Ex Parte Moore et al

Board of Patent Appeals and Interferences

Sep 28, 2010

10120296 (B.P.A.I. Sep. 28, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P Alexandria, 0 Box 1450 Virginia 22313- 1450
www uspto gov
22850 7590 09/30/20 10
OBLON, SPIVAK, MCCLELLAND MAIER & NEUSTADT, L.L.P.
APPLICATION NO.
EXAMINER
1940 DUKE STREET PORTER, RACHEL L
101120,296 041 1012002 William E. Moore 272613US28 9741
FILING DATE
ALEXANDRIA. VA 223 14 I ARTUNIT I PAPERNUMBER I
FIRST NAMED INVENTOR
Please find below andlor attached an Office communication concerning this application or proceeding.
ATTORNEY DOCKET NO.
NOTIFICATION DATE
The time period for reply, if any, is set in the attached communication.
CONFIRMATION NO.
DELIVERY MODE
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
09/30/2010 ELECTRONIC
patentdocket @ oblon.com
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PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
Exparte WILLIAM E. MOORE and
THOMAS D. McCARTHY
Appeal 2009-005 163
Application 1011 20,296
Technology Center 3600
Before LINDA E. HORNER, HUBERT C. LORIN, and
ANTON W. FETTING, Administrative Patent Judges.
LORIN, Administrative Patent Judge.
DECISION ON APPEAL'
An oral hearing was held on Oct. 22, 2009.
1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. 5 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. 5 41.52, begins to run from the "MAIL DATE"
(paper delivery mode) or the "NOTIFICATION DATE" (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.
Appeal 2009-005 163
Application 1011 20,296
STATEMENT OF THE CASE
William E. Moore, et al. (Appellants) seek our review under 35
U.S.C. 5 134 of the final rejection of claims 1-20. We have jurisdiction
under 35 U.S.C. 5 6(b) (2002).
SUMMARY OF DECISION
We AFFIRM-IN-PART. We affirm the rejection under 35 U.S.C.
5 103 of claim 17. We reverse the rejections under 35 U.S.C. 5 103 of
claims 1-16 and 20 but, pursuant to our authority under 37 C.F.R. 5
41.50(b), enter the rejections under 35 U.S.C. 5 103 of claims 1-16 and 20 as
NEW GROUNDS OF REJECTION. We reverse the rejection of claims 18
and 19 under 5 103 pro forma and affirm the rejection of claim 19 under 35
U.S.C. 5 112, second paragraph. We further enter NEW GROUNDS OF
REJECTION of claim 18 under 35 U.S.C. 5 1 12, second paragraph, and of
claims 1-7, 13, 15, 16, 19, and20 under 35 U.S.C. 5 1 0 1 . ~
THE INVENTION
The invention "relates to underwriting of life insurance policies and in
particular, to a method and system for receiving facultative case summary
information over a network as part of a reinsurance transaction."
Specification 1 : 6- 8.
2 Our decision will make reference to the Appellants' Appeal Brief ("App.
Br.," filed Jan. 28, 2008) and Reply Brief ("Reply Br.," filed Jun. 3, 2008),
and the Examiner's Answer ("Answer," mailed Apr. 3, 2008).
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Application 1011 20,296
Claim 1, reproduced below, is illustrative of the subject matter on
appeal.
1. A method for processing a life insurance facultative case summary
submission over a network between a ceding company and a
reinsurer, comprising the steps of:
receiving from the ceding company, over the network, the
facultative case summary submission, wherein the facultative case
summary submission is a summary of a corresponding case history of
a facultative case; and
rendering a facultative decision, by the reinsurer, whether to
provide reinsurance for the facultative case based on the received
facultative case summary submission, the facultative case summary
submission including risk factor information for evaluating a risk in
providing reinsurance for the facultative case.
