DETAILED ACTION
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 September 18, 2026 has been entered.
Status of the Claims
1. This action is in reply to the Request for Continued Examination dated September 18, 2026.
2. Claims 55, 68 and 70 are currently pending and have been examined.
3. Claims 1-54, 56-60, 61-67 and 69 have been cancelled.
4. Claims 55 and 68 are currently amended.
Notice of Pre-AIA or AIA Status
5. The present application is being examined under the pre-AIA first to invent provisions.
Specification
6. The lengthy specification has not been checked to the extent necessary to determine the presence of all possible minor errors. Applicant's cooperation is requested in correcting any errors of which applicant may become aware of in the specification.
Double Patenting
7. The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/process/file/efs/guidance/eTD-info-I.jsp.
Claims 55, 68, and 70 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-25 of U.S. Patent No. 7398241. Although the claims at issue are not identical, they are not patentably distinct from each other because the instant claims fall within the scope of the claims of the patent.
Claims 55, 68, and 70 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-22 of U.S. Patent No. 8781929. Although the claims at issue are not identical, they are not patentably distinct from each other because the instant claims fall within the scope of the claims of the patent.
Claims 55, 68, and 70 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-12 of U.S. Patent No. 8024248. Although the claims at issue are not identical, they are not patentably distinct from each other because the instant claims fall within the scope of the claims of the patent.
Claims 55, 68, and 70 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-12 of U.S. Patent No. 8799134. Although the claims at issue are not identical, they are not patentably distinct from each other because the instant claims fall within the scope of the claims of the patent.
Claim Interpretation – Broadest Reasonable Interpretation
8. In determining patentability of an invention over the prior art, all claim limitations have been considered and interpreted using the “broadest reasonable interpretation consistent with the specification during the examination of a patent application since the applicant may then amend his claims.” See In re Prater and Wei, 162 USPQ 541, 550 (CCPA 1969); MPEP § 2111. Applicant always has the opportunity to amend the claims during prosecution, and broad interpretation by the examiner reduces the possibility that the claim, once issued, will be interpreted more broadly than is justified. See In re Prater, 162 USPQ 541, 550-51 (CCPA 1969); MPEP § 2111. Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 26 USPQ2d 1057 (Fed. Cir. 1993). See also MPEP 2173.05(q) All claim limitations have been considered. Additionally, all words in the claims have been considered in judging the patentability of the claims against the prior art. See MPEP 2143.03.
Claim limitations that contain statement(s) such as “if, may, might, can, could”, are treated as containing optional language. As matter of linguistic precision, optional claim elements do not narrow claim limitations, since they can always be omitted.
Claim limitations that contain statement(s) such as “wherein, whereby”, that fail to further define the steps or acts to be performed in method claims or the discrete physical structure required of system claims.
Similarly, a method step exercised or triggered upon the satisfaction of a condition, where there remains the possibility that the condition was not satisfied under the broadest reasonable interpretation, is an optional claim limitation. see MPEP § 2103(I)(C); In re Johnson, 77 USPQ2d 1788 (Fed Cir 2006). As the Applicant does not address what happens should the optional claim limitations fail, Examiner assumes that nothing happens (i.e., the method stops). An alternate interpretation is that merely the claim limitations based upon the condition are not triggered or performed.
The subject matter of a properly construed claim is defined by the terms that limit its scope. It is this subject matter that must be examined.
As a general matter, grammar and the plain meaning of terms as understood by one having ordinary skill in the art used in a claim will dictate whether, and to what extent, the language limits the claim scope. see MPEP §2013(I)(C). Language that suggests or makes a feature or step optional but does not require that feature or step does not limit the scope of a claim under the broadest reasonable claim interpretation. see MPEP §2013(I)(C).
Claim scope is not limited by claim language that suggests or makes optional but does not require steps to be performed, or by claim language that does not limit a claim to a particular structure. In addition, when a claim requires selection of an element from a list of alternatives, the prior art teaches the element if one of the alternatives is taught by the prior art. See, e.g., Fresenius USA, Inc. v. Baxter Int’l, Inc., 582 F.3d 1288, 1298 (Fed. Cir. 2009). See MPEP 2111.04, 2143.03.
Language in a method or system claim that states only the intended use or intended result, but does not result in a manipulative difference in the steps of the method claim nor a structural difference between the system claim and the prior art, fails to distinguish the claims from the prior art. In other words, if the prior art structure is capable of performing the intended use, then it meets the claim.
