Ex Parte Huang

Patent Trial and Appeal Board

Jan 24, 2019

13693477 (P.T.A.B. Jan. 24, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/693,477 12/04/2012
61834 7590
Meister Seelig & Fein LLP
125 Park Avenue
7th Floor
NEW YORK, NY 10017
01/28/2019
FIRST NAMED INVENTOR
Dylan W. Huang
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.
6153-46CON 1075
EXAMINER
HAMILTON, SARA CHANDLER
ART UNIT PAPER NUMBER
3692
NOTIFICATION DATE DELIVERY MODE
01/28/2019 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):
patents@msf-law.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DYLAN W. HUANG
Appeal2017-010790 1
Application 13/693,477
Technology Center 3600
Before CARL W. WHITEHEAD JR., ADAM J. PYONIN, and
DAVID J. CUTITTA II, Administrative Patent Judges.
PYONIN, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134(a). We have
jurisdiction under 35 U.S.C. § 6(b ).
We affirm.
1 "The real party in interest is New York Life Insurance Company of New
York, New York." App. Br. 2.
Appeal2017-010790
Application 13/693,477
STATEMENT OF THE CASE
Introduction
The Application is directed to "providing and administering deferred
annuities with an annuity reset feature that provide periodic income
payments to an annuitant for a term beginning at a start date." Abstract.
Claims 1-15 and 17-21 are pending; claims 1, 8, and 15 are independent.
See App. Br. 10-15. Claim 1 is reproduced below for reference:
1. A computer implemented method for detecting data events
for executing data operations on an annuity database, the method
compnsmg:
monitoring, by a computing device communicatively
coupled to the annuity database, an annuity in the annuity
database to determine periodically, on reset dates, an income
reset feature associated with the annuity is available for
execution, the annuity provides periodic income payments to an
annuitant, the periodic income payments calculated based on at
least a present variable, the present variable stored in the annuity
database, and the income reset feature is operable to reset the
present variable to a reset variable, wherein the reset variable is
based on data retrievable by the computing device from a
publicly available data source;
retrieving, by the computing device, the present variable
from the annuity database and comparing the present variable
with the reset variable;
calculating, by the computing device, new periodic
income payments based on the reset variable;
maintaining, by the computing device, the present variable
in the annuity database on the reset dates when the new periodic
income payments are not more beneficial to the annuitant than
the periodic income payments;
resetting, by the computing device, the present variable on
the reset dates when the new periodic income payments are more
beneficial to the annuitant than the periodic income payments,
wherein resetting the present variable includes changing the
present variable in the annuity database to the reset variable and
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Application 13/693,477
setting the new periodic income payments as a floor of income
payments that can be reset by additional resets of the reset
variable; and
administering, by the computing device, the annuity based
on the calculated new periodic income payments when the new
periodic income payments are more beneficial to the annuitant
than the periodic income payments.
The Rejection2
Claims 1-15 and 17-21 stand rejected under 35 U.S.C. § 101 as being
patent ineligible. Final Act. 2.
ANALYSIS
We have reviewed the Examiner's rejections in light of Appellant's
arguments. Arguments Appellant could have made but chose not to make
are deemed to be waived. See 37 C.F.R. § 4I.37(c)(l)(iv).
The Examiner determines the claims are patent ineligible under 35
U.S.C. § 101 because the claims are directed to an abstract idea comprising a
fundamental economic practice or organizing human activity, and do not
include additional elements that are sufficient to amount to significantly
more than the abstract idea. Final Act. 4--8; Ans. 4--8; see also Alice Corp.
Pty. Ltd. v. CLS Banklnt'l, 573 U.S. 208,217 (2014) (Describing the two-
step framework "for distinguishing patents that claim laws of nature, natural
phenomena, and abstract ideas from those that claim patent-eligible
applications of those concepts.").
2 The Examiner has withdrawn the rejection of the claims under 35 U.S.C.
§ 112, second paragraph. See Advisory Act. 1.
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Application 13/693,477
After the mailing of the Answer and the filing of the Briefs in this
case, the US PTO published revised guidance on the application of§ 101.
2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50
(Jan. 7, 2019) (hereinafter "Memorandum"). Under the Memorandum, the
Office first looks to whether the claim recites:
(1) any judicial exceptions, including certain groupings of
abstract ideas (i.e., mathematical concepts, certain methods of
organizing human interactions such as a fundamental economic
practice, or mental processes); and
(2) additional elements that integrate the judicial exception into
a practical application (see MPEP § 2106.0S(a}-(c), (e}-(h)).
Only if a claim (1) recites a judicial exception and (2) does not integrate
that exception into a practical application, does the Office then look to
whether the claim:
(3) adds a specific limitation beyond the judicial exception that
are not "well-understood, routine, conventional" in the field (see
MPEP § 2106.0S(d)); or
( 4) simply appends well-understood, routine, conventional
activities previously known to the industry, specified at a high
level of generality, to the judicial exception.
See Memorandum.
We are not persuaded the Examiner's rejection is in error. We adopt
the Examiner's findings and conclusions as our own, and we add the
following primarily for emphasis and clarification with respect to the
Memorandum.
Independent Claim 1
Appellant argues the Examiner errs in determining the claims are
directed to an abstract idea, because "[a]lthough the claims recite 'an
annuity' and other terms associated with annuities, the presently claimed
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Application 13/693,477
