Ex Parte Hebron et al

Patent Trial and Appeal Board

Feb 25, 2019

14319304 (P.T.A.B. Feb. 25, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/319,304 06/30/2014
1923 7590 02/27/2019
MCDERMOTT, WILL & EMERY LLP
The McDermott Building
500 North Capitol Street, N.W.
Washington, DC 20001
FIRST NAMED INVENTOR
Robert J. Hebron
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
101656-0031 1061
EXAMINER
FU,HAO
ART UNIT PAPER NUMBER
3697
NOTIFICATION DATE DELIVERY MODE
02/27/2019 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):
mweipdocket@mwe.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ROBERT J. HEBRON, CRAIG L. DESANTO, and
NICHOLAS E. P ASY ANOS
Appeal 2017-011418
Application 14/319,304
Technology Center 3600
Before STEPHEN C. SIU, BARBARA A. PARVIS, and
JAMES W. DEJMEK, Administrative Patent Judges.
PARVIS, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's final
rejection of claims 1-19. App. Br. 1. 1 We have jurisdiction under 35 U.S.C.
§ 6(b ). We AFFIRM.
1 All citations to the "Appeal Brief' or "App. Br." are to the Appeal brief
mailed on March 1, 2017.
Appeal 2017-011418
Application 14/319,304
BACKGROUND
Appellants' 2 disclosed invention relates to the field of insurance and
employee benefits and, more particularly, to methods and systems for
providing and administering a benefit that may convert into another benefit.
Spec. ,r 2. Independent claim 1, reproduced below, is representative3 of the
appealed claims:
1. A computerized method for supporting underwriting systems
that provide insurance policies with convertible benefits, the
method comprising:
electronically receiving, by a server device from client devices
over a communication network, information for determining
a life insurance benefit and a long term care benefit and at
least one conversion event, wherein the life insurance
benefit and the long term care benefit are provided by a
single insurance policy, and wherein the life insurance
benefit is converted to the long term care benefit upon
occurrence of the at least one conversion event, the at least
one conversion event including one of retirement of an
insured, the insured reaching a given age, fulfilling a given
length of service, and disability of the insured;
electronically determining by the server device that the life
insurance benefit is available and the long term care benefit
is unavailable under the single insurance policy prior to the
occurrence of the at least one conversion event;
electronically retrieving triggering and events data by the server
device from a data source to determine the occurrence of the
at least one conversion event;
2 Appellants indicate the real party in interest is New York Life Insurance
Company ofNew York, New York. Id. at 2.
3 Appellants argue claims 1-19 together as a group. See id. at 6.
Accordingly, we select independent claim 1 as representative. See 37 C.F.R.
§ 4I.37(c)(l)(iv).
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Application 14/319,304
electronically determining by the server device that the life
insurance benefit has ceased and the long term care benefit
has become available under the single insurance policy upon
the determination of the occurrence of the at least one
conversion event; and
electronically providing a user interface from the server device
to compute the long term care benefit after the occurrence of
the at least one conversion event, wherein the computed
long term care benefit is a percentage of a face value of the
life insurance benefit to be applied to the long term care
benefit based on an expected cost of providing the long term
care benefit and at least in part on a desired rate of return for
a provider of the long term care benefit.
REJECTIONS AT ISSUE4
Claims 1-19 stand rejected under 35 U.S.C. § 101 as being directed to
patent-ineligible subject matter. Ans. 2. 5
ISSUE
Did the Examiner err in rejecting claims 1-19 as being directed to
patent-ineligible subject matter?
4 Rather than repeat the Examiner's positions and Appellants' arguments in
their entirety, we refer to the above-mentioned Appeal Brief, as well as the
following documents for their respective details: the Final Action mailed
March 11, 2016 ("Final Act."); the Examiner's Answer mailed July 11, 2017
("Ans."); and the Reply Brief filed September 11, 2017 ("Reply Br.").
5 The rejection of claims 1-19 under 35 U.S.C. § 112 ,r 1 has been
withdrawn. Ans. 2.
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Application 14/319,304
PRINCIPLES OF LAW
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. See, e.g., Alice Corp. v. CLS Bankint'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
Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66 (2012), and
Alice. Id. 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. Kappas, 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, 69-72 (1972)).
Concepts determined to be patent eligible include physical and chemical
processes, such as "molding rubber products" (Diamond v. Diehr, 450 U.S.
17 5, 192 (1981) ); "tanning, dyeing, making water-proof cloth, vulcanizing
India rubber, smelting ores" (id. at 184 n.7 (quoting Corning v. Burden, 56
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Application 14/319,304
U.S. 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 176; 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 tum 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).
"[M]erely requir[ing] generic computer implementation[] fail[ s] to transform
that abstract idea into a patent-eligible invention." Id.
