Ex Parte Kennedy et al

Patent Trial and Appeal Board

Feb 5, 2014

11428219 (P.T.A.B. Feb. 5, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte BEVERLY KENNEDY and ROBYN BARTLETT
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Appeal 2011-013227
Application 11/428,219
Technology Center 3600
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Before MEREDITH C. PETRAVICK, MICHELLE R. OSINSKI, and
NINA L. MEDLOCK, Administrative Patent Judges.

MEDLOCK, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2011-013227
Application 11/428,219

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STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 1, 3-8, 10-18, 20-24, 26, and 27. We have jurisdiction
under 35 U.S.C. § 6(b).

STATEMENT OF THE DECISION
We REVERSE.1

THE CLAIMED INVENTION
Appellants’ claimed invention “relates to systems and methods for
paying healthcare charges, particularly where the charges may be allocated
among more than one payment source” (Spec., para. [0001]).
Claim 1, reproduced below, is illustrative of the subject matter on
appeal:
1. A system for providing right-time claim adjudication and
payment for patient healthcare services that are provided at a
provider location, where payment may be made by multiple
payer sources, the system comprising:
a point of sale (POS) device for use by a provider in
entering patient information for a patient, including at least
patient ID information associated with the patient and a
healthcare treatment code for the patient healthcare services
provided to the patient;
a display device communicatively coupled to the POS
device;
a host computer for receiving the patient information
from the POS device, for submitting the patient information as
a healthcare claim to a first payer source after the patient

1 Our decision will refer to Appellants’ Appeal Brief (“App. Br.,” filed
April 20, 2011) and Reply Brief (“Reply Br.,” filed August 23, 2011), and
the Examiner’s Answer (“Ans.,” mailed June 23, 2011).
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healthcare services have been provided to the patient, for
submitting the patient information to an estimating system, for
receiving from the estimating system estimated explanation of
benefits (EOB) information in the form of an estimated EOB
statement and in response to the healthcare claim, and for
providing the estimated EOB information to the POS device for
display at the display device, the estimated EOB information
generated by the estimating system as an estimated adjudication
of the healthcare claim and including at least information on an
estimated patient portion amount of a provider charge that is
not to be paid by the first payer source, wherein the estimating
system calculates the estimated EOB information based on data
reflecting one of more of the following factors:
location of the provider;
identity of the first payer source;
identity of a healthcare plan that is administered by
the first payer source and that is applicable to the patient;
and
accuracy of prior estimates for healthcare claims;
whereby the patient authorizes payment of the patient
portion on a real-time basis to the provider while the patient is
at the provider location in response to the estimated EOB
information displayed at the display device associated with
POS device; and
wherein the first payer source provides to the host
computer final EOB information in the form of a final EOB
statement in response to the healthcare claim to the first payer
source and based on adjudication of the healthcare claim, the
final EOB information separate from the estimated EOB
information, and wherein a patient portion amount in the
separate final EOB information is reconciled against the patient
portion amount in the estimated EOB information.

Appeal 2011-013227
Application 11/428,219

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THE REJECTIONS
The following rejections are before us for review:
Claims 1, 3-8, 10-18, 20, and 21 are rejected under 35 U.S.C. § 103(a)
as unpatentable over Boyer (US 6,208,973 B1, iss. Mar. 27, 2001) and
Lee (US 2003/0200118 A1, pub. Oct. 23, 2003).2
Claims 22-26 are rejected under 35 U.S.C. § 103(a) as unpatentable
over Boyer, Lee, and Wahlbin (US 2005/0060184 A1, pub. Mar. 17, 2005).
Claim 27 stands rejected under 35 U.S.C. § 103(a) as unpatentable
over Boyer, Lee, and Dooley (US 7,438,218 B2, iss. Oct. 21, 2008).

