Ex Parte Hilario et al

Patent Trial and Appeal Board

Sep 20, 2018

13169773 (P.T.A.B. Sep. 20, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/169,773 06/27/2011
5073 7590
BAKER BOTTS L.L.P.
2001 ROSS A VENUE
SUITE 900
DALLAS, TX 75201-2980
09/24/2018
FIRST NAMED INVENTOR
Shawn P. Hilario
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.
002328.0868 2536
EXAMINER
NGUYEN, LIZ P
ART UNIT PAPER NUMBER
3696
NOTIFICATION DATE DELIVERY MODE
09/24/2018 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):
ptomaill@bakerbotts.com
ptomail2@bakerbotts.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte SHAWN P. HILARIO and EDWIN C. BARRON
Appeal2018-000639 1
Application 13/169,773 2
Technology Center 3600
Before MURRIEL E. CRAWFORD, JOSEPH A. FISCHETTI, and
BRADLEY B. BAY AT, Administrative Patent Judges.
BAY AT, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's final
rejection of claims 1-23 under 35 U.S.C. § 101 as directed to non-statutory
subject matter. We have jurisdiction under 35 U.S.C. § 6(b ).
We AFFIRM.
1 Our Decision references Appellants' Appeal Brief ("Appeal Br.," filed
Apr. 17, 2017) and Reply Brief ("Reply Br.," filed Oct. 24, 2017), the
Examiner's Answer ("Ans.," mailed Aug. 24, 2017) and Final Office Action
("Final Act.," mailed June 16, 2016).
2 Appellants identify "The Prudential Insurance Company of America" as
the real party in interest. Appeal Br. 2.
Appeal2018-000639
Application 13/169,773
CLAIMED INVENTION
Appellants' invention relates to a method and "computer systems for
use in the financial services field, and particularly for processing of data
related to life insurance policies." Spec. ,r 1.
System claims 1 and 20, method claim 8, and computer-readable
medium claim 15 are the independent claims on appeal, and recite
substantially similar subject matter. Claim 1, reproduced below, is
illustrative of the subject matter on appeal.
1. A computer system for processing data related to last
survivor life insurance policies having a death benefit payable
on a death of a last to die of two or more insureds, and one or
more associated single life policies on the lives of one or more
of the insureds and having one or more ancillary benefits
payable on an occurrence of an event other than death of the
one or more of the insureds, comprising:
a data storage device storing data indicative of rates and
corresponding death benefit amounts for last survivor policies
and individual life insurance policies based on age and gender
of insureds, and rates and available benefit amounts associated
with each of the ancillary benefits, the ancillary benefits
comprising a withdrawal benefit in the nature of periodic
payments payable from a company to the policy owner upon
request and on condition of:
the insured being living;
the insured having reached a minimum age achieved at a
benefit eligibility date; and
a policy protection account having at least a target
balance, wherein each payment reducing the amount of the
death benefit until a residual death benefit amount is reached;
a user accessible device in communication with the data
storage device; and
a processor in communication with the data storage
device and the user accessible device, the processor configured
to:
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cause the user accessible device to prompt for face
value amounts or a premium amount to be paid, age and
gender of the two or more insureds, and user selection of
the one or more ancillary benefits;
receive via the user accessible device data
indicative of a user selection of a premium amount or
face value amounts, age and gender of the two or more
insureds, and the one or more ancillary benefits;
determine, based on the received data, face value
amounts or premium amounts for at least two policies
including a last survivor life insurance policy and the one
or more individual life policies having the selected one or
more ancillary benefits; and
generate and display on the user accessible device
illustrations for each of the policies.
Appeal Br. 12-13 (Claims App.).
ANALYSIS
Under 35 U.S.C. § 101, an invention is patent-eligible if it claims a
"new and useful process, machine, manufacture, or composition of matter."
35 U.S.C. § 101. The Supreme Court, however, has long interpreted§ 101
to include an implicit exception: "[l]aws of nature, natural phenomena, and
abstract ideas" are not patentable. See, e.g., Alice Corp. Pty Ltd. v. CLS
Banklnt'l, 134 S. Ct. 2347, 2354 (2014).
