The present application is being examined under the pre-AIA first to invent provisions.
DETAILED ACTION
Status of Claims
Claims 28, 32, 35-36 and 38- 47 are pending. Claims 28, 36 and 44 are amended.
Response to Arguments
Applicant’s arguments with regard to the 101 rejection have been considered but are not persuasive.
Applicant argues:
In the prior response, Applicant identified specific technical elements in the claims, including: (1) automatically monitoring accumulation periods of each segment to determine transfer eligibility; (2) automatically validating that both segments are in accumulation periods before executing fund transfers; (3) preventing fund transfers when either segment has transitioned out of its accumulation period; and (4) automatically determining tax status of each transfer by analyzing segment status and routing funds accordingly to maintain tax-deferred status. Applicant argued that these elements describe a specific technical implementation wherein the processor actively monitors segment status, validates transfer eligibility based on accumulation period analysis, and enforces transfer restrictions.
The Office's response to these arguments was conclusory. The Office merely asserted that the technical elements "are not specific" and that the recited processes "may be performed by a human using pen and paper." The Office did not explain why the automated monitoring, validation, and prevention functionality is not specific, nor did the Office address Applicant's argument regarding the automatic tax status determination at all. This conclusory response fails to meaningfully engage with the specific technical features Applicant identified.
The Office asserts that “not specific” means that the limitations, and the elements which perform these limitations are generally recited, i.e., the limitations are performed by a programmed processor. A programmed processor is not specific because it does not identify a particular device or component. Para. 0055 of the specification discloses that the computer may be any number of devices including a processor. There is no further mention of a processor in the specification, therefore the processor is not specific. With regard to the monitoring, validation and prevention functions, these terms are surprisingly absent from the specification, much less described as being performed in any particular fashion, therefore they are generally recited and not specific. Additionally, these functions are part of the abstract idea and by themselves cannot be significantly more. Combining them with the additional elements (processor), only yields adding the words “apply it” to the abstract idea.
The August 4, 2025 USPTO Memorandum instructs that the mental process grouping "is not without limits" and that examiners should "not expand this grouping in a manner that encompasses claim limitations that cannot practically be performed in the human mind." The Office's assertion that the claimed processes "may be performed by a human using pen and paper" ignores this guidance. The automated monitoring of accumulation periods based on stored segment data, validation of transfer eligibility, and prevention of transfers when segments have transitioned out of their accumulation periods cannot practically be performed in the human mind-these operations require computational processing of stored data to track segment status and enforce transfer rules in real time.
The Office asserts that the applicant has not shown that the limitations at issue cannot be performed by a human using pen and paper. The applicant asserts that monitoring, validating and preventing cannot be performed by a human. Possibly because of the use of the words automated and stored. Automated just refers to the application of a computer to a task and the mere storage of data does not necessarily involve a computer. The mere use of a computer is not evidence that the task requires a computer.
The amended claims recite a processor that automatically monitors accumulation periods based on stored segment data, validates transfer eligibility, prevents transfers when segments have transitioned out of accumulation periods, and determines tax status by analyzing segment status and routing funds accordingly to maintain tax-deferred status. This is a specific technological solution that controls how the computational device processes and routes fund transfers based on real-time segment status analysis-not merely "applying" an abstract idea to a generic computer.
The claims reflect an improvement to the functioning of the computational device by ensuring fund transfers are only executed when both segments satisfy the accumulation period requirement, and by automatically routing funds to maintain tax-deferred status.
The Office asserts that the improvement is associated with the process and not the computer itself. There is no improvement in the operation of the computer as the computer merely executes a program. Additionally, like the other limitations referenced, the specification is silent regarding maintaining tax-status.
Claim Rejections - 35 USC § 112
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 28, 36 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.
