Ex Parte Revak et al

Patent Trial and Appeal Board

Dec 20, 2018

12173519 (P.T.A.B. Dec. 20, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/173,519 07/15/2008
46169 7590 12/25/2018
SHOOK, HARDY & BACON L.L.P.
(Cerner Corporation)
Intellectual Property Department
2555 GRAND BOULEVARD
KANSAS CITY, MO 64108-2613
FIRST NAMED INVENTOR
Nicholas R. Revak
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.
CRNI.224484 6953
EXAMINER
PAULS, JOHN A
ART UNIT PAPER NUMBER
3626
NOTIFICATION DATE DELIVERY MODE
12/25/2018 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):
IPDOCKET@SHB.COM
IPRCDKT@SHB.COM
BPARKERSON@SHB.COM
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte NICHOLAS R. REVAK and DANIEL P. O'SHEA
Appeal2017-008240
Application 12/173 ,519 1
Technology Center 3600
Before NINA L. MEDLOCK, PHILIP J. HOFFMANN, and
BRUCE T. WIEDER, Administrative Patent Judges.
WIEDER, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134 from the
Examiner's final rejection of claims 1-13 and 15. We have jurisdiction
under 35 U.S.C. § 6(b ).
We AFFIRM.
CLAIMED SUBJECT MATTER
Appellants' invention relates to a system and method "for acquiring
medical insurance coverage information associating medical insurance
coverage identifiers with corresponding patient identifiers for use in claim
1 According to Appellants, the real party in interest is Cemer Innovation,
Inc. (Appeal Br. 3.)
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Application 12/173,519
generation and reimbursement in a hospital information system." (Spec. 1,
11. 10-13.)
Claims 1, 8, and 15 are the independent claims on appeal. Claim 15 is
illustrative. It recites:
15. A method for acqmnng patient medical insurance
coverage identification data for use in medical reimbursement
claim generation, comprising the activities of:
employing at least one processing device for,
communicating a patient insurance eligibility inquiry
identifying payer organizations in association with respective
individual patient records, to an intermediary organization that
converts inquiries concerning patient insurance eligibility from a
first data format to a different data format for forwarding to payer
organizations and converts responses from said payer
organizations from the different data format to the first data
format for return to requesting organizations;
acquiring medical msurance coverage information
associating medical msurance coverage identifiers with
corresponding patient identifiers for a plurality of different
patients in response to a communicated patient insurance
eligibility inquiry;
initiating generation of data representing a single display
image, in a human readable format, for presenting a medical
insurance coverage identifier acquired from said intermediary
organization and corresponding patient identifier and enabling a
user to initiate automatic storage of said medical insurance
coverage identifier in a record associated with said patient
identifier in a healthcare information system without having to
transcribe the medical insurance coverage identifier; and
initiating communication of said medical insurance
coverage identifier for storage in said record associated with said
patient identifier in a healthcare information system in response
to a command received using an executable operation, wherein
the executable operation is initiated through user selection of said
at least one display image.
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REJECTION
Claims 1-13 and 15 are rejected under 35 U.S.C. § 101 as directed to
a judicial exception without significantly more.
ANALYSIS
"Whoever 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." 35 U.S.C. § 101. Section 101, however,
"contains an important implicit exception: Laws of nature, natural
phenomena, and abstract ideas are not patentable." Alice Corp. Pty. Ltd. v.
CLS Bankint'l, 134 S. Ct. 2347, 2354 (2014) (quotingAss'nfor Molecular
Pathology v. Myriad Genetics, Inc., 569 U.S. 576, 589 (2013)).
Alice applies a two-step framework, earlier set out 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, 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, e.g., an abstract
idea, 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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With regard to step one of the Alice framework, the Examiner
determines that claim 15 is representative of the claims on appeal
( Answer 3 ), and that claim 15 is directed to the abstract idea of "processing
information through a clearinghouse ... (i.e. sending an insurance eligibility
inquiry to an intermediary organization, [ and] responding to the inquiry with
medical insurance coverage information)" (Id. at 6, emphasis omitted; see
also id. at 4--5).
Appellants disagree and argue that the "rejection is improper, as the
Office suggests that the claims include multiple, unrelated, abstract ideas
and that there is no judicial precedent for this form of analysis." (Reply
Br. 5.)
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)).
The Specification provides evidence as to what the claimed invention
is directed. In this case, the Specification discloses that the invention relates
to a system and method "for acquiring medical insurance coverage
information associating medical insurance coverage identifiers with
corresponding patient identifiers .... " (Spec. 1, 11. 10-12.) Claim 15
provides further evidence. Claim 15 recites "[a] method for acquiring
patient medical insurance coverage identification data ... comprising:
communicating a patient insurance eligibility inquiry ... to an intermediary
organization that converts inquires ... to a different format," "acquiring
medical insurance coverage information," "initiating generation of data
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representing a single display image ... and enabling a user to initiate
automatic storage of said medical insurance coverage identifier," "and
initiating communication of said medical insurance identifier for storage."
