Keith E. Golembiewski et al.

Patent Trials and Appeals Board

Sep 18, 2019

12505155 - (D) (P.T.A.B. Sep. 18, 2019)

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.
12/505,155 07/17/2009 Keith E. Golembiewski 002328.0861 1526
5073 7590 09/18/2019
BAKER BOTTS L.L.P.
2001 ROSS AVENUE
SUITE 900
DALLAS, TX 75201-2980
EXAMINER
POE, KEVIN T
ART UNIT PAPER NUMBER
3692
NOTIFICATION DATE DELIVERY MODE
09/18/2019 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):
ptomail1@bakerbotts.com
ptomail2@bakerbotts.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte KEITH E. GOLEMBIEWSKI, PHILIP W. MICHALOWSKI,
and DAVID P. WILAND
____________

Appeal 2018-000630
Application 12/505,155
Technology Center 3600
____________

Before MAHSHID D. SAADAT, DAVID M. KOHUT, and
BETH Z. SHAW, Administrative Patent Judges.

SAADAT, Administrative Patent Judge.

DECISION ON APPEAL
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s
final rejection of claims 1 and 3–21, which constitute all the claims pending
in this application.2 We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.

1 According to Appellant, the real party in interest is The Prudential
Insurance Company of America. App. Br. 2.
2 Claims 2 and 22–30 have been canceled previously.
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STATEMENT OF CASE
Introduction
Appellant’s Specification describes systems and methods for financial
planning wherein one of challenges “in connection with savings for life
events, such as a college education or wedding for a child, is that the
purchase of term life insurance to provide for replacement of contributions
to a fund by a wage earner may involve unnecessary expense.” Spec. ¶ 22.
Exemplary claim 1 under appeal reads as follows:
1. A computer system for administering a plan for
providing term life insurance associated with an education
savings program, comprising:
a processor;
a memory storage device in communication with the
processor;
the processor adapted to:
receive and store data relating to the plan, including:
a date of establishment of the plan;
data identifying a savings account administered by
a financial institution;
a target balance of the savings account at a target
date at least 10 years after the establishment of the plan;
a death benefit under a term life insurance policy
issued by an issuer different from the financial institution
and applicable to a death of an insured occurring after a
deferral period of at least about three years and before the
target date, the death benefit amount being less than the
target balance at all times;
a plurality of dates associated with a plurality of
planned payments by the insured, each of the plurality of
planned payments to provide a planned contribution to the
savings account and a premium for a death benefit;
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a plurality of actual payments associated with the
plurality of planned payments, the plurality of actual
payments being made by the insured at the plurality of
dates; and
wherein during a period from expiration of the
deferral period to the target date, the death benefit
decreasing at each of the plurality of dates by an amount
equal to the planned contribution to the savings account;
responsive to receiving data indicative of a death of the
insured, determine whether the death occurred after the deferral
period and before the target date;
responsive to determining that the death occurred after the
deferral period and before the target date, determine that the
plurality of actual payments correspond to the plurality of
planned payments for each of the plurality of dates occurring
before a date of death;
responsive to determining that the death occurred after the
deferral period and before the target date and that the plurality of
actual payments correspond to the plurality of planned payments,
determine a death benefit amount based on the date of death, the
target balance, an actual balance of the savings account, and a
planned balance of the savings account, the planned balance of
the savings account based on the plurality of planned
contributions, the actual balance of the savings account based on
the plurality of actual payments; and
provide an output signal indicative of the death benefit
amount and instructions to make a payment to the savings
account equal to the death benefit amount.
Rejection on Appeal
Claims 1 and 3–21 stand rejected under 35 U.S.C. § 101 for being
directed to patent-ineligible subject matter. See Ans. 2–7.3

