Ex Parte Gamble et al

Patent Trial and Appeal Board

Sep 20, 2018

13782909 (P.T.A.B. Sep. 20, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/782,909 03/01/2013
99434 7590 09/24/2018
McKesson Corporation and Alston & Bird LLP
c/o Alston & Bird LLP
Bank of America Plaza
101 South Tryon St., Suite 4000
Charlotte, NC 28280-4000
FIRST NAMED INVENTOR
David Gamble
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.
23840-0897 9517
EXAMINER
OJIAKU, CHIKAODINAKA
ART UNIT PAPER NUMBER
3696
NOTIFICATION DATE DELIVERY MODE
09/24/2018 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):
usptomail@alston.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DAVID GAMBLE and RUDY MILOSEVICH
Appeal2017-005591
Application 13/782,9091
Technology Center 3600
Before MURRIEL E. CRAWFORD, BART A. GERSTENBLITH, and
AMEE A. SHAH, Administrative Patent Judges.
CRAWFORD, Administrative Patent Judge.
DECISION ON APPEAL
1 Appellants identify "McKesson Corporation" as the real party in interest.
Appeal Br. 3.
Appeal2017-005591
Application 13/782,909
STATEMENT OF THE CASE
Appellants seek our review under 35 U.S.C. § 134(a) of the
Examiner's final decision rejecting claims 1, 6, 8-14, 19, and 21-25, which
constitute all the claims pending in this application. We have jurisdiction
over the appeal under 35 U.S.C. § 6(b).
BACKGROUND
Appellants' invention is directed to identifying healthcare claim
transactions reimbursed at a loss that are candidates for use in requesting
review of associated reimbursement levels. Spec. ,r 1.
Claim 1 is illustrative:
1. A method, comprising:
receiving, from one or more data sources, by a
reimbursement analysis system comprising one or more
computers, healthcare claim transaction data associated with a
plurality of healthcare claim transactions;
performing, by the reimbursement analysis system, a first
filtering operation on the healthcare claim transaction data to
identify a first group of healthcare claim transactions from
among the plurality of healthcare claim transactions, wherein
each healthcare claim transaction in the first group of healthcare
claim transactions is associated with a respective healthcare
product reimbursed at a respective reimbursement level that is
below a cost associated with the respective healthcare product;
performing, by the reimbursement analysis system, a
second filtering operation to identify a second group of
healthcare claim transactions from the first group of healthcare
claim transactions, wherein the second filtering operation
compnses:
identifying, by the reimbursement analysis system
and based at least in part on one or more filtering criteria,
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Application 13/782,909
a group of excludable healthcare transactions in the first
group of healthcare claim transactions; and
filtering, by the reimbursement analysis system,
the group of excludable healthcare transactions from the
first group of healthcare claim transactions to generate
the second group of healthcare transactions, wherein
identifying the group of excludable healthcare
transactions comprises:
determining, by the reimbursement analysis
system, that each healthcare transaction in the
group of excludable healthcare transactions is
associated with a respective healthcare product
reimbursed at a reimbursement level that
corresponds to at least one of:
i) a usual and customary charge
ii) a contracted rate,
iii) an ingredient cost submitted;
identifying, by the reimbursement analysis system and
based at least in part on one or more selection parameter
thresholds, a third group of candidate healthcare claim
transactions from the second group of healthcare claim
transactions;
identifying, by the reimbursement analysis system, at
least one healthcare claim transaction from the third group of
healthcare claim transactions, wherein identifying at least one
healthcare claim transaction from the third group of candidate
healthcare transactions comprises:
identifying, by the reimbursement analysis system,
one or more subgroups of healthcare claim transactions
in the second group of healthcare claim transactions,
where each subgroup comprises one or more healthcare
transactions associated with the same respective
healthcare product;
identifying, from each subgroup of healthcare
transactions, one healthcare transaction compnsmg a
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Application 13/782,909
largest deviation between a cost associated with the
respective healthcare product associated with the one
healthcare claim transaction and the respective
reimbursement level associated with the one healthcare
transaction; and
determining that a respective selection parameter
associated with each subgroup exceeds a respective
selection parameter threshold of the one or more
selection parameter thresholds, wherein the respective
selection parameter associated with each subgroup
corresponds to at least one:
i) an average net loss associated with each
healthcare transaction in the subgroup,
ii) an average margin loss associated with
each healthcare transaction in the subgroup, or
iii) a total number of healthcare claim
transactions in the subgroup; and
communicating, by the reimbursement analysis system,
information associated with the at least one healthcare claim
transaction to a claims processor system.
