Ex Parte Bernstein

Patent Trial and Appeal Board

Aug 15, 2016

13554323 (P.T.A.B. Aug. 15, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/554,323 07/20/2012
3000 7590 08/17/2016
CAESAR RIVISE, PC
7 Penn Center, 12th Floor
1635 Market Street
Philadelphia, PA 19103-2212
FIRST NAMED INVENTOR
Joseph Bernstein
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.
Bl245/20009 1847
EXAMINER
WILLIAMS, TERESA S
ART UNIT PAPER NUMBER
3686
NOTIFICATION DATE DELIVERY MODE
08/17/2016 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):
patents@crbcp.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JOSEPH BERNSTEIN
Appeal2014--001836
Application 13/554,323
Technology Center 3600
Before ANTON W. PETTING, NINA L. MEDLOCK, and
BRADLEY B. BAY AT, Administrative Patent Judges.
PETTING, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE 1
Joseph Bernstein (Appellant) seeks review under 35 U.S.C. § 134 of a
final rejection of claims 15-21, the only claims pending in the application on
appeal. 2 We have jurisdiction over the appeal pursuant to 35 U.S.C. § 6(b).
1 Our decision will make reference to the Appellant's Appeal Brief ("App.
Br.," filed July 3, 2013) and Reply Brief ("Reply Br.," filed November 6,
2013), and the Examiner's Answer ("Ans.," mailed September 11, 2013),
and Final Action ("Final Act.," mailed March 26, 2013).
2 Claims 1-14 were cancelled in an Amendment filed after the Final Action
on April 10, 2013. The Amendment was entered by an Advisory Action
mailed April 25, 2013.
Appeal 2014-001836
Application 13/554,323
The Appellant invented an authorization process for high intensity
medical interventions. Specification 5: 1-2.
An understanding of the invention can be derived from a reading of
exemplary claim 15, which is reproduced below (bracketed matter and some
paragraphing added).
15. A process for gaining third party payment authorization for
a prescribed mode of diagnostic testing or therapeutic medical
care for a patient, the process including a dialogue between a
user and a computer, the process comprising the steps of:
[1] the user's entry into the computer of
medical information about the patient
and
an authorization request for a specific mode of diagnostic
testing or therapeutic medical care for the patient;
[2] the computer's generation of one or more questions
responsive to the information and authorization request,
directed to refining an assessment of \x1hether the specific
mode of diagnostic testing or therapeutic medical care is
indicated;
[3] the user's entry into the computer of one or more answers
responsive to the one or more questions;
and
[ 4] the computer's generation of feedback responsive to the one
or more answers,
the feedback instructing the user as to whether or not the
specific mode of diagnostic testing or therapeutic medical
care is indicated,
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Application 13/554,323
[ 5] wherein the computer permits the user to withdraw the
authorization request throughout the process but ultimately
grants the authorization request if the user does not withdraw
the authorization request,
irrespective of whether or not the computer instructs the
user that the specific mode of diagnostic testing or
therapeutic medical care is indicated,
[6] the computer maintaining a record of the user's decision to
withdraw or persist with the authorization request,
the record factoring into a performance metric that
reflects the user's medical decision-making prowess,
[7] wherein a granting of the authorization request obligates a
third party payer to pay at least a portion of costs associated
with the prescribed mode of diagnostic testing or therapeutic
medical care.
The Examiner relies upon the following prior art:
Khan US 2006/0195342 Al Aug. 31, 2006
Johnson US 2009/0094060 Al Apr. 9, 2009
Claims 15-21 stand rejected under 35 U.S.C. § 103(a) as unpatentable
over Khan and Johnson. 3
3 A rejection under 35 U.S.C. § 112, first paragraph, along with the instant
rejection under 35 U.S.C. § 103 as to claims 1-14, was obviated by the
cancellation of claims 1-14 in an Amendment filed April 10, 2013.
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Appeal 2014-001836
Application 13/554,323
ISSUES
The issues of obviousness tum on whether the prior art describes a
granting by the user's inaction alone of an authorization request obligates a
third party payer to pay at least a portion of costs associated with the
prescribed mode of diagnostic testing or therapeutic medical care.
FACTS PERTINENT TO THE ISSUES
The following enumerated Findings of Fact (FF) are believed to be
supported by a preponderance of the evidence.
Facts Related to the Prior Art
Khan
01. Khan is directed to ordering procedures for medical healthcare
services. Khan para. 2.
02. Khan describes the objective of obtaining payment from the
user for tests, procedures or medications that are ordered and are
not covered by insurance. Khan para. 2.
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Application 13/554,323
03. Khan describes selecting over a network one or more tests for a
medical condition for a patient by providing to the user over the
network one or more tests for the patient that can be selected,
allowing the user to select over the network one or more tests,
