DETAILED ACTION
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 June 13, 2025 has been entered.
Status of the Application
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
The amendment filed on May 7, 2025 has been entered. The following has occurred: Claims 1 and 13 have been amended.
Claims 1-13 are currently pending and have been examined.
Response to Amendment
35 U.S.C. 112(a) rejection has been withdrawn in light of the amendment.
35 U.S.C. 101 rejection has been maintained in light of the amendment.
35 U.S.C. 103 rejection has been withdrawn in light of the amendment.
35 U.S.C. 102 rejection has been added in light of the amendment.
Priority
Applicant’s claim for the benefit of a prior-filed application under 35 U.S.C. 119(e) or under 35 U.S.C. 120, 121, 365(c), or 386(c) is acknowledged.
The later-filed application must be an application for a patent for an invention, which is also disclosed in the prior application (the parent or original non-provisional application or provisional application). The disclosure of the invention in the parent application and in the later-filed application must be sufficient to comply with the requirements of 35 U.S.C. § 112(a) or the first paragraph of pre-AIA 35 U.S.C. § 112, except for the best mode requirement. See Transco Products, Inc. v. Performance Contracting, Inc., 38 F.3d 551, 32 USPQ2d 1077 (Fed. Cir. 1994)
The disclosure of the prior-filed application, Application No. 16/128,814, fails to provide adequate support or enablement in the manner provided by 35 U.S.C. § 112(a) or pre-AIA 35 U.S.C. § 112, first paragraph for one or more claims of this application. Specifically, the parent application 16/128,814 fails to provide written description support for:
“(i) providing a comprehensive confidential information management and communication system comprising:
(a) a confidential information management-system computer for storing and managing confidential information files each in such a manner that each of the confidential information files is available to only an authorized category of users;
(b) a software program module operable through said management-system computer to store and maintain the individual confidential information files;
(c) a rules-relationship database, including familial, territorial, legal, and business relationship categories, as specified by the person, accessible through said management-system computer;
(d) an information database accessible through said management-system computer;
(e) an access controller operationally connected to said management-system computer and operable to securely control access to said management- system computer and said information database in accord with said rules- relationships database only to a category of authorized users previously specified by the person;
(f) a program module configured in the management-system computer operable to permit analysis of each person's information, rules, and relationships by authorized category of users through the access controller;
(g) a program module configured in the management-system computer operable to permit analysis and update of outside rules and information by authorized category of users through the access controller;
(h) a program module configured in the management-system computer operable to permit the person to authorize use of said comprehensive confidential information management and communication system by authorized users through the access controller upon demand;
(i) a program module configured in the management-system computer operable to permit the person to continuously update information in said rules-relationships database;
(j) a program module configured in the management-system computer operable to permit the person to continuously update information in said information database;
(k) a program module configured in the management-system computer operable to permit an authorized category of a professional to update information in said information database through the access controller upon demand; and
(l) program module configured in the management-system computer operable to permit an authorized category of a professional to receive relevant updated information from said information database through the access controller;
(ii) accepting authorization, through the access controller, from the person for use of said comprehensive confidential information management and communication system;
(iii) entering, through the access controller, updated information from the person into said rules-relationships database;
(iv) entering, through the access controller, updated information from the person into said information database;
(v) performing, through the access controller, analysis of the person's updated information, rules, and relationships;
(vi) performing, through the access controller, analysis and update of outside rules and information;
(vii) allowing, through the access controller, authorized category of professionals to update information in said information database in accord with rules in said rules-relationships database on upon demand; and
(viii) allowing, through the access controller, authorized category of professionals to receive relevant updated information from said information database in accord with rules in said rules-relationships database.”
Which are all of claims 1-13. Therefore, these claims do not get priority of the filing date of the parent application (i.e., 16/128,814) because the parent application fails to demonstrate possession of such claim terms.
Accordingly, the earliest effective filing date of the instant application is its filing date of May 25, 2022.
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 1-13 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more.
Step 1: Is the claim to a process, machine, manufacture or composition of matter? (MPEP 2106.03)
In the present application, claims 1-12 are directed to a device (i.e. a machine) and claim 13 is directed to a method (i.e. a process). Thus, the eligibility analysis proceeds to Step 2A. prong one.
Step 2A. prong one: Does the claim recite an abstract idea, law of nature, or natural phenomenon? (MPEP 2106.04)
While claims 1 and 13 are directed to different categories, the language and scope are substantially the same and have been addressed together below.
The abstract idea recited in claims 1 and 13 is
A comprehensive confidential information management and communication method for information about a person accessed by professionals, the comprehensive confidential information management and communication method comprising:
storing and managing confidential information files in such a manner that each of the confidential information files is available to only an authorized category of users;
store and maintain the individual confidential information files;
a rules-relationship database, including familial, territorial, legal, and business relationship categories, as specified by the person;
an information database;
access said information database in accord with said rules-relationships database only to a category of authorized users previously specified by the person;
permit analysis of each person's information, rules, and relationships by authorized category of users;
permit analysis and update of outside rules and information by authorized category of users;
permit the person to authorize use of said comprehensive confidential information management and communication by authorized users upon demand;
permit the person to continuously update information in said rules-relationships database;
permit the person to continuously update information in said information database;
permit an authorized category of a professional to update information in said information database upon demand; and
permit an authorized category of a professional to receive relevant updated information from said information database;
accepting authorization from the person for use of said comprehensive confidential information management and communication;
entering updated information from the person into said rules-relationships database;
entering updated information from the person into said information database;
performing analysis of the person's updated information, rules, and relationships;
performing analysis and update of outside rules and information;
allowing authorized category of professionals to update information in said information database in accord with rules in said rules-relationships database upon demand; and
allowing authorized category of professionals to receive relevant updated information from said information database in accord with rules in said rules-relationships database.
The claimed invention is directed to an abstract idea of managing confidential information for providing estate planning service.
Under the broadest reasonable interpretation, without the recitation of additional elements, the limitations above a fundamental economic practice long prevalent in our system of commerce in the form of advertising, marketing, or sales activity or behaviors for customer engagement of legal industry, which have been practiced for centuries. As discussed in the Applicant’s specification paragraphs [0002]-[0014] that the service have been human activity required person-to-person communication. Therefore, the claims recite an abstract idea consistent with the “certain methods of organizing human activity” grouping of the abstract ideas, set forth in MPEP 2106.04(a)(2)(II).
