Ex Parte Bulley

Patent Trial and Appeal Board

Jul 28, 2017

12144300 (P.T.A.B. Jul. 28, 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.
12/144,300 06/23/2008 Christopher Bulley 50541-3001 1254
144228 7590 08/01/2017
frraham Patent T aw
EXAMINER
P.O. Box 451 BURGESS, JOSEPH D
Rockwood, ON NOB 2K0
CANADA ART UNIT PAPER NUMBER
3626
NOTIFICATION DATE DELIVERY MODE
08/01/2017 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):
mail@grahampatentlaw.ca
rgraham @ grahampatentlaw .ca
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte CHRISTOPHER BULLEY
Appeal 2016-000275
Application 12/144,300
Technology Center 3600
Before HUBERT C. LORIN, NINA L. MEDLOCK, and
BRADLEY B. BAYAT, Administrative Patent Judges.
LORIN, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
The Appellant seeks our review under 35 U.S.C. § 134 of the final
rejection of claims 1—5. We have jurisdiction under 35 U.S.C. § 6(b) (2002).
SUMMARY OF DECISION
We AFFIRM.
Appeal 2016-000275
Application 12/144,300
THE INVENTION
The invention “relates to a method of subsidizing the costs of
therapeutic treatments.” Spec. para. 4.
Claim 1 is illustrative, and is reproduced below with line breaks and
bracketed matter added:
1. A method of providing compensation for therapeutic
treatments using a therapeutic treatment compensator
comprising a database and a compensation processor,
[1] the database defining at least one rehabilitative therapeutic
services membership, each said therapeutic services membership
having an associated compensation plan definition and treatment
plan definition,
[la] the compensation plan definition comprising a
maximum monetary payment amount for rehabilitative
therapeutic treatments, a monetary value for each one of the
therapeutic treatments, the monetary value for each one of the
therapeutic treatments not exceeding the maximum monetary
payment amount,
[lb] the treatment plan definition comprising at least one
of a maximum authorized total number of the therapeutic
treatments, and a maximum authorized frequency of
performance of the therapeutic treatments, the method
comprising the steps of:
[2] at an input device to the compensation processor receiving
an indication of one of the therapeutic services memberships; and
[3] the compensation processor:
[4] receiving the indication of the one therapeutic
services membership from the input device,
[5] prior to a rendering by a therapeutic services facility
of one requested therapeutic treatment requested by a
patient, determining that the one requested therapeutic
treatment is authorized by the treatment plan definition
associated with the one therapeutic services membership,
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[6] subsequent to the rendering of the one authorized
therapeutic treatment, determining that a total of the
monetary value of therapeutic treatments rendered
towards the one therapeutic services membership is less
than the maximum monetary payment amount defined in
the one therapeutic services membership,
[7] issuing a receipt for the monetary value of the
rendered one authorized therapeutic treatment,
[8] prior to a rendering by a therapeutic services facility
of another requested therapeutic treatment requested by a
patient, determining that the another requested therapeutic
treatment is authorized by the treatment plan definition
associated with the one therapeutic services membership,
[9] subsequent to the rendering of the another
authorized therapeutic treatment, determining that the
total of the monetary value of therapeutic treatments
rendered towards the one therapeutic services membership
is not less than the maximum monetary payment amount
defined in the one therapeutic services membership, and
[ 10] withhold issuing a receipt for the monetary value of
the rendered another authorized therapeutic treatment,
[11] wherein the therapeutic services facility receives payment
for the therapeutic services membership whether or not the
therapeutic services facility renders the authorized therapeutic
treatments.
The Examiner relies upon the following as evidence of
unpatentability:
THE REJECTIONS
Atwood
Francis
Kennedy et al.
(“Kennedy”)
Sohal
US 2002/0103673 Al Aug. 1, 2002
US 2003/0195769 Al Oct. 16, 2003
US 2007/0005402 Al Jan. 4, 2007
US 2007/0250342 Al Oct. 25, 2007
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Erdmann et al. US 2008/0027863 A1 Jan. 31, 2008
(“Erdmann”)
Utah Medicaid Provider Manual, Division of Health Care
Financing, Physical Therapy Services By Independent
Physical Therapists, October 2003 (hereinafter “Medicaid”).
