Ex Parte Luftig

Patent Trial and Appeal Board

Nov 13, 2018

10784105 (P.T.A.B. Nov. 13, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
10/784,105 02/20/2004
93261 7590 11/15/2018
Bey & Cotropia PLLC (Trizetto Customer Number)
ATTN: Dawn-Marie Bey
213 Bayly Court
Richmond, VA 23229
Craig P. Luftig
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
TZG0007 6924
EXAMINER
RAPILLO, KRISTINE K
ART UNIT PAPER NUMBER
3626
NOTIFICATION DATE DELIVERY MODE
11/15/2018 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
dawnmarie@beycotropia.com
bey _cotropia_docketing@cardinal-ip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte CRAIG P. LUFTIG
Appeal2017-004871
Application 10/784, 105
Technology Center 3600
Before JEAN R. HOMERE, AMBER L. HAGY, and
MICHAEL M. BARRY, Administrative Patent Judges.
HOMERE, Administrative Patent Judge.
DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134(a) from a Final Rejection of
claims 1, 3, 4, 6, 7, 10-15, 17, 18, 21, 33, and 34, which constitute all claims
pending in this application. 1 App. Br. 2. Claims 2, 5, 8, 9, 16, 19, 20, and
22-32 have been canceled. Claims App'x. We have jurisdiction under 35
U.S.C. § 6(b).
We affirm.
1 Appellant identifies the real party in interest as TriZetto Corp. App. Br. 2.
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Application 10/784, 105
Introduction
According to Appellant, the claimed subject matter relates to a
method and system for integrating a defined contribution plan (e.g., a Health
Reimbursement Arrangement (HRA) account or a Flexible Spending
Account (FSA)) with a health plan (e.g., Aetna or Blue Cross Blue Shield).
Spec. ,r,r 31-33, Fig. 2. In particular, the health plan (100) includes a claim
processing system software module (250) linked to a health plan
management system software module (220) for processing claims, and
determine claim payment for a member based on established allocation
rules, amounts, and explanation codes for the defined contribution plan. Id.
,r,r 3 8--4 3 .
Representative Claim
Independent claim 1 is representative, and reads as follows:
1. A computing system to integrate a defined
contribution plan with a health plan comprising:
a claim processing system software module including a
claim processing defined contribution software module;
a health plan management software module including a
health plan management defined contribution software module;
wherein the health plan management defined contribution
software module is integrated with the health plan management
software module in order to:
create a defined contribution application for the
health plan to allow for the entry of information for the
defined contribution plan, the defined contribution plan
being either a Health Reimbursement Arrangement
(HRA) account or a Flexible Spending Account (FSA)
account;
link defined contribution plan information to the
health plan; and
establish allocation rules, amounts, and
explanation codes for the defined contribution plan
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Application 10/784, 105
including selection from at least two different user-
defined explanation codes for claims disallowed due to
the HRA or FSA account being exhausted and selection
from at least two different user-defined explanation codes
for claims disallowed due to run-out periods being
exceeded, for the HRA, determining whether HRA
allocated amounts are to be carried over, and, for the
FSA, defining parameters including a claim submission
method considered during FSA claim processing;
further wherein the claim processing defined contribution
software module is integrated with the claim processing system
software module to:
perform claim processing: and
determine a claim payment for a member based on
the established allocation rules, amounts, and explanation
codes for the defined contribution plan.
Re} ection on Appeal2
Claims 1, 3, 4, 6, 7, 10-15, 17, 18, 21, 33, and 34 stand rejected under
35 U.S.C. § 101 as being directed to patent-ineligible material (an abstract
idea, without reciting significantly more). Final Act. 4--5.
ANALYSIS 3
The U.S. Supreme Court provides a two-step test for determining
whether a claim is directed to patent-eligible subject matter under 35 U.S.C.
§ 101. Alice Corp. Pty. Ltd. v. CLS Banklnt'l, 134 S. Ct. 2347, 2354
(2014). In the first step, we determine whether the claims are directed to one
2 The Examiner withdrew the obviousness rejections previously entered
against the pending claims. Ans. 2.
