Ex Parte Welch

Patent Trial and Appeal Board

Jul 29, 2016

12796115 (P.T.A.B. Jul. 29, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
121796,115 06/08/2010
27148 7590 08/02/2016
POLSINELLI PC
900 WEST 48TH PLACE
SUITE 900
KANSAS CITY, MO 64112-1895
FIRST NAMED INVENTOR
Charles D. Welch JR.
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.
DIGOll-414324 2222
EXAMINER
DETWEILER, JAMES M
ART UNIT PAPER NUMBER
3621
NOTIFICATION DATE DELIVERY MODE
08/02/2016 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):
uspt@polsinelli.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte CHARLES D. WELCH, JR.
Appeal2014-005922
Application 12/796, 115 1
Technology Center 3600
Before ANTON W. PETTING, SHEILA F. McSHANE, and
ROBERT J. SILVERMAN, Administrative Patent Judges.
McSHANE, Administrative Patent Judge.
DECISION ON APPEAL
The Appellant seeks our review under 35 U.S.C. § 134(a) of the
Examiner's decision to reject claims 1, 3---6, 8-10, 12-15, 17-19, 21-23, and
27. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
1 According to the Appellant, the real party in interest is Routesync, LLC.
Appeal Brief filed December 19, 2013, hereafter "App. Br.," 3.
Appeal2014-005922
Application 12/796,115
BACKGROlH-.JD
The invention relates to dispensing coupons in response to a purchase
request from a consumer. Specification, hereafter "Spec.," Abstract. A
purchase request may include the purchase data, that is, the identification of
the requested item, as well as benefit data, that includes the identification of
the benefit provider system and a benefit plan. Spec. i-f 8. The system
includes modules that are used to determine an amount of payment due,
based on, for instance, benefit amount, the discount amount specified by the
corresponding coupon data, and a purchase cost for the requested item. Id.
Representative claim 1 is reproduced from pages i and ii of the Claims
Appendix of the Appeal Brief (Claims App.) as follows, with emphasis
added to relevant claim limitations:
1. A non-transitory computer readable media encoded with an
application comprising modules executable by a processor and
configured to dispense coupons in response to a purchase request
received from a computing device, the application comprising:
a query module to:
receive the purchase request, the purchase request
comprising at least one of a benefit data and a purchase data, the
benefit data identifying at least one benefit provider system and
at least one corresponding benefit plan, and the purchase data
identifying a requested item;
generate a query to search a plurality of coupon records
stored in a coupon database, wherein each of the plurality of
coupon records comprise coupon data identifying a coupon, a
corresponding coupon identification code, a corresponding
discount amount, and corresponding eligible items; and
compare the requested item to the coupon data comprised
in each of the coupon records to identify a particular coupon as
available for the purchase request;
a storage module to:
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Application 12/796,115
receive a coupon response compnsmg corresponding
coupon data for the particular coupon; and
store the corresponding coupon data and the purchase data
m a memory;
a benefit determination module to:
determine whether the purchase request compnses the
benefit data;
generate a first validation request and a second validation
request when the [sic.] the benefit data identifies a first benefit
plan and a second benefit plan, the first validation request
identifying the first benefit plan, and the second validation
request identifying the second benefit plan;
submit the first validation request to a first benefit provider
system to illicit a first validation response, the first validation
response specifying a first benefit amount for the first benefit
plan; and
submit the second validation request to a second benefit
provider system to illicit a second validation response, the second
validation response specifying a second benefit amount for the
second benefit plan;
a payment calculation module to:
determine a consolidated benefit amount based on the first
benefit amount and the second benefit amount;
determine an adjusted discount amount when the
corresponding discount exceeds the consolidated benefit
amount;
calculate an amount of payment due for the requested item
based on the consolidated benefit amount, the corresponding
discount amount specified by the corresponding coupon data,
and a purchase cost for the requested item when the
corresponding discount does not exceed the consolidated benefit
amount; and
calculate the amount of payment due for the requested
item based on the consolidated benefit amount, the adjusted
discount amount, and a purchase cost for the requested item
when the corresponding discount exceeds the consolidated
benefit amount;
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Application 12/796,115
a coupon generation module to transmit a payment due
notification to the computing device, the payment due
notification comprising the amount of payment due.
In a Final Rejection, the Examiner rejects claims 1, 3, 4, 6, 8, 10, 12,
13, 15, 17, 19, 21, and 22 under 35 U.S.C. § 103(a) as obvious over Suk2,
Pritchard3, Sohr4, Sholtis5, and Wiley6. Claims 5, 14, and 23 are rejected
under 35 U.S.C. § 103(a) as obvious over Suk, Pritchard, Sohr, Sholtis,
Wiley, and another Suk7 reference ("Suk6325"). Claims 9, 18, and 27 are
rejected under 35 U.S.C. § 103(a) as obvious over Suk, Pritchard, Sohr,
Sholtis, Wiley, and Michaelis8. Final Action, hereafter "Final Act.," 6-55,
mailed September 19, 2013; see also, Answer, hereafter "Ans." 2, mailed
February 10, 2014.
DISCUSSION
The Appellant argues issues in the Appeal that are common to the
independent claims, claims 1, 10, and 19. App. Br. 7-10. The Appellant
submits that the dependent claims, claims 3---6, 8, 9, 12-15, 17, 18, 21-23,
and 27, are not obvious for the reasons presented for their respective
independent claims. Id. at 11. We will address the issues in a similar
manner, using claim 1 as representative of the independent claims.
The Appellant argues that the prior art fails to disclose the claim
limitation "determining a payment calculation module to determine a
2 US Publication 2008/0154676 Al, published June 26, 2008.
3 US Patent 4,491,725, issued January 1, 1985.
4 US Publication 2007/0050219 Al, published March 1, 2007.
5 US Publication 2008/0270180 Al, published October 30, 2008.
6 US Publication2007/0276697 Al, published November 29, 2007.
7 US Publication 2008/0046325 Al, published February 21, 2008.
