Ex Parte Multer et al

Patent Trial and Appeal Board

Oct 15, 2018

13964946 (P.T.A.B. Oct. 15, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/964,946 08/12/2013
61834 7590 10/17/2018
Meister Seelig & Fein LLP
125 Park Avenue
7th Floor
NEW YORK, NY 10017
FIRST NAMED INVENTOR
Corey Blaine Multer
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.
600181-0lSCON 5149
EXAMINER
BADII, BEHRANG
ART UNIT PAPER NUMBER
3667
NOTIFICATION DATE DELIVERY MODE
10/17/2018 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 COREY BLAINE MULTER, ROBERT L. CONWAY, and
DAVID JOHN BAELIS
Appeal2017-008650
Application 13/964,946 1
Technology Center 3600
Before BRUCE T. WIEDER, AMEE A. SHAH, and
ROBERT J. SILVERMAN, Administrative Patent Judges.
WIEDER, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134 from the
Examiner's rejection of claims 1-18. We have jurisdiction under 35 U.S.C.
§ 6(b).
We AFFIRM.
1 According to Appellants, the real party in interest is New York Life
Insurance Company. (Appeal Br. 2.)
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CLAIMED SUBJECT MATTER
Appellants' "invention relates to methods and systems that provide,
among other things, annuities with liquidity options without some or all of
the shortcomings associated with annuity liquidity appearing in the art and
legacy benefits without some or all of the shortcomings associated with
existing annuity legacy benefits." (Spec. 4, 11. 4--7 .)
Claims 1, 8, and 12 are the independent claims on appeal. Claim 1 is
illustrative. It recites:
1. A computerized method of providing an annuity having a
guarantee period for the life of an annuitant and an advanced
payment option comprising:
obtaining, by a processing device via a web
communication interface, annuitant information useful for
issuing the annuity;
electronically computing, by the processing device via a
digital assistant interface, an annuity variable including future
income payments, the annuity variable computed based at least
partially on the annuitant information;
generating, by the processing device via the digital
assistant interface, a programming loop that tests demands to
exercise the advanced payment option with conditional
programming associated with the annuity;
computing, by the processing device via the digital
assistant interface, a commuted value, at a time of exercising the
advanced payment option, of the future income payments for a
remainder of the guarantee period based on the annuity variable;
wherein the digital assistant interface receives an
indication from the programming loop to facilitate the
computation of the commuted value for advanced distribution of
the future income payments to the annuitant, the advanced
distribution of the future income payments comprising a lump
sum distribution of a portion of the commuted value; and
wherein the future income payments due to the annuitant
for the remainder of the guarantee period subsequent to receiving
the advanced distribution of the future income payments are at
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least one of ceased and reduced for a period of time to account
for the advanced distribution of the future income payments.
REJECTIONS
Claims 1-18 are rejected under 35 U.S.C. § 101 as directed to a
judicial exception without significantly more.
Claims 1-18 are rejected under 35 U.S.C. § I02(e) as anticipated by
Fisher (US 7,664,700 Bl, iss. Feb. 16, 2010).
Claims 1-18 are rejected under 35 U.S.C. § I03(a) as unpatentable in
view of Fisher and Dellinger (US 2007/0011086 Al, pub. Jan. 11, 2007).
ANALYSIS
The § 101 rei ection
Appellants argue all claims together. We select claim 1 as
representative. Claims 2-18 will stand or fall with claim 1. See 3 7 C.F .R.
§ 4I.37(c)(l)(iv).
"Whoever invents or discovers any new and useful process, machine,
manufacture, or composition of matter, or any new and useful improvement
thereof, may obtain a patent therefor, subject to the conditions and
requirements of this title." 35 U.S.C. § 101. Section 101, however,
"'contains an important implicit exception: Laws of nature, natural
phenomena, and abstract ideas are not patentable."' Alice Corp. Pty. Ltd. v.
CLS Bankint'l, 134 S. Ct. 2347, 2354 (2014) (quotingAss'nfor Molecular
Pathology v. Myriad Genetics, Inc., 569 U.S. 576, 589 (2013)).
