DETAILED ACTION
Status of Claims
1. This office action is in response to RCE filed 10/16/2025.
2. Claims 1, 2, 4-11, 13-20 are pending.
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 10/16/2025 has been entered.
Claim Rejections - 35 USC § 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Claims 1, 2, 4-11, 13-20
Claims 1, 2, 4-11, 13-20 are rejected under 35 U.S.C. 101 because the claimed invention is directed to a judicial exception (i.e., a law of nature, a natural phenomenon, or an abstract idea) without significantly more.
Step 1: Claims 1-9 are directed to a method; claims 10-18 are directed to system, claims 19-20 are directed to a non-statutory computer readable storage medium – each of which is one of the statutory categories of inventions.
Step 2A: A claim is eligible at revised Step 2A unless it recites a judicial exception and the exception is not integrated into a practical application of the application.
Prong 1: Prong One of Step 2A evaluates whether the claim recites a judicial exception (an abstract idea enumerated in the 2019 PEG, a law of nature, or a natural phenomenon).
Groupings of Abstract Ideas:
I. MATHEMATICAL CONCEPTS
A. Mathematical Relationships
B. Mathematical Formulas or Equations
C. Mathematical Calculations
II. CERTAIN METHODS OF ORGANIZING HUMAN ACTIVITY
A. Fundamental Economic Practices or Principles (including hedging, insurance, mitigating risk)
B. Commercial or Legal Interactions (including agreements in the form of contracts; legal obligations; advertising, marketing or sales activities or behaviors; business relations)
C. Managing Personal Behavior or Relationships or Interactions between People (including social activities, teaching, and following rules or instructions)
III. MENTAL PROCESSES.
Concepts performed in the human mind (including an observation, evaluation, judgment, opinion).
See MPEP 2106.04 (a) (2) Abstract Idea Groupings [R-10.2019]
Independent claim 1, 10 and 19 are directed to – a method for providing an optimized asset allocation recommendation, the method comprising: receiving first information associated with a set of assets, and a set of beneficiary entities associated with a user; retrieving second information associated with the set of assets, the set of beneficiary entities, and a testament from at least one external resource; analyzing the first information and the second information to determine an optimized allocation recommendation of the set of assets to the set of beneficiary entities, the recommendation engine being configured to use a machine learning technique to predict future asset growth or depreciation based on historical data and real-time data and to adapt recommendations based on the historical data and predictive analytics; generating a preliminary testament draft based on the optimized asset allocation recommendation; rendering, by the at least one processor via a display, the generated preliminary testament draft to the user to prompt the user to provide a user input; and generating a final testament draft based on the user input, wherein the generating of the final testament draft comprises: analyzing, by the at least one processor, the user input to determine that the user has approved the preliminary testament draft; and receiving, from a pre-authorized legal entity, an input that relates to the approved preliminary testament draft, wherein the generating of the final testament draft is further based on the received input from the pre-authorized legal entity, and wherein the pre-authorized legal entity includes at least one from among a trust company and a law firm that specializes in estate planning and wills, and wherein the trained model is trained based on at least one legal framework relevant to estate planning in order to ensure that the optimized asset allocation is legally compliant, and wherein when the user input is received, the method further comprises: updating the recommendation engine by retraining the trained model based on the user input and based on at least one change in user behavior or circumstances – that constitutes Commercial/Legal Interactions and hence fall under the abstract idea grouping of Certain Methods of Organizing Human Activity.
The dependent claims further limit the abstract idea to – modifying draft based on received user input from pre-authorized legal entity, type of information, periodically reviewing change in economic indicator, generating modification based on change in indicator, recommending modification, updating recommendation engine based on user input, type of assets, type of external resource – that also constitute Certain Methods of Organizing Human Activity.
Hence under Prong One of Step 2A, claims 1-20 recite a judicial exception.
Prong 2: Prong Two of Step 2A evaluates whether the claim recites additional elements that integrate the judicial exception into a practical application of the exception.