Appellants appeal the following rejection:
Claims 1, 6, 8-14, 19, and 21-25 are directed to non-statutory, patent-
ineligible subjectmatterunder35 U.S.C. §101.
PRINCIPLES OF LAW
An invention is patent-eligible if it claims a "new and useful process,
machine, manufacture, or composition of matter." 35 U.S.C. § 101. The
Supreme Court, however, has interpreted § 101 to include implicit
exceptions: "[l]aws of nature, natural phenomena, and abstract ideas" are
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not patentable. E.g., Alice Corp. Pty. Ltd. v. CLS Bank Int 'l, 134 S. Ct.
2347, 2354 (2014).
In determining whether a claim falls within the excluded category of
abstract ideas, we are guided in our analysis by the Supreme Court's two-
step framework, described in Mayo and Alice. Id. at 2355 (citing Mayo
Collaborative Servs. v. Prometheus Labs., Inc., 132 S. Ct. 1289, 1296-97
(2012)). In accordance with that framework, we first determine whether the
claim is "directed to" a patent-ineligible abstract idea. See id. at 2356 ("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."); 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."); Diamond v. Diehr, 450 U.S. 175, 184 (1981) ("Analyzing
respondents' claims according to the above statements from our cases, we
think that a physical and chemical process for molding precision synthetic
rubber products falls within the § 101 categories of possibly patentable
subject matter."); Parker v. Flook, 437 U.S. 584, 594--95 (1978)
("Respondent's application simply provides a new and presumably better
method for calculating alarm limit values."); Gottschalk v. Benson, 409 U.S.
63, 64 (1972) ("They claimed a method for converting binary-coded decimal
(BCD) numerals into pure binary numerals.").
The patent-ineligible end of the spectrum includes fundamental
economic practices, Alice, 134 S. Ct. at 2357; Bilski, 561 U.S. at 611;
mathematical formulas, Parker, 437 U.S. at 594--95; and basic tools of
scientific and technological work, Gottschalk, 409 U.S. at 69. On the patent-
eligible side of the spectrum are physical and chemical processes, such as
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curing rubber, Diamond, 450 U.S. at 184 n.7, "tanning, dyeing, making
waterproof cloth, vulcanizing India rubber, smelting ores," and a process for
manufacturing flour, Gottschalk, 409 U.S. at 69.
If the claim is "directed to" a patent-ineligible abstract idea, we then
consider the elements of the claim-both individually and as an ordered
combination-to assess whether the additional elements transform the nature
of the claim into a patent-eligible application of the abstract idea. Alice, 134
S. Ct. at 2355. This is a search for an "inventive concept"-an element or
combination of elements sufficient to ensure that the claim amounts to
"significantly more" than the abstract idea itself. Id.
In addition, the Federal Circuit has held that if a method can be
performed by human thought alone, or by a human using pen and paper, it is
merely an abstract idea and is not patent-eligible under § 101. CyberSource
Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1373 (Fed. Cir. 2011) ("[A]
method that can be performed by human thought alone is merely an abstract
idea and is not patent-eligible under§ 101.").
Claims involving data collection, analysis, and display are directed to
an abstract idea. Elec. Power Grp. v. Alstom S.A., 830 F.3d 1350, 1353
(Fed. Cir. 2016) (holding that "collecting inforrnation, analyzing it, and
displaying certain results of the collection and analysis" are "a familiar class
of claims 'directed to' a patent ineligible concept"); see also In re TL!
