14107527 (P.T.A.B. Aug. 22, 2018)

Ex Parte Atkinson et al

Patent Trial and Appeal BoardAug 22, 2018

14107527 (P.T.A.B. Aug. 22, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 14/107,527 12/16/2013 21967 7590 08/22/2018 Hunton Andrews Kurth LLP Intellectual Property Department 2200 Pennsylvania Avenue, N.W. Washington, DC 20037 UNITED ST A TES OF AMERICA FIRST NAMED INVENTOR Landis W. Atkinson III 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. 52493.000670 7897 EXAMINER BARTLEY, KENNETH ART UNIT PAPER NUMBER 3693 MAIL DATE DELIVERY MODE 08/22/2018 PAPER 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. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte LANDIS W. ATKINSON III, KEVIN G. SMITH, and GEOFFREY S. STIFF Appeal2017-004330 1 Application 14/107 ,527 Technology Center 3600 Before JOHN A. JEFFERY, DENISE M. POTHIER, and CATHERINE SHIANG, Administrative Patent Judges. SHIANG, Administrative Patent Judge. DECISION ON APPEAL Appellants appeal under 35 U.S.C. Â§ 134(a) from the Examiner's rejection of claims 30-49, which are all the claims pending and rejected in the application. 2 We have jurisdiction under 35 U.S.C. Â§ 6(b). We reverse. STATEMENT OF THE CASE Introduction 1 Appellants identify Genworth Holdings, Inc. as the real party in interest. App. Br. 1. 2 Claims 1-29 were cancelled. Final Act. 2. Appeal2017-004330 Application 14/107,527 According to the Specification, the present invention relates to providing a cash value adjustment for a life insurance policy. See generally Spec. 1. In particular, the invention provides a computer processing system for performing a cash value adjustment to a life insurance policy issued by an insurer and owned by a policy owner. The system may include a communication portion that inputs parameters of a life insurance policy, the parameters including controlling parameters. The controlling parameters might include (a) a constraint dictated parameter of the life insurance policy; and (b) a driven parameter of the life insurance policy. The system may further include a relationship processing portion that analyses the relationship between the constraint dictated parameter and the driven parameter. Further, the system may further include a re- underwriting analysis portion, the re-underwriting analysis portion performing a re-underwriting of the life insurance policy using the parameters of the life insurance policy and a set of re-underwriting criteria. The set of re-underwriting criteria may include a constraint relationship, the constraint relationship constituting a relationship, e.g. a legally mandated relationship, between certain of the parameters of the life insurance policy. Spec. 2. Claim 30 is exemplary: 30. A computer processing system that performs a cash value adjustment to an insurance policy issued by an insurer and owned by a policy owner, the computer processing system compnsmg: a computer processor, coupled to a memory component, a communication portion, a relationship processor, a re- underwriting analysis processor, and a cash value adjustment processor; the communication portion configured to input parameters of an insurance policy, the parameters including 2 Appeal2017-004330 Application 14/107,527 controlling parameters, and the controlling parameters including: a constraint dictated parameter of the insurance policy; and a driven parameter of the insurance policy; the relationship processor programmed to analyze a relationship between the constraint dictated parameter and the driven parameter; the re-underwriting analysis processor programmed to perform a re-underwriting of the insurance policy using the parameters of the insurance policy and a set of re-underwriting criteria, the set of re-underwriting criteria including a constraint relationship, the constraint relationship constituting a relationship between certain of the parameters of the insurance policy, the re-underwriting analysis portion generating re-underwritten policy data to constitute a re- underwritten policy; the relationship processing portion determining a magnitude of change, resulting from the re- underwriting, in the constraint dictated parameter; the cash value adjustment processor programmed to perform an adjustment of the driven parameter based on the magnitude of change, before and after the re-underwriting, in the constraint dictated parameter, the adjustment being performed to maintain the relationship between the constraint dictated parameter and the driven parameter under a formula agreed upon by the insurance policy insurer and the policy owner; and the communication portion configured to output the re- underwritten policy data of the re-underwritten policy along with the adjusted constraint dictated