Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Status of Claims
Applicant filed an amendment on November 17, 2025. Claims 1-20 were pending in the Application. Claims 1, 6-7, 10, 15, and 19-20 are amended. No new claims have been added. No claims have been canceled. Claim 1, 10, and 19 are the independent claims, the remaining claims depend on claims 1, 10, and 19. Thus claims 1-20 are currently pending. After careful and full consideration of Applicant arguments and amendments, the Examiner finds them to be moot and/or not persuasive.
Response to Arguments
In the context of 35 U.S.C. §101, Applicant respectfully disagrees with the rejection. Applicant is of the opinion that the claims are statutory and respectfully asserts that “the claims recite specific technical components – multiple processing devices and storage devices operated by distinct entities – that interact to achieve a concrete, technology-based solution to a data-integration problem in executing term life insurance policy exchanges; the claims do not recite a generic computer implementation of an abstract concept, but a distributed computing architecture in which different servers perform distinct, interdependent operations – submitting, identifying, receiving, selecting, etc. – that collectively enable automated matching between life insurance policy holder data and annuity offer requirements; the coordinated interaction among these components meaningfully limit the alleged abstract idea and thus integrates it into a practical application; the present claims recite a particular way of electronically identifying and executing term life insurance policy exchanges; the inclusion of the “determining … that the policyholder information is a match for the requirements in the annuity offer data” limitation establishes the claimed system as a specific, structured implementation – not a mere articulation of the result to be achieved; one of ordinary skill in the art would understand that this coordinated, multi-server exchange system improves the functioning of computer-implemented data-integration processes themselves; viewed as a whole, the claimed combination of elements provides a technological improvement to how networked systems manage and verify complex policy-exchange transactions, as it does far more than “use a computer as a tool” to execute an abstract idea, rather, it recites a concrete, computer-implemented mechanism that transforms the way data from independent insurance systems are compared, matched, and exchanged; and the claims integrate any alleged abstract idea into a practical application and are therefore patent-eligible under35 U.S.C. §101 .”
Initially, the Examiner would like to point out that the basis of the rejection is Alice, by applying the subject matter eligibility analysis and flowchart according to MPEP § 2106, which applies a two-step framework, earlier set out in Mayo Collaborative Services v. Prometheus Laboratories, Inc., 566 U.S. 66 (2012), "for distinguishing patents that claim laws of nature, natural phenomena, and abstract ideas from those that claim patent-eligible applications of those concepts." Alice, 573 U.S. at 217.
Under the two-step framework, it must first be determined if "the claims at issue are directed to a patent-ineligible concept." If the claims are determined to be directed to a patent-ineligible concept, e.g., an abstract idea, then the second step of the framework is applied to determine if "the elements of the claim ... contain an "inventive concept" sufficient to 'transform' the claimed abstract idea into a patent-eligible application." (citing Mayo, 566 U.S. at 72-73, 79).
With regard to step one of the Alice framework, we apply a "directed to" two-prong test: 1) evaluate whether the claim recites a judicial exception, and 2) if the claim recites a judicial exception, evaluate whether the claim "applies, relies on, or uses the judicial exception in a manner that imposes a meaningful limit on the judicial exception, such that the claim is more than a drafting effort designed to monopolize the judicial exception," i.e., whether the claim integrates the judicial exception into a practical application. (MPEP §2106.04 II.A.1. and II.B.2.).
The Specification, (PG Pub US 202400338771 A1, para 2), provides evidence as to what the claimed invention is directed. In this case, the specification, (‘771 A1, para 2), discloses that the invention relates to execution of term life insurance policy exchanges, and is grouped under “Certain Methods of Organizing Human Activity, commercial or legal interactions (including agreements in the form of contracts; legal obligations; advertising, marketing or sales activities or behaviors; business relations)” and grouped under “Certain Methods of Organizing Human Activity, fundamental economic principles or practices (including hedging, insurance, mitigating risk)”, in prong one of step 2A. (MPEP §2106.04 II.A.1.).