The following types of claim language may raise a question as to its limiting effect (this list is not exhaustive):
Statements of intended use or field of use, including statements of purpose or intended use in the preamble (MPEP 2111.02);
Clauses such as “adapted to”, “adapted for”, “wherein”, and “whereby” (MPEP 2111.04)
Contingent limitations (MPEP 2111.04)
Printed matter (MPEP 2111.05) and
Functional language associated with a claim term (MPEP 2181)
Examiner notes that during examination, “claims … are to be given their broadest reasonable interpretation consistent with the specification, and … claim language should be read in light of the specification as it would be interpreted by one of ordinary skill in the art.” See In re Bond, 15 USPQ 1566, 1568 (Fed. Cir. 1990), citing In re Sneed, 218 USPQ 385, 388 (Fed. Cir. 1983). However, "in examining the specification for proper context, [the examiner] will not at any time import limitations from the specification into the claims". See CollegeNet, Inc. v. ApplyYourself, Inc., 75 USPQ2d 1733, 1738 (Fed. Cir. 2005). Construing claims broadly during prosecution is not unfair to the applicant, because the applicant has the opportunity to amend the claims to obtain more precise claim coverage. See In re Yamamoto, 222 USPQ 934, 936 (Fed. Cir. 1984), citing In re Prater, 162 USPQ 541, 550 (CCPA 1969).
As such, while all claim limitations have been considered and all words in the claims have been considered in judging the patentability of the claimed invention, the following language in the preamble and italicized in further reference to the claims is interpreted as not further limiting the scope of the claimed invention.
The preamble of the instant claims 55 and 68 recite "[a] computer processing system that provides, via an interactive electronic interface, a user with a defined benefit, based on a retirement income factor that indicates the guaranteed minimum periodic income that the user will receive regardless of how long the user lives and the potential for an increase in the periodic income based on excess investment performance over the retirement income factor, of designated defined benefit investment options, the computer processing system comprising:”
In general, a preamble limits the invention if it recites essential structure or steps, or if it is "necessary to give life, meaning, and vitality" to the claims. Pitney Bowes, Inc. v. Hewlett-Packard Co. 51 USPQ2d 1161 (Fed. Cir. 1999), Catalina Marketing International Inc. v. Coolsavings.com Inc., 62 USPQ2d 1781 (Fed. Cir. 2002). Conversely, where a patentee defines a structurally complete invention in the claim body and uses the preamble only to state a purpose or an intended use for the invention, the preamble is not a claim limitation given patentable weight. Rowe v. Dror, 42 USPQ2d 1550 (Fed. Cir. 1997); Catalina Marketing International Inc. v. Coolsavings.com Inc., 62 USPQ2d 1781 (Fed. Cir. 2002); Bell Communications Research, Inc. v. Vitalink Communications Corp., 34 USPQ2d 1816 (Fed. Cir. 1995) If a prior art structure is capable of performing the intended use as recited in the preamble, then it meets the claim. See, e.g., In re Schreiber, 128 F.3d 1473, 1477, 44 USPQ2d 1429, 1431 (Fed. Cir. 1997) See MPEP 2111.02
In the instant case, “that provides, via an interactive electronic interface, a user with a defined benefit, based on a retirement income factor that indicates the guaranteed minimum periodic income that the user will receive regardless of how long the user lives and the potential for an increase in the periodic income based on excess investment performance over the retirement income factor, of designated defined benefit investment options,” as recited in the preamble only states a purpose and/or the intended use of the invention and accordingly is not being assigned any patentable weight.
As in Claim 55 and substantially similarly in Claim 68:
“a database that stores investment data and data used to calculate the retirement income factor wherein the retirement income factor is based on at least one of a savings commencement date, payout plan selected, product features and expenses, economic cycle, user’s age, user’s gender, retirement date, and user’s marital status;”
“…wherein the computer processor comprises an adjustment module programmed to, when the benefit level exceeds the guaranteed payment floor, determine whether the adjustment account reflects a past balance and, when the adjustment account reflects a past balance, (i) transmit to the user a difference between the benefit level and the adjustment account balance when that difference is greater than the guaranteed payment floor, and (ii) otherwise decrease the adjustment account balance and transmit to the user the guaranteed payment floor, and to forgive any remaining adjustment account balance as a death benefit upon the later of death of the user and expiration of a period certain…”
“transmit, via an electronic transmission, a guaranteed minimum income payment after the accumulation period of time, the guaranteed minimum income payment comprises a formula of the accumulated value and is based on the retirement income factor, and further comprises a product of the at least one investment payment, or any portion(s) thereof, and the retirement income factor, wherein the guaranteed minimum income payment comprises at least one of a lump sum payment, periodic payments and annuity payouts, and is conditioned on a predetermined pattern of continued contributions, wherein the reinvestment of the guaranteed minimum income payment is determined by the participant”
Claim Interpretation – 112(f)
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
9. The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Such claim limitation(s) is/are: “an adjustment module” in claims 55 and 68. In the instant case, an adjustment module does not provide the structure for the claimed function (i.e., does not dictate how the function is performed) but rather dictates how the claimed function inter-relates with other functions within the adjustment account. A generic placeholder term (e.g., module) is used. The generic placeholder term does not limit the scope of the claim to any specific manner or structure for performing the claimed function.
