DETAILED ACTION
This Non-Final Office Action is in response to the application filed on 01/22/2008, the Amendment & Remark filed 06/08/2026 and the Request for Continued Examination filed on 06/08/2026.
Notice of Pre-AIA or AIA Status
The present application is being examined under the pre-AIA first to invent provisions.
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 06/08/2026 has been entered.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1, 4-6, 10, 12-14, 16-27, 29 and 30 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Claims 1, 29 and 30 recite “wherein the external systems interaction module enables data exchange with the external proprietary record-keeping systems to aggregate information for omnibus trading while maintaining data identification at an individual level.” However, the Original Disclosure does not support the external systems interaction module enables data exchange with the external proprietary record-keeping systems to aggregate information for omnibus trading while maintaining data identification at an individual level. The Original Disclosure supports “the external systems interaction module enables data exchange with the external proprietary record-keeping systems” and “data exchange for a particular RIA and they can trade in the aggregate for all of their clients, but data will be identified at an individual level”, but not the ordered combination claimed.
Claim Rejections - 35 USC § 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Claims 1, 4-6, 10, 12-14, 16-27, 29 and 30 are rejected under 35 U.S.C. 101 because the claimed invention is directed to a judicial exception (i.e., a law of nature, a natural phenomenon, or an abstract idea) without significantly more.
As an initial matter, the claims as a whole are to processes and a machine, which falls within one or more statutory categories. (Step 1: YES) The recitation of the claimed invention is then further analyzed as follow, in which the abstract elements are boldfaced.
The claims recite:
A computer implemented method performed by an option administration center connected through a communications network to at least one consumer station and at least one investment manager station, the option administration center comprising a portfolio assessment module, a guarantee adjustment module, and an external systems interaction module that exchanges a future value of an asset or portfolio of assets for at least one annuity instrument outcome on a future date and adjusts a guarantee to a second guaranteed outcome to reflect a fluctuation in performance of the asset or portfolio of assets, the computer implemented method comprising the steps of:
determining, by the portfolio assessment module of the option administration center coupled to a memory that stores data relating to an asset or portfolio of assets and associated assessment data, a delivery of the annuity outcome based on an assessment of an underwritten strategy associated with an asset or portfolio of assets, wherein the assessment of the underwritten strategy comprises an assessment of the asset or portfolio of assets and an assessment of an investment manager’s strategy, and wherein the delivery of the annuity outcome comprises a fixed or variable annuity contract with a floor equal to the guaranteed income stream amount;
determining, by the option administration center, a fee payment amount or a series of fee payment amounts and at least one guideline required for the delivery of the annuity outcome, wherein the fee payment amount or the series of fee payment amount and the at least one guideline is based on the assessment of the underwriting strategy and the fee is further based on at least one metric tired to the asset or the portfolio of asset comprising a current value and a change in value of the asset or portfolio of assets;
wherein an investor pays the fee to exchange a future value of the asset or the portfolio of assets, regardless of future performance or value, for at least one annuity outcome on a future date, such at least one annuity outcome on a future date constituting a first guaranteed outcome, where the at least one annuity outcome on a future date is contingent on:
(1) a payment of the fee, wherein the payment of the fee is made directly from the asset or the portfolio of assets to a counterparty directly or through a trust or other acceptable arrangement, and
(2) maintaining the asset or portfolio of assets in accordance with at least one guideline or benchmark required for the delivery of the annuity outcome, and the at least one guideline or benchmark is constituted by at least one boundary value, the at least one boundary value related to the performance of the asset or portfolio of assets and wherein the guideline can change on a future date; and
conducting, by the guarantee adjustment module of the option administration center, an ongoing valuation or appraisal of the guarantee by assessing compliance with the at least one guideline or benchmark;
automatically adjusting, by the guarantee adjustment module of the option administration center, a guarantee based on a failure to attain the minimum guideline or benchmark, such adjusting including adjusting the at least one annuity outcome from the first guaranteed outcome to a second guaranteed outcome where the adjusting to the second guaranteed outcome reflects a fluctuation in the performance of the asset or portfolio of assets.
