Dubeau, Martin Joseph Marcel. et al.

Patent Trials and Appeals Board

Jan 2, 2020

14871505 - (D) (P.T.A.B. Jan. 2, 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.
14/871,505 09/30/2015 Martin Joseph Marcel Dubeau 36302-0012002 1541
26231 7590 01/02/2020
FISH & RICHARDSON P.C. (DA)
P.O. BOX 1022
MINNEAPOLIS, MN 55440-1022
EXAMINER
NORMAN, SAMICA L
ART UNIT PAPER NUMBER
3697
NOTIFICATION DATE DELIVERY MODE
01/02/2020 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):
PATDOCTC@fr.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
________________ 

Ex parte MARTIN JOSEPH MARCEL DUBEAU and JAKUB DANIELAK
________________

Appeal 2019-002145
Application 14/871,505
Technology Center 3600
________________

Before CATHERINE SHIANG, JASON J. CHUNG, and
JOYCE CRAIG, 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 1–13. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
INVENTION
The invention relates to “combining electronic life insurance policy
accounts and self-directed investment accounts.” Spec. ¶ 2. Claim 1 is
illustrative of the invention and is reproduced below:

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. According to Appellant, Toronto-Dominion Bank is the
real party in interest. Appeal Br. 1.
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1. A system comprising:
a life insurance platform including at least one processor
that executes operations to maintain a life insurance policy for a
plurality of users, each life insurance policy associated with a
cash value that is backed by investment assets, each life
insurance policy associated with a first customer identifier
associated with a user profile of a particular user;
a user-directed investment account platform including at
least one processor that executes operations to maintain a
plurality of user-directed investment accounts, wherein each of
the user-directed investment accounts is associated with a
second customer identifier associated with a user profile of a
particular user, wherein the user-directed investment account
platform and life insurance platform link particular life
insurance policies and particular user-directed investment
accounts based on a correspondence between the first customer
identifier and the second customer identifier associated with a
common user profile, wherein a particular user-directed
investment account associated with a first user profile is initially
funded with an associated margin account, wherein the margin
account is based at least in part on a cash value of the
corresponding life insurance policy associated with the first user
profile;
wherein at least one of the life insurance platform and the
user-directed investment account platform further includes at
least one processor that executes operations to:
determine a delta of the value of the investment assets
backing the cash value of the life insurance policy associated
with the first user profile; and
modify the value of the associated margin account based
on the determined delta;
wherein the user-directed investment account platform
further includes at least one processor that executes operations
to:
monitor the user-directed investment account
platform for changes to the associated margin account;
identify the modified value of the associated margin
account associated with the first user profile;
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store the modified value of the associated margin
account associated with the first user profile; and
automatically update the user-directed investment
account associated with the first user profile based on the
modified value of the margin account associated with the
first user profile, wherein updating the user-directed
investment account based on the modified value of the
margin account comprises automatically and without user
input, initiating an automatic investment within the user-
directed investment account in response to and based on
the identification of the modified value of the associated
margin account; and
wherein the user-directed investment account platform
further includes at least one processor that executes operations
operable to:
provide a web-based interface for providing
information related to particular user-directed investment
accounts, wherein the web-based interface presents
account details of the user-directed investment account
associated with a particular user profile;
access the life insurance platform to identify
information related to at least one life insurance policy
associated with the particular user profile; and
present, via the web-based interface, at least a
portion of the identified information related to the life
insurance policies associated with the particular user
profile with the account details of the user-directed
investment account.

Appeal Br. 14–15 (Claims Appendix) (emphases added)

REJECTION
Claims 1–13 stand rejected under 35 U.S.C. § 101 as being directed to
patent ineligible subject matter. Final Act. 2–3.

