Ex Parte Bacon et al

Patent Trial and Appeal Board

Nov 30, 2017

13416527 (P.T.A.B. Nov. 30, 2017)

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.
13/416,527 03/09/2012 David R. BACON 67979US003 4318
32692 7590 12/04/2017
3M INNOVATIVE PROPERTIES COMPANY
PO BOX 33427
ST. PAUL, MN 55133-3427
EXAMINER
PAULSON, SHEETAL R.
ART UNIT PAPER NUMBER
3626
NOTIFICATION DATE DELIVERY MODE
12/04/2017 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):
LegalUSDocketing@mmm.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DAVID R. BACON, LINDA L. MCINTYRE,
DONNA C. SMITH, BENJAMIN M. TEMPLETON, and
RICHARD H. WOLNIEWICZ
Appeal 2016-005077
Application 13/416,5271
Technology Center 3600
Before MICHAEL C. ASTORINO, KENNETH G. SCHOPFER, and
BRADLEY B. BAYAT, Administrative Patent Judges.
BAYAT, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134 from the Examiner’s
decision finally rejecting claims 1—31, which are all the pending claims in
the application. We have jurisdiction under 35 U.S.C. § 6(b).
SUMMARY OF DECISION
We AFFIRM.
1 According to Appellants, “[t]he real party in interest is 3M Innovative
Properties Company of St. Paul, Minnesota.” Appeal Brief 3 (“Appeal Br.,”
filed Sept. 28,2015).
Appeal 2016-005077
Application 13/416,527
STATEMENT OF THE CASE
Claimed Subject Matter
Appellants’ invention “relates to healthcare at medical facilities and to
the documentation and editing of medical records.” Spec. 12. Claims 1,16,
30, and 31 are the independent claims on appeal. Independent claim 1,
reproduced below with added formatting and bracketed notations, is
illustrative of the subject matter on appeal and reads as follows:
1. A method of processing medical data via one or more computers,
the method comprising:
[(a)] identifying, via the one or more computers, a medical code
within a medical record;
[(b)] identifying, via the one or more computers, whether the
medical code is one of a plurality of specified medical codes or
one of a plurality of unspecified medical codes, wherein the
specified medical codes are defined as sufficient to represent a
medical condition to a payer and the unspecified medical codes
are defined as requiring additional information to represent the
medical condition to the payer;
[(c)] if the medical code is one of the specified medical codes,
avoiding display, via the one or more computers, of clinical edit
options for the medical record without generating a query for
further input by a physician, wherein the clinical edit options are
used to determine whether a query for further input by a
physician is warranted and allow a documentation specialist to
edit one or more aspects of the medical record;
[(d)] if the medical code is one of the unspecified medical
codes, determining, via the one or more computers, whether one
of a plurality of suppression codes associated with the medical
code appears in the medical record, wherein the one of the
plurality of suppression codes overrides the medical code by
providing more specific information regarding the medical
condition than the medical code;
[(e)] if one of the suppression codes appears in the medical
record, avoiding display, via the one or more computers, of the
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clinical edit options for the medical record without generating the
query for further input by the physician;
[(f)] if one of the suppression codes does not appear in the
medical record, searching for one or more key terms in the
medical record via the one or more computers;
[(g)] causing, via the one or more computers, display of the
clinical edit options for the medical record based on the one or
more key terms and based on whether the one or more key terms
are present in the medical record; and
[(h)] generating, via the one or more computers and for display,
the query for further input by the physician based on the one or
more key terms and based on whether the one or more key terms
are present in the medical record.
Appeal Br. 43^44, Claims App.
Rejections
I. Claims 1—31 are rejected under 35 U.S.C. § 101 as being directed to
non-statutory subject matter. Answer 2—3 (“Ans.,” mailed Feb. 10,
2016).
II. Claims 1—31 are rejected under 35 U.S.C. § 103(a) as unpatentable
over Rao (US 7,725,330 B2, iss. May 25, 2010). Id. at 3-11.
ANALYSIS
Claim Construction
To resolve the question of patentability, we begin by construing claim
1. During examination, claims are given their broadest reasonable
interpretation consistent with the specification. See In re Am. Acad, of Sci.
