Ex Parte Roscoe et al

Patent Trials and Appeals Board

Mar 29, 2019

13623629 - (D) (P.T.A.B. Mar. 29, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/623,629 09/20/2012
5073 7590
BAKER BOTTS L.L.P.
2001 ROSS A VENUE
SUITE 900
DALLAS, TX 75201-2980
04/02/2019
FIRST NAMED INVENTOR
Michael J. Roscoe
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.
002328.0860 7698
EXAMINER
POE,KEVINT
ART UNIT PAPER NUMBER
3692
NOTIFICATION DATE DELIVERY MODE
04/02/2019 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 MICHAEL J. ROSCOE and LESLIE ANN REYNOLDS
Appeal2018-003810
Application 13/623,629 1
Technology Center 3600
Before ST. JOHN COURTENAY III, JASON J. CHUNG, and
MATTHEW J. McNEILL, Administrative Patent Judges.
CHUNG, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134(a) of the Final
Rejection of claims 1---6, 8-14, and 16-20. We have jurisdiction under
35 U.S.C. § 6(b).
We affirm.
INVENTION
The invention is directed to computer systems for administering
financial products such as life insurance policies. Spec. ,r 2. Claim 1 is
illustrative of the invention and is reproduced below:
1 According to Appellants, The Prudential Insurance Company of America is
the real party in interest. App. Br. 2.
Appeal2018-003810
Application 13/623,629
1. A computer system for processing data related to
term life insurance policies, comprising:
one or more computer processors; and
one or more memory storage devices having stored data
indicative of criteria for eligibility for issue of a life insurance
policy prior to underwriting, in communication with the one or
more computer processors;
wherein the one or more processors are configured to:
receive data indicative of an application by a
proposed insured for life insurance, the data including data
indicative of responses furnished by the proposed insured
relating to health conditions of the proposed insured
known to the proposed insured, and requested policy data,
including data indicative of proposed insured information,
requested face amount, requested guaranteed level
premium period, identification of beneficiary, and initial
premium paid;
store in the one or more memory storage devices the
received health condition data and requested policy data;
access from the one or more memory storage
devices the stored data indicative of criteria for eligibility
for issue of a life insurance policy prior to underwriting;
determine based on the received data relating to the
health conditions of the proposed insured and the accessed
data indicative of criteria for eligibility, whether the
proposed insured is eligible for life insurance;
responsive to a determination that the proposed
insured is eligible, generate output data indicative of
instructions to a policy owner reporting computer system
to issue a life insurance policy on the life of the proposed
insured, the life insurance policy providing for a first
premium rate for a first period after issue, and a second
premium rate for a second period commencing on
expiration of the first period, at least one of the second
premium rate and the commencement of the second period
being determined based on data indicative of a result of
underwriting, and output data indicative of instructions to
commence underwriting of the proposed insured; and
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Application 13/623,629
determine, based on the result of underwriting, a
third premium rate for a third period commencing at the
end of the second period, the third premium rate and the
commencement date of the third period being determined
based on data indicative of a result of underwriting, the
third premium rate is higher than the second premium rate.
REJECTION AT ISSUE
Claims 1---6, 8-14, and 16-20 stand rejected under 35 U.S.C. § 101 as
being directed to patent ineligible subject matter. Final Act. 5-9.
ANALYSIS
Claims 1-6, 8-14, and 16-20Rejected Under35 U.S.C. § 101
A. The Examiner's Conclusions and Appellants' Arguments
The Examiner concludes the present claims are directed to certain
methods of organizing human activity-namely, "processing data related to
term life insurance policies." Final Act. 6-7; Ans. 4. The Examiner also
determines the present claims do not amount to significantly more than an
abstract idea because the Examiner finds the abstract idea is implemented on
a computer using generic computers that are well-understood, routine, and
conventional activities previously known to the industry. Ans. 4--5 (citing
Spec. ,r 71 ); Final Act. 2-3.
Appellants argue the Examiner grossly mischaracterized the present
claims as being directed to the abstract idea of "processing data related to
term life insurance policies" because the Examiner describes the claims at a
high level of abstraction while ignoring the particular types of data that are
processed for a particular type of policy. App. Br. 8-10; Reply Br. 4--5.
Appellants argue the present claims are significantly more than any abstract
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Application 13/623,629
idea because they recite an unconventional system that generates a term life
insurance policy without covering all ways of generating such a policy.