Claim 10 provides additional evidence, and recites the limitations “a first processing device and a first computer readable storage device operated by a first issuing entity, the first processing device comprising a first server and the first computer readable storage device storing a first database storing term life insurance policy data representing one or more existing term life insurance policies; a second processing device and a second computer readable storage device operated by a second issuing entity, the second issuing entity providing annuity offers, the second processing device comprising a second server and the second computer readable storage device storing a second database storing annuity offer data; and a third processing device and a third computer readable storage device operated by an exchange entity, the method comprising:
submitting, by the exchange entity, a query to the first database for one or more term life insurance policies meeting one or more criteria; identifying, by the first issuing entity, a plurality of candidate term life insurance policies from the stored term life insurance policy data that meet the one or more criteria in the submitted query; receiving, by the exchange entity, the plurality of candidate term life insurance policies from the first issuing entity in response to the submitted query; selecting, by the first issuing entity or the exchange entity, a term life insurance policy from the plurality of candidate term life insurance policies for offering a term life insurance policy exchange; providing, by the first issuing entity to the exchange entity, term life insurance policy data and policy holder information corresponding to the selected term life insurance policy; submitting, by the first issuing entity or the exchange entity, a query to the second database on the second server; providing, by the second issuing entity to the exchange entity, annuity offer data comprising requirements for an offer to purchase an annuity; determining, by the exchange entity, that the policy holder information is a match for the requirements in the annuity offer data; generating, by the exchange entity, data representing a proposed term life insurance policy exchange based at least in part on the determination that the policy holder information is a match for the requirements in the annuity offer data, the proposed term life insurance exchange data comprising data representing an exchange of the selected term life insurance policy for the annuity offer; providing, by the exchange entity, the proposed term life insurance policy exchange data to a first client device of the policy holder and to the second server associated with the second issuing entity; obtaining, by the exchange entity, approval of the proposed term life insurance policy exchange data from the first client device of the policy holder and the second server; and conducting, by the exchange entity, execution of the proposed term life insurance policy exchange via a communications interface between a first issuer of the selected term life insurance policy associated with the first server and a second issuer of the annuity offer associated with the second server”, where the italicized claim language represents the abstract idea of “term life insurance policy exchanges.” (MPEP §2106.04 II.A.1.).
This judicial exception is not integrated into a practical application because, when analyzed under prong two of step 2A (MPEP §2106.04 II.A.2.), the additional elements of the claim (the bolded claim language), such as “a first processing device and a first computer readable storage device operated by a first issuing entity, the first processing device comprising a first server and the first computer readable storage device storing a first database”, “a second processing device and a second computer readable storage device operated by a second issuing entity, the second issuing entity providing annuity offers, the second processing device comprising a second server and the second computer readable storage device storing a second database”, “a third processing device and a third computer readable storage device operated by an exchange entity”, “a first client device of the policy holder and to the second server associated with the second issuing entity”, and “via a communications interface”, represents the use of a computer as a tool to perform an abstract idea. Therefore, the additional elements do not integrate the abstract idea into a practical application as they do no more than represent a computer performing functions that correspond to implementing the acts of “term life insurance policy exchanges.”
Examiner notes the basis of the rejection was, and is not as any mental process covering performance in the mind, but classified as an abstract idea, “term life insurance policy exchanges”, grouped under “Certain Methods of Organizing Human Activity, commercial or legal interactions (including agreements in the form of contracts; legal obligations; advertising, marketing or sales activities or behaviors; business relations)” and grouped under “Certain Methods of Organizing Human Activity, fundamental economic principles or practices (including hedging, insurance, mitigating risk)”.
With respect to the additional elements operating in a non-conventional and non-generic way and reflecting an improvement to a particular technological environment, the cited additional elements represent the use of a computer as a tool to perform an abstract. Therefore, the additional elements do not integrate the abstract idea into a practical application as they do no more than represent a computer performing functions that correspond to implementing the acts of “term life insurance policy exchanges.” The claims are not directed to improving computers or related technologies, but improving the method for “term life insurance policy exchanges”. For potential improvement in an abstract idea “term life insurance policy exchanges”, it is important to keep in mind that an improvement in the abstract idea itself (e.g. a term life insurance policy exchange concept) is not an improvement in technology. (MPEP § 2106.04(d)(1)). Therefore, claim 10 is non-statutory.