The Supreme Court, in Alice, reiterated the two-step framework
previously set forth in Mayo Collaborative Services v. Prometheus Labs.,
Inc., 566 U.S. 66, 82-83 (2012), "for distinguishing patents that claim laws
of nature, natural phenomena, and abstract ideas from those that claim
patent-eligible applications of these concepts." Alice Corp., 134 S. Ct.
at 2355. The first step in that analysis is to "determine whether the claims at
issue are directed to one of those patent-ineligible concepts," id., e.g., to an
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abstract idea. If the claims are not directed to an abstract idea, the inquiry
ends. Otherwise, the inquiry proceeds to the second step where the elements
of the claims are considered "individually and 'as an ordered combination'"
to determine whether there are additional elements [that] "'transform the
nature of the claim' into a patent-eligible application." Alice Corp.,
134 S. Ct. at 2355 (quoting Mayo, 566 U.S. at 79, 78).
Under Alice step one, the Examiner determined:
Claims 1-23 recite a system and a method for processing data
related to life insurance policies. Processing data related to life
insurance policies, performing and administering underwriting
for policies and generating a policy document is a longstanding
commercial and economic practice. Determining a premium
based on processing received data, underwriting, and generating
a policy is similar to ideas found to abstract by the courts as in
managing an insurance policy (Bancorp); generating rule-based
tasks for processing an insurance claim (Accenture);
administration of financial accounts (Intellectual Ventures Iv.
Capital One). The concept is a fundamental economic practice
long prevalent in our system of commerce, which is in the
realm of abstract ideas identified by the Supreme Court.
Additionally, the claim is directed to the abstract idea of using
categories to organize, store, and transmit information
(Cybeifone) and organizing information through mathematical
correlations (Digitech) as described by storing, receiving,
determining based on rates, face value amounts, premium
amounts, generating policy illustrations for each policy and
displaying steps in claims 1, 8, 15 and 20.
Final Act. 8-9.
Challenging the Examiner's determination under Alice step one,
Appellants first argue:
Claim 1 recites a data processing system that performs physical
steps such as "generating and displaying." A claim is not
directed to an abstract idea if it recites a physical process such
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as transforming data. See PNC Bank v. Secure Axcess, LLC,
CBM2014-00100, Paper 10, p. 20 (Board Sept. 9, 2014). Here,
generating and displaying illustrations is both a physical step
and a step involving data transformation. As a result, the claims
are not directed to an abstract idea.
Appeal Br. 9; Reply Br. 2.
We are unpersuaded by Appellants' argument because we see no
parallel between claim 1 and the claim in PNC Bank. There, the claim
recited "transforming, at an authentication host computer, received data by
inserting an authenticity key to create formatted data." PNC Bank,
CBM2014-00100, Paper 10, p. 5. In PNC Bank, the panel determined that
"[ c ]laim 1, as a whole, relates to a computer-implemented method to
transform data in a particular manner-by inserting an authenticity key to
create formatted data, enabling a particular type of computer file to be
located and from which an authenticity stamp is retrieved." Id. at 20.
Appellants have not persuasively advanced any arguments that demonstrate
such a transformation from the language of claim 1.
Here, the recitation of generating and displaying on the user device
illustrations of each of the policies in the context of claim 1 is merely the
result of data collection and analysis. As the court explained in Electric
Power, claims involving data collection, analysis, and display often are
directed to abstract ideas. Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d
1350, 1353 (Fed. Cir. 2016) (Holding that '"collecting infonnation, analyzing
it, and displaying certain results of the collection and analysis" are "a
familiar class of claims 'directed to' a patent ineligible concept."); see
also In re TL! Commc 'ns LLC Patent Litig., 823 F.3d 607, 611 (Fed. Cir.
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2016); FairWarning IP, LLC v. Iatric Sys., Inc., 839 F.3d 1089, 1093----94
(Fed. Cir. 2016).
Next, Appellants argue that "[h Jere like in McRO, 3 the claims are not
directed to 'a system and method for processing data related to life insurance
policies' because the claims recite a specific set of steps to determine face
value amounts and premium amounts." Appeal Br. 9. According to
Appellants, the Examiner is oversimplifying the claims by looking at them
generally and failing to account for the specific requirements of the claims.
Id.; Reply Br. 2. We disagree that the Examiner has oversimpliflied the
claims.
