Ex Parte Zarrella et al

Patent Trial and Appeal Board

Mar 19, 2018

13623185 (P.T.A.B. Mar. 19, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/623, 185 09/20/2012
61834 7590
Meister Seelig & Fein LLP
125 Park Avenue
7th Floor
NEW YORK, NY 10017
03/21/2018
FIRST NAMED INVENTOR
Ron Zarrella
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.
600181-057 1010
EXAMINER
SHRESTHA, BIJENDRA K
ART UNIT PAPER NUMBER
3691
NOTIFICATION DATE DELIVERY MODE
03/21/2018 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 RON ZARRELLA, ELLIOT MELIS, JOSEPH A. PETRINI,
WILLIAM MORELLO, and YOURI MATIOUNINE
Appeal 2017-001141
Application 13/623,185
Technology Center 3600
Before ELENI MANTIS MERCADER, NORMAN H. BEAMER, and
ADAM J. PYONIN, Administrative Patent Judges.
MANTIS MERCADER, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants 1 appeal under 35 U.S.C. § 134(a) from the Examiner's
Final Rejection of claims 1, 3-11, and 13-22, which constitute are all the
claims pending in this application. We have jurisdiction under 35 U.S.C.
§ 6(b).
We affirm.
1 Appellants identify New York Life Insurance Company of New York, New
York as the real party in interest (App. Br. 2).
Appeal 2017-001141
Application 13/623, 185
THE INVENTION
Appellants' claimed invention is directed to a method of providing life
insurance using "a term policy where, at predefined intervals, the policy
owner may increase the policy value without requiring additional
underwriting" (Abstract).
Independent claim 1, reproduced below, is representative of the
subject matter on appeal (with emphasis added):
1. A computer implemented method of providing life
msurance compnsmg:
servicing, via a computing device communicatively
coupled to a storage device, electronic data in the storage
device associated with a term life insurance policy for at
least two insureds, the term life insurance policy having at
least two face amount limits and one premium amount, a
first of the at least two face amount limits representing a
minimum face amount and a second of the two face
amount limits representing a maximum face amount that
is greater than the minimum face amount, the term life
insurance policy provisioned for the insureds to separately
purchase additional coverage up to the maximum face
amount and to convert a portion of a face amount of the
term life insurance policy into permanent life insurance,
wherein the electronic data associated with the term life
insurance policy limits the portion of the face amount of
the term life insurance policy that can be converted into
permanent life insurance to an amount equal to a
difference between the face amount of the term life
insurance policy and the minimum face amount;
determining, via the computing device, a plurality
of predefined time intervals from issuance of the term life
insurance policy;
2
Appeal 2017-001141
Application 13/623, 185
at one or more of a plurality of predefined time
intervals from issuance of the term life insurance policy,
increasing, via the computing device, the face amount of
the term life insurance policy by an incremental unit in the
electronic data associated with the term life insurance
policy without triggering additional underwriting
procedures that reference electronic data tables, the
increasing in response to an election to increase the face
amount of the term life insurance policy and wherein the
increasing is up to the maximum face value;
electronically receiving, via the computing device,
at one or more of a plurality of times during the term of
the term life insurance policy, a request to convert a given
portion of the face amount of the term life insurance policy
into permanent life insurance for each of the at least two
insureds;
calculating, via the computing device, the
difference between the face amount of the term life
insurance policy and the minimum face amount;
determining, via the computing device, that the
given portion does not exceed the calculated difference;
and
converting, via the computing device, the given
portion of the face amount of the term life insurance policy
into the permanent life insurance separately for the at least
two insureds in the electronic data associated with the term
life insurance policy upon determining that the given
portion does not exceed the calculated difference, wherein
the permanent life insurance is up to two times the
maximum face amount of the term life insurance policy.
3
Appeal 2017-001141
Application 13/623, 185
REJECTION
The Examiner made the following rejections:
Claims 1, 3-11, and 13-22 stand rejected on the grounds of
nonstatutory double patenting as being unpatentable over claims 1-29 of
U.S. Patent 8,296, 166. Final Act. 2. 2
Claims 1, 3-11, and 13-22 stand rejected under 35 U.S.C. § 101
because the claimed invention is directed to non-statutory subject matter.
Final Act. 3.
ISSUE
The pivotal issue is whether the Examiner erred in finding claims 1,
3-11, and 13-22 are directed to non-statutory subject matter.
