DETAILED ACTION
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 .
Request for Information Under 37 C.F.R. 1.105
The following is a quotation of 37 CFR 1.105:
(a)
(1) In the course of examining or treating a matter in a pending or abandoned application, in a patent, or in a reexamination proceeding, including a reexamination proceeding ordered as a result of a supplemental examination proceeding, the examiner or other Office employee may require the submission, from individuals identified under § 1.56(c), or any assignee, of such information as may be reasonably necessary to properly examine or treat the matter, for example:
(i) Commercial databases: The existence of any particularly relevant commercial database known to any of the inventors that could be searched for a particular aspect of the invention.
(ii) Search: Whether a search of the prior art was made, and if so, what was searched.
(iii) Related information: A copy of any non-patent literature, published application, or patent (U.S. or foreign), by any of the inventors, that relates to the claimed invention.
(iv) Information used to draft application: A copy of any non-patent literature, published application, or patent (U.S. or foreign) that was used to draft the application.
(v) Information used in invention process: A copy of any non-patent literature, published application, or patent (U.S. or foreign) that was used in the invention process, such as by designing around or providing a solution to accomplish an invention result.
(vi) Improvements: Where the claimed invention is an improvement, identification of what is being improved.
(vii) In Use: Identification of any use of the claimed invention known to any of the inventors at the time the application was filed notwithstanding the date of the use.
(viii) Technical information known to applicant. Technical information known to applicant concerning the related art, the disclosure, the claimed subject matter, other factual information pertinent to patentability, or concerning the accuracy of the examiner’s stated interpretation of such items.
(2) Requirements for factual information known to applicant may be presented in any appropriate manner, for example:
(i) A requirement for factual information;
(ii) Interrogatories in the form of specific questions seeking applicant’s factual knowledge; or
(iii) Stipulations as to facts with which the applicant may agree or disagree.
(3) Any reply to a requirement for information pursuant to this section that states either that the information required to be submitted is unknown to or is not readily available to the party or parties from which it was requested may be accepted as a complete reply.
Applicant is required under 37 CFR 1.105 to provide the following information that the examiner has determined is reasonably necessary to the examination of this application:
Cite to the specific page, line, and terminology of each PCT and Provisional teaching the claimed language in order to determine proper priority
Why the Request for Information is reasonably necessary:
Due to the high number of parent applications to which priority is claimed, it is burdensome to determine the proper priority date of the claims.
This requirement is an attachment of the enclosed Office action. A complete reply to the enclosed Office action must include a complete reply to this requirement. The time period for reply to this requirement coincides with the time period for reply to the enclosed Office action.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-30 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-30 of 11,551,276; claims 1-30 of U.S. Patent No. 11,341,556; claims 1-30 of U.S. Patent No. 11,367,115; Claims 1-14 of U.S. Patent No.10,991,021; claims1-14 of U.S. Patent No.11,170,423; claims 1-30 of U.S. Patent No. 11,315,160; claims 1-30 of U.S. Patent No. 11,367,115; and claims 1-30 of U.S. Patent No. 11,842,374. Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of the present application could have been presented with the claims of the previous applications.
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.
Claims 1-30 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more. Independent claim 1 recites (additional limitations crossed out):
A method comprising:
receiving, from a customer, an
determining, if a selectively redeemable bundled service purchase data record exists for the at least one of the services in the healthcare claim, wherein the selectively redeemable bundled service purchase data record comprises an individual redemption status of each individual bundled service; and
upon determining whether the selectively redeemable bundled service purchase data record comprising the at least one service in the healthcare claim exists, sending to the customer the determination of whether the bundled healthcare service purchase data record exists and is available,
The above limitations as drafted, is a process that, under its broadest reasonable interpretation covers managing personal behavior or relationships or interactions between people, and mental processes. That is, other than reciting the steps as being performed by a “processor” nothing in the claim precludes the steps as being described as managing personal behavior or relationships or interactions between people, and mental processes. For example, but for the “processor” language, the limitations describe a system for receiving, from a customer, a healthcare claim for a service; determining if a selectively redeemable bundled service purchase data record exists for the service (e.g., if the service was pre-paid), and sending the customer a determination that the selectively redeemable bundled service purchase data record exists if it is determined that it does exist. The limitations describe the management of personal behavior, as well as actions that can be performed mentally or with pen and paper. If a claim limitation, under its broadest reasonable interpretation, describes managing personal behavior or relationships or interactions between people, then it falls within the “Certain Methods of Organizing Human Activities” grouping of abstract ideas. Further, if a claim limitation, under its broadest reasonable interpretation, describes steps that may be performed mentally or with pen and paper, then it falls within the “Mental Processes” grouping of abstract ideas. Accordingly, the claim recites an abstract idea.
