Ex Parte Mosier et al

Patent Trials and Appeals Board

Jun 25, 2019

14149705 - (D) (P.T.A.B. Jun. 25, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
14/149,705 01/07/2014 Charles F. Mosier III
33649 7590 06/25/2019
Mr. Christopher John Rourk
Jackson Walker LLP
2323 ROSS A VENUE
SUITE 600
DALLAS, TX 75201
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.
138737.00025 5852
EXAMINER
HEIN, DEVIN C
ART UNIT PAPER NUMBER
3686
MAIL DATE DELIVERY MODE
06/25/2019 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte CHARLES F. MOSIER III, CHAMINDA GUN ARA TNE,
and MATTHEW HEILMAN
Appeal2018-003061
Application 14/149,705
Technology Center 3600
Before JOSEPH L. DIXON, HUNG H. BUI, and JON M. JURGOV AN,
Administrative Patent Judges.
DIXON, Administrative Patent Judge.
DECISION ON APPEAL
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Application 14/149,705
STATEMENT OF THE CASE
Appellants 1 appeal under 35 U.S.C. § 134(a) from a rejection of
claims 1-20. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
The claims are directed to a method and "electronic medical record
system with automated health care services evaluation" for enabling "a
doctor to order tests, services or other procedures from within a patient's
electronic medical record and to receive the results of the tests, services or
other procedures directly within the patient's electronic medical record."
(Spec. ,r,r 1, 32).
Claim 1, reproduced below, is illustrative of the claimed subject
matter:
1. A system for processing medical data comprising:
an order processing system operating on a first processor
and configured to generate a physician worklist for a patient
profile of an electronic medical records system, to receive an
order generated from within the patient profile of the electronic
medical records system, to generate an order message, and to
generate an entry in the physician worklist of the patient profile
without user interaction;
a health services system operating on a second processor
and configured to receive the order message from the first
processor over an open network and to process the order
message to identify an alternate identification field and one or
more health services provider fields and to generate an
insurance services provider request as a function of the alternate
identification field and to transmit the insurance services
provider request to an insurance services provider system; and
1 Appellants indicate that MEDECISION is the real party in interest. (App.
Br. 4).
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an insurance services interface system configured to
receive a response message from the insurance services
provider system and to transmit the response message to the
order processing system.
(App. Br. 17(Claims Appendix)).
REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Lamb et al.
("Lamb")
Dvorak et al.
("Dvorak")
Tipimeni
Gunn
Ringold
US 2005/0209885 Al
US 2006/0080620 Al
US 2010/0088119 Al
US 2011/0119088 Al
US 8,762,163 Bl
REJECTIONS
The Examiner made the following rejections:
Sept. 22, 2005
Apr. 13, 2006
Apr. 08, 2010
May 19, 2011
June 24, 2014
Claims 1-20 stand rejected under 35 U.S.C. § 101 because the
claimed invention is directed to a judicial exception (i.e., a law of nature, a
natural phenomenon, or an abstract idea) without significantly more.
Claims 1-3 and 5 stand rejected under 35 U.S.C. § I02(a)(l) as
anticipated by Lamb.
Claim 4 stands rejected under 35 U.S.C. § 103 as being unpatentable
over Lamb in view of Gunn.
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Claims 6-16 stand rejected under 35 U.S.C. § 103 as being
unpatentable over Lamb in view of Dvorak.
Claim 17 stands rejected under 35 U.S.C. § 103 as being unpatentable
over Lamb in view of Tipimeni.
Claim 19 stands rejected under 35 U.S.C. § 103 as being unpatentable
over Lamb in view of Dvorak, and further in view of Tipimeni.
Claim 18 stands rejected under 35 U.S.C. § 103 as being unpatentable
over Lamb in view of Ringold.
Claim 20 stands rejected under 35 U.S.C. § 103 as being unpatentable
over Lamb in view of Dvorak, and further in view of Ringold.
ANALYSIS
35 U.S.C. § 101 Rejection of Claims 1-20
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 Supreme Court has long interpreted 35 U.S.C. § 101 to include
implicit exceptions: "' [l]aws of nature, natural phenomena, and abstract
ideas'" are not patentable. Mayo Collaborative Servs. v. Prometheus Labs.,
Inc., 566 U.S. 66, 70 (2012) (brackets in original) (citing Diamond v. Diehr,
450 U.S. 175, 185 (1981)).
In determining whether a claim falls within an excluded category, we
are guided by the Supreme Court's two-step framework, described in Mayo
and Alice. Alice Corp. v. CLS Banklnt'l, 573 U.S. 208, 217-18 (2014)
(citing Mayo, 566 U.S. at 75-77). In accordance with that framework, we
first determine what concept the claim is "directed to." See Alice, 573 U.S.
at 218-19 ("On their face, the claims before us are drawn to the concept of
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intermediated settlement, i.e., the use of a third party to mitigate settlement
risk."); see also Bilski v. Kappas, 130 S. Ct. 3218 (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, 130 S. Ct. 3218
(2010)); mathematical formulas (Parker v. Flook, 437 U.S. 584, 594--95
(1978)); and mental processes (Gottschalkv. Benson, 409 U.S. 63, 69
(1972)). Concepts determined to be patent eligible include physical and
chemical processes, such as "molding rubber products" (Diehr, 450 U.S. at
191 ); "tanning, dyeing, making water-proof cloth, vulcanizing India rubber,
smelting ores" (id. at 183 n.7 (quoting Corning v. Burden, 56 U.S. 252, 267-
68 (1853))); 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
Supreme 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 nothing more than a process for molding rubber
products and not as an attempt to patent a mathematical formula."). Having
said that, the Supreme 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
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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.").
If the claim is "directed to" an abstract idea, we tum to the second
step 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).
"[M]erely requir[ing] generic computer implementation[] fail[ s] to transform
that abstract idea into a patent-eligible invention." Id.
The PTO recently published revised guidance on the application of
§ 101. USPTO, 2019 Revised Patent Subject Matter Eligibility Guidance,
84 Fed. Reg. 50 (Jan. 7, 2019) ("Revised Guidance"). 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 ("Prong Two") (see MPEP § 2106.05(a}-(c), (e}-
(h)) (9th ed. 2018).
