DETAILED ACTION
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 Claims
Claims 1-56 are currently pending and rejected.
Claim Interpretation
Claims 29-42 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.
Claim Rejection – 35 U.S.C. 112
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.
Claim limitation “means to store…” and “means to process…” invoke 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. 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 Rejection – 35 U.S.C. 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Claims 1-56 are rejected under 35 U.S.C. 101 because the claimed invention is directed to non-statutory subject matter. The rationale for this finding is explained below. In the instant case, the claims are directed towards managing investment approval of a beneficiary (e.g., a child) account by a custodian (e.g. a parent). The concept is clearly related to managing interaction between people, thus the present claims fall within the Certain Method of Organizing Human Activity grouping. The claims do not include limitations that are “significantly more” than the abstract idea because the claims do not include an improvement to another technology or technical field, an improvement to the functioning of the computer itself, or meaningful limitations beyond generally linking the use of an abstract idea to a particular technological environment. Note that the limitations, in the instant claims, are done by the generically recited computer device. The limitations are merely instructions to implement the abstract idea on a computer and require no more than a generic computer to perform generic computer functions that are well-understood, routine and conventional activities previously known to the industry. Therefore, claims 1-56 are rejected under 35 U.S.C. 101 as being directed to non-statutory subject matter.
Step 1: The claims 1-56 are directed to a process, machine, manufacture, or composition matter.
In Alice Corp. Pty. Ltd. v. CLS Bank Intern., 134 S. Ct. 2347 (2014), the Supreme Court applied a two-step test for determining whether a claim recites patentable subject matter. First, we determine whether the claims at issue are directed to one or more patent-ineligible concepts, i.e., laws of nature, natural phenomenon, and abstract ideas. Id. at 2355 (citing Mayo Collaborative Servs. v. Prometheus Labs., Inc., 132 S. Ct. 1289, 1296–96 (2012)). If so, we then consider whether the elements of each claim, both individually and as an ordered combination, transform the nature of the claim into a patent-eligible application to ensure that the patent in practice amounts to significantly more than a patent upon the ineligible concept itself.
Step 2A: The claims are directed to an abstract idea.
Prong One
The present claims are directed towards managing investment approval of a beneficiary (e.g., a child) account by a custodian (e.g. a parent). The concept comprises obtaining a desired asset request, determining investment approval setting, which include a binary pre-approval setting (i.e. Approve or Reject), sending an investment approval notification for the custodian when the determined investment approval obtaining setting is required; obtaining an investment approval response indicating approval, and generating a securities order upon any of: obtained investment approval response indicating approval and determined investment approval obtaining settings allowing the desire asset request. Essentially, the claimed invention is a platform that manages the custodian’s pre-approval setting on beneficiary account and the interaction between the beneficiary and the custodian in requesting approval for investment. The present claims are related to managing interaction between people, thus the present claims fall within the Certain Method of Organizing Human Activity grouping. The performance of the claim limitations using generic computer components (i.e. a processor and a memory) does not preclude the claim limitation from being in the certain methods of organizing human activity grouping. Accordingly, this claim recites an abstract idea.
Prong Two
Independent claims1, 15, 29, and 43 recite a processor coupled with a memory as additional elements. The additional elements are claimed to perform basic computer functions, such as obtaining a desired asset request, determining investment approval setting, which include a binary pre-approval setting (i.e. Approve or Reject), sending an investment approval notification for the custodian when the determined investment approval obtaining setting is required; obtaining an investment approval response indicating approval, and generating a securities order. Dependent claims 2-14, 16-28, 30-42, and 44-56 do not recite other additional elements.
Examiner also points out that the “datastructure” recited in the claims is not a novel datastructure that provides improved efficiency, security, speed, or other technological benefit. Paragraph 0140-0141 of the specification clearly shows the claimed datastructure may be “a conventional, fault tolerant, relational, scalable, secure database such as Oracle or Sybase”, and the datastructure may be implemented “using various standard data-structures, such as an array, hash, (linked) list, struct, structured text file (e.g., XML), table, and/or like”. The specification does not explain how the claimed datastructure can provide better efficiency. The specification also does not provide example of table or script of the datastructure to allow one skilled in the art to use it. As such, Examiner interprets the claimed datastructure as conventional data table that contains information (e.g. XML file).
The present claims do not solve a problem specifically arising in the realm of computer networks. The problem of selectively allowing a child to make certain investments/purchase based on rules set by a custodian is not unique to computer environment. Rather, the present claims implement an abstract concept using existing computer technology in a networked computer environment. The present claims do not recite limitation that improve the functioning of computer, effect a physical transformation, or apply the abstract concept in some other meaningful way beyond generally linking the use of the abstract concept to a particular technological environment. As such, the present claims fail to integrate into a practical application.