wherein:
the asset or portfolio of assets comprises one or more investment structure;
the guarantee of annuity outcome is increased based on compliance with the at least one guideline or benchmark, and the performance of the asset or portfolio of assets, and wherein the guarantee of annuity outcome can decrease based on failure to comply with the at least one guideline or benchmark;
wherein determining the delivery of the annuity outcome comprises assessing the asset or portfolio against specified benchmarks for risk and return profiles and evaluating investment manager performance based on historical gains and decision- making effectiveness,
wherein determining the fee payment amount comprises calculating payments based on portfolio value as a percentage of assets and establishing guidelines based on quantitative investment criteria and qualitative management factors, and
wherein automatically adjusting the guarantee comprises monitoring compliance with prescribed guidelines through periodic valuations and applying predetermined business rules to increase, decrease, or eliminate guarantees based on performance relative to benchmarks such as S&P 500 outperformance requirements;
wherein the external systems interaction module interfaces with external proprietary record-keeping systems through the communication network to receive and transmit data relating to the asset or portfolio of assets,
wherein the external systems interaction module enables data exchange with the external proprietary record- keeping systems to aggregate information for omnibus trading while maintaining data identification at an individual level.
wherein the fee payment amount or the series of fee payment amounts and the at least one guideline or benchmark is based on the assessment of the underwritten strategy.
wherein the fee payment or the series of fee payment amounts is made by the investor or an investor agent to a Counterparty directly or through a trust or other acceptable arrangement.
wherein the Counterparty may comprise a/an trust, certificate corporation, corporation, limited partner, sole proprietor, partnership, limited liability corporation, collective trust, plan sponsor, custodian, bank, insurance company, broker dealer, fund company, benefit consultant, credit union, registered investment advisor, government or union.
wherein the asset or portfolio of assets comprises any acceptable portfolio or investment structure(s), mutual fund(s), separate account(s), structured product(s), custodial account(s), trust account(s), comingled fund(s), hedge fund(s), individual security(ies), structured settlement(s), private placement(s), partnership(s), corporation(s), or other acceptable structure that may be converted pursuant to the terms of an agreement to exchange a future value of an asset or a portfolio of assets, regardless of future performance or value, for at least one annuity outcome on a future date.
wherein the delivery of the annuity outcome comprises a fixed or variable annuity contract with a floor equal to the guaranteed income stream amount.
wherein the fee is based in part on the current value or change in value of the asset or portfolio of assets.
wherein the guarantee of annuity outcome is increased based on compliance with the at least one guideline or benchmark and the performance of the asset or portfolio of assets.
wherein the guarantee of annuity outcome can decrease based on failure to comply with the at least one guideline or benchmark.
wherein the ongoing valuation or appraisal is conducted periodically.
permitting remedies and corrective actions to continue to guarantee.
wherein the guarantee is contingent on one or more lives.
wherein the guideline can change on a future date.
wherein the guarantee can be transferred from one asset or portfolio of assets to another.
wherein the fee payment can be funded by the investor or any other party.
wherein the fee payment can be factored from the portfolio or the future payments or settlement options.
wherein the guarantee is based on a formula that considers the age and/or gender of the owner.
wherein the at least one annuity outcome results in a cash flow.
wherein the at least one annuity outcome results in a non-cash transaction.
wherein the at least one annuity outcome results in the portfolio of assets being transferred to a Counterparty as a remedy or as the purchase settlement option.
wherein the initial underwriting process determines the at least one annuity outcome.
wherein the at least one annuity outcome comprises two or more annuity instruments.
interfacing with at least one external recordkeeping system.
