Ex Parte Scheinerman et al

Patent Trial and Appeal Board

Jul 30, 2018

12697016 (P.T.A.B. Jul. 30, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/697,016 01/29/2010
23460 7590 08/01/2018
LEYDIG VOIT & MA YER, LTD
TWO PRUDENTIAL PLAZA, SUITE 4900
180 NORTH STETSON A VENUE
CHICAGO, IL 60601-6731
FIRST NAMED INVENTOR
Robert Scheinerman
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.
704543 1140
EXAMINER
SHARVIN, DAVID P
ART UNIT PAPER NUMBER
3692
NOTIFICATION DATE DELIVERY MODE
08/01/2018 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):
Chgpatent@leydig.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ROBERT SCHEINERMAN, TINA HALEY and
RODNEY HAVILAND
Appeal2017-003736
Application 12/697,016
Technology Center 3600
Before CAROLYN D. THOMAS, CARL W. WHITEHEAD JR and
ADAM J. PYONIN, Administrative Patent Judges.
WHITEHEAD JR., Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants are appealing the final rejection of claims 1, 3-6, 8-15, 17,
18 and 20-24 under 35 U.S.C. § 134(a). Appeal Brief 1. We have
jurisdiction under 35 U.S.C. § 6(b) (2012).
We affirm.
Introduction
"[T]he invention relates to a system, method, and computer product
for valuing and administering an annuity with a guaranteed minimum
withdrawal benefit which can guarantee a rising withdrawal stream."
Specification, paragraph 2.
Appeal2017-003736
Application 12/697,016
Illustrative Claim
1. A method for administering an annuity account with an
increasing income stream, the annuity account having an account
value based on funds allocated to at least one investment and a term
including a plurality of periods of time, the method comprising:
establishing an income base;
establishing a minimum periodic income base increase;
establishing an income credit base;
establishing a maximum periodic withdrawal amount that can
be withdrawn in one period without affecting the income base; and
using a tangible annuity valuation processor to execute a
valuation application stored upon a non-transitory computer-readable
storage medium to determine annuity information for the annuity
account, the valuation application:
periodically setting the minimum periodic income base increase
equal to the income credit base multiplied by a predetermined
percentage,
periodically setting the income base equal to the greater of (i) a
maximum periodic value based upon the highest account value at the
end of a set of prior periods and (ii) the income base plus the
minimum periodic income base increase,
and
periodically setting the maximum periodic withdrawal amount
based upon the income base.
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Application 12/697,016
Rejections on Appeal
Claims 1, 3-6, 8-15, 17-18 and 20-24 stand rejected under 35 U.S.C.
§ 101 because the claimed invention is directed to a judicial exception (i.e., a
law of nature, a natural phenomenon, or an abstract idea) without
significantly more. Final Action 5-6.
Claims 1, 3-6, 8-10, 13-15, 17-18 and 20-24 stand rejected under pre-
AIA 35 U.S.C. §I02(e) as being anticipated by Tatro (US Patent 8,015,092
B2, issued September 6, 2011). Final Action 6-13.
Claim 11 stands rejected under pre-AIA 35 U.S.C. § I03(a) as being
unpatentable over Tatro and Bonvouloir (US Patent Application Publication
2007/0100720 Al; published May 3, 2007). Final Action 14-15.
Claim 12 stands rejected under pre-AIA 35 U.S.C. § I03(a) as being
unpatentable over Tatro and Michalowski (US Patent Application
Publication 2009/0292562 Al; published November 26, 2009). Final Action
15.
ANALYSIS
Rather than reiterate the arguments of Appellants and the Examiner,
we refer to the Appeal Brief (filed May 31, 2016), the Answer (mailed
September 21, 2016) and the Final Action (mailed August 27, 2015) for the
respective details.
