Michael Roscoe

Patent Trials and Appeals Board

Nov 19, 2020

2020003962 (P.T.A.B. Nov. 19, 2020)

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.
12/421,353 04/09/2009 Michael Roscoe 002328.0862 4304
5073 7590 11/19/2020
BAKER BOTTS L.L.P.
2001 Ross Avenue, Suite 900
Dallas, TX 75201
EXAMINER
CUNNINGHAM II, GREGORY S
ART UNIT PAPER NUMBER
3694
NOTIFICATION DATE DELIVERY MODE
11/19/2020 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
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MICHAEL ROSCOE

Appeal 2020–003962
Application 12/421,353
Technology Center 3600

Before HUBERT C. LORIN, NINA L. MEDLOCK, and
ROBERT J. SILVERMAN, Administrative Patent Judges.

LORIN, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant appeals from the
Examiner’s final decision to reject claims 1, 4–6, 8–13, 18, 21, 22, and 26–
28.1 We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R.
§ 1.42(a). Appellant identifies The Prudential Insurance Company of
America as the real party in interest. Appeal Br. 2.
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CLAIMED SUBJECT MATTER
The claimed subject matter relates to “computer systems for
calculating features of financial products.” (Spec. para. 1). Claim 1,
reproduced below with emphasis added, is illustrative of the claimed subject
matter:
1. A computer system for administering an insurance
account for providing income replacement and longevity
insurance for a couple having a primary wage earner and a
beneficiary, the primary wage earner earning more wages than
the beneficiary, the insurance account being associated with a
financial plan of the couple, the insurance account being
associated with a death benefit and an annuity, the computer
system comprising:
a processor;
a memory storage device in communication with the
processor;
the processor configured to:
determine whether the account is in an income
replacement phase concluding at a date corresponding to a
predetermined retirement age of the primary wage earner, an
intermediate phase commencing at the date corresponding to
the predetermined retirement age of the primary wage earner
and concluding at a date of a last payment from at least one or
more retirement accounts associated with the financial plan, or
a longevity phase commencing at the date of the last payment
from the at least one or more retirement accounts associated
with the financial plan;
determine whether the primary wage earner and the
beneficiary are living;
if the account is in any of the phases and both the
primary wage earner and the beneficiary are deceased,
communicate a signal having data indicating that the account is
closed;
if the account is in the income replacement phase and the
primary wage earner is deceased and the beneficiary is living,
access data indicative of a first schedule of periodic payments,
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including a plurality of dates and a plurality of amounts of
payments corresponding to each of the plurality of dates, to one
or more of the at least one or more retirement accounts for a
term continuing until the predetermined retirement age of the
primary wage earner, and communicate to a payment
determination system an output signal having data
indicative of at least one of the plurality of dates and a
corresponding amount of payment for the at least one of the
plurality of dates to the one or more of the at least one or more
retirement accounts for the term continuing until the
predetermined retirement age of the primary wage earner,
wherein:
the plurality of amounts of payments comprise
amounts configured to replace at least a portion of
contributions that, according to the financial plan, were
planned to be made to the at least one or more retirement
accounts using the wages of the primary wage earner;
and
payments from the death benefit to the one or more
