ZirMed, Inc.

Patent Trials and Appeals Board

Jan 3, 2020

13963934 - (D) (P.T.A.B. Jan. 3, 2020)

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.
13/963,934 08/09/2013 James Scott Lacy ZIRM002US0 4584
58293 7590 01/03/2020
FORTKORT & HOUSTON P.C.
9442 N. CAPITAL OF TEXAS HIGHWAY
ARBORETUM PLAZA ONE, SUITE 500
AUSTIN, TX 78759
EXAMINER
TOMASZEWSKI, MICHAEL
ART UNIT PAPER NUMBER
3686
NOTIFICATION DATE DELIVERY MODE
01/03/2020 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):
58293@foholaw.com
rbernfeld@foholaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JAMES SCOTT LACY, DOUGLAS ROY FIELDING, and
CHRISTOPHER LAWRENCE SCHREMSER
Appeal 2019-001143
Application 13/963,934
Technology Center 3600
BEFORE MICHAEL J. STRAUSS, JEREMY J. CURCURI, and
JAMES B. ARPIN, Administrative Patent Judges.
CURCURI, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1, 4, 7, 9, 11, 14, 16, 17, 21–23, 25, 28,
31–34, 36–38, and 52. We have jurisdiction under 35 U.S.C. § 6(b).
We reverse.

1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R.
§ 1.42(a). Appellant identifies the real party-in-interest as Zirmed, Inc.
Appeal Br. 4.
Appeal 2019-001143
Application 13/963,934
2
CLAIMED SUBJECT MATTER
The claims are directed to “securing remuneration for patient
responsibilities for healthcare services.” Spec. ¶ 1. Claim 1, reproduced
below, is illustrative:
1. A computer-implemented method for processing a
payment or a refund for healthcare services provided to each of
a plurality of patients by one or more healthcare service
providers, the computer-implemented method comprising:
maintaining in a database associated with the one or more
healthcare service providers information about one or more
types of scheduled appointments at the one or more healthcare
service providers, said information including a description of
the healthcare services to be provided to a prospective patient
during said one or more types of scheduled appointments at the
one or more healthcare service providers, and a fee associated
with said description; and
performing electronically, for each patient of the plurality
of patients, the steps of:
(a) uploading data to a database maintained by a revenue
cycle management company from the database associated with
the one or more healthcare service providers to obtain a
description of and a fee for potential healthcare services to be
provided to said each patient of the plurality of patients by the
one or more healthcare service providers during an upcoming
visit by said each patient of the plurality of patients to the one
or more healthcare service providers,
(b) submitting a benefit inquiry transaction set to request
information from one or more third-party healthcare payers
regarding coverage afforded to said each patient of the plurality
of patients for the description of potential healthcare services to
be provided to said each patient of the plurality of patients by
the one or more healthcare service providers during the
upcoming visit by said each patient of the plurality of patients
to the one or more healthcare service providers,
Appeal 2019-001143
Application 13/963,934
3
(c) receiving a response from the one or more third party
healthcare payers to the benefit inquiry transaction set, which
response includes information regarding said coverage afforded
to said each patient of the plurality of patients for the
description of potential healthcare services to be provided to
said each patient of the plurality of patients by the one or more
healthcare service providers during the upcoming visit by said
each patient of the plurality of patients to the one or more
healthcare service providers,
(d) conducting an enriched eligibility process to
determine additional eligibility information regarding coverage
afforded to said each patient of the plurality of patients for the
description of potential healthcare services to be provided to
said each patient of the plurality of patients by the one or more
healthcare service providers during the upcoming visit by said
each patient of the plurality of patients to the one or more
healthcare service providers;
(e) said conducting the enriched eligibility process
further comprising screen scraping one or more websites for
said one or more healthcare payers by utilizing one or more
web bots to screen scrape the one or more websites to
determine the additional eligibility information, said additional
eligibility information including a remaining deductible on a
patient’s insurance policy, a patient’s expected out-of-pocket
amount and other information that may be helpful or necessary
to populate one or more financial fields in a form or an
algorithm utilized to establish an estimate of the patient’s
responsibility portion for the description of potential healthcare
services to be provided to said each patient of the plurality of
patients by the one or more healthcare service providers during
the upcoming visit by said each patient of the plurality of
patients to the one or more healthcare service providers;
(f) combining the additional eligibility information with
the information received from the healthcare payer in response
to the benefit inquiry transaction set to create enriched
eligibility data;
Appeal 2019-001143
Application 13/963,934
4
