Ex Parte Basner et al

Patent Trial and Appeal Board

Jan 10, 2013

11879325 (P.T.A.B. Jan. 10, 2013)

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.
11/879,325 07/17/2007 Charles M. Basner CMB-105A 3622
7590 01/10/2013
Glynn Tech Inc.
6 Minneakoning Road
Flemington, NJ 08822
EXAMINER
LOFTUS, ANN E
ART UNIT PAPER NUMBER
3692
MAIL DATE DELIVERY MODE
01/10/2013 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 CHARLES M. BASNER and AUSTIN LETT
____________________

Appeal 2011-006592
Application 11/879,325
Technology Center 3600
____________________

Before BIBHU R. MOHANTY, MICHAEL W. KIM and
NINA L. MEDLOCK, Administrative Patent Judges.

MEDLOCK, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2011-006592
Application 11/879,325

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STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 31-52. We have jurisdiction under 35 U.S.C. § 6(b).

STATEMENT OF THE DECISION
We AFFIRM.1

BACKGROUND
Appellants’ invention relates generally to an insurance system and
methodology based on group insurance wherein, after a set time or event has
occurred, survivors of the group, or their designees, are the sole beneficiaries
of the net proceeds of the pool for their group (Spec., para. [0001]).
Claim 31, reproduced below, is representative of the subject matter on
appeal:
31. A life rewardance system, which
comprises:
(a) a computer to operate computer
software;
(b) computer software on said computer for
managing a pooled insurance plan that includes the
following steps:
(i) insuring a plurality of individuals in a life
rewardance plan wherein said plan has a pre-
determined set of plan enrollment criteria, said
plan has a policy term, and said plan will pay to
designated beneficiaries of each of the survivors of
the plurality of insured individuals enrolled in said
plan and will not pay to designated beneficiaries of

1 Our decision will make reference to the Appellant’s Appeal Brief (“Br.,”
filed June 7, 2010) and the Examiner’s Answer (“Ans.,” mailed August 31,
2010).
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3
said plurality of insured individuals who are
deceased at the end of said policy term;
(ii) collecting personal identification and age
data from said plurality of insured individuals and
maintaining confidential storage thereof such that
no member of said plurality of insured individuals
has access to identification of any of the other
members of said plurality of insured individuals
for at least the duration of the policy term;
(iii) collecting policy premiums from said
plurality of insured individuals;
(iv) investing premiums as may be specified
in the plan; and
(v) making payment to designated
beneficiaries of each of the survivors of said
plurality of insured individuals enrolled in said
plan and not making payment to designated
beneficiaries of said plurality of insured
individuals who are deceased at the end of said
policy term.

THE REJECTIONS
The following rejections are before us for review:
Claims 31-40 and 42-51 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Hagan (US 6,061,661, iss. May 9, 2000) in view of
“Health Insurance Portability and Accountability Act of 1996,” Pub. L. No.
104-191 (1996) (referred to hereinafter as “HIPAA”).
Claims 41 and 52 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Hagan in view of HIPAA and further in view of
Frattalone (US 2002/0019793 A1, pub. Feb. 14, 2002).