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:
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(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 Revised Guidance.
Appellants argue claims 1-20 together. (App. Br. 9; Reply Br. 2).
We select independent claim 1 as the representative claim for the group and
address Appellants' § 101 arguments thereto. Claims 2-20 stand or fall with
claim 1. See 37 C.F.R. § 4I.37(c)(l)(iv) (2017).
Revised Guidance Step 1
Step 1 of the Revised Guidance asks whether the claimed subject
matter falls within the four statutory categories of patentable subject matter
identified by 35 U.S.C. § 101: process, machine, manufacture, or
composition of matter. See Revised Guidance. Claim 1 recites "[a] system
for processing medical data." Appellants do not argue the Examiner erred in
concluding claim 1 falls within the four statutory categories of patentable
subject matter. We agree with the Examiner's conclusion because claim 1
falls within the machine category. (Non-Final Act. 3).
Revised Guidance Step 2A-Prong One
(Does the Claim Recite a Judicial Exception?)
Under Step 2A, Prong One of the Revised Guidance, we determine
whether the claims recite any judicial exceptions, including certain
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groupings of abstract ideas (i.e., mathematical concepts, certain methods of
organizing human activity such as a fundamental economic practice, or
mental processes). See Revised Guidance.
The Examiner determines that independent claim 1 is directed to:
[p ]rocessing a medical order to identify information [which] is
data recognition and storage .... [t]ransmitting the medical order
to an insurance provider [which] is using categories to organize
store and transmit information .... [and] [g]enerating a worklist
entry for the order and updating the worklist entry based on a
response from the insurance provider regarding the order [which]
is collecting information, analyzing it, and displaying certain
results of the collection and analysis.
(Non-Final Act. 3--4; Ans. 3). The Examiner finds claim 1 is therefore
directed to an abstract idea analogous or similar to abstract ideas identified
by the courts in Content Extraction, Cyberfone, and Electric Power Group.
(Non-Final Act. 3--4 (citing Content Extraction & Transmission LLC v.
Wells Fargo Bank, Nat'! Ass 'n, 776 F.3d 1343 (Fed. Cir. 2014); Cyberfone
Sys., LLC v. CNN Interactive Grp., Inc., 558 F. App'x 988 (Fed. Cir. 2014);
Electric Power Grp., LLC v. Alstom S.A., 830 F.3d 1350 (Fed. Cir. 2016))).
Appellants contend the Examiner erred in rejecting the claims under
35 U.S.C. § 101 as directed to non-statutory subject matter because the
claims are not directed to an abstract idea and the Examiner oversimplified
the claims. (App. Br. 9; Reply Br. 2). Appellants argue the claims are not
directed to an abstract idea but, rather, provide a technical, "useful and
practical solution directed to a real problem [how to manage medical data
reliably and privately] associated with network centric technology and
management of medical data." (App. Br. 9). Appellants further argue the
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"Examiner has failed to cite evidence to support" the abstract idea
determination. (Reply Br. 2).
Appellants' arguments are not persuasive. Although the Specification
mentions a computerized arrangement for expediting medical insurance
requests and approvals by insurance providers (see Spec. ,r,r 2, 32), claim 1
is not directed to such a detailed computerized arrangement or to a technical
solution for managing medical data "privately" using "network centric
technology" as Appellants argue (see App. Br. 9). Claim 1 recites two
processors, a first one (for an order processing system) generating "an order
message" and "an entry in the physician worklist," the second one(for a
health services system) processing the order message to identify "an
alternate identification field" and "one or more health services provider
fields" and transmit a generated "insurance services provider request" to an
insurance services provider system for receiving "a response message from
the insurance services provider system." Claim 1 does not specify the
contents of the "physician worklist" or of the "entry in the physician
worklist," and does not specify what data (if any) might be present in the
"alternate identification field" and "health services provider field." Claim 1
also does not address a privacy problem as Appellants assert (see App. Br.
9), as the claim merely recites first and second processors communicating
"over an open network." Although claims are interpreted in light of the
Specification, limitations from the Specification are not read into the claims.
In re Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993).
More specifically, representative claim 1 recites the following
limitations: (1) generating "a physician worklist for a patient profile of an
electronic medical records system," receiving "an order generated from
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within the patient profile of the electronic medical records system," and
generating "an order message" and "an entry in the physician worklist of the
patient profile without user interaction;" (2) receiving and processing the
order message "to identify an alternate identification field and one or more
health services provider fields and to generate an insurance services provider
request as a function of the alternate identification field and to transmit the
insurance services provider request to an insurance services provider
system;" and (3) receiving and transmitting "a response message from the
insurance services provider system." (App. Br. 17 (Claims Appendix)).
These limitations, under their broadest reasonable interpretation, recite
exchanging information with a medical insurer to assess medical insurance
eligibility.
For example, the recited limitation (1) describes manipulating patient
information to generate a medical order using "a physician worklist" and
generate a message ("order message") concerning the order, which are
activities that would ordinarily take place when a doctor orders medical
services for a patient. The recited limitations (2) and (3) describe analyzing
the order message to identify the message's contents, generate a request for
insurance approval, and receive the insurer's response, which are activities
that would ordinarily take place when the doctor's office contacts the
patient's insurer to obtain approval or authorization for prescribed medical
services. (Spec. ,r 2).
Thus, Appellants' system processes medical data to determine
patients' medical insurance eligibility. Insurance claim processing involves
determining whether a medical claim would be allowed or denied, and
determining the patients' financial burden for prescribed medical
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procedures, which is a known economic practice in our system of commerce
( e.g., an economic practice typically performed by medical establishments,
such as hospitals and doctors' offices }-similar to concepts identified by the
courts as abstract ideas. See Accenture Global Servs., GmbH v. Guidewire
Software, Inc., 728 F.3d 1336, 1344--45 (Fed. Cir. 2013) (determining
"system claims ... [that] only contain generalized software components
arranged to implement an abstract concept [ of generating insurance-policy-
related tasks based on rules to be completed upon the occurrence of an
event] on a computer" to be patent-ineligible); In re Salwan, 681 F.App'x
938, 941 (Fed. Cir. 2017) (claims for organizing patient health information,
transferring patient health information to a patient network, and billing
insurance companies held patent-ineligible); Bancorp Servs., L.L.C. v. Sun
Life Assurance Co. of Can. (U.S.), 687 F.3d 1266, 1270, 1278, 1280 (Fed.
