Ex Parte O et al

Patent Trial and Appeal Board

Aug 31, 2016

13311918 (P.T.A.B. Aug. 31, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/311,918 12/06/2011
27305 7590 09/02/2016
HOW ARD & HOW ARD ATTORNEYS PLLC
450 West Fourth Street
Royal Oak, MI 48067
FIRST NAMED INVENTOR
Joseph J. O'Connor
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.
068061.00013 9837
EXAMINER
GILLIGAN, CHRISTOPHER L
ART UNIT PAPER NUMBER
3626
NOTIFICATION DATE DELIVERY MODE
09/02/2016 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):
IPDocket@HowardandHoward.com
dtrost@HowardandHoward.com
tmorris@Howardandhoward.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JOSEPH J. O'CONNOR, PA TRICK FRENZEL, and
RICHARD H. MAY
Appeal2014-007217 1
Application 13/311,9182
Technology Center 3600
Before JOSEPH A. FISCHETTI, NINA L. MEDLOCK, and
JAMES A. WORTH, Administrative Patent Judges.
WORTH, 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 1-20. We have jurisdiction under 35 U.S.C. §§ 134
and 6(b).
We AFFIRM.
1 Our decision refers to the Appellants' Appeal Brief ("Appeal Br.," filed
Feb. 18, 2014) and Reply Brief ("Reply Br.," filed June 10, 2014), and the
Examiner's Final Office Action ("Final Act.," mailed June 12, 2013) and
Answer ("Ans.," mailed Apr. 10, 2014).
2 According to Appellants, the real party in interest is Kalpa Systems, Inc.
(Appeal Br. 1 ).
Appeal2014-007217
Application 13/311,918
Introduction
Appellants' disclosure relates to "a system for managing consumer
data and more specifically to a system for measuring composite consumer
experiences utilizing billing transaction data" (Spec. i-f 1 ). In particular, the
Specification relates to "a service system of managing consumer data
relating to services performed for a plurality of healthcare consumers by a
plurality of hospitals or healthcare providers" (Spec. i-f 4).
Claims 1, 16, and 20 are the independent claims on appeal. Claim 1,
reproduced below, is illustrative of the subject matter on appeal:
1. A service system for managing consumer data
relating to services performed by a plurality of healthcare
providers for a plurality of healthcare consumers, said system
compnsmg:
a computer network;
an insurer computer system in communication via
the computer network with a plurality of healthcare provider
computer systems of a plurality of healthcare providers wherein
the insurer computer system is configured to generate claims
information relating to the services performed by the healthcare
providers wherein the claims information comprises healthcare
consumer data wherein the healthcare consumer data comprises
procedural codes and a unique identifier for each of a plurality
of healthcare consumers wherein the procedural codes are
received from the plurality of healthcare provider computer
systems;
a survey mechanism for receiving assessments from
the healthcare consumers regarding the services received from
the healthcare providers;
a filtering mechanism in communication with said
insurer computer system and configured to organize and filter
said claims information according to predetermined criteria for
creating filtered data;
a central system in communication with said
filtering mechanism and said survey mechanism via said
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Application 13/311,918
computer network wherein the central system is configured to
receive and store said filtered data and said assessments
wherein said central system comprises a central database and a
central processor;
wherein the central processor is configured to
analyze said filtered data and said assessments for determining
a satisfaction level for each of the healthcare consumers
regarding the services received from the healthcare providers;
and
wherein said central system creates a transactional
history of the services received by the healthcare consumers
accessible by the healthcare consumers, the healthcare
providers and authorized third parties thereby creating a
centralized database system for assessing quality of services of
the healthcare providers and providing the healthcare providers
with information to prevent unnecessary repeat testing or other
medical procedures of the healthcare consumers.
(Appeal Br., Claims App.)