The claims recite “routing funds accordingly to maintain tax-deferred status”, “validates that both segments are in accumulation periods before executing the fund transfer”, “prevents the fund transfer when either segment has transitioned out of its accumulation period”, and “ monitor, based on segment data stored in the data storage, accumulation periods of each of the base portion segments and secondary portional segments to determine transfer eligibility”. These limitations are not present in the specification, the specification does not specifically recite maintaining tax-deferred status, validating that segments are in the accumulation period, preventing funds transfers, monitoring accumulation periods and determining transfer eligibility.
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.
Claim(s) 28, 32, 35, 36 and 38-47 is/are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more. The claim(s) recite(s):
28. A computational device that issues an annuity structure having multiple income start dates, the annuity structure comprising a base portion segment and at least one secondary portion segment, the computational device comprising:
a data storage containing data relating to one or more annuity structures;
an input that receives an electronic request, via a network, for an annuity structure having multiple income payout start dates;
a processor, coupled to the data storage and the input and programmed to:
automatically monitor, based on segment data stored in the data storage, accumulation periods of each of the base portion segments and secondary portional segments to determine transfer eligibility,
automatically generate, responsive to the electronic request and by the processor, an annuity structure comprising:
a plurality of base portion segments, where the base portion segments are functional annuities having a first annuity schedule with an annuity commencement date where the annuity transitions from a deferred status to an immediate status; and
a plurality of secondary portional segments, where each secondary portional segment is a functional annuity having its own discrete secondary annuity schedule and a portion exercise income date that is independent of, and different than, the annuity commencement date for the annuity structure, with each having a portional income exercise date comprising one of a date that is prior to the annuity commencement date and a date that is after the annuity commencement date;
where the base portion segment and each of the secondary portional segments each operate as its own annuity;
where funds are transferred between a first one of the plurality of base portion segments and a second one of the plurality of base portion segments;
wherein the processor automatically validates that both segments are in accumulation periods before executing the fund transfer;
wherein the processor prevents the fund transfer when either segment has transitioned out of its accumulation period;
the base portion segment and each of the plurality of secondary portional segments being included together in a single contract; and
electronically issue, by the processor, the annuity structure to an annuity holder;
the base portion segment constituted by an accumulation period coinciding with the deferred status, and wherein the accumulation period includes one or more investment decisions, the annuity commencement date, and a payout period comprising periodic payments;
each of the secondary portional segments constituted by an accumulation period wherein the accumulation period includes one or more investment decisions, the portional income exercise date, and a payout period, coinciding with the immediate status, comprising periodic payments;
where funds are transferred between the base portion segments and the secondary portion segment as follows:
the periodic payments during the payout period for each secondary portional segment with a portional income exercise date prior to the annuity commencement date for a time period after the portional income exercise dates but before the annuity commencement date are transferred to one of the base portion segment or one of the other secondary portional segment that has not reached its payout period without causing a transition of the base portion from a deferred status to an immediate status and thereby avoiding triggering a taxation realization event;
wherein the processor automatically determines tax status of each transfer by analyzing segment status and routing funds accordingly to maintain tax-deferred status; and
the periodic payments from the secondary portional segments with portional income exercise dates after the annuity commencement date, after the portional income exercise date and after the annuity commencement date are transferred directly to an annuity owner;
wherein the annuity structure is implemented as a guaranteed income rider;
wherein the annuity commencement date of the base portion segment effects cash flow of both the base portion segment and the secondary portion segment;
wherein an initial payment is received prior to issuance of the annuity structure, a plurality of subsequent payments are dictated by the determined annuity schedules, and the plurality of subsequent payments
is received; and
wherein a plurality of payments are made to the annuity holder.
