Ex Parte Milosevich et al

Patent Trial and Appeal Board

Mar 30, 2018

13804175 (P.T.A.B. Mar. 30, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/804, 175 03/14/2013
99434 7590 04/03/2018
McKesson Corporation and Alston & Bird LLP
c/o Alston & Bird LLP
Bank of America Plaza
101 South Tryon St., Suite 4000
Charlotte, NC 28280-4000
FIRST NAMED INVENTOR
Rudy D. Milosevich
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.
050704/503236 1054
EXAMINER
KANAAN, MAROUN P
ART UNIT PAPER NUMBER
3686
NOTIFICATION DATE DELIVERY MODE
04/03/2018 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):
usptomail@alston.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte RUDY D. MILOSEVICH
and SHEILA D. MILLER
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Technology Center 3600
Before MICHAEL J. STRAUSS, MICHAEL M. BARRY, and
PHILLIP A. BENNETT, Administrative Patent Judges.
STRAUSS, Administrative Patent Judge.
DECISION ON APPEAL
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STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from a rejection 1 of
claims 1, 2, 4--13, and 15-22. Claims 3and14 are canceled. Br. 26, 31
(Claims App'x). We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
THE INVENTION
The claims are directed to determining increased reimbursements
resulting from an increase in a reimbursement parameter associated with a
healthcare product. Spec., Title. Claim 1, reproduced below, is illustrative
of the claimed subject matter:
1. A method, comprising:
identifying, by a reimbursement valuation system comprising
one or more computers, a healthcare product from a plurality of
healthcare products;
determining, by the reimbursement valuation system, that the
healthcare product is a candidate healthcare product for
reimbursement valuation, wherein determining that the
healthcare product is a candidate healthcare product comprises:
determining, by the reimbursement valuation system
and based at least in part on healthcare claim transaction
data, that the healthcare product is associated with a first
group of healthcare claim transactions, wherein each
healthcare claim transaction in the first group is associated
with a respective reimbursement amount that is below an
acquisition cost of the healthcare product;
filtering, by the reimbursement valuation system, the
first group of healthcare claim transactions to determine a
subgroup of one or more healthcare claim transactions,
wherein the respective reimbursement amount associated
1 We herein refer to the Specification, filed Mar. 14, 2013 ("Spec."); Final
Office Action, mailed Oct. 6, 2015 ("Final Act."); Appeal Brief, filed Mar.
7, 2016 ("Br."); and the Examiner's Answer, mailed Aug. 26, 2016 ("Ans.").
No reply brief has been filed.
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with each healthcare claim transaction in the subgroup
corresponds to a first reimbursement rate of a first
reimbursement parameter, and wherein filtering the first
group of healthcare claim transactions comprises
removing at least one healthcare claim transaction from
the first group to obtain the subgroup, each of the at least
one healthcare claim transaction being associated with a
respective reimbursement amount that corresponds to a
reimbursement rate of a second reimbursement parameter
that is different from the first reimbursement parameter;
and
determining, by the reimbursement valuation system,
that the healthcare product is associated with a second
group of one or more healthcare claim transactions,
wherein each healthcare claim transaction in the second
group is associated with a respective reimbursement
amount that corresponds to a second reimbursement rate
of the first reimbursement parameter, the second
reimbursement rate being greater than the first
reimbursement rate; and
determining, by the reimbursement valuation system, a value
indicative of an increase in total reimbursements associated with
the healthcare product based at least in part on the first
reimbursement rate and the second reimbursement rate, wherein
determining the value indicative of the increase in total
reimbursements comprises:
determining, by the reimbursement valuation system,
an average per-unit reimbursement amount associated
with the subgroup;
determining, by the reimbursement valuation system, a
set of reimbursement values, wherein determining the set
of reimbursement values comprises determining a
respective difference between the respective
reimbursement amount associated with each healthcare
claim transaction of the second group and the average per-
unit reimbursement amount; and
aggregating, by the reimbursement valuation system,
the set of reimbursement values to generate the value
indicative of an increase in total reimbursements.
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(Br. 24--25 (Claims App'x)).
