Ex Parte Dahlberg et al

Patent Trial and Appeal Board

Aug 30, 2016

12825206 (P.T.A.B. Aug. 30, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/825,206 06/28/2010
22242 7590 08/30/2016
FITCH EVEN TABIN & FLANNERY, LLP
120 SOUTH LASALLE STREET
SUITE 1600
CHICAGO, IL 60603-3406
FIRST NAMED INVENTOR
Kenneth Alfred Dahlberg
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.
8570-98301-US 1265
EXAMINER
KANERVO, VIRPI H
ART UNIT PAPER NUMBER
3691
MAILDATE DELIVERY MODE
08/30/2016 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 KENNETH ALFRED DAHLBERG and
STEPHEN MICHAEL FREDLUND
Appeal2014-006392
Application 12/825,2061
Technology Center 3600
Before HUBERT C. LORIN, MICHAEL C. ASTORINO, and
ROBERT J. SILVERMAN, Administrative Patent Judges.
LORIN, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Kenneth Alfred Dahlberg, et al. (Appellants) seek our review under 3 5
U.S.C. § 134 of the final rejection of claims 21-29 and 31-34. We have
jurisdiction under 35 U.S.C. § 6(b) (2002).
SUMMARY OF DECISION
We REVERSE.
1 The Appellants identify Thrivent Financial for Lutherans as the real party
in interest. App. Br. 3.
Appeal2014-006392
Application 12/825,206
THE INVENTION
Claim 21, reproduced below, is illustrative of the subject matter on
appeal.
21. A computer implemented method for planning and managing
retirement income, comprising:
inputting user information for a user including age-related
information for an individual or couple along with time-based
information regarding when to start a retirement income projection,
desired retirement income amounts, existing amounts and sources of
retirement income, current assets available to fund retirement income,
and choices for managing income throughout retirement;
providing specific decision rules defining future actions to take
in response to future conditions, wherein the specific decision rules
include at least locking in additional income guarantees when
conditions are favorable and slowing down asset withdrawals when
conditions are unfavorable by recommending using a portion of
current assets to purchase a lifetime annuity in any year when a
corresponding available annuity payout rate is greater than a current
withdrawal rate for that year; thereby adding layers of additional
guaranteed lifetime income when conditions are favorable;
using a computer to process the user information and the
specific decision rules to automatically project potential outcomes for
retirement income and assets across multiple scenarios of future
market conditions including interest rates, stock and bond market
returns, and inflation; displaying to the user a range of results for
retirement income and remaining assets across the multiple scenarios
of future market conditions;
using a computer to monitor conditions throughout retirement
to help the user implement the decision rules and manage their
retirement income as conditions change.
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Appeal2014-006392
Application 12/825,206
THE REJECTIONS
The Examiner relies upon the following as evidence of
unpatentability:
Stiff
Robinson
Merton
Torre
US 2002/0194098 Al
US 2006/0149651 Al
US 2007 /0061238 Al
US 2007 /0244777 Al
Dec. 19, 2002
July 6, 2006
Mar. 15, 2007
Oct. 18, 2007
Golden, Jerome S., How to Add Payout Annuities to the Retirement
Mix, National Underwriter: Life & Health, Sept. 6, 2004, 22.
The following rejections are before us for review:
1. Claims 21-28, 31, 32, and 34 are rejected under 35 U.S.C. §103(a) as
being unpatentable over Robinson, Merton, and Golden.
2. Claim 29 is rejected under 35 U.S.C. §103(a) as being unpatentable
over Robinson, Merton, Golden, and Torre
3. Claim 33 is rejected under 35 U.S.C. §103(a) as being unpatentable
over Robinson, Merton, Golden, and Stiff.
ISSUES
Did the Examiner err in rejecting of claims 21-28, 31, 32, and 34
under 35 U.S.C. §103(a) as being unpatentable over Robinson, Merton and
Golden?
Did the Examiner err in rejecting claim 29 under 35 U.S.C. §103(a) as
being unpatentable over Robinson, Merton, Golden, and Torre?
Did the Examiner err in rejecting claim 33 under 35 U.S.C. §103(a) as
being unpatentable over Robinson, Merton, Golden, and Stiff?
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Appeal2014-006392
Application 12/825,206
ANALYSIS
The rejection of claims 21-28, 31, 32, and 34 under 35 U.S.C. §103(a) as
being unpatentable over Robinson, Merton, and Golden.
The issue is whether the claim limitation
providing specific decision rules defining future actions to take
in response to future conditions, wherein the specific decision rules
include at least locking in additional income guarantees when
conditions are favorable and slowing down asset withdrawals when
conditions are unfavorable by recommending using a portion of
current assets to purchase a lifetime annuity in any year when a
