Ex Parte Johnson et al

Board of Patent Appeals and Interferences

Jun 5, 2009

11218069 (B.P.A.I. Jun. 5, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE 1
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte STEVEN G. JOHNSON and CHRISTOPHER G. BUSCH
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Appeal 2009-000714
Application 11/218,069
Technology Center 3600
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Decided: 1 June 8, 2009
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Before MURRIEL E. CRAWFORD, ANTON W. FETTING, and JOSEPH A.
FISCHETTI, Administrative Patent Judges.

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FETTING, 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 CFR § 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 Date (electronic delivery).

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STATEMENT OF THE CASE

Steven G. Johnson and Christopher G. Busch (Appellants) seek review under
35 U.S.C. § 134 of a non-final rejection of claims 1-29, the only claims pending in
the application on appeal.
We have jurisdiction over the appeal pursuant to 35 U.S.C. § 6(b) (2002).

We REVERSE and ENTER A NEW GROUND OF REJECTION
PURSUANT TO 37 C.F.R §41.50(b).
The Appellants invented a method and apparatus to assess the credit of
healthcare patients (Spec. Paragraphs 0002 and 0003).
An understanding of the invention can be derived from a reading of exemplary
claims 1, 12, 17, and 26, which are reproduced below [bracketed matter and some
paragraphing added].
1. A computerized method to make healthcare patient credit decisions
comprising:
[1] receiving patient information;
[2] obtaining financial information from a guarantor of costs
associated with services the patient needs;
[3] determining a benefit of additional guarantor financial
information from a third party; and
[4] obtaining the additional guarantor financial information from
the third party if the benefit of the additional guarantor financial
information is greater than the cost of obtaining the additional
information.

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12. A method comprising:
[1] determining a probability that patient healthcare service charges
will be paid as a function of patient information and guarantor
financial information obtained from a third party, wherein the
probability is determined as a function of a payment probability
model;
[2] maintaining, in a data repository, the determined probability,
the patient information, the guarantor financial information, an
indication of the third party source of the financial information, and
received patient payment history associated with charges for the
patient healthcare services; and
[3] refining the payment probability model as a function of
information including the determined probability, the patient
information, the guarantor financial information, an indication of the
third party source of the financial information, and received patient
payment history associated with charges for the patient healthcare
services.

17. A method to make customer credit decisions comprising:
[1] receiving customer information from customers and from one
or more third parties; and
[2] [a] determining customer categories as a function of the
received information and one or more credit models,
[b] wherein the one or more credit models are generated
according to customized rules, determined third party information
accuracy, and historical data from one or more customers.

26. A method of selecting a third-party source of financial
information, the method comprising:
[1] maintaining patient guarantor financial information obtained
from third-parties;
[2] maintaining actual outcome data of guarantor collection
activity; and
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[3] selecting a third-party source of financial information for
specific criteria as a function of at least the maintained guarantor
financial information and the actual outcome data.

This appeal arises from the Examiner’s Non-Final Rejection, mailed December
13, 2006. The Appellants filed an Appeal Brief in support of the appeal on June
12, 2007. An Examiner’s Answer to the Appeal Brief was mailed on September
18, 2007.
PRIOR ART
The Examiner relies upon the following prior art:
Schoenbaum US 2002/0147617 A1 October 10, 2002
Baldwin, JR. US 2003/0050795 A1 March 13, 2003
Hutchins US 2004/0111292 A1 June 10, 2004
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REJECTIONS2
Claims 1-11, 17-20, 23-24, and 26-29 stand rejected under 35 U.S.C. § 103(a)
as unpatentable over Hutchins and Baldwin.
Claims 12-16 and 25 stand rejected under 35 U.S.C. § 103(a) as unpatentable
over Baldwin and Schoenbaum.

