Ex Parte Hambright et al

Board of Patent Appeals and Interferences

Sep 21, 2010

10005137 (B.P.A.I. Sep. 21, 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.
10/005,137 12/05/2001 Lynn Hambright 2001P11666 US01 8060
7590 09/22/2010
Elsa Keller, Legal Assistant
Intellectual Property Department
SIEMENS CORPORATION
186 Wood Avenue South
Iselin, NJ 08830
EXAMINER
COBANOGLU, DILEK B
ART UNIT PAPER NUMBER
3626
MAIL DATE DELIVERY MODE
09/22/2010 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)
The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte LYNN HAMBRIGHT, DOUGLAS J. COLE, GERALDINE
MIKLOWCIC, NICHOLAS CONTI and STARR STANLEY
____________

Appeal 2009-002863
Application 10/005,137
Technology Center 3600
____________

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

FISCHETTI, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2009-002863
Application 10/005,137

2
STATEMENT OF THE CASE
Appellants seek our review under 35 U.S.C. § 134 of the Examiner’s
final rejection of claims 1-27. We have jurisdiction under 35 U.S.C. § 6(b)
(2002).
SUMMARY OF DECISION
We AFFIRM.

THE INVENTION
Appellants’ claim methods for “consolidat[ing] records of services
from multiple customer accounts, encounters, cases or visits into one
account to facilitate comprehensive billing and reimbursement compatible
with selected contract (e.g., Medicare health plan) rules for disparate
services provided to a customer.” (Specification 2:8-11).
Claim 1, reproduced below, is representative of the subject matter on
appeal.
1. A method for determining payment for provision of
multiple different services based on predetermined
reimbursement rules, comprising the steps of:
employing a record repository for linking a plurality of different
encounters and associated service records of a patient involving
receiving different treatment services at different healthcare
provider facilities on different occasions separated by a time
period of up to at least a week;
receiving a first record identifying a particular service provided
to a specific patient;
in response to receiving said first record, automatically
searching said record repository for a record indicating at least
one other service provided to said specific patient;
Appeal 2009-002863
Application 10/005,137

3
automatically grouping an item identifying said particular
service together with an item identifying said at least one other
service provided to said specific patient based on predetermined
service record allocation rules;
automatically creating a reimbursement record identifying
grouped items; and calculating a reimbursement amount for
said particular service and said at least one other service
provided to said specific patient based on a reimbursement
contract determining service grouping affects reimbursement
amount.

THE REJECTIONS
The Examiner relies upon the following as evidence of
unpatentability:
Hunt US 5,933,809 Aug. 3, 1999
Boyer US 6,208,973 Mar. 27,2001

The following rejections are before us for review.
The Examiner rejected claims 1-27 under 35 U.S.C. 112, First
paragraph, for failing to comply with the written description requirement.
The Examiner rejected claims 1-27 under 35 U.S.C. 103(a) as being
unpatentable over Boyer in view of Hunt.

Appeal 2009-002863
Application 10/005,137

4
ISSUES
Have Appellants shown that the Examiner erred in rejecting claims 1-
27 on appeal for failing to comply with the written description requirement
of 35 U.S.C. 112, first paragraph for a lack of support in the original
disclosure for claim amendments filed June 7, 2007?
Have Appellants shown that the Examiner erred in rejecting claims 1-
27 on appeal as being unpatentable under 35 U.S.C. § 103(a) over Boyer and
Hunt on the grounds that a person with ordinary skill in the art would
understand that:
• Since Boyer discloses a database containing a current healthcare
transaction, links to previous healthcare transactions and any related
healthcare transactions, that Boyer thus discloses employing a record
repository for linking a plurality of different encounters and
associated service records of a patient involving receiving different
treatment services at different healthcare provider facilities on
different occasions separated by a time period of up to at least a
week?
• Since Boyer discloses a healthcare reporting standards database which
includes universal rules for combining procedures into comprehensive
bundles, and Boyer discloses a periodic EOB (explanation of benefit)
report which is created from stored and linked medical service
records, that Boyer thus discloses automatically grouping an item
identifying said particular service together with an item identifying
Appeal 2009-002863
Application 10/005,137