Limitations that are indicative of integration into a practical application include:
Improvements to the functioning of a computer or to any other technology or technical field – see MPEP 2106.05(a)
Applying the judicial exception with, or by use of, a particular machine – see MPEP 2106.05(b)
Effecting a transformation or reduction of a particular article to a different state or thing – see MPEP 2106.05(c)
Applying or using the judicial exception in some other meaningful way beyond generally linking the use of the judicial exception to a particular technological environment, such that the claim as a whole is more than a drafting effort designed to monopolize the exception – see MPEP 2106.05(e)
Limitations that are not indicative of integration into a practical application include:
Adding the words “apply it” (or an equivalent) with the judicial exception, or mere instructions to implement an abstract idea on a computer, or merely uses a computer as a tool to perform an abstract idea – see MPEP 2106.05(f)
Adding insignificant extra-solution activity to the judicial exception – see MPEP 2106.05(g)
Generally linking the use of the judicial exception to a particular technological environment or field of use – see MPEP 2106.05(h)
Additional elements recited by the claims, beyond the abstract idea, include: a computing device comprising a processor, memory and communication interface; a non-transitory computer readable storage medium; recommendation engine, trained model. Examiner finds that any additional element(s), beyond the judicial exception, has been recited at a high level of generality such that the claim limitations – receiving, retrieving, analyzing, generating, rendering, modifying, updating – amount to no more than mere instructions to apply the exception using generic components (see MPEP 2106.05(f)) or insignificant data gathering activities (see MPEP 2106.05(g)).
The combination of additional elements does not purport to improve the functioning of a computer or effect an improvement in any other technology or technical field. Instead, the additional elements do no more than “use the computer as a tool” and/or “link the use of the judicial exception to a particular technological environment or field of use.” The focus of the claims is not on improvement in computers, but on certain independently abstract ideas – receiving asset and beneficiary information, analyzing the information to determine and optimized allocation recommendation of the assets to the beneficiary, generating preliminary testament draft based on the recommendation, receiving user input, and generating a final testament draft based on the user input – that merely uses generic computers as tools. Steps that do no more than spell out what it means to “apply it on a computer” cannot confer patent eligibility. Indeed, nothing in claim 1 improves the functioning of the computer, makes it operate more efficiently, or solves any technological problem. See Trading Techs. Int’l, Inc. v. IBG LLC, 921 F.3d 1378, 1384-85 (Fed. Cir. 2019).
Therefore, the additional elements, individually or in combination, do not integrate the judicial exception into a practical application.
Hence, the claims are ineligible under Step 2A.
Step 2B: In Step 2B, the evaluation consists of whether the claim recites additional elements that amount to an inventive concept (aka “significantly more”) than the recited judicial exception.
As discussed in Prong Two, the additional elements in the claims amount to no more than mere instructions to apply the exception using generic components, which is insufficient to provide an inventive concept.
When considered individually or as an ordered combination, the additional elements fail to transform the abstract idea of – receiving asset and beneficiary information, analyzing the information to determine and optimized allocation recommendation of the assets to the beneficiary, generating preliminary testament draft based on the recommendation, receiving user input, and generating a final testament draft based on the user input – into significantly more.
See MPEP 2106.05(f) Mere Instructions To Apply An Exception [R-10.2019].
(2) Whether the claim invokes computers or other machinery merely as a tool to perform an existing process. Use of a computer or other machinery in its ordinary capacity for economic or other tasks (e.g., to receive, store, or transmit data) or simply adding a general purpose computer or computer components after the fact to an abstract idea (e.g., a fundamental economic practice or mathematical equation) does not integrate a judicial exception into a practical application or provide significantly more.
Hence, the claims are ineligible under Step 2B.
Therefore, the claim(s) are rejected under 35 U.S.C. 101 as being directed to a judicial exception without significantly more.
Response to Arguments
Applicant's arguments filed 9/16/2025 have been fully considered but they are not persuasive.
101
Applicant argues, citing para [0111] – [0117] of the specification, that the claimed invention improves the functioning of a computer by providing predictive accuracy and adaptability and integrates the judicial exception into a practical application.