36. A process, implemented on a computational device, for issuing an annuity structure having multiple income start dates, the annuity structure comprising a plurality of base portion segments and at least one secondary portion segment, the process comprising the steps of:
receiving, via an input, a request for the annuity structure, where the request includes financial requirements for the annuity structure;
determining an annuity schedule for each of the base portion segment and at least one secondary portion segment;
automatically monitoring, by the computational device and based on stored segment data, accumulation periods of each segment to determine transfer eligibility,
creating the annuity structure based on the determined annuity schedules; and
issuing the annuity structure to an annuity holder; and
wherein the base portion segment and at least one secondary portion segment are all included under a single contract;
wherein funds are transferred between a first one of the plurality of base portion segments and a second one of the plurality of base portion segments;
wherein the computational device automatically validates that both segments are in accumulation periods before executing fund transfers; and
wherein the computational device prevents the fund transfer when either segment has transitioned out of its accumulation period;
the annuity structure having an annuity commencement date of the secondary portion segment under the contract that is different than the annuity commencement date of the base portion segments; and
the annuity structure has an annuity commencement date of the base portion segment under the contract, the annuity commencement date of the base portion segment effecting cash flow of both the base portion segment and the secondary portion segment, and
the base portion segment constituted by an accumulation period wherein the accumulation period includes one or more investment decisions, followed by a payout period comprising periodic payments after the annuity commencement date;
the secondary portion segment constituted by an accumulation period wherein the accumulation period includes one or more investment decisions, followed by a payout period comprising periodic payments after a portional income exercise date that is prior to the annuity commencement date,
wherein funds are transferred between the base portion segment and the secondary portion segment as follows:
the periodic payments from the secondary portion segment, after the portional income exercise date but before the annuity commencement date are transferred to the base portion segments without causing a transition of the base portion from a deferred status to an immediate status and thereby avoiding triggering a taxation realization event; and
wherein the computational device automatically determines tax status of each transfer by analyzing segment status and routing funds accordingly to maintain tax-deferred status,
the periodic payments from the secondary portion segment, after the portional income exercise date and after the annuity commencement date are transferred directly to an annuity owner;
wherein the annuity structure is implemented as a guaranteed income rider;
wherein the annuity commencement date of the base portion segment effects cash flow of both the base portion segments and the secondary portion segment;
wherein an initial payment is received prior to issuance of the annuity structure, a plurality of subsequent payments are dictated by the determined annuity schedules, and the plurality of subsequent payments is received based on the determined annuity schedules; and
wherein a plurality of payments are made to the annuity holder.
44. A computer readable medium, implemented on a computational device, having code for causing a process, performed by the computational device, to issue an annuity structure having multiple income start dates, the annuity structure comprising a
plurality of base portion segments and at least one secondary portion segment, the computer readable medium being non-transitory, the computer readable medium comprising:
code, implemented by the computational device, that receives a request for the annuity structure, where the request includes financial requirements for the annuity structure;
code, implemented by the computational device, that determines the annuity schedule for each of the base portion segments and at least one secondary portion segment;
code, implemented by the computational device, that automatically monitors, based on stored segment data, accumulation periods of each segment to determine transfer eligibility,
code, implemented by the computational device, that creates the annuity structure based on the determined annuity schedules; and
code, implemented by the computational device, that issues the annuity structure to an annuity holder; and
wherein the base portion segments and at least one secondary portion segment are all included in a single contract;
where funds are transferred between a first one of the plurality of base portion segments and a second one of the plurality of base portion segments;
wherein the code automatically validates that both segments are in accumulation periods before executing fund transfers; and
wherein the code prevents the fund transfer when either segment has transitioned out of its accumulation period;
the base portion segments constituted by an accumulation period wherein the contract is in a deferred status, and wherein the accumulation period includes one or more investment decisions, an annuity commencement date, and a payout period comprising periodic payments;
the secondary portion segment constituted by an accumulation period wherein the accumulation period includes one or more investment decisions, an annuity commencement date of the secondary portion segment under the contract that is different than the annuity commencement date of the base portion segments, a portional income exercise date that is prior to the annuity commencement date, and a payout period comprising periodic payments;
where funds are transferred between the base portion segment and the secondary portion segment as follows:
the periodic payments from the secondary portion segment, after the portional income exercise date but before the annuity commencement date are transferred to the base portion segments without causing a transition of the base portion from a deferred status to an immediate status and thereby avoiding triggering a taxation realization event;
wherein the code automatically determines tax status of each transfer by analyzing segment status and routing funds accordingly to maintain tax-deferred status,
the periodic payments from the secondary portion segment, after the portional income exercise date and after the annuity commencement date are transferred directly to an annuity owner; and
wherein the annuity structure is implemented as a guaranteed income rider;
wherein the annuity commencement date of the base portion segments effects cash flow of both the base portion segment and the secondary portion segment; and
wherein an initial payment is received prior to issuance of the annuity structure, a plurality of subsequent payments are dictated by the determined annuity schedules, and the plurality of subsequent payments is received based on the determined annuity schedules; and
wherein a plurality of payments are made to the annuity holder.
