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 .
Applicant’s Reply
Applicant's response of 09/08/26 has been entered. The examiner will address applicant's remarks at the end of this office action. Currently claims 1-4, 6-20 are pending.
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 1-4, 6-20, are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more.
The claims recite a system, a method, and a non-transitory machine readable medium storing instructions; therefore, the claims pass step 1 of the eligibility analysis.
For step 2A, the claim(s) recite(s) an abstract idea of verifying that a task (conditional bequest) has been completed by a beneficiary who is to receive a gift from a testator ( a person who has made a will) for completion of the task, and the initiation of a transfer of a gift upon verification that the conditional bequest has been completed. This is the act of ensuring compliance with a legal contract document that sets forth the wishes of a testator that are set forth in a will (see claim 11 that recites a will).
Using claim 13 as a representative example that is applicable to claims 1, 20, the abstract idea is defined by the elements of:
transmitting a confirmation request to a plurality of users, the confirmation request to provide feedback on a completion of a conditional bequest, the conditional bequest comprising a task to be completed by a beneficiary and a gift to be given to the beneficiary after completion of the task;
establishing a session with those of the plurality of users when they respond to the confirmation request, to exchange messages
receiving feedback from the plurality of users as messages exchanged over a secure channel and associated with the session and authenticated with cryptographic credentials associated with respective user accounts,
each message including at least a user identifier, a task identifier, and a date and time stamp;
querying an external record system for a record corroborating the completion of the task;
computing a weighted consensus score by tabulating the received messages according to respective vote weights configured for the respective user accounts of the plurality of users;
comparing the weighted consensus score to a confirmation threshold;
recording that the conditional bequest was completed when the weighted consensus score satisfies the confirmation threshold;
appending, to a ledger, the ledger providing for auditability, a record evidencing at least the feedback, any obtained external record, the weighted consensus score, and the feedback indicating that the conditional bequest was completed; and
responsive to recording that the conditional bequest was completed, transmitting instructions to initiate a transfer of the gift to the beneficiary, and
notify the beneficiary and at least one other user related to the testator's estate of a completion status and a transfer status
The above limitations are reciting a legal interaction where verification is occurring that a beneficiary has performed a task that was set forth in a will from a testator along with transfer of a gift to the beneficiary. As is recognized in the specification, wills are known to contain conditions for gifts that must be satisfied to receive the gift. The concept of verifying whether or not a task has been satisfied to receive a gift (completion of an educational degree, marriage, graduation college, call estranged brother, stay sober for a full year, see paragraph 060 of the specification), as is set forth in a will, is considered to be a certain method of organizing human activities type of abstract idea that is the execution of conditions set forth in a legal document. Having conditions imposed on a beneficiary to receive an asset (as set forth in a will) is something well known in the legal field as being conditional gifting and is commonplace in estates and trusts. When one has a will that is being executed by an executor, the executor is the one that is responsible for ensuring that all conditions set forth in the will have been satisfied, including conditional gifts. This represents a certain method of organizing human activities type of abstract idea that is claiming a legal interaction of ensuring compliance with a legal document (conditions in a last will and testament).
For claims 1, 13, the additional elements are the recitation to the online system that comprises a processor subsystem and memory with instructions to perform the recited steps that define the abstract idea (claim 1), calling the messages and instructions and notification as “electronic”, the use of an encrypted network for electronic message exchange, an external system that the instructions are sent to (banking system, brokerage system, insurance system, tax and revenue system, title and licensing system), the use of a network interface and an API call and the use of a distrusted append only ledger that uses cryptographic hash as claimed (blockchain).
For claim 20, the additional elements are the recited non-transitory machine readable medium storing instructions to perform the functions/steps that define the abstract idea. There is no external system or online system in the claim scope as the claim is limited to the CRM that stores instructions to perform the recited steps/functions.
