Ex Parte Kravitz et al

Patent Trial and Appeal Board

Jun 7, 2018

14221495 (P.T.A.B. Jun. 7, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/221,495 03/21/2014
61834 7590
Meister Seelig & Fein LLP
125 Park Avenue
7th Floor
NEW YORK, NY 10017
06/11/2018
FIRST NAMED INVENTOR
Jodi L. Kravitz
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.
6153-036CON 9669
EXAMINER
ROBINSON, KITO R
ART UNIT PAPER NUMBER
3695
NOTIFICATION DATE DELIVERY MODE
06/11/2018 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):
patents@msf-law.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JODI L. KRAVITZ and WILLIAM FORMON
Appeal2017-002143
Application 14/221,495
Technology Center 3600
Before JEAN R. HOMERE, CAROLYN D. THOMAS, and BRADLEY W.
BAUMEISTER, Administrative Patent Judges.
HOMERE, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from a Final Rejection of
claims 1-15, which constitute all claims pending in this application. 1 App.
Br. 1. We have jurisdiction under 35 U.S.C. § 6(b ).
We affirm.
1 Appellants identify the real party in interest as New York Life Insurance
Company ofNew York. App. Br. 2.
Appeal2017-002143
Application 14/221,495
Introduction
According to Appellants, the claimed subject matter relates to a
method and system for providing income annuities with flexible premium
payments. Spec. i-fi-13, 12. In particular, upon receiving on different dates
premium payments for an income annuity from an investor, the system
computationally aggregates income annuity benefits associated therewith so
as to disburse payments to a payee at selected disbursement dates. Id. i-f 12.
Representative Claim
Independent claim 1 is representative, and reads as follows:
1. A computerized method for providing data access and
management from a computer to a processor of funds and
payments associated with a flexible income annuity
compnsmg:
receiving, via a processing device, a log-in request from a
computing device to access an account associated with the
income annuity;
electronically identifying a plurality of premium
payments for the income annuity by the processing device
processing electronic transfer of funds from an investor to be
applied to the account associated with the income annuity;
providing, via the processing device, access to the
account to elect of each of the plurality of premium
payments on at least one of variable dates and in variable
amounts from the computing device after origination of the
income annuity, each of the plurality of premium payments
generates an independent income benefit selected from the
computing device for the income annuity;
electronically computationally aggregating, via the
processing device, independent income benefits associated
with the plurality of premium payments received on the at
least one of variable dates and variable amounts from the
computing device after origination of the income annuity,
the independent income benefits based at least in part on one
or more disbursement options;
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Application 14/221,495
providing, via the processing device, access to the
account to select the one or more disbursement options from
the computing device after origination of the income
annuity; and
electronically calculating, via the processing device,
income payments under the income annuity based on the
aggregated independent income benefits.
Rejections on Appeal
Claims 1-15 stand rejected under 35 U.S.C. § 101 as being directed to
patent ineligible subject matter. Final Act. 2-3.
Claims 1-15 are rejected on the ground of nonstatutory double
patenting as being unpatentable over claims 1-46 of US Patent No.
8,706,595 B2. Final Act. 4--5. 2
ANALYSIS
We consider Appellants' arguments seriatim, as they are presented in
the Appeal Brief, pages 5-11, and the Reply Brief, pages 2-13. 3
Patent Ineligibility Subject Matter Rejection
Appellants argue the Examiner erred in concluding that claims 1-15
are directed to the abstract idea of "access and management of funds and
payments." App. Br. 6. In particular, Appellants argue the Examiner
2 Because Appellants do not appeal this rejection (see App. Br.; Reply Br.),
we affirm the rejection proforma.
3 Rather than reiterate all the arguments of Appellants and all the Examiner's
findings, we refer to the Appeal Brief (filed August 22, 2016) ("App. Br."),
the Reply Brief (filed December 12, 2016) ("Reply Br."), and the Answer
(mailed October 4, 2016) ("Ans.") for the respective details. We have
considered in this Decision only those arguments Appellants actually raised
in the Briefs. Any other arguments Appellants could have made but chose
not to make in the Briefs are deemed to be waived. See 37 C.F.R.
§ 41.37(c)(l)(iv) (2012).
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Application 14/221,495
mischaracterized the claims to arrive at the abstract idea conclusion. Id. at 7
(citing Enfish, LLC v. Microsoft Corp., 822 F.3d 1327 (Fed. Cir. 2016)
(hereinafter referred to as "Enfzsh"). According to Appellants, because the
Examiner opts to characterize the claims generally, as opposed to analyzing
the specific limitations thereof, the Examiner improperly concludes that the
claims are directed to "simply the organization and comparison of data
which can be performed mentally and is an idea of itself." Id. at 6. Further,
Appellants argue that because "the claims are necessarily rooted in
computer technology to overcome a problem specifically arising in
electronic online data access and computational analytics associated
with annuities," they are patent-eligible. Id. at 9. Furthermore, Appellants
argue that the Examiner fails to explain why the claimed elements in
combination do not amount to significantly more than the abstract idea. Id.
at 11-12. Appellants assert that the claims recite "a detailed process or
system that includes inventive concept that goes beyond simply 'receiving,
processing, and transmitting information, performing repetitive calculations
and electronic recordkeeping,"' (Id. at 12), adds meaningful limits on an
account access associated with income annuity, and further adds
computational aggregation of independent income benefits on variable dates
and variable amount. Id. at 13-14. These arguments are not persuasive.
The U.S. Supreme Court provides a two-step test for determining
whether a claim is directed to patent-eligible subject matter under 35 U.S.C.
§ 101. 4 In the first step, we determine whether the claims are directed to one
or more judicial exceptions (i.e., law of nature, natural phenomenon, and
abstract ideas) to the four statutory categories of invention. Alice Corp., 134
4 Alice Corp. Pty. Ltd. v. CLS Bankint'l, c, 2354 (2014).
