Ex Parte Skelly et al

Patent Trial and Appeal Board

Nov 26, 2013

11481305 (P.T.A.B. Nov. 26, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte CHRISTINE SKELLY,
VINCENT YEEHWA SAI,
JOAN M. ROBY,
EDITH B. STEIN, and
JODI I. HILL
____________

Appeal 2011-012589
Application 11/481,305
Technology Center 3600
____________

Before MURRIEL E. CRAWFORD, HUBERT C. LORIN, and
JOHN W. MORRISON, Administrative Patent Judges.

LORIN, Administrative Patent Judge.

DECISION ON APPEAL

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STATEMENT OF THE CASE
Christine Skelly, et al. (Appellants) seek our review under 35 U.S.C. §
134 (2002) of the final rejection of claims 1-32. We have jurisdiction under
35 U.S.C. § 6(b) (2002).

SUMMARY OF DECISION
We AFFIRM.1

THE INVENTION
Claim 1, reproduced below, is illustrative of the subject matter on
appeal.
1. An interactive software tool disposed to generate long-
term health care expense information, comprising:
a browser, executing on a first computer, disposed to
receive input information specifying attributes of a customer,
the attributes including lifestyle attributes, and for transmitting
the input information; and
a server computing system, linked with the first
computer, disposed to receive the input information, for
determining a current annual medical cost for the customer
from the input information, for applying first risk factor to the
current annual medical cost for the customer based on the
attributes of the customer, for applying a cost inflation factor to
an expected cost of medical care for the customer, and for
generating a plurality of outputs relating to a customized health

1 Our decision will make reference to the Appellants’ Appeal Brief (“App.
Br.,” filed Nov. 29, 2010) and Reply Brief (“Reply Br.,” filed Apr. 4, 2011),
and the Examiner’s Answer (“Ans.,” mailed Feb. 4, 2011).
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care expense estimate for the customer, the plurality of outputs
comprising:
a first output corresponding to current lifestyle attributes
of the customer; and
a second output corresponding to one or more proposed
modifications to the lifestyle attributes, the one or more
proposed modifications taken from the group consisting of:
the customer taking action to cease smoking;
the customer taking action to manage a disease;
the customer taking action to increase physical exercise;
and
the customer taking action to reduce alcohol intake.

THE REJECTIONS
The Examiner relies upon the following as evidence of
unpatentability:
Gupta
LaComb
Schoenbaum
Binns

US 2003/0009355 A1
US 2004/0194009 A1
US 2006/0064332 A1
US 7,392,201 B1
Jan. 9, 2003
Sep. 30, 2004
Mar. 23, 2006
Jun. 24, 2008

The following rejections are before us for review:
1. Claims 1-22 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Schoenbaum, Binns, and Gupta.
2. Claims 23-32 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Schoenbaum, Binns, Gupta, and LaComb.

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ISSUE
Did the Examiner err in rejecting the claims on appeal under § 103(a)
over the cited prior art combinations?

FINDINGS OF FACT
We rely on the Examiner’s factual findings stated in the Answer.
Additional findings of fact may appear in the Analysis below.

