Ex Parte Rubenstein

Board of Patent Appeals and Interferences

May 22, 2012

09962931 (B.P.A.I. May. 22, 2012)

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.
09/962,931 09/25/2001 Joel J. Rubenstein 3097.1000-001 7497
21005 7590 05/23/2012
HAMILTON, BROOK, SMITH & REYNOLDS, P.C.
530 VIRGINIA ROAD
P.O. BOX 9133
CONCORD, MA 01742-9133
EXAMINER
RINES, ROBERT D
ART UNIT PAPER NUMBER
3623
MAIL DATE DELIVERY MODE
05/23/2012 PAPER
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.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte JOEL J. RUBENSTEIN
___________

Appeal 2010-011524
Application 09/962,931
Technology Center 3600
____________

Before ANTON W. FETTING, JOSEPH A. FISCHETTI, and
MEREDITH C. PETRAVICK, Administrative Patent Judges.

PETRAVICK, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2010-011524
Application 09/962,931

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STATEMENT OF THE CASE
Joel J. Rubenstein (Appellant) seeks our review under 35 U.S.C. §
134 of the final rejection of claims 1-10 and 16-26. We have jurisdiction
under 35 U.S.C. § 6(b).

SUMMARY OF DECISION
We AFFIRM-IN-PART and enter a new ground of rejection pursuant
to 37 C.F.R. § 41.50(b). 1

THE INVENTION
This invention is “a health insurance system that uses co-payments
that vary inversely with marginal clinical utility.” Spec. 4:15-17.
Claim 1, reproduced below, is illustrative of the subject matter on
appeal.
1. A method for determining a variable medical
co-payment according to marginal clinical
utility, comprising:
processing a set of clinical factors through
use of at least one computing device to
identify a specific clinical condition;
accepting data from at least one medical
source by an independent panel of
physicians, the data describing medical care
alternatives producing marginal differences
in outcome which define respective

1 Our decision will make reference to the Appellant’s Appeal Brief (“App.
Br.,” filed Jul. 20, 2009) and Reply Brief (“Reply Br.,” filed Jul. 28, 2010),
and the Examiner’s Answer (“Ans.,” mailed May 28, 2010).

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Application 09/962,931

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marginal clinical utilities for a patient with
the specific clinical condition; and
through use of at least one computing
device, applying variable co-payments to the
medical care alternatives in an inverse
relationship with the corresponding marginal
clinical utilities.

THE REJECTIONS
The Examiner relies upon the following as evidence of
unpatentability:
Papageorge US 6,584,445 B2 Jun. 24, 2003
EU Drug Pricing: The Implications of Maastricht, Marketletter, April
7, 1997 [Hereinafter “Drug Pricing”.]

The Appellant submitted the following as evidence:

Declaration under 37 C.F.R. 1.131 filed on Feb. 20, 2007 [Hereinafter
“First Declaration”.]

Declaration under 37 C.F.R. 1.131 filed on October 9, 2007
[Hereinafter “First Supplemental Declaration”.]

Declaration under 37 C.F.R. 1.131 filed on June 25, 2008 [Hereinafter
“Second Supplemental Declaration”.]

The following rejections are before us for review:
1. Claims 1-10 and 16-26 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Papageorge and Drug Pricing.
2. Claims 22-26 are rejected under 35 U.S.C. § 101 as being
directed to non-statutory subject matter.
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Application 09/962,931

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ISSUES
The first issue is whether claims 1-10 and 16-26 are unpatentable
under 35 U.S.C. § 103(a) over Papageorge and Drug Pricing. Specifically,
the issue is whether the Appellant has overcome the rejection by establishing
invention of the subject matter of the rejected claims prior to the effective
date of the Papageorge reference.
The second issue whether claims 22-26 are directed to non-statutory
subject matter under 35 U.S.C. § 101.

FINDINGS OF FACT
We find that the findings of fact, which appear in the Analysis below,
are supported by at least a preponderance of the evidence. Ethicon, Inc. v.
Quigg, 849 F.2d 1422, 1427 (Fed. Cir. 1988) (explaining the general
evidentiary standard for proceedings before the Office).

