Ex Parte Steele

Patent Trial and Appeal Board

May 7, 2018

11736661 (P.T.A.B. May. 7, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
111736,661 04/18/2007
23460 7590 05/09/2018
LEYDIG VOIT & MA YER, LTD
TWO PRUDENTIAL PLAZA, SUITE 4900
180 NORTH STETSON A VENUE
CHICAGO, IL 60601-6731
FIRST NAMED INVENTOR
James Patrick Steele
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.
254267 4187
EXAMINER
SHANKER, TIJLIE MEYERS
ART UNIT PAPER NUMBER
3689
NOTIFICATION DATE DELIVERY MODE
05/09/2018 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):
Chgpatent@leydig.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Exparte JAMES PATRICK STEELE
Appeal2017-000404 1
Application 11/736,661 2
Technology Center 3600
Before JOSEPH A. FISCHETTI, NINA L. MEDLOCK, and
BRADLEY B. BAY AT, Administrative Patent Judges.
MEDLOCK, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner's final
rejection of claims 13-16 and 18-20. We have jurisdiction under 35 U.S.C.
§ 6(b).
We AFFIRM.
1 Our decision references Appellant's Appeal Brief ("Br.," filed May 31,
2016) and the Examiner's Answer ("Ans.," mailed July 22, 2016), and Final
Office Action ("Final Act.," mailed September 30, 2015).
2 Appellant identifies American International Group, Inc. as the real party in
interest. Br. 1.
Appeal2017-000404
Application 11/736,661
CLAIMED INVENTION
Appellant's claimed invention "relates generally to settlement
payments, and more particularly to a program for assisting victims of
personal injuries to handle their settlement payments and help to manage
their lives after injury" (Spec. i-f 2).
Claim 13, reproduced below, is the sole independent claim, and
representative of the subject matter on appeal:
13. A method of assisting a personal injury client,
compnsmg:
(a) setting up a trust program comprising at least one
trust form selected from a Special Needs trust and a Medicare
Set-Aside trust;
(b) transferring assets from a settlement for
compensating a personal injury client to the trust program;
( c) periodically distributing funds, by the trust program
and via a specialized computer support and processing system,
according to a customized structured payment program for the
personal injury client comprising future periodic payments;
( d) providing at least one service by the trust program
to assist the personal injury client, wherein the at least one
service is selected from the group consisting of home health care
services, guaranteed-issue health insurance, prescription drug
program services, home maintenance service, and combinations
thereof;
( e) providing at least one tangible good by the trust
program to the personal injury client, wherein the at least one
tangible good is selected from the group consisting of home
health care goods, durable products for disabled, and
combinations thereof; and
(t) using a web server to execute computer executable
instructions stored on a tangible computer-readable medium to
perform steps of:
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displaying a web page on a web site adapted to be
used by the personal injury client to access the trust
program, the web page including a personalized menu of
services available to the personal injury client through the
trust program, and
displaying a web page on the web site providing
preferred pricing for at least one of goods and services
included in the trust program of the personal injury client.
REJECTIONS
Claims 13-16 and 18-20 are rejected under 35 U.S.C. § 101 as
directed to non-statutory subject matter.
Claims 13-16 and 18-20 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Walter N. Thorp, Special Needs-Special Plans: Estate
Planning Considerations for Attorneys Representing Families with Members
with Disabilities, 13 JOURNAL OF DISABILITY POLICY STUDIES 24
(Summer 2002) (hereinafter "Thorp"), Parker (US 2003/0182290 Al,
pub. Sept. 25, 2003), and Aubertin et al. (US 2006/0271436 Al, pub.
Nov. 30, 2006) (hereinafter "Aubertin"). 3
ANALYSIS
Non-Statutory Subject Matter
Under 35 U.S.C. § 101, an invention is patent-eligible if it claims a
"new and useful process, machine, manufacture, or composition of matter."
35 U.S.C. § 101. The Supreme Court, however, has long interpreted§ 101
to include an implicit exception: "[l]aws of nature, natural phenomena, and
3 Aubertin claims priority from provisional application Serial
No. 60/678,789, filed May 9, 2005 (Final Act. 5).