THE REJECTIONS
The Examiner relies upon the following as evidence of
unpatentability :
Klaus US 7,080,020 B1 Jul. 18, 2006
Reader US 200210143583 A1 Oct. 3, 2002
DeTore US 4,975,840 Dec. 4, 1990
The following rejections are before us for review:
1. Claim 19 is rejected under 35 U.S.C. 5 112, second paragraph, as
being indefinite for failing to particularly point out and distinctly
claim the subject matter which applicants regard as the invention.
2. Claims 1-4, 6-10, and 12-20 are rejected under 35 U.S.C. 5 103(a) as
being unpatentable over Klaus and Reader.
3. Claims 5 and 1 1 are rejected under 35 U.S.C. 5 103(a) as being
unpatentable over Klaus, Reader, and DeTore.
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ISSUES
Does the use of the term "sufficient" in claim 19 render the claim
indefinite under the second paragraph of 5 112?
Are the rejections under 35 U.S.C. 5 103 of claims 1-17 and 20
sustainable?
Does the Specification disclose an algorithm corresponding to the
functions recited in the means-plus-function limitations of claim 18 such that
claim 18 particularly points out and distinctly claims the subject matter
which the Appellants regard as the invention?
Do claims 1-7, 13, 15, 16, 19, and 20 recite abstract ideas and, if so,
constitute nonstatutory subject matter under 35 U.S.C. 5 101?
FINDINGS OF FACT
We rely on the Examiner's factual findings stated in the Answer
(Answer 2- 12).
ANALYSIS
The rejection of claim 19 under 35 U.S.C. § 112, second paragraph.
Claim 19 reads:
19. The method of claim 1, wherein the step of receiving from the
ceding company the facultative case summary submission, comprises:
receiving from the ceding company the facultative case
summary submission including basic data on an individual life that is
suficient for the reinsurer to set up a facultative case.
The Examiner argued that the term "sufficient" is a relative term not
defined in the claim and for which the Specification provides no standard for
ascertaining its scope. Answer 3. The Appellants disagreed, citing to page
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Application 1011 20,296
7,ll. 11-14, of the Specification where it states: "a new Initial Summarized
Data Capture screen is generated in which the ceding company is prompted
to provide enough basic data on the individual life to allow the reinsurers to
set-up the facultative case and run a Medical Information Bureau (MIB) and
alpha search." App. Br. 5. The Appellants also argued that "one of ordinary
skill in the art would recognize what basic data on an individual life is
sufficient for a reinsurer to set up a facultative case." App. Br. 5. The
Examiner responded by arguing that "it should be noted that the passage
provided by the Appellant does not describe the process claimed by the
appellant. The cited passage describes running a (Medical Information
Bureau (MIB) and alpha) search." Answer 13. The Examiner also argued
that "[clontrary to Appellant's arguments, the term 'sufficient' data is vague
and indefinite as it apparently carries different meanings to those within the
art (e.g. different reinsurers)." Answer 13. The Appellants replied that the
passage at page 7,ll. 10-21 is directed to the process of claim 19. Reply. Br.
2. The Appellants also replied that "sufficient" carries different meanings to
those in the art, further arguing that "it is noted that Appellants' specification
discloses that the submission of additional papers and/or supplemental
information is separate from the submission of a new case summary
information." Reply Br. 3.
We have reviewed the record and find that we are in agreement with
the Examiner.
The claim limitation at issue calls for receiving a facultative case
summary submission that is suficient for a reinsurer to set up a facultative
case. One cannot know from reading the claim alone what makes a
facultative case summary submission suficient for a reinsurer to set up a
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facultative case. Accordingly, we look to the written description for
guidance to ascertain the scope of the claim.