In other words, information is transmitted ( and may be reformatted),
additional information is collected, information is prepared for display, a
user is enabled to store information, and information is transmitted.
"[W]e have treated collecting information, including when limited to
particular content (which does not change its character as information), as
within the realm of abstract ideas." Elec. Power Grp., 830 F.3d at 1353. "In
a similar vein, we have treated analyzing information by steps people go
through in their minds, or by mathematical algorithms, without more, as
essentially mental processes within the abstract-idea category." Id. at 1354.
Indeed, the steps recited in claim 15 could be performed by persons using a
pencil and paper, or with ordinary mental steps. See id. at 1355. "And we
have recognized that merely presenting the results of abstract processes of
collecting and analyzing [or reformatting] information, without more (such
as identifying a particular tool for presentation), is abstract as an ancillary
part of such collection and analysis." Id. at 1354. "Here, the claims are
clearly focused on the combination of those abstract-idea processes." Id.;
see also FairWarning IP, LLC v. Iatric Sys., Inc., 839 F.3d 1089, 1096-97
(Fed. Cir. 2016) ("FairWaming contends that its system allowed for the
compilation and combination of ... disparate information sources and that
the patented method 'made it possible to generate a full picture of a user's
activity, identity, frequency of activity, and the like in a computer
environment.' . . . As we have explained, 'merely selecting information, by
content or source, for collection, analysis, and [announcement] does nothing
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significant to differentiate a process from ordinary mental processes, whose
implicit exclusion from § 101 undergirds the information-based category of
abstract ideas.' Elec. Power, 830 F.3d at 1355." (alteration in original,
internal citation omitted)); Content Extraction and Transmission LLC v.
Wells Fargo Bank, Nat'! Ass 'n, 776 F.3d 1343, 1347 (Fed. Cir. 2014)
( determining claims directed to collecting, recognizing, and storing data in a
computer memory to be directed to an abstract idea).
Although we and the Examiner describe, at different levels of
abstraction, to what the claims are directed, it is recognized 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). That
need not and, in this case does not, "impact the patentability analysis." See
id. at 1241.
With regard to Appellants' argument that "there is no judicial
precedent" for determining that claims directed to more than one abstract
idea are not directed to a judicial exception under step one of the Alice
framework, (see Reply Br. 5), we do not find this argument persuasive of
error. The focus of the analysis is on the claim as a whole. RecogniCorp,
LLC v. Nintendo Co., 855 F.3d 1322, 1327 (Fed. Cir. 2017). A claim may
incorporate multiple abstract ideas but that "does not render the claim non-
abstract." Id.
Moreover, the limitations of claim 15 do not recite implementation
details. Instead, they recite functional results to be achieved. In other
words, claim 15 does not recite "a particular way of programming or
designing the software ... , but instead merely claim[ s] the resulting
[method]." Apple, Inc., 842 F.3d at 1241. "Indeed, the claim language here
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provides only a result-oriented solution, with insufficient detail for how a
computer accomplishes it. Our law demands more." Intellectual Ventures I
LLC v. Capital One Fin. Corp., 850 F.3d 1332, 1342 (Fed. Cir. 2017).
In view of the above, we agree with the Examiner that claim 15 is
directed to an abstract idea.
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 Examiner determines:
The claims do not include additional elements that are
sufficient to amount to significantly more than the judicial
exception because the additional elements or combination of
elements in the claims, other than the abstract idea per se, amount
to no more than a recitation of A) generic computer structure that
serves to perform generic computer functions that serve to
merely link the abstract idea to a particular technological
environment ... ; and B) functions that are well-understood,
routine, and conventional activities previously known to the
pertinent industry . . . and which are performed in a purely
conventional manner.
(Answer 5.)
Appellants disagree and seek to analogize the claims to those in
BASCOM Global Internet Services, Inc. v. AT&T Mobility LLC, 827 F.3d
1341 (Fed. Cir. 2016). (Reply Br. 12-15.) Specifically, Appellants argue
that, in BASCOM, "[t]he claimed method was directed to the inventive
solution to the problem, 'the installation of a filtering tool at a specific
location, remote from the end-users, with customizable filtering features
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specific to each end user."' (Id. at 14, citing BASCOM, 827 F.3d at 1350.)