ANALYSIS
The rejection of claims 1-22 under 35 U.S.C. § 103(a) as being unpatentable
over Schoenbaum, Binns, and Gupta.
The Appellants argued all claims on appeal as a group (App. Br. 3-9).
We select claim 1 as the representative claim and the remaining claims stand
or fall with claim 1. 37 C.F.R. § 41.37(c)(1)(vii) (2011).
Analysis begins with a key legal question - what is the
invention claimed? Courts are required to view the claimed
invention as a whole. 35 U.S.C. § 103. Claim interpretation, in
light of the specification, claim language, other claims, and
prosecution history, is a matter of law and will normally control
the remainder of the decisional process.
Panduit Corp. v. Dennison Mfg. Co., 810 F.2d 1561, 1567-68 (Fed. Cir.
1987).
Claim 1 is directed to an “interactive software tool.” As claimed, it is
drawn to an apparatus comprising two elements: (a) a browser and (b) a
server computing system.
The (a) browser, as claimed, is characterized functionally as
 “[E]xecuting on a first computer;”
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 “[D]isposed to receive input information;” and,
 “[F]or transmitting the input information.”
The Examiner found a browser with these characteristics disclosed in
Schoenbaum (Ans. 3-4) and this finding does not appear to be in dispute.
Claim 1 further defines the input information as “specifying attributes
of a customer, the attributes including lifestyle attributes.” The Specification
states that these “attributes may include demographic data, medical history[,]
and lifestyle factors” (Spec., para. [0010]) and, accordingly, the claim as
reasonably construed in light of the Specification, covers any informational
material that is descriptive in nature of a person’s lifestyle. The Examiner
found Schoenbaum’s browser to be disposed to receive and transmit input
information of that type. See Ans. 4. That finding, too, does not appear to be
in dispute.
The (b) server computing system, as claimed, is also functionally
characterized. It is:
 “linked with the first computer,”
 “disposed to receive the input information,” and,
 for performing certain actions.
Claim 1 lists the certain actions the server is to perform as:
o “for determining a current annual medical cost for the
customer from the input information,”
o “for applying first risk factor to the current annual medical
cost for the customer based on the attributes of the
customer,”
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o “for applying a cost inflation factor to an expected cost of
medical care for the customer,” and
o “for generating a plurality of outputs relating to a
customized health care expense estimate for the customer.”
Regarding the “outputs” that the server is to “generate,” claim 1
defines them (of which there are at least two) in terms of the information
they contain. This is consistent with the Specification which describes the
“outputs” in terms of the descriptive nature of their informational content.
See e.g., para. [0056]: “product suggestion documents.” In describing the
specific type of information the server is to generate, claim 1 states that it
“relat[es] to a customized health care expense estimate for the customer,”
and, with respect to “a first output,” it “correspond[s] to current lifestyle
attributes of the customer;” and, with respect to a “second output,” “[it]
correspond[s] to one or more proposed modifications to the lifestyle
attributes.” Claim 1 further defines the “one or more proposed
modifications” as one of
 “the customer taking action to cease smoking;”
 “the customer taking action to manage a disease;”
 “the customer taking action to increase physical
exercise;” and
 “the customer taking action to reduce alcohol intake.”
Accordingly, as reasonably broadly construed, claim 1 is directed to
an apparatus comprising (a) a browser “executing on a first computer;”
“disposed to receive [a specific type of] input information;” and, “for
transmitting [that] input information” and (b) a server computing system
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“linked with the first computer,” “disposed to receive [that] input
information,” and, for:
 “determining a current annual medical cost for the customer from
the input information,”
 “applying first risk factor to the current annual medical cost for the
customer based on the attributes of the customer,”
 “applying a cost inflation factor to an expected cost of medical
care for the customer,” and
 “generating” at least two different types of specific informational
outputs (including “one or more proposed modifications” to a
customer’s lifestyle) “relating to a customized health care expense
estimate for the customer.”
Having given claim 1 the broadest reasonable construction in light of
the Specification as it would be interpreted by one of ordinary skill in the art,
we now turn to the merits of the rejection.
The Examiner (Ans. 4-5) takes the position that Schoenbaum
discloses a “method and system of calculating future costs using a health
care calculator, where the cost of health care plans is compared;” “Binns
discloses forecasting future costs by applying claim based risk factors to the
forecasting models;” and, “Gupta discloses a system and method for
management of consumer services such as health care services which
combines new financial structure for health insurance and health benefit
plans, payment methods, health plan design, and benefit development
algorithms.” According to the Examiner, it would have been obvious to
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combine these disclosures to reach, as expected, the combination as claimed.
The Appellants disagree, arguing throughout the Brief and
summarized at page 8 that:
[t]he multiple cost estimation feature, where an
additional cost estimation based on the proposed modification
to customer behavior described in claims 1, 11[,] and 21 is not
disclosed or suggested by any of the references singularly or in
combination. The difference between the claimed invention
and the prior art is not only the lack of actual combination, but
also the element of having an additional cost estimation based
on the proposed modifications to customer behavior.
Id. at 8 (emphasis original).
The difficulty with this argument is that claim 1, as we have
reasonably broadly construed it, is not limited so that the apparatus performs
an additional cost estimation based on the proposed modifications to
customer behavior listed in claim 1. The argument is not commensurate in
scope with what is claimed. Claim 1 more broadly requires the server to be
configured to generate at least two different types of specific informational
outputs (including “one or more proposed modifications” to a customer’s
lifestyle) “relating to a customized health care expense estimate for the
customer.” (Emphasis added). There is no limitation to an additional cost
estimation based on the proposed modifications to customer behavior as the
Appellants have argued. Accordingly, the Appellants have not been
persuasive is showing the rejection is in error.
The rejection is sustained.

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The rejection of claims 23-32 under 35 U.S.C. § 103(a) as being
unpatentable over Schoenbaum, Binns, Gupta, and LaComb.
This rejection of dependent claims 23-32 was not separately argued in
the Brief. Accordingly, we sustain this rejection for the reasons discussed
above.

CONCLUSIONS
The rejection of claims 1-22 under 35 U.S.C. § 103(a) as being
unpatentable over Schoenbaum, Binns, and Gupta and the rejection of
claims 23-32 under 35 U.S.C. § 103(a) as being unpatentable over
Schoenbaum, Binns, Gupta, and LaComb are affirmed.

DECISION
The decision of the Examiner to reject claims 1-32 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)(1)(iv).

AFFIRMED

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