DETAILED ACTION
Status of Claims
1. This office action is in response to amendment filed 7/10/2026.
2. Claims 1-3, 7, 8, 11-15 are pending.
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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 10/17/2025 has been entered.
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 1-3, 7, 8, 11-15
Claims 1-3, 7, 8, 11-15 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.
Step 1: The claims 1-3, 7 are directed to a system, 8, 11-15 are directed to a method – each of which is one of the statutory categories of invention.
Step 2A: A claim is eligible at revised Step 2A unless it recites a judicial exception and the exception is not integrated into a practical application of the application.
Prong 1: Prong One of Step 2A evaluates whether the claim recites a judicial exception (an abstract idea enumerated in the 2019 PEG, a law of nature, or a natural phenomenon).
Groupings of Abstract Ideas:
I. MATHEMATICAL CONCEPTS
A. Mathematical Relationships
B. Mathematical Formulas or Equations
C. Mathematical Calculations
II. CERTAIN METHODS OF ORGANIZING HUMAN ACTIVITY
A. Fundamental Economic Practices or Principles (including hedging, insurance, mitigating risk)
B. Commercial or Legal Interactions (including agreements in the form of contracts; legal obligations; advertising, marketing or sales activities or behaviors; business relations)
C. Managing Personal Behavior or Relationships or Interactions between People (including social activities, teaching, and following rules or instructions)
III. MENTAL PROCESSES.
Concepts performed in the human mind (including an observation, evaluation, judgment, opinion).
See MPEP 2106.04 (a) (2) Abstract Idea Groupings [R-10.2019]
The limitations of independent claim 8 –
method for improving behavioral financial wellness using an investment management system having one or more [virtual financial trustees] wherein the investment management system outputs feedback to a user to reinforce good behavioral financial wellness, comprising the steps of:
entering user data in an authentication screen;
entering user profile data;
creating a risk profile by a questionnaire module configured to collect risk-related data from a user,
wherein at least some user information is input by the user via a user display as part of the general user interface, and risk tolerance and ability to withstand risk are assessed by adjusting within the user display the placement of a marker within an image having a first axis representing a gradient of risk tolerance having opposing ends that are indicative of low risk tolerance and high risk tolerance, and a second axis oriented orthogonal to the first axis representing a gradient for ability to withstand risk, having opposing ends that are indicative of high and low ability to withstand risk;
transmitting user profile data to both an investment system and to a [virtual advisor trustee selection system];
selecting one or more [virtual trustees] using the profile data and the risk profile; and
initiating output from the [virtual trustees] to the user,
wherein the step of initiating output is carried out either periodically at one or both of a specified time interval or due to an event determined by the investment management system as one affecting financial markets and;
[executing, by a processor of the investment management system, a communication gateway comprising a provider application programming interface (API) and a third party API configured to convert electronic data between a JavaScript Object Notation (JSON) format and an Extensible Markup Language (XML) format] to retrieve and integrate user account data and market event data from third party financial institutions into the investment management system;
wherein the selecting step is performed by a [machine-learning model stored in a computer readable storage device] and trained on user profile data, data associated with the user financial profile and performance of the user account collected and stored by a database module, including periodic user self-assessment values, and market event data to generate a behavioral response score, and wherein the initiating step automatically triggers advisor output when the market event data satisfies a predefined volatility condition
– that constitutes Fundamental Economic Practices and/or Commercial/Legal Interactions and/or Managing Interactions between People.
Independent claims 1 and 11 recite substantially similar limitations.
Hence, independent claims 1, 8 and 11 fall under the abstract idea grouping of Certain Methods of Organizing Human Activity.
The dependent claims further limit the abstract idea to – recommending an investment strategy (claim 2); collecting and storing user data (claim 3); queries between user and trustees upon occurrence of market events (claim 7), determining personality traits, experiences and tendencies from user input (claim 14); overlay artificial intelligence and machine learning to customize the interaction between the virtual trustee and the user (claim 12) – that also constitute Certain Methods of Organizing Human Activity.
Hence under Prong One of Step 2A, the claims recite a judicial exception.
Prong 2: Prong Two of Step 2A evaluates whether the claim recites additional elements that integrate the judicial exception into a practical application of the exception.
