receiving at a healthcare provider user interface,
healthcare coverage claim-related data relative to a claimant in
the accessible repository via the processor;
generating a healthcare coverage claim form and storing
the claim form in the accessible repository;
transmitting, via the computer network, at least one of the
healthcare coverage claim form and other claim-related
documents to an insurance carrier;
storing a proof of transmitting the healthcare coverage
claim form and the other claim-related documents to the
. .
msurance carrier;
receiving a determination of payment status of the
healthcare coverage claim from the insurance carrier via an
insurance carrier interaction module; and
determining an appropriate course of action based on the
claim payment determination including automatically
transferring information regarding the healthcare coverage claim
to a legal portal module when the determined payment status
does not meet at least one of legal and procedural guidelines,
wherein the healthcare provider user interface, the
insurance carrier interaction module, and the legal portal module
comprise interactive connections with each other via the
computer network and with the accessible repository.
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REJECTION
Claims 1-33 and 46-49 are rejected under 35 U.S.C. § 101 as directed
to a judicial exception without significantly more. 3
ANALYSIS
Appellant argues the pending claims as a group. We select
independent claim 1 as representative (Reply Br. 2-7). 4 The remaining
claims stand or fall with claim 1. 37 C.F.R. §4I.37(c)(l)(iv).
Under 35 U.S.C. § 101, an invention is patent-eligible if it claims a
"new and useful process, machine, manufacture, or composition of matter."
35 U.S.C. § 101. The Supreme Court, however, has long interpreted§ 101
to include an implicit exception: "[l]aws of nature, natural phenomena, and
abstract ideas" are not patentable. Alice Corp. v. CLS Bank Int 'l, 134 S. Ct.
2347, 2354 (2014).
The Supreme Court, in Alice, reiterated the two-step framework
previously set forth in Mayo Collaborative Services v. Prometheus
Laboratories, Inc., 566 U.S. 66 (2012), "for distinguishing patents that claim
laws of nature, natural phenomena, and abstract ideas from those that claim
patent-eligible applications of those concepts." Alice Corp., 134 S. Ct.
at 2355. The first step in that analysis is to "determine whether the claims at
issue are directed to one of those patent-ineligible concepts." Id. If the
claims are not directed to a patent-ineligible concept, e.g., an abstract idea,
3 We assume, for purposes of this appeal, that the§ 101 rejection entered in
the Final Office Action has been withdrawn in favor of the new ground of
rejection under§ 101 entered in the Examiner's Answer.
4 We note that the pages of Appellant's Reply Brief are unnumbered; we
refer to the title page as page 1 and treat the pages that follow as though
consecutively numbered.
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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 there are additional elements that
"'transform the nature of the claim' into a patent-eligible application." Id.
(quoting Mayo, 566 U.S. at 79, 78).
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, 566 U.S. at 71. Therefore, the Federal Circuit has
instructed that claims are to be considered in their entirety to determine
"whether their character as a whole is directed to excluded subject matter."
McRO, Inc. v. Bandai Namco Games Am., Inc., 837 F.3d 1299, 1312
(Fed. Cir. 2016) (quoting Internet Patents Corp. v. Active Network, Inc.,
790 F.3d 1343, 1346 (Fed. Cir. 2015)).
In rejecting the pending claims under § 101, the Examiner determined
that the claims are directed to processing healthcare coverage claims,
including receiving, generating and storing claim data, receiving claim
payment status, and determining a next step based on payment status -
steps that the Examiner concluded are similar to concepts (e.g., generating
rule-based tasks for processing an insurance claim; comparing new and
stored information and using rules to identify options; and using categories
to organize, store and transmit information) that the courts have previously
found abstract (Ans. 3). The Examiner also determined that the claims do
not include additional elements that are sufficient to amount to significantly
more than the judicial exception because "the generically recited computer
elements do not add a meaningful limitation to the abstract idea because they
would be routine in any computer implementation" (id.).
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Claim 1 is directed to a method for healthcare coverage claim
processing, and recites that the method comprises (1) receiving healthcare
coverage claim data; (2) generating and storing a healthcare coverage claim;
(3) transmitting the healthcare coverage claim form to an insurance carrier;
( 4) receiving a determination of the payment status of the healthcare
coverage claim from the insurance carrier; and ( 5) determining an
appropriate course of action, i.e., a next step, based on the claim payment
determination. Claim 1, thus, involves nothing more than collecting
information (i.e., healthcare coverage claim-related data and a determination
of payment status of the healthcare coverage claim); and analyzing the
information (i.e., the claim payment status) to determine an appropriate
course of action- i.e., information collection and analysis, which the
Federal Circuit has consistently held, including when limited to particular
content, is within the realm of abstract ideas. See, e.g., Internet Patents
Corp., 790 F.3d at 1349; Digitech Image Techs., LLC v. Elecs.for Imaging,
Inc., 758 F.3d 1344, 1351 (Fed. Cir. 2014); and CyberSource Corp. v. Retail
Decisions, Inc., 654 F.3d 1366, 1370 (Fed. Cir. 2011).
