Ex Parte Arena et al

Patent Trial and Appeal Board

Aug 25, 2017

10121908 (P.T.A.B. Aug. 25, 2017)

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.
10/121,908 04/12/2002 Robert Arena 002328.0722 3757
5073 7590 08/29/2017
RAKFR ROTTST T P
EXAMINER
2001 ROSS AVENUE PORTER, RACHEL L
SUITE 700
DALLAS, TX 75201-2980 ART UNIT PAPER NUMBER
3626
NOTIFICATION DATE DELIVERY MODE
08/29/2017 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
ptomai!2 @ bakerbotts .com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE: THE PATENT TRIAL AND APPEAL BOARD
Ex parte ROBERT ARENA,
ROBERT O’DONNELL,
ROBERT SCHWARTZ,
N, DAVID KUPERSTQCK,
TIM PARIS,
ROBERT LEACH,
JACOB HERSCHLER,
MIKE MORRELL, and
FIONA JACKMAN-WARD
Application 10/121,908*
Technology Center 3600
Before MURRIEL E, CRAWFORD, HUBERT C. LORIN, and
BIBHU R. MOHANTY, Administrative Patent Judges.
LORIN, Administrative Patent Judge,
DECISION ON APPEAL
1 The Appellants identify The Prudential Insurance Company of America
the real party in interest. App. Br. 2.
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Application 10/121,908
STATEMENT OF THE CASE
Robert Arena, et al. (Appellants) seek our review under 35 U.S.C. §
134 of the final rejection of claims 15 33 and 35 41, We have jurisdiction
under 35 U.S.C. § 6(b).
SUMMARY OF DECISION
We AFFIRM.
THE INVENTION
Claim 15, reproduced below, is illustrative of the subject matter on
15, A computer-implemented; method for managing an investment
for an investor to increase the after-tax death benefit of the
investment, comprising:
assessing, by a computer system, a Erst value of the investment,
the investment having a first death benefit payable to one or more
beneficiaries upon the death of the investor:
estimating, by the computer system, a tax liability associated
with payment of the first death benefit to the one or more beneficiaries
upon the death of the investor;
determining, by the computer system, a second death benefit,
the second death benefit being associated with life insurance payable
upon the death of the investor and the second death benefit being
based on the first value, such that the second death benefit is equal to
or greater than the estimated tax liability:
determining, by the computer system, a first premium for the
life insurance associated with the second death benefit;
receiving, by the computer system, the first premium; and
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providing, bv the computer system, the life insurance associated
with the second death benefit
THE REJECTIONS
The Examiner relies upon the following as evidence of
unpatentability;
Sexton US 5,752,236 May 12,1998
Burgess US 5,966,693 Oct. 12,1999
Preti US 2003/0120573 Al Jun. 26,2003
The following rejections are before us for review;
1. Claims 15 33 and 35 41 are rejected under 35 U.S.C. §101 as being
directed to non-statutory subject matter.
2. Claims 15,20, 21, 23. 26. 29, 35, 37, and 40 are rejected under 35
U.S.C. § 102(e) as being anticipated by Preti.
3. Claims 24,25,38, and 39 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Preti.
4. Claims 16,17,22,27, 28. 30. 31,36. and 41 are rejected under 35
U.S.C. § 103(a) as being unpatentable over Preti and Sexton.
5. Claims 18,19,32, and 33 are rejected under 35 U.S.C. §1031 a) as
being unpatentable over Preti and Burgess.
Did the Examiner err in rejecting claims 15 33 and 35 41 are rejected
under 35 U.S.C. § 101 as being directed to non-statutory subject matter?
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Did the Examiner err in rejecting claims 15. 20. 21,23,26, 29,35,37,
and 40 are rejected under 35 U.S.C. § 102(e) as being anticipated by Preti?
Did the Examiner err in rejecting claims 24, 25, 38, and 39 are
rejected under 35 U.S.C. § 103(a) as being unpatentable over Preti?