Additionally, the claim limitations above recite processes that are all acts that could be performed by a human, e.g., mentally or manually, using a pen and paper, without the use of a computer or any other machine. Specifically addressed in the claim, the comprehensive confidential information management and communication method for information about “a person” accessed by “professionals” stating the management and communication method is performed by human professionals. For example, using pen and paper or via oral communication, human managers and professionals could store and manage confidential information files and rules-relationship information in paper form, physically and in a form of physical paper database storage (Note: the applicant’s specification does not specify “a rules-relationship database” and “information database” to be hardware component storage for storing but rather a set of information description record); access said information in paper record in accord of rules-relationships only to a category of authorized users previously specified by the person; a person can permit analysis (e.g., observation, evaluation, and judgement) of each person's information, rules, and relationships by authorized category of users; permit analysis (e.g., observation, evaluation, and judgement) and update of outside rules and information by authorized category of users; permit the person to authorize use of said comprehensive confidential information management and communication by authorized user upon demand; permit the person to continuously update (Note: the specification does not describe how the continuously updating information is performed, the office asserts a person can continuously update information at a regular schedule time-frame) information in said rules-relationships record/database; permit the person to continuously update (Note: the specification does not describe how the continuously updating information is performed, the office asserts a person can continuously update information at a regular schedule time-frame) information in said information database; permit an authorized category of a professional to update information in said information database upon demand; and permit an authorized category of a professional to receive relevant updated information from said information database; accept authorization from the person for use of said comprehensive confidential information management and communication; enter updated information from the person into said rules-relationships record/database; enter updated information from the person into said information record/database; perform analysis (e.g., observation, evaluation, and judgement) of the person's updated information, rules, and relationships; perform analysis (e.g., observation, evaluation, and judgement) of the person's updated information, rules, and relationships; perform analysis (e.g., observation, evaluation, and judgement) and update of outside rules and information; allow authorized category of professionals to update information in said information database in accord with rules in said rules-relationships database upon demand; and allow authorized category of professionals to receive relevant updated information from said information database in accord with rules in said rules-relationships database. Because the limitations above closely follow the steps of collecting information and analyzing the collected information, and the steps involved human judgements, observations, and evaluations that can be practically or reasonably performed in the human mind, the claims recite an abstract idea consistent with the “mental processes” grouping of the abstract ideas, set forth in MPEP 2106.04(a)(2)(III).
Accordingly, the above-mentioned limitations are considered as a single abstract idea, therefore, the claims recite an abstract idea and the analysis proceeds to Step 2A. prong two.
Step 2A. prong two: Does the claim recite additional elements that integrate the judicial exception into a practical application? (MPEP 2106.04)
This judicial exception is not integrated into a practical application because the additional elements merely add instructions to apply the abstract idea to a computer.
The additional elements considered in Claims 1 and 13 are: “a comprehensive confidential information management and communication system comprising:” “a confidential information management-system computer,” “a software program module operable through said management-system computer,” “accessible through said management-system computer;” “through said management-system computer;” “an access controller operationally connected to said management-system computer and operable to securely control access to said management- system computer,” “a program module configured in the management-system computer operable to,” and “through the access controller,”
In particular, the claim only recites the above-mentioned additional elements to store, access, provide, update, analyze, and receive information. The computer in the steps is recited at a high-level of generality (i.e., as generic computer components performing a generic computer function; See Applicant’s Specification at least at in paragraph [0030], “Implementation of the comprehensive confidential information management and communication system and method 10 requires several tightly integrated interdependent modules of highly secure custom software or computer code. These custom software modules can utilize available standard secure communications and database management back-end subsystems and can be implemented on standard computer and communications equipment having sufficient capacity and security”) such that it amounts to no more than mere instructions to apply the exception using a generic computer component.
That is, the function of limitations [A]-[T] are steps of 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 as discussed in MPEP 2106.05(f). The combination of these additional elements is no more than mere instructions to apply the exception using a generic computer. Accordingly, even in combination, these additional element(s) do not integrate the abstract idea into a practical application because they do not improve a computer or other technology, do not transform a particular article, do not recite more than a general link to a computer, and do not invoke the computer in any meaningful way; the general computer is effectively part of the preamble instruction to “apply” the exception by the computer. Therefore, the claims are directed to an abstract idea and the analysis proceeds to Step 2B.
Step 2B: Does the claim recite additional elements that amount to significantly more than the judicial exception? (MPEP 2106.05)
The claim(s) does/do not include additional elements that are sufficient to amount to significantly more than the judicial exception because the bold portions of the limitations recited above, were all considered to be an abstract idea in Step2A-Prong Two. The additional elements and analysis of Step2A-Prong two is carried over. For the same reason, these elements are not sufficient to provide an inventive concept. Applicant has merely recited elements that instruct the user to apply the abstract idea to a computer or other machinery. When considered individually and in combination the conclusion, as discussed above with respect to integration of the abstract idea into a practical application, the additional element of using a computer to perform the above-mentioned limitations [A]-[T] amount to no more than mere instructions to apply the function of the limitations to the exception using generic computer component, as discussed in MPEP 2106.05(f)(1), “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).” MPEP 2106.05(f)(2), “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. See Affinity Labs v. DirecTV, 838 F.3d 1253, 1262, 120 USPQ2d 1201, 1207 (Fed. Cir. 2016) (cellular telephone); TLI Communications LLC v. AV Auto, LLC, 823 F.3d 607, 613, 118 USPQ2d 1744, 1748 (Fed. Cir. 2016) (computer server and telephone unit).”
The claim as a whole merely describes how to generally “apply” the concept for managing confidential information for providing estate planning service. Thus, viewed as a whole, nothing in the claim adds significantly more (i.e. an inventive concept) to the abstract idea. For these reasons there is no inventive concept in the claims and thus are ineligible.
As for dependent claims 2-12, these claims recite limitations that further define the abstract idea noted in the independent claim 1. The claims further recite additional descriptive information regarding to the authorized professionals can be and that does not change abstract idea of the independent claim. The claims do not recite new additional element. The further detail of the claim limitation does not include an improvement to another technology or technical field, an improvement to the functioning of the computer itself, or meaningful limitations beyond generally linking the use of an abstract idea to a particular technology environment. The claims are ineligible.
In summary, the dependent claims considered both individually and as ordered combination do not provide meaningful limitations to transform the abstract idea into a patent eligible application of the abstract idea such that the claims amount to significantly more than the abstract idea itself. The claims do not recite an improvement to another technology or technical field, an improvement to the functioning of the computer itself, or provide meaningful limitations beyond generally linking an abstract idea to a particular technological environment. Therefore, claims 1-13 are rejected under 35 U.S.C. 101.
Claim Rejections - 35 USC § 102
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale or otherwise available to the public before the effective filing date of the claimed invention.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1-13 are rejected under 35 U.S.C. 102(a)(1) and 102(a)(2) as being anticipated by Parker (US 20030182290 A1).