Limitations that are indicative of integration into a practical application 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)
Limitations that are not indicative of integration into a practical application 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)
Additional elements recited by the claims, beyond the abstract idea, include: an investment management system comprising a computer connected to a general user interface, computer readable storage device, and central processing unit; memory; processor; authentication screen; API, JSON, XML, artificial intelligence and machine learning model. As per, para [0021], the user’s computing device is a terminal such as a PC, laptop, tablet or smart phone. Examiner thus finds that the additional elements have been recited at a high level of generality such that the claim limitations amount to no more than mere instructions to apply the exception using generic components (see MPEP 2106.05(f)) or data gathering activities (see MPEP 2106.05(g)).
MPEP 2106.05(f) Mere Instructions To Apply An Exception [R-10.2019]:
(1) Whether the claim recites only the idea of a solution or outcome i.e., the claim fails to recite details of how a solution to a problem is accomplished. The recitation of claim limitations that attempt to cover any solution to an identified problem with no restriction on how the result is accomplished and no description of the mechanism for accomplishing the result, does not integrate a judicial exception into a practical application or provide significantly more because this type of recitation is equivalent to the words “apply it”. See Electric Power Group, LLC v. Alstom, S.A., 830 F.3d 1350, 1356, 119 USPQ2d 1739, 1743-44 (Fed. Cir. 2016); Intellectual Ventures I v. Symantec, 838 F.3d 1307, 1327, 120 USPQ2d 1353, 1366 (Fed. Cir. 2016); Internet Patents Corp. v. Active Network, Inc., 790 F.3d 1343, 1348, 115 USPQ2d 1414, 1417 (Fed. Cir. 2015). In contrast, claiming a particular solution to a problem or a particular way to achieve a desired outcome may integrate the judicial exception into a practical application or provide significantly more. See Electric Power, 830 F.3d at 1356, 119 USPQ2d at 1743.
By way of example, in Intellectual Ventures I v. Capital One Fin. Corp., 850 F.3d 1332, 121 USPQ2d 1940 (Fed. Cir. 2017), the steps in the claims described “the creation of a dynamic document based upon ‘management record types’ and ‘primary record types.’” 850 F.3d at 1339-40; 121 USPQ2d at 1945-46. The claims were found to be directed to the abstract idea of "collecting, displaying, and manipulating data." 850 F.3d at 1340; 121 USPQ2d at 1946. In addition to the abstract idea, the claims also recited the additional element of modifying the underlying XML document in response to modifications made in the dynamic document. 850 F.3d at 1342; 121 USPQ2d at 1947-48. Although the claims purported to modify the underlying XML document in response to modifications made in the dynamic document, nothing in the claims indicated what specific steps were undertaken other than merely using the abstract idea in the context of XML documents. The court thus held the claims ineligible, because the additional limitations provided only a result-oriented solution and lacked details as to how the computer performed the modifications, which was equivalent to the words “apply it”. 850 F.3d at 1341-42; 121 USPQ2d at 1947-48 (citing Electric Power Group., 830 F.3d at 1356, 1356, USPQ2d at 1743-44 (cautioning against claims “so result focused, so functional, as to effectively cover any solution to an identified problem”)).
