The Prudential Insurance Company of AmericaDownload PDFPatent Trials and Appeals BoardDec 2, 20212021002629 (P.T.A.B. Dec. 2, 2021) 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. 13/623,629 09/20/2012 Michael J. Roscoe 002328.0860 7698 5073 7590 12/02/2021 BAKER BOTTS L.L.P. 2001 Ross Avenue, Suite 900 Dallas, TX 75201 EXAMINER POE, KEVIN T ART UNIT PAPER NUMBER 3692 NOTIFICATION DATE DELIVERY MODE 12/02/2021 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 ROBERTO A. SIRICA, SUSAN V. RYLANDER, and GLEN-ROBERTS PITRUZZELLO ________________ Appeal 2021-002629 Application 13/623,629 Technology Center 3600 ________________ Before ST. JOHN COURTENAY III, JASON J. CHUNG, and MATTHEW J. McNEILL, Administrative Patent Judges. CHUNG, Administrative Patent Judge. DECISION ON APPEAL Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals the Final Rejection of claims 1–6, 8–14, and 16–22.2 We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM.3 1 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42. According to Appellant, The Prudential Insurance Company of America is the real party in interest. Appeal Br. 2. 2 Claims 7 and 15 are cancelled. Appeal Br. 16, 19. 3 In this case, we mailed a prior decision on April 2, 2019. Appeal 2021-002629 Application 13/632,629 2 INVENTION The invention relates to computer systems for administering financial products such as life insurance policies. Spec. ¶ 2. Claim 1 is illustrative of the invention and is reproduced below: 1. A computer system for processing data related to term life insurance policies, comprising: one or more computer processors configured to communicate with at least one client device; and one or more memory storage devices having stored data indicative of criteria for eligibility for issue of a life insurance policy prior to underwriting, in communication with the one or more computer processors; a firewall configured to secure communications between the one or more computer processors and the at least one client device, the firewall providing virus protection and user authentication services for the computer system; wherein the one or more processors are configured to: receive data indicative of an application by a proposed insured for life insurance, the data being encrypted using at least one cryptographic scheme and including data indicative of responses furnished by the proposed insured relating to health conditions of the proposed insured known to the proposed insured, and requested policy data, including data indicative of proposed insured information, requested face amount, requested guaranteed level premium period, identification of beneficiary, and initial premium paid; subsequent to decrypting the received data, store, in the one or more memory storage devices, the received health condition data and requested policy data; access from the one or more memory storage devices the stored data indicative of criteria for eligibility for issue of a life insurance policy prior to underwriting; determine based on the received data relating to the health conditions of the proposed insured and the accessed data Appeal 2021-002629 Application 13/632,629 3 indicative of criteria for eligibility, whether the proposed insured is eligible for life insurance; responsive to a determination that the proposed insured is eligible, generate output data indicative of instructions to a policy owner reporting computer system to issue, prior to performing underwriting, a life insurance policy on the life of the proposed insured, the life insurance policy providing for a first premium rate for a first period after issue, and a second premium rate for a second period commencing on expiration of the first period, the second premium rate being determined based on data indicative of a result of the underwriting and corresponding to a premium payment for the second period no greater than 30% more than a premium payment for the first period, and output data indicative of instructions to commence underwriting of the proposed insured; determine, based on the result of underwriting, a third premium rate for a third period commencing at the end of the second period, the third premium rate and the commencement date of the third period being determined based on data indicative of a result of underwriting, the third premium rate is higher than the second premium rate; generate one or more policy documents corresponding to the issued life insurance policy; and in response to determining that the proposed insured has been authenticated by the firewall, furnish the one or more policy documents to the proposed insured. Appeal Br. 14–15 (Claims Appendix) (emphases added). REJECTION The Examiner rejects claims 1–6, 8–14, and 16–22 under 35 U.S.C. § 101 as being directed to patent ineligible subject matter. Final Act. 5–9. Appeal 2021-002629 Application 13/632,629 4 ANALYSIS A. Principles of Law Inventions for a “new and useful process, machine, manufacture, or composition of matter” generally constitute patent-eligible subject matter. 