Turning to the Specification, we can find no objective criteria to
determine whether a facultative case summary submission is suficient for a
reinsurer to set up a facultative case. Page 7,ll. 11-14, of the Specification
to which the Appellants refer reads "MIB is a non-profit clearing house that
all insurers and reinsurers use on to determine whether an individual has a
pre-existing adverse insurance history." It is part of larger passage
describing obtaining information for new case summary information for an
individual case. The passage describes searching for data on an individual
and data entry fields in a screen for capturing information and pertinent risk
factor information. We see nothing in this passage about how to determine
if a facultative case summary submission is suficient for a reinsurer to set up
a facultative case. The information on which to make such a determination
is apparently available but one of ordinary skill reading the claim in light of
the Specification would be given no insight in how to determine if that
information is suficient for a reinsurer to set up a facultative case.
Given no objective criteria, determining whether a facultative case
summary submission is suficient for a reinsurer to set up a facultative case
becomes, in effect, a purely subjective exercise. There is no standard for
measuring the scope of claim 19. A determination that the submission is
sufficient cannot be objectively verified and depends on a particular person's
unfettered, subjective opinion. For that reason, claim 19 is indefinite. See
Datarnize LLC v. Plurntree Software Znc., 417 F.3d 1342 (Fed. Cir. 2005).
Appeal 2009-005 163
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The rejection of claims 1-4, 6-1 0, and 12-20 under 35 U.S. C. $1 03(a) as
being unpatentable over Klaus and Reader.
Claims 1-4, 6-10, 12-16, and 20
We note that the Appellants argued claims 1-4, 6- 10, 12- 16, and 20 as
a group (App. Br. 6-8). We take claim 1 as representative.
The Examiner argues that Klaus shows all the claimed limitations but
for a "facultative case summary submission is a summary of a corresponding
case history of a facultative case" (claim 1) and "rendering a facultative
decision, by the reinsurer, whether to provide reinsurance for the facultative
case based on the received facultative case summary submission, the
facultative case summary submission including risk factor information for
evaluating a risk in providing reinsurance for the facultative case" (claim 1).
Reader is relied upon as showing these limitations. Answer 4-5.
Specifically, the Examiner found that Klaus (citing col. 3,ll. 36-60;
col. 5 , l . 53-col. 6 , l . 11; Figs. 5-6) discloses receiving from a ceding
company a facultative case summary submission over a network and that
Klaus (citing col. 4,ll. 15-30; Figs. 7 and 10) discloses rendering a
facultative decision based on the received facultative case summary
submission. Answer 4. The Appellants do not dispute the Examiner's
characterization of what Klaus discloses. Accordingly, we take as accepted
that facultative case summary submissions are disclosed, as are receiving
them and rendering decisions on them.
The Appellants dispute only that Reader shows the information set
forth in the claim for the facultative case summary submission; that is,
receiving a facultative case summary submission which "is a summary of a
corresponding case history of a facultative case" and rendering a decision
based on the facultative case summary submission which "includes risk
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Application 1011 20,296
factor information for evaluating a risk in providing reinsurance for the
facultative case." App. Br. 6-8 and Reply Br. 3-7.
We need not determine whether Reader in fact shows the information
recited in the claim as being contained in a facultative case summary
submission because, even if we assume arguendo Reader does not show the
specific information, the difference is a matter of the content of the
information contained in a facultative case summary submission. The
distinction between the type of content that is contained in the Klaus
submission and that which is required for a submission in accordance with
the claim would be a matter of descriptive material; that is, the descriptive
material contained in a facultative case summary submission.
Patentable weight need not be given to descriptive material absent a
new and unobvious functional relationship between the descriptive material
and performing the steps of the method (here the processing of a facultative
case summary submission over a network). See In re Lowry, 32 F.3d 1579,
1582-83 (Fed. Cir. 1994); In re Ngai, 367 F.3d 1336, 1338 (Fed. Cir. 2004).
In that regard, the Appellants have not come forward with evidence
sufficient to show that performing the process steps over a network as
claimed is altered by the submission having the content as claimed as
opposed to the Klaus submission due the type of information it contains.
Absent such evidence, it is reasonable to conclude that the claim limitations
to the information in the facultative case summary submission, whether as
received or as rendered upon, are descriptive and do not alter how any step
of the claimed method is performed and as such falls under the category of
patentably inconsequential subject matter. See Ex parte Curry, 84 USPQ2d
1272, 1275 (BPAI 2005) (informative), afd, Appeal No. 2006- 1003 (Fed.