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ANALYSIS
I. Claims 1–11 and 31–49 Rejected Under 35 U.S.C. § 101
A. Legal Principles
An invention is patent-eligible if it claims a “new and useful process,
machine, manufacture, or composition of matter.” 35 U.S.C. § 101.
However, the 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. E.g., 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 Supreme Court’s two-step framework, described in Mayo
and Alice. Id. at 217–18 (citing Mayo Collaborative Servs. v. Prometheus
Labs., Inc., 566 U.S. 66, 75–77 (2012)). 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, 69 (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
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(1981)); “tanning, dyeing, making water-proof cloth, vulcanizing India
rubber, smelting ores” (id. at 182 n.7 (quoting Corning v. Burden, 56 U.S.
(15 How.) 252, 267–68 (1854))); 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
Supreme 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 192 (“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 Supreme 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. (citing Benson and Flook); see, 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 (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. (quoting Mayo, 566 U.S. at 77).
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“[M]erely requir[ing] generic computer implementation[] fail[s] to transform
that abstract idea into a patent-eligible invention.” Id.
The PTO recently published revised guidance on the application of
§ 101. USPTO’s January 7, 2019 Memorandum, 2019 Revised Patent
Subject Matter Eligibility Guidance (“Memorandum”). Under that
guidance, we first look to whether the claim recites:
(1) any judicial exceptions, including certain groupings of abstract
ideas (i.e., mathematical concepts, certain methods of organizing
human activity such as a fundamental economic practice, or mental
processes); and
(2) additional elements that integrate the judicial exception into a
practical application (see MPEP § 2106.05(a)–(c), (e)–(h)).
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, conventional” in the field (see MPEP
§ 2106.05(d)); 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.
See Memorandum.
B. The Examiner’s Conclusions and Appellant’s Arguments
The Examiner concludes the present claims recite certain methods of
organizing human activity. Final Act. 3; Ans. 4. The Examiner also
determines the present claims do not amount to significantly more than an
abstract idea itself because the abstract idea is implemented using additional
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elements that are well-understood, routine, and conventional. Ans. 9–10
(citing Alice Corp., 134 S. Ct. at 2359, 110 USPQ2d at 1984 (creating and
maintaining “shadow accounts”); Ultramercial, 772 F.3d at 716, 112
USPQ2d at 1755 (updating an activity log)).
Appellant argues, similar to Enfish, LLC v. Microsoft Corp., 822 F.3d
1327 (Fed. Cir. 2016) and McRO, Inc. v. Bandai Namco Games America
Inc., 837 F.3d 1299, 1308–14 (Fed. Cir. 2016), the present claims recite an
improvement in user-directed life insurance platforms and user-directed
investment platforms, which previously existed separately and without
connection to one another. Appeal Br. 5–10 (citing Spec. ¶¶ 50, 56); Reply
Br. 3–5.
Appellant argues, similar to BASCOM Global Internet Services, Inc.
v. AT&T Mobility LLC, 827 F.3d 1341 (Fed. Cir. 2016), that the present
claims recite automatic investment within the investment platform based on
the determined change of the margin account associated with a linked life
insurance policy, which is an improvement over prior art solutions and
results in an inventive concept. Appeal Br. 10–11.
Appellant argues the Examiner fails to support the finding that the
abstract idea is implemented using additional elements that are well-
understood, routine, and conventional previously known to the industry. Id.
at 11–12 (citing USPTO Commissioner for Patents Memorandum dated
Apr. 9, 2018, “Changes in Examination Procedure Pertaining to Subject
Matter Eligibility, Recent Subject Matter Eligibility Decision” (Berkheimer
v. HP, Inc.)). We disagree with Appellant.
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C. Discussion
1. Step 2A, Prong 1
The emphasized portions of claim 1,2 reproduced above (see supra at
2–3), recite fundamental economic principles or practices (including
insurance) because the claims recite user-directed life insurance platforms
and user-directed investment platforms, which previously existed separately
and without connection to one another. See also Appeal Br. 8 (Appellant
characterizes the present claims as reciting user-directed life insurance
platforms and user-directed investment platforms, which previously existed
separately and without connection to one another). According to the
Memorandum, fundamental economic principles or practices fall into the
category of certain methods of organizing human activity. See
Memorandum; see also Final Act. 3; Ans. 4 (the Examiner concludes the
present claims recite certain methods of organizing human activity).
Moreover, those certain methods of organizing human activity are a type of
an abstract idea. See Memorandum.
Because the present claims recite fundamental economic principles or
practices, which fall into the category of certain methods of organizing
human activity (i.e., an abstract idea), we proceed to prong 2.
2. Step 2A, Prong 2
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. In particular, we disagree with Appellant’s argument that,

