Ex Parte Dean

Patent Trial and Appeal Board

Jul 30, 2018

14269316 (P.T.A.B. Jul. 30, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
14/269,316 05/05/2014
93261 7590 08/01/2018
Bey & Cotropia PLLC (Trizetto Customer Number)
ATTN: Dawn-Marie Bey
213 Bayly Court
Richmond, VA 23229
Val C. Dean
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.
TZG0017-DIV1-CON2 8098
EXAMINER
BURGESS, JOSEPH D
ART UNIT PAPER NUMBER
3626
NOTIFICATION DATE DELIVERY MODE
08/01/2018 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):
dawnmarie@beycotropia.com
bey _cotropia_docketing@cardinal-ip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte VAL C. DEAN
Appeal2017-000451
Application 14/269 ,316
Technology Center 3600
Before DENISE M. POTHIER, LARRY J. HUME, and
CATHERINE SHIANG, Administrative Patent Judges.
POTHIER, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant1,2 appeals under 35 U.S.C. § 134(a) from the Examiner's
rejection of claims 1-16. Appeal Br. 2. We have jurisdiction under 35
U.S.C. § 6(b). We affirm.
1 Throughout this opinion, we refer to the Final Action (Final Act.) mailed
May 18, 2015, the Appeal Brief (Appeal Br.) filed May 4, 2016, the
Examiner's Answer (Ans.) mailed August 15, 2016, and the Reply Brief
(Reply Br.) filed October 7, 2016.
2 The real party in interest is listed as TriZetto Corporation. Appeal Br. 2.
Appeal2017-000451
Application 14/269 ,316
Invention
The present invention is directed to a system and method
which allows a prospective insured to make an informed
decision on healthcare insurance by using a current medical
profile to assist in the selection of future medical insurance.
Based on past medical care, as obtained from payor data, a
number of different plans, each having different providers,
different deductibles, different maximums, different
reimbursement policies, etc., a person can make an informed
decision.
Spec. ,r 7. This illustrates "the power obtained when the medical history of a
patient can be generated and continually monitored based upon an
abstraction of data meant for another purpose, namely payment
information." Spec. ,r 23.
Claim 1 is reproduced below:
1. An online method for assisting a user in selecting a
medical reimbursement plan, said method comprising:
abstracting, by a processor, first medical information
included with at least one medical reimbursement claim
intended for a first payor from one or more medical providers
before the at least one medical reimbursement claim reaches the
first payor, said abstracted first medical information pertaining
to a particular user, wherein the abstracting includes converting
the first medical information by at least one adaptor from one or
more formats to one or more second formats, removing first
subsets of the converted first medical information pertinent to
selection of a medical reimbursement plan and storing the first
subsets of converted medical information in a patient profile
database;
receiving, by the processor, second medical information
from the particular patient responsive to questions administered
to the particular user;
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receiving, by the processor, first non-medical information
from the particular user responsive to questions administered to
the particular user;
abstracting, by the processor, second non-medical
information from incoming external information intended for a
first payor from one or more external sources before the
incoming external information reaches the first payor, said
abstracted second non-medical information pertaining to the
particular user, wherein the abstracting includes converting the
second non-medical information by at least one adaptor from
one or more formats to one or more second formats, removing
second subsets of the converted non-medical information
pertinent to selection of a medical reimbursement plan and
storing the second subsets of converted non-medical
information in a patient profile database;
retrieving, by the processor from the patient profile
database, the first and second subsets of converted medical and
converted non-medical information;
obtaining, by the processor, medical reimbursement plan
information for multiple individual medical reimbursement
plans;
comparing, by the processor, the first and second subsets
of converted medical and converted non-medical information,
the second medical information, and the first non-medical
information, with the medical reimbursement plan information
for each individual medical reimbursement plan; and
providing to the particular user by the processor an
evaluation of each of the individual medical reimbursement
plans based on the comparison to assist the particular user with
the selection of at least one of the individual medical
reimbursement plans.
Appeal Br. 21-22 (Claims App.).
