Ex Parte Roscoe

Patent Trial and Appeal Board

Sep 29, 2017

12421353 (P.T.A.B. Sep. 29, 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.
12/421,353 04/09/2009 Michael Roscoe 002328.0862 4304
5073 7590 10/03/2017
RAKFR ROTTST T P
EXAMINER
2001 ROSS AVENUE BERONA, KIMBERLY SUE
SUITE 700
DALLAS, TX 75201-2980 ART UNIT PAPER NUMBER
3665
NOTIFICATION DATE DELIVERY MODE
10/03/2017 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 MICHAEL ROSCOE
Appeal 2015-001389
Application 12/421,3531
Technology Center 3600
Before HUBERT C. LORIN, NINA L. MEDLOCK, and
ROBERT J. SILVERMAN, Administrative Patent Judges.
LORIN, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Michael Roscoe (Appellant) seeks our review under 35 U.S.C. § 134
of the final rejection of claims 1, 2, 4—6, 8—13, 18, 21, 22, and 26—28. We
have jurisdiction under 35 U.S.C. § 6(b) (2002).
We AFFIRM.
1 The Appellant identifies The Prudential Insurance Company of America as
the real party in interest. Reply Br. 2.
Appeal 2015-001389
Application 12/421,353
THE INVENTION
Claim 18, reproduced below, is illustrative of the subject matter on
appeal.
18. A computer-implemented method for administering an insurance
account for providing income replacement and longevity insurance for
a primary wage earner and a beneficiary, the primary wage earner
earning more wages than the beneficiary, and the insurance account
being associated with a financial plan of the primary wage earner and
the beneficiary, the computer-implemented method comprising:
determining by a processor whether the account is in an income
replacement phase concluding at a date corresponding to a
predetermined retirement age of the primary wage earner, an
intermediate phase commencing at the date corresponding to the
predetermined retirement age of the primary wage earner and
concluding at a date of a last payment from at least one or more
retirement accounts associated with the financial plan and the
intermediate phase providing for no payments for the primary wage
earner or the beneficiary during the intermediate phase, or a longevity
phase commencing at the date of the last payment from the at least
one or more retirement accounts associated with the financial plan;
determining by the processor whether the primary wage earner
and the beneficiary are deceased;
if the primary wage earner is deceased and the beneficiary is
not deceased, and the account is in the income replacement phase,
accessing by the processor data indicative of amounts and timing of
payments for the beneficiary during the income replacement phase,
and communicating by the processor to a payment determination
system an output signal having data indicative of the payments for the
beneficiary during the income replacement phase, wherein the
payments for the beneficiary during the income replacement phase
comprise payments having amounts configured to replace at least a
portion of contributions that, according to the financial plan, were
planned to be made to the at least one or more retirement accounts
using the wages of the primary wage earner;
if the account is in the intermediate phase and either or both of
the primary wage earner and the beneficiary are living,
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communicating by the processor to the payment determination system
an output signal having data indicating the insurance account is to be
maintained without payments for either of the primary wage earner or
the beneficiary during the intermediate phase;
if the account is in the longevity phase, and either of the
primary wage earner or the beneficiary are not deceased, accessing by
the processor data indicative of a schedule of periodic payments,
including dates and amounts of payments, for at least one of the
primary wage earner and the beneficiary for a term continuing until
the last to die of the beneficiary and the primary wage earner, and
communicating by the processor to the payment determination system
an output signal having data indicative of one or more of the periodic
payments for the at least one of the primary wage earner and the
beneficiary for the term continuing until the last to die of the
beneficiary and the primary wage earner, wherein the amounts of
payments for the at least one of the primary wage earner and the
beneficiary for the term continuing until the last to die of the
beneficiary and the primary wage earner comprise amounts
configured to provide income to the at least one of the primary wage
earner and the beneficiary after the last payment from the at least one
or more retirement accounts.