Cir. 2012) (method and system claims for managing a stable value protected
life insurance policy by performing calculations and manipulating the results
held patent-ineligible). We therefore conclude representative claim 1 recites
a fundamental economic practice, which is one of certain methods of
organizing human activity identified in the Revised Guidance as a judicial
exception of an abstract idea. See Revised Guidance, 84 Fed. Reg. at 52
( describing an abstract idea category of"[ c ]ertain methods of organizing
human activity-fundamental economic principles or practices (including
hedging, insurance, mitigating risk)"). Thus, representative claim 1 recites
an abstract idea.
We further note limitations ( 1 }-(3) of claim 1 recite steps readily
performable by a human being ( e.g., by a medical professional using patient
data to call or otherwise exchange information with the patient's insurer to
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assess the patient's insurance eligibility for particular medical procedures).
Thus, we conclude limitations (1 }-(3) in claim 1 also recite concepts that can
be performed mentally and manually in the human mind, which is another
abstract idea identified in the Revised Guidance. See Revised Guidance, 84
Fed. Reg. at 52, 54; CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d
1366, 1372-73 (Fed. Cir. 2011) ("[A] method that can be performed by
human thought alone is merely an abstract idea and is not patent-eligible
under§ 101."). Additionally, mental processes remain unpatentable even
when automated to reduce the burden on the user of what once could have
been done with pen and paper. CyberSource, 654 F.3d at 1375 ("That
purely mental processes can be unpatentable, even when performed by a
computer, was precisely the holding of the Supreme Court in Gottschalk v.
Benson."). Thus, representative claim 1 recites an abstract idea for the
alternative reason.
In conclusion, representative claim 1, and grouped independent claims
6 and 14, not separately argued, recite abstract ideas comprising mental
processes or a fundamental economic practice.
As further recognized by the Examiner, claim 1 recites collecting,
analyzing, transmitting, and receiving data, similar to other claims
(involving data collection and analysis) identified by the courts as directed to
abstract ideas. (Non-Final Act. 3--4; Ans. 3; see Electric Power Grp.,
830 F.3d at 1353 (holding that "collecting information, analyzing it, and
displaying certain results of the collection and analysis" are "a familiar class
of claims 'directed to' a patent ineligible concept"); Content Extraction, 776
F.3d at 1347 (claims were "drawn to the abstract idea of 1) collecting data,
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2) recognizing certain data within the collected data set, and 3) storing that
recognized data in a memory")).
We are not persuaded by Appellants' additional argument that the
Examiner's § 101 rejection is defective because the "Examiner has failed to
cite evidence to support" the abstract idea determination, in contradiction
with "the Supreme Court's observation in Alice and Bilski regarding long
prevalent concepts [which] were supported by evidence in the form of non-
patent literature." (Reply Br. 2). First, we do not read Bilski and Alice as
establishing a rule that evidence (such as non-patent literature) always is
required to demonstrate a claim recites an abstract idea. Second, we note
patent eligibility is a question of law that is reviewable de nova.
Dealertrack, 674 F.3d at 1333 ("Whether a patent claim is drawn to patent-
eligible subject matter is an issue of law that is reviewed de novo.") (quoting
SiRF Tech., Inc. v. Int'! Trade Comm'n, 601 F.3d 1319, 1331 (Fed. Cir.
2010)). In this case, we are compelled to conclude that claim 1, and grouped
claims 6 and 14, recites an abstract idea of a fundamental economic practice
and method of organizing human activity. Third, the record in this case
includes citations to publications showing that determining medical
insurance eligibility and processing insurance claims is a known economic
practice and method of organizing human activity associated with medical
establishments. See Lamb ( cited by the Examiner in the present Non-Final
Action dated January 11, 2017) ,r,r 5---6 (explaining that "[i]nefficiency in
communication among healthcare referrers, healthcare specialty providers,
insurance specialists, and any other relevant parties directly translates into
inefficiency in the provision of patient care"), 14 ( describing a "referral
order management system" that "enables significant reduction of ad hoc or
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manual communications among specialty service providers, referrers, and
patients in order to set up and complete the required specialty services"), 59
( discussing the use of "business rules for routing events" and processing
medical orders, thus evidencing the long prevalent use of "business rules"
for organizing work on medical orders), 69 ( explaining that the referral order
management system "lightens medical staff workload by automating a
scheduling procedure"). Thus, we do not find Appellants' argument
persuasive.
In conclusion, representative claim 1, and grouped claims 6 and 14,
not separately argued, recite an abstract idea.
Revised Guidance Step 2A~Prong Two
(Integration into a Practical Application)
Under Step 2A, Prong Two of the Revised Guidance, we discern no
additional element ( or combination of elements) recited in Appellants'
representative claim 1 that integrates the judicial exception into a practical
application. See Revised Guidance, 84 Fed. Reg. at 54--55 ("Prong Two").
For example, Appellants' claimed additional elements ("an order processing
system," "a health services system," "an electronic medical records system,"
"a first processor," "a second processor," "an open network," and "an
insurance services interface system") do not: ( 1) improve the functioning of
a computer or other technology; (2) are not applied with any particular
machine (except for generic processors); (3) do not effect a transformation
of a particular article to a different state; and ( 4) are not applied in any
meaningful way beyond generally linking the use of the judicial exception to
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a particular technological environment, such that the claim as a whole is
more than a drafting effort designed to monopolize the exception. See
MPEP §§ 2106.05(a}-(c), (e}-(h). Appellants' claim 1 does not describe
technological improvements, and is not directed to an improvement in
computer-related technology or network technology. (Ans. 4, 6; Non-Final
Act. 27). Nor have Appellants demonstrated that the claim recites a specific
improvement to the way computers operate or to the way computers store
and retrieve data in memory. See Enfzsh, LLC v. Microsoft Corp., 822 F.3d
1327, 1336, 1339 (Fed. Cir. 2016).
