Ex Parte Darin et al

Patent Trial and Appeal BoardAug 13, 2014

11871615 (P.T.A.B. Aug. 13, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________________ Ex parte ROBERT DARIN, RICHARD JOHANNES, and LINDA HYDE ____________________ Appeal 2012-000873 Application 11/871,6151 Technology Center 3600 ____________________ Before HUBERT C. LORIN, MICHAEL W. KIM, and NINA L. MEDLOCK, Administrative Patent Judges. MEDLOCK, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s final rejection of claims 1-23. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE.2 1 The real party in interest, identified by Appellants, is CareFusion 303, Inc. App. Br. 3. 2 Our decision references Appellants’ Appeal Brief (“App. Br.,” filed May 5, 2011) and Reply Brief (“Reply Br.,” filed September 21, 2011), and the Examiner’s Answer (“Ans.,” mailed July 22, 2011). Appeal 2012-000873 Application 11/871,615 2 THE CLAIMED INVENTION Appellants’ claimed invention “generally relate[s] to diagnostic coding and, in particular, relate[s] to the identification of under-coded comorbidities” (Spec. ¶ 3). Claim 1, reproduced below, is illustrative of the subject matter on appeal: 1. A method for identifying under-coded comorbidities, the method comprising the steps of: receiving a billing entry, the billing entry including a first diagnosis corresponding to a predetermined diagnostic related group; determining, with a processor, whether the billing entry includes a second diagnosis corresponding to the predetermined diagnostic related group; when the billing entry is determined not to include the second diagnosis, reviewing laboratory information corresponding to the billing entry to determine whether the laboratory information includes test data indicating the second diagnosis; and when the laboratory information is determined to include test data indicating the second diagnosis, generating an alert corresponding to the billing entry and the second diagnosis. THE REJECTIONS The following rejections are before us for review: Claims 1, 2, 7–14, and 18–23 are rejected under 35 U.S.C. § 102(b) as anticipated by Dang (US 5,835,897, iss. Nov. 10, 1998). Claims 3–5, 15, and 16 are rejected under 35 U.S.C. § 103(a) as unpatentable over Dang and Dorne (US 5,325,293, iss. June 28, 1994). Claims 6 and 17 are rejected under 35 U.S.C. § 103(a) as unpatentable over Dang, Dorne, and Appellants’ Admitted Prior Art (hereinafter “AAPA”). Appeal 2012-000873 Application 11/871,615 3 ANALYSIS Independent claim 1 and dependent claims 2 and 7–12 We are persuaded by Appellants’ argument that the Examiner erred in rejecting claim 1 under 35 U.S.C. § 102(b) because Dang fails to disclose “reviewing laboratory information corresponding to the billing entry to determine whether the laboratory information includes test data indicating the second diagnosis,” as recited in claim 1 (App. Br. 11–13 and 15–16; see also Reply Br. 3 and 5–7). The Examiner cites Dang, column 7, lines 5–9 and 40–44; column 24, line 63 through column 25, line 2; and column 31, lines 13–26, as disclosing the argued limitation (Ans. 4 and 8–9). However, we find nothing in the cited portions of Dang that discloses reviewing laboratory information to determine whether the information includes test data indicating a second diagnosis, as called for in claim 1. Dang is directed to a computer-implemented method for profiling medical claims to assist healthcare managers in determining the cost- efficiency and service quality of health care providers, and describes that Episode Treatment Group (“ETG”) grouper software is used to assign each claimed service to an appropriate ETG (Dang, Abstract). The ETGs are used to track concurrently and recurrently occurring illnesses and to identify and assign each service event to the appropriate episode (id. at col. 9, ll. 20- 23). “[The] ETGs [also] account for changes in a patient’s condition during a course of treatment by shifting from the initially [assigned] ETG to one which includes the changed condition once the changed condition is identified” (id. at col. 9, ll. 23–27). For example, “[c]omorbidities, complications or a defining surgery could require an update of the patient’s Appeal 2012-000873 Application 11/871,615 4 condition to an ETG requiring a more aggressive treatment profile” (id. at col. 19, ll. 18–23). Dang describes at column 7, lines 5–9, cited by the Examiner, that “ancillary records” are claims that represent services incidental to the direct evaluation, management, and treatment of the patient, e.g., X-ray and laboratory tests, and describes at column 31, lines 10–14 that these ancillary records are assigned to