35 U.S.C. § 101. However, the U.S. Supreme Court has long interpreted 35 U.S.C. § 101 to include implicit exceptions: “[l]aws of nature, natural phenomena, and abstract ideas” are not patentable. Alice Corp. v. CLS Bank Int’l, 573 U.S. 208, 216 (2014). In determining whether a claim falls within an excluded category, we are guided by the Court’s two-step framework, described in Mayo Collaborative Services v. Prometheus Laboratories, Inc., 566 U.S. 66 (2012), and Alice. Alice, 573 U.S. at 217–18 (citing Mayo, 566 U.S. at 75– 77). In accordance with that framework, we first determine what concept the claim is “directed to.” See Alice, 573 U.S. at 219 (“On their face, the claims before us are drawn to the concept of intermediated settlement, i.e., the use of a third party to mitigate settlement risk.”); see also Bilski v. Kappos, 561 U.S. 593, 611 (2010) (“Claims 1 and 4 in petitioners’ application explain the basic concept of hedging, or protecting against risk.”). Concepts determined to be abstract ideas, and thus patent ineligible, include certain methods of organizing human activity, such as fundamental economic practices (Alice, 573 U.S. at 219–20; Bilski, 561 U.S. at 611); mathematical formulas (Parker v. Flook, 437 U.S. 584, 594–95 (1978)); and mental processes (Gottschalk v. Benson, 409 U.S. 63, 67 (1972)). Concepts determined to be patent eligible include physical and chemical processes, such as “molding rubber products” (Diamond v. Diehr, 450 U.S. 175, 191 (1981)); “tanning, dyeing, making water-proof cloth, vulcanizing India Appeal 2021-002629 Application 13/632,629 5 rubber, smelting ores” (id. at 182 n.7 (quoting Corning v. Burden, 56 U.S. 252, 267–68 (1853))); and manufacturing flour (Benson, 409 U.S. at 69 (citing Cochrane v. Deener, 94 U.S. 780, 785 (1876))). In Diehr, the claim at issue recited a mathematical formula, but the Court held that “a claim drawn to subject matter otherwise statutory does not become nonstatutory simply because it uses a mathematical formula.” Diehr, 450 U.S. at 187; see also id. at 191 (“We view respondents’ claims as nothing more than a process for molding rubber products and not as an attempt to patent a mathematical formula.”). Having said that, the Court also indicated that a claim “seeking patent protection for that formula in the abstract . . . is not accorded the protection of our patent laws, and this principle cannot be circumvented by attempting to limit the use of the formula to a particular technological environment.” Id. at 191 (citing Benson and Flook); see also, e.g., id. at 187 (“It is now commonplace that an application of a law of nature or mathematical formula to a known structure or process may well be deserving of patent protection.”). If the claim is “directed to” an abstract idea, we turn to the second step of the Alice and Mayo framework, where “we must examine the elements of the claim to determine whether it contains an ‘inventive concept’ sufficient to ‘transform’ the claimed abstract idea into a patent- eligible application.” Alice, 573 U.S. at 221 (internal quotation marks omitted). “A claim that recites an abstract idea must include ‘additional features’ to ensure ‘that the [claim] is more than a drafting effort designed to monopolize the [abstract idea].’” Id. (alterations in original) (quoting Mayo, 566 U.S. at 77). “[M]erely requir[ing] generic computer implementation[] fail[s] to transform that abstract idea into a patent-eligible invention.” Id. Appeal 2021-002629 Application 13/632,629 6 B. USPTO Section 101 Guidance In January 2019, the U.S. Patent and Trademark Office (“USPTO”) published revised guidance on the application of 35 U.S.C. § 101. See 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019) (“2019 Guidance”), updated by USPTO, October 2019 Update: Subject Matter Eligibility (available at https://www.uspto.gov/sites/default/files/documents/peg_oct_2019_update.p df) (“Update”); see also October 2019 Patent Eligibility Guidance Update, 84 Fed. Reg. 55942 (Oct. 18, 2019) (notifying the public of the availability of the Update). “All USPTO personnel are, as a matter of internal agency management, expected to follow the guidance.” 