Regarding Claim 1, Parker discloses a comprehensive confidential information management and communication system (Abstract and para. [0018], [0036] disclosing systems a method and computer program, and systems and products for implementation of same are provided that facilitate a final estate planning professional in evaluating a client's end of life plans. Para. [0037] disclosing data processing system provides a hub and spoke configuration in which clients and vendors form the spokes linked to the planning and data storage hub) for information about a person accessed by professionals (para. [0037] and [0038] disclosing a data processing system and method for obtaining, storing, and analyzing client information and accessed/reviewed by professionals. In para. [0047], discussed for from various locations, or may simply be impossible to locate. Behaving the required information or locations of key documents kept in a central Secure location [comprehensive confidential information], clients have the peace of mind that their assets will be automatically utilized to meet their wishes when their LP/EOLP program generated plan stored by the hub is implemented. Further, clients can provide anytime/anywhere access, or restricted access to their end-of-life plan to an individual, such as an “informant,” lawyer, trustee, or family member, [i.e. professionals]), the comprehensive confidential information management and communication system comprising (Abstract and para. [0018], [0036] disclosing systems a method and computer program, and systems and products for implementation of same are provided that facilitate a final estate planning professional in evaluating a client's end of life plans. Para. [0037] disclosing data processing system provides a hub and spoke configuration in which clients and vendors form the spokes linked to the planning and data storage hub):
(i) a confidential information management-system computer (Abstract and para. [0018], [0036] disclosing systems a method and computer program, and systems and products for implementation of same are provided that facilitate a final estate planning professional in evaluating a client's end of life plans. Para. [0037] disclosing data processing system provides a hub and spoke configuration in which clients and vendors form the spokes linked to the planning and data storage hub) for storing and managing confidential information files each in a confidential manner such that each of the confidential information files is available to only an authorized category of users (para. [0047] disclosing LP/EOLP program generated plan is stored by the hub and is restricted access to an individual, such as an “informant,” lawyer, trustee, or family member. The access to client information can be limited to certain provisions of the LP/EOL plan);
(ii) a software program module operable through said management-system computer to store and maintain the individual confidential information files (Para. [0018], [0025], disclosing a computer program and software modules for acquiring, organizing, updating, analyzing and outputting data in labeled fields within a database. In para. [0038], [0047] disclosing the client information for the LP/EOP program is stored and maintained in data storage);
(iii) a rules-relationship database, including familial, territorial, legal, and business relationship categories, as specified by the person, accessible through said management-system computer (para. [0061] for data fields can be made variably accessible, a first group of data fields can be accessible by a first type of card Swipe device and/or access code while a Second group of data fields can be accessible by a Second type of card Swipe device and/or access code [having rules in the database for access of data fields based on codes]. In para. [0047] disclosing restricted access to individual such as “informant,” lawyer, trustee, vendor, and family member, which are representative of specified familial, territorial, legal, and business relationship categories. Para. [0036] disclosing the organizing data into four points of estate planning, specifically client fiscal and human/pet care responsibilities includes creditors, children, spouse, and employers. This covers familial, legal, and business relationships. Then in para. [0046] and [0051] discloses relational database that manages links and identifies geographical proximity (i.e., territorial) for vendor referrals);
(iv) an information database accessible through said management-system computer (Abstract; and para. [0025], [0051] discloses central database or repository. Para. [0062] for a relational database [having an information database] is used to manage LP/EOLP data, with one or more fields in a first dataset being updatable when one or more linked fields in a Second data Set are altered.);
(v) an access controller operationally connected to said management-system computer and operable to securely control access to said management- system computer and said information database in accord with said rules-relationships database only to a category of authorized users previously specified by the person (Para. [0047] for clients can provide anytime/anywhere access, or restricted access, to their end-of-life plan to an individual, Such as an "informant," lawyer, trustee, or family member. The access to client information can be limited to certain provisions of the LP/EOL plan, and optionally in the case of a vendor. In [0019] and [0395] disclosing internet hub and access medium that uses a permanent file identification number and pass code to grant access to specific designated third parties or vendors (professionals) based on the user’s pre-set instructions);
(vi) a program module configured in the management-system computer operable to permit analysis of each person's information, rules, and relationships by authorized category of users through the access controller (para. [0042] and [0051] discloses software that analyze the information for determining weaknesses in the user’s life plan. para. [0063] for identifying areas that should be investigated. The report will optionally include specific recommendations and Vendor referrals based on an automatic analysis performed by the computer program using actuarial tables [means for analysis of personal information with rules to match vendors to the needs of the Deni client] and other planning tools and/or based on analysis by a professional life planner with para. [0340] for they will have access to client records, however this access will be limited. Vendors will only be able to update client records for those clients that submitted information to the vendor and only that information which pertains to the service that the vendor will be providing the client (controlling vendor access with login and password]);
(vii) a program module configured in the management-system computer operable to permit analysis and update of outside rules and information by authorized category of users through the access controller (Para. [0014] and [0063] discloses the use of actuarial table and other planning tools and integrates outside information from the healthcare industry, insurance industry, financial and investment industry to update the plan. Also, in para. [0051] for user via a Series of questions, also referred to herein as hierarchical interrogatories, Stores the information in data fields for future reference, analyzes the information for determining weaknesses in the user's life plans and/or end of life plans, and makes vendor referrals [means for analysis of information and inherent rules for filtering information by vendor services] By the use of a computer program, preferably accessible via the internet);
(viii) a program module configured in the management-system computer operable to permit the person to authorize use of said comprehensive confidential information management and communication system by authorized users through the access controller upon demand (Para. [0019] and [0395] discloses authorization to access client record to transferees or designated third parties. Specifically, in para. [0069] for after the confirmation notice has been received, they will be able to login [providing authorizing credentials to access confidential information on estate planning] into the Final Estate Planning System program to begin completing items on the Final Estate Planning Checklist, or" FEPCL," or into a life planning checklist. A member login link is provided on the web site's home page. Para. [0017], [0023], [0038], [0047], and [0051] disclosing users can access, store, and retrieve the implemented life plans when needed which is representative of “upon demand”);
(ix) a program module configured in the management-system computer operable to permit the person to continuously update information in said rules-relationships database (para. [0037], [0040] discloses the clients can remotely access said program, enter personal data, and store said data and can update information in response to said inquiries on a continuous basis. In para. [0067]-[0068] states information provided during the registration process will be used throughout the Final Estate planning process allowing the System to track the users progress and allow them to update their information with paragraph [0019] for Stored client data is accessible for updating by the client [means for person to update their information in the hub or database], the program provider hub operator, and in certain circumstances by resource Vendors, employers, and designated third parties. In an embodiment, an automated System for facilitating multi-party interactions between geographically Separated entities for EOLP. In para. [0025], [0048], and [0051], disclosing the computer program can update and output all of the data an automatically updatable via access to linked databases, which discloses the continuous updating information in databases);
(x) a program module configured in the management-system computer operable to permit the person to continuously update information in said information database (para. [0037], [0040] discloses the clients can remotely access said program, enter personal data, and store said data and can update information in response to said inquiries on a continuous basis. In para. [0067] states information provided during the registration process will be used throughout the Final Estate planning process allowing the System to track the users progress and allow them to update their information. In para. [0025], [0048], and [0051], disclosing the computer program can update and output all of the data an automatically updatable via access to linked databases, which discloses the continuous updating information in databases);
(xi) a program module configured in the management-system computer operable to permit an authorized category of a professional to update information in said information database through the access controller upon demand (In para. [0022] discloses that a vendor (professional) can update client information stored by the program administrator. Para [0047] for access to client information can be limited to certain provisions of the LP/EOL plan, and optionally in the case of a vendor (e.g., insurance), information can be updated by the vendor [allowing professional to update information] with paragraph 52 for Virtual databases may also be used that treat Several databases as if they were a single database. Conventional relational databases with Specialized tools for On-Line Analytical Processing. Para. [0017], [0023], [0038], [0047], and [0051] disclosing users can access, store, and retrieve the implemented life plans when needed which is representative of “upon demand”); and
(xii) program module configured in the management-system computer operable to permit an authorized category of a professional to receive relevant updated information from said information database through the access controller (In para. [0022] and [0271] discloses the system provides for individuals to be provided with a vendor referral and allows professionals to access stored client LP plan data to provide updated services. In para [0048] states automatic links to client asset and liability accounts is also provided, and premium notice and payment Status for important assets, Such as life insurance policies, is automatically updated in the clients LP plan file stored by the hub with paragraph [0051] for a program accessible from the internet can be updated without requiring creation and distribution of new hard copies of the program although program copies can be provided to professional planners under a separate fee program, the planners would then upload their clients data to the hub for a fee [updating of data by professionals and means to receive updated information]).