Tech Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). “Construing claims
broadly during prosecution is not unfair to the applicant. . . because the
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applicant has the opportunity to amend the claims to obtain more precise
claim coverage.” Id.
Here, claim 1 is directed to a computer implemented method of
processing medical data, where the method includes several steps that only
need to be performed if certain conditions precedent are met. See Appeal
Br. 43 44, Claims App. Claim 1 recites, in pertinent part, (a) “identifying
... a medical code within a medical record” and (b) “identifying . . . whether
the medical code is one of a plurality of specified medical codes or one of a
plurality of unspecified medical codes.” Id. at 43. Claim 1 further recites:
(c) if the medical code is one of the specified medical codes,
avoiding display, via the one or more computers, of clinical edit
options for the medical record without generating a query for
further input by a physician, wherein the clinical edit options are
used to determine whether a query for further input by a
physician is warranted and allow a documentation specialist to
edit one or more aspects of the medical record;
(d) if the medical code is one of the unspecified medical codes,
determining, via the one or more computers, whether one of a
plurality of suppression codes associated with the medical code
appears in the medical record, wherein the one of the plurality
of suppression codes overrides the medical code by providing
more specific information regarding the medical condition than
the medical code;
(e) if one of the suppression codes appears in the medical
record, avoiding display, via the one or more computers, of the
clinical edit options for the medical record without generating
the query for further input by the physician',
(f) if one of the suppression codes does not appear in the
medical record, searching for one or more key terms in the
medical record via the one or more computers ....
Id. at 43 44 (emphasis added). In accord with our precedent, none of steps
(d), (e), and (f) need to be satisfied to meet the method of claim 1.
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See Ex Parte Schulhauser, Appeal 2013—007847, 2016 WL 6277792, at *3—
5 (PTAB Apr. 28, 2016) (precedential) (holding that in a method claim, a
step reciting a condition precedent does not need to be performed if the
condition precedent is not met). For example, if the medical code identified
is a specified medical code, then the process avoids display of clinical edit
options, as per step (c). Based on the language of the claim as written, the
broadest reasonable interpretation of claim 1 encompasses an event in which
the process ends after performance of process step (c), when the medical
code is identified as a specified medical code. Thus, the remaining steps of
claim 1 need not be performed because the performance of those steps
requires identifying an unspecified medical code, as per step (d).
With this interpretation in mind, we turn to the merits of the
Examiner’s rejections.
Rejection I—Non-Statutory Subject Matter
Under 35U.S.C. § 101, an invention is patent-eligible if it claims a
“new and useful process, machine, manufacture, or composition of matter.”
35U.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. See, e.g., Alice Corp. Pty. Ltd. v. CLS
Banklnt’l, 134 S. Ct. 2347, 2354 (2014) (internal quotation marks and
citation omitted).
The Supreme Court, in Alice, reiterated the two-step framework
previously set forth in Mayo Collaborative Services v. Prometheus
Laboratories, Incorporated, 566 U.S. 66, 82—84 (2012), “for distinguishing
patents that claim laws of nature, natural phenomena, and abstract ideas
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from those that claim patent-eligible applications of those concepts.” Alice,
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., 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 there are additional
elements that “‘transform the nature of the claim’ into a patent-eligible
application.” Id. (quoting Mayo, 566 U.S. 66, 79, 78).
Applying the framework in Alice, and as the first step of that analysis,
the Examiner determines that claims 1—31 are directed to “the abstract idea
of creating medical codes for billing.” Final Action 2 (“Final Act.,” mailed
Feb. 24, 2015).