Thomas Dale Hanthom, The True Cost of Health Insurance,
June 28, 2004 (hereinafter “Hanthom”).
The following rejections are before us for review:
1. Claims 1—5 are rejected under 35 U.S.C. § 101 as being directed to
non-statutory subject matter.
2. Claims 1, 2, 4, and 5 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Kennedy, Medicaid, Sohal, Francis, Erdmann, and
Atwood.
3. Claim 3 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Kennedy, Medicaid, Sohal, Francis, Erdmann, Atwood, and Hanthom.
ISSUES
Did the Examiner err in rejecting claims 1—5 under 35 U.S.C. § 101 as
being directed to non-statutory subject matter?
Did the Examiner err in rejecting claims 1, 2, 4, and 5 under 35 U.S.C.
§ 103(a) as being unpatentable over Kennedy, Medicaid, Sohal, Francis,
Erdmann, and Atwood?
Did the Examiner err in rejecting claim 3 under 35 U.S.C. § 103(a) as
being unpatentable over Kennedy, Medicaid, Sohal, Francis, Erdmann,
Atwood, and Hanthom?
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ANALYSIS
The rejection of claims 1—5 under 35 U.S.C. § 101 as being directed to non-
statutory subject matter.
The Appellant argues these claims as a group. See Reply Br. 2—9.
We select claim 1 as the representative claim for this group, and the
remaining claims 2—5 stand or fall with claim 1. 37 C.F.R.
§41.37(c)(l)(iv).
Alice Corp. Proprietary Ltd. v. CLS Bank International, 134 S. Ct.
2347 (2014) identifies a two-step framework for determining whether
claimed subject matter is judicially-excepted from patent eligibility under §
101.
According to Alice step one, “[w]e must first determine whether the
claims at issue are directed to a patent-ineligible concept,” such as an
abstract idea. Alice, 134 S. Ct. at 2355.
In that regard, the Examiner found that
[claim 1 is] directed to the idea of receiving an indication of a
therapeutic services membership having an associated
compensation plan definition and treatment plan definition,
determining a requested therapeutic treatment is authorized by
the treatment plan definition prior to rendering a therapeutic
treatment, determining the total of the monetary value of
therapeutic treatment is less than the maximum monetary
payment amount defined in the membership subsequent to
rendering the therapeutic treatment, issuing a receipt for the
monetary value of the rendered authorized therapeutic treatment,
determining another requested therapeutic treatment is
authorized by the treatment plan definition prior to rendering a
therapeutic treatment, determining the total of the monetary
value of another therapeutic treatment is not less than the
maximum monetary payment amount defined in the membership
subsequent to rendering the therapeutic treatment, withhold
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issuing a receipt for the monetary value of the another rendered
authorized therapeutic treatment, which is an example of the
abstract idea of using comparing new and stored information and
using rules to identify options. While the claims do not explicitly
recite “comparing new and stored information and using rules to
identify options”, the concept of “comparing new and stored
information and using rules to identify options” is described by
the receiving, determining, issuing, withhold issuing, etc. steps
of claims 1 and 4.
Ans. 3^4.
We do not see that the Appellant has disputed the Examiner’s
characterization of the concept claim 1 is directed to. Nor do we see that the
Appellant has disputed that, given the Examiner's characterization of the
concept claim 1 is directed to, claim 1 is directed to an abstract idea.
Instead, the Appellant challenges the determination under Alice step
one on the grounds that “(1) Claim 1 is not directed to a fundamental
economic practice; (2) Claim 1 does not recite a series of mental steps;
[and,] (3) Examiner failed to consider all limitations of Claim 1.” Reply
Br. 2.
According to the Appellant, “[i]n contrast to independent Claim 33 of
Alice, Claim 1 of the subject patent application is not drawn to a
‘fundamental economic practice long prevalent in our system of
commerce[.’] This factor weighs against a finding that claim 1 is directed to
an abstract concept.” Id. at 3.
