DETAILED ACTION
1. Notice of Pre-AIA or AIA Status
The present application is being examined under the pre-AIA first to invent provisions.
2. Status of Application and Claims
Claims 33, 34, 36-41, 43, 44 and 46-51 are pending.
Claims 33 and 43 amended or newly added in the Applicant’s filing on 1/21/2026.
This office action is being issued in response to the Applicant's filing(s) on 1/21/2026
3. Claim Interpretation
The subject matter of a properly construed claim is defined by the terms that limit its scope when given their broadest reasonable interpretation. see MPEP §2013(I)(C). Specifically, the “broadest reasonable construction ‘in light of the specification as it would be interpreted by one of ordinary skill in the art.’” See MPEP §2111, citing Phillips v. AWH Corp., 75 USPQ2d 1321, 1329 (Fed. Cir. 2005). However, “[t]hough understanding the claim language may be aided by explanations contained in the written description, it is important not to import into claim limitations that are not part of the claim.” See MPEP §2111.01, citing Superguide Corp. v. DirecTV Enterprises, Inc., 69 USPQ2d 1865, 1868 (Fed. Cir. 2004). Construing claims broadly during prosecution is not unfair to the applicant, because the applicant has the opportunity to amend the claims to obtain more precise claim coverage. See MPEP §2111, citing In re Yamamoto, 222 USPQ 934, 936 (Fed. Cir. 1984).
As a general matter, grammar and the plain meaning of terms as understood by one having ordinary skill in the art used in a claim will dictate whether, and to what extent, the language limits the claim scope. See MPEP §2013(I)(C). Language that suggests or makes a feature or step optional but does not require that feature or step does not limit the scope of a claim under the broadest reasonable claim interpretation. See MPEP §2013(I)(C).
As such, claim limitations that contain statement(s) such as “if,” “may,” “might,” “can,” and “could” are treated as containing optional language. See MPEP §2013(I)(C). As matter of linguistic precision, optional claim elements do not narrow claim limitations, since they can always be omitted. See MPEP §2013(I)(C).
Similarly, a method step exercised or triggered upon the satisfaction of a condition, where there remains the possibility that the condition was not satisfied under the broadest reasonable interpretation, is an optional claim limitation. See MPEP §2111.04(II). As the Applicant does not address what happens should the optional claim limitations fail, Examiner assumes that nothing happens (i.e., the method stops). An alternate interpretation is that merely the claim limitations based upon the condition are not triggered or performed.
In addition, when a claim requires selection of an element from a list of alternatives, the prior art teaches the element if one of the alternatives is taught by the prior art. See MPEP §2143.03, citing Fresenius USA, Inc. v. Baxter Int’l, Inc., 582 F.3d 1288, 1298 (Fed. Cir. 2009);
Language in a method or system claim that states only the intended use or intended result, but does not result in a manipulative difference in the steps of the method claim nor a structural difference between the system claim and the prior art, fails to distinguish the claims from the prior art.
The following types of claim language may raise a question as to its limiting effect (this list is not exhaustive):
Statements of intended use or field of use, including statements of purpose or intended use in the preamble. See MPEP §2111.02;
Clauses such as “adapted to”, “adapted for”, “wherein”, and “whereby.” See MPEP §2111.04;
Contingent limitations. See MPEP §2111.04(II);
Printed matter. See MPEP §2111.05; and
Functional language associated with a claim term. See MPEP §2181.
As such, while all claim limitations have been considered and all words in the claims have been considered in judging the patentability of the claimed invention, the following italicized, underlined and/or boldened language is interpreted as not further limiting the scope of the claimed invention.
Additionally, the following italicized, underlined and emboldened language is not necessarily an exhaustive list of claim language that is interpreted as not further limiting the scope of the claimed invention. Applicant should review all claims for additional claim interpretation issues.
Claim 43 recites a method comprising:
generating, via the second user interface, of the user device, a work area and an icon that is moveable to and from the work area, the icon labelled as a specific spending category of the one or more spending categories displayed by the second user interface.
Claim elements pertain to nonfunctional descriptive material (i.e., the label assigned to the icon) and are not functionally involved in the steps recited. Thus, this descriptive material will not distinguish the claimed invention from the prior art in terms of patentability. See MPEP §2111.05 (III).
Additionally, under the broadest reasonable interpretation, there is only one spending category displayed by the second user interface, the specific spending category corresponding to the icon label.
Claim 33 has similar issues.
Claim 43 recites a method comprising
when the icon is moved to the work area, the second user interface generates an interface that receives basic detail information or high detail information regarding the spending category; and
when the icon is not moved to the work area, the second user interface does not generate the interface and does not receive basic detail information or high detail information regarding the spending category;
Method claims are defined by the method steps being actively performed (i.e., generating an interface), not method steps that may or may not be performed. Reciting a system element (i.e., an interface) in a method claim is configured to perform a method step (i.e., that receives basic detail information or high detail information) does not mean that the method step is actually performed (i.e., receiving basic detail information or high detail information).
Claim 43 recites a method comprising:
displaying, via the second user interface of the user device, an investor personality description screen having an interface that receives answers to a statistically significant question-set, the investor personality screen displaying a graphic including an interest axis and a confidence axis with, a user's placement on the interest and confidence axes being a statistically significant placement on the interest and confidence axes generated by the answers.
