Malcolm A. Cheung et al.

Patent Trials and Appeals Board

Aug 2, 2019

14181838 - (D) (P.T.A.B. Aug. 2, 2019)

UNITED STATES PATENT AND TRADEMARK OFFICE
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
14/181,838 02/17/2014 Malcolm A. Cheung 002328.0888 7015
5073 7590 08/02/2019
BAKER BOTTS L.L.P.
2001 ROSS AVENUE
SUITE 900
DALLAS, TX 75201-2980
EXAMINER
ROBINSON, KITO R
ART UNIT PAPER NUMBER
3695
NOTIFICATION DATE DELIVERY MODE
08/02/2019 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):
ptomail1@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 MALCOLM A. CHEUNG, ROBERT A. FISHBEIN,
JACOB M. HERSCHLER, N. DAVID KUPERSTOCK,
ROBERT F. O’DONNELL, and STEVEN L. PUTTERMAN
____________

Appeal 2018-004455
Application 14/181,8381
Technology Center 3600

____________

Before BRUCE T. WIEDER, KENNETH G. SCHOPFER, and
AMEE A. SHAH, 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 final rejection of claims 23–41. We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM.

1 According to Appellants, the real party in interest is The Prudential
Insurance Company of America. (Appeal Br. 2.)
Appeal 2018-004455
Application 14/181,838

2
CLAIMED SUBJECT MATTER
Appellants’ “invention relates generally to benefits contracts and more
particularly to a benefits contract providing a bundle of benefits.” (Spec. 1,
ll. 7–9.)
Claims 23, 29, and 36 are the independent claims on appeal. Claim 23
is illustrative. It recites:
23. A data processing system configured to manage a benefits
account, the data processing system comprising:
one or more memory devices;
one or more processing modules; and
software embodied in the one or more memory devices
and configured, when executed by the one or more processing
modules, to:
store, in the one or more memory devices, account
data representing a number of benefits units associated
with a plurality of benefits according to provisions of a
benefits contract, wherein each benefits unit is
discretionarily exercisable towards at least one of the
plurality of benefits, and wherein the plurality of benefits
comprises:
one or more from the first group consisting
of:
a plurality of income payments; and
a withdrawal benefit; and
one or more from the second group consisting
of:
a disability insurance;
a long-term care insurance;
a prescription drug coverage;
a health care coverage; and
a supplemental health care coverage;
receive transaction data representing a request to
exercise a specified number of benefits units towards a
specified one of the plurality of benefits;
generate status information identifying a coverage
period provided at least in part by exercise of the specified
Appeal 2018-004455
Application 14/181,838

3
number of benefits towards the specified one of the
plurality of benefits;
transmit the status information through a network;
determine a default benefit to be transferred to a
beneficiary designated by an account holder, wherein the
default benefit is based at least in part on the account data
representing the number of benefits units that are
discretionarily exercisable, and wherein the default benefit
comprises a life insurance benefit; and
in response to a triggering event, transfer the life
insurance benefit to the beneficiary designated by the
account holder, the triggering event being the death of the
account holder.

REJECTIONS
Claims 23–41 are rejected for nonstatutory obviousness-type double
patenting as being unpatentable over claims 1–22 of Cheung
(US 8,655,776 B2, iss. Feb. 18, 2014).
Claims 23–41 are rejected under 35 U.S.C. § 101 as directed to non-
statutory subject matter.

ANALYSIS
The double patenting rejection
“Claims 23–41 are rejected on the ground of nonstatutory double
patenting as being unpatentable over claims 1–22 of U.S. Patent No.
8,655,776 B2.” (Final Action 9.) Appellants do not appeal this rejection.
Therefore, we summarily affirm this ground of rejection of claims 23–41.