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
If applicant does not intend to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
10. Claims 55, 68 and 70 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim limitation “an adjustment module” invokes 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. However, the written description fails to disclose the corresponding structure, material, or acts for performing the entire claimed function and to clearly link the structure, material, or acts to the function. The specification does not provide a corresponding structure for performing the steps as claimed. The specification notes that an adjustment made be made by an adjustment module, which may be associated with the annuity, however does not disclose a corresponding structure of the module. (See Applicant Spec page 28, line 25-page 29, line 16) Therefore, the claim is indefinite and is rejected under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph.
Applicant may:
(a) Amend the claim so that the claim limitation will no longer be interpreted as a limitation under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph;
(b) Amend the written description of the specification such that it expressly recites what structure, material, or acts perform the entire claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(c) Amend the written description of the specification such that it clearly links the structure, material, or acts disclosed therein to the function recited in the claim, without introducing any new matter (35 U.S.C. 132(a)).
If applicant is of the opinion that the written description of the specification already implicitly or inherently discloses the corresponding structure, material, or acts and clearly links them to the function so that one of ordinary skill in the art would recognize what structure, material, or acts perform the claimed function, applicant should clarify the record by either:
(a) Amending the written description of the specification such that it expressly recites the corresponding structure, material, or acts for performing the claimed function and clearly links or associates the structure, material, or acts to the claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(b) Stating on the record what the corresponding structure, material, or acts, which are implicitly or inherently set forth in the written description of the specification, perform the claimed function. For more information, see 37 CFR 1.75(d) and MPEP §§ 608.01(o) and 2181.
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.
11. Claims 55, 68, and 70 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more.
The substantially similar independent claims 55 and 68 recite systems that stores investment data and data used to calculate the retirement income factor wherein the retirement income factor is based on at least one of a savings commencement data, payout plan selected, product features and expenses, economic cycle, user’s age, user’s gender, retirement date, and user’s marital status; to receive a contribution on a periodic basis, track accumulated value over a period of time by investing the contribution in a number of selected investment options, and track a guaranteed payment floor that increases as the accumulated value increases over the period of time, compare a benefit level realized by the selected investment options to the guaranteed payment floor, store, in an adjustment account, a balance equal to a difference between the benefit level realized and the guaranteed payment floor when the benefit level is less than the guaranteed payment floor, and recover the adjustment account balance from excess performance when the benefit level exceeds the guaranteed payment floor, when the benefit level exceeds the guaranteed payment floor, determine whether the adjustment account reflects a past balance and, when the adjustment account reflects a past balance, (i) transmit to the user a difference between the benefit level and the adjustment account balance when the difference is greater than the guaranteed payment floor, and (iii) otherwise decrease the adjustment account balance and transmit to the user the guaranteed payment floor, and to forgive any remaining adjustment account balance as a death benefit upon the later of death of the user and expiration of a period certain, the selected investment options comprising at least one mutual fund and further comprising at least one other financial product and the accumulated value, that is selected from the group consisting of: (a) being withdrawn at any time, and (b) being paid out after a predetermined period of time; and wherein the defined benefit is within a contribution plan comprising a qualified or non-qualified plan and a variable annuity investment product; wherein the selected investment options comprise investment products that are executed by at least one designated defined benefit investment option to determine at least one investment payment to the designated defined benefit investment option; receive the at least one investment payment, the at least one investment payment comprising at least one of the contribution and the accumulated value, transmit a guaranteed minimum income payment after the accumulation period of time, the guaranteed minimum income payment comprises a formula of the accumulated value and is based on the retirement income factor, and further comprises a product of the at least one investment payment, or any portion(s) thereof, and the retirement income factor, wherein the guaranteed minimum income payment comprises at least one of a lump sum payment, periodic payments and annuity payouts, and is conditioned on a predetermined pattern of continued contributions, wherein the reinvestment of the guaranteed minimum income payment is determined by the participant, and automatically increase the income payment for life for excess performance over the retirement income factor of the designated defined benefit investment option.
