Baeke, John L.

Patent Trials and Appeals Board

Sep 23, 2019

13736057 - (R) (P.T.A.B. Sep. 23, 2019)

UNITED STATES PATENT AND TRADEMARK OFFICE
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
13/736,057 01/07/2013 John L. Baeke BAE1-PAU01b 3850
97066 7590 09/23/2019
Innovation Capital Law Group, LLP
19800 MacArthur Blvd.
Suite 280
Irvine, CA 92612
EXAMINER
KWONG, CHO YIU
ART UNIT PAPER NUMBER
3693
NOTIFICATION DATE DELIVERY MODE
09/23/2019 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):
eofficeaction@appcoll.com
processing@icaplaw.com
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PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte JOHN L. BAEKE
____________________

Appeal 2018-001695
Application 13/736,057
Technology Center 3600
____________________

Before CARL L. SILVERMAN, JAMES W. DEJMEK, and
JOYCE CRAIG, Administrative Patent Judges.

CRAIG, Administrative Patent Judge.

DECISION ON REQUEST FOR REHEARING
Appellant1 requests rehearing of the decision entered June 21, 2019
(“Decision”), affirming the rejection of claims 1, 2, 4–12, 14–22, and 26–28
under 35 U.S.C. § 101. We have reconsidered the Decision in light of
Appellant’s comments in the Request. We are not persuaded that the
Board’s affirmance is an undesignated new ground of rejection. Nor are we
persuaded that the Board misapprehended or overlooked any points in
affirming the Examiner. Thus, we deny the requested relief.

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42 (2016). Appellant identifies the real party in interest as
John L. Baeke. App. Br. 4.
Appeal 2018-001695
Application 13/736,057
2
ANALYSIS
Requests for Rehearing are limited to matters overlooked or
misapprehended by the Panel in rendering the original decision. See
37 C.F.R. § 41.52. Requests for Rehearing, however, may include
arguments that the Board’s decision contained an undesignated new ground
of rejection. 37 C.F.R. § 41.52(a)(4). Appellant’s arguments based on the
Board’s Revised Guidance are timely, as the Revised Guidance went into
effect on January 7, 2019, after Appellant’s Reply Brief was filed and before
the Decision issued.2
Appellant refers to the Decision as “containing an undesignated new
ground of rejection pursuant to 37 C.F.R. 41.52(4).” Reh’g Req. 2.
Appellant, however, presents no persuasive argument in support. Thus, we
are not persuaded that the Decision contains an undesignated new ground of
rejection.
Appellant further argues that the Decision “may not have appreciated
fully the meaningful limitations to the claims” in accordance with the 2019
Revised Patent Subject Matter Eligibility, 84 Fed. Reg. 50 (Jan. 7, 2019)
(“Guidance”). Id.

2 Appellant states that “[e]ach of the other rejections [(i.e., other than the
rejection under 35 U.S.C. § 101)] addressed in Appellant’s Appeal Brief
have been withdrawn by the Examiner.” Reh’g Req. 2. As noted in the
Decision, only the rejections of claims 1, 2, 4–10, 19–22, and 26–28 under
35 U.S.C. § 103(a), and the rejection of claim 5 under 35 U.S.C. § 112, first
paragraph, were withdrawn in the Answer. Decision 3 n.3 (citing Ans. 3).
The Decision addressed the remaining rejections, affirming the Examiner’s
rejection of claims 7, 17, and 19–22 under pre-AIA 35 U.S.C. § 103(a) and
the Examiner’s rejection under pre-AIA 35 U.S.C. § 112, second paragraph,
of claims 1, 2, 4–10, 19–22, and 26–28. Decision 13. Appellant does not
identify any support that the Examiner has subsequently withdrawn these
rejections.
Appeal 2018-001695
Application 13/736,057
3
We are not persuaded that the Decision overlooked meaningful
limitations because Appellant argues in a conclusory manner that “[t]he
scope of the insurance policy, in that it covers complications and side effects
for at least one year past the completion date of the surgical procedure,
should not be grouped into the limitations that make up the fundamental
economic practice.” Id. at 3. Appellant has not argued persuasively why the
scope or term of the policy is an “additional element,” separate from
“underwriting an insurance policy to cover an adverse event,” which is
recited in the same limitation of claim 1 and is part of the fundamental
economic practice.
Even if (1) covering both complications and side effects; and
(2) providing a policy for at least a year after the surgical procedure were
considered “additional elements,” they would not integrate the judicial
exception into a practical application. Appellant argues that covering both
complications and side effects, and providing a policy for at least a year,
applies or uses the judicial exception in some meaningful way beyond
generally linking the use of the judicial exception to a particular
environment, such that the claims as a whole is more than a drafting effort
designed to monopolize the exception. Reh’g Req. 4; see also Guidance, 84
Fed. Reg. at 55.
We disagree. The basis of Appellant’s argument is that “[t]ypical
insurance does not cover both complications and side effects, and do not
extend to the claimed time period.” Reh’g Req. 4. The question in step 2A,
prong 2, however, is not whether an additional feature (i.e., the scope and
term of the insurance policy) is novel. See Affinity Labs of Tex., LLC v.
DirecTV, LLC, 838 F.3d 1253, 1263 (Fed. Cir. 2016) (explaining that
“[e]ven assuming” that a particular claimed feature was novel, the problem
Appeal 2018-001695
Application 13/736,057
4
of abstractness was not avoided). Moreover, even assuming Appellant is
correct that “[t]ypical insurance does not cover both complications and side
effects, and do[es] not extend to the claimed time period” (Reh’g Req. 4),
that does not mean no insurance policies have such features.
Appellant also argues that “the field of use, being linked to the
underwriting, further provides evidence of a practical application of the
judicial exception.” Reh’g Req. 5. Manual of Patent Examining Procedure
section 2106.05(e), however, explicitly states that “[t]he claim should add
meaningful limitations beyond generally linking the use of the judicial
exception to a particular technological environment to transform the judicial
exception into patent-eligible subject matter.” MPEP § 2106.05(e). Thus,
we are not persuaded that limiting terms of the insurance coverage to a
surgical environment would transform the judicial exception into patent-
eligible subject matter.
Following the Guidance, we determined in the Decision that the
claims do not integrate the judicial exception into a practical application so
as to impose a meaningful limit on the judicial exception. The Request for
Rehearing is denied.

CONCLUSION
We have considered the arguments raised by Appellant in the
Request. We have granted Appellant’s request to the extent that we have
reconsidered our Decision, but we deny Appellant’s request to make any
changes therein.

REHEARING DENIED