Ex Parte Hueler

Patent Trial and Appeal Board

Jul 27, 2018

14313047 (P.T.A.B. Jul. 27, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/313,047 06/24/2014
76385 7590
Hollingsworth Davis, LLC
8000 West 78th Street
Suite 450
Minneapolis, MN 55439
07/31/2018
FIRST NAMED INVENTOR
Kelli Hueler
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.
HUEI.302.D2 1024
EXAMINER
HAMILTON, SARA CHANDLER
ART UNIT PAPER NUMBER
3692
NOTIFICATION DATE DELIVERY MODE
07/31/2018 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):
tdotter@hdpatlaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte KELLI HUBLER
Appeal2018-004509
Application 14/313,047 1
Technology Center 3600
Before ANTON W. PETTING, NINA L. MEDLOCK, and
BRUCE T. WIEDER, Administrative Patent Judges.
WIEDER, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134 from the
Examiner's rejection of claims 12, 15-19, 21, and 22. We have jurisdiction
under 35 U.S.C. § 6(b).
We AFFIRM.
1 According to Appellant, the real party in interest is Hueler Investment
Services, Inc. (Appeal Br. 1.)
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CLAIMED SUBJECT MATTER
Appellant's "invention relates generally to financial transaction
processing, and more particularly, to a system and method for facilitating an
individual's solicitation and receipt of quotes for annuities, and ultimate
purchase of annuities at institutional prices." (Spec. 1, 11. 14--16.)
Claim 12 is the sole independent claim on appeal. It recites:
12. A method for providing institutionally priced annuities for
individual annuity purchasers, comprising:
establishing a discretionary group to be a contract holder
for each participating annuity provider;
establishing a master group contract for each of the
participating annuity providers, wherein each of the master group
contracts is written by a respective one of the participating
annuity providers to the discretionary group to allow the
discretionary group to be the contract holder for annuities
purchased by individual annuity purchasers;
converting an annuity purchaser's qualified plan-
sponsored retirement accounts to a contribution type that is
available for annuity investment sponsored by the discretionary
group;
creating, by the annuity purchaser, an electronic annuity
quote invitation comprising entering personal and financial
information, including the annuity purchaser's gender, into a
web-based annuity placement program of a computing system;
receiving electronic annuity quote responses based on
institutional pricing provided by the master group contracts from
a plurality of the participating annuity providers, by a processor
of the computing system via the web-based annuity placement
program, in response to the electronic annuity quote invitation;
displaying the electronic annuity quote responses, by the
processor of the computing system via the web-based annuity
placement program, wherein displaying the electronic annuity
quote responses includes arranging the electronic annuity quote
responses for comparison based on one or more criteria;
identifying, by the annuity purchaser, a most favorable one
or more of the electronic annuity quote responses; and
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in response to the identification, issuing an annuity
contract to the annuity purchaser from the one or more annuity
providers corresponding to the identified one or more electronic
annuity quote responses under the terms of the corresponding
one or more master group contracts, and reflecting annuity terms
customized to the annuity purchaser.
REJECTION
Claims 12, 15-19, 21, and 22 are rejected under 35 U.S.C. § 101 as
directed to a judicial exception without significantly more.
ANALYSIS
"Whoever invents or discovers any new and useful process, machine,
manufacture, or composition of matter, or any new and useful improvement
thereof, may obtain a patent therefor, subject to the conditions and
requirements of this title." 35 U.S.C. § 101. Section 101, however,
"'contains an important implicit exception: Laws of nature, natural
phenomena, and abstract ideas are not patentable."' Alice Corp. Pty. Ltd. v.
CLS Bankint'l, 134 S. Ct. 2347, 2354 (2014) (quoting Assoc.for Molecular
Pathology v. Myriad Genetics, Inc., 569 U.S. 576, 589 (2013)).
Alice applies a two-step framework, earlier set out in Mayo
Collaborative Services v. Prometheus Laboratories, Inc., 566 U.S. 66
(2012), "for distinguishing patents that claim laws of nature, natural
phenomena, and abstract ideas from those that claim patent-eligible
applications of those concepts." Alice, 134 S. Ct. at 2355.