Appellant argues that the claimed subject matter is not directed to an
abstract idea because it provides a real world effect of integrated healthcare
coverage claim processing by increasing the speed of conventional
healthcare coverage claim processing (Reply Br. 4--5). And Appellant
points to paragraphs 17, 18, 25, and 27 as "[ e ]xamples of integrated
healthcare coverage claim processing and increasing the speed of
conventional healthcare coverage processing claims" (id. at 4). But, we find
nothing in these paragraphs that attributes any technological advance to the
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claimed invention that results in an increase in speed of conventional
healthcare coverage claim processing.
Specifically referencing paragraphs 18 and 25, Appellant notes that
paragraph 18 discusses how database 160 may contain "previously-input
data regarding some [] or all insurance carriers, and other claim-related
information" and that paragraph 25 discusses how "ICI module 130 may
check the documents sent to the insurance carrier for accuracy and
completeness, and appropriate action may be taken, such as supplying any
missing documents" to the insurance carrier (id. at 4--5). Appellant asserts
that having access to previously inputted data may increase the speed of
healthcare coverage processing, and that the speed of healthcare coverage
processing also may be increased by checking the accuracy and
completeness of documents and providing any additional missing documents
(id.). Yet, we are not persuaded that either maintaining previously-input
data in a database or checking for, and supplying missing documents
constitutes a technological improvement. For example, there is no
indication here that computer functionality is improved, or that any
specialized computer hardware or inventive computer components or
programming is required.
Appellant's argument, moreover, is not commensurate with the claim
language. Claim 1 does not recite any steps related to preserving previously
input data in a database and/or checking for, and providing missing
documents.
Turning to step two of the Mayo/Alice framework, Appellant argues
that even if the claims are directed to an abstract idea, the claims are
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nonetheless patent-eligible because the claims recite significantly more than
the abstract idea itself (Reply Br. 5-7).
Citing DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245, 1256
(Fed. Cir. 2014), Appellant notes that claim 1 recites a "computer network
comprising a computer including a processor and an accessible repository"
and "wherein the healthcare provider user interface, the insurance carrier
interaction module, and the legal portal module comprise interactive
connections with each other via the computer network and with the
accessible repository" (Reply Br. 6). Appellant argues that the claimed
invention, as such, "is necessarily rooted in computer technology and
solve[ s] the problem of 'integrated healthcare coverage claim processing
implemented on a computer network' that arises within the computer
network" (id.). But, Appellant does not identify the problem of "integrated
healthcare coverage claim processing implemented on a computer network"
that the claimed invention allegedly solves. And, the purported solution here
of, at best, generic computer components, is not "necessarily rooted in
computer technology." DDR Holdings, 773 F.3d at 1256.
Although Appellant ostensibly suggests otherwise, the claims in DDR
Holdings were not held patent-eligible because they required computing
devices or because the claims involved the use of technology. To the
contrary, the Federal Circuit cautioned that "not all claims purporting to
address Internet-centric challenges are eligible for patent." DDR Holdings,
773 F.3d at 1258. Instead, the court held that the claims distinguished over
patent-ineligible claims that "broadly and generically claim 'use of the
Internet' to perform an abstract business practice ( with insignificant added
activity)," because they "specify how interactions with the Internet are
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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." Id. The claimed solution was "necessarily rooted in computer
technology in order to overcome a problem specifically arising in the realm
of computer networks." Id. at 1257.
Here, we do not find, and Appellant does not identify, any analogous
modification to the routine and conventional functioning of computer
network technology. At best, the invention appears to use generic computer
components ( e.g., computer network comprising a computer, including a
process and an accessible repository ( claim 1)) to perform an abstract
business practice (i.e., preparing and processing a healthcare coverage
claim).
The relevant inquiry here is not whether there is a business challenge
resolved by the claimed invention ( e.g., the difficulty involved in preparing
and processing insurance claims manually and the attendant risk that filed
claims will be dismissed, abandoned, or otherwise fail to reach final
resolution) but whether the challenge is one rooted in technology, or one
where the proposed solution is merely using computers as a tool. See id.;
see also Enfish, LLC v. Microsoft Corp., 822 F.3d. 1327, 1335-36 (Fed. Cir.
2016). There is no indication here that a computer processor or a computer
network, including the Internet, in particular, is used other than as a tool in
its normal, expected, and routine manner.
We are not persuaded, on the present record, that the Examiner erred
in rejecting claim 1 under 35 U.S.C. § 101. Therefore, we sustain the
Examiner's rejection of claim 1, and claims 2-33 and 46-49, which fall with
claim 1.
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Application 11/700, 129
DECISION
The Examiner's rejection of claims 1-33 and 46-49 under 35 U.S.C.
§ 101 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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