DETAILED ACTION
Status of Claims
Applicant has amended claims 26 and 45. No claims have been added or canceled. Claims 1-25, 27, 35, 37 and 38 were canceled prior to previous office action. Thus, claims 26, 28-34, 36 and 39-45 remain pending in this application. This application is being examined under the pre-AIA first to invent provisions.
Response to Arguments
Applicant’s arguments and amendments filed on 04 November 2025 with respect to:
double patenting rejection;
rejections of claims 26 and 45 under U.S.C. § 112, first paragraph, and
rejection to claims 26, 28-34, 36 and 39-45 under U.S.C. § 101,
have been fully considered. Amendments to claims have been entered.
Examiner acknowledges Applicant’s request to hold double patenting rejection over US Patent No. 9,105,065 in abeyance until a determination as to the allowability of the pending claims has been made. Accordingly, Examiner maintains double patenting rejection.
Examiner acknowledges that Applicant has amended claims 26 and 45 removing the phrase “being embodied in a tangible computer-readable medium" [remarks page 12] to overcome 35 U.S.C. § 112, first paragraph rejections. However, other amendments have triggered new 35 U.S.C. § 112, first paragraph rejections.
Examiner acknowledges amendments to, and arguments regarding claims 26 and 45 to overcome 35 U.S.C. § 101 rejection. However, arguments are not persuasive.
Applicant argues subject matter eligibility under Step 2A – Prong One contending that the claims do not recite any of the judicial exceptions enumerated in the 2019 PEG [remarks page 14] in that “this” form of analysis – i.e. “a quotation of effectively the entirety of Applicant's claimed embodiment” - does nothing to achieve the 2019 PEG's goal of increasing consistency, [remarks page 14]. Examiner respectfully disagrees in as much as it is not clear what specific argument the Applicant is making.
Applicant further argues that the Office has purportedly determined that effectively, the overall claim describes a process that falls within the listed subject matter groupings, not the identified limitations [remarks page 15]. Examiner respectfully disagrees in as much as it is not clear what specific argument the Applicant is making. However, Examiner has revied 101 rejections in view of the new claim amendments.
Applicant argues subject matter eligibility contending that “The Claims Integrate The Alleged Judicial Exception Into A Practical Application” in that the claims integrate the judicial exception into a practical application because the limitations:
"execute cryptographic validation protocols to authenticate data transfers between the savings recordkeeper portion and each of the plurality of income recordkeeper portions" and
"generate immutable audit trails of all allocation determinations and cash settlements using hash-chain verification"
apply the allegedly abstract idea of consolidating income data in a specific manner that improves computer security and data integrity in multi-party financial systems [remarks pages 15 and 16]. Examiner respectfully disagrees on two counts.
First, cryptographic validation protocols and hash-chain verification – i.e. “hashing functions” – are well-understood, routine and conventional technological components which are recited at a high level of generality . As such, the above recited limitations do not integrated the abstract idea into a practical application as conveyed in the revised rejections herein.
Second, the above recited limitations are rejected under § 112, first paragraph as new matter. The Applicant’s specification is devoid usage of cryptographic validation protocols and hash-chain verification.
Applicant argues subject matter eligibility under Step 2B in that the amended claims include additional elements that amount to significantly more than the judicial exception because the cryptographic validation and hash-chain verification represent specific technological implementations that enhance computer functionality beyond generic data processing [remarks page 17]. Examiner respectfully disagrees.
As with determining a practical application to an abstract idea, types of limitations indicative of an inventive concept (aka “significantly more”) – subject matter eligibility under Step 2B - include:
Improvements to the functioning of a computer, or to any other technology or technical field - see MPEP 2106.05(a)
Applying the judicial exception with, or by use of, a particular machine - see MPEP 2106.05(b),
Effecting a transformation or reduction of a particular article to a different state or thing - see MPEP 2106.05(c),
Applying or using the judicial exception in some other meaningful way beyond generally linking the use of the judicial exception to a particular technological environment, such that the claim as a whole is more than a drafting effort designed to monopolize the exception - see MPEP 2106.05(e) and Vanda Memo
Further, limitations also indicative of an inventive concept include:
Adding a specific limitation other than what is well-understood, routine, conventional activity in the field - see MPEP 2106.05(d).