Claim 1 also recites the abstract idea of “term life insurance policy exchanges”, as well as the additional elements of “a first processing device and a first computer readable storage device operated by a first issuing entity, the first processing device comprising a first server and the first computer readable storage device storing a first database”, “a second processing device and a second computer readable storage device operated by a second issuing entity, the second issuing entity providing annuity offers, the second processing device comprising a second server and the second computer readable storage device storing a second database”, “a third processing device and a third computer readable storage device operated by an exchange entity”, “a first client device of the policy holder and to the second server associated with the second issuing entity”, and “via a communications interface”, which represent the use of a computer as a tool to perform an abstract idea. Therefore, the additional elements do not integrate the abstract idea into a practical application as they do no more than represent a computer performing functions that correspond to implementing the acts of “term life insurance policy exchanges.”
When analyzed under step 2B (MPEP 2106.05 I.A.), the claim does not include additional elements that are sufficient to amount to significantly more than the judicial exception itself. Viewed as a whole, the combination of elements recited in the claim merely describes the concept of “term life insurance policy exchanges” using computer technology (e.g., “a second processing device” and “a second computer readable storage device”). Therefore, the use of these additional elements do no more than employ a computer as a tool to implement the abstract idea. And as the computer does no more than serve as a tool to implement the abstract idea, they do not improve computer functionality nor improve another technology or technical field. (MPEP 2106.05 I A (f) & (h)). Therefore, claim 1 is non-statutory.
Claim 19 also recites the abstract idea of “term life insurance policy exchanges”, as well as the additional elements of “a first processing device and a first computer readable storage device operated by a first issuing entity, the first processing device comprising a first server and the first computer readable storage device storing a first database”, “a second processing device and a second computer readable storage device operated by a second issuing entity, the second issuing entity providing annuity offers, the second processing device comprising a second server and the second computer readable storage device storing a second database”, “a third processing device and a third computer readable storage device operated by an exchange entity”, “a first client device of the policy holder and to the second server associated with the second issuing entity”, and “via a communications interface”, which represent the use of a computer as a tool to perform an abstract idea. Therefore, the additional elements do not integrate the abstract idea into a practical application as they do no more than represent a computer performing functions that correspond to implementing the acts of “term life insurance policy exchanges.”
When analyzed under step 2B (MPEP 2106.05 I.A.), the claim does not include additional elements that are sufficient to amount to significantly more than the judicial exception itself. Viewed as a whole, the combination of elements recited in the claim merely describes the concept of “term life insurance policy exchanges” using computer technology (e.g., “a third processing device” and “a third computer readable storage device”). Therefore, the use of these additional elements do no more than employ a computer as a tool to implement the abstract idea. And as the computer does no more than serve as a tool to implement the abstract idea, they do not improve computer functionality nor improve another technology or technical field. (MPEP 2106.05 I A (f) & (h)). Therefore, claim 19 is non-statutory.
Finally, Examiner notes the basis of the rejection is Alice, by applying the subject matter eligibility analysis and flowchart according to MPEP § 2106. And, based on this standard, the claims are non-statutory, and correctly rejected under 35 U.S.C. § 101.
In the context of 35 U.S.C. § 103, in the Non-Final Rejection Office Action dated July 15, 2025, Examiner failed to provide rationale for rescinding the 35 U.S.C. § 103 rejection. Examiner submits that Applicant has adequately amended to overcome the current record of art in the Final Rejection Office Action, dated March 27, 2025, of Atkinson, US 10255637, and Kendall, US 7634420, and render the rejection under 35 U.S.C. § 103 moot. The cited references of record individually, and in combination, fail to teach, disclose, or render obvious at least “obtaining, from a second database on a second server, annuity offer data comprising requirements for an offer to purchase an annuity”, “obtaining, term life insurance policy and policy holder information corresponding to the selected term life insurance policy, an issuer of the selected term life insurance policy being associated with the first server”, “determining that the policy holder information is a match for the requirements in the annuity offer data”, “generating a proposed term life insurance policy exchange based at least in part on the determination that the policy holder information is a match for the requirements in the annuity offer data, the proposed term life insurance exchange comprising an exchange of the selected term life insurance policy for the annuity offer”. After further consideration and search, no prior art was found to render at least these limitations obvious. Examiner hereby rescinds the rejection under 35 U.S.C. § 103.
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 1-20 are rejected under 35 U.S.C. § 101 because the claimed invention is directed to an abstract idea without significantly more.