Method claims are defined by the method steps being actively performed (i.e., displaying an interface), not method steps that may or may not be performed. Reciting a system element (i.e., an interface) in a method claim is configured to perform a method step (i.e., that receives answers to a statistically significant question-set) does not mean that the method step is actually performed (i.e., receiving answers to a statistically significant question-set).
Additionally, method claims are defined by the method steps being actively performed (i.e., displaying a graphic), not method steps performed in the past (i.e., placement on the axes is generated by the answers). Claiming method steps in the past tense can be interpreted as the method steps performed in the past are outside the scope of the claimed method. Alternatively stated, the scope of the claimed method are the active method steps which are building off a pre-existing state. The method steps performed for creation of the pre-existing state are outside the scope of the claimed invention.
Claim 44 recites a method comprising:
scanning, via the branch device, drivers license to generate the user driver license identification information.
Method claims are defined by the method steps being actively performed (i.e., scanning a drivers licencse), not method steps possibly performed in the future (i.e., to generate user driver license information). Claiming method steps in the future tense can be interpreted as the method steps possibly performed in the future are outside the scope of the claimed method.
4. 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 33, 34, 36-41, 43, 44 and 46-51 are rejected under 35 U.S.C. § 101 because the claimed invention is directed to an abstract idea without significantly more.
STEP 1
The claimed invention falls within one of the four statutory categories of invention (i.e., process, machine, manufacture and composition of matter). See MPEP §2106.03.
STEP 2A – PRONG ONE
The claim(s) recite(s) a method and/or a system to configured to perform a method comprising:
determining, …, a target asset level necessary for the user to fund a retirement considering expected retirement spend for a spending category the expected retirement spend falls within, and associate the target asset level with the user driver license identification information;
…
generating … [a data element] labelled as a specific spending category of other one more spending categories, wherein …, based on the target asset level;
…
… receives basic detail information or high detail information regarding the spending category;
…
displaying, …, an investor personality description … having an interface that receives answers to a statistically significant question-set, the investor personality … displaying a graphic including an interest axis and a confidence axes being a statistically significant placement generated by the answers;
providing, …, suggested investments based on the statistically significant placement on the interest and confidence axes.
These limitations, as drafted, under its broadest reasonable interpretation, covers a series of steps instructing how to determine recommended investments to fund a future funding need (i.e., retirement funding) which is a fundamental economic practice, a sub-category of certain method(s) of organizing human activity, an enumerated grouping of abstract ideas. See MPEP §2106.04(a)(2)(II)(A).
Examiner notes that selecting investments to fund a future funding need is mitigation of financial risk and that the mitigation of financial risk is a court-provided example of a fundamental economic practice. See MPEP §2106.04(a)(2)(II)(A), citing Alice Corp. v. CLS Bank, 573 U.S. 208, 218, 110 USPQ2d 1976, 1982 (2014).
Additionally, these limitations, as drafted, under its broadest interpretation, covers a series of steps that can be practically performed in the human mind (e.g., observations, evaluations, judgments and opinions) which are mental process, a second enumerated grouping of abstract ideas. See MPEP §2106.04(a)(2)(III).
Examiner notes that “’collecting information, analyzing it, and displaying certain results of the collection and analysis,’ where the data analysis steps are recited at a high level of generality such that they could practically be performed in the human mind” is a mental process. See MPEP §2106.04(a)(2)(III)(A) citing Electric Power Group v. Alstom, SA. (Fed. Cir. 2016).
Accordingly, the claimed invention recites an abstract idea.
STEP 2A – PRONG TWO
The claimed invention recites additional elements (i.e., computer elements) of a computer device(s) (Claim(s) 33 and 43), user interface(s) (Claim(s) 33 and 43), a printer device (Claim(s) 33) and 43), branch device(s) (Claim(s) 43), user device(s) (Claim(s) 43), graphical display(s) (Claim(s) 33), a computer readable code (Claim(s) 33 and 43), and a (computer) icon (Claim(s) 33 and 43).
The claimed invention does not include additional elements that integrate the judicial exception into a practical application of the exception because the claims do not provide improvements to another technology or technical field; improvements to the functioning of the computer itself; are not applying or using a judicial exception to effect a particular treatment or prophylaxis for a disease or medical condition; are not applying the judicial exception with or by use of a particular machine; are not effecting a transformation or reduction of a particular article to a different state or thing; and are not applying the judicial exception in some other meaningful way beyond generally linking the use of the judicial exception to a particular technological environment. See MPEP §2106.04(d).
The additional elements are recited at a high-level of generality such that it amounts no more than mere instructions to apply the exception using a generic computer component. See MPEP §2106.05(f). Alternately, the additional elements amount to no more than generally linking the exception to a particular technological environment or field of use. See MPEP §2106.05(h). Accordingly, these additional element(s), when considered separately and as an ordered combination, do not integrate the abstract idea into a practical application because it does not impose any meaningful limits on practicing the abstract idea.
Accordingly, the claimed invention is directed to an abstract idea without a practical application.