This judicial exception is not integrated into a practical application (2nd prong of eligibility test for step 2A) because the additional elements of the claim when considered individually and in combination with the claim as a whole, amount to the use of a generic computing device(s) (processor subsystem, an online system, external system) and memory (non-transitory) connected to a network to define an online system, where the processor subsystem and claimed execution by a machine is merely claiming the use of the computing devices as a tool to execute the abstract idea, see MPEP 2106.05(f). The claim is simply instructing one to practice the abstract idea by using a generically recited computing device(s) that is/are connected to an encrypted network such as the Internet (that uses HTTPS) to perform steps that define the abstract idea. The use of the network is for messages to be exchanged electronically, which is using a computer as a tool to execute the abstract idea. As for an encrypted network session, while the specification does not expressly disclose an encrypted network, paragraph 016 teaches that HTTPS can be used for exchange messages, which is the protocol that is used by the Internet to exchange data. In that sense the claimed element of the encrypted network and its use is simply claiming the Internet as the network, which is an instruction for one to use computers connected by the Internet as a tool to execute the abstract idea. The messages and the notification being electronic is an also taken as instruction for one to use a computer for the exchange of messages and notifications that themselves are part of the abstract idea. This is generally linking the execution of the abstract idea to a particular technological environment which is the use of computers. The same is noted for the external system that the instructions are sent to. The claimed external systems read on another computer connected by the Internet that the instructions are sent to (sending the instructions is part of the abstract idea). The use of the network interface and an API call is a further instruction for one to practice the abstract idea using computers connected to a network and that uses programming (an API is nothing more than a computer program). The claims as a whole are simply using computers connected to a network to allow for messages to be exchanged and for information to be received so that the execution of the abstract idea can occur. The claimed use of the distributed leger that uses a hash as claimed is claiming the use of blockchain technology to store data, which is what the blockchain is used for. Although the specification does not make any mention of the claimed hash and how it is derived from a proceeding record, the claim is reciting blockchain by definition, as is disclosed in paragraph 026 where it is disclosed that the blockchain is used to store data. This is a general link to the field of blockchain technology for data storage, and is taken as an instruction for one to practice the invention using a computer and blockchain technology. The claimed additional elements of computers connected to a network and the use of blockchain technology, are being used as a tool to execute the abstract idea when the totality of the entire claim is considered. This does not amount to more than a mere instruction to implement the abstract idea on a computer connected via a network such as the Internet (the web), along with the use of blockchain to store data (which is its ordinary and common usage), which is indicative of the fact that the claim has not integrated the abstract idea into a practical application; therefore, the claim is found to be directed to the abstract idea identified by the examiner. See MPEP 2106.05(f), (h).
For step 2B, the claim(s) does/do not include additional elements that are sufficient to amount to significantly more than the judicial exception when considered individually and in combination with the claim as a whole because they do not amount to more than use of a generic computing device(s) (processor subsystem, an online system, external system) and memory (non-transitory) connected to a network (to define an online system) that also uses blockchain technology to store data, where the processor subsystem and claimed execution by a machine is merely claiming the use of the computing devices as a tool to execute the abstract idea, see MPEP 2106.05(f). The claim is simply instructing one to practice the abstract idea by using a generically recited computing device(s) that is/are connected to an encrypted network such as the Internet (that uses HTTPS) to perform steps that define the abstract idea. The use of the network is for messages to be exchanged electronically, which is using a computer as a tool to execute the abstract idea. As for an encrypted network session, while the specification does not expressly disclose an encrypted network, paragraph 016 teaches that HTTPS can be used for exchange messages, which is the protocol that is used by the Internet to exchange data. In that sense the claimed element of the encrypted network and its use is simply claiming the Internet as the network, which is an instruction for one to use computers connected by the Internet as a tool to execute the abstract idea. The messages and the notification being electronic is an also taken as instruction for one to use a computer for the exchange of messages and notifications that themselves are part of the abstract idea. This is generally linking the execution of the abstract idea to a particular technological environment which is the use of computers. The use of the network interface and an API call is a further instruction for one to practice the abstract idea using computers connected to a network and that uses programming (an API is nothing more than a computer program). The same is noted for the external system that the instructions are sent to. The claimed external systems read on another computer connected by the Internet that the instructions are sent to (sending the instructions is part of the abstract idea). The claims as a whole are simply using computers connected to a network to allow for messages to be exchanged and for information to be received so that the execution of the abstract idea can occur. The claimed use of the distributed leger that uses a hash as claimed is claiming the use of blockchain technology to store data, which is what the blockchain is used for. Although the specification does not make any mention of the claimed hash and how it is derived from a proceeding record, the claim is reciting blockchain by definition, as is disclosed in paragraph 026 where it is disclosed that the blockchain is used to store data. This is a general link to the field of blockchain technology for data storage, and is taken as an instruction for one to practice the invention using a computer and blockchain technology. The claimed additional elements of computers connected to a network and the use of blockchain technology, are being used as a tool to execute the abstract idea when the totality of the entire claim is considered. This does not amount to more than a mere instruction to implement the abstract idea on a computer connected via a network such as the Internet (the web), along with the use of blockchain to store data (which is its ordinary and common usage). The additional elements do not amount to significantly more when viewed individually and with the claim as a whole.
