Ex Parte Huang

Patent Trials and Appeals BoardJan 24, 2019

13693477 - (D) (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. Â§ 134(a). We have jurisdiction under 35 U.S.C. Â§ 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 2 Appeal2017-010790 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. Â§ 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. Â§ 4I.37(c)(l)(iv). The Examiner determines the claims are patent ineligible under 35 U.S.C. Â§ 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. Â§ 112, second paragraph. See Advisory Act. 1. 3 Appeal2017-010790 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 ofÂ§ 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 Â§ 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 Â§ 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 4 Appeal2017-010790 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). 5 Appeal2017-010790 Application 13/693,477 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 Â§ 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 6 Appeal2017-010790 Application 13/693,477 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. 7 Appeal2017-010790 Application 13/693,477 CONCLUSION Accordingly, we sustain the Examiner's rejection of independent claim 1 and dependent claim 14 under 35 U.S.C. Â§ 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. Â§ 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. Â§ 1.136(a)(l )(iv). AFFIRMED 8