Did the Examiner err in rejecting claims 16, 17. 22.27.28.30,31,36.
and 41 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Preti
and Sexton?
Did the Examiner err in rejecting claims 18, 19. 32, and 33 are
rejected under 35 U.S.C. § 103(a) as being unpatentable over Preti and
Burgess?
ANALYSIS
The rejection of claims 15 33 and 35 41 under 35 U.S.C. §101 as being
directed to non-statutory subject matter.
Appellants argued these claims 15—33 and 35 41 as a group. See
Reply Br. 14 16. We select claim 15 as the representative claim for this
group, and the remaining claims 15 33 and 35 41 stand or fall with claim 1.
37 C.F.R. § 41.37(e)(l)(iv).
Alice Corp, Party Ltd. v. CLS Bank International, 134 S. Ct. 2347
(2014) identifies a two-step framework for determining whether claimed
subject matter is judicially-excepted from patent eligibility under § 101.
According to Alice step one, “[w]e must first determine whether the
claims at issue are directed to a patent-ineligible concept,” such as an
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abstract idea. Alice, 134 S. Ci at 2355. In that regard, the Examiner
determined that 'jtjhe claim(s) is are directed to the abstract idea of a
fundamental economic practice (i.e. determining tax liability of an
inheritance, purchasing life insurance to offset tax liability (determining and
paying insurance premium for life insurance))." Ans. 3.
The App ellants' challenge of the Examiner's determination is
discussed in section A. ("A. A claim is eligible for patent if it is not directed
to an abstract idea, ") and BL ("B, The Examiner does not establish that the
claims are directed to an abstract idea. ") of part II. ("IE The claims recite
patent-eligible subject matter,") of the Reply Brief. Reply Br, 14-15.
We have no disagreement with the general principles of law outlined
in part A. But given no explanation as to how or why the Examiner's
determination violates said principles, we necessarily find the discussion in
part A. unpersuasive as to error in the rejection.
The Appellants argue that
[tjhis application has been pending for almost fifteen years and yet,
the references to which the Examiner cites as being the closest
available prior art do not even disclose every element of the claims, as
discussed above in Section I, thus illustrating that the claims do not
recite a concept that is "fundamental" or "basic," Notably, despite the
fact that the Examiner alleges that purchasing life insurance to offset
tax liability is a fundamental economic practice, the Examiner has not
identified a single reference that discloses this concept Instead, the
Examiner merely provides a conclusory statement that the identified
concept is an abstract idea. All the Examiner has done here is attempt
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to summarize the claims and then allege, with no evidence, that that
summary is an abstract idea.
Reply Br. 15 (part B.).
The argument rests on two contentions.
First, the Appellants contend that if the cited prior art does not
disclose the claimed subject matter (i.e.. the claimed subject matter is
nonobvious over the cited prior combination), then the claims cannot be
directed to an abstract idea. That is incorrect. Notwithstanding that ''novelty
in implementation of the idea is a fact or to be considered only in the second
step of the Alice analysis." UUmmercial Inc. v. Hutu, U.C. 772 F.3d 709,
715 (Fed. Cir. 2014), a finding of novelty or nonobviousness does not
necessarily lead to the conclusion that subject matter is patentable eligible.
‘‘Groundbreaking, innovative, or even brilliant discovery does not by itself
satisfy the § 101 inquiry.” Ass 'n for Molecular Pathology v. Myriad
Genetics, Inc.. 133 S. Ct. 2107, 2117 (2013).
Indeed, “[tjhe ‘novelty’ of any element or steps in a process, or even
of the process itself, is of no relevance in determining whether the
subject matter of a claim falls within the § 101 categories of possibly
patentable subject matter.” Diamond v. Dichr, 450 U.S. 175, 188 89
(1981) (emphasis added); see also Mayo, 132 S. Ct. at 1303 04
(rejecting “the Government’s invitation to substitute §§ 102, 103. and
112 inquiries for the better established inquiry under § 101”). Here,
the jury’s general finding that Symantec did not prove bv clear and
convincing evidence that three particular prior art references do not
disclose all the limitations of or render obvious the asserted claims
does not resolve the question of whether the claims embody an
inventive concept at the second step of Mayo/Alim.