5
said at least one other service provided to said specific patient based
on predetermined service record allocation rules?
• Since Boyer discloses an adjudication engine whose purpose is to
adjudicate and price healthcare transactions that are submitted by a
healthcare provider, and the engine uses rules for bundling medical
service records, that Boyer thus discloses calculating a reimbursement
amount for said particular service and said at least one other service
provided to said specific patient based on a reimbursement contract
determining service grouping affects reimbursement amount?
Have Appellants shown that the Examiner erred in rejecting claims 9-
16 on appeal as being unpatentable under 35 U.S.C. § 103(a) over Boyer and
Hunt on the grounds that a person with ordinary skill in the art would
understand that since Boyer discloses the standards database and the
adjudication engine, that Boyer thus discloses automatically applying
predetermined allocation rules for providing a reimbursement record
indicating a group of services to be billed together on a single bill, said
group of services having been provided to said entity, by, in response to
receiving said first record, automatically searching said record repository
for a record indicating at least one other service provided to said specific
entity and linked to said particular service?

Appeal 2009-002863
Application 10/005,137

6
FINDINGS OF FACT
We find the following facts by a preponderance of the evidence:
1. The claim limitation employing a record repository for linking
a plurality of different encounters and associated service records of a
patient involving receiving different treatment services at different
healthcare provider facilities on different occasions separated by a time
period of up to at least a week was added to claims 1, 7, 9, 17, and 23 by
amendment on June 7, 2007.
2. The Specification as originally filed does not include the phrase
“separated by a time period of up to at least a week.”
3. The Specification as originally filed does not include the words
“week,” “month”, or “year,” in any context.
4. The Specification as originally filed does not describe a
particular time period in reference to the time period for separation of
services within a reimbursement record.
5. The claim limitation within a period encompassing at least one
of (a) a plurality of weeks and (b) a plurality of months was added to claim
25 by amendment on June 7, 2007.
6. The Specification as originally filed does not include the phrase
“within a period encompassing at least one of (a) a plurality of weeks and
(b) a plurality of months”, nor does it describe another time period between
services contained within a reimbursement record.
Appeal 2009-002863
Application 10/005,137

7
7. The Specification does not define the term “healthcare provider
facilities.”
8. The Specification defines “service” as a “unit for which a
charge is made” including “… [a]ny material or supply dispensed (including
drugs), any facilities or equipment used, any administrative service provided
(e.g., television), or any financial service provided (e.g., credit check). …”
(Specification 17:31-45).
9. The drawings disclose an example of different treatment
services at different healthcare provider facilities in showing separate
charges for “Lab,” “Xray,” and “Room1” (Figure 1).
10. The Specification does not define or describe the term
“different occasions.”
11. The ordinary and customary meaning of the term “occasion” as
defined by Merriam Webster’s Collegiate Dictionary (9th ed.) is: “a time at
which something happens.”
12. The Specification does not describe the phrase a time period of
up to at least a week.
13. The Specification provides one example of services
…separated by a time period of up to at least a week when it describes a
patient receiving a service two days after an initial service in that “… patient
500 (Ms. Jones) is admitted to Hospital on 3rd June 2001 (item 703 of
Figure 6), two days after her Outpatient Encounter (of 1 June, 2001).”
(Specification 11:28-29).
Appeal 2009-002863
Application 10/005,137

