Ex Parte Williams

Patent Trial and Appeal Board

May 27, 2016

11397850 (P.T.A.B. May. 27, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
111397,850 0410512006
70813 7590 06/01/2016
GOODWIN PROCTER LLP
901 NEW YORK A VENUE, N.W.
WASHINGTON, DC 20001
FIRST NAMED INVENTOR
John Spencer Williams
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.
22406.000015 6850
EXAMINER
OJIAKU, CHIKAODINAKA
ART UNIT PAPER NUMBER
3696
NOTIFICATION DATE DELIVERY MODE
06/01/2016 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):
AAlpha-Kpetewama@goodwinprocter.com
patentdc@goodwinprocter.com
fmckeon@goodwinprocter.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JOHN SPENCER WILLIAMS
Appeal2014-000877
Application 11/397,850 1
Technology Center 3600
Before MURRIEL E. CRAWFORD, HUBERT C. LORIN, and
ROBERT J. SILVERMAN, Administrative Patent Judges.
LORIN, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
John Spencer Williams (Appellant) seeks our review under 35 U.S.C.
§ 134 of the final rejection of claims 1, 2, 4--11, 13-16, and 18-25. We have
jurisdiction under 35 U.S.C. § 6(b) (2002).
SUMMARY OF DECISION
We REVERSE.
1 The Appellant identifies Massachusetts Mutual Life Insurance
Company as the real party in interest. App. Br. 1.
Appeal2014-000877
Application 11/397,850
THE INVENTION
Claim 1, reproduced below, is illustrative of the subject matter on
appeal.
1. A computer-implemented method for providing at least one
participant with at least an income, the method comprising the steps
of:
designating, by use of a computing device, at least one income-
generating fund to generate distributable income;
issuing, by use of said computing device, at least one self-
liquidating and transferable denominated security in the at least one
income-generating fund to at least one participant, said issuing
including denominating the at least one transferable denominated
security in units of periodic income and defining an accumulation
period and a benefit period associated with the at least one
transferrable denominated security; and
distributing at least one unit of the distributable income to the at
least one participant according to respective particulars of the at least
one transferable denominated security, wherein the at least one unit of
distributable income comprises a floor portion and, if the at least one
income-generating fund over-performs, an additional income portion.
THE REJECTIONS
The Examiner relies upon the following as evidence of
unpatentability:
Stiff
Williams
US 2002/0194098 Al
US 2004/0177022 Al
Arnold Kling, Economics for the Citizen,
http://arnoldkling.com/econ/GJ\1U/annuitycalc.html
(Annuities Calculations, p. 2 Problem 15) [Kling]
The following rejections are before us for review:
2
Dec. 19, 2002
Sep.9,2004
Appeal2014-000877
Application 11/397,850
1. Claims 1, 2, 4--11, 13-16, 18-21, and 23-25 are rejected under 35
U.S.C. § 103(a) as being unpatentable over Williams and Kling.
2. Claim 22 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Williams, Kling, and Stiff.
ISSUES
Did the Examiner err in rejecting claims 1, 2, 4--11, 13-16, 18-21,
and 23-25 under 35 U.S.C. § 103(a) as being unpatentable over Williams
and Kling and claim 22 under 35 U.S.C. § 103(a) as being unpatentable over
Williams, Kling, and Stiff?
ANALYSIS
Analysis begins with a key legal question - what is the
invention claimed? Courts are required to view the claimed
invention as a whole. 35 U.S.C. § 103. Claim interpretation, in
light of the specification, claim language, other claims, and
prosecution history, is a matter of law and will normally control
the remainder of the decisional process.
Panduit Corp. v. Dennison Mfg. Co., 810 F.2d 1561, 1567---68 (Fed. Cir.
1987).
A key question raised in the Appeal Brief, is whether the claim
limitation "at least one self-liquidating and transferable" security (as set
forth in all the independent claims; claims 1, 10, and 15) is disclosed in
Williams as the Examiner has found (see Final Rejection 3, citing problem 5
on page 2 of Kling); Kling being the only evidence relied upon to support
the finding of fact that the subject matter of said claim limitation was known
in the prior art.
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Appeal2014-000877
Application 11/397,850
The Examiner states: "[g]iven the broadest reasonable interpretation
the invention is directed to a securitized annuity with a specified maturity
date preceding payout of sequence of payments." Final Rejection 2. But
that claim construction analysis does not go far enough.
As preliminary matter, "claims are to be read in the light [of the
specification], not in a vacuum." In re Dean, 291F.2d947, 951 (CCPA
1961 ). The written description is "always highly relevant" in construing a
claim, and "it is the single best guide to the meaning of a disputed term."
Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996).
Since it would be unreasonable for the PTO to ignore any interpretive
guidance afforded by the applicant's written description, either
phrasing connotes the same notion: as an initial matter, the PTO
applies to the verbiage of the proposed claims the broadest reasonable
meaning of the words in their ordinary usage as they would be
understood by one of ordinary skill in the art, taking into account
whatever enlightenment by way of definitions or otherwise that may
be afforded by the \VTitten description contained in the applicant's
specification.
In re Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997).
As the Appellant correctly points out, in giving said claim limitation
the broadest reasonable construction, "[ s ]elf-liquidating should properly be
interpreted in light of the specification" (Reply Br. 4 ). In that regard, we
find at least a couple instances in the Specification where "self-liquidating"
is defined as periodic income payments made during a benefit period
consisting of both earnings and return of capital. See Specification 6, lines
4--5; and 21, lines 7-10. Albeit the ultimate result is the fund having a zero
ending balance at a specified benefit ending date, "self-liquidating" aspect,
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Appeal2014-000877
Application 11/397,850
according to the Specification, means it makes periodic income payments
during the benefit period consisting of both earnings and return of capital.
Turning now to Kling, the passage relied on (page 2, problem 5;
reproduced in the Reply Brief bridging pages 4--5) describes a number of
annuity payments made over a number of years until the annuity's balance is
zero. But that disclosure does not fully satisfy the claim limitation "at least
one self-liquidating and transferable" security as that phrase is reasonably
broadly construed. The claim phrase has a different scope than what the
Examiner has ascribed to it.
Given no other evidence to support the finding of fact that the subject
matter of said claim limitation was known in the prior art or an explanation
as to why one of ordinary skill in the art given Kling' s disclosure would be
led to the claimed subject matter comprising issuing at least one self-
liquidating and transferable security, a prima facie case of obviousness has
not been made out in the first instance by a preponderance of the evidence.
Accordingly, the rejections are not sustained.
CONCLUSION
The rejections of claims 1, 2, 4--11, 13-16, 18-21, and 23-25 under
35 U.S.C. § 103(a) as being unpatentable over Williams and Kling and claim
22 under 35 U.S.C. § 103(a) as being unpatentable over Williams, Kling,
and Stiff are reversed.
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Appeal2014-000877
Application 11/397,850
DECISION
The decision of the Examiner to reject claims 12,4--11, 13-16 and 18-
25 is reversed.
REVERSED
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