DETAILED ACTION
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 .
Examiner’s Remarks
Claims 1-20 were presented for examination. Applicant filed an amendment on 10/24/2025 amending claims 1, 2, 4, 11 and 12-14, cancelling claims 2 and 4 and adding a new claim 20 in the amendment. Therefore, the claims 1, 2, 4 and 6-20 are pending.
After careful consideration of applicant’s amendments and arguments, new ground of rejections of claims necessitated by applicant amendment has been established in the instant application as set forth in detail below. Applicant's arguments with respect to claims have been considered but are moot in view of the new ground(s) of rejection.
Claim Objections
Claim 14 is objected to under 37 CFR 1.75 as being a substantial duplicate of claim 13 respectively.
When two claims in an application are duplicates or else are so close in content that they both cover the same thing, despite a slight difference in wording, it is proper after allowing one claim to object to the other as being a substantial duplicate of the allowed claim. See MPEP § 608.01(m).
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 and 6-20 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more.
When considering subject matter eligibility under 35 U.S.C. 101, it must be determined whether the claim is directed to one of the four statutory categories of invention, i.e., process, machine, manufacture, or composition of matter. If the claim does fall within one of the statutory categories, it must then be determined whether the claim is directed to a judicial exception (i.e., law of nature, natural phenomenon, and abstract idea), and if so, it must additionally be determined whether the claim is a patent-eligible application of the exception. If an abstract idea is present in the claim, any element or combination of elements in the claim must be sufficient to ensure that the claim amounts to significantly more than the abstract idea itself. Examples of abstract ideas include fundamental economic practices; certain methods of organizing human activities; and mathematical relationships/formulas. Alice Corporation Pty. Ltd. v. CLS Bank International, et al., 573 U.S. ____ (2014).
In the instant case, claims 21-40 are directed to apparatus and method for managing investible asset investment fund based on CRX index tracking subsets of eligible asset within desirable tracking error. The claims 21-40 are analyzed to see if claims are statutory category of invention, recites judicial exception and the claims are further analyzed to see if the claims are integrated into practical application if the judicial exception is recited and the claims provides an inventive as per 2019 Revised Patent Subject Matter Eligibility Guidance (2019 PEG) and October 2019 Update: Subject Matter Eligibility as set forth below:
Analysis:
Step 1: Statutory Category? This part of the eligibility analysis evaluates whether the claim falls within any statutory category. MPEP 106.03.
Claims 1 and 20 are directed to a system comprising computing device and a database. The claimed system is therefore directed to a statutory category, i.e., a machine (a combination of device) (Step 1: YES).
Claim 11 is directed to a process i.e., a series of method steps or acts, of allocating and distributing invested pooled capital, which is a statutory categories of invention (Step 1: YES).
Step 2A - Prong 1: Judicial Exception Recited? This part of the eligibility analysis evaluates whether the claim recites a judicial exception. As explained in MPEP 2106.04(II) and the October 2019 Update, a claim “recites” a judicial exception when the judicial exception is “set forth” or “described” in the claim. There are no nature- based product limitations in this claim, and thus the markedly different characteristics analysis is not performed. However, the claim still must be reviewed to determine if it recites any other type of judicial exception.
Claims 1, 11 and 20 are similar and they are then analyzed to determine whether it is directed to a judicial exception. The claim recite plurality of steps of “receive investor data from the investor devices, store the investor data, access pooled capital data, analyze the investor data to produce investor mortality data, determine allocation of returns of pooled capital funds for periodic distribution to investors, and allocate returns of pooled capital funds to investors based on investment returns and investor mortality data.”
The limitations of provide receive and store the investor data, access and analyze the investor data, determine allocation of returns of pooled capital funds and allocate returns of pooled capital funds to investors based on investment returns and investor mortality data, as drafted, is a process that, under its broadest reasonable interpretation, covers performance of the limitation in the mind is similar to calculating a number representing an alarm limit value using a mathematical formula in Parker v. Flook. That is, other than reciting “computing device” and therefore, nothing in the claim element precludes the step from practically being performing mathematical concepts grouping of abstract idea set forth in the 2019 PEG. 2019 PEG Section I, 84 Fed. Reg. at 52. For example, but for the “computing device” language, manually “determining allocation of return of pooled capital fund using received and stored investor data and automatically allocate returns investment to investors based investment returns and mortality data.” The recitation of a processor/computing device in this claim does not negate the mathematical concept nature of these limitations because the claim here merely uses the generic computer component as a tool to perform the otherwise mathematical processes. See October Update at Section I(C )(ii). Thus, the above limitations of recite concepts that fall into the “mathematical formula/relationship” groupings of abstract ideas. (YES).