In the instant case, claims 1-9 are directed to “a system”; claims 10-18 are directed to “a method”; and claim 19-20 are directed to “a non-transitory computer-readable medium”. Therefore, these claims are directed to one of the four statutory categories of invention.
Claim 10 recites the abstract idea of “term life insurance policy exchanges”, which is grouped under “Certain Methods of Organizing Human Activity, fundamental economic principles or practices” and grouped under “Certain Methods of Organizing Human Activity, commercial or legal interactions” in prong one of step 2A. Claim 10 recites the method limitations “a first processing device and a first computer readable storage device operated by a first issuing entity, the first processing device comprising a first server and the first computer readable storage device storing a first database storing term life insurance policy data representing one or more existing term life insurance policies; a second processing device and a second computer readable storage device operated by a second issuing entity, the second issuing entity providing annuity offers, the second processing device comprising a second server and the second computer readable storage device storing a second database storing annuity offer data; and a third processing device and a third computer readable storage device operated by an exchange entity, the method comprising:
submitting, by the exchange entity, a query to the first database for one or more term life insurance policies meeting one or more criteria; identifying, by the first issuing entity, a plurality of candidate term life insurance policies from the stored term life insurance policy data that meet the one or more criteria in the submitted query; receiving, by the exchange entity, the plurality of candidate term life insurance policies from the first issuing entity in response to the submitted query; selecting, by the first issuing entity or the exchange entity, a term life insurance policy from the plurality of candidate term life insurance policies for offering a term life insurance policy exchange; providing, by the first issuing entity to the exchange entity, term life insurance policy data and policy holder information corresponding to the selected term life insurance policy; submitting, by the first issuing entity or the exchange entity, a query to the second database on the second server; providing, by the second issuing entity to the exchange entity, annuity offer data comprising requirements for an offer to purchase an annuity; determining, by the exchange entity, that the policy holder information is a match for the requirements in the annuity offer data; generating, by the exchange entity, data representing a proposed term life insurance policy exchange based at least in part on the determination that the policy holder information is a match for the requirements in the annuity offer data, the proposed term life insurance exchange data comprising data representing an exchange of the selected term life insurance policy for the annuity offer; providing, by the exchange entity, the proposed term life insurance policy exchange data to a first client device of the policy holder and to the second server associated with the second issuing entity; obtaining, by the exchange entity, approval of the proposed term life insurance policy exchange data from the first client device of the policy holder and the second server; and conducting, by the exchange entity, execution of the proposed term life insurance policy exchange via a communications interface between a first issuer of the selected term life insurance policy associated with the first server and a second issuer of the annuity offer associated with the second server”. The abstract idea is in is in italics of “term life insurance policy exchanges”, and the additional elements are in bold. (MPEP § 2106.04 II.A.1.).
This judicial exception is not integrated into a practical application because, when analyzed under prong two of step 2A (MPEP § 2106.04 II.A.2.), the additional elements of the claim, such as “a first processing device and a first computer readable storage device operated by a first issuing entity, the first processing device comprising a first server and the first computer readable storage device storing a first database”, “a second processing device and a second computer readable storage device operated by a second issuing entity, the second issuing entity providing annuity offers, the second processing device comprising a second server and the second computer readable storage device storing a second database”, “a third processing device and a third computer readable storage device operated by an exchange entity”, “a first client device of the policy holder and to the second server associated with the second issuing entity”, and “via a communications interface”, represent the use of a computer as a tool to perform an abstract idea. Therefore, the additional elements do not integrate the abstract idea into a practical application as they do no more than represent a computer performing functions that correspond to implementing the acts of “term life insurance policy exchanges.”
When analyzed under step 2B (MPEP 2106.05 I.A.), the claim does not include additional elements that are sufficient to amount to significantly more than the judicial exception itself. Viewed as a whole, the combination of elements recited in the claims merely describe the concept of “term life insurance policy exchanges” using computer technology (e.g., “a first processing device” and “a first computer readable storage device”). Therefore, the use of these additional elements do no more than employ a computer as a tool to implement the abstract. And as the computer does no more than serve as a tool to implement the abstract idea, they do not improve computer functionality or improve another technology or technical field. (MPEP 2106.05 I A (f) & (h)). Therefore, claim 10 is non-statutory.
