Ex Parte SAMUELS

Patent Trial and Appeal Board

Sep 24, 2018

14059122 (P.T.A.B. Sep. 24, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/059,122 10/21/2013
21839 7590 09/26/2018
BUCHANAN, INGERSOLL & ROONEY PC
POST OFFICE BOX 1404
ALEXANDRIA, VA 22313-1404
FIRST NAMED INVENTOR
Jonathan H. SAMUELS
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.
0079862-000012 2669
EXAMINER
CHNG, JOY POH AI
ART UNIT PAPER NUMBER
3686
NOTIFICATION DATE DELIVERY MODE
09/26/2018 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):
ADIPDOC 1@BIPC.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JONATHAN H. SAMUELS 1
Appeal2017-006883
Application 14/059, 122
Technology Center 3600
Before JAMES R. HUGHES, JENNIFER S. BISK, and
SCOTT B. HOWARD, Administrative Patent Judges.
HUGHES, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant seeks our review under 35 U.S.C. § 134(a) of the
Examiner's decision rejecting claims 1-15, which constitute all the claims
pending in this application. Final Act. 1-2. 2 We have jurisdiction under
35 U.S.C. § 6(b). We affirm.
1 The real party in interest is Insamco Holdings, LLC.
2 We refer to Appellant's Specification ("Spec.") filed Oct. 21, 2013
( claiming benefit of US 11/256,320, filed Oct. 21, 2005); Appeal Brief
("Appeal Br.") filed Aug. 3, 2016; and Reply Brief ("Reply Br.") filed Mar.
27, 2017. We also refer to the Examiner's Final Office Action (Final
Rejection) ("Final Act.") mailed Nov. 6, 2015, and Answer ("Ans.") mailed
Jan. 27, 2017.
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Appellant's Invention
The invention "relates generally to life insurance policies, and more
particularly, to a life insurance option that matures into a deferred life
insurance policy later in life" (Spec. 1 :2--4). More specifically, the deferred
death benefit determination process (method) receives and stores health data
( data representing health of an insured), information indicating if and when
payments have been made, and information indicating time of death of the
insured. The process determines payment amounts ( a first payment amount
to purchase an option to purchase a deferred first death benefit and a second
payment to exercise the option to purchase the deferred first death benefit)
by comparing the stored data to a set of predetermined criteria. The process
compares the time of death of the insured to the expiration date of a first
period and the start of a second period, and determines whether the deferred
first death benefit is will be provided. When the time of death of the insured
is before the expiration date of the first period, the deferred first death
benefit will not be provided. When the time of death of the insured is after
the start of the second period, the deferred first death benefit will be
provided. The process also determines an amount of the deferred first death
benefit by comparing the stored data to the set of predetermined criteria.
Spec. 2:25-5:9, 7:8-8:19, Abstract.
Representative Claim
Independent claim 1, reproduced below, further illustrates the
invention:
1. A method, performed on a computer, of providing a
deferred first death benefit that becomes effective later in life, the
computer comprising a processor and a memory, the method
compnsmg;
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the processor receiving data representing health of an
insured from the insured, the processor storing the data in the
memory;
wherein the processor determines an amount of at least one
first payment to purchase an option to purchase a deferred first
death benefit and at least one second payment to exercise the
option to purchase the deferred first death benefit, by the
processor comparing the stored data to a set of predetermined
criteria, the processor determining a degree of closeness between
the stored data and the predetermined set of criteria, and the
processor determining that the amounts of the at least one first
payment and the at least one second payment are low if the
degree of closeness is low, and the amounts of the at least one
first payment and the at least one second payment are high if the
degree of closeness is high;
the processor receiving information indicating that the
insured has made the at least one first payment during a first
period, wherein the first period has a predetermined expiration
date;
the processor receiving information indicating that the
insured has made the at least one second payment either before
or during a second period which follows the first period;
the processor receiving information indicating time of
death of the insured upon death of the insured; and
the processor comparing the time of death of the insured
to the expiration date of the first period and the start of the second
period, the processor determining that the deferred first death
benefit is not to be provided when the processor determines that
the time of death of the insured is before the expiration date of
the first period, or the processor determining that the deferred
first death benefit is to be provided when the processor
determines that the time of death of the insured is after the start
of the second period,
wherein the processor determines an amount of the
deferred first death benefit by comparing the stored data to the
set of predetermined criteria, the processor determining a degree
of closeness between the stored data and the predetermined set
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of criteria, the processor determining that the amounts of the
deferred first death benefit is high if the degree of closeness is
low, and the amount of the deferred first death benefit is low if
the degree of closeness is high.