3 Rather than reiterate all the arguments of Appellants and all the Examiner's
findings and conclusions, we refer to the Appeal Brief (filed July 1, 2016)
("App. Br."), the Reply Brief (filed January 31, 2017) ("Reply Br."), and the
Answer (mailed December 1, 2016) ("Ans."), and the Final Office Action
(mailed December 4, 2015) ("Final Act.") for the respective details.
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or more judicial exceptions ( e.g., law of nature, natural phenomenon, and
abstract ideas) to the four statutory categories of invention (i.e., process,
machine, manufacture, and composition of matter). Id. at 2355 ( citing Mayo
Collaborative Servs. v. Prometheus Labs., Inc., 132 S. Ct. 1289, 1296-97
(2012)). In the second step, we "consider the elements of each claim both
individually and 'as an ordered combination' to determine whether the
additional elements 'transform the nature of the claim' into a patent-eligible
application." Id. (citing Mayo, 132 S. Ct. at 1298, 1297). In other words,
the second step is to "search for an 'inventive concept'-i.e., an element or
combination of elements that is 'sufficient to ensure that the patent in
practice amounts to significantly more than a patent upon the [ineligible
concept] itself."' Id. (citing Mayo, 132 S. Ct. at 1294).
Alice/Mayo Analysis, step I (Abstract Idea)
We consider Appellant's arguments seriatim, as they are presented in
the Appeal Brief, pages 8-14, and the Reply Brief, pages 2-7.
Appellant argues the Examiner erred in rejecting claims 1, 3, 4, 6, 7,
10-15, 17, 18, 21, 33, and 34 as being directed to an abstract idea because
the Examiner has not made a prima facie case under 35 U.S.C. § 101. App.
Br. 8. In particular, Appellant argues that the Examiner does not "compare
the claim[ s] to claims already found to be directed to an abstract idea in a
previous court decision." Id. at 9; Reply Br. 3. According to Appellant, the
Examiner instead "describe[ es] a claim at a high level of abstraction
untethered from the language of the claim when determining the focus of the
claimed invention," and then "parses this high level abstraction into
individual parts and attempts to define the individual parts as being
individually abstract." App. Br. 9 (brackets in original). Appellant contends
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"[t]he present claims are directed to the integration of defined contribution
accounts into processing systems of health plans." Id. Appellant further
identifies a federal district court decision, in which the court, having
evaluated the alleged abstractness of patent claims regarding health care
claims and related processing, found such health care processing claims are
not directed to an abstract idea. Id. at 10 (citing StoneEagle Servs., Inc. v.
Pay-Plus Solutions, Inc., 113 F. Supp. 3d 1241 (M.D. Fl. 2015)). Therefore,
similar to the claims in StoneEagle, Appellant submits that because the
claims in the present appeal are "limited to a particular industry (healthcare)
and cover a specific method of processing the payment of claims by
particular individuals," they are not directed to, and do "not preempt or grant
a monopoly to an abstract idea." Id.
These arguments are not persuasive. As an initial matter, we agree
with the Examiner that StoneEagle is not a precedential decision, and is
therefore not binding upon us. Ans. 3. Further, we do not agree with
Appellant that the Examiner has not established a prima facie case of patent
ineligibility. In particular, we note the Examiner initially concluded that the
claims are directed to the abstract idea of "comparing new and stored
information and using rules to identify options." Final Act. 4. Then,
following Appellant's after-final response, the Examiner asserted that the
comparison of new information ( entry of defined contribution information)
to existing information (health plan) is a mere organization of human
activities using rules to identify options ( determining if there is carryover
and defining parameters for claim submission). Adv. Act. 2. Subsequently,
the Examiner submits that the claims are directed to a processing system
integrating a defined contribution plan with a traditional health plan, which
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has been held as being patent ineligible. Ans. 3 (citing In re Grams, In re
Karpf, and SmartGene4). In our view, the afore-cited explanation provided
by the Examiner, including a comparison of the claim language with similar
concepts in the cited authorities, suffices to establish a prima facie case of
patent ineligibility under the first step of the Mayo analysis.