REJECTIONS
The Examiner made the following rejections:
Claims 1, 2, 4--13, and 15-22 stand rejected under 35 U.S.C. § 101
because the claimed invention is directed to a judicial exception (i.e., an
abstract idea) without significantly more. Final Act. 2-3.
Claim 22 stands rejected under 35 U.S.C. § 101 because the claimed
invention is directed to signal per se; and, therefore, does not fall within at
least one of the four categories of patent eligible subject matter. Final
Act. 3.
ANALYSIS
Appellants' arguments are unpersuasive of Examiner error. We adopt
as our own ( 1) the findings and reasons set forth by the Examiner in the
action from which this appeal is taken (Final Act. 2-3) and (2) the reasons
set forth by the Examiner in the Answer in response to Appellants' Appeal
Brief (Ans. 2-7). We concur with the conclusions reached by the Examiner.
We highlight the following for emphasis.
Rejection Based on Judicial Exception
Section 101 defines patentable subject matter: "[ w ]hoever invents or
discovers any new and useful process, machine, manufacture, or
composition of matter, or any new and useful improvement thereof, may
obtain a patent therefor, subject to the conditions and requirements of this
title." See 35 U.S.C. § 101. The Supreme Court, however, has "long held
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that this provision contains an important implicit exception," which is that
"'[l]aws of nature, natural phenomena, and abstract ideas' are not
patentable." Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S.
66, 70 (2012) ("Mayo") (quotation omitted). To determine patentable
subject matter, the Supreme Court has set forth a two part test.
Step 1 - Whether the Claims Are Directed to an Abstract Idea
"First, we determine whether the claims at issue are directed to one of
those patent-ineligible concepts" of "laws of nature, natural phenomena, and
abstract ideas." Alice Corp. Pty. v. CLS Bankint'l, 134 S. Ct. 2347, 2355
(2014) ("Alice"). A court must be cognizant 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), and "describing the
claims at ... a high level of abstraction and untethered from the language of
the claims all but ensures that the exceptions to § 101 swallow the rule."
Enfzsh, LLC v. Microsoft Corp., 822 F.3d 1327, 1337 (Fed. Cir. 2016).
Thus, "the claims are considered in their entirety to ascertain whether their
character as a whole is directed to excluded subject matter." Internet
Patents Corp. v. Active Network, Inc., 790 F.3d 1343, 1346 (Fed. Cir. 2015).
Appellants contend the Examiner's finding that the claims are directed
to an abstract idea is improper because (a) there is insufficient evidentiary
support provided to establish a prima facie case of patent-ineligible subject
matter (Br. 15) and (b) similar to the claims in DDR Holdings, the rejected
claims are rooted in computer technology and solve a problem specifically
arising in the realm of computer networks (Br. 16 citing DDR Holdings,
LLC v. Hotels.com, L.P., 773 F.3d 1245 (Fed. Cir. 2014)).
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In connection with the alleged lack of evidentiary support (contention
(a)), Appellants argue "the Office Action merely presents the Examiner's
opinion that the claims are directed to the alleged abstract idea of
'comparing new and stored information and using rules to identify options'
without providing any supporting evidence that the asserted idea is an
abstract idea or that the claims are directed to such an idea." Br. 15.
Appellants further argue the Examiner neither identifies where a judicial
exception (i.e., the abstract idea) is recited or provides reasoning explaining
why it is an abstract idea. Br. 16.
The Examiner responds by finding the claimed "steps can be
performed mentally, and are similar to the concepts identified as abstract
ideas by the courts (e.g. comparing new and stored information and using
rules to identify options as seen in SmartGene ). " Ans. 2-3 (citing
SmartGene, Inc. v. Advanced Biological Labs., SA, 555 F. App'x 950 (Fed.
Cir. 2014) (nonprecedential) (comparing information and using rules to
identify options that can be performed mentally found to be an abstract
idea). Addressing Appellants' allegation that insufficient evidence is
provided in support of the finding the claims are directed to an abstract idea,
the Examiner concludes the burden of establishing a prima facie case has
been satisfied by the rationale provided by the Examiner and by having
compared the concept recited by the claims with those previously found to
be abstract ideas. Ans. 3. The Examiner distinguishes the pending claims
over those of DDR Holdings, finding, unlike in DDR, "the claimed solution
is directed to support the determination of healthcare products which is not
necessarily rooted in computer technology" and that, in the present
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invention, "the computer and valuation system are only used generically."