Here, Examiner finds that the following claim limitations in the independent claims 1, 8 and 11 have been recited in a result-focused and functional way lacking in technical details such they cover any solution to an identified problem:
wherein the interaction between a user and one or more of the virtual trustees includes periodic queries to the user initiated by the investment management system, wherein the computer further comprises a communication gateway comprising a provider application programming interface (API) and a third party API configured to convert electronic data between a JavaScript Object Notation (JSON) format and an Extensible Markup Language (XML) format to integrate user account data and market event data from third party financial institutions and government agencies into the database; and wherein the virtual trustees comprise a behavioral overlay on top of a financial planning program using artificial intelligence (AI) and machine learning to customize interaction between the virtual trustee and the user by executing a machine-learning model stored in the computer readable storage device on user profile data, data associated with the user financial profile and performance of the user account collected and stored by a database module, including periodic user self-assessment values, and market event data to generate trustee prompts responsive to detected market conditions (claim 1)
executing, by a processor of the investment management system, a communication gateway comprising a provider application programming interface (API) and a third party API configured to convert electronic data between a JavaScript Object Notation (JSON) format and an Extensible Markup Language (XML) format to retrieve and integrate user account data and market event data from third party financial institutions into the investment management system; wherein the selecting step is performed by a machine-learning model stored in a computer readable storage device and trained on user profile data, data associated with the user financial profile and performance of the user account collected and stored by a database module, including periodic user self-assessment values, and market event data to generate a behavioral response score, and wherein the initiating step automatically triggers advisor output when the market event data satisfies a predefined volatility condition (claim 8)
wherein the memory further stores a machine-learning model and data associated with the user financial profile and performance of the user account collected and stored by a database module, including periodic user self-assessment values, and the processor is programmed to execute the machine-learning model on the user profile data, the data associated with the user financial profile and account performance including the periodic user self-assessment values, and market event data retrieved via a third party API to compute a behavioral response score that determines selection and timing of virtual trustee interactions; and wherein the processor is further programmed to update the machine-learning model based on post-interaction user responses and portfolio performance data to customize subsequent trustee prompts (claim 11)
All purported inventive concepts reside in how the limitations – “provider API and the third party API are configured to convert electronic data between JSON and XML format,” “behavioral overlay on top of a financial planning program using artificial intelligence (AI) and machine learning to customize interaction between the virtual trustee and the user by executing a machine-learning model,” “update the machine-learning model based on post-interaction user responses and portfolio performance data to customize subsequent trustee prompts” – are technically accomplished and not in how the processing merely achieves the result which neither the specification or the drawings shed any light on.
See also Two-Way Media Ltd. v. Comcast Cable Commc’n, LLC, 874 F.3d 1329, 1337 (Fed. Cir. 2017) (“The claim [before the court] requires the functional results of ‘converting,’ ‘routing,’ ‘controlling,’ ‘monitoring,’ and ‘accumulating records,’ but does not sufficiently describe how to achieve these results in a non-abstract way.”); see Intellectual. Ventures I LLC v. Capital One Fin. Corp., 850 F.3d 1332, 1342 (Fed. Cir. 2017) (“Indeed, the claim language here provides only a result-oriented solution, with insufficient detail for how a computer accomplishes it. Our law demands more.”); see Affinity Labs of Texas, LLC v. Amazon.com Inc., 838 F.3d 1266, 1269 (Fed. Cir. 2016) (“At that level of generality, the claims do no more than describe a desired function or outcome, without providing any limiting detail that confines the claim to a particular solution to an identified problem. The purely functional nature of the claim confirms that it is directed to an abstract idea, not to a concrete embodiment of that idea.”); see Move, Inc. v. Real Estate Alliance Ltd., 721 F. App’x 950, 952-53, 954-56 (Fed. Cir. 2018) (non-precedential) (“Instead of focusing on the technical implementation details of the zooming functionality, for example, claim 1 recites nothing more than the result of the zoom.”).
The combination of additional elements does not purport to improve the functioning of a computer or effect an improvement in any other technology or technical field. Instead, the additional elements do no more than “use the computer as a tool” and/or “link the use of the judicial exception to a particular technological environment or field of use.” The focus of the claims is not on improvement in computers, but on certain independently abstract ideas – method for improving behavioral financial wellness using an investment management system having one or more [virtual financial trustees] wherein the investment management system outputs feedback to a user to reinforce good behavioral financial wellness, comprising the steps of: entering user data in an authentication screen; entering user profile data; creating a risk profile by a questionnaire module configured to collect risk-related data from a user, wherein at least some user information is input by the user via a user display as part of the general user interface, and risk tolerance and ability to withstand risk are assessed by adjusting within the user display the placement of a marker within an image having a first axis representing a gradient of risk tolerance having opposing ends that are indicative of low risk tolerance and high risk tolerance, and a second axis oriented orthogonal to the first axis representing a gradient for ability to withstand risk, having opposing ends that are indicative of high and low ability to withstand risk; transmitting user profile data to both an investment system and to a [virtual advisor trustee selection system]; selecting one or more [virtual trustees] using the profile data and the risk profile; and initiating output from the [virtual trustees] to the user, wherein the step of initiating output is carried out either periodically at one or both of a specified time interval or due to an event determined by the investment management system as one affecting financial markets and; retrieve and integrate user account data and market event data from third party financial institutions into the investment management system; wherein the selecting step is performed by a [machine-learning model stored in a computer readable storage device] and trained on user profile data, data associated with the user financial profile and performance of the user account collected and stored by a database module, including periodic user self-assessment values, and market event data to generate a behavioral response score, and wherein the initiating step automatically triggers advisor output when the market event data satisfies a predefined volatility condition – that merely use generic components as tools. Steps that do no more than spell out what it means to “apply it on a computer” cannot confer patent eligibility.