The additional elements in claim 1 are broadly claimed to cover
processors and a network that are recited in such a general, generic, and
functional manner that the claim fails to capture how the claimed system's
functionality is improved when processing medical data, or how the claimed
system "provides a technical solution to [a] network centric problem." (See
App. Br. 9). Appellants' claim 1, unlike claims found non-abstract in prior
cases, uses generic computer technology to perform data retrieval, analysis,
and transmission, does not recite an improvement to a particular computer
technology. See, e.g., McRO, Inc. v. Bandai Namco Games America Inc.,
837 F.3d 1299, 1314--15 (Fed. Cir. 2016) (finding claims not abstract
because they "focused on a specific asserted improvement in computer
animation"). Thus, claim 1 's hardware elements do not evince integration
into a practical application. Rather, Appellants' claimed invention uses
existing technology to process medical orders and insurance authorization
requests, where the functions performed by the claimed processors automate
data processing operations that can be performed by humans manually ( e.g.,
using pen, paper, and telephones). (Ans. 4, 6). See Bancorp, 687 F.3d at
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1278 ("[T]he fact that the required calculations could be performed more
efficiently via a computer does not materially alter the patent eligibility of
the claimed subject matter."); Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709,
715-16 (Fed. Cir. 2014) ("Adding routine additional steps such as ... use of
the Internet does not transform an otherwise abstract idea into patent-eligible
subject matter.").
Thus, claim 1 does not integrate the judicial exception into a practical
app li cation.
For these reasons, we determine representative claim 1, and grouped
claims 6 and 14, are directed to a judicial exception-namely, the abstract
idea of processing medical data to determine medical insurance eligibility,
which is a fundamental economic practice and data manipulation
performable by a human being mentally and manually in the human mind-
that does not integrate a practical application.
Revised Guidance Step 2B (Inventive Concept)
Under the Revised Guidance, 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.
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Here, the Examiner maintains "the claims do not include additional
limitations that are sufficient to amount to significantly more than the
judicial exception because the claims recite processes that are routine and
well-understood in the art of healthcare communication systems." (Ans. 4).
The Examiner finds "the applicant is taking the well-understood process of
placing an order, routing the order, creating a worklist entry for the order
and updating the worklist entry based on the status of the order and
implementing it on a computer" having "[g]eneric computer structure" and
"perform[ing] generic computer functions." (Id.).
Appellants contend the Examiner erred because claim 1 recites
significantly more than a judicial exception for the reasons that: (1) "the
system claimed is directed to a network computing system" that provides "a
network centric solution" to "the real problem of managing medical data
reliable[ sic] and privately" (App. Br. 9); and (2) the Examiner has not
provided any documentary evidence that would support a finding of "routine
and well-understood" process steps (Reply Br. 2).
Appellants' arguments are not persuasive. Under Federal Circuit
precedent, an "inventive concept" under Alice step 2 and the Revised
Guidance can be established by showing, for example, that the patent claims:
( 1) provide a technical solution to a technical problem
unique to the Internet, e.g., a "solution ... necessarily
rooted in computer technology in order to overcome a
problem specifically arising in the realm of computer
networks" (see DDR Holdings, LLC v. Hotels.com, L.P.,
773 F.3d 1245, 1257 (Fed. Cir. 2014));
(2) transform the abstract idea into "a particular, practical
application of that abstract idea," e.g., "installation of a
filtering tool at a specific location, remote from the end-
users, with customizable filtering features specific to
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each end user" (see Bascom Glob. Internet Servs., Inc. v.
AT&T Mobility LLC, 827 F.3d 1341, 1350, 1352 (Fed.
Cir. 2016)); or
(3) "entail[] an unconventional technological solution ([ e.g.,]
enhancing data in a distributed fashion) to a
technological problem ([e.g.,] massive record flows [that]
previously required massive databases)" and "improve
the performance of the system itself' (see Amdocs (Isr.)
Ltd. v. Openet Telecom, Inc., 841 F.3d 1288, 1300, 1302
(Fed. Cir. 2016)).
Similarly, as recognized by the Revised Guidance, an "inventive
concept" under Alice step 2 can also be evaluated based on whether an
additional element or combination of elements:
(1) "[ a ]dds a specific limitation or combination of limitations
that are not well-understood, routine, conventional
activity in the field, which is indicative that an inventive
concept may be present;" or
(2) "simply appends well-understood, routine, conventional
activities previously known to the industry, specified at a
high level of generality, to the judicial exception, which
is indicative that an inventive concept may not be
present."
See Revised Guidance, 84 Fed. Reg. at 56.
In this case, however, we find no element or combination of elements
recited in Appellants' representative claim 1 that contains any "inventive
concept" or adds anything "significantly more" to transform the abstract
concept into a patent-eligible application. Alice, 573 U.S. at 222. For
example, Appellants' claimed invention does not recite additional elements
that are rooted in computer technology, as the claims in DDR Holdings. In
DDR, the Federal Circuit found patent-eligible claims under section 101
because DDR 's claims: (1) do not merely recite "the performance of some
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business practice known from the pre-Internet world" previously disclosed
in Bilski and Alice; but instead (2) provide a technical solution to a technical
problem unique to the Internet, i.e., a "solution ... necessarily rooted in
computer technology in order to overcome a problem specifically arising in
the realm of computer networks." DDR Holdings, 773 F.3d at 1257.
Likewise, the Federal Circuit also found Amdocs' claims patent-eligible
under section 101 because like DDR, Amdocs' claims "entail[] an
unconventional technological solution ( enhancing data in a distributed
fashion) to a technological problem (massive record flows which previously
required massive databases)" and "improve the performance of the system
itself." Amdocs, 841 F.3d at 1300, 1302.
In contrast to DD R and Amdocs, Appellants' Specification and claims
describe processing medical data to determine patients' medical insurance
eligibility and potential medical costs, which is a fundamental economic
practice and data analysis and manipulation performable by a human being
mentally and manually in the human mind somewhere in the. (Non-Final
Act. 3--4). Appellants' claimed processing of an order message to determine
medical insurance eligibility does not provide a technical solution to a
technical problem unique to the Internet, i.e., a "solution ... necessarily
rooted in computer technology in order to overcome a problem specifically
arising in the realm of computer networks." DDR Holdings, 773 F.3d at
1257.