8
14. The Specification provides another example of services
…separated by a time period of up to at least a week when it describes
services performed within 90 days of a transplant, in that “The contract also
covers reimbursement for costs of routine outpatient evaluation procedures
and testing during the ninety days following the transplant procedure as well
as certain pre-admission testing.” (Specification 5:16-19).
15. Boyer discloses employing a record repository for linking a
plurality of different encounters and associated service records of a patient
in describing the database that contains linked service records, because it
discloses: “Clinical Pathways Database 34--Information pertaining to the
current healthcare transaction (HCT), links to previous HCTs (the clinical
pathway), and the state of each HCT as it exists in the pathway, as well as
any related healthcare transactions are stored in this database.” (Col. 8, ll.
43-47).
16. Boyer discloses an example of its EOB (explanation of benefit)
report in Figure 6 which shows different treatment services at different
healthcare provider facilities on different occasions separated by a time
period of up to at least a week, in that the statement discloses different
services for a single patient at different facilities (blood lab at Dr. Klein,
outpatient at Princeton Medical Center, and echo lab at Dr. Klein) at
different occasions (10/24/97, 10/24/97, 10/25/97, and 11/8/97) which are
linked in the database so that they are available for the creation of the EOB.
(FF 17 annotation “A”).
Appeal 2009-002863
Application 10/005,137

9
17. Boyer discloses a record repository for a record indicating at
least one other service provided to said specific patient and a different
patient and automatically grouping an item identifying said particular
service together with an item identifying said at least one other service in
response to identifying linked records of said specific patient and said
different patient when it discloses medical service records of multiple family
members which are linked in a common EOB statement, an annotated
example of which follows (FF 17 annotations “B” and “C”).
An annotated version of Figure 6 in Boyer is reproduced below:
Appeal 2009-002863
Application 10/005,137

10

Annotated Figure 6 depicts Boyer’s EOB statement

Appeal 2009-002863
Application 10/005,137

11
18. Boyer discloses a repository which contains information from a
reimbursement contract, and rules about how service grouping affects
reimbursement amount by describing a policy database including “[t]the
rules that govern which services and products are covered and in which
order are stored as constraints. … The Policy Database also includes pricing
information such as deductible, copay, and coinsurance.” (Col 8, ll. 31-42).
19. Boyer discloses calculating a reimbursement amount for said
particular service and said at least one other service provided to said
specific patient based on a reimbursement contract when it discloses “[a]s
shown, at the center of the adjudication engine 22 resides a rules processor
30 whose sole purpose is to adjudicate and price healthcare transactions that
are submitted by a healthcare provider 12.” (Col. 8, ll. 9-12).
20. Boyer discloses a system that is used by outpatient and
inpatient medical service providers such that “… the system 10 of the
invention is accessed by a plurality of product/service providers 12, such as
doctor's offices, hospitals, pharmacies, and the like, who provide services
and products such as physician care, hospital care, dental care,
pharmaceutical products, lab tests, prosthetics, surgical equipment, and the
like.” (Col. 6, ll. 23-28).
21. Boyer discloses automatically applying predetermined
allocation rules for providing a reimbursement record indicating a group of
services to be billed together on a single bill, in that “[i]nformation
pertaining to the universe of classification standards by which diagnosis and
Appeal 2009-002863
Application 10/005,137

12
procedural products and services are coded for use in reporting the services
and procedures in a healthcare transaction is maintained in this database. …
These standards also include universal rules for bundling (combining atomic
procedures into comprehensive ones).” (Col. 9, ll. 25-33).
22. Boyer discloses that the system bills both a third-party payor
and also patients, in that Boyer “provides for the creation of an adjudicated
settlement transaction at a point of service which designates the portion of
the service to be paid by the third party payor and the portion to be paid by
the customer.” (Abstract).

ANALYSIS
We affirm the rejections of claims 1-27.

Rejection under 35 U.S.C. 112, First Paragraph
The Examiner rejected Claims 1-27 under 35 U.S.C. 112, first
paragraph for failing to comply with the written description requirement.
The Examiner failed to find support in the original Specification for “linking
records separated by a time period of up to at least a week” (Answer 3).
Claims 1, 7, 9, 17, and 23 contain the limitation employing a record
repository for linking a plurality of different encounters and associated
service records of a patient involving receiving different treatment services
at different healthcare provider facilities on different occasions separated by
a time period of up to at least a week, which was added by amendment to all
Appeal 2009-002863
Application 10/005,137

