Ex Parte Hail et al

Board of Patent Appeals and Interferences

Nov 22, 2010

10118060 (B.P.A.I. Nov. 22, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
10/118,060 04/09/2002 Mitzi R. Hail 08324-0003 6884
22852 7590 11/22/2010
FINNEGAN, HENDERSON, FARABOW, GARRETT & DUNNER
LLP
901 NEW YORK AVENUE, NW
WASHINGTON, DC 20001-4413
EXAMINER
KOPPIKAR, VIVEK D
ART UNIT PAPER NUMBER
3686
MAIL DATE DELIVERY MODE
11/22/2010 PAPER
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.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte MITZI R. HAIL, BERRY HAYES, SR., TOM TAYLOR,
NICKOLAS V. ALTIERI, BOBBY T. TOKUUKE, and MARK BATES
____________

Appeal 2009-009091
Application 10/118,060
Technology Center 3600
____________

Before: MURRIEL E. CRAWFORD, ANTON W. FETTING, and JOSEPH
A. FISCHETTI, Administrative Patent Judges.

CRAWFORD, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2009-009091
Application 10/118,060

2
STATEMENT OF THE CASE
This is an appeal from the final rejection of claims 1-7, 9-20, and 22-
27. We have jurisdiction to review the case under 35 U.S.C. §§ 134 and 6
(2002).
The claimed invention is directed to systems and methods for
managing subrogation and recovery of insurance claims (Spec. [002]).
Claim 1, reproduced below, is further illustrative of the claimed subject
matter.
1. A method for managing insurance claims with a
computer comprising:
receiving data for a first insurance claim by an injured
party;
determining from the data whether the first insurance
claim has recovery potential;
thereafter when it is determined that the first insurance
claim has recovery potential, collecting information about an
event from which the first insurance claim was derived;
creating a request for information regarding additional
insurance claims related to the first insurance claim which were
paid within a specified time period surrounding the date of the
event from which the first insurance claim was derived;
receiving a history file comprising data for claims for the
injured party from the specified time period;
comparing the data for the first insurance claim with the
data contained in the history file to detect whether additional
insurance claims arose from the event;
when the additional insurance claims are detected,
processing the first insurance claim and the additional insurance
claims together; and
outputting data resulting from the processing.

Claims 1-7, 9-20, and 22-27 stand rejected under 35 U.S.C. § 101 for
failing to recite patentable subject matter; and claims 1-7, 9-20, and 22-27
stand rejected under 35 U.S.C. § 103(a) as unpatentable over Jernberg (US
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Application 10/118,060

3
Pat. 6,336,096 B1, iss. Jan. 1, 2002) in view of Tarter (US Pat. 5,550,734,
iss. Aug. 27, 1996), Bowers (Barbara Bowers, Bridging the great divide, 100
Best’s Rev., 39-49 (Nov. 1999) (hereinafter “Bowers”)) , IRT (Irish Times,
IRT Business This Week 2 (Fraud); Some insurance firms have paid bounties
to beat fraud - Insurers say fraudulent claims cost them (pounds) 30 million
last year, Irish Times, 72(1, 2) (Dec. 18, 1998) (hereinafter “IRT”)), Iliff
(US Pat. 5,594,638, iss. Jan. 14, 1997), Aleia (US Pat. 5,991,733, iss. Nov.
23, 1999), Lerner (US Pub. 2002/0087364 A1, pub. Jul. 4, 2002), and
Maggioncalda (US Pat. 5,918,217, iss. Jun. 29, 1999).
We AFFIRM-IN-PART.

ISSUES
Did the Examiner err in asserting that claims 1-7, 9-20, and 22-27 are
not directed to statutory subject matter as set forth in 35 U.S.C. § 101?
Did the Examiner err in asserting that independent claims 14 and 27
are unpatentable over a combination of Jernberg, Tarter, Bowers, and IRT?

FINDINGS OF FACT
IRT
The Irish Insurance Federation has gone some way in
trying to detect fraud – it has a computer program, Insurance
Link, in place which cross-references all multiple insurance
claims, automatically triggering checks of people whose names
come up frequently. ‘While matches do not necessarily imply
that fraud has taken place, they will alert the insurer to take a
closer look at the claim. All claims involving personal injury in
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Application 10/118,060

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motor accidents, employer’s and public liability insurance, as
well as written-off vehicles, household, personal accident and
travel insurance are run through the Insurance Link system,’
says the IIF.
(p.72(1)).
ANALYSIS
35 U.S.C. § 101
To determine whether the claimed process subject matter is patent-
eligible under 35 U.S.C. § 101, various factors must be considered and
weighed when analyzing claims as a whole before reaching a conclusion on
patent subject matter eligibility.
The factors relevant in this analysis are the presence or absence of
recitations in the claims to a machine or transformation and whether the
claims are mere statements of a general concept.
Regarding machines, Appellants assert that all the claims are tied to
computers and related systems (Reply Br. 12-16). With regards to
independent claims 14 and 27, we agree. Independent claim 14 recites a
system including a processor and memory. Independent claim 27 recites a
system including a server, one or more terminals, and a client computer. We
believe these are sufficient recitations of structure to constitute statutory
subject matter, and thus we do not sustain the § 101 rejection of claims 14-
20 and 22-27.
Independent claim 1, however, is a method that merely recites a
computer in the preamble. Such a recitation is merely a field-of-use
limitation. While independent claim 1 does recite “outputting data resulting
from the processing,” such a step constitutes insignificant postsolution
activity. “Flook stands for the proposition that the prohibition against
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Application 10/118,060