Rejections on Appeal
The Examiner maintains, and the Appellants appeal, the following
rejections:
1. Claims 1, 3-13, and 15-20 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Hicks (US 2011/0022579 Al, pub.
Jan. 27, 2001) and Hasan (US 2010/0198623 Al, pub. Aug. 5, 2010).
2. Claims 2 and 14 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Hicks, Hasan, and Hoggle (US 2005/0197545 Al,
pub. Sept. 8, 2005).
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Application 13/311,918
ANALYSIS
Independent claim 1
We are unpersuaded by Appellants' argument that Hicks fails to
disclose "consumer data," as recited in independent claim 1, i.e.,
wherein the claims information comprises healthcare consumer
data wherein the healthcare consumer data comprises
procedural codes and a unique identifier for each of a plurality
of healthcare consumers
(Appeal Br. 15). The Examiner instead relies on paragraphs 50-52 of Hasan
(Ans. 4--5). Indeed, Hasan (i-f 50) discloses a database with a master patient
index which allows for assignment of a unique identifier for a patient,
containing information from a wide range of medical sources.
We are also unpersuaded by Appellants' argument that Hicks is not
analogous art to the claimed invention because it does not relate to managing
consumer data relating to healthcare services (Appeal Br. 14). A prior art
reference is analogous art to the claimed invention if it is in the same field of
endeavor or is directed to the same problem as the claimed invention. In re
Bigio, 381F.3d1320, 1325-26 (Fed. Cir. 2004). We agree with the
Examiner that both Hicks and Hasan are in the field of computer networked-
based management and exchange of patient healthcare data, and are
accordingly in the same field of invention as the claims on appeal (Ans. 3
(citing Hicks, Abstr. and Hasan, Abstr.)). Indeed, Hicks discloses an
internet-based database with search capabilities for connecting patients with
health-care providers (see Abstr.), and Hasan discloses a computerized
system for storing health records (see Abstr.).
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Application 13/311,918
Next, we are unpersuaded by Appellants' argument that Hicks and
Hasan fail to disclose "an insurer computer system in communication," as
recited in independent claim 1, i.e.,
an insurer computer system in communication via the
computer network with a plurality of healthcare provider
computer systems of a plurality of healthcare providers wherein
the insurer computer system is configured to generate claims
information relating to the services performed by the healthcare
providers wherein the claims information comprises healthcare
consumer data wherein the healthcare consumer data comprises
procedural codes and a unique identifier for each of a plurality
of healthcare consumers wherein the procedural codes are
received from the plurality of healthcare provider computer
systems;
(Appeal Br. 15). We agree with the Examiner that Hasan (i-f 27) discloses an
association with a particular patient ("each received payor claim is
associated with a particular patient ... is considered to be a unique identifier
because it identifies which claim is associated with which patient"
(Answer 6)), and that this disclosure is within the broadest reasonable
interpretation of a "unique identifier," as recited by independent claim 1 (see
Ans. 6). Further, the Examiner correctly finds that Hasan (i-f 93) discloses
compiling a PHR (personal health record) from payor claims data (Ans. 6).
We are further unpersuaded by Appellants' argument that Hicks fails
to disclose the filtering mechanism, as recited in independent claim 1, i.e.,
a filtering mechanism in communication with said insurer
computer system and configured to organize and filter said
claims information according to predetermined criteria for
creating filtered data;
a central system in communication with said filtering
mechanism and said survey mechanism via said computer
network wherein the central system is configured to receive and
store said filtered data and said assessments wherein said
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Application 13/311,918
central system comprises a central database and a central
processor;
(Appeal Br. 15). The Examiner instead relies on Hasan, and correctly finds
that Hasan (i-fi-f 142-145) discloses a system in which patient data may be
filtered and organized based on certain predetermined criteria (Final Act. 5;
Ans. 6). For example, a doctor viewing the information may view
information related to the doctor's specialty (Hasan i-f 145).
To the extent that Appellants are arguing that it would not have been
obvious to combine the teachings of Hicks and Hasan, we agree with the
Examiner that the combination would have utilized known means to yield
predicted results, and that a person of ordinary skill would have readily
looked to the teaching in Hicks of compiling a report in order to process the
consumer information of Hasan (see Ans. 7).