Representative claim 1 4 is drawn to a system for processing data
related to life insurance policies in which data is collected, analyzed, and the
result of the collection and analysis is displayed. Appellants'
characterization of the claimed invention as "a series of steps to determine
face value and premium amounts" is consistent with and encompassed
within the Examiner's broader articulation as a system and method for
processing data related to life insurance policies and, thus, unpersuasive of
Examiner error. "An abstract idea can generally be described at different
levels of abstraction." Apple, Inc. v. Ameranth, Inc., 842 F.3d 1229, 1240-
41 (Fed. Cir. 2016). Indeed, an integral part of managing an insurance
3 McRO, Inc. v. Bandai Namco Games Am. Inc., 837 F.3d 1299 (Fed. Cir.
2016).
4 Appellants argue all the pending claims as a group. See Appeal Br. 9-10.
We select independent claim 1 as representative for this group. Thus, the
remaining claims stand or fall with claim 1. 37 C.F.R. § 4I.37(c)(l)(iv).
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policy is processing data related to the policy for determining face value and
premium amounts to be paid by a policy holder.
We are not apprised of anything in the claim supported by the
Specification that is sufficient to remove claim 1 from the class of subject
matter ineligible for patenting. See Appeal Br. 9--10; Reply Br. 2-3. Claim
1, unlike claims found non-abstract in prior cases like 1'1cRO and Enfish, 5
uses generic computer technology to perfmm data collection and analysis,
and does not recite an improvement to a particular computer technology. In
McRO, the Federal Circuit addressed claims directed to "[a] method for
automatically animating lip synchronization and facial expression of three-
dimensional characters" McRO, 837 F.3d at 1307. The court reviewed the
specification of the patent at issue and found that, rather than invoking the
computer merely as a tool, "[c]laim 1 of the [asserted] patent is focused on a
specific asserted improvement in computer animation." Id. at 1314. The
court found that the "plain focus of the claims" there was on an
improvement to computer functionality itself, not on economic or other tasks
for which a computer is used in its ordinary capacity. In Enfzsh, the "plain
focus of the claims" was on an improvement to computer functionality itself,
a self-referential table for a computer database designed to improve the way
a computer carries out its basic functions of storing and retrieving data.
Enfzsh, 822 F.3d at 1335-36.
There is a fundamental difference between computer functionality
improvements, on the one hand, and uses of existing computers as tools to
perform a particular task, on the other. Unlike McRO and Enfzsh, which
5 Enfzsh, LLC v. Microsoft Corp., 822 F.3d 1327 (Fed. Cir. 2016).
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focused on a specific means or method that improved the relevant
technology, claim 1 is directed to a result or effect that itself is the abstract
idea by merely invoking generic processes and machinery. Contrary to
Appellants' allegation that the Examiner's approach generalizes the claims,
we agree with the Examiner that the focus here is not on improving any
technology, but on using generic computer operations, in which a computer
is used in its ordinary capacity, for processing data related to an insurance
policy to determine face value and premium amount to be paid. Managing
or administering an insurance policy or financial asset by processing related
data is a fundamental economic and business practice long prevalent in the
financial services field, and as such, squarely within the realm of abstract
ideas.
Under Alice step two, Appellants argue:
[E]ven if the claims are directed to an abstract idea, the claims
include significantly more than an abstract idea because the
claims improve a technology or technical field. For example,
the claims recite "generate and display on the user accessible
device illustrations for each of the policies." This feature is an
improvement over prior art data processing systems because
prior art data processing systems did not even have types these
illustrations available for display. Because the claimed data
processing system includes additional, useful functionality that
prior art data processing systems did not perform, the claimed
feature improves a technology or technical field.
Appeal Br. 10.
This argument is unpersuasive because the Examiner explicitly
included "generating policy illustrations for each policy and displaying steps
in claims 1, 8, 15 and 20" as part of the abstract idea under Alice step one.
See supra; see also Ans. 8. Appellants' reliance on these limitations as
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significantly more than the identified abstract idea is misplaced, because
these features had been excluded from the Examiner's analysis under Alice
step two, and, therefore, cannot demonstrate reversible error in the rejection.
Accordingly, we are not persuaded for the reasons set forth above that
the Examiner erred in rejecting independent claim 1 under 35 U.S.C. § 101.
Therefore, we sustain the rejection of claim 1, including claims 2-23, which
fall with claim 1.
DECISION
The rejection of claims 1-23 under 35 U.S.C. § 101 is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 3 7 C.F .R. § 1.13 6( a )(1 )(iv).
AFFIRMED
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