DETAILED ACTION
Status of Claims
This action is in reply to the communication filed on 14 October, 2025.
Claims 1 and 6 have been amended.
Claims 1, 2, 5 – 7 and 10 are currently pending and have been examined.
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Claim Interpretation
Claims 1 and 6 recite a process that includes assigning value units to tasks, recording tasks performed by a provider, rewarding the value units for each task performed, recording the rewarded value units and determining compensation for the provider based on the value units that are rewarded. The specification discloses that in addition to being paid standard fee-for-service payments, a medical care provider may be paid “additional QVU ™ payments” if they use the system screen to “follow suggested instructions about reviewing data and considering options.” (0026) The recited patient encounter screen is a web-based tool that guides providers to better manage care delivery and “directs attention to necessary preventative actions, encourages care coordination, standardizes medication use, and improves referral patterns” (0021). The provider must attest to reviewing five areas with the screen including (a) chronic medical conditions, (b) preventive and health maintenance activities, (c) pharmacy usage with suggested changes, (d) data on referral and admission patterns and high-end radiology usage, and (e) messages from care coordinator, auditors and support staff.” (0026) However, value units, as recited in the claims, may be awarded for ANY task, since the claims are not limited to “reviewing each of the five areas within Carescreen™”, nor are reviewing the five area required by the claims.
In addition, the claims recite:
one or more database modules used to store and provide statistical data comprising
a chronic medical conditions database,
a preventive and health maintenance activities database,
a pharmacy usage and suggestions database,
a referral and admission patterns database that includes high-end radiology usage data, and
a care coordination database that contains messages from care coordinators, auditor and support staff.
It appears that the data in the recited database modules includes the data in the five areas that the provider should review to earn QVUs, even though the claim do not require such a review. In particular, the claims require database modules used to “store and provide statistical data . . .”; “wherein data from the referral and admissions pattern database is used as a predictive input for determine assignment of value units.
As such, Examiner construes the recited “database modules storing and providing statistical data” in the recited five areas, as data that may be used as a predictive input to some unclaimed process or algorithm to determine the QVU assigned to each task. The data provided to the statistical tools includes data from referral and admission patterns.
Claim Rejections - 35 USC § 112 (a)
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
Claims 1, 2, 5 – 7 and 10 are rejected under 35 U.S.C. 112(a) as failing to comply with the written description requirement. The claims contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, at the time the application was filed, had possession of the claimed invention. Claims 1 and 6 recite “wherein data from the referral and admissions pattern database is used as a predictive input for determine assignment of value units”. The claims require using referral and admissions patterns data to predict the value for the value units.
The claims are directed to a computer implemented method and operations recited in terms of their functionality. The specification discloses that the functionality is performed by a computerized system; however, the specification fails to disclose the algorithm (e.g. the necessary steps and/or flowcharts) that perform the claimed prediction function in sufficient detail such that one of ordinary skill in the art can reasonably conclude that the inventor possessed the invention including how to program the disclosed computer to perform the claimed function. How the referral and admissions patterns data is used to predict the value for the value units is not disclosed. As such the claim is unreasonably broad and encompasses any evaluation leading to unpredictable results. No examples are given of how the values are determined, requiring undue experimentation to achieve the same results. It is not enough that one skilled in the art could write a program to achieve the claimed function because the specification must explain how the inventor intends to achieve the claimed function to satisfy the written description requirement. See MPEP2161.01 I citing: Vasudevan Software, Inc. v. MicroStrategy, Inc.). Appropriate correction or clarification is required.
Claim Rejections - 35 USC § 112 (b)
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
Claims 1, 2, 5 – 7 and 10 are rejected under 35 U.S.C. 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor regards as the invention. Claims 1 and 6 recite “wherein data from the referral and admissions pattern database is used as a predictive input for determine assignment of value units”. Examiner cannot determine the metes and bounds of the claims. In particular, it is unclear how the referral and admissions patterns data is used to predict the value for the value units, which renders the claim indefinite. Appropriate correction or clarification is required.