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Application 14/221,495
S. Ct. 2347, 2355 (citing Mayo Collaborative Servs. v. Prometheus Labs.,
Inc., 566 U.S. 66 (2012)). In the second step, we "consider the elements of
each claim both individually and 'as an ordered combination' to determine
whether the additional elements 'transform the nature of the claim' into a
patent-eligible application." Id. (citing Mayo, 566 U.S. at 78-79). In other
words, the second step is to "search for an 'inventive concept'-i.e., an
element or combination of elements that is 'sufficient to ensure that the
patent in practice amounts to significantly more than a patent upon the
[ineligible concept] itself."' Id. (alteration in original) (citing Mayo, 566
U.S. at 72-73).
At the outset, we note Appellants' acknowledgement that the field of
the claimed subject matter pertains to insurance and income annuities. App.
Br. 2, Spec. i-f 3. We, thus, echo the Examiner's conclusion that the claims
are directed to the abstract idea of "managing income annuity (i.e.
transactions), creating contractual relations in the form of annuity benefits,
and managing settlement risk," which are all longstanding commercial
practices (i.e. organizing human activity). Ans. 4.
Further, we do not agree with Appellants that the claimed income
annuity management is necessarily rooted in the computer technology, and
that the recited steps cannot be performed through the use of human
activities given enough time. App. Br. 7. The claims do not solve an
"internet-type centric problem" by using technology to perform a specific
function, which albeit related to the broader purpose of the income annuities,
is necessarily rooted in computer technology. DDR Holdings, LLC v.
Hotels.com, L.P., 773 F.3d 1245 (Fed. Cir. 2014)). As correctly noted by
the Examiner, unlike the claims in Enfzsh, the present claims are not focused
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on improving the use of computers to carry out the basic functions of storing
and retrieving data. Ans. 4. Instead, the claims merely use the computer for
the purpose of performing routine human activities. Although processing
premium payments received at particular dates to generate aggregated
income benefits to be disbursed after origination of the income annuity
entails tedious transactions, they are pre-Internet activities conventionally
carried out by humans using pen and paper in the course of allocating returns
and benefits within an income annuity, and other similar benefit activities in
the business environment. See, e.g., Elec. Power Grp. v. Alstom S.A., 830
F.3d 1350, 1353 (Fed. Cir. 2016) (claims directed to collection,
manipulation, and display of data); Intellectual Ventures I LLC v. Capital
One Bank (USA), 792 F.3d 1363, 1370 (Fed. Cir. 2015) (customizing
information and presenting it to users based on particular characteristics);
Content Extraction and Transmission LLC v. Wells Fargo Bank, National
Ass 'n, 776 F.3d 1343, 1347 (Fed. Cir. 2014) ("collecting data, ...
recognizing certain data within the collected data set, and ... storing that
recognized data in a memory").
That these claims are directed to an abstract idea is confirmed by the
fact that the claimed method of providing income payments based on
aggregated income benefits associated with an income annuity is of the type
that could be performed manually. See CyberSource Corp. v. Retail
Decisions, Inc., 654 F.3d 1366, 1373 (Fed. Cir. 2011) ("[A] method that can
be performed by human thought alone is merely an abstract idea and is not
patent-eligible under§ 101."). Prior to the Internet, such activities became
computerized in database systems with the assistance of human
administrators to facilitate the management of such data. Although the
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Application 14/221,495
claimed subject matter provides an interface to facilitate the different
transactions associated with providing income payments associated with the
income annuity, these functions do not go beyond those of a general purpose
computer for merely receiving, identifying, accessing, aggregating, and
processing/ calculating information.
Furthermore, we agree with the Examiner that the combination of the
claimed elements does not amount to significantly more than the judicial
exception because they merely recite certain functions (providing, receiving,
calculating and transmitting the income annuity information) performed by a
general processing device at a high level. Ans. 6. We agree with the
Examiner that they "do not invoke any inventive programming and do not
require any nonconventional computer, network, or display components, or
even a non-conventional and non-generic arrangement of known,
conventional pieces, but merely require the claimed premium payment
collection, identifying premium payments, aggregating income benefits,
providing access to the account information and calculating income
payments on a set of generic computer components." Id. at 6-7.
Hence, we agree with the Examiner that the elements of claim 1 do
not amount to "significantly more" than the abstract idea of using a
computer to facilitate providing to a payee income payments associated with
an income annuity or that they do not add any meaningful limitations
beyond generally linking the abstract idea to the particular technological
environment. Id. 5 Accordingly, we affirm the Examiner's patent ineligible
5 Considerations for determining whether a claim with additional elements
amounts to "significantly more" than the judicial exception itself include
improvements to another technology or technical field (Alice Corp., 134
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subject matter rejection of claim 1, as well as claims 2-15, which were
rejected on the same basis.
DECISION
For the above reasons, we affirm Examiner's rejection of claims
1-15.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED
S. Ct. at 2359 (citing Diamond v. Diehr, 450 U.S. 175, 177-78 (1981)));
adding a specific limitation other than what is well-understood, routine, and
conventional in the field, or adding unconventional steps that confine the
claim to a particular useful application (Mayo, 566 U.S. at 82, 87); or other
meaningful limitations beyond generally linking the use of the judicial
exception to a particular technological environment (Alice Corp., 134 S. Ct.
at 2360). See, e.g., Intellectual Ventures I, 792 F.3d at 1370 ("[M]erely
adding computer functionality to increase the speed or efficiency of the
process does not confer patent eligibility on an otherwise abstract idea.").
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