DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Status of the Application
This office action is in response to Applicant’s communication of October 10, 2025. Applicant’s arguments have been considered.
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 claims and remarks, filed on October 10, 2025, have been noted.
Priority: 11/19/2013
Status of Claims: Claims 28 – 39 and 55 – 57 are pending. Claims 28, 31, 35, 36, 39 and 55 – 57 have been AENDED. Claims 27, 58 and 59 have previously been CANCELLED, with Claims 1 – 26 and 40 – 54 having been previously withdrawn as being directed to a non-elected invention.
Status of Office Action: Non-Final (RCE)
Claim Objections
Claim 36 is objected to, based on a minor informality. In Amendments To The Claims filed on October 10, 2025, Claim 36 is identified as being Previously Presented, but has been Amended. Appropriate correction is requested.
Claim Interpretation
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.
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.
The Examiner notes that Claim 55 invokes 35 U.S.C. 112(f).
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 28 – 39 and 55 – 57 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
Claim 28 is 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. Claim 28 is directed to an abstract idea, Methods of Organizing Human Activity. The claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception because the additional computer elements, which are recited at a high level of generality, provide conventional computer functions that do not add meaningful limits to practicing the abstract idea.
Claim 28 recites, in part, a system for establishing a deferred income annuity by obtaining an enrollment request from a participant, providing an input page to the participant, obtaining individualized parameters from the participant, determining a target pay-out amount, determining updated parameters, instantiating a periodic update, determining a purchasing plan, determining a purchase price, executing a purchase transaction, rebalancing an allocation of the participant’s portfolio, and generating a pay-out amount. The limitations of establishing a deferred income annuity, obtaining an enrollment request from a participant, providing, obtaining, determining, instantiating, executing, rebalancing, and generating a pay-out amount, are directed to concepts of organizing human activity via the use of generic computer components. Hence, it falls within the “Certain Methods of Organizing Human Activity” grouping of abstract ideas. Accordingly, the claim recites an abstract idea.
The judicial exception is not integrated into a practical application. In particular, the claim only recites additional elements such as a processor, a memory and a user interface to perform operations. The generic computer components are recited at a high-level of generality (performing generic computer functions) such that it amounts to no more than mere instruction to apply the exception using generic computer components. Specification paragraphs 59, 175-177, 180, 187-189, 192-195, 199-201, 204-206, additionally reference general purpose computing systems and environments, with the recitation of the computer limitations amounting to mere instructions to implement the abstract idea on a computer. Accordingly, the additional elements do not integrate the abstract idea into a practical application because it does not impose any meaningful limits on practicing the abstract idea. The claim is directed to an abstract idea.
Next the claim as a whole is analyzed to determine whether any element, or combination of elements, is sufficient to ensure the claim amounts to significantly more than an abstract idea. Claim 28 does not include additional elements that are sufficient to amount to significantly more than the judicial exception because the additional elements to perform operations amount to no more than mere instructions to apply the exception using generic computer components. Mere instruction to apply an exception using generic computer components cannot provide an inventive concept. The claim is not patent eligible.
Claims 29 – 39 are dependent from Claim 28, and do not include additional elements that are sufficient to amount to significantly more than the judicial exception. Claims 29 – 39 also do not identify improvement to computer technology or computer functionality MPEP 2106.05(a), a particular machine MPEP 2106.05(b), or a particular transformation MPEP 2106.05(c). Given the above reasons, generic computing components associated with establishing a deferred income annuity, obtaining an enrollment request from a participant, providing, obtaining, determining, instantiating, executing, rebalancing, and generating a pay-out amount is not an inventive concept.
Independent system Claim 55, independent product Claim 56, and independent process Claim 57 are directed to an abstract idea as the Federal Circuit has held that an extended claim by claim analysis is not necessary where multiple claims are “substantially similar and linked to the same abstract idea.” In this case, Claims 55, 56 and 57 are substantially similar to system Claim 28.
Therefore, Claims 28 – 39 and 55 – 57 are rejected under 35 U.S.C. 101. Claims 28 – 39 and 55 – 57 are not drawn to eligible subject matter as they are directed to an abstract idea without significantly more.
Response to Arguments
Applicant’s arguments with respect to the introduced claims have been considered but found not persuasive.
The amendments to the claims have been entered.
Applicant has amended independent Claims 28 and 55 – 57 to overcome the 35 U.S.C. 101 rejection previously made. Applicant’s arguments and contention that the claims are not directed to an abstract idea, however, is unpersuasive. Neither the claims nor the specification identifies elements beyond generic computer components performing generic computer functions. Additionally, establishing a deferred income annuity and generating a pay-out amount remains business related, and the 2019 Patent Eligibility Guidance includes identification of commercial or legal interactions and business relations within identification of Certain Methods of Organizing Human Activity, as an abstract idea.