Alice applies a two-step framework, earlier set out in Mayo
Collaborative Services v. Prometheus Laboratories, Inc., 566 U.S. 66
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(2012), "for distinguishing patents that claim laws of nature, natural
phenomena, and abstract ideas from those that claim patent-eligible
applications of those concepts." Alice, 134 S. Ct. at 2355.
Under the two-step framework, it must first be determined if "the
claims at issue are directed to a patent-ineligible concept." Id. If the claims
are determined to be directed to a patent-ineligible concept, e.g., an abstract
idea, then the second step of the framework is applied to determine if "the
elements of the claim ... contain[] an 'inventive concept' sufficient to
'transform' the claimed abstract idea into a patent-eligible application." Id.
at 2357 (citing Mayo, 566 U.S. at 72-73, 79).
With regard to step one of the Alice framework, the Examiner
determines that the claims are directed to an abstract idea. (Final Action 9.)
In particular, the Examiner determines that "[ o ]btaining annuitant
information useful for issuing the annuity is at least an economic practice,"
"[ c ]omputing an annuity variable including future income payments, the
annuity variable computed based at least partially on the annuitant
information is at least an economic practice," "[g]enerating a programming
loop that tests demands to exercise the advanced payment option with
conditional programming associated with the annuity is at least an economic
practice," "[ c ]omputing a commuted value, at a time of exercising the
advanced payment option, of the future income payments for a remainder of
the guarantee period based on the annuity variable is at least an economic
practice," "[t]he advanced distribution of the future income payments
comprising a lump sum distribution of a portion of the commuted value is at
least an economic practice," and"[ w ]herein the future income payments due
to the annuitant for the remainder of the guarantee period subsequent to
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receiving the advanced distribution of the future income payments are at
least one of ceased and reduced for a period of time ... is at least an
economic practice." (Id. at 9--12.) In short, the claims relate to receiving
data, analyzing the data (including testing the data and determining values
based on the data). And, "[a]s many cases make clear, even if a process of
collecting and analyzing information is 'limited to particular content' or a
particular 'source,' that limitation does not make the collection and analysis
other than abstract. Electric Power, 830 F.3d at 1353, 1355 ( citing cases)."
SAP America, Inc. v. InvestPic, LLC, 898 F.3d 1161, 1168 (Fed. Cir. 2018).
In the Appeal Brief, Appellants do not present arguments regarding
the Examiner's determination under step one of the Alice framework or
otherwise dispute the adequacy of the Examiner's step one analysis. (See
Appeal Br. 5-8.) Therefore, we look to Appellants' arguments regarding
step two of the Alice framework.
Step two of the framework has been described "as a 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."' Alice, 134 S. Ct. at 2355
(quoting Mayo, 566 U.S. at 72-73).
Appellants argue that
rather than examining the claims as a whole, the Examiner
merely summarizes certain elements from independent claim 1
and arrives at the conclusion that the elements of the claim "do
not have any meaningful limitations beyond generally linking the
usage of the above judicial exception or abstract idea to a generic
computational device. [sic]" and "a generic computer can be
programmed to implement the above judicial exception or
abstract idea."
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(Appeal Br. 5---6, quoting Final Action 13-14.) Specifically, Appellants
argue that, in view of BASCOM Global Internet Services., Inc. v. AT&T
Mobility LLC, 827 F.3d 1341 (Fed. Cir. 2016),
the Examiner has not sufficiently analyzed the claims to
conclude that the presently claimed invention has "no
improvements to another technology or technical field, no
improvements to the functioning of the computer itself and no
meaningful limitations beyond generally linking the use of an
abstract idea to a generic processor/computer."
(Appeal Br. 7, quoting Final Action 14.)
In BASCOM, the court determined that "an inventive concept can be
found in the non-conventional and non-generic arrangement of known,
conventional pieces." BASCOM, 827 F.3d at 1350. Specifically, "[t]he
inventive concept described and claimed in the '606 patent is the installation
of a filtering tool at a specific location, remote from the end-users, with
customizable filtering features specific to each end user." Id. at 1350. The
Federal Circuit determined that "its particular arrangement of elements is a
technical improvement over prior art ways of filtering." Id.
Here, the Examiner determines that
[ t ]he limitations of the claims are mere instructions to apply the
abstract ideas on a generic processor/computer. Hence there are
no improvements to another technology or technical field, no
improvements to the functioning of the computer itself and no
meaningful limitations beyond generally linking the use of an
abstract idea to a generic processor/computer.
