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 .
This action is responsive to claims filed 02/25/2026 and Applicant’s communication for application 17/669901 filed 02/25/2026.
Claims 1-18 have been examined with this office action.
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 1-18 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea of monitoring strike price for a transfer of pension liability associated with a defined benefit pension plan to an insurer without significantly more.
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., 573 U.S. _ (2014) as provided by the interim guidelines FR 12/16/2014 Vol. 79 No. 241.
Analysis
Step 1, the claimed invention must be to one of the four statutory categories. 35 U.S.C. 101 defines the four categories of invention that Congress deemed to be the appropriate subject matter of a patent: processes, machines, manufactures and compositions of matter. In this case independent claims 1, 12, 17, and 18 and all claims which depend from it are directed toward a method. As such, all claims fall within one of the four categories of invention deemed to be the appropriate subject matter.
Step 2A Prong 1, Under Step 2 A, Prong 1 of the 2019 Revised § 101 Guidance, it is determined whether the claims are directed to a judicial exception such as a law of nature, a natural phenomenon, or an abstract idea (See Alice, 134 S. Ct. at 2355) by identify the specific limitation(s) in the claim that recites abstract idea(s); and then determine whether the identified limitation(s) falls within at least one of the groupings of abstract ideas enumerated in the 2019 PEG.
Specifically, claim 1 comprises inter alia the functions or steps of “A computer-implemented method executed by at least one processor within a computing environment, the method comprising: communicating over a computer network a plurality of inputs to a pension risk transfer pricing service for a pension plan, the plurality of inputs including pension plan census data, the pension plan census data comprising census data for members of the plan including data of birth and monthly benefit amount; applying by the pension risk transfer pricing service a computer-implemented pension risk transfer model for generating pension risk transfer pricing for the pension plan, the computer-implemented pension risk transfer model using the plurality of inputs including the pension plan census data in generating the pension risk transfer pricing for the pension plan; providing through the pension risk transfer pricing service a computer-implemented user interface configured to interact with a user associated with a user account of the pension risk transfer pricing service by communicating the pension risk transfer pricing and investments to the user and the computer- implemented user interface further configured to receive input from the user to strike the pension risk transfer at the pension risk transfer pricing; communicating the pension risk transfer pricing and the investments to the user through the computer-implemented user interface; and receiving the input from the user through the computer-implemented user interface to strike the pension risk transfer at the pension risk transfer pricing;
automatically executing, by the pension risk transfer pricing service, a transaction to transfer pension risk for the pension plan in response to receiving one of an input from the user to strike the pension risk transfer at the pension risk transfer pricing and determining that objectives set by the user including the pension risk transfer pricing are met; wherein the computer-implemented pension risk transfer model includes a real-time valuation component that processes market data continuously and executes automated scripts to integrate daily pricing inputs from multiple sources”.
Claim 12 comprises inter alia the functions or steps of “A computer-implemented method performed using at least one processor within a computing environment, the method comprising: communicating over a computer network a plurality of inputs to a pension risk transfer pricing service for a pension plan, the plurality of inputs including pension plan census data, the pension plan census data comprising date of birth and monthly benefit amount; applying by the pension risk transfer pricing service a computer-implemented pension risk transfer model for generating pension risk transfer pricing for the pension plan, the computer-implemented pension risk transfer model using the plurality of inputs including the pension plan census data in generating the pension risk transfer pricing for the pension plan; providing through the pension risk transfer pricing service a computer-implemented user interface for interacting configured to interact with a user associated with a user account of the pension risk transfer pricing service by communicating the pension risk transfer pricing and investments to the user and the computer- implemented user interface further configured to receive input from the user to strike the pension risk transfer at the pension risk transfer pricing; providing through the computer-implemented user interface benchmarking functionality to select a benchmark and to visually display a comparison of the pension risk transfer pricing to the benchmark; in response to a selection of the benchmark by the user through the computer- implemented user interface, visually displaying the comparison of the pension risk transfer pricing to the benchmark; communicating the pension risk transfer pricing and the investments to the user through the computer-implemented user interface; and receiving the input from the user through the computer-implemented user interface to strike the pension risk transfer at the pension risk transfer pricing;
automatically executing, by the pension risk transfer pricing service, a transaction to transfer pension risk for the pension plan in response to receiving one of an input from the user to strike the pension risk transfer at the pension risk transfer pricing and determining that objectives set by the user including the pension risk transfer pricing are met; wherein the computer-implemented pension risk transfer model includes a real-time valuation component that processes market data continuously and executes automated scripts to integrate daily pricing inputs from multiple sources”.