retirement accounts are made in accordance with the first
schedule of periodic payments for the term continuing
until the predetermined retirement age of the primary
wage earner;
if the account is in the intermediate phase and either or
both of the primary wage earner and the beneficiary are living,
communicate to the payment determination system an output
signal having data indicating that the insurance account is to be
maintained without payments for either of the primary wage
earner or the beneficiary during the intermediate phase;
if the account is in the longevity phase, and either or both
of the primary wage earner and the beneficiary are living,
access data indicative of a second schedule of periodic
payments, including a plurality of dates and a plurality of
amounts of payments corresponding to each of the plurality of
dates, for at least one of the primary wage earner and the
beneficiary for a term continuing until the last to die of the
beneficiary and the primary wage earner, and communicate to
the payment determination system an output signal having data
indicative of at least one of the plurality of dates and an amount
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of payment corresponding to the at least one of the plurality of
dates for the at least one of the primary wage earner and the
beneficiary for the term continuing until the last to die of the
beneficiary and the primary wage earner, wherein:
the plurality of amounts of payments comprise
amounts configured to provide income to the at least one
of the primary wage earner and the beneficiary after the
last payment from the at least one or more retirement
accounts; and
payments from the annuity are made in accordance
with the second schedule of periodic payments to the at
least one of the primary wage earner and the beneficiary
for the term continuing until the last to die of the
beneficiary and the primary wage earner.
REFERENCES
The prior art relied upon by the Examiner is:
Name Reference Date
Mahaney US 2006/0106698 A1 May 18, 2006
Hebron US 2007/0185741 A1 Aug. 9, 2007
Robinson US 2007/0250427 A1 Oct. 25, 2007
Crowe US 2009/0222290 A1 Sep. 3, 2009
Petruzzi US 7,917,415 B1 Mar. 29, 2011
REJECTIONS
Claims 1, 4–6, 8–13, 18, 21, 22, and 26–28 are rejected under
35 U.S.C. § 101 as being directed to judicially-excepted subject matter.
Claims 1, 4, 5, 6, 8, 10–12, 13, 18, 21, and 26 are rejected under
35 U.S.C. § 103(a) as being unpatentable over Hebron, Mahaney, and
Petruzzi.
Claims 9 and 22 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Hebron, Mahaney, Petruzzi, and Crowe.
Claims 27 and 28 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Hebron, Mahaney, Petruzzi, and Robinson.
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OPINION
The rejection of claims 1, 4–6, 8–13, 18, 21, 22, and 26–28 under 35 U.S.C.
§ 101 as being directed to judicially-excepted subject matter.
The Appellant argues these claims as a group. See Appeal Br. 12–16.
We select claim 1 as the representative claim for this group, and the
remaining claims 4–6, 8–13, 18, 21, 22, and 26–28 stand or fall with
claim 1. See 37 C.F.R. § 41.37(c)(1)(iv).
35 U.S.C. § 101 provides that “[w]hoever 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.”
In that regard, claim 1 covers a “machine” and is thus statutory
subject matter for which a patent may be obtained.2 This is not in dispute.
However, the 35 U.S.C. § 101 provision “contains an important
implicit exception: 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)).
In that regard, notwithstanding claim 1 covers statutory subject
matter, the Examiner has raised a question of patent eligibility on the ground
that claim 1 is directed to an abstract idea.
Alice identifies a two-step framework for determining whether
claimed subject matter is directed to an abstract idea. Alice, 573 U.S. at 217.