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Intellectual Ventures ILLC v. Symantec ('orp.. 838 F.3d 1307, 1315 (Fed
Or, 2016),
Second, the Appellants contend that the Examiner must present
evidence to support the determination the claims are directed to an abstract
idea, citing e.g., PNC Bank v. Secure Axcess, Case No. CBM2014-
00100 (PTAB Sept, 9, 2014)),
As a general matter, what a court or a different Board panel has relied
on in determining the abstract nature of what claims are directed to, under a
different set of facts, is not dispositive of the basis on which such a
determination must be made in this case. With respect to the PNC Bank
decision, it should be noted moreover that the involved patent claims (US
7,631,191 (‘“191 patent”)) are not comparable to the claims here at issue.
The ’191 patent claims involve authenticating a web page and were
classified in class 713 covering electrical computers and digital processing
systems subject matter. They are comparable to the claims involved in
BASCOM Global Internet Services v AT&T Mobility LLC., 827 F.3d 1341
(Fed Or. 2016) (US 5,987,606, classified in class 713). In contrast, the
claims here at issue are classified in class 705 and involve managing an
investment.
Although we do not consider PNC Bank either controlling or
germane, that panel’s consideration of evidence in making a determination
under the first step of the Alice framework has merit. A similar approach
was taken in Apple, Inc. v. Ameranth, Inc.. No. 2015-1703, 2016 WL
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6958650 (Fed. Cir. Nov. 29,2016). But these cases do not stand for the
proposition that Examiners must provide evidentiary support in every ease
before a conclusion can be made that a claim is directed to an abstract idea.
There is no such requirement. See, e.g.. para. IV “July 2015 Update: Subject
Matter Eligibility” to 2014 interim Guidance on Subject Matter Eligibility
(2014IEG), 79 Fed. Reg. 74618 (Dec. 16,2014) (“The courts consider the
determination of whether a claim is eligible (which involves identifying
whether an exception such as an abstract idea is being claimed) to be a
question of law. Accordingly, courts do not rely on evidence that a claimed
concept is a judicial exception, and in most cases resolve the ultimate legal
conclusion on eligibility without making any factual findings”,) Evidence
may be helpful in certain situations where, for instance, facts are in dispute.
But it is not always necessary. It is not necessary in this case. Rather, we
look to other decisions for guidance. See Amdocs (Israel) Limited v. Openel
Telecom. /«c.. 841 F.3d 1288. 1294 (Fed. Or. 2016):
Instead of a definition [for what an "abstract idea"
encompasses], then, the decisional mechanism courts now
apply is to examine earlier cases in which a similar or parallel
descriptive nature can be seen what prior cases were about,
and which way they were decided. See, e.g.. Elec, Power Grp,.
830 F.3d at 1353—54.[] That is the classic common law
methodology for creating law when a single governing
definitional context is not available. See generally Karl N.
Elewellyn, The Common Law Tradition: Deciding Appeals
(1960). This more flexible approach is also the approach
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employed by the Supremo Court. See Alice, 134 S. Ct. at 2355-
57.
In that regard, Bancorp Services, L.L.C. v. Sun Life Assur. Co, of Canada
(U.S. h 687 F.3d 1266 (Fed. Cir. 2012), cert denied, 134 S.Ct. 2870 (2014);
Capital Dynamics v. Cambridge Associates, LLC, 2016 WL 4709879
(Mem) (Fed. Cir. 2016); Clarilogic, Inc, v. Form Free Holdings
Corporation, 2017 WL 992528 (Fed. Cir, 2017); Digitech Infbrmatim
Systems, Inc. v. BMW Auto Leasing,. LLC, 504 Fed.Appx. 920 (Mem) (Fed.