The judicial exception is not integrated into a practical application. In particular, the claims recite the additional elements of a “processor” to perform the steps. This additional element is recited at a high level of generality (see at least Paras. [0115]-[0120]) such that it amounts to no more than mere instructions to apply the exception using generic computing components. The claims further recite an “electronic” message. However, the message being electronic merely serves to place the judicial exception into a computing environment. The claims are therefore still directed to an abstract idea.
The claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception. As discussed above with respect to integration of the abstract idea into a practical application, the additional element of using a “processor” to perform the steps amounts to no more than mere instructions to apply the exception using generic computer components. Mere instructions to apply an exception using a generic computer component cannot provide an inventive concept.
Claims 2-30 are dependent on claim 1, and include all the limitations of claim 1. Therefore, they are also found to be directed to the same abstract idea. Claim 2 features an “electronic” message comprising payment. Claim 3 features generating an “electronic” health record. Claim 4 features storing the “electronic” health record in a “memory operably coupled with the processor”. Claims 7-8 feature an “EDI X12 message”. Claims 12-14, 18, 19 feature generating and presenting a “shopping cart”. Claim 21 features sending and receiving “electronic” messages. Claim 24 features an “835 remittance advice”. These additional limitations merely serve to place the judicial exception into a computing environment. Accordingly, these additional elements do not integrate the abstract idea into a practical application because they does not impose any meaningful limits on practicing the abstract idea. The remaining dependent claims have not been found to integrate the judicial exception into a practical application, or provide significantly more than the abstract idea since they merely further narrow the abstract idea. Therefore, the dependent claims are found to be directed to an abstract idea without significantly more.
Prior Art
No prior art could be found teaching all the limitations of independent claim 1 at this time. In particular “determining, if a selectively redeemable bundled service purchase data record exists for the at least one of the services in the healthcare claim, wherein the selectively redeemable bundled service purchase data record comprises an individual redemption status of each individual bundled service”. The closest prior art was Baker, which featured submitting a claim for a service (see at least Para. [0007]), determining a participant’s eligibility for receiving reimbursement for the service (see at least Para. [0020]), and transmitting a message to the participant indicating approval of the claim (see at least Para. [0025]). However, determining eligibility of a participant does not equate to determining if a purchase data record for the service (i.e., indication of the service being prepaid) exists.
Examiner reserves the right to apply prior art at a later time; particularly in light of the lack of clarity regarding proper priority date of the claims.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure:
Baker (US 2006/0020495); see at least Paras. [0007] – “The claim processing mechanism 231 from time to time receives from a participating healthcare provider 221 or a participant, by means of the claim submission mechanism 232, a claim 261 specifying healthcare services and expenses provided to a participant, and requesting payment or reimbursement for the same;”, [0020] – “The claim information 261 and some or all of the registration information 262 is compared to the database 240 (at S206, eligibility confirmation 235) to confirm the participant's eligibility.”, and [0025] – “If the participant is enrolled, and if the participant's balance of the funded account 271 is sufficient to satisfy the claim in whole or in part, a message 281 may be transmitted to some or all of the users 228 indicating approval of the claim.”.
Chmait (US 2016/0071225) – cited in parent application, but upon further review was found to be insufficient.
Mahadkar (US 2014/0379361) – discloses loading an amount into a prepaid account used to pay for healthcare services (see Abstract)
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KYLE G ROBINSON whose telephone number is (571)272-9261. The examiner can normally be reached Monday - Thursday, 7:00 - 4:30 EST; Friday 7:00-11:00 EST.
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/KYLE G ROBINSON/Examiner, Art Unit 3685
/KAMBIZ ABDI/Supervisory Patent Examiner, Art Unit 3685