A computer implemented method performed by an option administration center connected through a communications network to at least one consumer station and at least one investment manager station, the option administration center comprising a portfolio assessment module, a guarantee adjustment module, and an external systems interaction module, the method for providing an option to pay a fee to exchange a future value of an asset or portfolio of assets, regardless of future performance or value, for at least one annuity outcome on a future date, comprising the steps of:
determining, by a portfolio assessment module of the option administration center coupled to a memory, a guaranteed delivery of annuity outcome other than cash based on an existing asset or portfolio of assets and an underwritten strategy associated with the asset or portfolio of assets, wherein the delivery of the annuity outcome comprises a fixed or variable annuity contract with a floor equal to the guaranteed income stream amount;
determining, by the option administration center, a fee payment amount and minimum strategy guidelines required for the guaranteed delivery of annuity outcome other than cash to remain in effect, wherein the fee payment amount and minimum strategy guidelines are based on the underwritten strategy and the fee is further based on at least one metric tied to the asset or the portfolio of assets comprising a current value and a change in value of the asset or portfolio of assets and wherein payment of the fee is made directly from the asset or the portfolio of assets to a counterparty directly or through a trust or other acceptable arrangement;
conducting, by the guarantee adjustment module of the option administration center, an ongoing valuation or appraisal of the guarantee by assessing compliance with the at least one guideline or benchmark;
automatically adjusting, by the guarantee adjustment module of the option administration center, the guaranteed delivery of annuity outcome other than cash based on a failure to attain the minimum strategy guidelines, the adjusting the guaranteed delivery of annuity outcome other than cash comprising reducing the guaranteed delivery of annuity outcome other than cash to a value that is above zero where the adjusting reflects a fluctuation in the performance of the asset or portfolio of assets;
wherein the minimum strategy guidelines is constituted by at least one boundary value, the at least one boundary value related to the performance of the asset or portfolio of assets and wherein the guideline can change on a future date; and
wherein: the asset or portfolio of assets comprises one or more investment structure, the guarantee of annuity outcome is increased based on compliance with the at least one guideline or benchmark, and the performance of the asset or portfolio of assets, and the guarantee of annuity outcome can decrease based on failure to comply with the at least one guideline or benchmark,
wherein determining the delivery of the annuity outcome comprises assessing the asset or portfolio against specified benchmarks for risk and return profiles and evaluating investment manager performance based on historical gains and decision-making effectiveness,
wherein determining the fee payment amount comprises calculating payments based on portfolio value as a percentage of assets and establishing guidelines based on quantitative investment criteria and qualitative management factors,
wherein automatically adjusting the guarantee comprises monitoring compliance with prescribed guidelines through periodic valuations and applying predetermined business rules to increase, decrease, or eliminate guarantees based on performance relative to benchmarks such as S&P 500 outperformance requirements; and
wherein the external systems interaction module interfaces with external proprietary record-keeping systems through the communications network to receive and transmit data relating to the asset or portfolio of assets.
A system comprising: an option administration center connected through a communications network to at least one consumer station and at least one investment manager station, the option administration center comprising:
a memory that stores data relating to an asset or portfolio of assets and associated assessment data;
a computer processor coupled to the memory and further comprising:
a portfolio assessment module that determines the delivery of an annuity outcome based on an assessment of an underwritten strategy associated with an asset or portfolio of assets, wherein the assessment of the underwritten strategy comprises an assessment of the asset or portfolio of assets and an assessment of an investment manager's strategy, and wherein the delivery of the annuity outcome comprises a fixed or variable annuity contract with a floor equal to the guaranteed income stream amount; and
a guarantee determination module that determines a fee payment amount and at least one guideline required for the delivery of the annuity outcome, wherein the fee payment amount and the at least one guideline is based on the assessment of the underwritten strategy and the fee is further based on at least one metric tied to the asset or the portfolio of assets comprising a current value and a change in value of the asset or portfolio of assets; and
the system providing, via an interactive interface, an investor the ability to pay the fee to exchange a future value of the asset or the portfolio of assets, regardless of future performance or value, for at least one annuity instrument outcome on a future date, where the at least one annuity outcome on a future date is contingent on:(1) a payment of the fee, wherein the payment of the fee is made directly from the asset or the portfolio of assets to a counterparty directly or through a trust or other acceptable arrangement, and (2) maintaining the asset or portfolio of assets in accordance with at least one guideline or benchmark required for the delivery of the least one non-cash settlement instrument outcome;
conducting an ongoing valuation or appraisal of the guarantee by assessing compliance with the at least one guideline or benchmark, wherein the conducting is performed by a guarantee adjustment module of the option administration center;
the system automatically adjusting the at least one annuity instrument outcome on a future date based on a failure to attain the minimum guideline or benchmark, wherein the adjusting is performed by the guarantee adjustment module, such adjusting including adjusting the at least one annuity instrument outcome from a first guaranteed outcome to a second guaranteed outcome where the adjusting to the second guaranteed outcome reflects a fluctuation in the performance of the asset or portfolio of assets;
wherein the least one guideline or benchmark is constituted by at least one boundary value, the at least one boundary value related to the performance of the asset or portfolio of assets and
wherein the guideline can change on a future date; and wherein: the asset or portfolio of assets comprises one or more investment structure, the guarantee of annuity outcome is increased based on compliance with the at least one guideline or benchmark, and the performance of the asset or portfolio of assets, and the guarantee of annuity outcome can decrease based on failure to comply with the at least one guideline or benchmark,
wherein determining the delivery of the annuity outcome comprises assessing the asset or portfolio against specified benchmarks for risk and return profiles and evaluating investment manager performance based on historical gains and decision-making effectiveness,
wherein determining the fee payment amount comprises calculating payments based on portfolio value as a percentage of assets and establishing guidelines based on quantitative investment criteria and qualitative management factors, and
wherein automatically adjusting the guarantee comprises monitoring compliance with prescribed guidelines through periodic valuations and applying predetermined business rules to increase, decrease, or eliminate guarantees based on performance relative to benchmarks such as S&P 500 outperformance requirements; and
wherein the option administration center further comprises an external systems interaction module that interfaces with external proprietary record-keeping systems through the communications network to receive and transmit data relating to the asset or portfolio of assets.
