Ex Parte Guyan et al

Board of Patent Appeals and Interferences

Jun 9, 2009

09305146 (B.P.A.I. Jun. 9, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte GEORGE V. GUYAN and ROBERT H. PISH
__________

Appeal 2008-005998
Application 09/305,146
Technology Center 2100
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Decided:1 June 9, 2009
__________

Before JOSEPH L. DIXON, LANCE LEONARD BARRY, and
ST. JOHN COURTENAY III, Administrative Patent Judges.

COURTENAY, 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 Data (electronic delivery).
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STATEMENT OF THE CASE
This is a decision on appeal under 35 U.S.C. § 134(a) from the
Examiner’s final rejection of claims 22, 41-65, and 67. Claims 1-21 and 23-
40 have been cancelled. Claim 66 has been allowed (Ans. 9, para. 1). We
have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.

THE INVENTION
Appellants’ invention relates generally to information management.
More particularly, Appellants’ invention relates to linking information
during insurance claim processing utilizing a computer system. (Spec. 1).

Claims 22 and 67 are illustrative:
22. A system for displaying information about an insurance
claim for an insured event, the system comprising:

a server component including an event processor and a
task engine application program that interacts with the event
processor to enable said insurance claim to be processed; and

a data component residing on the server component, the
data component comprising a claim folder that decomposes a
claim related to the insured event into a plurality of levels, the
plurality of levels including a policy level, a claim level, a
participant level and a line level, wherein the server component
is configured to generate a user interactive interface that
interactively displays at least one of the plurality of levels
reflecting information related to a policy, the claim, claimants
and an insured person in a structured format to a plurality of
users, and to allow each of the users to simultaneously interact
with one of the plurality of levels to retrieve and enter data for
the same insurance claim;
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wherein the event processor maintains clear
encapsulation of responsibilities of said system for displaying
information from said event processor, wherein said
responsibilities do not include functions performed by said
event processor, interacts with the data component to identify a
data event that affects data in the claim folder, determines a
response, identifies a system component to enable said claim to
be processed and transmits the data event to the identified
system component;

wherein when said identified system component is the
task engine, the task engine evaluates the data event, determines
claim characteristics and matches the characteristics to tasks to
automatically generate a list of tasks to be taken by one of the
plurality of users handling said insurance claim to direct a
workflow for said insurance claim to be processed.

(emphasis added).

67. A system that displays insurance claim information
comprising:

a data component that includes a claim folder that
decomposes a claim related to an insured event into a plurality
of levels, the plurality of levels include a policy level, a claim
level, a participant level and a line level;

a user interactive interface that is generated and
interactively displays information from at least one of the
plurality of levels in a structured format to a plurality of users,
wherein a plurality of users via a plurality of interfaces is
allowed to simultaneously interact with one of the plurality of
levels to retrieve and enter data on the same insurance claim;
and

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an event processor that identifies the entered data as a
data event, determines a response for the data event and
identifies a system component to process the response and
transmits information for processing the claim to the identified
system component.

(emphasis added).

PRIOR ART
The Examiner relies upon the following reference as evidence in
support of the anticipation rejection:
Borghesi US 5,950,169 Sep. 7, 1999

THE REJECTIONS
1. The Examiner rejected claims 22 and 41-65 under 35 U.S.C. § 112,
first paragraph, as failing to comply with the written description
requirement.
2. The Examiner rejected claim 67 under 35 U.S.C. § 102(e) as being
anticipated by Borghesi.

APPELLANTS’ CONTENTIONS
Regarding the Examiner’s rejection of claim 22 under § 112, first
paragraph, Appellants contend that the negative claim limitation wherein
said responsibilities do not include functions performed by said event
processor is fully supported at pages 2 and 185 of the original Specification
(App. Br. 14-15).
Regarding the Examiner’s rejection of claim 67 for anticipation,
Appellants contend that Borghesi does not disclose the recited limitation of
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a plurality of users via a plurality of interfaces is allowed to simultaneously
interact with one of the plurality of levels to retrieve and enter data on the
same insurance claim (App. Br. 20).

