Ex Parte Buerger et al

Board of Patent Appeals and Interferences

Aug 17, 2012

11763221 (B.P.A.I. Aug. 17, 2012)

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.
11/763,221 06/14/2007 Alan H. Buerger C8367.0004/P039 3237
24998 7590 08/17/2012
DICKSTEIN SHAPIRO LLP
1825 EYE STREET NW
Washington, DC 20006-5403
EXAMINER
ROBINSON, KITO R
ART UNIT PAPER NUMBER
3695
MAIL DATE DELIVERY MODE
08/17/2012 PAPER
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.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte ALAN H. BUERGER, REID S. BUERGER, and ALEX SELDIN
___________

Appeal 2011-006452
Application 11/763,221
Technology Center 3600
____________

Before JOSEPH A. FISCHETTI, BIBHU R. MOHANTY, and
MEREDITH C. PETRAVICK, Administrative Patent Judges.

PETRAVICK, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2011-006452
Application 11/763,221

2
STATEMENT OF THE CASE
Alan H. Buerger et al. (Appellants) seek our review under 35 U.S.C.
§ 134 of the final rejection of claims 1-22. We have jurisdiction under
35 U.S.C. § 6(b).

SUMMARY OF DECISION
We AFFIRM. 1

THE INVENTION
This invention is “a method and apparatus for protecting the value of a
life insurance policy.” Spec. para. [0001].
Claim 1, reproduced below, is illustrative of the subject matter on
appeal.
1. A computer–implemented method for
attempting to reduce the risk of financial loss
by a first party owner of a life insurance policy,
comprising:
receiving, on at least one central processing
unit connected to a memory, and storing, in the
memory, data relating to the first list insurance
policy;
recording, in the memory, an indication of
an agreement between the first party owner and
a second party that protects against a loss in
expected value of the life insurance policy, said
agreement including a projected value of the

1 Our decision will make reference to the Appellants’ Appeal Brief (“App.
Br.,” filed Nov. 30, 2010) and Reply Brief (“Reply Br.,” filed Mar. 8, 2011),
and the Examiner’s Answer (“Ans.,” mailed Dec. 22, 2010).

Appeal 2011-006452
Application 11/763,221

3
life insurance policy at a specified future
time(s);
evaluating, on the central processing unit,
the data relating to the first life insurance policy
to determine a then-current value of the life
insurance policy at the specified future time(s);
and
determining, on the central processing unit,
a loss in value being a difference between the
projected value of said life insurance policy at
the specified time and the then-current value of
the life insurance policy.

THE REJECTIONS
The Examiner relies upon the following as evidence of
unpatentability:
Jin
Terlizzi
Janssen
US 2004/0260578 A1
US 2005/0010453 A1
US 2005/0071263 A1
Dec. 23, 2004
Jan. 13, 2005
Mar. 31, 2005

The following rejections are before us for review:
1. Claims 1-4, 7-10, 12-15, and 18-21 are rejected under 35
U.S.C. §103(a) as being unpatentable over Jin and Janssen.
2. Claims 5, 6, 11, 17, 16, and 22 are rejected under 35 U.S.C.
§103(a) as being unpatentable over Jin, Janssen, and Terlizzi.

ISSUE
The issue is whether claims 1-4, 7-10, 12-15, and 18-21 are
unpatentable under 35 U.S.C. §103(a) over Jin and Janssen. Specifically,
Appeal 2011-006452
Application 11/763,221

4
the issue is whether the prior art discloses a projected value of the life
insurance policy at a specified future time. The rejection of claims 5, 6, 11,
17, 16, and 22 under 35 U.S.C. § 103(a) as being unpatentable over Jin,
Janssen, and Terlizzi also turn on this issue.

ANALYSIS
The rejection of claims 1-4, 7-10, 12-15, and 18-21 under §103(a) as being
unpatentable over Jin and Janssen
Claims 1-4
The Appellants argue claims 1-4, 7-10, 12-15, and 18-21 as a group.
App. Br. 6-9. We select claim 1 as the representative claim for this group,
and the remaining claims 2-4, 7-10, 12-15, and 18-21 stand or fall with
claim 1. 37 C.F.R. § 41.37(c)(1)(vii).
We are not persuaded by the Appellants’ arguments (see App. Br. 6-8
and Reply Br. 3-4) that the Examiner erred. The Appellants argue that Jin’s
Shelter Value does not teach the claimed projected value of the life
insurance policy at a specified future time(s). Id. The claimed description
of the value as being the projected value at a specified future time is non-
functional descriptive material because the claimed determining step blindly
computes a difference between the two values presented. Nonfunctional
descriptive material cannot render nonobvious an invention that would have
otherwise been obvious. In re Ngai, 367 F.3d 1336, 1339 (Fed. Cir. 2004).
Cf. In re Gulack, 703 F.2d 1381, 1385 (Fed. Cir. 1983) (when descriptive
material is not functionally related to the substrate, the descriptive material
will not distinguish the invention from the prior art in terms of patentability).
Appeal 2011-006452
Application 11/763,221

5
We note that the Appellants argue claims 7-10 and 18-21 together
with claim 1. However, claims 7-10 and 19-21 do not recite the limitation at
issue above, and, for this further reason, we are not persuaded by the
Appellants’ argument that the Examiner erred as to the rejection of those
claims.
Accordingly, the rejection of claims 1-4, 7-10, 12-15, and 18-21 under
35 U.S.C. 103(a) as being unpatentable over Jin and Janssen is affirmed.

The rejection of claims 5, 6, 11, 17, 16, and 22 under §103(a) as being
unpatentable over Jin, Janssen, and Terlizzi
Claims 5 and 16
The Appellants argue against the rejection of claims 5 and 6 for the
same reasons used to argue against the rejection of claim 1, and further,
argue that Terlizzi does not cure the deficiencies of Jin and Janssen. App.
Br. 10-11 and Reply Br. 4. Accordingly, because we found them
unpersuasive as to that rejection, we find them equally unpersuasive as to
error in the rejection of claim 5 and 6. The rejection of claims 5 and 6 under
35 U.S.C. § 103(a) as being unpatentable over Jin, Janssen, and Terlizzi is
affirmed.

Claims 6, 11, 17, and 22
We also shall sustain the standing 35 U.S.C. § 103(a) rejection of
dependent claims 6, 11, 17, and 22 as being unpatentable over Jin, Janssen,
and Terlizzi since the Appellants have not challenged such with any
reasonable specificity, thereby allowing claims 6, 11, 17, and 22 to stand or
fall with their parent claims (see In re Nielson, 816 F.2d 1567, 1572 (Fed.
Appeal 2011-006452
Application 11/763,221

6
Cir. 1987)). Accordingly, the rejection of claims 6, 11, 17, and 22 under 35
U.S.C. § 103(a) over Jin, Janssen, and Terlizzi is affirmed.

DECISION
The decision of the Examiner to reject claims 1-22 is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv) (2010).

AFFIRMED

Klh