Regarding Claim 2, Parker discloses the comprehensive confidential information management and communication system of claim 1. Parker further discloses,
where said authorized professional is a legal professional (para. [0012], [0014], “legal advisor”; para. [0017], “legal profession”; para. [00468], “legal service provider”; para. [493] “Final Estate Planning is a simplified preplanning system and questioning process that assists families, care givers, attorneys, funeral directors, health care providers and insurance agents in determining what has been taken care of and what has yet to be done”).
Additionally, the Examiner refers to and incorporates MPEP § 2111.04 and 2111.05 as what said professional is supposed to be is directed towards descriptive language that fails to further limit or alter how the steps/functions of the invention are performed or limit or alter the structure of the invention. The Examiner asserts that the claimed invention fails to establish the criticality of labels, titles, or the like that have been assigned to “professional” as the claimed invention does not explicitly recite how the receiving and updating of the database are affected by the type of professional. The Examiner asserts that regardless of the title of the professional, the invention, as claimed, would be performed the same and have the same end result.
The Examiner asserts that the “professional” is merely label and add little, if anything, to the claimed invention and, thus, does not serve to distinguish over the prior art. Any differences related merely to the meaning and information conveyed through labels (i.e., the type of the professional) which does not explicitly alter or impact the steps, function, or structure of the claimed does not patentably distinguish the claimed invention from the prior art in terms of patentability.
Regarding Claim 3, Parker discloses the comprehensive confidential information management and communication system of claim 1. Parker further discloses,
where said authorized professional is a medical professional (para. [0422] long term care and medical provider from the deni TM Data base; para. [0493] “health care provider”).
Additionally, the Examiner refers to and incorporates MPEP § 2111.04 and 2111.05 as what said professional is supposed to be is directed towards descriptive language that fails to further limit or alter how the steps/functions of the invention are performed or limit or alter the structure of the invention. The Examiner asserts that the claimed invention fails to establish the criticality of labels, titles, or the like that have been assigned to “professional” as the claimed invention does not explicitly recite how the receiving and updating of the database are affected by the type of professional. The Examiner asserts that regardless of the title of the professional, the invention, as claimed, would be performed the same and have the same end result.
The Examiner asserts that the “professional” is merely label and add little, if anything, to the claimed invention and, thus, does not serve to distinguish over the prior art. Any differences related merely to the meaning and information conveyed through labels (i.e., the type of the professional) which does not explicitly alter or impact the steps, function, or structure of the claimed does not patentably distinguish the claimed invention from the prior art in terms of patentability.
Regarding Claim 4, Parker discloses the comprehensive confidential information management and communication system of claim 1. Parker further discloses,
where said authorized professional is a financial advisor (para. [0416], client is referred to a list of financial planners within the deni data base;).
Additionally, the Examiner refers to and incorporates MPEP § 2111.04 and 2111.05 as what said professional is supposed to be is directed towards descriptive language that fails to further limit or alter how the steps/functions of the invention are performed or limit or alter the structure of the invention. The Examiner asserts that the claimed invention fails to establish the criticality of labels, titles, or the like that have been assigned to “professional” as the claimed invention does not explicitly recite how the receiving and updating of the database are affected by the type of professional. The Examiner asserts that regardless of the title of the professional, the invention, as claimed, would be performed the same and have the same end result.
The Examiner asserts that the “professional” is merely label and add little, if anything, to the claimed invention and, thus, does not serve to distinguish over the prior art. Any differences related merely to the meaning and information conveyed through labels (i.e., the type of the professional) which does not explicitly alter or impact the steps, function, or structure of the claimed does not patentably distinguish the claimed invention from the prior art in terms of patentability.
Regarding Claim 5, Parker discloses the comprehensive confidential information management and communication system of claim 1. Parker further discloses,
where said authorized professional is a funeral director (para. [493] “Final Estate Planning is a simplified preplanning system and questioning process that assists families, care givers, attorneys, funeral directors, health care providers and insurance agents in determining what has been taken care of and what has yet to be done”).
Additionally, the Examiner refers to and incorporates MPEP § 2111.04 and 2111.05 as what said professional is supposed to be is directed towards descriptive language that fails to further limit or alter how the steps/functions of the invention are performed or limit or alter the structure of the invention. The Examiner asserts that the claimed invention fails to establish the criticality of labels, titles, or the like that have been assigned to “professional” as the claimed invention does not explicitly recite how the receiving and updating of the database are affected by the type of professional. The Examiner asserts that regardless of the title of the professional, the invention, as claimed, would be performed the same and have the same end result.
The Examiner asserts that the “professional” is merely label and add little, if anything, to the claimed invention and, thus, does not serve to distinguish over the prior art. Any differences related merely to the meaning and information conveyed through labels (i.e., the type of the professional) which does not explicitly alter or impact the steps, function, or structure of the claimed does not patentably distinguish the claimed invention from the prior art in terms of patentability.
Regarding Claim 6, Parker discloses the comprehensive confidential information management and communication system of claim 1. Parker further discloses,
where said authorized professional is an investment broker (Fig. 1 for financial and investment services; claim 20 recites vendor referrals include referrals to at least one of the group consisting investment advisor which is representative of investment broker).
Additionally, the Examiner refers to and incorporates MPEP § 2111.04 and 2111.05 as what said professional is supposed to be is directed towards descriptive language that fails to further limit or alter how the steps/functions of the invention are performed or limit or alter the structure of the invention. The Examiner asserts that the claimed invention fails to establish the criticality of labels, titles, or the like that have been assigned to “professional” as the claimed invention does not explicitly recite how the receiving and updating of the database are affected by the type of professional. The Examiner asserts that regardless of the title of the professional, the invention, as claimed, would be performed the same and have the same end result.
The Examiner asserts that the “professional” is merely label and add little, if anything, to the claimed invention and, thus, does not serve to distinguish over the prior art. Any differences related merely to the meaning and information conveyed through labels (i.e., the type of the professional) which does not explicitly alter or impact the steps, function, or structure of the claimed does not patentably distinguish the claimed invention from the prior art in terms of patentability.