2 This corresponds to Step 1 of the 2019 Revised 101 Guidance which
requires determining whether “the claim is to a statutory category.” 84 Fed.
Reg. at 53. See also id. at 53–54 (“consider[] whether the claimed subject
matter falls within the four statutory categories of patentable subject matter
identified by 35 U.S.C. 101.”).
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Alice step one — the “directed to” inquiry
According to Alice step one, “[w]e must first determine whether the
claims at issue are directed to a patent-ineligible concept.” Alice, 573 U.S.
at 218 (emphasis added).
The Abstract Idea3
The Examiner determined, inter alia, that “other than reciting a
processor, and a memory device in communication with the processor
nothing in the claim elements [is] directed towards anything other than
concepts performed in the human mind or fundamental economic
principles.” Final Act. 6 (emphasis added). Accordingly, the Examiner
determined that all the subject matter of claim 1 but for the recitations of
“processor” and “memory storage device” falls within, inter alia, the
enumerated “[c]ertain methods of organizing human activity” grouping of
abstract ideas set forth in the 2019 Revised 101 Guidance.4

3 This corresponds to Step 2A of the 2019 Revised 101 Guidance. Step 2A
determines “whether a claim is ‘directed to’ a judicial exception,” such as an
abstract idea. Step 2A is two prong inquiry.
4 This corresponds to Prong One [“Evaluate Whether the Claim Recites a
Judicial Exception”] (b) of Step 2A of the 2019 Revised 101 Guidance. “To
determine whether a claim recites an abstract idea in Prong One, examiners
are now to: . . . (b) determine whether the identified limitation(s) falls within
the subject matter groupings of abstract ideas enumerated in Section 1 of the
[2019 Revised 101 Guidance].” 84 Fed. Reg. at 54. This case implicates
subject matter grouping “(b):” “(b) Certain methods of organizing human
activity—fundamental economic principles or practices (including hedging,
insurance, mitigating risk); commercial or legal interactions (including
agreements in the form of contracts; legal obligations; advertising,
marketing or sales activities or behaviors; business relations); managing
personal behavior or relationships or interactions between people (including
social activities, teaching, and following rules or instructions).” Id. at 52.
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Although Appellant does not explicitly dispute the Examiner’s
characterization of what claim 1 is directed to, Appellant does argue that
there is a technological improvement and, in so arguing, implicitly
challenges Examiner’s determination that claim 1 is directed to an abstract
idea.
According to Appellant, claim 1 provides “unique features that make
Appellant’s system and method more technologically efficient.” Appeal
Br. 13. According to Appellant,
Appellant’s proposed insurance account is an improvement
over conventional solutions of providing income replacement
and longevity insurance as conventional solutions require the
generation and maintenance of two separate accounts-one for
income replacement and the other for longevity insurance. As
will be recognized by one of ordinary skill in the art, these
conventional solutions present conflicting issues and are
wasteful.
Id.
The claimed systems and methods resolve the
wastefulness issues described above by administering a single
insurance account having a death benefit and an annuity,
wherein the death benefit supplements retirement income in the
event that the primary wage earner passes before retiring and
the annuity supplements retirement income in the event that one
or both of the primary wage earner and beneficiary outlive the
funds allocated as retirement income.
Id. “These unique features that make Appellant’s system and method more
technologically efficient are recited in each independent claim.” Id.
We have considered Appellant’s position.
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When we consider the claim5 as a whole6 giving it the broadest
reasonable construction7 as one of ordinary skill in the art would have
interpreted it in light of the Specification8 at the time of filing, we find that it
is reasonable to characterize the claim as being directed to a business
process involving the use of a generic “processor” and a “memory storage
device in communication with the processor.”
We do not see, and Appellant has not persuasively shown, that
Examiner wrongly determined that claim 1 is directed to an abstract idea
falling within the enumerated “[c]ertain methods of organizing human
activity” grouping of abstract ideas set forth in the 2019 Revised 101
Guidance.

5 “[T]he important inquiry for a § 101 analysis is to look to the claim.”
Accenture Glob. Servs., GmbH v. Guidewire Software, Inc., 728 F.3d 1336,
1345 (Fed. Cir. 2013). “In Bancorp Servs., L.L.C. v. Sun Life Assurance Co.
of Can., 687 F.3d 1266, 1273 (Fed. Cir. 2012), the court observed that
‘claim construction is not an inviolable prerequisite to a validity
determination under § 101.’ However, the threshold of § 101 must be
crossed; an event often dependent on the scope and meaning of the claims.”
Internet Patents Corp. v. Active Network, Inc., 790 F.3d 1343, 1347–48
(Fed. Cir. 2015).
6 “In determining the eligibility of respondents’ claimed process for patent
protection under § 101, their claims must be considered as a whole.”
Diamond v. Diehr, 450 U.S. 175, 188 (1981).
7 See 2019 Revised 101 Guidance, 84 Fed. Reg. at 52, footnote 14 (“If a
claim, under its broadest reasonable interpretation.”) (emphasis added).
8 “First, it is always important to look at the actual language of the claims. .
. . Second, in considering the roles played by individual limitations, it is
important to read the claims ‘in light of the specification.’” Smart Sys.
Innovations, LLC v. Chicago Transit Auth., 873 F.3d 1364, 1378 (Fed. Cir.
2017) (J. Linn, dissenting in part and concurring in part) (citing Enfish, LLC
v. Microsoft Corp., 822 F.3d 1327, 1335 (Fed. Cir. 2016)), among others.
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Appellant argues that the claim presents a technical-improvement
solution.9 Not only have we been unable to find any disclosure of the
argued–over technological efficiency but we are unable to point to any claim
language suggestive of such an improvement in technology.
The steps as claimed involve, inter alia, a series of determining steps
that communicate certain financial plan related information if certain
conditions are met. The steps as claimed are not focused on improving
technology, let alone reducing waste. Cf. Trading Techs. Int’l, Inc. v. IBG
LLC, 921 F.3d 1378, 1384 (Fed. Cir. 2019) (“The claims are focused on
providing information to traders in a way that helps them process
information more quickly, ’556 patent at 2:26–39, not on improving
computers or technology.”). Rather than being directed to any specific
asserted improvement in computer capabilities, the claim supports the
opposite view — that the claimed subject matter seeks to “administer[ ] an
insurance account for providing income replacement and longevity
insurance for a couple having a primary wage earner and a beneficiary, the

