Ex parte Henderson

FILING DATE: 09/27/2011

Before NINA L. MEDLOCK, AMEE A. SHAH, and MATTHEW S. MEYERS, Administrative Patent Judges

DECISION ON APPEAL ^[1]

SHAH, Administrative Patent Judge.

The Appellants^[2] appeal under 35 U.S.C. § 134(a) from the Examiner's final decision rejecting claims 1-3, 6-13, and 15-20. The Appellants' representative appeared telephonically for Oral Argument on January 31, 2019. We have jurisdiction under 35 U.S.C. § 6(b).

We AFFIRM.

STATEMENT OF THE CASE

The Appellants' invention "relates to cost comparison tools, and more particularly, to a cost comparison tool configured to help users understand the cost variation by procedure that exists within a healthcare system." Spec. ¶ 2.

Claims 1, 15, and 18 are the independent claims on appeal. Claim 1 (Claims App. 2-3)) is illustrative of the subject matter on appeal, and is reproduced below (with added bracketing for reference):

1. A method, carried out by a networked computer based health care provider ranking system including a database having user information stored therein relating to a health care service consumer, for providing an incentive for the health care service consumer for using a particular health care service provider, selected from a ranked listing of health care service providers, to perform a medical procedure, the method comprising

[(a)] receiving, by the networked computer based health care provider ranking system, a user identification for the health care service consumer

[(b)] acquiring, by the networked computer based health care provider ranking system, a user demographic information data set corresponding to the health care service consumer

[(c)] receiving, by the networked computer based health care provider ranking system, a medical procedure selected for the health care service consumer

[(d)] generating, by the networked computer based health care provider ranking system based upon the user demographic information data set and the medical procedure selected for the health care service consumer, a ranking of health care service providers for performing the medical procedure, wherein the ranking includes the particular health care service provider for which the incentive is provided;

[(e)] storing as an entry in the database, by the networked computer based health care provider ranking system after the generating, the ranking of health care service providers for performing the medical procedure;

[(f)] confirming, by the networked computer based health care provider ranking system, completion of the medical procedure, on the health care service consumer, by the particular health care service provider, wherein the confirming includes comparing data generated as a result of completing the medical procedure to information relating to the ranking; and

[(g)] issuing in response to the confirming, by the networked computer based health care provider ranking system, the incentive to a designated recipient,

[(h)] wherein the particular health care service provider is a medical facility,

[(i)] wherein the medical procedure is associated with at least two distinct codes based upon procedure complexity, and

[(j)] wherein the ranking of health care service providers for performing the medical procedure is determined, at least in part, by a weighted average reimbursement to ones of the health care service providers for the medical procedure associated with at least two distinct codes, the weighted average reimbursement for one of the health care service providers being a function of:

a quantity of a provider-type sub-component of the medical procedure performed and a contractual allowed reimbursement amount for the provider-type sub-component for each of the at least two distinct codes based upon procedure complexity.

THE REJECTION

Claims 1-3, 6-13, and 15-20 stand rejected under 35 U.S.C. § 101 as being directed to a judicial exception without significantly more.

ANALYSIS

The Appellants argue claims 1-3, 6-13, 15, 17, 18, and 20 as a group. See, e.g., Appeal Br. 8, 12. We select claim 1 from the group, with claims 2, 3, 6-13, 15, 17, 18, and 20 standing or falling therewith. See 37C.F.R.§41.37(c)(1)(iv).

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. E.g., Alice Corp. v. CLS Bank lnt'l, 573 U.S. 208, 216(2014).

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. Id. at 217-18 (citing Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 75-77 (2012)). In accordance with that framework, we first determine what concept the claim is "directed to." See Alice, 573 U.S. at 219 ("On their face, the claims before us are drawn to the concept of intermediated settlement, i.e., the use of a third party to mitigate settlement risk."); see also Bilski v. Kappos, 561 U.S. 593, 611 (2010) ("Claims 1 and 4 in petitioners' application explain the basic concept of hedging, or protecting against risk.").

Concepts determined to be abstract ideas, and thus patent ineligible, include certain methods of organizing human activity, such as fundamental economic practices (Alice, 573 U.S. at 219-20; Bilski, 561 U.S. at 611); mathematical formulas (Parker v. Flook, 437 U.S. 584, 594-95 (1978)); and mental processes (Gottschalk v. Benson, 409 U.S. 63, 69 (1972)). Concepts determined to be patent eligible include physical and chemical processes, such as "molding rubber products" (Diamond v. Diehr, 450 U.S. 175, 192 (1981)); "tanning, dyeing, making waterproof cloth, vulcanizing India rubber, smelting ores" (id. at 184 n.7 (quoting Corning v. Burden, 56 U.S. 252, 267-68 (1854))); and manufacturing flour (Benson, 409 U.S. at 69 (citing Cochrane v. Deener, 94 U.S. 780, 785 (1876))).

In Diehr, the claim at issue recited a mathematical formula, but the 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 176; see also id. at 192 ("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 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 turn 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 (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 requiring] generic computer implementation[] fail[s] to transform that abstract idea into a patent-eligible invention." Id.

Alice/Mavo Step One

Under the first step of the Alice/Mayo framework, the Examiner determines that claim 1 is "directed to an abstract idea of providing healthcare using fundamental economic practices (e.g., determining reimbursement amounts, providing incentives for consumers) and categories to organize, store, and transmit information" (Final Act. 2), "through mathematical correlations" (Ans. 2). The Appellants disagree (see Appeal Br. 8-10) and contend that the claim "defines a particular output ranking of service providers for a particular medical procedure that is associated with at least two codes based upon complexity (id. at 9) and "addresses a particular problem of being unable to know, at the time of approval of a particular provider, whether the medical procedure will be classified by the medical service provider at a higher/lower complexity" (id.). We are not persuaded by the Appellants' argument that the Examiner erred in determining that claim 1 is directed to an abstract idea.

The Federal Circuit has explained that "the 'directed to' inquiry applies a stage-one filter to claims, considered in light of the [Specification, based on whether 'their character as a whole is directed to excluded subject matter.'" Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1335 (Fed. Cir. 2016) (quoting Internet Patents Corp. v. Active Network, Inc., 790 F.3d 1343, 1346 (Fed. Cir. 2015)). The question is whether the claims as a whole "focus on a specific means or method that improves the relevant technology" or are "directed to a result or effect that itself is the abstract idea and merely invoke generic processes and machinery." McRO, Inc. v. Bandai Namco Games Am. Inc., 837 F.3d 1299, 1314 (Fed. Cir. 2016).

The Specification, including the claims, provides evidence as to what the claimed invention is directed. The Title of the Specification provides for a "METHOD AND APPARATUS FOR THE COMPARISON OF HEALTH CARE...