(Answer 8.) Additionally, the Examiner determines that the claim
recitations of"[ w ]eb communication interface, digital assistance interface or
a processing device are other names for computational/processing
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devices/machines/computer, digital assistance, digital interface ( computers,
laptops, smart phones, etc.)." (Id. at 7.)
Appellants' Specification supports the Examiner's determination. The
Specification discloses the use of conventional computer components in a
conventional arrangement. (See, e.g., Spec. p. 23, 1. 21-p. 24, 1. 23
( disclosing "a client interface 302 having a processor and associated
computer memory, a display device 306, and an input device 308" being
"communicatively connected to at least one server 314 over a
communications network 316").) Moreover, Appellants do not indicate
what element(s) in claim 1 correspond to, e.g., the "filtering tool at a specific
location, remote from the end-users." See BASCOM, 827 F.3d at 1350.
In the Reply Brief, Appellants argue:
The present claims, when taken as a whole, amount to
more than simply applying an abstract idea on a generic
computer. For example, the elements of "generating, by the
processing device via the digital assistant interface, a
programming loop that tests demands to exercise the advanced
payment option with conditional programming associated with
the annuity" and "wherein the digital assistant interface receives
an indication from the programming loop to facilitate the
computation of the commuted value for advanced distribution of
the future income payments to the annuitant..." recited in
independent claim 1 ( and similarly in independent claims 8 and
12) relate to an online payment processing system that includes
testing of advanced payment options. As such, the presently
claimed invention is a novel solution for improving electronic
payments processing that was not previously performed.
(Reply Br. 3--4.) But these claim limitations simply recite applying the
abstract idea on a generic processor/computer. (See Answer 8.) For
example, with regard to the claim limitation regarding "generating, by the
processing device via the digital assistant interface, a programming loop that
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tests demands to exercise the advanced payment option with conditional
programming associated with the annuity," the Specification discloses, e.g.,
"where the demand is made for an advance of future payments, testing will
entail determining whether the option was previously exercised and whether
the current demand in combination with any previous demands fall within
the maximum number of times the option may be exercised." (Spec. 17,
11. 5-8; see also id. at 18, 11. 4---6.) In other words, the processor performs a
test and the result of the test determines how the programmed method
continues.
In short, the limitations cited by Appellants in the Reply Brief recite
"mere instructions to apply the abstract ideas on a generic
processor/computer." (Answer 8.) Appellants do not profess to have
invented programming loops to test input requests and provide results from
the test. See BSG Tech LLC v. BuySeasons, Inc., 899 F.3d 1281, 1286 (Fed.
Cir. 2018). Thus, "[t]hese claims in substance [are] directed to nothing more
than the performance of an abstract business practice ... using a
conventional computer. Such claims are not patent-eligible." DDR
Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245, 1256 (Fed. Cir. 2014).
Taking the claim elements separately, the function performed by the
computer/processor at each step of the process is purely conventional.
Using a computer to obtain and analyze data are basic computer functions.
See, e.g., Alice, 134 S. Ct. at 2359. In other words, each step does no more
than require a generic computer to perform generic computer functions.
Considered as an ordered combination, the computer/processor
components of Appellants' method add nothing that is not already present
when the steps are considered separately. The claims do not, for example,
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purport to improve the functioning of the computer/processor itself. Nor do
they effect an improvement in any other technology or technical
field. Instead, the claims at issue amount to nothing significantly more than
an instruction to apply the abstract idea using some unspecified, generic
computer. That is not enough to transform an abstract idea into a patent-
eligible invention. Id. at 2360.
In view of the above, we agree with the Examiner that claim 1 is
directed to a judicial exception without significantly more. Claims 2-18 fall
with claim 1. See 37 C.F.R. § 4I.37(c)(l)(iv).
The§ 102(e) reiection
The Examiner finds that Fisher discloses
computing, by the processing device via the digital assistant
interface, a commuted value, at a time of exercising the advanced
payment option, of the future income payments for a remainder
of the guarantee period based on the annuity variable; wherein
the digital assistant interface receives an indication from the
programming loop to facilitate the computation of the commuted
value for advanced distribution of the future income payments to
the annuitant, the advanced distribution of the future income
payments comprising a lump sum distribution of a portion of the
commuted value (col.7, 25-62; col.5, 20-39 & 43-63; Col.2, 10-
58; abstract; fig's 2-5).
