Ex Parte DiRienzo

Patent Trial and Appeal Board

Mar 13, 2017

12045233 (P.T.A.B. Mar. 13, 2017)

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.
12/045,233 03/10/2008 Andrew L. DiRienzo 13236.102.121 8892
25281 7590 03/15/2017
DICKE, BILLIG & CZAJA
FIFTH STREET TOWERS
100 SOUTH FIFTH STREET, SUITE 2250
MINNEAPOLIS, MN 55402
EXAMINER
KHATTAR, RAJESH
ART UNIT PAPER NUMBER
3693
NOTIFICATION DATE DELIVERY MODE
03/15/2017 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.
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PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ANDREW DIRIENZO
Appeal 2015-007582
Application 12/045,2331
Technology Center 3600
Before HUBERT C. LORIN, JOSEPH A. FISCHETTI, and
BRUCE T. WIEDER, Administrative Patent Judges.
LORIN, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Andrew L. DiRienzo (Appellant) seeks our review under 35 U.S.C.
§ 134 of the final rejection of claims 2—77. We have jurisdiction under 35
U.S.C. § 6(b) (2002).
SUMMARY OF DECISION
We AFFIRM.
1 The Appellant identifies Integrated Claims Systems, LLC as the real party
in interest. App. Br. 1.
Appeal 2015-007582
Application 12/045,233
THE INVENTION
Claim 2, reproduced below, is illustrative of the subject matter on
appeal.
2. A method implemented by a computer system for processing an
insurance transaction comprising the steps of:
receiving, from a remote computer, first digital data at a first
computer, said first digital data comprising insurance transaction form
data and a unique identifier for at least one attachment to the
insurance transaction form data, wherein the attachment is not
available at the first computer;
wherein the at least one attachment is unique to a particular
patient-provider encounter of a particular patient;
accessing the first digital data at the first computer to obtain the
insurance transaction form data and the unique identifier for the at
least one attachment;
accessing the at least one attachment at a second computer by
using the -unique identifier for the at least one attachment; and
processing an insurance transaction using the insurance
transaction form data and the at least one attachment.
THE REJECTIONS
The Examiner relies upon the following as evidence of
unpatentability:
“Networks for Health Information”, Chapter 3, Bringing Health Care
Online: the Role of Information Technologies (Sept. 1995). [NPL-
Networks]
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Application 12/045,233
The following rejections are before us for review:
1. Claims 2—77 are rejected under 35U.S.C. §101 as being directed to
non-statutory subject matter.
2. Claims 2—77 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over NPL-Networks.
ISSUES
Did the Examiner err in rejecting claims 2—77 under 35 U.S.C. § 101
as being directed to non-statutory subject matter?
Did the Examiner err in rejecting claims 2—77 under 35 U.S.C.
§ 103(a) as being unpatentable over NPL-Networks?
ANALYSIS
The rejection of claims 2—77 under 35 U.S.C. § 101 as being directed to
non-statutory subject matter.
The Appellant argued these claims as a group. See Reply Br. 2—3. We
select claim 2 as the representative claim for this group, and the remaining
claims 3—77 stand or fall with claim 2. 37 C.F.R. § 41.37(c)(l)(iv).
The Appellant’s arguments are unpersuasive.
Alice Corp. Pty. Ltd. v. CLS Bank International, 134 S. Ct. 2347
(2014) identifies a two-step framework for determining whether claimed
subject matter is judicially-excepted from patent eligibility under § 101.
According to Alice step one, “[w]e must first determine whether the claims
at issue are directed to a patent-ineligible concept,” such as an abstract idea.
Alice, 134 S. Ct. at 2355. The Examiner found the claims to be “directed to
the abstract idea of processing an insurance claim. . . . The processing of an
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Appeal 2015-007582
Application 12/045,233
insurance claim as recited in the claim is a commercial arrangement
involving an insurance company and a provider of services which is a
method of organizing human activities.” Ans. 2. The Appellant does not
challenge this finding.
Step two is “a search for an ‘inventive concept’—i.e., an element or
combination of elements that is ‘sufficient to ensure that the patent in
practice amounts to significantly more than a patent upon the [ineligible
concept] itself.’” Alice, 134 S. Ct. at 2355 (alteration in original) (quoting
Mayo Collaborative Servs. v. Prometheus Labs., Inc., 132 S. Ct. 1289, 1294
(2012)).
In that regard, on page 2, the Appellant argues that “claim 2 specifies
something significantly more, namely, a series of steps some of which are
performed on one computer and some of which are performed on a second
computer so as to retrieve information selectively from each of the two
computers.” And then claim 2 is reproduced.
The Appellant does not adequately explain and we are unable to
discern in what way reciting the use of two computers adds anything
significant to the abstract idea itself. Claims reciting the use of multiple
computers, each preforming routine functions, have been held patent-
ineligible. See e.g., claim 38 of US 7,725,375, one of the patents at issue in
Alice and claim 2 of US 7,908,202, one of the patents at issue in Fed. Home
Loan Mortg. Corp. v. Graff/Ross Holdings, LLP, 604 F. App'x 930 (Fed. Cir.
2015).
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Appeal 2015-007582
Application 12/045,233
On page 3 of the Reply Brief, the Appellant argues that “the computer
components and the steps recited in claim 2 are not performing “purely
generic computer functions.’”
The Appellant does not adequately explain and we are unable to
discern in what way the recited computers and the corresponding steps they
perform are, as claimed, reasonably broadly construed not to cover “purely
generic computer functions” (See Ans. 3).
Claim 2 calls for employing “a remote computer,” “a first computer,”
and “a second computer.” Nothing more about these devices is said. A
plain reading of these recited devices would lead one of ordinary skill in the
