Ex Parte Lesswing et al

Patent Trial and Appeal Board

Sep 24, 2018

14079627 (P.T.A.B. Sep. 24, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
14/079,627 11/13/2013
93261 7590 09/26/2018
Bey & Cotropia PLLC (Trizetto Customer Number)
ATTN: Dawn-Marie Bey
213 Bayly Court
Richmond, VA 23229
Mark Les swing
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.
TZG0002-DIV2-CON2 6842
EXAMINER
SEOH, MINNAH L
ART UNIT PAPER NUMBER
3689
NOTIFICATION DATE DELIVERY MODE
09/26/2018 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):
dawnmarie@beycotropia.com
bey _cotropia_docketing@cardinal-ip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MARK LES SWING and DALE HOERLE
Appeal2017-006414
Application 14/079,627
Technology Center 3600
Before: JOHN A. EVANS, JOHN P. PINKERTON, and JASON M.
REPKO, Administrative Patent Judges.
EV ANS, Administrative Patent Judge.
DECISION ON APPEAL
Appellants 1 seek our review under 35 U.S.C. § 134(a) from the
Examiner's final rejection of Claims 1-20, all pending claims. App. Br. 2.
We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM. 2
1 Appellants state that TriZetto Corporation is the real party in interest.
App. Br. 2.
2 Rather than reiterate the arguments of the Appellants and the Examiner,
we refer to the Appeal Brief (filed May 5, 2016, "App. Br."), the Reply Brief
(filed February 7, 2017, "Reply Br."), the Examiner's Answer (mailed
December 8, 2016, "Ans."), the Final Action (mailed November 13, 2015,
"Final Act."), and the Specification (filed November 13, 2013, "Spec.") for
Appeal2017-006414
Application 14/079,627
STATEMENT OF THE CASE
The claims relate to a method of repricing a reimbursement claim
under a contract. See Abstract.
Invention
Claims 1 and 13 are independent. Representative claim 1 is
reproduced below with some formatting added:
1. A computer implemented method for repricing a claim
for reimbursement under a contract comprising:
converting the claim by the repricing engine into a series of
claim lines, each claim line containing a claim code and each
claim line having an initial amount associated therewith;
comparing by the repricing engine each claim code, of the
series of claim lines, against a rate sheet of the contract, the rate
sheet including multiple predefined sections and multiple
priority conditions for determining a sequence of comparing
each claim code against the multiple predefined sections of the
rate sheet; and
determining by the repricing engine a reprice amount under the
contract for the claim based on the comparison in accordance
with the determined sequence.
Rejection3
Claims 1-20 stand rejected under 35 U.S.C. § 101 as directed to an
abstract idea. Final Act. 2-3.
their respective details.
3 The rejection of Claims 1-20 under 35 U.S.C. § 103 has been withdrawn.
Ans. 2.
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Application 14/079,627
ANALYSIS
We have reviewed the rejection of Claims 1-20 in light of Appellants'
arguments that the Examiner erred. We consider Appellants' arguments
seriatim, as they are presented in the Appeal Brief, pages 10---50.
CLAIMS 1-20: PATENT-INELIGIBLE SUBJECT MATTER.
Appellants argue all claims as a group. App. Br. 4--14. Therefore, we
decide the appeal of the § 101 rejection on the basis of representative Claim
1, and refer to the rejected claims collectively herein as "the claims." See 37
C.F.R. § 4I.37(c)(l)(iv); In re King, 801 F.2d 1324, 1325 (Fed. Cir. 1986).
Appellants characterize the Examiner's Answer as a new ground of
rejection, but state Appellants "wish[] to maintain the appeal and have the
Patent Trial and Appel Board (PTAB) review this case." Reply Br. 3.
35 USC§ 101.
Section 101 provides that a patent may be obtained for "any new and
useful process, machine, manufacture, or composition of matter, or any new
and useful improvement thereof." 35 U.S.C. § 101. The Supreme Court has
long recognized, however, that § 101 implicitly excludes "laws of nature,
natural phenomena, and abstract ideas" from the realm of patent-eligible
subject matter, as monopolization of these "basic tools of scientific and
technological work" would stifle the very innovation that the patent system
aims to promote. Alice Corp. v. CLS Bankint'l, 134 S. Ct. 2347, 2354
(2014) (quoting Ass 'nfor Molecular Pathology v. Myriad Genetics, Inc.,
133 S. Ct. 2107, 2116 (2013)); see also Mayo Collaborative Servs. v.
Prometheus Labs., Inc., 132 S. Ct. 1289, 1294-97 (2012); Diamond v. Diehr,
450 U.S. 175, 185 (1981).
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Preemption.
Appellants deny their claims are directed to an abstract idea and argue
"to the extent that the claims are determined to be directed to an abstract
idea, they include additional features that ensure that the claims are not
designed to monopolize the broadly recited abstract idea." App. Br. 17-18.
Although preemption may denote patent ineligibility, its absence does
not demonstrate patent eligibility. See FairWarning, IP, LLC v. Iatric Sys.,
Inc., 839 F.3d 1089, 1098 (Fed. Cir. 2016). We do not reach Appellants'
preemption argument because for claims covering a patent-ineligible
concept, preemption concerns "are fully addressed and made moot" by an
analysis under the Mayo/Alice framework. Ariosa Diagnostics, Inc. v.
Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015). We conduct such an
analysis under the Mayo/Alice framework below.
Mayo-Alice Step 1.
The Supreme Court has instructed us to use a two-step framework to
"distinguish[] patents that claim laws of nature, natural phenomena, and
abstract ideas from those that claim patent-eligible applications of those
concepts." Alice, 134 S. Ct. at 2355. At the first step, we determine whether
the claims at issue are "directed to" a patent-ineligible concept. Id.
Appellants contend the Examiner's findings regarding the abstract
idea(s) to which the claims may be directed have been inconsistent. App.
Br. 10-11. Appellants further contend the Examiner provides no evidence
of record that the invention as claimed is simply an abstract idea, and
therefore, the Examiner has failed to establish a prima facie case as being
directed to ineligible subject matter. Id.
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"[ A ]11 that is required of the office to meet its prima facie burden of