Rejection on Appeal
The Examiner rejects claims 1-15 under 35 U.S.C. § 101 as being
directed to patent-ineligible subject matter. 3
ISSUE
Based upon our review of the record, Appellant's contentions, and the
Examiner's findings and conclusions, the issue before us follows:
Did the Examiner err in finding Appellant's claims were directed to
patent ineligible subject matter under 35 U.S.C. § 101?
ANALYSIS
Appellant argues independent claim 1 and dependent claims 2-15
together as a group with respect to the§ 101 rejection. See Appeal Br. 2-10.
We select independent claim 1 as representative of Appellant's arguments
with respect to claims 1-15. 37 C.F.R. § 4I.37(c)(l)(iv).
The Examiner rejects the claims ( claim 1) as being directed to patent-
ineligible subject matter in that "[ c ]laim 1 is directed to the abstract idea of
providing a deferred first death benefit that becomes effective later in life,
which is similar to the concept of comparing new and stored information and
3 The Examiner only discusses independent claim 1 in the § 101 rejection
(see Final Act. 2-3), but lists claims 1-15 as being rejected (see Final
Act. 1). Appellant acknowledges claims 1-15 are rejected under 35 U.S.C.
§ 101. See Appeal Br. 2. Accordingly, we correct the Examiner's harmless
error and modify the grounds of rejection for clarity and consistency to
include all pending claims 1-15.
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using rules to identify options. The concept of 'providing a deferred first
death benefit that becomes effective later in life' is described by the
receiving, determining and comparing steps in claim 1." Final Act. 2. The
Examiner also determines "[ c ]laim 1 does not include additional elements
that are sufficient to amount to significantly more than the judicial
exception" in that the recited "generic computer components" perform
"generic computer functions" such as receiving data or information,
comparing data, and determining amounts "that are well-understood, routine,
and conventional activities previously known to the industry." Final Act. 2.
Further, the Examiner explains the steps recited in claim 1 correspond to
"concepts identified as abstract ideas by the courts, such as 'an idea of itself'
in Alice." Ans. 3--4 (citing SmartGene, Inc. v. Advanced Biological Labs.,
SA, 555 F. App'x 950, 955 (Fed. Cir. 2014) and Elec. Power Grp., LLC v.
Alstom S.A., 830 F.3d 1350, 1353-54 (Fed. Cir. 2016)).
Appellant contends that "[ t ]he Examiner does not establish that the
appealed claims are primafacie directed to a patent-ineligible concept at
least because the Examiner does not set forth a sufficient evidentiary basis ..
. that the appealed claims are directed to a judicially-identified exception to
patentable subject matter." Appeal Br. 2; see Appeal Br. 3-5; Reply Br. 2-
3. Appellant also contends the claims "are not directed to an abstract idea"
Appeal Br. 5; see Appeal Br. 5-9; Reply Br. 2--4. Appellant further
contends "the appealed claims recite significantly more than 'providing a
deferred death benefit' and are thus directed towards patent-eligible subject
matter" (Appeal Br. 6), in that "the claims recite a deferred death benefit that
must be purchased in a first period and paid for again in the second period,
with amounts of payments as well as the amount of the benefit itself being
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based on a degree of closeness between the insured' s health at the time of
purchase and predetermined criteria" (Appeal Br. 7). See Appeal Br. 5-9;
Reply Br. 2--4.
Under 35 U.S.C. § 101, a patent may be obtained for "any new and
useful process, machine, manufacture, or composition of matter, or any new
and useful improvement thereof." The Supreme Court has "long held that
this provision 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) (quotingAss'nfor
Molecular Pathology v. Myriad Genetics, Inc., 569 U.S. 576, 589 (2013)).