2 Appellant does not argue claims 2–13 separately. Appeal. Br. 5–12. We,
therefore, group claims 1–13 together and refer to those claims as the
“present claims.”
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similar to Enfish and McRO, the present claims recite an improvement in
user-directed life insurance platforms and user-directed investment
platforms, which previously existed separately and without connection to
one another. Appeal Br. 5–10 (citing Spec. ¶¶ 50, 56); Reply Br. 3–5.
Appellant does not identify persuasively how the Specification sets
forth an improvement in technology. The USPTO October 2019 Patent
Eligibility Guidance Update (“Update”) addresses how we consider any
evidence that is presented to us. The Update states:
[d]uring 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
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).
In this case, the Examiner concludes the present claims do not recite
an improvement to technology. Final Act. 4–5; Ans. 5–7. Consequently, we
focus only on any evidence Appellant cites pursuant to the Update. Here,
although Appellant identifies paragraphs 50 and 56 of the Specification,
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those paragraphs merely discuss seamless linking of accounts from a user-
directed life insurance platform with a user-directed investment platform that
results in a combined set of data to users so that the user is unaware that
their interface is presenting information from two distinct systems (i.e.,
certain methods of organizing human activity, which is an abstract idea as
discussed supra), not an improvement to technology. Appeal Br. 5–10
(citing Spec. ¶¶ 50, 56); Reply Br. 3–5. Paragraphs 50 and 56 of the
Specification are unlike the technological improvements in Enfish.
In Enfish, the Federal Circuit considered how the present invention
was superior to the technology in the prior art. That is, the court considered
“the specification’s emphasis that ‘the present invention comprises a
flexible, self-referential table that stores data,’” “[t]he specification also
teaches that the self-referential table functions differently than conventional
database structures,” “traditional databases, such as ‘those that follow the
relational model and those that follow the object oriented model’ are inferior
to the claimed invention.” Enfish, LLC v. Microsoft Corp., 822 F.3d at 1337
(interior citations omitted). Moreover, “‘[t]he structural requirements of
current databases require a programmer to predefine a structure and
subsequent [data] entry must conform to that structure,’ the ‘database of the
present invention does not require a programmer to preconfigure a structure
to which a user must adapt data entry.’” Id. Then, the court determined the
claims “achieve[d] other benefits over conventional databases, such as
increased flexibility, faster search times, and smaller memory requirements.”
Unlike the claims of Enfish, the present claims do not recite “a specific
improvement to the way computers operate, embodied in the self-referential
table.” Id. at 1336.
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Similar to the Enfish argument, Appellant does not identify
persuasively how paragraphs 50 and 56 of the Specification sets forth an
improvement in technology. Moreover, the subject claim considered by the
McRO court concerned a method for automatically animating lip
synchronization and facial expressions. McRO, 837 F.3d at 1303. The
McRO court concluded the subject claims did not recite an abstract idea
because the computer animation improved the prior art through the use of
rules, rather than artists, to set morph weights and transitions between
phonemes. Id. at 1308. Thus, the claimed invention in McRO allowed for
computer performance of animation steps that previously had to be
performed by human animators. Id. at 1309. The subject claims in McRO
used “limited rules in a process specifically designed to achieve an improved
technological result” over “existing, manual 3-D animation techniques.” Id.
at 1316 (emphasis added). And unlike the claims of McRO, the present
claims do not recite rules for lip sync and facial expression animation or an
improvement in computer technology.
Instead, the present claims recite an abstract idea as discussed supra,
in § I.C.1. or at best, improving an abstract idea—not a technological
