Ex Parte Roscoe et al

Patent Trial and Appeal Board

Sep 21, 2018

13082964 (P.T.A.B. Sep. 21, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/082,964 04/08/2011
5073 7590
BAKER BOTTS L.L.P.
2001 ROSS A VENUE
SUITE 900
DALLAS, TX 75201-2980
09/25/2018
FIRST NAMED INVENTOR
Michael J. Roscoe
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.
002328.0856 7124
EXAMINER
APPLE, KIRSTEN SACHWITZ
ART UNIT PAPER NUMBER
3697
NOTIFICATION DATE DELIVERY MODE
09/25/2018 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
ptomaill@bakerbotts.com
ptomail2@bakerbotts.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MICHAEL J. ROSCOE, EDWIN CLIFFORD BARRON JR.,
LISA MICHELLE PROCH, and HAOBO LI
Appeal 2017-006961 1
Application 13/082,9642
Technology Center 3600
Before MURRIEL E. CRAWFORD, JOSEPH A. FISCHETTI, and
BRADLEY B. BAY AT, Administrative Patent Judges.
BAY AT, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's
rejection of claims 1, 3---6, 8-13, and 15-19, which are all the pending claims
in the application. 3 We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
1 Our Decision references Appellants' Appeal Brief ("Appeal Br.," filed
Nov. 10, 2016) and Reply Brief ("Reply Br.," filed Mar. 31, 2017), the
Examiner's Answer ("Ans.," mailed Feb. 2, 2017) and Final Office Action
("Final Act.," mailed Mar. 10, 2016).
2 Appellants identify "The Prudential Insurance Company of America" as
the real party in interest. Appeal Br. 2.
3 Claims 2, 7, 14, and 21--40 have been canceled. Id. (Claims App.).
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Application 13/082,964
CLAIMED INVENTION
Appellants' "invention relates to computer systems, and particularly
to computer systems for use in the financial services field, and particularly
for processing of data related to life insurance policies." Spec. ,r 2.
System claim 1, method claim 8, and computer-readable medium
claim 15 are the independent claims on appeal, and recite substantially
similar subject matter. Claim 8, reproduced below, is illustrative of the
subject matter on appeal.
8. A computer-implemented method for processing data
related to a permanent life insurance policy having an owner
and a death benefit payable to a beneficiary upon death of an
insured, comprising:
accessing, by a processor, a data storage device
configured to store:
a death benefit amount payable under a permanent life
insurance policy having a death benefit to a beneficiary upon
death of an insured;
a residual death benefit amount under the policy;
a schedule of premium payments under the policy,
wherein the schedule includes due dates and amounts of the
premium payments; and
a withdrawal benefit under the policy comprising periodic
payments payable to a policy owner upon request and on
condition of:
the insured being living and having reached a minimum
age, wherein the date the insured is expected to reach the
minimum age is a benefit eligibility date under the policy and
for the withdrawal benefit; and
a balance of a policy protection account having reached
at least a non- zero target balance, wherein the balance of the
policy protection account includes a sum of premium payments
made under the policy; and
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determining, by the processor and based on the balance of
the policy protection account, the schedule of the premium
payments, and the benefit eligibility date, whether premium
payments in accordance with the schedule will cause the policy
protection account to reach the target balance by the benefit
eligibility date;
responsive to determining that the premium payments in
accordance with the schedule will cause the policy protection
account to reach the target balance by the benefit eligibility
date, provide an output signal indjcating that the policy owner
is on target for eligibility for the withdrawal benefit as of the
benefit eligibility date, wherein the output signal includes
instructions to communicate to the policy owner that, upon
receipt of certification of a medical condition of the insured,
and independent of age of the insured, the owner is eligible to
receive the periodic payments reducing the death benefit; and
determining, by the processor, whether a request for the
withdrawal benefit has been received, and in response to the
determination that the request for the withdrawal benefit has
been received:
determining, by the processor, whether the insured is still
living;
determining, by the processor, whether the benefit
eligibility date has been reached;
determining, by the processor, whether the target balance
has been reached by the policy protection account; and
responsive to the determinations that the insured is still
living, the benefit eligibility date has been reached, and the
target balance has been reached by the policy protection
account, providing, by the processor, instructions to make the
periodic payments to the policy owner, each payment reducing
the amount of the death benefit, the payments ceasing upon the
earlier of death of the insured or the reaching of the residual
death benefit amount.
Appeal Br. (Claims App.).