Claims 1—15
Appellants initially contend that a prima facie case has not been
established because the Examiner has not cited to USPTO guidelines, judicial
opinions, or any authority that establishes the claimed features are not
directed to statutory subject matter. Appeal Br. 10-11; Reply Br. 2—3. But
the Federal Circuit has made clear that “the prima facie case is merely a
procedural device that enables an appropriate shift of the burden of
production.” Hyatt v. Dudas, 492 F.3d. 1365, 1369 (Fed. Cir. 2007) (citing
In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992)). 35 U.S.C. § 132 sets
forth a general notice requirement whereby the applicant is notified of the
reasons for a rejection together with such information as may be useful in
judging the propriety of continuing with prosecution of the application. See,
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e.g.,In re Jung, 637 F.3d 1356, 1362 (Fed. Cir. 2011). There is no
requirement for the Examiner to cite examples from PTO guidelines or any
additional case law to establish a prima facie case. Here, the Examiner
provided adequate explanation to meet the notice requirement. See Final
Act. 2—3; see also Ans. 11—14. The Examiner set forth the statutory basis of
the rejection, applied Alice’s two-part framework, and sufficiently
articulated reasoning in an informative manner (see supra), thus, meeting the
notice requirement of 35 U.S.C. § 132. Chester v. Miller, 906 F.2d 1574,
1578 (Fed. Cir. 1990) (Section 132 “is violated when a rejection is so
uninformative that it prevents the applicant from recognizing and seeking to
counter the grounds for rejection.”). In fact, Appellants do not contend that
they did not understand the Examiner’s rejection. To the contrary,
Appellants’ understanding of the rejection is manifested by their substantive
response to the rejection as set forth in their briefs.
Under Alice step one, Appellants dispute the Examiner’s
characterization of the abstract idea as being directed to creating medical
codes for billing. Appeal Br. 12—13.
Responding to Appellants’ arguments, the Examiner additionally
determines:
Identifying codes and determining whether it is specified or
unspecified, and further categorizing the unspecified code into a
suppression code or not a suppression code is similar to the
abstract idea identified by the courts as comparing new and
stored information and using rules to identify options; and further
more similar to the abstract idea of identified by the courts as
using categories to organize, store, and transmit information. The
current claims compare the identified code from the medical
record to the rules of specified or unspecified and identifying the
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option to generate the query. The abstract idea here is not
meaningfully different from the ideas found to be abstract in
other cases before the Supreme Court.
Ans. 12.
In response to the Examiner’s additional determination of the abstract
idea, Appellants argue that the claims are not directed to an idea of itself and
“not similar to ‘comparing new and stored information and using rules to
identify options’ or ‘using categories to organize, store, and transmit
information.’” Reply Br. 3.
“The ‘abstract idea’ step of the inquiry calls upon us to look at the
‘focus of the claimed advance over the prior art’ to determine if the claim’s
‘character as a whole’ is directed to excluded subject matter.” Affinity Labs
of Texas, LLCv. DIRECTTV, LLC, 838 F.3d 1253, 1257 (Fed. Cir. 2016)
(quoting Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1353 (Fed.
Cir. 2016); see also Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1335
(Fed. Cir. 2016), quoted in Apple, Inc. v. Ameranth, Inc., 842 F.3d 1229,
1241 (Fed. Cir. 2016)). With respect to computer-enabled claimed subject
matter, it can be helpful to determine whether “the claims at issue in [ ] can
readily be understood as simply adding conventional computer components
to well-known business practices” or not. Enfish, 822 F.3d at 1338. See
also Affinity Labs of Texas, LLC v. DIRECTV, LLC, 838 F.3d at 1257. The
question is whether the claims as a whole “focus on a specific means or
method that improves the relevant technology” or are “directed to a result or
effect that itself is the abstract idea and merely invoke generic processes and
machinery.” McRO, Inc. v. Bandai Namco Games Am. Inc., 837 F.3d 1299,
1314 (Fed. Cir. 2016).
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In this case, claim 1 as a whole is focused not on, for example, an
improvement in computer technology but on a computer-implemented
method of “processing medical data” that uses “one or more computers.” Cf.
In re TLI Communications LLC Patent Litigation, 823 F.3d 607, 613 (Fed.
Cir. 2016) (the claims’ focus “was not on an improved telephone unit or an
improved server.”). Appellants’ Specification describes the problem and
solution as follows:
Unfortunately, medical records can be long, complicated,
and sometimes incomplete. This can make the coding and review
process very time consuming and difficult for a documentation
specialist. The techniques and systems described herein can help
to automate (or partially automate) the coding process associated
with medical record review. In this manner, the process of coding
medical records and verifying codes in medical records can be
improved and/or simplified. The techniques may apply one or
more rules to define when documentation for medical records is
sufficient and when further review of the medical records is
needed. The rules may define when the documentation specialist
should review the medical records and may automate the process
by avoiding the display of medical records to the documentation
specialist when the documentation in the medical records is
sufficient. The rules may further define when physician review is
needed, and may automate the process by avoiding physician
review when the documentation in the medical records is
sufficient or when review by the documentation specialist may
suffice prior to (and possibly in lieu of) physician review.