App. Br. 10-11. Appellants argue the present claims generate an insurance
policy that addresses the various issues relating to issuing insurance policies
prior to comprehensive underwriting, which is an inventive concept and is
articulated in the Specification. Id. at 11-12; Reply Br. 2--4. We disagree
with Appellants.
B. Legal Principles
An invention is patent-eligible if it claims a "new and useful process,
machine, manufacture, or composition of matter." 35 U.S.C. § 101.
However, the Supreme Court has long interpreted 35 U.S.C. § 101 to include
implicit exceptions: "[l]aws of nature, natural phenomena, and abstract
ideas" are not patentable. E.g., Alice Corp. v. CLS Bank Int 'l, 573 U.S. 208,
216 (2014).
In determining whether a claim falls within an excluded category, we
are guided by the Supreme Court's two-step framework, described in Mayo
and Alice. Id. at 217-18 ( citing Mayo Collaborative Servs. v. Prometheus
Labs., Inc., 566 U.S. 66, 75-77 (2012)). In accordance with that framework,
we first determine what concept the claim is "directed to." See Alice, 573
U.S. at 219 ("On their face, the claims before us are drawn to the concept of
intermediated settlement, i.e., the use of a third party to mitigate settlement
risk."); see also Bilski v. Kappas, 561 U.S. 593, 611 (2010) ("Claims 1 and 4
in petitioners' application explain the basic concept of hedging, or protecting
against risk.").
Concepts determined to be abstract ideas, and thus patent ineligible,
include certain methods of organizing human activity, such as fundamental
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economic practices (Alice, 573 U.S. at 219-20; Bilski, 561 U.S. at 611 );
mathematical formulas (Parker v. Flook, 437 U.S. 584, 594--95 (1978)); and
mental processes (Gottschalkv. Benson, 409 U.S. 63, 69 (1972)). Concepts
determined to be patent eligible include physical and chemical processes,
such as "molding rubber products" (Diamond v. Diehr, 450 U.S. 175, 192
( 1981) ); "tanning, dyeing, making waterproof cloth, vulcanizing India
rubber, smelting ores" (id. at 184 n.7 (quoting Corning v. Burden, 56 U.S.
252, 267---68 (1854))); and manufacturing flour (Benson, 409 U.S. at 69
(citing Cochrane v. Deener, 94 U.S. 780, 785 (1876))).
In Diehr, the claim at issue recited a mathematical formula, but the
Supreme Court held that "[a] claim drawn to subject matter otherwise
statutory does not become nonstatutory simply because it uses a
mathematical formula." Diehr, 450 U.S. at 176; see also id. at 192 ("We
view respondents' claims as nothing more than a process for molding rubber
products and not as an attempt to patent a mathematical formula."). Having
said that, the Supreme Court also indicated that a claim "seeking patent
protection for that formula in the abstract ... is not accorded the protection
of our patent laws, ... and this principle cannot be circumvented by
attempting to limit the use of the formula to a particular technological
environment." Id. (citing Benson and Flook); see, e.g., Diehr, 450 U.S. at
187 ("It is now commonplace that an application of a law of nature or
mathematical formula to a known structure or process may well be deserving
of patent protection.").
If the claim is "directed to" an abstract idea, we tum to the second
step of the Alice and Mayo framework, where "we must examine the
elements of the claim to determine whether it contains an 'inventive
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concept' sufficient to 'transform' the claimed abstract idea into a patent-
eligible application." Alice, 573 U.S. at 221 ( quotation marks omitted). "A
claim that recites an abstract idea must include 'additional features' to
ensure 'that the [claim] is more than a drafting effort designed to
monopolize the [abstract idea]."' Id. ( quoting Mayo, 566 U.S. at 77).
"[M]erely requir[ing] generic computer implementation[] fail[ s] to transform
that abstract idea into a patent-eligible invention." Id.
The U.S. Patent and Trademark Office ("USPTO") recently published
revised guidance on the application of§ 101. USPTO's January 7, 2019
Memorandum, 2019 Revised Patent Subject Matter Eligibility Guidance
("Memorandum"). Under that guidance, we first look to whether the claim
recites:
( 1) any judicial exceptions, including certain groupings of abstract
ideas (i.e., mathematical concepts, certain methods of organizing
human activity such as a fundamental economic practice, or mental
processes); and
(2) additional elements that integrate the judicial exception into a
practical application (see Manual of Patent Examining Procedure
("MPEP") § 2106.05(a}-(c), (e}-(h)).