ANALYSIS:
STEP 1:
Does the claimed invention fall within one of the four statutory categories of invention (process, machine, manufacture or composition matter?
Yes. Independent Claims 55 and 68 recite system claims.
STEP 2A:
Prong One: Does the Claim Recite A Judicial Exception (An Abstract Idea, Law of Nature or Natural Phenomenon)? (If Yes, Proceed to Prong Two, If No, the claim is not directed to a judicial exception and qualifies as subject matter patent eligible material)
Claim 55 (and substantially similar Claim 68) recite the abstract ideas of calculating retirement income factors, tracking accumulated value over a period of time, determining at least one investment payment to the designated defined benefit option, receiving at least one investment payment, transmitting a guaranteed minimum income payment after the accumulation period of time and increasing income payments for life for excess performance over the retirement income factor of the designated defined benefit investment option. The ideas are described by the following limitations:
stores investment data and data used to calculate the retirement income factor wherein the retirement income factor is based on at least one of a savings commencement date, payout plan selected, product features and expenses, economic cycle, user’s age, user’s gender, retirement date, and user’s marital status;
receive a contribution on a periodic basis, track accumulated value over a period of time by investing the contribution in a number of selected investment options, and track a guaranteed payment floor that increases as the accumulated value increases over the period of time, compare a benefit level realized by the selected investment options to the guaranteed payment floor, store in an adjustment account, a balance equal to a difference between the benefit level realized and the guaranteed payment floor when the benefit level is less than the guaranteed payment floor, and recover the adjustment account balance from excess performance when the benefit level exceeds the guaranteed payment floor, wherein when the benefit level exceeds the guaranteed payment floor, determining whether the adjustment account reflects a past balance and, when the adjustment account reflects a past balance, (i) transmit to the user a difference between the benefit level and the adjustment account balance when that difference is greater than the guaranteed payment floor, and (ii) otherwise decrease the adjustment account balance and transmit to the user the guaranteed payment floor, and to forgive any remaining adjustment account balance as a death benefit upon the later of death of the user and expiration of a period certain, the selected investment options comprising at least one mutual fund and further comprising at least one other financial product and accumulated value that is selected from a group consisting of: (a) being withdrawn at any time, and (b) being paid out after a predetermined period of time
wherein the defined benefit is within a contribution plan comprising a qualified or non-qualified plan and a variable annuity investment product;
wherein the selected investment options comprise investment products
to determine at least one investment payment to the designated defined benefit investment option;
receive the at least one investment payment, the at least one investment payment comprising at least one of the contribution and the accumulated value,
transmit a guaranteed minimum income payment after the accumulation period of time, the guaranteed minimum income payment comprises a formula of the accumulated value and is based on the retirement income factor and further comprises a product of the at least one investment payment, or any portion(s) thereof, and the retirement income factor, where the guaranteed minimum income payment comprises at least one of a lump sum payment, periodic payments and annuity payouts, and is conditioned on a predetermined pattern of continued contributions, wherein the reinvestment of the guaranteed minimum income payment is determined by the participant,
automatically increase the income payment for life for excess performance over the retirement income factor of the designated benefit investment option.
Under a BRI, the claims reflect no more than a process to provide a user with a defined benefit by a series of steps (as noted above). As a result, the abstract ideas describe mental processes and certain methods of organizing human activity.
As to mental processes, the steps describe concepts performed in the human mind including an observation, evaluation, judgment and/or opinion (i.e., the steps disclosed above). These steps are performing a mental process in a computer environment that recites limitations receiving, sending, observing and evaluating information and with the exception of generic computer-implemented steps, there is nothing in the claims themselves that foreclose them from being practically performed by a human mentally.
As to certain methods of organizing human activity, the steps involve managing personal behavior or relationships or interactions between people, insurance benefits, insurance contracts, investment tracking, and mitigating risk and commercial interactions (business relations).
In the case of the instant claims, for example, the claims recite no more than receiving information input from a user, using generic computer technology to track contributions, a guaranteed payment floor and accumulated value, process, analyze and present the received information and then develop and output at least one investment payout to the designated defined benefit investment option, transmitting payments and increasing payments for life for excess performance. (Step 2A – Prong 1: Yes, the claims are abstract)
Prong Two: Does the Claim Recite Additional Elements That Integrate The Judicial Exception Into A Practical Application of the Exception? (If Yes, the claim is not directed to a judicial exception and qualifies as subject matter patent eligible material. If No, Proceed to Step 2B)
The claims do not include additional elements that integrate the judicial exception into a practical application of the exception because the claims do not provide improvements to another technology or technical field, improvements to the functioning of the computer itself, are not applying or using a judicial exception to effect a particular treatment or prophylaxis for a disease or medical condition, are not applying the judicial exception with, or by use of a particular machine, are not effecting a transformation or reduction of a particular article to a different state or thing, and are not applying the judicial exception in some other meaningful way beyond generally linking the use of the judicial exception to a particular technological environment.
