Ex Parte Mahaney et al

Board of Patent Appeals and Interferences

Jan 10, 2012

11051986 (B.P.A.I. Jan. 10, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte JAMES I. MAHANEY and
PETER C. CARLSON
____________

Appeal 2010-002444
Application 11/051,986
Technology Center 3600
____________

Before MURRIEL E. CRAWFORD, HUBERT C. LORIN, and
BIBHU R. MOHANTY, Administrative Patent Judges.

LORIN, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2010-002444
Application 11/051,986

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STATEMENT OF THE CASE
James I. Mahaney, et al. (Appellants) seek our review under 35 U.S.C.
§ 134 (2002) of the final rejection of claims 12-21. We have jurisdiction
under 35 U.S.C. § 6(b) (2002).

SUMMARY OF DECISION
We AFFIRM.1

THE INVENTION
The invention relates to “a method for maximizing retirement income
using financial bridge products and deferred Social Security income.”
Specification 1:6-7.
Claim 12, reproduced below, is illustrative of the subject matter on
appeal.
12. A financial planning system for maximizing retirement income for
an individual who takes phased retirement, comprising:
one or more computer systems; and
a financial planning application embodied on a computer
readable medium and operable, when executed by the one or more
computer systems, to:
receive a target income for a retirement period, the retirement
period comprising a first phase having a first start date and a second
phase having a second start date after the first start date;

1 Our decision will make reference to the Appellants’ Appeal Brief (“App.
Br.,” filed Jun. 8, 2009) and Reply Brief (“Reply Br.,” filed Nov. 4, 2009),
and the Examiner’s Answer (“Answer,” mailed Sep. 15, 2009).
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receive a partial retirement age associated with the first phase
start date and a deferred social security age associated with the second
phase start date;
receive an expected part-time income for the first phase;
determine a deferred social security income for the second
phase, based on the deferred social security age; and
based on the expected part-time income and the deferred social
security income, generate a payment plan comprising payments
combinable with the expected part-time income sufficient to meet the
target income for the first phase, and payments combinable with the
deferred social security income sufficient to meet the target income
for the second phase.

THE REJECTIONS
The Examiner relies upon the following as evidence of
unpatentability:
Golden US 5,933,815 Aug. 3, 1999
Monks, “Labour to Make it Easier to Work After Retirement,” Dec.
15, 2002, Sunday Times. [Monks]
Simon, “How to Be Sure You Never Go Broke,” Oct. 1996, Money.
[Simon]
The following rejections are before us for review:
1. Claims 12-21 are rejected under 35 U.S.C. §112, first paragraph, as
failing to comply with the written description requirement.
2. Claims 12-16 are rejected under 35 U.S.C. §103(a) as being
unpatentable over Golden and Simon.
3. Claims 17-21 are rejected under 35 U.S.C. §103(a) as being
unpatentable over Golden, Simon, and Monks.
Appeal 2010-002444
Application 11/051,986

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ISSUES
Did the Examiner err in rejecting claims 12-21 under 35 U.S.C. §112,
first paragraph, as failing to comply with the written description
requirement?
Did the Examiner err in rejecting claims 12-21 under 35 U.S.C.
§103(a) over the cited prior art combinations?

FINDINGS OF FACT
We rely on the Examiner’s factual findings stated in the Answer.
Additional findings of fact may appear in the Analysis below.

