Ex Parte Lencki et al

Board of Patent Appeals and Interferences

Sep 1, 2010

09748359 (B.P.A.I. Sep. 1, 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.
09/748,359 12/26/2000 Donna K. Lencki 051078-0020US 4094
28977 7590 09/01/2010
MORGAN, LEWIS & BOCKIUS LLP
1701 MARKET STREET
PHILADELPHIA, PA 19103-2921
EXAMINER
PORTER, RACHEL L
ART UNIT PAPER NUMBER
3626
MAIL DATE DELIVERY MODE
09/01/2010 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 1
___________ 2
3
BEFORE THE BOARD OF PATENT APPEALS 4
AND INTERFERENCES 5
___________ 6
7
Ex parte DONNA K. LENCKI, 8
CHRIS HENCHEY, and 9
PATRICK B. MILLER 10
___________ 11
12
Appeal 2010-010104 13
Application 09/748,359 14
Technology Center 3600 15
___________ 16
17
Before MURRIEL E. CRAWFORD, ANTON W. FETTING, and 18
JOSEPH A. FISCHETTI, Administrative Patent Judges. 19
FETTING, Administrative Patent Judge. 20
DECISION ON APPEAL1 21

1 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.

Appeal 2010-010104
Application 09/748,359

2
STATEMENT OF THE CASE2 1
Donna K. Lencki, Chris Henchey, and Patrick B. Miller (Appellants) 2
seek review under 35 U.S.C. § 134 (2002) of a non-final rejection of claims 3
1-4, 6-12, 14-31, 33-40, 42-48, 50, 51, 70-73, 75-79, 81, 82, and 106, the 4
only claims pending in the application on appeal. We have jurisdiction over 5
the appeal pursuant to 35 U.S.C. § 6(b) (2002).3 6
The Appellants invented a way of selection, delivery and management of 7
employee benefits such as healthcare benefits, which permits customization 8
of an employee benefit plan at the individual level, while maximizing the 9
buying power of the employer group. (Specification 1: FIELD OF THE 10
INVENTION). 11
An understanding of the invention can be derived from a reading of 12
exemplary claim 1, which is reproduced below [bracketed matter and some 13
paragraphing added]. 14
1. A method of providing benefits to an employee comprising: 15
[1] receiving an insurance coverage package selection from the 16
employee, 17
wherein the insurance coverage package 18
corresponds to a benefit type and 19

2 Our decision will make reference to the Appellants’ Appeal Brief (“App.
Br.,” filed August 6, 2009) and Reply Brief (“Reply Br.,” filed January 22,
2010), and the Examiner’s Answer (“Ans.,” mailed November 23, 2009).
3 Although the front page of the non-final rejection mailed March 5, 2009,
indicates that claims 41 and 74 are also pending, these claims are cancelled.
Appeal 2010-010104
Application 09/748,359

3
automatically includes coverage under a plurality 1
of benefit categories associated with the benefit 2
type; 3
[2] for each of the plurality of benefit categories automatically 4
included in the package, 5
simultaneously displaying a plurality of different line 6
items 7
associated with the benefit category 8
to the employee 9
on a user interface accessible through a computer 10
network, 11
wherein each of the different line items displayed on the 12
interface includes 13
(i) an out-of-pocket cost parameter 14
that corresponds to out-of-pocket 15
costs paid by the employee 16
for use of coverage provided under 17
the benefit category and 18
(ii) a corresponding benefit cost 19
to the employee 20
for purchasing the coverage under the 21
benefit category; and 22
wherein the benefit cost presented to the 23
employee 24
for at least one of the different line 25
items associated with the benefit 26
category 27
is non-zero; 28
[3] for each of the plurality of benefit categories automatically 29
included in the package, 30
receiving via the user interface 31
a purchase selection 32
Appeal 2010-010104
Application 09/748,359