(Final Action 16.)
Appellants disagree and argue that
[ t ]he presently claimed advanced payment option allows a holder
of the right to demand an advance of income payments. ([S]ee
Appellants' specification on at least p. 10, 11. 10-16; and p. 11,
11. 1-9). By contrast, Fisher discusses an annuity contract that
can be surrendered or where partial withdrawals can be taken
from the principal in addition to payouts from the annuity.
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(Fisher, col. 5, 1. 20-col. 6, 1. 4; and col. 7, 11. 25-31 ). A
surrender or withdrawal is taken out from the principal value of
an annuity and is independent from the payouts. (Fisher, col. 5,
11. 64-66). Fisher does not discuss an option to advance the
payouts.
(Appeal Br. 8-9, emphasis added.)
As an initial matter, we note that the "commuted value" is "the sum
necessary to provide future payments as provided for in an annuity policy."
Commuted value, Merriam-Webster.com, http://www.merriam-
webster.com/dictionary/commuted%20value (last visited Oct. 12, 2018).
Claim 1 recites "computing ... an annuity variable includingfuture
income payments," and "computing ... a commuted value, at a time of
exercising the advanced payment option, of the future income payments for
a remainder of the guarantee period ... wherein ... the advanced
distribution of the future income payments comprising a lump sum
distribution of a portion of the commuted value." (Emphasis added.)
Appellants' Specification discloses that
[ a ]nnuity variables may . . . differ between different types of
annmtles. For immediate annuities, for instance, annuity
variables may include the premium for the annuity, the desired
future income payments, any applicable increases in the periodic
payments over time to account for, e.g., inflation, the guarantee
period, e.g., life or for a term certain, the applicable interest rate,
fees, etc. The insurer will typically specify certain variables,
such as the interest rate or rates and any applicable fees.
(Spec. 9, 11. 10-17.) Appellants' Specification also discloses that:
With regard to the advanced future income payment
embodiment, a holder of the right to exercise the option may
demand from the insurer an advance of future income payments
or a portion thereof Although the number of times the advanced
payment option may be exercised and the magnitude of the
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advance may be unlimited, an insurer may limit the holder's
rights in this respect. For instance, the insurer may limit the
number of times the option may be exercised, such as once,
twice, etc., and may limit the amount of the advance in terms of
a dollar amount, an income period, e.g., six months of income,
or a plurality of future income payments, e.g., five or six monthly
future income payments.
(Id. at 11, 11. 1-8, emphasis added.) Appellants' Specification further
discloses that,
for example, an advance of six monthly future income payments
may cause the future income payments to cease for the six
months for which the advance was taken. Conceptually, the
advance may be viewed as a lump sum distribution of six months
[sic] worth of future income payments in which instance the
advance will be of five future income payments and
consequently future income payments will cease for a period of
five months to account for the distribution.
(Id. at 11, 11. 13-16.) Claim 1 recites that "the advanced distribution of the
future income payments compris[ es] a lump sum distribution of a portion of
the commuted value." And Appellants' Specification discloses that "[t]he
insurer faces a risk associated with the advance in the event the insured dies
before the advance is accounted for." (Spec. 11, 11. 17-18.)
In view of the above, we determine that the advanced distribution of
the future income payments of claim 1 are not repayments of principal, but
are advanced payments/ distributions of future income payments.
Fisher discloses an "invention [that] relates to a system for and
method of individual annuity payout administration wherein the individual
annuity contract includes a payout option which enables the contract owner
to withdraw annuity principal during the annuity payout phase." (Fisher,
col. 3, 11. 51-55.) Specifically, Fisher discloses various payout options for
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annuities including one that "permits principal withdrawals to be made once
the contract has annuitized." (Id., col. 5, 11. 30-31.)
"[ A ]n invention is anticipated if the same device, including all the
claim limitations, is shown in a single prior art reference. Every element of
the claimed invention must be literally present, arranged as in the claim."
Richardson v. Suzuki Motor Co., 868 F.2d 1226, 1236 (Fed. Cir. 1989).