2 The Examiner had only listed claims 12 and 21 as rejected under 35 U.S.C.
§ 103(a) as unpatentable over Baldwin and Schoenbaum. However, claims 13-16
and 25 depend from claim 12 and therefore the Examiner has also relied on
Baldwin and Schoenbaum in the rejection of these claims. Claims 21-22 depend
from claim 17 and therefore the Examiner has relied on Hutchins, Baldwin and
Schoenbaum in rejecting these claims.
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Claims 21-22 stand rejected under 35 U.S.C. § 103(a) as unpatentable over
Hutchins, Baldwin, and Schoenbaum.
ISSUES
The issues pertinent to this appeal are
• Whether the Appellants have sustained their burden of showing that the
Examiner erred in rejecting claims 1-11, 17-20, 23-24, and 26-29 under
35 U.S.C. § 103(a) as unpatentable over Hutchins and Baldwin.
o This pertinent issue turns on whether Baldwin describes determining a
benefit of obtaining additional guarantor information and obtaining
this information if the benefit of having the information is greater than
the cost.
o This pertinent issue also turns on whether Baldwin describes
associating an accuracy value with credit information providers and
selecting a third-party credit information provider based on some
criteria.
• Whether the Appellants have sustained their burden of showing that the
Examiner erred in rejecting claims 12-16 and 25 under 35 U.S.C. § 103(a) as
unpatentable over Baldwin and Schoenbaum.
o This pertinent issue turns on whether Schoenbaum describes refining
a payment probability model.
• Whether the Appellants have sustained their burden of showing that the
Examiner erred in rejecting claims 21-22 under 35 U.S.C. § 103(a) as
unpatentable over Hutchins, Baldwin, and Schoenbaum.
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o This pertinent issue turns on whether Baldwin describes determining a
benefit of obtaining additional guarantor information and obtaining
this information if the benefit of having the information is greater than
the cost.
FACTS PERTINENT TO THE ISSUES
The following enumerated Findings of Fact (FF) are believed to be supported
by a preponderance of the evidence.
Hutchins
01. Hutchins is directed to a method for evaluating the credit worthiness
and payment histories of patients and determining which strategy to use
in collecting past due healthcare related debt from patients (paragraph
0002).
02. First, a patient’s written consent and identifying information is
received (paragraph 0016). A user then submits this information to the
system and receives a credit score for the patient (paragraph 0018). The
credit scores are associated to a collection strategy (paragraph 0022).
The user can then select the appropriate strategy by viewing which
strategy rating corresponds to the retrieved credit score (paragraph
0022).
03. Hutchins describes that a healthcare provider makes the determination
that a prospective patient has the ability to pay or the healthcare provider
may refuse to provide services if possible (paragraph 0005).

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Baldwin
04. Baldwin is directed to a system for financing healthcare treatment
(paragraph 0002).
05. First, the costs and fees associated with providing healthcare services
to the patient are determined by the healthcare provider (paragraph
0018). Then the creditworthiness of the patient is determined (paragraph
0018). Based on the credit worthiness of the patient, a debt note can be
generated to support payment to the healthcare provider (paragraph
0018).
06. The costs and fees associated with healthcare services are based upon
the anticipated healthcare services to be provided, which are computed
during the patient admission process (paragraph 0020).
07. Once the costs and fees are determined, the patient’s creditworthiness
is determined (paragraph 0021). The patient’s credit information is first
obtained in an application for healthcare credit during the admission
process (paragraph 0021). Additional credit information can be obtained
from credit information providers for a fee (paragraph 0021).
08. The credit information includes the patient’s payment history
(paragraph 0022). This credit information is provided by companies that
have provided credit to the patient in the past and includes information
regarding received payments and the timeliness of the payments received
(paragraph 0022). The credit information can further include a credit
rating issued by the credit information provider (paragraph 0023). An
independent database can be used to maintain the credit history of a
patient in the Baldwin system (paragraph 0022).
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09. The credit rating can be used to classify patients into rating categories
(paragraph 0023). Patients have a credit rating score that is a function of
the number of derogatory items in the patient’s credit history (paragraph
0023). In one embodiment, a rule for a patient to receive the highest
rating “A” would require that the patient have less that 20% of the items
listed in the credit report are derogatory (paragraph 0023). The
healthcare provider can determined whether to extend credit to the
patient based on the patient’s credit rating score (paragraph 0035).
10. A healthcare consumer debt note can be generated for execution by
the patient for at least a portion of the debt if it is determined to be
appropriate based on the determined credit worthiness of the patient
(paragraph 0025). The debt note can be issued to the patient by an
intermediary party and converted to an alternative asset type (paragraph
0026). The debt note can be sold on an individual basis or sold in a
bundle of debt notes to investors (paragraphs 0027 and 0038).
11. The sale of the note can further be based on a recourse agreement,
which guarantees if the note goes into default then the purchaser of the
note can return the note to the healthcare organization for value
(paragraph 0029). Once the note has been executed, funds can be
advanced to the healthcare provider in the amount indicated by the note
(paragraphs 0036 and 0037).
12. Baldwin further describes a healthcare financing system used to
perform the steps described above (paragraph 0030).