The Supreme Court, in Alice, reiterated the two-step framework
previously set forth in Mayo Collaborative Services v. Prometheus
Laboratories, Inc., 566 U.S. 66, 77-80 (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. Assuming that a claim nominally falls within one of the statutory
categories of machine, manufacture, process, or composition of matter, the
first step in the analysis is to "determine whether the claims at issue are
directed to one of those patent-ineligible concepts" (id.), e.g., to an abstract
idea. For example, abstract ideas include, but are not limited to,
fundamental economic practices, methods of organizing human activities, an
idea of itself, and mathematical formulas or relationships. Id. at 2355-57. If
the claims are not directed to an abstract idea, the inquiry ends. Otherwise,
the inquiry proceeds to the second step where the elements of the claims are
considered "individually and 'as an ordered combination' to determine
whether the additional elements 'transform the nature of the claim' into a
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patent-eligible application." Alice, 134 S. Ct. at 2355 (quoting Mayo, 566
U.S. at 78-79). This second step is described as "a search for an 'inventive
concept'-i.e., an element or combination of elements that is ' ...
significantly more than ... the [ineligible concept] itself."' Id. at 2355
(alteration in original) (quoting Mayo, 566 U.S. at 72-73).
The Court acknowledged in Mayo, that "all inventions at some level
embody, use, reflect, rest upon, or apply laws of nature, natural phenomena,
or abstract ideas." Mayo, 566 U.S. at 71. We, therefore, look to whether the
claims focus on a specific means or method that improves the relevant
technology or are instead directed to a result or effect that itself is the
abstract idea and merely invoke generic processes and machinery. See
Enfzsh, LLC v. Microsoft Corp., 822 F.3d 1327, 1336 (Fed. Cir. 2016).
Alice Step 1 Analysis
Turning to the first step of the eligibility analysis, "the first step in the
Alice inquiry ... asks whether the focus of the claims is on the specific
asserted improvement in computer capabilities ... or, instead, on a process
that qualifies as an 'abstract idea' for which computers are invoked merely
as a tool." Enfzsh, 822 F.3d at 1335-36. "The abstract idea exception
prevents patenting a result where 'it matters not by what process or
machinery the result is accomplished."' McRO, Inc. v. Bandai Namco
Games Am. Inc., 837 F.3d 1299, 1312 (Fed. Cir. 2016) (quoting O'Reilly v.
Morse, 56 U.S. (15 How.) 62, 113 (1853)). "We therefore look to whether
the claims ... focus on a specific means or method that improves the
relevant technology or are instead directed to a result or effect that itself is
the abstract idea and merely invoke generic processes and machinery."
McRO, 837 F.3d at 1314.
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The Examiner determines independent claim 1 is directed to the
abstract idea of "providing a deferred first death benefit that becomes
effective later in life" (Final Act. 2) because the abstract concept is described
by steps of "receiving, determining and comparing" data, which are similar
to "comparing new and stored information and using rules to identify
options" (Final Act. 2), and "receiving data" and
"analyzing/comparing/determining data," which are similar to "an idea of
itself' (Ans. 4 ( citing Alice, Smartgene, and Electric Power Group)).
Conversely, Appellant attacks the Examiner's determinations as being an
inaccurate characterization, lacking sufficient explanation, and lacking
sufficient evidentiary support and, thus, the Examiner's reasoning and
analysis do not include sufficient substance to rise to the level of a prima
facie showing. See Appeal Br. 2-5; Reply Br. 2--4. We agree with the
Examiner that Appellant's claim 1 ( and the other pending claims) are
directed to patent-ineligible abstract ideas or concepts.
With respect to Appellant's prima facie case and evidentiary
contentions, Appellant misconstrues the relevant law and precedent. The
Federal Circuit has repeatedly noted that "the prima facie case is merely a
procedural device that enables an appropriate shift of the burden of
production." Hyatt v. Dudas, 492 F.3d 1365, 1369 (Fed. Cir. 2007) (citing
In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992)). Therefore, the USPTO
carries its procedural burden of establishing a prima facie case when its
rejection satisfies the requirements of 35 U.S.C. § 132 by notifying the
applicant of the reasons for rejection, "together with such information and
references as may be useful in judging of the propriety of continuing the
prosecution of [the] application." In re Jung, 637 F.3d 1356, 1362 (Fed. Cir.
