Ex Parte Wilson et alDownload PDFPatent Trial and Appeal BoardOct 8, 201411137242 (P.T.A.B. Oct. 8, 2014) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________________ Ex parte CHRISTY WILSON, KATHERINE GANT, MARK C. MASSEY, TOM MOREY, JOANN KING, DEBORAH GRANTHAM, WENDY HERNDON, and KAREN RIEDEL ____________________ Appeal 2012-0038871 Application 11/137,2422 Technology Center 3600 ____________________ Before MURRIEL E. CRAWFORD, NINA L. MEDLOCK, and KEVIN W. CHERRY, Administrative Patent Judges. MEDLOCK, 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 56–68. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM and enter a NEW GROUND OF REJECTION pursuant to our authority under 37 C.F.R. § 41.50(b). 1 Our decision references Appellants’ Appeal Brief (“App. Br.,” filed September 26, 2011) and Reply Brief (“Reply Br.,” filed December 19, 2011), and the Examiner’s Answer (“Ans.,” mailed October 19, 2011). 2 Appellants identify the real party in interest as “AFLAC, a company having a principal place of business at 1932 Wynnton Road, Columbus, Georgia 31999.” App. Br. 3. Appeal 2012-003887 Application 11/137,242 2 CLAIMED INVENTION Appellants’ claimed invention relates to a computer-implemented method for offering a vision protection policy, issuing the vision protection policy to a qualified insured, and processing a vision protection policy claim received from a policy participant (Abstract). Claim 56, reproduced below, is representative of the subject matter on appeal: 56. A computer-implemented method of providing a vision protection policy comprising: electronically receiving, as input via a computing device, applicant data pertaining to said vision protection policy, said applicant data associated with a prospective policy participant; electronically transmitting said applicant data to an insurance provider computing system; electronically applying one or more business rules to said applicant data, by said insurance provider computing system, to determine whether said prospective policy participant qualifies for said vision protection policy, wherein said vision protection policy provides (a) a routine eye care benefit and (b) one or more of (i) an eye condition benefit, (ii) an eye surgery benefit, or (iii) a permanent visual impairment benefit; and in response to determining that said prospective policy participant qualifies for said vision protection policy in accordance with said one or more business rules, electronically establishing said prospective policy participant as a policy participant. REJECTIONS Claims 56, 62, 63, and 67 are rejected under 35 U.S.C. § 103(a) as unpatentable over DeTore (US 4,975,840, iss. Dec. 4, 1990) and Joao (US 7,305,347 B1, iss. Dec. 4, 2007). Appeal 2012-003887 Application 11/137,242 3 Claims 57, 58, and 68 are rejected under 35 U.S.C. § 103(a) as unpatentable over DeTore, Joao, and Javitt (US 2001/0041990 A1, pub. Nov. 15, 2001). Claims 59, 60, and 64–66 are rejected under 35 U.S.C. § 103(a) as unpatentable over DeTore, Joao, and Boyer (US 6,208,793 B1, iss. Mar. 27, 2001). Claim 61 is rejected under 35 U.S.C. § 103(a) as unpatentable over DeTore, Joao, Boyer, and Official Notice. ANALYSIS Appellants argue that the Examiner erred in rejecting independent claim 56 under 35 U.S.C. § 103(a) because neither DeTore nor Joao discloses or suggests a “vision protection policy that provides (a) a routine eye care benefit and (b) one or more of (i) an eye condition benefit, (ii) an eye surgery benefit, or (iii) a permanent visual impairment benefit,” as recited in claim 56 (App. Br. 9–11). Appellants’ argument is not persuasive at least because the feature that Appellants argue is not disclosed in the cited references, i.e., that the vision protection policy provides certain benefits, is non-functional descriptive material that may not be relied on for patentability. The rationale underlying the “printed matter” cases has been extended to the analysis of the patentability of method claims. King Pharmaceuticals Inc. v. Eon Labs, Inc., 616 F.3d 1267, 1278–79 (Fed. Cir. 2010) (applying the “printed matter” reasoning to method claims containing an “informing” step that could be either printed or verbal instructions). In this case, the relevant