Appellants argue "the system claimed is directed to a network
computing system" that provides "a network centric solution" for managing
medical data (see App. Br. 9), but claim 1 merely recites a generic "open
network" connecting two generic processors without any specific technical
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detail on how the data processing steps are performed. Thus, Appellants'
purported "technical solution" (see App. Br. 9) requires only general
purpose technology operating in its ordinary and conventional capacities.
Appellants have not demonstrated their claimed network, processors, and
systems are able to performfunctions that are not merely generic, as the
claims in DDR. See DDR Holdings, 773 F.3d at 1258. Nor does
Appellants' invention entail, like Amdocs, any "unconventional
technological solution ( enhancing data in a distributed fashion) to a
technological problem (massive record flows which previously required
massive databases)" and "improve the performance of the system itself."
Amdocs, 841 F.3d at 1300, 1302. Instead, the solution proposed by
Appellants manipulates medical information using generic "processors" as
tools to expedite data processing. (Ans. 4). "[T]he use of generic computer
elements like a microprocessor or user interface" to perform conventional
computer functions "do not alone transform an otherwise abstract idea into
patent-eligible subject matter." FairWarning IP, LLC v. Iatric Sys., Inc.,
839 F.3d 1089, 1096 (Fed. Cir. 2016) (citing DDR Holdings, 773 F.3d at
1256); see also OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1363
(Fed. Cir. 2015) ("relying on a computer to perform routine tasks more
quickly or more accurately is insufficient to render a claim patent eligible").
Additionally, the "problem of managing medical data reliable[ sic] and
privately" (see App. Br. 9) is a business/medical problem that existed prior
to the Internet.
We also are not persuaded that the Examiner provides no evidence of
"routine and well-understood" processes "in the art of healthcare
communication systems" as Appellants advocate. (See Reply Br. 2).
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Instead, the Examiner has identified conventional computerized techniques
for processing medical orders to assess medical insurance eligibility. 2
Further, Appellants' Specification describes generic computing elements
performing generic data processing and transmission functions. (Ans. 5
(citing Spec. ,r,r 9-10); Non-Final Act. 5; see also Spec. ,r 19). As our
reviewing court has observed, "after Alice, there can remain no doubt:
recitation of generic computer limitations does not make an otherwise
ineligible claim patent-eligible." DDR Holdings, 773 F.3d at 1256 (citing
Alice, 134 S. Ct. at 2358).
Because Appellants' representative claim 1 is directed to a patent-
ineligible abstract concept and does not recite something "significantly
more" under the second step of the Alice analysis, we sustain the Examiner's
rejection of representative claim 1, and grouped independent claims 6 and 14
under 35 U.S.C. § 101.
No separate arguments are presented for dependent claims 2-5, 7-13,
and 15-20, which fall with independent claims 1 and 6.
37 C.F.R. § 4I.37(c)(l)(iv). We, therefore, sustain the rejection under
35 U.S.C. § 101 of claims 2-5, 7-13, and 15-20.
35 U.S.C. § 102 Rejection of Claims 1, 2, and 5
Appellants contend the Examiner erred in finding Lamb discloses all
the limitations of independent claim 1. (App. Br. 9-11). Specifically,
Appellants contend Lamb does not disclose "an order processing system
2 For example, the Examiner has identified Lamb as disclosing
computerized techniques for processing medical data and orders, and
exchanging information with insurers to assess patients' medical insurance
eligibility. (See Lamb Figs. 1---6, Abstract).
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operating on a first processor" and "a health services system operating on a
second processor," the order processing system generating "a physician
worklist" and "an entry in the physician worklist of the patient profile
without user interaction," as claimed. (App. Br. 11, 17; Reply Br. 3).
Rather, Appellants argue, Lamb merely discloses a remote provider system
110 and specialty department system 130 creating an order harvested by a
centralized order management system 190. (App. Br. 11 (citing Lamb
,r,r 23-25)). Appellants argue Lamb's orders and "different data structures,
i.e. the order and patient record" do not teach the claimed "physician
worklist"; and since "Lamb simply does not teach the physician's worklist
... there cannot be [in Lamb] an entry made in the physician's worklist
without user interaction" as claimed. (App. Br. 11; Reply Br. 3). Appellants
further argue Lamb does not disclose that "generation [ of a physician
worklist] and entry [in the physician worklist] are based on patient profile,"
and Lamb further does not disclose an "alternative identification field from
an order message," "one or more health service provider fields [that] can be
obtained from an order message," and "service provider(s) response
message," as required by claim 1. (App. Br. 10-11 ). Appellants argue their
invention discloses "providing service provider information in an order
message ... as opposed to having to retrieve from a database store, which is
what Lamb teaches." (App. Br. 11 (citing Lamb ,r,r 33-34, Figs. 2-3)). We
do not agree.
We agree with and adopt the Examiner's findings as our own. (Non-
Final Act. 6-8; Ans. 6-8). Particularly, we agree with the Examiner that
Lamb's referral order management system 190----including data store 220
and engines 210,230, and 250, but not engine 240 in Lamb's Figure 2-
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discloses the claimed order processing system operating on a first processor;
and Lamb's eligibility and preauthorization engine 240 discloses the
claimed health services system operating on a second processor. (Ans. 7
(citing Lamb ,r,r 30-34, 37-38, 41--43, Figs. 2-3); Non-Final Act. 6-7 ("a
health services system operating on a second processor (Fig. 2, element 240
[of Lamb], which may be a third party system")); see Lamb ,r 42 ("Although
in the preferred embodiment of the present invention, engine 240 is a part of
the referral order management system 190, other embodiments of the present
invention may use third party subsystems for performing the functionality of
engine 240") (emphasis added)). Appellants' arguments have not addressed
these specific findings by the Examiner, as Appellants merely discuss
Lamb's remote provider system 110 and specialty department system 130
providing an order to system 190. (See App. Br. 11 ).
