Ex Parte Neben et al

Patent Trial and Appeal Board

Feb 20, 2018

14049874 (P.T.A.B. Feb. 20, 2018)

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.
14/049,874 10/09/2013 Kathleen Neben TZG0034-DIV1 5849
93261 7590 02/22/2018
Bey & Cotropia PLLC (Trizetto Customer Number)
ATTN: Dawn-Marie Bey
213 Bayly Court
Richmond, VA 23229
EXAMINER
LEMIEUX, JESSICA
ART UNIT PAPER NUMBER
3693
NOTIFICATION DATE DELIVERY MODE
02/22/2018 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 KATHLEEN NEBEN, JULIE SKEEN, and SCOTT JOHNSON
Appeal 2016-003467
Application 14/049,8741
Technology Center 3600
Before ANTON W. FETTING, BRUCE T. WIEDER, and
TARA L. HUTCHINGS, Administrative Patent Judges.
WIEDER, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal under 35U.S.C. § 134 from the
Examiner’s final rejection of claims 1—6. We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM.
1 According to Appellants, the real party in interest is TriZetto Corporation.
(Appeal Br. 2.)
Appeal 2016-003467
Application 14/049,874
CLAIMED SUBJECT MATTER
Appellants’ claimed invention is “generally directed to
implementation of health-related compliance programs instituted by payers
or related entities.” (Spec. 12.)
Claim 1 is the sole independent claim on appeal. It recites:
1. An automated process for determining compliance with
one or more health incentive programs comprising;
receiving at a claim processing application of a core
server, medical claims for multiple individuals who may be
eligible for rewards associated with one or more health incentive
programs;
filtering by the claims processing application, the medical
claims using claims data therein in accordance with at least one
of a group, class and health plan to which each of the multiple
individuals is associated and comparing the claims data from the
filtered medical claims with one or more requirements for
associating the filtered medical claims and each of the multiple
individuals with one or more health incentive programs;
storing the filtered medical claims including claims data
and associated one or more health incentive programs in a first
staging database accessible by the core server;
receiving at a second staging database external data
associated with the multiple individuals including one or more of
biometric data and pharmacy data;
accessing by a conditional processing engine of the core
server the first and second stage databases and applying by the
conditional processing engine compliance rules for each of the
one more associated health incentive programs to each line of the
filtered medical claims and the one or more biometric data and
pharmacy data to determine if one or more of the multiple
individuals associated therewith has attained one or more
achievement levels of each of the associated health incentive
programs;
if one or more of the multiple individuals has attained the
one or more achievement levels, confirming by the conditional
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processing engine, eligibility of the one or more multiple
individuals in the one more health incentive programs;
generating by the conditional processing engine one of a
new achievement record or an update to an existing achievement
record for each of the one or more multiple individuals if the one
or more multiple individuals have attained the one or more
achievement levels; and
making the achievement records available for processing
by a reward generation component.
REJECTION
Claims 1—6 are rejected under 35 U.S.C. § 101 as directed to non-
statutory subject matter.
ANALYSIS
In 2014, the Supreme Court decided Alice Corp. Pty. Ltd. v. CLS Bank
Int’l, 134 S. Ct. 2347 (2014). Alice applies a two-step framework, earlier set
out in Mayo Collaborative Servs. v. Prometheus Labs., 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, 134 S. Ct. at 2355.
Under the two-step framework, it must first be determined if “the
claims at issue are directed to a patent-ineligible concept.” Id. If the claims
are determined to be directed to a patent-ineligible concept, then the second
step of the framework is applied to determine if “the elements of the
claim . . . contain[] an ‘inventive concept’ sufficient to ‘transform’ the
claimed abstract idea into a patent-eligible application.” Id. at 2357 (citing
Mayo, 566 U.S. at 72-73, 79).
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Application 14/049,874
With regard to step one of the Alice framework, the Examiner
determines that “claims [ 1—6] are directed towards determining compliance
with a health incentive program.” (Final Action 3.) The Examiner further
determines that “[determining compliance with a health incentive program
is a fundamental economic practice” and thus, that the claims are directed to
an abstract idea. (Id. at 3^4; see also Answer 2.)