parameter and the adjusted driven parameter; and wherein the computer processing system is in a form of a computer processing system that processes insurance related information. Rejections Claims 30-40, 48, and 49 are rejected under pre-AIA 35 U.S.C. 3 Appeal2017-004330 Application 14/107,527 Â§ 112, first paragraph, as failing to comply with the written description requirement. Claims 30-49 are rejected under 35 U.S.C. Â§ 101 because they are not directed to patent-eligible subject matter. ANALYSIS 35 US.C. Â§ 112,first paragraph The Examiner determines each of claims 30-40, 48, and 49 fails to comply with the written description requirement with respect to the following limitations: (i) the claimed "a relationship processor, a re- underwriting analysis processor, and a cash value adjustment processor," as recited in independent claim 30, and corresponding dependent claims 31--40; and (ii) "a relationship processor, a re-underwriting analysis processor, a cash value adjustment processor and an annuitization processor," as recited in independent claim 48 and corresponding dependent claim 49. See Final Action dated January 22, 2016 ("Final Act.") 17-18; Examiner's Answer dated November 15, 2016 ("Ans.") 22-23. In particular, the Examiner finds the Specification describes a relationship processing portion, but the claims recite a relationship processor. See Final Act. 17-18; Ans. 22-23. The Examiner determines "[ t ]he same is true" with respect to the terms "a re- underwriting analysis processor," "a cash value adjustment processor," and "an annuitization processor." Final Act. 18. We disagree. To satisfy the written description requirement, the disclosure must reasonably convey to skilled artisans that Appellants possessed the claimed invention as of the filing date. See Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en bane). 4 Appeal2017-004330 Application 14/107,527 Specifically, the description must "clearly allow persons of ordinary skill in the art to recognize that [ the inventor] invented what is claimed" and the test requires an objective inquiry into the four comers of the specification from the perspective of a person of ordinary skill in the art. Based on that inquiry, the specification must describe an invention understandable to that skilled artisan and show that the inventor actually invented the invention claimed. Id. ( citations omitted). The original claim 1, which is a part of the Specification, recites "a relationship processing portion that analyses the relationship between the constraint dictated parameter and the driven parameter." Therefore, skilled artisans would understand the original claim 1 describes a relationship processor. As a result, the disclosure reasonably conveys to skilled artisans that Appellants possessed the claimed invention with respect to the claim term "a relationship processor" as of the filing date. Contrary to the Examiner's determination, the written description requirement does not require "the specification recite the claimed invention in haec verba." Ariad Pharms., 598 F.3d at 1352. The original claims 1 and 9 also recite: a re-underwriting analysis portion, the re-underwriting analysis portion performing a re-underwriting of the life insurance policy using the parameters of the life insurance policy and a set of re-underwriting criteria, the set of re- underwriting criteria including a constraint relationship, the constraint relationship constituting a relationship between certain of the parameters of the life insurance policy, the re- underwriting analysis portion generating re-underwritten policy data to constitute a re-underwritten policy; a cash value adjustment portion, the cash value adjustment portion performing an adjustment of the driven parameter based on the magnitude of change, before and after the re-underwriting, in the constraint dictated parameter, the 5 Appeal2017-004330 Application 14/107,527 adjustment being performed to maintain the relationship between the constraint dictated parameter and the driven parameter under a formula agreed upon by the life insurance policy insurer and the policy owner; The original claim 1 ( emphases added). The system of claim 8, further including an annuitization portion, the annuitization portion determining, based on the amount available, an annuity product for the policy owner. The original claim 9 ( emphasis added). Similar to the discussion above, skilled artisans would understand the above disclosures, which are part of the original Specification, describe a re- underwriting analysis processor, a cash value adjustment processor, and an annuitization processor. Therefore, the above disclosures reasonably convey to skilled artisans that Appellants possessed the claimed invention with respect to the terms "a re-underwriting analysis processor," "a cash value adjustment processor," and "an annuitization processor" as of the filing date. Because the Examiner fails to provide sufficient evidence or explanation to support the rejection, we reverse the Examiner's rejection of claims 30-40, 48, and 49 under pre-AIA 35 U.S.C. Â§ 112, first paragraph. 