(g) calculating a cost estimate for a cost of the potential
healthcare services to be provided to said each patient of the
plurality of patients by the one or more healthcare service
providers during said upcoming visit by said each patient of the
plurality of patients to said one or more healthcare service
providers based on the description of the healthcare services to
be potentially provided to said each patient of the plurality of
patients by the one or more healthcare service providers during
the upcoming visit by said each patient of the plurality of
patients, and the fee associated therewith, which description and
fee are included in the data uploaded from said database
maintained for the one or more healthcare service providers,
(h) determining a patient responsibility portion of the
cost estimate for said each patient of the plurality of patients,
which said patient responsibility portion equals an amount
estimated that said each patient of the plurality of patients
would be expected to financially bear after calculating any
potential payments that might be made by one or more third
party healthcare payers, based on the coverage included in the
enriched eligibility data, which payments might be made by the
one or more third party healthcare service providers on behalf
of said each patient of the plurality of patients for the potential
healthcare services to be provided to said each patient of the
plurality of patients by the one or more healthcare service
providers during the upcoming visit by said each patient of the
plurality of patients to the one or more healthcare service
providers,
(i) obtaining patient payment account information from
said each patient of the plurality of patients, said patient
payment account information including one or more accounts
associated with said each patient of the plurality of patients
from whence one or more future payments may be authorized
by said each patient of the plurality of patients for actual
healthcare services provided by the one or more healthcare
service providers during the upcoming visit to the one or more
healthcare service providers by said each patient of the plurality
of patients,
Appeal 2019-001143
Application 13/963,934
5
(j) receiving a payment authorization from said each
patient of the plurality of patients before the actual healthcare
services are rendered by the one or more healthcare service
providers during the upcoming visit by said each patient of the
plurality of patients to the one or more healthcare service
providers, said payment authorization being in an authorized
amount sufficient to cover the patient responsibility portion of
the cost estimate for said each patient of the plurality of
patients, wherein the payment authorization includes patient
authorization by said each patient of the plurality of patients to
withdraw funds up to the authorized amount sufficient to cover
the patient responsibility portion of the cost estimate from the
one or more accounts associated with said each patient of the
plurality of patients, so long as an actual amount withdrawn
from the one or more accounts associated with said each patient
of the plurality of patients equals or falls below the authorized
amount,
(k) receiving patient authorization from said each patient
of the plurality of patients to refund to the one or more accounts
associated with said each patient of the plurality of patients any
overpayment for the patient responsibility amount for the actual
healthcare services provided by the one or more healthcare
service providers to said each patient of the plurality of patients
during the actual visit by said each patient of the plurality of
patients to the one or more healthcare service providers,
(l) recording electronically for the one or more healthcare
service providers any payment collected by the one or more
healthcare service providers prior to providing the actual
healthcare services by the one or more healthcare service
providers to said each patient of the plurality of patients during
the upcoming visit by said each patient of the plurality of
patients to the one or more healthcare providers;
(m) associating electronically a patient statement with
said each patient of the plurality of patients for the actual
healthcare services provided by the one or more healthcare
service providers to said each patient of the plurality of patients
during the actual visit by said each patient of the plurality of
patients to the one or more healthcare service providers,
Appeal 2019-001143
Application 13/963,934
6
(n) submitting electronically a patient statement to one or
more third party healthcare payers on behalf of said each patient
of the plurality of patients for the actual healthcare services
provided to said each patient of the plurality of patients during
the actual visit by said each patient of the plurality of patients to
the one or more healthcare service providers,
(o) associating and recording electronically with the
payment authorization of said each patient of the plurality of
patients any remittance received from said one or more third
party healthcare payers on behalf of said each patient of the
plurality of patients for the actual healthcare services provided
to said each patient of the plurality of patients during the actual