Step 2A - Prong 2: Integrated into a Practical Application? This part of the eligibility analysis evaluates whether the claim as a whole integrates the recited judicial exception into a practical application of the exception. This evaluation is performed by (a) identifying whether there are any additional elements recited in the claim beyond the judicial exception, and (b) evaluating those additional elements individually and in combination to determine whether the claim as a whole integrates the exception into a practical application. 2019 PEG Section III (A) (2), 84 Fed. Reg. at 54-55.
Besides the abstract idea as described in Prong 1, the claim recites the additional elements of “transmit distribution instructions to the at least one administrator device via an administrator module comprising an interface for communicating with the at least one administrator device; wherein the system automates allocation of, and provision of distribution instructions related to, pooled capital funds using the investor data and investor mortality data.”
An evaluation of whether limitations are insignificant extra-solution activity is then performed. Note that because the Step 2A Prong 2 analysis excludes consideration of whether a limitation is well-understood, routine, conventional activity (2019 PEG Section III(A)(2), 84 Fed. Reg. at 55), this evaluation does not take into account whether or not limitation (a) is well-known. See October 2019 Update at Section III.D. When so evaluated, this additional element represents mere transmitting data and automating allocating and distributing returns of pooled assets based on received data.” The limitation is an insignificant extra-solution activity. The computing device is also an additional element which is configured to carry out limitations i.e., it is the tool that is used in steps described in Prong 1. But the computing device is recited so generically without any details that it represents no more than mere instructions to apply the judicial exceptions on a computer. It can also be viewed as nothing more than an attempt to generally link the use of the judicial exceptions to the technological environment of a computer. It should be noted that because the courts have made it clear that mere physicality or tangibility of an additional element or elements is not a relevant consideration in the eligibility analysis, the physical nature of the computer does not affect this analysis. See MPEP 2106.05(I) for more information on this point, including explanations from judicial decisions including Alice Corp. Pty. Ltd. v. CLS Bank Int'l, 573 U.S. 208, 224-26 (2014). Even when viewed in combination, these additional elements do not integrate the recited judicial exception into a practical application and the claim is directed to the judicial exception (Step 2A: NO).
Step 2B: Claim provides an Inventive concept? This part of the eligibility analysis evaluates whether the claim as a whole amounts to significantly more than the recited exception, i.e., whether any additional element, or combination of additional elements, adds an inventive concept to the claim. MPEP 2106.05.
As explained with respect to Step 2A Prong 2, there are two additional elements.
The first is the computing device, which is configured to perform all the limitations recited. As explained previously, the computing device is at best the equivalent of merely adding the words “apply it” to the judicial exception. Mere instructions to apply an exception cannot provide an inventive concept. The second additional element is limitation of “transmit distribution instructions to the at least one administrator device via an administrator module comprising an interface for communicating with the at least one administrator device; wherein the system automates allocation of, and provision of distribution instructions related to, pooled capital funds using the investor data and investor mortality data” which as explained previously is extra-solution activity, which for purposes of Step 2A Prong Two was considered insignificant. Under the 2019 PEG, however, a conclusion that an additional element is insignificant extra-solution activity in Step 2A should be re-evaluated in Step 2B. 2019 PEG Section III(B), 84 Fed. Reg. at 56. At Step 2B, the evaluation of the insignificant extra-solution activity consideration takes into account whether or not the extra-solution activity is well-known. See MPEP 2106.05(g). Here, the recitation of a computing device being configured to “receive/gather transmitted information and implementation of automated allocation and distribution of pooled investment based on the received data” that is recited at a high level of generality, and, as disclosed in the specification, is also well-known. This limitation therefore remains insignificant extra-solution activity even upon reconsideration. Thus, limitation (a) does not amount to significantly more. Even when considered in combination, these additional elements represent mere instructions to apply an exception and insignificant extra-solution activity, which do not provide an inventive concept (Step 2B: NO). The claim is not eligible..
Further, Applicant specifically described invention is to obtaining investor data and allocating and distributing returns of allocated pooled capital to the investors (see Fig. 6: Specification: paragraph [0051]). The claimed additional elements of executing steps is implemented using examples of existing computer networking equipment, hardware, and software that are used to construct the claimed invention without apparent modification (see Fig. 1; Specification: paragraph [0033-0037]). Therefore, the additional element only recite generic components and steps are well-understood routine and conventional.