Claim 1 also recites the abstract idea of “term life insurance policy exchanges”, as well as the additional elements of “a first processing device and a first computer readable storage device operated by a first issuing entity, the first processing device comprising a first server and the first computer readable storage device storing a first database”, “a second processing device and a second computer readable storage device operated by a second issuing entity, the second issuing entity providing annuity offers, the second processing device comprising a second server and the second computer readable storage device storing a second database”, “a third processing device and a third computer readable storage device operated by an exchange entity”, “a first client device of the policy holder and to the second server associated with the second issuing entity”, and “via a communications interface”, which represent the use of a computer as a tool to perform an abstract idea. Therefore, the additional elements do not integrate the abstract idea into a practical application as they do no more than represent a computer performing functions that correspond to implementing the acts of “term life insurance policy exchanges.”
When analyzed under step 2B (MPEP 2106.05 I.A.), the claim does not include additional elements that are sufficient to amount to significantly more than the judicial exception itself. Viewed as a whole, the combination of elements recited in the claim merely describes the concept of “term life insurance policy exchanges” using computer technology (e.g., “a second processing device” and “a second computer readable storage device”). Therefore, the use of these additional elements do no more than employ a computer as a tool to implement the abstract idea. And as the computer does no more than serve as a tool to implement the abstract idea, they do not improve computer functionality nor improve another technology or technical field. (MPEP 2106.05 I A (f) & (h)). Therefore, claim 1 is non-statutory.
Claim 19 also recites the abstract idea of “term life insurance policy exchanges”, as well as the additional elements of “a first processing device and a first computer readable storage device operated by a first issuing entity, the first processing device comprising a first server and the first computer readable storage device storing a first database”, “a second processing device and a second computer readable storage device operated by a second issuing entity, the second issuing entity providing annuity offers, the second processing device comprising a second server and the second computer readable storage device storing a second database”, “a third processing device and a third computer readable storage device operated by an exchange entity”, “a first client device of the policy holder and to the second server associated with the second issuing entity”, and “via a communications interface”, which represent the use of a computer as a tool to perform an abstract idea. Therefore, the additional elements do not integrate the abstract idea into a practical application as they do no more than represent a computer performing functions that correspond to implementing the acts of “term life insurance policy exchanges.”
When analyzed under step 2B (MPEP 2106.05 I.A.), the claim does not include additional elements that are sufficient to amount to significantly more than the judicial exception itself. Viewed as a whole, the combination of elements recited in the claim merely describes the concept of “term life insurance policy exchanges” using computer technology (e.g., “a third processing device” and “a third computer readable storage device”). Therefore, the use of these additional elements do no more than employ a computer as a tool to implement the abstract idea. And as the computer does no more than serve as a tool to implement the abstract idea, they do not improve computer functionality nor improve another technology or technical field. (MPEP 2106.05 I A (f) & (h)). Therefore, claim 19 is non-statutory.
Dependent claims 2-9, 11-18, and 19 further describe the abstract idea of “term life policy exchanges”, which is insufficient to overcome the rejections of claims 1, 10, and 19.
Dependent claims 2-9, 11-18, and 19 do not recite any new additional elements that integrate the abstract idea into a practical application, and that do no more than represent a computer performing functions that correspond to implementing the acts of “term life policy exchanges”, when analyzed under Step 2A, Prong Two.
Hence, claims 1-20 are not patent eligible.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure:
Sexton (U. S. Patent Application Publication No. 20140195271 A1) – Combined Annuity And Life Insurance Method And System
Sexton discloses an interconnected deferred equity indexed annuity policy and a fixed, variable or equity indexed universal life insurance policy, or variable life insurance policy, method and system where a computer periodically transfers annuity investment gains, if any, and the gains are transformed into premiums for the life insurance policy. Further growth of the transformed annuity policy gains as well as life insurance gains in the life insurance policy is tax-free as long as the involved insurance company observes the requirements of the Internal Revenue Code. Having the annuity policy gains loaned from the annuity policy owner to the life insurance owner, and disproportionately allocating fees from the life insurance policy to the annuity policy derive additional benefits.
Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a). A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any extension fee pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the date of this final action.
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/STEVEN R CHISM/Examiner, Art Unit 3692
/DAVID P SHARVIN/Primary Examiner, Art Unit 3692