We also agree with the Examiner that Lamb's order processing system
is configured to generate "a physician worklist for a patient profile," as
recited in claim 1. (Non-Final Act. 6-7). We note Appellants' arguments
again do not address the Examiner's specific findings that Lamb's "orders
stored in the data store 220 in association with a patient profile and with an
associated pre-authorization flag" disclose the claimed "physician
worklist." (Non-Final Act. 7). Rather, Appellants' arguments assert "[t]he
Office wants to equate an order with a physician worklist." (See App. Br.
11 ). The Examiner's Answer further clarifies that
as discussed in the previous rejection and as shown and disclosed
in figs. 2 and 3, associated paragraphs and paragraphs [0033]-
[0034] and [0037]-[0038], the orders of Lamb are stored in a
database [220] and associated with patient records. It is the
collection of orders associate[ d] with the corresponding patient
records (profiles) which are construed as a physician worklist as
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the stored orders require further action (work) and multiple
orders (a list) may be stored. Under broadest reasonable
interpretation a collection of pending order[ s] for a physician
associated with patient records in database can be construed as
a physician worklist in a patient profile.
(Ans. 7 (emphasis added)). We agree with the Examiner's findings.
Particularly, Lamb's order processing system (referral order management
system 190 including data store 220 and engines 210,230, and 250) holds
medical "[ o ]rders 340 ... stored in association with patient records [320]."
(See Lamb ,r 38 (emphasis added), Figs. 2-3). Lamb also discloses the order
processing system interfaces with end-users of a referring provider's office
(110) where the "end-users of system 110 can be physicians." (See Lamb
,r 23). Thus, Lamb's collection of medical orders associated with
corresponding patient profiles discloses the claimed "physician worklist for
a patient profile" generated by the order processing system.
Appellants respond that the Examiner's combination of "two different
data structures, i.e. the order and patient record"-that are "formatted and
... organized as an order data structure and a patient record data
structure"-is "not a physician's worklist" as claimed, and "[o]nly the
Applicants['] specification teaches a physician's worklist." (Reply Br. 3).
We remain unpersuaded by Appellants' argument because Appellants'
Specification does not provide an explicit and exclusive definition of the
claimed term "physician worklist," and does not exclude a collection of data
structures from a "physician worklist." The Specification merely provides
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discussion of non-limiting examples of physician worklists. (See Spec.
i-f 13). 3
Appellants also argue Lamb does not disclose an order processing
system generating "an entry in the physician worklist of the patient profile
without user interaction" as recited in claim 1. (Reply Br. 3; App. Br. 11 ).
We do not agree. Appellants' arguments do not address the Examiner's
findings that Lamb's generating and storing orders and associations ( with
respect to patient records in data store 220 of order processing system 190)
discloses generating an entry in the physician worklist without user
interaction, as claimed. (Ans. 7-8 (citing Lamb ,r,r 33-34, 37-38, 41--42,
60-62); Non-Final Act. 6-7 (citing Lamb Figs. 2-3)).
Appellants further argue Lamb does not disclose an "alternative
identification field from an order message," "one or more health service
provider fields [that] can be obtained from an order message," and "service
provider(s) response message," as required by claim 1. (App. Br. 10-11).
Appellants' arguments, however, do not address the Examiner's specific
findings that Lamb generates notifications and requests, which disclose "an
order message ... transmitted to the eligibility and preauthorization engine
[240] which identifies an order ID (alternate identification field) and a
medical procedure ID (health services provider field)," as required by claim
1. (Ans. 8 (citing Lamb ,r,r 33-34, 37-38, 41--42, 60-62); Non-Final Act. 7-
3 Appellants' Specification broadly describes "[p ]hysicians work list system
116 is configured to generate a list of work items for a physician," where
"[i]n one exemplary embodiment, physicians work list system 116 can
generate one or more user selectable displays and controls" that "allow a
user to view pending work items, completed work items, cancelled work
items or other suitable data, and to perform one or more associated
functions, such as to request an update." (See Spec. ,r 13).
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8; see Lamb ,r,r 41--42 ( describing notifications received by engine 240), 62
(describing new order notifications received by engine 240)). We agree with
the Examiner's findings that Lamb discloses the claimed "order message"
that identifies "an alternate identification field and one or more health
services provider fields." As the Examiner further finds, Lamb discloses the
claimed "response message" received by an insurance services interface
system (Lamb's communication engine 250) from an insurance services
provider system. (Ans. 8; Non-Final Act. 8 ( citing Lamb ,r,r 65---66, Fig. 2)).
Appellants' arguments have not addressed these specific findings by the
Examiner.
Thus, for the above reasons, we sustain the Examiner's anticipation
rejection of independent claim 1, and dependent claims 2 and 5 not
separately argued. (App. Br. 9).
35 U.S.C. § 102 Rejection of Claim 3
Claim 3 depends from claim 1, and further recites:
the health services system further comprises a search by alternate
identification system configured to receive the order message, to
identify a predetermined data field in the order message and to
look up format data and address data associated with a data value
that is stored in the predetermined data field.
Appellants contend "[t]he claim recites that the format data and
address data can be found, i.e. looked up, using a data value that is stored in
the predetermined data field of the order message" and "[ n Jo where in the
passage cited [(i.e., Lamb's paragraphs 42 and 60 cited by Examiner's Non-
Final Action)] is this feature taught or suggested." (App. Br. 12).
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The Examiner's Answer additionally cites to Lamb's paragraphs 43,
61, and 62, noting that "the thrust and rationale of the [anticipation] rejection
has not changed as a result of the paragraph citation corrections listen
herein." (Ans. 8 (citing Lamb ,r,r 42--43, 60-62)). Particularly, the
Examiner finds Lamb's "order ID in the order message" discloses the
claimed "data value that is stored in the predetermined data field," and
Lamb's "order ID in the order message is used to look up format data and
address data associated with the order ID," where Lamb's looked-up
"insurance carrier" discloses the claimed looked-up "address data," and
Lamb's data on "whether electronic requests are permitted'' discloses the
claimed looked-up "format data." (Ans. 8; Non-Final Act. 9).
