Ex Parte Furr et al

Patent Trials and Appeals Board

Apr 1, 2019

14491060 - (D) (P.T.A.B. Apr. 1, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/491,060 09/19/2014
35811 7590 04/03/2019
IP GROUP OF DLA PIPER LLP (US)
ONE LIBERTY PLACE
1650 MARKET ST, SUITE 4900
PHILADELPHIA, PA 19103
UNITED ST A TES OF AMERICA
FIRST NAMED INVENTOR
Thomas Furr
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.
ZPH-13-1379R 4162
EXAMINER
REYES, REGINALD R
ART UNIT PAPER NUMBER
3626
NOTIFICATION DATE DELIVERY MODE
04/03/2019 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):
pto. phil@dlapiper.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte THOMAS FURR and ANIL KAMATH
Appeal2018-001952
Application 14/491,060 1
Technology Center 3600
Before: MARC S. HOFF, ELENI MANTIS MERCADER, and
BETH Z. SHAW, Administrative Patent Judges.
MANTIS MERCADER, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134 from a rejection of claims
1-14. We have jurisdiction under 35 U.S.C. § 6(b ).
We reverse.
1 According to Appellants, the real party in interest is PatientPay, Inc. (App.
Br. 1)
Appeal2018-001952
Application 14/491,060
CLAIMED SUBJECT MATTER
The claims are directed to managing installment payments in a
healthcare system. Claim 1, reproduced below, is illustrative of the claimed
subject matter:
1. A system for efficient data processing comprising:
a provider interface embodied in at least one computing device
executing computer readable instructions and in communication
with one or more medical service entity devices,
wherein the provider interface is unaffiliated with and
communicates with the one or more medical service entity
devices via standardized transactions, so that transactions from
the one or more medical service entity devices to the provider
interface are in a first format and transactions
from the provider interface to the medical service entity devices
are in a second format,
wherein the data management system performs the following
steps in order:
1) the provider interface receives data relating to payment paid
by one or more of insurance entities and patients for one or more
medical services rendered by one or more medical service
entities, the provider interface receiving the data directly from
the one or more medical service entity devices in the first format,
wherein the data management system is registered with the one
or more medical service entity devices as a payer for one or more
patients,
2) in response to the data management system being registered
with the one or more medical service entity devices as a payer
for the one or more patients, the provider interface automatically
receives the information and transmits the information to a
processing engine, the processing engine embodied in at least
one computing device executing computer readable instructions,
3) in response to the transmittal by the provider interface, said
processing engine processes the received payment information
and applies any payment information to any charges for the one
or more medical services,
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4) the processing engine transforms the data relating to the
payment information into an invoice based on the payment
information and determines that the invoice is to be paid in
a plurality of installments;
5) in response to the determination by the processing engine, a
payment interface embodied in at least one computing device
executing computer-readable instructions requests payment of
the invoice from one or more payment services, wherein said
payment interface is in communication with the one or more
payment services,
6) the payment interface receives data relating to each of the
plurality of installments from the one or more payment services
and transmits the data relating to each of the plurality of
installments to the provider interface,
7) in response to the transmittal by the payment interface, the
provider interface transforms the data relating to the plurality of
installments into a transaction, in the second format, for each of
the plurality of installments received by the payment interface
comprising information about the installment and sends each of
the transactions to the one or more medical service entity
devices, and
8) when transactions for each of the plurality of installments have
been generated, the provider interface transmits information
indicating completion of the plurality of installments to the one
or more medical service entity devices in the second format.
REJECTIONS
Claims 1-14 stand rejected under 35 U.S.C § 101 because the claimed
invention is directed to a judicial exception (i.e., a law of nature, a natural
phenomenon, or an abstract idea) without significantly more.
OPINION
An invention is patent-eligible if it claims a "new and useful process,
machine, manufacture, or composition of matter." 35 U.S.C. § 101.
However, the Supreme Court has long interpreted 35 U.S.C. § 101 to include
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implicit exceptions: "[l]aws of nature, natural phenomena, and abstract
ideas" are not patentable. E.g., Alice Corp. v. CLS Bankint'l, 573 U.S. 208,
216 (2014).