The abstract idea (all except the underlined items) is a certain method of organizing human activity, commercial or legal interactions including agreements in the form of contracts because an annuity is a contract and the claims represent the request for, structure, issuance and performance of a contract. This judicial exception is not integrated into a practical application because the abstract idea is merely implemented by generic computer components described as a computational device including a data storage, an input and a processor, and non-transitory computer-readable medium storing code. Therefore, the claim is not indicative of an improvement to the functioning of the computer or to any other technical or technological field. The claims are related to the implementation of a business problem and not a technical one. The claims do not apply the abstract idea with, or by use of, a particular machine, effect a transformation of a particular article or apply the abstract idea in some other meaningful way beyond generally linking it to a particular technological environment. In other words, the details of the contract identified in the claim, no matter how intricate or complex nevertheless still recite a contract and the details thereof.
The claim(s) does/do not include additional elements that are sufficient to amount to significantly more than the judicial exception because the additional limitations do not add anything that is not well-understood, routine and conventional activity in the field, i.e., the data storage, input and processor perform routine processes, storing data, inputting data and generating data which are unquestionably well-understood (receiving or transmitting data over a network, Symantec, storing and retrieving information in memory or determining a price, Versata, and determining an estimated outcome and setting a price, OIP Techs.
The dependent claims continue to describe the structure of the contract and therefore do not add anything more to the claims that was not already analyzed in the independent claim(s). As a whole and in combination, the claims merely comprise an abstract idea implemented by a generic computer.
Claim 32 merely describes the secondary portional segments and thus merely narrow the abstract idea.
Claim 35 recites transferring funds between base portion segments and thus narrows the abstract idea.
Claim 38 recites receiving payments after the issuance of the annuity and based on the annuity schedules which merely narrows the abstract idea.
Claim 39 recites making payments to the annuity holder after issuance and based on the annuity schedules which merely narrows the abstract idea.
Claim 40 further describes the annuity structure and merely narrows the abstract idea.
Claim 41 further describes the secondary portion segment and thus narrows the abstract idea.
Claim 42 describes the base and secondary portion segments and thus merely narrows the abstract idea.
Claim 45 recites processing an initial payment prior to issuing the annuity and thus further narrows the abstract idea.
Claim 46 recites processing payments after issuance of the annuity based on the annuity schedule and thus merely narrows the abstract idea.
Claim 47 also further describes the annuity structure and thus merely narrows the abstract idea.
None of these dependent claims recite an improvement to the functioning of a computer or other technology or recite meaningful limitations beyond linking the abstract idea to a particular technological environment and therefore do not comprise a practical application or significantly more than the abstract idea as they merely add to the abstract idea itself.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to WILLIAM E RANKINS whose telephone number is (571)270-3465. The examiner can normally be reached on 9-530 M-F.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Bennett Sigmond can be reached on 303-297-4411. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300. Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see http://pair-direct.uspto.gov. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative or access to the automated information system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/WILLIAM E RANKINS/ Primary Examiner, Art Unit 3694
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