Ex Parte Brooker et al

Patent Trial and Appeal Board

Apr 5, 2016

12718556 (P.T.A.B. Apr. 5, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
121718,556 03/05/2010
5073 7590
BAKER BOTTS L.L.P.
2001 ROSS A VENUE
SUITE 600
DALLAS, TX 75201-2980
04/07/2016
FIRST NAMED INVENTOR
David E. Brooker
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.
002328.0784 5106
EXAMINER
OJIAKU, CHIKAODINAKA
ART UNIT PAPER NUMBER
3696
NOTIFICATION DATE DELIVERY MODE
04/07/2016 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 DAVIDE. BROOKER, CARLETON D. BURTT,
CHRISTOPHER D. SCHOTT, and DANIEL STRINGHAM
Appeal2013-009567 1
Application 12/718,5562
Technology Center 3600
Before ANTON W. PETTING, NINA L. MEDLOCK, and
BRUCE T. WIEDER, Administrative Patent Judges.
MEDLOCK, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's final
rejection of claims 1-25. We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.
1 Our decision references Appellants' Appeal Brief ("App. Br.," filed
January 17, 2013) and Reply Brief ("Reply Br.," filed July 29, 2013), and
the Examiner's Answer ("Ans.," mailed May 28, 2013) and Final Office
Action ("Final Act.," mailed August 3, 2012).
2 Appellants identify The Prudential Insurance Company of America as the
real party in interest. App. Br. 2.
Appeal2013-009567
Application 12/718,556
CLAIMED INVENTION
Appellants' claimed invention "relates in general to the field of
financial systems, and more particularly to a system and method for
managing a group insurance policy" (Spec. 1, 11. 7-8).
Claim 1, reproduced below, is illustrative of the subject matter on
appeal:
1. A method for managing a group life insurance
policy with a plurality of certificates funded by a sponsor, each
certificate providing a death benefit to at least one beneficiary
designated by a respective person insured under the certificate,
the method comprising:
determining, by a computing system, an initial payment to
be paid by the sponsor as a lump sum in exchange for the
plurality of certificates;
allocating, by the computing system, at least a respective
portion of the initial payment to each certificate of the plurality
of certificates;
monitoring, by the computing system, for a non-death-
related event that affects one of the plurality of certificates; and
in response to detection of the non-death-related event,
exchanging, by the computing system, the one of the plurality of
certificates for a new certificate providing a death benefit to at
least one beneficiary designated by a person insured under the
new certificate, wherein the exchanging comprises reallocating
to the new certificate at least a portion of the respective portion
of the initial payment allocated to the one of the plurality of
certificates.
2
Appeal2013-009567
Application 12/718,556
REJECTIONS
Claims 1-9, 15-19, and 21-24 are rejected under 35 U.S.C. § 103(a)
as unpatentable over Colessides (US 2006/0116915 Al, pub. June 1, 2006)
and Lang (US 2010/0010837 Al, pub. Jan. 14, 2010).
Claims 10-14, 20, and 25 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Colessides, Lang, and Laning (US 2005/0137913 Al,
pub. June 23, 2005).
ANALYSIS
Independent claim 1 and dependent claims 2-9
We are persuaded by Appellants' argument that the Examiner erred in
rejecting independent claim 1 under 35 U.S.C. § 103(a) because modifying
Colessides with Lang, as the Examiner proposes, would render Colessides
unsatisfactory for its intended purpose (App. Br. 17-18).3 In other words, a
person of ordinary skill in the art at the time of Appellants' invention would
have had no apparent reason to modify Colessides by substituting life
insurance benefits, as disclosed in Lang, for Colessides' s property insurance
benefits, as the Examiner proposes.
Colessides is directed to a blanket insurance method and policy for
insuring the owner of an apartment or other multi-unit dwelling against
damage to the dwelling caused by a tenant's unintentional/accidental acts
(Colessides, Abstract). Colessides is, thus, concerned with providing
insurance coverage to protect the building owner and tenant from
unintentional tenant acts causing fire, smoke, explosion, and water damage
3 The Examiner does not provide any rebuttal in the Answer nor otherwise
address Appellants' argument in any way.
3
Appeal2013-009567
Application 12/718,556
to the building units (id. if 6). Substituting life insurance benefits for
Colessides' s property insurance benefits, as the Examiner proposes, would
effectively eliminate any protection of the building owner against property
loss. Indeed, as Appellants observe, "as a result of the proposed
modification, the insured tenant could accidentally destroy the entire
building and the life insurance ... would not protect the building owner
at all" (App. Br. 18)- a result that runs squarely counter to very purpose of
Colessides's blanket insurance method and policy.
The Examiner has not established on this record that a person of
ordinary skill in the art would have had an apparent reason, in view of
Lang's disclosure of employer-provided group life insurance benefits, to
modify Colessides' s blanket insurance method and policy to provide life
insurance rather than property insurance benefits. In fact, there can be no
such apparent reason where, as here, the Examiner's proposed modification
would render Colessides unsatisfactory for its intended purpose. In re
Gordon, 733 F.2d 900, 902 (Fed. Cir. 1984) (finding no reason to modify a
prior art device where the modification would render the device "inoperable
for its intended purpose").
The Examiner has failed to establish a prima facie case of
obviousness. See KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) (a
conclusion of obviousness must be supported by explicit findings and
analysis establishing an apparent reason to combine the known elements in
the manner required in the claim at issue). Therefore, we do not sustain the
Examiner's rejection of claim 1 under 35 U.S.C. § 103(a). For the same
reasons, we also do not sustain the Examiner's rejection of claims 2-9, each
of which ultimately depends from claim 1. Cf In re Fritch, 972 F.2d 1260,
4
Appeal2013-009567
Application 12/718,556
1266 (Fed. Cir. 1992) ("dependent claims are nonobvious if the independent
claims from which they depend are nonobvious").
Independent claims 15 and 21 and dependent claims 16--19 and 22-24
Independent claims 15 and 21 include language substantially similar
to the language of claim 1. Therefore, we do not sustain the Examiner's
rejection under 35 U.S.C. § 103(a) of independent claims 15 and 21, and
claims 16-19 and 22-24, which depend therefrom, for the same reasons set
forth above with respect to claim 1.
Dependent claims 10--14, 20, and 25
Claims 10-14, 20, and 25 depend from independent claims 1, 15, and
21, respectively. The Examiner's rejection of claims 10-14, 20, and 25
based on Laning, in combination with Colessides and Lang, does not cure
the deficiency in the Examiner's rejection of claims 1, 15, and 21.
Therefore, we do not sustain the Examiner's rejection of claims 10-14, 20,
and 25 under 35 U.S.C. § 103(a) for the same reasons set forth above \vith
respect to the independent claims.
DECISION
The Examiner's rejections of claims 1-25 under 35 U.S.C. § 103(a)
are reversed.
REVERSED
5