Under the two-step framework, it must first be determined if "the
claims at issue are directed to a patent-ineligible concept." Id. If the claims
are determined to be directed to a patent-ineligible concept, then the second
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step of the framework is applied to determine if "the elements of the
claim ... contain[] an 'inventive concept' sufficient to 'transform' the
claimed abstract idea into a patent-eligible application." Id. at 2357 ( citing
Mayo, 566 U.S. at 72-73, 79).
With regard to step one of the Alice framework, the Examiner
determines that claim 12 is directed to the abstract idea of "an annuity
contract to the annuity purchaser from the annuity provider corresponding to
the identified one or more electronic annuity quote responses under the
terms of the master group contract of that annuity provider, and reflecting
annuity terms customized to the annuity purchaser." (Final Action 4.)
Appellant disagrees and argues that "[ w ]hen looked at as a whole, the
claims are directed to limited rules in a process specifically designed to
achieve an improved technological result in an industry practice." (Appeal
Br. 5.)
Under step one of the Alice framework, we "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)).
The Specification provides evidence as to what the claimed invention
is directed. In this case, the Specification discloses that the "invention
relates generally to financial transaction processing, and more particularly,
to a system and method for facilitating an individual's solicitation and
receipt of quotes for annuities, and ultimate purchase of annuities at
institutional prices." (Spec. 1, 11. 14--16.) Claim 12 provides additional
evidence. Claim 12 recites "[a] method for providing ... annuities ...
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comprising: establishing a ... group," "establishing a master group
contract," "converting ... qualified plan-sponsored retirement accounts to a
contribution type," "creating ... an ... annuity quote invitation," "receiving
... annuity quote responses," "displaying the ... annuity quote responses,"
"identifying ... a most favorable one or more ... annuity quote responses,"
and "issuing an annuity contract."
Although we and the Examiner describe, at different levels of
abstraction, to what the claims are directed, it is recognized that "[a]n
abstract idea can generally be described at different levels of abstraction."
Apple, Inc. v. Ameranth, Inc., 842 F.3d 1229, 1240 (Fed. Cir. 2016). That
need not and, in this case does not, "impact the patentability analysis." See
id. at 1241.
In this case, as in Alice, we need not labor to delimit the precise
contours of the "abstract ideas" category. It is enough to recognize that
there is no meaningful distinction in the level of abstraction between the
concepts of managing a life insurance policy, Bancorp. Servs., L.L. C. v. Sun
Life Assur. Co. of Canada (US.), 687 F.3d 1266 (Fed. Cir. 2012), and
"financial transaction processing" including "solicitation and receipt of
quotes for annuities, and ultimate purchase of annuities" (Spec. 1, 11. 15-16).
Both are squarely within the realm of "abstract ideas" as the Court has used
that term. See Alice, 134 S. Ct. at 2357. Moreover, here the limitations do
not recite implementation details. Instead, they recite functional results to be
achieved. In other words, the claims do not recite "a particular way of
programming or designing the software ... , but instead merely claim the
resulting [method]." Apple, Inc., 842 F.3d at 1240.
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Nonetheless, Appellant seeks to analogize the present claims to the
claims in McRO, Inc. v. Bandai Namco Games Am. Inc., 837 F.3d 1299,
1313 (Fed. Cir. 2016). ( Appeal Br. 5.) Appellant argues that "the claims are
consistent with the concepts set forth in the patentable example provided in
McRO." (Id.) We disagree. In McRO, the court determined that
the claimed improvement here is allowing computers to produce
"accurate and realistic lip synchronization and facial expressions
in animated characters" that previously could only be produced
by human animators. As the district court correctly recognized,
this computer automation is realized by improving the prior art
through "the use of rules, rather than artists, to set the morph
weights and transitions between phonemes." The rules are
limiting in that they define morph weight sets as a function of the
timing of phoneme sub-sequences.
