Ex Parte Castleman et al

Patent Trial and Appeal Board

Mar 13, 2013

10714281 (P.T.A.B. Mar. 13, 2013)

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.
10/714,281 11/14/2003 James Castleman 109.0037 2030
27997 7590 03/13/2013
LAW OFFICES OF PETER H. PRIEST, PLLC
5015 SOUTHPARK DRIVE
SUITE 230
DURHAM, NC 27713-7736
EXAMINER
LUBIN, VALERIE
ART UNIT PAPER NUMBER
3626
MAIL DATE DELIVERY MODE
03/13/2013 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 PATENT TRIAL AND APPEAL BOARD
____________

Ex parte JAMES CASTLEMAN and CECIL LEWIS FAIN
____________

Appeal 2011-007062
Application 10/714,281
Technology Center 3600
____________

Before: MICHAEL W. KIM, NINA L. MEDLOCK, and
JAMES A. TARTAL, Administrative Patent Judges.

KIM, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2011-007062
Application 10/714,281

2
STATEMENT OF THE CASE
This is an appeal from the final rejection of claims 5-241. We have
jurisdiction to review the case under 35 U.S.C. §§ 134 and 6.
The invention relates to systems and techniques for assembling and
marketing combined packages providing mortgage insurance and job loss
protection or some other insurance or financial product that may suitably be
combined with mortgage insurance (Spec. 1:8-11).
Claim 5, reproduced below, is further illustrative of the claimed
subject matter.
5. A computer implemented system for
assembling and marketing insurance packages
including a combination of a mortgage insurance
component having a risk when sold separately and
at least one additional insurance component having
an effect on the risk of the mortgage insurance
component when sold together with the mortgage
insurance component, comprising:
long term storage hosting a risk data
repository for storing risk information to be used in
determining the risk and cost of providing
insurance packages;
the long term storage further hosting an
insurance data repository including information
about one or more available additional insurance
components, the repository including information
about the mortgage insurance component and the
one or more additional insurance components; and
a risk evaluator implemented as a software
module hosted by the computer and executed
under control of a processor to determine risks and

1 Our decision will make reference to the Appellants’ Appeal Brief (“App.
Br.,” filed August 13, 2010) and Reply Brief (“Reply Br.,” filed January 6,
2011), and the Examiner’s Answer (“Ans.,” mailed November 8, 2010).
Appeal 2011-007062
Application 10/714,281

3
costs associated with providing insurance, the risk
evaluator operating to compute overall risk and
cost for a combined package and adjust parameters
of the package components including adjusting the
cost of the mortgage insurance component in light
of the effect on said risk of the at least one
additional component to optimize the risk and cost
of the package.

Claims 5-13 and 20-24 are rejected under 35 U.S.C. § 101 as being
directed to non-statutory subject matter.
Claims 5-8 and 9-20 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Flagg (US 6,456,979 B1, iss. Sep. 24, 2002) in view of
Libman (US 6,999,938 B1, iss. Feb. 14, 2006), further in view of Debber
(US 2003/0144887 A1, iss. Jul. 31, 2003)2.
Claim 9 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Flagg, Libman, Debber and Luchs (US 4,831,526, iss. May 6, 1989.
Claims 21-24 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Flagg, Libman, Debber, and Tyler (US 5,523,942, iss.
Jun. 4, 1996)3.

We AFFIRM.