The Examiner relies upon the following as evidence of
unpatentability:
THE REJECTIONS
Liebeskind et al. US 2002/0188480 Al Dec. 12, 2002
(“Liebeskind”)
Lewis et al. US 6,611,815 B1 Aug. 26, 2003
(“Lewis”)
Tarbox et al. US 7,120,600 B2 Oct. 10, 2006
(“Tarbox”)
Armstrong et al.
(“Armstrong”)
US 2007/0038542 Al Feb. 15, 2007
Hebron et al. US 2007/0185741 Al Aug. 9, 2007
(“Hebron”)
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Application 12/421,353
Walker et al. US 2008/0021744 Al Jan. 24, 2008
(“Walker”)
Allen-Rouman et al. US 7,366,695 B1 Apr. 29, 2008
(“Allen-Rouman”)
Sutton
Marks et al.
US 2008/0126140 Al May 29, 2008
US 2009/0271222 Al Oct. 29, 2009
(“Marks”)
Peterson US 2010/0076791 Al Mar. 25, 2010
The following rejections are before us for review:
1. Claims 1, 4—6, 8—13, 18, 21, 22, and 26—28 are rejected under
35 U.S.C. § 101 as being directed to non-statutory subject matter.
2. Claims 4—6 and 8—13 are rejected under 35 U.S.C. §112, first
paragraph, as failing to comply with the written description
requirement.
3. Claims 1, 2, 4—6, 8—13, 18, 21, 22, and 26—28 are rejected under
35 U.S.C. § 112, second paragraph, as being indefinite for failing to
particularly point out and distinctly claim the subject matter which
applicant regards as the invention.
4. Claims 1, 2, 4—6, 18, and 26 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Sutton, Hebron, Walker, Marks, and
Peterson.
5. Claims 8 and 10 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Sutton, Hebron, Walker, Marks, Peterson, and
Tarbox.
6. Claims 9 and 22 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Sutton, Hebron, Walker, Marks, Peterson, and
Liebeskind.
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7. Claim 11 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Sutton, Hebron, Walker, Marks, Peterson, and Lewis.
8. Claims 12 and 13 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Sutton, Hebron, Walker, Marks, Peterson, Lewis,
and Allen-Rouman.
9. Claims 27 and 28 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Sutton, Hebron, Walker, Marks, Peterson, and
Armstrong.
ISSUE
Did the Examiner err in rejecting claims 1, 4—6, 8—13, 18, 21, 22, and
26—28 under 35 U.S.C. § 101 as being directed to non-statutory subject
matter?
ANALYSIS
The rejection of claims 1, 4—6, 8—13, 18, 21, 22, and 26—28 under 35 U.S.C.
§ 101 as being directed to non-statutory subject matter.
The Appellant argued these claims as a group. See Reply Br. 18—21.
We select claim 1 as the representative claim for this group, and the
remaining claims 4—6, 8—13, 18, 21, 22, and 26—28 stand or fall with
claim 1. 37 C.F.R. § 41.37(c)(l)(iv). Claim 1 is an independent system
claim. There are three other independent claims: computer system claim 4,
method claim 18, and computer-readable medium claim 26. They parallel
claim 1.
Alice Corp. Proprietary Ltd. v. CLS Bank International, 134 S. Ct.
2347 (2014) identifies a two-step framework for determining whether
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claimed subject matter is judicially-excepted from patent-eligibility under 35
U.S.C. § 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
abstract idea. Alice, 134 S. Ct. at 2355.
In that regard, the Examiner determined that “[t]he claims are directed
to the abstract idea of administering an insurance account.” Ans. 2.
The Appellant argues that “[cjlaim 1 is directed to a computer system
that administers a particular type of insurance account in particular ways
during different phases. . . . [T]he insurance account in Claim 1 is not any
insurance account, but a particular type of insurance account administered in
a specific way.” Reply Br. 19.
Claim 1 begins by reciting “[a] computer system for administering an
insurance account.” Thus, claim 1 is generally directed to “administering an
insurance account,” albeit via a “computer system.”