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Application 1011 20,296
Cir. 2006) (Rule 36, unpublished) (noting common situations involving
nonfunctional descriptive material include (1) a computer-readable storage
medium that differs from the prior art solely with respect to nonfunctional
descriptive material, such as music or a literary work, encoded on the
medium (2) a computer that differs from the prior art solely with respect to
nonfunctional descriptive material that cannot alter how the machine
functions (i.e., the descriptive material does not reconfigure the computer);
or (3) a process that differs from the prior art only with respect to
nonfunctional descriptive material that cannot alter how the process steps are
to be performed to achieve the utility of the invention). See also id. (noting
that if the prior art suggests storing a song on a disk, merely choosing a
particular song to store on the disk would be presumed to be well within the
level of ordinary skill in the art at the time the invention was made; the
difference between the prior art and the claimed invention is simply a
rearrangement of nonfunctional descriptive material.); Ex parte Nehls, 88
USPQ2d 1883, 1888-89 (BPAI 2008) (precedential) (holding that
descriptive data contained in database was nonfunctional descriptive
material); and, Exparte Mathias, 84 USPQ2d 1276, 1278 (BPAI 2005)
(informative), afd, 191 Fed. Appx. 959 (Fed. Cir. 2006) (Rule 36,
unpublished). Nonfunctional descriptive material cannot render nonobvious
an invention that would have otherwise been obvious. In re Gulack, 703
F.2d 1381, 1385 (Fed. Cir. 1983) (when descriptive material is not
functionally related to the substrate, the descriptive material will not
distinguish the invention from the prior art in terms of patentability).
For the reasons discussed above, we do not find the Appellants' argument
that Reader fails to show the information set forth in the claim for the
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facultative case summary submission persuasive in overcoming the prior art
rejection. We are cognizant that our reasoning departs significantly from that
of the Examiner.
Accordingly, we reverse the rejection of claim 1, and claims 2-4, 6-
10, 12-16, and 20 which depend thereon, and for the foregoing reasons enter
a new ground of rejection of claims 1-4, 6- 10, 12- 16, and 20 under 5 103
over Klaus and Reader under 37 C.F.R. 5 41.50(b).
Claim 17
We will affirm the rejection of claim 17. While the Appellants make
a separate argument for claim 17, the substance of the argument repeats and
relies on the arguments challenging the rejection as it pertains to claim 1.
See App. Br. 9-10. In doing so, the Appellants' argument does not
adequately explain why the Examiner has failed to present a prima facie case
of obviousness for the claimed "system" over the cited prior art disclosures.
The Appellants repeat what the claim recites and then point out that the art
fails to "disclose the facultative case summary submission and rendering
step recited in Claim 1." App. Br. 9. However, unlike method claim 1, claim
17 is an apparatus claim. The Examiner separately addressed claim 17 and
fully explained why the "system" would have been obvious over the cited
prior art combination. See Answer 8-10. The Appellants respond by
pointing to earlier arguments about a step in claim 1. This is not an adequate
argument for overcoming the rejection of claim 17. Cf. Hewlett-Packard
Co. v. Bausch & Lomb Znc., 909 F.2d 1464, 1468 (Fed. Cir. 1990)
("apparatus claims cover what a device is, not what a device does.")
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Application 1011 20,296
Claim 18
The rejection of claim 18 as being unpatentable over Klaus and
Reader is reversed, pro forma, in light of the rejection of claim 18 under 35
U.S.C. 5 112, second paragraph, as being indefinite. See NEW GROUNDS
below. As a result, the rejection over prior art must fall, pro forma, as being
necessarily based on a speculative assumption as to the scope of this claim.
See In re Steele, 305 F.2d 859, 862-63 (CCPA 1962). Our decision in this
regard is based solely on the indefiniteness of the subject matter and does
not reflect on the adequacy of the prior art evidence applied in support of the
rejection.
