Ex Parte Stiff et al

Patent Trial and Appeal Board

May 7, 2018

11866815 (P.T.A.B. May. 7, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
11/866,815 10/03/2007
21967 7590 05/07/2018
Hunton Andrews Kurth LLP
Intellectual Property Department
2200 Pennsylvania Avenue, N.W.
Washington, DC 20037
FIRST NAMED INVENTOR
Geoffrey S. STIFF
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.
52493.000474 7819
EXAMINER
KWONG, CHO YIU
ART UNIT PAPER NUMBER
3693
MAIL DATE DELIVERY MODE
05/07/2018 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 GEOFFREY S. STIFF, JAMES C. TEMPLEMAN,
HEATHER HARKER, RUTH MANKA,
and WILLIAM S. WHITE
Appeal2017-001577
Application 11/866,815 1
Technology Center 3600
Before JAMES R. HUGHES, CARL L. SILVERMAN, and
JAMES W. DEJMEK, Administrative Patent Judges.
SILVERMAN, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's
Final Rejection of claims 1-30, which constitute all the pending rejected
claims. Final Act. 1. We have jurisdiction under 35 U.S.C. § 6(b ).
We affirm.
1 The real party in interest is identified as Genworth Financial, Inc. App.
Br. 1.
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Application 11/866,815
STATEMENT OF THE CASE
Appellants' invention relates to providing an option to convert an
asset or portfolio of assets into a guaranteed income flow (annuity) or other
settlement at a future date. Abstract; Spec. 1:14--2:13. Claims 1 and 28 are
exemplary of the matter on appeal (emphases added):
1. A computer implemented method performed on a tangibly
embodied processing device that exchanges a future value of
an asset or portfolio of assets for at least one annuity
instrument outcome on a future date and adjusts a guarantee
to a second guaranteed outcome to reflect a fluctuation in
performance of the asset or portfolio of assets, the method
compnsmg:
determining, by the tangibly embodied processing device coupled
to a memory that stores data relating to an asset or portfolio of assets
and associated assessment data, a delivery of the annuity outcome
based on an assessment of an underwritten strategy associated with an
asset or portfolio of assets; and
determining, by the tangibly embodied processing device, a fee
payment amount or a series of fee payment amounts and at least one
guideline required for the delivery of the annuity outcome; and
wherein an investor pays the fee to exchange a future value of the
asset or the portfolio of assets, regardless of future performance or
value, for at least one annuity outcome on a future date, such at least
one annuity outcome on a future date constituting a first guaranteed
outcome, where the at least one annuity outcome on a future date is
contingent on:
( 1) a payment of the fee, and
(2) maintaining the asset or portfolio of assets in accordance
with at least one guideline or benchmark required for the delivery of
the annuity outcome, and the at least one guideline or benchmark is
constituted by at least one boundary value, the at least one boundary
value related to the performance of the asset or portfolio of assets; and
automatically adjusting, by the tangibly embodied processing
device, a guarantee based on a failure to attain the minimum guideline
or benchmark, such adjusting including adjusting the at least one
annuity outcome from the first guaranteed outcome to a second
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guaranteed outcome where the adjusting to the second guaranteed
outcome reflects a fluctuation in the performance of the asset or
portfolio of assets.
App. Br. 22-23 (Claims Appendix).
28. A computer implemented method for providing an option
to exchange a future value of an asset or portfolio of assets, regardless
of future performance or value, for at least one annuity instrument
outcome on a future date, the method performed on a tangibly
embodied processing device, the method comprising:
assessing, by the tangibly embodied processing device coupled
to a memory that stores data relating to an asset or portfolio of assets
and associated assessment data, an existing portfolio;
assessing, by the tangibly embodied processing device, an
underwritten strategy associated with the asset or portfolio of assets;
determining, by the tangibly embodied processing device, a
guaranteed delivery of annuity outcome other than cash based on the
portfolio and underwriting assessments;
issuing, by the tangibly embodied processing device, an option
to exchange a future value of the asset or portfolio of assets,
regardless of future performance or value, for at least one annuity
instrument outcome on a future date;
collecting, via an electronic input, a fee payment;
auditing, by the tangibly embodied processing device, an
investment strategy of the asset or portfolio of assets, the auditing the
investment strategy performed in a periodic manner and performed
based on both qualitative parameters and quantitative parameters;
adjusting, by the tangibly embodied processing device, at least
one benchmark based on the auditing, the benchmark being required
for the delivery of the annuity outcome other than cash, and
automatically adjusting, by the tangibly embodied processing
device, the guaranteed delivery of annuity outcome other than cash
based on a failure to attain minimum strategy guidelines identified by
the auditing, the adjusting the guaranteed delivery of annuity outcome
other than cash constituted by changing a value of the guaranteed
delivery of annuity outcome other than cash to a value that is above
zero; and
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interfacing, via an electronic inteiface and a communication
link, with at least one external recordkeeping system; and
wherein the at least one benchmark is constituted by at least one
boundary value, the at least one boundary value related to the
performance of the asset or portfolio of assets; and the guaranteed
delivery of annuity outcome being determined upon when a purchaser,
by virtue of making withdrawals against the asset or portfolio of
assets, has just enough money to make a final option payment.
