Ex Parte Multer et al

Patent Trial and Appeal Board

Jun 26, 2013

11463779 (P.T.A.B. Jun. 26, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte COREY BLAINE MULTER and
ROBERT L. CONWAY
____________

Appeal 2010-007568
Application 11/463,779
Technology Center 3600
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Before HUBERT C. LORIN, JOSEPH A. FISCHETTI, and
BIBHU R. MOHANTY, Administrative Patent Judges.

LORIN, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Corey Blaine Multer, et al. (Appellants) seek our review under 35
U.S.C. § 134 (2002) of the final rejection of claims 1-26. We have
jurisdiction under 35 U.S.C. § 6(b) (2002).
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SUMMARY OF DECISION
We AFFIRM.1

THE INVENTION
Claim 1, reproduced below, is illustrative of the subject matter on
appeal.
1. A computerized method of providing an annuity
including a flexible income feature, the method comprising:
receiving information useful for issuing an annuity
providing for a first level of income payments during a first
time period and a second level of income payments different
than the first level of income payments during a second time
period following the first time period, the second level of
income payments being contingent on at least one first event;
electronically computing an annuity premium necessary
to provide the first level of income payments and the contingent
second level of income payments;
receiving at least a portion of the computed premium;
and
issuing the annuity.

THE REJECTIONS
The Examiner relies upon the following as evidence of
unpatentability:
Schirripa US 6,275,807 B1 Aug. 14, 2001

1 Our decision will make reference to the Appellants’ Appeal Brief (“Br.,”
filed Nov. 23, 2009) and the Examiner’s Answer (“Ans.,” mailed Feb. 4,
2010).
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Arena

US 2002/0184129 A1 Dec. 5, 2002
Minnesota Life, MultiOption® Variable Annuities: Helping you
accumulate the dollars you need for a financially secure retirement,
(Jul. 15, 2008)
(http://web.archive.org/web/20020612075452/minnesotalife.com/prod
ucts/annuities/moa.html) (last visited Jul. 15, 2008) (hereinafter
“Minnesota Life”).

Nicholas D. Brown et al., Choosing the tight form of settlement (with
forms), 4 The Practical Litigator, 1-4 (Sep. 1993) (hereinafter
“Brown”).

Jon E. Tregarthen, Double the benefit with a split annuity, Life
Association News, 124, 126 (Sep. 1997) (hereinafter “Tregarthen”).

“Official Notice is taken that in today's financial systems where
computers are used universally, it would have been obvious to
one of ordinary skill in the art at the time of the invention for
Tre to incorporate computerized methods.” Ans. 4-5
(hereinafter “Official Notice I”).

“Official Notice is taken that it is well known in the art
to acquire information with respect to the annuity being
issued.” Ans. 5 (hereinafter “Official Notice II).

“Official Notice is taken that it is well known in the industry
with respect to annuities to have accelerated payments or a
lump sum payment on an annuity (over 100% payment).” Ans.
20 (hereinafter “Official Notice III”).

The following rejections are before us for review:
1. Claims 1-3 and 9 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Tregarthen and Official Notice I and II.
2. Claims 4-8 and 10-12 are rejected under 35 U.S.C. § 103(a) as being
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unpatentable over Tregarthen, Official Notice I and II, and Schirripa.
3. Claims 13-20, 23, and 24 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Schirripa and Tregarthen.
4. Claim 21 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Schirripa, Tregarthen, Arena, and Official Notice III.
5. Claim 22 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Schirripa, Tregarthen, and Minnesota Life.
6. Claims 25 and 26 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Schirripa, Tregarthen, and Brown.

ISSUE
Did the Examiner err in finding the claimed subject matter obvious to
one of ordinary skill in the art over the cited prior art combinations?

FINDINGS OF FACT
We rely on the Examiner’s factual findings stated in the Answer (Ans.
3-24). Additional findings of fact may appear in the Analysis below.