In determining whether a claim falls within an excluded category, we
are guided by the Supreme Court's two-step framework, described in Mayo
and Alice. Id. at 217-18 ( citing Mayo Collaborative Servs. v. Prometheus
Labs., Inc., 566 U.S. 66, 75-77 (2012)). In accordance with that framework,
we first determine what concept the claim is "directed to." See Alice, 573
U.S. at 219 ("On their face, the claims before us are drawn to the concept of
intermediated settlement, i.e., the use of a third party to mitigate settlement
risk."); see also Bilski v. Kappas, 561 U.S. 593, 611 (2010) ("Claims 1 and 4
in petitioners' application explain the basic concept of hedging, or protecting
against risk.").
Concepts determined to be abstract ideas, and thus patent ineligible,
include certain methods of organizing human activity, such as fundamental
economic practices (Alice, 573 U.S. at 219-20; Bilski, 561 U.S. at 611 );
mathematical formulas (Parker v. Flook, 437 U.S. 584, 594--95 (1978)); and
mental processes (Gottschalkv. Benson, 409 U.S. 63, 69 (1972)). Concepts
determined to be patent eligible include physical and chemical processes,
such as "molding rubber products" (Diamond v. Diehr, 450 U.S. 175, 192
( 1981) ); "tanning, dyeing, making waterproof cloth, vulcanizing India
rubber, smelting ores" (id. at 184 n.7 (quoting Corning v. Burden, 56 U.S.
252, 267---68 (1854))); and manufacturing flour (Benson, 409 U.S. at 69
(citing Cochrane v. Deener, 94 U.S. 780, 785 (1876))).
In Diehr, the claim at issue recited a mathematical formula, but the
Supreme Court held that "[a] claim drawn to subject matter otherwise
statutory does not become nonstatutory simply because it uses a
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mathematical formula." Diehr, 450 U.S. at 176; see also id. at 192 ("We
view respondents' claims as nothing more than a process for molding rubber
products and not as an attempt to patent a mathematical formula."). Having
said that, the Supreme Court also indicated that a claim "seeking patent
protection for that formula in the abstract ... is not accorded the protection
of our patent laws, ... and this principle cannot be circumvented by
attempting to limit the use of the formula to a particular technological
environment." Id. ( citing Benson and Flook); see, e.g., id. at 187 ("It is now
commonplace that an application of a law of nature or mathematical formula
to a known structure or process may well be deserving of patent
protection.").
If the claim recites an abstract idea, we tum to the second step of the
Alice and Mayo framework, where "we must examine the elements of the
claim to determine whether it contains an 'inventive concept' sufficient to
'transform' the claimed abstract idea into a patent-eligible application."
Alice, 573 U.S. at 221 (quotation marks omitted). "A claim that recites an
abstract idea must include 'additional features' to ensure 'that the [claim] is
more than a drafting effort designed to monopolize the [abstract idea]."' Id.
( quoting Mayo, 566 U.S. at 77). "[M]erely requir[ing] generic computer
implementation[] fail[ s] to transform that abstract idea into a patent-eligible
invention." Id.
The Patent Office recently published guidance on the application of
§ 101. USPTO's January 7, 2019 Memorandum, 2019 Revised Patent
Subject Matter Eligibility Guidance ("2019 Eligibility Guidance"). Under
that guidance, we first look to whether the claim recites:
( 1) any judicial exceptions, including certain groupings of abstract
ideas (i.e., mathematical concepts, certain methods of organizing
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human activity such as a fundamental economic practice, or mental
processes); and
(2) additional elements that integrate the judicial exception into a
practical application (see MPEP § 2106.0S(a}-(c), (e}-(h)).
Only if a claim (1) recites a judicial exception and (2) does not integrate that
exception into a practical application, do we then look to whether the claim:
(3) adds a specific limitation beyond the judicial exception that is not
"well-understood, routine, conventional" in the field (see MPEP
§ 2106.0S(d)); or
(4) simply appends well-understood, routine, conventional activities
previously known to the industry, specified at a high level of
generality, to the judicial exception.
See 2019 Eligibility Guidance.