EXAMINER’S FINDINGS
Regarding the rejection under 35 U.S.C. § 112, first paragraph, the
Examiner maintains there is no support found in the Specification for the
claimed negative limitation that the Examiner considers to be new matter
added by amendment. (Ans. 5-8). Regarding the anticipation rejection of
independent claim 67, the Examiner maintains that the limitations argued by
Appellants are disclosed by Borghesi (Ans. 9-10).

ISSUES
Based upon our review of the administrative record, we have
determined that the following issues are dispositive in this appeal:
1. Have Appellants shown the Examiner erred in finding that the
negative claim limitation wherein said responsibilities do not
include functions performed by said event processor is not
supported in the original Specification such that the
Specification conveys with reasonable clarity to those skilled in
the art that Appellants were in possession of the invention at the
time of filing? (See claim 22).

2. Have Appellants shown the Examiner erred in finding that Borghesi
discloses the recited limitation of a plurality of users via a plurality of
interfaces is allowed to simultaneously interact with one of the
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plurality of levels to retrieve and enter data on the same insurance
claim? (See claim 67).

PRINCIPLES OF LAW
35 U.S.C. § 112
Section 112 of Title 35 provides, in relevant part, that:

The specification shall contain a written description of
the invention, and of the manner and process of making and
using it, in such full, clear, concise, and exact terms as to enable
any person skilled in the art to which it pertains, or with which
it is most nearly connected, to make and use the same, and shall
set forth the best mode contemplated by the inventor of
carrying out his invention.

35 U.S.C. § 112, first paragraph (emphasis added).

As recently reaffirmed by the Federal Circuit:
“To satisfy the written description requirement, ‘the
applicant does not have to utilize any particular form of
disclosure to describe the subject matter claimed, but the
description must clearly allow persons of ordinary skill in the
art to recognize that he or she invented what is claimed.’”
Carnegie Mellon Univ. v. Hoffmann La Roche Inc., 541 F.3d
1115, 1122 (Fed. Cir. 2008) (quoting In re Alton, 76 F.3d 1168,
1172 (Fed. Cir. 1996)). “In other words, the applicant must
‘convey with reasonable clarity to those skilled in the art that,
as of the filing date sought, he or she was in possession of the
invention,’ and demonstrate that by disclosure in the
specification of the patent.” Id. (quoting Vas-Cath Inc. v.
Mahurkar, 935 F.2d 1555, 1563-64 (Fed. Cir. 1991)). Such
disclosure need not recite the claimed invention in haec verba,
but it must do more than merely disclose that which would
render the claimed invention obvious. [Univ. of] Rochester [v.
G.D. Searle & Co.], 358 F.3d [916] at 923 [(Fed. Cir. 2004)];
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Regents of the Univ. of Cal. v. Eli Lilly & Co., 119 F.3d 1559,
1566–67 (Fed. Cir. 1997); see also PowerOasis, Inc. v. T-
Mobile USA, Inc., 522 F.3d 1299, 1306–07 (Fed. Cir. 2008)
(explaining that § 112, ¶1 “requires that the written description
actually or inherently disclose the claim element”).

Ariad Pharmaceuticals, Inc. v. Eli Lilly and Co., 560 F.3d 1366, 1371-
72 (Fed. Cir. 2009).

Anticipation under 35 U.S.C. § 102
A party asserting that a patent claim is anticipated under
35 U.S.C. § 102 must demonstrate, among other things, identity
of invention . . . [which] is a question of fact . . . one who seeks
such a finding must show that each element of the claim in
issue is found, either expressly described or under principles of
inherency, in a single prior art reference, or that the claimed
invention was previously known or embodied in a single prior
art device or practice.