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ANALYSIS
Claims 31-40 and 42-51
Appellants argue claims 31-40 and 42-51 as a group (Br. 10-12). We
select claim 31 as representative. The remaining claims stand or fall with
claim 31. 37 C.F.R. § 41.37(c)(1)(vii).
We are not persuaded of error on the part of the Examiner by
Appellants’ argument that Hagan “lacks features of the present invention”
(Br. 6). Appellants argue that Hagan is “different from the present
invention” because “[t]he present invention uses the life of the insured at the
time that the contract expires to determine whether any payment is made to
the beneficiary” whereas “Hagan uses the life of the beneficiary at the time
income is distributed to determine whether or not to make income payments
to that beneficiary” (Br. 7). However, claim 31 is not rejected as anticipated
by Hagan under 35 U.S.C. § 102. Instead, claim 31 is rejected as obvious
under 35 U.S.C. § 103 over Hagan in view of HIPAA.
The Examiner admits that the claimed invention has a distribution on
a survivorship basis at the end of the term, which is not identical to Hagan
(Ans. 10-11). However, the Examiner observes that “Hagan describes two
types of distribution payments: an income payment on survivorship basis
during the term, and a principal distribution at the end of the term” (Ans.
10). And the Examiner concludes that “[i]t would have been obvious to a
person of ordinary skill in the art at the time of the invention to modify
Hagan to combine these teachings to get payment of the distribution at the
end of the term on a survivorship basis” (Ans. 11).
Appellants’ argument that the claimed invention is different from
Hagan, without more, is insufficient to rebut the Examiner’s finding of
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obviousness. The mere existence of differences between the prior art and
the claim does not establish nonobviousness. Dann v. Johnston, 425 U.S.
219, 230 (1976). Indeed, the relevant question in considering obviousness is
not whether the claimed invention is different from the prior art but rather
“whether the difference between the prior art and the subject matter in
question is a differen[ce] sufficient to render the claimed subject matter
unobvious to one skilled in the applicable art.” Dann, 425 U.S. at 228
(citations omitted).
Here, Appellants argue that Hagan is different from the claimed
invention. But that argument is unpersuasive of error on the part of the
Examiner because it does not specifically address the Examiner’s findings or
the Examiner’s articulated reasoning in establishing a prima facie case of
obviousness.
We also are not persuaded of error on the part of the Examiner by
Appellants’ argument that “the combination of Hagan and HIPAA uses non-
analogous art” (Br. 8-9). The Examiner concedes that Hagan does not
disclose maintaining confidential personal identification and age data, i.e.,
limitation (b)(ii) of claim 31, and relies on HIPAA for this feature.
Appellants assert that “Hagan relates to financial information” while
“HIPPAA relates to legislation for health care plans or providers” (Br. 9).
Appellants thus maintain that “[i]t would not be logical, nor legally
mandated, to use health care legislation for guidelines on how to construct
financial systems for security;” therefore, “there is no motivation to combine
the art of Hagan and HIPAA” (Br. 9).
We agree with the Examiner that HIPAA is concerned with protecting
against unauthorized disclosure of personal information, which is the same
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problem addressed by Appellants in “collecting personal identification and
age data from said plurality of insured individuals and maintaining
confidential storage thereof,” as recited in claim 31. We find that HIPPAA
is analogous prior art because it would have logically commended itself to a
person skilled in the art concerned, like Appellants, with maintaining the
confidentiality of personal information. See In re Bigio, 381 F.3d 1320,
1325 (Fed. Cir. 2004) (Even when prior art is not in the same field of
endeavor as the claimed invention, it is still analogous prior art if it is
“reasonably pertinent” to the particular problem with which the inventor is
involved); In re Clay, 966 F.2d 656, 659 (Fed. Cir. 1992) (A reference is
reasonably pertinent if, because of the matter with which it deals, it logically
would have commended itself to an inventor’s attention in considering his
problem).
In view of the foregoing, we will sustain the Examiner’s rejection of
claim 31 under 35 U.S.C. § 103(a). We also will sustain the Examiner’s
rejection of claims 32-40 and 42-51, which stand or fall with claim 31.

Claims 41 and 52
Claims 41 and 52 depend from independent claims 31 and 42,
respectively, and recite that payments are made in accordance with a
formula, Ri = (Pi/Pt)(Pt + Gt)-(C+E), where:
(C+E) is commissions and expenses,
(Pt + Gt) is the total income, or total premiums paid plus
investment growth, and
(Pi/Pt) is the ratio of premiums paid by an individual to the sum
of all premiums paid.

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Appellants argue that claims 41 and 52 are allowable for the same
reasons as set forth with respect to claims 31 and 42 and further because
“there is no motivation to combine the art of Hagan and HIPAA with
Frattalone (Br. 9-10). We agree with, and adopt the Examiner’s response to
Appellants’ argument as set forth at pages 9-10 and 13 of the Answer.
Accordingly, we will sustain the Examiner’s rejection of claims 41
and 52 under 35 U.S.C. § 103(a)

DECISION
The Examiner’s rejection of claims 31-52 under 35 U.S.C. § 103(a) 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)(1)(iv).

AFFIRMED

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