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2011) (internal quotations omitted). Thus, a prima facie rejection need only
set forth the statutory basis of the rejection in a sufficiently articulate and
informative manner as to meet the notice requirement of§ 132. Id.
Here, in rejecting the claims (in particular claim 1) under 35 U.S.C.
§ 101, the Examiner analyzed the claims using the Mayo/Alice two-step
framework, consistent with the guidance set forth in the USPTO's "2014
Interim Guidance on Patent Subject Matter Eligibility," 79 Fed. Reg. 74618
(Dec. 16, 2014), in effect at the time the rejection was made, i.e., on Nov. 6,
2015. The Examiner notified Appellant of the reasons for the rejection
"together with such information and references as may be useful in judging
of the propriety of continuing the prosecution of [the] application."
35 U.S.C. § 132. See Final Act. 2-5. Contrary to Appellant's assertions, in
doing so, the Examiner set forth a prima facie case of unpatentability such
that the burden of production shifted to Appellant to demonstrate that the
claims are patent-eligible.
To the extent Appellant argues that evidentiary support is required
under the first part of the Alice eligibility test to establish a prima facie case
of patent-ineligibility. See Appeal Br. 2-5; Reply Br. 2-3. We are aware of
no controlling precedent that requires the Office to provide factual evidence
to support a finding that a claim is directed to an abstract idea.
With respect to Appellant's contentions that the Examiner
mischaracterized or over-simplified the claims-that the claims recite more
than the purported abstract concept and "merely involve the alleged abstract
idea" (Appeal Br. 7; see Appeal Br. 5-9}-claim 1 recites a method that:
receives and stores in memory data/information ( data representing health of
an insured); analyzes (compares) the stored data to a set of predetermined
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criteria; analyzes and manipulates data to determine a degree of closeness
between the stored data and the predetermined set of criteria, as well as an
amount of a first ( option purchase) and a second ( option exercise) payment
for a deferred death benefit based on the degree of closeness; receives
additional information (indicating the insured has made the first payment
during a first period, indicating the insured has made the second payment
either before or during a second period, and indicating time of death of the
insured); and analyzes (compares) the additional received information
( compares the time of death of the insured to the expiration date of the first
period and the start of the second period) to a to determine whether to pay
the deferred death benefit; analyzes and manipulates data to determine a
degree of closeness between the stored data and the predetermined set of
criteria, as well as an amount of the deferred death benefit based on the
degree of closeness. In sum, as the Examiner finds, claim 1 is directed to
"providing a deferred first death benefit" (Final Act. 2), and amounts to
receiving, analyzing, and manipulating information (receiving and
comparing data, as well as determining values from the comparisons), which
is "an idea of itself," i.e., an abstract idea. See Final Act. 2-3; Ans. 3--4.
Although we could characterize claim 1 with more detail, for
example, as being directed to "a deferred death benefit that must be
purchased in a first period and paid for again in the second period, with
amounts of payments as well as the amount of the benefit itself being based
on a degree of closeness between the insured's health at the time of purchase
and predetermined criteria" (Appeal Br. 7), a more succinct characterization
(as proffered by the Examiner) does not alter the eligibility analysis. See
Apple, Inc. v. Ameranth, Inc., 842 F.3d 1229, 1240--41 (Fed. Cir. 2016) ("An
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abstract idea can generally be described at different levels of abstraction ....
The Board's slight revision of its abstract idea analysis does not impact the
patentability analysis.").
Utilizing the above-identified characterization, we analyze whether
claim 1 is directed to an abstract idea. Instead of using a fixed definition of
an abstract idea and analyzing how claims fit ( or do not fit) within the
definition, "the decisional mechanism courts now apply is to examine earlier
cases in which a similar or parallel descriptive nature can be seen - what
prior cases were about, and which way they were decided." Amdocs (Isr.)
Ltd. v. Openet Telecom, Inc., 841 F.3d 1288, 1294 (Fed. Cir. 2016) (citing
Elec. Power Grp., 830 F.3d at 1353-54). As part of this inquiry, we must
"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).
Here, Appellant's claims generally, and independent claim 1 in
particular, relate to receiving, collecting and communicating information,
analyzing the information (comparing stored data to criteria), and
analyzing/manipulating information to determine closeness as well as
payment and benefit values based on the closeness) (see discussion supra).
