Ex Parte Dang

Board of Patent Appeals and Interferences

Jun 29, 2009

10106281 (B.P.A.I. Jun. 29, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte DENNIS K. DANG
____________

Appeal 2009-000984
Application 10/106281
Technology Center 3600
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Decided: 1 June 29, 2009
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Before, ANTON W. FETTING, JOSEPH A. FISCHETTI, BIBHU R.
MOHANTY, Administrative Patent Judges.

FISCHETTI, Administrative Patent Judge.

DECISION ON APPEAL

1 The two-month time period for filing an appeal or commencing a civil action, as
recited in 37 C.F.R. § 1.304, begins to run from the decided date shown on this
page of the decision. The time period does not run from the Mail Date (paper
delivery) or Notification Date (electronic delivery).

Appeal 2009-000984
Application 10/106,281

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STATEMENT OF THE CASE
Appellant seeks our review under 35 U.S.C. § 134 of the Examiner’s final
rejection of claim 1. We have jurisdiction under 35 U.S.C. § 6(b). (2002).

SUMMARY OF DECISION
We REVERSE and ENTER A NEW GROUND of REJECTION UNDER
37 C.F.R. § 41.50(b).

THE INVENTION
Appellant claims “a computer- implemented method for receiving input data
relating to a person's medical claim, establishing a management record for the
person, establishing episode treatment groups to define groupings of medical
episodes of related etiology, correlating subsequent medical claims events to an
episode treatment group and manipulating episode treatment groups based upon
time windows for each medical condition and co-morbidities.” (Spec. 1:12-17).
Claim 1, reproduced below, is representative of the subject matter on
appeal.

1. A computer-implemented method for grouping medical claims data,
comprising the steps of:

a. grouping a plurality of medical claim data records to an episode of care
having at least one defining characteristic;

b. assigning a first clean period to the episode of care, the first clean period
defined by a predefined time duration during which there is an absence of medical
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claim data having the at least one defining characteristic of the episode treatment
group; and

c. resetting the first clean period to define a second clean period, the second
clean period defining a second predefined time duration, wherein the first clean
period is reset to the second clean period when later presented medical claim data
having the at least one characteristic of the episode of care and falling within the
first clean period is added to the episode of care.

THE REJECTION
The Examiner relies upon the following as evidence of unpatentability:
Douglas G. Cave, “Pattern-of-treatment differences among primary care
physicians in alternative systems of care,” Benefits Quarterly, Brookfield: Third
Quarter, 1994, vol.. 10, Iss. 3, p. 6 et seq.

The following rejection is before us for review.
The Examiner rejected claim 1 under 35 U.S.C. § 103(a) as being
unpatentable over Cave.
ISSUE
Has Appellant shown that the Examiner erred in rejecting claim 1 on appeal
as being unpatentable under 35 U.S.C. § 103(a) on the grounds that a person with
ordinary skill in the art would understand that later presented medical claim data
fall within the first clean period in Cave when Cave discloses that once the later
presented claim is ascertained, a new DEC is formed for it and a new period is
started for the associated later presented claim?

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PRINCIPLES OF LAW
During examination of a patent application, pending claims are given
their broadest reasonable construction consistent with the specification. In
re Prater, 415 F.2d 1393, 1404-05, (CCPA 1969); In re Am. Acad. of Sci.
Tech Ctr., 367 F.3d 1359, 1364, 70 USPQ2d 1827, 1834 (Fed. Cir. 2004).
Although a patent applicant is entitled to be his or her own lexicographer of
patent claim terms, in ex parte prosecution it must be within limits. In re Corr,
347 F.2d 578, 580, 146 USPQ 69, 70 (CCPA 1965). The applicant must do so by
placing such definitions in the Specification with sufficient clarity to provide a
person of ordinary skill in the art with clear and precise notice of the meaning that
is to be construed. See also In re Paulsen, 30 F.3d 1475, 1480, 31 USPQ 2d 1671,
1674 (Fed. Cir. 1994) (although an inventor is free to define the specific terms
used to describe the invention, this must be done with reasonable clarity,
deliberateness, and precision; where an inventor chooses to give terms uncommon
meanings, the inventor must set out any uncommon definition in some manner
within the patent disclosure so as to give one of ordinary skill in the art notice of
the change).
“Section 103 forbids issuance of a patent when ‘the differences between
the subject matter sought to be patented and the prior art are such that the subject
matter as a whole would have been obvious at the time the invention was made
to a person having ordinary skill in the art to which said subject matter pertains.’”
KSR Int'l Co. v. Teleflex Inc., 127 S.Ct. 1727, 1734 (2007). The question of
obviousness is resolved on the basis of underlying factual determinations including
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(1) the scope and content of the prior art, (2) any differences between the claimed
subject matter and the prior art, (3) the level of skill in the art, and (4) where in
evidence, so-called secondary considerations. Graham v. John Deere Co., 383
U.S. 1, 17-18 (1966). See also KSR, 127 S.Ct. at 1734 (“While the sequence of
these questions might be reordered in any particular case, the [Graham] factors
continue to define the inquiry that controls.”).