9 We view Appellant’s argument as corresponding to Prong Two [“If the
Claim Recites a Judicial Exception, Evaluate Whether the Judicial Exception
Is Integrated Into a Practical Application”] of Step 2A of the 2019 Revised
101 Guidance. “A claim that integrates a judicial exception into a practical
application will apply, rely on, or use the judicial exception in a manner that
imposes a meaningful limit on the judicial exception, such that the claim is
more than a drafting effort designed to monopolize the judicial exception.”
84 Fed. Reg. at 54. One consideration, implicated here, that is “indicative
that an additional element (or combination of elements) may have integrated
the exception into a practical application” is if “[a]n additional element
reflects an improvement in the functioning of a computer, or an
improvement to other technology or technical field.” Id. at 55.

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primary wage earner earning more wages than the beneficiary, the insurance
account being associated with a financial plan of the couple, the insurance
account being associated with a death benefit and an annuity” (claim 1).
Looking to the Specification, rather than describing technical improvements,
it describes the invention in “business relations” (see 2019 Revised 101
Guidance, 84 Fed. Reg. at 52) terms, explaining that an objective of the
claimed invention is “for calculation features of financial products” Spec.,
para. 1.
As for the “processor” and a “memory storage device in
communication with the processor,” the Specification evidences the generic
nature of these devices that may be used to automate the process. See, e.g.,
para. 21 (“personal computers.”) “[T]he mere recitation of a generic
computer cannot transform a patent-ineligible abstract idea into a patent-
eligible invention.” Alice, 573 U.S. at 223. The claim provides no additional
structural details that would distinguish the “processor” and a “memory
storage device in communication with the processor” required to be
employed to practice the steps as claimed from their generic counterparts.10
Also, the Specification attributes no special meaning to any of the
recited operations, individually or in the combination, as claimed. In our
view, the “determin[ing],” “communicat[ing],” and other recited
information-processing steps are common computer processing functions
that one of ordinary skill in the art at the time of the invention would have