visit by said each patient of the plurality of patients to the one
or more healthcare service providers,
(p) determining an actual patient responsibility amount
for said each patient of the plurality of patients for the actual
healthcare services provided by the one or more healthcare
service providers during the actual visit by said each patient of
the plurality of patients to the one or more healthcare service
providers based on said any remittance associated with the
payment authorization of said each patient of the plurality of
patients, said remittance being received from said one or more
third party healthcare payers on behalf of said each patient of
the plurality of patients for the actual healthcare services
provided to said each patient of the plurality of patients during
the actual visit by said each patient of the plurality of patients to
the one or more healthcare service providers,
(q) withdrawing electronically funds from the one or
more accounts associated with said each patient of the plurality
of patients after the actual healthcare services have been
provided by the one or more healthcare service providers during
the actual visit by said each patient of the plurality of patients to
the one or more healthcare service providers, or after all claims
relating to the actual healthcare services provided by the one or
more healthcare service providers during the actual visit by said
each patient of the plurality of patients to the one or more
healthcare service providers have been adjudicated, said funds
being withdrawn electronically being in an amount not greater
Appeal 2019-001143
Application 13/963,934
7
than the authorized amount authorized by said each patient of
the plurality of patients, taking into consideration said any
payment recorded for the one or more healthcare service
providers prior to providing the actual healthcare services by
the one or more healthcare service providers to said each patient
of the plurality of patients, or refunding funds electronically to
the one or more accounts associated with said each patient of
the plurality of patients, if said any payment recorded for the
one or more healthcare service providers prior to providing the
actual healthcare services to said each patient of the plurality of
patients exceeds an actual patient responsibility portion,
(r) suppressing the patient statement associated with said
each patient of the plurality of patients for the actual healthcare
services provided by the one or more healthcare service
providers to said each patient of the plurality of patients during
the actual visit by said each patient of the plurality of patients to
the one or more healthcare service providers from being
delivered to said each patient of the plurality of patients, if the
actual patient responsibility amount fails to exceed the
authorized amount,
(s) flagging electronically for further handling the patient
statement associated with said each patient of the plurality of
patients for the actual healthcare services provided by the one
or more healthcare service providers to said each patient of the
plurality of patients during the actual visit by said each patient
of the plurality of patients to the one or more healthcare service
providers, if the actual patient responsibility amount exceeds
the authorized amount authorized by said each patient of the
plurality of patients, and
(t) sending electronically, only after funds are withdrawn,
a receipt informing said each patient of the plurality of patients
that funds were withdrawn from the one or more accounts
associated with said each patient of the plurality of patents in
accordance with the authorized amount authorized by said each
patient of the plurality of patients before the actual healthcare
services were rendered by the one or more healthcare service
providers to said each patient of the plurality of patients during
Appeal 2019-001143
Application 13/963,934
8
the actual visit by said each patient of the plurality of patients to
the one or more healthcare service providers, and
(u) sending electronically, only after funds are refunded,
a receipt informing said each patient of the plurality of patients
that funds were refunded to the one or more accounts associated
with said each patient of the plurality of patents in accordance
with the authorized amount authorized by said each patient of
the plurality of patients before the actual healthcare services
were rendered by the one or more healthcare service providers
to said each patient of the plurality of patients during the actual
visit by said each patient of the plurality of patients to the one
or more healthcare service providers;
wherein steps (a)-(u) are performed by a computer of the
revenue cycle management company that submits one or more
healthcare claims to one or more healthcare payers on behalf of
said one or more healthcare service providers and receives
remittances from said one or more healthcare payers in
response to said one or more healthcare claims submitted to the
one or more healthcare payers on behalf of said one or more
healthcare service providers.
REJECTIONS
Claims 1, 4, 7, 9, 11, 14, 16, 17, 21–23, 25, 28, 31–34, 36–38, and 52
are rejected under 35 U.S.C. § 101 as directed to a judicial exception without
significantly more. Final Act. 2–6.