35 U.S.C. §101 Rejection
The Supreme Court has set forth an analytical "framework for
distinguishing patents that claim laws of nature, natural phenomena, and
abstract ideas from those that claim patent-eligible applications of those
concepts." Alice Corp. Pty. Ltd. v. CLS Banklnt'l, 134 S.Ct. 2347, 2355
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Application 12/697,016
(2014) (citing Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566
U.S. 66, 71-73 (2012)). In the first step of the analysis, we determine
whether the claims at issue are "directed to" a judicial exception, such as an
abstract idea. Alice, 134 S. Ct. at 2355. If not, the inquiry ends. Thales
Visionix Inc. v. U.S., 850 F.3d 1343, 1346 (Fed. Cir. 2017); Enfish, LLC v.
Microsoft Corp., 822 F.3d 1327, 1339 (Fed. Cir. 2016). If the claims are
determined to be directed to an abstract idea, then we consider under step
two whether the claims contain an "inventive concept" sufficient to
"transform the nature of the claim into a patent-eligible application." Alice,
134 S. Ct. at 2355 (quotations and citation omitted).
Noting that the two stages involve "overlapping scrutiny of the
content of the claims," the Federal Circuit has described "the first-stage
inquiry" as "looking at the 'focus' of the claims, their 'character as a
whole,"' and "the second-stage inquiry (where reached)" as "looking more
precisely at what the claim elements add--specifically, whether, in the
Supreme Court's terms, they identify an 'inventive concept' in the
application of the ineligible matter to which (by assumption at stage two) the
claim is directed." Electric Power Grp, LLC v. Alstom S.A., 830 F.3d 1350,
1353 (Fed. Cir. 2016). In considering whether a claim is directed to an
abstract idea, we acknowledge, as did the Court in Mayo, that "all inventions
at some level embody, use, reflect, rest upon, or apply laws of nature, natural
phenomena, or abstract ideas." Mayo, 566 U.S. at 71. We, therefore, look to:
( 1) whether the claims focus on a specific means or method that improves
the relevant technology, or (2) are directed to a result or effect that itself is
the abstract idea, in which the claims merely invoke generic processes and
machinery. See Enfish, 822 F.3d at 1336.
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Application 12/697,016
Step One: Whether the Claims Are Directed to a Patent-Ineligible
Concept (Abstract Idea)
The Examiner finds that "Claims 1, 3-6, 8-15, 17-18, and 20-24 are
directed to the abstract idea of administering an annuity account with an
increasing income stream, which is similar to the abstract idea of managing
an insurance policy that the courts identified as a method of organizing
human activity." Final Action 5. Appellants contend that the invention is
"directed to a statutory class of invention as recognized in Section 101,
namely a process .... for administering an annuity account with an
increasing income stream." Appeal Brief 6-7.
The Federal Circuit has repeatedly confirmed since Alice that the
category of abstract ideas embraces "fundamental economic practice[ s] long
prevalent in our system of commerce," including "longstanding commercial
practice[s]" and "method[s] of organizing human activity." E.g., Intellectual
Ventures I LLC v. Symantec Corp., 838 F.3d 1307, 1313 (Fed. Cir. 2016).
Our reviewing court has explained that claims directed to "the mere
formation and manipulation of economic relations" and "the performance of
certain financial transactions" are properly held to be directed to abstract
ideas. Content Extraction & Transmission LLC v. Wells Fargo Bank, Nat.
Ass 'n, 776 F.3d 1343, 1347 (Fed. Cir. 2014); see also, e.g., Ultramercial,
Inc. v. Hulu, LLC, 772 F.3d 709, 716 (Fed. Cir. 2014) (finding computer-
implemented system for "using advertising as a currency [on] the Internet"
to be ineligible); buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1352, 1355
(Fed. Cir. 2014) (finding computer-implemented system for guaranteeing
performance of an online transaction to be ineligible.); CyberSource Corp. v.
Retail Decisions, Inc., 654 F.3d 1366, 1370 (Fed. Cir. 2011) (finding
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Application 12/697,016
computer-implemented system for "verifying the validity of a credit card
transaction [] over the Internet" to be ineligible).