Claim 55 recites an interactive electronic interface, a database, a computer processor coupled to the database and programmed to, an adjustment module, the computer processor constituted by a tangibly embodied programmed computer processor, a communication network, an electronic input, and an electronic transmission.
Claim 68 recites an interactive electronic interface, a database, a computer processor coupled to the database and programmed to, the computer processor constituted by a tangibly embodied programmed computer processor, an adjustment module, a communication network, an electronic input, an electronic transmission, and a defined contribution module.
In particular, the claims only recite an interactive electronic interface, a database, a computer processor coupled to the database and programmed to, an adjustment module, the computer processor constituted by a tangibly embodied programmed computer processor, a communication network, an electronic input, a defined contribution module, an electronic transmission which are recited at a high level of generality (i.e., as a generic processor performing generic computer functions) such that it amounts to no more than mere instructions to apply the exception using a generic computer component. (See MPEP 2106.05(f)) Use of a computer in its ordinary capacity for economic or other tasks (e.g., to receive, store or transmit data) or simply adding a general-purpose computer or computer components after the fact to the abstract idea does not integrate a judicial exception into a practical application or provide significantly more.)
Accordingly, these additional elements, when considered separately and as an ordered combination, do not integrate the abstract idea into a practical application because they do not impose any meaningful limits on practicing the abstract idea. Therefore, Claims 55 and 68 are directed to an abstract idea without a practical application. (Step 2A – Prong 2: No, the additional claimed elements are not integrated into a practical application)
STEP 2B: If there is an exception, determine if the claim as a whole recites significantly more than the judicial exception itself.
The courts have recognized the following computer functions as well‐understood, routine, and conventional functions when they are claimed in a merely generic manner (e.g., at a high level of generality) or as insignificant extra-solution activity: i) receiving or transmitting data over a network, e.g., using the Internet to gather data, Symantec, 838 F.3d at 1321, 120 USPQ2d at 1362 (utilizing an intermediary computer to forward information); TLI Communications LLC v. AV Auto. LLC, 823 F.3d 607, 610, 118 USPQ2d 1744, 1745 (Fed. Cir. 2016) (using a telephone for image transmission); OIP Techs., Inc., v. Amazon.com, Inc., 788 F.3d 1359, 1363, 115 USPQ2d 1090, 1093 (Fed. Cir. 2015) (sending messages over a network); buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1355, 112 USPQ2d 1093, 1096 (Fed. Cir. 2014) (computer receives and sends information over a network); but see DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245, 1258, 113 USPQ2d 1097, 1106 (Fed. Cir. 2014) ("Unlike the claims in Ultramercial, the claims at issue here specify how interactions with the Internet are manipulated to yield a desired result‐‐a result that overrides the routine and conventional sequence of events ordinarily triggered by the click of a hyperlink." (emphasis added)); ii) performing repetitive calculations, Flook, 437 U.S. at 594, 198 USPQ2d at 199 (recomputing or readjusting alarm limit values); Bancorp Services v. Sun Life, 687 F.3d 1266, 1278, 103 USPQ2d 1425, 1433 (Fed. Cir. 2012) ("The computer required by some of Bancorp’s claims is employed only for its most basic function, the performance of repetitive calculations, and as such does not impose meaningful limits on the scope of those claims."); iii) electronic recordkeeping, Alice Corp., 134 S. Ct. at 2359, 110 USPQ2d at 1984 (creating and maintaining "shadow accounts"); Ultramercial, 772 F.3d at 716, 112 USPQ2d at 1755 (updating an activity log); iv) storing and retrieving information in memory, Versata Dev. Group, Inc. v. SAP Am., Inc., 793 F.3d 1306, 1334, 115 USPQ2d 1681, 1701 (Fed. Cir. 2015); OIP Techs., 788 F.3d at 1363, 115 USPQ2d at 1092-93; v) electronically scanning or extracting data from a physical document, Content Extraction and Transmission, LLC v. Wells Fargo Bank, 776 F.3d 1343, 1348, 113 USPQ2d 1354, 1358 (Fed. Cir. 2014) (optical character recognition); and vi) a web browser’s back and forward button functionality, Internet Patent Corp. v. Active Network, Inc., 790 F.3d 1343, 1348, 115 USPQ2d 1414, 1418 (Fed. Cir. 2015). (MPEP §2106.05(d)(II))