2 Page 4 of the Examiner’s Answer lists claims 5-24 as rejected under 35
U.S.C. § 103(a) as being unpatentable over Flagg in view of Libman and
Debber. However, pages 6 and 7 of the Examiner’s Answer list claims 9
and 21 as rejected under 35 U.S.C. § 103(a) as being unpatentable over
additional references. Moreover, claims 22-24 depend from claim 21.
Accordingly, we only treat claims 5-8 and 9-20 as rejected on these grounds.
3 As claims 22-24 depend from claim 21, we will treat their omission from
the rejection in the Examiner’s Answer as an inadvertent oversight.
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Appeal 2011-007062
Application 10/714,281

5
2. The server 202 suitably hosts various data repositories and
databases preferably implemented as data files hosted in the long term
storage 208, and modules, preferably stored in the long term storage 208 and
executed under the control of the processor 204 (7:12-15)

ANALYSIS
Statutory Subject Matter
We are persuaded the Examiner erred in asserting claims 5-13 and 20-
24 fail to recite statutory subject matter under 35 U.S.C. § 101 (App. Br. 11-
12; Reply Br. 1-2). The Examiner asserts that independent claim 5 recites a
system, but that the recited “long term storage” constitutes data, and that the
“risk evaluator” is a software module, neither of which are structure for the
recited system (Ans. 4, 8). As support, the Examiner cites the Specification
for disclosing that long term storage 208 is separate from processor 204 and
memory 206 (Ans. 8). We disagree. While the Specification does disclose
long term storage 208 as separate from memory 206, the Specification also
discloses that long term storage 208 is a part of server 202 (7:10-12; Fig. 2).
Moreover, independent claim 5 recites that the long term storage “hosts” the
risk insurance depository and the insurance data repository, which comports
with the Specification’s disclosure that long term storage 208 “hosts”
“various repositories and databases… as data files” and “stores” modules
(7:12-15). Accordingly, one of ordinary skill would understand that
“hosting” and “storing” data within a server requires memory structure, and
that the recited “long term storage” is thus memory structure.

Appeal 2011-007062
Application 10/714,281

6
Obviousness Rejection of Claims 5-20
We are not persuaded the Examiner erred in asserting that a
combination of Flagg, Debber, and Libman renders obvious claims 5-20
(App. Br. 12-18; Reply Br. 2, 4-5). Appellants assert that Flagg addresses
permanent life insurance, and not “a mortgage insurance component and at
least one additional insurance component,” as recited in independent claim 5
(App. Br. 12-13). However, Libman is cited for disclosing those aspects
(Ans. 5, 9-10).
Appellants then assert that because Flagg does not disclose “a
mortgage insurance component and at least one additional insurance
component,” it cannot disclose the recited “risk information” in the “risk
data repository” or the recited “insurance data repository,” because they all
include “information about the mortgage insurance component and the one
or more additional components” (App. Br. 13; Reply Br. 5). However,
Appellants are attempting to argue the references individually, when the
rejection is based on a combination of references. See In re Merck & Co.
Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986) (the argument that a single
reference alone does not disclose the recited claimed steps is not persuasive
because nonobviousness cannot be established by attacking the references
individually when the rejection is predicated upon a combination of prior art
disclosures); In re Keller, 642 F.2d 413, 426 (CCPA 1981) (“one cannot
show non-obviousness by attacking references individually where, as here,
the rejections are based on combinations of references”). Specifically, Flagg
is cited for disclosing an insurance data repository including risk
information, albeit for permanent life insurance (Ans. 4-5, 9). The Examiner
then substituted “information about the mortgage insurance component and
Appeal 2011-007062
Application 10/714,281

7
the one or more additional components” of Libman for the permanent life
insurance of Flagg (Ans. 5, 9-10). The Examiner then placed the insurance
data repository including risk information of Flagg into the risk query
module and risk database of Debber (Ans. 5, 9).
Appellants further assert that Debber does not disclose “a risk
evaluator for determining risks and costs associated with providing
insurance, the risk evaluator being operative to compute overall risk and cost
for the combined package and adjust parameters of the package components
including adjusting the cost of the mortgage insurance component in light of
the effect on said risk of the at least one additional insurance component to
optimize the risk and cost of the package,” as recited in independent claim 5,
because while Debber discloses a risk query module and risk database, they
don’t perform the computations required of the recited risk evaluator (App.
Br. 13-14). However, Flagg is cited for performing the recited computations
(Ans. 4-5, 9).
Appellants additionally assert that “Debber has no specific teaching
relating to packages of insurance comprising two or more components
including a mortgage insurance component, or the importance of the
evaluation of the effect upon the mortgage insurance component made by an
additional component, such as the job loss component or insurance of
dependent claims 10-13, independent claim 14 and its dependent claims 15-
18, independent claim 19, and dependent claims 20-24” (App. Br. 14, 16).
However, Libman is cited for disclosing information about the mortgage
insurance component and the one or more additional components (Ans. 5, 9-
10), including unemployment insurance (Libman, col. 14, l. 29), which is the
same as job loss insurance.
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Application 10/714,281