Also, our reviewing court has repeatedly held that information
collection and analysis, including when limited to particular content, is
within the realm of abstract ideas. See, e.g., Elec. Power Grp., 830 F.3d at
1353 (holding that "collecting information, analyzing it, and displaying
certain results of the collection and analysis" are "a familiar class of claims
'directed to' a patent-ineligible concept"); Fair Warning IP, LLC v. Iatric
Sys., Inc., 839 F.3d 1089, 1093-94 (Fed. Cir. 2016) (claims directed to
collecting information and analyzing it according to certain rules were
directed to an abstract idea); CyberSource Corp. v. Retail Decisions, Inc.,
654 F.3d 1366, 1370 (Fed. Cir. 2011) (computer-implemented system for
"verifying the validity of a credit card transaction[] over the Internet" was
patent-ineligible).
We agree with the Examiner's finding, and Appellants do not
challenge,that under step one of the Alice analysis the claims are directed to
one or more abstract ideas. Therefore we tum to the second step of the Alice
analysis, in which we must determine whether the additional elements of the
claims transform them into patent-eligible subject matter.
Step Two: Whether Additional Elements Transform the Idea into
Patent-Eligible Subject Matter
Appellants contend the invention "recites additional elements that
amount to significantly more than a judicial exception" because the claimed
method uses "a tangible annuity valuation processor to execute a valuation
application stored upon a non-transitory computer-readable storage medium
to determine annuity information for the annuity account by performing
various steps." Appeal Brief 7. Appellants further argue the claimed
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Application 12/697,016
invention, "provides a computer-implemented tool for administering an
annuity account which overcomes the noted problem in the art" so therefore
the claimed invention "is rooted in computer technology in order to satisfy
persistent needs specifically arising in the field of annuity products, namely
providing protection against the risk of long-term inflation." Appeal Brief 8.
Appellants' argument that the claimed invention solves an Internet-
centric problem with a solution that is rooted in computer technology is not
persuasive of Examiner error because, as we noted above, the mere
application of an abstract idea on a computer system does not make a
claimed invention patentable. See Alice Corp., 134 S. Ct. at 2358 ("[I]f a
patent's recitation of a computer amounts to a mere instruction to
'implemen[ t]' an abstract idea 'on ... a computer,' []that addition cannot
impart patent eligibility.") ( citations omitted); See Appeal Brief 11.
Appellants do not argue, nor does Appellants' Specification state, that the
claimed method of gift recommendation requires specialized or improved
technology. See, e.g., Specification ,r,r 78-90.
We do not find Appellants' arguments persuasive and agree with the
Examiner's findings. As the Supreme Court has explained, "the mere
recitation of a generic computer cannot transform a patent-ineligible abstract
idea into a patent-eligible invention." Alice Corp., 134 S. Ct. at 2358. Thus,
a method for administering an annuity using a tangible annuity valuation
processor to account for increasing income streams does not transform
Appellants' claims into patent-eligible subject matter. Accordingly, we
sustain the Examiner's 35 U.S.C. §101 rejection of claims 1, 3-6, 8-15, 17-
18 and 20-24.
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Application 12/697,016
35 U.S.C. §102 Rejection
Appellants contend that, "Tatro fails to teach or suggest periodically
setting a minimum periodic income base increase equal to an income credit
base multiplied by a predetermined percentage, which is then used in
determining an income base" because "[i]n the Tatro deferred variable
annuity contract, the maximum available benefit payment is related to the
withdrawal percent, and the withdrawal percent automatically increases over
the term of the annuity contract. See Tatro, 42:52-56." Appeal Brief 13-14.
The Examiner finds, "Appellant's claims requires a predetermined
percentage be multiplied by an income credit base to set a minimum periodic
income base increase. Tatro clearly shows an income credit base increase
equal to the increased withdrawal percent times the value of the contract."
Answer 6.
We do not find Appellants' arguments persuasive. The Examiner finds
Tatro teaches the claimed minimum percentage income and cites column 7,
the "Step-up" definition for support. Final Action 7. Appellants do not
address the validity of Examiner's findings, instead Appellants argue that
another section not relied upon by the Examiner fails to teach the disputed
limitation. See Appeal Brief 13-14.
