Ex Parte Medeiros et al

Patent Trial and Appeal Board

Nov 23, 2018

12563911 (P.T.A.B. Nov. 23, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/563,911 09/21/2009
23460 7590 11/27/2018
LEYDIG VOIT & MA YER, LTD
TWO PRUDENTIAL PLAZA, SUITE 4900
180 NORTH STETSON A VENUE
CHICAGO, IL 60601-6731
FIRST NAMED INVENTOR
Joe Medeiros
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.
265838 7310
EXAMINER
ANDERSON, JOHN A
ART UNIT PAPER NUMBER
3692
NOTIFICATION DATE DELIVERY MODE
11/27/2018 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):
Chgpatent@leydig.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JOE MEDEIROS, CHRISTINE MARIE RIEDL,
ROSE ANNE PAVAO, and BRYAN PALACIO
Appeal2017-001807 1
Application 12/563,911 2
Technology Center 3600
Before ANTON W. PETTING, TARA L. HUTCHINGS, and
AMEE A. SHAH, Administrative Patent Judges.
HUTCHINGS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's final
rejection of claims 1-8 and 24--37. We have jurisdiction under 35 U.S.C.
§ 6(b ).
We AFFIRM.
1 Our decision references Appellants' Appeal Brief ("App. Br.," filed Jan.
20, 2016) and Reply Brief ("Reply Br.," filed Nov. 15, 2016), and the
Examiner's Answer ("Ans.," mailed Sept. 21, 2016) and Final Office Action
("Final Act.," mailed May 28, 2015).
2 Appellants identify Aetna Inc. as the real party in interest. App. Br. 3.
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CLAIMED INVENTION
Appellants' claimed invention "relates generally to the field of
electronic payment estimation and more specifically to electronically
estimating payments in connection with procuring health care services."
Spec. ,r 1.
Claims 1, 24, and 30 are the independent claims on appeal. Claim 1,
reproduced below with bracked notations added, is illustrative of the claimed
subject matter:
1. A method comprising:
[ (a)] generating, by a health care information gateway
server, a filtered list of available health care services and
procedures based at least in part on user input of one or more of
a health plan member's personal information and a specialty of a
health care provider;
[ (b)] causing, by the health care information gateway
server, the filtered list of available health care services for the
health plan member to be displayed via an electronic member
interface on a computing device;
[ ( c)] receiving, by the health care information gateway
server, an information element selected from the filtered list via
the electronic member interface, the information element
comprising an indicator of at least one of a medical service and
a medical procedure for which a real-time out-of-pocket payment
estimate is desired by the health plan member;
[(d)] querying, by the health care information gateway
server, a claims database to determine one or more additional
related services or procedures typically associated with the
information element and grouping the at least one service or
procedure of the information element with the additional related
services or procedures based on the determination;
[ ( e)] compiling, by the health care information gateway
server, a pseudo-claim by matching the medical services or
procedures in the grouping with one or more of corresponding
procedure codes and corresponding diagnosis codes;
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[ ( f)] forwarding, by the health care information gateway
server, the pseudo-claim to a claim adjudication engine
executing at a claim adjudication server for adjudicating the
pseudo-claim in real-time based at least in part on contract rates,
health plan member's benefit status, and health plan parameters
corresponding to the member's health plan, wherein adjudicating
the pseudo-claim includes halting claim processing prior to
payment being sent to the health care provider, wherein
adjudicating the pseudo-claim and halting claim processing
occur before rendering of the medical services or procedures by
the health care provider;
[ (g)] determining, by the health care information gateway
server, the real-time out-of-pocket cost estimate for the desired
medical service or procedure based on the claim adjudication
server's processing of the pseudo-claim; and
[(h)] causing the real-time out-of-pocket cost estimate for
the desired medical service or procedure to be presented via the
electronic member interface on the computing device.
REJECTIONS
Claims 1-8 and 24--37 are rejected under 35 U.S.C. § 101 as directed
to a judicial exception without significantly more.
Claims 1-8 and 24--37 are rejected under 35 U.S.C. § I03(a) as
unpatentable over Pederson (US 2007/0043595 Al, pub. Feb. 22, 2007),
Kennedy (US 2007/0005402 Al, pub. Jan. 4, 2007), and Carroll
(US 2010/0138243 Al, pub. June 3, 2010).