10 Cf. Move, Inc. v. Real Estate Alliance Ltd., 721 F. App’x 950, 954 (Fed.
Cir. 2018) (non-precedential) (“Claim 1 is aspirational in nature and devoid
of any implementation details or technical description that would permit us
to conclude that the claim as a whole is directed to something other than the
abstract idea identified by the district court.”).
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known generic processors were capable of performing and would have
associated with generic processors. Cf. OIP Techs., Inc. v. Amazon.com,
Inc., 788 F.3d 1359, 1363 (Fed. Cir. 2015)
Beyond the abstract idea of offer-based price optimization, the
claims merely recite “well-understood, routine conventional
activit[ies],” either by requiring conventional computer
activities or routine data-gathering steps. Alice, 134 S.Ct. at
2359 (quoting Mayo, 132 S.Ct. at 1294) . . . . For example,
claim 1 recites “sending a first set of electronic messages over a
network to devices,” the devices being “programmed to
communicate,” storing test results in a “machine-readable
medium,” and “using a computerized system . . . to
automatically determine” an estimated outcome and setting a
price. Just as in Alice, “all of these computer functions are
‘well-understood, routine, conventional activit[ies]’ previously
known to the industry.” Alice, 134 S.Ct. at 2359 (quoting Mayo,
132 S.Ct. at 1294) (alterations in original); see also buySAFE[,
Inc. v. Google, Inc.], 765 F.3d [1350,] 1355 [(Fed. Cir. 2014)]
(“That a computer receives and sends the information over a
network—with no further specification—is not even arguably
inventive.”).
By so broadly defining the inventive method, that is, by setting out
what it is aspiring to accomplish without any means for achieving it, other
than via a generic “processor” and a “memory storage device in
communication with the processor,” let alone any purported technological
improvement, the claim is in effect presenting the invention in purely result-
based functional language, strengthening our determination under Alice
step one that the claim is directed to an abstract idea. Cf. Two-Way Media
Ltd. v. Comcast Cable Commc’ns, LLC, 874 F.3d 1329, 1337 (Fed. Cir.
2017) (“Claim 1 recites a method for routing information using result-based
functional language. The claim requires the functional results of
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‘converting,’ ‘routing,’ ‘controlling,’ ‘monitoring,’ and ‘accumulating
records,’ but does not sufficiently describe how to achieve these results in a
non-abstract way.”). See also Uniloc USA v. LG Elecs. USA, 957 F.3d 1303,
1308 (Fed. Cir. 2020):
The claims we held ineligible in Two-Way Media similarly
failed to concretely capture any improvement in computer
functionality. In Two-Way Media, the claims recited a method
of transmitting packets of information over a communications
network comprising: converting information into streams of
digital packets; routing the streams to users; controlling the
routing; and monitoring the reception of packets by the users.
874 F.3d at 1334. Two-Way Media argued that the claims
solved data transmission problems, including load management
and bottlenecking, but the claimed method was not directed to
those improvements. Id. at 1336–37. We therefore held the
claims ineligible because they merely recited a series of abstract
steps (“converting,” “routing,” “controlling,” “monitoring,” and
“accumulating records”) using “result-based functional
language” without the means for achieving any purported
technological improvement. Id. at 1337.
Accordingly, we are unpersuaded that the claim is directed to a
technological improvement that renders the claim not, as Examiner argues,
directed to an abstract idea that falls within the enumerated “[c]ertain
methods of organizing human activity” grouping of abstract ideas set forth in
the 2019 Revised 101 Guidance. For the foregoing reasons, the record
supports the Examiner’s determination that claim 1 is directed to an abstract
idea.

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Alice step two — Does the Claim Provide an Inventive Concept?11
Step two is “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, 573 U.S. at 217–18 (quoting Mayo Collaborative
Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 73 (2012)).
In that regard, the Examiner determined, inter alia, that “[t]he
claim(s) does/do not include additional elements that are sufficient to
amount to significantly more than the judicial exception … .”
Final Act. 7. We agree.
Appellant does not appear to challenge the Examiner’s determination
under step two of the Alice framework.
We addressed the matter of whether the claim presented any purported
specific asserted technical improvements in our analysis above under
step one of the Alice framework. This is consistent with the case law. See
Ancora Techs., Inc. v. HTC Am., Inc., 908 F.3d 1343, 1347 (Fed. Cir. 2018)
(“We have several times held claims to pass muster under Alice step one
when sufficiently focused on such improvements.”).
We cited the Specification in our earlier discussion. It is intrinsic
evidence that the claimed “processor” and a “memory storage device in