"Anticipation can occur when a claimed limitation is 'inherent' or otherwise
implicit in the relevant reference." Standard Havens Prods., Inc. v. Gencor
Indus., Inc., 953 F.2d 1360, 1369 (Fed. Cir. 1991).
Although, as discussed above, the Examiner indicates where Fisher
discloses payout options after annuitization that reduce the annuity's
principal, it is not clear where, in the paragraphs cited by the Examiner,
Fisher discloses advanced payment/distribution of future income payments.
In view of the above, we are persuaded that the Examiner erred in
rejecting claim 1 as anticipated by Fisher. Independent claims 8 and 12
contain similar language and, therefore, for the same reasons, we are
persuaded that the Examiner erred in rejecting claims 8 and 12, and
dependent claims 2-7, 9-11, and 13-18.
The § 103 (a) reiection
In rejecting claims 1-18 under §103(a), the Examiner finds that
"Dellinger discloses reducing or ceasing future payments subsequent to the
advance (withdrawal of funds)." (Final Action 23, citing Dellinger ,r 93.)
The Examiner further finds that
Dellinger, explicitly discloses advanced distribution of future
income payments (lump sum payment), being a portion of the
commuted value via p93:
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"In the same example, an unscheduled payment of
$5,000 (which is therefore an excess withdrawal of
$5,000) reduces the account value by 10% and the
current payment amount reduces by 10%. In the
adjustments, the investment return for the period
from the most recent scheduled payment to the date
of the new transaction may be reflected in the
adjustment."
(Answer 25, emphasis omitted, quoting Dellinger ,r 93.)
Appellants disagree and argue that "Dellinger's unscheduled
withdrawals are not 'a lump sum distribution of a portion of the commuted
value of future income payments.' Rather, the unscheduled withdrawals are
discussed as variable withdrawals from an accumulation of deposits as
desired by the owner. (Dellinger, i-fi-f83, 93, and 109)." (Reply Br. 5.)
We are persuaded of error. The invention disclosed in Dellinger
"contrasts with normal annuitization in two ways. First, the annuitization of
the contract ( or, in the case of a mutual fund, purchase of the annuity) is
postponed until the end of the liquidity period." (Dellinger ,r 82.) "Second,
because the annuitization of the contract ( or mutual fund) is postponed, a
lump sum or partial account value withdrawal capability still resides with the
owner(s) during the liquidity period." (Id. ,r 83.) Paragraph 93 of Dellinger
discloses:
The contract holder may make additional deposits and
may make withdrawals in excess of the designated withdrawal
amount, provided the end of the liquidity period has not yet been
reached. In such instances, the benefit payment program must
be adjusted. Adjustments are made by increasing or decreasing
the current payment amount by the same proportion as the
amount of the new transaction ( deposit or excess withdrawal)
bears to the account value just prior to the transaction. For
example, if the current account value is $50,000 and the current
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payment amount is $1,500, an additional deposit of $5,000
increases the account value by 10% and the payment amount is
therefore increased by 10%. In the same example, an
unscheduled payment of $5,000 (which is therefore an excess
withdrawal of$5,000) reduces the account value by 10% and the
current payment amount reduces by 10%. In the adjustments, the
investment return for the period from the most recent scheduled
payment to the date of the new transaction may be reflected in
the adjustment.
(Dellinger ,r 93, emphasis added.) In other words, rather than being an
advanced payment/ distribution of the future income payments, the
unscheduled/excess withdrawal reduces the account value itself. This may
very well, absent offsetting unscheduled additional deposits, ultimately
reduce the amount of future income payments. However, the Examiner does
not sufficiently explain, with rational underpinnings, the relation between
the unscheduled payment/withdrawal in Dellinger that reduces the account
value itself, and the claimed advanced payment/ distribution of future income
payments. See KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398,418 (2007).
Therefore, we will reverse the rejection of claims 1-18 under§ 103(a).
DECISION
The Examiner's rejection of claims 1-18 under 35 U.S.C. § 101 is
affirmed.
The Examiner's rejection of claims 1-18 under 35 U.S.C. § 102(e) is
reversed.
The Examiner's rejection of claims 1-18 under 35 U.S.C. § 103(a) is
reversed.
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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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