Claim 19
The 5 103 rejection of claim 19 is reversed, pro forma, because we
have already determined that it is indefinite. See supra. Zbid.
The rejection of claims 5 and 11 under 35 U.S.C. $1 03(a) as being
unpatentable over Klaus, Reader, and DeTore.
Claims 5 and 11 ultimately depend on claim 1. We note that the
Appellants have not separately addressed this rejection. We stand on our
foregoing analysis of the rejection of claim 1, and for the same reasons, we
reverse the rejection of claims 5 and 11 and enter a new ground of rejection
of claim 5 and 1 1 under 5 103 over Klaus and Reader under 37 C.F.R.
5 41.50(b).
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Application 1011 20,296
NEW GROUNDS
The rejection of claim 18 under 35 U.S.C. § 112, second paragraph.
Pursuant 37 C.F.R. 5 41.50(b), we enter a new ground of rejection on
claims 22-24 under 35 U.S.C. 5 112, second paragraph.
Claim 18 recites two means-plus-function limitations as elements of a
"system for processing a life insurance facultative case summary submission
over a network". The second means-plus-function limitation is our focus:
means for rendering a facultative decision, by the reinsurer, based on
the received facultative case summary submission, the facultative case
summary submission including risk factor information for evaluating
a risk in providing reinsurance for the facultative case.
A claim limitation that includes the term "means" is presumed to be
intended to invoke means-plus-function treatment, i. e., treatment under 35
U.S.C. 5 112, sixth paragraph. Rodime PLC v. Seagate Tech., Inc., 174 F.3d
1294, 1302 (Fed. Cir. 1999) ("presumed an applicant advisedly used the
word 'means' to invoke the statutory mandates for means-plus-function
clauses."). Construing means-plus-function claim language in accordance
with 35 U.S.C. 5 112, paragraph 6, is a two step process. Golight Znc. v.
Wal-Mart Stores Znc., 355 F.3d 1327, 1333-34 (Fed. Cir. 2004).
The first step in construing a means-plus-function claim limitation is
to define the particular function in the means-plus-function limitation. For
the means-plus-function limitation at issue, it is:
rendering a facultative decision, by the reinsurer, based on the
received facultative case summary submission, the facultative case
summary submission including risk factor information for evaluating
a risk in providing reinsurance for the facultative case
The second step in construing a means-plus-function claim limitation
is to look to the Specification and identify the corresponding structure for
the function recited in the limitation. Given that the claim as a whole is
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directed to a system involving a "network" and the disclosed structure for
the claimed "system" is a computer system (Specification 5: 11-22), one of
ordinary skill in the art would construe the means-plus-function limitation as
a computer-enabled means-plus-function limitation. "For computer-
implemented means-plus-function claims where the disclosed structure is a
computer programmed to implement an algorithm, 'the disclosed structure is
not the general purpose computer, but rather the special purpose computer
programmed to perform the disclosed algorithm."' Finisar Corp. v. DirecTV
Group, Znc., 523 F.3d 1323, 1340-41 (Fed. Cir. 2008) (quoting WMS
Gaming, Znc. v. Znt'l Game Tech., 184 F.3d 1339, 1349 (Fed. Cir. 1999)).
In that regard, the Appellants cite to p. 3,ll. 17-24; p. 7,ll. 10-27; and,
p. 15,ll. 10-28 of the Specification. App. Br. 4. We have reviewed the
Specification and the disclosure specifically cited by the Appellants but we
have been unable to find an algorithm corresponding to the function at issue.