Appellants further contend:
Tatro fails to teach or suggest periodically setting the
[income base] equal to the greater of (i) a maximum periodic
value based upon the highest account value at the end of a set of
prior periods and (ii) the income base plus the minimum periodic
income base increase. Rather, in Tatro, the Payment Base is
linked to the premiums paid under the contract (subject to
modification by any withdrawals occurring either before a
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Application 12/697,016
predetermined age or in excess of the lifetime benefit payment).
See Tatro, 10:50-67; Example 2.
Appeal Brief 14.
The Examiner finds Tatro teaches the claimed income base and cites
column 10, lines 51-67, column 7, the "Step-up" definition for support.
Final Action 8. Tatro's description of the "Step-Up" is reproduced below:
"Step-Up": An increase to the payment base value that is
available if the contract value increases because of favorable
performance of the underlying investments. Preferably, the step-
up is guaranteed at a predetermined percentage.
Tatro column 7, lines 60-64.
Tatro's description of calculating the payment based is reproduced
below:
The Payment Base (PB) ( or more accurately payment base value)
is the amount used to determine the lifetime benefit payment
(LBP) and the rider fee. At the rider effective date, the PB equals
the benefit amount. When subsequent premium payments are
received, the PB is reset to equal the benefit amount. Whenever
a partial surrender is made prior to the contract anniversary
immediately following the covered life's 60th birthday ( or other
predetermined age), the PB is reset to equal the benefit amount.
Whenever a partial surrender is made on or after the contract
anniversary immediately following the covered life's 60th
birthday ( or other predetermined age), which exceeds the
lifetime benefit payment and all partial surrenders were not paid
under the Automatic Income RMD (AI PMD), the PB is reset to
equal the benefit amount.
Tatro column 10, lines 51-67.
We do not find Appellants' arguments persuasive. We agree with
Appellants that the Examiner's findings from Tatro's column 10 appears to
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be based upon the partial surrenders and paid premiums however the
Examiner also relied upon Tatro's "Step-Up" feature as well. Appellants fail
to address the relevance of Tatro's Step-Up feature. Accordingly, we sustain
the Examiner's anticipation rejection of claim 1. Although Appellants argue
independent claims 15 and 18 separately from claim 1, we sustain the
Examiner's rejection for the same reasons as claim 1 that is commensurate
in scope. Appellants' argue that Tatro fails to teach various limitations of
claim 15 and 18 however Appellants fail to address the Examiner's findings.
See Appeal Brief 14-16; In re Lovin, 652 F.3d 1349, 1357 (Fed. Cir. 2011)
("[W]e hold that the Board reasonably interpreted Rule 41.37 to require
more substantive arguments in an appeal brief than a mere recitation of the
claim elements and a naked assertion that the corresponding elements were
not found in the prior art."). We also sustain the Examiner's anticipation
rejection of dependent claims 3-6, 8-10, 13, 14, 17 and 20-24 argued without
distinction. See Appeal Brief 14-16.
35 U.S.C. §103 Rejection
We also sustain the Examiner obviousness rejections of dependent
claims 11 and 12 because we were not persuaded by Appellants that Tatro
failed to disclose the disputed limitations of claim 1 upon which both claims
11 and 12 depend. See Appeal Brief 16-18. In other words, Appellants do
not separately argue claims 11 and 12 but, instead, rely on the arguments
presented with respect to claim 1. See Appeal Brief 13, 14, 16 and 18.
Accordingly, we are not persuaded the Examiner erred in rejecting claims 11
and 12 for the reasons discussed supra.
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Application 12/697,016
DECISION
The Examiner's 35 U.S.C. § 101 rejection of claims 1, 3-6, 8-15, 17-
18 and 20-24 is affirmed.
The Examiner's 35 U.S.C. § 102 rejection of claims 1, 3-6, 8-10, 13-
15, 17-18 and 20-24 is affirmed.
The Examiner's 35 U.S.C. § 103 rejections of claims 11 and 12 are
sustained.
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). See 37 C.F.R.
§ 1.136(a)(l )(v).
AFFIRMED
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