Appeal 2018-004455
Application 14/181,838

4
The § 101 rejection
Claims 23–41 are argued together. We select claim 23 as
representative. Claims 24–41 will stand or fall with claim 23. See 37 C.F.R.
§ 41.37(c)(1)(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 Bank Int’l, 573 U.S. 208, 216 (2014) (quoting Assoc. for 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
(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, 573 U.S. at 217.
Under the two-step framework, it must first be determined if “the
claims at issue are directed to a patent-ineligible concept.” Id. at 218. 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 221 (citing Mayo, 566 U.S. at 72–73, 79).
With regard to step one of the Alice framework, we apply a “directed
to” two prong test to: 1) evaluate whether the claim recites a judicial
Appeal 2018-004455
Application 14/181,838

5
exception, and 2) if the claim recites a judicial exception, evaluate whether
the claim “appl[ies], rel[ies] on, or use[s] the judicial exception in a manner
that imposes a meaningful limit on the judicial exception, such that the claim
is more than a drafting effort designed to monopolize the judicial
exception.” See USPTO, 2019 Revised Patent Subject Matter Eligibility
Guidance, 84 Fed. Reg. 50, 54 (Jan. 7, 2019) (hereinafter “2019 Guidance”).
Here, the Examiner determines that the claims are “directed to a
system to manage a benefit account (Final Action 3), and that “[m]anag[ing]
a benefits account is according to the court a ‘method of organizing human
behavior’ that is similar to other concepts that have been identified as
abstract” (Answer 7). The Examiner explains that
[t]his is simply the organization and comparison of data and also
relating to [sic] the economy and commerce, such as agreements
between people in the form of contracts, managing relationships
or transactions between people, and a mental process (thinking)
that []can be performed in the human mind, or by a human using
a pen and paper.

(Id. at 4; see also Final Action 6.)
Appellants disagree and argue that
[t]he claims recite a data system that allows a user to make
selections from two groups. The system then automatically
determines when to begin and terminate a period based on the
selections made by the user. The system follows a specific set of
steps to make this determination that offers improvements over
existing technology.

(Appeal Br. 7.) Appellants further argue that “all the Examiner has done is
shown that the claim ‘involves’ an abstract idea, but not that the claim is
directed to an abstract idea.” (Reply Br. 2.) We disagree.
Appeal 2018-004455
Application 14/181,838

6
Under step one of the Alice framework, we “look at the ‘focus of the
claimed advance over the prior art’ to determine if the claim’s ‘character as a
whole’ is directed to excluded subject matter.” Affinity Labs of Texas, LLC
v. DIRECTV, LLC, 838 F.3d 1253, 1257 (Fed. Cir. 2016) (quoting Elec.
Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1353 (Fed. Cir. 2016)).
The ‘directed to’ inquiry . . . cannot simply ask whether the
claims involve a patent-ineligible concept, because essentially
every routinely patent-eligible claim involving physical products
and actions involves a law of nature and/or natural phenomenon
. . . . Rather, the ‘directed to’ inquiry applies a stage-one filter to
claims, considered in light of the specification, based on whether
‘their character as a whole is directed to excluded subject
matter.’ Internet Patents Corp. v. Active Network, Inc., 790 F.3d
1343, 1346 (Fed. Cir. 2015).

Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1335 (Fed. Cir. 2016). In
other words, the first step of the Alice framework “asks whether the focus of
the claims is on the specific asserted improvement in [the relevant
technology] or, instead, on a process that qualifies as an ‘abstract idea’ for
which computers are invoked merely as a tool.” Id. at 1335–36; see also
2019 Guidance at 54–55.
The Specification provides evidence as to what the claimed invention
is directed. In this case, the Specification discloses that the “invention
relates generally to benefits contracts and more particularly to a benefits
contract providing a bundle of benefits.” (Spec. 1, ll. 7–9.) Claim 23
provides further evidence. Claim 23 recites “[a] data processing system
configured to manage a benefits account . . . comprising: . . . memory
devices,” “processing modules,” and “software . . . to: store . . . account data
representing a number of benefits units,” “receive transaction data,”
“generate status information,” “transmit the status information,” “determine
Appeal 2018-004455
Application 14/181,838