STEP 2B
Upon reconsideration of the indicia noted under Step 2A in concert with the Step 2B considerations, the additional claim element(s) amounts to adding the words “apply it” (or an equivalent) with the judicial exception, or mere instructions to implement an abstract idea on a computer. See MPEP §2106.07(a)(II). The same analysis applies in Step 2B, i.e., mere instructions to apply an exception using a generic computer component cannot integrate a judicial exception into a practical application at Step 2A or provide an inventive concept in Step 2B. The claim does not provide an inventive concept significantly more than the abstract idea.
Accordingly, these additional elements, when considered separately and as an ordered combination, do not integrate the abstract idea into a practical application because they do not impose any meaningful limits on practicing the abstract idea.
DEPENDENT CLAIMS
Dependent Claim(s) 34, 36-41, 44 and 46-51 recite claim limitations that further define the abstract idea recited in respective independent Claim(s) 33 and 43. As such, the dependent claims are also grouped an abstract idea utilizing the same rationale as previously asserted against the independent claims.
No additional computer components other than those found in the respective independent claims is recited, thus it is presumed that the claim is further utilizing the same generically recited computer.
As such, the dependent claims do not include any additional elements that integrate the abstract idea into a practical application of the judicial exception or are sufficient to amount to significantly more than the judicial exception when considered both individually and as an ordered combination.
Accordingly, the dependent claim(s) are also not patent eligible.
Appropriate correction is requested.
5. Claim Rejections - 35 USC § 112(b)
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 33, 34, 36-41, 43, 44 and 46-51 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 33 recites a system wherein:
when the icon is moved to the work area, the second user interface generates an interface for receiving basic detail information or high detail information regarding the spending category; and
when the icon is not moved to the work area, the second user interface does not generate the interface for receiving basic detail information or high detail information regarding the spending category;
display an investor personality description screen having an interface requiring a user to answer a statistically significant question-set, the investor personality screen displaying a graphic including an interest axis and a confidence axis with, a user's placement on the interest and confidence axes being a statistically significant placement on the interest and confidence axes generated by the answers; and
provide suggested investments based on the statistically significant placement on the interest and confidence axes.
Claim 33, as written, contain terms that are subjective or determinations of whether the claim limitations are satisfied are subjective. Specifically, said claims contain terminology such as high detail, basic detail and statistically significant. Claims are indefinite in circumstances where a claim contains a term that is completely dependent on a person’s subjective opinion. See MPEP §2173.05(b)(IV). As such, claims containing the cited claim limitations are rejected under §112, 2nd paragraph.
Claim 43 has similar issues.
Claims 34, 36-41, 44 and 46-51 are rejected based upon their dependency to prior rejected claims.
Appropriate correction is requested.
6. Claim Rejections - 35 USC § 103
The following is a quotation of pre-AIA 35 U.S.C. 103(a) which forms the basis for all obviousness rejections set forth in this Office action:
(a) A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries for establishing a background for determining obviousness under pre-AIA 35 U.S.C. 103(a) are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claims 33, 34, 36-41, 43, 44 and 46-51 is/are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Sloan (US PG Pub. 2002/0095363) in view of Carr (US PG Pub. 2004/0049401) and Charnley (US PG Pub. 2004/0117286).
Regarding Claim 43, Sloan discloses a computer-implemented method for investment services, the method comprising:
generating a first user interface for display via a first graphical display of a branch device (one device or computer terminal of a plurality of devices or computer terminals). (see fig. 1; para. 37-40);
printing a card, via a printer device, having computer readable code. (see para. 72);
determining, via the branch device, a target asset level (cash needed or cash flow requirements) necessary for the user to fund a retirement considering expected retirement spend (projected expenses) for a spending category (luxury or necessity expense) the expected retirement spend (expense) falls within and associating the target asset level with the user information (customer file). (see para. 52, 56, 64, 67, 69, 76, 79 and 89);
generating a second user interface for display via a second graphical display of a user device (another device or computer terminal of a plurality of devices or computer terminals) that is separate and distinct from the branch device (one device or computer terminal of a plurality of devices or computer terminals). (see fig. 1; para. 37-40);
generating, via the second user interface, of the user device, a work area and an icon (point) that is moveable to and from the work area, the icon labelled as a specific spending category of the one or more spending categories displayed by the second user interface, wherein, based on the target asset level (see para. 74);
when the icon is moved (dragged) to the work area, the user interface generates an interface that receives basic detail information or high detail information (data entry) regarding the spending category. (see para. 74);
when the icon is not moved to the work area, the user interface does not generate an interface and does not receive basic detail information or high detail information regarding the spending category to receive input information. (see para. 74);
displaying, via the user interface on the user device, an investor personality description screen having an interface that receives a user to answer statistically significant question-set (data entry). (see fig. 18-19; para. 95-96);
displaying an interest (allocation) and a confidence (risk), wherein a user's placement on the interest and confidence axes is being a statistically significant placement on the interest and confidence axes generated by answers. (see fig. 18; para. 95); and
providing, via the user interface of the user, suggested investments (product recommendations) based on the statistically significant placement on the interest and confidence. (see para. 58-60).
Sloan does not teach a method comprising printing a card, via the first user interface, having computer readable code encoded with user driver license identification information; or capturing, via an image capturing device, an image of the computer readable code of the card.
Sloan does teach a method wherein the user information associated with the target asset level is user driver license identification information.