Physician review of medical records is generally undesirable
when it can be avoided as it is time consuming, labor intensive,
and adds cost.
Spec. 123 (emphasis added); see also id. 1 50 (“Manual review of CDI
reference material can be difficult and time-consuming for a documentation
specialist.”). Appellants also summarize the claimed subject matter on
appeal as such. See Appeal Br. 3.
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Unlike the claims found non-abstract in prior cases, claim 1 here uses
generic computer technology for processing and coding of medical data, in
which a medical code is identified within a medical record as either being a
specified or an unspecified medical code, and rules are applied to define
when documentation for medical records is sufficient (i.e., specified medical
code) and when further review of the medical records may be needed (i.e.,
unspecified medical code), and do not recite an improvement to a particular
computer technology. See, e.g., McRO, Inc. v. Bandai Namco Games Am.
Inc., 837 F.3d 1299, 1314—15 (Fed. Cir. 2016) (finding claims not abstract
because they “focused on a specific asserted improvement in computer
animation”). The alleged advantages that Appellants tout do not concern an
improvement to computer capabilities but instead relate to an alleged
improvement in efficient, accurate, and cost effective processing (see supra)
by automating the manual processing and coding of medical data,2 for
which a computer is used as a tool in its ordinary capacity. As such, we
determine that this is little more than the automation of the abstract idea of
processing of medical data by applying one or more rules, which is
consistent with the Examiner’s determination, and long prevalent in our
healthcare system. See CyberSource Corp. v. Retail Decisions, Inc., 654
F.3d 1366, 1372 (Fed. Cir. 2011) (finding that method claim 3’s steps are
2 The documentation specialist may be a nurse, clinician, administrative
person, or any person given the task of reviewing medical records, and
verifying or updating medical codes in the medical documentation. In
general, the documentation specialist typically reviews medical records and
ensures that the medical records include the correct medical codes associated
with the medical tasks or medical conditions defined in the medical records.
Spec. 122.
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unpatentable mental processes in-part because each step could be performed
in the human mind or by a human using a pen and paper).
Moreover, the Federal Circuit has previously held other patent claims
ineligible for reciting similar abstract concepts that merely collect, classify,
and analyze data. For example, in In re TLI Communications LLC Patent
Litigation, the concept of classifying data (an image) and storing it based on
its classification was held abstract under step one. TLI Commc'ns, 823 F.3d
607, 611 (Fed. Cir. 2016). In Content Extraction, the concept of data
collection, recognition, and storage was held abstract as well. Content
Extraction & Transmission LLC v. Wells Fargo Bank, N.A., 776 F.3d 1343,
1347 (Fed. Cir. 2014). In BASCOM Global Internet Services, Inc. v. AT&T
Mobility LLC, a claim to a “content filtering system for filtering content
retrieved from an Internet computer network” was directed to an abstract
idea. BASCOM, 827 F.3d 1341, 1348-49 (Fed. Cir. 2016). And in Electric
Power Group, claims directed to collecting information, analyzing it, and
displaying certain results of the collection and analysis were directed to an
abstract idea. Elec. Power Grp., 830 F.3d at 1353—54 (“[W]e have treated
analyzing information by steps people go through in their minds, or by
mathematical algorithms, without more, as essentially mental processes
within the abstract-idea category.”). Regarding claim 1 ’s recitation of
specific data types (i.e., medical data), the Federal Circuit has recognized
that limiting information to particular content does not change its character
as information and is within the realm of abstract ideas. Id. at 1353
(“Information as such is an intangible.”). In light of these precedents, we
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agree with the Examiner’s conclusion that claim 1 is “directed to” an
abstract idea.
Proceeding to the second step, the Examiner determines that:
The claims do not include additional elements that are
sufficient to amount to significantly more than the judicial
exception because the additional elements or combination of
elements in the claims, other than the abstract idea per se, amount
to no more than a recitation of (a) generic computer structure that
serves to perform generic computer functions that serve to
merely link the abstract idea to a particular technological
environment (i.e. computer, display, memory, processor, etc.);
(b) functions that are well-understood, routine, and conventional
activities previously known to the pertinent industry (i.e.
identifying, determining, searching, causing, generating, etc.).