We agree with the Examiner's findings. Lamb's engine 240 (claimed
health services system) identifies an order ID in an order message and uses
the order ID "to determine the patient insurance carrier," "determine[]
whether the patient's insurance carrier requires preauthorization for the
procedure indicated in the order," and "determine[] ... whether the
insurance carrier supports an electronic request for pre-authorization." (See
Lamb ,r 62). Engine 240 then "communicates ... the request for
preauthorization .... includ[ing] ... insurance carrier." (Id.). Thus, Lamb's
looked-up "insurance carrier" information includes a way to contact the
insurer, e.g., via electronic request, thereby disclosing the claimed "address
data"; and Lamb's determination of "whether the insurance carrier supports
an electronic request for pre-authorization" discloses the broadly claimed
"format data." (Id.). Appellants' arguments have not addressed these
findings by the Examiner.
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Accordingly, Appellants' arguments have not persuaded us of error in
the Examiner's anticipation rejection of claim 3. Therefore, we sustain the
Examiner's rejection of claim 3.
35 U.S.C. § 103 Rejection of Claim 4
Claim 4 depends from claim 1, and further recites:
the health services system further comprises a search provider by
national provider identifier system configured to receive the
order message, to identify a plurality of predetermined data fields
in the order message and to look up national provider identifier
data associated with data values that are stored in the plurality of
predetermined data fields.
Appellants contend claim 4 requires "an NPI [(National Provider
Identifier)] ... to [be] identified for a particular order," which is different
from Gunn that "does not look up NPI data" but rather "teaches that the NPI
is already known and information is being passed to the known NPI
database." (App. Br. 12 (citing Gunn ,r,r 70-71); Reply Br. 3).
Appellants' arguments are not persuasive because, as the Examiner
finds, "Gunn teaches looking up national provider identifier [ (NPI)] data
associate[d] with data values of an order/profile." (Ans. 9; Non-Final Act.
11 (citing Gunn ,r,r 70-71, 84, Fig. IC)). Particularly, Gunn's Figure IC
discloses a healthcare exchange system that receives customer requests and
includes an "XChange Rules Engine [that] may request to look up
organization, provider . . . from NP! Database." (See Gunn ,r,r 70-71
(emphasis added), Fig. IC (step 4)). In response, the "NP! Database may
send a response regarding the organization, provider ... back to XChange
Rules Engine." (See Gunn ,r 71 (emphasis added), Fig. IC (step 5)). Gunn's
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"provider" may be "any doctor's office, doctor's practice, clinic, hospital,
lab, pharmacy" holding an "entity profile [that] may include any National
Provider Identifier (NPI)." (See Gunn ,r,r 37, 59). Thus, Gunn teaches
looking up national provider identifier data as recited in claim 4. (Ans. 9;
Non-Final Act. 11).
Accordingly, Appellants' arguments have not persuaded us of error in
the Examiner's § 103 rejection of claim 4. Therefore, we sustain the
Examiner's rejection of claim 4.
35 U.S.C. § 103 Rejection of Claim 6-16
With respect to independent claim 6, Appellants argue: (i) "Lamb
does not teach D 1" ( where "D 1: electronically generating an order from the
user interface from within a records system operating on a first processor
and transmitting the order to a health services system over an open
network"); (ii) "Lamb never mentions or suggests that one or more health
service provider fields can be obtained from an order message" and does not
teach that "an insurance services provider" and a "plurality of physicians
can be identified from an order"; and (iii) "[t]he Office has also failed to
show where Lamb teaches D3" ( where "D3: automatically generating a
physician's work list entry associated with a patient account as a function
of the order at the health services system and transmitting the physician's
work list entry from the health services system to the electronic medical
records system over the open network"), as Lamb does not teach "a
physician worklist" or a "worklist entry ... automatically generated and
transmitted to the records system." (App. Br. 13-14).
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Appellants' arguments are unpersuasive because they do not address
the Examiner's specific findings as to the combined teachings of Lamb and
Dvorak. For example, Appellants argue "Lamb does not teach DI" (where
D 1 is "electronically generating an order from the user interface from within
a records system operating on a first processor and transmitting the order to
a health services system over an open network," see App. Br. 13-14), but
Appellants do not address the Examiner's findings that: (i) Lamb teaches "a
health services system" and "electronically generating an order from the
patient account screen user interface," (ii) Dvorak teaches "that it was old
and well known in the art to generate an order from a patient account in an
electronic medical records system and to transmit the order to a health
services system over a network to store," and (iii) it would have been
"obvious to separate the electronic medical records system for order
generation and the health services system ( order management system of
Lamb) to provide efficient order entry." (See Non-Final Act. 11-14 (citing
Lamb ,r,r 24--26, 32-33, 60, Fig. 4; Dvorak ,r,r 3--4, 19-21, 27, Fig. 1); Ans.
10). Appellants further argue "Lamb does not teach plurality of physicians
can be identified from an order" and "Lamb does not teach D2" (i.e.,
"processing the order at the health services system to identify an insurance
services provider and a plurality of physicians associated with the order,"
see App. Br. 13-14), but Appellants do not address the Examiner's findings
that Lamb's paragraphs 32-34, 46--49, and 60 teach processing an order to
identify an insurance services provider and a plurality of physicians
associated with the order. (See Non-Final Act. 12; Ans. 10). Appellants'
also argue "[t]he Office has also failed to show where Lamb teaches D3"
(i.e., "automatically generating a physician's work list entry associated
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with a patient account as a function of the order at the health services system
and transmitting the physician's work list entry from the health services
system to the electronic medical records system over the open network,"
see App. Br. 13-14), without addressing the Examiner's findings as to the
combined teachings of Lamb and Dvorak with respect to claimed limitation
D3. (See Non-Final Act. 12-14; Ans. 10). We find the Examiner has
provided reasoned explanations in the rejection of claim 6 and in response to
Appellants' arguments. (Non-Final Act. 11-14; Ans. 10). Appellants
generally disagree without specifically addressing the Examiner's findings
and rationale to combine the teachings of the two references. Merely
alleging that the references fail to support an obviousness rejection is
insufficient to persuade us of Examiner error. Attorney arguments and
conclusory statements that are unsupported by factual evidence are entitled
to little probative value. In re Geisler, 116 F.3d 1465, 1470 (Fed. Cir.