Claim Rejections - 35 USC § 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
The following rejection is formatted in accordance with MPEP 2106.
Claim 6 is representative. Claim 6 recites steps including:
A method for operating a payment device, comprising:
providing a patient encounter screen connected to a healthcare provider billing records machine, having a server having a processor, wherein the server is separate from electronic medical records;
allowing operators to assign one or more value units for tasks performed by a medical care provider, a value of each of the value units being stored in a database;
providing one or more database modules used to store and provide statistical data comprising a chronic medical conditions database, a preventive and health maintenance activities database, a pharmacy usage and suggestions database, a referral and admission patterns database that includes radiology usage data, and a care coordination database that contains messages from care coordinators, auditor and support staff;
presenting the patient encounter screen to the medical care provider by which the medical care provider may record tasks that are performed;
rewarding the one or more value units for each task that is performed; recording the rewarded one or more value units; and
determining compensation for the medical care provider based on the number of value units that are rewarded;
wherein data from the referral and admissions pattern database is used as a predictive input for determine assignment of value units”.
Claim 1 recites a machine comprising a server having a processor and sets of instructions executable on the processor for performing the steps of the method recited in Claim 6.
Claims 1, 2, 5 – 7 and 10 are 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) and does not include additional elements that either: 1) integrate the abstract idea into a practical application, or 2) that provide an inventive concept – i.e. element that amount to significantly more than the abstract idea. The Claims are directed to an abstract idea because, when considered as a whole, the plain focus of the claims is on an abstract idea.
STEP 1
The claims are directed to a device and a method, which are included in the statutory categories of invention.
STEP 2A PRONG ONE
The claims recite limitations that encompass an abstract idea including:
allowing operators to assign one or more value units for tasks performed by a medical care provider;
the medical care provider may record tasks that are performed;
rewarding one or more value units for each task that is performed; and
determining compensation for the medical care provider based on the number of value units that are rewarded;
wherein data from the referral and admissions pattern database is used as a predictive input for determine assignment of value units.
The claims, as illustrated by Claim 6, recite an abstract idea within the “mathematical concepts” grouping. The steps recited in the claims represent a mathematical relationship. For example, calculating a compensation based on value units assigned to a task based on recording the performance of the task is a simple calculation such as: compensation ($) = value unit awarded * $/value unit. The statistical tools are disclosed as being well-known in the art, and constitute mathematical relationships of formulas. As such, the claims recite an abstract idea within the mathematical formulas grouping.
Additionally, the claims, as illustrated by Claim 6, recite an abstract idea within the “certain methods of organizing human activity” grouping –
fundamental economic principles or practices including hedging, insurance, mitigating risk;
commercial or legal interactions including agreements in the form of contracts; legal obligations; advertising, marketing or sales activities or behaviors; business relations.
Similarly here, the focus of the claims as illustrated by Claim 6 is on determining compensation for tasks that have been performed based on a value assigned to the performed tasks - “a fundamental economic practice”. The specification discloses that the value units assigned to tasks is pre-determined (using statistical techniques known to those skilled in the art) and stored in a database. When the provider indicates that an eligible task has been completed, the respective value is awarded and recorded. At the end of a period of time the provider is awarded compensation based on the accumulated value (0036). This is a classic “piece-work” compensation technique where a worker is paid for each piece or unit of work completed; and is a fundamental economic and conventional business practice. Nothing in the claim recites specific limitations directed to an improved computer system, processor, memory, network, database or Internet. Similarly, the specification is silent with respect to these kinds of improvements.
Additionally, the claims appear to implement the Medicare Shared Saving Program for ACOs. This program is well-established. The claim may also be construed as being the equivalent of Medicare’s Resource-Based Relative Value Scale (RBRVS) which uses RVUs assigned to a given medical task. The final compensation is calculated by multiplying the RVUs for tasks completed by the Medicare conversion factor. These are well-established and long-standing business practices even as disclosed by the Applicant in the present specification as published (0003 – 0004). As such, the claims recite an abstract idea within the certain methods of organizing human activity grouping.