ANALYSIS
Patent-Ineligible Subject Matter
Appellants argue the pending claims together. We select claim 1 as
representative. The remaining claims stand or fall with claim 1. See
37 C.F.R. § 4I.37(c)(l)(iv).
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Under 35 U.S.C. § 101, an invention is patent-eligible if it claims a
"new and useful process, machine, manufacture, or composition of matter."
35 U.S.C. § 101. The Supreme Court, however, has long interpreted§ 101
to include an implicit exception: "[l]aws of nature, natural phenomena, and
abstract ideas" are not patentable. Alice Corp. v. CLS Bank Int 'l, 134 S. Ct.
2347, 2354 (2014).
The Supreme Court, in Alice, reiterated the two-step framework
previously set forth in Mayo Collaborative Services v. Prometheus
Laboratories, Inc., 566 U.S. 66 (2012), "for distinguishing patents that claim
laws of nature, natural phenomena, and abstract ideas from those that claim
patent-eligible applications of those concepts." Alice Corp., 134 S. Ct.
at 2355. The first step in that analysis is to "determine whether the claims at
issue are directed to one of those patent-ineligible concepts." Id. If the
claims are not directed to a patent-ineligible concept, e.g., an abstract idea,
the inquiry ends. Otherwise, the inquiry proceeds to the second step where
the elements of the claims are considered "individually and 'as an ordered
combination'" to determine whether there are additional elements that
"transform the nature of the claim' into a patent-eligible application." Id.
( quoting Mayo, 566 U.S. at 79, 78).
The Court acknowledged in Mayo, that "all inventions at some level
embody, use, reflect, rest upon, or apply laws of nature, natural phenomena,
or abstract ideas." Mayo, 566 U.S. at 71. Therefore, the Federal Circuit has
instructed that claims are to be considered in their entirety to determine
"'whether their character as a whole is directed to excluded subject matter."'
McRO, Inc. v. Bandai Namco Games Am., Inc., 837 F.3d 1299, 1312
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(Fed. Cir. 2016) (quoting Internet Patents Corp. v. Active Network, Inc.,
790 F.3d 1343, 1346 (Fed. Cir. 2015)).
As an initial matter, we are not persuaded of Examiner error to the
extent Appellants argue that the Examiner has failed to establish a prima
facie case of patent-ineligibility. See App. Br. 10-11; id. at 11 ("The final
Office Action does not engage in this two-part analysis"). In rejecting the
pending claims under § 101, the Examiner analyzed the claims using the
Mayo/Alice two-step framework. See Final Act. 2-3. Specifically, the
Examiner notified Appellants that claim 1 is directed to "estimating
payments in connection with procuring health care services," which the
Examiner determined is analogous to claims involving processing
information and is a fundamental economic practice and, therefore, an
abstract idea; and that claim 1, viewed as a whole, does not include an
element or combination of elements that is sufficient to amount to
significantly more than the judicial exception. Id. at 3. The Examiner, thus,
notified Appellants of the reasons for the rejection in a sufficiently articulate
and informative manner as to meet the notice requirement of§ 132. And we
find that, in doing so, the Examiner set forth a prima facie case of patent-
ineligibility. See In re Jung, 637 F.3d 1356, 1362 (Fed. Cir. 2011) (holding
that the USPTO carries its procedural burden of establishing a prima facie
case when its rejection satisfies the requirements of 35 U.S.C. § 132 by
notifying the applicant of the reasons for rejection, "together with such
information and references as may be useful in judging of the propriety of
continuing the prosecution of [the] application") (alteration in original).
We also do not agree with Appellants that the Examiner has
overgeneralized the claimed invention as directed to "estimating payments in
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connection with procuring health care services," or that the Examiner has
"ignore[d] all of the substantive claim elements." App. Br. 11. Taking
claim 1 as an example, and quoting the claim language, Appellants argue
that claim 1 recites a "specific and practical application of the inventive
principles, which involves determining ... the real-time out-of-pocket cost
estimate for the desired medical service or procedure based on the claim
adjudication server's processing of the pseudo-claim" and "does not
implicate the Alice Corp. concerns with respect to monopolization of the
basic tools of scientific and technological work." Id. at 11-13.
There is no dispute that the Supreme Court has described "the concern
that drives [the exclusion of abstract ideas from patent eligible subject
matter] as one of pre-emption." Alice Corp., 134 S. Ct. at 2354. But
characterizing preemption as a driving concern for patent eligibility is not
the same as characterizing preemption as the sole test for patent eligibility.
