Ex Parte Roll et alDownload PDFPatent Trial and Appeal BoardAug 26, 201613672904 (P.T.A.B. Aug. 26, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 13/672,904 11109/2012 Leif A. Roll 86528 7590 08/30/2016 Slayden Grnbert Beard PLLC 401 Congress Avenue Suite 1900 Austin, TX 78701 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. 16091.105020 1480 EXAMINER AKINTOLA, OLABODE ART UNIT PAPER NUMBER 3691 NOTIFICATION DATE DELIVERY MODE 08/30/2016 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): trosson@sgbfirm.com patent@sgbfirm.com dallen@sgbfirm.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte LEIF A. ROLL, DAVID VINCENT PRUS, JUN WU, GREGORY LEE HAYWARD, and DAVID LEE MENNING Appeal2014-007783 1 Application 13/672,9042 Technology Center 3600 Before HUBERT C. LORIN, NINA L. MEDLOCK, and MATTHEWS. MEYERS, Administrative Patent Judges. MEYERS, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's final rejection of claims 1--4, 7-11, and 14. We have jurisdiction under 35 U.S.C. § 6(b ). 1 Our decision references Appellants' Appeal Brief ("Appeal Br.," filed May 12, 2014) and Reply Br. ("Reply Br.," filed July 1, 2014), and the Examiner's Answer ("Ans.," mailed June 9, 2014), and Final Office Action ("Final Act.," mailed October 9, 2013). 2 Appellants identify State Farm Mutual Automobile Insurance Company as the real party in interest (Appeal Br. 2). Appeal2014-007783 Application 13/672,904 We REVERSE. CLAIMED INVENTION Appellants' claimed invention "relates generally to systems and methods for automatically providing a multi-line discount on an insurance product in connection with purchasing a financial services product, such as a deposit account" (Spec. i-f 2). Claim 1, reproduced below with added bracketed notations, is illustrative of the subject matter on appeal: 1. A computer-based method for automatically providing a discount on insurance comprising the steps of: [a] determining, by a computer associated with an insurance company, that a customer has purchased a financial services product from a financial institution; [b] determining, by the computer, that the customer has an insurance policy with the insurance company, wherein the insurance company is associated with the financial institution; [ c] automatically determining and applying, by the computer, a discount on a premium for the insurance policy based on the purchase of the financial services product, wherein determining the discount comprises: [ d] identifying a group of insurance policy customers that have purchased the financial services product; [ e] determining an actuarial risk profile associated with the identified group of insurance policy customers that have purchased the financial services product; [ fJ determining an amount of the discount based on the determined actuarial risk profile associated with the identified group insurance policy customers; and [g] automatically discontinuing, by the computer, the discount on the premium for the insurance policy upon the computer receiving an indication that the financial services product has been discontinued. 2 Appeal2014-007783 Application 13/672,904 REJECTION Claims 1--4, 7-11, and 14 are rejected under 35 U.S.C. § 103(a) as unpatentable over Gore (US 2009/0259497 Al, pub. Oct. 15, 2009), Bernard (US 2012/0016695 Al, pub. Jan. 19, 2012), Pednault (US 7,072,841 Bl, iss. July 4, 2006), and Howell (US 2003/0105674 Al, pub. June 5, 2003). ANALYSIS Independent claims 1and8, and dependent claims 2-4, 7, 9-11, and 14 We are persuaded by Appellants' argument that the Examiner erred in rejecting independent claims 1 and 8 under 35 U.S.C. § 103(a) because the combination of Gore, Bernard, Pednault, and Howell fails to disclose or suggest "determining an insurance policy discount based on the purchase of a financial services product, by: ... determining an actuarial risk profile associated with the identified group of insurance policy customers that have purchased the financial services product," as recited by limitation [ e] in independent claim 1, and similarly recited by independent claim 8 (see Appeal Br. 5-9; see also Reply Br. 2-6). In the Final Office Action, the Examiner finds that Gore discloses: providing a discount on insurance comprising the steps of the steps of: determining ... that a customer has purchased a financial services product from a financial institution (debit card); determining ... that the customer has an insurance policy with the insurance company ... [and,] automatically determining and applying ... a discount on a premium for the insurance policy based on the purchase of the financial services product (abstract, 0021 ). (Final Act. 2-3). The Examiner acknowledges that Gore does not explicitly teach wherein the determining the discount comprises: ... determining an actuarial risk profile 3 Appeal2014-007783 Application 13/672,904 associated with the identified group of insurance policy customers that have purchased the financial services product; and determining an amount of the discount based on the determined actuarial risk profile associated with the identified group insurance policy customers. (Id. at 3). To address this deficiency, the Examiner turns to Pednault to teach "the concept of determining a premium (including applicable discounts) based on the risk profile customers" (id. (citing Pednault, col. 28, 1. 66 - col. 29, 1. 5)). Based on this disclosure, the Examiner concludes "[i]t would have been obvious to one of ordinary skill in the art at the time of the invention to modify Gore to include these features for the obvious reason of achieving desired loss-ratio target" (id. at 3--4). The Examiner further acknowledges that "Pednault does not explicitly that the customers are a group of customers that have purchased financial services products" (id. at 4). To address this deficiency, the Examiner turns to Howell to teach "the concept of providing incentives to a group of customers in exchange for the purchase of financial services product'; (id. (citing Howell, claim 17) ), and concludes that "it would have been obvious to one of ordinary skill in the art to modify Pednault's premium (including applicable discounts) based on risk profile of customers that have purchased financial service products as an incentive in exchange for purchasing such financial services product" (id.). Gore is directed to a system for "calculating a premium paid by [an] insured person" (Gore i-f 4). More particularly, Gore discloses calculating an amount of expenditure of a member using a credit or debit card issued to the member; and using the calculated amount of expenditure to calculate a premium payable by the member, wherein the premium is reduced by a percentage of the amount of expenditure of the member using the credit or debit card issued to the member. 