Examiner maintains that the claimed invention does not contain any of these “types” of aforementioned limitations.
Limitations that are not indicative of an inventive concept include:
Adding the words “apply it” (or an equivalent) with the judicial exception, or mere instructions to implement an abstract idea on a computer, or merely uses a computer as a tool to perform an abstract idea - see MPEP 2106.05(f),
Adding insignificant extra-solution activity to the judicial exception - see MPEP 2106.05(g),
Generally linking the use of the judicial exception to a particular technological environment or field of use – see MPEP 2106.05(h),
Simply appending well-understood, routine, conventional activities previously known to the industry, specified at a high level of generality, to the judicial exception - see MPEP 2106.05(d) and Berkheimer Memo.
Examiner maintains that the claimed invention merely appends well-understood, routine, conventional activities previously known to the industry, specified at a high level of generality, to the judicial exception. The limitations:
execute cryptographic validation protocols to authenticate data transfers between the savings recordkeeper portion and each of the plurality of income recordkeeper portions; and
generate immutable audit trails of all allocation determinations and cash settlements using hash-chain verification;
fall under the category of:
Simply appending well-understood, routine, conventional activities previously known to the industry, specified at a high level of generality, to the judicial exception - see MPEP 2106.05(d) and Berkheimer Memo.
in as much as the use of “cryptographic validation protocols” and “hash-chain verification” are recited at a high level of generality (emphasis added) and show no detail of applying these limitations to convey an inventive concept.
Rejections have been clarified herein in view of the claim amendments and the January 2019 Patent Subject Matter Eligibility Guidance – 2019 PEG.
If, in the opinion of the Applicant, a telephone conference would expedite the prosecution of the subject application, the Applicant is encouraged to contact the undersigned Examiner at the phone number listed below.
Priority
The present application, filed on 10 August 2015 is a continuation of 13/872,677, filed 29 April 2013, now U.S. Patent No. 9,105,065. Application 13/872677, filed on 29 April 2013, now U.S. Patent No. 9,105,065 is a continuation of 12/434,334, filed on 01 May 2009, now U.S. Patent No. 8,433,634.
Claim Interpretation
Regarding claims 26 and 45, in the representative limitation:
execute cryptographic validation protocols to authenticate data transfers between the savings recordkeeper portion and each of the plurality of income recordkeeper portions; and
clauses such as “to authenticate data transfers …” are merely statements of intended use which do not affect the method step of “execute cryptographic validation protocols”. Similar phrasing will be interpreted accordingly.
A recitation of intended use or purpose of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use or fulfilling said purpose, then it meets the claim.
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, the grammar and intended meaning of terms used in a claim will dictate whether the language limits the claim scope. Language that suggests or makes optional but does not require steps to be performed or does not limit a claim to a particular structure does not limit the scope of a claim or claim limitation. The following are examples of language that may raise a question as to the limiting effect of the language in a claim:
(A) statements of intended use or field of use,
(B) "adapted to" or "adapted for" clauses,
(C) "wherein" clauses, or
(D) "whereby" clauses.
This list of examples is not intended to be exhaustive. See also MPEP § 2111.04.
The wherein clauses of claims 26 and 45 do not in any way effect the method steps performed in independent claim 1. For example, in claim 26, the limitation:
wherein the income aggregator portion and the income recordkeeper portion are each maintained by a respective different entity, and each respective income recordkeeper portion is in the form of one of an insurance company, a bookkeeping company, recordkeeping company, and a third party administrator.
further describes a contractual relationship. As such, such clauses are merely non-functional descriptive material which do not further limit the claim.