"The Supreme Court has made clear that the principle of preemption is the
basis for the judicial exceptions to patentability" and "[ f]or this reason,
questions on preemption are inherent in and resolved by the§ 101 analysis."
Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir.
2015) (citing Alice Corp., 134 S. Ct. at 2354). "[P]reemption may signal
patent ineligible subject matter, [but] the absence of complete preemption
does not demonstrate patent eligibility." Id.
The Federal Circuit has explained that "the 'directed to' inquiry
applies a stage-one filter to claims, considered in light of the [S]pecification,
based on whether 'their character as a whole is directed to excluded subject
matter."' See Enfzsh, LLC v. Microsoft Corp., 822 F.3d 1327, 1335
(Fed. Cir. 2016) (quoting Internet Patents Corp., 790 F.3d at 1346). It asks
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whether the focus of the claims is on a specific improvement in relevant
technology or on a process that itself qualifies as an "abstract idea" for
which computers are invoked merely as a tool. See id. at 1335-36. The
Examiner's determination here -that the claims are directed to "estimating
payments in connection with procuring health care services" - is fully
consistent with the Specification, including the claim language (see, e.g.,
Spec., Title ("Health Care Payment Estimator"), ,r 1 (the invention relates to
"electronically estimating payments in connection with procuring health care
services"), ,r 10 ("Figure 1 ... illustrat[ es] ... a health care payment
estimation system environment"), Abstract ("[ e ]mbodiments ... construct a
pseudo-claim based on the information gathered via the member or provider
interfaces and provide an accurate real-time estimate of the member's out-
of-pocket responsibility based on adjudicating the pseudo-claim by taking
into account the details of the member's health plan and current benefit
levels"), claim 1 (recites a method that results in "causing the real-time out-
of-pocket cost estimate for the desired medical service or procedure to be
presented"). Appellants cannot reasonably deny that providing estimates in
connection with procuring health care services is not a longstanding
economic practice.
Appellants would seemingly characterize the claimed invention
differently than does the Examiner, e.g., by including additional claim
language; but, that difference only relates to the level of abstraction. An
abstract idea can be expressed at various levels of abstraction. See Apple,
Inc. v. Ameranth, Inc., 842 F.3d 1229, 1240-41 (Fed. Cir. 2016) ("An
abstract idea can generally be described at different levels of abstraction. As
the Board has done, the claimed abstract idea could be described as
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generating menus on a computer, or generating a second menu from a first
menu and sending the second menu to another location. It could be
described in other ways, including, as indicated in the specification, taking
orders from restaurant customers on a computer."). That the Examiner
articulates the abstract idea at a higher level of abstraction than does
Appellants is an insufficient basis for finding that the claims are not directed
to an abstract idea.
Here, independent claim 1 is directed to a method that recites the
steps, performed by a generic server (see Spec. ,r 16) of generating a filtered
list; causing the filtered list to be displayed; receiving an information
element selected from the filtered list; querying a claims database; compiling
a pseudo-claim; forwarding the pseudo claim; determining the real-time out-
of-pocket cost estimate; and causing the real-time out-of-pocket cost
estimate to be presented. In other words, claim 1 involves nothing more
than collecting data, analyzing the data, and displaying the result of the
analysis, to estimate payments without any inventive technology integrated
into the "specific and practical application" (App. Br. 11) - a method of
organzing activities and a financial economic practice, i.e., an abstract idea.
See, e.g., Elec. Power Grp. LLC v. Alstom, S.A., 830 F.3d 1350, 1353-54
(Fed. Cir. 2016) ( characterizing collecting information, analyzing
information by steps people go through in their minds, or by mathematical
algorithms, and presenting the results of collecting and analyzing
information, without more, as matters within the realm of abstract ideas);
Intellectual Ventures I LLC v. Capital One Bank (USA), 792 F.3d 1363,
1369-70 (Fed. Cir. 2015) (customizing and tailoring web page content based
on navigation history and known user information); FairWarning IP, LLC v.
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Iatric Systems, Inc., 839 F.3d 1089 (Fed. Cir. 2016) (collecting and
analyzing information to detect misuse and notifying a user when misuse is
detected). Accordingly, we are not persuaded that the Examiner erred in
determining that the claims are similar to other information gathering and
processing claims that the courts have held to be invalid. See Final Act. 3.