Regarding Claim 7, Parker discloses the comprehensive confidential information management and communication system of claim 1. Parker further discloses,
where said authorized professional is a financial manager (Fig. 1 for financial and investment services; claim 20 recites vendor referrals include referrals to at least one of the group consisting financial planner which is representative of financial manager).
Additionally, the Examiner refers to and incorporates MPEP § 2111.04 and 2111.05 as what said professional is supposed to be is directed towards descriptive language that fails to further limit or alter how the steps/functions of the invention are performed or limit or alter the structure of the invention. The Examiner asserts that the claimed invention fails to establish the criticality of labels, titles, or the like that have been assigned to “professional” as the claimed invention does not explicitly recite how the receiving and updating of the database are affected by the type of professional. The Examiner asserts that regardless of the title of the professional, the invention, as claimed, would be performed the same and have the same end result.
The Examiner asserts that the “professional” is merely label and add little, if anything, to the claimed invention and, thus, does not serve to distinguish over the prior art. Any differences related merely to the meaning and information conveyed through labels (i.e., the type of the professional) which does not explicitly alter or impact the steps, function, or structure of the claimed does not patentably distinguish the claimed invention from the prior art in terms of patentability.
Regarding Claim 8, Parker discloses the comprehensive confidential information management and communication system of claim 1. Parker further discloses,
where said authorized professional is a banker (Fig. 1 for financial and investment services; claim 20 recites vendor referrals include referrals to at least one of the group consisting financial planner which is representative of banker. Para. [0493] disclosing creditor which is also representative of a banker).
Additionally, the Examiner refers to and incorporates MPEP § 2111.04 and 2111.05 as what said professional is supposed to be is directed towards descriptive language that fails to further limit or alter how the steps/functions of the invention are performed or limit or alter the structure of the invention. The Examiner asserts that the claimed invention fails to establish the criticality of labels, titles, or the like that have been assigned to “professional” as the claimed invention does not explicitly recite how the receiving and updating of the database are affected by the type of professional. The Examiner asserts that regardless of the title of the professional, the invention, as claimed, would be performed the same and have the same end result.
The Examiner asserts that the “professional” is merely label and add little, if anything, to the claimed invention and, thus, does not serve to distinguish over the prior art. Any differences related merely to the meaning and information conveyed through labels (i.e., the type of the professional) which does not explicitly alter or impact the steps, function, or structure of the claimed does not patentably distinguish the claimed invention from the prior art in terms of patentability.
Regarding Claim 9, Parker discloses the comprehensive confidential information management and communication system of claim 1. Parker further discloses,
where said authorized professional is an insurance agent (para. [0047], [0416], client is referred to a list of preferred insurance vendors. Para. [0493], insurance agent).
Additionally, the Examiner refers to and incorporates MPEP § 2111.04 and 2111.05 as what said professional is supposed to be is directed towards descriptive language that fails to further limit or alter how the steps/functions of the invention are performed or limit or alter the structure of the invention. The Examiner asserts that the claimed invention fails to establish the criticality of labels, titles, or the like that have been assigned to “professional” as the claimed invention does not explicitly recite how the receiving and updating of the database are affected by the type of professional. The Examiner asserts that regardless of the title of the professional, the invention, as claimed, would be performed the same and have the same end result.
The Examiner asserts that the “professional” is merely label and add little, if anything, to the claimed invention and, thus, does not serve to distinguish over the prior art. Any differences related merely to the meaning and information conveyed through labels (i.e., the type of the professional) which does not explicitly alter or impact the steps, function, or structure of the claimed does not patentably distinguish the claimed invention from the prior art in terms of patentability.
Regarding Claim 10, Parker discloses the comprehensive confidential information management and communication system of claim 1. Parker further discloses,
where said authorized professional is an insurer (para. [0025] disclosing data set linked to the beneficiary, a notice would be sent to the insurance company and/or policy holder which means to communicate with the insurer).
Additionally, the Examiner refers to and incorporates MPEP § 2111.04 and 2111.05 as what said professional is supposed to be is directed towards descriptive language that fails to further limit or alter how the steps/functions of the invention are performed or limit or alter the structure of the invention. The Examiner asserts that the claimed invention fails to establish the criticality of labels, titles, or the like that have been assigned to “professional” as the claimed invention does not explicitly recite how the receiving and updating of the database are affected by the type of professional. The Examiner asserts that regardless of the title of the professional, the invention, as claimed, would be performed the same and have the same end result.
The Examiner asserts that the “professional” is merely label and add little, if anything, to the claimed invention and, thus, does not serve to distinguish over the prior art. Any differences related merely to the meaning and information conveyed through labels (i.e., the type of the professional) which does not explicitly alter or impact the steps, function, or structure of the claimed does not patentably distinguish the claimed invention from the prior art in terms of patentability.
Regarding Claim 11, Parker discloses the comprehensive confidential information management and communication system of claim 1. Parker further discloses,
where said authorized professional is a health-care facility (para. [0498] for healthcare provider national directory hospitals, care organizations, hospices palliative care providers, etc.).
Additionally, the Examiner refers to and incorporates MPEP § 2111.04 and 2111.05 as what said professional is supposed to be is directed towards descriptive language that fails to further limit or alter how the steps/functions of the invention are performed or limit or alter the structure of the invention. The Examiner asserts that the claimed invention fails to establish the criticality of labels, titles, or the like that have been assigned to “professional” as the claimed invention does not explicitly recite how the receiving and updating of the database are affected by the type of professional. The Examiner asserts that regardless of the title of the professional, the invention, as claimed, would be performed the same and have the same end result.
The Examiner asserts that the “professional” is merely label and add little, if anything, to the claimed invention and, thus, does not serve to distinguish over the prior art. Any differences related merely to the meaning and information conveyed through labels (i.e., the type of the professional) which does not explicitly alter or impact the steps, function, or structure of the claimed does not patentably distinguish the claimed invention from the prior art in terms of patentability.
Regarding Claim 12, Parker discloses the comprehensive confidential information management and communication system of claim 1. Parker further discloses,
where said authorized professional is a senior-living facility (Fig. for senior care agencies with para. [0495] disclosing senior assisted living facility. Para. [0015] senior service; Para. [0016] eldercare and elder life planning program).
Additionally, the Examiner refers to and incorporates MPEP § 2111.04 and 2111.05 as what said professional is supposed to be is directed towards descriptive language that fails to further limit or alter how the steps/functions of the invention are performed or limit or alter the structure of the invention. The Examiner asserts that the claimed invention fails to establish the criticality of labels, titles, or the like that have been assigned to “professional” as the claimed invention does not explicitly recite how the receiving and updating of the database are affected by the type of professional. The Examiner asserts that regardless of the title of the professional, the invention, as claimed, would be performed the same and have the same end result.