Carr discloses a method comprising:
printing a card (driver license), having computer readable code encoded with user driver license identification information (name). (see para. 102);
associating (linking) information with user driver license identification information. (see abstract); and
capturing, via an image capturing device (reader device) of the user device, an image of the computer readable code of the card. (see para. 102).
It would have been obvious to one of ordinary skill before the effective filing date of the claimed invention to have modified Sloan to incorporate image capturing mechanisms, as disclosed by Carr, thereby enhancing system security and authentication.
Sloan does not teach a method wherein the interest and confidence are communicated through an interest axis and a confidence axis.
Charnley discloses a method wherein the interest and confidence are communicated through an interest axis and a confidence axis. (see fig. 1-6B; para. 50-58).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified Sloan and Carr to incorporate the communication of information utilizing axis (i.e., via a graph), as disclosed by Charnley, thereby visually communicating information to the user.
Regarding Claims 44, 46 and 47, Sloan does not recite a method comprising scanning, via the branch device, a driver’s license to generate the user driver license identification information; the card has computer readable code and human readable code; or the computer readable code includes a bar code.
Carr discloses a method comprising:
scanning, via the branch device, a driver’s license to generate the user driver license identification information (data). (see para. 42-44);
the card has computer readable code (bar code or text) and a human readable code (text). (see para. 102); and
the computer readable code includes a bar code. (see para. 102).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified Sloan, Carr and Charnley to incorporate the scanning of documents, as disclosed by Carr, thereby enabling easier data entry via automated means.
Regarding Claim 48, Sloan discloses a method wherein the branch device is at a physical location that differs from a physical location of the user device. (fig. 1-2 and 4; para. 37-40).
Regarding Claim 49, Sloan discloses a method comprising generating prepopulated values indicating an expected level of spend for the user in the spending category (based on data in customer information file database or expense history residing on external database). (see para. 67 and Claim 2).
Regarding Claims 33, 34, 36-41 and 50-51, such claims recite substantially similar limitations as claimed in previously rejected claims and, therefore, would have been obvious based upon previously rejected claims.
7. Response to Arguments
Applicant's arguments filed 1/21/2026 have been fully considered but they are not persuasive.
§101 Rejection
Step 2A Prong One
Applicant argues that the claims are not directed to an abstract idea. See Arguments, p. 15.
“[D]irected to” is not the proper standard for analysis under Step 2A Prong One of the §101 Guidelines.
MPEP §2106.04(a) recites:
Examiners should determine whether a claim recites an abstract idea by (1) identifying the specific limitation(s) in the claim under examination that the examiner believes recites an abstract idea, and (2) determining whether the identified limitations(s) fall within at least one of the groupings of abstract ideas listed above. The groupings of abstract ideas, and their relationship to the body of judicial precedent, are further discussed in MPEP § 2106.04(a)(2).
The proper standard under Step 2A Prong One of the §101 Guidelines is whether the claims recite an abstract idea.
The claims recite an abstract idea, specifically the claims recite a series of steps instructing how determine recommended investments to fund a future funding need (i.e., retirement funding) which is a fundamental economic practice, a sub-category of certain method(s) of organizing human activity, an enumerated grouping of abstract ideas, and a mental process, a second enumerated grouping of abstract idea.
Applicant further argues:
To the contrary, the claims require a specifically configured system to cause system components to interface via a centrally accessed platform for information dissemination and activities delegation. This is achieved by a specific coordination of activities performed by the system. In addition, first and second user interfaces (UIs) facilitate access to the system to automatically acquisition and present pertinent data based on a multitude of factors and variables, wherein the interaction with the UIs simultaneously and automatically delegates tasks within the system. As a non-limiting example, one of the benefits of the claimed invention is to allow a user to enter a first set of data at a public computer device and then access the first set of data on a private computer device, as well as enter a second set of data. A user can only access the second set of data through the use of a card that is obtained from the public computer device. See Arguments, p. 15.
The Examiner is uncertain what the Applicant is arguing.
Examiner acknowledges that the claimed invention recites a computer system and multiple user interfaces through which the judicial exception is performed. However, utilization of computer elements to enable performance of a judicial exception does not negate the fact that the claimed invention recites a judicial exception.
These additional claim elements (i.e., the computer system and user interfaces) are examined in Step 2A Prong Two, to determine whether any of additional elements in the claim integrate the abstract idea into a practical application. See MPEP §2106.05(f)(2).
The Applicant further argues:
One of the improvements to existing remote access systems provided by the claims includes facilitating investment services across multiple media and multiple locations via access to certain data and data analyses by a differentiated data access scheme, the differentiated access allowing for access to certain data. In addition, the system dynamically adjusts its suggested investments based on the statistically significant placement on the interest and confidence axes. The claimed system improves upon the interaction of its operating modules, thus improving upon the operation of system itself and constitutes a technological improvement. See Arguments, pp. 15-16 – emphasis added.
Examiner notes that the Applicant asserts this argument under Step 2A Prong One.
However, arguing that the claimed invention constitutes a “technological improvement” is an argument pertaining to Step 2A Prong Two. “[A]n improvement in the functioning of a computer, or an improvement to other technology or technical field” is one alternative to establish that the additional elements demonstrate a practical application of the judicial exception. See MPEP §2106.04(d).