Examiner finds this unpersuasive.
Examiner notes that as per the claimed limitations disclosed in para [0113] – [0117], the model is trained on legal frameworks relevant to estate planning in order to ensure legal compliance and that the model can update itself based on user input to adapt to changed circumstances. For example, if the user recently had a child and updates their asset allocation to include a trust fund, the model will learn from this new information. Going forward, it may then factor in child-related considerations when generating asset allocation and testament suggestions. If a person recently had a child and updates his/her asset allocation to include a trust fund, an attorney, upon learning of this new information, is expected to incorporate child-related considerations when generating asset allocation and testament suggestions going forward. In other words, the model is trained in the same manner a human attorney trains his/her mind to address changed circumstances of the client. Para [0111] – [0117] does not describe any improvement to a computer but instead shows how a 45-year-old entrepreneur can use a web application to streamline his assets and draft a testament and incorporate changes relating to his/her life to modify the testament for the future. This is not improving a computer but instead improves the entrepreneur. See MPEP 2106.05 (a) II (“For example, in Trading Technologies Int’l v. IBG, 921 F.3d 1084, 1093-94, 2019 USPQ2d 138290 (Fed. Cir. 2019), the court determined that the claimed user interface simply provided a trader with more information to facilitate market trades, which improved the business process of market trading but did not improve computers or technology.”). To the extent the claimed invention purports to provide an improvement, that improvement does not concern an improvement to computer capabilities but instead relates to achieving the aim of generating a testamentary draft – a process in which generic computing components are merely used as tools in their ordinary capacity. The claims merely automate methods of organizing human activity on generic computing components. Courts have consistently held that mere automation of manual processes using generic computers does not constitute a patentable improvement in computer technology. See Credit Acceptance Corp. v. Westlake Servs., 859 F.3d 1044, 1056 (Fed. Cir. 2017) (“But merely ‘configur[ing]’ generic computers in order to ‘supplant and enhance’ an otherwise abstract manual process is precisely the sort of invention that the Alice Court deemed ineligible for patenting.”).
Applicant analogizes the invention to Example 47 Claim 3 of the 2024 Guidance Updated on Patent Subject Matter Eligibility. However, Examiner finds the analogy to be inapt. Claim 3 of Example 47 recites the steps of training an ANN with backpropagation and gradient descent, detecting network anomalies with the trained ANN, determining malicious network associated with the anomaly, dropping the malicious packet and blocking future traffic from the source address associated with the malicious packet. As the Guidance states – these steps reflect the improvements described in the background such as avoiding the delay involved in waiting on a network administrator to react to a network intrusion by automatically dropping suspicious packets and blocking traffic from suspicious source addresses based on anomalies identified by the ANN in real time. But the present invention is not similar to identifying malicious packets in real time. Training a machine learning model to determine optimal asset allocation recommendation and ensuring that the optimal asset allocation is legally compliant is merely automating certain methods of human activity and not comparable to detecting network anomaly in real-time. Updating recommendation engine by retraining the trained model based on user input and change in user behavior or circumstance is part and parcel of machine learning. See Recentive Analytics, Inc. v. Fox Corp., 134 F.4th 1205, 1212(Fed. Cir. 2025) (finding that “[t]he requirements that the machine learning model be ‘iteratively trained’ or dynamically adjusted in the Machine Learning Training patents do not represent a technological improvement”).