Claim 17 comprises inter alia the functions or steps of “A computer-implemented method executed by at least one processor within a computing environment, the method comprising: communicating over a computer network a plurality of inputs to a pension risk transfer pricing service for a pension plan, the plurality of inputs including pension plan census data, quote date, premium receipt date, retiree benefit commencement date, and expense assumptions, wherein the pension plan census data comprises census data for members of the plan including gender, data of birth, monthly benefit amount, option form, state of residence, zip code, and co- annuitant information; analyzing provisions of the pension plan by applying machine learning comprising at least one of natural language processing and classification and inputting resulting standardized provisions for the pension plan as determined by the machine learning into the pension risk transfer model; applying by the pension risk transfer pricing service a computer-implemented pension risk transfer model for generating pension risk transfer pricing for the pension plan, the computer-implemented pension risk transfer model using the plurality of inputs including the pension plan census data and the standardized provisions in generating the pension risk transfer pricing for the pension plan; providing through the pension risk transfer pricing service a computer-implemented user interface configured to interact with a user associated with a user account by communicating the pension risk transfer pricing and investments to the user and the computer-implemented user interface further configured to receive input from the user to strike the pension risk transfer at the pension risk transfer pricing; communicating the pension risk transfer pricing and the investments to the user through the computer-implemented user interface; receiving the input from the user through the computer-implemented user interface to strike the pension risk transfer at the pension risk transfer pricing; and
automatically executing, by the pension risk transfer pricing service, a transaction to transfer pension risk for the pension plan in response to receiving the input from the user to strike the pension risk transfer at the pension risk transfer pricing”.
Claim 18 comprises inter alia the functions or steps of “A computer-implemented method executed by at least one processor within a computing environment, the method comprising: communicating over a computer network a plurality of inputs to a pension risk transfer pricing service for a pension plan, the plurality of inputs including pension plan census data, quote date, premium receipt date, retiree benefit commencement date, and expense assumptions, wherein the pension plan census data comprises census data for members of the plan including gender, data of birth, monthly benefit amount, option form, state of residence, zip code, and co- annuitant information; analyzing provisions of the pension plan by applying machine learning comprising at least one of natural language processing and classification and inputting resulting standardized provisions for the pension plan as determined by the machine learning into the pension risk transfer model; applying by the pension risk transfer pricing service a computer-implemented pension risk transfer model for generating pension risk transfer pricing for the pension plan, the computer-implemented pension risk transfer model using the plurality of inputs including the pension plan census data and the standardized provisions in generating the pension risk transfer pricing for the pension plan; providing through the pension risk transfer pricing service a computer-implemented user interface configured to interact with a user associated with a user account of the pension risk transfer pricing service by communicating the pension risk transfer pricing and investments to the user and the computer-implemented user interface further configured to receive input from the user to strike the pension risk transfer at the pension risk transfer pricing; communicating the pension risk transfer pricing and the investments to the user through the computer-implemented user interface; receiving the input from the user through the computer-implemented user interface to strike the pension risk transfer at the pension risk transfer pricing; providing through the computer-implemented user interface benchmarking functionality to select a benchmark and to visually display a comparison of the pension risk transfer pricing to the benchmark; providing through the computer-implemented user interface goal selection functionality to visually display pricing relative to a defined goal; providing through the computer-implemented user interface scenario planning functionality to visually display multiple scenarios based on alternative assumptions; providing through the computer-implemented user interface micro-transaction functionality to display assets and/or liabilities of the pension plan at a granular level;
executing, by the pension risk transfer pricing service a plurality of micro-transactions to optimize pension risk transfer pricing according to the computer- implemented pension risk transfer model:
receiving the input from the user through the computer-implemented user interface to strike the pension risk transfer at the pension risk transfer pricing;
automatically executing, by the pension risk transfer pricing service, a transaction to transfer pension risk for the pension plan in response to receiving the input from the user to strike the pension risk transfer at the pension risk transfer pricing; and
wherein the computer-implemented pension risk transfer model includes a real-time valuation component that processes market data continuously and executes automated scripts to integrate daily pricing inputs from multiple sources”.