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Schoenbaum
13. Schoenbaum is directed to the estimating and calculating of healthcare
costs for individuals and determining the optimal amount of funds to
allocate to a flexible spending account (FSA) for pre-tax savings
(paragraph 0002).
14. Schoenbaum describes there are many different types of health
insurance plans and making the selection of an insurance plan a complex
choice (paragraph 0006). Since this is a complex choice, a medical care
guidance system can be used to compare and contrast different insurance
plans in order to optimize out of pocket expenses for individuals
(paragraph 0006). Furthermore, a healthcare cost calculator can be used
to predict future healthcare costs based on individual information and a
statistical analysis of the individual information (paragraph 0006). This
enables a consumer to set aside an optimal amount in a flexible spending
account (FSA) for tax savings (paragraph 0007).
15. Schoenbaum further describes scenario evaluations to determine out
of pocket expenses for health care under each insurance plan or under no
insurance (paragraphs 0359-0360). Schoenbaum also describes a
method for dividing patients and households into categories based on
healthcare use (paragraphs 0361-0371).
Facts Related To The Level Of Skill In The Art
16. Neither the Examiner nor the Appellants has addressed the level of
ordinary skill in the pertinent art of financial credit assessment systems.
We will therefore consider the cited prior art as representative of the
level of ordinary skill in the art. See Okajima v. Bourdeau, 261 F.3d
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1350, 1355 (Fed. Cir. 2001) (“[T]he absence of specific findings on the
level of skill in the art does not give rise to reversible error ‘where the
prior art itself reflects an appropriate level and a need for testimony is
not shown’”) (quoting Litton Indus. Prods., Inc. v. Solid State Sys. Corp.,
755 F.2d 158, 163 (Fed. Cir. 1985).
Facts Related To Secondary Considerations
17. There is no evidence on record of secondary considerations of non-
obviousness for our consideration.
PRINCIPLES OF LAW
Obviousness
A claimed invention is unpatentable if the differences between it and the
prior art are “such that the subject matter as a whole would have been obvious
at the time the invention was made to a person having ordinary skill in the art.”
35 U.S.C. § 103(a) (2000); KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406
(2007); Graham v. John Deere Co., 383 U.S. 1, 13-14 (1966).
In Graham, the Court held that that the obviousness analysis is bottomed on
several basic factual inquiries: “[(1)] the scope and content of the prior art are to be
determined; [(2)] differences between the prior art and the claims at issue are to be
ascertained; and [(3)] the level of ordinary skill in the pertinent art resolved.” 383
U.S. at 17. See also KSR, 550 U.S. at 406. “The combination of familiar elements
according to known methods is likely to be obvious when it does no more than
yield predictable results.” Id. at 416.
“When a work is available in one field of endeavor, design incentives and
other market forces can prompt variations of it, either in the same field or a
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different one. If a person of ordinary skill can implement a predictable variation,
§ 103 likely bars its patentability.” Id. at 417.
“For the same reason, if a technique has been used to improve one device,
and a person of ordinary skill in the art would recognize that it would improve
similar devices in the same way, using the technique is obvious unless its actual
application is beyond his or her skill.” Id.
“Under the correct analysis, any need or problem known in the field of
endeavor at the time of invention and addressed by the patent can provide a reason
for combining the elements in the manner claimed.” Id. at 420.
ANALYSIS
Claims 1-11, 17-20, 23-24, and 26-29 rejected under 35 U.S.C. § 103(a) as
unpatentable over Hutchins and Baldwin
The Appellant argues these claims in three groups:
Group I Claims 1-11
Group II Claims 17-20 and 23-24
Group III Claims 26-29
Group I
The Appellants argue these claims as a group.
Accordingly, we select claim 1 as representative of the group.
37 C.F.R. § 41.37(c)(1)(vii) (2007).
The Examiner found that Hutchins describes limitations [1-2] of claim 1, but
fails to describe limitations [3-4] (Ans. 3-4). The Examiner found that Baldwin
describes limitations [3-4] (Ans. 4). The Examiner found that one of ordinary skill