USPTO personnel must consider all claim limitations when determining patentability of an invention over the prior art. In re Gulack, 703 F.2d 1381, 1385, 217 USPQ401, 403-04 (Fed. Cir. 1983). Since a claim must be read as a whole, USPTO personnel may not disregard claim limitations comprised of printed matter. See Gulack, 703F.2d at 1384, 217 USPQ at 403; see also Diamond v. Diehr, 450 U.S. 175, 191, 209 USPQ 1, 10 (1981). However, USPTO personnel need not give patentable weight to printed matter absent a new and unobvious functional relationship between the printed matter and the substrate. See In re Lowry, 32 F.3d 1579, 1583-84, 32 USPQ2d 1031, 1035 (Fed. Cir. 1994); In re Ngai, 367F.3d 1336, 70 USPQ2d 1862 (Fed. Cir. 2004). The rationale behind the printed matter cases, in which, for example, written instructions are added to a known product, has been extended to method claims in which an instructional limitation is added to a method known in the art. Similar to the inquiry for products with printed matter thereon, in such method cases the relevant inquiry is whether a new and unobvious functional relationship with the known method exists. See In re Kao, 639 F.3d1057, ___, 98 USPQ2d 1799, 1811-12 (Fed. Cir. 2011); King Pharmaceuticals Inc. v. Eon Labs Inc., 616 F.3d1267, ___, 95 USPQ2d 1833, 1842 (Fed. Cir. 2010). See MPEP § 2111.05.
Double Patenting
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 §§ 706.02(l)(1) - 706.02(l)(3) 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.
Claim 26 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of (app no. 13/872,677) of U.S. Patent No. 9,105,065. Although the claims at issue are not identical, they are not patentably distinct from each other because the system in the patented claim perform substantially the same functions as system in the claim of the instant application.
Claim Objections
Claims 26 and 45 are objected to because in the representative limitation:
generate immutable audit trails of all allocation determinations and cash settlements using hash-chain verification;
the term “all allocation determinations” should be recited as “the allocations attributable to and among the plurality of GI products” if that is indeed what the Applicant means to convey.
Correction is required.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 26 and 45 are rejected under 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor(s), at the time the application was filed, had possession of the claimed invention. In the representative limitations:
execute cryptographic validation protocols to authenticate data transfers between the savings recordkeeper portion and each of the plurality of income recordkeeper portions; and
generate immutable audit trails of all allocation determinations and cash settlements using hash-chain verification;
Examiner finds no evidence of “cryptographic validation protocols” or “hash-chain verification”. To overcome this rejection, Applicant should identify where in the specification cryptographic validation and hashing functions are disclosed, or otherwise, cancel such matter from the claims.
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 26, 28-34, 36 and 39-45 are rejected under 35 U.S.C. 101 because the claimed invention is directed to non-statutory subject matter.
Note: Examiner points Applicant to the Federal Register notice titled 2014 Interim Eligibility Guidance (IEG) on Patent Subject Matter Eligibility (79 FR 74618) and the January 2019 Patent Subject Matter Eligibility Guidance.
Subject Matter Eligibility Standard
When considering subject matter eligibility under 35 U.S.C. 101, it must be determined whether the claim is directed to one of the four statutory categories of invention, i.e., process, machine, manufacture, or composition of matter. If the claim does fall within one of the statutory categories, it must then be determined whether the claim is directed to a judicial exception (i.e. law of nature, natural phenomenon, and abstract idea), and if so, it must additionally be determined whether the claim is a patent-eligible application of the exception. If an abstract idea is present in the claim, any element or combination of elements in the claim must be sufficient to ensure that the claim amounts to significantly more than the abstract idea itself. Examples of abstract ideas include fundamental economic practices; certain methods of organizing human activities; an idea itself; and mathematical relationships/ formulas. (Alice Corporation Pty. Ltd. v. CLS Bank International, et al. US Supreme Court, No. 13-298, June 19, 2014).