That is, Appellant's claims relate to receiving, collecting, analyzing,
manipulating, and communicating data utilizing un-recited processes or
algorithms and to provide a deferred death. Therefore, the claims broadly
recite receiving, collecting, analyzing, manipulating, and communicating
information (data) relating to insurance benefits. See Abstract; Spec. 2:25-
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5:9. This is consistent with how Appellant describes the claimed invention.
See Appeal Br. 1-2 (citing Spec. 7:8-8:19).
Also, the present claims are analogous to a number of cases in which
courts have identified similar claims as encompassing abstract ideas. Our
reviewing court has held that abstract ideas include gathering, organizing,
analyzing, and manipulating information. Elec. Power Grp., 830 F.3d at
1354 (finding claims directed to a "combination of ... abstract-idea
processes ... of gathering and analyzing information" to be abstract).
Similarly, our reviewing court has held that abstract ideas include gathering,
organizing, analyzing, and storing information. See Two-Way Media Ltd. v.
Comcast Cable Commc 'ns, LLC., 874 F.3d 1329, 1337-38 (Fed. Cir. 2017)
(finding claims directed to the functional results of accumulating,
converting, and monitoring records manipulate data "but fail[] to do so in a
non-abstract way"); Content Extraction & Transmission LLC v. Wells Fargo
Bank, Nat'! Ass 'n, 776 F.3d 1343, 1345, 1347 (Fed. Cir. 2014) (finding the
"claims generally recite ... extracting data ... [ and] recognizing specific
information from the extracted data" and that the "claims are drawn to the
basic concept of data recognition").
Here, the collection, analysis, manipulation, and communication of
information (data}-in the form of receiving and storing information in
memory; analyzing the information ( comparing the stored information to
criteria); and analyzing/manipulating information to determine closeness,
payment, and benefit values based on the closeness-are analogous to the
abstract ideas of collecting, analyzing, and manipulating information
discussed in Electric Power Group, Two-Way Media, and Content
Extraction.
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Appellant's claims can also be distinguished from patent-eligible
claims such as those in Enfzsh that are directed to "a specific improvement to
the way computers operate." Enfzsh, 822 F.3d at 1336. Appellant's claims
are directed to the results of data analysis and manipulation ( comparing
information to determine closeness (by unidentified means) and determine
payment and benefit values based on closeness to provide a deferred death
benefit) rather than "a particular way of performing" or "inventive
technology for performing those functions" or, in other words, "achiev[ing]
these results in a non-abstract way." Two-Way Media, 874 F.3d at 1337-38
(internal quotations omitted). In summary, "the focus of the claims is not on
such an improvement in computers as tools, but on certain independently
abstract ideas that use computers as tools." Elec. Power Grp., 830 F.3d at
1354. Thus, we agree with the Examiner that the claims are directed to the
abstract ideas of collecting, analyzing, and manipulating information
utilizing a computer.
Alice Step 2 Analysis
Having found Appellant's claims are directed to an abstract idea under
Alice's step 1 analysis, we next address whether the claims add significantly
more to the alleged abstract idea. As directed by our reviewing court, we
search for an "'inventive concept' sufficient to 'transform the nature of the
claim into a patent-eligible application."' McRO, 837 F.3d at 1312 (quoting
Alice, 134 S. Ct. at 2355). The implementation of the abstract idea involved
must be "more than performance of 'well-understood, routine, [and]
conventional activities previously known to the industry."' Content
Extraction, 776 F.3d at 1347--48 (alteration in original) (quoting Alice, 134
S. Ct. at 2359). The "inventive concept" "must be significantly more than
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the abstract idea itself, and cannot simply be an instruction to implement or
apply the abstract idea on a computer." Bascom Global Internet Servs., Inc.
v. AT&T Mobility LLC, 827 F.3d 1341, 1349 (Fed. Cir. 2016) (citation
omitted).
