Ex Parte Heffley et al

Board of Patent Appeals and Interferences

Jan 11, 2012

10319297 (B.P.A.I. Jan. 11, 2012)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
10/319,297 12/13/2002 Michael P. Heffley TALP:102US 9942
7590 01/11/2012
Edward Tracy, Jr., Esq.
Simpson & Simpson, PLLC
5555 Main Street
Williamsville, NY 14221-5406
EXAMINER
RANGREJ, SHEETAL
ART UNIT PAPER NUMBER
3686
MAIL DATE DELIVERY MODE
01/11/2012 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 MICHAEL P. HEFFLEY, ROBERT M. STATES, and
MICHAEL J. COLSON
____________________

Appeal 2010-005643
Application 10/319,297
Technology Center 3600
____________________

Before: MURRIEL E. CRAWFORD, HUBERT C. LORIN, and JOSEPH
A. FISCHETTI, Administrative Patent Judges.

FISCHETTI, Administrative Patent Judge.

DECISION ON APPEAL

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Application 10/319,297

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STATEMENT OF CASE
Appellants seek our review under 35 U.S.C. § 134 from the
Examiner’s final rejection of claims 1-3, 5, 11, 12, and 16. We affirm-in-
part.

THE CLAIMED INVENTION
Appellants claim a method and apparatus for providing access to
healthcare funds and routing payments for healthcare expenses
(Specification 1:5-6). Claims 1 and 12 are illustrative of the claimed subject
matter1:

1. A computerized method for coordinating payment for
healthcare expenses comprising a general purpose computer
specially programmed to perform the steps of:
prioritizing a plurality of accounts held by a customer
based on respective predeterminations provided by the
customer;
receiving information including a co-payment amount
based on the customer's insurance coverage;
determining availability of funds from the plurality of
prioritized accounts;
selecting from the plurality of prioritized accounts, based
on the determination of availability of funds, a highest priority
account or a highest combination of priority accounts having
available at least a portion of the co-payment amount; and
deducting the at least a portion of said co-payment from
the selected highest priority account or highest combination of
priority accounts having the at least a portion of the co-payment
amount.

1 Claims 12 and 16 were amended by Appellants on May 19, 2009, after the
Examiner’s Answer of April 2, 2009. The amendments were entered by the
Examiner on November 12, 2009, because they overcome a rejection under
Section 112.
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12. An apparatus for coordinating payment for healthcare
expenses comprising a general purpose computer for:
prioritizing a plurality of accounts held by a customer
based on respective predeterminations provided by the
customer;
receiving information including a co-payment amount
based on the customer's insurance coverage;
determining availability of funds from the plurality of
prioritized accounts;
selecting from the plurality of prioritized accounts, based
on the determination of availability of funds, a highest priority
account or a highest combination of priority accounts having
available at least a portion of the co-payment amount; and
deducting the at least a portion of said co-payment from
the selected highest priority account or highest combination of
priority accounts having the at least a portion of the co-payment
amount.

REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Sager US 7,039,593 B2 May 2, 2006

REJECTION
The following rejection is before us for review: the Examiner rejected
claims 1-3, 5, 11, 12, and 16 under 35 U.S.C. § 102(e) as being anticipated
by Sager.

ISSUES
At issue is whether Sager’s disclosure of obtaining payment from
multiple independent sources includes determining availability of funds from
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the plurality of prioritized accounts, because Sager discloses getting credit
approval before charging accounts and never determines available funds in a
plurality of accounts.
Further at issue is whether Sager’s disclosure of predetermining what
benefits will be obtained from each source of payment before performing
services not initially anticipated includes a step of calculating a deficiency in
available funds from accounts designed to fund a co-payment.