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REJECTIONS 4
The following rejections are before us for review:
Claims 1, 3-6, 8-13, and 15-19 are rejected under 35 U.S.C. § 101 as
directed to non-statutory subject matter. Final Act. 2-5.
Claims 1, 8, and 15 stand rejected on the ground of provisional
nonstatutory obviousness-type Double Patenting as unpatentable over claims
1, 2, 8, 9, 15, and 16 of Application No. 13/169,773. Id. at 5-7.
Claims 1, 5, 8, and 15 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Foley, 5 Weiss, 6 and Burriss. 7 Id. at 8-22.
Claims 3, 4, 6, 9, 10, 16, and 19 are rejected under 35 U.S.C. § 103(a)
as unpatentable over Foley, Weiss, Burriss, and HartfordSECl. 8 Id. at 22-
24.
Claim 11 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Foley, Weiss, Burriss, and Liu. 9 Id. at 27-28.
Claim 12 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Foley, Weiss, Burriss, and Tatro. 10 Id. at 28-29.
Claim 13 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Foley, Weiss, Burriss, and Berlin. 11 Id. at 29-30.
Claim 17 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Foley, Weiss, Burriss, HartfordSECl, and Teta. 12 Id. at 31-34.
Claim 18 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Foley, Weiss, Burriss, HartfordSECl, and Tatro. Id. at 34--35.
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ANALYSIS
Non-Statuary Subject Matter
Under 35 U.S.C. § 101, an invention is patent-eligible if it claims a
"new and useful process, machine, manufacture, or composition of matter."
35 U.S.C. § 101. The Supreme Court, however, has long interpreted§ 101
to include an implicit exception: "[l]aws of nature, natural phenomena, and
abstract ideas" are not patentable. See, e.g., Alice Corp. Pty Ltd. v. CLS
Banklnt'l, 134 S. Ct. 2347, 2354 (2014).
The Supreme Court, in Alice, reiterated the two-step framework
previously set forth in Mayo Collaborative Services v. Prometheus Labs.,
Inc., 566 U.S. 66, 82-83 (2012), "for distinguishing patents that claim laws
of nature, natural phenomena, and abstract ideas from those that claim
patent-eligible applications of these concepts." Alice Corp., 134 S. Ct.
at 2355. The first step in that analysis is to "determine whether the claims at
issue are directed to one of those patent-ineligible concepts," id., e.g., to an
abstract idea. If the claims are not directed to an abstract idea, the inquiry
ends. Otherwise, the inquiry proceeds to the second step where the elements
of the claims are considered "individually and 'as an ordered combination'"
to determine whether there are additional elements [that] "'transform the
4 The rejection of canceled claims 7 and 14 is moot. See Final Act. 24--26.
5 US 2008/0071679 Al, pub. Mar. 20, 2008.
6 US 2008/0262977 Al, pub. Oct. 23, 2008.
7 US 2008/0033750 Al, pub. Feb. 7, 2008.
8 Hartford Life & Annuity Insurance Co Sep Account VI I, 5/3/10.
9 Liu, Yan, Pricing and Hedging the Guaranteed Minimum Withdrawal
Benefits in Variable Annuities, pub. 2010.
10 US 2009/0030739 Al, pub. Jan. 29, 2009.
11 US 2005/0086085 Al, pub. Apr. 21, 2005.
12 US 2010/0312693 Al, pub. Dec. 9, 2010.
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nature of the claim' into a patent-eligible application." Alice Corp.,
134 S. Ct. at 2355 (quoting Mayo, 566 U.S. at 79, 78).
The Examiner determined:
The claim[ s] are directed to the abstract idea of a fundamental
economic practice or a method of organizing human activities,
namely administering an insurance policy. The additional
elements or combination of elements in the claims other than
the abstract idea per se amount to no more than mere
instructions to implement the idea on a computer. The claims
as a whole do not amount to significantly more than the abstract
idea itself. This is because the claims do not effect an
improvement to another technology or technical field, the
claims do not amount to an improvement to the functioning of
a computer itself, and the claims do not move beyond a general
linking of the use of an abstract idea to a particular
technological environment. Viewed as a whole, these additional
claim element( s) do not provide meaningful limitation( s) to
transform the abstract idea into a patent eligible application of
the abstract idea such that the claim(s) amounts to significantly
more than the abstract idea itself.
Final Act. 4; see also Ans. 8.