Those claim limits in bold are identified as claim limits directed toward the abstract idea, while those that are un-bolded are identified as additional elements.
The cited limitations as drafted are systems and methods that, under their broadest reasonable interpretation, covers performance of a method of organizing human activity, but for the recitation of the generic computer components. Further, none of the limitations recite technological implementations details for any of the steps but, instead, only recite broad functional language being performed by the generic use of at least one processor. Monitoring strike price for a transfer of pension liability associated with a defined benefit pension plan to an insurer is a fundamental economic practice long prevalent in commerce systems. If a claim limitation, under its broadest reasonable interpretation, covers a fundamental economic principle or practice but for the general linking to a technological environment, then it falls within the organizing human activity grouping of abstract ideas. Accordingly, the claim recites an abstract idea.
Step 2A Prong 2, Next, it is determined whether the claim is directed to the abstract concept itself or whether it is instead directed to some technological implementation or application of, or improvement to, this concept, i.e., integrated into a practical application. See, e.g., Alice, 573 U.S. at 223, discussing Diamond v. Diehr, 450 U.S. 175 (1981). The mere introduction of a computer or generic computer technology into the claims need not alter the analysis. See Alice, 573 U.S. at 223—24. “[T]he relevant question is whether the claims here do more than simply instruct the practitioner to implement the abstract idea on a generic computer.” Alice, 573 U.S. at 225.
In the present case, the judicial exception is not integrated into a practical application. The claim limitations are not indicative of integration into a practical application by claiming an improvement to the functioning of the computer or to any other technology or technical field. Further, the claim limitations are not indicative of integration into a practical application by applying or using the judicial exception in some other meaningful way.
In particular, the claims contain the following additional elements: computer; at least one processor; a network; user interface; real-time valuation component; continuously; automated scripts; applying machine learning comprising at least one of natural language processing and classification;. However, the specification description of the additional elements computer ([page 15, line 18 – page 17 line 19]); at least one processor ([page 15, line 18 – page 17 line 19]); a network ([page 17 line 14-19]); user interface ([page 6, line 24 – page 7 line 13]); real-time valuation component ([Figure 2, element 226] [page 8, line 6-7]); continuously ([page 6, lines 5-6]); automated scripts ([page 14, lines 3-25] interpreted as software running on a computer); applying machine learning comprising at least one of natural language processing and classification ([page 30, line 28 – page 31, line 14]) are at a high level of generality using exemplary language or as part of a generic technological environment and are functions any general purpose computer performs such that it amount no more than mere instruction to apply the exception to a particular technological environment. Further, none of the limitations recite technological implementations details for any of the steps but, instead, only recite broad functional language being performed by the generic use of at least one processor. Accordingly, these additional elements do not integrate the abstract idea into a practical application because it does not impose any meaning limits on practicing the abstract idea. Thus, the claim is directed toward an abstract idea.
