Ex Parte Woods et alDownload PDFPatent Trial and Appeal BoardAug 21, 201812965286 (P.T.A.B. Aug. 21, 2018) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 12/965,286 12/10/2010 8698 7590 08/23/2018 STANDLEY LAW GROUP LLP 6300 Riverside Drive Dublin, OH 43017 FIRST NAMED INVENTOR Joe Paul Woods 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. HUM 2027-095 6503 EXAMINER GILLIGAN, CHRISTOPHER L ART UNIT PAPER NUMBER 3626 NOTIFICATION DATE DELIVERY MODE 08/23/2018 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): s tandleydocketing@standley llp .com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte JOE PAUL WOODS and ELIZABETH TYRA GERLACH HILLIARD Appeal2016-007583 Application 12/965,286 1 Technology Center 3600 Before HUBERT C. LORIN, NINA L. MEDLOCK, and ROBERT J. SILVERMAN, Administrative Patent Judges. SILVERMAN, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE The Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's decision rejecting claims 1-20. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. 1 The Appellants (Appeal Br. 2) identify Humana, Inc. as the real party in interest. Because the Appeal Brief does not bear page numbering, we regard the pages thereof as numbered consecutively, beginning with the first page (which bears the case caption). Appeal 2016-007583 Application 12/965,286 ILLUSTRATIVE CLAIM 1. A computerized method for providing enhanced health benefits to a plurality of members of a health plan compnsmg: (a) storing in a plan database data elements for a standard health plan; (b) storing in said plan database data elements for an enhanced health plan; ( c) receiving at a health plan administration server standard health plan enrollment data for a plurality of members enrolled in said standard health plan; ( d) receiving at a shared data repository enhanced health plan enrollment data for at least one member, said data responsive to an offer presented to all of said plurality of members to participate in said enhanced health plan; ( e) in response to receiving said enhanced plan enrollment data, identifying for said member electing to participate in said enhanced health plan at least one health activity for determining said member's eligibility for enhanced benefits under said enhanced health plan; (f) receiving at said shared data repository an indicator that said member has completed said at least one health activity; (g) updating at said shared data repository said enhanced health plan enrollment data to indicate said member is eligible for enhanced benefits under said enhanced benefit plan; (h) adding identifying data for said member to a trigger file at said shared data repository identifying members completing prerequisites for said enhanced health plan; (i) transmitting said trigger file from said shared data repository to said health plan administration server; (j) transmitting from said health plan administration server to a plurality of portals an alert code indicating said member is eligible for said enhanced benefits; and 2 Appeal 2016-007583 Application 12/965,286 (k) processing at said health plan administration server an insurance claim for said member according to said enhanced benefits of said enhanced benefit plan. REJECTION2 Claims 1-20 are rejected under 35 U.S.C. § 101 as ineligible subject matter. FINDINGS OF FACT The findings of fact relied upon, which are supported by a preponderance of the evidence, appear in the following Analysis. ANALYSIS Laws of nature, natural phenomena, and abstract ideas are deemed ineligible for patenting, because they are regarded as the basic tools of scientific and technological work, such that their inclusion within the domain of patent protection would risk inhibiting future innovation premised upon them. Ass 'nfor Molecular Pathology v. Myriad Genetics, Inc., 569 U.S. 576, 589 (2013). Of course, "[a]t some level, 'all inventions ... embody, use, reflect, rest upon, or apply"' these basic tools of scientific and technological work. Alice Corp. v. CLS Bankint'l, 134 S. Ct. 2347, 2354 (2014) ( citation omitted). Accordingly, ascertaining ineligible subject matter involves a two-step framework for "distinguish[ing] between patents that claim the buildin[g] block[ s] of human ingenuity and those that integrate the building blocks into something more, ... thereby transform[ing] them into a patent-eligible invention." Id. (internal quotation marks and citation 2 The Final Office Action (pages 2-3) includes a rejection of claims 1-20 under 35 U.S.C. § 112, first paragraph. This rejection is withdrawn. See Advisory Action (Mar. 6, 2015) Continuation Sheet. 