Hence, the additional elements individually or in combination, do not integrate the judicial exception into a practical application.
Hence, the claims are ineligible under Step 2A.
Step 2B:
In Step 2B, the evaluation consists of whether the claim recites additional elements that amount to an inventive concept (aka “significantly more”) than the recited judicial exception.
As discussed in Prong Two, the additional elements in the claim amount to no more than mere instructions to apply the exception using generic computer components. When considered individually or as an ordered combination, the additional elements fail to transform the abstract idea of – method for improving behavioral financial wellness using an investment management system having one or more [virtual financial trustees] wherein the investment management system outputs feedback to a user to reinforce good behavioral financial wellness, comprising the steps of: entering user data in an authentication screen; entering user profile data; creating a risk profile by a questionnaire module configured to collect risk-related data from a user, wherein at least some user information is input by the user via a user display as part of the general user interface, and risk tolerance and ability to withstand risk are assessed by adjusting within the user display the placement of a marker within an image having a first axis representing a gradient of risk tolerance having opposing ends that are indicative of low risk tolerance and high risk tolerance, and a second axis oriented orthogonal to the first axis representing a gradient for ability to withstand risk, having opposing ends that are indicative of high and low ability to withstand risk; transmitting user profile data to both an investment system and to a [virtual advisor trustee selection system]; selecting one or more [virtual trustees] using the profile data and the risk profile; and initiating output from the [virtual trustees] to the user, wherein the step of initiating output is carried out either periodically at one or both of a specified time interval or due to an event determined by the investment management system as one affecting financial markets and; retrieve and integrate user account data and market event data from third party financial institutions into the investment management system; wherein the selecting step is performed by a [machine-learning model stored in a computer readable storage device] and trained on user profile data, data associated with the user financial profile and performance of the user account collected and stored by a database module, including periodic user self-assessment values, and market event data to generate a behavioral response score, and wherein the initiating step automatically triggers advisor output when the market event data satisfies a predefined volatility condition – into significantly more.
See MPEP 2106.05(f) Mere Instructions To Apply An Exception [R-10.2019].
(2) Whether the claim invokes computers or other machinery merely as a tool to perform an existing process. Use of a computer or other machinery in its ordinary capacity for economic or other tasks (e.g., to receive, store, or transmit data) or simply adding a general purpose computer or computer components after the fact to an abstract idea (e.g., a fundamental economic practice or mathematical equation) does not integrate a judicial exception into a practical application or provide significantly more.
Hence, the claims are ineligible under Step 2B.
Therefore, the claim(s) are rejected under 35 U.S.C. 101 as being directed to an abstract idea without significantly more.
Response to Arguments
Applicant's arguments filed 7/10/2026 have been fully considered but they are not persuasive.
101
Applicant argues that the claims are not a mental process; but since the office action has rejected the claims as being directed to Certain Methods of Organizing Human Activity, and not Mental Process, therefore this argument is moot.
Applicant argues, citing two axis risk selection interface, communication gateway using third party APIs to convert JSON and XML, and machine learning model to argue that the claims are integrated into a practical application.