Furthermore, Examiner notes that neither a computer processor nor a trained model is required to determine optimal asset allocation, to predict future asset growth or depreciation, or to generate a testamentary draft. Each of the steps can be performed with human interaction with the aid of pen and paper. Asset and market data can be printed on paper and analyzed. Predicting future asset growth or depreciation can be computed and charted on paper. Generating a preliminary draft, receiving user input and approval, receiving approval from pre-authorized legal entity, and generating final testament draft – can be accomplished using pen and paper. A computer is not required to carry out the claimed steps. Before the widespread use of computers, such asset allocation recommendation, predicting future asset growth or depreciation, and generation of testamentary draft – used to be carried out on paper in front of a customer. Recentive Analytics Inc. v. Fox Corp., 134 F.4th 1205, 1213 (Fed. Cir. 2025) (“[T]he claimed methods are not rendered patent eligible by the fact that (using existing machine learning technology) they perform a task previously undertaken by humans with greater speed and efficiency than could previously be achieved. We have consistently held, in the context of computer-assisted methods, that such claims are not made patent eligible under § 101 simply because they speed up human activity.”).
As per para [0056], the computer system 102 may include a personal computer, virtual desktop, a tablet computer, laptop computer, desktop computer, wireless device, wearable device, etc. As per [0057], the processor may also be a microprocessor, a microcomputer, a processor chip, a controller, a microcontroller, a digital signal processor (DSP), a state machine, or a programmable logic device. There is nothing in the specification to indicate that the operations recited in the claims require any specialized hardware or inventive computer components or that the claimed invention is implemented using other than generic computer components to perform generic computer functions, e.g., receiving, retrieving, analyzing, generating, rendering, etc. Each of the above functions are expressed in terms of results desired by any and all possible means and so present no more than conceptual advice. All purported inventive aspects reside in how the information is received and analyzed, how the preliminary testamentary draft is generated, how the display is rendered, and not in how the processing technologically achieves those results. Therefore, the assertion – that the claimed steps require the use of specially programmed computer and cannot be implemented by a general purposed computers – is completely unpersuasive.
See MPEP 2106.05(a) (“To show that the involvement of a computer assists in improving the technology, the claims must recite the details regarding how a computer aids the method, the extent to which the computer aids the method, or the significance of a computer to the performance of the method. Merely adding generic computer components to perform the method is not sufficient. Thus, the claim must include more than mere instructions to perform the method on a generic component or machinery to qualify as an improvement to an existing technology.”). Here, Examiner notes that simply instructing a processor to – receive first information related to asset and beneficiary entities; receive second information related to economic indicators; analyze the first and second information to determine an optimized allocation recommendation of the assets to the beneficiary, configured to use a machine learning technique to predict future asset growth of depreciation based on historical and real-time data and to adapt recommendations based on historical data and predictive analytics; generate preliminary testament draft based on the recommendation; generate a preliminary testamentary draft and prompt the user to provide input; determine that the user has approved the preliminary testamentary draft; receive from a pre-authorized legal entity, an input relating to the approved testamentary draft; and generate a final testamentary draft based on the user input – is merely applying the abstract idea of generating final testament draft on a generic component which is does not qualify as improvement to the processor or computer. Any purported improvement in the claims is in the judicial exception itself and not in the technology. Determining an optimized asset allocation recommendation using a recommendation engine to use machine learning techniques to predict future asset growth or depreciation based on historical data and predictive analytics, and based on the recommendation, generating a testamentary draft – may help a user in creating estate planning documents, but it certainly has no effect on improving computers or networks. See Customedia Techs., LLC v. Dish Network Corp., 951 F.3d 1359, 1364 (Fed. Cir. 2020) (“To be a patent-eligible improvement to computer functionality, we have required the claims to be directed to an improvement in the functionality of the computer or network platform.”).
An ordered combination of the claimed steps does not bring about (i) an improvement to the functionality of a computer or other technology or technical field; (ii) a “particular machine” to apply or use the judicial exception; (iii) a particular transformation of an article to a different thing or state; or (iv) any other meaningful limitation. See MPEP 2106.05(a)-(c), (e)-(h). Hence, the additional elements fail to integrate the recited combination of abstract idea(s) into a practical application or provide significantly more. See MPEP 2106.05(f).
For the above reasons, claims are patent ineligible under § 101.
103
The obviousness rejection has been withdrawn in view of the amendments and arguments filed 9/16/2025.
Conclusion
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/ARUNAVA CHAKRAVARTI/Primary Examiner, Art Unit 3692