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The Examiner relies on the following as evidence of unpatentability:
Barber
Johnson
Ullman
Schoenbaum
Kalies
Lash
us 4,858,121
us 5,664,109
us 2002/0002495
US 2002/0147617 Al
US 2004/0073457 Al
US 2005/0010446 Al
The Rejections
Aug. 15, 1989
Sept. 2, 1997
Jan.3,2002
Oct. 10, 2002
Apr. 15, 2004
Jan. 13,2005
Claims 1-16 are rejected under 35 U.S.C. § 101. Final Act. 6.
Claims 1, 2, 9, and 10 are rejected under 35 U.S.C. § I03(a) as
unpatentable over Schoenbaum, Barber, and Johnson. Final Act. 7-9.
Claims 3-5 and 11-13 are rejected under 35 U.S.C. § I03(a) as
unpatentable over Schoenbaum, Barber, Johnson, and Lash. Final
Act. 9-11.
Claims 6 and 14 are rejected under 35 U.S.C. § I03(a) as unpatentable
over Schoenbaum, Barber, Johnson, and Kalies. Final Act. 11-12.
Claims 7, 8, 15, and 16 are rejected under 35 U.S.C. § I03(a) as
unpatentable over Schoenbaum, Barber, Johnson, and Ullman. Final
Act. 12-13. 3
THE PATENT-INELIGIBLE SUBJECT MATTER REJECTION
The Examiner finds the claims are directed to an abstract idea of
"extracting user information from medical claims and questionnaires and
comparing that user information to medical insurance plans to help a user
select the best medical insurance plan for them." Final Act. 6; Ans. 3. The
Examiner further finds the claims have additional elements but that these
3 The rejections based on 35 U.S.C. § 112, first and second paragraphs
presented in the Final Acton (Final Act. 2-5) have been withdrawn (Ans. 2).
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elements alone or in combination do not amount to significantly more than
the abstract idea; rather, the additional elements are no more than (1)
instructions to implement the abstract idea on a computer and (2) a generic
computer serving to perform generic computer functions that are well-
understood, routine, and conventional activities previously known in the
industry. Final Act. 6.
Appellant asserts the Examiner has not presented a prima facie case
under 35 U.S.C. § 101. Appeal Br. 9-10; Reply Br. 3--4. Specifically,
Appellant argues the Examiner ignores claim elements, including the recited
"abstracting ... first medical information" step in claim 1. Appeal Br. 9-10;
Reply Br. 4. Appellant further contends claim 1 recites (1) new physical
components (i.e., "at least one adaptor") and (2) processes other than those
performed mentally (i.e., "abstracting and converting from one or more
formats to one or more second formats"). Appeal Br. 1 O; Reply Br. 5---6. To
the extent the claims are directed to an abstract idea, Appellant asserts "The
claims are directed to a complex process, requiring interaction between
multiple hardware components and the extraction and adaptation of data
from various sources and formats" and do not pre-empt every application of
the generic computer functions. Appeal Br. 11.
ISSUE
Under § 101, has the Examiner erred in rejecting claims 1-16 by
concluding the claims are directed to patent-ineligible subject matter?
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ANALYSIS
Claim 1
In Mayo Collaborative Services v. Prometheus Laboratories, Inc.,
566 U.S. 66, 70 (2012) and Alice Corp. Pty. Ltd. v. CLS Bankint'l, 134
S. Ct. 2347 (2014), the Court set forth a two-step analytical framework for
evaluating patent-eligible subject matter. 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. If so, "consider the elements of
each claim both individually and 'as an ordered combination' to determine
whether the additional elements" add enough to transform the "nature of the
claim" into "significantly more" than a patent-ineligible concept. Id.
at 2355, 2357 (quoting Mayo, 566 U.S. at 79); see Affinity Labs of Tex., LLC
v. DIRECTV, LLC, 838 F.3d 1253, 1257 (Fed. Cir. 2016).
Mayo/Alice Step 1
Step one in the Mayo/Alice framework involves looking at the "focus"
of the claims at issue and their "character as a whole." Elec. Power Grp.,
LLC v. Alstom S.A., 830 F.3d 1350, 1353 (Fed. Cir. 2016); Enfzsh, LLC v.
Microsoft Corp., 822 F.3d 1327, 1335 (Fed. Cir. 2016). This "inquiry
applies a stage-one filter to claims, considered in light of the specification,
based on whether 'their character as a whole is directed to excluded subject
matter."' Enfish, 822 F.3d at 1335 (quoting Internet Patents Corp. v. Active
Network, Inc., 790 F.3d 1343, 1346 (Fed. Cir. 2015)).
