Ex Parte Shelon et al

Patent Trial and Appeal Board

Jun 18, 2013

11174944 (P.T.A.B. Jun. 18, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte JONATHAN SHELON and REN CHENG
___________

Appeal 2011-009604
Application 11/174,944
Technology Center 3600
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Before ANTON W. FETTING, MEREDITH C. PETRAVICK, and
NINA L. MEDLOCK, Administrative Patent Judges.

PETRAVICK, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2011-009604
Application 11/174,944

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STATEMENT OF THE CASE
Jonathan Shelon et al. (Appellants) seek our review under 35 U.S.C.
§ 134 of the final rejection of claims 1-22 and 24-29. We have jurisdiction
under 35 U.S.C. § 6(b).

SUMMARY OF DECISION
We REVERSE. 1

THE INVENTION
Claim 1, reproduced below, is illustrative of the subject matter
on appeal.
1. A computerized method for reallocating assets
of a variable annuity without user input,
comprising:
determining, by a computing device, prior to
the inception of the variable annuity, a dynamic
asset allocation for the variable annuity, the
dynamic asset allocation including at least two
different asset allocations corresponding to at least
two different time periods of a lifetime of the
variable annuity, a first asset allocation
corresponding to a first time period and a second
asset allocation corresponding to a second time
period;
storing the dynamic allocation into computer
memory;

1 Our decision will make reference to the Appellants’ Appeal Brief (“App.
Br.,” filed Feb. 14, 2011) and Reply Brief (“Reply Br.,” filed May 16, 2011),
and the Examiner’s Answer (“Ans.,” mailed Mar. 15, 2011).

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allocating, by the computing device, the
assets of the variable annuity according to the first
asset allocation corresponding to the first time
period of the dynamic asset allocation;
using, by the computing device, a
predetermined algorithm to reallocate the assets of
the variable annuity without obtaining any user
input after the inception of the variable annuity,
the assets of the variable annuity reallocated
according to the second asset allocation
corresponding to the second time period of the
dynamic asset allocation; and
determining, by the computing device, at
least one annuity payment for an annuitant based
on performance of the assets of the variable
annuity.

THE REJECTIONS
The Examiner relies upon the following as evidence of
unpatentability:
Chen US 2003/0233301 A1 Dec. 18, 2003
Niedzielski, Rebalancing Gains May Be A Trade Off of Risk, National
Underwriter/Life & Health Financial Services, vol. 101, iss. 12, 7
(1997) (Hereinafter “Niedzielski”).

The following rejections are before us for review:
1. Claims 1-22 and 24-29 are rejected under 35 U.S.C. §112, first
paragraph, as failing to comply with the written description
requirement.
2. Claims 1-22 and 24-29 are rejected under 35 U.S.C. §103(a) as
being unpatentable over Chen and Niedzielski.
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Application 11/174,944

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ISSUES
The first issue is whether the Examiner has established a prima facie
showing that claims 1-22 and 24-29 fail to comply with the written
description requirement of 35 U.S.C. § 112, first paragraph.
The second issue is whether claims 1-22 and 24-29 are unpatentable
under 35 U.S.C. § 103(a) over Chen and Niedzielski. Specifically, whether
the combination of the prior at teaches a step of “determining . . . prior to the
inception of the variable annuity, a dynamic asset allocation for the variable
annuity, the dynamic asset allocation including at least two different asset
allocations corresponding to at least two different time periods of a lifetime
of the variable annuity, . . . a second asset allocation corresponding to a
second time period” (Claim 1).

FINDINGS OF FACT
We find that the findings of fact, which appear in the Analysis below,
are supported by at least a preponderance of the evidence. Ethicon, Inc. v.
Quigg, 849 F.2d 1422, 1427 (Fed. Cir. 1988) (explaining the general
evidentiary standard for proceedings before the Office).