ANALYSIS
Independent claim 1 and dependent claims 3-8 and 10-16
Appellants argue that the Examiner erred in rejecting claim 1 under
35 U.S.C. § 103(a) because the “preadjudication” and “coverage profile”
features of Boyer, on which the Examiner relies, do not disclose or suggest
the estimating system or the EOB information provided by the estimating
system, as recited in claim 1, i.e., “a host computer . . . for submitting the
patient information as a healthcare claim to a first payer source after the
patient healthcare services have been provided to the patient, for submitting
the patient information to an estimating system, [and] for receiving from the
estimating system estimated explanation of benefits (EOB) information in
the form of an estimated EOB statement and in response to the healthcare
claim” (App. Br. 8-10 and Reply Br. 1-3). In this regard, Appellants

2 We treat, as inadvertent error, the listing of claims 22-24 and 26 as
rejected under 35 U.S.C. § 103(a) as unpatentable over Boyer and Lee in
view of the separate rejection of these claims as unpatentable over Boyer,
Lee, and Wahlbin.
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maintain that neither Boyer’s preadjudication (i.e., determining what
services are covered, and to what degree, before any healthcare services are
provided (see Boyer, col. 12, l. 57 – col. 13, l. 6)) nor the coverage profile in
Boyer (i.e., identifying possible treatment options, covered by the patient’s
healthcare insurance policy, based on a preliminary diagnosis rendered
before treatment services are provided (see Boyer, col. 13, ll. 15-49)), is
generated by an estimating system “in response to the healthcare claim,” as
recited in claim 1, because both sets of information are generated before
healthcare services are provided. Appellants acknowledge that a healthcare
claim is submitted in Boyer but Appellants argue that the claim is submitted
after the preadjudication and after the coverage profile are generated (App.
Br. 8-9 and Reply Br. 1-2).
The Examiner maintains that the rejection is proper, and directs our
attention to Boyer, column 14, lines 6-67, where Boyer describes that in
preparing a healthcare claim for on-line submission, after treatment has been
provided, the healthcare provider may edit a “preadjudication claim” or
“[a]lternately, an electronic claim may be started from scratch for
submission” (see Boyer, col. 14, ll. 35-39). Based on this disclosure, the
Examiner asserts that Boyer’s “preadjudication” is “explicitly ‘in response to
a healthcare claim,’” as recited in claim 1 (Ans. 20). We disagree.
Claim 1 explicitly recites that the host computer receives the
estimated EOB statement from the estimating system “in response to the
healthcare claim,” which is submitted “to a first payer source after the
patient healthcare services have been provided to the patient.” In Boyer, the
“preadjudication” and “coverage profile” are created before any treatment
services are provided, e.g., to verify insurance coverage and the scope of that
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coverage. As such, neither can constitute an “estimated EOB statement”
received in response to a healthcare claim submitted after patent healthcare
services have been provided.
Therefore, we will not sustain the Examiner’s rejection of claim 1
under 35 U.S.C. § 103(a). We also will not sustain the rejection of
claims 3-8 and 10-16, which depend from claim 1. Cf. In re Fritch,
972 F.2d 1260, 1266 (Fed. Cir. 1992) (“[D]ependent claims are nonobvious
if the independent claims from which they depend are nonobvious.”).
Independent claims 17 and 22 and dependent claims 18, 20, 21, and 23-26
Independent claim 17 includes language substantially similar to the
language of claim 1. Therefore, we will not sustain the Examiner’s rejection
of claim 17 under 35 U.S.C. § 103(a) for the same reasons as set forth above
with respect to claim 1. For the same reasons, we also will not sustain the
Examiner’s rejection of claims 18, 20, and 21, which depend from claim 17.
Independent claim 22 also includes language substantially similar to
the language of claim 1. The Examiner has not established on this record
that Wahlbin cures the deficiencies of Boyer, as described above with
respect to claim 1. Therefore, we will not sustain the rejection of claim 22
under 35 U.S.C. § 103(a) for the same reasons as set forth above with
respect to claim 1. We also will not sustain the Examiner’s rejection of
claims 23-26, which depend from claim 22, for the same reasons.
Dependent claim 27
Claim 27 depends from claim 1. The Examiner has not established on
this record that Dooley cures the deficiencies of Boyer, as described above
with respect to claim 1. Therefore, we will not sustain the rejection of
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claim 27 under 35 U.S.C. § 103(a) for the same reasons as set forth above
with respect to claim 1.

DECISION
The Examiner’s rejections of claims 1, 3-8, 10-18, 20-24, 26, and 27
under 35 U.S.C. § 103(a) are reversed.

REVERSED

mls