Challenging the Examiner's determination under Alice step one,
Appellants assert that "the claims recite a system that automatically
determines when to make periodic payments to a user. The system follows a
specific set of steps to make this determination that offers improvements
over existing technology." Appeal Br. 12; Reply Br. 6. Appellants contend
"like in McRO, 13 the claims are not directed to 'administering an insurance
policy' because the claims recite a specific set of steps to determine a
periodic payment." Id. at 13. According to Appellants, the Examiner is
13 McRO, Inc. v. Bandai Namco Games Am. Inc., 837 F.3d 1299 (Fed. Cir.
2016).
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oversimplifying the claims by looking at them generally and failing to
account for the specific requirements of the claims. Id.; Reply Br. 6.
We are unpersuaded of error and disagree that the Examiner has
oversimpliflied the claims. Representative claim 8 14 is drawn to a method
for processing data related to a permanent life insurance policy payable to a
beneficiary upon death of an insured. Appellants' characterization of the
claimed invention as "automatically determin[ing] when to make periodic
payments to a user" is consistent with and encompassed within the
Examiner's broader articulation of the abstract idea as administering an
insurance policy. "An abstract idea can generally be described at different
levels of abstraction." Apple, Inc. v. Ameranth, Inc., 842 F.3d 1229, 1240-
41 (Fed. Cir. 2016). Indeed, an integral part of managing or administering
an insurance policy is determining when to make payments to a policy
owner.
Besides Appellants' allegation that the recited steps offer
improvements over exisiting technology, we are not apprised of anything
supported by the Specification that is sufficient to remove claim 8 from the
class of subject matter ineligible for patenting. As the court explained in
Electric Power, claims involving data collection, analysis, and display often
are directed to abstract ideas. Elec. Power Grp., LLC v. Alstom S.A., 830
F.3d 1350, 1353 (Fed. Cir. 2016) (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."); see
14 Appellants argue all the pending claims as a group. See Appeal Br. 12-
13. We select independent claim 8 as representative for this group. Thus,
the remaining claims stand or fall with claim 8. 37 C.F.R. § 4I.37(c)(l)(iv).
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also In re TL! Commc'ns LLC Patent Litig., 823 F.3d 607, 611 (Fed. Cir.
2016); FairWarning IP, LLC v. Iatric Sys., Inc., 839 F.3d 1089, 1093----94
(Fed. Cir. 2016). Claim 8, unlike claims found non-abstract in prior cases
like AfcRO, uses generic computer technology to perform data collection and
analysis, and fails to recite any improvement to a particular computer
technology. In McRO, the Federal Circuit addressed claims directed to "[a]
method for automatically animating lip synchronization and facial
expression of three-dimensional characters" McRO, 837 F.3d at 1307. The
court reviewed the specification of the patent at issue and found that, rather
than invoking the computer merely as a tool, "[c]laim 1 of the [asserted]
patent is focused on a specific asserted improvement in computer
animation." Id. at 1314. The court found that the "plain focus of the
claims" there was on an improvement to computer functionality itself, not on
economic or other tasks for which a computer is used in its ordinary
capacity. Unlike McRO, which focused on a specific means or method that
improved the relevant technology, claim 8 is directed to a result or effect
that itself is the abstract idea by merely invoking generic processes and
machinery. Thus, the focus here is not on improving any technology, but on
using generic computer operations, in which a computer is used in its
ordinary capacity, for processing data related to an insurance policy to
determine when to make payments to a policy owner. Managing an
insurance policy or financial asset is a fundamental economic and business
practice long prevalent in the financial services field, and as such, squarely
within the realm of abstract ideas.
Under Alice step two, Appellants argue that "the claimed system
includes an inventive concept because it provides a technological
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improvement over existing technology." Appeal Br. 13. "For example, by
integrating the performance of the steps into the system, processor resources,
memory resources, and network bandwidth are conserved over existing
systems that perform the steps across different, separate systems." Id. This
argument fails at least because none of the independent claims recite a
computer network.