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The PTO recently published revised guidance on the application of
§ 101. USPTO's January 7, 2019 Memorandum, 2019 Revised Patent
Subject Matter Eligibility Guidance. 84 Fed. Reg. 50 (January 7, 2019)
("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)). 6
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, 84 Fed. Reg. at 50-56.
6 All Manual of Patent Examining Procedure (MPEP) citations herein are to
MPEP Rev. 08.2017, January 2018.
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ANALYSIS
The Examiner determines that the claims are directed to the abstract
idea of providing "insurance policies with convertible benefits." Final
Act. 5. The Examiner also finds that "providing insurance policies with
convertible benefits" is a fundamental economic practice. Id. at 3. We
concur with the Examiner.
For example, in accordance with claim 1, "information for
determining a life insurance benefit and a long term care benefit," as well as
a "conversion event" are received; "triggering and events data" (which
determine the life insurance benefit is available and the long term care
benefit is unavailable, or vice versa) are retrieved; and the long term care
benefit after the conversion event is computed and displayed. Appellants'
claims, thus, are directed to providing insurance policies with convertible
benefits, which is a fundamental economic practice and an abstract idea.
See, e.g., Alice, 573 U.S. at 219--20; see also Bancorp Servs. v. Sun Life, 687
F.3d 1266, 1280 (Fed. Cir. 2012) (concluding that "managing a stable value
protected life insurance policy by performing calculations and manipulating
the results" is an abstract idea); Memorandum, 84 Fed. Reg. at 52
( describing that the judicial exception of an abstract idea includes "[ c ]ertain
methods of organizing human activity-fundamental economic principles or
practices (including hedging, insurance, mitigating risk)" ( emphasis added)).
We also determine that the abstract idea is not integrated into a
practical application. The Examiner finds that the claims "can be performed
in the human mind or by a human using a pen and paper" and are not
"necessarily rooted in computer technology." Final Act. 3, 5; see also
Ans. 6-7 ( concluding that "all the determining steps are recited at a high
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level of generality," such that "they can be easily performed in the mind of a
human" and "[ t ]he specification does not disclose any specific rule for these
determining steps"). We concur with the Examiner that the claimed
invention merely constitutes the computer adaptation of an abstract idea, not
an improvement to computer technology.
We are not persuaded by Appellants' arguments, citing DDR
Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245 (Fed. Cir. 2014):
Independent claim 1, and similarly for independent claims
18 and 19, recites an event-driven server that interacts with data
from disparate information systems. The event-driven server
operates according to a protocol for propagating events data,
detecting changes in event state ( corresponding to conversion
events), and responding accordingly to activate certain stages of
functions. Although some of the limitations, by themselves, may
be recited at a high level of generality, when viewing the claims
as a whole, the combination of all the claimed steps taken
together amount to significantly more than simply applying the
abstract idea on a generic computer.
When viewing the presently claimed elements as an
ordered combination, the claims amount to significantly more
than an abstract idea. The present claims solve a problem in the
networking of disparate information systems. In the broadest
sense, the claim limitations refer to a system that allows data to
be propagated throughout a distributed environment such that the
data can be used to build responses around database triggering
events within an event-driven architecture. These are
meaningful limitations that add more than generally linking the
use of the abstract idea to a particular technological environment,
because they solve a distributed data system problem with a
claimed solution that is necessarily rooted in computer
technology.
App. Br. 8; see also Reply Br. 2, 6. Contrary to Appellants' contentions
(App. Br. 8), claim 1 does not recite "disparate" information systems,
operating according to a "protocol," or detecting changes in an event "state."
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The Examiner responds to Appellants' arguments stating, in contrast
to DDR Holdings, Appellants' claims involve merely a business practice
"that can be performed by [a] human in the real-world without [a] computer"
and are not "necessarily rooted in computer technology." Ans. 9--10. We
concur with the Examiner. As the Examiner notes (id.), further support is
found in the Specification, which describes the problem as follows: "[t]here
is therefore a need for an insurance policy, for example, COLI [corporate-
owned life insurance], that would be automatically convertible into another
benefit upon occurrence of a specified event, such as retirement or the
attainment of a specified age by the employee." Spec. ,r 7. We are
unpersuaded that an improvement relating to the conversion of insurance
policies with convertible benefits is an improvement to the functioning of
the computer itself. See MPEP § 2106.0S(a).
Additionally, we are not persuaded by Appellants' arguments, citing
McRO, Inc. v. Bandai Namco Games America, Inc., 837 F.3d 1299 (Fed.