Additionally, the steps recited in the claims may be performed mentally. For example, the specification discloses that determining the number of value units assigned to a task is performed using statistical techniques using techniques known in the art such as linear regression. Linear regression is a process that can be performed mentally. Indeed, the claims recite that “operators” - i.e. humans – assign the value units to tasks. Similarly, recording tasks performed, awarding value units for those tasks, and calculating a compensation based on the awarded value units is a simple calculation that can be performed mentally. As such, the claims recite an abstract idea within the mental process grouping.
STEP 2A PRONG TWO
The claims recite additional elements beyond that abstract idea that include:
a payment device, comprising: a patient encounter screen connected to a healthcare provider billing records machine having a server having a processor, wherein the server is separate from electronic medical records;
a value of each of the value units being stored in a database;
providing one or more database modules used to store and provide statistical data comprising a chronic medical conditions database, a preventive and health maintenance activities database, a pharmacy usage and suggestions database, a referral and admission patterns database that includes radiology usage data, and a care coordination database that contains messages from care coordinators, auditor and support staff;
presenting the patient encounter screen to the medical care provider (by which the medical care provider may record tasks that are performed);
recording the rewarded one or more value units.
However, these additional elements do not integrate the abstract idea into a practical application of that idea in accordance MPEP 2106.05.
The claims recite a payment controller comprising a patient encounter screen connected to a healthcare provider billing records machine, and one or more database modules to store and provide statistical data, at a high level of generality. The specification does not expressly disclose the recited “payment controller”; however, a general purpose computer – i.e. a server computer - is disclosed as being operative to execute the method, such that it amounts to no more than instructions to apply the abstract idea using a generic computer component (0006, 0014, 0017).
The specification further discloses a patient encounter screen in which the provider may checkmark activities performed by the provider during the patient encounter, which results in the activity being stored in the database (0033). The patient encounter screen is displayed on a care provider’s electronic device, which is disclosed at a high level of generality, and as being purely generic (0015, 0016). The recited user interface is construed as a conventional computer element. “A graphic user interface so a user can select data merely recites a generic computer component and does not contribute an inventive concept to the claim. Graphical user interfaces that allow a user to select and enter information describe purely conventional features on the disclosed devices.” (Affinity Labs v. DIRECTV). These elements merely adds instructions to implement the abstract idea on a computer, and generally link the abstract idea to a particular technological environment. A general purpose computer that applies a judicial exception by use of conventional computer functions, as is the case here, does not qualify as a particular machine, nor does the recitation of a generic computer impose meaningful limits in the claimed process. (see Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 716-17 (Fed. Cir. 2014)).
Similarly, storing assigned and rewarded value units, as well as statistical data in one or more database modules; recording tasks and recording the rewarded value units, are extra-solution activities – i.e. data gathering steps. Examiner notes that the content stored in the one or more database modules is construed as non-functional, descriptive material. For example, the specification describes statistical data stored in the recited databases as being used to determine the QVU values for activities “chronic medical conditions database” is provided. As such, the additional elements recited in the claim do not integrate the abstract compensation process into a practical application of that process.