3 The Examiner has substituted the 35 U.S.C. § 101 rejection of claims 1 and
3–21 with a new § 101 rejection and has withdrawn the 35 U.S.C. § 103
rejection of claims 1 and 3–21. See Ans. 3–8.
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ANALYSIS
Appellant argues the pending claims as a group. App. Br. 8–10;
Reply Br. 2–4. As permitted by 37 C.F.R. § 41.37, we decide the appeal
based on claim 1. See 37 C.F.R. § 41.37(c)(1)(iv).
Arguments
The Examiner determines that the claims are directed to “a judicial
exception (i.e., a law of nature, a natural phenomenon, or an abstract idea)
without significantly more.” Ans. 3 (citing Alice Corp. v. CLS Bank Int’l,
573 U.S. 208, 216 (2014)). The Examiner adds that the claims are directed
to an abstract idea because they are directed to “administering a plan for
providing term life insurance, which is similar to the commercial practices
that have been found by the courts to be abstract ideas.” Ans. 3, 5 (citing
buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1351–55 (Fed. Cir. 2014)
(creating a contractual relationship) and Bancorp Servs., LLC v. Sun Life
Assurance Co. of Can. (U.S.), 687 F.3d 1266, 1277 (Fed. Cir. 2012)
(administering and tracking life-insurance-policy values)). With respect to
the additional elements and whether they amount to significantly more than
the judicial exception, the Examiner finds:
The claims do not include limitations that are “significantly
more” than the abstract idea because the claims do not include
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 computer products. The generically recited
computer elements such as “processor, memory storage device”
do not add a meaningful limitation to the abstract idea because
they would be routine in any computer implementation. The
steps do not add a meaningful limitation to the method as they
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would be routinely used by those of ordinary skill in the art in
order to apply the abstract idea.
Ans. 5–6 (emphasis omitted). The Examiner further finds that the recited
computer components or “the generic application of the computing devices
similarly does not make the invention patent-eligible.” Ans. 7. Based on
these determinations, the Examiner concludes that the claims are ineligible
under § 101.
Appellant argues that the Examiner has not identified an abstract idea
in rejecting the claims and merely characterizes the claims as being directed
to “administering a plan for providing term life insurance.” Reply Br. 2; see
also App. Br. 8–9. According to Appellant, “the claims here are directed to
a tangible system that manages a particular type of life insurance in a
particular way, not an abstract idea” and, as a result, “the claims are not
directed to a method of organizing human activity and are unlike arbitration,
processing loan information, and mitigating settlement risk.” Reply Br. 3;
see also App. Br. 9. Appellant also contends that “the claims recite ‘a
plurality of dates associated with a plurality of planned payments by the
insured, each of the plurality of planned payments to provide a planned
contribution to the savings account and a premium for a death benefit,[’]”
which is “an improvement over prior art data processing systems because
prior art data processing systems did not involve life insurance payments
that provide a planned contribution to the savings account and a premium for
a death benefit, thereby conserving computation resources that would be
required for separate payments.” Reply Br. 3; see also App. Br. 9–10.
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Principles of Law
Section 101 of the Patent Act provides that “any new and useful
process, machine, manufacture, or composition of matter, or any new and
useful improvement thereof” is patent eligible. 35 U.S.C. § 101. But the
Supreme Court has long recognized an implicit exception to this section:
“Laws of nature, natural phenomena, and abstract ideas are not patentable.”
Alice Corp. v. CLS Bank Int’l, 573 U.S. 208, 216 (2014) (quoting Ass’n for
Molecular Pathology v. Myriad Genetics, Inc., 569 U.S. 576, 589 (2013)).
To determine whether a claim falls within one of these excluded categories,
the Court has set out a two-part framework. The framework requires us first
to consider whether the claim is “directed to one of those patent-ineligible
concepts.” Alice, 573 U.S. at 217. If so, we then examine “the elements of
each claim both individually and ‘as an ordered combination’ to determine
whether the additional elements ‘transform the nature of the claim’ into a
patent-eligible application.” Alice, 573 U.S. at 217 (quoting Mayo
Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 78, 79 (2012)).
That is, we examine the claims for an “inventive concept,” “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, 573 U.S. at 217–18 (alteration in original) (quoting
Mayo, 566 U.S. at 72–73).