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abstract ideas" are not patentable. See, e.g., Alice Corp. Pty. Ltd. v. CLS
Bank Int'!, 134 S. Ct. 2347, 2354 (2014).
The Supreme Court, in Alice, reiterated the two-step framework
previously set forth in Mayo Collaborative Services v. Prometheus
Laboratories, Inc., 566 U.S. 66 (2012), "for distinguishing patents that claim
laws of nature, natural phenomena, and abstract ideas from those that claim
patent-eligible applications of those concepts." Alice Corp., 134 S. Ct.
at 2355. The first step in that analysis is to "determine whether the claims at
issue are directed to one of those patent-ineligible concepts." Id. If the
claims are not directed to a patent-ineligible concept, e.g., an abstract idea,
the inquiry ends. Otherwise, the inquiry proceeds to the second step where
the elements of the claims are considered "individually and 'as an ordered
combination'" to determine whether there are additional elements that
"'transform the nature of the claim' into a patent-eligible application." Id.
(quoting Mayo, 566 U.S. at 79, 78).
The Court acknowledged in Mayo, that "all inventions at some level
embody, use, reflect, rest upon, or apply laws of nature, natural phenomena,
or abstract ideas." Mayo, 566 U.S. at 71. Therefore, the Federal Circuit has
instructed that claims are to be considered in their entirety to determine
"whether their character as a whole is directed to excluded subject matter."
McRO, Inc. v. Bandai Namco Games Am., Inc., 837 F.3d 1299, 1312
(Fed. Cir. 2016) (quoting Internet Patents Corp. v. Active Network, Inc.,
790 F.3d 1343, 1346 (Fed. Cir. 2015)).
In rejecting the pending claims under 35 U.S.C. § 101, the Examiner
determined that the claims are directed to "managing a trust program," i.e.,
to an abstract idea; and that, whether viewed individually or as an ordered
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combination, the additional elements, other than the abstract idea, do not
amount to significantly more than the abstract idea itself (Final Act. 3--4).
Appellant does not challenge the Examiner's finding that the claims
are directed to an abstract idea (although Appellant ostensibly does so
"[ w ]ithout acquiescing in any way" to the Examiner's determination that the
claims are directed to an abstract idea (Br. 4)). Instead, Appellant argues
that independent claim 13 is patent-eligible because the claim recites
additional elements that amount to significantly more than a judicial
exception (id. at 5).
In this regard, Appellant first argues that claim 13 is patent-eligible
because the claim satisfies the Bilski4 machine-or-transformation test, i.e.,
the claimed method is tied to a particular machine or apparatus (id.). In fact,
the claimed method is not tied to any particular machine or apparatus at all.
Appellant asserts that the claimed method steps "identify particular
devices and require a particularly-programmed machine," e.g., "the
'specialized computer support and processing system' is particularly
programmed to periodically distribute funds 'according to a customized
structured payment program"' (id.) (emphasis omitted). But, there is no
indication in the Specification that the claimed method involves any
specialized hardware or that the "particular devices" recited in claim 13 are
other than generic computer components, which is not enough for patent-
eligibility. DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245, 1256
(Fed. Cir. 2014) ("And after Alice, there can remain no doubt: recitation of
4 Bilski v. Kappas, 561 U.S. 593 (2010).
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generic computer limitations does not make an otherwise ineligible claim
patent-eligible.").
We also are not persuaded of Examiner error by Appellant's argument
that claim 13 improves an existing technological process (Br. 6-7).
Appellant asserts that the method of claim 13 comprises a Comprehensive
Life Needs Trust Program ("CLNT Program") that addresses the unique
physical and financial concerns of personal injury settlement clients by
"providing access to the management of not only the assets received by
these clients, but also to vendor goods and services to assist them in
managing their lives after injury" (id.). Appellant maintains that "[t ]his is a
significant improvement over any existing technological process known at
the time of the invention" (id. at 7). Yet, the focus of claim 13 is not on the
improvement of any technological process but rather on implementation of
the abstract idea itself, i.e., managing a trust program. Indeed, the
Specification supports this view, disclosing that the claimed invention
relates to "a program for assisting victims of personal injuries to handle their
settlement payments and ... manage their lives after injury" (Spec. i-f 2), and
that the CLNT Program is "a way to add new features and benefits to the
settlement process," including access to continuous trust management and
professional experience (id. i-f 8). To the extent that claim 13 provides any
improvement at all, that improvement is to a business process, i.e., providing
trust services to manage a structured settlement, not a technological process.