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in the art would have recognized that performing these steps would maximize the
cost/benefit ratio and would have found it obvious to combine these features from
Baldwin to Hutchins (Ans. 4).
The Appellants contend that (1) Baldwin fails to describe limitations [3-4] of
claim 1 (Br. 11, second paragraph and Br. 12, third paragraph) and (2) Hutchins
and Baldwin teach away from claim 1 (Br. 13, second paragraph).
We find the Appellants’ first argument that Baldwin fails to describe
limitations [3-4] to be determinative. We agree with the Appellants. The
Specification and claims provide that the context for the term “guarantor” is that
the guarantor is the eventual payor for the medical services provided to the patient
(Spec. Paragraph 0014). The patient can be the payor for medical services as well
and as such can be the guarantor (Spec. Paragraph 0014). Limitation [3] of claim 1
requires determining whether additional guarantor information would provide a value
or benefit in making a credit decision. Limitation [4] further requires making a
comparison between this determined value and the costs associated with obtaining this
additional information. Baldwin fails to describe determining the value or benefit
generated by using the additional guarantor information and further fails to describe
comparing this determined value to the cost of obtaining the information. Although
Baldwin describes obtaining additional guarantor information from external credit
information providers and the cost associated with obtaining this information (FF 07),
Baldwin fails to describe comparing this value to the value of the benefit obtained by
having this information when making credit decisions. Because the Appellants’ first
argument is determinative, we need not reach the remaining arguments.
The Appellants have sustained their burden of showing that the Examiner erred
in rejecting claims 1-11 under 35 U.S.C. § 103(a) as unpatentable over Hutchins
and Baldwin for the above reasons.
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Group II
The Appellants argue these claims as a group.
Accordingly, we select claim 17 as representative of the group.
The Examiner found that Hutchins describes limitation [1] of claim 1, but fails
to describe limitation [2] (Ans. Page 8). The Examiner found that Baldwin
describes limitation [2] (Ans. Page 8). The Examiner found that one of ordinary
skill in the art would have recognized that performing these steps would maximize
the cost/benefit ratio and would have found it obvious to combine this feature from
Baldwin to Hutchins (Ans. 9).
The Appellants contend that both Hutchins and Baldwin fail to describe
limitation [2b] of claim 17 (Br. 15, fifth paragraph).
We agree with the Appellants. Limitation [2a] requires determining categories
as a function of received customer information and credit models. Limitation [2b]
further limits limitation [2a] by requiring the credit models be generated according
to customized rules, third party information accuracy, and historical data from one
or more customers. Baldwin describes categorizing patients based on a credit
rating score (FF 09). A patient receives a credit rating that is assigned by the credit
information provider (FF 08). The credit rating is determined as a function of
derogatory items listed in the patient’s historical payment information (FF 09).
Patients can then be assigned to credit categories based on pre-determined rules
(FF 09). For example, a patient is assigned to the highest credit rating if the patient
has less that 20% of the items listed in the credit report are derogatory (FF 09). As
such, Baldwin’s description of categories based on a patient’s credit score
describes limitation [2a] and further describes that the credit models be based on
customized rules and historical data as required by limitation [2b].
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However, limitation [2b] also requires that the credit model be generated
according to third party information accuracy. Although Baldwin describes using
third party credit information providers (FF 07), Baldwin fails to describe
associating an accuracy value to the information providers. As such, Baldwin fails
to describe the credit models as required by limitation [2b].
The Appellants have sustained their burden of showing that the Examiner erred
in rejecting claims 17- 24 under 35 U.S.C. § 103(a) as unpatentable over Hutchins
and Baldwin for the above reasons.