ANALYSIS
The rejection of claims 1-10 and 16-26 under §103(a) as being unpatentable
over Papageorge and Drug Pricing
The Appellant and the Examiner dispute whether the Appellant’s
declarations under 37 C.F.R. § 1.131 establish invention of the subject
matter of the rejected claims prior to the effective date of the Papageorge
reference, which is Oct. 22, 1998. App. Br. 7-11 and Ans. 5-6.
Specifically, the Appellant and the Examiner dispute whether the Appellant
has established prior conception of the invention coupled with due diligence.
Id. We note that the Examiner and the Appellant’s dispute is not directed to
prior conception of the claimed inverse relationship between co-payments
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and marginal utility and the use of an independent panel of physicians to
determine marginal utility. See App. Br. 9 and Ans. 5-6. The dispute is
narrowly focused on whether the Appellant has shown prior conception of
the computer implementation of this aspect of the claims.2 The Examiner
states: “Namely, there is no mention in either of the pieces of evidence of a
computer implemented process for determining and applying variable
medical co-payments based on marginal clinical utility.” Ans. 6.
Initially, we note that the computer implementation of this aspect of
the Appellant’s invention seems to be nothing more than using a computer to
retrieve information (i.e., the marginal utility and co-payment for each
medical care alternative) from databases. See Spec. 5:8-11. The databases,
in a first embodiment are all located on a “desktop PC” (Spec. 10:1-4 and
12:3-11) and, in a second embodiment on various servers distributed across
a network (Spec. 10:20-24 and 12:3-11). The values of the marginal utility
and the co-payment for each medical care alternative are defined by either
an independent panel of physicians or an insurance administrator and
afterwards, entered into the databases. See Spec. 8:11-24, 11:3-7, 11:17-19,
12:17-20 and Fig. 7. The Appellant’s invention does not include a specific
computer that is programmed to calculate or define the co-payments.
Keeping this in mind, we now turn to the subject matter of the
independent claims. Claim 1 recites a step of applying the co-payments
“through use of at least one computing device.” Claim 6 recites “a

2 The Examiner and Appellant’s dispute also seems not to be directed to the
claim limitations regarding a step of or a means for processing a set of
clinical factors to identify a specific clinical condition.
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specification unit” and claim 21 recites a “means for”3 performing this
function. Giving these limitations the broadest reasonable interpretation in
light of the Specification, the subject matter encompassed by these
limitations includes a computing device retrieving the previously defined
marginal utility and co-payment for each medical care alternative.
Given the scope of the subject matter recited in claims 1, 6, and 21,
we are persuaded by the Appellant’s argument on pages 10-11 of the Appeal
Brief that the submitted Declarations establish prior conception of the
subject matter of these rejected claims coupled with due diligence.
We note that claim 16 does not recite a computer or node that applies
the co-payment, but instead recites “a network link” that is capable of
accessing information. Further, we note that claim 22, as the Appellant
points out (App. Br. 9), recites a method that it not computer implemented.
Therefore, we are persuaded by the Appellant’s argument that the
Examiner erred in rejecting claims 1-10 and 16-26 under § 103(a) as being
unpatentable over Papageorge and Drug Pricing, and, accordingly, this
rejection is reversed.

3 The limitation at issue in claim 16 is written in the means-plus-function
format of 35 U.S.C. § 112, sixth paragraph and is, accordingly, construed to
encompass the corresponding structure in the Specification and its
equivalents. We note that the Appellant states that the corresponding
structure is computing device 55 depicted in Figure 6. App. Br. 4-5. The
Specification describes computing device 55 as the computer in the
examining physician’s office (Spec. 10:26-27), that receives the information
from the databases (Spec. 11:26-12:8).
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The rejection of claims 22-26 under 35 U.S.C. § 101 as being directed to
non-statutory subject matter
The Appellant argues that the Examiner erred in rejecting claims 22-
26 as being directed to non-statutory subject matter, because the Examiner
solely applied the machine-or-transformation test in their analysis. Reply
Br. 4.
The Supreme Court has clarified in Bilski that while the machine-or-
transformation test “is not the sole test for deciding whether an invention is a
patent-eligible ‘process' under § 101,” it remains a “useful and important
clue or investigative tool.” Bilski, 130 S.Ct. 3218, 3221 (2010); see also
Mayo Collaborative Servs. v. Prometheus Labs., Inc., 132 S.Ct. 1289, 1296
(2012). Thus, the Examiner appropriately assesses patent eligibility under
the machine-or-transformation test. The Appellant makes no other argument
as to why claims 22-26 are directed to statutory subject matter.
Accordingly, we are not persuaded by the Appellant’s argument that
the Examiner erred in rejecting claims 22-26 under 35 U.S.C. § 101 as being
directed to non-statutory subject matter.