2019 Guidance, 84 Fed. Reg. at 51; see also October 2019 Guidance Update at 1. The Manual of Patent Examining Procedure (“MPEP”) now incorporates this revised guidance and subsequent updates at Section 2106 (9th ed. Rev. 10.2019, rev. June 2020).4 Under MPEP § 2106, we first look to whether the claim recites the following: (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.5 4 All references to the MPEP are to the Ninth Edition, Revision 10.2019 (Last Revised June 2020), unless otherwise indicated. 5 “Examiners evaluate integration into a practical application by (a) identifying whether there are any additional elements recited in the claim Appeal 2021-002629 Application 13/632,629 7 MPEP §§ 2106.04(a), (d). 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 activity” in the field; or (4) simply appends well-understood, routine, conventional activities previously known to the industry, specified at a high level of generality, to the judicial exception. MPEP § 2106.05(d). C. The Examiner’s Rejection and Appellant’s Arguments The Examiner concludes the present claims recite certain methods of organizing human activity. Final Act. 8. The Examiner concludes the present claims are not integrated into a practical application and there are no limitations recited in the present claims that add significantly more to the abstract idea. Ans. 7–10; Final Act. 3–4, 8–9. The Examiner finds that the present claims do not amount to significantly more than an abstract idea itself because the abstract idea is implemented using additional elements that are well-understood, routine, and conventional. Final Act. 4–5 (citing MPEP § 2106.05(d)). Appellant argues the present claims do not preempt any abstract idea. Appeal Br. 10. Appellant argues that the present claims do not recite certain methods of organizing human activity because the present claims recite improvements to security, improvement by automation, and improvements beyond the judicial exception, and (b) evaluating those additional elements individually and in combination to determine whether the claim as a whole integrates the exception into a practical application.” MPEP § 2106.04(d)II. Appeal 2021-002629 Application 13/632,629 8 by conserving computational resources. Appeal Br. 10–12 (citing Spec. ¶¶ 72, 119, 140). We disagree with Appellant. D. Step 2A, Prong 1 Patent eligibility under 35 U.S.C. § 101 is a question that we resolve pursuant to the MPEP §§ 2106.04(a), (d). The emphasized portions of claim 1, reproduced above (see supra at 2–3), recite fundamental economic principles or practices (including insurance). See MPEP §§ 2106.04(a), (d). Fundamental economic principles or practices (including insurance) fall into the category of certain methods of organizing human activity. Id. Certain methods of organizing human activity are a type of abstract idea. Id. We 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 MPEP §§ 2106.04(a), (d). We, therefore, (1) identify whether there are any additional recited elements beyond the abstract idea, and (2) evaluate those elements both individually and collectively to determine whether they integrate the exception into a practical application. See id. Accordingly, we proceed to Prong 2. E. Step 2A, Prong 2 Here, the additional elements in the present claims used to implement the abstract idea are the “computer processors,” “client device,”6 “user device,”7 “memory storage devices,” “firewall,” and “policy owner reporting 6 This feature is recited in claims 1 and 17, but not recited in claim 9. 7 This feature is recited in claim 9, but not recited in claims 1 and 17. Appeal 2021-002629 Application 13/632,629 9 computer system,”8 and “policy generation system.”9 See MPEP §§ 2106.04(a), (d). The additional elements of the present claims do not integrate the abstract idea into a practical application because they do not impose any meaningful limits on practicing the abstract idea for the following reasons. Appellant does not identify persuasively how the Specification sets forth an improvement in technology. Appeal Br. 10–12 (citing Spec. ¶¶ 72, 119, 140). The MPEP, which incorporates the Update, addresses how we consider evidence of improvement that is presented to us. The Update states: [T]he evaluation of Prong Two requires the use of the considerations (e.g. improving technology, effecting a particular treatment or prophylaxis, implementing with a particular machine, etc.) identified by the Supreme Court and the Federal Circuit, to ensure that the claim as a whole integrates [the] judicial exception into a practical application [that] 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. Update 11 (emphases added). The Update further states: During examination, the examiner should analyze the “improvements” consideration by evaluating the specification and the claims to ensure that a technical explanation of the asserted improvement is present in the specification, and that the claim reflects the asserted improvement. Generally, examiners are not expected to make a qualitative judgment on the merits of the asserted improvement. If the examiner concludes the disclosed invention does not improve technology, the burden 8 This feature is recited in claims 1 and 17, but not recited in claim 9. 