The Examiner asserts that the “professional” is merely label and add little, if anything, to the claimed invention and, thus, does not serve to distinguish over the prior art. Any differences related merely to the meaning and information conveyed through labels (i.e., the type of the professional) which does not explicitly alter or impact the steps, function, or structure of the claimed does not patentably distinguish the claimed invention from the prior art in terms of patentability.
Regarding Claim 13, Parker discloses a comprehensive confidential information management and communication method for information about a person accessed by professionals, the comprehensive confidential information management and communication method (Abstract and para. [0018], [0036] disclosing systems a method and computer program, and systems and products for implementation of same are provided that facilitate a final estate planning professional in evaluating a client's end of life plans) comprising:
(i) providing a comprehensive confidential information management and communication system (Abstract and para. [0018], [0036] disclosing systems a method and computer program, and systems and products for implementation of same are provided that facilitate a final estate planning professional in evaluating a client's end of life plans. Para. [0037] disclosing data processing system provides a hub and spoke configuration in which clients and vendors form the spokes linked to the planning and data storage hub) comprising:
(a) a confidential information management-system computer for storing and managing confidential information files in such a manner that each of the confidential information files is available to only an authorized category of users (Para. [0018], [0025], disclosing a computer program and software modules for acquiring, organizing, updating, analyzing and outputting data in labeled fields within a database. In para. [0038], [0047] disclosing LP/EOLP program generated plan is stored by the hub and is restricted access to an individual, such as an “informant,” lawyer, trustee, or family member. The access to client information can be limited to certain provisions of the LP/EOL plan);
(b) a software program module operable through said management-system computer to store and maintain the individual confidential information files (Para. [0018], [0025], disclosing a computer program and software modules for acquiring, organizing, updating, analyzing and outputting data in labeled fields within a database. In para. [0038], [0047] disclosing the client information for the LP/EOP program is stored and maintained in data storage);
(c) a rules-relationship database, including familial, territorial, legal, and business relationship categories, as specified by the person, accessible through said management-system computer (para. [0061] for data fields can be made variably accessible, a first group of data fields can be accessible by a first type of card Swipe device and/or access code while a Second group of data fields can be accessible by a Second type of card Swipe device and/or access code [having rules in the database for access of data fields based on codes]. In para. [0047] disclosing restricted access to individual such as “informant,” lawyer, trustee, vendor, and family member, which are representative of specified familial, territorial, legal, and business relationship categories. Para. [0036] disclosing the organizing data into four points of estate planning, specifically client fiscal and human/pet care responsibilities includes creditors, children, spouse, and employers. This covers familial, legal, and business relationships. Then in para. [0046] and [0051] discloses relational database that manages links and identifies geographical proximity (i.e., territorial) for vendor referrals);
(d) an information database accessible through said management-system computer (Abstract; and para. [0025], [0051] discloses central database or repository. para. [0062] for a relational database [having an information database] is used to manage LP/EOLP data, with one or more fields in a first dataset being updatable when one or more linked fields in a Second data Set are altered);
(e) an access controller operationally connected to said management-system computer and operable to securely control access to said management- system computer and said information database in accord with said rules-relationships database only to a category of authorized users previously specified by the person (Para. [0047] for clients can provide anytime/anywhere access, or restricted access, to their end-of-life plan to an individual, Such as an "informant," lawyer, trustee, or family member. The access to client information can be limited to certain provisions of the LP/EOL plan, and optionally in the case of a vendor. In [0019] and [0395] disclosing internet hub and access medium that uses a permanent file identification number and pass code to grant access to specific designated third parties or vendors (professionals) based on the user’s pre-set instructions);
(f) a program module configured in the management-system computer operable to permit analysis of each person's information, rules, and relationships by authorized category of users through the access controller (para. [0042] and [0051] discloses software that analyze the information for determining weaknesses in the user’s life plan. para. [0063] for identifying areas that should be investigated. The report will optionally include specific recommendations and Vendor referrals based on an automatic analysis performed by the computer program using actuarial tables [means for analysis of personal information with rules to match vendors to the needs of the Deni client] and other planning tools and/or based on analysis by a professional life planner with para. [0340] for they will have access to client records, however this access will be limited. Vendors will only be able to update client records for those clients that submitted information to the vendor and only that information which pertains to the service that the vendor will be providing the client (controlling vendor access with login and password]);
(g) a program module configured in the management-system computer operable to permit analysis and update of outside rules and information by authorized category of users through the access controller (Para. [0014] and [0063] discloses the use of actuarial table and other planning tools and integrates outside information from the healthcare industry, insurance industry, financial and investment industry to update the plan. Also, in para. [0051] for user via a Series of questions, also referred to herein as hierarchical interrogatories, Stores the information in data fields for future reference, analyzes the information for determining weaknesses in the user's life plans and/or end of life plans, and makes vendor referrals [means for analysis of information and inherent rules for filtering information by vendor services] By the use of a computer program, preferably accessible via the internet);
(h) a program module configured in the management-system computer operable to permit the person to authorize use of said comprehensive confidential information management and communication system by authorized users through the access controller upon demand (Para. [0019] and [0395] discloses authorization to access client record to transferees or designated third parties. Specifically, in para. [0069] for after the confirmation notice has been received, they will be able to login [providing authorizing credentials to access confidential information on estate planning] into the Final Estate Planning System program to begin completing items on the Final Estate Planning Checklist, or" FEPCL," or into a life planning checklist. A member login link is provided on the web site's home page. Para. [0017], [0023], [0038], [0047], and [0051] disclosing users can access, store, and retrieve the implemented life plans when needed which is representative of “upon demand”);
(i) a program module configured in the management-system computer operable to permit the person to continuously update information in said rules-relationships database (para. [0037], [0040] discloses the clients can remotely access said program, enter personal data, and store said data and can update information in response to said inquiries on a continuous basis. In para. [0067]-[0068] states information provided during the registration process will be used throughout the Final Estate planning process allowing the System to track the users progress and allow them to update their information with paragraph [0019] for Stored client data is accessible for updating by the client [means for person to update their information in the hub or database], the program provider hub operator, and in certain circumstances by resource Vendors, employers, and designated third parties. In an embodiment, an automated System for facilitating multi-party interactions between geographically Separated entities for EOLP. In para. [0025], [0048], and [0051], disclosing the computer program can update and output all of the data an automatically updatable via access to linked databases, which discloses the continuous updating information in databases);
(j) a program module configured in the management-system computer operable to permit the person to continuously update information in said information database (para. [0037], [0040] discloses the clients can remotely access said program, enter personal data, and store said data and can update information in response to said inquiries on a continuous basis. In para. [0067] states information provided during the registration process will be used throughout the Final Estate planning process allowing the System to track the users progress and allow them to update their information. In para. [0025], [0048], and [0051], disclosing the computer program can update and output all of the data an automatically updatable via access to linked databases, which discloses the continuous updating information in databases);