Appellants argue that “in order to maintain the present rejection, the
Office must first determine, for each claim independently, not merely that
the claims are ‘drawn’ to an abstract idea, but that the claims are ‘directed’
to an abstract idea.” (Appeal Br. 8.) Appellants further argue that “the
Examiner’s summary interpretation of the claims as simply ‘determining
compliance with a health incentive program’ ... is itself an abstraction and
gross over-simplification which ignores the actual language of the claims
. . . .” (Id. at 8-9.)
Under step one of the Alice framework, we “look at the ‘focus of the
claimed advance over the prior art’ to determine if the claim’s ‘character as a
whole’ is directed to excluded subject matter.” Affinity Labs of Texas, LLC
v. DIRECTV, LLC, 838 F.3d 1253, 1257 (Fed. Cir. 2016) (quoting Elec.
Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1353 (Fed. Cir. 2016)).
Thus, although we consider the claim as a whole, the “directed to” inquiry
focuses on the claim’s “character as a whole.”
The Specification provides evidence as to what the invention is
directed. In this case, the Specification discloses that the invention is
“directed to implementation of health-related compliance programs
instituted by payers or related entities.” (Spec. 12.) Claim 1 recites a
“process for determining compliance with one or more health incentive
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Application 14/049,874
programs comprising: receiving . . . medical claims,” “filtering . . . the
medical claims . . . and comparing the claims data from the filtered medical
claims with one or more requirements,” “storing the filtered medical
claims,” “receiving . . . external data,” “accessing . . . databases and ... to
determine if one or more . . . individuals . . . has attained one or more
achievement levels of each of the associated health incentive programs,” “if
one or more . . . individuals has attained the one or more achievement levels,
confirming . . . eligibility ... in the one more [sic] health incentive
programs,” “generating ... a new achievement record,” “and making the
achievement records available.”
In short, without the processor elements, nothing remains in the claim
but the abstract idea of “determining compliance with a health incentive
program” by receiving data, filtering the data, storing data, comparing the
data, confirming eligibility based on the data, and generating and
outputting/making available data. (See Final Action 3.) As in Alice, we
need not labor to delimit the precise contours of the “abstract idea” category
in this case. It is enough to recognize that there is no meaningful distinction
in the level of abstraction between the concept of “collecting information,
including when limited to particular content (which does not change its
character as information),” “analyzing information by steps people go
through in their minds, or by mathematical algorithms,” and “presenting the
results of abstract processes of collecting and analyzing information, without
more (such as identifying a particular tool for presentation),” Electric Power
Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1353—54 (Fed. Cir. 2016), and the
concept of receiving/collecting medical claim data, comparing/analyzing the
data, and generating and making available/presenting the results.
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Although we describe to what the claims are directed at a different
level of abstraction than the Examiner, we note that “[a]n abstract idea can
generally be described at different levels of abstraction.” Apple, Inc. v.
Ameranth, Inc., 842 F.3d 1229, 1240 (Fed. Cir. 2016). However, that need
not and, in this case does not, “impact the patentability analysis.” See id.
at 1241.
Appellants further argue that “[c]laim 1 is not ‘directed’ to ‘concepts
relating to the economy and commerce, such as agreements between people
in the form of contracts, legal obligations, and business relations.’” (Appeal
Br. 11.) We disagree. As discussed above, the claimed invention is
“directed to implementation of health-related compliance programs
instituted by payers or related entities.” (Spec. 12.) This is clearly a
business relation. (See Answer 8.)
We are not persuaded that the Examiner erred in determining that the
claims are directed to the abstract idea of “determining compliance with a
health incentive program.” (See Final Action 3.)
Appellants further argue that “the Office has not met its initial burden
of presenting a prima facie case.” (Appeal Br. 13.) We disagree.
[T]he PTO carries its procedural burden of establishing a prima
facie case when its rejection satisfies 35 U.S.C. § 132, in
“notifying] 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).
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In re Jung, 637 F.3d 1356, 1362 (Fed. Cir. 2011). Here, the Examiner
analyzed the claims using the Alice framework and clearly articulated why
the claims are directed to an abstract idea. (See Final Action 3^4; see also
Answer 5—10.)
Appellants further argue “that the claims at issue do not attempt to
preempt every application of the idea of ‘determining compliance with a
health incentive program. (Appeal Br. 14.) We are not persuaded of error.