We agree with the Examiner that claim 1 's focus is directed to an
abstract idea of "extracting user information from medical claims and
questionnaires and comparing user information to medical insurance plans to
help a user select the best medical insurance plan for them." Final Act. 6;
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Ans. 3. Such an abstract idea is an idea itself, a method of organizing
human activities4, or both. 5
To elaborate, claim 1 recites "receiving ... second medical
information from the particular patient responsive to questions administered
to a particular user" and "receiving ... first non-medical information from
the particular user responsive to questions administered to the particular
user" ( e.g., extracting user information from medical claims and
questionnaires). See Ans. 3--4. Claim 1 also recites a method "for assisting
a user in selecting a medical reimbursement plan," "obtaining ... medical
reimbursement plan information for multiple individual medical
reimbursement plans," "comparing ... subsets of converted medical and
converted non-medical information, the second medical information, and
first non-medical information, with the medical reimbursement plan
information for each individual medical reimbursement plan," and
"providing to the particular user ... an evaluation of each of the individual
medical reimbursement plans based on the comparison to assist the
particular user with the selection of' a medical reimbursement plan ( e.g.,
compare user information to medical insurance plans to help a user select the
best medical insurance plan). See also Ans. 3--4.
Courts have found steps of gathering, analyzing, manipulating, and
comparing information and displaying results are directed to abstract idea.
4 See Elec. Power Grp., 830 F.3d 1350, Content Extraction & Transmission
LLC v. Wells Fargo Bank, N.A., 776 F.3d 1343 (Fed. Cir. 2014), Berkheimer
v. HP Inc., F.3d (Fed. Cir. 2018), and In re TL! Communications LLC Patent
Litigation, 823 F.3d 607 (Fed. Cir. 2016).
5 See RecogniCorp, LLC v. Nintendo Co., Ltd, 855 F.3d 1322 (Fed. Cir.
2017) (stating "Adding one abstract idea (math) to another abstract idea
(encoding and decoding) does not render the claim non-abstract.")
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See Elec. Power Grp., 830 F.3d at 1354 (indicating the claims are directed to
an abstract idea of gathering and analyzing information of a specified
content and displaying results), Content Extraction, 776 F.3d at 1347
(indicating the claims are directed to the abstract idea of collecting data
using a scanner, recognizing specific information within a collected dataset,
and storing the recognized data in memory), TL! Communications, 823 F.3d
at 613 (indicating the claims were directed to an abstract idea of classifying
and storing digital images in an organized manner), and Berkheimer v. HP
Inc., 881 F.3d 1360, 1366-67 (Fed. Cir. 2018) (stating the claims are
directed to an abstract idea of parsing and comparing information akin to
collecting and recognizing data and classifying data in an organized
manner).
Similarly, the steps outlined above in claim 1 are those of gathering
information ( e.g., "receiving ... second medical information" and "first non-
medical information," "retrieving ... the first and second subsets of
converted medical and converted non-medical information," and "obtaining
... medical reimbursement plan information"), analyzing or comparing
information (e.g., "comparing ... information with the medical
reimbursement plan information"), and displaying results ( e.g., "providing to
the particular user ... an evaluation of each of the individual medical
reimbursement plans based on the comparison"). Moreover, even when
such information is limited to particular content, it is well-settled that such
steps, such as collecting certain information, is within the realm of abstract
ideas. Elec. Power Grp., 830 F.3d at 1353.
Regarding the specifically disputed "abstracting ... first medical
information" step in claim 1, this step involves three underlying processes of
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"converting the first medical information ... from one or more formats to
one or more second formats, removing first subsets of the converted first
medical information pertinent to selection of a medical reimbursement plan,
and storing the first subsets of converted medical information in a patient
profile database." Appeal Br. 21 (Claims App.). As noted by the Examiner
(Ans. 3--4), such steps of removing certain information and storing
information are considered to be abstract ideas. See Content Extraction, 77 6
F.3d at 1347, TL! Communications, 823 F.3d at 613, and Berkheimer, 881
F.3d at 1366-67. Also, even presuming, without agreeing, the "abstracting"
step in claim 1 involves classifying patients into categories (see Spec. ,r 26),
classifying data is considered to be directed to an abstract idea. See TL!