determining whether a constraint exists on ordering any of the
selected tests, ordering the selected tests over the network,
obtaining a result of each of the ordered tests, and providing an
automated evaluation based upon feedback resulting from the
ordered tests. Khan para. 11.
04. Khan describes providing an evaluation of the user. Khan
paras. 12, 16, 80.
05. Khan describes guidelines as to whether or not a physician can
order a test or procedure for a particular patient or in general. A
constraints management program not only provides information
about what tests or procedures cannot be ordered but also about
what tests or procedures may be preferable to order. The
guidelines used by constraints management program can be
derived from medical programs such as Medicare, can be derived
from insurance programs that dictate which tests or procedures
can or cannot be ordered for specific patients or healthcare
programs, by clinical evidence or by the user or healthcare
institution, possibly using data derived from analysis program.
Constraints management program also determines if a patient has
previously undergone a specific test or procedure and therefore
does not need to have the test or procedure completed again.
Constraints management program can also use existing diagnoses,
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Appeal 2014-001836
Application 13/554,323
test results, and patient statistics to recommend a test, procedure,
and/or drugs. Khan para. 53.
06. Khan describes how, rather than having the server recommend
one or more tests/procedures to the user, the server can accept a
test/procedure request from the user. The server determines
whether or not the one or more requested tests/procedures have
any constraints against them. If there are no constraints against
ordering the requested tests or procedures, the server may provide
test/procedure guidelines and it orders the tests or procedures. If
there are constraints against ordering the requested tests or
procedures, the server automatically recommends one or more
alternative tests or procedures to the user, but can provide the user
with the option to override the system to order the one or more
tests/procedures with constraints. The server may present the
constraints in a format showing different levels of significance
that relate to urgency, warnings, criticality or other information.
Khan para. 77.
Johnson
07. Johnson is directed to allowing a consumer who is not a health
care professional to evaluate, compare and select treatment
options for a previously diagnosed healthcare condition or
prescribed procedure. Johnson para. 2.
08. Johnson describes the consumer presenting a diagnosis or
recommendation for treatment that has previously been obtained
from a qualified healthcare professional. The consumer is then
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Application 13/554,323
guided through a framework using criteria derived from
demographically similar consumers and obtains from one or more
databases a set of healthcare options that are a fit to the
consumer's own criteria for evaluating treatment options. This
allows the consumer to compare each option with regard to the
best performance, outcomes, cost and risk information available.
Johnson para. 19.
ANALYSIS
We are persuaded by Appellant's argument that "[n]owhere does Khan
teach or suggest that a user may order a medical test/procedure that is not
covered by insurance without guaranteeing payment by the user or patient."
The limitation at issue is "a granting of the authorization request obligates a
third party payer to pay at least a portion of costs" which follows the
limitation that "the computer permits the user to withdraw the authorization
request throughout the process but ultimately grants the authorization
request if the user does not withdraw the authorization request." App. Br. 6.
Thus, the claim requires that an insurance carrier be bound to make some
payment solely by patient inaction even if the patient elects some procedure
not covered by insurance. The Examiner finds that insurance carriers such
as Medicare will cover some procedures. Ans. 4--5. This is true but not
dispositive of the issue. The Examiner points to no portion of the reference
in which a carrier such as Medicare would always cover some portion of
costs, even for uncovered procedures. It is unclear, but Examiner might be
making a finding that an insurance provider covering zero percent and the
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Application 13/554,323
patient paying 100 percent would be covering a portion. 4 If this is what
Examiner intends to find, this is an erroneous use of the word "portion."
The complete absence of a portion paid by the insurance provider is not a
portion. On the other hand, if the Examiner means that when the insurance
carrier pays 100%, this is a portion, again this is true but not pertinent.
CONCLUSIONS OF LAW
The rejection of claims 15-21 under 35 U.S.C. § 103(a) as unpatentable
over Khan and Johnson is improper.
DECISION
The rejection of claims 15-21 is reversed.
REVERSED
4 "paying a portion of the cost can entail paying for 100% of the cost."
Ans. 4--5.
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