Instructing one to “apply” an abstract idea and reciting no more
than generic computer elements performing generic computer
tasks does not make an abstract idea patent-eligible.
Ans. 13-14.
We also are not persuaded by Appellants’ contention that
“[independent claim 1 is directed to a specific solution that is necessarily
rooted in computer technology in order to overcome a problem specifically
arising in the realm of reviewing medical records for proper coding and
complete documentation,” similar to the decision in DDR Holdings, LLC v.
Hotels.com, L.P., 773 F.3d 1245, 1257 (Fed. Cir. 2014). Reply Br. 5; see
also Appeal Br. 14—15. We agree with the Examiner that Appellants’
reliance on DDR Holdings is misplaced. See Ans. 16.
In DDR Holdings, the claims specified “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
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click of a hyperlink.” DDR Holdings, 773 F.3d at 1258. The court
determined that
these claims stand apart because they do not merely recite the
performance of some business practice known from the pre-
Internet world along with the requirement to perform it on the
Internet. Instead, the claimed solution is necessarily rooted in
computer technology in order to overcome a problem specifically
arising in the realm of computer networks.
Id. at 1257. Here, Appellants have not identified any purported “problem
specifically arising in the realm of computer networks” solved by the
invention. Cf. Intellectual Ventures ILLC v. Capital One Bank (USA), 792
F.3d 1363, 1371 (Fed. Cir. 2015) (“The patent claims here do not address
problems unique to the Internet, so DDR has no applicability.”). Indeed, the
manual processing, coding, and editing of medical records existed well
before the Internet. In fact, claim 1 ’s process does not involve computer
networks or an online environment.
We also are unpersuaded by Appellants’ contention that
[t]he claimed features thus illustrate an improvement to the
technical field of medical record review and retrieving additional
information by more accurately determining to present a query
to a physician, and provide significantly more than the exception
itself, and render the pending claims patent eligible under 35
U.S.C. § 101.
Appeal Br. 20; Reply Br. 6—7. The only portion of the claimed method that
could be considered “technological” is the use of generic computer
hardware, i.e., the claimed “at least one or more computers” on which steps
(a), (b) and (c) are performed, which is not enough to confer subject matter
eligibility. See Alice Corp., 134 S. Ct. at 2358 (“[I]f a patent’s recitation of
a computer amounts to a mere instruction to ‘implemen[t]’ an abstract idea
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‘on ... a computer,’ that addition cannot impart patent eligibility.”)
(Quoting Mayo, 566 U.S. 66, 84). To the extent that claim 1 represents an
improvement in the field of medical claims processing, we are not persuaded
that the improvement is to any technology as opposed to an improvement to
a general business practice.
Evaluating representative claim 1, we agree with the Examiner that
the claim lacks an “inventive concept” to transform the abstract idea into a
patent-eligible application because those additional features must be more
than well-understood, routine, and conventional activity. See Alice Corp.,
134 S. Ct. at 2357 (“[CJlaims, which merely require generic computer
implementation, fail to transform [an] abstract idea into a patent-eligible
invention.”). Taking claim 1 ’s elements separately, the function performed
by the computer in each step of the claimed process is purely conventional.
Using a computer to identi fy and compare data, as recited in steps (a) and
(b), embodies the most basic functions of a computer. And programming
conventional software or hardware to apply rules, to display or avoid display
of clinical edit options, is a routine and conventional practice. All of these
computer functions are well-understood, routine, and conventional activities
previously known to the industry7. In short, each step does no more than
require a generic computer to perform conventional computer functions. See
Spec. 196.
The claim here also does no more than simply instruct the practitioner
to implement the abstract idea on a generic computer. See Elec. Power Grp.,
830 F.3d at 1355 (“Nothing in the claims, understood in light of the
specification, requires anything other than off-the-shelf, conventional
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computer, network, and display technology for gathering, sending, and
presenting the desired information.”); see also Dealertrack, Inc. v. Huber,
674 F.3d 1315, 1333 (Fed. Cir. 2012) (“Simply adding a ‘computer aided’
limitation to a claim covering an abstract concept, without more, is
insufficient to render [a] claim patent eligible.”)(Citation omitted).