invention does not claim an annuity itself." Reply Br. 4. Appellant
contends that, rather, "the claims recite a particular implementation of
technical features of the presently claimed invention according to specific
embodiments related to annuities." Id.
We agree with the Examiner that claim 1 is directed to an abstract
idea. See Final Act. 4. Claim 1 recites a method of "detecting data events
for executing data operations on an annuity database," including steps of
monitoring, retrieving, calculating, and resetting data relating to the annuity,
and also administering the annuity. See claim 1, supra. These steps
comprise fundamental economic principles or practices and/or commercial
or legal interactions; thus the claim recites the abstract idea of "certain
methods of organizing human activity." Memorandum, Section I
(Groupings of Abstract Ideas); see also Spec. ,r,r 5, 8 ("The annuity is
offered with the reset feature to the annuitant. In at least one embodiment,
the reset feature is provided as an optional rider to the annuity."). 3
3 See also Bilski v. Kappas, 561 U.S. 593, 611 (2010) ("The concept of
hedging, described in claim 1 and reduced to a mathematical formula in
claim 4, is an unpatentable abstract idea."); Alice, 573 U.S. at 218 ("These
claims are drawn to the abstract idea of intermediated settlement."); Buysafe,
Inc. v. Google, Inc., 765 F.3d 1350, 1355 (Fed. Cir. 2014) (claims that "are
squarely about creating a contractual relationship----a 'transaction
performance guaranty"' held as "directed to an abstract idea"); Accenture
Glob. Servs., GmbH v. Guidewire Software, Inc., 728 F.3d 1336, 1345 (Fed.
Cir. 2013) ( claims reciting "generalized software components arranged to
implement an abstract concept [ of generating insurance-policy-related tasks
based on rules to be completed upon the occurrence of an event] on a
computer" not patent eligible); Bancorp Servs., L.L. C. v. Sun Life Assur. Co.
of Can. (US.), 687 F.3d 1266, 1277 (Fed. Cir. 2012) (determining a
"'method for managing a life insurance policy comprising' seven steps" is
abstract).
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We are unpersuaded by Appellant's arguments that the claims recite
specific technical improvements (see, e.g., Reply Br. 4---6) and "the presently
claimed invention includes a signaling system that manages, commands,
directs and regulates the behavior of other devices or systems based on
certain conditions," which "is an ordered combination of limitations
sufficient to satisfy the eligibility requirements under Alice" (App. Br. 8).
Claim 1 does not recite an additional element or elements that reflect an
improvement in the functioning of a computer, or an improvement to other
technology or technical field. See Ans. 13. Rather, the disputed limitations
are part of the abstract idea itself, and serve at most to improve the potential
financial returns and marketability to the annuitant. See Spec. ,r,r 6-8, 24
("The reset feature specifically addresses the concern that some individuals
have of purchasing an annuity that locks them into terms at the time of
purchase that may be less beneficial than terms available at a later time.");
Alice, 573 U.S. at 222 ("In holding that the process was patent ineligible, we
rejected the argument that 'implement[ing] a principle in some specific
fashion' will 'automatically fal[l] within the patentable subject matter of
§ 101."') (quoting Parker v. Flook, 437 U.S. 584, 593(1978)).
Accordingly, we determine the claim does not integrate the judicial
exception into a practical application. See Memorandum, Section III(A)(2)
(Prong Two: If the Claim Recites a Judicial Exception, Evaluate Whether the
Judicial Exception Is Integrated Into a Practical Application). Nor do we
find the claim includes a specific limitation or a combination of elements
that amounts to significantly more than the judicial exception itself. See
Memorandum, Section III(B)(Step 2B: If the Claim Is Directed to a Judicial
Exception, Evaluate Whether the Claim Provides an Inventive Concept); see
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also Aatrix Software, Inc. v. Green Shades Software, Inc., 890 F.3d 1354,
1359 (Fed. Cir. 2018) ("the 'inventive concept' cannot be the abstract idea
itself'). Other than the abstract idea itself, the remaining claim elements
only recite generic computer components that are well-understood, routine,
and conventional. See Ans. 12; Spec. ,r,r 28, 33; Alice, 573 U.S. at 226.
Accordingly, we agree with the Examiner that claim 1 is patent
ineligible. See Ans. 6-7.
Dependent Claim 14
Appellant argues "the Examiner fails to correctly identify the
presently claimed invention," as "[t]he present[ly] claimed invention does
not recite an independent claim process 14 that recites 'creating and using an
evolving token."' App. Br. 9; see also App. Br. 6. Appellant contends that,
"[h Jenee, the Examiner has not properly analyzed the elements of the present
claims as recited." Id.
We are not persuaded of reversible error in the Examiner's rejection.
The Final Action includes the statement "[t]he abstract idea of creating and
using an evolving token." Final Act. 7. This statement, however, occurs in
the Examiner's discussion regarding the "significantly more" step of the
Alice framework, and is both preceded and followed by analysis appropriate
for such step. See Final Act. 7-8. We find that, although the statement
regarding the "token" appears to be inadvertently placed in the Office
Action, it does not change the understanding of the Examiner's rejection-as
evidenced by Appellant's arguments in the briefs and discussed above.
Accordingly, we find the Examiner's statement to be harmless error.
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CONCLUSION
Accordingly, we sustain the Examiner's rejection of independent
claim 1 and dependent claim 14 under 35 U.S.C. § 101. For the same
reasons, we sustain the Examiner's rejection of independent claims 8 and 15,
and the dependent claims, under 35 U.S.C. § 101. See Ans. 17.
DECISION
The Examiner's decision rejecting claims 1-15 and 17-21 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
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