13
independent claims during prosecution (FF 1). The written description of
the Specification as originally filed does not include the phrase linking
records “separated by a time period of up to at least a week,” (FF 2) nor a
description of a period of time of separation between services in a linked
record (FF 3). The Specification as originally filed also does not include the
terms “week,” “month,” or “year” in any context, including in reference to a
time period for separation of services in a linked record (FF 4). We
therefore find with the Examiner that the Specification does not provide
support for the claim limitation separated by a time period of up to at least a
week.
The Examiner rejected claim 25 under 35 U.S.C. 112, first paragraph
for failing to comply with the written description requirement. The
Examiner found no support in the original Specification for period
encompassing at least one of (a) a plurality of weeks and (b) a plurality of
months, which was which was added by amendment during prosecution (FF
5). The Specification as originally filed does not include the phrase period
encompassing at least one of (a) a plurality of weeks and (b) a plurality of
months (FF 6). The written description of the Specification as originally
filed does not describe a period of time of separation between services in a
linked record (FF 3) or include the terms “week,” “month,” or “year” in any
context, including in reference to a time period for separation of services in a
linked record (FF 4). We therefore find with the Examiner that the
Specification does not provide support for the claim limitation period
Appeal 2009-002863
Application 10/005,137

14
encompassing at least one of (a) a plurality of weeks and (b) a plurality of
months.

Claim Interpretation
Preliminarily, we interpret the scope and meaning of the claim
language. We interpret “healthcare provider facilities”, “different
occasions,” and “a time period of up to at least a week,” as follows.
The term “healthcare provider facilities” is not defined in the
Specification (FF 7). The Specification however describes that healthcare
provider facilities are those places where services for which a charge is
made (FF 8), and examples of facilities charges attributed to “Lab,” “Xray,”
and “Room1” are provided in Appellants’ Figure 1 (FF 9). Thus, an
encounter by a patient with a healthcare provider facility is one which may
lead to a discrete healthcare billing charge.
The phrase “on different occasions” is not defined in the Specification
(FF 10). The ordinary and common meaning of the term “occasion” is “a
time at which something happens” (FF 11). We therefore interpret the
phrase “on different occasions” to mean “at different times.”
The Specification does not describe or define the phrase “a time
period of up to at least a week” (FF 12). We interpret the phrase a time
period of up to at least a week to mean a time period which starts at the first
encounter and lasts a period of time which can range from as short as a few
moments and up to as long as several weeks or months. While the phrase
Appeal 2009-002863
Application 10/005,137

15
“up to” implies a ceiling value, the phrase “at least” implies a floor value.
Thus the combined phrase “up to at least” implies no floor or ceiling value
constraint.
Rejection under 35 U.S.C. § 103(a) of Claims 1, 7, 9, 17, and 23
Appellants’ arguments against the rejection of independent claims 1,
7, 9, 17, and 23 are based on perceived deficiencies of the combination of
Boyer and Hunt. Inasmuch as Appellants raise the same issues with respect
to each of these claims, we discuss them together, addressing each of
Appellants’ arguments in turn.
Appellants first argue that because “Boyer is merely concerned with
the point of service which is used for billing while the patient is still at the
medical facility,” this is “wholly unlike the present claimed invention which
recites ‘employing a record repository for linking a plurality of different
encounters and associated service records of a patient involving receiving
different treatment services at different healthcare provider facilities on
different occasions separated by a time period of up to at least a week’”
(Appeal Br. 12).
We are not persuaded by Appellants’ argument. Given our
interpretation, supra, of the terms different healthcare provider facilities and
different occasions, Boyer’s disclosure of linking encounters and service
records of a patient involving different services at different facilities at
different times in its database (FF 15) meets the sufficiently broad scope of
the claims. Such linking is apparent in the EOB which shows blood lab at
Appeal 2009-002863
Application 10/005,137