Claim 1 continues, reciting that the insurance account is
for providing income replacement and longevity insurance
for a couple having a primary wage earner and a beneficiary,
the primary wage earner earning more wages than the
beneficiary, and the insurance account being associated with
a financial plan of the couple.
Thereby, claim 1 can be said to be directed to administering a particular type
of insurance account; that is, an insurance account with a particular purpose.
And claim 1 further continues with recitations of common computer
elements (“processor” and “memory storage device in communication with
the processor”) with a “processor configured to” perform a particular
scheme — which is:
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1. determine whether the account is in
i. an income replacement phase concluding at a date
corresponding to a predetermined retirement age of the
primary wage earner,
ii. an intermediate phase commencing at the date
corresponding to the predetermined retirement age of the
primary wage earner and concluding at a date of a last
payment from at least one or more retirement accounts
associated with the financial plan,
iii. or a longevity phase commencing at the date of the last
payment from the at least one or more retirement
accounts associated with the financial plan; and,
2. determine whether the primary wage earner and the beneficiary are
i. living;
3. and based on these determinations, conduct certain actions
a. if the account is in any of the phases and both the primary wage
earner and the beneficiary are deceased;
b. if the account is in the income replacement phase and the
primary wage earner is deceased and the beneficiary is living;
c. if the account is in the intermediate phase and either or both of
the primary wage earner and the beneficiary are living; or,
d. if the account is in the longevity phase, and either or both of the
primary wage earner and the beneficiary are living.
The actions recited in claim 1 range from “communicating] a signal having
data indicating that the account is closed” (for scenario 3. a.) to
communicating a payment schedule (for scenario 3. d.).
Accordingly, claim 1 can be characterized, more specifically, as being
directed to administering an insurance account with a particular purpose
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according to a particular scheme for accomplishing that purpose, via a
“computer system.”
Administering an insurance account having a particular purpose
according to a particular scheme in claim 1 for accomplishing that purpose is
more specific than “administering an insurance account.” But wording the
concept to which claim 1 is directed in this more specific way does no more
than describe the concept at a lower level of abstraction. The Appellant does
not challenge the Examiner’s determination that “administering an insurance
account” is an abstract idea. Moreover, this is similar to “managing a stable
value protected life insurance policy by performing calculations and
manipulating the results” that the court determined to be an abstract idea.
Bancorp Servs., L.L.C. v. Sun LifeAssur. Co. of Canada (U.S.), 687 F.3d
1266, 1280 (Fed. Cir. 2012), cert, denied, 134 S. Ct. 2870 (2014). We do
not see, and the Appellant does not adequately explain, how characterizing
claim 1 as being directed to, more specifically, administering an insurance
account having a particular purpose according a scheme for accomplishing
that purpose makes claim 1 any less directed to an abstract idea. See Apple,
Inc. v. Ameranth, Inc., 842 F.3d 1229, 1240-41 (Fed. Cir. 2016) (“An
abstract idea can generally be described at different levels of abstraction. As
the Board has done, the claimed abstract idea could be described as
generating menus on a computer, or generating a second menu from a first
menu and sending the second menu to another location. It could be
described in other ways, including, as indicated in the [Specification, taking
orders from restaurant customers on a computer.”)
The Appellant further argues that “even assuming for the sake of
argument that ‘administering an insurance account’ is an abstract idea-a
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basic tool of scientific and technological work-which Appellant does not
concede, Claim 1 does not monopolize the basic tool of administering an
insurance account.” Reply Br. 20.
Notwithstanding that pre-emption is not a separate test, the difficulty
with this argument is that it confuses the pre-emption concern with the level
of abstraction describing the abstract idea. With respect to the pre-emption
concern, “[w]hat matters is whether a claim threatens to subsume the full
scope of a fundamental concept, and when those concerns arise, we must
look for meaningful limitations that prevent the claim as a whole from
covering the concept’s every practical application.” CLS Banklnt 7 v. Alice
Corp. Pty. Ltd., 717 F.3d 1269, 1281 (Fed. Cir. 2013) (Lourie, J.,
concurring). Here, the argued-over claim limitation (e.g., with respect to the
scheme) simply narrows the abstract idea so that it is described at a lower
level of abstraction. It does not render the abstract idea to which the claim is
directed any less an abstract idea.