ANALYSIS
The rejection of claims 1-22 and 24-29 under 35 U.S.C. §112, first
paragraph, as failing to comply with the written description requirement
We are persuaded by the Appellants’ argument (Reply Br. 4-10) that
the Examiner erred in rejecting claims 1-22 and 24-29 under 35 U.S.C.
§112, first paragraph, as failing to comply with the written description
requirement. The Examiner has erred in applying the law by conflating the
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written description requirement (see Ans. 9) with the enablement
requirement of §112, first paragraph (see Ans. 10 “to enable . . . to make
and/or use the invention”), and the definiteness requirement of §112, second
paragraph (see Ans. 24-25 “renders the claim indefinite”).
“What is claimed by the patent application must be the same as what
is disclosed in the specification; otherwise the patent should not issue.”
Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co., 535 U.S. 722, 736
(2002). All that is necessary to satisfy the description requirement is to
show that one is “in possession” of the invention. The decision in Lockwood
v. Am. Airlines, Inc., 107 F.3d 1565 (Fed. Cir. 1997) accurately states the
test.
One shows that one is “in possession” of the
invention by describing the invention, with all its
claimed limitations, not that which makes it
obvious… (“[T]he applicant must also convey to
those skilled in the art that, as of the filing date
sought, he or she was in possession of the
invention. The invention is, for purposes of the
‘written description’ inquiry, whatever is now
claimed.”) (emphasis in original). One does that by
such descriptive means as words, structures,
figures, diagrams, formulas, etc., that fully set
forth the claimed invention. Although the exact
terms need not be used in haec verba, see
Eiselstein v. Frank, 52 F.3d 1035, 1038 . . . (Fed.
Cir. 1995) (“[T]he prior application need not
describe the claimed subject matter in exactly the
same terms as used in the claims . . . . ”), the
specification must contain an equivalent
description of the claimed subject matter.
Id. at 1572.
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The Examiner has not established that the Specification fails to reasonably
convey that the inventor was in possession of the claimed invention as of the
filing date of the application.
Finally, we note that the Examiner incorrectly applies the “broadest
reasonable” standard to the language of the Specification (Ans. 23), which
the Appellants argue provides the required written description support (App.
Br. 10).
Accordingly, the rejection of claims 1-22 and 24-29 under 35 U.S.C.
§112, first paragraph, as failing to comply with the written description
requirement is reversed.

The rejection of claims 1-22 and 24-29 under §103(a) as being unpatentable
over Chen and Niedzielski
We are persuaded by the Appellants’ argument (App. Br. 11-16 and
Reply Br. 11-18) that the Examiner erred in rejecting claim 1 under 35
U.S.C. § 103(a) as being unpatentable over Chen and Niedzielski. Claim 1
recites
determining . . . prior to the inception of the
variable annuity, a dynamic asset allocation for the
variable annuity, the dynamic asset allocation
including at least two different asset allocations
corresponding to at least two different time periods
of a lifetime of the variable annuity, . . . a second
asset allocation corresponding to a second time
period.
(Emphasis added). We agree with the Appellants that the combination of
Chen and Niedzielski does not teach this limitation. While Chen does
describe reallocating the assets of an investment portfolio (Chen, para.
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[0179] – [0180] and fig. 12), Chen does not describe that a second asset
allocation, which is different from the first, is determined prior to the
inception of the variable annuity. Niedzielski does not cure this deficiency.
While Niedzielski does describe an automatic reallocation of a buyer’s
assets, the reallocation is “to achieve the original mix of assets.” Niedzielski
1. This also does not teach a second allocation, which is different from the
first and is determined prior to the inception of the variable annuity.
Further, we note that contrary to the Examiner’s findings (Ans. 11),
Chen does not describe allocating assets of a variable annuity; instead Chen
describes allocating assets of an investment portfolio, which includes an
immediate variable annuity as one type of asset. See Chen, para. [0057] and
Table #1.
Independent claims 26 and 27 recite similar limitations and were
rejected using the same rationale (Ans. 5). Accordingly, the rejection of
claims 1, 26, and 27, and claims 2-22, 24, 25, 28, and 29, dependent thereon,
under 35 U.S.C. § 103(a) as being unpatentable over Chen and Niedzielski is
reversed.
DECISION
The decision of the Examiner to reject claims 1-22 and 24-29 is
reversed.

REVERSED

mls