Analysis
Step 1:
Is the claim(s) fall into a statutory category – i.e. process, machine, manufacture or composition of matter?
In the instant case, claim 26 is directed to a system, which is one of the four statutory categories of invention. The answer is YES.
Step 2A - Prong One:
Is the claim(s) directed to a judicially exception, such as a law of nature, a natural phenomenon or an abstract idea?
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. Claims 26, 28-36 and 39-44 are directed to a system for consolidating annual guaranteed participant income data which is a series of steps involved in insurance and business relations which constitute a method of organizing human activity.
Claim 26 recites, in part, a system for performing the steps of:
receive data relating to a participant's investment and withdrawal activity for a benefit product;
maintain records of the participant's investment and withdrawal activity for the benefit product;
output the participant's investment and withdrawal activity;
receive consolidated annual guaranteed participant income data; and
create and maintain records of the annual guaranteed participant income data;
receive data relating to the participant's investment and withdrawal activity for the single GI product;
receive activity data for the single GI product;
track an investment amount within the single GI product based on the participant's investment and withdrawal activity for the single GI product;
determine an annual guaranteed participant income for the single GI product based on the participant's investment and withdrawal activity for the single GI product and the activity data for the single GI product; and
output the annual guaranteed participant income for the single GI product;
input the participant's investment activity data from the savings recordkeeper portion;
determine allocations attributable to and among the plurality of GI products based on the participant's investment activity;
output the determined allocations attributable to and among the plurality of GI products to each of the plurality of GI products based on the participant's investment activity;
determine one or more cash settlements between the benefit product and the plurality of GI products;
receive an account request comprising one of a withdrawal request or an account fee, the withdraw request being one or more of a withdrawal of a guaranteed benefit and a withdrawal in excess of a guaranteed benefit;
allocate the received account request attributable to and among the plurality of GI products;
determine, based on the received account request, a resulting asset value and a change in the guaranteed benefit;
input the annual guaranteed participant income data of each of the plurality of GI products;
consolidate the annual guaranteed participant income data for each of the plurality of GI products into data comprising a composite annual guaranteed participant income; and
output the consolidated data.
which is a series of steps which describes the judicial exception of organizing human activity.
Limitations such as:
annual guaranteed participant income (data);
are merely a description of data and do not impose any meaningful limit on the computer implementation of the abstract idea.
Step 2A - Prong Two:
Are there additional elements that are integrated into a practical application of the judicial exception?
The additional elements are:
a computer processing system using computer-readable medium containing instructions stored thereon which when executed cause the computer processing system to perform “processing”;
an “income aggregator portion”, embodied in a tangible computer-readable medium;
a savings recordkeeper portion embodied in a tangible computer-readable medium and in communication with the income aggregator portion;
a plurality of income recordkeeper portions, embodied in the tangible computer-readable medium and in communication with the income aggregator portion, wherein each income recordkeeper portion is configured to administer one of the plurality of GI products;
determine “something” across the plurality of income recordkeepers;
receive data from the income aggregator
receive/ input data ;
maintain data;
track data;
output data to the income aggregator;
output data to the savings recordkeeper portion; and
make calculations.
This judicial exception is not integrated into a practical application because the computer and computer program instructions are no more than mere instructions recited in very general terms, to apply the exception using a generic computer component. The limitations:
wherein the savings recordkeeper portion and the income recordkeeper portion are in communication with a payout portion configured to make GI payments based on the consolidated data, and
wherein the income aggregator portion and the income recordkeeper portion are each maintained by a respective different entity, and each respective income recordkeeper portion is in the form of one of an insurance company, a bookkeeping company, recordkeeping company, and a third party administrator.
are also not integrated into a practical application is as much as “being configured to make GI payments” and “being maintained” are, at most, generally linking the use of the judicial exception to a particular technological environment or field of use.