This listing is not meant to imply that all computer functions are well‐understood, routine, conventional activities, or that a claim reciting a generic computer component performing a generic computer function is necessarily ineligible. Courts have held computer‐implemented processes not to be significantly more than an abstract idea (and thus ineligible) where the claim as a whole amounts to nothing more than generic computer functions merely used to implement an abstract idea, such as an idea that could be done by a human analog (i.e., by hand or by merely thinking). On the other hand, courts have held computer-implemented processes to be significantly more than an abstract idea (and thus eligible), where generic computer components are able in combination to perform functions that are not merely generic. (MPEP §2106.05(d)(II) – emphasis added)
Below are examples of other types of activity that the courts have found to be well-understood, routine, conventional activity when they are claimed in a merely generic manner (e.g., at a high level of generality) or as insignificant extra-solution activity: recording a customer’s order, Apple, Inc. v. Ameranth, Inc., 842 F.3d 1229, 1244, 120 USPQ2d 1844, 1856 (Fed. Cir. 2016); shuffling and dealing a standard deck of cards, In re Smith, 815 F.3d 816, 819, 118 USPQ2d 1245, 1247 (Fed. Cir. 2016); restricting public access to media by requiring a consumer to view an advertisement, Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 716-17, 112 USPQ2d 1750, 1755-56 (Fed. Cir. 2014); identifying undeliverable mail items, decoding data on those mail items, and creating output data, Return Mail, Inc. v. U.S. Postal Service, -- F.3d --, -- USPQ2d --, slip op. at 32 (Fed. Cir. August 28, 2017); presenting offers and gathering statistics, OIP Techs., 788 F.3d at 1362-63, 115 USPQ2d at 1092-93; determining an estimated outcome and setting a price, OIP Techs., 788 F.3d at 1362-63, 115 USPQ2d at 1092-93; and arranging a hierarchy of groups, sorting information, eliminating less restrictive pricing information and determining the price, Versata Dev. Group, Inc. v. SAP Am., Inc., 793 F.3d 1306, 1331, 115 USPQ2d 1681, 1699 (Fed. Cir. 2015) (MPEP 2106.05(d))
Here, the steps are receiving or transmitting data over a network (Symantec, TLI, OIP Techs – MPEP 2106.05(d)(II); performing repetitive calculations (Bancorp – MPEP 2106.05(d)(II); storing and retrieving information in memory (Versata, OIP Techs – MPEP 2106.05(d)(II) and electronically scanning or extracting data (Content Extraction – MPEP 2106.05(d)(II) as well as setting or determining a price (OIP Techs – MPEP 2106.05(d)(II)– all of which have been recognized by the courts as well-understood, routine and conventional functions.
The claims are directed to an abstract idea with additional generic computer elements that do not add meaningful limitations to the abstract idea because they require no more than a generic computer to perform generic computer functions that are well-understood, routine, and conventional activities previously known in the industry.
For the next step of the analysis, it must be determined whether the limitations present in the claims represent a patent-eligible application of the abstract idea. A claim directed to a judicial exception must be analyzed to determine whether the elements of the claim, considered both individually and as an ordered combination are sufficient to ensure that the claim as a whole amounts to significantly more than the exception itself.
For the role of a computer in a computer implemented invention to be deemed meaningful in the context of this analysis, it must involve more than performance of “well-understood, routine, [and] conventional activities previously known to the industry.” Further, “the mere recitation of a generic computer cannot transform a patent ineligible abstract idea into a patent-eligible invention.”