App. Br. 26-27 (Claims Appendix).
REJECTIONS
Claims 1-30 are provisionally rejected on the ground of nonstatutory
obviousness-type double patenting as being unpatentable over claims 1-13
and 17-33 of copending Application No. 11/556,396. Final Act. 3.
Claims 1-302 are rejected under 35 U.S.C. § 101 because the claimed
invention is directed to patent-ineligible subject matter. Final Act. 4--5.
Claims 1-27 and 29-30 are rejected3 under 35 U.S.C. § I03(a) as
being unpatentable over Feldstein et al. (Martin Feldstein and Elena
Ranguelove, "Accumulated Pension Collars: A Market Approach to
Reducing the Risk of Investment-Based Social Security Reform," NBER
Working Paper No. 7861, August 2000) ("Feldstein") in view ofWolfberg et
al. (US 4,885,685; iss. December 5, 1989) ("Wolfberg"). Final Act. 5-16.
Claim 28 is rejected under 35 U.S.C. § I03(a) as being unpatentable
over Feldstein, Wolfberg, and Chamley Jr. (US 2004/0117286 Al; pub.
June 17, 2004) ("Chamley"). Final Act. 16-19.
ANALYSIS
2 Only claims 1-30 are pending and rejected. Appellants and the Examiner
erroneously refer to the rejection of claims 1-33. See App. Br. 7; Final
Act. 4.
3 This rejection is withdrawn. Ans. 3.
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The obviousness-type double patenting Rejection
The Examiner finds, although the conflicting claims are not identical,
they are not patentably distinct from each other because the claims are
directed toward providing an investor the ability to purchase an option to
exchange a future value of an asset. Final Act. 3.
Appellants do not rebut the Examiner's findings and, therefore, on the
record before us, we proforma sustain the rejection of claims 1-30.
The§ 101 Rejection
Appellants argue the Examiner errs in concluding claim 1 is directed
to an abstract idea and, assuming arguendo the claim is directed to an
abstract idea, the Examiner errs in concluding the claim does not recite
significantly more than the abstract idea. App. Br. 7-13; Reply Br. 2---6.
Regarding whether the claims are directed to an abstract idea,
Appellants argue the Examiner improperly boils down the claims to
"administrating annuity product" and ignores the limitations which recite a
very particular way to "exchange[] a future value of an asset ... for at least
one annuity instrument outcome," in combination with "adjust[ing] a
guarantee to a second guaranteed outcome to reflect a fluctuation in
performance of the asset or portfolio of assets." App. Br. 8 (referring to
claim 1 ). Additionally, Appellants argue the claims do not claim the
"building blocks of human ingenuity" and their allowance poses no risk of
pre-emption. Id. at 8-9.
Appellants argue the claims recite specific steps that are a departure
from the conventional way of providing annuities and are significantly more
than the alleged abstract idea. Id. at 10-12 (citing Spec. 1, 2, 23, and 24).
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Appellants argue a computer processor is integral to the claimed invention
and the invention cannot be performed without a computer. Id. at 12 ( citing
Bancorp Services, LLC v. Sun Life Assurance Co. of Canada (US.), 687 F.3d
1266, 1278 (Fed. Cir. 2012) (citing SiRF Tech. Inc., v. Int'! Trade Comm 'n,
601 F.3d 1319, 1333 (Fed. Cir. 2010)). Appellants argue the claims improve
the efficiencies of the computer itself and effect an improvement in a
technical field. Id. at 13
The Examiner concludes claims 1-30 are directed to administrating
annuity product and this is a fundamental economic practice/organized
human activity which constitutes an abstract idea. Final Act. 4--5. In
particular, the Examiner concludes:
Id.
