Tracy Ann. Weber et al.Download PDFPatent Trials and Appeals BoardOct 21, 201915040265 - (D) (P.T.A.B. Oct. 21, 2019) 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. 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. Appeal 2018-008468 Application 15/040,265 2 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; Appeal 2018-008468 Application 15/040,265 3 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 Appeal 2018-008468 Application 15/040,265 4 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 Appeal 2018-008468 Application 15/040,265 5 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 Appeal 2018-008468 Application 15/040,265 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). Copy with citationCopy as parenthetical citation