corresponding available annuity payout rate is greater than a current
withdrawal rate for that year, thereby adding layers of additional
guaranteed lifetime income when conditions are favorable
(claim 21) is disclosed in the cited prior art. According to the Examiner,
Golden shows that the decision rules include at least one rule for
locking in additional guaranteed income by recommending using a
portion of current assets to purchase a lifetime annuity in any year
when a corresponding available annuity payout rate is greater than a
current withdrawal rate for that year, thereby adding layers of
additional guaranteed lifetime income when conditions are favorable
(Golden: page 22 -disclosing "to 'buy' the annuity the investor has to
'sell' some assets" and "Dollar Cost Averaging gradually shifts from
mutual funds into the annuity by purchasing annuity 'tranches' over
time"; and page 59- "the results indicate that at the end of the period,
the dollar cost averaging strategy produced 36% more lifetime income
than the terminal funding approach, and 23 % more than the partial
initial funding approach").
Final Act. 7-8.
The Appellants disagree, arguing that Golden discloses dollar-cost
averaging. According to the Appellants,
no person of ordinary skill in the art would reasonably equate
dollar-cost averaging with using a portion of current assets to
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Appeal2014-006392
Application 12/825,206
purchase a lifetime annuity in any year when a corresponding
available annuity payout rate is greater than a current
withdrawal rate for that year, thereby adding layers of
additional guaranteed lifetime income when conditions are
favorable (as specified in independent claim 21 ).
App. Br. 8.
The Examiner responds that Golden discloses using a portion of
mutual funds to purchase an annuity. Ans. 17. The Appellants do not
dispute this. Reply Br. 2. The Examiner also states that Golden's dollar-
cost averaging produces more lifetime income than a terminal funding
approach. Ans. 17. The Appellants do not dispute this either. Reply Br. 2.
But, as the Appellants point out, we do not see how one of ordinary
skill in the art can reach the claimed subject matter given this knowledge.
One would not necessarily infer locking in additional guaranteed income by
using a portion of current assets to purchase a lifetime annuity as claim 21
requires from the fact that one can use a portion of mutual funds to purchase
an annuity. Nor would one necessarily infer an available annuity payout rate
that is greater than a current withdrawal rate for that year from the fact that
dollar-cost averaging can produce more lifetime income than a terminal
funding approach.
What is missing is any evidence that it was known to lock in
additional guaranteed income by using portion of current assets to purchase
a lifetime annuity in any year when an available annuity payout rate that is
greater than a current withdrawal rate for that year. Such evidence is
necessary to rationally underpin the conclusion of obviousness. Golden
alone would not lead one of ordinary skill in the art to
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Appeal2014-006392
Application 12/825,206
lock[] in additional income guarantees when conditions are
favorable and slowing down asset withdrawals when conditions
are unfavorable by recommending using a portion of current
assets to purchase a lifetime annuity in any year when a
corresponding available annuity payout rate is greater than a
current withdrawal rate for that year, thereby adding layers of
additional guaranteed lifetime income when conditions are
favorable.
Claim 21.
A prima facie case of obviousness has not been made out in the first
instance by a preponderance of the evidence. Accordingly the rejection is
not sustained.
The rejection of claim 29 under 35 U.S. C. §103 (a) as being unpatentable
over Robinson, Merton, Golden, and Torre.
The rejection of claim 33 under 35 U.S. C. §103 (a) as being unpatentable
over Robinson, Merton, Golden, and Stiff
Claims 29 and 33 depend from claim 21. The rejections are not
sustained for the reason stated for not sustaining the rejection of claim 21.
CONCLUSIONS
The rejection of claims 21-28, 31, 32, and 34 under 35 U.S.C. §103(a)
as being unpatentable over Robinson, Merton, and Golden is reversed.
The rejection of claim 29 under 35 U.S.C. § 103(a) as being
unpatentable over Robinson, Merton, Golden, and Torre is reversed.
The rejection of claim 33 under 35 U.S.C. § 103(a) as being
unpatentable over Robinson, Merton, Golden, and Stiff is reversed.
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Appeal2014-006392
Application 12/825,206
DECISION
The decision of the Examiner to reject claims 21-29 and 31-34 is
reversed.
REVERSED
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