question is whether the recitation that the vision protection policy Appeal 2012-003887 Application 11/137,242 4 provides (a) a routine eye care benefit and (b) one or more of (i) an eye condition benefit, (ii) an eye surgery benefit, or (iii) a permanent visual impairment benefit device, rather than some other types of benefits, has a “new and unobvious functional relationship” with the processor- implemented method. Id. at 1279. There is no objective evidence of record that there is a functional distinction in applying business rules to qualify a patient for a vision protection policy that provides (a) a routine eye care benefit and (b) one or more of (i) an eye condition benefit, (ii) an eye surgery benefit, or (iii) a permanent visual impairment benefit device as compared to qualifying a patient for a vision protection policy that provides other, different benefits. Regardless of the nature of the particular benefits provided by the vision protection policy, the underlying method (i.e., receiving applicant data pertaining to the vision protection policy; electronically transmitting the applicant data to an insurance provider computing system; electronically applying one or more business rules to the applicant data to determine whether the applicant qualifies for the vision protection policy; and in response to determining that the applicant qualifies for the vision protection policy, electronically establishing the applicant as a policy participant) is the same. The nature of the benefits provided by the vision protection policy does not depend on the method, and the method does not depend on the nature of the benefits provided by the vision protection policy. As such, it constitutes non-functional descriptive material that may not be relied on for patentability. See In re Ngai, 367 F.3d 1336, 1339 (Fed. Cir. 2004); cf. In re Gulack, 703 F.2d 1381, 1385 (Fed. Cir. 1983) (when descriptive material is Appeal 2012-003887 Application 11/137,242 5 not functionally related to the substrate, the descriptive material will not distinguish the invention from the prior art in terms of patentability). To conclude otherwise would result not only in Appellants’ identified benefits distinguishing over the prior art, but equally would distinguish every other unique suite of benefits. Indeed, to give effect to Appellants’ argument, we would need to ignore our reviewing court’s concerns with repeated patenting. See King Pharmaceuticals, 616 F.3d at 1279 (“The rationale behind this line of cases is preventing the indefinite patenting of known products by the simple inclusion of novel, yet functionally unrelated limitations”). We decline to do so. In view of the foregoing, we sustain the Examiner’s rejection of claim 56 under 35 U.S.C. § 103(a). We also sustain the Examiner’s rejections of dependent claims 57–68, which were not argued separately except based on their dependence on claim 56 (App. Br. 12). Because our rationale differs from that set forth by the Examiner, we denominate this a new ground of rejection under 35 U.S.C. § 103(a). See 37 C.F.R. § 41.50(b). DECISION The Examiner’s rejections of claims 56–68 under 35 U.S.C. § 103(a) are affirmed. Insofar as our rationale differs from that set forth by the Examiner, we denominate this a NEW GROUND OF REJECTION. 37 C.F.R. § 41.50(b) provides that “[a] new ground of rejection . . . shall not be considered final for judicial review.” 37 C.F.R. § 41.50(b) also provides that the Appellants, WITHIN TWO MONTHS FROM THE DATE OF THE DECISION, must exercise one of the following two options with Appeal 2012-003887 Application 11/137,242 6 respect to the new ground of rejection to avoid termination of the appeal as to the rejected claims: (1) Reopen prosecution. Submit an appropriate amendment of the claims so rejected or new evidence relating to the claims so rejected, or both, and have the matter reconsidered by the examiner, in which event the proceeding will be remanded to the Examiner . . . . (2) Request rehearing. Request that the proceeding be reheard under § 41.52 by the Board upon the same record . . . . No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv). AFFIRMED; 37 C.F.R. § 41.50(b) hh Copy with citationCopy as parenthetical citation