The claim(s) does/do not include additional elements that are sufficient
to amount to significantly more than the judicial exception because
claims do not an improvement to another technology or technical field,
an improvement to the functioning of the computer itself, or meaningful
limitations beyond generally linking the use of an abstract idea to a
particular technological environment. Note that the limitations, in the
instant claims, are done by the generically recited processing device.
The limitations are merely instructions to implement the abstract idea
on a computer and require no more than a generic computer to perform
generic computer functions that are well-understood, routine and
conventional activities previously known to the industry.
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In the Answer, the Examiner additionally concludes:
However, considering each and every one of the claim limitations, the
claimed invention is directed to administrating annuity product. For
instance in claim 1, the claimed invention first describes functional
limitations such, "determining ... a delivery of the annuity outcome"
based on business rule, "determining ... a fee payment amount. ... and
at least one guideline required for the delivery of the annuity outcome"
based on business rule, and "automatically adjusting a guarantee" ( of
the annuity outcome) based on rule. All of which are directed to the
administration of an annuity. In between the functional limitations, the
claimed invention includes wherein clause that describes business rules
associated to the annuity being administered, such as fee schedule and
payment contingency. Considering the claimed invention as whole, the
identification that the claimed invention being directed to
"administrating annuity product" is not only reasonable but also
apparent.
Ans. 5---6.
The Examiner concludes the limitations of the particular solutions for
the annuity problem do not constitute significantly more as the problem is
not a technological problem; it is a business problem. Id. at 8-9. The
Examiner concludes the functional limitations are all performable by a
person and no explanation as to why these limitations are only performable
by computer is supported in the claim, Specification, or Appellants'
arguments. Id. at 10. The Examiner concludes there is no basis that the
claims improve the computer itself or effect an improvement in a technical
field. Id. In particular, the Examiner concludes it is unclear how the
improved execution of the claimed process would improve the function of
the computer itself and the improvement of the transactional aspect of the
abstract idea is not an improvement to a technology. Id.
In the Reply Brief, Appellants argue the claims include additional
elements that are significantly more than the alleged abstract idea. Reply
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Br. 2---6. Appellants argue, even assuming the claims recite generic
computing functions, the ordered combination of the claim elements results
in significantly more than the abstract idea because the claims are directed to
particular solutions that are significantly more than just administering
annuity product." Id. at 3. Appellants argue the claims are novel and non-
obvious in view of the withdrawn prior art rejection of claims 1-27, 29, and
30. Id. at 3--4. Appellants argue the Examiner errs because court cases do
not support the rejection. Id. at 4--5 (citing Bascom Global Internet Services,
Inc. v. AT&T Mobility LLC, 827 F.3d 1341 (Fed. Cir. 2016); Enfzsh, LLC v.
Microsoft Corporation, 822 F.3d 1327 (Fed. Cir. 2016).
As discussed below, we are not persuaded by Appellants' arguments
and agree with the Examiner's conclusion that the claims are patent
ineligible.
The Supreme Court in Alice Corp. Pty. Ltd. v. CLS Bank Int 'l, 134 S.
Ct. 2347 (2014) reiterated the framework set out in Mayo Collaborative
Services v. Prometheus Laboratories, Inc., 566 U.S. 66 (2012) for
"distinguishing patents that claim ... abstract ideas from those that claim
patent-eligible applications of those concepts." Alice, 134 S. Ct. at 2355.
The first step in the analysis is to determine if the claim is directed toward a
patent-ineligible concept and, if so, the second step is to determine whether
there are additional elements that transform the nature of the claim into a
patent eligible application. Id. (citing Mayo, 566 U.S. at 79, 78). The
second step searches for an inventive concept that is sufficient to ensure that
the patent amounts to significantly more than a patent on the patent-
ineligible concept. Id. (citing Mayo, 566 U.S. at 72-73).
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The question is not whether claims mention a computing environment
but what they are "directed to." The "directed to" inquiry applies a stage-
one filter to claims, considered in light of the specification, based on
whether "their character as a whole is directed to excluded subject matter."
Internet Patents Corp. v. Active Network, Inc., 790 F.3d 1343, 1346 (Fed.