Step 2B: The claims do not recite additional elements that amount to significantly more than the abstract idea.
As discussed earlier, the present claims only recite a processor coupled with a memory as additional elements. The additional elements are claimed to perform basic computer functions, such as obtaining a desired asset request, determining investment approval setting, which include a binary pre-approval setting (i.e. Approve or Reject), sending an investment approval notification for the custodian when the determined investment approval obtaining setting is required; obtaining an investment approval response indicating approval, and generating a securities order. According to MPEP 2106.05(d), “performing repetitive calculations”, “receiving, processing, and storing data”, “electronically scanning or extracting data from a physical document”, “electronic recordkeeping”, “storing and retrieving information in memory”, and “receiving or transmitting data over a network, e.g., using the Internet to gather data” are considered well-understood, routine, and conventional functions of computer. The present claims do not improve the functioning of computer technology. Simply implementing the abstract idea on a generic computer or using a computer as a tool to perform an abstract idea cannot integrate a judicial exception into a practical application at Step 2A or provide an inventive concept in Step 2B. Therefore, the present claims are ineligible for patent.
Response to Remarks
In the amendment filed on 11/17/2025, Applicant only added the word “datastructure” after “investment approval obtaining settings” and “investment approval notification” in the independent claims 1, 15, 29, and 43. The amendment is considered insignificant, as it does not change the claim interpretation or add any new feature/limitation to the claimed invention. Applicant’s specification discloses, “the IAD database may be implemented using various standard data-structures, such as an array, hash, (linked) list, structured text file (e.g., XML), table and/or the like” (see paragraph 0141). The specification does not disclose the requirement of any particular datastructure or any improvement to datastructure technology. Therefore, the addition of the word “datastructure” to the independent claims does not change the claimed invention or require new rejection.
Rejection under 35 U.S.C. 101
Applicant's arguments filed on 11/17/2025 with respect to claim rejection under 35 U.S.C. 101 have been fully considered but they are not persuasive. Applicant’s argument is similar to previous arguments.
Applicant argued that the Office Action unreasonably ignored numerous unique and unconventional elements, such as “an insulated account investment request processing apparatus, which obtains, via network, a desired asset request datastructure, determines investment approval obtaining settings associated with the secure insulated value account datastructure, in which the binary approval setting is structured as settable by a custodian via a pre-approval custodian insulated investment single-action-approval interface, sends an investment approval notification for the custodian associated with the secure insulated value account datastructure in accordance with the investment approval obtaining settings, in which sending for the investment approval notification is structured as occurring when the determined investment approval obtaining setting is required, obtains an investment approval response indicating approval for trading the security from the custodian when sending for the investment approval notification is structured as occurring”.
Examiner has already addressed this argument in the previous O.A.. Examiner again points out that the present claims are directed towards managing investment approval of a beneficiary (e.g., a child) account by a custodian (e.g., a parent). The concept is clearly related to managing interaction between people, thus the present claims fall within the Certain Method of Organizing Human Activity grouping.
Unlike the issue in DDR, managing investment approval of a beneficiary (e.g., a child) account by a custodian (e.g., a parent), is not a computer centric problem. Moreover, the elements listed by the Applicant are merely conventional computer features. For example, the datastructure in the claims “may be implemented using various standard data structures, such as an array, hash, (linked) list, struct, structured text file (e.g., XML), table, and/or the like” (see paragraph 0141). Unlike the claims of Enfish, the present claim language does not define the datastructure or recite any unique arrangement of the datastructure that makes it more efficient or secure than conventional datastructure. To the contrary, the specification appears to suggest that the claimed datastructure could be any standard datastructure. Although paragraph 00153 of the specification mentions the “features and embodiments of the IAD discussed herein increase network efficiency by reducing data transfer requirements the use of more efficient data structure and mechanisms for their transfer and storage”, the present claims do not recite any unique feature that enables increase network efficiency or specifically recite the layout/construction of the data structure that would provide higher data efficiency.