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 that
the claim covers significantly less. See Mayo 132 S. Ct. at 1294
[566 U.S. at 72-73],
CLS Bank Inti v. Alice Corp. Pty. Ltd., 717 F.3d 1269, 1281 (Fed. Cir.
2013) (Lourie, J., concurring), affd, 134 S. Ct. 2347 (2014). Moreover,
“[w]here 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.” Ariosa
Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015).
In other words, “preemption may signal patent ineligible subject matter,
[but] the absence of complete preemption does not demonstrate patent
eligibility.” Id.
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Step two of the Alice framework has been described “as a 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.’” Alice, 134 S. Ct.
at 2355 (citing Mayo, 566 U.S. at 72—73).
The introduction of a computer or processor into the claim does not
alter the analysis in step two.
[T]he mere recitation of a generic computer cannot transform a
patent-ineligible abstract idea into a patent-eligible invention.
Stating an abstract idea “while adding the words ‘apply if ” is
not enough for patent eligibility. Nor is limiting the use of an
abstract idea “ ‘to a particular technological environment.’ ”
Stating an abstract idea while adding the words “apply it with a
computer” simply combines those two steps, with the same
deficient result. Thus, if a patent’s recitation of a computer
amounts to a mere instruction to “implemen[t]” an abstract idea
“on ... a computer,” that addition cannot impart patent
eligibility. This conclusion accords with the preemption concern
that undergirds our § 101 jurisprudence. Given the ubiquity of
computers, wholly generic computer implementation is not
generally the sort of “additional featur[e]” that provides any
“practical assurance that the process is more than a drafting effort
designed to monopolize the [abstract idea] itself.”
Id. at 2358 (citations omitted).
“[T]he relevant question is whether the claims here do more than
simply instruct the practitioner to implement the abstract idea ... on a
generic computer.” Id. at 2359. They do not. (See Answer 6.) Although
Appellants argue that “the elements of the claims recite an inventive concept
that transforms the proposed ‘abstract idea’ of ‘determining compliance with
a health incentive program’ into a patent-eligible invention” (Appeal Br. 14),
and that “[t]he present claims require specific combinations of elements to
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Application 14/049,874
automatically organize, filter and process disparate data from various
sources,” {id. at 13), we are not persuaded of reversible error. “These claims
in substance [are] directed to nothing more than the performance of an
abstract business practice . . . using a conventional computer. Such claims
are not patent-eligible.” DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d
1245, 1256 (Fed. Cir. 2014).
Moreover, taking the claim elements separately, the function
performed by the computer at each step is purely conventional.
Receiving/collecting (medical claim) data, comparing/analyzing the data,
and generating and making available/presenting the results are basic
computer functions. Additionally, the Specification discloses that the
invention can be implemented using generic computer components. {See,
e.g., Spec. 131.) In short, each step does no more than require a generic
computer to perform generic computer functions.
Considered as an ordered combination, the computer components of
Appellants’ method add nothing that is not already present when the steps
are considered separately. The claims do not, for example, purport to
improve the functioning of the processor itself. Nor do they effect an
improvement in any other technology or technical field. Instead, the claims
at issue amount to nothing significantly more than an instruction to apply the
abstract idea of determining compliance with a health incentive program
using generic computer components. That is not enough to transform an
abstract idea into a patent-eligible invention. Alice, 134 S. Ct. at 2360.
With regard to dependent claims 2—6, Appellants argue that “[t]he
element of [each] dependent claim ... is not addressed by the Office.
Accordingly, the Appellant [sic] submits that the Office couldn’t possibly
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have met its initial burden of establishing a rebuttable prima facie case of
unpatentability.” (Appeal Br. 15.) We are not persuaded of error. The
Examiner determines, for the reasons discussed above, that claims 1—6 do
not recite patent-eligible subject matter. (See Appeal Br. 3^4; see also
Answer 5—10.) Appellants do not persuasively argue why the additional
element(s) of claims 2—6 demonstrate error in the Examiner’s reasoning.
In view of the above, we are not persuaded that the Examiner erred in
rejecting claims 1—6.
DECISION
The Examiner’s rejection of claims 1—6 under 35 U.S.C. § 101 is
affirmed.
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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