16
Dr. Klein, outpatient services at Princeton Medical Center, and echo lab at
Dr. Klein at different occasions/dates (e.g. 10/24/97, 10/24/97, 10/25/97, and
11/8/97) (FF 16).
Appellants next argue that because Boyer is “only concerned with
encounters during a short time period (one day)” from “a single treatment
facility”, this is “wholly unlike the claimed arrangement which groups
services into a reimbursement record that originates from a plurality of
different treatment facilities … over an extended period” (Appeal Br. 13).
We are again not persuaded by Appellants’ argument. We find that
Boyer discloses encounters not only from a single day, but also from
different days and different facilities which are linked in the EOB (FF 16).
We also find claim 1 is sufficiently broad to include a period of even one
day, since as we interpreted, supra, “different occasions” and “separated by
a time period of up to a week”, may represent services performed at any time
after the first encounter. Further, we find Boyer’s EOB discloses that the
record repository is searched to find additional records for the same patient
since it displays several different service records for each patient (FF 16).
That is, Boyer discloses different healthcare provider facilities because it
discloses a variety of distinct and separated services (blood work,
echography, and outpatient services) performed and listed in the EOB for a
given period (FF 16).
Appellants argue next that because Boyer “merely describes a
payment card system” and that “each service fee due for a single visit is paid
Appeal 2009-002863
Application 10/005,137

17
independently of another visit”, there is no mention in Boyer of “receiving
different services at different healthcare provider facilities on different
occasions separated by a time period of up to at least a week," or “the ability
to search among such separate encounters of services,” or “the ability to
search among separate encounters for different patients who have to be
billed on the same claim …” (Appeal Br. 15).
We are not persuaded by Appellants’ argument. The claims do not
require separate visits, but only separate occasions, which, because we
interpret occasion as “a time when something happens” (FF 11), several
encounters at different times and at different labs may take place during the
same visit. Moreover, Boyer’s EOB shows the records of different service
encounters, even on different days, are searched in order to create the EOB
(FF 16). In addition, we find that Boyer maintains and utilizes insurance
contract rules in which grouping of services affects reimbursements (FF 18,
22), and calculates reimbursements based on contract rules governing
grouping/bundling as required by the claims (FF 19). Finally, as to the
assertion that Boyer does not permit searching “among separate encounters
of different patients,” we find this argument unpersuasive because it argues a
limitation not present in that claims. That is, the claims recite activity
surrounding one specific patient, not different patients as argued by
Appellants.
As to claims 1, 7, 17, and 23, these claims present no requirement to
“bill on the same claim”; as to claim 9, which recites “services to be billed
Appeal 2009-002863
Application 10/005,137

18
together on a single bill”, we find that Boyer discloses bundling of services
for billing transactions (FF 21), which meets this claim term.
Appellants next argue that because Boyer discloses “individual point
of service visits … that have been individually adjudicated and paid”, that
“Boyer does not show or suggest visits at different providers that have been
linked and paid as one claim, as in the present claimed invention.” (Appeal
Br. 15).
We are not persuaded by Appellants’ argument. First, the claims do
not recite “different providers,” but instead require “different provider
facilities,” and Boyer discloses consolidating claims for different provider
facilities in one EOB (FF 16). Further, the independent claims do not
require anything to be “paid as one claim,” but requires only “calculating a
reimbursement amount … .” Moreover, Boyer stores and operates policy
rules which affect claim grouping (FF 18), adjudicates claims to calculate
reimbursement (FF 19), and discloses bundling of services for billing (FF
21). Thus, we find Boyer meets the limitation “calculating a reimbursement
amount for said particular service and said at least one other service
provided to said specific patient based on a reimbursement contract
determining service grouping affects reimbursement amount.”
Appellants next argue that since Boyer is concerned with either
instantaneous bill processing, or batch processing, this “is wholly unlike the
present claimed invention, which automatically searches for, and groups
records in response to the receipt of a first record and searches for any
Appeal 2009-002863
Application 10/005,137

