Ex Parte Sholem

Board of Patent Appeals and Interferences

Oct 15, 2009

09653384 (B.P.A.I. Oct. 15, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE 1
___________ 2
3
BEFORE THE BOARD OF PATENT APPEALS 4
AND INTERFERENCES 5
___________ 6
7
Ex parte STEVEN L. SHOLEM 8
___________ 9
10
Appeal 2009-000807 11
Application 09/653,384 12
Technology Center 3600 13
___________ 14
15
Decided: October 15, 2009 16
___________ 17
18
Before HUBERT C. LORIN, ANTON W. FETTING, and JOSEPH A. 19
FISCHETTI, Administrative Patent Judges. 20
FETTING, Administrative Patent Judge. 21
DECISION ON APPEAL 22
23
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STATEMENT OF THE CASE 1
Steven L. Sholem (Appellant) seeks review under 35 U.S.C. § 134 2
(2002) of a final rejection of claims 42-51, 53-61, and 63-64, the only claims 3
pending in the application on appeal. 4
We have jurisdiction over the appeal pursuant to 35 U.S.C. § 6(b) 5
(2002). 6
SUMMARY OF DECISION1 7
We REVERSE. 8
THE INVENTION 9
The Appellant invented a method and apparatus for coordinating and 10
tracking medical services and related information, and evaluating managed 11
care organization payment patterns for medical services to reduce medical 12
practitioner losses from unpaid, partial-paid and late-paid services (Specs. 13
2:8-11). 14

1 Our decision will make reference to the Appellant’s Appeal Brief (“App.
Br.,” filed January 9, 2008) and the Examiner’s Answer (“Ans.,” mailed
March 11, 2008), and Final Rejection (“Final Rej.,” mailed September 18,
2007).
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An understanding of the invention can be derived from a reading of 1
exemplary claim 63, which is reproduced below [bracketed matter and some 2
paragraphing added]. 3
63. A medical management system comprising at least one 4
electronic device having: 5
a) a display; 6
b) a memory; and 7
c) a processor operating in accordance with software for: 8
1) receiving an identifier associated with a third party 9
payor (“TPP”) as input; 10
2) accessing data indicative of the historical payment 11
patterns of the TPP to one or more medical service 12
providers from which a net present value of a future 13
payment by the TPP for at least one requested medical 14
service for a patient associated with the TPP may be 15
generated and assigning a rank to a patient's TPP; 16
3) generating an indication of the net present value of the 17
at least one requested medical service prior to providing 18
the medical service, the indication based at least in part 19
upon the historical payment patterns of the TPP to the 20
one or more medical service providers; and 21
4) generating an indication of when the patient is 22
accepted as a new patient based in part on the net present 23
value and the rank assigned to the patient's TPP; 24
5) generating an indication of when the patient's 25
requested appointment should be scheduled based in part 26
on the net present value and the rank assigned to the 27
patient's TPP. 28
29
THE REJECTIONS 30
The Examiner relies upon the following prior art: 31
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Tarter et al. US 5,550,734 Aug. 27, 1996
Conway US 5,732,401 Mar. 24, 1998
Edelson et al. US 5,737,539 Apr. 7, 1998
McCormick US 2002/0035484 A1 Mar. 21, 2002
Jackson US 2002/0055858 A1 May 9, 2002
1
Claims 42-51, 53-57, 60, and 63-64 stand rejected under 35 U.S.C. 2
§ 103(a) as unpatentable over Tarter, Jackson, and Conway. 3
Claims 58-59 stand rejected under 35 U.S.C. § 103(a) as unpatentable 4
over Tarter, Jackson, Conway, and McCormick. 5
Claim 61 stands rejected under 35 U.S.C. § 103(a) as unpatentable over 6
Tarter, Jackson, Conway, and Edelson. 7
ARGUMENTS 8
Claims 42-51, 53-57, 60, and 63-64 rejected under 35 U.S.C. § 103(a) 9
as unpatentable over Tarter, Jackson, and Conway 10
The Appellant argues these claims as a group. 11
Accordingly, we select claim 63 as representative of the group. 12
37 C.F.R. § 41.37(c)(1)(vii) (2008). 13
The Examiner found that Tarter describes all of the limitations of claim 14
63, except for the limitations of a net present value of a future payment by 15
the third party payor (“TPP”) for at least one requested medical service for a 16
patient associated with the TPP may be generated as per limitation (c)(2), 17
generating an indication of the net present value of the at least one requested 18
medical service prior to providing the medical service, as per limitation 19
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(c)(3), and the entirety of limitation (c)(5) (Ans. 3-4). The Examiner found 1
that Jackson describes limitation (c)(3), Conway describes limitation (c)(5), 2
and Tarter suggests limitation (c)(2) (Ans. 4-5). The Examiner further found 3
that a person with ordinary skill in the art would have recognized the 4
benefits increasing predictability, quality, profitability, and generating a 5
more meaningful analysis by implementing these features (Ans. 5). The 6