4
from the employee 1
corresponding to one of the plurality of 2
different line items associated with the 3
benefit category; and 4
[4] providing the insurance coverage package corresponding to 5
the benefit type and 6
including the plurality of benefit categories to the 7
employee 8
in accordance with the purchase selections made by the 9
employee. 10
11
The Examiner relies upon the following prior art: 12
Spurgeon US 5,890,129 Mar. 30, 1999
Warady US 6,067,522 May 23, 2000
Wizig US 6,735,569 B1 May 11, 2004
Claims 70-73, 75-79, and 81-82 stand rejected under 35 U.S.C. § 112, 13
second paragraph, as failing to particularly point out and distinctly claim the 14
invention. 15
Claims 1-4, 6-12, 15-17, 20-31, 34-36, 39-40, 42-48, 51, 70-73, 75-79, 16
and 82 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Wizig 17
and Warady. 18
Claims 14, 18-19, 33, 37-38, 50, 81, and 106 stand rejected under 35 19
U.S.C. § 103(a) as unpatentable over Wizig, Warady, and Spurgeon. 20
21
Appeal 2010-010104
Application 09/748,359

5
ISSUES 1
The indefiniteness issue hinges on whether claim 70 covers both a 2
machine and a method of using the machine. The obviousness issues hinge 3
on whether what a customer selects in Wizig represents an insurance 4
coverage package that corresponds to a benefit type and automatically 5
includes coverage under plural benefit categories associated with the benefit 6
type, and whether Warady shows the list display recited in limitation [2] was 7
predictable to apply to Wizig. 8
FACTS PERTINENT TO THE ISSUES 9
The following enumerated Findings of Fact (FF) are believed to be 10
supported by a preponderance of the evidence. 11
Facts Related to the Prior Art 12
Wizig 13
01. Wizig is directed to online selection of healthcare services for 14
allowing a user to select a customized healthcare services panel 15
and providing the user with a healthcare services package, the cost 16
of which is calculated based on the user's selections. Wizig 1:9-17
15. 18
02. Wizig allows a user to select healthcare services by providing a 19
list of healthcare service providers, receiving a selection of a panel 20
of healthcare service providers from the user, determining a 21
healthcare services package based on the user's selection and 22
providing the determined healthcare services package to the user 23
that is selected. Wizig 2:62-3:6. 24
Appeal 2010-010104
Application 09/748,359

6
03. Each healthcare provider identifies the healthcare services that 1
provider offers. Thus, selection of a healthcare provider 2
inherently selects a package of healthcare services covered. Wizig 3
17:48-52. 4
04. Wizig displays the co-payment for each healthcare service 5
provider. Wizig 15:22-26. 6
05. Wizig displays the user's total remaining budget and sub-total 7
of the present panel benefits cost, and calculates the increase or 8
decrease of the running calculation due to the user's last 9
modification to the panel. Wizig 15:58-62. 10
Warady 11
06. Warady is directed to health and welfare benefit enrollment and 12
billing system. Warady 1:16-17. 13
07. Warady presents a drawing of a computer display in which, for 14
each health insurance benefit option, a line is displayed that shows 15
both the cost of the benefit plan and the out of pocket co-insurance 16
or deductible amount. Warady Fig. 7A. 17
Spurgeon 18
08. Spurgeon is directed to a system for exchanging health care and 19
insurance information. Spurgeon 1:8-13. 20
21
Appeal 2010-010104
Application 09/748,359