The limitations:
execute cryptographic validation protocols to authenticate data transfers between the savings recordkeeper portion and each of the plurality of income recordkeeper portions; and
generate immutable audit trails of all allocation determinations and cash settlements using hash-chain verification;
are also not integrated into a practical application is as much as the use of “cryptographic validation protocols” and “hash-chain verification” are, at most, generally linking the use of the judicial exception to a particular technological environment or field of use – see MPEP 2106.05(h). The answer is NO.
Step 2B:
Do the claims include additional elements that are sufficient to amount to significantly more than the judicial exception – i.e. Is there an inventive concept?
The claim does not include additional elements that are sufficient to amount to significantly more than the judicial exception because the ordered combination does not offer substantially more than the sum of the functions of the elements when each is taken alone. The computer and computer program instructions are recited at a high level of generality and are recited as performing generic computer functions routinely used in computer applications. The elements together execute in routinely and conventionally accepted coordinated manners and interact with their partner elements to achieve an overall outcome which, similarly, is merely the combined and coordinated execution of generic computer functionalities which are well-understood, routine and conventional activities previously known to the industry. The answer is NO.
Similar reasoning and rationale apply to the method claim 45.
Conclusion
The claim as a whole, does not amount to significantly more than the abstract idea itself. This is because the claim does not affect an improvement to another technology or technical field; the claim does not amount to an improvement to the functioning of a computer itself; and the claim does not move beyond a general link of the use of an abstract idea to a particular technological environment.
The claim merely amounts to the application or instructions to apply the abstract idea (i.e. a system for consolidating annual guaranteed participant income data) by a computer, and is considered to amount to nothing more than requiring a generic computer system (e.g. a computer processing system using computer-readable medium) to merely carry out the abstract idea itself. As such, the claim, when considered as a whole, is nothing more than the instruction to implement the abstract idea in a well-understood, routine and conventional technological environment. Accordingly, the Examiner concludes that there are no meaningful limitations in the claim that transform the judicial exception into a patent eligible application such that the claim amounts to significantly more than the judicial exception itself.
Dependent claims 28-34, 36 and 39-44 when analyzed as a whole are held to be patent ineligible under 35 U.S.C. 101 because the additional recited limitations fail to establish that the claims are not directed to an abstract idea (Step 2A – Prong One). The features of claims 27-34, 36 and 39-44 do not affect the abstract idea of the independent claim in that they do not add a technological solution to the method of organizing human activity nor to the fundamental economic principle of insurance in the independent claim (Step 2A – Prong Two).
It is clear from above, that the additional recited limitations in the dependent claims only refine the abstract idea further. Further refinement of an abstract idea does not convert an abstract idea into something concrete. The claims as a whole, do not amount to significantly more than the abstract idea itself. This is because the claims do not affect an improvement to another technology or technical field; the claims do not amount to an improvement to the functioning of a computer system itself; and the claim do not move beyond a general link of the use of an abstract idea to a particular technological environment. Accordingly, the Examiner concludes that there are no meaningful limitations in the claims that transform the judicial exception into a patent eligible application such that the claims amount to significantly more than the judicial exception itself (Step 2B).
Note: The analysis above applies to all statutory categories of invention. As such, the presentment of claims 45 otherwise styled as a method, would be subject to the same analysis.
Allowable Subject Matter
Claims 26, 28-34, 36 and 39-45, as understood, would be allowable if rewritten as to overcome the rejections under 35 U.S.C. 101 as set forth in this Office action. The rational for allowability is presented in the office action mailed 24 May 2022.
Conclusion
The prior art of record and not relied upon is considered pertinent to Applicant’s disclosure:
Golembiewski: “Method And System For A Deferred Variable Annuity With Lifetime Benefit Payments As A Function Of An Inflation Adjustment Factor”, (US Pub. No. 20090030738 A1).
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to EDWARD J BAIRD whose telephone number is (571)270-3330. The examiner can normally be reached 7 am to 3:30 pm M-F.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at
http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Ryan Donlon can be reached at 571-270-3602. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/EDWARD J BAIRD/Primary Examiner, Art Unit 3692