Group III
The Appellants argue these claims as a group.
Accordingly, we select claim 26 as representative of the group.
The Examiner found that Hutchins describes limitation [1] of claim 26, but
fails to describe limitations [2-3] (Ans. 11). The Examiner found that Baldwin
describes limitations [2-3] (Ans. 11). The Examiner found that one of ordinary
skill in the art would have recognized that performing these steps would maximize
the cost/benefit ratio and would have found it obvious to combine these features
from Baldwin to Hutchins (Ans. 11-12).
The Appellants contend that Hutchins and Baldwin fail to describe limitation
[3] of claim 26 (Br. 16, last paragraph).
We agree with the Appellants. Limitation [3] requires the selection of a third-
party source for information. Although Baldwin describes purchasing and using
information from a third-party credit information provider (FF 07), Baldwin fails
to explicitly describe selecting a third-party source of financial information and
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further fails to describe any specific criteria used to make the selection a third-
party source of information. As such, Baldwin fails to describe limitation [3] of
claim 26.
The Appellants have sustained their burden of showing that the Examiner erred
in rejecting claims 26- 29 under 35 U.S.C. § 103(a) as unpatentable over Hutchins
and Baldwin for the above reasons.

Claims 12-16, 21-22, and 25 rejected under 35 U.S.C. § 103(a) as
unpatentable over Baldwin and Schoenbaum
The Appellants argue these claims as a group.
Accordingly, we select claim 12 as representative of the group.
The Examiner found that Baldwin describes limitations [1-2] of claim 12, but
fails to describe limitation [3] (Ans. 13-14). The Examiner found that
Schoenbaum describes limitation [3] (Ans. 14). The Examiner found that one of
ordinary skill in the art would have recognized the benefit of more accurately
assessing costs by providing comparative cost information and would have found it
obvious to combine this feature from Schoenbaum to Baldwin (Ans. 14).
The Appellants contend that (1) Baldwin fails to describe limitation [1] of
claim 12 (Br. 17, last paragraph), (2) Baldwin does not describe limitation [2] of
claim 12 because limitation [2] is dependant using the probability determined in
limitation [1] (Br. 18, first paragraph), and (3) Schoenbaum fails to describe
limitation [3] of claim 12 (Br. 18, last paragraph).
The Appellants first contend that (1) Baldwin fails to describe limitation [1] of
claim 12 (Br. 17, last paragraph). We disagree with the Appellants. The
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Appellants specifically argue that Baldwin only describes determining the credit
worthiness of a patient and fails to mention a guarantor (Br. 18, last paragraph).
As discussed supra, the guarantor is the payor for the medical services received
and can by the patient. As such, this argument is not persuasive.
The Appellants further contend that Baldwin fails to describe a payment
probability model or a determined probability that the patient healthcare service
will be paid (Br. 18, last paragraph). Baldwin describes determining a patient’s
credit worthiness (FF 05) and this determination is based on credit information that
includes the patient’s payment histories (FF 08). That is, the patient’s credit
worthiness is the probability that a patient will pay for services and a patient who
has the ability to pay will be extended credit. As such, the model used to
determine the credit worthiness of a patient and the subsequent categorization of
patients based on ability to pay (FF 09) are probability of payment models.
The Appellants next contend that (2) Baldwin does not describe limitation [2]
of claim 12 because limitation [2] is dependant using the probability determined in
limitation [1] (Br. 18, first paragraph). We disagree with the Appellants. The
Appellants arguments regarding the determination of a probability or a probability
model were found to be insufficient to overcome the Appellants’ burden supra and
as such are found to be insufficient here for the same reasons.
The Appellants further argue that although Baldwin describes storing data,
Baldwin fails to describe storing the credit rating, patient information, guarantor
information, 3rd party rating, and historical payment information. However, Baldwin
describes maintaining in an independent database the credit information and history of
a patient (FF 08). This includes all credit information regarding a patient, including
the data items recited in limitation [2]. As such, we do not find this argument
persuasive.
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The Appellants next contend that (3) Schoenbaum fails to describe limitation
[3] of claim 12 (Br. 18, last paragraph). The Appellants specifically argue that the
probability determined in Schoenbaum is not the same as the probability required
by limitation [3] (Br. 18, last paragraph).
Here, we must agree with the Appellants. Limitation [3] requires refining the
probability model (credit score) based on information stored in limitation [2]. The
Examiner cited to portions of Schoenbaum in the rejection and arguments that
describe the need to simplify healthcare insurance plans and the solution to this
need is a medical guidance system (FF 14). The Examiner further cited to portions
of Schoenbaum that describe dividing patients into categories based on healthcare
use for statistical analysis (FF 14 and FF 15). As such, Schoenbaum fails to
describe refining the payment probability model. Schoenbaum describes
determining the probability that an individual will need healthcare services based
on a statistical analysis of like individuals (FF 14 and FF 15). This is not the same
as a payment probability recited in limitation [3] of claim 12. As such, the
Appellants have sustained their burden of showing that the Examiner erred in
rejecting claim 12-16 and 25 under 35 U.S.C. § 103(a) as unpatentable over
Baldwin and Schoenbaum for the above reasons.
Claims 21-22 rejected under 35 U.S.C. § 103(a) as unpatentable over
Hutchins, Baldwin, and Schoenbaum
The Appellants contend that Claim 21 is patentable for the same reasons
asserted for claim 17, since claim 21 depends from claim 17 (Br. 19, last
paragraph). We agree with the Appellants. The Appellants rely on their arguments
in support of claim 17 above, which we found to be sufficient to overcome the
Appellants’ burden and so has sustained their burden of showing that the Examiner
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erred in rejecting claims 21-22 under 35 U.S.C. § 103(a) as unpatentable over
Hutchins, Baldwin, and Schoenbaum.