7
a default benefit to be transferred,” “and in response to a triggering event,
transfer the life insurance benefit.” None of the limitations recite
technological implementation details for any of the steps, but instead merely
describe functional results to be achieved by any means. In short, claim 23
is directed to a fundamental economic practice, i.e., insurance, as well as
commercial or legal interactions, i.e., contracts and legal obligations. Thus,
we agree with the Examiner that claim 23 is directed to the abstract idea of
certain methods of organizing human activities. (See Answer 7.)
The Specification also discloses that “in certain embodiments benefits
contract 100 is entered into without using a computer.” (Spec. 28, ll. 12–
15.) This, in combination with the above discussion of claim 23, supports
the Examiner’s additional determination that the claims are directed to
concepts that can be performed in the human mind or by a human using pen
and paper, i.e., observation and evaluation. (See Final Action 4, 6; see also
Answer 3–4.) Thus, claim 23 is also directed to the abstract idea of mental
processes.
Although we and the Examiner describe, at different levels of
abstraction, to what the claims are directed, it is recognized that “[a]n
abstract idea can generally be described at different levels of abstraction.”
Apple, Inc. v. Ameranth, Inc., 842 F.3d 1229, 1240 (Fed. Cir. 2016). That
need not and, in this case does not, “impact the patentability analysis.” See
id. at 1241.
Claim 23 achieves the claimed system by “one or more memory
devices,” “one or more processing modules,” “and software” to store data,
receive data, generate data, transmit data, analyze data, and perform a task in
response to a triggering event. However, “with respect to the use of a
Appeal 2018-004455
Application 14/181,838

8
[processor/processing module] to obtain data, adjust account balances, and
issue automated instructions; all of these computer functions are ‘well-
understood, routine, conventional activit[ies]’ previously known in the
industry.” Alice, 573 U.S. at 225 (quoting Mayo, 566 U.S. at 73); see also
Answer 9.
We do not see how the recitation of generic “memory devices” and
generic “processing modules,” even in conjunction with the recited
functions, “ensure[s] ‘that the [claim] is more than a drafting effort designed
to monopolize the [abstract idea].” Id. at 221 (alterations in original)
(quoting Mayo, 566 U.S. at 77.) In short, claim 23 merely uses generic
memory and processor(s) as tools to perform the abstract idea. (See
Spec. 28, l. 27 – 29, l. 15; see also id. at 32, ll. 15–17.)
Moreover, “we have treated collecting information, including when
limited to particular content (which does not change its character as
information), as within the realm of abstract ideas.” Elec. Power Grp., 830
F.3d at 1353. “In a similar vein, we have treated analyzing information by
steps people go through in their minds, or by mathematical algorithms,
without more, as essentially mental processes within the abstract-idea
category.” Id. at 1354. Additionally, the Federal Circuit has “recognized
that merely presenting the results of abstract processes of collecting and
analyzing information, without more (such as identifying a particular tool for
presentation), is abstract as an ancillary part of such collection and analysis.”
Id.
Regardless, Appellants argue that “[h]ere, like in [McRO, Inc. v.
Bandai Namco Games America Inc., 837 F.3d 1299 (Fed. Cir. 2016)], the
claims are not directed to ‘a system to manage a benefit account’ because the
Appeal 2018-004455
Application 14/181,838

9
claims recite a specific set of steps to determine when to begin and terminate
a period.” (Appeal Br. 7.) We do not find this argument persuasive.
Claim 23 simply uses generic memory devices and
processors/processing modules to perform the abstract ideas, i.e., certain
methods of organizing human activity and mental processes. This does not
improve either the memory devices or the processors/processing modules.
In contrast, “[t]he claimed improvement [in McRO] was to how the physical
display operated (to produce better quality images).” SAP Am., Inc. v.
InvestPic, LLC, 898 F.3d 1161, 1167 (Fed. Cir. 2018). In other words, in
McRO, data was used to improve the technology, i.e., the display
mechanism. Here, although claim 23 recites, e.g., “stor[ing],” “receiv[ing],”
“generat[ing],” “transmit[ting],” “determin[ing],” and “respon[ding],”
Appellants do not sufficiently explain how these steps improve the
technology. Claim 23 merely recites the functional results to be achieved,
e.g., “in response to a triggering event, transfer the life insurance benefit.”
In other words, claim 23 does not recite “a particular way of programming
or designing the software . . . , but instead merely claim[s] the resulting
systems.” Apple, Inc., 842 F.3d at 1241.
Nonetheless, Appellants argue that “by integrating the performance of
the steps into the system, processor resources, memory resources, and
network bandwidth are conserved over existing systems that perform the
steps across different, separate systems. As a result, the claimed system
provides a technological improvement.” (Appeal Br. 7–8.) We do not find
this argument persuasive.
As an initial matter, Appellants cite to nothing in the record to support
this argument. Moreover, the Specification discloses that “[a]lthough data
Appeal 2018-004455
Application 14/181,838