6 Appeal2017-004330 Application 14/107,527 35 USCÂ§ 101 3 We have reviewed the Examiner's rejection in light of Appellants' contentions and the evidence of record. We concur with Appellants' contention that the Examiner erred in this case. Section 101 of the Patent Act provides "[ w ]hoever 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." 35 U.S.C. Â§ 101. That provision "'contains an important implicit exception: Laws of nature, natural phenomena, and abstract ideas are not patentable."' Alice Corp. Pty. Ltd. v. CLS Banklnt'l, 134 S. Ct. 2347, 2354 (2014) (quoting Ass 'nfor Molecular Pathology v. Myriad Genetics, Inc., 133 S. Ct. 2107, 2116 (2013)). According to the Supreme Court: [W]e set forth a framework for distinguishing patents that claim laws of nature, natural phenomena, and abstract ideas from those that claim patent-eligible applications of those concepts. First, we determine whether the claims at issue are directed to one of those patent-ineligible concepts .... If so, we then ask, "[ w ]hat else is there in the claims before us?" ... To answer that question, we consider the elements of each claim both individually and "as an ordered combination" to determine whether the additional elements "transform the nature of the claim" into a patent-eligible application. . . . We have described step two of this analysis as 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 3 Appellants raise additional arguments with respect to this rejection. Because the identified issue is dispositive of the appeal with respect to this rejection, we do not reach the additional arguments. 7 Appeal2017-004330 Application 14/107,527 significantly more than a patent upon the [ineligible concept] itself." Alice Corp., 134 S. Ct. at 2355. The Federal Circuit has described the Alice step-one inquiry as looking at the "focus" of the claims, their "character as a whole," and the Alice step-two inquiry as looking more precisely at what the claim elements add-whether they identify an "inventive concept" in the application of the ineligible matter to which the claim is directed. See Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1353 (Fed. Cir. 2016); Enfzsh, LLC v. Microsoft Corp., 822 F.3d 1327, 1335-36 (Fed. Cir. 2016); Internet Patents Corp. v. Active Network, Inc., 790 F.3d 1343, 1346 (Fed. Cir. 2015). According to the Federal Circuit, "[t]he second step of the Alice test is satisfied when the claim limitations 'involve more than performance of 'well-understood, routine, [and] conventional activities previously known to the industry."' Berkheimer v. HP Inc., 881 F.3d 1360, 1367 (Fed. Cir. 2018) (quoting Content Extraction & Transmission LLC v. Wells Fargo Bank, Nat'! Ass 'n, 776 F.3d 1343, 1347--48 (Fed. Cir. 2014) and Alice, 134 S. Ct. at 2359). In this case, Appellants argue with respect to the Alice step-two analysis, the Examiner has not provided any evidence to support the Examiner's assertion that the claimed limitations perform well-understood, routine, and conventional functions or steps. See Appeal Brief dated July 25, 2016 ("Appeal Br.") 18; Reply Brief dated January 17, 2017 ("Reply Br.") 4. The Examiner responds: A 35 USC Â§101 rejection is a matter of law not evidence. However as indicated above by Appellant's arguments the 8 Appeal2017-004330 Application 14/107,527 claims themselves provide evidence as processors are used to perform various functions within the capability of general purpose computers . . . . The Examiner argues the invention is both routine and a conventional use of computer processors. Ans. 12-13. The Examiner's response contradicts the case law, as the Berkheimer court held"[ w ]hether something is well-understood, routine, and conventional to a skilled artisan at the time of the patent is a factual determination." Berkheimer, 881 F.3d at 1369. Further, the Examiner has not explained why and how "the claims themselves provide evidence as processors are used to perform various functions within the capability of general purpose computers." Ans. 12. Therefore, we are constrained by the record to reverse the Examiner's rejection of claims 30-49 on procedural grounds. DECISION We reverse the Examiner's decision (i) rejecting claims 30-40, 48, and 49 under pre-AIA 35 U.S.C. Â§ 112, first paragraph; and (ii) rejecting claims 30-49 under 35 U.S.C. Â§ 101. REVERSED 9