11 This corresponds to Step 2B, of the 2019 Revised 101 Guidance, 84 Fed.
Reg. at 56 “if a claim has been determined to be directed to a judicial
exception under revised Step 2A, examiners should then evaluate the
additional elements individually and in combination under Step 2B to
determine whether they provide an inventive concept (i.e., whether the
additional elements amount to significantly more than the exception itself).”
(Emphasis added).
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communication with the processor” as claimed are conventional. In doing
so, we have followed “Changes in Examination Procedure Pertaining to
Subject Matter Eligibility, Recent Subject Matter Eligibility Decision
(Berkheimer v. HP Inc.[, 881 F.3d 1360 (Fed. Cir. 2018)],” USPTO
Memorandum, Robert W. Bahr, Deputy Commissioner For Patent
Examination Policy, April 19, 2018 (the “Berkheimer Memo”)).
No other persuasive arguments having been presented, we conclude
that no error has been committed in the determination under Alice step two
that claim 1 does not include an element or combination of elements
circumscribing the patent-ineligible concept it is directed to so as to
transform the concept into a patent-eligible invention.
We have considered all of the Appellant’s arguments (including those
made in the Reply Brief) and find them unpersuasive.
Accordingly, because we are not persuaded as to error in the
determinations that representative claim 1, and claims 4–6, 8–13, 18, 21, 22,
and 26–28 which stand or fall with claim 1, are directed to an abstract idea
and do not present an “inventive concept,” we sustain the Examiner’s
conclusion that they are directed to patent-ineligible subject matter for being
judicially-excepted from 35 U.S.C. § 101. Cf. LendingTree, LLC v. Zillow,
Inc., 656 F. App’x 991, 997 (Fed. Cir. 2016) (“We have considered all of
LendingTree’s remaining arguments and have found them unpersuasive.
Accordingly, because the asserted claims of the patents in suit are directed to
an abstract idea and do not present an ‘inventive concept,’ we hold that they
are directed to ineligible subject matter under 35 U.S.C. § 101.”); see, e.g.,
OIP Techs., 788 F.3d at 1364; FairWarning IP, LLC v. Iatric Sys., Inc.,
839 F.3d 1089, 1098 (Fed. Cir. 2016).
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The rejection of claims 1, 4, 5, 6, 8, 10–12, 13, 18, 21, and 26 under
35 U.S.C. § 103(a) as being unpatentable over Hebron, Mahaney, and
Petruzzi.
We have reviewed the positions taken by the Examiner and Appellant
and find the record favors Appellant.
As Appellant points out, claim 1 calls for
if the account is in the income replacement phase and the
primary wage earner is deceased and the beneficiary is living,
access data indicative of a first schedule of periodic payments
... wherein ... payments from the death benefit to the one or
more retirement accounts are made in accordance with the first
schedule of periodic payments for the term continuing until the
predetermined retirement age.
See App. Br. 18–19. (The other independent claims include similar
limitations.) As Appellant explains, “Claim 1 recites that a benefit
conversion (i.e., conversion of a death benefit into retirement funds) occurs
when it is determined that the primary wage earner is deceased … during the
income replacement phase … .” Id. at 19.
According to the Examiner, said claim limitation is disclosed in
Figure 1, paras. 10–12, 16–18, 29, 47–48, and 56 of Hebron. Final Act. 12.
Figure 1 is reproduced in Appellant’s Brief. See Appeal Br. 18.
“FIG. 1 is a flowchart illustrating a process of providing a life insurance
benefit convertible into a retirement benefit in accordance with one
embodiment of the present invention.” Hebron, para 24. According to Fig. 1,
life insurance is converted “into retirement benefit policy” (box 118) only if
a “[c]onversion event occurred” (box 112). The conversion event is based on
“information determining life insurance benefit, retirement benefit, benefits
beneficiaries, conversion events, and benefits triggering events” (box 102).
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For example, such a conversion event may occur after a certain
number of years, when the insured reaches a certain age, when
the insured retires, or other event. Alternatively, the departure
of the insured employee from the company, whether voluntary
or involuntary, may be designated as such a conversion event.
Such conversion events may, for example, include promotion
and transfer of the insured employee.
Id. at para. 32. However,
[t]he information obtained at 102 may also include
at least one event that triggers providing the life insurance
benefit. The life insurance benefit may be triggered, for
example, by the accidental death or dismemberment of the
insured.
Id. at para. 33.
Accordingly, when it comes to “the primary wage earner [being]
deceased” (claim 1), Hebron would lead one of ordinary skill to provide a
life insurance benefit. Per Hebron, death is not a conversion event that leads
to the converting of “life insurance into retirement benefit policy” (Fig. 1,
box 118) but rather provides life insurance outright. As Appellant points out,
this is opposite of what claim 1 calls for. “Claim 1 recites converting
benefits in the exact opposite situation-converting a benefit when a primary
wage earner dies and not converting the benefit if the primary wage earner
survives until retirement age.” Appeal Br. 18.
We have reviewed the other cited Hebron disclosures but, like Fig. 1,
they fail to show converting a benefit when a primary wage earner dies as
claimed.
The Examiner responds that Hebron discloses different types of
insurance that may be paid out upon a person passing away. Ans. 6. Among
those disclosed are deferred and lifetime annuities. Id., citing Hebron,
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paras. 10–12, 16–18, and 56. According to the Examiner, “[l]ongevity
insurance is insurance for a person who may outlive their retirement savings,
so that if the retirement savings [are] depleted then the longevity insurance
would start and provide payments to replace the income the retirement
savings were providing.” Id. The Examiner means to contend that, in
providing such longevity insurance, when a primary wage earner dies,
Hebron is in effect providing a retirement benefit policy. The difficulty with
that argument is that claim 1 does not simply provide for retirement benefits,
whether or not they come from an insurance policy. Claim 1 calls for
“payments from the death benefit to the one or more retirement accounts are
made.” In other words, claim 1 requires the death payments to be made to
the retirement account. For that reason, the types of insurance providing
retirement funds that Hebron discloses are insufficient as evidence showing
that Hebron in fact discloses “payments from the death benefit to the one or
more retirement accounts are made” (claim 1).
The rejection is not sustained on the ground that a prima facie case of
obviousness has not been made out in the first instance for the subject matter
of independent claims 1, 4, 18, and 26, and claims 5, 6, 8, 10–12, 13, and 21
depending therefrom.

