Ex Parte PELZ

Patent Trial and Appeal Board

Apr 28, 2016

12182084 (P.T.A.B. Apr. 28, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
12/182,084 07/29/2008 AmnonPELZ
1444 7590 04/28/2016
Browdy and Neimark, PLLC
1625 K Street, N.W.
Suite 1100
Washington, DC 20006
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.
PELZlB 3102
EXAMINER
PRESTON, JOHN 0
ART UNIT PAPER NUMBER
3691
MAILDATE DELIVERY MODE
04/28/2016 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte AMNON PELZ
Appeal2013---007878
Application 12/182,084
Technology Center 3600
Before ANTON W. PETTING, NINA L. MEDLOCK, and
AMEE A. SHAH, Administrative Patent Judges.
PETTING, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE 1
Amnon Pelz (Appellant) seeks review under 35 U.S.C. § 134 of a final
rejection of claims 7-11, the only claims pending in the application on
appeal. 2 We have jurisdiction over the appeal pursuant to 35 U.S.C. § 6(b).
1 Our decision will make reference to the Appellant's Appeal Brief ("App.
Br.," filed January 8, 2013) and Reply Brief ("Reply Br.," filed May 27,
2013), and the Examiner's Answer ("Ans.," mailed March 26, 2013), and
Final Action ("Final Act.," mailed January 20, 2012).
2 The Final Action shows claims 1--4, 6-16, and 18 as remaining.
Claims 1--4, 6, 12-16, and 18 were canceled in an amendment filed Jan. 8,
2013.
Appeal2013-007878
Application 12/182,084
The Appellant invented a way of providing insurance. Specification 1: 8.
An understanding of the invention can be derived from a reading of
exemplary claim 7, which is reproduced below (bracketed matter and some
paragraphing added).
7. A system for providing insurance comprising
a processor having a database of entries,
the processor configured
[ 1] to input data indicative of an insurance policy
provided by an insurance provider to a depositor of an
animal's body material in a depository of body material,
and
[2] to store the data in an entry of the database,
[3] the insurance policy stipulating that the depositor is
indemnified
[ 4] for expenses incurred for a medical or cosmetic
treatment of the animal
[ 5] utilizing the deposited body material or
substitute body material of the type deposited by
the depositor.
The Examiner relies upon the following prior art:
Moore US 5,993,387
Richard US 2003/0014285 Al
Nov. 30, 1999
Jan. 16,2003
Claims 7-11 stand rejected under 35 U.S.C. § 103(a) as unpatentable
over Richard and Moore. 3
3 Rejections against claims 1--4, 6, 12-16, and 18 are considered withdrawn,
as these claims were canceled.
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Appeal2013-007878
Application 12/182,084
ISSUES
The issues of obviousness tum primarily on whether it was predictable to
stipulate that a depositor using a biological deposit policy ancillary to a
health insurance policy be insured against using the deposit in some health
treatment under the health policy.
FACTS PERTINENT TO THE ISSUES
The following enumerated Findings of Fact (FF) are believed to be
supported by a preponderance of the evidence.
Facts Related to Claim Construction
01. The disclosure contains no lexicographic definition of
"indemnify."
02. The ordinary meaning of the word "indemnify" is to insure against
damage, loss, or injury. 4
Facts Related to the Prior Art
Richard
03.Richard is directed to funding the preservation and storage of
biological materials such as adult and neonatal stem cells for the
insurance industry. Richard para. 2.
4 The American Heritage Dictionary of the English Language, Fifth Edition
2015, by Houghton Mifflin Harcourt Publishing Company,
https://www.ahdictionary.com/word/search.html?q=indemnify
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Appeal2013-007878
Application 12/182,084
04.Richard describes an insurance company reimbursing a
preservation and storage company for the initial costs involved in
processing and preserving biological materials for the insurance
company's policy holders. Richard para. 5.
05.Richard describes the collection, by an insurance company, of fees
for the preservation of umbilical cord blood cells including stem
cells, peripheral blood cells or other biological material of the
policy holder, a secondary insured, or a beneficiary. Richard
para. 10.
06.Richard describes offering this policy alone or as a service
ancillary to a health insurance policy. Richard para. 12.
07 .Richard describes offering this to provide coverage ancillary to an
insurance policy such that the biological material could be used in
the event the executive or other key employee were to be stricken.
Richard para. 16.
08.Richard describes how, in the case of a health insurance policy
having ancillary storage and preservation services, the stored
material is provided at the behest of the insured or beneficiary.
Richard para. 18.
Moore
09 .Moore is directed to maintaining a cord stem cell registry. Moore
1: 15-16.
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Appeal2013-007878
Application 12/182,084
10.1\!Ioore describes a computer, including a processor and memory,
configured to input data related to a stem cell registry. Moore
2:30-60.
ANALYSIS
We are not persuaded by the Appellant's argument that "Richard
nowhere mentions any connection between the stipulations or provisions of
the insurance policy and the deposited body material." App. Br. 4 (emphasis
