Appeal Number: 2006-2941
Application Number: 10/170,421
We agree with appellant. Halley discloses (column 2, line 50) a master trust,
which corresponds to the claimed fund in each of independent claims 1 and 14. Further,
subscriber employers (or participants, as recited in claims 1 and 14) pay into the fund
periodically. If each period were considered to be an accounting period or first period, as
recited in claims 1 and 14, respectively, then liabilities would have to be established
against the subscriber employers during that period to satisfy claims 1 and 14. The
liabilities established against the employers are the periodic benefits from the life
insurance policies, which go into effect upon the death, incapacitation, or retirement of
employees. It is unclear whether the period during which death benefits, for example, are
established for an employee is the same period during which the employer pays into the
fund, as required by claim 1. However, even assuming arguendo that the periods are the
same, there is nothing in Halley that would suggest distributing any excesses to the
employers, as recited in each of claims 1 and 14. Thus, Halley fails to disclose or suggest
all of the steps of claims 1 and 14, or of claims 4 through 6, 8, 10 through 13, and 16
through 22, which depend therefrom. As the examiner has failed to provide any
secondary reference or convincing line of reasoning to modify Halley to include the
limitations lacking therefrom, we cannot sustain the obviousness rejection of claims 1, 4
through 6, 8, 10 through 14, and 16 through 22.
Regarding claims 2, 7, and 9, the examiner combines Deavers with Halley,
asserting that Deavers teaches that participants pay into the fund at the beginning of or
during an accounting period. However, as Deavers fails to teach or disclose paying out
the excesses to the participants, Deavers fails to cure the shortcomings of Halley
described supra. Therefore, we cannot sustain the obviousness rejection of claims 2, 7,
and 9.
In accordance with the provisions of 37 CFR § 41.50(a)(1) and the Manual of
Patent Examining Procedure (MPEP) § 1207.03 (8th ed., Rev. 5, Aug. 2006), this
application is remanded to the examiner for an additional response. In particular, the
claims are to be reviewed for statutory subject matter under 35 U.S.C. § 101 in view of
the Interim Guidelines for Examination of Patent Applications for Patent Subject Matter
Eligibility (1300 Off. Gaz. Pat. Office 142 (Nov. 22, 2005)).
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