The Appellant appears to be arguing that claims not drawn to a
“fundamental economic practice long prevalent in our system of commerce"
are necessarily not drawn to abstract ideas. However, the question is not
whether or not claims are directed to fundamental economic practices but
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whether a building block of human ingenuity is claimed that would risk
disproportionately tying up the use of the underlying idea.
[I]n applying the § 101 exception, we must distinguish between
patents that claim the “ ‘buildin[g] block[s]’ ” of human
ingenuity and those that integrate the building blocks into
something more, thereby “transform[ing]” them into a patent-
eligible invention. The former “would risk disproportionately
tying up the use of the underlying” ideas and are therefore
ineligible for patent protection.
Alice, 134 S. Ct. at 2354—2355 (citations omitted).
According to the Appellant,
[i]n contrast to method Claim 1 of SmartGene \SmartGene, Inc.
v. Advanced Biological Laboratories, SA, No. 2013—1186 (Fed.
Cir. 2014)], method Claim 1 of the subject patent application does
not generate a ranked list or generate advisory information based
on rules to identify medical options. Instead, method Claim 1 of
the subject patent application selectively transforms an
indication of a therapeutic services membership (received from
the input device) into a receipt for therapeutic services
performed, by the compensation processor issuing receipts and
withholding subsequent receipts, based on the value of the
therapeutic services performed and the maximum payment
amount defined in the treatment plan definition associated with
the therapeutic services membership. Therefore, in contrast to
method Claim 1 of SmartGene, method Claim 1 of the subject
patent application does not recite a series of mental steps that
practitioners can and do perform in their heads. This factor
weighs against a finding that Claim 1 is directed to an abstract
concept.
Reply Br. 4.
The Appellant appears to be arguing that claims which do not recite a
series of mental steps that practitioners can and do perform in their heads are
necessarily not drawn to abstract ideas. However, the question is not
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whether or not claims recite a series of mental steps that practitioners can
and do perform in their heads but whether a building block of human
ingenuity is claimed that would risk disproportionately tying up the use of
the underlying idea.
Furthermore, the argument is not commensurate in scope with what is
claimed. Claim 1 makes no mention of “selectively transform[ing] an
indication of a therapeutic services membership (received from the input
device) into a receipt for therapeutic services performed.”
Rather, claim 1 calls for a “method of providing compensation for
therapeutic treatments” and recites eight steps. The first step of receiving an
indication of a therapeutic services membership is performed by an input
device. A “compensation processor” performs the next seven steps,
including: (a) receiving the indication of a therapeutic services membership
from the input device, (b) determining that a therapeutic treatment is
authorized by the membership, (c) determining that a total monetary value is
less than the maximum monetary payment defined by the membership,
(d) issuing a receipt, (e) determining that another therapeutic treatment is
authorized by the membership, (f) determining that a total monetary value is
not less than the maximum monetary payment defined by the membership,
and (g) withhold issuing a receipt. Each of these steps involves financial
information. A therapeutic services membership is stored as information in
a database. The membership information is used to determine that a first
treatment is authorized, that the monetary value of the first treatment is less
than a maximum monetary amount, and a receipt is issued. The membership
information is used to determine that another treatment is authorized, that
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the monetary value of the another treatment is not less than a maximum
monetary amount, and a receipt is withheld. The final “wherein” clause
requires that a facility receives payment whether or not the facility renders
the treatments.
Finally, the Appellant argues that “[i]n the circumstances, the
Appellant respectfully submits that the Examiner erred in the construction of
Claim 1, under 35 USC 101, by failing to consider all the limitations of the
claim and by failing to consider the claim limitations taken together as an
ordered combination.” Reply Br. 6. We disagree.
A plain reading of the rejection shows the Examiner reviewed the
claim as a whole with all its limitations. In fact, nearly the entire claim is
reproduced.
One of the reasons the Appellant gives for asking for a more detailed
claim construction analysis is “when the Examiner rejects the claimed
invention under 35 USC 103(a), the Examiner provides an entirely different
construction of Claim 1 from that provided under 35USC 101. The
Examiner also does not explain why two entirely different constructions of
the same claim are appropriate.” Reply Br. 6. But we have been unable to
find said “two entirely different constructions of the same claim.” The
Examiner indeed provides a detailed claim construction analysis in the § 103
rejection (see Final Act. 3—4), but we do not see how that is any different
from what the Examiner relied upon in characterizing what claim 1 is
directed to.