7
1
ANALYSIS 2
Claims 70-73, 75-79, and 81-82 rejected under 35 U.S.C. § 112, second 3
paragraph, as failing to particularly point out and distinctly claim the 4
invention. 5
Claim 70 is an independent claim from which the remaining claims 6
depend. Claim 70 is directed to a system comprised of three structural 7
elements, viz. a database, processor, and user interface. Claim 70 includes 8
three wherein clauses that each describes some part of the function 9
performed by the processor. The Examiner found that these functional 10
clauses rendered the claim indefinite as to whether the claim was directed to 11
a machine or process. Ans. 3-4. 12
The Appellants argue that the claim is clearly directed to structural 13
subject matter with the structure defined by functional recitations. Appeal 14
Br. 8-9. We agree with the Appellants that, as all of the components recited 15
in the claim are structural, and the functional phrase are all within “wherein” 16
clauses that further define those structural elements, the claim is clearly and 17
definitely directed to a machine. The claim does not cover a method of use 18
as found by the Examiner. 19
20
Claims 1-4, 6-12, 15-17, 20-31, 34-36, 39-40, 42-48, 51, 70-73, 75-79, and 21
82 rejected under 35 U.S.C. § 103(a) as unpatentable over Wizig and 22
Warady. 23
Appeal 2010-010104
Application 09/748,359

8
Claims 14, 18-19, 33, 37-38, 50, 81, and 106 rejected under 35 U.S.C. § 1
103(a) as unpatentable over Wizig, Warady, and Spurgeon. 2
The Appellants argue the independent claims 1, 21, 40, 70, and 106 3
together and none of the dependent claims separately. Thus, we take claim 1 4
as representative. This claim recites 4 steps. An employee selects some 5
package; the costs to the employee for that insurance and for the out of 6
pocket costs associated with claim under that package for some options are 7
presented; a selection among those options is received; and the insurance is 8
provided. 9
Ignoring the system aspects of the limitations, these limitations would 10
otherwise describe what has transpired in most open season enrollments 11
which allowed employees’ insurance and healthcare provider selection, such 12
as those in the Federal government, where the display occurred on paper and 13
the employee selections by return of forms. So the Examiner found two 14
references describing automation of such enrollment scenarios. 15
It is important to understand that in providing health insurance, two 16
different types of providers participate – the health card provider and the 17
insurance provider. The latter provides the financial risk assumption and 18
payment administration services that fund the former’s services. Thus one 19
cannot simply refer to a provider, but must characterize the referenced 20
provider. 21
In Wizig, the selection by the employee occurs by creating a customized 22
package wrapped around the particular health care providers selected by the 23
employee. FF 01-02. In Warady, the selection is more general, but is then 24
culled down to a specific provider by displaying the benefit costs and out of 25
Appeal 2010-010104
Application 09/748,359

9
pocket costs for each provider. Thus, the Examiner found that Warady 1
described the execution of limitations [2] and [3] presenting the costs to the 2
employee for insurance and for the out of pocket costs associated with claim 3
under that package for some options are presented and a selection among 4
those options is received 5
The Appellants present several arguments that certain limitations are not 6
described by the references at Appeal Br. 9-12. The Examiner responded to 7
those arguments at Answer 28-35. We agree with and adopt the Examiner’s 8
findings of fact and analysis, and reach the same legal conclusions as in that 9
response. Thus, the issues remaining are those presented in the Reply Brief. 10
First, the Appellants contend that 11
each of the independent claims 1, 21, 40, 70, and 106 require 12
"receiving an insurance coverage package selection from the 13
employee, wherein the insurance coverage package..., 14
automatically includes coverage under a plurality of benefit 15
categories associated with the benefit type", which element was 16
not disclosed in Wizig or Warady. [] Wizig discloses allowing 17
an end user to build a panel of healthcare providers, which 18
includes allowing the user to exclude coverage for a given type 19
of physician. See, e.g., Figure 30-33 of Wizig. Such disclosure 20
simply does not meet the required claim element. 21
Reply Br. 5. Limitation [1] at issue recites receiving an insurance 22
coverage package selection from the employee, wherein the insurance 23
coverage package corresponds to a benefit type and automatically includes 24
coverage under a plurality of benefit categories associated with the benefit 25
type. As the Examiner pointed out (Answer 29), the nature of the insurance 26
coverage package selected is only limited in that it corresponds in some 27
manner to some benefit type and the package automatically include 28
unspecified coverage under some benefit categories. 29
Appeal 2010-010104
Application 09/748,359