Determining investment approval settings is merely determining rules set forth by the custodian. The binary approval setting is merely “Yes or No” setting for rules. Toggle switch element is a standard GUI element on most graphical interfaces, and it is readily available to provide single-action-approval interface for setting binary rules. Applicant attempted to draw analogy between the GUI in the present claims to the GUI in Core Wireless, but the analogy is flawed. The Core Wireless court noted that the recited UI of Core Wireless improved the speed of a user’s navigation through various views and windows and reduces computer resources, in particular on small screen mobile devices, because it provides a summary window that displays restrained data from one or more applications in an un-launched state. The court held that this was an improvement to the functioning of computers: “These limitations disclose a specific manner of displaying a limited set of information to the user, rather than using conventional user interface method to display a generic index on a computer. Like the improved systems claimed in Enfish, Thales, Visual Memory, and Fijian, these claims recite a specific improvement over prior systems, resulting in an improved user interface for electronic devices”. The present claims, however, do not recite any unconventional GUI element similar to the “summary window” GUI element which displays data from app in an un-launched state. As discussed earlier, the binary approval setting GUI is can be implemented as a conventional toggle switch GUI element. The present claims do not recite any improvement in GUI technology.
The claim language does not explicitly recite a switch GUI, but merely a GUI that allows each invention type to be approved/disapproved. Digging into the drawing, and we can see this limitation depicted in Figure 12. The so-called binary switch is merely a set of On/Off button that controls whether the child user is approved to invest in “general stock market investment” and whether the child user is approved to “purchase individual securities with money from savings”. Such On/Off button is well-known to one of ordinary skill in the art, and it is not even explicitly required by the claim language. Ginsberg et al. (Pub. No.: US 2014/0279688) teaches establishing rules/restrictions for using fund in an insulated account (see paragraph 0112-0120). In particular, paragraph 0120 teaches user can set restriction regarding to whether the fund can be used to trade common and preferred stock, fixed income instruments, derivatives, and/or other investment instruments. This setting is understood as an approved/disapproved binary setting for each investment types. One skilled in the art, provided with the Ginsberg reference, would understand the prior art could be implemented as Approved/Disapproved option for each investment type in the form of pull-down menu, radial buttons, On/Off buttons, or toggle switch, which are all well-known and built-in GUI elements in conventional operating systems. As discussed earlier, this “binary switch” feature is taught or at least implied by paragraphs 0112-0120 of Ginsberg. Examiner also points out that paragraph 0232 of Ginsberg is directed to the pre-approval process, which Examiner interprets as an account setup process. Approved Investment type (which is mentioned in paragraph 0120) and other account preferences can be setup by the user interface module in Ginsberg. As such, the claimed feature reads on Ginsberg.
Sending for the investment approval notification is structured as occurring when the determined investment approval obtaining setting is required and obtaining an investment approval response from the custodian are merely following the rules set up by custodian and exchanging data via network with the custodian when the rules required the system to do so. None of these features are unconventional. Furthermore, paragraph 00113-00114 of Applicant’s specification suggest that the present claims can be implemented on any general-purpose computer. Therefore, the recitation of these conventional computer features merely amounts to implementing an abstract concept on general-purpose computer.
Applicant also argued the present claims are more technical in nature than in BASCOM. Examiner disagrees. The BASCOM court ruled that an inventive concept may be found in the non-conventional and non-generic arrangement of the additional elements, i.e., the installation of a filtering tool at a specific location, remote from the end-users, with customizable filtering features specific to each end user. The present claims, however, do not recite non-conventional and non-generic arrangement of hardware/software elements. As discussed earlier, the binary rule setting GUI can be implemented with conventional toggle switch GUI element, and the datastructure recited in the claims could be any conventional datastructure according to Applicant’s specification. Applicant then quoted paragraph 00154 of the specification, which states the “IAD transforms purchase request and investment request inputs, via IAD components (e.g., CAC, PFDP, CFDP, PRP, IRP), into order request, purchase response, and investment response outputs”, and argued these features show practical applications of transformation integrations. Examiner points out that these IAD components are not in the claims. Even if these IAD components are claimed, they are merely codes that perform conventional computer functions. Note: CAC is custodial account configuring component, PFDP is parent funds deposit processing component, CFDP is child funds deposit processing component, PRP is purchase request processing component, and IRP is investment request processing component (see paragraph 0006-0010). The function of these IAD components is merely converting user inputs into outputs (i.e., rearranging information) according predefined programs. The data conversion is not transforming a matter from one physical state to another, or transforming data from one data format specific to one type of machine to another format specific to another type of machine. The IAD is not considered an unconventional arrangement of elements, nor does it provide new/improved computer functionality.