FINDINGS OF FACT
We find the following facts by a preponderance of the evidence:
1. Cave discloses
[f]or each diagnostic cluster, we formulated diagnostic
episode clusters (DECs). Each DEC links all services
incurred in treating a patient's medical condition within a
specific period of time, including ambulatory, outpatient
and inpatient care (Cave 1993b). This period is based on
the maximum number of days between contact with a
provider for which follow-up care is still reasonable (or
window period). This decision rule is derived from the
episode definition used in the Rand Health Insurance
Experiment (Lohr, Brook and Kamberg 1986). If the date
of service for a patient's specific medical condition is
separated by a period longer than the window period, the
latest date of service is considered the start date for a new
DEC. Each of the 125 diagnostic clusters has its own
unique window period. (Cave, p. 3)
2. The Examiner found that Cave does not expressly teach
resetting the first clean period to define a second clean
period, the second clean period defining a second
predefined time duration, wherein the first clean period is
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reset to the second clean period when later presented
medical claim data having the at least one characteristic
of the episode of care and falling within the first clean
period is added to the episode of care. (Ans. 4).
3. The Examiner also found that
…Cave does teach formulating diagnostic episode
clusters. Cave further teaches if the date of service for a
patient's specific medical condition is separated by a
period longer than the window period, the latest date of
service is considered the start date or a new DEC (Cave;
pg. 3, Para. 2). (Ans. 4).
4. The Examiner also found that
…one of ordinary skill in the art could recognize
organizing and accurately recording time periods as
reducing idiosyncratic diagnosis coding patterns.
Resetting time periods allows medical claims data to be
accurate and organized. (Ans. 7).
5. The Examiner found that the new DEC is linked to a predecessor DEC
via a specific patient's medical condition in that “Cave teaches starting a new DEC
related to a specific patient's medical condition (Cave; pg. 2).” (Ans. 7).
6. The Examiner further found that “one of ordinary skill in the art would
add these features to the other teachings of Cave with the motivation of reducing
the effect of idiosyncratic diagnosis coding patterns by individual physicians
(Cave; Pg. 3, Para. 1).” (Ans. 4).
ANALYSIS
Appellant argues that in the claim the “…two clean periods are linked to the
episode, whereas in Cave the time gap between two clusters is neither
predetermined nor assigned to either cluster.” (App. Br. 15).
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The Examiner however found that Cave discloses that a new DEC is linked
to a predecessor DEC via a specific patient's medical condition (FF 3).
We agree with the Examiner on this point. Cave uses the word “specific” to
describe the involved medical condition tied to the new DEC (FF 1,5) which we
interpret to mean that the new DEC is linked to the predecessor DEC specified for
the condition for the given patient.
Appellant however next argues that “[i]n Cave, claim data falling within the
predefined time window is included in the cluster, while claim data falling outside
the window is excluded from the cluster and used to define a new cluster. The
time period between clusters is not predefined, assigned or reset.” (App. Br. 14.)
We agree with Appellant here.
Claim 1 specifically requires that the later presented medical claim data fall
within the first clean period. This does not occur in Cave. Cave discloses that
once the later presented claim is ascertained, a new DEC is formed for it and a new
period is started for the associated later presented claim. While the Examiner
provides an articulated reasoning for why resetting the new DEC in Cave would be
obvious (FF 4,6), the reasoning does not address how the prior art discloses or
makes obvious Cave’s mandating a new Dec for the later presented claim. Such a
feature relates to a core factual finding determinative of patentability, which needs
to be established by a teaching(s) in the prior art. See In re Zurko, 258 F.3d 1379,
1385 (Fed. Cir. 2001).
Accordingly we cannot sustain the rejection of claim 1.
1. New Ground of Rejection Pursuant to 37 C.F.R. § 41.50(b)
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We reject claim 1 under 35 U.S.C. § 35 U.S.C. § 101. The test to determine
whether a claimed process recites patentable subject matter under § 101 is whether:
(1) it is tied to a particular machine or apparatus, or (2) it transforms a particular
article into a different state or thing. In re Bilski, 545 F.3d 943, 961-62 (Fed. Cir.
2008) (en banc).
Claim 1 fails to transform an article into a different state in that it only resets
a period which can be a metal step. Second, although the claim preamble recites
the method as being computer implemented, we considered it to be merely a field
of use recitation, and the weight given it “[depends upon if] that statement is
intimately meshed with the ensuing language in the claim. Pitney Bowes, Inc. v.
Hewlett-Packard Co., 182 F.3d 1298, 1305-1306 (Fed. Cir. 1999). Since the
reference to a computer is not again mentioned in the claim, we find that claim 1
fails to be tied to a particular machine or apparatus. Thus, claim 1 recites non-
patent eligible subject matter
CONCLUSIONS OF LAW
We conclude the Appellant has shown that the Examiner erred in rejecting
claim 1 under 35 U.S.C. § 103(a) as unpatentable over Cave.
We conclude that claim 1 recites non-patent eligible subject matter under
35 U.S.C. § 101.
DECISION
The decision of the Examiner to reject claim 1 is REVERSED.
In addition to reversing the Examiner's rejection(s) of one or more claims,
this decision contains new grounds of rejection pursuant to 37 C.F.R. § 41.50(b).
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37 C.F.R. § 41.50(b) provides “[a] new ground of rejection pursuant to this
paragraph shall not be considered final for judicial review.” This Decision
contains a new rejection within the meaning of 37 C.F.R. § 41.50(b) (2007).
37 CFR § 41.50(b) also provides that the Appellant, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of the
following two options with respect to the new ground of rejection to avoid
termination of the appeal as to the rejected claims:
• (1) Reopen prosecution. Submit an appropriate amendment of the claims so
rejected or new evidence relating to the claims so rejected, or both, and have the
matter reconsidered by the examiner, in which event the proceeding will be
remanded to the examiner . . . .
• (2) Request rehearing. Request that the proceeding be reheard under
§ 41.52 by the Board upon the same record . . . .
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) (2006).
REVERSED: NEW GROUNDS 37 C.F.R. § 41.50(b)

JRG

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