Communications, 823 F.3d at 613 (stating the claims are directed to an
abstract idea of classifying digital images).
As for the step of "converting" information from one format to
another, this step is also directed to an abstract idea of organizing
information, possibly through a mathematical correlation. See
RecogniCorp., 855 F.3d at 1327 (indicating the claims are directed to an
abstract idea of starting with data, codes the data using a multiplication
operation, and ends with a new form of data) and Digitech Image Techs.,
LLC v. Electronics for Imaging, Inc., 758 F.3d 1344, 1350-51 (Fed. Cir.
2014). Although disclosing using an adaptor (e.g., 120) to convert
information from one format to another (Spec. ,r 19, Fig. 1), there is no
discussion-nor does Appellant assert-that this step is sufficiently rooted
in technology to solve a technological problem. Likewise, the second
"abstracting" step in claim 1 (Appeal Br. 21 (Claims App.) is directed to a
similar abstract idea to that of the first "abstracting" step.
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Appellant contends claim 1 differs from SmartGene, Inc. v. Advanced
Biological Laboratories, SA, 555 F. App'x 950 (Fed. Cir. 2014). Appeal Br.
9--10; Reply Br. 4--5. Regardless of whether SmartGene is applicable to the
facts in this record, the noted cases discussed above support that claim 1 is
directed to at least one abstract idea. We further are unpersuaded by
Appellant's mere assertion that "the facts of [McRO, Inc. v. Bandai Namco
Games America Inc., 837 F.3d 1299, 1312 (2016)] are similar to the facts
and claims ... in this application." Reply Br. 6. Unlike the claims of
McRO, claim 1 does not involve and Appellant has not demonstrated any
claim involves a specialized algorithm or "specific features of the rules as
claim limitations" as asserted. Reply Br. 6.
Regarding Appellant's assertion that the Examiner's findings in the
Answer amount to a new ground of rejection under 35 U.S.C. § 101 (Reply
Br. 4, n.4), we agree such a matter is petitionable. Reply Br. 4 n.4; see also
37 C.F.R. § 41.40(a). For this reason, this issue is not within the jurisdiction
of the Board and will not be addressed. See MPEP §§ 1002 and 1201 (9th
ed., Rev. 08.2017 Jan. 2018); see also In re Hengehold, 440 F.2d 1395, 1403
( CCP A 1971) ( stating that there are many kinds of decisions made by
Examiners, "which have not been and are not now appealable to the board or
to this court when they are not directly connected with the merits of issues
involving rejections of claims, but traditionally have been settled by petition
to the Commissioner.").
As for Appellant's contention that the Examiner incorrectly asserts the
process steps cannot be performed mentally (i.e., "abstracting and
converting from one or more formats to one or more second formats")
(Appeal Br. 10), we are not persuaded. First, courts have treated "analyzing
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information by steps people go through in their minds, or by mathematical
algorithms, without more, as essentially mental processes within the
abstract-idea category."' Elec. Power, 830 F.3d at 1354. Second, we
recognize some of the steps in claim 1 involve using (1) "a processor" ( e.g.,
both "abstracting" steps, both "receiving" steps, the "retrieving" step, the
"obtaining" step, the "comparing" step, and the "providing" step), (2) "at
least one adaptor" ( e.g., both "abstracting" steps), and (3) "a patient profile
database" (e.g., both "abstracting" steps). Appeal Br. 21-22 (Claims App.).
Yet, but for the recitation of these generic computer components, we agree
with the Examiner the above, recited steps or functions could be performed
as mental steps, or with the aid of pen and paper. See CyberSource Corp. v.
Retail Decisions, Inc., 654 F.3d 1366, 1375 (Fed. Cir. 2011) ("That purely
mental processes can be unpatentable, even when performed by a computer,
was precisely the holding of the Supreme Court in Gottschalk v. Benson[,
409 U.S. 63 (1972)]"); see also Synopsys, Inc. v. Mentor Graphics Corp.,
839 F.3d 1138, 1146-47 (Fed. Cir. 2016).
As for the pre-emption contention argued by Appellant (Appeal Br. 11
(discussing DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245 (Fed.