Examiner finds this unpersuasive because the above features are merely additional elements that have been used to implement the abstract idea set forth in Prong One. Examiner first notes that the claimed interface consisting of two axes orthogonal to each other (Fig. 4) is simply an additional element adapted to collect or visually represent user risk tolerance data – one that can be drawn on a piece of paper. See Intellectual Ventures I LLC v. Erie Indem. Co., 850 F.3d 1315, 1331 (Fed. Cir. 2017) (“The claimed mobile interface is so lacking in implementation details that it amounts to merely a generic component (software, hardware, or firmware) that permits the performance of the abstract idea, i.e., to retrieve the user-specific resources.”). Next. the elements – API, machine learning model – have been invoked merely as tools to convert electronic data from JSON to XML (para [0031] described in the specification at a high level of generality. In contrast to Desjardins, neither the specification nor the claims identify any improvements in training the machine learning model itself. Instead, the claims merely invoke machine learning merely as a tool to customize interaction between trustee and the user – mentioned in the specification (para [0018], [0026]) at a very high level of generality
These additional elements do not: (1) improve the functioning of a computer or other technology; (2) are not applied with any particular machine (except for a generic computer); (3) do not effect a transformation of a particular article to a different state; and (4) are not applied in any 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(a)-(c), (e)-(h). For the above reasons, the aforementioned additional elements (or combination of elements) recited in at least claims 1, 8 and 11 do not integrate the judicial exception into a practical application.
As per MPEP 2106.05(a) (“To show that the involvement of a computer assists in improving the technology, the claims must recite the details regarding how a computer aids the method, the extent to which the computer aids the method, or the significance of a computer to the performance of the method. Merely adding generic computer components to perform the method is not sufficient. Thus, the claim must include more than mere instructions to perform the method on a generic component or machinery to qualify as an improvement to an existing technology.”). Here, the claims merely use a generic user interface to identify a user’s ability to withstand risk, select a virtual trustee to interact with a user, use an API to perform electronic data format conversion, and invoke a machine learning model to customize interaction between the trustee and the user – at a high level of generality. This is merely automating Certain Methods of Organizing Human Activity which is not sufficient to quality as an improvement to an existing technology. See Credit Acceptance Corp. v. Westlake Servs., 859 F.3d 1044, 1056 (Fed. Cir. 2017) (“But merely ‘configur[ing]’ generic computers in order to ‘supplant and enhance’ an otherwise abstract manual process is precisely the sort of invention that the Alice Court deemed ineligible for patenting.”) (“Our prior cases have made clear that mere automation of manual processes using generic computers does not constitute a patentable improvement in computer technology.”).
There is a fundamental difference between computer functionality improvements, on the one hand, and uses of existing computers as tools to perform a particular task, on the other. The present claims are directed to determining a user’s risk tolerance, and recommend a virtual trustee to interact with the user and and merely use generic computers and generic machine learning model to facilitate that interaction and not improve the performance of the machine learning model. Indeed, nothing in the claims improves the functioning of a computer, makes it operate more efficiently, or solves any technological problem. See Trading Techs. Int’l, Inc. v. IBG LLC, (Fed. Cir. 2019). See SAP Am., Inc. v. Investpic, LLC 898 F.3d 1161, 1163 (Fed. Cir. 2018) (“No matter how much of an advance in the … field the claims recite, the advance lies entirely in the realm of abstract ideas, with no plausibly alleged innovation in the non-abstract application realm.”); SAP Am., Inc. v. InvestPic, LLC, 898 F.3d 1161, 1170 (Fed. Cir. 2018) (“[P]atent law does not protect such claims[, i.e., claims to an asserted advance in the realm of abstract ideas], without more, no matter how groundbreaking the advance.”).
For the above reasons, the Applicant’s arguments are found unpersuasive.
Previously Addressed
Applicant argues that claims 1, 8 and 15 do not recite a judicial exception because it includes the element of “instructions to identify at least one virtual trustee” which is not an abstract idea; like McRO and Example 39 the claims cannot be performed in the mind and does not recite method of organizing human activity; the combination of data inputs, data processing and specific requirements to create a virtual trustee that interacts with the user and provides periodic queries to the user result in learning sound investment practices; like Example 37, the claim as a whole integrate the abstract idea into a practical application.
Examiner respectfully disagrees.