Based on the limitations above, the claims describe a process that covers administrating annuity product. Administrating annuity product manages the contractual relationship between policy holder and policy provider, and is considered to be a commercial interaction, which falls within the “Certain Methods of Organizing Human Activity” grouping of abstract ideas. As such, the claim(s) recite(s) a Judicial Exception. (Step 2A prong one: Yes)
This analysis then evaluates whether the claims as a whole integrates the recited Judicial Exception into a practical application of the exception. In particular, the claims recite the additional element(s) of “module” as a mere tool to perform the steps of the Judicial Exception, which encompasses no more than Mere Instruction to Apply.
For example,
the limitation “determining, by the portfolio assessment module of the option administration center coupled to a memory that stores data relating to an asset or portfolio of assets and associated assessment data, a delivery of the annuity outcome based on an assessment of an underwritten strategy associated with an asset or portfolio of assets, wherein the assessment of the underwritten strategy comprises an assessment of the asset or portfolio of assets and an assessment of an investment manager’s strategy, and wherein the delivery of the annuity outcome comprises a fixed or variable annuity contract with a floor equal to the guaranteed income stream amount” encompasses no more than generically invoking a computer module to apply the Judicial Exception step of making the determination;
the limitation “determining, by the option administration center, a fee payment amount or a series of fee payment amounts and at least one guideline required for the delivery of the annuity outcome, wherein the fee payment amount or the series of fee payment amount and the at least one guideline is based on the assessment of the underwriting strategy and the fee is further based on at least one metric tired to the asset or the portfolio of asset comprising a current value and a change in value of the asset or portfolio of assets” in the context of the claimed invention encompasses one or more person, such as an investment manager, manually making the determination;
the limitation “conducting, by the guarantee adjustment module of the option administration center, an ongoing valuation or appraisal of the guarantee by assessing compliance with the at least one guideline or benchmark” encompasses no more than generically invoking a computer module to apply the Judicial Exception step of conducting ongoing valuation or appraisal of the guarantee;
the limitation “automatically adjusting, by the guarantee adjustment module of the option administration center, a guarantee based on a failure to attain the minimum guideline or benchmark, such adjusting including adjusting the at least one annuity outcome from the first guaranteed outcome to a second guaranteed outcome where the adjusting to the second guaranteed outcome reflects a fluctuation in the performance of the asset or portfolio of assets” encompasses no more than generically invoking a computer module to apply the Judicial Exception step of adjusting the guarantee;
the limitation “automatically adjusting, by the guarantee adjustment module of the option administration center, a guarantee based on a failure to attain the minimum guideline or benchmark, such adjusting including adjusting the at least one annuity outcome from the first guaranteed outcome to a second guaranteed outcome where the adjusting to the second guaranteed outcome reflects a fluctuation in the performance of the asset or portfolio of assets” encompasses no more than generically invoking a computer module to apply the Judicial Exception step of adjusting the guarantee;
the limitation “wherein determining the delivery of the annuity outcome comprises assessing the asset or portfolio against specified benchmarks for risk and return profiles and evaluating investment manager performance based on historical gains and decision- making effectiveness” encompasses no more than generically invoking a computer module to apply the Judicial Exception step of assessing the asset or portfolio against specified benchmarks and evaluating investment manager performance based on historical gains and decision-making effectiveness;
the limitation “wherein determining the fee payment amount comprises calculating payments based on portfolio value as a percentage of assets and establishing guidelines based on quantitative investment criteria and qualitative management factors” encompasses no more than generically invoking a computer module to apply the Judicial Exception step of calculating fee payment based on portfolio value as a percentage of asset and establishing guidelines based on quantitative investment criteria and qualitative management factors;
the limitation “wherein automatically adjusting the guarantee comprises monitoring compliance with prescribed guidelines through periodic valuations and applying predetermined business rules to increase, decrease, or eliminate guarantees based on performance relative to benchmarks such as S&P 500 outperformance requirements” encompasses no more than generically invoking a computer module to apply the Judicial Exception step of monitoring compliance with prescribed guidelines through periodic valuations and applying predetermined business to adjust the guarantees based on relative performance;
the limitation “wherein the external systems interaction module interfaces with external proprietary record-keeping systems through the communication network to receive and transmit data relating to the asset or portfolio of assets” encompasses no more than generically invoking a computer module to apply the Judicial Exception step of communicating with the external recordkeeping systems to receive and transmit data relating to the asset or portfolio of assets;
the limitation “wherein the external systems interaction module enables data exchange with the external proprietary record- keeping systems to aggregate information for omnibus trading while maintaining data identification at an individual level” encompasses no more than generically invoking a computer module to apply the Judicial Exception step of enabling data exchange to aggregate information for omnibus trading whiling maintaining data identification at an individual level;
the limitation “interfacing with at least one external recordkeeping system” encompasses no more than generically invoking a computer module to apply the Judicial Exception step of communicating with the external recordkeeping system.