Although the Examiner does not cite to a litany of authorities to
support the rejection, it is undisputed that the claimed subject matter as
whole is directed a processing system that integrates a defined contribution
plan with a health plan. As correctly noted by Appellant, our reviewing
court has consistently held that such systems directed to mental steps people
regularly perform in their heads are patent ineligible. Reply Br. 4 ( citing
CyberSource Corp. v. Retail Decisions, Inc., 654 F.2d 1366, 1373 (Fed. Cir.
2011)). Likewise, the court has consistently held that mere characterizations
of human activities within the stream of commerce are not patent eligible.
See, e.g., Elec. Power Grp. v. Alstom S.A., 830 F.3d 1350, 1353 (Fed. Cir.
2016) (claims directed to collection, manipulation, and display of data);
Intellectual Ventures I LLC v. Capital One Bank (USA), 792 F.3d 1363,
1370 (Fed. Cir. 2015) (customizing information and presenting it to users
based on particular characteristics). That these claims are directed to an
abstract idea is confirmed by the fact that they involve the processing of a
claim submission to determine payment for a member based on established
rules, amounts, and explanation codes for a defined contribution plan, which
is a type of activity that is traditionally performed manually. See
4 SmartGene, Inc. v. Advanced Biological Laboratories SA, 555 F. App 'x
950 (Fed. Cir. 2014).
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CyberSource, ("[A] method that can be performed by human thought alone
is merely an abstract idea and is not patent-eligible under§ 101.").
Further, we do not agree with Appellant that the Examiner's
characterization of the claim language is a high level of abstraction
untethered from the claim language. As noted above, the Examiner
characterizes the claims as being directed to a processing system integrating
a defined contribution plan with a health plan for processing a claim
submitted by a plan member in accordance with established allocation rules,
amounts, and explanation codes for the defined plan. The summary of the
claim language provided by the Examiner is consistent with Appellant's
summary of the claimed invention as set forth at page 3 of the Appeal Brief,
and paragraphs 31 through 34 of the Specification. Although the
Examiner's summary does not recite all the claim limitations, we would not
reasonably expect a summary of the claim language to recite every single
claim limitation. We are, thus, satisfied that the Examiner's characterization
of the claim language sufficiently and reasonably captures the essence of
Appellant's claimed subject matter. Furthermore, Appellant's arguments
asserting that the claims do not block others from using the abstraction do
not persuade us that the claims are directed to patent eligible material.
Preemption is not a separate test.
To be clear, the proper focus is not preemption per se, for
some measure of preemption is intrinsic in the statutory right
granted with every patent to exclude competitors, for a limited
time, from practicing the claimed invention. See 35 U.S.C.
§ 154. Rather, the animating concern is that claims should not
be coextensive with a natural law, natural phenomenon, or
abstract idea; a patent-eligible claim must include one or more
substantive limitations that, in the words of the Supreme Court,
add "significantly more" to the basic principle, with the result
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that the claim covers significantly less. See Mayo 132 S. Ct. at
1294. Thus, broad claims do not necessarily raise§ 101
preemption concerns, and seemingly narrower claims are not
necessarily exempt.
CLS Bankint'l v. Alice Corp. Pty. Ltd., 717 F.3d 1269, 1281 (Fed. Cir.
2013); see also Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371,
13 79 (Fed. Cir. 2015) ("While preemption may signal patent ineligible
subject matter, the absence of complete preemption does not demonstrate
patent eligibility."). Because we find the claimed subject matter covers
patent-ineligible subject matter, the preemption concern is necessarily
addressed. "Where a patent's claims are deemed only to disclose patent
ineligible subject matter under the Mayo framework, ... preemption
concerns are fully addressed and made moot." Ariosa Diagnostics, 788 F.3d
at 1379.
Alice/Mayo Analysis, step II (Significantly More than Abstract Idea)
Next, Appellant argues that the Examiner has not considered whether
all elements of the claims amount to significantly more than the alleged
abstract idea of organizing human activities. App. Br. 10-11. Appellant
contends "the claims recite more than 'generically recited computer
products,"' but instead recite a processing system using multiple software
modules integrating the defined contribution plan and the traditional health
plan to process a claim submitted by a member of the plan. Id. at 10 (no
citation provided by Appellant for the internal quotation). Appellant argues
those specially programmed components and the required ordered
combination of elements elevate the claims to significantly more than the
identified and oversimplified abstract idea stated by the Examiner. Id. at 11;
Reply Br. 4--5. According to Appellant, although these features may use a
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computer's inherent capabilities, using a computer alone is insufficient to
negate patentability. Id.