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patenting abstract ideas ‘cannot be circumvented by attempting to limit the
use of the formula to a particular technological environment’ or adding
‘insignificant postsolution activity.’” Bilski v. Kappos, 130 S. Ct. 3218,
3230 (2010) (citing Diamond v. Diehr, 450 U.S. 175, 191-92 (1981)). Thus,
limiting the implementation of what would otherwise be mental steps or
abstract ideas to a “computer” environment and “outputting” activity is
insufficient to place the subject matter of independent claim 1 into the realm
of patentable subject matter under 35 U.S.C. § 101.
There is no recitation of a transformation, even of data. There is only
creation of data.
And, as broadly construed, independent claim 1 merely states the
general concept of compiling and comparing insurance claim data. The
claims cover any use of the concept of compiling and comparing insurance
claim data, known and unknown. The instructions could be performed by
any machine, existing or future-devised. Furthermore, the processes as
claimed could be accomplished by human activity alone, including through
mental processes. In the words of Gottschalk v. Benson, 409 U.S. 63, 72
(1972), the claimed processes “would wholly pre-empt the [compiling and
comparing of insurance claim data] and in practical effect would be a patent
on the [concept] itself.”
For the foregoing reasons, based upon consideration of all of the
relevant factors with respect to independent claim 1, and its respective
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6
dependent claims 2-7 and 9-13, are held to claim an abstract idea, and thus
we sustain the rejection of these claims for reciting ineligible subject matter
under 35 U.S.C. § 101.
We do not reach the merits of the prior art rejections of claims 1-7 and
9-13 because they do not recite patent eligible subject matter under 35
U.S.C. § 101. See Diamond, 450 U.S. at 188; In re Comiskey, 554 F.3d 967,
973 (Fed. Cir. 2009) (declining to reach an obviousness rejection on appeal
after concluding many claims were nonstatutory under § 101); In re Rice,
132 F.2d 140, 141 (CCPA 1942) (finding it unnecessary to reach a rejection
based on prior art after concluding claims were directed to nonstatutory
subject matter); Ex Parte Gutta, 93 USPQ2d 1025, 1036 (BPAI 2009) (per
curiam) (expanded panel) (precedential) (as the claims on appeal do not
recite patent-eligible subject matter under § 101, the prior art rejections need
not be considered).

Obviousness Rejection
We are persuaded that the Examiner erred in asserting that
independent claims 14 and 27 are unpatentable over a combination of
Jernberg, Tarter, Bowers, and IRT (App. Br. 13-18; Reply Br. 7-11).
Appellants assert that the referenced portion of IRT only discloses detecting
fraud by “cross-referenc[ing] all multiple insurance claims, [and]
automatically triggering checks of people whose names come up
frequently,” and not “creat[ing] a request for information regarding
additional insurance claims related to the first insurance claim which were
paid within a specified time period surrounding the date of the event from
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7
which the first insurance claim was derived,” as recited in independent
claims 14 and 27. The Examiner asserts that IRT inherently discloses this
aspect because
[w]hen the computer program in IRT attempts to detect fraud
by cross referencing multiple insurance claims it is inherent that
this program creates a request for information regarding
additional (multiple) insurance claims related to a first
insurance claims which were paid during a specified period
(Note: In IRT the period in which the fraud detection program
detects insurance claims does not appear to be indefinite
therefor the Office takes the position that additional insurance
claims within a specified time period are detected).
(Exam’r’s Ans. 12). We disagree. We do not see how IRT’s name check
only search necessarily includes a “creat[ing] a request for information
regarding additional insurance claims related to the first insurance claim
which were paid within a specified time period surrounding the date of the
event from which the first insurance claim was derived” (emphasis added),
as recited in independent claims 14 and 27. See In re Robertson, 169 F.3d
743, 745 (Fed. Cir. 1999). The name check only search parameter of the
database in IRT is, in itself, insufficient to merit a finding that IRT
inherently discloses a search parameter including a specified time period, as
recited in independent claims 14 and 27.

DECISION
The rejection of claims 1-7 and 9-13 under 35 U.S.C. § 101 is
AFFIRMED.
The rejection of claims 14-20 and 22-27 under 35 U.S.C. § 101 is
REVERSED.
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Application 10/118,060

8
The rejection of claims 14-20 and 22-27 under 35 U.S.C. § 103(a) is
REVERSED.
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) (2007).

AFFIRMED-IN-PART

hh

FINNEGAN, HENDERSON, FARABOW, GARRETT & DUNNER
LLP
901 NEW YORK AVENUE, NW
WASHINGTON, DC 20001-4413