Ex Parte Basner et alDownload PDFPatent Trial and Appeal BoardJan 10, 201311879325 (P.T.A.B. Jan. 10, 2013) Copy Citation 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. 11/879,325 07/17/2007 Charles M. Basner CMB-105A 3622 7590 01/10/2013 Glynn Tech Inc. 6 Minneakoning Road Flemington, NJ 08822 EXAMINER LOFTUS, ANN E ART UNIT PAPER NUMBER 3692 MAIL DATE DELIVERY MODE 01/10/2013 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 CHARLES M. BASNER and AUSTIN LETT ____________________ Appeal 2011-006592 Application 11/879,325 Technology Center 3600 ____________________ Before BIBHU R. MOHANTY, MICHAEL W. KIM and NINA L. MEDLOCK, Administrative Patent Judges. MEDLOCK, Administrative Patent Judge. DECISION ON APPEAL Appeal 2011-006592 Application 11/879,325 2 STATEMENT OF THE CASE Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s final rejection of claims 31-52. We have jurisdiction under 35 U.S.C. § 6(b). STATEMENT OF THE DECISION We AFFIRM.1 BACKGROUND Appellants’ invention relates generally to an insurance system and methodology based on group insurance wherein, after a set time or event has occurred, survivors of the group, or their designees, are the sole beneficiaries of the net proceeds of the pool for their group (Spec., para. [0001]). Claim 31, reproduced below, is representative of the subject matter on appeal: 31. A life rewardance system, which comprises: (a) a computer to operate computer software; (b) computer software on said computer for managing a pooled insurance plan that includes the following steps: (i) insuring a plurality of individuals in a life rewardance plan wherein said plan has a pre- determined set of plan enrollment criteria, said plan has a policy term, and said plan will pay to designated beneficiaries of each of the survivors of the plurality of insured individuals enrolled in said plan and will not pay to designated beneficiaries of 1 Our decision will make reference to the Appellant’s Appeal Brief (“Br.,” filed June 7, 2010) and the Examiner’s Answer (“Ans.,” mailed August 31, 2010). Appeal 2011-006592 Application 11/879,325 3 said plurality of insured individuals who are deceased at the end of said policy term; (ii) collecting personal identification and age data from said plurality of insured individuals and maintaining confidential storage thereof such that no member of said plurality of insured individuals has access to identification of any of the other members of said plurality of insured individuals for at least the duration of the policy term; (iii) collecting policy premiums from said plurality of insured individuals; (iv) investing premiums as may be specified in the plan; and (v) making payment to designated beneficiaries of each of the survivors of said plurality of insured individuals enrolled in said plan and not making payment to designated beneficiaries of said plurality of insured individuals who are deceased at the end of said policy term. THE REJECTIONS The following rejections are before us for review: Claims 31-40 and 42-51 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Hagan (US 6,061,661, iss. May 9, 2000) in view of “Health Insurance Portability and Accountability Act of 1996,” Pub. L. No. 104-191 (1996) (referred to hereinafter as “HIPAA”). Claims 41 and 52 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Hagan in view of HIPAA and further in view of Frattalone (US 2002/0019793 A1, pub. Feb. 14, 2002). Appeal 2011-006592 Application 11/879,325 4 ANALYSIS Claims 31-40 and 42-51 Appellants argue claims 31-40 and 42-51 as a group (Br. 10-12). We select claim 31 as representative. The remaining claims stand or fall with claim 31. 37 C.F.R. § 41.37(c)(1)(vii). We are not persuaded of error on the part of the Examiner by Appellants’ argument that Hagan “lacks features of the present invention” (Br. 6). Appellants argue that Hagan is “different from the present invention” because “[t]he present invention uses the life of the insured at the time that the contract expires to determine whether any payment is made to the beneficiary” whereas “Hagan uses the life of the beneficiary at the time income is distributed to determine whether or not to make income payments to that beneficiary” (Br. 7). However, claim 31 is not rejected as anticipated by Hagan under 35 U.S.C. § 102. Instead, claim 31 is rejected as obvious under 35 U.S.C. § 103 over Hagan in view of HIPAA. The Examiner admits that the claimed invention has a distribution on a survivorship basis at the end of the term, which is not identical to Hagan (Ans. 10-11). However, the Examiner observes