Examiner found that a person with ordinary skill in the art would have found 7
it obvious to combine Tarter, Jackson, and Conway (Ans. 5). 8
The Appellant contends that (1) Tarter, Jackson, and Conway fail to 9
describe generating an indication of when a patient is accepted as a new 10
patient based in part on the net present value and the rank assigned to the 11
patient’s TPP and generating an indication of when the patient’s request 12
appointment should be scheduled based in part on the net present value and 13
the rank assigned to the patient’s TPP, as per claims 63 and 64 (App. Br. 14-14
15), (2) Tarter, Jackson, and Conway fail to describe wherein the software is 15
configured to generate recommended duration for a primary medical 16
personnel to visit with the patient, the recommended duration being based in 17
part upon the historical payment patterns of the TPP to the one or more 18
medical services, as per claims 54 and 64 (App. Br. 17), and (3) there is no 19
motivation to combine Tarter, Jackson, and Conway without impermissible 20
hindsight, as per claim 54, 63, and 64 (App. Br. 15-19). 21
22
Claims 58-59 rejected under 35 U.S.C. § 103(a) as unpatentable over 23
Tarter, Jackson, Conway, and McCormick 24
The Appellant argues these claims as a group. 25
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Accordingly, we select claim 58 as representative of the group. 1
The Examiner found that Tarter, Jackson, and Conway fail to describe 2
the additional limitations of claim 58 (Ans. 10-11). The Examiner found 3
that McCormick describes these limitations (Ans. 11). The Examiner further 4
found that a person with ordinary skill in the art would have recognized the 5
benefit of providing a wireless connection to note the diagnoses and 6
procedures and for insurance companies to pay the doctors for services 7
rendered (Ans. 11). The Examiner found that a person with ordinary skill in 8
the art would have found it obvious to combine Tarter, Jackson, Conway, 9
and McCormick (Ans. 11). 10
The Appellant asserts that dependant claims 53 and 54 are nonobvious 11
for the same reasons asserted supra in support of claim 63 (App. Br. 19-20). 12
13
Claim 61 rejected under 35 U.S.C. § 103(a) as unpatentable over Tarter, 14
Jackson, Conway, and Edelson 15
The Examiner found that Tarter, Jackson, and Conway fail to describe 16
the electronic device further comprising a biometric identifying device 17
operatively coupled (Ans. 12). The Examiner found that Edelson describes 18
this feature (Ans. 12). The Examiner further found that a person with 19
ordinary skill in the art would have recognized the benefit of increasing 20
security by implementing a biometric identification device (Ans. 12). The 21
Examiner found that a person with ordinary skill in the art would have found 22
it obvious to combine Tarter, Jackson, Conway, and Edelson (Ans. 12). 23
The Appellant asserts that dependent claim 61 is non-obvious for the 24
same reasons asserted supra in support of claim 63 (App. Br. 19-20). 25
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1
ISSUES 2
The pertinent issues to this appeal are: 3
• Whether the Appellant has sustained the burden of showing that the 4
Examiner erred in rejecting claims 42-51, 53-57, 60, and 63-64 under 5
35 U.S.C. § 103(a) as unpatentable over Tarter, Jackson, and Conway. 6
o The pertinent issue turns on Tarter, Jackson, and Conway 7
describe generating an indication of when a patient is accepted 8
as a new patient based in part on the net present value and the 9
rank assigned to the patient’s TPP and generating an indication 10
of when the patient’s request appointment should be scheduled 11
based in part on the net present value and the rank assigned to 12
the patient’s TPP. 13
• Whether the Appellant has sustained the burden of showing that the 14
Examiner erred in rejecting claims 58-59 under 35 U.S.C. § 103(a) as 15
unpatentable over Tarter, Jackson, Conway, and MCormick. 16
o The pertinent issue turns on the Appellant’s arguments for 17
claim 63 is found to be persuasive. 18
• Whether the Appellant has sustained the burden of showing that the 19
Examiner erred in rejecting claim 61 under 35 U.S.C. § 103(a) as 20
unpatentable over Tarter, Jackson, Conway, and Edelson. 21
o The pertinent issue turns on the Appellant’s arguments for 22
claim 63 are found to be persuasive. 23
24
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FACTS PERTINENT TO THE ISSUES 1
The following enumerated Findings of Fact (FF) are believed to be 2
supported by a preponderance of the evidence. 3
Facts Related to the Prior Art 4
Tarter 5
01. Tarter is directed to a computerized method and system for 6
financing health care service providers by evaluating and 7
purchasing their accounts receivables, rating the creditworthiness 8
of payors and obligors, collecting on receivables, securitizing 9
receivables, managing funds, and processing and reconciling 10
claims and payments (Tarter 1:65-67 and 2:1-9). 11
