DETAILED ACTION
Status of Application
This action is a Final Rejection. This action is in response to the amendment and response filed on July 1, 2026.
Claims 1, 19, and 20 have been amended.
Claims 15, 16, and 21-23 have been canceled.
Claims 1-14 and 17-20 are pending and rejected.
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA . In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
Response to Arguments
Regarding the rejection under 35 U.S.C. 101, Applicant argues that “the amended claim recites operations that are not part of any [commercial or legal] interaction. A testator-beneficiary agreement does not entail assigning numerical weights to witnesses, computing a score from weighted witness responses, comparing the score to the threshold value, programmatically interfacing through an API with a title and licensing system, courthouse or marriage license system, or social media system to retrieve corroborating data, generating a cryptographic hash of the witness responses, or creating and storing a blockchain transaction comprising the hash and a timestamp.” Remarks at 8. Assigning weights, generating a score, and determining that the score exceeds a threshold are being performed in order to determine whether to initiate transfer of the gift. Therefore, these limitations are commercial or legal interactions. However, additionally, these limitations recite mathematical concepts and mental processes, as described in the rejection.
Applicant further argues that “[t]he claim recites a specific ordered sequence of operations” and “[t]he claimed arrangement…ties a weighted multi-witness consensus computation to independent API-based corroboration from external official-records systems, and conditions the immutable blockchain recordation and the downstream transfer on the result. This is not the recitation of a result; it specifies how the result is achieved.” Remarks at 9. However, the method of determining whether to initiate transfer of the gift to the user is being performed using a programmed general purpose computing device and does not provide a technological improvement.
Applicant further argues that “the additional elements, considered as an ordered combination, supply significantly more.” Remarks at 10. However, when considered as a combination, claim 1 as a whole is a computer that is programmed to perform the process of determining that a task associated with a conditional bequest has been completed and initiating transfer of the gift.
Therefore, the rejection is maintained.
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 1-14 and 17-20 are rejected under 35 U.S.C. § 101 as being directed to non-statutory subject matter because the claimed invention is directed to an abstract idea without significantly more.
Step 1: Does the Claim Fall within a Statutory Category? (see MPEP 2106.03)
Yes, with respect to claims 1-14, 17, and 18 which recite a system and, therefore, are directed to the statutory class of machine or manufacture.
Yes, with respect to claim 19, which recites a method and, therefore, is directed to the statutory class of process.
Yes, with respect to claim 20, which recites a non-transitory computer readable medium and, therefore, is directed to the statutory class of manufacture.
Step 2A, Prong One: Is a Judicial Exception Recited? (see MPEP 2106.04(a))
The following claims (Claims 1-14, 17, and 18 are representative) identify the limitations that recite the abstract idea in regular text and that recite additional elements in bold:
1. An online system for managing conditional bequests from a testator’s estate, the online system comprising:
a processor subsystem; and
memory including instructions, which when executed by the processor subsystem, cause the processor subsystem to:
present a conditional bequest to a user, the conditional bequest presented in a user interface on a device operated by the user, the user interface including gaming elements, and the conditional bequest comprising a task to be completed by the user and a gift to be given to the user after completion of the task;
receive, at the online system, an electronic notification that the user has completed the task, the electronic notification including responses from a plurality of witnesses that attest that the user has completed the task, and wherein the electronic notification includes at least one of: an email or a text message;
in response to the electronic notification, verify completion of the task by programmatically interfacing, via an application programming interface (API), with at least one external system that maintains official records relevant to the task, the at least one external system comprising a title and licensing system, a courthouse or marriage license system, or a social media system, to retrieve corroborating data indicating the task was completed;
assign a respective weight to each witness of the plurality of witnesses;
evaluate the responses from the plurality of witnesses using the respective weights to generate a score;
determine that the score exceeds a threshold value; and
in response to the score exceeding the threshold value and the corroborating data indicating the task was completed:
generate a cryptographic hash of the electronic notification including the responses from the plurality of witnesses;
create a blockchain transaction comprising the cryptographic hash and a timestamp;
store the blockchain transaction in a blockchain; and
initiate transfer of the gift to the user in response to confirming that the user has completed the task by generating and transmitting electronic instructions via a secure channel to an external system to effect the transfer, including updating title records or transferring funds.
2. The online system of claim 1, wherein the conditional bequest includes an expiration event.
3. The online system of claim 2, wherein the expiration event is a date.
4. The online system of claim 2, wherein the expiration event is a status change of the user.
5. The online system of claim 4, wherein the status change of the user is maturing to an age.
6. The online system of claim 4, wherein the status change of the user is a marital status change.
7. The online system of claim 1, wherein the task is one of a series of tasks.
8. The online system of claim 7, wherein the series of tasks form a task path that is incorporated into the gaming elements.