Appellants further argue that "[ s ]imilarly, the present claims address an issue
relating to data transferred over a network. Rather than an issue of filtering
internet content, the issue in the present invention is the compatibility of
insurance data between healthcare providers and payer organizations." (Id.)
In BASCOM, the court determined that "an inventive concept can be
found in the non-conventional and non-generic arrangement of known,
conventional pieces." BASCOM, 827 F.3d at 1350. Specifically, "[t]he
inventive concept described and claimed in the '606 patent is the installation
of a filtering tool at a specific location, remote from the end-users, with
customizable filtering features specific to each end user." Id. at 1350.
"BASCOM explains that the inventive concept rests on taking advantage of
the ability of at least some ISPs to identify individual accounts that
communicate with the ISP server, and to associate a request for Internet
content with a specific individual account." (Id.) "According to BASCOM,
the inventive concept harnesses this technical feature ... by associating
individual accounts with their own filtering scheme and elements while
locating the filtering system on an ISP server." (Id.)
Here, Appellants do not persuasively argue or cite to support in the
Specification explaining why "the compatibility of insurance data between
healthcare providers and payer organizations" is not simply an improvement
to a business method regarding providing information from one organization
to another. (See Reply Br. 14.) Moreover, as discussed above, the claims
recite the functional results to be achieved rather than implementation
details. Thus, "these claims in substance [are] directed to nothing more than
the performance of an abstract business practice ... using a conventional
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computer. Such claims are not patent-eligible." DDR Holdings, LLC v.
Hotels.com, L.P., 773 F.3d 1245, 1256 (Fed. Cir. 2014). Indeed, as noted
above, claim 15 could be performed by persons using a pencil and paper.
Thus, unlike the claimed invention in BASCOM, we do not agree that
Appellants' claimed invention provides a solution to a technological
problem. The claims do not, for example, purport to improve the
functioning of the processing device itself. Nor do they effect an
improvement in any other technology or technical field. The claims do not
even recite a network. In short, the claims amount to nothing significantly
more than an instruction to apply the abstract idea using some unspecified,
generic processing device. (See Final Action 5; see also Spec. 6, 11. 27-29.)
That is not enough to transform an abstract idea into a patent-eligible
invention. See Alice, 134 S. Ct. at 2360.
Appellants further argue that the claim elements reciting converting
inquires to a different format, generating data representing a display image,
enabling a user to automatically store the medical insurance identifier, and
communicating the identifier for storage, provide an inventive concept under
step two of the Alice framework. (Reply Br. 16-17.) We disagree. "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). Appellants also
argue that these steps are not routine and conventional. (Reply Br. 16-17.)
However, these steps are broadly recited and Appellants do not persuasively
argue why the Examiner erred in finding that
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the courts have recognized the following computer functions to
be well-understood, routine and conventional functions when
they are claimed in a merely generic manner: performing
repetitive calculations (Flook); receiving, processing and storing
data (Alice); electronically scanning or extracting data ( Content
Extraction); electronic recordkeeping (Alice); automating mental
tasks (Benson); receiving or transmitting data over a network
(Ultramercial).
(Answer 7; see also Elec. Power Grp., 830 F.3d at 1356) (The claims "do
not include any requirement for performing the claimed functions of
gathering, analyzing, and displaying in real time by use of anything but
entirely conventional, generic technology. The claims therefore do not state
an arguably inventive concept .... ").
Appellants further argue that "[ t ]he Office has failed to produce a
prima facie rejection." (Reply Br. 5, emphasis omitted.) We disagree.
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." In re Jung, 637 F.3d 1356,
1362 (Fed. Cir. 2011) (brackets in original, quoting 35 U.S.C. § 132(a)).
Particularly in view of Appellants' response to the Examiner's stated reasons
for the rejection, we do not agree that the Examiner did not notify
Appellants of the reasons for the rejection.
Appellants also argue that "the individual claim elements of
independent claims 1, 8, and 14 were not reviewed for inventive concepts,
nor were the claim elements of dependent claims 2-7 or 8-13." (Reply
Br. 15.) As an initial matter, we note that claim 14 is not pending and thus,
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is not appealed. (See Final Action 1.) Additionally, we note that the
Examiner determined that "[ c ]laims 1 and 8 recite similar features" to those
in claim 15, and that "[t]he dependent claims merely provide additional
details about the type of intermediary, the database, display processing and
additional workflow tasks." (Id. at 2, emphasis omitted.) In view of the
above discussion of claim 15, and the Examiner's determinations regarding
independent claims 1 and 8, and the dependent claims, we do not find
Appellants' argument persuasive of error.
DECISION
The Examiner's rejection of claims 1-13 and 15 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). See 37 C.F.R.
§ 1.136(a)(l )(iv).
AFFIRMED
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