NEW GROUND OF REJECTION
The following new ground of rejection is entered pursuant to
37 C.F.R. § 41.50(b). We reject claims 1-29 under 35 U.S.C. § 101 as being
directed towards non-statutory subject matter.
In an en banc decision from our reviewing court in In Re Bilski, 545 F. 3d 943
(Fed. Cir. 2008), the court held that the machine-or-transformation test, properly
applied, is the governing test for determining patent eligibility of a process under
§ 101. Id. at 956. This machine-or-transformation test is one of determining
whether a process (1) is tied to a particular machine or apparatus, or (2) transforms
a particular article into a different state or thing. Id. at 954.
Claims 1-29 recite method or process claims that must be evaluated under the
machine-or-transformation test of Bilski. Independent claims 1, 12, 17, and 26
recite methods for making patient credit decisions. These independent claims only
recite steps and do not tie these steps to a particular machine or apparatus.
Although some of the steps recite collecting and storing data elements, these steps
are not limited to a specific machine or apparatus. Additionally, the steps recited
by the claims are for a credit decision. A credit decision does not transform an
article into a different state or thing. As such, claims 1-29 fail to satisfy the both
prongs of the machine-or-transformation test and are rejected under 35 U.S.C.
§ 101 as being directed towards non-statutory subject matter.