With these principles in mind, we tum to the Examiner's§ 101
rejection. The Examiner concludes that claims 1-14 are directed to a
method of organizing human activity and in particular a commercial
interaction of processing an insurance claim and obtaining payment. See
Ans. 5. Appellants argue that the claimed invention provides a specialized
provider interface to communicate with one or more medical service entity
devices via standardized transactions, so that transactions from the one or
more medical service entity devices to the provider interface are in a first
format, and transactions from the provider interface to the medical service
entity devices are in a second format. App. Br. 7. In particular, the provider
interface performs specific steps to receive data relating to payment paid by
insurance entities or patients directly from the medical service entity devices
in the first format, and to transmit the formatted data to the processing
engine for processing. In addition, the provider receives data relating to a
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plurality of installments, transforms the data into a transaction in the second
format, and sends data in the second format to the medical service entities.
App. Br. 7-8. Thus, the provider interface is able to receive data (e.g., data
in various, difficult to process forms) and transforms the data into
standardized, easily processed formats such that both the system and other
devices (i.e., the medical service entity devices) can more easily and
efficiently process the data. App. Br. 8.
The claimed limitations of the provider interface receiving data,
transforming data into a second format, and transmitting the formatted data
for processing provides a specific mechanism for creating new, easily
processed data formats to improve the efficiency of data processing, which
results in increased data throughput not only in the claimed computer
system, but also in downstream computers (i.e., medical service entity
devices or clearinghouse devices). App. Br. 8.
Claim 1 includes the following limitations: "1) the provider interface
receives data relating to payment paid by one or more of insurance entities
and patients for one or more medical services rendered by one or more
medical service entities, the provider interface receiving the data directly
from the one or more medical service entity devices" and "7) in response to
the transmittal by the payment interface ... sends each of the transactions to
the one or more medical service entity devices."
These limitations, under their broadest reasonable interpretation,
recite processing a payment for medical services because the limitations all
recite the operations that would ordinarily take place in paying medical
services. In particular, receiving a request for a "transaction" relates to a
deposit, withdrawal, or other financial transaction, which is a commercial
transaction. Accordingly, we conclude the claims recite a commercial
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transaction, which is one of certain methods of organizing human activity
identified in the 2019 Eligibility Guidance, and thus an abstract idea. See
2019 Eligibility Guidance, 84 Fed. Reg. at 52 nn.12, 13.
We next determine if there are there additional element(s) or a
combination of elements in the claim that integrate the judicial exception
into a practical application. See MPEP § 2106.05(a}-(c), (e}-(h); 2019
Eligibility Guidance.
Claim 1 recites additional elements including:
"1) the provider interface receives data relating to payment paid by
one or more of insurance entities and patients for one or more medical
services rendered by one or more medical service entities, the provider
interface receiving the data directly from the one or more medical service
entity devices in a first format," "2) in response to the data management
system being registered with the one or more medical service entity devices
as a payer for the one or more patients, the provider interface automatically
receives the information and transmits the information to a processing
engine, the processing engine embodied in at least one computing device
executing computer readable instructions," "3) in response to the transmittal
by the provider interface, said processing engine processes the received
payment information and applies any payment information to any charges
for the one or more medical services," "4) the processing engine transforms
the data relating to the payment information into an invoice based on the
payment information and determines that the invoice is to be paid in a
plurality of installments," "5) in response to the determination by the
processing engine, a payment interface embodied in at least one computing
device executing computer-readable instructions requests payment of the
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Application 14/491,060
invoice from one or more payment services, wherein said payment interface
is in communication with the one or more payment services,"
"6) the payment interface receives data relating to each of the plurality of
installments from the one or more payment services and transmits the data
relating to each of the plurality of installments to the provider interface,"
"7) in response to the transmittal by the payment interface, the provider
interface transforms the data relating to the plurality of installments into a
transaction, in the second format, for each of the plurality of installments
received by the payment interface comprising information about the
installment and sends each of the transactions to the one or more medical
service entity devices" ( emphases added).
Thus, the claim as a whole recites a particular improvement in
medical service payments. The additional elements recite a provider
interface receiving data in a first format and transforming data into a second
format, such that the provider interface is able to receive data (i.e., data in
various, difficult to process forms) and transform the data into standardized,
easily processed formats such that both the system and other devices (i.e.,
the medical service entity devices) can more easily and efficiently process
the data and automate payment. Therefore, we conclude that the claim is
patent-eligible because it is not directed to a judicial exception.
Accordingly, we do not sustain the rejection of claims 1-14 under
35 U.S.C. § 101.
DECISION
The Examiner's rejection of claims 1-14 is reversed.
REVERSED
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