9 This feature is recited in claim 9, but not recited in claims 1 and 17. Appeal 2021-002629 Application 13/632,629 10 shifts to applicant to provide persuasive arguments supported by any necessary evidence to demonstrate that one of ordinary skill in the art would understand that the disclosed invention improves technology. Any such evidence submitted under 37 C.F.R. § 1.132 must establish what the specification would convey to one of ordinary skill in the art and cannot be used to supplement the specification. For example, in response to a rejection under 35 U.S.C. § 101, an applicant could submit a declaration under § 1.132 providing testimony on how one of ordinary skill in the art would interpret the disclosed invention as improving technology and the underlying factual basis for that conclusion. Update 13 (emphasis added). We, therefore, focus on any evidence Appellant cites in its briefs, as discussed in the Update. Appeal Br. 10–12 (citing Spec. ¶¶ 72, 119, 140). At best, the present claims and paragraphs 72, 119, and 140 of the Specification recite an improvement to certain methods of organizing human activity (i.e., an abstract idea as discussed supra in § D). See, e.g., Synopsys, Inc. v. Mentor Graphics Corp., 839 F.3d 1138, 1151 (Fed. Cir. 2016) (“[A] claim for a new abstract idea is still an abstract idea.”). “[U]nder the Mayo/Alice framework, a claim directed to a newly discovered law of nature (or natural phenomenon or abstract idea) cannot rely on the novelty of that discovery for the inventive concept necessary for patent eligibility . . . .” Genetic Techs. Ltd. v. Merial L.L.C., 818 F.3d 1369, 1376 (Fed. Cir. 2016) (citations omitted). We, therefore, disagree with Appellant’s argument that the present claims do not recite certain methods of organizing human activity because the present claims recite improvements to security, improvement by automation, and improvements by conserving computational resources. Appeal Br. 10–12 (citing Spec. ¶¶ 72, 119, 140). Appeal 2021-002629 Application 13/632,629 11 Furthermore, merely automating the abstract idea discussed supra or any increase in processing speed in the claimed method (as compared to without using computers) comes from the capabilities of the generic computer components, and not the recited process itself. See FairWarning IP, LLC v. Iatric Sys., Inc., 839 F.3d 1089, 1095 (Fed. Cir. 2016) (citing Bancorp Servs., LLC v. Sun Life Assurance Co., 687 F.3d 1266, 1278 (Fed. Cir. 2012) (“[T]he fact that the required calculations could be performed more efficiently via a computer does not materially alter the patent eligibility of the claimed subject matter.”)); see also Intellectual Ventures I LLC v. Erie Indemnity Co., 711 F. App’x 1012, 1017 (Fed. Cir. 2017) (unpublished) (“Though the claims purport to accelerate the process of finding errant files and to reduce error, we have held that speed and accuracy increases stemming from the ordinary capabilities of a general-purpose computer ‘do[ ] not materially alter the patent eligibility of the claimed subject matter.’”). We determine the limitation “receive” is the type of basic data transmission functionality that has been determined to be insignificant post- solution activity. See buySafe, Inc. v. Google, Inc., 765 F.3d 1350 (Fed. Cir. 2014) (stating “That a computer receives and sends information over a network — with no further specification — is not even arguably inventive”). Moreover, the remaining additional elements in the present claims, namely “computer processors,” “client device,” “user device,” “memory storage devices,” “firewall,” and “policy owner reporting computer system,” and “policy generation system” do not, either individually or in combination, integrate the abstract idea into a practical application. In particular, Appellant’s Specification discloses that these elements encompass generic computer components. See Spec. ¶¶ 72, 73, 86, 128, 155, 200 (describing these elements each at a high level of generality and using open ended terms Appeal 2021-002629 Application 13/632,629 