To be clear, the proper focus is not preemption per se, for some
measure of preemption is intrinsic in the statutory right granted with
every patent to exclude competitors, for a limited time, from
practicing the claimed invention. See 35 U.S.C. § 154. Rather, the
animating concern is that claims should not be coextensive with a
natural law, natural phenomenon, or abstract idea; a patent-eligible
claim must include one or more substantive limitations that, in the
words of the Supreme Court, add “significantly more” to the basic
principle, with the result that the claim covers significantly less. See
Mayo 132 S. Ct. at 1294. Thus, broad claims do not necessarily raise
§ 101 preemption concerns, and seemingly narrower claims are not
necessarily exempt.
Id. See also Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371,
1379 (Fed. Cir. 2015) (“While preemption may signal patent ineligible
subject matter, the absence of complete preemption does not demonstrate
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patent eligibility.”). Because we find the claimed subject matter covers
patent-ineligible subject matter, the pre-emption concern is necessarily
addressed. “Where a patent’s claims are deemed only to disclose patent
ineligible subject matter under the Mayo framework, [] preemption concerns
are fully addressed and made moot.” Ariosa Diagnostics, 788 F.3d at 1379.
Lastly, the Appellant argues that “the evidence of record shows that
Claim 1 is not directed to an abstract idea-a basic tool of scientific and
technological work. Notably, the Examiner uses an alleged combination of
five references to allege that each and every element of Claim 1 is
disclosed.” Reply Br. 20.
But it does not necessarily follow that because the claims have been
rejected under § 103 over a number of prior art rejections they are not
directed to an abstract idea. Cf. Intellectual Ventures ILLCv. Symantec
Corp., 838 F.3d 1307, 1315 (Fed. Cir. 2016).
Indeed, “[t]he ‘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. Diehr, 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 by 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/Alice.
All the arguments having been addressed and found unpersuasive, we
find that the Examiner’s determination under Alice step one that claim 1 is
directed to an abstract idea was without error. We now turn to step two.
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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 (quoting Mayo, 566 U.S. at 72—
73).
In that regard, the Examiner determined that
[t]he additional elements or combination of elements in the claims
other than the abstract idea per se amount to no more than: (i) mere
instructions to implement the idea on a computer, and/ or
(ii) recitation of generic computer structure that serves to perform
generic computer functions that are well-understood, routine, and
conventional activities previously known to the pertinent industry.
Viewed as a whole, these additional claim element(s) do not provide
meaningful limitation(s) to transform the abstract idea into a patent
eligible application of the abstract idea such that the claim(s) amounts
to significantly more than the abstract idea itself.
Ans. 2.
The Appellant argues that
Claim 1 is directed to a computer system that administers a particular
type of insurance account in particular ways during different phases:
the income replacement phase, the intermediate phase, and the
longevity phase. Therefore, Claim 1 includes an element or a
combination of elements that amount[s] to significantly more than the
concept of “administering an insurance account.”
Reply Br. 21.
The argument is unpersuasive as to error in the Examiner’s
determination under Alice step two. Administering an insurance account
having a particular purpose according to a particular scheme for
accomplishing that purpose is not an element or a combination of elements
that amounts to significantly more than the concept of “administering an
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insurance account.” Id. As discussed above, it simply describes the concept
at a lower level of abstraction.
All the arguments having been addressed and found unpersuasive, we
find that the Examiner’s determination under Alice step two that additional
claim elements do not provide meaningful limitations to transform the
abstract idea into a patent-eligible application of the abstract idea such that
claim 1 amounts to significantly more than the abstract idea itself is without
error.
The rejection is sustained.