For the foregoing reasons, the arguments related to the determination
under step 1 of Alice are unpersuasive.
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Step two is “a search for an ‘inventive concept’—i.e., an element or
combination of elements that is ‘sufficient to ensure that the patent in
practice amounts to significantly more than a patent upon the [ineligible
concept] itself.’” Alice, 134 S. Ct. at 2355 (alteration in original) (quoting
Mayo Collaborative Servs., 566 U.S. at 72—73).
According to the Examiner, the additional elements set forth in
claim 1 amount to no more than “generic computer components that perform
generic functions (i.e. receiving an indication of membership information,
determining treatment is authorized, determining monetary value of
treatment is less than or not less than maximum monetary payment amount,
issuing or withhold issuing a receipt, etc.)” Final Act. 4. The Examiner also
found that the additional limitations do not go “beyond generally linking the
system to a particular technological environment, that is, implementation via
computers.” Id. (citing Spec. para. 14).
We have considered the elements of claim 1 both individually and as
an ordered combination, in light of the Appellant’s discussion, to determine
whether the additional elements transform the nature of the claim into a
patent-eligible application. We are unpersuaded that the Examiner erred in
finding that they do not. See Ans. 4 (citing Spec. para. 14).
Claim 1 recites conventional elements of a generic “database,” “input
device,” and “processor” employed for their inherent functions to perform as
expected. The Specification supports that view. The Specification does not
disclose a new processor, input device, database, or data structure. See Spec,
para. 14 (“a general-purpose computer, denoted generally with reference
numeral 100”); para. 15 (“The data entry device 114 typically comprises a
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keyboard and/or a keypad. The pointing device 116 typically comprises a
mouse or tablet.”); para. 16 (“therapeutic treatment membership database
122 comprises one or more plurality of database records”). Here, as in
Alice, the claims “do not, for example, purport to improve the functioning of
the computer itself or effect an improvement in any other technology or
technical field.” Alice, 134 S. Ct. at 2351. Thus, “the claims at issue
amount to ‘nothing significantly more’ than an instruction to apply the
abstract idea . . . using some unspecified, generic computer.” Id. at 2360
(citing Mayo, 132 S. Ct. at 1298).
The Appellant argues that the Examiner has not considered all of the
claim limitations as an ordered combination and that the subject matter of
claim 1 is similar to the claims at issue in DDR Holdings, LLC v.
Hotels.com, L.P., 773 F.3d 1245 (Fed. Cir. 2014). Reply Br. 6. According
to the Appellant, the limitations of claim 1, “taken together as an ordered
combination, specify how interactions between an input device and a
compensation processor are manipulated to yield a desired result — issuance
of receipts for therapeutic treatments and recovery of costs for those
therapeutic treatments.” Id. at 7—8.
We are not persuaded by the Appellant’s argument. In DDR, the court
found that in the claimed system the computer network did not “operat[e] in
its normal, expected manner” because the “the routine and conventional
sequence of events” was overridden. DDR Holdings, 773 F.3d at 1258 (Fed.
Cir. 2014). Here, the input device operates precisely in its expected manner.
The only “interaction” between the claimed input device and compensation
processor recited in claim 1 amounts to receiving a user selection of a
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membership via the input device (e.g., an ordinary mouse and keyboard) in
limitation [2] and receiving said selection at the compensation processor in
limitation [4], See Spec. para. 8 (“The indication of the one therapeutic
treatment membership may be received at an input device to a computer
. . .”); para. 32 (“admissions clerk may manually input the unique identifier
into the computer 100 using the data entry device 114 and the pointing
device 116.”). Using an input device to provide user input to a processor is
precisely its routine and conventional function. We also note that “issuance
of receipts” and “recovery of costs” are well-understood, routine,
conventional activities previously known to the industry.
The Appellant argues that “the claim limitations prevent the claimed
sequence from preempting every application of the idea.” Reply Br. 8.