production is to set forth the statutory basis of the rejection and the reference
or references relied upon in a sufficiently articulate and informative manner
as to meet the notice requirement of§ 132."). In re Jung, 637 F.3d 1356,
13 63 (Fed. Cir. 2011 ). Appellants contend their claimed method is not
directed to the abstract idea of creating a contractual relationship. App. Br.
15. Instead, Appellants argue the claimed method performs a specific
calculation in accordance with certain conditions, in a predetermined
sequence, and uses a specially programmed machine. App. Br. 15. We
determine Appellants' response demonstrates they were adequately noticed
under§ 132.
The Federal Circuit observes that there is no single test or definition to
distinguish a patent-eligible claim from a claim directed to an abstract idea.
Amdocs (Israel) Ltd. v. Openet Telecom, Inc., 841 F.3d 1288, 12943 (Fed.
Cir. 2016). Instead of a definition or test, the decisional mechanism applied
by the Federal Circuit is a comparison of the accused claims to those of prior
cases to determine how similar or parallel claims were decided. Id.; see
Electric Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1355 (Fed. Cir.
2016). Therefore, the required evidence inheres in the comparison of the
present claims to previously-adjudicated claims.
Claim 1 recites a computer implemented method for repricing a claim
for reimbursement under a contract. A "repricing engine," i.e., a general
purpose computer, converts a claim for reimbursement into a series of claim
lines where each claim line contains a claim code and has an associated
initial amount. The computer compares each claim code against a contract
rate sheet to determine a priority sequence in which the claim codes are
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Application 14/079,627
compared against various sections of the rate sheet to determine a reprice
amount. See App. Br. 15.
We find the claims similar to those in Benson which were found to be
not patent eligible because they were directed to abstract ideas:
The patent sought is on a method of programming a general-
purpose digital computer to convert signals from binary-coded
decimal form into pure binary form. A procedure for solving a
given type of mathematical problem is known as an 'algorithm.'
The procedures set forth in the present claims are of that kind;
that is to say, they are a generalized formulation for programs to
solve mathematical problems of converting one form of
numerical representation to another.
Gottschalkv. Benson, 409 U.S. 63, 65 (1972). Under Mayo-Alice Step 1, we
determine the claims are directed to the abstract idea of data conversion.
Mayo-Alice Step 2.
Where, as here, the claims are found to be "directed to" a patent-
ineligible concept, we then "consider the elements of each claim both
individually and 'as an ordered combination' to determine whether the
additional elements 'transform the nature of the claim' into a patent-eligible
application." Alice, 134 S. Ct. at 2355 (quoting Mayo, 132 S. Ct. at 1298).
This analysis has been characterized as the search for an "inventive
concept"- something sufficient to ensure that the claim amounts to
"significantly more" than the abstract idea itself. Id. (quoting Mayo, 132
S.Ct. at 1294).
Appellants appear to argue the claims amount to "significantly more"
than the abstract idea itself, and thus recite an "inventive concept" because
the claims require a computer to perform "various operations that cannot be
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performed entirely by the human mind." Reply Br. 7. However,
Appellants' Brief fails to explain which operation(s) cannot be performed by
a human brain and therefore, must be performed by a computer. In this
regard, Appellants refer to a "Microfiche Appendix" as disclosing
"approximately 930 separate programs" and seem to invite us to import
limitations from the Specification. Id. We decline such invitation. During
examination, claim terms are to be given their broadest reasonable
interpretation as they would have been understood by one of ordinary skill in
the art, taking into account whatever enlightenment may be provided by the
Specification. In re Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997).
However, limitations may not be imported into the claims from the
Specification. See SuperGuide Corp. v. DirecTV Enters., Inc., 358 F.3d 870,
875 (Fed. Cir. 2004).
Appellants cite McR04 for the proposition that reviewers must
"avoid oversimplifying the claims" by looking at them generally and failing
to account for the specific requirements of the claims": "Whether at step
one or step two of the Alice test, in determining patentability of a method, a
court must look to the claims as an ordered combination, without ignoring
the requirements of the individual steps." Reply Br. 6. However,
Appellants fail to point to any "specific requirement of the claims," nor do
they indicate how any ordered combination of claims steps might operate to
confer patentability. We disagree with Appellants' analogy to McRo
because the specification and claims describe the claimed invention at such a
4 McRO, Inc. v. Bandai NAMCO Games America, Inc. 837 F.3d 1299
(2016).
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high level of abstraction that the public is not taught how the desired
functions are achieved. Therefore, we conclude that none of the claim
limitations, viewed "both individually and as an ordered combination,"
amount to significantly more than the judicial exception in order to
sufficiently transform the nature of the claims into patent-eligible subject
matter. See Alice, 134 S. Ct. at 2355 (internal quotations omitted) (quoting
Mayo, 132 S. Ct. at 1297).
Accordingly, we sustain the Examiner's 35 U.S.C. § 101 rejection of
claim 1, and claims 2-20 (not argued separately), which fall with claim 1.
See 37 C.F.R. § 4I.37(c)(l)(iv).
DECISION
The rejection of Claims 1-20 under 35 U.S.C. § 101 is AFFIRMED.
No time period for taking any subsequent action in connection with
this appeal maybe extended under 37 C.F.R. § 1.136(a)(l). See 37 C.F.R.
§ 1.136(a)(l )(iv).
AFFIRMED
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