Accordingly, evaluating these claimed elements either individually or as an
ordered combination, we conclude that claimed steps recite no more than
routine steps involving generic computer components and conventional
computer data processing activities to accomplish the well-known concept of
processing, coding, and/or editing of clinical documentation.
For the foregoing reasons, we sustain the Examiner’s rejection of
claim 1 under 35U.S.C. § 101, including dependent claims 2—15, which are
not argued separately. See Appeal Br. 20; see also Reply Br. 7.
Claims 16—31
Independent claims 16, 30, and 31 are directed to a system, apparatus,
and computer-readable storage medium encompassing substantially similar
subject matter as claim 1. Appellants do not argue these claims in the Reply
Brief, failing to address the Examiner’s additional determination of the
abstract idea, as discussed above. A claim directed to a system, apparatus or
computer recordable medium, despite its format, should be treated no
differently from the comparable process claims held to be patent ineligible
under § 101. As the Supreme Court has explained, the form of the claims
should not trump basic issues of patentability. See Parker v. Flook, 98 S. Ct.
2522, 2527 (1978) (advising against a rigid reading of § 101 that “would
make the determination of patentable subject matter depend simply on the
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draftsman’s art and would ill serve the principles underlying the prohibition
against patents for ‘ideas’ or phenomena of nature.”); see also Alice, 134 S.
Ct. at 2358—59. As such, independent claims 16, 30, and 31, similar to
independent claim 1, fail to satisfy the Alice framework and are directed to
ineligible subject matter for the same reasons.
Therefore, we sustain the rejection of independent claims 16, 30, and
31 under 35 U.S.C. § 101 for the same reasons as claim 1. We also sustain
the rejection of dependent claims 17—29, which are not argued separately,
for the same reasons as independent claim 16. See Appeal Br. 21.
Rejection II—Obviousness
Claims 1—8, 11—13, and 15
Based on our construction of claim 1, the Examiner here was able to
make a prima facie case of obviousness as to claim 1 by providing evidence
to show obviousness of steps (a), (b), and (c). The Examiner did not need to
present evidence of obviousness as to the remaining method steps of claim 1
that are not required to be performed under a broadest reasonable
interpretation of the claim (e.g., performance of conditional steps (d), (e),
(f))-
Appellants acknowledge that Rao discloses a method that includes
identify[ing] ... the billing codes(s) that are actually recorded in the patient
medical record,”’ as required by step (a), and ‘“compar[ing] the recorded
billing code(s) with the extracted billing code(s) to determine whether the
recorded billing codes are ‘correct’ or ‘incorrect’ and/or determine if the
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patient medical record is ‘missing’ a billing code(s) that should be
included,’” as required by step (b) of claim 1. Appeal Br. 26.
Appellants argue that the Examiner’s rejection of claim 1 as being
unpatentable over Rao is in error because:
Rao does not disclose or suggest the claim feature of identifying,
via one or more computers, whether a medical code is one of a
plurality of specified medical codes or one of a plurality of
unspecified medical codes, wherein the specified medical codes
are defined as sufficient to represent a medical condition to a
payer and the unspecified medical codes are defined as requiring
additional information to represent the medical condition to the
payer.
Appeal Br. 26. In particular, Appellants dispute the Examiner’s
interpretation of the claimed unspecified code “as a code that is missing
from the billing record that should be included into the invoice due to the
extraction of the medical information suggesting the inclusion of the billing
code.” Id. (quoting Final Act. 12). Responding to Appellants’ argument, the
Examiner modifies his position, and asserts that “Rao teaches the term
‘incorrect code,’ which is similar to the Appellants[’] word ‘unspecified
code’” (Ans. 17), but Appellants do not contest this finding in the Reply
Brief. As such, we are not apprised of error as to the Examiner’s finding as
to step (b) of claim 1.
Appellants do not dispute the Examiner’s findings as to step (c).
Appellants’ additional arguments directed to the failure of the
Examiner to demonstrate adequately that the remaining steps of claim 1 are
rendered obvious are not commensurate with the broadest reasonable
interpretation of claim 1 and are, thus, unpersuasive of error.