8
Appellants also assert that the Examiner’s stated rationale for
combining Flagg, Debber, and Libman is conclusory, legally incorrect, and
factually unsupported (App. Br. 15-16; Reply Br. 2-3). However, the
Examiner’s rationale that it “would have been obvious” to “combine the
teachings of Flagg, Debber and Libman to include data about mortgage
insurance and insurance packages in order to market bundled products to
consumers with more than one type of insurance need,” is factually
supported by Libman, where combinations of all types of financial products,
including various types of insurance, are explicitly disclosed (col. 12, ll. 45-
63; col. 14, ll. 14-30).
Appellants then assert that “there is no specific teaching of mortgage
insurance in combination with any other insurance, and in particular, there
is no teaching of job loss insurance” (App. Br. 16). However, Libman
discloses that all combinations of insurance products are contemplated,
including mortgage insurance (Fig. 9) and unemployment insurance
(Libman, col. 14, l. 29), which is the same as job loss insurance. As Libman
discloses job loss insurance, Appellants’ arguments concerning non-
functional descriptive material are moot (App. Br. 17-18; Reply Br. 3-4).
Appellants further assert that Libman and Debber do not disclose or
suggest “a risk evaluator... to... adjust parameters of the package components
including adjusting the cost of the mortgage insurance component in
light of the effect on said risk of the at least one additional component,”
as recited in independent claim 5 (App. Br. 16). However, Debber is cited
for disclosing the risk evaluator, Flagg is cited for disclosing the adjustment
of parameters including adjusting the cost, and Libman is cited for
disclosing the mortgage insurance component and the at least one additional
Appeal 2011-007062
Application 10/714,281

9
component.
Appellants additionally assert that even if all packages of insurance
components are known, the specific combination of components set forth in
the claims has synergies and advantages that render the claims non-obvious
over the combination of Flagg, Debber, and Libman (App. Br. 16-17).
However, if the combination of prior art is shown to recite every aspect set
forth in the claims, then, absent evidence of secondary considerations, the
combination of prior art is presumed to have the same synergies and
advantages as the claimed invention.
As for arguments concerning the preamble (Reply Br. 4-5), the
combination of Flagg and Libman, as set forth above, renders obvious the
preamble of independent claim 5.

Obviousness Rejection of Dependent Claims 21-24
We are not persuaded the Examiner erred in asserting that a
combination of Flagg, Debber, Libman, and Tyler renders obvious
dependent claims 21-24 (App. Br. 18-19; Reply Br. 4). Appellants assert
that Tyler is directed to reducing “the cost of insurance like life insurance
with annual or otherwise scheduled premiums . . . for early payment,” which
is unrelated to “wherein the risk evaluator computes the cost of the mortgage
insurance and then discounts the computed cost by taking into account a
reduced likelihood of default on the mortgage due to the job loss
component,” as recited in dependent claim 21. However, Appellants are
arguing Tyler individually, whereas the Examiner’s combination of
references discloses or suggests “wherein the risk evaluator (Debber)
computes the cost of the mortgage insurance (Flagg) and then discounts the
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Application 10/714,281

10
computed cost by taking into account a reduced likelihood of default (Tyler)
on the mortgage due to the job loss component (Libman).”

DECISION
The decision of the Examiner to reject claims 5-24 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).
AFFIRMED

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