OPINION
The Judicial Exception Rejection of Claims 1, 4, 7, 9, 11, 14, 16, 17, 21–23,
25, 28, 31–34, 36–38, and 52
The Examiner determines claims 1, 4, 7, 9, 11, 14, 16, 17, 21–23, 25,
28, 31–34, 36–38, and 52 are directed to a judicial exception without
significantly more. Final Act. 2–6. In particular, the Examiner determines
the claims are directed to an abstract idea because “the claims define
Appeal 2019-001143
Application 13/963,934
9
collecting information (e.g., healthcare services information, cost estimates,
etc.), analyzing the information by estimating the patient’s responsibility
cost and determining patient payment authorization, and displaying certain
results of the analysis indicating the services and patient costs; and
processing of information (e.g., healthcare claims/payment information).”
Final Act. 3.
In particular, the Examiner further determines the claims do not
amount to significantly more than the abstract idea because the claims
merely recite a database, a software program, a monitor, an
electronic token, computational devices, and a computer-
readable medium that merely receive/obtain, transmit, store,
compare, flag, suppress, calculate, estimate, and process
information which are functions that are well-understood,
routine, and conventional activities previously known to the
pertinent industry. Moreover, paragraphs [0013] and [0033] of
applicant’s specification recite that the method is implemented
using a computer readable medium, a computational device and
a database which are all generic type computers and/or generic
type computer components.
Final Act. 5; see also Final Act. 5–6, Advisory Act. 2–4 (“[I]t is noted that
applicant has not invented ‘screen scraping’ or ‘web bots’ which are old and
well-known computer/Internet technologies and it is submitted that this
feature is being used as a merely as a tool to perform computer functions
that serve to merely link the abstract idea to a particular technological
environment.”), Ans. 6–9 (explaining that the claims merely link the abstract
idea to a particular technological environment).
An invention is patent-eligible if it claims a “new and useful process,
machine, manufacture, or composition of matter.” 35 U.S.C. § 101.
However, the U.S. Supreme Court has long interpreted 35 U.S.C. § 101 to
include implicit exceptions: “[l]aws of nature, natural phenomena, and
Appeal 2019-001143
Application 13/963,934
10
abstract ideas” are not patentable. Alice Corp. Pty. Ltd. v. CLS Bank Int’l,
573 U.S. 208, 216 (2014).
In determining whether a claim falls within an excluded category, we
are guided by the Court’s two-part framework, described in Mayo and Alice.
Id. at 217–18 (citing Mayo Collaborative Servs. v. Prometheus Labs., Inc.,
566 U.S. 66, 75–77 (2012)). In accordance with that framework, we first
determine what concept the claim is “directed to.” See Alice, 573 U.S. at 219
(“On their face, the claims before us are drawn to the concept of
intermediated settlement, i.e., the use of a third party to mitigate settlement
risk.”); see also Bilski v. Kappos, 561 U.S. 593, 611 (2010) (“Claims 1 and 4
in petitioners’ application explain the basic concept of hedging, or protecting
against risk.”).
Concepts determined to be abstract ideas, and, thus, patent ineligible,
include certain methods of organizing human activity, such as fundamental
economic practices (Alice, 573 U.S. at 219–20; Bilski, 561 U.S. at 611);
mathematical formulas (Parker v. Flook, 437 U.S. 584, 594–95 (1978)); and
mental processes (Gottschalk v. Benson, 409 U.S. 63, 67 (1972)). Concepts
determined to be patent eligible include physical and chemical processes,
such as “molding rubber products” (Diamond v. Diehr, 450 U.S. 175, 191
(1981)); “tanning, dyeing, making water-proof cloth, vulcanizing India
rubber, smelting ores” (id. at 182 n.7 (quoting Corning v. Burden, 56 U.S.
252, 267–68 (1854))); and manufacturing flour (Benson, 409 U.S. at 69
(citing Cochrane v. Deener, 94 U.S. 780, 785 (1876))).