In January 2019, the USPTO published revised guidance on the
application of § 101. See 2019 Revised Patent Subject Matter Eligibility
Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019) (“Guidance”). Under that
guidance, we first look to whether the claim recites:
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(1) any judicial exceptions, including certain groupings of abstract
ideas (i.e., mathematical concepts, certain methods of organizing
human activities such as a fundamental economic practice, or mental
processes); and
(2) additional elements that integrate the judicial exception into a
practical application (see MANUAL OF PATENT EXAMINING PROCEDURE
(MPEP) §§ 2106.05(a)–(c), (e)–(h) (9th ed. Rev. 08.2017, Jan. 2018)).
Only if a claim (1) recites a judicial exception, and (2) does not integrate that
exception into a practical application, do we then look to whether the claim:
(3) adds a specific limitation beyond the judicial exception that is not
well-understood, routine, and conventional in the field (see MPEP
§ 2106.05(d)); or
(4) simply appends well-understood, routine, and conventional
activities previously known to the industry, specified at a high level of
generality, to the judicial exception.
See Guidance, 84 Fed. Reg. at 56.
Discussion
Independent claim 1 is directed to an abstract idea because the claim
recites a method of organizing human activity, one of the abstract idea
groupings listed in the Guidance. See, 84 Fed. Reg. at 52, 53 (listing
“[c]ertain methods of organizing human [activities such as] fundamental
economic principles or practices (including hedging, insurance, mitigating
risk) [and] commercial or legal interactions (including agreements in the
form of contracts; legal obligations; advertising, marketing or sales activities
or behaviors; business relations)” as some of the “enumerated groupings of
abstract ideas”).
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The claimed computer system provides “administering a plan for
providing term life insurance associated with an education savings program”
by receiving and storing “data identifying a savings account administered by
a financial institution,” “a target balance of the savings account,” “a death
benefit under a term life insurance policy,” a plurality of “dates associated
with a plurality of planned payments by the insured” and actual payments
“associated with a plurality of planned payments.” App. Br. A-1 (Claims
App’x.). Claim 1 recites a processor and a memory, which are adapted to
perform the recited functions discussed above.
To determine whether a claim recites an abstract idea, we (1) identify
the claim’s specific limitations that recite an abstract idea, and (2) determine
whether the identified limitations fall within certain subject matter
groupings, namely (a) mathematical concepts; (b) certain methods of
organizing human activity; or (c) mental processes.
Abstract Idea
Here, apart from the processor and memory, every limitation of claim
1 recites an abstract idea, namely organizing human activity, or fundamental
economic principles or practices (including hedging, insurance, mitigating
risk) by receiving information related to a date, a savings account, a target
balance, a death benefit, a plurality of payment dates and a plurality of actual
payments. Therefore, contrary to Appellant’s argument that the claims “are
directed to a tangible system that manages a particular type of life insurance
in a particular way,” every recited function is directed to managing an
insurance policy and its planned payments. See Reply Br. 3. Additionally,
the claimed receiving and storing data relating to the plan do not require a
machine, let alone a particular machine, to implement, and, therefore, fits
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squarely within the human activity organization category of the agency’s
guidelines. See Guidance, 84 Fed. Reg. at 52 (listing exemplary methods of
organizing human activity including (1) commercial interactions, and (2)
managing interactions between people including following rules or
instructions).
Although claim 1 recites an abstract idea based on these methods of
organizing human activity, we nevertheless must still determine whether the
abstract idea is integrated into a practical application, namely whether the
claim applies, relies on, or uses the abstract idea in a manner that imposes a
meaningful limit on the abstract idea, such that the claim is more than a
drafting effort designed to monopolize the abstract idea. See Guidance,
84 Fed. Reg. at 54–55. We, therefore, (1) identify whether there are any
additional recited elements beyond the abstract idea, and (2) evaluate those
elements individually and collectively to determine whether they integrate
the exception into a practical application. See id.
Here, the processor, memory, and output signal are the only recited
elements beyond the abstract idea, but these additional elements do not