Only if a claim (1) recites a judicial exception and (2) does not integrate that
exception into a practical application, do we then look to whether the claim:
(3) adds a specific limitation beyond the judicial exception that are not
"well-understood, routine, conventional" in the field (see MPEP
§ 2106.05(d)); or
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( 4) simply appends well-understood, routine, conventional activities
previously known to the industry, specified at a high level of
generality, to the judicial exception.
See Memorandum.
C. Discussion
1. Step 2A, Prong 1 (Alice Step 1)
We consider claim 1 (with emphasis), reproduced below.
1. A computer system for processing data related to
term life insurance policies, comprising:
one or more computer processors; and
one or more memory storage devices having stored data
indicative of criteria for eligibility for issue of a life insurance
policy prior to underwriting, in communication with the one or
more computer processors;
wherein the one or more processors are configured to:
receive data indicative of an application by a
proposed insured for life insurance, the data including
data indicative of responses furnished by the proposed
insured relating to health conditions of the proposed
insured known to the proposed insured, and requested
policy data, including data indicative of proposed insured
information, requested face amount, requested
guaranteed level premium period, identification of
beneficiary, and initial premium paid;
store in the one or more memory storage devices the
received health condition data and requested policy data;
access from the one or more memory storage
devices the stored data indicative of criteria for eligibility
for issue of a life insurance policy prior to underwriting;
determine based on the received data relating to the
health conditions of the proposed insured and the
accessed data indicative of criteria for eligibility, whether
the proposed insured is eligible for life insurance;
responsive to a determination that the proposed
insured is eligible, generate output data indicative of
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Application 13/623,629
instructions to a policy owner reporting computer system
to issue a life insurance policy on the life of the proposed
insured, the life insurance policy providing for a first
premium rate for a first period after issue, and a second
premium rate for a second period commencing on
expiration of the first period, at least one of the second
premium rate and the commencement of the second period
being determined based on data indicative of a result of
underwriting, and output data indicative of instructions to
commence underwriting of the proposed insured; and
determine, based on the result of underwriting, a
third premium rate for a third period commencing at the
end of the second period, the third premium rate and the
commencement date of the third period being determined
based on data indicative of a result of underwriting, the
third premium rate is higher than the second premium
rate.
We conclude the emphasized text above recites fundamental
economic principles or practices (including insurance), such as generating an
insurance policy that includes one or more premium rates based on
underwriting. The emphasized text also determines whether a proposed
insured is eligible for life insurance based on health conditions of the
proposed insured and accessed data indicative of criteria for eligibility.
According to the Memorandum, fundamental economic principles or
practices (including insurance) falls into the category of certain methods of
organizing human activity. See Memorandum. Moreover, those certain
methods of organizing human activity (i.e., fundamental economic principles
or practices (including insurance)) are a type of an abstract idea. See id. We
also conclude the claims at issue here are analogous to the claims in Bancorp
Services, L.L.C. v. Sun Life Assur. Co. of Canada (U.S.), 687 F.3d 1266
(Fed. Cir. 2012). In Bancorp, the Court held "[t]he district court correctly
held that without the computer limitations nothing remains in the claims but
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the abstract idea of managing a stable value protected life insurance policy
by performing calculations and manipulating the results." Id. at 1280.
We, therefore, disagree with Appellants' argument that the Examiner
grossly mischaracterizes the claims (App. Br. 8-10; Reply Br. 4--5) for at
least the reasons discussed above. See Apple, Inc. v. Ameranth, Inc., 842
F.3d 1229, 1240-1241 (Fed. Cir. 2016) ("An abstract idea can generally be
described at different levels of abstraction .... The Board's slight revision of
its abstract idea analysis does not impact the patentability analysis."); see
also Final Act. 6-7 (The Examiner concludes the present claims are directed
to certain methods of organizing human activity).
Because the present claims recite fundamental economic principles or
practices (including insurance), which fall into the category of certain
methods of organizing human activity (i.e., an abstract idea), we proceed to
prong 2.
2. Step 2A, Prong 2 (Alice Step 2)
From reproduced claim 1, which is shown above in the discussion
pertaining to Alice step 1, prong 1, this claim does not integrate the abstract
idea into a practical application because it does not impose any meaningful
limits on practicing the abstract idea. In particular, the present claims do not
recite improvements to the functioning of a computer or to any other
technology or technical field. Unlike the claims of Enfish, LLC v. Microsoft
Corp., 822 F.3d 1327 (Fed. Cir. 2016), the present claims are not directed to
"a specific improvement to the way computers operate, embodied in the
self-referential table." Id. at 1336. Instead, as described by the
Specification (Spec. ,r,r 71, 200), the present claims focus on abstract ideas
that merely use computers as tools. Indeed, Appellants acknowledge the
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claims are directed to "generat[ing] an insurance policy that addresses the
various issues related to issuing insurance policies prior to comprehensive
underwriting." App. Br. 11.