(k) a program module configured in the management-system computer operable to permit an authorized category of a professional to update information in said information database through the access controller upon demand (In para. [0022] discloses that a vendor (professional) can update client information stored by the program administrator. Para [0047] for access to client information can be limited to certain provisions of the LP/EOL plan, and optionally in the case of a vendor (e.g., insurance), information can be updated by the vendor [allowing professional to update information] with paragraph 52 for Virtual databases may also be used that treat Several databases as if they were a single database. Conventional relational databases with Specialized tools for On-Line Analytical Processing. Para. [0017], [0023], [0038], [0047], and [0051] disclosing users can access, store, and retrieve the implemented life plans when needed which is representative of “upon demand”); and
(l) a program module configured in the management-system computer operable to permit an authorized category of a professional to receive relevant updated information from said information database through the access controller (para. [0022] and [0271] discloses the system provides for individuals to be provided with a vendor referral and allows professionals to access stored client LP plan data to provide updated services. In para [0048] states automatic links to client asset and liability accounts is also provided, and premium notice and payment Status for important assets, Such as life insurance policies, is automatically updated in the clients LP plan file stored by the hub with paragraph [0051] for a program accessible from the internet can be updated without requiring creation and distribution of new hard copies of the program although program copies can be provided to professional planners under a separate fee program, the planners would then upload their clients data to the hub for a fee [updating of data by professionals and means to receive updated information]);
(ii) accepting authorization, through the access controller, from the person for use of said comprehensive confidential information management and communication system (Para. [0019], [0022] disclosing the system is accessed via a unique storage identity code and that professionals only receive data provided it is authorized by the particular client. In para. [0069] for once the client has completed and submitted the registration form they will be prompted to enter a password that will be used to access [accepting authorization with the correct password] a Final Estate Planning System program. Various program modules);
(iii) entering, through the access controller, updated information from the person into said rules-relationships database (Para. [0037], [0040] discloses a method for maintaining, updating client information and asset data via an interactive program or questionnaire. Para. [0069] for client may receive a confirmation email that includes their user identification number. After the confirmation notice has been received, they will be able to login into the Final Estate Planning System program to begin completing items on the Final Estate Planning Checklist [updated information in the system once authorization has been confirmed] or" FEPCL," or into a life planning checklist);
(iv) entering, through the access controller, updated information from the person into said information database (Para. [0037], [0040] discloses a method for maintaining, updating client information and asset data via an interactive program or questionnaire. Para. [0067] for information provided during the registration process will be used throughout the Final Estate planning process allowing the System to track the users progress and allow them to update their information);
(v) performing, through the access controller, analysis of the person's updated information, rules, and relationships (para. [0037] for a data processing System and method for obtaining, Storing and analyzing client information, as well as for linking clients with Vendors, and vendors with vendors. Para. [0051], [0063] discloses the computer program analyzes the information for determining weaknesses and provides specific recommendations);
(vi) performing, through the access controller, analysis and update of outside rules and information (para. [0051] for user via a Series of questions, also referred to herein as hierarchical interrogatories, Stores the information in data fields for future reference, analyzes the information for determining weaknesses in the user's life plans and/or end of life plans, and makes vendor referrals [means for analysis of information and inherent rules for filtering information by vendor services] By the use of a computer program, preferably accessible via the internet. In para. [0014], [0063] discloses the integrations of external actuarial tables and industry resources to ensure the plan is current with outside conditions);
(vii) allowing, through the access controller, authorized category of professionals to update information in said information database in accord with rules in said rules-relationships database upon demand (para. [0047] disclosing the access to client information can be limited LP/EOL plan, and optionally in the case of vendor (e.g., insurance) information can be updated by the vendor [allowing professional to update information] with para. [0052] for Virtual databases may also be used that treat Several databases as if they were a single database. Conventional relational databases with Specialized tools for On-Line Analytical Processing. Para. [0022] discloses the vendor (professional) can update the client’s stored information (e.g., an insurance provider updating coverage limits)); and
(viii) allowing, through the access controller, authorized category of professionals to receive relevant updated information from said information database in accord with rules in said rules-relationships database (paragraph [0048] for automatic links to client asset and liability accounts is also provided, and premium notice and payment Status for important assets. Such as life insurance policies, is automatically updated in the clients LP plan file stored by the hub with paragraph 51 for a program accessible from the internet can be updated without requiring creation and distribution of new hard copies of the program although program copies can be provided to professional planner sunder a separate fee program, the planners would then upload their clients data to the hub for a fee [updating of data by professionals and means to receive updated information]. In para. [0271] discloses the system automatically transmits relevant information to authorized vendors to implement the client’s wish).
Response to Remarks
RE: Priority
The Applicant asserts “Applicant respectfully points out that there is no requirement that the claims of a continuation-in-part (CIP) application be fully disclosed in a parent application.” “Applicant respectfully requests reconsideration of the claim of priority of the present CIP application and acknowledgment of the earlier priority date based on the filing date of the parent application, September 12, 2018.”
The Examiner respectfully disagrees. See MPEP 2133.01:
“The effective filing date of a claimed invention is determined on a claim-by-claim basis and not an application-by-application basis. See MPEP § 2139.01 for guidance in determining the effective filing date of a claimed invention under pre-AIA 35 U.S.C. 102.
When applicant files a continuation-in-part application, none of whose claims are supported by the parent application under pre-AIA 35 U.S.C. 112, first paragraph, the effective filing date is the filing date of the child CIP. Any prior art disclosing the invention or an obvious variant thereof having a critical reference date more than 1 year prior to the filing date of the child will bar the issuance of a patent under pre-AIA 35 U.S.C. 102(b). Paperless Accounting v. Bay Area Rapid Transit System, 804 F.2d 659, 665, 231 USPQ 649, 653 (Fed. Cir. 1986).
Any claim that only contains subject matter that is fully supported in compliance with the statutory requirements of pre-AIA 35 U.S.C. 112, first paragraph, by the parent application of a CIP will have the effective filing date of the parent application. On the other hand, any claim that contains a limitation that is only supported as required by pre-AIA 35 U.S.C. 112, first paragraph, by the disclosure of the CIP application will have the effective filing date of the CIP application. See, e.g., Santarus, Inc. v. Par Pharmaceutical, Inc., 694 F.3d 1344, 104 USPQ2d 1641 (Fed. Cir. 2012)(patent issuing from parent application was relied upon as prior art against the claims in CIPs that did not find support in the parent application); Studiengesellschaft Kohle, m.b.H. v. Shell Oil Co., 112 F.3d 1561, 1564, 42 USPQ2d 1674 (Fed. Cir. 1997)(“To qualify for an earlier filing date, section 120 requires, inter alia, that the earlier-filed U.S. patent application contain a disclosure which complies with 35 U.S.C. § 112, p 1 (1994) for each claim in the newly filed application. Thus, this benefit only applies to claims that recite subject matter adequately described in an earlier application, and does not extend to claims with subject matter outside the description in the earlier application.”).”
On pages 10-11 of the remarks, the Applicant provided paragraphs [0013], [0020], and [0032] of the parent application, which the citations only provided an introduction or summary the claim invention but does not provide support to the claim limitations and the computer functions.