P. 3,ll. 17-24, briefly summarizes the method of the invention, repeating the
function: "a facultative decision is rendered ... ." P. 7, 11. 10-27, describes
obtaining information for a new case summary information for an individual
case. The passage describes searching for data on an individual, including
pre-existing adverse insurance history, and data entry fields in a screen for
capturing information and pertinent risk factor information. There is no
mention of "rendering a facultative decision" as the function at issue calls
for. P. 15,ll. 10-27, describes the chart 2230 of case summary information
depicted in Fig. 22B and an exemplified screen depicted in Fig. 24. The
chart and display, and the associated discussion are about the submitted
information entered in the screen. There is no mention of "rendering a
facultative decision" as the function at issue calls for.
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Accordingly, we find that the Specification does not disclose an
algorithm corresponding to the function recited in the means-plus-function
limitation at issue. When there is no description of an algorithm in the
Specification to support a computer-enabled means-plus-function limitation
in a claim, the disclosure will be considered inadequate to explain to one of
ordinary skill in the art what is meant by the claim language. Aristocrat
Techs. Australia Party. Ltd. vs. Znt'l Game Tech., 521 F.3d 1328, 1337 (Fed.
Cir. 2008). Accordingly, we reject claim 18 under 35 U.S.C. 5 112, second
paragraph, as failing to particularly point out and distinctly claim the subject
matter which the Appellants regard as the invention.
The rejection of claims 1-7, 13, 15, 16, 19, and 20 under 35 U.S. C. § 101 as
being directed to non-statutory subject matter.
Pursuant to 37 C.F.R. 5 41.50(b), we enter a new ground of rejection
of claims 1-7, 13, 15, 16, 19, and 20 under 35 U.S.C. 5 101 as being directed
to non-statutory subject matter.
The law in the area of patent-eligible subject matter for process claims
has recently been clarified by the Supreme Court in Bilski v. Kappos, 130
S. Ct. 3218, No. 08-964,2010 WL 2555192 (U.S. June 28,2010). The
Court held that the term "process" as used in 5 101, does not categorically
exclude business methods. Id. at *9.
The Court is unaware of any argument that the "ordinary,
contemporary, common meaning," Diehr, supra, at 182, of "method"
excludes business methods. Nor is it clear how far a prohibition on
business patents would reach, and whether it would exclude
technologies for conducting a business more efficiently.
"At the same time, some business method patents raise special
problems in terms of vagueness and suspect validity." Id. (citing eBay Znc.
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v. MercExchange, L.L.C., 547 U.S. 388, 397 (2006)) (Kennedy, J.,
concurring).
In searching for a limiting principle, this Court's precedents on
the unpatentibility of abstract ideas provide useful tools. See infra 12-
15. Indeed, if the Court of Appeals were to succeed in defining a
narrower category or class of patent applications that claim to instruct
how business should be conducted, and then rule that the category is
unpatentable because, for instance, it represents an attempt to patent
abstract ideas, this conclusion might well be in accord with
controlling precedent.
Id.
Claims 1-7, 13, 15, 16, 19, and 20 are drawn to business methods.
Taking claim 1 as representative, the broadest reasonable construction of the
claimed process in light of the Specification as it would be interpreted by
one of ordinary skill in the art is that it provides a series of instructions that
do no more than receive a facultative case summary submission from a
ceding company and render a facultative decision by a reinsurer based on
that submission.. In effect, the claimed process vaguely explains a method
for processing a life insurance facultative case summary submission3
3 The claims give more details about the type of information the facultative
case summary submission must contain. Claim 1 states, for example, that the
facultative case summary submission on which a decision is rendered
"includ[es] risk factor information for evaluating a risk in providing
reinsurance for the facultative case." But, as we have explained supra when
we addressed the $103 rejection, this merely describes the type of
information to be contained in the facultative case summary submission
which is properly characterized as nonfunctional descriptive material and
thus patentably inconsequential to the obviousness determination. We see no
reason why recitations of nonfunctional descriptive material should not be
similarly treated as inconsequential in the process of determining whether
claimed subject matter is statutory under 35 U.S.C. $ 101.
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between a ceding company and a reinsurer involving the ceding company
providing the submission to a reinsurer and the reinsurer rendering a
decision on it.