Ans. 4.
Appellants' arguments are unpersuasive. As the Federal Circuit has
clarified,
"the prima facie case is merely a procedural device that enables
an appropriate shift of the burden of production." Hyatt v. Dudas,
492 F.3d 1365, 1369 (Fed. Cir. 2007) (citing In re Oetiker, 977
F.2d 1443, 1445 (Fed. Cir. 1992)). See also In re Piasecki, 745
F.2d 1468, 1472 (Fed. Cir. 1984). The Patent and Trademark
Office ("PTO") satisfies its initial burden of production by
"adequately explain[ing] the shortcomings it perceives so that the
applicant is properly notified and able to respond." Hyatt, 492
F.3d at 1370. In other words, the PTO carries its procedural
burden of establishing a prima facie case when its rejection
satisfies 35 U.S.C. § 132, in "notify[ing] the applicant ... [by]
stating the reasons for [its] rejection, or objection or requirement,
together with such information and references as may be useful
in judging of the propriety of continuing the prosecution of [the]
application." 35 U.S.C. § 132. That section "is violated when a
rejection is so uninformative that it prevents the applicant from
recognizing and seeking to counter the grounds for rejection."
Chester v. Miller, 906 F.2d 1574, 1578 (Fed. Cir. 1990).
In re Jung, 637 F.3d 1356, 1362 (Fed. Cir. 2011) (brackets in original;
bolding omitted).
Examiners may rely on their own technical expertise to describe the
knowledge and skills of a person of ordinary skill in the art. In re Berg, 320
F.3d 1310, 1315 (Fed. Cir. 2003) (Examiners are "persons of scientific
competence in the fields in which they work," and their findings are
"informed by their scientific knowledge"); see also MPEP § 2141 (II)(C)
(Resolving the Level of Ordinary Skill in the Art) andMPEP § 2144.03 ("an
examiner may ... rely on 'common knowledge' in making a rejection").
Here, we find the Examiner's rejection satisfies the initial burden of
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production because the Examiner, in reviewing the recited steps, finds claim
1 is "drawn to an abstract idea" as being directed to "comparing new and
stored information and using rules to identify options." Final Act. 2. The
Examiner further finds the steps can be performed mentally and that the
claims are similar to those found to be abstract in Alice. Ans. 2-3. By
setting forth a prima facie case that claim 1 is drawn to an abstract idea,
including by citing to relevant precedent, the Examiner shifted the burden of
response on this issue to Appellants.
In support of their contention the rejected claims are similar to those
in DDR Holdings found to be rooted in computer technology and
overcoming a problem arising in the realm of computer networks,
Appellants argue the claims do not recite a mathematical algorithm or a
longstanding fundamental economic practice. Br. 16. According to
Appellants,
the claims address the challenge of determining, using network-
based healthcare claim transaction data, an increase in
reimbursements for healthcare claim transactions transmitted
over a computer network. This is a challenge that is specific to
the network-based context of the Internet and for which no pre-
existing manual analog exists. As in DDR Holdings, while the
claims may be alleged to address a business challenge, it is a
challenge that is particular to a computer network environment
such as the Internet.
Id. The Examiner responds, finding "Applicant[sic's] claims use one or
more computer[ s] and a valuation system to execute computer executable
instructions pertaining to determining healthcare products. Here, the claimed
solution is directed to support the determination of healthcare products
which is not necessarily rooted in computer technology." Ans. 3--4.
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In determining whether the claims are directed to an abstract idea, we
look to whether the claims focus on a specific means or method that
improves the relevant technology, or instead are directed to a result or effect
that itself is the abstract idea and merely invoke generic processes and
machinery. See Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1336 (Fed.
Cir. 2016).