Cir. 2015); see Genetic Techs. Ltd. v. Merial L.L.C., 818 F.3d 1369, 1376,
(Fed. Cir. 2016) (inquiring into "[t]he focus of the claimed advance over the
prior art"); Enfish, 822 F.3d at 1335. "The 'abstract idea' step of the inquiry
calls upon us to look at the 'focus of the claimed advance over the prior art'
to determine if the claim's 'character as a whole' is directed to excluded
subject matter." Affinity Labs of Texas, LLC v. DIRECTV, LLC, 838 F.3d
1253, 1257 (Fed. Cir. 2016) (quoting Elec. Power Grp., LLC v. Alstom S.A.,
830 F.3d 1350, 1353 (Fed. Cir. 2016)). "In determining the eligibility of
respondents' claimed process for patent protection under § 101, their claims
must be considered as a whole." Diamond v. Diehr, 450 U.S. 175, 188
(1981).
Applying the first step of Alice, we agree with the Examiner that the
claim is directed to the identified abstract idea. In addition, we agree the
Examiner has considered the abstract idea in the aggregate. Accordingly, we
conclude that the claim is directed to an abstract idea.
Having determined that the claim is directed to an abstract idea, step 2
of the analysis considers whether the claim contains an inventive concept
such as additional limitations that add significantly more to the claim so that
it does not fully cover the abstract idea itself. See Alice, 134 S. Ct. at 2357.
Here, we agree with the Examiner that no inventive concept is present.
Moreover, the hardware features are the type of generic element that has
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been determined to be insufficient by the Supreme Court to transform a
patent-ineligible claim into one that is patent-eligible. See Alice, 134 S. Ct.
at 23 5 8. The claim includes no limitations that prevent it from covering the
abstract idea itself. Therefore, we are unpersuaded by Appellants' argument
that the claims constitute an inventive concept that is significantly more than
a patent on the patent-ineligible concept.
We conclude each of Appellants' claims on appeal is distinguishable
from the type of claim considered by the court in Enfzsh, DDR, and Bascom.
We conclude none of Appellants' claims is "directed to an improvement in
the functioning of a computer," as was found by the court regarding the
subject claim in Enfish, 822 F.3d at 1338. To the extent that the recited
steps or acts may be performed faster or more efficiently using a computer,
our reviewing court provides applicable guidance:
While the claimed system and method certainly purport to accelerate
the process of analyzing audit log data, the speed increase comes from
the capabilities of a general-purpose computer, rather than the
patented method itself See Bancorp Servs., L.L. C. v. Sun Life
Assurance Co. of Can. (US.), 687 F.3d 1266, 1278 (Fed. Cir. 2012)
("[T]he fact that the required calculations could be performed more
efficiently via a computer does not materially alter the patent eligibility
of the claimed subject matter.").
FairWarning IP, LLC v. Iatric Sys., Inc., 839 F.3d 1089, 1095 (Fed. Cir.
2016) (emphasis added). See also Electric Power Grp., 830 F.3d at 1350, to
the extent that Appellants' claims similarly collect information, analyze it in
some fashion, and present or communicate the result.
Applying this reasoning to Appellants' claims on appeal, we similarly
find any purported faster or more efficient performance of the claimed steps
or acts merely comes from the capabilities of a general-purpose computer
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and/ or computer related elements, rather than from Appellants' claimed
steps or functions.
Appellants' reliance on Bascom is unpersuasive because claim 1
provides no improvement of the operation of a computer system
commensurate with improvement to computer technology, and there is no
ordered arrangement set forth which is non-conventional. The Specification
supports the view that the elements recited in the claims are conventional.
See, e.g., Spec. 15:3-16:15, and 17:20-19:17.
In DDR, the claims at issue involved, inter alia, "web page[] displays
[with] at least one active link associated with a commerce object associated
with a buying opportunity of a selected one of a plurality of merchants."
DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245, 1249 (Fed. Cir.
2014) (claim 18 of US 7,818,399). The Federal Circuit found the claims in
DDR to be patent eligible under step two of the Mayo/Alice test because "the
claimed solution is necessarily rooted in computer technology in order to
overcome a problem specifically arising in the realm of computer networks."
Id. at 1257. Specifically, the Federal Circuit found the claims addressed the
"challenge of retaining control over the attention of the customer in the
context of the Internet." Id. at 1258. The rejected claims are dissimilar to
DDR's web page with an active link, and the Specification does not support
the view that the computer related claim elements are unconventional, supra.