Commc 'ns LLC Patent Litig., 823 F.3d 607, 611 (Fed. Cir. 2016);
FairWarning IP, LLC v. Iatric Sys., Inc., 839 F.3d 1089, 1093-94 (Fed. Cir.
2016).
Claims that recite an improvement to a particular computer
technology have been found patent eligible. See, e.g., McRO, Inc. v. Bandai
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Namco Games Am. Inc., 837 F.3d 1299, 1314--15 (Fed. Cir. 2016)
( determining claims not abstract because they "focused on a specific
asserted improvement in computer animation").
ANALYSIS
Re} ection Under 3 5 US. C. § 101
The Examiner determines that the claims are directed to "comparing
new and stored information and using rules to identify options, collecting
data, recognizing certain data within the collected data set, and storing that
recognized data in memory or and using categories to organize, store and
transmit information." Final Act. 3.
The Examiner finds that the subject matter recited in the claims in
addition to the abstract idea are merely instructions to implement the abstract
idea on a computer and require no more than a generic computer to perform
generic computer functions that are well-understood, routine, and
conventional activities previously known to the industry. Final Act. 7.
We agree with the Examiner that the claims are directed to an abstract
idea, i.e., the claims are directed to the collection, analysis, and storage of
data.
We also agree with the Examiner that the claims do not include
subject matter that is significantly more than the abstract idea. In this
regard, claim 1, for example, recites a reimbursement analysis system
comprising one or more computers. Appellants' Specification discloses that
healthcare provider computer 102 may include any suitable processor-driven
device that facilitates the generation and processing of healthcare claim
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transactions or any other healthcare related transactions. Spec. ,r 52. Using
a computer to collect data, analyze data, and return a result as is done in
claim 1 are some of the most basic functions of a computer. The recited
elements have been found to have been well-understood, routine, or
conventional in prior relevant court decisions. See, e.g., Bancorp Servs.,
L.L.C. v. Sun Life Assur. Co., 687 F.3d 1266, 1278 (Fed. Cir. 2012) (a
computer "employed only for its most basic function ... does not impose
meaningful limits on the scope of those claims"); Lending Tree, LLC v.
Zillow, Inc., 656 F. App'x 991, 997 (Fed. Cir. 2016) (holding ineligible
claims to a computerized method of speeding up a loan-application process);
Alice, 134 S. Ct. at 2358 ("[T]he mere recitation of a generic computer
cannot transform a patent-ineligible abstract idea into a patent-eligible
invention"); OIP Techs., 788 F.3d at 1363 ("[R]elying on a computer to
perform routine tasks more quickly or more accurately is insufficient to
render a claim patent eligible."); see also buySAFE, Inc. v. Google, Inc., 765
F.3d 1350, 1355 (Fed. Cir. 2014) ("That a computer receives and sends the
information over a network--with no further specification--is not even
arguably inventive."); Ultramercial, Inc. v. Hulu LLC, 772 F.3d 709, 715-16
(Fed. Cir. 2014) (claims merely reciting abstract idea of using advertising as
currency as applied to particular technological environment of the Internet
not patent eligible).
We have reviewed all the arguments Appellants have submitted
concerning the patent eligibility of the claims before us that stand rejected
under 35 U.S.C. § 101. We find that our analysis above substantially covers
the substance of all the arguments made. But, for purposes of completeness,
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we will address various arguments in order to make individual rebuttals of
same.
We are not persuaded of error on the part of the Examiner by
Appellants' argument that the Examiner provides no evidentiary support for
the alleged abstract idea and that the Examiner has failed to identify that
abstract idea. Consideration of evidence in making a determination under
the first step of the Alice framework has merit. See Apple, Inc. v. Ameranth,
Inc., 842 F.2d 1229 (Fed. Cir. 2016). But there is no requirement that
examiners must provide evidentiary support: in every case before a
conclusion can be made that a claim is directed to an abstract idea. Evidence
may be helpful in certain sit:uat:ions where, for instance, facts are in dispute.