Examiner notes that instructions to identify at least one virtual trustee or to create interactions between a user and one or more virtual trustees merely apply a judicial exception which is not sufficient to create a practical application. See MPEP 2106.05(f) (2) (“Whether the claim invokes computers or other machinery merely as a tool to perform an existing process. Use of a computer or other machinery in its ordinary capacity for economic or other tasks (e.g., to receive, store, or transmit data) or simply adding a general purpose computer or computer components after the fact to an abstract idea (e.g., a fundamental economic practice or mathematical equation) does not integrate a judicial exception into a practical application or provide significantly more.”). Selecting a trustee and creating interaction between a user and the trustee; creating a risk profile by requiring the user to input risk date, creating a questionnaire to create a risk profile – are Certain Methods of Organizing Human Activity which is a judicial exception. The claims merely implement these abstract human activities on the computer environment by using virtual trustee as the computer equivalent of a human trustee/advisor. See Intellectual Ventures I LLC v. Capital One Bank (USA), N.A., 792 F.3d 1363, 1366, 115 USPQ2d 1636, 1639 (Fed. Cir. 2015) (“An abstract idea does not become nonabstract by limiting the invention to a particular field of use or technological environment, such as the Internet [or] a computer.”). Whether or not such interactions between user and virtual trustee results in sound investment practices is not a relevant consideration in patent eligibility analysis. See also Myriad, 569 U.S. at 591, 106 USPQ2d at 1979 (“Groundbreaking, innovative, or even brilliant discovery does not by itself satisfy the §101 inquiry.”). Cf. Synopsys, Inc. v. Mentor Graphics Corp., 839 F.3d 1138, 1151, 120 USPQ2d 1473, 1483 (Fed. Cir. 2016) (“a new abstract idea is still an abstract idea”).
Examiner also notes that the limitation “wherein at least some user information is input by the user via a user display as part of the general user interface, and risk tolerance is assessed by adjusting within the user display, the placement of a marker within an image having a first axis representing a gradient of risk tolerance having opposing ends that are indicative of low risk tolerance and high risk tolerance, and a second axis oriented orthogonal to the first axis (e.g., along a Y axis) representing a gradient for ability to withstand risk, again with ends that are high and low ability to withstand risk,” merely uses the elements of a graphical user interface including X axis, Y axis, market, image, etc., to implement an abstract idea. Examiner notes that the graphical user interface is merely a tool for presentation. The above limitation can be carried out by drawing a diagram with two axes representing risk tolerance gradient on a piece of paper (or using printed paper) and have the user draw a marker on any section of the diagram. See Intellectual Ventures I LLC v. Symantec Corp., 838 F.3d 1307, 1318, 120 USPQ2d 1353, 1360 (Fed. Cir. 2016) (‘‘[W]ith the exception of generic computer-implemented steps, there is nothing in the claims themselves that foreclose them from being performed by a human, mentally or with pen and paper.’’). Merely using a graphical user interface to generate user questionnaire does not change abstract nature of the claim. See Trading Techs., 921 F.3d at 1093 (“The fact that this is a ‘computer-based method’ does not render the claims non-abstract. The specification indicates the claimed GUI is displayed on any computing device. As a general rule, ‘the collection, organization, and display of two sets of information on a generic display device is abstract.’”). Similarly here, the use of a graphical user interface to generate a questionnaire to collect and store user’s ability to calculate user’s risk tolerance is an abstract idea.
With respect to applicant’s attempts to analogize the present claims to McRO, Example 37 and 39, Examiner notes that all of the above examples were deemed to bring about technological improvement. For example, in McRO, the Court found that the claimed synchronization and facial expression animation were directed to an improvement in computer-related technology and not directed to an abstract idea. See 2106.04(d)(1) Evaluating Improvements in the Functioning of a Computer, or an Improvement to Any Other Technology or Technical Field in Step 2A Prong Two [R-10.2019]. In contrast, as noted before, the present claims can be carried out during in person human interaction between a user and an advisor. For the same reasons, neither of examples 37 or 39 are inapposite to the present claims. Unlike collecting user information via a questionnaire and forming an interaction between a user and a virtual advisor, determining the amount of use of an icon by tracking the amount of memory allocated to the application associated with an icon – cannot be accomplished by the human mind but only by the computer processor. Similarly, Example 39 deals with training facial images that cannot be properly carried out in the human mind unlike the pending claims that can be carried out using pencil and paper. See MPEP 2106.04(a)(1) Examples of Claims That Do Not Recite Abstract Ideas [R-10.2019]. For the above reasons, applicant’s arguments are not persuasive.