Applicant’s contention that the claims are not directed to an abstract idea in that there is an improvement in network efficiency is unpersuasive. Neither the claims nor the specification identifies elements beyond generic computer components performing generic computer functions, and there is no mention of performance metrics enhancement. Additionally, while association to a claimed technology may limit an abstract idea to a particular field, a general linking of an abstract idea to a claimed technology also does not demonstrate patent eligibility.
Applicant’s contention that the Office has taken inconsistent positions, lacks merit. Applicant’s contention appears founded upon the premise that novelty, as a single test, is determinative of patent eligibility. Such is not the case. The grounds for patentability under 35 U.S.C. 101 and U.S.C. 103 remain mutually exclusive.
Applicant appears to contend that any unconventional feature within the claims establishes the claims in their entirety to be patent eligible. In this case, the claims simply do not provide a technological solution to a technological problem, and remain an abstract idea in accordance with 35 U.S.C. 101.
Applicant purports that unconventional features within the claims prevent errors and increase network efficiency. Again, while association to a claimed technology may limit an abstract idea to a particular field, a general linking of an abstract idea to a claimed technology does not demonstrate patent eligibility, and there is no mention of performance metrics enhancement.
Applicant contends that “Upon such an assertion of unconventionality, the Examiner must provide a factual determination to counter it…” The Examiner notes that there is no 35 U.S.C. 103 rejection founded upon the grounds of being well understood, routine and conventional.
The Examiner remains not in accord with Applicant’s contention that the Office Action of April 10, 2025, took an “extremely inconsistent approach” relative to Applicant’s arguments. The Office Action of April 10, 2025, speaks for itself and stands on the merits.
Applicant’s contention is simply not correct that Official Notice is “clearly being taken” regarding the 35 U.S.C. 101 rejection. Official Notice is not mentioned.
The Examiner remains not in accord with Applicant’s contention that the USPTO 2024 Guidance Update including Artificial Intelligence has been ignored. The subject claims are neither founded in Artificial Intelligence (“AI”), nor AI operations
. Applicant’s contention that the “Application specifically claims specific and certain technology” is not persuasive. Again, while association to a claimed technology may limit an abstract idea to a particular field, a general linking of an abstract idea to a claimed technology also does not demonstrate patent eligibility. The claims simply do not provide a technological solution to a technological problem as the claims provide generically computer implemented operations to a business field with the focus of the instant claims not on such an improvement in computers as tools, but on certain independent abstract ideas that use computers as tools.
Claims 28 and 55 – 57 do not include additional elements that are sufficient to amount to significantly more than the judicial exception. Claims 28 and 55 – 57, along with claims dependent from 28 remain directed to an abstract idea (i.e., methods of organizing human activity), and do not identify an improvement to computer technology or computer functionality MPEP 2106.05(a), a particular machine MPEP 2106.05(b), or a particular transformation MPEP 2106.05(c). Given the above reasons, the claims are not patent eligible, as they do not provide an inventive concept and a 35 U.S.C. 101 rejection of Claims 28 – 39 and 55 – 57 has been made.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Mercier, U.S. 8,374,945 generally identifies a deferred income annuity, related pricing, purchase by periodic contributions and payment to a participant; Scott, U.S. 2012/0185408 generally identifies user investments, market conditions and portfolio rebalancing; Templeton, U.S. 2013/0179368 generally identifies a combination of Moody’s rating and Treasury yield, including averaging for a time period; Devaney, U.S. 2013/0144804 generally identifies determining an amount to fulfill a participant’s monthly expenses; and Advani et al., U.S. 8,311,924 generally identifies a deferred income annuity and desired income amounts.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Benjamin Brindley, whose telephone number is (571) 272-7335. The examiner can normally be reached on Monday and Tuesday between 6:00 AM and 3:00 PM.
If any attempt to reach the examiner by telephone is unsuccessful, the examiner’s supervisor, Christine Behncke, can be reached at (571) 272-8103. The fax telephone numbers for this group are either (571) 273-8300 or (703) 872-9326 (for official communications including After Final communications labeled “Box AF”).
Another resource that is available to applicants is the Patent Application Information Retrieval (PAIR). Information regarding the status of an application can be obtained from the (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAX. 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, please feel free to contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free).
Applicants are invited to contact the Office to schedule an in-person interview to discuss and resolve the issues set forth in this Office Action. Although an interview is not required, the Office believes that an interview can be of use to resolve any issues related to a patent application in an efficient and prompt manner.
/BENJAMIN S BRINDLEY/Primary Examiner, Art Unit 3695
November 24, 2025