Kalman v. Kimberly-Clark Corp., 713 F.2d 760, 771 (Fed. Cir. 1983), cert.
denied, 465 U.S. 1026 (1984) (citation omitted), overruled on other gds.,
SRI Intern'l v. Matsushita Elec. Corp., 775 F.2d 1107, 1125 (Fed. Cir. 1985).
Appellants have the burden on appeal to the Board to demonstrate
error in the Examiner’s position. See In re Kahn, 441 F.3d 977, 985-86
(Fed. Cir. 2006). Therefore, we look to Appellants’ Briefs to show error in
the proffered prima facie case.

FINDINGS OF FACT
In our analysis infra, we rely on the following findings of fact (FF)
that are supported by a preponderance of the evidence:

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APPELLANTS’ SPECIFICATION
1. Appellants’ Specification discloses:
Component Functionality
As shown in Figure 14, the Event Processor 1400 utilizes
a common queue 208 of events 1006 that are populated
by any component 1402 of the system to identify what
events have occurred. Working this queue, the Event
Processor determines the appropriate response for an
event and provides information to other components that
need to process them. The Event Processor does not
process any events itself and maintains clear
encapsulation of system responsibilities. For example, an
event that affects claim data is processed by the claim
component.

(Spec. 185, ll. 8-16).

THE BORGHESI REFERENCE
2. Borghesi discloses:
Each remote computer, whether a single user
computer or a computer in a local area network, provides
an interface for a user to access the assigned or pertinent
claim workfile. The user interface not only comprises a
video display of monitor, but also includes a universal
display screen. The universal display screen, preferably a
graphic user interface, displays at least one
workfile/datafile in addition to visual objects
representative of actions to be taken on a workfile. In a
preferred embodiment where the universal entry screen is
the graphic user interface described above, an opened
insurance claim datafile has a plurality of tabbed
sections, each tabbed section representing a separate
view of the datafile. A user may access each of the tabs
by using a keyboard or other user input means.

(Col. 7, ll. 40-53 see also Fig. 5).
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ANALYSIS
ISSUE 1
We decide the question of whether Appellants have shown the
Examiner erred in finding that the negative claim limitation wherein said
responsibilities do not include functions performed by said event processor
is not supported in the original Specification. (See claim 22).
“[T]he purpose of the written description requirement is to ‘ensure
that the scope of the right to exclude, as set forth in the claims, does not
overreach the scope of the inventor’s contribution to the field of art as
described in the patent specification.’” Univ. of Rochester v. G.D. Searle &
Co., 358 F.3d 916, 920 (Fed. Cir. 2004) (quoting Reiffin v. Microsoft Corp.,
214 F.3d 1342, 1345 (Fed. Cir. 2000)).
Regarding negative limitations, our reviewing court has determined
that an express intent to confer on the claim language the novel meaning
imparted by the negative limitation is required, such as an express disclaimer
or independent lexicography in the written description that provides support
for the negative limitation. Omega Engineering, Inc, v. Raytek Corp., 334
F.3d 1314, 1323 (Fed. Cir. 2003) (citations omitted).
For convenience, the disputed negative limitation is shown in context
in italics:
wherein the event processor maintains clear encapsulation of
responsibilities of said system for displaying information from said
event processor, wherein said responsibilities do not include functions
performed by said event processor, interacts with the data component
to identify a data event that affects data in the claim folder, determines
a response, identifies a system component to enable said claim to be
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processed and transmits the data event to the identified system
component[.]

(Claim 22).
Based upon our review of Appellants’ original disclosure, we agree
with the Examiner that page 2 of the Specification does not provide the
proffered support for the negative claim limitation of wherein said [system]
responsibilities do not include functions performed by said event processor.
(Claim 22).
However, we find the Specification at page 185 conveys with
reasonable clarity to those skilled in the art that Appellants were in
possession of the invention at the time of filing, as reproduced in pertinent
part: “Working this queue, the Event Processor determines the appropriate
response for an event and provides information to other components that
need to process them. The Event Processor does not process any events itself
and maintains clear encapsulation of system responsibilities.” (FF 1,
emphasis and underlining added).
Because we find Appellants have shown the Examiner erred, we
reverse the Examiner’s rejection of claims 22 and 41-65 under 35 U.S.C.
§ 112, first paragraph.