3 Appeal 2016-007583 Application 12/965,286 omitted). The first step determines whether the claim is directed to judicially excluded subject matter (such as a so-called "abstract idea"); the second step determines whether there are any "additional elements" recited in the claim that ( either individually or as an "ordered combination") amount to "significantly more" than the identified judicially excepted subject matter itself. Id. at 2355. With regard to the first Alice step, the Final Office Action states that the claims are directed to the abstract idea of "organizing human activities to enroll in a health plan and the fundamental economic practice of processing insurance claims." Final Action 4. Id. As to the second Alice step, the Final Office Action states: The additional element(s) or combination of elements in the claim( s) other than the abstract idea per se amount( s) to no more than: recitation of generic computer structure that serves to perform generic computer functions that are well-understood, routine, and conventional activities previously known to the industry. Viewed as a whole, these additional claim element( s) do not provide meaningful limitation(s) to transform the abstract idea into a patent eligible application of the abstract idea such that the claim( s) amounts to significantly more than the abstract idea itself. Disputing the rejection, the Appellants present two arguments in the Appeal Brief. Because the Appellants argue claims 1-20 collectively, the following analysis refers specifically to independent claim 1. See 3 7 C.F .R. § 4I.37(c)(l)(iv). First, the Appellants argue: The Examiner has identified not one, but two, abstract ideas to which the claims are directed. The Examiner notes 4 Appeal 2016-007583 Application 12/965,286 the claims relate to both enrolling in a health plan as well as processing of insurance claims, each of which is associated with a different abstract idea. The Examiner's identification of two different types of activities as abstract ideas indicates the claims are not directed to "an abstract idea" and are in fact, directed to significantly more than "an abstract idea." Appeal Br. 5---6. In response, the Examiner states: [E]ven if the claims were said to be directed to more than one abstract idea, the presence of multiple abstract ideas in a claim is not, alone, sufficient to transform the claim into patent- eligible subject matter. Appellant has not shown, nor is the examiner aware of, any authority to support such a position. Answer 3. The Appellants' first argument is not persuasive of error. As explained above, all inventions employ fundamental building blocks, such as abstract ideas. See Alice, 134 S. Ct. at 2354. The Appellants concede that such a building block, in isolation, would not be eligible for patenting, but argues that combinations thereof should be eligible. See Appeal Br. 5---6. However, the Appellants do not explain why the asserted compounding of abstract ideas, here, would elevate the subject matter above the level of an abstract idea. As a second argument, the Appellants contend that "[t]he claims are much more specific and detailed than the two abstract ideas of enrolling in a health plan and processing insurance claims," specifically including steps that are not well-understood, routine, and conventional in the area ofhealth- insurance plan processing and enrollment. Appeal Br. 6. This second argument, which focuses on the second step of the Alice framework, identifies three claim elements as amounting to significantly more than the 5 Appeal 2016-007583 Application 12/965,286 identified abstract ideas: a "shared data repository" including "an indicator that said member has completed said at least one health activity"; a "trigger file" to (1) identify members that have completed prerequisites for an enhanced health plan and (2) accomplish communication with the health plan administration server; and an "alert code indicating said member is eligible for said enhanced benefits" that is sent to multiple portals. Appeal Br. 6 ( emphasis added). The Appellants also submit that, on account of these recited elements, the claimed subject matter is "rooted in computer technology." Id. However, as the Examiner explains - leaving aside the extent to which the Appellants' identified claim elements coincide with the health- insurance-enrollment abstract idea - these claim elements are routine computer functionalities that do not amount to significantly more than the abstract idea. See Answer 3--4. The Examiner explains: For example, with respect to claim 1, storing data in a data base, routing data through a server, receiving and updating data in a shared data repository, adding data to a file, transmitting data between a data repository and a server, transmitting a code between a server and a portal, and processing data on a server are all well-understood, routine, and conventional activities of generic computer-network-based systems. Such generic computer-network-based system merely serve to generally link the abstract idea to a particular technological environment. Id. at 4. Indeed, "limiting the use of an abstract idea to a particular technological environment" is "not enough for patent eligibility." Alice, 134 S. Ct. at 2358 (internal citations and quotation omitted). Accordingly, the Appellants' second argument is not persuasive of error in the rejection. Therefore, in view of the foregoing analysis, we sustain the rejection of claims 1-20 under 35 U.S.C. § 101. 6 Appeal 2016-007583 Application 12/965,286 DECISION We AFFIRM the Examiner's decision rejecting claims 1-20 under 35 U.S.C. § 101. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). AFFIRMED 7 Copy with citationCopy as parenthetical citation