that “Hagan describes two types of distribution payments: an income payment on survivorship basis during the term, and a principal distribution at the end of the term” (Ans. 10). And the Examiner concludes that “[i]t would have been obvious to a person of ordinary skill in the art at the time of the invention to modify Hagan to combine these teachings to get payment of the distribution at the end of the term on a survivorship basis” (Ans. 11). Appellants’ argument that the claimed invention is different from Hagan, without more, is insufficient to rebut the Examiner’s finding of Appeal 2011-006592 Application 11/879,325 5 obviousness. The mere existence of differences between the prior art and the claim does not establish nonobviousness. Dann v. Johnston, 425 U.S. 219, 230 (1976). Indeed, the relevant question in considering obviousness is not whether the claimed invention is different from the prior art but rather “whether the difference between the prior art and the subject matter in question is a differen[ce] sufficient to render the claimed subject matter unobvious to one skilled in the applicable art.” Dann, 425 U.S. at 228 (citations omitted). Here, Appellants argue that Hagan is different from the claimed invention. But that argument is unpersuasive of error on the part of the Examiner because it does not specifically address the Examiner’s findings or the Examiner’s articulated reasoning in establishing a prima facie case of obviousness. We also are not persuaded of error on the part of the Examiner by Appellants’ argument that “the combination of Hagan and HIPAA uses non- analogous art” (Br. 8-9). The Examiner concedes that Hagan does not disclose maintaining confidential personal identification and age data, i.e., limitation (b)(ii) of claim 31, and relies on HIPAA for this feature. Appellants assert that “Hagan relates to financial information” while “HIPPAA relates to legislation for health care plans or providers” (Br. 9). Appellants thus maintain that “[i]t would not be logical, nor legally mandated, to use health care legislation for guidelines on how to construct financial systems for security;” therefore, “there is no motivation to combine the art of Hagan and HIPAA” (Br. 9). We agree with the Examiner that HIPAA is concerned with protecting against unauthorized disclosure of personal information, which is the same Appeal 2011-006592 Application 11/879,325 6 problem addressed by Appellants in “collecting personal identification and age data from said plurality of insured individuals and maintaining confidential storage thereof,” as recited in claim 31. We find that HIPPAA is analogous prior art because it would have logically commended itself to a person skilled in the art concerned, like Appellants, with maintaining the confidentiality of personal information. See In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004) (Even when prior art is not in the same field of endeavor as the claimed invention, it is still analogous prior art if it is “reasonably pertinent” to the particular problem with which the inventor is involved); In re Clay, 966 F.2d 656, 659 (Fed. Cir. 1992) (A reference is reasonably pertinent if, because of the matter with which it deals, it logically would have commended itself to an inventor’s attention in considering his problem). In view of the foregoing, we will sustain the Examiner’s rejection of claim 31 under 35 U.S.C. § 103(a). We also will sustain the Examiner’s rejection of claims 32-40 and 42-51, which stand or fall with claim 31. Claims 41 and 52 Claims 41 and 52 depend from independent claims 31 and 42, respectively, and recite that payments are made in accordance with a formula, Ri = (Pi/Pt)(Pt + Gt)-(C+E), where: (C+E) is commissions and expenses, (Pt + Gt) is the total income, or total premiums paid plus investment growth, and (Pi/Pt) is the ratio of premiums paid by an individual to the sum of all premiums paid. Appeal 2011-006592 Application 11/879,325 7 Appellants argue that claims 41 and 52 are allowable for the same reasons as set forth with respect to claims 31 and 42 and further because “there is no motivation to combine the art of Hagan and HIPAA with Frattalone (Br. 9-10). We agree with, and adopt the Examiner’s response to Appellants’ argument as set forth at pages 9-10 and 13 of the Answer. Accordingly, we will sustain the Examiner’s rejection of claims 41 and 52 under 35 U.S.C. § 103(a) DECISION The Examiner’s rejection of claims 31-52 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)(1)(iv). AFFIRMED Klh Copy with citationCopy as parenthetical citation