8 US Publication 2008/0262928 Al, published October 23, 2008.
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Application 12/796,115
consolidated benefit amount based on the first benefit amount and the
second benefit amount." App. Br. 7-11. More specifically, the Appellant
contends that the Examiner's rejection, which equates Sholtis's disclosure of
"coordination of benefits" with the claim's limitation of "consolidated
benefit amount," is in error. Id. at 8.
The Appellant also argues that even if the Examiner was referring to
Sholtis' s "claim member balance" as the equivalent of the "consolidated
benefit amount" of the claim, the "claim member balance" is irrelevant
because it "includes information describing how much a member is
responsible for paying for a pharmacy claim" and does not disclose
"determining a consolidated benefit amount based on a first and second
benefit amount." App. Br. 9. Additionally, the Appellant argues that the
"claim COB payment" tag is also irrelevant to the claim limitation because it
"only includes information identifying whether a different health care
provider for the member made any payments, and further, may include an
indicator that indicates whether the claim involved the coordination of
benefits." Id. at 9-10.
The Appellant also specifically alleges that the Examiner improperly
expands the definition of the term "claim member balance" to equate it to
"consolidated benefit amount," asserting that the "claim member balance" of
Sholtis "only includes information describing how much a member is
responsible for paying for a pharmacy claim." Reply Brief, hereafter "Reply
Br.," 2, filed April 10, 2014 (citing Sholtis i-f 116). This is based upon the
contention that the Examiner's view of the meaning of the term
"consolidated benefit amount" is presented out of context in light of the
Specification. Id. at 3. The Appellant admits, however, that the cited
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Application 12/796,115
portion of the Specification "offers no discussion whatsoever as to how the
consolidated benefit amount is calculated; it only indicates when the
consolidated benefit amount may be calculated (i.e., in response to multiple
validation responses)." Id. (citing Spec. i-f 42).
The Appellant separately argues that the Examiner has not identified
any structural components of the prior art that perform the functionality
required in independent claims 1 and 10. App. Br. 10. More specifically,
the Appellant alleges that Sohr and Sholtis do not describe structural
components that determine the claimed consolidation of benefits or claimed
validation steps. Id. The Examiner finds that Suk (i-fi-f 46, 4 7, 49-51 ),
Prichard (4:54---68, 8:57-64), and Sohr (i-fi-f 18, 56-58) disclose structural
components, and those references are modified by the teachings of Sholtis.
Ans. 6-7.
Upon consideration of the evidence on this record in light of the
arguments advanced by the Appellant, we find that the Appellant has not
identified reversible error in the Examiner's determination that
representative claim 1 is obvious. We add the following for emphasis.
In the Answer, the Examiner confirms that the rejection is based upon
the "claim member balance" of Sholtis as equivalent to the claimed
"consolidated benefit amount." Ans. 4. The Examiner refers to the
Specification at paragraph 42 for its description of "consolidated benefit
amount" as follows
[0042] According to another aspect, the payment calculation
module 316 calculates a consolidated benefit amount in response
to receiving multiple validation responses 218. As described
above, if the customer has primary insurance, secondary
insurance, and/ or a tertiary insurance, the business management
system 104 may receive multiple validation responses 218.
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According to this aspect, the payment calculation module 316
calculates the amount of payment due for the requested
medication based on the consolidated benefit amount and the
discount value.
Spec. i-f 42 (emphases omitted).
The Examiner finds that the cited portion of the Specification contains
the only reference to the claimed "consolidated benefit amount," and that
"the consolidated benefit amount is the balance that is the responsibility of
the patient/customer after the payments from the primary and secondary
insurers is taken into consideration." Ans. 5.
We agree with the Examiner's view that the disclosure in the
Specification is sufficiently broad to allow the "consolidated benefit
amount" term of the claim to be considered the balance of the payments
("co-pays") that the patient is responsible for after respective benefit
payments. This view of "benefits" as including "co-pays" is consistent with
the claims themselves. See, e.g., claim 8 (where one of the first "benefit"
amount and second "benefit" amount can comprise a "co-payment" amount).
And, as the Appellant admits, the Specification indicates that the
consolidated benefit amount may be calculated in response to multiple
validation responses, but does not disclose the specifics of how the
consolidated benefit amount is calculated-thus the Examiner's
interpretation is allowable under the latitude of the Specification disclosure.
Under this interpretation, we also agree with the Examiner that Sholtis
discloses "determining a consolidated benefit amount based on the first
benefit amount and the second benefit amount" because Sholtis discloses an
initial cost of the pharmacy claim (the "claim provider charge" tag 2216), a
payment amount that is the responsibility of a primary insurer (the "claim
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payment plan" tag 2218), a payment amount that is the responsibility of a
secondary insurer (the "claim COB payment" tag 2220), and a remaining
payment amount that is the responsibility of the customer and that accounts
for the payments made by both the primary and secondary insurers (the
"claim member balance" tag 2222). Ans. 5---6 (citing Sholtis i-fi-f 111-16).
As to the issue of the disclosure of structural components in the prior
art that perform the functionality required in independent claims 1 and 10,
we also agree with the Examiner that those components are disclosed in Suk,
Prichard, and Sohr, with those references modified by the teachings of
Sholtis. See Prichard 4:54---68; Sohr i-fi-156-58.
We therefore sustain the rejection of representative claim 1.
SUMMARY
The rejection of claims 1, 3---6, 8-10, 12-15, 17-19, 21-23, and 27
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).
AFFIRMED
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