Cir. 2016), that the Examiner overgeneralized or oversimplified the claims
(App. Br. 7) or the Appellants' arguments citing Enfish LLC v. Microsoft
Corp., 822 F.3d 1327 (Fed. Cir. 2016), that "the Examiner describes the
claims at such a high level of abstraction that the technical elements of the
claims are completely ignored." Reply Br. 4. The Examiner provides a
comprehensive response to Appellants' arguments regarding McRO stating
that in McRO, the combination of steps were directed to a technological
solution to affect lip synchronization and manipulation of facial expressions,
whereas the claims in the current application differ in that they are directed
to the abstract idea itself and not a technical problem. Ans. 3-7. The court
in McRO stated "[i]t is the incorporation of the claimed rules, not the use of
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the computer, that 'improved the existing technological process."' McRO,
837 F.3d at 1314. We concur with the Examiner because we do not find that
Appellants' claims are directed to improving a technological process.
Regarding Enfzsh, our reviewing court found, "the plain focus of the
claims is on an improvement to computer functionality itself, not on
economic or other tasks for which a computer is used in its ordinary
capacity." Enfzsh, 822 F.3d at 1336. We are not persuaded that Appellants'
claimed invention solves a computer-related problem under the rubric of
Enfish.
Also consistent with the Examiner's determination (Final Act. 3-5;
Ans. 6-10), the claims do not rely on a particular machine, because
receiving information from a client, retrieving data from a database,
determining whether an event occurred, and displaying are functions which
any general purpose computer is capable. See MPEP § 2106.05(b ).
Likewise, the Specification describes the computer technology in a generic
fashion and that data processing "may be implemented in a wide variety of
ways" and by "a wide variety of computer programs and languages." Spec.
,r,r 55-57, 61. Indeed, the Specification describes "[a]ll or any portion of the
foregoing information may be collected manually during an interview or by
using a questionnaire." Id. ,r 32. We find no indication in the claims or the
Specification, nor do Appellants direct us to any indication, that the claimed
invention invokes any assertedly inventive programming, requires any
specialized computer hardware or other inventive computer components,
i.e., a particular machine, or is implemented using other than generic
computer components to perform generic computer functions. Furthermore,
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Appellants' claims do not transform a particular article to a different state or
thing. See MPEP § 2106.05(c).
Instead, the claims are merely instructions to execute event
information relating to the conversion of insurance policies with convertible
benefits. See MPEP § 2106.05(e), (f), (h). The claimed invention involves
only insignificant data gathering, displaying, and storage and determining an
insurance benefit based on the occurrence of at least one conversion event,
which amounts to insignificant extra-solution activity. See MPEP
§ 2106.05(g).
Therefore, the claims do not integrate the judicial exception into a
practical application. See MPEP § 2106.05(a}-(c), (e}-(h); see also
Memorandum, 84 Fed. Reg. at 55 (citing, e.g., MPEP § 2106.05(a}-(c),
( e }-(h) ( describing exemplary considerations that are indicative of whether
the exception is integrated into a practical application)).
We further concur with the Examiner's determination regarding
"well-understood, routine, and conventional" in the field. Final Act. 5-8.
Appellants direct our attention to the Federal Circuit's decision in BASCOM
Global Internet Services, Inc. v. AT&T Mobility LLC, 827 F.3d 1341 (Fed.
Cir. 2016); and Appellants argue the Examiner's analysis is "insufficient"
because the Federal Circuit requires "that the inventive concept inquiry (i.e.,
significantly more than a judicial exception) take account of more than just
recognizing that each claim element, by itself, was known in the art." App.
Br. 10.
The Examiner finds that in contrast to BASCOM, Appellants' claims
"when taken as a whole do not amount to significantly more than the
abstract idea." Final Act. 7. We agree. We are not persuaded by Appellants
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of a parallel between claim 1 and the claim in BASCOM. BASCOM's
patent-eligible ordered combination of claim limitations improves the
performance of the computer system itself with a "technology-based solution
... to filter content on the Internet that overcomes existing problems with
other Internet filtering systems." 827 F.3d at 1350-51.
Appellants also argue that the Examiner fails to establish a prima facie
case of unpatentability because the Examiner's rejection lacks evidence.
Reply Br. 3--4. Appellants, however, do not raise a genuine issue of material
fact regarding step two of the Examiner's Alice/Mayo analysis. Id. We,
therefore, are unpersuaded by Appellants' argument that further evidence is
required.
Accordingly, we are not persuaded that the Examiner erred regarding
"well-understood, routine, conventional" in the field. See MPEP
§ 2106.05(d); see also Memorandum, 84 Fed. Reg. at 56 ("[E]xaminers
should continue to consider in step 2B whether an additional element or
combination of elements ... [ a ]dds a specific limitation or combination of
limitations that are not well-understood, routine, conventional activity .... "
(citing, e.g., MPEP § 2106.05(d))).
For the foregoing reasons, we are not persuaded, on the present
record, that the Examiner erred in rejecting claims 1-19 under 35 U.S.C.
§ 101.
SUMMARY
We sustain the Examiner's 35 U.S.C. § 101 rejection of claims 1-19.
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DECISION
We affirm the Examiner's decision rejecting claims 1-19 under
35 U.S.C. § 101.
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)(l )(iv).
AFFIRMED
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