4 Appeal2014-007783 Application 13/672,904 (Id. ilil 6-7). Gore further discloses "[t]he credit or debit card could be a debit or credit card of a third party financial institution that may or may not be branded by the insurer" (id. i-f 20). Gore discloses that "[b ]ased on the calculated expenditure amount of the member using the credit or debit card issued to the member, the member is given a discount on their premiums for the insurance plan" (id. i-f 21 ). In this regard, Gore discloses "that by simply making purchases on their credit card or debit cards, members make their life and/or health cover more affordable by earning themselves a discount on their insurance plans" (id. i-f 29). Pednault is directed to a system for constructing segmentation-based predictive models for "modeling insurance risks or policyholder profitability, based on historical policy and claims data" (Pednault, col. 1, 11. 12-13). Pednault discloses "[i]n the case of insurance risk modeling, the segments would correspond to risk groups and the constraints would correspond to criteria used by actuaries to assess actuarial credibility" (id. at col. 1, 11. 64---67). Pednault further discloses "[ w ]hen developing new price structures property and casualty insurance, risk models are first constructed that divide policyholders into homogeneous risk groups according to their frequency and severity characteristics. Appropriate premiums are then determined for these risk groups in order to achieve desired loss-ratio targets" (id. at col. 28, 1. 66- col. 29, 1. 4). Howell is directed to a system which "allows financial products, such as annuities, to be browsed and purchased online" (Howell i-f 10). More particularly, Howell discloses "[ w ]hen a customer accesses the website utilized by the present invention, his or her address information is used to determine a State of residence. Thus, upon request by the customer, the 5 Appeal2014-007783 Application 13/672,904 present invention displays financial product information applicable to the State in which the customer resides" (id.). Howell also discloses "crediting [a] first customer with one or more incentives in exchange for the purchase of [a] first financial product" (id. at claim 17). Howell discloses, however, that its system provides customers with the one or more incentives to "encourage[] customers to purchase annuities online through automatic withdrawal from their bank account" (id. i-f 36). We have reviewed the cited portions of Gore, Pednault, and Howell and agree with Appellants that none of Gore, Pednault, and Howell, alone or in combination, discloses or suggests the argued limitation. In particular, we fail to see, and the Examiner does not adequately explain, how Pednault's disclosure regarding "the concept of determining an actuarial risk profile associated with the identified group of insurance policy customers (policyholders)" (Ans. 3; see also Pednault at col. 1, 11. 64---67) and Howell's disclosure regarding "the concept of providing incentives to a group of customer (equivalent to policyholders of Pednault with determined actuarial risk profile) in exchange for the purchase of financial services products" (Ans. 3; see also Howell i-f 36) in combination with Gore's general disclosure regarding the calculation of insurance premiums (Gore i-f 4) discloses or suggests "determining an actuarial risk profile associated with the identified group of insurance policy customers that have purchased the financial services product," as recited by limitation [ e] in independent claim 1, and similarly recited by independent claim 8. We acknowledge that Pednault discloses dividing policyholders into "homogeneous risk groups according to their frequency and severity characteristics" "in order to [determine a particular premium necessary] to 6 Appeal2014-007783 Application 13/672,904 achieve desired loss-ratio targets" (see Pednault, col. 28, 1. 66 - col. 29, 1. 4) and Howell discloses providing a customer with an incentive for purchasing a particular financial product (see Howell, claim 17). However, the Examiner has done no more than show that calculating insurance premium for different "risk groups in order to achieve desired loss-ratio targets" (Pednault, col. 28, 1. 66 - col. 29, 1. 4) and providing customers with incentives to "encourage[] customers to purchase annuities online through automatic withdrawal from their bank account" (Howell i-f 36) were known separately in the prior art. And, we find these disclosures alone, without more, are an insufficient showing to disclose or suggest "determining an actuarial risk profile associated with the identified group of insurance policy customers that have purchased the financial services product," as recited by limitation [ e] in independent claim 1, and similarly recited by independent claim 8. In this regard, we note that the Examiner does not articulate any reasoning with rational underpinning for why one of ordinary skill in the art would combine "Howell's teaching of identifying customers that have purchased a particular financial product with Pednault 's teaching of risk profiling customers based on predicted cost to the insurance company and determining a corresponding insurance premium" (Reply Br. 4) to arrive at the claimed invention. Instead, the Examiner merely concludes that "it would have been obvious to one of ordinary skill in the art to modify Pednault's premium (including applicable discounts) based on risk profile of customers that have purchased financial service products as an incentive in exchange for purchasing such financial services product" (Final Act. 4). "[R ]ejections on obviousness grounds cannot be sustained by mere 7 Appeal2014-007783 Application 13/672,904 conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness." In re Kahn, 441F.3d977, 988 (Fed. Cir. 2006) (quoted with approval inKSRint'l Co. v. Teleflex, Inc., 550 U.S. 398, 418 (2007)). In view of the foregoing, we do not sustain the Examiner's rejection of independent claims 1and8 under 35 U.S.C. § 103(a). For the same reasons, we also do not sustain the Examiner's rejection under 35 U.S.C. § 103(a) of dependent claims 2--4, 7, 9--11, and 14. Cf In re Fritch, 972 F.2d 1260, 1266 (Fed. Cir. 1992) ("dependent claims are nonobvious if the independent claims from which they depend are nonobvious") DECISION The Examiner's rejection of claims 1--4, 7-11, and 14 under 35 U.S.C. § 103(a) is reversed. REVERSED 8 Copy with citationCopy as parenthetical citation