In Diehr, the claim at issue recited a mathematical formula, but the
Court held that “a claim drawn to subject matter otherwise statutory does not
become nonstatutory simply because it uses a mathematical formula.” Diehr,
450 U.S. at 187; see also id. at 191 (“We view respondents’ claims as
Appeal 2019-001143
Application 13/963,934
11
nothing more than a process for molding rubber products and not as an
attempt to patent a mathematical formula.”). Having said that, the Court also
indicated that a claim “seeking patent protection for that formula in the
abstract . . . is not accorded the protection of our patent laws, . . . and this
principle cannot be circumvented by attempting to limit the use of the
formula to a particular technological environment.” Id. (citing Benson and
Flook); see, e.g., id. at 187 (“It is now commonplace that an application of a
law of nature or mathematical formula to a known structure or process may
well be deserving of patent protection.”); see also BASCOM Glob. Internet
Servs., Inc. v. AT&T Mobility LLC, 827 F.3d 1341, 1352 (Fed. Cir. 2016)
(Even if the individual components were known, “an inventive concept can
be found in the ordered combination of claim limitations that transform the
abstract idea of filtering content into a particular, practical application of
that abstract idea” (emphasis added).).
If the claim is “directed to” an abstract idea, we turn to the second part
of the Alice and Mayo framework, where “we must examine the elements of
the claim to determine whether it contains an ‘inventive concept’ sufficient
to ‘transform’ the claimed abstract idea into a patent-eligible application.”
Alice, 573 U.S. at 221 (internal quotation marks omitted). “A claim that
recites an abstract idea must include ‘additional features’ to ensure ‘that the
[claim] is more than a drafting effort designed to monopolize the [abstract
idea].’” Id. (quoting Mayo, 566 U.S. at 77) (alterations in original).
“[M]erely requir[ing] generic computer implementation[] fail[s] to transform
that abstract idea into a patent-eligible invention.” Id.
The U.S. Patent and Trademark Office (“USPTO”) published revised
guidance on the application of § 101. USPTO’s 2019 Revised Patent Subject
Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019); USPTO October
Appeal 2019-001143
Application 13/963,934
12
2019 Update: Subject Matter Eligibility (Oct. 17, 2019). Under that
guidance, we first look to whether the claim recites:
(1) any judicial exceptions, including certain groupings of
abstract ideas (i.e., mathematical concepts, certain methods of
organizing human activity such as a fundamental economic
practice, or mental processes); and
(2) additional elements that integrate the judicial exception into
a practical application (see MPEP §§ 2106.05(a)–(c), (e)–(h)
(9th ed. 2018)).
See 84 Fed. Reg. at 54–55. Only if a claim (1) recites a judicial exception
and (2) does not integrate that exception into a practical application, do we
then look to whether the claim:
(3) adds a specific limitation beyond the judicial exception that
is not “well-understood, routine, conventional” in the field (see
MPEP § 2106.05(d)); or
(4) simply appends well-understood, routine, conventional
activities previously known to the industry, specified at a high
level of generality, to the judicial exception.
See 84 Fed. Reg. at 56.
Turning to Step 2B of the Guidance, “[t]he second step of the Alice
test is satisfied when the claim limitations ‘involve more than performance
of []well-understood, routine, [and] conventional activities previously
known to the industry.”’ Berkheimer v. HP Inc., 881 F.3d 1360, 1367 (Fed.
Cir. 2018) (quoting Content Extraction & Transmission LLC v. Wells Fargo
Bank, Nat’l Ass’n, 776 F.3d 1343, 1347–48 (Fed. Cir. 2014) and Alice, 573
U.S. at 225). “Whether something is well-understood, routine, and
conventional to a skilled artisan at the time of the patent is a factual
determination.” Berkheimer, 881 F.3d at 1369.
We have reviewed Appellant’s claims and contentions in detail and in
light of current precedent and guidance (supra). We find Appellant has
Appeal 2019-001143
Application 13/963,934
13
raised a dispositive issue with respect to the Examiner’s Step 2B Eligibility
Analysis. Accordingly, we need not present a detailed claim construction or
analysis under the 2019 Revised Guidance Step 2A. We need address only
whether the Examiner has provided a proper rejection under Step 2B.