In particular, Appellants' argument about an improvement to
"generate an insurance policy that addresses the various issues related to
issuing insurance policies prior to comprehensive underwriting" (App. Br.
11) is unpersuasive because "a claim for a new abstract idea is still an
abstract idea." Synopsys, Inc. v. Mentor Graphics Corp., 839 F.3d 1138,
1151 (Fed. Cir. 2016). "[U]nder the Mayo/Alice framework, a claim
directed to a newly discovered law of nature ( or natural phenomenon or
abstract idea) cannot rely on the novelty of that discovery for the inventive
concept necessary for patent eligibility .... " Genetic Techs. Ltd. v. Merial
L.L.C., 818 F.3d 1369, 1376 (Fed. Cir. 2016) (citations omitted). Contrary
to Appellants' arguments, claim 1 is directed to an abstract idea-not an
improvement to computer functionality, as Appellants assert (App. Br.
11-12; Reply Br. 2--4).
Additionally, we disagree with Appellants' argument that the present
claims are patent eligible because they do not preempt any abstract idea
(App. Br. 10-11); while preemption may denote patent ineligibility, its
absence does not demonstrate patent eligibility. See FairWarning, IP, LLC
v. Iatric Sys., Inc., 839 F.3d 1089, 1098 (Fed. Cir. 2016). For claims
covering a patent-ineligible concept, preemption concerns "are fully
addressed and made moot" by an analysis under the Mayol Alice framework.
Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir.
2015).
The present claims also do not recite other meaningful limitations that
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describes a process or product that applies the exception in a meaningful
way; rather, the present claims recite certain methods of organizing human
activity in an insurance environment. Specifically, we determine the
additional elements in claim 1 ( e.g., "one or more computer processors" and
"one or more memory storage devices") are merely generic components
insufficient to integrate the abstract idea into a practical application.
Furthermore, these additional elements in claim 1 are described in the
Specification at a high level of generality insufficient to integrate the
abstract idea into a practical application. Spec. ,r,r 71, 200.
Appellants do not make any other arguments pertaining to step 2A,
prong 2. Because the present claims are directed to an abstract idea, we
proceed to Step 2B.
3. Step 2B, Prong 2 (Alice Step 2)
We discern no error in the Examiner's determination that the present
claims are not significantly more than any abstract idea because the abstract
idea is implemented on a computer using generic computers that are
well-understood, routine, and conventional activities previously known to
the industry. Ans. 4--5 (citing Spec. ,r 71); Final Act. 2-3.
As we explain previously, Appellants' Specification describes using
generic computer components. Spec. ,r 71; see supra § C.2 ( discusses the
relevant excerpts of the Specification that illustrate the generic nature of
Appellants' one or more computer processors and one or more memory
storage devices). Appellants' Specification demonstrates the
well-understood, routine, or conventional nature of these additional elements
because it describes the additional elements in a manner that indicates that
they are sufficiently well-known that the Specification need not describe the
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particulars of such additional elements to satisfy 35 U.S.C. § 112, first
paragraph.
Appellants' argument that the present claims generate an insurance
policy that addresses the various issues relating to issuing insurance policies
prior to comprehensive underwriting, which is an inventive concept and is
articulated in the Specification (App. Br. 11-12; Reply Br. 2--4), is
unpersuasive for at least the reasons discussed supra in§ C.2.
Appellants do not argue separately claims 2---6, 8-14, and 16-20 with
particularity, but assert the rejections of those claims should be withdrawn
for at least the same reasons. App. Br. 8-13. We, therefore, group these
claims with claim 1. See 37 C.F.R. § 4I.37(c)(l)(iv). Accordingly, we
sustain the Examiner's rejection of claims 1---6, 8-14, and 16-20 under 35
U.S.C. § 101.
We have only considered those arguments that Appellants actually
raised in the Briefs. Arguments Appellants could have made, but chose not
to make, in the Briefs have not been considered and are deemed to be
waived. See 37 C.F.R. § 41.37(c)(l)(iv).
DECISION
We affirm the Examiner's decision rejecting claims 1---6, 8-14, and
16-20 under 35 U.S.C. § 101.
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
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