Even if the claimed invention amounts to “an improvement in the functioning of a computer, or an improvement to other technology or technical field” under Step 2A Prong Two, the claimed invention still recites an abstract idea under Step 2A Prong One.
Step 2A Prong Two
Applicant argues that the claimed invention recites a practical application. See Arguments, p. 18.
The Applicant does not explicitly recite which of the five potential avenues for establishing the practical application is being utilized in this section.
However, previously, under the Step 2A Prong One heading, the Applicant argued:
One of the improvements to existing remote access systems provided by the claims includes facilitating investment services across multiple media and multiple locations via access to certain data and data analyses by a differentiated data access scheme, the differentiated access allowing for access to certain data. In addition, the system dynamically adjusts its suggested investments based on the statistically significant placement on the interest and confidence axes. The claimed system improves upon the interaction of its operating modules, thus improving upon the operation of system itself and constitutes a technological improvement. See Arguments, pp. 15-16 – emphasis added.
Examiner assumes that the Applicant is arguing that the additional elements (i.e., computer elements) results in “an improvement in the functioning of a computer, or an improvement to other technology or technical field,” and, as such, satisfies Step 2A Prong Two of the §101 Guidelines.
The Examiner respectfully disagrees.
MPEP §2106.05(a) recites:
If it is asserted that the invention improves upon conventional functioning of a computer, or upon conventional technology or technological processes, a technical explanation as to how to implement the invention should be present in the specification. That is, the disclosure must provide sufficient details such that one of ordinary skill in the art would recognize the claimed invention as providing an improvement. The specification need not explicitly set forth the improvement, but it must describe the invention such that the improvement would be apparent to one of ordinary skill in the art. Conversely, if the specification explicitly sets forth an improvement but in a conclusory manner (i.e., a bare assertion of an improvement without the detail necessary to be apparent to a person of ordinary skill in the art), the examiner should not determine the claim improves technology. – emphasis added.
The specification does not provide any evidence that there is a technical problem (i.e., a technology-based problem) to be solved. For example, the specification does not provide any evidence that existing and conventional technology was not capable of performing the claimed process but for the claimed technology-based solution.
Additionally, the specification does not provide any evidence that the claimed invention results in an improvement to the functioning of a computer, or an improvement to conventional technology or technological processes. For example, the specification does not provide any evidence that the functionality of a computer or conventional technology have been improved, or their technological capabilities have been expanded beyond their existing capabilities.
The Examiner asserts that the claimed invention is analogous to Electric Power Group LLC v. Alstom SA (Fed. Cir. 2016) which stated:
The claims here are unlike the claims in Enfish. There, we relied on the distinction made in Alice between, on one hand, computer-functionality improvements and, on the other, uses of existing computers as tools in aid of processes focused on “abstract ideas” (in Alice, as in so many other § 101 cases, the abstract ideas being the creation and manipulation of legal obligations such as contracts involved in fundamental economic practices). Enfish, 822 F.3d at 1335-36; see Alice, 134 S. Ct. at 2358-59. That distinction, the Supreme Court recognized, has common-sense force even if it may present line-drawing challenges because of the programmable nature of ordinary existing computers. In Enfish, we applied the distinction to reject the § 101 challenge at stage one because the claims at issue focused not on asserted advances in uses to which existing computer capabilities could be put, but on a specific improvement—a particular database technique—in how computers could carry out one of their basic functions of storage and retrieval of data. Enfish, 822 F.3d at 1335-36; see Bascom, 2016 U.S. App. LEXIS 11687, 2016 WL 3514158, at *5; cf. Alice, 134 S. Ct. at 2360 (noting basic storage function of generic computer). The present case is different: the focus of the claims is not on such an improvement in computers as tools, but on certain independently abstract ideas that use computers as tools. see Electric Power Group LLC v. Alstom SA, 119 USPQ2d 1739, 1742 (Fed. Cir. 2016) – emphasis added.
The claimed invention is not an improvement to computer technology or computer functionality. Rather, the claimed invention is applying a computer’s existing capabilities (e.g., computer connectivity from multiple locations and differentiated data access) to implement a particular abstract idea. As in Electric Power Group, the focus of the claimed invention is not on an improvement in computers as tools but on improving an abstract idea (i.e., determine recommended investments to fund a future funding need) that use computers as tools.
MPEP §2106.04(d) recites:
The courts have also identified limitations that did not integrate a judicial exception into a practical application:
Merely reciting the words “apply it” (or an equivalent) with the judicial exception, or merely including instructions to implement an abstract idea on a computer, or merely using a computer as a tool to perform an abstract idea, as discussed in MPEP § 2106.05(f); [and]
Generally linking the use of a judicial exception to a particular technological environment or field of use, as discussed in MPEP § 2106.05(h).
Examiner asserts that the additional elements amount to merely (1) including instructions to implement an abstract idea on a computer, or merely using a computer as a tool to perform an abstract idea, or alternatively, (2) merely links the use of a judicial exception to a particular technological environment or field of use.
Step 2B
Applicant argues that the additional elements amount to “inventive concept” and, as such, satisfies Step 2B of the §101 Guidelines. See Arguments, pp. 18-19.