02. In first evaluating a service provider, the system extracts a 12
transaction history of all recent third party payables processed by 13
the subscribing service provider and the provider’s payor and 14
obligor payment histories to determine a creditworthiness (Tarter 15
12:50-59). Based on this extracted information, the system 16
decides which service provider receivables to purchase and 17
determines a pricing for the service provider (Tarter 12:64-67). 18
03. The system creates and maintains an on-line creditworthiness 19
scoring database for payors and obligors (Tarter 13:10-14). The 20
system uses a weighting algorithm that is continuously adapting to 21
newly received data in determining the payor’s and obligor’s 22
ability to pay (Tarter 13:55-60). 23
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04. The system accepts or declines claims based on the 1
creditworthiness of the payor, obligor, and plan (Tarter 38:34-47). 2
Conway 3
05. Conway is directed to a system for tracking the cost of medical 4
procedures by monitoring the movements of personnel, 5
equipment, and/or supplies during a procedure and associating a 6
costs to each movement (Conway 1:4-7), 7
06. The system relates to a specific space, such as a room, where a 8
transponder is attached each person and object to transmit an 9
identification code, which is received by a cost computer that 10
associates an entry, exit, and/or any other costs associated to the 11
person or object (Conway 2:34-45). Costs can be tracked per use, 12
per activity, or both (Conway 2:57-59). 13
07. The system includes a scheduling database that provides 14
information on the schedule of patient care activities for a room 15
(Conway 12:50-64). Each of these activities have an associated 16
cost and the costs of the procedures for each room is maintained 17
(Conway 14:31-48). The cost data is used to determine the cost of 18
the procedure as well as to determine the efficiency of the 19
procedure and caregiver (Conway 14:43-48). 20
Edelson 21
08. Edelson is directed to data management systems used in the 22
production of product specification documents that require 23
detailed product information and history information from 24
multiple extensive information sources (Edelson 1:4-12). 25
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McCormick 1
09. McCormick is directed to a system and method for a physician 2
to generate a medication prescription (McCormick ¶ 0002). 3
Jackson 4
10. Jackson is directed to a method for providing medical services 5
to patients and financing payments to providers of these medical 6
services (Jackson ¶ 0002). 7
Facts Related To The Level Of Skill In The Art 8
11. Neither the Examiner nor the Appellant has addressed the level 9
of ordinary skill in the pertinent art, specifically, medical services 10
optimization systems. We will therefore consider the cited prior 11
art as representative of the level of ordinary skill in the art. See 12
Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) 13
(“[T]he absence of specific findings on the level of skill in the art 14
does not give rise to reversible error ‘where the prior art itself 15
reflects an appropriate level and a need for testimony is not 16
shown’”) (quoting Litton Indus. Prods., Inc. v. Solid State Sys. 17
Corp., 755 F.2d 158, 163 (Fed. Cir. 1985). 18
Facts Related To Secondary Considerations 19
12. There is no evidence on record of secondary considerations of 20
non-obviousness for our consideration. 21
22
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PRINCIPLES OF LAW 1
Obviousness 2
A claimed invention is unpatentable if the differences between it and 3
the prior art are “such that the subject matter as a whole would have been 4
obvious at the time the invention was made to a person having ordinary skill 5
in the art to which said subject matter pertains.’” KSR Int’l Co. v. Teleflex 6
Inc., 550 U.S. 398, 406 (2007); Graham v. John Deere Co., 383 U.S. 1, 13-7
14 (1966). 8
In Graham, the Court held that that the obviousness analysis is 9
bottomed on several basic factual inquiries: “[(1)] the scope and content of 10
the prior art are to be determined; [(2)] differences between the prior art and 11
the claims at issue are to be ascertained; and [(3)] the level of ordinary skill 12
in the pertinent art resolved.” Graham, 383 U.S. at 17. See also KSR, 550 13
U.S. at 406. “The combination of familiar elements according to known 14
methods is likely to be obvious when it does no more than yield predictable 15
results.” Id. at 416. 16
ANALYSIS 17
Claims 42-51, 53-57, 60, and 63-64 rejected under 35 U.S.C. § 103(a) 18
as unpatentable over Tarter, Jackson, and Conway 19
The Appellant first contends that (1) Tarter, Jackson, and Conway fail to 20
describe generating an indication of when a patient is accepted as a new 21
patient based in part on the net present value and the rank assigned to the 22
patient’s TPP and generating an indication of when the patient’s request 23