art to understand them to cover generic computers. The steps, too, provide
no detail that would lead one to understand that something other than
generic computers are involved. The recited steps are “receiving”
information at the first computer; “accessing” information via the first
computer; “accessing” information via the second computer; and,
“processing” information. These steps are common information-processing
functions that generic computers are known and expected to perform. Cf.
OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1363 (Fed. Cir. 2015):
Considered individually or taken together as an ordered combination,
the claim elements fail “to ‘transform’ the claimed abstract idea into a
patent-eligible application.” Id. at 2357 (quoting Mayo, 132 S.Ct. at
1294, 1298). For example, claim 1 recites “sending a first set of
electronic messages over a network to devices,” the devices being
“programmed to communicate,” storing test results in a “machine-
readable medium,” and “using a computerized system ... to
automatically determine” an estimated outcome and setting a price.
Just as in Alice, “all of these computer functions are ‘well-understood,
routine, conventional activities] ’ previously known to the industry.”
Alice, 134 S.Ct. at 2359 (quoting Mayo, 132 S.Ct. at 1294) (alterations
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Application 12/045,233
in original); see also buySAFE, 765 F.3d at 1355 (“That a computer
receives and sends the information over a network—with no further
specification—is not even arguably inventive.”).
We note the Appellant’s point that “claim 2 recites specific data
including transaction form data, a unique identifier for an attachment, and
the attachment itself.” Reply Br. 3. But those recitations simply provide a
contextual limitation to the information being processed. That alone is
insufficient to substantively affect the information-processing steps, which
remain common to generic computers. See also CyberSource Corp. v. Retail
Decisions, Inc., 654 F.3d 1366, 1371 (Fed. Cir. 2011)(“The Court [Parker v.
Flook, 437 U.S. 584 (1978)] rejected the notion that the recitation of a
practical application for the calculation could alone make the invention
patentable.”)
Finally, claims must be read in light of the Specification and in that
regard the Specification provides ample evidence that the claimed subject
matter covers employing generic computers. See e.g., para. 18 (“a personal
computer”).
Claim 2, when plainly read and given the broadest reasonable
construction in light of the Specification as it would be understood by one of
ordinary skill in the art, does not include an element or combination of
elements that is sufficient to ensure that the claimed subject matter in
practice amounts to significantly more than to be upon said abstract idea
itself. For the forgoing reasons, the rejection is sustained.
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Appeal 2015-007582
Application 12/045,233
The rejection of claims 2-77 under 35 U.S.C. § 103(a) as being unpatentable
over NPL-Networks.
The Examiner points to pages 81—90 of NPL-Networks as evidence
that the claim limitation “accessing the at least one attachment at a second
computer by using the unique identifier for the at least one attachment”
(claim 2) is disclosed in the prior art. Final Re. 3. The Appellant challenges
this finding. See App. Br. 11. We agree with the Appellant.
It is not clear to us what exactly the Examiner is relying on in the nine
cited pages to find said claim limitation is disclosed in NPL-Networks.
The Examiner responded to the Appellant’s challenge by arguing that
Examiner notes that if the insurance transaction form and
attachment are available in different formats, then it may be necessary
to store them on different computers because one computer may not
be able to support both formats. Thus, storing transaction form data
and attachments on different computers may be required[.] Storing
documents on two different computers versus one would have been
obvious to one of ordinary skill in the art given the fact that one
computer does not support multiple formats unless the computer is
reformatted or reprogrammed to accommodate multiple formats.
NPL-Networks identifies the problem associated with claim
submission particularly when a number of different formats are
available. NPL-Networks discusses a solution to this problem by
reformatting claims data (page 91). Reformatting claims data frees
providers from the burden of programming their systems to handle the
wide variety of electronic formats (page 91).
Ans. 7. But that does not show that said claim limitation is disclosed in
NPL-Networks. Rather, the Examiner has explained a potential problem and
speculated on a solution, a solution that might cover employing the claimed
technique. But, the question is whether one of ordinary skill in the art given
pages 81—90 of NPL-Networks would have been led to the claim 2 subject
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Application 12/045,233
matter and in that regard we do not find that the cited nine pages of NPL-
Networks are adequate to do that.
Accordingly, a prima facie case of obviousness has not been made out
for the claim 2 subject matter in the first instance by a preponderance of the
evidence and the rejection of claim 2 is thus not sustained. We reach the
same conclusion as to claims 3—32, 73 and 76 that depend from claim 2. We
reach the same conclusion as to the other independent claims 33 and 64 and
the claims depending therefrom because they include a similar limitation and
“rejected on similar grounds” (Final Rej. 8).
CONCLUSIONS
The rejection of claims 2—77 under 35 U.S.C. § 101 as being directed
to non-statutory subject matter is affirmed.
The rejection of claims 2—77 under 35 U.S.C. § 103(a) as being
unpatentable over NPL-Networks is reversed.
DECISION
The decision of the Examiner to reject claims 2—77 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)(iv).
AFFIRMED
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