It also is alone insufficient to establish patent-eligibility, even
accepting Appellant's assertion, that the method of claim 13 "can be
performed to create a more marketable trust program - a particularly useful
application" (Br. 7). The Examiner's rejection of claim 13 under§ 101 is
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not based on any alleged lack of utility. Instead, the Examiner determined
that claim 13 is directed to an abstract idea. And the law is clear that the
recitation of a practical application for an abstract idea is insufficient to
transform the abstract idea into a patent-eligible invention. Cf CyberSource
Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1371 (Fed. Cir. 2011) ("The
Court [in Parker v. Flook, 437 U.S. 584 (1978)] rejected the notion that the
recitation of a practical application for the calculation could alone make the
invention patentable.").
We also are not persuaded of Examiner error to the extent that
Appellant maintains that claim 13 is patent-eligible because the claimed
invention is allegedly novel and/or non-obvious (Br. 7 ("the applied
references fail to render claim 13 unpatentable and do not teach or suggest a
method of assisting a personal injury client having the combination of steps
and features recited in claim 13 ") ). A finding of novelty or non-obviousness
does not automatically lead to the conclusion that the claimed subject matter
is patent-eligible. Although the second step in the Mayo/Alice framework is
termed a search for an "inventive concept," the analysis is not an evaluation
of novelty or non-obviousness, but rather, a search for "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 Corp., 134 S. Ct. at 2355. "Groundbreaking,
innovative, or even brilliant discovery does not by itself satisfy the § 101
inquiry." Ass 'n for Molecular Pathology v. Myriad Genetics, Inc., 569 U.S.
576, 591 (2013). A novel and non-obvious claim directed to a purely
abstract idea is, nonetheless, patent-ineligible. See Mayo, 566 U.S. at 90;
see also Diamond v. Diehr, 450 U.S. 175, 188-89 (1981) ("The 'novelty' of
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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.").
We are not persuaded, on the present record, that the Examiner erred
in rejecting claim 13 under 35 U.S.C. § 101. Therefore, we sustain the
Examiner's rejection. We also sustain the Examiner's rejection of
dependent claims 14--16 and 18-20, which are not argued separately except
with reference to Appellant's arguments with respect to claim 13 (Br. 7).
Obviousness
Appellant variously argues that the Examiner erred in rejecting
claim 13 under 35 U.S.C. § 103(a) (Br. 8-13). But, none of Appellant's
arguments is persuasive.
Addressing each of Appellant's arguments in tum, we are not
persuaded, as an initial matter, by Appellant's argument that Aubertin
cannot be relied on in rejecting claim 13 under§ 103(a) because Aubertin is
non-analogous art (id. at 9-10). Appellant argues that Aubertin is directed
to a system and method for managing a computer network-based loyalty and
benefits program for an organization, and "is not in the same field of
endeavor as the subject matter of the pending claims, namely, a method of
assisting a personal injury client" (id. at 9). Appellant also maintains that
"Aubertin is not reasonably pertinent to the particular problem with which
[Appellant] was involved"; therefore, according to Appellant, "it would not
logically have commended itself to the Appellant's attention in considering
the problem" (id.).
In rejecting claim 13 under§ 103(a), the Examiner relied on Aubertin
as disclosing "providing preferred pricing for at least one of goods and
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services included in the trust program of the personal injury client," as
recited in claim 13 (Final Act. 11). The Examiner, thus, noted that Aubertin
discloses a "method for providing value-added benefits to an organizational
program, wherein a web server provides preferred pricing information" (id.
(citing Aubertin i-fi-141, 122)).
We agree with the Examiner that, even if Aubertin cannot reasonably
be considered in the same field of endeavor, Aubertin is reasonably pertinent
to the problem addressed by Appellant, i.e., "Aubertin provides preferred
pricing to a subset of consumers to maintain consumer satisfaction," which
is "what is occurring with the subset of consumers affiliated with the trust
program, as discounts are given as a perk to boost consumer satisfaction
with the trust program" (Ans. 6-7).