The identifying, determining, and filtering limitations of claim 1 are
conventional functions of processing data claimed in a manner that uses
general, conventional technology. See Ans. 4. We find insufficient
evidence supporting Appellants' argument that the invention addresses "a
challenge that is specific to the network-based context of the Internet and for
which no pre-existing manual analog exists." Br. 16. Claim 1 only requires
a (i.e., "one or more") computer and makes no mention of the argued
computer network. See also Final Act. 2-3. Likewise, Appellants do not
explain what technical problem is addressed by the steps of claim 1 other
than asserting a requirement the steps be performed by a computer.
Contrary to Appellants' argument (Br. 16-1 7), claim 1 is unlike the
claims in DDR Holdings, in which the Federal Circuit found the claims at
issue were "necessarily rooted in computer technology in order to overcome
a problem specifically arising in the realm of computer networks" because
they addressed a technical issue unique to Internet website problems. 773
F.3d at 1257. Here, claim 1 uses conventional technologies to determine
insurance reimbursement values without solving any underlying
technological issues.
Rather than being directed to addressing a technological challenge, the
disclosed invention "relates generally to healthcare claim transactions, and
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more particularly, to determining an increase in reimbursements resulting
from increased reimbursement levels." Spec. i-f 2. In particular, the
invention is directed to an insurance transaction for reimbursing a healthcare
provider for healthcare products. Spec. i-fi-13, 12. Thus, the claims are
similar to those found to be directed to the "abstract idea of billing insurance
companies and organizing patient health information" in In re Salwan, No.
2016-2079, 2017 WL 957239 *3 (Fed. Cir. Mar. 13, 2017)
(nonprecedential). As the Federal Circuit recognized in Salwan, even when
the concepts recited in the claims are "practical concepts," they are
nevertheless "fundamental economic and conventional business practices,"
and thus are abstract ideas. Id. Alternatively or in addition, the claims are
directed to a method of organizing human activities similar to that claimed
in Accenture Global Servs., GmbH v. Guidewire Software, Inc., 728 F .3d
1336, 1344--45 (Fed. Cir. 2013) (claims reciting "generalized software
components arranged to implement an abstract concept [of generating
insurance insurance-policy-related tasks based on rules to be completed
upon the occurrence of an event] on a computer" not patent eligible).
For the foregoing reasons, Appellants' arguments are unpersuasive of
error in the Examiner's determination that the claims are directed to an
abstract idea under step 1 of Alice.
Step 2 - Whether the Claims Amount to Significantly More
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." Alice, 134 S. Ct. at 2355 (quoting Mayo, 566 U.S. at 78, 79).
The Supreme Court has "described step two of this analysis as a search for
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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. (quotation omitted).
The Examiner finds the reimbursement valuation system of claim 1
includes one or more computers that do not add meaningful limitations to
the abstract idea of comparing new and stored information and using rules to
identify options. Final Act. 2-3, Ans. 4--5. According to the Examiner
"[t]here is no indication that the combination of elements improves the
functioning of a computer or improves any other technology. Their
collective functions merely provide [a] conventional computer
implementation." Ans. 5.
Appellants contend claim 1 includes an inventive concept embodied
by the recited determining and aggregating steps. Br. 18. However, although
arguing the steps constitute an "inventive concept [that] is significantly more
than the alleged abstract idea of 'comparing new and stored information and
using rules to identify options'", Appellants do not direct attention to
evidence or provide persuasive reasoning in support of this conclusion.
Mere attorney arguments and conclusory statements, which are unsupported
by factual evidence, are entitled to little probative value. In re Geisler, 116
F.3d 1465, 1470 (Fed. Cir. 1997); In re De Blauwe, 736 F.2d 699, 705 (Fed.
Cir. 1984). Attorney argument is not evidence. In re Pearson, 494 F.2d
1399, 1405 (CCPA 1974). Nor can such argument take the place of
evidence lacking in the record.