Applicant’s specification discloses the following:
“Figure 2 is a block diagram illustrating one embodiment of a network 200 in which the quoting system 10 of Figure 1 may be implemented. In this embodiment, the quoting system 10 may be available to a plurality of users 21 through a network 23, which may be the Internet. The system 200 may include a company site 20, an internet service provider (ISP) 22 and the users 21. The users 21 may communicate with the company site 20 through the network 23. The users 21 may be connected to the network 23 through the ISP 22. In one embodiment, the users 21 may be coupled to the ISP 22 through a communications link 27. In another embodiment, a user 21 may be coupled directly to the ISP 22.” (See Applicant Spec page 17, lines 1-9)
“Although any network may be used for the system 200, for the purpose of illustration, the users 21 and the company site 20 may be connected to the Internet 23. The users 21 may be connected to the ISPs 22 through client computer systems having resident therein at least one user interface (UI) application module. In one embodiment, the UI application module may include an internet browser, such as a Netscape Navigator™ browser or a Microsoft Internet Explorer™ browser. The users 21 may further include an email communication application module, such as a Microsoft Beyond Mail™ application, a Netscape Mail™ application, a Eudora Pro™ application or the like.” (See Applicant Spec page 18, lines 8-16)
“The users 21 may be comprised of a personal computer running a Microsoft Windows™ 95 operating system, a Microsoft Windows 98 operating system, a Microsoft Windows XP™ operating system, a Millenium™ operating system, a Microsoft Windows NT™ operating system, a Microsoft Windows 2000 operating system, a Microsoft Windows™CE™ operating system, a PalmOS™ operating system, a Unix operating system, a Linux operating system, a Solaris™ operating system, an OS/2™ operating system, a BeOS™ operating system, a MacOS™ operating system, or another similar operating system or platform. The users 21 may also include a microprocessor such as an Intel x86-based device, a Motorola 68K device, a PowerPC™ device, a MIPS device, a Hewlett-Packard Precision™ device, a Digital Equipment Corporation Alpha™ RISC processor, a microcontroller or another general or special purpose device operating under programmed control. The users 21 may further include an electronic memory such as a random access memory (RAM), an electronically programmable read only memory (EPROM), a storage such as a hard drive, a compact disk read only memory (CDROM), a rewritable CDROM or another magnetic, optical or other storage medium, and other associated components connected over an electronic bus, as will be appreciated by persons skilled in the art. The users 21 may also include network-enabled appliance such as a WebTV™ unit, a radio-enabled Palm™ Pilot or similar unit, a set-top box, a networkable game-playing console such as a Microsoft XBOX™, Sony Playstation™ or Playstation II™ console or a Sega Dreamcast™ console, a browser-equipped cellular telephone, or another TCP/IP client or other device.” (See Applicant Spec page 18, line 17 – page 19, line 8)
“Although the database 26 is shown to be outside of the company site 20, the database 26 may reside within the company site 20 in one embodiment. The database 26 may include or interface to an relational database such as that sold commercially by Oracle Corporation. Other databases, such as an Informix™ database, a Database 2 (DB2) database, a Sybase database, an On Line Analytical Processing (OLAP) query format database, a Standard Query Language (SQL) format database, a storage area network (SAN), a Microsoft Access™ database or another similar data storage device, query format, platform or resource may be used.” (See Applicant Spec page 19, lines 20-27)
“The database 26 may be used to store one or more algorithms used to calculate the quote for the premium payment amount or the retirement income amount requested by the user 21. The database 26 may also store one or more tables, charts, investment information, information needed to generate web pages, and any other data needed to generate the quote described with reference to the output module of Figure 1.” (See Applicant Spec page 19, line 28-page 20, line 3)
Generic computer components recited as performing generic computer functions that are well-understood, routine and conventional activities amount to no more than implementing the abstract idea with a computerized system.
Looking at the limitations as an ordered combination adds nothing that is not already present when looking at the elements taken individually. There is no indication that the combination of elements improves the functioning of a computer or improves any other technology. The collective functions appear to be implemented using conventional computer systemization.
The claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception. Upon reconsideration of the indicia noted under Step 2A in concert with the Step 2B considerations, the additional claim element(s) amounts to no more than mere instructions to apply the exception using generic computer components. The same analysis applies in Step 2B, i.e., mere instructions to apply an exception using a generic computer component cannot integrate a judicial exception into a practical application at Step 2A or provide an inventive concept in Step 2B. The claim does not provide an inventive concept significantly more than the abstract idea.
Accordingly, these additional elements, when considered separately and as an ordered combination, do not integrate the abstract idea into a practical application because they do not impose any meaningful limits on practicing the abstract idea.
The independent claims 55 and 68 are not patent eligible. (Step 2B: NO. The claims do not provide significantly more)
Dependent Claim 70 further defines the abstract idea that is presented in respective Independent Claims 55 and 68 and are further grouped as certain methods of organizing human activity and mental processes and are abstract for the same reasons and basis as provided above.
No additional hardware components other than those found in the respective independent claims is recited, thus it is presumed that the claim is further utilizing the same generic systemization as presented above. The dependent claims do not include any additional elements that integrate the abstract idea into a practical application of the exception or are sufficient to amount to significantly more than the judicial exception when considered both individually and as an ordered combination.