Accordingly, as claimed, the process provides nothing more than
vague instructions in how to conduct a business, principally how to render a
facultative decision by a reinsurer. That is, the claimed process proposes
following a simple formula for rendering a facultative decision by a
reinsurer: receive a facultative case summary submission from a ceding
company and render a decision on it.
We now turn to the question of whether the claimed process subject
matter is patent-eligible under 35 U.S.C. 5 101. Various factors must be
considered and weighed when analyzing claims as a whole before reaching a
conclusion on patent subject matter eligibility.
The factors relevant in this case are the lack of an expressed recitation
in the claims to a particular machine or transformation and that the claims
are mere statements of a general concept.
There is an implied recitation in the claims of a machine; that is, the
term "network" in the preamble of the claim implies that the claimed process
is conducted in the computer field.
"Generally, the preamble does not limit the claims." Allen Eng ' g
Corp. v. Bartell Zndus., Znc., 299 F.3d 1336, 1346 (Fed. Cir. 2002). It is
arguable that the term "network" in the preamble is "necessary to give life,
meaning, and vitality" to the claim. See Pitney Bowes, Znc. v. Hewlett-
Packard Co., 182 F.3d 1298, 1305 (Fed. Cir. 1999). At best, it implies the
use of a general purpose computer. Given that the body of the claim
provides no further insight into the workings of the computer or "network",
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the term "network" suggests at best a nominal use of a general purpose
computer. See Gottschalk v. Benson, US (1972): "The general purpose
computer is designed to perform operations under many different programs."
A nominal recitation of a general purpose computer is not an express
recitation to aparticular machine. Thus, we do not find that the claimed
process is tied to a particular machine.
Also, the term "network" in the preamble implies operating the
subsequently-recited steps in a "computer-implemented" environment, e.g.,
in the computer field. "Flook stands for the proposition that the prohibition
against patenting abstract ideas 'cannot be circumvented by attempting to
limit the use of the formula to a particular technological environment' or
adding 'insignificant postsolution activity."' Bilski, 130 S. Ct. 3218, 3230
(quoting Diamond v. Diehr, 450 U.S. 175, 191-192 (1981)). The term
"network," suggesting at best a nominal use of a general purpose computer,
imposes no meaningful limits on the scope of the claim apart from
describing a field in which to conduct the process. A field-of-use limitation
is insufficient to render an otherwise patent-ineligible process patent-
eligible. See Diehr, 450 U.S. 175, 191 (1981). Cf. SiRF Technology, Znc. v.
International Trade Commission, 601 F.3d 1319, 1333 (Fed. Cir. 2010):
In order for the addition of machine to impose a meaningful
limit on the scope of a claim, it must play a significant part
in permitting the claimed method to be performed, rather
than function solely as an obvious mechanism for permitting
a solution to be achieved more quickly, i.e., through the
utilization of a computer for performing calculations.
There is also no recitation of a transformation, expressly or inherently.
And, as we have reasonably broadly construed it, the subject matter of
claim 1 is a series of instructions for rendering a facultative decision by a
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reinsurer whereby the reinsurer receives a facultative case summary
submission from a ceding company and renders a decision on it. The vague
instructions listed in the claim do no more than instruct how business should
be conducted; that is, to render a decision based on a facultative case
summary submission. The claim covers any use of the concept of a
reinsurer receiving a facultative case summary submission from a ceding
company and rendering a decision on it, known and unknown. The
instructions could be performed by any general purpose computer, existing
or future-devised. In the words of Gottschalk v. Benson, 409 U.S. 63,72
(1972), the claimed process "would wholly pre-empt the [receiving of a
facultative case summary submission by a reinsurer from a ceding company
and the reinsurer rendering a decision on it] and in practical effect would be
a patent on the [concept] itself."
For the foregoing reasons, based upon consideration of all of the
relevant factors with respect to claims 1-7, 13, 15, 16, 19, and 20 as a whole,
claims 1-7, 13, 15, 16, 19, and 20 are held to claim an abstract idea and are
therefore rejected as ineligible subject matter under 35 U.S.C. 5 101.