Turning to the second step of the Mayo/Alice framework, Appellants
assert that claim 1, for example, recites steps that "are not 'conventional,' as
evidenced by the lack of prior art teaching or suggesting such steps ( as
disclosed below), and the overall method recited in claim 1 constitutes a
practical application of the inventive concepts so as to qualify as patent-
eligible subject matter." App. Br. 13-14; see also Reply Br. 5---6. We note
that the mere recitation of a practical application for an abstract idea is
insufficient to transform the abstract idea into a patent-eligible invention. Cf
CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1371 (Fed. Cir.
2011) ("The Court [in Parker v. Flook, 437 U.S. 584 (1978)] rejected the
notion that the recitation of a practical application for the calculation could
alone make the invention patentable."). To the extent that Appellants
maintain that the claims are patent-eligible because they are allegedly novel
and/or non-obvious in view of the prior art, Appellants misapprehend the
controlling precedent.
A finding of novelty or non-obviousness does not automatically lead
to the conclusion that the claimed subject matter is patent-eligible. Although
the second step in the Mayo/Alice framework is termed a search for an
"inventive concept," the analysis is not an evaluation of novelty or non-
obviousness, but rather, a search for "an element or combination of elements
that is 'sufficient to ensure that the patent in practice amounts to
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significantly more than a patent upon the [ineligible concept] itself."' Alice
Corp., 134 S. Ct. at 2355 (citation omitted). "Groundbreaking, innovative,
or even brilliant discovery does not by itself satisfy the§ 101 inquiry."
Ass 'nfor Molecular Pathology v. Myriad Genetics, Inc., 569 U.S. 576, 591
(2013). A novel and non-obvious claim directed to a purely abstract idea is,
nonetheless, patent-ineligible. See Mayo, 566 U.S. at 90; see also Diamond
v. Diehr, 450 U.S. 175, 188-89 (1981) ("The 'novelty' of any element or
steps in a process, or even of the process itself, is of no relevance in
determining whether the subject matter of a claim falls within the § 101
categories of possibly patentable subject matter.").
Appellants argue that the claimed invention "does not generically
recite the use of a computer, but rather provides a specific computer system
for determining the real-time out-of-pocket cost estimate for the desired
medical service or procedure that incorporates multiple computing devices
that interact with one another to solve a problem faced by prior approaches."
App. Br. 14. Citing DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245
(Fed. Cir. 2014), Appellants argue that the claims are patent eligible because
they do not recite a fundamental economic or longstanding commercial
practice, are limited to the realm of computers, and have no brick-and-
mortar analog. Id.; see also Reply Br. 6.
Yet, the claims at issue in DDR Holdings were directed to retaining
website visitors, and in particular to a system that modified the conventional
web browsing experience by directing a user, who clicks an advertisement
on a host website, to a "store within a store" on the host website, rather than
directing the user to the advertiser's third-party website. DDR Holdings,
773 F.3d at 1257-58. The court determined that "the claims address a
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business challenge (retaining website visitors) [that] is a challenge particular
to the Internet." Id. at 1257. The court also determined that the invention
was "necessarily rooted in computer technology in order to overcome a
problem specifically arising in the realm of computer networks," and that the
claimed invention did not simply use computers to serve a conventional
business purpose. Id. Instead, the claimed invention changed the routine,
conventional functioning of Internet hyperlink protocol. Id. Here, unlike
the situation in DDR Holdings, there is no indication that a server, computer
network or the Internet is used other than in its normal, expected, and routine
manner for requesting, receiving, and processing data.
Pointing to the Federal Circuit's decision in McRO, Inc. v. Bandai
Namco Games Am., Inc., 837 F.3d 1299 (Fed. Cir. 2016) and quoting the
language recited in Appellants' claim 1, Appellants argue that the claimed
invention is patent-eligible because it focuses on a specific improvement to a
particular field, is a specific and practical application of inventive principles,
and does not implicate concerns with respect to monopolization. Reply
Br. 3-5. Yet, the McRO court explicitly "recognized that 'the absence of
complete preemption does not demonstrate patent eligibility."' McRO, 837
F.3d at 1315 (quotingAriosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d
1371, 1379 (Fed. Cir. 2015)). Instead, the Federal Circuit determined that
the claims at issue were directed to a technological improvement over
existing 3-D animation techniques by using limited rules to enable the
computer to produce accurate and realistic synchronization in animated
characters that previously only could be produced manally by humans. Id.
at 1316. We find no evidence of record here to support the argument that
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the present situation is directed to a technological improvement analogous to
the one inMcRO.