The recitation of computer component with mere instruction to implement an abstract idea would not impart patent eligibility and claiming the improved speed or efficiency inherent with applying the abstract idea on a computer would not provide a sufficient inventive concept (see Bancorp Servs., L.L.C. v. Sun Life Assur. Co. of Can. (U.S.), 687 F.3d 1266, 1278 (Fed. Cir. 2012), Lending Tree v. Zillow, July 25, 2016, page 10-11). Further, the claim recites “automates allocation of, and provision of distribution instructions…..” and automating conventional activities using generic technology does not amount to an inventive concept (See Alice, 134 S. Ct. at 2358) as these simply describes "automation of a mathematical formula/relationship through use of generic-computer computer function (see OIP Technologies, Inc. v. Amazon.com, 788, F.3d at 1363). Claims as recited do not provide any particular asserted inventive technology for performing those functions and therefore the claims are held patent ineligible (see Electric Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1354 (Fed. Cir. 2016). Mere instructions to apply an exception using a generic computer component cannot provide an inventive concept. The claims is not patent eligible. (NO).
Dependent Claims:
Examiner further reviewed the dependent claims 2, 4, 6-10, and 12-19 that could be added to the independent claims to make patent eligible. The dependent claims as recited pertains to additional steps which further describes analyzing data, prompting to input information, automating sorting, defining cohorts data and investing pooled capital, which appear to be a mental process using a generic computer component that been found to be an abstract idea as described above. These dependent claims do not provide additional elements significantly more than the purported abstract idea that are sufficient to amount to significantly more than the judicial exception because the additional elements when considered both individually and as an ordered combination do not amount to significantly more than the abstract idea. The dependent claims as recited would not make the independent claim significantly more by incorporating them into the independent claims. Therefore, the claims 1, 2, 4 and 6-20 are not patent eligible (NO).
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claims 1-19 are rejected under 35 U.S.C. 102 (a) (1) as being anticipated by Strother, US. Pub. No. 2020/0143480 (reference A in attached PO-892).
Strother teaches a system implemented on a computing platform for allocating and periodically distributing invested pooled capital between investors based on analysis of investor-specific investor data obtained from investor devices (see Fig. 2, Step 1: Website: Step 5: Web-based User Interface: Step 6 and 7: Accepts Investment from investors and distribution to pooled investors), the system comprising:
at least one computing device configured to provide a computing platform see Fig. 2, Step 1: Website: Step 5: Web-based User Interface), the computing platform providing execute instructions stored in memory (see paragraph [0027]) to:
receive investor data from the investor devices via a communication interface of an investor module that communicates with the investor devices (see Fig.2, Step 5: paragraph [0114]; where investor provide investor data including finger print, username, password via web-based user interfaces of user device)
store the investor data in a database (see paragraph [0007, 0009, 0028 and 0112]; where database stores participants/investors data);
(iii) access pooled capital data stored in a custodian database, wherein the
pooled capital data relates to pooled capital funds (see Fig. 2, Step 6; where administrator accepts /access investment from investors and placed in a designated pooled fund);
(iv) analyze the investor data stored in the database to determine allocation of returns of pooled capital funds for periodic distribution to investors allocate returns of pooled capital funds to investors based on investment returns and investor mortality data (see paragraph [0039 and 0110]; where investors data stored in analyzed, determined return of investment and periodic distribution of pooled asset based or mortality rate); and
(vi) transmit distribution instructions to administrator devices via an administrator module comprising an interface for communicating with the administrator devices; wherein the system automates allocation of, and provision of distribution instructions related to, pooled capital funds using the investor data and investor mortality data. (see Fig. 2 Step. 7: paragraph [0017, 0032, 0040, 0047, 0066 and 0110]; where administrator receives/collects calculated distribution as shown an example in paragraph [0110] and automatically distributes the distribution based on mortality, pre-determined retirement age and investment age for predetermined distribution periods from pooled capital investments using payment distributing means/module).
As per claim 2, Strother teaches claim 1 as described above. Strother further teaches the system, wherein
the administrator module is configured to receive data from actuarial software configured to analyze the investor data and project mortality of the investors as investor mortality data (see Fig. 1 and 3: paragraph [0010, 0028, 0066, 0103, 0110]; where expected mortality is determined from gender, heath condition age collected for plurality investor based on mortality criteria as displayed in Fig. 1 and described in paragraph [0110]).