NEW GROUND OF REJECTION
Pursuant to our authority under 37 C.F.R. § 41.50(b) we enter a new
ground of rejection of claims 1, 2, 4, and 5 under 35 U.S.C. § 101 as being
directed to non-statutory subject matter. We take claim 1 as representative.
Claim 1 nominally recites a process – one of the four statutory
categories of subject matter under 35 U.S.C. § 101. However, Supreme
Court precedents “provide three specific exceptions to § 101's broad patent-
eligibility principles: ‘laws of nature, physical phenomena, and abstract
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ideas.”’ Bilski v. Kappos, 130 S.Ct. at 3225 (quoting Diamond v.
Chakrabarty, 447 U.S. 303, 309 (1980)). In Bilski, the Court reasoned that
the claims at issue there merely explained the basic concept of hedging,
which was “an unpatentable abstract idea, just like the algorithms at issue in
Benson and Flook.” Bilski, 130 S.Ct. at 3231. The Supreme Court has
clarified in Bilski that while the machine-or-transformation test “is not the
sole test for deciding whether an invention is a patent-eligible ‘process'
under § 101,” it remains a “useful and important clue or investigative tool.”
Bilski, 130 S.Ct. at 3221.
Claim 1 encompasses the abstract idea of applying variable co-
payment to medical care alternatives in an inverse relationship with
corresponding marginal clinical utilities for a specific clinical condition
identified by processing a set of clinical factors. We note that claim 1
contains no recitations of a particular transformation and that while claim 1
recites that the processing and applying steps happen “through use of at least
one computing device” this recitation suggests at best a nominal use of a
machine and imposes no meaningful limits on the scope of the claim.
“[T]he prohibition against patenting abstract ideas ‘cannot be circumvented
by attempting to limit the use of the invention to a particular technological
environment’ or adding ‘insignificant post solution activity.”’ Bilski , 130 S.
Ct. at 3230 (quoting Diamond v. Diehr, 450 U.S. 175, 191-92 (1981)).

DECISION
The decision of the Examiner to reject claims 1-10 and 16-21 is
reversed and to reject claims 22-26 is affirmed. We enter a new ground of
rejection of claims 1, 2, 4 and 5.
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Application 09/962,931

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This decision contains a new ground of rejection pursuant to 37
C.F.R. § 41.50(b) (effective September 13, 2004, 69 Fed. Reg. 49960
(August 12, 2004), 1286 Off. Gaz. Pat. Office 21 (September 7, 2004)). 37
C.F.R. § 41.50(b) provides “[a] new ground of rejection pursuant to this
paragraph shall not be considered final for judicial review.” 37 C.F.R. §
41.50(b) also provides that the Appellant, WITHIN TWO MONTHS FROM
THE DATE OF THE DECISION, must exercise one of the following two
options with respect to the new ground of rejection to avoid termination of
the appeal as to the rejected claims:
• (1) Reopen prosecution. Submit an appropriate amendment of the
claims so rejected or new evidence relating to the claims so rejected, or both,
and have the matter reconsidered by the examiner, in which even0.t the
proceeding will be remanded to the examiner ….
• (2) Request rehearing. Request that the proceeding be reheard under
§ 41.52 by the Board upon the same record ….

AFFIRMED-IN-PART; 37 CFR § 41.50(b)

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