DETAILED ACTION
Status of Application
This action is a Non-Final Rejection. This action is in response to the request for continued examination filed on February 12, 2026.
Claims 1, 17, 19, and 20 have been amended.
Claims 15 and 16 have been canceled.
Claims 1-14 and 17-23 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 “[t]he claims as a whole are directed to: A distributed verification system for confirming task completion in estate administration, using blockchain technology to provide immutable recordation combined with multi-witness weighted attestation, threshold-based automated confirmation, and electronic disbursement” and asserts that “[t]his is not a fundamental economic practice. This is not a method of organizing human activity that predates computers. This is a specific technological solution to problems that arise in the intersection of estate administration, task verification, and distributed record-keeping.” Remarks at 10. However, per the rejection, the claims recite an abstract idea and are directed to an abstract idea.
Applicant further argues that “the claimed invention cannot exist without computer technology.” Remarks at 10. However, there is no requirement that a claim is ineligible only if it can exist without computer technology. Additionally, here, the claimed abstract idea (i.e., presenting a conditional bequest with a required task to a user, receiving an indication that the task has been completed, verifying that the task has been completed, and initiate transfer of the gift upon confirming completion of the task) could be performed without the technology. However, the technology is being used as a tool to implement the abstract idea.
Applicant further argues that the claimed steps are not mental processes. Remarks at 11-12. In light of Applicant’s amendments, the rejection has been revised to remove the mental processes grouping.
Applicant further argues that “[t]he claims improve computer technology by providing a distributed verification system with specific technological properties.” Remarks at 13. In support of this argument, Applicant refers to several alleged technical problems and solutions. See Id. at 13-15. First, Applicant refers to the problem of data persistence and availability after death. Id. at 13. However, this is a business problem that is being solved by applying existing technology. Second, Applicant refers to the cryptographic immutability of blockchain. Id. However, this is an inherent feature of existing blockchain technology. Applicant has not shown an improvement to blockchain technology but is instead using it as a tool to implement the abstract idea. Third, Applicant refers to the ability to replace a central authority needed for estate administration with blockchain’s distributed consensus system. Id. at 14-15. This is also an inherent feature of existing blockchain/distributed ledger technology. Applicant is using this technology for its intended purpose and has not improved it.
Applicant further argues that the claimed technology “is not a generic computer performing generic functions. This is a specific distributed system architecture combining multiple technological components.” Remarks at 15. However, Applicant’s Specification does not describe a particular machine. Rather, the claimed invention could be performed by a programmed general purpose computing device. See MPEP 2106.05(b)I (“It is important to note that a general purpose computer that applies a judicial exception, such as an abstract idea, by use of conventional computer functions does not qualify as a particular machine. Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 716-17, 112 USPQ2d 1750, 1755-56 (Fed. Cir. 2014). See also TLI Communications LLC v. AV Automotive LLC, 823 F.3d 607, 613, 118 USPQ2d 1744, 1748 (Fed. Cir. 2016) (mere recitation of concrete or tangible components is not an inventive concept); Eon Corp. IP Holdings LLC v. AT&T Mobility LLC, 785 F.3d 616, 623, 114 USPQ2d 1711, 1715 (Fed. Cir. 2015) (noting that Alappat’s rationale that an otherwise ineligible algorithm or software could be made patent-eligible by merely adding a generic computer to the claim was superseded by the Supreme Court’s Bilski and Alice Corp. decisions). If applicant amends a claim to add a generic computer or generic computer components and asserts that the claim recites significantly more because the generic computer is 'specially programmed' (as in Alappat, now considered superseded) or is a 'particular machine' (as in Bilski), the examiner should look at whether the added elements integrate the exception into a practical application or provide significantly more than the judicial exception. Merely adding a generic computer, generic computer components, or a programmed computer to perform generic computer functions does not automatically overcome an eligibility rejection. Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 573 U.S. 208, 223-24, 110 USPQ2d 1976, 1983-84 (2014). See In re Alappat, 33 F.3d 1526, 1545, 31 USPQ2d 1545, 1558 (Fed. Cir. 1994); In re Bilski, 545 F.3d 943, 88 USPQ2d 1385 (Fed. Cir. 2008)”).
Applicant further argues that the claims provide an ordered combination that “creates a technological system.” Remarks at 16. In support of this argument, Applicant refers to Ex parte Steven Charles Davis, Appeal 2019-004127. Id. at 16-17. However, this decision is neither precedential nor informative. Additionally, when viewed as an ordered combination, the claim limitations are applying existing technology to an abstract idea.
Applicant further argues that the instant claims are similar to those in DDR Holdings and “necessarily rooted in distributed computer technology.” See Remarks at 17-18. Applicant asserts that the present claims “recite a specific technological implementation using blockchain’s unique properties (immutability, distributed storage, cryptographic security) combined with algorithmic consensus mechanisms to solve technical problems of verification and data persistence.” Id. However, the invention of DDR Holdings provided “[a] modification of conventional Internet hyperlink protocol to dynamically produce a dual-source hybrid webpage.” See MPEP 2106.05(a). The instant claims do not provide a comparable technological improvement, but instead allegedly improve the abstract idea.