integrate the abstract idea into a practical application when reading claim 1
as a whole. We are not persuaded that the claimed invention improves the
computer or its components’ functionality or efficiency, or otherwise
changes the way those devices function. In another words, contrary to
Appellant’s assertion (Reply Br. 3), the claimed invention considers
different dates associated with a planned payment to improve the
distribution of death benefits rather than improving the data processing
systems that are used for performing the recited functions. In other words,
the claims here merely use generic computing components to provide the
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related data used in determining the planned payments and the
corresponding contributions, but also does not improve a display mechanism
as was the case in McRO, Inc. v. Bandai Namco Games Am. Inc., 837 F.3d
1299 (Fed. Cir. 2016).
Furthermore, the remaining elements recited in claim 1 do not
integrate these abstract ideas into a practical application. In addition to the
steps discussed above, claim 1 recites a “target balance of the savings
account,” “a death benefit under a term life insurance,” “a plurality of
dates,” and “a plurality of actual payments.” The written description
discloses that the recited processor, system, and memory storage encompass
generic components, such as a general-purpose computer. See, e.g., Spec.
¶ 23, Fig. 1. Simply adding generic hardware and computer components to
perform abstract ideas does not integrate those ideas into a practical
application. See Guidance, 84 Fed. Reg. at 55 (identifying “merely
includ[ing] instructions to implement an abstract idea on a computer” as an
example of when an abstract idea has not been integrated into a practical
application).
Thus, the claims do not integrate the judicial exception into a practical
application. The claims do not (1) improve the functioning of a computer or
other technology, (2) are not applied with any particular machine (except for
a generic computer), (3) do not effect a transformation of a particular article
to a different state, and (4) are not applied in any meaningful way beyond
generally linking the use of the judicial exception to a particular
technological environment, such that the claim as a whole is more than a
drafting effort designed to monopolize the exception. See MPEP
§§ 2106.05(a)–(c), (e)–(h).
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Inventive Concept
Because we determine claim 1 is “directed to” an abstract idea, we
consider whether claim 1 recites an “inventive concept.” As discussed
above, the additional elements recited in the claim include a “computer
system,” a “processor,” and a “storage memory.” The claim recites these
elements at a high level of generality, and the written description indicates
that these elements are generic computer components. See, e.g., Spec. ¶ 23.
Using generic computer components to perform abstract ideas does not
provide the necessary inventive concept. See Alice, 573 U.S. at 223 (“[T]he
mere recitation of a generic computer cannot transform a patent-ineligible
abstract idea into a patent-eligible invention.”). Thus, these elements, taken
individually or together, do not amount to “significantly more” than the
abstract ideas themselves.
We again disagree with Appellant’s argument that various elements
recited in the claim provide the necessary “inventive concept” by improving
the data processing of the prior art. See Reply Br. 3–4. These elements
form part of the recited abstract ideas and thus are not “additional elements”
that “‘transform the nature of the claim’ into a patent-eligible application.”
Alice, 573 U.S. at 217 (quoting Mayo, 566 U.S. at 78); see also Guidance, 84
Fed. Reg. at 55 n.24 (“USPTO guidance uses the term ‘additional elements’
to refer to claim features, limitations, and/or steps that are recited in the
claim beyond the identified judicial exception.” (Emphasis added)). As
such, Appellant’s claims can be distinguished from patent-eligible claims
such as those in McRO and BASCOM Glob. Internet Servs., Inc. v. AT&T
Mobility LLC, 827 F.3d 1341 (Fed. Cir. 2016)) (See App. Br. 13–14), that
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are directed to “a specific means or method that improves the relevant
technology” (McRO, 837 F.3d at 1314).
Conclusion
For at least the above reasons, we agree with the Examiner that claim
1 is “directed to” an abstract idea and does not recite an “inventive concept.”
Accordingly, we sustain the Examiner’s rejection of claim 1 and the
remaining claims which fail to include additional elements that add
significantly more to the abstract idea, under 35 U.S.C. § 101.

DECISION
We affirm the Examiner’s rejection of claims 1 and 3–21 under
35 U.S.C. § 101.
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).

In summary:
Claims
Rejected
Basis Affirmed Reversed
1, 3–21 § 101 1, 3–21

AFFIRMED