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A proper interpretation of claim language, under the broadest
reasonable interpretation of a claim during prosecution, must construe the
claim language in a way that at least encompasses the broadest interpretation
of the claim language for purposes of infringement. Based on the manner in
which claim 1 is written, the method of Rao would literally infringe claim 1
by virtue of its performance of only steps (a), (b), and (c). See, e.g.,Applera
Corp. v. Illumina, Inc., 375 Fed. Appx. 12, 21 (Fed. Cir. 2010)
(unpublished) (affirming a district court’s interpretation of a method claim
as including a step that need not be practiced if the condition for practicing
the step is not met); Cybersettle, Inc. v. Nat'l Arbitration Forum, Inc., 243
Fed. Appx. 603, 607 (Fed. Cir. 2007) (unpublished) (“It is of course true that
method steps may be contingent. If the condition for performing a
contingent step is not satisfied, the performance recited by the step need not
be carried out in order for the claimed method to be performed.”). For these
reasons, we agree with the Examiner’s determination that Rao renders
obvious the first three steps of claim 1. As such, we agree with the
Examiner’s determination that claim 1 is unpatentable under 35 U.S.C.
§ 103(a).
Accordingly, we sustain the rejection of claim 1, and claims 2—8, 11—
13, and 15, which are argued based on their dependency on claim 1. See
Appeal Br. 32—33.
Claims 9, 10, and 14
We are not persuaded by Appellants’ arguments as to claims 9, 10,
and 14 because the steps recited in these claims need not be performed, as
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they do not emanate from the performance of process steps (a), (b), and (c),
as discussed above. Therefore, we sustain the rejection of these claims.
Claims 16—31
We reach a different conclusion as to independent claims 16, 30, and
31, which are directed to different statutory classes of invention than process
claim 1. System claim 16 and device claim 30 are directed to a machine,
and computer-readable storage medium claim 31 is directed to an article of
manufacture. Although Schulhauser dictates a broader construction of
method claim 1, that same rationale does not necessarily apply to claims 16,
30, and 31, even though they recite functions that are substantially similar to
the steps recited in the method of claim 1.
The broadest reasonable interpretation of a system claim
having structure that performs a function, which only needs to
occur if a condition precedent is met, still requires structure for
performing the function should the condition occur. This
interpretation of the sy stem claim differs from the method claim
because the structure ... is present in the system regardless of
whether the condition is met and the function is actually
performed. Unlike [the method claim], which is written in a
manner that does not require all of the steps to be performed
should the condition precedent not be met, [the system claim] is
limited to the structure capable of performing all the recited
functions.
Schulhauser at 14.
In assessing the rejection of independent claims 16, 30, and 31, we
find that the Examiner errs by not making the requisite findings as to the
structural elements of these claims. For example, in rejecting claim 16, the
Examiner fails to make adequate factual findings as to the structure (i.e., a
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processor configured to include and execute an editing module) that
performs the recited functions. Instead, the Examiner asserts that “[sjince
the teachings of Rao disclose the underlying process steps that constitute the
methods of claims 1-5, it is respectfully submitted that they provide the
underlying structural elements that perform the steps as well. As such, the
limitations of claims 16-20 are rejected for the same reasons given above for
claims 1-5.” Final Act. 9; Ans. 9. The Examiner similarly relies on Rao’s
process to reject the apparatus of claim 30 and the medium of claim 31
without making adequate factual findings regarding the structure required by
those claims. See Final Act. 10-11; see also Ans. 10—11.
Due to the difference in scope of claims 16, 30, and 31, we find the
Examiner’s reliance on findings for method claim 1 insufficient.
Accordingly, because the Examiner has not presented adequate findings with
respect to the structure of claims 16, 30, and 31, we cannot sustain the
Examiner’s § 103(a) rejection over Rao of claims 16, 30, and 31. For the
same reasons, we also do not sustain the Examiner’s rejection of claims 17—
29, which depend from independent claim 16/
3 We note that system claim 29’s dependence from process claim 15 appears
to be an inadvertent error because the same limitation is recited in claim 15.
See Appeal 47, 52 (Claims App.).
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DECISION
The rejection of claims 1—31 under 35 U.S.C. § 101 is affirmed.
The rejection of claims 1—15 under 35 U.S.C. § 103(a) is affirmed.
The rejection of claims 16—31 under 35 U.S.C. § 103(a) is reversed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED
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