Cir. 2014); Reply Br. 6 (discussing McRO, 837 F.3d 1299)), we note lack of
preemption does not make the claims any less abstract. See Ariosa
Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015)
("While preemption may signal patent ineligible subject matter, the absence
of complete preemption does not demonstrate patent eligibility."); see also
Ans. 6 (indicating the same). Claim 1 does not sufficiently include meaning
limitations beyond generally linking the use of the abstract idea to a
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particular technological environment (e.g., selecting a medical
reimbursement plan).
Mayo/Alice Step 2
In this step, we consider the elements of claim 1 both individually and
as combination to determine whether the additional elements add enough to
transform the claim into significantly more than a patent-ineligible concept.
Step two involves the search for an "inventive concept." Alice, 134 S. Ct.
at 2355; Elec. Power Grp., 830 F.3d at 1353. An "inventive concept"
requires more than "well-understood, routine, conventional activity already
engaged in" by the relevant community. Rapid Litig. Mgmt. Ltd. v.
CellzDirect, Inc., 827 F.3d 1042, 1047 (Fed. Cir. 2016) (quoting Mayo,
566 U.S. at 79-80).
As noted above, the additional elements in claim 1 include recitations
to "a processor," "at least one adaptor," and "a patient profile database" to
perform the recited steps of functions of the claim. Appeal Br. 21-22
(Claims App.). See Ans. 4--5. The disclosure describes the processor and
the database (12) in generalities. Spec. ,r,r 17, 28, 30, 33, Fig. 1. Also,
although Appellant characterizes the recited "at least one adaptor" in claim 1
as "new physical components" (Appeal Br. 10), and claim 1 has "multiple
hardware components" (Appeal Br. 11 ), the disclosure describes the adaptor
in general and shows adaptor 120 as an empty box. Spec. ,r,r 19, 26, Fig. 1.
Thus, like the Examiner (Final Act. 6; Ans. 4--5), we agree the additional
elements in claim 1 are viewed as no more than recitations to generic
computers that do not transform the above-discussed abstract idea into a
patent-eligible invention. See Alice, 134 S. Ct. at 2358 (holding "the mere
recitation of a generic computer cannot transform a patent-ineligible abstract
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idea into a patent-eligible invention"); Intellectual Ventures I LLC v. Capital
One Fin. Corp., 850 F.3d 1332, 1341 (Fed. Cir. 2017) ("the claims recite
both a generic computer element-a processor-and a series of generic
computer 'components' that merely restate their individual functions ...
That is to say, they merely describe the functions of the abstract idea itself,
without particularity. This is simply not enough under step two.").
For the above reasons, claim 1 's limitations, viewed "both
individually and as an ordered combination," do not amount to significantly
more than the judicial exception and does not sufficiently transform the
nature of the claims into patent-eligible subject matter. See Alice, 134 S. Ct.
at 2355.
Based on the record before us, we are not persuaded of error in the
Examiner's rejection of claim 1.
Claims 2-16
Appellant contends claims 2-16 are not addressed in the rejection.
Appeal Br. 12-14. This argument is unavailing. First, the rejection includes
all the claims when discussing Mayo/Alice two steps. Final Act. 6 (stating
"[t]he claims are directed to the abstract idea ... " and "the additional
element(s) or combination of elements in the claim(s) other than the abstract
idea per se amount(s) to no more than .... "). Moreover, independent
claim 9 includes similar limitations to claim 1. Compare Appeal Br. 21-22
with 23-24 (Claims App.)), which have been addressed (Final Act. 6;
Ans. 3-5). Even more, the Examiner states that using "the same rationale,"
the additional limitations in claims 2 through 16 are directed to an abstract
idea and "not significantly more." Ans. 5. Appellant does not rebut these
findings in the Reply Brief. See generally Reply Br.
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For the foregoing reasons, Appellant has not persuaded us of error in
the rejection of claims 2-16.
THE OBVIOUSNESS REJECTION OVER SCHOENBAUM,
BARBER,ANDJOHNSON
Regarding independent claim 1, the Examiner finds Schoenbaum
teaches many of its limitations. Final Act. 7-8. The Examiner turns to
Barber to teach the recited "abstracting" steps and, more particularly, to
teach known central processing systems that take information from a
physician and reformat the information into a claim for an insurance carrier.