STEP 2B
The additional elements identified above do not amount to significantly more than the abstract compensation process. Storing value units, as well as statistical data in a database module; and recording rewarded value units is a well-understood, routine and conventional computer function – i.e. electronic recordkeeping as in Alice and Ultramercial. Storing and retrieving information from memory – i.e. a database module - is a routine and conventional computer function as in Versata and OIP Tech. The specification also discloses that recording tasks in the existing RBRVS system to determine physician pay is purely conventional. The additional structural elements or combination of elements in the claims, other than the abstract idea per se, amount to no more than a recitation of generic computer structure (i.e. a payment device comprising a patient encounter screen connected to a healthcare provider billing records machine having a processor and sets of computer executable instructions, database modules storing information). The payment controller is recited at a high level of generality. The specification does not expressly disclose the recited “payment controller”; however, a general purpose computer is disclosed as being operative to execute the method such that it amounts to no more than instructions to apply the abstract idea using a generic computer component. This elements merely adds instructions to implement the abstract idea on a computer, and generally link the abstract idea to a particular technological environment. The recitation of a generic computer does not provide an inventive concept. Each of the above components are disclosed as being purely conventional and/or known in the industry. For example, the specification discloses that the server having a processor is purely conventional (published specification paragraph 0014, 0017). Sets of computer instructions are disclosed as “applications” which are also conventional computer elements. However, downloadable applications do not constitute an inventive concept sufficient to render the claims patent-eligible (Affinity Labs v. DIRECTV). Because the specification describes these additional elements in general terms, without describing particulars, Examiner concludes that the claim limitations may be broadly, but reasonably construed, as reciting well-understood, routine and conventional computer components and techniques. The specification describes the elements in a manner that indicates that the additional elements are sufficiently well-known that the specification does not need to describe the particular in order to satisfy U.S.C. 112. Considered as an ordered combination the limitations recited in the claims add nothing that is not already present when the steps are considered individually.
The dependent claims add additional features, in combination with those recited in the independent claims, merely serve to further narrow the abstract idea above including: the compensation is in addition to fee-for-service payments (2 and 7); and types of tasks for awarding value units (5 and 10). The limitations recited in the dependent claims, in combination with those recited in the independent claims add nothing that integrates the abstract idea into a practical application, or that amounts to significantly more. These elements merely narrow the abstract idea, recite additional abstract ideas, or append conventional activity to the abstract process. As such, the additional element do not integrate the abstract idea into a practical application, or provide an inventive concept that transforms the claims into a patent eligible invention.
The apparatus claims are no different from the method claims in substance. “The equivalence of the method, system and media claims is readily apparent.” “The only difference between the claims is the form in which they were drafted.” (Bancorp). The method claims recite the abstract idea implemented on a generic computer, while the apparatus claims recite generic computer components configured to implement the same idea. Specifically, Claims 1, 2 and 5 merely add the generic hardware noted above that nearly every computer will include. The apparatus claim’s requirement that the same method be performed with a programmed computer does not alter the method’s patentability under U.S.C. 101 (In re Grams). Therefore, the claims are rejected under 35 U.S.C. 101 as being directed to non-statutory subject matter.
Response to Arguments
Applicant’s arguments, filed on 14 October, 2025, have been considered but are not persuasive.
The U.S.C. 112 Rejection
Applicant asserts that deleting language referring to the statistical data overcomes the rejection. Nonetheless, the claims still recite predicting value units, which has not been addressed.
The U.S.C. 101 Rejection
Applicant asserts, without any further explanation, that the recitation of “a payment device” is an additional element that provides subject matter that meets the requirements of U.S.C. 101. Examiner agrees that the recited data is “additional elements” as defined in the SME Guidelines; but disagrees that payment device renders the claims patent eligible. The specification describes an apparatus (Abstract) comprising a server having a processor. Merely executing an abstract idea on a generic computer, as the claims do here, does not confer patent eligibility under U.S.C. 101. Applicant’s argument is no more than a bare assertion.
CONCLUSION
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
US PGPUB 2002/0111826 A1 to Potter et al. discloses a system and method for administering a health plan that includes awarding additional compensation to physicians based on quality performance.
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry of a general nature or relating to the status of this application or concerning this communication or earlier communications from the Examiner should be directed to John A. Pauls whose telephone number is (571) 270-5557. The Examiner can normally be reached on Mon. - Fri. 8:00 - 5:00 Eastern. If attempts to reach the examiner by telephone are unsuccessful, the Examiner’s supervisor, Robert Morgan can be reached at (571) 272-6773.
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/JOHN A PAULS/Primary Examiner, Art Unit 3683
Date: 11 December, 2025