9. The online system of claim 8, wherein the gaming elements are organized into a game theme.
10. The online system of claim 1, wherein the task is dependent on a prerequisite task, wherein the prerequisite task is to be completed before the task is completed.
11. The online system of claim 10, wherein the task is a group task offered to multiple users of the online system to complete together.
12. The online system of claim 1, wherein the gift is an amount of points, wherein the points have no value outside of the online system.
13. The online system of claim 12, wherein the points are redeemable for monetary rewards from the testator’s estate.
14. The online system of claim 1, wherein to initiate transfer of the gift to the user, the instructions cause the processor subsystem to add the gift to a pool of points, wherein the pool of points is redeemable for gifts from the testator’s estate.
17. The online system of claim 1, wherein the external system includes a financial institution system or a brokerage system.
18. The online system of claim 1, further comprising instructions to:
receive a counteroffer from the user, the counteroffer including a change to the task to be completed or the gift to be given;
present the counteroffer to an executor of the testator’s estate; and
update the task or gift depending on whether the executor accepts or declines the counteroffer.
Yes. But for the recited additional elements as shown above in bold, the remaining limitations of the claims recite certain methods of organizing human activity. The claims are directed to conditional bequests. This type of method of organizing human activity is a commercial or legal interaction such as agreements in the form of contracts, legal obligations, sales activities or behaviors, and business relations. The claims also recite mathematical concepts. For example assigning a weight to each witness, generating a score, and comparing the score to a threshold are mathematical calculations. These same limitations are also mental processes as they include evaluation and judgment. Thus, the claims recite an abstract idea.
Step 2A, Prong Two: Is the Abstract Idea Integrated into a Practical Application? (see MPEP 2106.04(d))
No. The claims as a whole merely use a computer as a tool to perform the abstract idea. The computing components (i.e., additional elements that are in bold above) are recited at a high level of generality and are merely invoked as a tool to implement the steps. For example, only a programmed general purpose computing device is needed to implement the claimed process. Simply implementing the abstract idea on a generic computer is not a practical application of the abstract idea. Furthermore, the abstract idea is merely being linked to a particular technological environment, i.e., an online computing environment. Employing well known technology within an online computing environment to execute the abstract idea, even when limiting the use of the abstract idea to this environment, does not integrate the exception into a practical application or add significantly more. Additionally, there is no improvement to the functioning of a computer or technology. Therefore, the abstract idea is not integrated into a practical application.
Step 2B: Does the Claim Provide an Inventive Concept? (see MPEP 2106.05)
No. As discussed with respect to Step 2A, Prong 2, the additional elements in the claims, both individually and in combination, amount to no more than tools to perform the abstract idea. Merely performing the abstract idea using a computer cannot provide an inventive concept. Therefore, the claims do not provide an inventive concept.
As such, the claims are not patent eligible.
Relevant Prior Art
The following references are relevant to Applicant’s invention:
Sparks et al., U.S. Patent Application Publication Number 2022/0270162 A1. This reference teaches a conditional gift. See Figure 27.
Perelman, U.S. Patent Application Publication Number 2017/0169513 A1. This reference teaches prepaid vouchers with time conditional value.
Schwartz, U.S. Patent Application Publication Number 2021/0150514 A1. This reference teaches authenticated trust distribution using blockchain.
Weber, Ingo and Mark Staples. “Programmable Money: Next-Generation Blockchain-Based Conditional Payments,“ Digital Finance (September 2, 2022). This reference teaches the use of blockchain and smart contracts for conditional payments.
Sukojo, U.S. Patent Application Publication Number 2024/0370893 A1. This reference teaches a method for verifying promotional challenges and claiming rewards. Specifically, paragraphs 0007 and 0008 disclosure a confidence score for verification data that is used to prove completion of a challenge.
Email Communications
Per MPEP 502.03, Applicant may authorize email communications by filing Form PTO/SB/439, available at https://www.uspto.gov/sites/default/files/documents/sb0439.pdf, via the USPTO patent electronic filing system.
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 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 mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ELIZABETH H ROSEN whose telephone number is (571) 270-1850 and email address is elizabeth.rosen@uspto.gov. The examiner can normally be reached Monday - Friday, 10 AM ET - 7 PM ET.
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/ELIZABETH H ROSEN/Primary Examiner, 3693
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