improvement. The Specification indicates the additional elements (i.e.,
“processor” and “web-based interface”) recited in the present claims are
merely generic computer components used to implement the abstract idea.
Spec. ¶¶ 7, 40. Further, the generic computer components individually and
in combination, does not integrate the judicial exception into a practical
application.
Additionally, “a claim for a new abstract idea is still an abstract idea.”
Synopsys, Inc. v. Mentor Graphics Corp., 839 F.3d 1138, 1151 (Fed. Cir.
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2016) (emphasis added). “[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).
Appellants do not make any other arguments pertaining to step 2A,
prong 2. Because the present claims recite an abstract idea that is not
integrated into a practical application, we proceed to Step 2B.
3. Step 2B
We agree with the Examiner’s determination that the abstract idea is
implemented on additional elements that are well-understood, routine, and
conventional. Ans. 9–10 (citing Alice Corp., 134 S. Ct. at 2359, 110
USPQ2d at 1984 (creating and maintaining “shadow accounts”);
Ultramercial, 772 F.3d at 716, 112 USPQ2d at 1755 (updating an activity
log)). The Specification also supports the Examiner’s determination in this
regard because it explains that “processor” and “web-based interface” are
generic components. Spec. ¶¶ 7, 40. Appellant’s Specification indicates
these 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. Moreover, the additional
elements recited in the present claims, analyzed individually or in
combination, do not result in the claim, as a whole, amounting to
significantly more than the judicial exception.
We, therefore, disagree with Appellant’s argument that the Examiner
fails to support the finding the abstract idea is implemented on additional
elements that are well-understood, routine, and conventional previously
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known to the industry. Appeal Br. 11–12.
We also disagree with Appellant’s argument that, similar to
BASCOM, the present claims recite automatic investment within the
investment platform based on the determined change of the margin account
associated with a linked life insurance policy, which is an improvement over
prior art and results in an inventive concept. Appeal Br. 10–11.
Significantly, we note that Appellant does not argue how the present claims
provide a non-conventional and non-generic arrangement of known,
conventional pieces when considered as an ordered combination.
In BASCOM, however, the claims were directed to “a filter
implementation versatile enough that it could be adapted to many different
users’ preferences while also installed remotely in a single location.”
BASCOM, 827 F.3d at 1348–51. The inventive concept was “the installation
of a filtering tool at a specific location, remote from the end-users, with
customizable filtering features specific to each end user” that “gives the
filtering tool both the benefits of a filter on a local computer and the benefits
of a filter on the ISP server.” Id. at 1350. Thus, when considered as an
ordered combination, the court concluded the claims provided “an inventive
concept can be found in the non-conventional and non-generic arrangement
of known, conventional pieces.” Id.
Here, the present claims recite an abstract idea using generic
components as discussed supra, in §§ I.C.1. and I.C.2. or at best, improving
an abstract idea—not an inventive concept for the reasons discussed in
§ I.C.2.
Appellant does not argue claims 2–13 separately, but asserts the § 101
rejection of those claims should be withdrawn for at least the same reasons
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as argued for independent claim 1. Appeal. Br. 5–12. Accordingly, we
sustain the Examiner’s rejection of: (1) independent claim 1; and
(2) dependent claims 2–13 under 35 U.S.C. § 101.
We have only considered those arguments that Appellant actually
raised in the Briefs. Arguments Appellant could have made, but chose not to
make, in the Briefs have not been considered and are deemed to be waived.
See 37 C.F.R. § 41.37(c)(1)(iv).

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).

AFFIRMED

Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1–13 101 Eligibility 1–13