Ex Parte Kaehler et al

Board of Patent Appeals and Interferences

Nov 22, 2010

10687223 (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.
10/687,223 10/15/2003 Peter J. Kaehler 110.0010001 2931
7590 11/23/2010
E. J. Brooks & Associates, PLLC
Suite 500
1221 Nicollet Avenue
Minneapolis, MN 55403
EXAMINER
ALTSCHUL, AMBER L
ART UNIT PAPER NUMBER
3686
MAIL DATE DELIVERY MODE
11/23/2010 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 PETER J. KAEHLER, JOHN L. ERICKSON,
LEONARD R. STEIDEL, and PETER L. HAUSER
____________

Appeal 2009-007097
Application 10/687,223
Technology Center 3600
____________

Before: MURRIEL E. CRAWFORD, HUBERT C. LORIN, and BIBHU R.
MOHANTY, Administrative Patent Judges.

CRAWFORD, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2009-007097
Application 10/687,223

2
STATEMENT OF THE CASE
This is an appeal from the final rejection of claims 1-12 and 19-251.
We have jurisdiction to review the case under 35 U.S.C. §§ 134 and 6
(2002).
The claimed invention is directed to methods, devices, and systems
for benefits management. One system includes a server including an
application interface and access to a data store having one or more client
files. A client file can include a definable set of business rules for managing
and administering benefits and can include fund use rules for accessing and
applying funds to claims from one or more accounts. The system includes a
program operable on the server to apply the definable set of business rules in
connection with processing a claim. (Spec., Abstr.). Claim 1, reproduced
below, is further illustrative of the claimed subject matter.
1. A system for benefits management, comprising:
a server including an application interface and access to a
data store having one or more client files, wherein a client file
includes a definable set of business rule instructions executed
by a processor to manage and administer benefits and includes
fund use rule instructions executed by a processor to access and
apply funds to payment of claims from a plurality of accounts;
and
a program operable on the server to apply the definable
set of business rules, wherein the instructions are executed by
the processor to allow a plan sponsor to define a first defined
set of the fund use rules and a plan member to define a second
defined set of the fund use rules in order to define payment of at
least a portion of a claim from between at least two different
employee benefit accounts, dependent upon authority being
granted by the plan sponsor.

1 Claims 26-30 and 32 were cancelled on page 6 of the Reply Brief. The
Reply Brief was entered and considered by the Examiner on March 3, 2009.
Appeal 2009-007097
Application 10/687,223

3
Claims 1-12 and 19-25 stand rejected under 35 U.S.C. § 101 for
failing to recite patentable subject matter; claims 1-12 and 19-25 stand
rejected under 35 U.S.C. § 103(a) as unpatentable over Lencki (US Pub.
2002/0049617 A1, pub. Apr. 25, 2002) in view of Deavers (US Pat.
6,044,352, iss. Mar. 28, 2000).
We AFFIRM.

ISSUES
Did the Examiner err in asserting that claims 1-12 and 19-25 are not
directed to statutory subject matter as set forth in 35 U.S.C. § 101?
Did the Examiner err in asserting that a combination of Lencki and
Deavers renders obvious the subject matter of claims 1-12 and 19-25?

FINDINGS OF FACT
Lencki
Lencki discloses methods of processing benefit claims and providing
customer service. A method of processing a benefit claim consistent with
the invention includes: receiving a signal comprising data representing
individual line items within a benefit category purchased by the individual;
automatically building a benefit profile for the individual based on the data;
and authorizing payment of the claim based on the benefit profile (para.
[0011]).
Appeal 2009-007097
Application 10/687,223

4
Deavers
Deavers discloses permitting individuals, families, and defined
groups, such as employers on behalf of their employees, or affiliation groups
on behalf of their members, to establish medical savings accounts in an
efficient and economical fashion. A medical savings account can be defined
as a plan under which a sum of money can be set aside and which in part is
used to pay for a health insurance policy with a high deductible and the
remainder to pay medical expenses (up to the deductible amount), if any,
and to retain the balance, if any, for future use or savings (col. 1, ll. 11-29).
In the event monies are received in excess of the limitations described
above, the monies might be split to permit the maximum permissible to be
included in the MSFA with excess placed into a separate account (col. 4, ll.
59-62).

ANALYSIS
35 U.S.C. § 101
We are persuaded that the Examiner erred in asserting that claims 1-
12 and 19-25 are not directed to statutory subject matter as set forth in 35
U.S.C. § 101 (Reply Br. 5-7). Independent claim 1 recites a system, a
server, an application interface, a data store, and a processor. Independent
claim 19 recites a computer readable medium and a processor. In other
words, both claims recite machines or articles of manufacture, and thus the
Examiner has not shown why the machine-or-transformation test, normally
applied only to process or method claims, is applicable to these claims.

Appeal 2009-007097
Application 10/687,223

5
Lencki and Deavers
We are not persuaded that the Examiner erred in asserting that a
combination of Lencki and Deavers renders obvious the subject matter of
claims 1-12 and 19-25 (App. Br. 24-32; Reply Br. 7-16). Appellants assert
that Deavers does not disclose plan sponsor and plan member rules for
defining payment of claims from employee benefit accounts (App. Br. 29;
Reply Br. 12). However, Lencki is cited for authorizing payment of claims
based on benefit rules (para. [0011]) (Exam’r’s Ans. 5, 10). See In re Keller,
642 F.2d 413, 426 (CCPA 1981) (one cannot show non-obviousness by
attacking references individually where the rejections are based on
combinations of references). Deavers is cited for disclosing the plurality of
accounts (Exam’r’s Ans. 5-6, 11, 15-16).
Appellants assert that Deavers “teaches away from using plan sponsor
and plan member rules ‘in order to define payment of at least a portion of a
claim from between at least two different employee benefit accounts’”
(emphasis original), because Deavers discloses setting aside funds for
“‘payment of future medical expenses’” or “‘to pay for a health insurance
policy with a high deductible and the remainder to pay medical expenses’”
and “‘to retain the balance, if any, for future use or savings’” in an interest
bearing account (App. Br. 29-32; Reply Br. 12-16). However, a teaching
away requires discouragement. See In re Gurley, 27 F.3d 551, 553 (Fed.
Cir. 1994). While Deavers may be primarily directed to managing multiple
accounts for payment of future medical expenses, there is no discouragement
of making claims payments from these multiple accounts, as asserted by the
Examiner when combined with Lencki.

Appeal 2009-007097
Application 10/687,223

6
DECISION
The rejection of claims 1-12 and 19-25 under 35 U.S.C. § 101 is
REVERSED.
The rejection of claims 1-12 and 19-25 under 35 U.S.C. § 103(a) is
AFFIRMED.
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

hh

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Suite 500
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