This argument does not apprise us of error in the rejection. Although
preemption “might tend to impede innovation more than it would tend to
promote it, ‘thereby thwarting the primary object of the patent laws’” {Alice,
134 S. Ct. at 2354 (quoting Mayo, 132 S. Ct. at 1293), “the absence of
complete preemption does not demonstrate patent eligibility” (Ariosa
Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015));
see also OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1362—63
(Fed. Cir.), cert, denied, 136 S. Ct. 701, 193 (2015) (“[Tjhatthe claims do
not preempt all price optimization or may be limited to price optimization in
the e-commerce setting do not make them any less abstract.”).
The Appellant argues that claim 1 “expressly recites an input device
and a compensation processor performing a series of clearly-defined steps
that produces a useful output.” Reply Br. 8. But whether a claimed method
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“produces a useful output” is not germane to the inquiry under the Alice
framework. Moreover, the series of steps recited in claim 1, including using
a database to store data, using an input device to receive input, and using a
processor to compare data to determine whether a request is authorized,
compare monetary values to a maximum threshold, and issue or withhold
issuing a receipt, “amounts to electronic recordkeeping—one of the most
basic functions of a computer.” Alice, 134 S. Ct. at 2359.
Similarly unpersuasive is the Appellant’s argument that “the
specification also discloses that the compensation processor may be
implemented in electronic hardware, such as an ASIC (Application Specific
Integrated Circuit)” Reply Br. 8 (citing Spec. para. 26). Paragraph 25 of the
Specification discloses that “the compensation processor procedure 130 may
also be implemented in dedicated electronics hardware, such as an
application specific integrated circuit (ASIC).” This is the Specification’s
only mention of dedicated hardware. There is not disclosed, for example, a
new ASIC design or new hardware implementation. Moreover, none of the
claims recites an “ASIC” or any other custom hardware limitation. Cf.
Intellectual Ventures ILLC v. Symantec Corp., 838 F.3d 1307, 1322 (Fed.
Cir. 2016) (“district court erred in relying on technological details set forth
in the patent’s specification and not set forth in the claims to find an
inventive concept.”). Accordingly, we need not consider the issue of
whether a custom ASIC implementation of the Appellant’s claimed method
would satisfy Section 101, as that issue is not before us in this case.
We reach the same conclusion as to apparatus claim 4. As in Alice,
“[t]he method claims recite the abstract idea implemented on a generic
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computer; the system claims recite a handful of generic computer
components configured to implement the same idea.” Alice, 134 S. Ct.
at 2360. The Appellant has not separately argued the eligibility of any of the
dependent claims, which are similarly directed to various therapeutic
treatment membership schemes.
We have fully considered the Appellant’s arguments. For the
foregoing reasons, they are unpersuasive as to error in the rejection. The
rejection is sustained.
The rejection of claims 1, 2, 4, and 5 under 35 U.S.C. § 103(a) as being
unpatentable over Kennedy, Medicaid, Sohal, Francis, Erdmann, and
Atwood.
The rejection of claim 3 under 35 U.S.C. § 103(a) as being unpatentable
over Kennedy, Medicaid, Sohal, Francis, Erdmann, Atwood, and Hanthorn.
The Examiner’s position is that Kennedy discloses all of the
limitations of claim 1, except limitations [lb], [5], and [8]—[11] (Final Act.
2—6). The Examiner finds that Medicaid discloses limitation [lb] {id. at 4),
Sohal discloses limitations [5] and [8] {id. at 4—5), Francis discloses
limitation [9] {id. at 5), Erdmann discloses limitation [10] {id. at 6), and
Atwood discloses limitation [11] {id.).
The Appellant argues that the Examiner erred in finding that Sohal
discloses limitations [5] and [8] of claim 1 (Appeal Br. 7—10 (arguments
“A.l” and “A.2”)). According to the Appellant, Sohal does not disclose “the
treatment plan definition,” which is defined in limitation [lb] as comprising
“at least one of a maximum authorized total number of the therapeutic
treatments, and a maximum authorized frequency of performance of the
therapeutic treatments.”
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The problem with this argument is that the Examiner finds the
“treatment plan definition” of limitation [lb] in Medicaid, and not in Sohal
(Final Act. 4). Accordingly, the Appellant’s argument that Sohal does not
disclose limitation [lb] does not apprise us of error in the Examiner’s
rejection.