Appellants further contend the claims are patent-eligible because
"they do not preempt all practical applications of the idea." Br. 18
(underlining omitted). The Examiner responds that "[t]he courts do not use
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preemption as a stand-alone test for eligibility." Ans. 6. We agree with the
Examiner. "But we have consistently held that claims that are otherwise
directed to patent-ineligible subject matter cannot be saved by arguing the
absence of complete preemption." Return Mail, Inc. v. US. Postal Service,
868 F.3d 1350, 1370 (Fed. Cir. 2017). "While preemption may signal patent
ineligible subject matter, the absence of complete preemption does not
demonstrate patent eligibility." Ariosa Diagnostics, Inc. v. Sequenom, Inc.,
788 F.3d 1371, 1379 (Fed. Cir. 2015). "Where a patent's claims are deemed
only to disclose patent ineligible subject matter under the Mayo framework,
as they are in this case, preemption concerns are fully addressed and made
moot." Id.
Appellants also contend the claims recite unconventional steps which
amount to substantially more than the abstract idea. Br. 20-21. Appellants
argue:
The pending claims have been found allowable, other than the 35
U.S.C. § 101 rejection, by the Examiner as evidenced by the fact
that the Examiner has withdrawn all 35 U.S.C. §§ 102, 103, and
112 rejections. The failure of an ability to identify art sufficient
to make a 35 U.S.C. §102 or §103 rejection is a direct indication
that the claims include limitations that are other than what is
well-understood, routine, and conventional.
Br. 21.
Appellants' argument is unpersuasive of error in the Examiner's
determination under step 2 of Alice. Notwithstanding that "'the§ 101
patent-eligibility inquiry and, say, the § 102 novelty inquiry might
sometimes overlap,' [] a claim for a new abstract idea is still an abstract
idea." Synopsys, Inc. v. Mentor Graphics Corp., 839 F.3d 1138,
1151 (quoting Mayo, 566 U.S. at 90). The question in step two of
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the Alice framework is not whether an additional feature is novel but
whether the implementation of the abstract idea involves "more than the
performance of 'well-understood, routine, [and] conventional activities
previously known to the industry."' Content Extraction and Transmission
LLC v. Wells Fargo Bank, Nat. Ass 'n, 776 F.3d 1343, 1347--48 (quoting
Alice, 134 S.Ct. at 2359). In that regard, Appellants have neither explained
what specifically in the claims amounts to more than the performance of
"well-understood, routine, [and] conventional activities" are, or how they
transform the abstract idea into patent-eligible subject matter. The fact that
the claims do not stand rejected under § 102 or § 103 is alone inadequate to
show claim 1 includes an element or combination of elements that is
sufficient to ensure that in practice the claimed subject matter amounts to
significantly more than to be upon the abstract idea itself.
For the foregoing reasons, Appellants' arguments are unpersuasive of
error in the Examiner's determination that the claims do not amount to
significantly more than the abstract idea itself under step 2 of Alice.
Accordingly, we sustain the Examiner's§ 101 rejection of claims 1, 12 and
22. We also, accordingly, sustain the§ 101 rejection of dependent claims 2,
4--11, 13, and 15-21, for which Appellants offer no separate arguments. See
Br. 5-15; 37 C.F.R. § 41.37(c)(l)(iv).
Rejection of Claim 22 as Directed to a Signal Per Se
Appellants do not contest the rejection of claim 22 under 35 U.S.C.
§ 101 as reading on a signal per se and, therefore, including subject matter
outside the four categories of patent eligible subject matter. See Final Act. 3,
Ans. 6-7. Therefore, we summarily sustain the rejection of claim 22 on this
additional basis. See 37 C.F.R. § 41.37(c)(l)(iv);
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1307, 1314 (Fed. Cir. 2008) (the Board may treat arguments appellant failed
to make for a given ground of rejection as waived); Ex parte Frye, 94
USPQ2d 1072, 107 5 (BP AI 2010) (precedential) ("If an appellant fails to
present arguments on a particular issue - or, more broadly, on a particular
rejection-the Board will not, as a general matter, unilaterally review those
uncontested aspects of the rejection.").
DECISION
We affirm the Examiner's decision to reject claims 1, 2, 4--13, and 15-
22 under 35 U.S.C. § 101.
No time period for taking any subsequent action in connection with
this appeal maybe extended under 37 C.F.R. § 1.136(a)(l)(iv). See 37
C.F.R. § 41.50(±).
AFFIRMED
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