Therefore, the dependent claims are also directed to an abstract idea.
Thus, Claims 55, 68 and 70 are rejected under 35 U.S.C. 101 as being directed to non-statutory subject matter.
Response to Arguments
Applicant's arguments filed September 18, 2026 have been fully considered as discussed below.
As to the Double Patenting Rejections:
Applicant has requested abeyance of the rejections until allowable subject matter is indicated and notes that they will file a Terminal Disclaimer. (See Applicant Arguments dated 09/18/2026, page 8) Applicant’s request has been acknowledged and the rejections have been maintained.
As to the 101 Rejections:
Applicant disagrees that the claims are directed to non-statutory subject matter. (Id. at page 9) Applicant then presents an overview of the 2019 PEG. (Id. at pages 8-10)
Applicant then argues that that the premise that the adjustment account is not defined by a particular data structure in the specification, nor is there any reference to an algorithmic process disclosed in the specification and that the Office notes that the adjustment account is not described as a technical advance, it is an account that stores data is incorrect. (Id. at page 10)
Applicant then presents disclosure from the specification as to Figure 5 presenting the method for using an adjustment account and concludes by noting that the specification indicates that steps 520, 535 and 540 are processed by an adjustment module. (Id. at page 10) While the specification does indicate the words that Applicant notes according to one embodiment, there is no accompanying structural disclosure of “an adjustment module”. Applicant then argues that the specification also provides four worked numerical examples demonstrating the operation of Figures 5 and 6 and alleges that a numbered flow chart of conditional determinations executed by a named module is an algorithmic process. (Id. at page 11) Applicant further argues that the claims now recite the ordered conditional logic itself as amended and alleges that under MPEP 2106.05(a) the claims themselves not include the components that provide the disclosed improvement. (Id.)
Examiner is of another opinion. Applicant’s specification indicates that Figure 5 is illustrating a method for using an adjustment account and provides disclosure for an accumulation period and an annuitization period. The specification discloses that this is a comparison of the benefit level with the guaranteed minimum period retirement income payment may be made by an adjustment module which may be associated with the annuity. The elements recited are conditional limitation instructions that are mere instructions being performed by a generic computer component (the computer processor) to compare data. This does not provide for significantly more, rather the limitations are reflective of mere instructions to apply an abstract idea on a computer and/or mere data gathering. This argument is not persuasive.
Applicant then refers to the Ex Parte Desjardins decision for the proposition that examiners should not dismiss additional elements as mere “generic computer components” without considering whether such elements confer a technological improvement to a technical problem. (Id.) Further, Applicant notes that claims should not be evaluated at such a high level of generality that potentially meaningful technical limitations are dismissed without adequate explanation. (Id. at page 12)
Applicant argues that the adjustment account recited in Claims 55 and 68 is not an account that stores data and that the Office doesn’t address the ordered conditional determinations now recited in amended claims 55 and 68. (Id. at page 12) Again, the steps are the same types of steps that would be performed in the determination of returning or paying out a benefit based on the investments comprising the account. This is a comparison of the benefit level with the guaranteed minimum periodic retirement income associated with the annuity. This is not a technical advance or an improvement to a computer or anything other than following the instructions to compare data.
Applicant also refers to the August 4, 2025 USPTO Memo on 101 examination noting that the claim should be considered as a whole and that the claims should not be oversimplified. (Id. at page 12) Applicant then argues that the claims recite a particular way, namely a specific branch by branch rule set executed by a named adjustment module, rather than the idea of guaranteeing a minimum payment. (Id.) Examiner disagrees. The claims are presenting conditional steps that are being executed by a generic processor. These are mere instructions to apply an abstract idea that is using a processor as a tool to perform an existing process.
Applicant also refers to the August 4, 2025 memo for the proposition that if it is a “close call” as to whether a claim is eligible, examiners should only make a rejection when it is more likely than not that the claim is ineligible under 35 USC 101. (Id.)
Examiner notes that the adjustment account is not described by the specification as a technical advance, it is an account that stores data. The data that is being stored is adjustment data, which is the same kind of data that conventionally would have been gathered and stored when attempting to track guaranteed minimum period payments. There is no technological advance or innovation taking place. These arguments are simply not supported by the specification and there is no basis from which Examiner can conclude the 101 rejection is overcome based on these arguments. The 101 Rejection is maintained.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to AMBREEN A. ALLADIN whose telephone number is (571)270-3533. The examiner can normally be reached Monday - Friday 9-5.
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/AMBREEN A. ALLADIN/Primary Examiner, Art Unit 3691
September 25, 2026