The Appellant argues that the Examiner erred in finding
limitation [10] in Erdmann (App. Br. 10—11; Reply Br. 11 (argument
“A.3”)). According to the Appellant, “Erdmann does not disclose that the
receipt is always generated in response to the approval code, the receipt ever
identifies the monetary amount (zero) of the transaction, or the decline code
prevents the point-of sale terminal from ever displaying the (zero)
transaction amount” (App. Br. 11).
The Appellant’s argument is not commensurate with the scope of the
claim, which does not require that “the receipt is always generated,”
“identifies the monetary amount (zero) of the transaction,” or “preventing
display of the transaction amount.” We further note that, to the extent that
claim 1 calls for particular informational content to be printed on the receipt
(i.e., “a receipt for the monetary value”), such content is properly
characterized as printed matter. Given that printed matter is not given
patentable weight, the argued-over distinction between the type of
information claimed and that of the cited prior art is not patentably
consequential. Cf. In re Distefano, 808 F.3d 845 (Fed. Cir. 2015); see also
In re Xiao, 462 Fed. Appx. 947, 950-52 (Fed. Cir. 2011) (non-precedential).
The Appellant argues that the Examiner erred in finding
limitation [11] in Atwood (Appeal Br. 11—13 (argument “A.4”)). According
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to the Appellant, “Atwood only discloses charging organization members for
an annual exam (not a warranty membership fee) and that the fee for each
exam is collected if and when the organization member schedules the exam”
(Appeal Br. 12).
The Examiner finds limitation [11] in Atwood at paragraphs 41 and
44 (Final Act. 6; Ans. 6—7). According to the Examiner, “Atwood discloses
members in a health plan or corporation pay an exam fee prior to treatment
by a healthcare provider which is nonrefimdable, interpreted as receiving
payment whether or not the treatment is rendered” (Final Act. 6).
Atwood discloses “a lifetime enhancement warranty” under which
health services providers “waive all professional and facility fees in the
event an enhancement is necessary” (Atwood para. 44). The warranty
coverage is conditional on the member annually scheduling an eye exam and
paying a nonrefimdable fee (id. ). In other words, the price of warranty
coverage is scheduling the annual eye exam and annually paying the
corresponding fee. The nonrefimdable eye exam fee is collected whether or
not any enhancement is necessary or provided. Thus, providers receive
payment for the warranty whether or not the provider renders an authorized
enhancement. The Appellant’s argument does not apprise us of error in the
rejection because nothing in claim 1 excludes scheduling an exam.
The Appellant argues that the Examiner erred in finding a motivation
to modify Kennedy according to the teachings of Sohal (Appeal Br. 13—15;
Reply Br. 13—15 (argument “B.l”)). According to the Appellant, the
proposed modification would not actually reduce costs payable by third
party payors (Appeal Br. 14), and “the Examiner’s submission is not
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supported by the evidence of record” (Reply Br. 13, 14). The Appellant also
argues that the invention is aimed at reducing costs for the patient, not
insurance companies, and that a person of ordinary skill would not consult
Sohal for that purpose {id. at 15).
The Examiner finds that it would have been obvious to modify
Kennedy to include “the treatment preauthorization of Sohal with the
motivation of reducing costs to payors” (Final Act. 5) (citing Sohal
para. 19). According to the Examiner, the combination “allows absolute
certainty of the amount a payor will pay so that a service provider will not
have to continue to submit claims after the service and receive claim denials
from the patient, which wastes time and money” (Ans. 9—10).
The Appellant’s argument that the Examiner’s rationale is not
explicitly disclosed in the prior art is not persuasive. The Examiner’s
rationale “need not seek out precise teachings directed to the specific subject
matter of the challenged claim, for a court can take account of the inferences
and creative steps that a person of ordinary skill in the art would employ.”
KSRInt’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007). The Appellant’s
argument that the purpose of the Appellant’s invention is to reduce costs for
the patient and not third parties, is also unpersuasive. “In determining
whether the subject matter of a patent claim is obvious, neither the particular
motivation nor the avowed purpose of the patentee controls. What matters is
the objective reach of the claim. If the claim extends to what is obvious, it is
[unpatentable] under § 103.” Id. at 419-20.