19
additional record of services provide[d] to the specific patient.”
(Appeal Br. 16).
We are not persuaded by Appellants’ argument, because Boyer’s EOB
shows that records of different encounters for a patient are searched and
grouped when the EOB is created (FF 16), and thus meets the required claim
limitations.
Appellants next argue that the combination of Boyer with Hunt does
not disclose “automatic grouping of related services spanning extended time
periods and different facilities into a single reimbursement claim.” (Appeal
Br. 16).
We are not persuaded by this argument, because it argues a limitation
not present in the claims. That is, claims 1, 7, 9, 17, and 23 do not require
“a single reimbursement claim,” but only calculation of a reimbursement
amount. As found, supra, Boyer meets the claim requirement because it
maintains a database of reimbursement rules and prices for a contract (FF
18) and uses those rules to calculate reimbursement amounts for services
rendered (FF 19), including bundling of services (FF 21). Claim 9 recites
“billed together on one bill”, and as found, supra, Boyer discloses bundling
of different services into one bill and calculating what the insurance portion
should be after the services are combined (FF 19, 21).
Appellants next argue that because Hunt operates on “pre-existing
medical billing information” to indicate “payees and the amounts of refunds
generated”, that there is no “mention or suggestion of ‘employing a record
Appeal 2009-002863
Application 10/005,137

20
repository for linking a plurality of different encounters and associated
service records of a patient involving receiving different treatment services
at different healthcare provider facilities on different occasions separated by
a time period of up to at least a week.’’’ (Appeal Br. 17).
We are not persuaded by Appellants’ argument here, because the
instant claim limitation is broad enough to encompass both pre-existing and
currently-created records, (FF 16) and does not require the record linking to
take place before any payment or refunds may be generated.
Appellants next argue that the Hunt and Boyer “combined system
would be a point of service environment” with “several services performed
on a single day” and “[t]hose services would be adjudicated and billed to the
payer while the patient was still at the hospital/clinic.” (Appeal Br. 18).
Appellants also argue that “the combined system may compare an outpatient
visit to see if it is ‘medically related’ to an inpatient visit”, but “after billing
and payment is settled.” (Appeal Br. 19). Therefore, the Appellants
conclude, the combination would not disclose or suggest the limitations of
the claims.
We are not persuaded by this argument. We have already addressed
the time-related aspects of Appellants’ argument and found the disclosure of
Boyer’s database with records from different facilities at different occasions,
even when performed on the same day or during the same visit (FF 16) meet
the claim limitations. Further, we found Boyer discloses grouping of items
in the EOB (FF 16), calculating a reimbursement amount driven by the rules
Appeal 2009-002863
Application 10/005,137

21
of the insurance contract (FF 19), and bundling of services charges (FF 21).
Hence, we are not persuaded of error in the rejection based on these points.

Rejection under 35 U.S.C. § 103(a) of Claim 3
Appellants argue that “Boyer and Hunt fail to disclose or suggest that
‘said different treatment services comprise an outpatient service and an
inpatient service’” because “Boyer … combines the claims of that location
on that day” and because “the result of a patient’s interaction with the
healthcare provider is a healthcare transaction which generally includes a
claim for payment.’’ (Appeal Br. 19-20).
We are not persuaded by Appellants’ argument, because Boyer
discloses use of its system by both outpatient and inpatient services (FF 20),
and therefore meets the claim limitations.

Rejection under 35 U.S.C. § 103(a) of Claim 4
Appellants argue that “Boyer (with Hunt) is only concerned with the
records of a single patient that occur at the specific facility” and that “[t]his
is wholly unlike the present claimed invention, which is concerned with the
records of multiple patients based on the predetermined allocation rules.”
(Appeal Br. 21).
We are not persuaded by this argument. As best understood, claim 4
requires grouping of items identifying services of different people based on
linked records. We find Boyer’s Clinical Pathways Database links database
Appeal 2009-002863
Application 10/005,137

22
records of related transactions (FF 15), and the EOB shows the records of
different family members that are linked and reported together on a common
EOB (FF 17). Therefore, one of ordinary skill in the art would understand
that the EOB (FF 17) links records of John and Samantha Smith to present
each record on a common report.