Specifically, the Applicant argues:
The inventive concept embodied in the claims is the interfacing architecture that facilitates the improved interactive user interface and centrally accessed platform, which provide the technical solution identified above. As noted above, the claim limitations, taken as a whole are not conventional. Conventional investment planning tools are not concerned with granting differentiated access for a user based on the computer the user is using. Conventional investment planning tools are also not concerned with providing a use-friendly and highly intuitive operating module. Instead, they are concerned with providing accurate up-to-date information that is very technical in nature. The inventive concept with Applicant's claims resides in its ability to provide such technological enhancements. See Arguments, p. 13 – emphasis added.
The Examiner respectfully disagrees.
The claim(s) do not include additional elements that are sufficient to amount to significantly more than the judicial exception.
Upon reconsideration of the indicia noted under Step 2A in concert with the Step 2B considerations, the additional claim element(s) amounts to no more than mere instructions to apply the exception using generic computer components. The same analysis applies in Step 2B, i.e., mere instructions to apply an exception using a generic computer component cannot integrate a judicial exception into a practical application at Step 2A or provide an inventive concept in Step 2B. The claim does not provide an inventive concept significantly more than the abstract idea.
Accordingly, these additional elements, when considered separately and as an ordered combination, do not integrate the abstract idea into a practical application because they do not impose any meaningful limits on practicing the abstract idea.
§112(b) Rejection
Applicant argues that the previously asserted §112(b) rejection pertaining to subjective claim language such as “basic detail information,” “high detail information,” “statistically significant question-set” and “significantly significance placement” was unwarranted. See Arguments, pp. 11-13.
Applicant asserts that a person of ordinary skill in the art “would be able to ascertain the scope of the claims based upon the disclosure” citing para. 53-77 and 80-85. See Arguments, p. 12.
The Examiner respectfully disagrees.
MPEP §2173.05(b)(IV) recites:
When a subjective term is used in the claim, the examiner should determine whether the specification supplies some objective standard for measuring the scope of the term. Some objective standard must be provided in order to allow the public to determine the scope of the claim. A claim term that requires the exercise of subjective judgment without restriction may render the claim indefinite. In re Musgrave, 431 F.2d 882, 893, 167 USPQ 280, 289 (CCPA 1970). Claim scope cannot depend solely on the unrestrained, subjective opinion of a particular individual purported to be practicing the invention. Datamize LLC v. Plumtree Software, Inc., 417 F.3d 1342, 1350, 75 USPQ2d 1801, 1807 (Fed. Cir. 2005)); see also Interval Licensing LLC v. AOL, Inc., 766 F.3d 1364, 1373, 112 USPQ2d 1188 (Fed. Cir. 2014) (holding the claim phrase “unobtrusive manner” indefinite because the specification did not “provide a reasonably clear and exclusive definition, leaving the facially subjective claim language without an objective boundary”). See MPEP §2173.05(b)(IV) – emphasis added.
Examiner asserts that the specification does not provide any objective standard for measuring the scope of the terms and that defining the metes-and-bounds of the claim term requires the exercise of subjective judgment without restriction.
Applicant also argues that “[t]he precise levels of detail to constitute a basic level and a high level is not what is important, but rather that there is a relatively lower level and relatively higher level.” See Arguments, p. 12.
The Examiner respectfully disagrees.
The scope of the claimed invention is defined by the metes-and-bounds of the claim terms. As such, what constitutes “basic level information” and “high level information” is important. Those claim terms are defining the scope of the claimed invention.
Applicant also argues that that the specification “provide[s] examples of what Applicant contemplated for basic levels and high levels of detail.” See Arguments, 12.
The Examiner respectfully disagrees.
However, MPEP §2173.05(b)(IV) also recites:
During prosecution, the applicant may overcome a rejection by amending the claim to remove the subjective term, or by providing evidence that the meaning of the term can be ascertained by one of ordinary skill in the art when reading the disclosure. However, “[f]or some facially subjective terms, the definiteness requirement is not satisfied by merely offering examples that satisfy the term within the specification.” DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245, 1261, 113 USPQ2d 1097, 1108 (Fed. Cir. 2014). See MPEP §2173.05(b)(IV) – emphasis added.
Examiner asserts that the examples recited in the specification do not provide any objective standard for measuring the scope of the terms.
Applicant also argues that “statistical was a well-known mathematical process, and a POSITA would have understood the scope of the claim based on this.” See Arguments, p. 13.
The Examiner respectfully disagrees.
Yes, “statistical significance” is a well-known mathematical process. Statistical significance is a concept used in hypothesis testing to determine whether the results of a study reflect a real effect or are likely due to random variation in the data.
However, when used as an adjective in conjunction with the claim terms what does this mean?
What differentiates a statistically significant question-set from a non-statistically significant question-set? What differentiates a statistically significant placement of an axis from a non-statistically significant placement of an axis?