All the independent claims use a data storage device and a generic
processor to perform "well-understood, routine, conventional activit[ies]
previously known to the industry." Alice, 134 S. Ct. at 2359 (quoting Mayo,
566 U.S. at 73); see Mayo, 566 U.S. at 82-83 (explaining that "simply
appending conventional steps, specified at a high level of generality, to ...
abstract ideas cannot make those ... ideas patentable"). The use of a
computer in an otherwise patent-ineligible process for no more than its most
basic functions fails to circumvent the prohibition against patenting abstract
ideas and mental processes. We are not apprised of any claimed element for
accomplishing the claimed solution that is other than what was generically
known for performing those conventional functions. We do not see, and
Appellants do not adequately explain, what particular inventive technology
for performing the recited functions is required for achieving the claimed
result. See Credit Acceptance Corp. v. Westlake Servs., 859 F.3d 1044, 1057
(Fed. Cir. 2017) ("[T]he claims do not provide details as to any non-
conventional software for enhancing the financing process."); see
Intellectual Ventures I LLC v. Capital One Fin. Corp., 850 F.3d 1332, 1342
(Fed. Cir. 2017) ("Our law demands more" than claim language that
"provides only a result-oriented solution, with insufficient detail for how a
computer accomplishes it."); Elec. Power Grp., 830 F.3d at 1354 (explaining
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that claims are directed to an abstract idea where they do not recite "any
particular assertedly inventive technology for performing [ conventional]
functions"). Indeed, Appellants' Specification provides that the claimed
invention may be implemented on "one or more conventional
microprocessors" and the "network server may be a conventional standalone
service computer." See Spec. ,r,r 261-264.
Accordingly, we are not persuaded for the reasons set forth above
that the Examiner erred in rejecting independent claim 8 under 35 U.S.C.
§ 101. Therefore, we sustain the Examiner's rejection of claim 8, including
claims 1, 3-6, 9-13, and 15-19, which fall with claim 8.
Double Patenting
Appellants have not addressed or otherwise contested the rejection
under obviousness-type double patenting in the Briefs before us. Thus, we
summarily sustain this rejection.
Obviousness
In contesting the Examiner's obviousness rejection of independent
claims 1, 8, and 15 over Foley, Weiss, and Burriss, Appellants argue that the
cited portions of Foley, on which the Examiner relies, fail to disclose "a
schedule of premium payments under the policy, wherein the schedule
includes due dates and amounts of the premium payments." Appeal Br. 8.
The Examiner refutes the argument made by the Appellant and
draws the attention to at least Foley Figure 3B, item 232, and
paragraph 0037 "purchase payments and adjustments to these
purchase payments." Foley "lifetime payments" is clearly
scheduled payments and it is inherent they would have due
dates that by definition is what a payment is pay X-$ by Y-date
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otherwise it would not be considered a payment if it did not
have a due date and an amount.
Ans. 3--4; see also Final Act. 9-10 (citing Foley ,r 37, Figure 3B (item 232)).
Disputing this finding, Appellants argue that "Foley's lifetime payments are
not premium payments. Foley clearly states that these lifetime payments are
'made to customer 110 in an amount equivalent to annual income amount.'
Foley, ,r [0062] (emphasis added). Because these lifetime payments are
made to the customer rather than from the customer, they are not premium
payments." Reply Br. 3.
We are persuaded of Examiner error. Foley's system is "utilized to
provide financial intstrument 100 to a customer 110, such that customer 110
may make a deposit and retain liquidity, while also receiving the benefit of a
guarantee of lifetime payments and/or security associated with a guaranteed
growth rate." Foley ,r 18. In describing Figure 3B, Foley provides that "[i]f
the value of account 130 is equal to zero at step 230 and cumulative yearly
withdrawals are less than or equal to annual income amount 142 at step 231,
then lifetime benefit payments may be made to customer 110 in an amount
equivalent to annual income amount 142, at step 232." Foley ,r 62.
Although Foley discloses a schedule of lifetime payments made to a
customer under the policy, the disputed claim limitation calls for "a schedule
of premium payments under the policy," which are made by the customer to
the insurance provider "to maintain the policy in force." Spec. ,r 36.
Because the Examiner erred in finding that Foley's lifetime payments
constitute the claimed premium payments, we do not sustain the rejection of
independent claims 1, 8, and 15. Claims 3---6, 9-13, and 16-19 depend,
either directly or indirectly, from independent claims 1, 8, and 15. The
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Examiner's reliance on the additional prior art references in the rejections
does not remedy the deficiencies of Foley discussed above. Thus, we do not
sustain the rejections of dependent claims 3-6, 9-13, and 16-19 under 35
U.S.C. § 103(a) for the same reasons.
DECISION
The rejection of claims 1, 3-6, 8-13, and 15-19 under 35 U.S.C.
§ 101 is affirmed.
The Double Patenting rejection is affirmed.
The rejections of claims 1, 3---6, 8-13, and 15-19 under 35 U.S.C.
§ 103(a) are reversed.
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
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