Rejection under 35 U.S.C. § 103(a) of Claim 5
Appellants argue Boyer is “fundamentally different from the claimed
invention because Boyer neither discloses nor suggests analyzing a patient
specific healthcare reimbursement contract to create rules which are
‘automatically applied …in grouping’ healthcare service items for a specific
patient …” and further argue that Boyer’s “rules apply to a specific
individual point of service visit for one specific patient.” (Appeal Br. 22).
We are not persuaded by this argument, because as found, supra,
Boyer discloses a policy rules database (FF 18) which is used to calculate
reimbursement amounts (FF 19), which rules database also includes
bundling of medical services (FF 21). With regard to the point-of-service
argument, we have previously found that argument not to be persuasive with
respect to claims 1, 7, 9, 17, and 23, and similarly do not find it persuasive
with respect to this claim either.

Rejection under 35 U.S.C. § 103(a) of Claim 16
Appellants argue that “Boyer with Hunt fails to describe an equivalent
Appeal 2009-002863
Application 10/005,137

23
way that the claimed reimbursement and billing rules are used to
automatically search for other services provided to a specific patient in other
visits that must be billed and reimbursed together” (Appeal Br. 40), because
Boyer evaluates “something that has already been paid, not something that is
still being evaluated for payment.” (Appeal Br. 41).
We are not persuaded by Appellants’ argument, because it does not
relate to the limitations presented in the claim. Specifically, claim 16 only
requires “… searching for other services also provided to said specific
entity”, which Boyer discloses by way of its EOB (FF 16), and “said specific
entity comprises at least one of, (a) a patient …” which Boyer discloses
through its listing of individual patient names (FF 16).

Rejection under 35 U.S.C. § 103(a) of Claim 18
Appellants argue that because “Boyer is concerned with a virtual real-
time billing system” and Boyer “first charges the payer and then sends a
statement” that neither Boyer nor Hunt disclose preparing a bill including
said reimbursement amount for said particular service and additional
service for communication with a payer (Appeal Br. 50).
We are not persuaded by this argument because Boyer bills both a
third-party payor and patients (FF 22), uses insurance contracts (FF 18) and
rules for bundling charges (FF 21), to calculate reimbursement, and thus bill
amounts (FF 19).

Appeal 2009-002863
Application 10/005,137

24
Rejection under 35 U.S.C. § 103(a) of Claim 25
Appellants argue that “Boyer is wholly unlike the present claimed, as
Boyer first charges the payer and then sends a statement and the present
claimed invention sends to the payer a bill for reimbursement.” Appellants
also argue that “Boyer (with Hunt) is not concerned with a reimbursement
record…” (Appeal Br. 60).
We are not persuaded by this argument for the following reasons.
First, claim 25 does not require any billing, nor that a bill is created in any
particular order. Second, since Boyer discloses a rules processor for
assessing a reimbursement amount (FF 19) and a database of rules for
bundling services “for use in reporting the services and procedures in a
healthcare transaction” (FF 21), we find that this disclosure describes the
requirement in claim 25 of a reimbursement record.
Our findings above based solely on Boyer are sufficient to support the
rejection of claims 1-27 under 35 U.S.C. § 103(a). Therefore, we find Hunt
to be cumulative to the disclosure of Boyer.
We also affirm the rejections of dependent claims 2, 6, 8, 10-15, 19-
22, 24, 26, and 27 since Appellants have not challenged the rejections with
any reasonable specificity (see In re Nielson, 816 F.2d 1567, 1572 (Fed. Cir.
1987)).
Appeal 2009-002863
Application 10/005,137

25
CONCLUSIONS OF LAW
We conclude the Appellants have not shown that the Examiner erred
in rejecting claims 1-27 under 35 U.S.C. 112, first paragraph, for failing to
comply with the written description requirement.
We conclude the Appellants have not shown that the Examiner erred
in rejecting claims 1-27 under 35 U.S.C. § 103(a), as being unpatentable
over Boyer in view of Hunt.

DECISION
The decision of the Examiner to reject claims 1-27 is affirmed.

AFFIRMED

MP

Elsa Keller, Legal Assistant
Intellectual Property Department
SIEMENS CORPORATION
186 Wood Avenue South
Iselin NJ 08830