Applicant further argues that “[i]f the combination is non-obvious under § 103, it follows that the combination provides an ‘inventive concept’ under § 101.” Remarks at 18. However, nonobviousness of claims does not indicate that claims are well-understood, routine, and conventional. See MPEP 2106.05(I) (“Although the courts often evaluate considerations such as the conventionality of an additional element in the eligibility analysis, the search for an inventive concept should not be confused with a novelty or non-obviousness determination. See Mayo, 566 U.S. at 91, 101 USPQ2d at 1973 (rejecting "the Government’s invitation to substitute §§ 102, 103, and 112 inquiries for the better established inquiry under § 101 "). As made clear by the courts, the "‘novelty’ of any element or steps in a process, or even of the process itself, is of no relevance in determining whether the subject matter of a claim falls within the § 101 categories of possibly patentable subject matter." Intellectual Ventures I v. Symantec Corp., 838 F.3d 1307, 1315, 120 USPQ2d 1353, 1358 (Fed. Cir. 2016) (quoting Diamond v. Diehr, 450 U.S. at 188–89, 209 USPQ at 9). See also Synopsys, Inc. v. Mentor Graphics Corp., 839 F.3d 1138, 1151, 120 USPQ2d 1473, 1483 (Fed. Cir. 2016) ("a claim for a new abstract idea is still an abstract idea. The search for a § 101 inventive concept is thus distinct from demonstrating § 102 novelty."). In addition, the search for an inventive concept is different from an obviousness analysis under 35 U.S.C. 103. See, e.g., BASCOM Global Internet v. AT&T Mobility LLC, 827 F.3d 1341, 1350, 119 USPQ2d 1236, 1242 (Fed. Cir. 2016) ("The inventive concept inquiry requires more than recognizing that each claim element, by itself, was known in the art. . . . [A]n inventive concept can be found in the non-conventional and non-generic arrangement of known, conventional pieces."). Specifically, lack of novelty under 35 U.S.C. 102 or obviousness under 35 U.S.C. 103 of a claimed invention does not necessarily indicate that additional elements are well-understood, routine, conventional elements. Because they are separate and distinct requirements from eligibility, patentability of the claimed invention under 35 U.S.C. 102 and 103 with respect to the prior art is neither required for, nor a guarantee of, patent eligibility under 35 U.S.C. 101. The distinction between eligibility (under 35 U.S.C. 101 ) and patentability over the art (under 35 U.S.C. 102 and/or 103 ) is further discussed in MPEP § 2106.05(d).”). Additionally, the rejection does not assert that the additional elements are well-understood, routine, or conventional. Instead, the additional elements are being used as tools to implement the abstract idea.
Applicant further argues that the additional elements “transform any abstract concept into a patent-eligible application.” Remarks at 19. Per MPEP 2106.04(d), “Effecting a transformation or reduction of a particular article to a different state or thing, as discussed in MPEP § 2106.05(c)” may indicate that an additional element may have integrated an abstract idea into a practical application. However, MPEP § 2106.05(c) clarifies that the transformation must be physical:
An "article" includes a physical object or substance. The physical object or substance must be particular, meaning it can be specifically identified. "Transformation" of an article means that the "article" has changed to a different state or thing. Changing to a different state or thing usually means more than simply using an article or changing the location of an article. A new or different function or use can be evidence that an article has been transformed. Purely mental processes in which thoughts or human based actions are "changed" are not considered an eligible transformation. For data, mere "manipulation of basic mathematical constructs [i.e.,] the paradigmatic ‘abstract idea,’" has not been deemed a transformation. CyberSource v. Retail Decisions, 654 F.3d 1366, 1372 n.2, 99 USPQ2d 1690, 1695 n.2 (Fed. Cir. 2011) (quoting In re Warmerdam, 33 F.3d 1354, 1355, 1360, 31 USPQ2d 1754, 1755, 1759 (Fed. Cir. 1994)).
As done in the instant claims, transforming data is not a transformation or reduction that integrates the abstract idea into a practical application.
Applicant further argues that instant claims are similar to this in McRo because they “do not merely recite the abstract goal of ‘verify task completion and disburse gift,’ They recite how it is achieved.” Remarks at 19. However, unlike the instant claims, McRo provided an improvement in computer animation.
Applicant further argues that the rejection “misapprehends both the nature of the patent-eligible improvements and the technical contribution of the claimed invention.” Remarks at 19. In support of this argument, Applicant asserts that “[a]n invention need not improve the underlying technology (e.g., blockchain itself) to be patent-eligible.” Id. at 20. However, the instant claims are using existing technology to solve a business problem.
Applicant further argues that “[m]aintaining accurate and immutable records is a technological challenge not merely a business goal.” Remarks at 20. However, this is a business problem that is being solved using existing technology.
Applicant further argues that the blockchain is recited with sufficient specificity. Remarks at 21. However, Applicant is reciting inherent features of blockchain and not anything that is new or different.
Applicant further discusses policy considerations. See Remarks at 22. However, these considerations do not affect the analysis.
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 17-23 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, 18, and 21-23, 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, 18, and 21-13 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;
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.
21. The online system of claim 1, wherein the instructions cause the processor subsystem to:
evaluate responses from the plurality of witnesses to generate a score;
determine if the score is more than a threshold value; and
store a confirmation indication that the user has completed the task when the score is more than the threshold value.
22. The online system of claim 1, wherein a first witness of the plurality of witnesses is assigned a first weight for a first response, and a second witness of the plurality of witnesses is assigned a second weight for a second response.
23. The online system of claim 22, wherein the first weight is different from the second weight.
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. 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.
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
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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