Finally, we are unpersuaded by Appellants' argument that Hicks fails
to disclose a transaction history with a quality report, as recited in
independent claim 1, i.e.,
wherein said central system creates a transactional
history of the services received by the healthcare consumers
accessible by the healthcare consumers, the healthcare
providers and authorized third parties thereby creating a
centralized database system for assessing quality of services of
the healthcare providers and providing the healthcare providers
with information to prevent unnecessary repeat testing or other
medical procedures of the healthcare consumers.
(Appeal Br. 15-16). In particular, Appellants contend that the Examiner
erred in determining that "assessing quality of services" was an intended use
of the data (Appeal Br. 16). However, the Examiner finds that Hicks (i-f 58)
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Application 13/311,918
discloses accessing a quality report. The Examiner, as above, relies on
Hicks in combination with Hasan' s teaching of medical records.
Further, we agree with the Examiner that whether healthcare providers
use the information "to prevent unnecessary repeat testing or other medical
procedures" does not create a patentable distinction over Hicks and Hasan
for two reasons. First, Hasan discloses a user who determines whether a
patient has received a medication before, e.g., in determining whether to
issue a new prescription or a refill (Hasan i-f 150). Second, although it is
permissible, as Appellants do in claim 1, to recite features of a system using
functional language, functional language may not be relied on for
patentability if the prior art discloses or suggests structure capable of
performing the recited function. See In re Schreiber, 128 F.3d 1473,
1478-1479 (Fed. Cir. 1997) (citing In re Swinehart, 439 F.2d 210, 212-213
(CCP A 1971 )). Here, the "transactional history" of "services received"
disclosed by Hasan in paragraph 150 remains the same whether or not a
healthcare provider subsequently uses the information to prevent repeat
testing or procedures (see Ans. 4--5). In other words, the refill information
in Hasan is capable of being used for the claimed intended purpose. We,
therefore, sustain the Examiner's rejection under § 103 of independent
claim 1.
Independent claim 16
We are unpersuaded by Appellants' argument that Hicks fails to
disclose the following limitations recited in independent claim 16, i.e.,
A method of managing consumer data relating to services
performed for a plurality of healthcare consumers by a plurality
of healthcare providers, said method comprising the steps:
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prov10mg a cemranzed database system in
communication with a plurality of insurer computer systems
and said survey mechanism via a computer network for
receiving and storing the survey data and healthcare data
regarding the services performed by the healthcare providers;
receiving from the healthcare providers to the centralized
database system the healthcare data wherein the healthcare data
comprises a unique identifier for each of the healthcare
consumers and a procedural code;
accessing the centralized database system by the
healthcare providers for determining whether a procedure or
test has already been performed on one of the healthcare
consumers; and
(Appeal Br. 16-17). Appellants do not set forth an argument or assertion
with respect thereto with any specificity, and accordingly, Appellants'
argument is waived. See 37 C.F.R. § 41.37(c)(l)(iv). We, therefore, sustain
the Examiner's rejection under § 103 of independent claim 16, on this basis,
and in any event, for similar reasons as for independent claim 1.
Independent claim 20
As with independent claim 16, Appellants refer to multiple limitations
of independent claim 20 but do not set forth any arguments with any
specificity. We, therefore, sustain the Examiner's rejection under§ 103 of
independent claim 20, for similar reasons as for independent claim 16.
Dependent claims 2-15 and 17-19
Appellants do not argue the patentability of claims 2-15 and 17-19
separately from claims 1 and 16, from which they each depend. We,
therefore, sustain the Examiner's rejection of claims 2-15 and 17-19 for the
same reasons as for independent claims 1 and 16.
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Application 13/311,918
DECISION
The Examiner's decision to reject claims 1-20 under 35 U.S.C.
§ 103(a) 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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