Applicant pointed to paragraph 00127 of the specification, which says “Although non-conventional program components such as those in the component collection, typically, are stored in the local storage device” (note: it is the only time the specification mentions “non-conventional”). Examiner argues however, the specification does not clearly state which program components are considered non-conventional. The paragraph merely states the memory “may contain a collection of programs and/or database components and/or data such as, but not limited to…and/or the like (i.e., collectively a component collection)”. The specification does not may the listed components are non-conventional. Rather, the specification means other components not listed in the paragraph 00127 could be stored in local storage device or be loaded and/or stored in memory such as: peripheral devices, RAM, remote storage, etc. On the other hand, the specification clearly states many claimed techniques and components are conventional – [00104] “The CPU interacts with memory…according to conventional data processing techniques”; [00118] “Interface bus(ses) 1707 may accept, connect, and/or communicate to a number of interface adapters, conventionally although not necessarily in the form of adapter cards…Interface adapters conventionally connect to the interface bus via a slot architecture…Conventionally slot architectures may be employed”; [00126] “A storage device 1714 may be any conventional computer system storage”; [00129] “The information server may be a conventional Internet information server”; [00133] “The user interface may be a conventional graphic user interface”; [00134] “The Web browser may be a conventional hypertext viewing application”; [00135] “The mail server may be a conventional Internet mail server”; [00138] “The mail client may be a conventional mail viewing application”; [00139] “the cryptographic component, alternatively, may run on a conventional CPU”; [00140] “The database may be a conventional, fault tolerant, scalable, secure database such as Oracle or Sybase”.
Applicant quoted paragraph 00154 of the specification, which says “The IAD transforms purchase request and investment request inputs, via IAD components (e.g., CAC, PFDP, CFDP, PRP, IRP), into order request, purchase response, and investment response outputs”. Applicant argued there is no requirement for this transformation to be physical. Examiner points that transforming data in one form to another form is generally not considered “transformation or reduction of a particular article to a different state or thing” (which is required by the 2019 Subject Matter Eligibility Guidance). Data transformation is merely data manipulation. Data is not being transformed into another state or thing – data is still data. Examiner also points out that the listed IAD components – CAC (custodial account configuring), PFDP (parent funds deposit processing), CFDP (child funds deposit processing), PRP (purchase request processing), IRP (investment request processing) – are just instructions/software code to change incoming data into desired output data. These “components” are not physical computer elements. These instructions are can easily implemented by human.
Applicant argued that the specification does not make admission that the claimed datastructure being “conventional” and that Examiner’s position implies all GUI, all datastructures, all software invention are conventional. Examiner did not make such statement. Some datastructure are indeed unconventional and provide technical improvements to computer technology. For example, the eligible claims in Enfish recite a “self-referential database” where a single table can store information that would normally require multiple tables. Specifically, claim 17 in Enfish recites:
A data storage and retrieval system for a computer memory, comprising:
means for configuring said memory according to a logical table, said logical table including:
a plurality of logical rows, each said logical row including an object identification number (OID) to identify each said logical row, each said logical row corresponding to a record of information;
a plurality of logical columns intersecting said plurality of logical rows to define a plurality of logical cells, each said logical column including an OID to identify each said logical column; and
means for indexing data stored in said table
The Enfish court relied on the distinction made in Alice between, on one hand, computer-functionality improvements and, on the other, uses of existing computers as tools in aid of processes focuses on "abstract ideas". In Enfish, the claims at issue focused not on asserted advances in uses to which existing computer capabilities could be put, but on a specific improvement - a particular database technique - in how computers could carry out one of their basic functions of storage and retrieval of data. On the contrary, the present claims and specification do not suggest that the claimed datastructure being unconventional or providing any performance benefit. Paragraph 00141 of the specification states, “the IAD database may be implemented using various standard data-structures”. The present claims also do not provide detail with regards to how the datastructure is set up to suggest any performance improvement over existing datastructures.
With regards to binary approval setting for the datastructure, Examiner has explained in detail why this feature was well-understood, routine, and conventional in earlier discussion.
Paragraphs 0070-0080 appear to be new arguments. Applicant argued that “the basis and analysis employed by the Office Actin is impermissible” with regards to the datastructure and “1-click” toggle switch GUI element being conventional. Examiner has provided detailed analysis on the feature and cited disclosure from the specification and prior art references. The specification does not allege these features are unconventional or improvement to existing computer technology or novel technical solution for computer centric problems.
For these reasons, Examiner finds Applicant’s arguments unpersuasive. Examiner maintains the ground of rejection under 35 U.S.C. 101.
Rejection under 35 U.S.C. 103
Applicant’s arguments, filed on 11/01/2023, with respect to rejection under 35 U.S.C. 103 were persuasive. Examiner agreed that Close et al. is not related to investment approval setting. Thus, the cited prior arts do not teach the investment approval obtaining setting includes a price swing range for the allowed investment type. No prior art rejection is cited in this Office Action.
Conclusion
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/HAO FU/Primary Examiner, Art Unit 3697
NOV-2024