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 .
Status of the Claims
Claims 7-21 are currently pending. Claims 1-6 are canceled in the Claims filed on February 20, 2025.
Information Disclosure Statement
The information disclosure statement submitted on April 1, 2025 is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement has been considered by Examiner.
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 7, 12, and 17 are rejected on the ground of nonstatutory double patenting as being unpatentable over Claim 5 of U.S. Patent No. 10,740,755 (“the ‘755 patent”).
Although the claims at issue are not identical, they are not patentably distinct from each other because Claim 5 of the ‘755 patent recites all of the limitations of Claims 7, 12, and 17 of the present application, and recites further narrowing limitations (e.g. the remittance file being in an 835-format, the payment data being a virtual payment card account having an account number, expiration date, and a CVV code). Hence, Claim 5 of the ‘755 patent anticipates the limitations of Claims 7, 12, and 17 of the present application.
Claims 7, 12, and 17 are rejected on the ground of nonstatutory double patenting as being unpatentable over Claims 1, 3, and 5 of U.S. Patent No. 11,468,442 (“the ‘442 patent”) in view of Coyne (US 2012/0035952).
Regarding Claims 7, 12, and 17 of the present application, Claims 1, 3, and 5 of the ‘442 patent recite all the limitations of Claims 7, 12, and 17 of the present application and include additional further narrowing limitations (e.g. electronically sending the healthcare provider’s tax identification number to a merchant acquirer), with the exception of the electronic payment data being sent to the healthcare provider. Claims 7, 12, and 17 of the present application recite electronically sending the electronic payment data and the modified remittance advice file to the healthcare provider, whereas Claims 1, 3, and 5 of the ‘442 patent only recite sending the modified remittance advice file to the healthcare provider. That is, Claims 1, 3, and 5 of the ‘442 patent do not teach sending the electronic payment data to the healthcare provider.
Regarding the sending of the electronic payment data to the healthcare provider, Coyne teaches an insurance company sending payment corresponding to a payment obligation for a medical service to a medical office, e.g. see Coyne [0122].
Furthermore, before the effective filing date, it would have been obvious to one ordinarily skilled in the art of healthcare to modify Claims 1, 3, and 5 of the ‘442 patent to incorporate sending the electronic payment data to the healthcare provider as taught by Coyne in order to compensate the healthcare provider for medical services, e.g. see Coyne [0122].
Claims 7, 12, and 17 are rejected on the ground of nonstatutory double patenting as being unpatentable over Claims 1, 8, and 15 of U.S. Patent No. 12,260,405 (“the ‘405 patent”) in view of Coyne (US 2012/0035952).
Regarding Claims 7, 12, and 17 of the present application, Claims 1, 8, and 15 of the ‘405 patent recite all the limitations of Claims 7, 12, and 17 of the present application and include additional further narrowing limitations (e.g. all of the steps of Claims 1, 8, and 15 of the ‘405 patent are performed by a processor of a payment processor), with the exception of the electronic payment data being sent to the healthcare provider. Claims 7, 12, and 17 of the present application recite electronically sending the electronic payment data and the modified remittance advice file to the healthcare provider, whereas Claims 1, 8, and 15 of the ‘405 patent only recite sending the modified remittance advice file to the healthcare provider. That is, Claims 1, 8, and 15 of the ‘405 patent do not teach sending the electronic payment data to the healthcare provider.
Regarding the sending of the electronic payment data to the healthcare provider, Coyne teaches an insurance company sending payment corresponding to a payment obligation for a medical service to a medical office, e.g. see Coyne [0122].
Furthermore, before the effective filing date, it would have been obvious to one ordinarily skilled in the art of healthcare to modify Claims 1, 8, and 15 of the ‘405 patent to incorporate sending the electronic payment data to the healthcare provider as taught by Coyne in order to compensate the healthcare provider for medical services, e.g. see Coyne [0122].
Allowable Subject Matter
Claims 7-21 are not presently rejected under 35 U.S.C. 101, 102, or 103, and hence would be in condition for allowance if amended to overcome the Double Patenting rejections. The following represents Examiner’s rationale as to why the present invention is patent eligible in view of 35 U.S.C. 101 and a characterization of the most relevant prior art references and the differences between the present claim language and the prior art references in view of 35 U.S.C. 102 and/or 103:
With regards to 35 U.S.C. 101, Claims 7-21 are patent eligible when considered in view of MPEP 2106.