ANALYSIS
We adopt the Examiner's findings in the Answer and Final Office
Action and we add the following primarily for emphasis. We note that if
Appellants failed to present arguments on a particular rejection, we will not
unilaterally review those uncontested aspects of the rejection. See Ex parte
Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential); Hyatt v. Dudas,
551F.3d1307, 1313-14 (Fed. Cir. 2008) (the Board may treat arguments
Appellants failed to make for a given ground of rejection as waived).
Appellants argue the Examiner erred because "the Examiner provided
no evidence that 'routine and conventional' activity is the same as the
process required by the claims" (Reply Br. 4, citing McRO, Inc. v Bandai
2 Appellants do not address the double patenting rejection in the Briefs.
Accordingly, we summarily affirm this rejection.
4
Appeal 2017-001141
Application 13/623, 185
Namco Games America Inc., 837 F3d 1299, 1314 (Fed. Cir. 2016)).
Appellants contend that the claims at issue are similar to those in McRO,
because "[i]t is the incorporation of the claimed bypassing of procedures that
reference electronic data tables, 'not the use of the computer, that 'improved
[the] existing technological process' by allowing the automation of further
tasks"' (Reply Br. 4, quoting McRO at 1314).
Appellants further contend that "[t]he timing and processing of data
'without triggering additional ... procedures that reference electronic data
tables' reduce the performance demands on the system" and thus
overcomes a challenge in a specific field of computing that
addresses a reduction in processing operations in modifying
data in data structures that would normally require electronic
table lookups and computation procedures
(Reply Br. 7-8, emphasis added), and the resulting improvement of "existing
technological processes" (Reply Br 8), makes the claims "amount to
significantly more than an abstract idea" (Reply Br. 7).
We are not persuaded by Appellants' arguments. Whether an
invention is patent-eligible is an issue of law, which we review de novo. An
invention is patent-eligible if it claims a "new and useful process, machine,
manufacture, or composition of matter." 35 U.S.C. § 101. The Supreme
Court, however, has long interpreted § 101 to include implicit exceptions:
"[l]aws of nature, natural phenomena, and abstract ideas" are not patentable.
E.g., Alice Corp. Pty. Ltd. v. CLS Bank Int'!, 134 S. Ct. 2347, 2354 (2014).
In determining whether a claim falls within the excluded category of
abstract ideas, we are guided in our analysis by the Supreme Court's two-
step framework, described in Mayo and Alice. Id. at 2355 (citing Mayo
Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 75-79 (2012)).
5
Appeal 2017-001141
Application 13/623, 185
We must first determine whether the claim 1 is "directed to" a patent-
ineligible abstract idea. See Alice, 134 S. Ct. at 2356 ("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."); 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."); Parker v. Flook, 437
U.S. 584, 594--595 (1978) ("Respondent's application simply provides a
new and presumably better method for calculating alarm limit values").
Appellants' claim 1 is directed to providing life insurance. With
regard to the first step in Alice, a "computing device" is used to perform a
variety of steps involved in servicing a "term life insurance policy." See for
example, Figures 1 and 4. The term policy, while "underwritten in a typical
fashion," contractually permits an increase in "policy face amount(s) without
requiring additional underwriting" and "the policy owner is presented
additional options to manage the allocation of the death benefits between the
term policy and a permanent policy" (Spec. i-f 11 ).
Here, the Examiner finds, and we agree, that the claim "is directed to
servicing a term life insurance policy" (Final Act. 4) and that the claim
limitations recite "activity [that] is considered both a mathematical
formula/relationship and a method of organizing human activities" (Final
Act. 4--5). 3
3 See, e.g., CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1373
(Fed. Cir. 2011) (finding the claims were directed to the abstract idea of
verifying credit card transactions); Credit Acceptance Corp. v. Westlake
Servs., 859 F.3d 1044, 1054 (Fed. Cir. 2017) ("the abstract idea of
'processing an application for financing a purchase"'); buySAFE, Inc. v.
6
Appeal 2017-001141
Application 13/623, 185
Appellants contend that "the Examiner has not considered the claims
as a whole" (App. Br. 9) with regard to the first step in Alice. Particularly,
Appellants contend "the claims include several technical limitations" that are
"ignored by the Examiner" (App. Br. 9). However, the Examiner finds, and
we agree, that the "limitations in the claims that describe abstract ideas are
'servicing,' 'determining,' ' ... increasing,' ' ... receiving' 'calculating,'
'determining,' and 'converting."' (Ans. 11). The Examiner further finds,
and we agree, that "the computerization" of claim 1, which recites
increasing [,via the computing device,] the face amount of the
term life insurance policy by an incremental unit [in the
and
electronic data associated] with the term life insurance policy
without triggering additional underwriting procedures [that
reference electronic tables ... ]
converting [, via the computing device,] the given portion of the
face amount of the term life insurance policy into the permanent
life insurance separately for the at least two insureds ...