Cir. 2013); and. Fort Properties, Inc, v. American Master Lease LLC, 671
F.3d 1317 (Fed. Cir. 2012), to name a few, support the view that investment
tools, such as the scheme claimed, are abstract ideas,
For the foregoing reasons, the argument challenging the Examiner's
determination under Alice step one is unpersuasive as to error in the
determination.
Step two is ‘‘a search for an 'inventive concept’—i.e., an element or
combination of elements that is ‘sufficient to ensure that the patent in
practice amounts to significantly more than a patent upon the [ineligible
concept] itself.Alice, 134 S. Ct, at 2355 (alteration in original) (quoting
Mayo Collaborative Servs. v. Prometheus Labs., Inc,, 566 U.S. 66, 72—73
(2012)),
The Appellants' challenge of the Examiner's determination is
discussed in section C. ("C. A The Examiner does not address anv element
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of the claims.") o-f part II. CM11. The claims recite patent-eligible subject
matter.") of the Reply Brief. Reply Br. 15. The argument (in its entirety ) is
that "the Examiner does not address any elements of the claims, including
the elements of the dependent claims, which is improper." Reply Br. 15 16
The argument is unpersuasive because the Examiner did indeed
address claim elements, including "regarding [dependent] claims 29—33 and
35 41 with regard to the computer readable medium claims (i.e. CRM
claims)...". A ns. 3.
For the foregoing reason, the argument challenging the
Examiner's determination under Alice step two is unpersuasive as to
error in the determination.
The rejection is sustained.
The refection of claims 15, 20, 21, 25, 26, 29, 35, 37, and 40 under 35
U.S.C. §102(e) as being anticipated fry Preti.
For the reasons discussed in the Appeal (pages 11-13) and Reply
(pages 11 13) Briefs, we find that para. 26 of Petri, which the Examiner
relied upon (see Final Rej. 4), does not describe, expressly or inherently.
determining, by the computer system, a second death benefit,
the second death benefit being associated with life insurance
payable upon the death of the investor and the second death
benefit being based on the first value, such that the second
death benefit is equal to or greater than the estimated tax
liability.
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Independent claim 15 (the other independent claim, claim 29, contains a
similar limitation).
The rejection is not sustained.
The rejection of claims 24, 25, 38, and 39 under 35 U.S.C. §4 03(a) as being
unpatentable over Preti.
The rejection of claims 16,17, 22, 27, 28, 30, 31, 36, and 41 under 35
U.S.C'. § 103(a) as being unpatentable over Preti and Sexton,
The rejection of claims 18,19, 32, and 33 under 35 U.S.C. §103(a) as being
unpatentable over Preti and Burgess.
These rejection of claims depending from claims 11 and 29 rely on the
finding that para. 26 of Petri describes the afore-reproduced claim limitation.
Since the evidence does not support said finding, a prima facie case of
obviousness has not been made out by a preponderance of the evidence in
the first instance. Accordingly, the rejections are not sustained.
CONCLUSIONS
The rejection of claims 15—33 and 35-41 under 35 U.S.C. §101 as
being directed to non-statutory subject matter is affirmed.
The rejection of claims 15,20. 21, 23, 26,29,35,37, and 40 under 35
U.S.C. § 102(e) as being anticipated by Preti is reversed.
The rejection of claims 24, 25, 38, and 39 under 35 U.S.C. §103(a) as
being unpatentable over Preti is reversed.
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The rejection of claims 16. 17. 22, 27, 28. 30. 31, 36, and 41 under 35
U.S.C. § 103(a) as being unpatentable over Preti and Sexton is reversed-
The rejection of claims 18, 19, 32, and 33 under 35 U.S.C. § 103(a) as
being unpatentable over Preti and Burgess is reversed.
DECISION
The decision of the Examiner to reject claims 15 33 and 35 41 is
affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C-F.R. § 1.136(a)(!)(iv),
AFFIRMED
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