If the Applicant believes the claims of the CIP is fully disclosed in the description of the parent application, then the Examiner respectfully requests referencing paragraphs of each claim limitations and the Examiner will reconsider the claim priority of the present CIP application.
The parent application 16/128,814 fails to provide support for the amended claims of present CIP application, therefore, the earliest effective filing date of the instant application is its filing date of May 25, 2022.
35 U.S.C. 101 Rejection:
The Applicant’s remarks are fully considered, however, are found to be unpersuasive.
The Applicant provided a conclusory assertion that the claimed invention utilizes structured input analysis, machine-based filtering, and real-time automation. The Applicant fails to provide any support for the assertion. Therefore, the remark is found to be unpersuasive.
The Applicant fails to provide persuasive argument for “solves a technological problem.” That is, the asserted technological improvement is not reflected in the specification nor the claims. The use of computer system for storing and providing access to authorized users from storage in a convenience (e.g., more efficient, faster, and etc.) has been held not be an “inventive concept” or specific improvement, see MPEP 2106.05(f)(2), “claiming the improved speed or efficiency inherent with applying the abstract idea on a computer” does not integrate a judicial exception into a practical application or provide an inventive concept. Intellectual Ventures I LLC v. Capital One Bank (USA), 792 F.3d 1363, 1367, 115 USPQ2d 1636, 1639 (Fed. Cir. 2015). A process for monitoring audit log data that is executed on a general-purpose computer where the increased speed in the process comes solely from the capabilities of the general-purpose computer, FairWarning IP, LLC v. Iatric Sys., 839 F.3d 1089, 1095, 120 USPQ2d 1293, 1296 (Fed. Cir. 2016).
In the case of the instant invention, the Examiner asserts that the claimed invention does not lie with the improvement of a technology, identifying and resolving an issue that arose from the technology, or that the claimed invention is “deeply rooted in the technology”, but merely demonstrating that the claimed invention is directed towards the abstract idea and merely applying or utilizing generic computing devices performing their generic functions in the technical field of managing and providing confidential information due to the benefits that computing devices provided (e.g., more efficient, faster, and etc.).
As reflected in Enfish, there is a fundamental difference between computer functionality improvements (improvement of the technology or technical field), on the one hand, and uses of existing computers as tools to perform a particular task (collecting, analyzing, and displaying information), on the other. The alleged advantages that the Applicant touts do not concern an improvement to computer capabilities or any machinery but instead relate to an alleged improvement in storing, accessing, transmitting and analyzing information for a desirable result, which a computer is used as a mere tool in its ordinary capacity, as discussed in MPEP 2106.05(f). The computer system, itself is merely used (“apply it”) for the expected result of convenience and time saving. The claims do not reflect an improvement to the technology of the computer functionalities, other than, by using the additional elements of the computer system, which the desired result can be produced without a doubt or concern to the technological details on how the result is accomplished. That is, the computer system itself or specific technology is not improved in anyway other than being applied as a tool/instrument for the judicial exception (abstract idea).
Thus, the 101 rejection is maintained.
35 U.S.C. 102 and 103 Rejections:
The Applicant’s remarks are fully considered, however, are found to be unpersuasive.
Further, the Examiner asserts that the Applicant’s remarks are directed towards amended claim limitations and are, therefore, considered moot. However, the Examiner has responded to the amended amendments, which the remarks are directed to, in the rejection above, thereby addressing the Applicant’s remarks. Although the remarks are deemed moot, the Examiner will still address the remarks below.
The Applicant asserts, “In Parker, the vendors do not have the ability to update the person’s information upon demand, for instance in the event of tax law changes or estate law changes and make those changes available for the client’s approval. Thus, the person does not have the most current information on a continuous basis, before incapacity or death, such as possible through the use of the system of the present application.”
The Applicant’s remarks are conclusory and fail to point out which claim limitation that Parker fails to disclose. The Examiner respectfully disagrees with the Applicant’s assertion above. In para. [0017], [0023], [0038], [0047], and [0051] of Parker discloses users can access, store, and retrieve the implemented life plans when needed (i.e., upon demand). In Parker: para. [0025], [0048], and [0051], disclosing the computer program can update and output all of the data an automatically updatable via access to linked databases. Parker uses the terms “planning tools” and “actuarial tables”. These are the industry terms for the data sets that incorporate tax and estate law changes. In para. [0014], parker discloses the system integrates disparate aspects of life planning, including legal advisors, estate planners and government programs, which indicates the system is designed to be responsive to legal and regulatory frameworks managed in these industry fields. In para. [0063] of Parker discloses the system provides specific recommendations and vendor referrals based on automatic analysis performed by the computer program using actuarial table and other planning tools, which reflects current tax codes and probate laws. Specifically, in para. [0271] of Parker disclose the system’s ability to correct and update data and its capacity to store a variety of types of information from various sources in one location. In para. [0022]-[0023] of Parker discloses the vendor (professional) can update client information stored by the program administrator for a product or service supplied by the vendor. This allows the professional to push updates into the system when, for example, a law change requires a change in insurance policy or a trust structure. Thus, Parker does disclose the assertion from above.
Previous 103 rejection has been withdrawn and New 102 rejection has been added in light of the amended claims.
Relevant Prior Art Not Relied Upon
The prior art made of record and not relied upon is considered pertinent to Applicant’s disclosure. The additional cited art, including but not limited to the excerpts below, further establishes the state of the art at the time of Applicant’s invention and shows the following was known:
Candrian C, Tate C, Broadfoot K, Tsantes A, Matlock D, Kutner J. Designing Effective Interactions for Concordance around End-of-Life Care Decisions: Lessons from Hospice Admission Nurses. Behav Sci (Basel). 2017 Apr 18;7(2):22. doi: 10.3390/bs7020022. PMID: 28420191; PMCID: PMC5485452. which teaches the planning around End-of-Life Care Decisions.
Fallon (US 20020111946 A1) is directed to a system and method for assisting individuals in putting their affairs in order using a universal integrated organizer with personal legacy planning and personal on-line storage. The system includes a secure Web site that allow a user to assemble and submit documents, records, lists of information, etc., that form part of a comprehensive estate plan and also documents of a personal nature. Certain documents and information such as medical records, tax returns, etc., can also be submitted by other individuals. The system organizes the information and documents in a set of folders such as a Personal Folder, Medical Folder, Legal Folder, and Financial Folder. The system encrypts the information before transmission to the Web site. The information is stored securely and can subsequently be accessed and changed only by the user. Upon the death or incapacitation of the user or other designated condition, the stored information can be accessed by authorized representatives such as a trusted individual through financial institutions such as a bank or insurance company.
Niekerk (US 20180137585 A1) is directed to an estate management platform for administering estate data of a person, which includes a remote access interface for receiving incoming data connections, the remote access facility having secure data access facility and being operable to access an estate database and an estate database, including a predefined structure of estate categories for storing estate data of a person in predefined estate categories.
Conclusion
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/WENREN CHEN/Primary Examiner, Art Unit 3626