(Ans. 12) are examples of a "mathematical formula/relationship" in which
the computer components "are not explicitly recited and therefore must be
construed to the highest level of generality" (Ans. 12). We conclude the
Examiner's analysis presented in the Answer (see Ans. 10-13) considers the
claims as a whole because the Examiner identifies the portions of the
claimed method that are abstract and further considers the functions
Google, Inc., 765 F.3d 1350, 1354--55 (Fed. Cir. 2014) (finding the claims
were directed to the abstract idea of "creating a contractual relationship").
7
Appeal 2017-001141
Application 13/623, 185
performed by the claimed computer components in implementing the
method.
Therefore, since claim 1 is "directed to" a patent-ineligible abstract
idea, we then consider the elements of the claim-both individually and as
an ordered combination-to assess whether the additional elements
transform the nature of the claim into a patent-eligible application of the
abstract idea as required by step two of Alice. Alice, 134 S. Ct. at 2355.
This is a search for an "'inventive concept"'-an element or combination of
elements sufficient to ensure that the claim amounts to "significantly more"
than the abstract idea itself. Id. "[T]he relevant question is whether the
claims here do more than simply instruct the practitioner to implement the
abstract idea ... on a generic computer." Alice, 134 S. Ct. at 2359. We
conclude that they do not.
Taking the claim elements separately, the function performed by the
computer at each step of the process is conventional. Using computers to
receive input and generate information from the input to provide the
resulting information (i.e., transfer data to manage a financial transaction)
constitute basic computer functions. Each method step does no more than
require a generic computer to perform generic computer functions.
When taking the claim elements as an ordered combination,
Appellants contend the Examiner erred, because
there is no evidence to show that to modify data in a manner
that bypasses procedures that reference electronic data tables
when modifying electronic data associated with a face amount
of a term life insurance policy, that would have otherwise been
triggered, is a conventional activity
8
Appeal 2017-001141
Application 13/623, 185
(Reply Br. 4, citing McRO at 1314). We disagree. Here, the Examiner
identifies the cited procedure above as the
condition of increasing face amount of insurance policy by an
incremental amount at one or more of plurality of predefined
interval from issuance of the term insurance policy without
requiring insurability is contractual term of an insurance policy
(also known as an insurance rider)
(Ans. 12), which, in itself, is a conventional activity having a name (an
"insurance rider") in the insurance business. The Examiner's findings are
additionally supported by Appellants' disclosure, which identifies no
technical problem to be solved, but instead describes the invention as filling
"a need for a more flexible insurance protection product that allows families
to adjust their protection to better conform to changes in the family or its
needs or lifestyle" (Spec. i-f 9), and further describes the insurance policy as
"underwritten in a typical fashion" (Spec. i-f 11 ).
Additionally, the "reduction in processing operations" argued by
Appellants as making the claims "significantly more" than the abstract idea
is not the result of any technological improvement afforded by the invention,
but instead is a byproduct of the contractual provision that "the policy owner
may increase policy face amount(s) without requiring additional
underwriting." (Spec. i-f 11; see also Spec. i-fi-1 19--25 and App. Br. 3). The
claimed "without triggering additional underwriting procedures that
reference electronic data tables" is a limitation contractually built-in to the
policy, so it is the policy itself responsible for the "reduction in processing
operations" that may would have otherwise occurred.
Unlike the claims in McRO, when taken together as an ordered
combination, Appellants' claims are not "directed to a patentable,
9
Appeal 2017-001141
Application 13/623, 185
technological improvement over the existing ... techniques" (McRO, 837
F3d. at 1316), because the purported technological improvement arises as a
byproduct of an underlying contractual provision. Appellants' claims "are
instead directed to a result or effect that itself is the abstract idea and merely
invoke generic processes and machinery" (Id. at 1314).
Accordingly, we sustain the ineligible subject matter rejection of
claims 1, 3-11, and 13-22.
CONCLUSION
The Examiner did not err in finding claims 1, 3-11, and 13-22 are
directed to non-statutory subject matter.
DECISION
The Examiner's decision rejecting claims 1, 3-11, and 13-22 on the
grounds of nonstatutory double patenting is affirmed.
The Examiner's decision rejecting claims 1, 3-11, and 13-22 as
directed to non-statutory subject matter is affirmed.
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
10