12 such as “may,” “for example,” etc.). Merely adding generic computer components to perform abstract ideas does not integrate those ideas into a practical application. See MPEP §§ 2106.04(a), (d) (citing 2019 Revised 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)). We disagree with Appellant’s argument that the present claims recite an improvement in the functioning of the computer or an improvement in the relevant technology by providing rules analogous to the rules in McRO. Appeal Br. 9 (citing McRO, at 1299). Appellant’s arguments that the present claims do not preempt any abstract idea (Appeal Br. 10) do not persuade us that the claims are patent eligible. Although preemption may denote patent ineligibility, its absence does not demonstrate patent eligibility. See FairWarning IP, LLC v. Iatric Sys., Inc., 839 F.3d 1089, 1098 (Fed. Cir. 2016). For claims covering a patent-ineligible concept, preemption concerns “are fully addressed and made moot” by an analysis under the Mayo/Alice framework. Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015). We, therefore, conclude that the additional elements, whether considered individually or as an ordered combination, do not integrate the abstract idea into a practical application because the additional elements are generic computer components that do not impose meaningful limits on practicing the abstract idea. Appellant does not advance any other arguments pertaining to Step 2A, Prong 2. Because we determine that the present claims recite an abstract idea that is not integrated into a practical application, we proceed to Step 2B. Appeal 2021-002629 Application 13/632,629 13 F. Step 2B We agree with the Examiner’s determination that the present claims do not amount to significantly more than an abstract idea itself because the abstract idea is implemented using additional elements that are well- understood, routine, and conventional. Final Act. 4–5 (citing MPEP § 2106.05(d)). Furthermore, the Specification indicates that the additional elements (i.e., “computer processors,” “client device,” “user device,” “memory storage devices,” “firewall,” and “policy owner reporting computer system,” and “policy generation system”) are nothing more than generic computer components. Spec. ¶¶ 72, 73, 86, 128, 155, 200. Appellant’s Specification indicates these additional elements were well- understood, routine, and conventional components because it describes them at a high level of generality and in a manner that indicates that they are sufficiently well-known. Id. The additional elements, either individually or in combination, do not amount to an inventive concept. Final Act. 4, 8. An inventive concept “cannot be furnished by the unpatentable law of nature (or natural phenomenon or abstract idea) itself.” Genetic, 818 F.3d at 1376; see also 2019 Revised Guidance; Alice, 573 U.S. at 217 (explaining that, after determining a claim is directed to a judicial exception, “we then ask, ‘[w]hat else is there in the claims before us?’” (alteration in original) (quoting Mayo, 566 U.S. at 78)). Instead, an “inventive concept” is furnished by an element or combination of elements that is recited in the claim in addition to the judicial exception and sufficient to ensure the claim, as a whole, amounts to significantly more than the judicial exception itself. Alice, 573 U.S. at 218– 19 (citing Mayo, 566 U.S. at 72–73); see BSG Tech LLC v. BuySeasons, Inc., 899 F.3d 1281, 1290 (Fed. Cir. 2018) (explaining that the Supreme Court in Appeal 2021-002629 Application 13/632,629 14 Alice “only assessed whether the claim limitations other than the invention’s use of the ineligible concept to which it was directed were well-understood, routine and conventional” (emphasis added)). For at least the above reasons, we conclude that each of the present claims, considered as a whole, is directed to a patent-ineligible abstract idea that is not integrated into a practical application, and does not include an inventive concept. We, therefore, sustain the Examiner’s rejection of: (1) independent claims 1, 9, and 17; and (2) dependent claims 2–6, 8, 10–14, 16, and 18–22 under § 101. We have only considered those arguments that Appellant actually raised in the Briefs. Arguments Appellant did not make have not been considered and are deemed to be waived. See 37 C.F.R. § 41.37(c)(1)(iv) (2013). CONCLUSION 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). See 37 C.F.R. § 1.136(a)(1)(iv) (2013). AFFIRMED Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1–6, 8–14, 16–22 101 Eligibility 1–6, 8–14, 16–22 Copy with citationCopy as parenthetical citation