FINDINGS OF FACT
We find the following facts by a preponderance of the evidence.
1. Sager discloses a method “to obtain payment from multiple independent
sources ...” (col. 4 ll. 49-50).
2. Sager discloses using information to “determine the amount of payment
to be received from each payment source to satisfy payment for the
transaction total. Payment can then be collected from each payment
source in the amounts determined. (Col. 4 ll. 45-48).
3. Sager discloses payment of the patient’s co-payment amount from a
single source, in that Sager “allows the card holder’s insurance benefits
to be combined with their credit card (or other preferred payment
vehicle) into one simple payment mechanism.” (Col. 10 ll. 49-61).
4. Sager further discloses payment of the patient’s co-payment amount
from a single source, in that “the Processor to obtain payment using the
patient’s payment information (i.e. the patient’s credit card in step 50)
may be a separate Processor than the one contacted to obtain insurance
information in step 60.” (Col. 10 ll. 18-20).
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5. Sager discloses “authorization for payment” from a payment company
(col. 8 ll. 60-61).
6. Sager discloses “payment will be made because credit has been pre-
approved from all payment sources.” (Col. 10 ll. 65-67).
7. Sager discloses inquiry functionality covering “identification of the
patient and the patient's account with each respective company;
verification of information on the Smart Card, predetermination of
eligibility for benefits/payment, authorization for payment, issuance of
payment and update of information about the patient and its
relationships.” (Col. 8 ll. 57-62).
8. Sager discloses information located on the smart card so that “the
determination of payment allocation can be made at that location.” (Col
10 ll. 43-49).
9. Sager discloses “[f]irst party payment information includes any payment
that is directly funded by the patient, such as the patient's credit card
account, debit card, check, EBT [(electronic benefits transfers)], or any
other account in which the funds are controlled by the patient.” (Col. 6
ll. 48-51).
10. Sager discloses the patient’s smart card “can include such information
as the order for utilizing the various payment sources ...” (col. 5 ll. 4-7).
11. Sager discloses deducting the at least a portion of said co-payment
from the selected highest priority account, stating, “[i]f the appropriate
payment information selected by the patient is available on the Smart
Card, that information will be accessed by the dentist's POS device in
step 40, and then payment will be effected to the dentist in step 50
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through a Processor using the patient's payment information.” (Col. 9 ll.
30-35).
12. Sager Figure 2 discloses a computer in the form of a Processor.
ANALYSIS
Claims 1-3 and 5
Appellants argue Sager does not disclose determining availability of
funds from the plurality of prioritized accounts because although Sager
discloses authorization for payment, there is “no teaching as to how
authorization is determined, in particular no teaching that availability of
funds in a patient’s account is determined” (Appeal Br. 8).
The Examiner equated availability of funds to be the same thing as
“predetermination of eligibility for benefits/payment.” (Ans. 9).
We agree with Appellants. We find that although Sager discloses
payment of the total bill from multiple sources (FF 1, 2), only a single
source of payment for the co-payment is explicitly disclosed (FF 3, 4). We
additionally find that although Sager discloses seeking “authorization for
payment” (FF 5) and credit pre-approval (FF 6), Sager does not disclose
determining available funds from the plurality of prioritized accounts, which
are held by a customer. We therefore cannot sustain the anticipation
rejection of claim 1 using Sager.
Since claims 2, 3, and 5 depend from claim 1, and since we cannot
sustain the rejection of claim 1, the rejection of claims 2, 3, and 5 likewise
cannot be sustained.
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Claim 11
Independent claim 11 recites, inter alia, “calculating a deficiency, said
deficiency equal to the co-payment amount minus the sum of the available
funds in all of said customer's prioritized accounts.”
Appellants argue, “Sager does not teach determining the availability
of funds in funding sources; therefore, at least on that basis, Sager cannot
teach calculating a deficiency in those funding sources.” (Appeal Br. 13).
The Examiner responded, “Sager teaches inquiries and answers
between the dentist and the insurance company, third party payment/credit
company, and first party payment (i.e. patient's personal debit account)
company include ... patient's account with each respective company; and
furthermore teaching prior to treatment determining payment information
from the card; therefore teaching ‘calculating a deficiency ....’” (Ans. 12).
We agree with Appellants, because although Sager discloses inquiry
functions (FF 7) and information present on a smart card so that
“determination of payment allocation can be made” (FF 8), Sager does not
disclose calculating a deficiency when the co-payment amount exceeds the
available funds in all customer accounts. Sager assumes the payment
method selected will cover the amount due (FF 4-6). We therefore cannot
sustain the anticipation rejection of claim 11 using Sager.
Claim 12
Independent claim 12 recites an apparatus comprising a general-
purpose computer that performs identical functions as recited in method
claim 1. Appellants argue claim 12 by reference to the arguments directed
to claim 1. (Appeal Br. 15).
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Appellants argue “Sager teaches a range of options for the first party