The Appellant argues that the Examiner erred in finding a motivation
to modify Kennedy according to the teachings of Francis and Erdmann
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(Appeal Br. 15—19; Reply Br. 15—17 (argument “B.2”)). According to the
Appellant, “the Examiner has not explained how the obligations of payor
and patient under the healthcare claims adjudication method described by
Kennedy are ‘inefficient’ or why the obligations of payor and patient under
the healthcare claims adjudication method described by Kennedy are in need
of improvement” (Appeal Br. 17). The Appellant also argues that the
Examiner has not explained why a person of ordinary skill in the art would
have “kept” and “discarded” the various elements of Kennedy, Francis, and
Erdmann (Appeal Br. 18; Reply Br. 15—17). The Appellant also argues that
the Examiner erred in finding a motivation to modify Kennedy according to
the teachings of Atwood (Appeal Br. 19-20; Reply Br. 18—19 (argument
“B.3”)). According to the Appellant, “the Examiner erred by failing to
articulate a rational basis” (Appeal Br. 20) and relied “on an impermissible
hindsight analysis, using the subject patent application as a guide to select
particular passages of the prior art to reject the claimed invention” (Reply
Br. 19).
The Appellant is arguing an overly-strict standard of obviousness.
“Any judgment on obviousness is in a sense 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 in the
art 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). “The
obviousness analysis cannot be confined by a formalistic conception of the
works teaching, suggestion, and motivation, or by overemphasis on the
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importance of published articles and the explicit content of issued patents.”
KSR, 550 U.S. at 419 (2007). In KSR, the Supreme Court reaffirmed that a
“functional approach” to the obviousness analysis is proper and that a
“combination of familiar elements according to known methods is likely to
be obvious when it does no more than yield predictable results.” Id. at 416.
The operative question in this “functional approach” is “whether the
improvement is more than the predictable use of prior art elements according
to their established functions.” Id. at 417. “Common sense teaches,
however, that familiar items may have obvious uses beyond their primary
purposes, and in many cases a person of ordinary skill will be able to fit the
teachings of multiple patents together like pieces of a puzzle.” Id. at 420—
421.
The Examiner finds that it would have been obvious to modify
Kennedy to include “the deductible determination of Francis with the
motivation of efficiently determining obligation of the payor and patient”
(Final Act. 5 (citing Francis para. 20)) and further to include “the receipt
printing system of Erdmann with the motivation of efficient operation of a
healthcare practice” {Id. at 6 (citing Erdmann para. 3); see also Ans. 10).
The Examiner also finds that it would have been obvious to modify Kennedy
to include the nonrefimdable fee of Atwood in order to “provide^ an
efficient system for payment of healthcare services that allows for any fee,
such as a non-refimdable fee for an eye exam, to be paid” (Ans. 10).
The Appellant’s arguments do not address whether the improvement
is more than the predictable use of prior art elements according to their
established functions. Accordingly, we find that the Examiner has
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established a prima facie showing of obviousness, which the Appellant has
not overcome.
For the foregoing reasons, the Appellant’s arguments as to error in the
rejection are unpersuasive. Accordingly, the rejection of claim 1 under
35 U.S.C. § 103(a) is sustained.
Because the arguments with respect to independent claim 4 and
dependent claims 2, 3, and 5 (Appeal Br. 20—21) are the same, we sustain
the rejection of those claims for the same reasons.
CONCLUSIONS
The rejection of claims 1—5 under 35 U.S.C. § 101 as being directed to
non-statutory subject matter is sustained.
The rejection of claims 1, 2, 4, and 5 under 35 U.S.C. § 103(a) as
being unpatentable over Kennedy, Medicaid, Sohal, Francis, Erdmann, and
Atwood is sustained.
The rejection of claim 3 under 35 U.S.C. § 103(a) as being
unpatentable over Kennedy, Medicaid, Sohal, Francis, Erdmann, Atwood,
and Hanthom is sustained.
DECISION
The decision of the Examiner to reject claims 1—5 is affirmed.
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Appeal 2016-000275
Application 12/144,300
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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