Other than being generally linked to the steps of the Judicial Exception, the additional elements in the above step(s) is/are recited at a high-level of generality, without technological detail of how the particular steps are performed technologically.
The additional element(s) of “memory” and/or “non-transitory storage medium” are generically recited to store data and/or instructions of the Judicial Exception.
The additional element(s) of “connected through a communications network to”, “external systems interaction module” and “… systems interaction module” are generically recited to perform communication steps such as receiving and transmitting.
The additional element(s) of “interactive interface” are generically recited to perform input/output steps described only by a result-oriented solution with insufficient detail for how the interface accomplish it.
The examiner further noted generic computer affixes such as “automatically” are appended to abstract elements such as “adjusting … a guarantee”, but found that to be mere instructions to implement the Judicial Exception idea on a computer.
Indeed, the instant claims (1) attempted to cover a solution to an identified problem with no restriction on how the result is accomplished and no description of the mechanism for accomplishing the result; (2) used of a computer or other machinery in its ordinary capacity for economic or other tasks or simply added a general purpose computer or computer components after the fact to the Judicial Exception and (3) generally applied the Judicial Exception to a generic computing environment without limitation indicative of practical application (See MPEP 2106.04(d)I). Thus, the claims are no more than Mere Instruction to Apply the Judicial Exception (See MPEP 2106.05(f)) or adding insignificant extra-solution activity to the judicial exception (See MPEP 2106.05(g)), which do not integrate the cited Judicial Exception into practical application (Step 2A prong two: No) The claims are directed to a Judicial Exception.
The claim does not include additional elements that are sufficient to amount to significantly more than the judicial exception. As discussed above with respect to integration of the abstract idea into a practical application, the additional element of using one or more generic module to administrate annuity product amounts to no more than mere instructions to apply the exception using generic computer components. The recited ordered combination of additional elements includes invoking computer modules to perform steps of the Judicial Exception. Mere instructions to apply an exception using a generic computer component cannot provide an inventive concept. Dependent claims 4-6, 10-14 and 16-27 merely limit the abstract idea but do not recite any additional element beyond the cited abstract idea, thus, do not amount to significantly more. No additional element currently recited in the claims amount the claims to be significantly more than the cited abstract idea. (Step 2B: No)
Therefore, claims 1, 4-6, 10, 12-14, 16-27, 29 and 30 are rejected under 35 U.S.C. 101 as being directed to non-statutory subject matter.
Response to Arguments
Applicant's arguments filed 06/08/2026 have been fully considered but they are not persuasive.
Regarding the applicant’s argument that the claims are directed to eligible subject matter, the examiner respectfully disagrees. The applicant contents the claims recite a specific technical improvement that integrates any alleged judicial exception into a practical application by solving the alleged technical problem of “enabling aggregated trading data to be processed while preserving the ability to identify and track information at an individual level”. However, both the claims and the Specification only nominally recite enabling of such data exchange, devoid of any technological details on how the desired state of “enabling aggregated trading data to be processed while preserving the ability to identify and track information at an individual level”. Thus, the alleged solution to the alleged technical problem of “enabling …” is nominally claiming to enable it. The applicant’s argument is not persuasive.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CHO KWONG whose telephone number is (571)270-7955. The examiner can normally be reached 9am - 5pm EST M-F.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, MICHAEL W ANDERSON can be reached at 571-270-0508. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/CHO YIU KWONG/Primary Examiner, Art Unit 3693
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