Among other arguments, Appellant presents the following principal
argument:
“[S]creen scraping one or more websites for said one or more
healthcare payers by utilizing one or more web bots to screen scrape the one
or more websites to determine the additional eligibility information” as
recited in claim 1 does not simply append well-understood, routine,
conventional activities previously known to the industry, specified at a high
level of generality, to the judicial exception. See Appeal Br. 21–24.
Rather, these claim limitations indicate that the claimed
invention solves a problem inherent in these types of
computerized payment systems that stop the payment process (a
huge problem) waiting for human intervention to solve a problem
regarding the information about an individual’s coverage. These
screen scraping web bots are used by the claimed invention to
enable the payment process to continue without delay. These are
exactly the same types of limitations in similar inventions found
to satisfy 35 U.S.C. 101 in which the limitations are issue were
not invented by the inventor of the claim at issue but were used
by the inventor to solve computer specific problems.
Appeal Br. 23.
We agree with Appellant, because the Examiner has not provided
sufficient evidence required by Berkheimer to support the “routine and
conventional” factual findings. See Berkheimer, 881 F.3d at 1369. In
particular, the Memorandum of Changes in Examination Procedure
Pertaining to Subject Matter Eligibility, Recent Subject Matter Eligibility
Appeal 2019-001143
Application 13/963,934
14
Decision (Berkheimer v. HP, Inc.) (“Berkheimer Memorandum”) requires
the information listed below:
1. A citation to an express statement in the specification or to a
statement made by an applicant during prosecution that
demonstrates the well-understood, routine, conventional nature
of the additional element(s). . . .
2. A citation to one or more of the court decisions discussed in
MPEP § 2106.05(d)(II) as noting the well-understood, routine,
conventional nature of the additional element(s).
3. A citation to a publication that demonstrates the well-
understood, routine, conventional nature of the additional
element(s). . . .
4. A statement that the examiner is taking official notice of the
well-understood, routine, conventional nature of the additional
element(s). . . .
Berkheimer Memorandum at 3–4.
But the Examiner has not provided any of the four categories of
support for the disputed finding required by the Berkheimer Memorandum.
Rather, the Examiner merely provides conclusory and high-level general
statements (Final Act. 5–6; Advisory Act. 2–4; Ans. 6–9), which are
insufficient for meeting the requirements to support a finding that screen
scraping websites was well-understood, routine, and conventional. See
Berkheimer, 881 F.3d 1369–70. That is, although the Examiner takes the
position that “screen scraping one or more websites for said one or more
healthcare payers by utilizing one or more web bots to screen scrape the one
or more websites to determine the additional eligibility information” as
recited in claim 1 merely links the abstract idea to a particular technological
environment, the Examiner has not provided any of the four categories of
information required by the Berkheimer Memorandum.
Appeal 2019-001143
Application 13/963,934
15
Because, on this record, the Examiner erred with respect to Step 2B of
the Guidance and Berkheimer requirements, we do not sustain the
Examiner’s rejection of independent claim 1.
We also do not sustain the Examiner’s rejections of claims 4, 7, 9, 11,
14, 16, 17, 21–23, and 52, which depend from claim 1.
We also do not sustain the Examiner’s rejection of independent claim
25 for the same reason.
We also do not sustain the Examiner’s rejections of claims 25, 28, 31–
34, and 36–38, which depend from claim 25.
CONCLUSION
The Examiner’s rejection is reversed.
DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1, 4, 7, 9,
11, 14, 16,
17, 21–23,
25, 28, 31–
34, 36–38,
52
101 Eligibility 1, 4, 7, 9,
11, 14, 16,
17, 21–23,
25, 28, 31–
34, 36–38,
52
Overall
Outcome
1, 4, 7, 9,
11, 14, 16,
17, 21–23,
25, 28, 31–
34, 36–38,
52
REVERSED