10
Wizig offers the coverage of those services offered by the health care 1
providers selected by the employee. FF 03. Clearly this selection 2
corresponds to a benefit type of those areas of medicine those particular 3
health care providers offer and automatically includes medical services 4
coverage of those services offered by the provider under the benefit 5
categories associated those areas of medicine. While we agree with the 6
Appellants that Wizig discloses allowing an end user to build a panel of 7
healthcare providers, this is not on point, because Wizig covers those 8
services offered by that panel. Thus, selecting a panel implicitly selects 9
insurance package coverage. 10
The Appellants then argue 11
Warady presents pre-configured plans to the employee 12
(Warady, Figs. 7a - 7c), which the employee can accept or not. 13
In contrast, the present invention does not merely present 14
preconfigured plans to a consumer for election but, instead, 15
allows a consumer to configure a plan herself by making 16
selections from various options presented to her. 17
Reply Br. 6. Limitation [2] at issue recites, for each benefit category, 18
simultaneously displaying an out-of-pocket cost, and a corresponding benefit 19
cost to the employee. As the Examiner pointed out (Answer 30-31), the line 20
items correspond in some manner to some form of coverage under a benefits 21
category. Each line item presents the cost of the benefit and the cost of 22
using the benefit. 23
Wizig describes presenting the co-payment for each healthcare service 24
provider (FF 04) and displays the benefit cost for each such provider as it is 25
added to the panel (FF 05). The co-payment is an out of pocket cost for 26
Appeal 2010-010104
Application 09/748,359

11
using a benefit, and the benefit cost is a benefit cost to the employee for 1
purchasing coverage. 2
So the issue here is whether it was predictable to provide this 3
information in the form of a display with a line containing these two 4
financial pieces of information for each such provider, given that the 5
information is already provided in a different format. The Examiner 6
provides Warady essentially as evidence that providing such data in a list 7
format was known and used in an analogous context within a health 8
insurance selection system. See FF 07. The Appellants’ arguments that 9
Wizig would not use the costs shown in Warady are simply a case of arguing 10
references separately rather than their combination. One of ordinary skill 11
would have immediately seen that it would be the costs already discussed in 12
Wizig that would be listed in the format shown in Warady. 13
14
CONCLUSIONS OF LAW 15
Rejecting claims 70-73, 75-79, and 81-82 under 35 U.S.C. § 112, second 16
paragraph, as failing to particularly point out and distinctly claim the 17
invention is in error. 18
Rejecting claims 1-4, 6-12, 15-17, 20-31, 34-36, 39-40, 42-48, 51, 70-19
73, 75-79, and 82 under 35 U.S.C. § 103(a) as unpatentable over Wizig and 20
Warady is not in error. 21
Rejecting claims 14, 18-19, 33, 37-38, 50, 81, and 106 under 35 22
U.S.C. § 103(a) as unpatentable over Wizig, Warady, and Spurgeon is not in 23
error. 24
Appeal 2010-010104
Application 09/748,359

12
DECISION 1
To summarize, our decision is as follows. 2
• The rejection of claims 70-73, 75-79, and 81-82 under 35 3
U.S.C. § 112, second paragraph, as failing to particularly point out 4
and distinctly claim the invention is not sustained. 5
• The rejection of claims 1-4, 6-12, 15-17, 20-31, 34-36, 39-40, 42-48, 6
51, 70-73, 75-79, and 82 under 35 U.S.C. § 103(a) as unpatentable 7
over Wizig and Warady is sustained. 8
• The rejection of claims 14, 18-19, 33, 37-38, 50, 81, and 106 under 35 9
U.S.C. § 103(a) as unpatentable over Wizig, Warady, and Spurgeon is 10
sustained. 11
No time period for taking any subsequent action in connection with this 12
appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. 13
§ 1.136(a)(1)(iv) (2007). 14
15
AFFIRMED 16
17
18
19
mev 20
21
Address 22
MORGAN, LEWIS & BOCKIUS LLP 23
1701 MARKET STREET 24
PHILADELPHIA PA 19103-2921 25