These arguments are not persuasive. We agree with the Examiner that
the cited claim elements, as a whole, do not amount to significantly more
than the abstract idea of integrating a defined contribution plan with a
traditional health plan for processing a claim submitted by a member of the
plan. Ans. 4 ( citing see Accenture Global Services, GMBH and Accenture
LLP v. Guidewire Software, Inc., 728 F.3d 1336 (Fed. Cir. 2013). Appellant
is reminded that "the 'inventive concept' [under step two of the Mayo/Alice
test] cannot be the abstract idea itself' and "Berkheimer ... leave[ s]
untouched the numerous cases from this court which have held claims
ineligible because the only alleged 'inventive concept' is the abstract idea."
Berkheimer v. HP Inc., 890 F.3d 1369, 1374 (Fed. Cir. 2018) (Moore, J.,
concurring). "It has been clear since Alice that a claimed invention's use of
the ineligible concept to which it is directed cannot supply the inventive
concept that renders the invention 'significantly more' than that ineligible
concept." BSG Tech LLC v. BuySeasons, Inc., 899 F.3d 1281, 1290 (Fed.
Cir. 2018). We, therefore, agree with the Examiner that the computer
functions recited in the claims are generic, and it is well established that
using a generic computer to expedite and automate processes traditionally
performed manually or that are otherwise abstract is a well-understood,
routine, and conventional use of such computers. Final Act. 4; Ans. 4; see
also, e.g., Intellectual Ventures I LLC v. S)'mantec Corp,, 838 F.Jd 1307,
1321 (Fed, Cir, 2016) (utilizing an intermediary computer to forward
information); Bancorp S'ervs,, LLC v, Sun Ltfe Assurance Co., 687 F.3d
1266, 1278 (Fed. Cir. 2012) (wrhe computer required by some ofBancorp's
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claims is empfoyed only for its most basic function, the performance of
repetitive cakulations1 and as such does not impose meaningful limits on the
scope of those claims.~} Appellant is further reminded that "relying on a
computer to perform routine tasks more quickly or more accurately is
insufficient to render a claim patent eligible." OIP Techs., Inc. v.
Amazon.com, Inc., 788 F.3d 1359, 1363 (Fed. Cir. 2015) (citing Alice, 134
S. Ct. at 2359 ("use of a computer to create electronic records, track multiple
transactions, and issue simultaneous instructions" is not an inventive
concept)). Therefore, the functions recited in claim 1 do not add any
meaningful limitations beyond generally linking the abstract idea to the
particular technological environment. Id. 5
Accordingly, we are not persuaded of error in the Examiner's
conclusion that claim 1 is directed to patent-ineligible subject matter.
Regarding claims 3, 4, 6, 7, 10-15, 17, 18, 21, 33, and 34, Appellant
reiterates substantially the same patent eligibility arguments of claim 1
discussed above. App. Br. 11-14. We are similarly not persuaded of error
5 Considerations for determining whether a claim with additional elements
amounts to "significantly more" than the judicial exception itself include
improvements to another technology or technical field (Alice, 134 S. Ct. at
2359---60 (citing Diehr, 450 U.S. at 177-78)); adding a specific limitation
other than what is well-understood, routine, and conventional in the field, or
adding unconventional steps that confine the claim to a particular useful
application (Mayo, 566 U.S. at 82, 87); or other meaningful limitations
beyond generally linking the use of the judicial exception to a particular
technological environment (Alice, 134 S. Ct. at 2360). See also, e.g.,
Intellectual Ventures I LLC, 792 F.3d at 1370 ("[M]erely adding computer
functionality to increase the speed or efficiency of the process does not
confer patent eligibility on an otherwise abstract idea.").
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in the Examiner's conclusion that claims 3, 4, 6, 7, 10-15, 17, 18, 21, 33,
and 34 are directed to patent-ineligible subject matter.
DECISION
For the above reasons, affirm the patent ineligibility rejection of
claims 1, 3, 4, 6, 7, 10-15, 17, 18, 21, 33, and 34.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED
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