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Appeal 2009-000714
Application 11/218,069

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CONCLUSIONS OF LAW
The Appellants have not sustained their burden of showing that the Examiner
erred in rejecting claims 1-11, 17-20, 23-24 and 26-29 under 35 U.S.C. § 103(a) as
unpatentable over Hutchins and Baldwin.
The Appellants have not sustained their burden of showing that the Examiner
erred in rejecting claims 12-16, 21-22, and 25 under 35 U.S.C. § 103(a) as
unpatentable over Baldwin and Schoenbaum.
The Appellants have not sustained their burden of showing that the Examiner
erred in rejecting claims 21-22 under 35 U.S.C. § 103(a) as unpatentable over
Hutchins, Baldwin, and Schoenbaum.
A new ground of rejection is entered pursuant to 37 C.F.R. § 41.50(b). Claims
1-29 are rejected under 35 U.S.C. § 101 as being directed towards non-statutory
subject matter.
DECISION
To summarize, our decision is as follows:
• The rejection of claims 1-11, 17-20, 23-24 and 26-29 under
35 U.S.C. § 103(a) as unpatentable over Hutchins and Baldwin is not
sustained.
• The rejection of claims 12-16 and 25 under 35 U.S.C. § 103(a) as
unpatentable over Baldwin and Schoenbaum is not sustained.
• The rejection of claims 21-22 under 35 U.S.C. § 103(a) as unpatentable over
Hutchins, Baldwin, and Schoenbaum is not sustained.
• New grounds of rejection are entered pursuant to 37 C.F.R. § 41.50(b).
19
Appeal 2009-000714
Application 11/218,069

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o Claims 1-29 are rejected under 35 U.S.C. § 101 as being directed
toward non-statutory subject matter.
Our decision is not a final agency action.
In addition to affirming the Examiner's rejection(s) of one or more claims, this
decision contains new grounds of rejection pursuant to 37 C.F.R. § 41.50(b). 37
C.F.R. § 41.50(b) provides “[a] new ground of rejection pursuant to this paragraph
shall not be considered final for judicial review.” This Decision contains a new
rejection within the meaning of 37 C.F.R. § 41.50(b) (2007).
37 C.F.R. § 41.50(b) also provides that Appellants, WITHIN TWO MONTHS
FROM THE DATE OF THE DECISION, must exercise one of the following two
options with respect to the new rejection:
(1) Reopen prosecution. Submit an appropriate amendment of the
claims so rejected or new evidence relating to the claims so
rejected, or both, and have the matter reconsidered by the
Examiner, in which event the proceeding will be remanded to the
Examiner. . . .
(2) Request rehearing. Request that the proceeding be reheard under
§ 41.52 by the Board upon the same record. . . .
Should the Appellants elect to prosecute further before the examiner pursuant
to 37 C.F.R. § 41.50(b)(1), in order to preserve the right to seek review under
35 U.S.C. §§ 141 or 145 with respect to the affirmed rejection, the effective date of
the affirmance is deferred until conclusion of the prosecution before the Examiner
unless, as a mere incident to the limited prosecution, the affirmed rejection is
overcome.
20
Appeal 2009-000714
Application 11/218,069

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If the Appellants elect prosecution before the Examiner and this does not
result in allowance of the application, abandonment or a second appeal, this case
should be returned to the Board of Patent Appeals and Interferences for final action
on the affirmed rejection, including any timely request for rehearing thereof.
No time period for taking any subsequent action in connection with this appeal
may be extended under 37 C.F.R. § 1.136(a)(1)(iv)(2007).

REVERSED 8
41.50(b) 9
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JRG

SCHWEGAN, LUNDBERG & WOESSNER, P.A.
P.O. BOX 2938
MINNEAPOLIS, MN 55402
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