As per claim 4, Strother teaches claim 1 as described above. Strother further teaches the system, wherein
the investor module configured to interact with investor devices, via communication interface, and the investor module is configured to prompt investor device to input the investor data to populate the database (see Fig. 2, Steps 5 and 6: paragraph [0039, 0049, 0103, 0119 0172; where web Interface interact with investors and receiving investor information and investment selection and portfolio allocation using predetermined investment guideless using investment module).
As per claim 6, Strother teaches claim 5 as described above. Strother further teaches the system, wherein
the computing platform is configured to automatically sort each investor into a plurality of cohorts based on the investor data (see Fig. 9; where plurality of cohort groups are sorted based on age progression in Example 1 and Example 2).
As per claim 7, Strother teaches claim 6 as described above. Strother further teaches the system, wherein
the investor module is configured to carry out the automatic sorting of the investors into cohorts (see Fig. 9; where plurality of cohort groups numbers of pool member alive, are sorted based on age progression in Example 1 and Example 2).
As per claim 8, Strother teaches claim 6 as described above. Strother further teaches the system, wherein
the cohorts are defined based on investor age and/or gender (see Table 9, where plurality of cohort groups numbers are sorted based on age progression in Example 1 and Example 2).
As per claim 9, Strother teaches claim 7 as described above. Strother further teaches the system, wherein
the cohorts are defined based on investor age and/or gender (see Table 9, where plurality of cohort groups numbers are sorted based on age progression in Example 1 and Example 2).
As per claim 10, Strother teaches claim 1 as described above. Strother further teaches the system, wherein
the pooled capital is invested in a fund holding units of another fund or a plurality of financial instruments (see Fig. 5).
As per claim 11, Strother reaches a method for allocating and periodically distributing invested pooled capital between investors, the method comprising steps as described in the claim 1 above.
As per claims 12-19, Strother teaches claims 11 as described above. Claims 12-19 is rejected under same rational as claims 2/3 -10 as described above.
As per claim 20, Strother teaches a system implemented on a computing platform for allocating and periodically distributing invested pooled capital between investors based on analysis of investor-specific investor data obtained from investor devices (see Fig. 2, Step 1: Website: Step 5: Web-based User Interface: Step 6 and 7: Accepts Investment from investors and distribution to pooled investors), the system comprising:
at least one computing device; a database for storing investor data (see paragraph [0027]);
a custodian database for storing pooled capital data related to pooled capital funds (see Fig. 2, step 6: paragraph [0007, 0009, 0028 and 0112]; where database stores participants/investors data by administrator into designated pool fund);
wherein each investor device is operated by an investor (see Fig. 2, Step 5: paragraph [0039]; where investor module provide interface to plurality of investment participants in cohort group to invest using investor device and receive payment based on communication about each investor); and
at least one administrator device operated by at least one administrator (see Fig. 1 Step 1: paragraph [0114]; where administrator is interfaced with plurality of investor communicating via web-based interface via website created by the administrator), wherein the at least one computing device is configured to execute instructions to implement steps as described in the claim 1 above.
Response to Arguments
New ground of rejections of claims necessitated by applicant amendment after careful consideration of applicant’s amendments and arguments has been established in the instant application as described above. Applicant's arguments with respect to claims have been considered but are moot in view of the new ground(s) of rejection.
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.
The prior art made of record and not relied upon is considered pertinent to applicant’s disclosures. The following are pertinent to current invention, though not relied upon:
Caron (U.S. Pub No. 2014/0229402) teaches funding and distribution of income stream payments for a period associated with the longevity of participant individuals.
Coleman et al. (U.S. Patent No. 8,660,866) teach administering life insurance products through classifying insured lives to allocate costs.
Finfrock et al. (U.S. Pub No. 2012/0215722) teach managed retirement fund and generating increased revenue stream.
Klein et al. (U.S. Patent No. 7,752,063) teach securitizing mortality risk.
Milevsky et al. (2016) teach equitable retirement income tontines.
Robertson (U.S. Pub No. 2012/0158612) teaches providing financial product for living over specified survival age.
Shemtob (U.S. Pub No. 2011/0258140) teaches creating pooling for longevity risks among investors.
Walder et al. (U.S. Pub No. 2022/0261913) teach creating and managing collateralized municipal loan obligations.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to BIJENDRA K SHRESTHA whose telephone number is (571)270-1374. The examiner can normally be reached on 8:00AM-5:00PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Abhishek Vyas can be reached on (571) 270-1836. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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Respectfully submitted,
/BIJENDRA K SHRESTHA/Primary Examiner, Art Unit 3691 January 15, 2026