The claims before us are dissimilar to Bascom's technical
improvement over technical ways of filtering content on the Internet that
improves the computer itself. Bascom Global Internet Services, Inc. v.
AT&T Mobility LLC, 827 F.3d 1341.
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We additionally conclude Appellants' claims are analogous to the
method claim considered by the court in Electric Power Group, LLC v.
Alstom S.A., 830 F.3d 1350 at least to the extent that Appellants' claims are
similarly directed to "merely selecting information, by content or source, for
collection, analysis, and display [which] does nothing significant to
differentiate a process from ordinary mental processes." Id. at 1355. The
claims do not require any nonconventional computer or network
components, or even a "non-conventional and non-generic arrangement of
known, conventional pieces," but merely call for performance of the claimed
information collection, analysis, and display functions on generic computer
components and display devices. Id.
Moreover, regarding preemption:
[ w ]hile preemption may signal patent ineligible subject matter,
the absence of complete preemption does not demonstrate patent
eligibility. . . . Where a patent's claims are deemed only to
disclose patent ineligible subject matter under the Mayo
framework, as they are in this case, preemption concerns are fully
addressed and made moot.
Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir.
2015); see also OIP Techs. Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1362-
63 ("that the claims do not preempt all price optimization or may be limited
to price optimization in the e-commerce setting do not make them any less
abstract").
Although the Examiner withdrew the rejection of certain claims over
cited prior art (Final Act. 3), this is unpersuasive, as it is directed to a
separate statutory requirement under 35 U.S.C. § 103. Our reviewing court
guides that "[ e ]ligibility and novelty are separate inquiries." Two-Way
Media Ltd. v. Comcast Cable Commc 'ns, LLC, 874 F.3d 1329, 1340 (Fed
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Cir. 2017); see also Affinity Labs of Tex., LLC v. DIRECTV, LLC, 838 F.3d
1253, 1263 (Fed. Cir. 2016) (holding that "[e]ven assuming" that a particular
claimed feature was novel does not "avoid the problem of
abstractness"). "The '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). Moreover, "a claim for a new abstract idea is still an abstract
idea." Synopsys, Inc. v. Mentor Graphics Corp., 839 F.3d 1138, 1151 (Fed.
Cir. 2016).
In view of the above, we sustain the rejection of claim 1, and
independent claims 28-30, which are not argued with particularity. See
App. Br. 13. We sustain the rejection of dependent claims 2-27 as these
claims are not argued separately. See 37 C.F.R. § 4I.37(c)(l)(iv).
The § 103 Rejection
In the rejection of independent claim 28 over Feldstein, Wolfberg, and
Chamely, Appellants rely on the arguments presented for claim 1 and argue
Chamely fails to cure the deficiencies of the claim 1 rejection. App. Br. 19.
Regarding claim 1, Appellants argue Feldstein does not disclose the
limitation "determining ... at least one guideline required for the delivery of
the annuity outcome" and fails to disclose any analogous guidelines. App.
Br. 14--15 (citing Final Act. 6; Spec. 10:[18]-22, 11:1-8; Feldsteinp. 1, i-f 2,
p. 6, ,r 1). According to Appellants, Feldstein's variables determine the
initial cost of the put options and have no impact on whether the "annuity
outcome" is actually paid out in the future. Id. at 15.
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Claim 2 8, unlike claim 1, does not recite the limitation "determining
... at least one guideline required for the delivery of the annuity outcome."
Instead, claim 28 recites "automatically adjusting ... based on a failure to
attain minimum strategy guidelines identified by the auditing .... "
Therefore, Appellants' arguments regarding claim 1 are not directly
applicable to the claim 28 rejection.
We find the Examiner's rejection of claim 28 is supported by a
preponderance of evidence and, additionally, we note Appellants do not
present a rebuttal to the Examiner's rejection of claim 28 in their Reply
Brief. See Final Act. 16-19.
In view of the above, we sustain the rejection of claim 28.
DECISION
We affirm the Examiner's decision provisionally rejecting claims 1-
30 for obviousness-type double patenting.
We affirm the Examiner's decision rejecting claims 1-30 under 35
U.S.C. § 101.
We affirm the Examiner's decision rejecting claim 28 under 35 U.S.C.
§ 103(a).
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(l)(iv)(2015).
AFFIRMED
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