Step 2B, the claim(s) does/do not include additional elements that are sufficient to amount to significantly more than the judicial exception because the additional elements when considered both individually and as an ordered combination do not amount to significantly more that the abstract idea(s). As discussed above with respect to integration of the abstract idea into a practical application, the additional element of using a processor to perform the abstract idea(s) amounts to no more than mere instructions to apply the exaction using a generic computer component. Mere instruction to apply an exertion using a generic computer component cannot provide an inventive concept. These generic computer components are claimed at a high level of generality to perform their basic functions which amount to no more than generally linking the use of the judicial exception to the particular technological environment of field of use (Specification as cited above for additional elements) and further see insignificant extra-solution activity MPEP § 2106.05 I. A. iii, 2106.05(b), 2106.05(b) III, 2106.05(g). Thus, the claims are not patent eligible.
As for dependent claims 2-11 and 13-16 these claims recite limitations that further define the same abstract idea using previously identified additional elements noted from the respective independent claims from which they depend. Therefore, the cited dependent claims are considered patent ineligible for the reasons given above.
Prior Art
Claims 1-18 overcome the prior art of record such that none of the cited prior art reference’s disclosures can be applied to form the basis of a 35 USC § 102 rejection nor can they be combined to fairly suggest in combination, the basis of a 35 USC § 103 rejection when the limitations are read in the particular environment of the claims. Therefore, the claims may be allowable if amended to overcome the rejection(s) 35 U.S.C. 101, set forth in this Office action.
Response to Arguments
Applicant's arguments with regards to claims have been fully considered but they are not persuasive.
EXAMINER’S RESPONSE TO APPLICANT REMARKS CONCERNING Claim Rejections - 35 USC § 101: Applicant's arguments with regards to 35 USC § 101 have been fully considered but are not persuasive. With regard to applicant's argument directed toward Desjardins, the application in Desjardins made an improvement to an underlying technology, whereas, the present application used a generic technology and computer to implement an abstract idea. Thus, Desjardins is readily distinguishable from the present claims. Regarding applicant’s argument that “is respectfully submitted that such a practice is not long prevalent in commerce systems”, it is clear from even if novel, to an abstract idea (a fundamental economic practice) does not make the abstract idea any less abstract and therefore, are still rendered patent ineligible. In the decisions Ultramercial, LLC v. Hulu, LLC and WildTangent, 112 USPQ2d 1750 (Fed. Cir. 2014), Content Extraction and Transmission, LLC vs. Wells Fargo Bank (Fed. Cir. 2014) and Digitech Image Tech., LLC v. Electronics for Imaging, Inc., 758 F.3d 1344 (Fed. Cir. 2014), no prior art was applied as evidence that claims in question were directed to abstract ideas. However, much like these decisions, the Examiner has identified abstract ideas herein by correlating the claimed invention to examples of other inventions identified by the courts as being abstract ideas. The examiner maintains that the claims are directed toward an abstract idea and merely apply the use of the judicial exception to a particular technological environment (computer, network, application of a machine learning, scripts, …). The terms continuous, automatically, and real-time merely require a programmed computer for implementation. A general purpose computer is flexible—it can do anything it is programmed to do. Therefore, the disclosure of a general purpose computer or a microprocessor as corresponding structure for a software function does nothing to limit the scope of the claim and “avoid pure functional claiming.” Further, the “prohibition against patenting abstract ideas ‘cannot be circumvented by attempting to limit the use of the formula to a particular technological environment’ or adding ‘insignificant postsolution activity.’” Bilski v. Kappos, 561 U.S. 593, 610–11 (2010) (quoting Diamond v. Diehr, 450 U.S. 175, 191–92 (1981)). However, the claimed invention does not make an improvement to the functioning of a computer or to a technology and, thus, are not analogous to Enfish which made an improvement to an underlying technology.
Conclusion
For prior art made of record and not relied upon is considered pertinent to applicant's disclosure see Notice of References Cited items A-E submitted 12/10/2020 used as prior art and in the conclusion section in the office action submitted 12/10/2020.
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 extension fee 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 date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Gregory A Pollock whose telephone number is (571) 270-1465. The examiner can normally be reached M-F 8 AM - 4 PM.
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/Gregory A Pollock/Primary Examiner, Art Unit 3691
03/20/2026