Final Act. 8. The Examiner proposes "combining prior art elements
according to known methods to yield predictable results" "with the
motivation of improving processing of medical insurance claims
information." Final Act. 8 (citing Barber 1:8-9, 55, 3:43-54). The
Examiner further turns to Johnson to teach the recitations of subsets of
patient data and proposes combining this teaching with Schoenbaum and
Barber. Final Act. 9.
Among other arguments, Appellant argues the Examiner improperly
relies on impermissible hindsight in combining Schoenbaum and Barber.
Appeal Br. 14--15. Appellant further fails to see how combining the
references as proposed improves the processing of medical insurance claims
information, which concerns Barber and not Schoenbaum. See Appeal
Br. 15.
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ISSUE
Is the Examiner's articulated reason to combine Schoenbaum and
Barber supported by some rational underpinning to justify the conclusion
that "abstracting ... first medical information included with at least one
medical reimbursement claim, ... the abstracting includes converting the
first medical information by at least one adaptor from one or more formats to
one or more second formats" would have been obvious?
ANALYSIS
Based on the record, we are persuaded by Appellant's contentions.
KSR Int 'l Co. v. Teleflex Inc., 550 U.S. 398 (2007) states "The 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. For
example, "when a patent 'simply arranges old elements with each
performing the same function it had been known to perform' and yields no
more than one would expect from such an arrangement, the combination is
obvious." Id. at 417 (quoting Sakraida v. Ag Pro, Inc., 425 U.S. 273, 282
(1976)).
KSR further states "there must be some articulated reasoning with
some rational underpinning to support the legal conclusion of obviousness"
(KSR, 550 U.S. at 418 (quoting In re Kahn, 441 F.3d 977, 988 (Fed.
Cir. 2006)), although the reason to combine need not be explicit and can
"take account of inferences creative steps that a person of ordinary skill in
the art would employ" (Id.). See also Final Act. 14 (stating "there is no
requirement that the motivation to make the proposed modification must be
expressly articulated within the references themselves"). When using the
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reasoning of applying a known technique to a known method ready for
improvement to yield predicable results, the Manual of Patent Examining
and Procedure (MPEP) indicates the rational underpinning to support this
obviousness conclusion is that the particular known technique "was
recognized as part of the ordinary capabilities of one skilled in the art."
MPEP § 2143(I)(D) (9th ed., Rev. 08.2017 January 2018).
Turning to the rejection, the Examiner states:
It would have been obvious to one of ordinary skill in the art at
the time of the invention to combine the teaching of
Schoenbaum with Barber with the motivation of improving
processing of medical insurance claims information (Barber,
column 1, lines 8-9, 55) and combining prior art elements
according to known methods to yield predictable results.
Final Act. 8, quoted in Appeal Br. 15. The Examiner further addresses that
"Barber discloses a central processing system taking information transmitted
from a remote physician terminal and reformatting it into a claim for an
insurance carrier." Final Act. 8 (citing Barber 3:43-54). When taken
collectively, the Examiner's articulated reasoning appears to be that Barber's
known technique of reformatting claim information for an insurance carrier
would have been recognized to be within an ordinary skilled artisan's
capabilities and thus, when combined with Schoenbaum, would yield the
predictable result of the "abstracting" step and, more particularly, the
"converting" step recited in claim 1. See Final Act. 8.
We find the rejection as proposed problematic. The reason provided
to combine Barber's teaching with Schoenbamn-to reformat claim
information for an insurance carrier-has not been explained sufficiently to
relate to Schoenbaum's known process. That is, Schoenbaum teaches a
method for assisting a user in selecting a health insurance plan, involving
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obtaining medical and non-medical information related to a particular user.
Schoenbaum ,r,r 8, 39, 45, 136, 139-46, 174, Figs. 5, 17-18, claim 6, cited in
Final Act. 7-8. Schoenbaum's process includes obtaining medical condition
information from a user in order to assist in choosing a medical plan.
Schoenbaum ,r 136, Fig. 5, cited in Final Act. 7. But the Examiner does not
articulate Schoenbaum's process of selecting a healthcare plan involves
collecting claim information from insurance carriers, such that applying
Barber's teaching to reformat such information for an insurance carrier
(Barber 3:43-54, cited in Final Act. 8) would have been obvious to one
skilled in the art. Appellant similarly fails to see how combining the
references as proposed improves the processing of medical insurance claims.