Applicant asserts that the judicial exception is integrated into a practical application.
Examiner respectfully disagrees.
As noted above, the limitations – collecting user information including the user’s risk tolerance; providing feedback to user to follow a recommended investment strategy; prompting the user to select a virtual trustee from a list of virtual trustees that correspond with the user’s risk profile including interaction between user and one or more trustee – constitute Certain Methods of Organizing Human Activity. The additional elements – the investment management system, memory and processor – merely implement the abstract idea. All of the recited steps can be carried out in person between the user and trustees using pencil and paper. A computer is not necessary to obtain information pertaining to user’s risk tolerance, finding a list of advisors corresponding to the user’s risk tolerance, and prompting the user to select a trustee. See Credit Acceptance Corp. v. Westlake Servs., 859 F.3d 1044, 1055 (Fed. Cir. 2017) (“Our prior cases have made clear that mere automation of manual processes using generic computers does not constitute a patentable improvement in computer technology.”) (“[M]erely ‘configur[ing]’ [a] generic computer[] in order to ‘supplant and enhance’ an otherwise abstract manual process is precisely the sort of invention that the Alice Court deemed ineligible for patenting.”) Credit Acceptance Corp., 859 F .3d at 1056. The claims simply “include instructions to implement an abstract idea on a computer” and “does no more than generally link the use of a judicial exception to a particular technological environment or field of use.” The claimed limitations do not recite (i) an improvement to the functionality of a computer or other technology or technical field; (ii) a “particular machine” to apply or use the judicial exception; (iii) a particular transformation of an article to a different thing or state; or (iv) any other meaningful limitation. See MPEP 2106.05 (a)-(c), (e)-(h). Hence, the additional elements fail to integrate the abstract idea into a practical application or provide significantly more. See MPEP 2106.05(f).
Applicant argues that as in claim 4 of Example 46, the claim 1 of the present application does not recite any abstract ideas.
Examiner respectfully disagrees.
It is not clear on what basis Applicant compares the present claims to Example 46 since there exists no parallel between Example 46 and the current invention. Example 46 is directed to livestock management. In Example 46, the claimed steps are used to transform a physical process. Claim 4 of Example 46 was deemed eligible because it is a system claims comprising memory, processor, radio frequency reader, and transmitter and does not recite any abstract ideas. Applicant’s claim 1, on the other hand, consists of additional elements to implement the abstract idea of selecting personal financial traits, experience, goals; and obtaining a list of virtual trustees that correspond to user profile; provide questionnaire for user to input assessment; and request user to select a virtual trustee to create interaction between user and trustees – which falls under the abstract idea grouping of Certain Methods of Organizing Human Activity. None of the steps of the present invention can effect a physical transformation as in dispensing livestock feed; rather they can be carried out in person using pen and paper. For the above reasons, Applicant’s arguments are not persuasive
Applicant argus that the claims are eligible under claim 2 of Example 49 (“AI-Assisted Personalized Medical Treatment”) from the 2024 AI SME Update.
Examiner respectfully disagrees.
Examiner finds no parallel whatsoever between Example 49 and the present claims. Example 49 deals with administering treatment to a glaucoma patient by determining based on an AI model that the patient is at a high risk of inflammation. In contrast, the current claims deal with collecting from a questionnaire user information including the user’s risk tolerance; providing feedback to user to follow a recommended investment strategy; prompting the user to select a virtual trustee from a list of virtual trustees that correspond with the user’s risk profile including interaction between user and one or more trustee. It is difficult to see how administering a treatment to a patient is even remotely similar to an interaction between a user and one or more virtual trustees based on user’s risk tolerance. For the above reasons, applicant’s arguments are wholly unpersuasive.
103
The obviousness rejection has been withdrawn in view of the amendments and arguments filed 7/10/2026.
Conclusion
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 ARUNAVA CHAKRAVARTI whose telephone number is (571)270-1646. The examiner can normally be reached 9 AM - 5 PM ET.
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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/ARUNAVA CHAKRAVARTI/Primary Examiner, Art Unit 3692
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