ANALYSIS
The rejection of claims 12-21 under 35 U.S.C. §112, first paragraph, as
failing to comply with the written description requirement.
We will affirm this rejection.
The Examiner has rejected the claims because certain later-added
subject matter not described in the specification in such a way as to
reasonably convey to one skilled in the relevant art that the inventors, at the
time the application was filed, had possession of the claimed invention.
Answer 3. The limitations at issue are:
 “generating payment plan” (claim 12)
 “the financial planning application is further operable to provide the
payment plan to the individual” (claim 13)
 “the payment plan” (claim 14)
 “generating a pension plan structure” (claim 17)
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 “the financial planning application is further operable to provide the
pension plan structure to the individual” (claim 18)
 “the pension plan structure” (claim 19).
The Appellants state that the Examiner alleges that “payment plan”
and “pension plan structure” are not supported in the original disclosure.
App. Br. 8. That does not accurately reflect the full scope of the issue. See
supra.
The Appellants argue that “payment plan” and “pension plan
structure” are “expressly, implicitly, or inherently supported” in the original
disclosure. App. Br. 8. First, there is clearly no “express” support for this
subject matter. The Appellants point to no disclosure that expressly
discloses it and we can find none.
As to whether the original disclosure “implicitly, or inherently”
discloses a “payment plan” and “pension plan structure,” we have reviewed
the various figures and passages cited by the Appellants in support thereof.
App. Br. 8-10. We are not persuaded that the Specification, as originally
filed, provides such implicit or inherent disclosure that one can reasonably
say that what is claimed and what was originally disclosed are the same.
“What is claimed by the patent application must be the same as what is
disclosed in the specification; otherwise the patent should not issue.” Festo
Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co., 535 U.S. 722, 736 (2002).
Rather, the Appellants are making a case for finding that the later
claimed subject matter would have been “obvious” to one of ordinary skill in
the art reading the original disclosure. For example, the Appellants direct
our attention to Figures 12a and 12b to support their position that the
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Specification discloses a “payment plan” as claimed. App. Br. 9. The
Figures do not show a payment plan. They show projected income
supplemented from various sources during a phased retirement period. See
associated disclosure at pp. 9 and 30-31 of the Specification. It is true that
the Specification states that “the present invention can be used prior to a
client’s retirement as a planning tool, wherein various income scenarios are
modeled in accordance with the invention” (Specification 32), but there is no
disclosure a payment plan. While it may be obvious to form a payment plan
when planning a client’s financial needs during retirement given the
information in the Specification, “[o]ne shows that one is “in possession” of
the invention by describing the invention, with all its claimed limitations, not
that which makes it obvious.” Lockwood v. Am. Airlines, Inc., 107 F.3d
1565, 1572 (Fed. Cir. 1997). “Obviousness simply is not enough; the subject
matter must be disclosed to establish possession.” PowerOasis, Inc. v. T-
Mobile USA, Inc. 522 F.3d 1299, 1310 (Fed. Cir. 2008). We reach the same
conclusion with respect t to the Appellants assertions that the Specification
discloses “implicitly, or inherently” a “pension plan structure.” Here, too,
the Appellants direct our attention, in part, to Figures 12a and 12b. See App.
Br. 9. We see nothing there representing a “structure” for a pension plan.
Again, it may be obvious to form a pension plan structure when planning a
client’s financial needs during retirement given the information in the
Specification, but compliance with the written description requirement of the
first paragraph of § 112 requires more: the subject matter must be disclosed
to establish possession.

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The rejection of claims 12-16 under 35 U.S.C. §103(a) as being
unpatentable over Golden and Simon.
One of the disputes is over whether Golden discloses the claim
limitation “receive a partial retirement age associated with the first phase
start date and a deferred social security age associated with the second phase
start date” (claim 12). The Examiner found this disclosed at col. 2 ll. 49-52
and col. 8 ll. 40-47 of Golden. Answer 5. The Appellants challenge that
finding. App. Br. 11.
The col. 2 ll. 49-52 passage is reproduced below:
The first period begins on a given date and has a definite duration and
the second period begins sometime after the end of the first period and
extends at least for as long as the person is alive.

The col. 8 ll. 40-47 passage is reproduced below:
This data includes the length of the desired certain period, the length
of any desired deferral period, and the type of payment plan desired,
i.e., whether the client wishes to receive level payments or increasing
payments. The broker also inputs the client's age and gender, and if
the client desires a joint LCA, the age and gender of the joint
annuitant and the percentage of LCA payments to be made to the
survivor.
These passages describe two periods of certain duration and data
which may include a deferral period. But we do not see there any mention
of “a partial retirement age associated with the first phase start date” and “a
deferred social security age associated with the second phase start date” as
claimed.
Accordingly, we agree with the Appellants. A prima facie case of
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obviousness for the claimed subject matter over the cited prior art
combination has not been established in the first instance.

The rejection of claims 17-21 under 35 U.S.C. §103(a) as being
unpatentable over Golden, Simon, and Monks.
The same claim limitation at issue discussed above appears in system
claim 17 (and dependent claims 18-21), albeit in terms of a functional
limitation. The Examiner’s position is the same. See Answer 7.
For the same reasons that cause us to reverse the decision to reject
claim 12 (and dependent claims 13-16) apply here as well.

CONCLUSIONS
The rejection of claims 12-21 under 35 U.S.C. §112, first paragraph,
as failing to comply with the written description requirement is affirmed.

The rejection of claims 12-16 under 35 U.S.C. §103(a) as being
unpatentable over Golden and Simon is reversed.
The rejection of claims 17-21 under 35 U.S.C. §103(a) as being
unpatentable over Golden, Simon, and Monks is reversed.

DECISION
The decision of the Examiner to reject claims 12-21 is affirmed.

AFFIRMED

Appeal 2010-002444
Application 11/051,986

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MP