1997); see also In re De Blauwe, 736 F.2d 699, 705 (Fed. Cir. 1984); and Ex
parte Belinne, No. 2009-004693, slip op. at 7-8 (BP AI Aug. 10, 2009)
(informative), available at
https ://www. uspto. gov/ sites/ default/files/ip/boards/bpai/ decisions/inform/f dO
9004693.pdf.
Appellants' also reiterate arguments presented against claim 1 ("Lamb
never mentions or suggests that one or more health service provider fields
can be obtained from an order message," see App. Br. 14), however, claim 6
does not recite that health service provider fields can be obtained from an
order message.
We are also not persuaded by Appellants' arguments regarding the
"physician worklist" and an automatically generated "worklist entry." (See
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App. Br. 14; Reply Br. 3--4). As discussed supra with respect to claim 1, we
agree with the Examiner that Lamb's collection of medical orders associated
with corresponding patient profiles teaches the claimed physician worklist,
and Lamb's generating and storing orders and associations (with respect to
patient records in data store 220) teaches the claimed electronically
generating a worklist entry without user interaction.
Accordingly, Appellants' arguments have not persuaded us of error in
the Examiner's § 103 rejection of claim 6. Therefore, we sustain the
Examiner's § 103 rejection of independent claim 6, independent claim 14
argued together with claim 6, and dependent claims 7-13, 15, and 16, not
separately argued. (App. Br. 12).
35 U.S.C. § 103 Rejections of Claims 17 and 19
Claim 17 depends from claim 1, and further recites:
the order processing system is configured to receive an approval
response message from the insurance services provider system
and to delete the entry in the physician worklist of the patient
profile without user interaction.
Appellants contend the cited portion of Tipimeni (i.e., paragraph 74)
does not teach or suggest the claimed "delet[ing] the entry in the physician
worklist of the patient profile without user interaction"; rather, Tipimeni
merely discloses that "a file is automatically removed from a folder," and
Tipimeni' s "removal and the automatic removal of approved documents
from a folder in no way means a deleted file or document." (App. Br. 14--
15; Reply Br. 4). Appellants further argue "[a]utomatic is never mentioned
with respect to the actual delete function [ of Tipimeni]" and thus Tipimeni
does not teach the claimed "without user interaction." (Reply Br. 4).
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Appellants' arguments are not persuasive. Initially, we note
Appellants' argument that the claimed deleting ''from an electronic system"
is not the same as Tipimeni' s removal is not commensurate with the scope
of claim 17. (Reply Br. 4 ( emphasis added)). Claim 17 merely recites
deleting the entry in the physician worklist, which does not preclude
removing a document or listing from a list or folder as taught by Tipimeni.
(See Tipimeni ,r 74 (describing "[a]pproved documents ... [are] removed
from the Pending Approval list" and "a document may be removed from the
Pending Approval mail folder automatically")). The broadly claimed
"entry" does not exclude Tipimeni's documents, and the broadly claimed
"physician worklist" does not exclude email folders (such as Tipimeni's
Pending Approval mail folder). We therefore agree with the Examiner that
Tipimeni' s document removal from a folder teaches the claimed deletion
because Tipimeni's removal deletes the document from that folder. (Non-
Final Act. 23).
We also agree with the Examiner that "under broadest reasonable
interpretation, 'delete the entry in the physician worklist of the patient
profile without user interaction' can be construed as the not requir[ing] a
user to manually 'delete' the entry." (Ans. 10 (emphasis added)). Such
entry deletion "without user interaction" is taught by Tipimeni' s automatic
removal of a document from the Pending Approval mail folder after the
document has been viewed by the authorized provider. (See Tipimeni ,r 74
("Significantly, a document may be removed from the Pending Approval
mail folder automatically when the authorized provider reviews the
document in viewing the patient record"); Ans. 10-11 ).
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As Appellants' arguments have not persuaded us the Examiner erred
in rejecting claim 17, we sustain the Examiner's§ 103 rejection of claim 17,
and claim 19 argued together with claim 17. (App. Br. 15).
35 U.S.C. § 103 Rejections of Claims 18 and 20
Claim 18 depends from claim 1, and further recites:
the order processing system is configured to receive a denied
response message from the insurance services provider system
and to add a second entry in the physician worklist of the patient
profile containing a reason for denial, without user interaction.
Appellants contend "neither Lamb or[ sic] Ringold teach adding a
second entry in the physician worklist of the patient profile." (App. Br. 15).
The Examiner finds Lamb's "[u]pdating the stored order with denial
response flags is adding an entry to the physician worklist," and therefore
"Lamb teaches receiving a denial response and adding a second entry to the
worklist" as claimed. (Ans. 11 (citing Lamb ,r,r 65---68); Non-Final Act. 24--
25). We agree with the Examiner's reasonable findings, which are
supported by Lamb. (See Lamb ,r,r 64 ("If the insurance carrier reimburses
for the procedure for the diagnosis indicated in the order, then the 'required
ABN' flag in orders 310 is set ... to FALSE. In the alternative, the
'required ABN' flag is set to TRUE for this order"), 67 ("The [insurer's]
response may include ... a flag indicating whether the procedure will be
reimbursed"). Appellants' arguments have not addressed these findings by
the Examiner.
Accordingly, Appellants' arguments have not persuaded us of error in
the Examiner's obviousness rejection of claim 18. Therefore, we sustain the
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Examiner's § 103 rejection of claim 18, and claim 20 argued together with
claim 18. (App. Br. 16).
CONCLUSIONS
The Examiner did not err in rejecting claims 1-20 based upon a lack
of patent eligible subject matter under 35 U.S.C. § 101, claims 1-3 and 5 as
anticipated under 35 U.S.C. § 102(a)(l), and claims 4 and 6-20 based upon
obviousness under 35 U.S.C. § 103.
DECISION
For the above reasons, we AFFIRM (1) the Examiner's patent
eligibility rejection of claims 1-20 under 35 U.S.C. § 101, (2) the
Examiner's anticipation rejection of claims 1-3 and 5 under
35 U.S.C. § 102(a)(l), and (3) the Examiner's obviousness rejection of
claims 4 and 6-20 under 35 U.S.C. § 103.
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
35