payment, but does not teach that the first party payment can be drawn from
more than one of the options.” (Appeal Br. 6).
We are not persuaded by Appellants' argument. We find that Sager
discloses the required general purpose computer in its Processor (FF 12).
The remainder of the claim following the preamble is functional language
because claim 12 is phrased to perform computer functions, i.e., a “computer
for ….” As functional language, we are required to give the language of the
functions of claim 12 weight only to the extent that the prior art is or is not
capable of meeting the limitation. In re Schreiber, 128 F.3d 1473, 1477-78
(Fed. Cir. 1997). We find that Sager is capable of drawing payment from
more than one of the options because Sager discloses payment from multiple
accounts (FF 1) which may include “credit card account, debit card, check,
EBT, or any other account in which the funds are controlled by the patient”
(FF 9), and permits the patient to prioritize accounts (FF 10), thus meeting
the claim limitation prioritizing a plurality of accounts held by a customer
based on respective predeterminations provided by the customer.
Appellants next argue that Sager discloses seeking authorization for
payment, but includes “no teaching as to how authorization is determined,
in particular no teaching that availability of funds in a patient's account is
determined”. (Appeal Br. 8).
We are not persuaded by Appellants' argument, because we find that
Sager discloses at least receiving payment authorization (FF 7) and credit
pre-approval (FF 6), each of which determines an amount of credit
representing funds available, thus meeting the claim requirement
determining availability of funds from the plurality of prioritized accounts.
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Sager is thus capable of performing the claimed determining by explicitly
disclosing that credit is determined to be available. Additionally, Sager is
capable of making the determination on a plurality of accounts since Sager
discloses payments from multiple sources (FF 1).
Appellants argue, as to the claim 12 limitation selecting from the
plurality of prioritized accounts, based on the determination of availability
of funds, a highest priority account or a highest combination of priority
accounts having available at least a portion of the co-payment amount, that
“Sager does not teach or imply using availability of funds as a criterion for
the sequence.” (Appeal Br. 10).
We are not persuaded by Appellants' argument, because we construe
the claim to be met by any of three possible selection criteria, where “based
on the determination of availability of funds” is but one criteria. We find
that Sager discloses selecting an account based on a highest priority
account, by establishing an “order for utilizing the various payment sources”
(FF 10). Sager is thus capable of the selecting because Sager explicitly
discloses selection based on account priority, thus meeting the claim
requirement.
Appellants finally argue, Sager “does not teach selecting a customer
account based on availability of funds in the accounts. Therefore, Sager
cannot teach deducting funds from such selected accounts.” (Appeal Br.
11).
We are not persuaded by Appellants' argument, because we find Sager
meets the selecting claim limitation through explicit disclosure that the
selecting function is performed, as set forth above. We further find Sager
discloses collecting payment from the highest priority account (FF 11), thus
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showing Sager is capable of meeting the deducting claim requirement by
explicitly disclosing it performs the deducting function.
Claim 16
Independent claim 16 recites an apparatus comprising a general
purpose computer that performs identical functions as recited in method
claim 11 with an additional limitation of transmitting a customer's insurance
information to said customer's Insurance company.
Appellants’ arguments directed to the prioritizing, determining, and
deducting limitations (Appeal Br. 12) are found unpersuasive for the same
reasons set forth above at claim 12.
Appellants next argue, “Sager does not teach determining the
availability of funds in funding sources; therefore, at least on that basis,
Sager cannot teach calculating a deficiency in those funding sources.”
(Appeal Br. 13).
The Examiner responded, “Sager teaches inquiries and answers
between the dentist and the insurance company, third party payment/credit
company, and first party payment (i.e. patient's personal debit account)
company include ... patient's account with each respective company; and
furthermore teaching prior to treatment determining payment information
from the card; therefore teaching ‘calculating a deficiency ....’” (Ans. 12).
We are not persuaded by Appellants' argument, because claim 16, like
claim 12, uses functional language to describe the functions of the general
purpose computer, we find Sager is capable of calculating a deficiency in
case the available funds are less than the co-payment amount owed. This is
because Sager discloses determining if there is sufficient credit (FF 6), and
we find this would include calculating how much credit is necessary and
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seeking another payment source (FF 9) if the co-payment exceeds the
available credit during pre-approval.

CONCLUSIONS OF LAW
The Examiner erred err in rejecting claims 1-3, 5, and 11 under 35
U.S.C. § 102(e) over Sager.
The Examiner did not err in rejecting claims 12 and 16 under 35
U.S.C. § 102(e) over Sager.

DECISION
For the above reasons, the Examiner’s rejection of claims 1-3, 5, and
11 is REVERSED.
The Examiner’s rejection of claims 12 and 16 is AFFIRMED.

AFFIRMED-IN-PART

MP