ISSUE 2
We decide the question of whether Apellants have shown the
Examiner erred in finding Borghesi discloses the recited limitation of a
plurality of users via a plurality of interfaces is allowed to simultaneously
interact with one of the plurality of levels to retrieve and enter data on the
same insurance claim. (See claim 67).
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The Examiner finds the aforementioned limitation is disclosed at
column 7, lines 40-42 of Borghesi (Ans. 9). The Examiner finds this portion
of Borghesi describes
a local area network in which each computer within the local
area network has an interface to access a claim file and all of its
tabbed sections. By such an arrangement, simultaneous user
interaction can occur with the claim file. There is no factual
basis to assuming that only one user can access a claim file if
all the users have an interface which can achieve such access.
Additionally, the usage of a file server (col. 7, line 6) inherently
permits simultaneous access to the claim files. Furthermore,
there is no suggestion in Borghesi that all other users are
“locked out” when one single user accesses the system.

(Ans. 9) (underlining omitted).

Thus, the Examiner has determined that simultaneous user interaction
can occur with Borghesi’s claim file, and that the usage of a file server (col.
7, line 6) inherently permits simultaneous access to the claim files. (Ans. 9).
We agree with the Examiner that Borghesi describes a networked
computer system that appears to provide for at least simultaneous read
access to the insurance claim files (FF 2; see also Fig. 5). However, we note
that the claim requires simultaneous interaction with one of the plurality of
levels between a plurality of users that are allowed to retrieve and enter data
on the same insurance claim. (See claim 67).
We find that the Examiner, as finder of fact, has not fully developed
the record so as to clearly show exactly where the disputed limitations are
taught within the Borghesi reference. Based upon our independent review of
Borghesi, we find no specific disclosure regarding simultaneous read and
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write access on the same insurance claim between a plurality of interacting
users. We note that the problems associated with simultaneous write access
to shared data (or shared resources) are well known in the art of data
processing. However, we find the Borghesi reference is silent regarding a
specific disclosure of locks, semaphores, or other shared data access control
mechanisms that would enable (essentially) simultaneous entry of data
between multiple users of the same insurance claim file. Thus, to affirm the
Examiner on this record would require speculation on our part. While the
Examiner has proffered that simultaneous user interaction can occur with
Borghesi’s claim file (Ans. 9), we note that our reviewing court has clearly
stated that “[i]nherency . . . may not be established by probabilities or
possibilities. The mere fact that a certain thing may result from a given set
of circumstances is not sufficient.” In re Robertson, 169 F.3d 743, 745,
(Fed. Cir. 1999).
Therefore, Appellants have shown the Examiner erred in finding that
Borghesi discloses the recited limitation of a plurality of users via a
plurality of interfaces is allowed to simultaneously interact with one of the
plurality of levels to retrieve and enter data on the same insurance claim
(see claim 67). “Absence from the reference of any claimed element negates
anticipation.” Kloster Speedsteel AB v. Crucible, Inc., 793 F.2d 1565, 1571
(Fed. Cir. 1986). Accordingly, we reverse the Examiner rejection of
independent claim 67 as being anticipated by Borghesi.

CONCLUSION
Based on the findings of facts and analysis above, Appellants have
established that the Examiner erred in rejecting claims 22 and 41-65 under
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35 U.S.C. § 112, first paragraph, for failing to comply with the written
description requirement.

Based on the findings of facts and analysis above, Appellants have
established that the Examiner erred in rejecting claim 67 under 35 U.S.C.
§ 102(e) as being anticipated by Borghesi.

DECISION
The Examiner’s decision rejecting claims 22, 41-65, and 67 is
reversed.

REVERSED

msc

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