The rejection of claims 9 and 22 under 35 U.S.C. § 103(a) as being
unpatentable over Hebron, Mahaney, Petruzzi, and Crowe.
This rejection of dependent claims 9 and 22 is not sustained for the
reasons given above in not sustaining the rejection of independent claims 4
and 18 from which they depend, respectively.

Appeal 2020–003962
Application 12/421,353

18
The rejection of claims 27 and 28 under 35 U.S.C. § 103(a) as being
unpatentable over Hebron, Mahaney, Petruzzi, and Robinson.
This rejection of dependent claims 27 and 28 is not sustained for the
reasons given above in not sustaining the rejection of independent claim 26
from which they depend.
CONCLUSION
The decision of the Examiner to reject claims 1, 4–6, 8–13, 18, 21, 22,
and 26–28 is affirmed.
More specifically:
The rejection of claims 1, 4–6, 8–13, 18, 21, 22, and 26–28 under
35 U.S.C. § 101 as being directed to judicially-excepted subject matter is
affirmed.
The rejection of claims 1, 4, 5, 6, 8, 10–12, 13, 18, 21, and 26 under
35 U.S.C. § 103(a) as being unpatentable over Hebron, Mahaney, and
Petruzzi is reversed.
The rejection of claims 9 and 22 under 35 U.S.C. § 103(a) as being
unpatentable over Hebron, Mahaney, Petruzzi, and Crowe is reversed.
The rejection of claims 27 and 28 under 35 U.S.C. § 103(a) as being
unpatentable over Hebron, Mahaney, Petruzzi, and Robinson is reversed.
Appeal 2020–003962
Application 12/421,353

19
DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1, 4–6,
8–13, 18,
21, 22,
26–28
101 Eligibility 1, 4–6,
8–13, 18,
21, 22,
26–28

1, 4, 5, 6,
8, 10–12,
13, 18,
21, 26
103(a) Hebron, Mahaney,
Petruzzi
1, 4, 5, 6,
8, 10–12,
13, 18,
21, 26
9, 22 103(a) Hebron, Mahaney,
Petruzzi, Crowe
9, 22
27, 28 103(a) Hebron, Mahaney,
Petruzzi, Robinson
27, 28
Overall
Outcome
1, 4–6,
8–13, 18,
21, 22,
and 26–
28

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).
AFFIRMED