Accordingly, we will enter a new ground of rejection of claims 1-7, 13, 15,
16, 19, and 20 under 35 U.S.C. 5 101 because they claim an abstract idea.
CONCLUSIONS
The rejection of claim 19 under 35 U.S.C. 5 1 12, second paragraph, as
being indefinite for failing to particularly point out and distinctly claim the
subject matter which applicants regard as the invention, is sustained.
The rejections of claims 1-4,6-10, 12-16 and 20 under 35 U.S.C.
5 103(a) as being unpatentable over Klaus and Reader and of claims 5 and
Appeal 2009-005 163
Application 1011 20,296
11 under 35 U.S.C. 5 103(a) as being unpatentable over Klaus, Reader, and
DeTore, are not sustained.
The rejection of claim 17 under 35 U.S.C. 5 103(a) as being
unpatentable over Klaus and Reader is affirmed.
The rejection of claims 18 and 19 under 35 U.S.C. 5 103(a) as being
unpatentable over Klaus and Reader is reversed pro forma.
We enter new grounds of rejection of claim 18 under 35 U.S.C. 5 112,
second paragraph, as being indefinite and claims 1-7, 13, 15, 16, 19, and 20
under 35 U.S.C. 5 101 as being directed to non-statutory subject matter.
We enter new grounds of rejection of claims 1-4,6- 10, 12- 16 and 20
under 35 U.S.C. 5 103(a) as being unpatentable over Klaus and Reader and
of claims 5 and 1 1 under 35 U.S.C. 5 103(a) as being unpatentable over
Klaus, Reader, and DeTore.
DECISION
The decision of the Examiner to reject claims 1-20 is affirmed-in-part.
We enter new grounds of rejection of claim 18 under 35 U.S.C. 5 112,
second paragraph, of claims 1-7, 13, 15, 16, 19, and 20 under 35 U.S.C. 5
101, and of claims 1-16 and 20 under 35 U.S.C. 5 103.
In addition to affirming the Examiner's rejection(s) of one or more
claims, this decision contains new grounds of rejection pursuant to 37 C.F.R.
5 41.50(b).
37 C.F.R. 5 41.50(b) provides "[a] new ground of rejection pursuant
to this paragraph shall not be considered final for judicial review."
Appeal 2009-005 163
Application 1011 20,296
37 C.F.R. 5 41.50(b) also provides that the Appellants, WITHIN
TWO MONTHS FROM THE DATE OF THE DECISION, must exercise
one of the following two options with respect to the new ground of rejection
to avoid termination of the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new
evidence relating to the claims so rejected, or both,
and have the matter reconsidered by the examiner,
in which event the proceeding will be remanded to
the examiner . . . .
(2) Request rehearing. Request that the proceeding
be reheard under 5 41.52 by the Board upon the
same record . . . .
Should Appellants elect to prosecute further before the Examiner
pursuant to 37 C.F.R. 5 41.50(b)(l), in order to preserve the right to seek
review under 35 U.S.C. $5 141 or 145 with respect to the affirmed
rejections, the effective date of the affirmance is deferred until conclusion of
the prosecution before the Examiner unless, as a mere incident to the limited
prosecution, the affirmed rejections are overcome.
If Appellants elect prosecution before the Examiner and this does not
result in allowance of the application, abandonment or a second appeal, this
case should be returned to the Board of Patent Appeals and Interferences for
final action on the affirmed rejections, including any timely request for
rehearing thereof.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. 5 1.136(a). See 37 C.F.R.
5 1.136(a)(l)(iv) (2007).
Appeal 2009-005 163
Application 1011 20,296
AFFIRMED-IN-PART; 37 C.F.R. 5 41.50(b)
mev
OBLON, SPIVAK, MCCLELLAND MAIER & NEUSTADT, L.L.P.
1940 DUKE STREET
ALEXANDRIA VA 223 14