Here, the Examiner determined that Appellant's claims do not add
significantly more. See Final Act. 2-3; Ans. 4--6. Appellant, on the other
hand, contends the Examiner did not provide sufficient evidence or analysis
to demonstrate that "the claims do not recite significantly more than an
abstract idea." Appeal Br. 5; see Appeal Br. 3-5; Reply Br. 3. Appellant
also contends the claims "recite significantly more than 'providing a
deferred death benefit"' (Appeal Br. 6), inter alia, because "the claims recite
a deferred death benefit that must be purchased in a first period and paid for
again in the second period, with amounts of payments as well as the amount
of the benefit itself being based on a degree of closeness between the
insured's health at the time of purchase and predetermined criteria" (Appeal
Br. 7). See Appeal Br. 5-9; Reply Br. 2--4.
Appellant fails to persuade us of error in the Examiner's rejection
with respect to the second Alice step. We agree with the Examiner that
Appellant's claim 1 (and the other pending claims) does not evince an
"inventive concept" that is significantly more than the abstract idea itself.
With respect to Appellant's prima facie case and evidentiary
contentions, the Examiner provides an explanation as to why claim 1 is
patent ineligible under the second Alice step. See Final Act. 2-3; Ans. 4--6.
The Examiner also provides supporting evidence. See Ans. 5---6 ( citing
Spec. 13:22-26 (Examiner cites as paragraph 53)). We agree with the
Examiner that the collection analyzing, and manipulation of information,
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utilizing undisclosed means ( algorithms, processes, and/ or devices) utilizing
a generic computer system and processor (see discussion supra; Spec. 3:28-
31 ("a computer or other processing device, embodies one or more programs
of instructions executable by the computer to perform method steps for
providing deferred life insurance that becomes effective later in life"),
13 :22-26) does not amount to significantly more than the abstract idea.
Here, Appellant simply reiterates the limitations of claim 1 and
concludes that the limitations "amount[] to significantly more than simply
providing a deferred death benefit." Appeal Br. 8; see Appeal Br. 6-9;
Reply Br. 3. Appellant does not explain how the limitations (individually
and in combination) are not routine or are unconventional. As we explain
supra, we agree with the Examiner that Appellant's claim limitations do not
amount to significantly more than the abstract idea of providing a deferred
death benefit, in that the limitations implement (facilitate) providing a
deferred death benefit ( determining payment and benefits amounts, and
determining whether to provide the benefits) by performance of well-
understood, routine, and conventional activities.
We agree with the Examiner that the additional limitations, separately,
or as an ordered combination, do not provide meaningful limitations (i.e., do
not add significantly more) to transform the abstract idea into a patent
eligible application. See Final Act. 2-3; Ans. 4---6. The claim merely recites
functions (processes) for collecting, analyzing, and manipulating data using
known conventional computers and/or equipment to effect conventional
insurance-related transactions----determine payments and benefits to provide
a deferred death benefit. Such conventional computer processes "do not
alone transform an otherwise abstract idea into patent-eligible subject
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matter." FairWarning IP, LLC v. Iatric Sys., Inc., 839 F.3d 1089, 1096
(Fed. Cir. 2016) (citing DDR Holdings, 773 F.3d at 1256).
Appellant also contends that the claims do not preempt the
Examiner's asserted abstract idea-"the appealed claims do not tie up or
preempt others from 'providing a first deferred death benefit"' (Appeal Br.
8). See Appeal Br. 8-9; Reply Br. 4 (citing Alice, 134 S. Ct. at 2355-56).
As pointed out by the Examiner, "preemption is not a stand-alone test for
eligibility." Ans. 6; see Ans. 6-7. Although preemption is the concern that
drives the exclusionary principle of judicial exceptions to patent-eligible
subject matter (see Alice, 134 S. Ct. at 2354), preemption is not a separate
test of patent-eligibility, but is inherently addressed within the Alice
framework. See Ariosa Diagnostics, Inc., v. Sequenom, Inc., 788 F.3d 1371,
13 79 (Fed. Cir. 2015) ("While preemption may signal patent ineligible
subject matter, the absence of complete preemption does not demonstrate
patent eligibility.").
For at least the reasons above, we are not persuaded of Examiner error
in the rejection of claim 1 under 35 U.S.C. § 101. Thus, we sustain the
Examiner's rejection under§ 101 of independent claim 1 and dependent
claims 2-15, which were not argued separately.
CONCLUSION
Appellant has not shown that the Examiner erred in rejecting claims
1-15 under 35 U.S.C. § 101.
DECISION
We affirm the Examiner's rejection of claims 1-15.
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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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