Examiner notes that in the Applicant’s arguments, Applicant asserts:
[0060]-[0077] discuss which type of information is entered into the system via the interface. [0080] discusses how the system generates expense categories based on the information entered. [0080]-[0085] discuss how the graphic (e.g., plot) including an interest axis and a confidence axis is generated. These paragraphs also describe how the more the high level information that is received, the more accurate a user's placement on the plot can be made. [0087] describes how the questions (the questions that are used to obtain the information discussed in [0060]-[0077]) can be adjusted to generate a statistically significant placement. Statistical significance was a well-known mathematical process, and a POSITA would have understood the scope of the claim based on this. The precise parameters for generating statistical significance is not important, but rather that a statistical significant question set to receive statistical significant inputs that will result in a statistical significant placement on the plot is what is important. See Arguments, pp. 12-13 – emphasis added.
Although the claims are interpreted utilizing the broadest reasonable interpretation, in light of the specification, limitations from the specification (e.g., para. 60-77, 80-85 and 87) are not read into the claims. See MPEP §2111 and §2111.01.
Additionally, the claimed method (Claim 43) does not recite entering information into the system via the interface, although the claimed method does recite potentially generating a system element (i.e., an interface) configured with that functionality, if an icon is moved to the work area. “[W]hen the icon is not moved to the work area, the second user interface does not generate the interface and does not receive basic detail information or high detail information regarding the spending category.”
As written, if an icon is not moved to a work area, no interface is generated and, as such, no information can possibly be received. If the spending categories are generated by the information entered and placement on the axes are dependent on the received information, you have a problem, as the method recites that there remains a possibility that no information is received.
§103 Rejection
Applicant argues that the previously asserted prior art (Sloan, Carr and Charnley) fail to teach or suggest the claimed invention. See Arguments, pp. 19-22.
The Examiner respectfully disagrees.
As a preliminary matter, Examiner notes the previously asserted Claim Interpretations and §112(b) rejections pertaining to the claim language.
Examiner also notes that, during examination, claims are to be “given their broadest reasonable construction ‘in light of the specification as it would be interpreted by one of ordinary skill in the art.’” See MPEP §2111, citing Phillips v. AWH Corp., 75 USPQ2d 1321, 1329 (Fed. Cir. 2005). However, “[t]hough understanding the claim language may be aided by explanations contained in the written description, it is important not to import into claim limitations that are not part of the claim.” See MPEP §2111.01, citing Superguide Corp. v. DirecTV Enterprises, Inc., 69 USPQ2d 1865, 1868 (Fed. Cir. 2004).
Applicant argues:
The PTO states: "generating, via the user interface, a work area and an icon (point) that is moveable to and from the work area, the icon representative of a spending category of the one or more spending categories, wherein (see para. 74). " (Office Action, at p. 14). Yet, paragraph [0074] of Sloan discusses annual points on a timeline plot that can be interactive with via a dragging option. There is no "work area" and icon that is moveable to and from the work area. The PTO states: "While the specification utilizes the term 'work area' (see para. 81), the specification does not define 'work area.' As such, the broadest reasonable interpretation was utilized. A work area on a user interface is an area of the interface in which a user is working." (Office Action, p. 21). Applicant's specification ([0081]), claims, and FIG. 28 clearly indicate that the work area is a portion of a UI that can have icons moved into and out-from, and therefore Sloan does not disclose a work area. See Arguments, p. 20.
The Examiner respectfully disagrees.
Sloan recites:
In one embodiment of the LifePath Model, the interface used to plot time series for revenue and expenses is interactive. Each is represented as a timeline between any two defined dates and each annual point 314 of timeline can be interactively dragged up or down on its vertical axis. This device makes it easy to estimate changes and rough in long stretches of time without the tedium of conventional spreadsheet data entry. The interactive data entry process can iterate as needed until the model is as complete as possible. See para. 74 – emphasis added.
The user can rescale the displayed graph by changing the highest to lowest salary point 346. If the highest and/or the lowest salary figures are changed or are entered for the first time, the LifePath model changes rescales the graph 348. The user can delete an annual point 314 by clicking on the delete a point icon 316. Note operation 350. Once the delete a point operation is selected, the system prompts the user to click on the specific point to be deleted 352. The marked point is then deleted. Note operation 354. The system automatically connect the two adjacent points on either side of the deleted annual point 356 and redisplays the income graph 358. See para. 78 – emphasis added.
FIG. 11 is an embodiment of a screen for entering, editing and modeling one time income and expense events such as buying or selling a house. The time event graph 426 is populated with one time events that affect the user's financial situation and need to be accounted for if a realistic financial picture is desired. The one time life event points 428 are entered by selecting the "add an event" icon 430. Specific events are selected from a drop down list box 432. An unlimited number of non-standard entries as well as user specified entries can be added to the list. When the specific One-Time life event is selected from the drop-down list box 432, a life event detail window 434 opens up, where the user inputs the details such a cost breakdown about the specific event. The initial value will come from the dialogue box. The submit icon 322 will trigger changes in cash balances displayed in aggregated LifePath. Sales and purchases of assets trigger changes in personal net worth. Depreciation and appreciation are calculated based on industry norms and using actuarial data from outside databases if needed. The life event's impact on taxation is also calculated. The LifePath model highlights possible future cash flow issue and coaches the user through automated coaching or a live advisor on how to deal with the specific issue. See para. 86 – emphasis added.
Sloan discloses “the work area is a portion of a UI (i.e., a time event graph) that can have icons (i.e., life event points) moved into (i.e., added to) and out-from (i.e. deleted from).” See para. 74, 78 and 86. The point is an icon (i.e., a small graphic symbol on a computer screen). The icon is moveable (e.g., the point can be added, deleted and/or dragged up or down). The icon represents a spending category (e.g., an expense).