But it is not always necessary. It is not necessary in this case because it is
clear that the claims are directed to data collection, analysis, and display.
In addition, we do not agree that the Examiner fails to identify the
abstract idea. The Examiner determines that the claims are directed to
comparing new and stored information and using rules to identify options,
collecting data, recognizing certain data within the collected data set, and
storing that recognized data in memory or and using categories to organize,
store, and transmit information. Therefore, it is clear that the Examiner
determines that the claims are directed to the collection, storage, and
analysis of data, which is an abstract idea. In addition, the Examiner
correctly cited Content lLr:traction and Transrnission LLC v. VVells Fargo
Bank, 776 F.3d 1343, 1347 (Fed. Cir. 2014), for support in establishing that
collecting data, recognizing data, and storing data is an abstract: idea. Final
Act 5.
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Application 13/782,909
\Ve are not persuaded of en-or on the part of the Examiner by
Appellants' argument that Examiner did not consider the claims in their
entirety to ascertain the character of the claims as a whole. The Examiner in
determining that the claims are directed to the collection, analysis, and
storing of data considers claim 1, for example, in its entirety because each of
the steps of the claim recite data collection, analysis or storage. The
recitations of a computer are considered by the Examiner in the finding that
the claims do not include significantly more than the abstract idea.
\Ve are not persuaded of error on the part of the Examiner by
Appellants' argument that the Examiner failed to discuss each element or
even each claim when finding that the claims do not recite significantly
more than the abstract idea. As the Federal Circuit stated in In re Jung, 637
F.3d 1356 (Fed. Cir. 2011), on the issue of prima facie notice, particularly to
anticipation but also generally:
There has never been a requirement for an examiner to make an
on-the-record claim construction of every tenn in every rejected
claim and to explain every possible difference between the prior
art and the claimed invention in order to make out a prima facie
rejection.
637 F.3d at 1363. The Federal Circuit further stated:
"[Section 132] does not mandate that in order to establish prima
facie anticipation, the PTO must explicitly preempt every
possible response to a section 102 rejection. Section 132
merely ensures that an applicant at least be informed of the
broad statutory basis for the rejection of his claims, so that he
may determine what the issues are on which he can or should
produce evidence." Chester, 906 F.2d at 1578 (internal citation
omitted). As discussed above, a11 that is required of the office to
meet its prima facie burden of production is to set forth the
statutory basis of the rejection and the reference or references
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relied upon in a sufficiently articulate and infmmati ve manner
as to meet the notice requirernent of§ 132. As the statute itself
instructs, the examiner must "notify the applicant," "stating the
reasons for such rejection," "together with such information and
references as may be useful in judging the propriety of
continuing prosecution of his application." 35 U.S.C. § 132.
Id. \Ve conclude the Examiner's analysis was more than sufficient to meet
this burden as to Alice step l as discussed above.
\Ve are also not persuaded of error on the part of the Examiner by
Appellants' argument that the claims do not preempt the use of the abstract
idea recited in the claims. \Vni1e preemption may signal patent ineligible
subject matter, 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. 2015), cert. denied, 136 S. Ct. 701, 193
(2015) ("[T]hat the 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."). And, "[ w ]here a patent's claims are deemed only to
disclose patent ineligible subject matter under the Mayo framework, as they
are in this case, preemption concerns are fully addressed and made moot."
Ariosa, 788 F.3d at 1379.
We also do not agree with the Appellants that the claims include
several elements, e.g., filtering and selection processing, that are
substantially more than the abstract idea because these recitations are part of
the abstract idea of collecting, analyzing, and storing data.
In view of the foregoing, we will sustain the Examiner's rejection of
claim 1. We will also sustain the rejection as it is directed to the remaining
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claims because the Appellants have not argued the separate eligibility of
these claims.
DECISION
We affirm the Examiner's§ 101 rejection.
TIME PERIOD
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)(2009).
AFFIRMED
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