Examiner asserts that the present claim limitations, given the broadest reasonable interpretation, could properly be interpreted as being directed towards the abstract idea of a certain method of organizing human activities because they recite a fundamental economic practice (i.e. the invention as a whole is directed towards the fundamental economic practice of determining how to reimburse a healthcare provider for medical services rendered).
However, even assuming, arguendo, that the present invention were directed towards the abstract idea of a certain method of organizing human activities, it nonetheless includes additional elements that integrate any purported abstract ideas into a practical application. Specifically, paragraphs [0011]-[0012] and [0026]-[0028] of the present Specification disclose that the present invention recites improvements over conventional systems by minimizing the possibility for fraud in the electronic transmission of sensitive payment data via the generation of a unique authorization code that is tied to a remittance advice file – that is, the claimed invention increases the security (i.e. by minimizing fraud) of conventional systems. Furthermore, the additional elements apply or use the abstract idea in some other meaningful way beyond generally linking the use of the judicial exception to a particular technological environment, such that the claim as a whole is more than a drafting effort designed to monopolize the exception.
Additionally, even assuming, arguendo, that the present invention did not represent a practical application of the abstract idea, it nonetheless represents “significantly more” than the abstract idea because it provides an inventive concept that adds a specific limitation or combination of limitations that are not well-understood, routine, conventional activity in the field (i.e. the creation of the modified remittance advice file by setting the authorization code as the claim identifier and inserting the authorization code into the remittance advice file).
For the aforementioned reasons, Claims 7-21 are not rejected under 35 U.S.C. 101.
With regards to 35 U.S.C. 102 and/or 103, the following represents the closest prior art to the claimed invention, as well as the differences between the prior art and the limitations of the presently claimed invention.
Dean (US 2011/0258004) teaches a system that reconciles and tags various healthcare transaction information, wherein the system matches remittance with new payment utilizing identifying data for a claim, remittance, a payer, and/or a provider. However, although Dean teaches identifying data for a claim, Dean does not teach setting an authorization code for payment to a claim identifier, and further does not teach inserting the authorization code into the remittance file to create a modified remittance file. Additionally, Dean does not teach transmitting the modified remittance file including the authorization code as the claim identifier to the healthcare provider.
Coyne (US 2012/0035952) teaches a system for managing payments from insurers to healthcare providers that receives a tax ID for each provider and creates and transmits an 835 transaction message including remittance advice to each provider, wherein the 835 transaction message includes various identifiers, for example a LOOP ID. However, Coyne does not teach setting any of the identifiers as an authorization code for a claim, setting the authorization code as the claim identifier value, and inserting the authorization code into the 835 remittance transaction message. Additionally, Coyne does not teach transmitting the modified remittance file including the authorization code as the claim identifier to the healthcare provider.
Yanak (US 2008/0077438) teaches a system for electronic payment of healthcare providers that enables the requesting of payment directly from a payer’s bank to transfer funds from the payer’s bank to a provider account. However, Yanak does not teach generating an authorization code for the payment, setting the authorization code as the claim identifier value, and inserting the authorization code into a remittance file to create a modified remittance file. Additionally, Yanak does not teach transmitting the modified remittance file including the authorization code as the claim identifier to a healthcare provider.
Allen (US 7,792,686) teaches a system for facilitating payments from a payer to a healthcare provider including determining an amount to be paid to the healthcare provider, loading the amount onto a stored-value card, and then having the patient submit the stored-value card to the provider in order to transfer the funds. However, Allen does not teach creating a remittance advice file, generating an authorization code, and setting the authorization code as the claim identifier value in a modified remittance file. Additionally, Allen does not teach transmitting the modified remittance file including the authorization code as the claim identifier to the healthcare provider.
Anthem 835 (“835 Claim Payment/Advice”) teaches including an authorization code in an 835 file, wherein the authorization code identifies the payment made to the provider. However, Anthem 835 does not teach sending the request for payment to a merchant acquirer, and setting the authorization code as the claim identifier in a modified remittance file. Additionally, Anthem 835 does not teach transmitting the modified remittance file including the authorization code as the claim identifier to the healthcare provider.
The aforementioned references are understood to be the closest prior art. Various aspects of the present invention are known individually, but for the reasons disclosed above, the particular manner in which the elements of the present invention are claimed, when considered as an ordered combination, distinguishes from the aforementioned references and hence the invention recited in Claims 7-21 is not considered to be disclosed by and/or obvious in view of the inventions of the closest prior art references.
Conclusion
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/JOHN P GO/Examiner, Art Unit 3681