McRO, 837 F.3d at 1313 (citations omitted). Here, the asserted
improvement is to a business practice regarding providing annuities for
individual purchasers. Even considering the "computing system" recited in
claim 12, "these claims in substance [are] directed to nothing more than the
performance of an abstract business practice ... using a conventional
computer. Such claims are not patent-eligible." DDR Holdings, LLC v.
Hotels.com, L.P., 773 F.3d 1245, 1256 (Fed. Cir. 2014).
In view of the above, we agree with the Examiner that the claims are
directed to an abstract idea.
Step two of the Alice framework has been described "as a search for
an ' "inventive concept" '-i.e., 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, 134 S. Ct.
at 2355 (quoting Mayo, 566 U.S. at 72-73).
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Appellant argues that "[ w ]hen the claim elements are considered in
combination, they amount to significantly more than if they were improperly
considered individually. Claims 12, 15-19, 21, and 22 are directed to
providing an individual a customized annuity under group pricing terms that
would otherwise be unavailable to an individual." (Appeal Br. 5.) But this
argument is simply that the claims are directed to the performance of the
abstract idea. And even if the claimed techniques are "[g]roundbreaking,
innovative, or even brilliant," that is not enough for patent eligibility. Ass 'n
for Molecular Pathology, 569 U.S. at 591.
Appellant additionally argues that "the claimed processor is required
to collect and arrange the electronic annuity quote responses." (Appeal
Br. 6.) However, "[t]he claims at issue do not require any nonconventional
computer, network, or display 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 a generic processor and display. Elec. Power Grp., 830 F.3d
at 1355; see also Spec. p. 16, 1. 9--p.17, 1. 9 (disclosing use ofa generic
processor and computing system components for performing the claimed
method). In short, the claims simply use generic computer components to
perform routine computer functions, e.g., collecting data ("creating ... an
electronic annuity quote invitation" and "receiving electronic annuity quote
responses"), and displaying data ("displaying the electronic annuity quote
responses").
Taking the claim elements separately, the functions performed by the
processor and computing system components are purely conventional.
Collecting, arranging and displaying data are basic computer functions. And
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each step does no more than require a generic computer to perform routine
computer functions.
Considered as an ordered combination, the processor and computing
system components of Appellant's method add nothing that is not already
present when the steps are considered separately. Claim 12 does not, for
example, purport to improve the functioning of the processor or computing
system themselves. Nor does it effect an improvement in any other
technology or technical field. Instead, the claim amounts to nothing
significantly more than an instruction to collect, arrange, and display data
using generic computer system components. That is not enough to
transform an abstract idea into a patent-eligible invention. See Alice,
134 S. Ct. at 2360.
Appellant also argues that "the recited features do not preempt other
techniques for compliance with the [U.S. Department of Labor] regulations."
(Appeal Br. 6.) We do not find this preemption argument persuasive of
error.
Preemption is not a separate test.
To be clear, the proper focus is not preemption per se, for some
measure of preemption is intrinsic in the statutory right granted
with every patent to exclude competitors, for a limited time, from
practicing the claimed invention. See 35 U.S.C. § 154. Rather,
the animating concern is that claims should not be coextensive
with a natural law, natural phenomenon, or abstract idea; a
patent-eligible claim must include one or more substantive
limitations that, in the words of the Supreme Court, add
"significantly more" to the basic principle, with the result that
the claim covers significantly less. See Mayo[, 566 U.S. at 72-
73].
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CLS Bank Int 'l v. Alice Corp. Pty. Ltd., 717 F.3d 1269, 1281 (Fed. Cir.
2013) (Lourie, J., concurring), aff'd, 134 S. Ct. 2347 (2014). Moreover,
"[ w ]here 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).
In other words, "preemption may signal patent ineligible subject matter,
[but] the absence of complete preemption does not demonstrate patent
eligibility." Id.
In view of the above, we agree with the Examiner that claim 12 is
directed to a judicial exception without significantly more. Dependent
claims 15-19, 21, and 22 are not separately argued and fall with claim 12.
See 37 C.F.R. § 4I.37(c)(l)(iv).
DECISION
The Examiner's rejection of claims 12, 15-19, 21, and 22 under
35 U.S.C. § 101 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)(l )(iv).
AFFIRMED
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