The rejection of claims 4—6, and 8—13 under 35 U.S.C. § 112, first
paragraph, as failing to comply with the written description requirement.
The rejection of claims 1, 2, 4—6, 8—13, 18, 21, 22, and 26—28 under
35 U.S.C. § 112, second paragraph, as being indefinite for failing to
particularly point out and distinctly claim the subject matter which applicant
regards as the invention.
The rejection of claims 1, 2, 4—6, 18, and 26 under 35 U.S.C. § 103(a) as
being unpatentable over Sutton, Hebron, Walker, Marks, and Peterson.
The rejection of claims 8 and 10 under 35 U.S.C. § 103(a) as being
unpatentable over Sutton, Hebron, Walker, Marks, Peterson, and Tarbox.
The rejection of claims 9 and 22 under 35 U.S.C. § 103(a) as being
unpatentable over Sutton, Hebron, Walker, Marks, Peterson, and
Liebeskind.
The rejection of claims 11 under 35 U.S.C. § 103(a) as being unpatentable
over Sutton, Hebron, Walker, Marks, Peterson, and Lewis.
The rejection of claims 12 and 13 under 35 U.S.C. § 103(a) as being
unpatentable over Sutton, Hebron, Walker, Marks, Peterson, Lewis, and
Allen-Rouman.
The rejection of claims 27 and 28 under 35 U.S.C. § 103(a) as being
unpatentable over Sutton, Hebron, Walker, Marks, Peterson, and
Armstrong.
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As to these rejections, our decision is dispositive with respect to
patentability in view of our affirmance of the rejection of claims 1, 4—6,
8—13, 18, 21, 22, and 26—28 under 35 U.S.C. § 101 as being directed to
non-statutory subject matter. See Ex parte Gutta, No. 2008-4366, 2009 WL
2563524, *15 (BPAI Aug. 10, 2009) (precedential) (citing Diamond v.
Diehr, 450 U.S. 175, 188 (1981)); In re Comiskey, 554 F.3d 967, 973 (Fed.
Cir. 2009); In re Bilski, 545 F.3d 943, 951 n.l (Fed. Cir. 2008); In re Rice,
132 F.2d 140, 141 (CCPA 1942).
CONCLUSIONS
The rejection of claims 1, 4—6, 8—13, 18, 21, 22, and 26—28 under
35 U.S.C. § 101 as being directed to non-statutory subject matter is affirmed.
We do not reach the rejections of claims 4—6 and 8—13 under
35 U.S.C. § 112, first paragraph, as failing to comply with the written
description requirement; claims 1, 2, 4—6, 8—13, 18, 21, 22, and 26—28 under
35 U.S.C. §112, second paragraph, as being indefinite for failing to
particularly point out and distinctly claim the subject matter which applicant
regards as the invention; claims 1, 2, 4—6, 18, and 26 under 35 U.S.C.
§ 103(a) as being unpatentable over Sutton, Hebron, Walker, Marks, and
Peterson; claims 8 and 10 under 35 U.S.C. § 103(a) as being unpatentable
over Sutton, Hebron, Walker, Marks, Peterson, and Tarbox; claims 9 and 22
under 35 U.S.C. § 103(a) as being unpatentable over Sutton, Hebron,
Walker, Marks, Peterson, and Liebeskind; claims 11 under 35 U.S.C.
§ 103(a) as being unpatentable over Sutton, Hebron, Walker, Marks,
Peterson, and Lewis; claims 12 and 13 under 35 U.S.C. § 103(a) as being
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unpatentable over Sutton, Hebron, Walker, Marks, Peterson, Lewis, and
Allen-Rouman; and, claims 27 and 28 under 35 U.S.C. § 103(a) as being
unpatentable over Sutton, Hebron, Walker, Marks, Peterson, and Armstrong.
DECISION
The decision of the Examiner to reject claims 1, 2, 4—6, 8—13, 18, 21,
22, and 26—28 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)(l)(iv).
AFFIRMED
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