10
processing system 500 is shown as a single system, data processing system
500 may be distributed across multiple platforms and housed in multiple
locations.” (Spec. 28, ll. 22–25.) Also, claim 23 recites “one or more
memory devices,” “one or more processing modules,” and “software
embodied in the one or more memory devices.” Appellants do not explain,
e.g., how such a distributed system achieves the argued technological
improvement. Nor does claim 23 recite how the memory devices,
processing modules, and software are connected to achieve the alleged
integration and technological improvement.
Appellants also argue that “at a minimum, the claims do not prevent
all systems to manage benefit accounts.” (Appeal Br. 7.) We understand
this to be an argument that claim 23 is patent-eligible because it does not
preempt every application of the abstract ideas. We do not find this
argument persuasive. Preemption is not a separate test.
“Where a patent’s claims are deemed only to disclose patent ineligible
subject matter under the Mayo framework, as they are in this case,
preemption concerns are fully addressed and made moot.” Ariosa
Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015).
In other words, “preemption may signal patent ineligible subject matter,
[but] the absence of complete preemption does not demonstrate patent
eligibility.” Id.
In view of the above, we agree with the Examiner that claim 23 is
directed to an abstract idea.
Step two of the Alice 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
Appeal 2018-004455
Application 14/181,838

11
more than a patent upon the [ineligible concept] itself.’” Alice, 573 U.S.
at 217–18 (citing Mayo, 566 U.S. at 72–73).
Taking the claim elements separately, the functions performed by the
generic “memory devices” and “processing modules” are purely
conventional. Storing data, receiving data, generating data, transmitting
data, determining values, and responding to a triggering event, i.e.,
following rules, are basic computer functions. They are well-understood,
routine, and conventional functions previously known to the industry. See
Elec. Power Grp., 830 F.3d at 1356 (The claims “do not include any
requirement for performing the claimed functions of gathering, analyzing,
and displaying in real time by use of anything but entirely conventional,
generic technology. The claims therefore do not state an arguably inventive
concept . . . .”); see also In re Katz Interactive Call Processing Patent Litig.,
639 F.3d 1303, 1316 (Fed. Cir. 2011) (“Absent a possible narrower
construction of the terms ‘processing,’ ‘receiving,’ and ‘storing,’ . . . those
functions can be achieved by any general purpose computer without special
programming.”).
Considered as an ordered combination, the generic components of
Appellants’ system add nothing that is not already present when the
limitations are considered separately. For example, claim 23 does not, as
discussed above, purport to improve the functioning of the memory devices
or the processing modules. Nor does it effect an improvement in any other
technology or technical field. Instead, claim 23 amounts to nothing
significantly more than an instruction to apply the abstract ideas using
generic computer components performing routine computer functions. That
Appeal 2018-004455
Application 14/181,838

12
is not enough to transform an abstract idea into a patent-eligible
invention. See Alice, 573 U.S. at 225–26.
In view of the above, we are not persuaded that the Examiner erred in
rejecting claim 23. Claims 24–41 fall with claim 23. See 37 C.F.R.
§ 41.37(c)(1)(iv).

DECISION
The Examiner’s rejection of claims 23–41 for nonstatutory
obviousness-type double patenting is summarily affirmed.
The Examiner’s rejection of claims 23–41 under 35 U.S.C. § 101 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)(1)(iv).

AFFIRMED