ANALYSIS
The rejection of claims 1-3 and 9 under 35 U.S.C. § 103(a) as being
unpatentable over Tregarthen and Official Notice I and II.
The Appellants argued claims 1-3 and 9 as a group (Br. 5). We select
claim 1 as the representative claim for this group, and the remaining claims
2, 3, and 9 stand or fall with claim 1. 37 C.F.R. § 41.37(c)(1)(vii) (2011).
We begin with the claim. It is drawn to a “computerized method.”
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Accordingly, the claimed subject matter involves a computer. The claim
provides no details about the computer to be used and, so, it is reasonable to
assume the claimed method covers employing a general-purpose computer.
The claimed method is a type of “business method.” As claimed, it
comprises four steps: (1) “receiving information ...”; (2) electronically
computing [a number] ...”; (3) “receiving [information] ...”; and, (4) “issuing
[information].” Only step (2) involves the use of a general computer. The
other steps are a matter of receiving and transmitting information that do not
require a computer. In fact, step (2) could be practiced independent of the
other steps.
With regard to step (2), it specifically calls for “electronically
computing an annuity premium necessary to provide [a] first level of income
payments and [a] second level of income payments.” The step provides no
details about the “computing” itself. At best, the step reasonably broadly
covers using a general-purpose computer to calculate a number.
It is true that the claim further characterizes the calculated number as
an “annuity premium necessary to provide [a] first level of income payments
and [a] second level of income payments.” However, this additional level of
characterization is merely descriptive of the intended use of the number.
This additional characterization does not affect the computing step or any
other claim step in any material way. The claim limitation “annuity
premium necessary to provide [a] first level of income payments and [a]
second level of income payments” is merely descriptive. As such it falls
under the category of patentably inconsequential subject matter.
We now turn to the rejection.
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The Examiner takes the position that Tregarthen and Official Notice II
disclose all the various types of information mentioned in the claim but
“[do] not teach a computerized method” (Ans. 4). The Examiner relies on
Official Notice I that computers are known to make a prima facie case of
obvious for the claimed subject matter directed to “computerized methods.”
Ans. 4-5.
The Appellants respond by arguing that Tregarthen (a) “does not teach
or suggest computing an annuity premium’” (Br. 6); (b) “does not teach or
suggest ‘receiving at least a portion of the computed premium’” (Br. 10) and
(c) “does not teach or suggest ‘an annuity’ as claimed” (Br. 10).
The fact that Tregarthen does not compute is not a persuasive
argument as to error in the rejection because the Examiner conceded that
fact and relied instead on Official Notice I to reach the conclusion of
obviousness over the claims as a whole.
The rest of the arguments go to details about the information the
claimed method gathers and the number computed. We discern no
difference in the steps being performed between what is claimed and what
Tregarthen discloses. We are not persuaded by these other arguments
because they are over differences in the content of information between that
which is claimed and what Tregarthen discloses, not in the method steps
themselves. Nonfunctional descriptive material cannot render nonobvious
an invention that would have otherwise been obvious. In re Ngai, 367 F.3d
1336, 1339 (Fed. Cir. 2004). Cf. In re Gulack, 703 F.2d 1381, 1385 (Fed.
Cir. 1983) (when descriptive material is not functionally related to the

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substrate, the descriptive material will not distinguish the invention from the
prior art in terms of patentability).
For the foregoing reasons, the rejection is sustained.

The rejection of claims 4-8 and 10-12 under 35 U.S.C. § 103(a) as being
unpatentable over Tregarthen, Official Notice I and II, and Schirripa.
The rejection of claims 13-20, 23, and 24 under 35 U.S.C. § 103(a) as being
unpatentable over Schirripa and Tregarthen.
The rejection of claim 21 under 35 U.S.C. § 103(a) as being unpatentable
over Schirripa, Tregarthen, Arena, and Official Notice III.
The rejection of claim 22 under 35 U.S.C. § 103(a) as being unpatentable
over Schirripa, Tregarthen, and Minnesota Life.
The rejection of claims 25 and 26 under 35 U.S.C. § 103(a) as being
unpatentable over Schirripa, Tregarthen, and Brown.
The Appellants challenge these rejections for the reasons used to
challenge the rejection of claim 1 (Br. 12-14). Having found the arguments
challenging the rejection of claim 1 unpersuasive as to error in the rejection,
we find them equally unpersuasive as to error in these rejections.

CONCLUSIONS
The rejections of claims 1-3 and 9 under 35 U.S.C. § 103(a) as being
unpatentable over Tregarthen and Official Notice I and II; claims 4-8 and
10-12 under 35 U.S.C. § 103(a) as being unpatentable over Tregarthen,
Official Notice I and II, and Schirripa; claims 13-20, 23, and 24 under 35
U.S.C. §1 03(a) as being unpatentable over Schirripa and Tregarthen; claim
21 under 35 U.S.C. § 103(a) as being unpatentable over Schirripa,

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Tregarthen, Arena, and Official Notice III; claim 22 under 35 U.S.C. §
103(a) as being unpatentable over Schirripa, Tregarthen, and Minnesota
Life; and, claims 25 and 26 under 35 U.S.C. § 103(a) as being unpatentable
over Schirripa, Tregarthen, and Brown, are affirmed.

DECISION
The decision of the Examiner to reject claims 1-26 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). See 37 C.F.R.
§ 1.136(a)(1)(iv).

AFFIRMED

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