Applicant further argues:
The PTO further states: "when the icon is moved (dragged) to the work area, the user interface generates an interface for receiving (permit data entry) basic detail information or high detail information regarding the spending category to receive input information. (see para. 74). " (Office Action, at p. 14). Yet, paragraph [0074] of Sloan is devoid of any type of differentiated (e.g., basic v. high) detail information. The concerns related to basic v. high levels of information have been addressed re: the § 112 issues, and therefore the comments on pages 22-23 of the Office Action are moot.
The PTO additionally states: "when the icon is not moved (dragged) to the work area, the user interface does not generate an interface for receiving (permit data entry) basic detail information or high detail information regarding the spending category to receive input information. (see para. 74). " (Office Action, at p. 14). Again, paragraph [0074] of Sloan is devoid of any type of differentiated (e.g., basic v. high) detail information. The concerns related to basic v. high levels of information have been addressed re: the § 112 issues, and therefore the comments on pages 22-23 of the Office Action are moot. See Arguments, p. 21.
The Examiner respectfully disagrees.
As a preliminary matter, Examiner notes the previously asserted §112(b) rejections pertaining to the terms “basic detail information” and “high detail information” has not been resolved. Specifically, whether detail information is basic detail information or high detail information is completely dependent on a person’s subjective opinion. See MPEP §2173.05(b)(IV).
Examiner is uncertain what Applicant means by arguing that the prior art is devoid of any type differentiation of detail information. As the claim, as written, does not differentiate between the types of detail information being received. The interface receives basic detail information or (i.e., in the alternative) high detail information.
Sloan discloses an interface that receives basic detail information or high detail information.
Applicant further argues:
The PTO also states: "displaying, via the user interface, an investor personality description screen having an interface requiring a user to answer statistically significant question-set (data entry). (see fig. 18-19; para. 95-96). " (Office Action, at p. 14). While paragraph [0095] of Sloan discusses the ability to change an asset mix in a portfolio, and thereby assume various degrees of risk, there is nothing about an investor personality description screen having an interface requiring a user to answer statistically significant question-set. The concerns related to statistical significance have been addressed re: the § 112 issues, and therefore the comments on page 23 of the Office Action are moot. See Arguments, p. 21.
The Examiner respectfully disagrees.
As a preliminary matter, Examiner notes the previously asserted §112(b) rejections pertaining to the terms “statistically significant question-set” has not been resolved. Specifically, whether a question-set or placement on an axes is significantly significant is completely dependent on a person’s subjective opinion. See MPEP §2173.05(b)(IV).
Sloan recites:
FIG. 18 is an embodiment of a portfolio rebalancing interface 550. The change in a portfolio based on rebalancing 554 and its effect on the cash shortfall target to be overcome 556 are displayed in the form of a bar charts in the display window 552. Changes due to rebalancing of the portfolio are reflected in the bar graphs 554 and 556. Three icons for high risk 558, moderate risk 560, and low risk 562 flash are used as indicators for the amount of risk the user's portfolio is assuming. When the equities comprise more than 35% of the portfolio, the high risk icon flashes. Moderate risk is set at equities being less than 25% of the total value of the portfolio and low risk is set when equities are less than 15% of the total portfolio. A unique user interface 564 is used by to set the distribution of the assets in the user's portfolio. As the user moves the sliders 566 and 568, the resulting changes in the portfolio is reflected in the bar chart 554. By changing the asset mix in his portfolio, the user is assuming various degrees risk and he may increase or decrease the overall return on his investment portfolio and resolve the projected cash shortfall. See para. 95 – emphasis added.
FIG. 19 outlines an example of an embodiment of the layout for calculating and analyzing a long-term financial commitment such as a mortgage 570. The same window may be used for any other type of formulaic cash flow such as loan repayments, leasing, annuity cash flow and others alike. An information entry window 572 may be used to input the details on the financial instrument. The user inputs the amount of the down payment 574, the loan period 576, the interest rate 578, the years into the loan 580, the type of loan 582 and the payment 584. The mortgage type may require more input for special features, balloon payments, etc. Once all the information is inputted, the user submits the data 590 and a calculator calculates a graph of the cash flow for the mortgage 592 and displays it to the user 594. The window 592 and the graph 594 are a possible window and a graph modeling the mortgage. Once the user is satisfied with the model, he may close the timeline 596 and the LifePath system updates the LifePath model with the information for the mortgage 598. See para. 96 – emphasis added.
Sloan discloses a method comprising displaying, via the user interface, an investor personality description screen requiring a user to answer a statistically significant question set. By moving sliders, the user is answering questions pertaining to the risk they are willing to assume. See para. 95. By inputting details of their financial commitments, the user is answering questions pertaining to their financial commitments. See para. 96.
8. Conclusion
THIS ACTION IS MADE FINAL. 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 JASON M BORLINGHAUS whose telephone number is (571)272-6924. The examiner can normally be reached M-F 9-5.
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, Calvin L Hewitt II can be reached on 571-272-6709. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Jason M. Borlinghaus/Primary Examiner, Art Unit 3692 July 15, 2026
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