ETGs based on diagnosis (dx) codes or treatment (CPT) codes associated with the records. Dang discloses an “Ancillary Record Grouping Sub-routine” at column 31, lines 13–26 in which the valid ETGs associated with the CPT on the ancillary record (as stored in a CPT- ETG table) are compared to the ETGs associated with the dx code (as stored in a dx-ETG table) to identify any common ETGs. Dang discloses that the CPT codes are treatment codes, as well-known in the art, and that the dx codes are diagnosis codes, e.g., “162,” as shown in Figure 11. However, we find nothing in the cited portion of Dang that discloses that these numerical codes include test data and, thus, nothing that discloses “reviewing laboratory information corresponding to the billing entry to determine whether the laboratory information includes test data indicating the second diagnosis,” as recited in claim 1. We also find no such disclosure in the remaining portions of Dang on which the Examiner relies. Dang states at column 7, lines 40–45 that: [a] loop shifts the originally assigned ETG based on the additional or subsequent diagnoses. If any of the additional or subsequent diagnoses is a defined co-morbidity diagnosis, the patient’s comorbidity file [is] updated. If no match between the first diagnosis code and an open episode is found, a new episode is created. Appeal 2012-000873 Application 11/871,615 5 Id. Dang, thus, discloses evaluating ETG codes to determine whether there is a match in a look-up table between the ETG code for the current diagnosis and the ETG code for the previously existing episode. Dang describes that if a match is found, the ETG code for the previously existing episode is updated with the ETG code for the current episode. However, there is nothing in this portion of Dang that discloses reviewing laboratory information to determine whether the laboratory information includes test data indicating a second diagnosis, as called for in claim 1. Dang similarly describes an instruction loop at column 24, line 63 through column 25, line 2, “executed to determine whether [an] ETG assigned by [a] first diagnosis code should be shifted to [a different] ETG based upon the second, third, and fourth diagnoses on record.” Dang describes that the ETG assigned by a first diagnosis code is compared to valid ETGs for a second diagnosis to determine whether one of the valid ETGs for the second diagnosis matches the primary diagnosis ETG. But again there is nothing in this portion of Dang that discloses “reviewing laboratory information corresponding to the billing entry to determine whether the laboratory information includes test data indicating the second diagnosis,” as recited in claim 1. In view of the foregoing, we do not sustain the Examiner’s rejection of claim 1 under 35 U.S.C. § 102(b). For the same reasons, we also do not sustain the Examiner’s rejection of claims 2 and 7–12, which depend from claim 1. Independent claims 13 and 23 and dependent claims 14 and 18–22 Independent claims 13 and 23 include language substantially similar to the language of claim 1. Therefore, we do not sustain the Examiner’s Appeal 2012-000873 Application 11/871,615 6 rejection under 35 U.S.C § 102(b) of independent claims 13 and 23, and claims 14 and 18–22, which depend from claim 13, for the same reasons as set forth above with respect to claim 1. Dependent claims 3–6 and 15–17 Claims 3–6 and 15–17 depend from claims 1 and 13, respectively. The Examiner has not established on this record that the secondary references relied on in rejecting these dependent claims cure the deficiencies of Dang, as described above with respect to claim 1. Therefore, we do not sustain the Examiner’s rejections of claims 3–6 and 15–17 under 35 U.S.C. § 103(a) for the same reasons as set forth above with respect to the independent claims from which they depend. DECISION The Examiner’s rejection of claims 1, 2, 7–14, and 18–23 under 35 U.S.C. § 102(b) is reversed. The Examiner’s rejections of claims 3–6, and 15–17 under 35 U.S.C. § 103(a) are reversed.3 REVERSED llw 3 In the event of further prosecution of this application (including any review for allowance), the Examiner may wish to review the claims for compliance with 35 U.S.C. § 101 in light of the recently issued preliminary examination instructions on patent-eligible subject matter. See “Preliminary Examination Instructions in view of the Supreme Court Decision in Alice Corporation Pty. Ltd. v. CLS Bank International, et al.,” Memorandum from Andrew H. Hirshfeld, USPTO, to Patent Examining Corps (June 25, 2014), available at http://www.uspto.gov/patents/announce/alice_pec_25jun2014.pdf.