We are not persuaded, on the present record, that the Examiner erred
in rejecting claim 1 under 35 U.S.C. § 101. Therefore, we sustain the
Examiner's rejection. We also sustain the rejection of claims 2-8 and 24--
3 7, which fall with claim 1.
Obviousness
Appellants argue the pending claims together. We select claim 1 as
representative. The remaining claims stand or fall with claim 1. See
37 C.F.R. § 4I.37(c)(l)(iv).
Appellants assert that the Examiner erred in rejecting claim 1 under
35 U.S.C. § 103(a), because none of Pederson, Kennedy, and Carroll teach
that adjudicating the pseudo-claim includes halting claim processing prior to
payment being sent to the health care provider, as required by limitation (f).
See App. Br. 15-16; see also Reply Br. 7-9.
In the Final Office Action, the Examiner relies on Kennedy as
disclosing most aspects of limitation (f) (i.e., forwarding the pseudo-claim to
a claim adjudication engine for adjudicating the pseudo-claim in real-time
based at least on contract rates, health plan member's benefit status, and
health plan parameters corresponding to the member's plan, wherein
adjudicating the pseudo-claim and halting claim processing occurs before
rendering of the medical services or procedures). Final Act. 5---6 ( citing
Kennedy ,r,r 6, 37). And the Examiner relies on Carroll for teaching the
remaining aspect of limitation (f) (i.e., adjudicating includes halting claim
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processing prior to payment being sent to the health care provider). Id. at 6
(citing Carroll ,r 42).
Appellants argue that an eligibility inquiry, as disclosed by Kennedy
at paragraph 37, does not teach that adjudicating includes halting claim
processing prior to payment being sent. App. Br. 15. Appellants argue that
Carroll fails to cure the deficiencies. According to Appellants, Carroll
describes a traditional adjudication system in which some claims are paid
and other claims are denied, and thus does not describe "halting" of claim
processing prior to sending payment. Id. at 16 (citing Carroll ,r 42). In the
Answer, the Examiner additionally finds that Kennedy teaches this aspect of
limitation (f). See Ans. 16 (citing Kennedy ,r 64).
By way of Background, Kennedy relates to providing real-time claim
adjudication and payment for a health care charge. Kennedy ,r 6. When a
consumer visits a healthcare provider, the consumer presents a card that
identifies the consumer and the consumer's insurer. Id. ,r 3 7. The provider
uses the card to verify health care plan coverage before providing health care
to the consumer. Id. A third party network evaluates claims entered by a
provider on a real-time basis, and requests corrections of errors that would
delay claim processing by the health network. Id. ,r 64. The third party
network does not pass a claim to the health network until the provider
properly completes the claim. Id.
The Examiner takes the position that not passing a claim to a health
network, as described by Kennedy at paragraph 64, is equivalent to halting
the claim processing prior to payment being sent to the health care provider,
as required by limitation (f). Ans. 16-17. In the Reply Brief, Appellants do
not rebut this finding, and we are not persuaded that the Examiner erred.
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With respect to limitation (f), Appellants also argue that Carroll does
not teach the halting of claim processing occurs before rendering medical
services, because Carroll's "medical services have already been performed
when claim reimbursement is refused for poor quality of care." Reply Br. 8.
However, the Examiner relies on Kennedy for this aspect of the claim
language. See Final Act. 6; see also Ans. 17.
Appellants assert that Carroll does not teach limitation (g). App.
Br. 15. However, even if Appellants' assertion amounted to a substantive
argument for patentability, Appellants' argument is not persuasive because
the Examiner relies on Pederson for limitation (g). See Final Act. 5 ( citing
Pederson ,r 6); see also In re Lovin, 652 F.3d 1349, 1357 (Fed. Cir. 2011)
("[W]e hold that the Board reasonably interpreted Rule 41.37 to require
more substantive arguments in an appeal brief than a mere recitation of the
claim elements and a naked assertion that the corresponding elements were
not found in the prior art.").
Therefore, we sustain the Examiner's rejection under 35 U.S.C.
§ 103(a) of independent claim 1. We also sustain the rejection of claims 2-8
and 24--37, which fall with independent claim 1.
DECISION
The Examiner's rejection of claims 1-8 and 24--37 under 35 U.S.C.
§ 101 is affirmed.
The Examiner's rejection of claims 1-8 and 24--37 under 35 U.S.C.
§ 103(a) is affirmed.
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No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED
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