See Appeal Br. 15. The Examiner does not elaborate on his reasoning or
respond to Appellant's contention in the Answer. Ans. 7-8 (addressing only
how Barber is analogous art).
Also, the provided reason to include Barber's teaching in
Schoenbaum' s process "of improving processing of medical insurance
claims information (Barber, column 1, lines 8-9, 55)" (Final Act. 8) is
ambiguous. To the extent the Examiner is taking the position that applying
Barber's discussion provides a general teaching to reformat data, 6 including
Schoenbaum' s data, to "improv[ e] processing of medical ... information"
(Final Act. 8), such an adequate explanation of this teaching has not been
provided on the record or sufficiently tied to Schoenbaum's Health Cost
6 See Barber 3:51-55 (discussing reformatting into the appropriate format),
7:66-8:1 (same). According to the Specification, medical claims may be
submitted from various service providers in different formats. The system
converts claim information from providers into an appropriate format to
assist with "proper interfacing between systems." Spec. ,r 19, Fig. 1.
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Calculator (HCC) process. Moreover, column 1, line 55 of Barber describe
improving a "computerized financial transaction system" but there is
insufficient discussion on how this financial transaction system relates to
improving the processing medical information.
Given the above-noted gaps between the prior art and claim 1 's
method, the record does not explain adequately why one skilled in the art
would have recognized applying Barber's teaching to Schoenbaum to
predictably yield the recited "first medical information included with at least
one medical reimbursement claim" that is abstracted, including "converting
first medical information ... from one or more formats to one or more
second formats" as recited in claim 1. 7
Lastly, we agree with Appellant that the rejection as proposed does
not rely on Johnson to cure the above-noted deficiency. Appeal Br. 17; see
also Final Act. 9.
For the foregoing reasons, Appellant has persuaded us of error in the
rejection of (1) independent claim 1, (2) independent claim 9, which recites
commensurate limitations, and (3) dependent claims 2 and 10 for similar
reasons.
7 There are various passages in Schoenbaum discussing obtaining claim data
on a reference population as part of the HCC, which assists in comparing
alternative health insurance choices. Schoenbaum ,r,r 44, 46-47, 137. Such
findings along with a sufficiently, articulated reason to combine Barber's
teachings with Schoenbaum to arrive at the claim 1 's invention is not before
us.
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THE OBVIOUSNESS REJECTION OVER SCHOENBAUM,
BARBER, JOHNSON, AND LASH
Claims 3-5 and 11-13 are rejected under§ 103 based on
Schoenbaum, Barber, Johnson, and Lash. Final Act. 9-11. Claims 3-5
depends directly or indirectly from claim 1; claims 11-13 depend directly or
indirectly from claim 9. Above, we determined the rejection did not
adequately explained how Schoenbaum, Barber, and Johnson teach or
suggest certain, disputed limitations. Lash is not relied upon to cure the
above-noted deficiencies in the references. Final Act. 9-11. We therefore
do not sustain the rejection of claims 3-5 and 11-13.
THE REMAINING OBVIOUSNESS REJECTIONS
Claims 6 and 14 are rejected under 35 U.S.C. § 103(a) as unpatentable
over Schoenbaum, Barber, Johnson, and Kalies. Final Act. 11-12. Claims
7, 8, 15, and 16 are rejected under 35 U.S.C. § 103(a) as unpatentable over
Schoenbaum, Barber, Johnson, and Ullman. Final Act. 12-13. Claims 6-8
depend from claim 1 ; claims 14--16 depend from claim 9.
As for these remaining rejections, the Examiner does not rely on
Kalies or Ullman to teach the deficiencies in the previously discussed
references. Final Act. 11-13. For the foregoing reasons, Appellant has
persuaded us of error in the rejection of claims 6-8 and 14--16.
DECISION
We affirm the Examiner's rejection of claims 1-16 under 35 U.S.C.
§ 101.
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Application 14/269 ,316
We reverse the Examiner's rejections of claims 1-16 under 35 U.S.C.
§ 103(a).
Because we have affirmed at least one ground of rejection with
respect to each claim on appeal, the Examiner's decision is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv). See 37
C.F.R. § 41.50(±).
AFFIRMED
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