appointment should be scheduled based in part on the net present value and 24
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the rank assigned to the patient’s TPP, as per claims 63 and 64 (App. Br. 14-1
15). 2
We agree with the Appellant. Tarter describes evaluating the payor’s 3
creditworthiness based on historical payment data (FF 02). Tarter uses a 4
weighted algorithm that determines the payor’s ability to pay (FF 03) and 5
determines whether to accept a claim based on the determined 6
creditworthiness (FF 04). Tarter’s use of creditworthiness is the same as the 7
net present value and rank of the claimed invention. As such, Tarter 8
describes accepting a new patient based in part on the net present value and 9
rank based on the ability to collect payment from the patient. 10
However, the Examiner relies on Conway to describe scheduling a 11
patient’s appointment based in part on the TPP’s net present value and rank, 12
as required by limitation (c)(5). Conway describes associating a cost to the 13
use of personnel, equipment, and supplies involved in a procedure by 14
attaching a transponder to the resource and tacking the resource’s movement 15
(FF 06). Conway uses this collected data to determine the efficiency of 16
procedure and the caregivers involved in the procedure (FF 07). However, 17
Conway fails to describe generating an indication of when the patient’s 18
request appointment should be scheduled based in part on the net present 19
value and the rank assigned to the patient’s TPP. The Examiner argues that 20
Conway describes scheduling the appointment based on the cost of the 21
procedure (Ans. 15). However, Conway only describes a scheduling 22
database that maintains data on the costs of procedures in a room (FF 07) 23
and does not generate any schedule, much less a schedule based in part on 24
the cost of procedures or the TPP’s net value or rank. The Examiner has 25
provided no evidence that one of ordinary skill would use cost in a 26
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scheduling algorithm. As such, the combination of Tarter, Conway, and 1
Jackson fail to describe this limitation of independent claims 63-64. 2
Since we find this argument determinative, we need not reach the 3
remaining arguments. The Appellant has sustained the burden of showing 4
that the Examiner erred in rejecting claims 42-51, 53-57, 60, and 63-64 5
under 35 U.S.C. § 103(a) as unpatentable over Tarter, Jackson, and Conway. 6
7
Claims 58-59 rejected under 35 U.S.C. § 103(a) as unpatentable over 8
Tarter, Jackson, Conway, and McCormick 9
The Appellant asserts that dependant claims 58-59 are nonobvious for 10
the same reasons asserted supra in support of claim 63 (App. Br. 19-20). 11
We agree with the Appellant for the same reasons discussed supra. As such, 12
the Appellant has sustained the burden of showing that the Examiner erred 13
in rejecting claims 58-59 under 35 U.S.C. § 103(a) as unpatentable over 14
Tarter, Jackson, Conway, and McCormick. 15
16
Claim 61 rejected under 35 U.S.C. § 103(a) as unpatentable over Tarter, 17
Jackson, Conway, and Edelson 18
The Appellant asserts that dependant claim 61 is non-obvious for the 19
same reasons asserted supra in support of claim 63 (App. Br. 19-20). We 20
agree with the Appellant for the same reasons discussed supra. As such, the 21
Appellant has sustained the burden of showing that the Examiner erred in 22
rejecting claim 63 under 35 U.S.C. § 103(a) as unpatentable over Tarter, 23
Jackson, Conway, and Edelson. 24
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1
CONCLUSIONS OF LAW 2
The Appellant has sustained the burden of showing that the Examiner 3
erred in rejecting claims 42-51, 53-57, 60, and 63-64 under 35 U.S.C. § 4
103(a) as unpatentable over Tarter, Jackson, and Conway. 5
The Appellant has sustained the burden of showing that the Examiner 6
erred in rejecting claims 58-59 under 35 U.S.C. § 103(a) as unpatentable 7
over Tarter, Jackson, Conway, and McCormick. 8
The Appellant has sustained the burden of showing that the Examiner 9
erred in rejecting claim 61 under 35 U.S.C. § 103(a) as unpatentable over 10
Tarter, Jackson, Conway, and Edelson. 11
12
DECISION 13
To summarize, our decision is as follows. 14
• The rejection of claims 42-51, 53-57, 60, and 63-64 under 35 U.S.C. § 15
103(a) as unpatentable over Tarter, Jackson, and Conway is not 16
sustained. 17
• The rejection of claims 58-59 under 35 U.S.C. § 103(a) as 18
unpatentable over Tarter, Jackson, Conway, and McCormick is not 19
sustained. 20
• The rejection of claim 61 under 35 U.S.C. § 103(a) as unpatentable 21
over Tarter, Jackson, Conway, and Edelson is not sustained. 22
23
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1
No time period for taking any subsequent action in connection with this 2
appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv). 3
4
REVERSED 5
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SCHMEISER OLSEN & WATTS 11
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