We also are not persuaded of Examiner error by Appellant's argument
that none of Thorp, Parker, and Aubertin, individually or in combination,
discloses or suggests "providing at least one service by the trust program to
assist the personal injury client" and "providing at least one tangible good by
the trust program to the personal injury client," as recited in claim 13, i.e.,
limitations (d) and (e) (Br. 10-12). Instead, we agree with the Examiner that
Thorp discloses the argued limitations (Final Act. 6-7 (citing Thorp, pp. 34--
35)).
Thorp is entitled "Special Needs - Special Plans: Estate Planning
Considerations for Attorneys Representing Families with Members with
Disabilities," and is directed to estate planning issues that arise in situations
where a person with a disability is involved (see Thorp 25). Thorp discloses
the use of a Special Needs Trust for a beneficiary with a disability (see, e.g.,
id. at 31-32), and identifies at pages 34--35, cited by the Examiner, the key
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considerations in drafting the trust and sample language for each
consideration. As outlined at pages 34--35, Thorp discloses that the trust is
intended to supplement, rather than replace public assistance, and
recommends inclusion of a provision defining the types of non-support
needs (e.g., requisites for maintaining the beneficiary's health, safety, and
welfare, which are not provided by any public agency) for which trust funds
may be used. Thorp discloses that these non-support needs may include, for
example, extraordinary or experimental mental medical care, dental and
diagnostic work, telephone and cable television services, special medical
equipment, personal hygiene items, etc. i.e., various services and tangible
goods (id. at 3 5).
Appellant argues that Thorp only contemplates funding a trust with
money, and does not contemplate "that the trust will be a trust program
which provides at least one service and at least one tangible good[,] as
recited in claim 13" (Br. 11-12). Appellant, thus, maintains that, rather than
providing services and/or goods, i.e., actually performing "at least one
service" to assist the personal injury client and actually delivering "at least
one tangible good" to the personal injury client, as called for in claim 13, the
trust program, in Thorp, provides only money (id.).
We are not persuaded by Appellant's argument at least because we
agree with the Examiner that there is nothing in claim 13 that requires the
actual performance of a service or the actual delivery of a tangible good
(Final Act. 6-7; see also Ans. 8-9). Instead, we agree with the Examiner
that "providing," as used in claim 13, is reasonably construed, in light of
Appellant's Specification, to mean providing access to value-added benefits,
including tangible goods through payments for supplemental goods and
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services, which Thorp discloses (Ans. 8-9 (citing Spec. i-f 18 (describing that
a vendor services component of the CLNT Program "can offer access to
various product and service distribution channels for health, nursing,
handicap needs and more that are tailored to assisting clients of personal
injury settlements"); i-f 21 (describing that the CLNT Program also includes
"access to direct durable medical equipment, medical services companies, a
prescription drug service, and connections for home maintenance")).
Appellant further assets that the § 103 rejection cannot be sustained
because none of the cited references, alone or in combination, discloses or
suggests "the claimed web server in such a way to render claim 13
unpatentable" (Br. 12). However, that argument is not persuasive at least
because Appellant's assertion does not rise to the level of a substantive
argument for patentability. Cf In re Lovin, 652 F.3d 1349, 1356-57
(Fed. Cir. 2011) ((holding that the Board reasonably interpreted 37 C.F.R.
§ 41. 3 7 ( c) (1) (vii) as requiring "more substantive arguments in an appeal
brief than a mere recitation of the claim elements and a naked assertion that
the corresponding elements were not found in the prior art").
Appellant paraphrases the claim language, and summarily asserts that
the proposed combination does not disclose or suggest the claim limitation
(Br. 12). But, Appellant offers no persuasive argument or technical
reasoning to support that position.
We are not persuaded, on the present record, that the Examiner erred
in rejecting independent claim 13 under 35 U.S.C. § 103(a). Therefore, we
sustain the Examiner's rejection. We also sustain the Examiner's rejection
of dependent claims 14--16 and 18-20, which are not argued separately
except based on their dependence from claim 13 (see Br. 13).
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DECISION
The Examiner's rejection of claims 13-16 and 18-20 under 35 U.S.C.
§ 101 is affirmed.
The Examiner's rejection of claims 13-16 and 18-20 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)(l )(iv).
AFFIRMED
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