omitted). Richard describes a health insurance policy with an ancillary
policy for deposited body material. Richard describes the purpose of this
ancillary policy as being for use in the event the executive or other key
employee were to be stricken and that the stored material is provided at the
behest of the insured or beneficiary. Although Richard does not explicitly
state that the policy text includes a stipulation that the depositor is
indemnified for expenses incurred for a medical or cosmetic treatment of
the animal utilizing the deposited body material or substitute body
material of the type deposited by the depositor, a health policy by
definition stipulates that the policy holder is indemnified for expenses
incurred for a medical treatment of himself (an animal). The very act of
the insurance provider providing such an ancillary policy implies the
stipulation extends to treatment using the deposits from the ancillary policy,
or at least shows it was predictable to one of ordinary skill in the health
insurance arts to have added this to the text of stipulated coverage.
But even were this not the case, claim 7 recites no more than inputting
and storing data somehow indicative of such a policy. Claim 7 does not
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Appeal2013-007878
Application 12/182,084
recite that the actual text of the policy or stipulation is within the data that
are entered and stored. Thus the data entered and stored only represent
something in the mind of the beholder.
Our reviewing court has held that nonfunctional descriptive material
cannot lend patentability to an invention that would have otherwise been
anticipated by the prior art. In re Ngai, 367 F.3d 1336, 1339 (Fed. Cir.
2004). Cf In re Gulack, 703 F.2d 1381, 1385 (Fed. Cir. 1983) (noting that
when descriptive material is not functionally related to the substrate, the
descriptive material will not distinguish the invention from the prior art in
terms ofpatentability). King Pharm., Inc. v. Eon Labs, Inc., 616 F.3d 1267,
1279 (Fed. Cir. 2010) ("[T]he relevant question is whether 'there exists any
new and unobvious functional relationship between the printed matter and
the substrate."') (citation omitted).
Appellant argues that the claimed data indicative of an insurance policy
patentably distinguish over the prior art policy data. \Ve disagree because
Appellant has failed to establish that the claimed data indicative of an
insurance policy data label are in any way functionally related to the
claimed database (substrate). As a result, Appellant's claimed data label as
being data indicative of an insurance policy does not distinguish his
invention from the prior art.
To more readily see the issue, we construe the limitations at issue as
follows:
A system for providing insurance comprising a processor having a
database of entries, the processor configured to input DATAl, and to
store the data in an entry of the database,
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Appeal2013-007878
Application 12/182,084
wherein uATAl is labelled as data indicative of an insurance policy
provided by an insurance provider to a depositor of an animal's body
material in a depository of body material, the insurance policy stipulating
that the depositor is indemnified for expenses incurred for a medical or
cosmetic treatment of the animal utilizing the deposited body material or
substitute body material of the type deposited by the depositor.
To agree with Appellant's reasoning would mean that each novel policy,
over which the known data are entered and stored in a database, is sufficient
to warrant a separate patent even if the remainder of the invention is
unchanged. This would result not only in Appellant's animal body material
stipulation in a body parts deposit insurance context distinguishing over the
prior art, but equally the same stipulation in a broader context would
distinguish over the prior art, as would every single unique insurance policy
phrasing. To give effect to Appellant's argument, we would need to ignore
our reviewing court's concerns with repeated patenting. We decline to do
so.
The rationale behind this prior art rejection is preventing the repeated
patenting of essentially a known product by the mere inclusion of novel non-
functional descriptive material. King Pharm., 616 F.3d at 1279 ("The
rationale behind this line of cases is preventing the indefinite patenting of
known products by the simple inclusion of novel, yet functionally unrelated
limitations.") Cf In re Ngai, 367 F.3d at 1339 ("If we were to adopt Ngai's
position, anyone could continue patenting a product indefinitely provided
that they add a new instruction sheet to the product.").
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Appeal2013-007878
Application 12/182,084
Here, the limitation of a policy with the recited stipulation in no way
depends on the data entry and storage, and the data entry and storage in no
way depends on the perception of the data as being a policy with the recited
stipulation. Thus this limitation should be afforded no patentable weight.
CONCLUSIONS OF LAW
The rejection of claims 7-11under35 U.S.C. § 103(a) as unpatentable
over Richard and Moore is proper.
DECISION
The rejection of claims 7-11 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)(l)(iv) (2011).
AFFIRMED
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