Therefore, claims 1, 13, 20, do not recite any additional elements that provide for integration at the 2nd prong or that provide significantly more at step 2B. Therefore the claims are not considered to be eligible.
For claims 2-4, 6-12, 14-19, the applicant is reciting a further embellishment of the same abstract idea that was found for claims 1, 13. The recitation to the users having votes, the threshold for the votes, having a different number of votes for the users, weighting the votes of the users, having the threshold be 100%, reciting that the feedback includes documentation (image, audio, video) and reciting that the conditional bequest is part of a will, are all elements that are part of the abstract idea. All of the claimed elements of claims 2-4, 6-12, 14-19, are directed to claiming more about the abstract idea. Claims 2-4, 6-12, 14-19 do not recite any additional elements that provide for integration at the 2nd prong or that provide significantly more at step 2B. No additional elements are claimed in the scope of the claims other than that which has been recited in claims 1 and 13. Therefore the claims are not considered to be eligible.
For the above reasons, claims 1-4, 6-20 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more.
Response to arguments
The traversal of the 35 USC 101 rejection is not persuasive. On page 9 of the reply the applicant argues that the additional elements of the claim do not include the external record system that is being queried. The applicant is correct. The external record system is part of the abstract idea because it is a source that the abstract idea is acquiring data from. A record system can be maintained on paper. A record system does not even necessarily connotate structure to any special kind of system because the library of congress is a record system, and it has nothing to do with computers. The applicant argues that the record system was placed into the abstract idea by the examiner, which is not correct because it is not a person that is querying the external record system. This is not persuasive. The mere presence of a computer or a network and an API call that is used to execute the step of querying the record system to obtain corroborating evidence is an instruction for one to use a computer perform the abstract idea step of performing the query. A person can query a record system to retrieve data, the fact that the claim recites a network interface and an API call is instructing one to use a computer and APIs (programming). The applicant seems to be arguing that because the claim requires the query as being performed using a network interface and an API call it cannot be considered as part of the abstract idea. This is not persuasive because the abstract idea step of querying the record system can be performed by people and there is nothing claimed about the querying step that recites computer implementation that cannot be done by a human. The claims do not recite how the network interface and the API call is involved in executing the claimed step such that it cannot be performed by a person or would amount to more than a general link to computer implementation for the abstract idea. People can request data from a record system, which is simply the broad step of performing a query. The argument that the querying of the record system has to be an additional element and renders the claims eligible is not persuasive.
On page 9 the applicant argues that integration into a practical application is provided by the order of the recited steps and argues that the claims require the claimed system to transmit electronic instructions via the network interface. This is not persuasive because the order of the recited steps/functions does not provide for integration because that is what defines the abstract idea. The order of the steps that define the abstract idea is part of the abstract idea and cannot provide for integration. The fact that the claims use computers and a network to exchange and request data is nothing more than computer implementation for the abstract idea. That does not provide for integration into a practical application, see MPEP 2106.05(f).
On page 10 the applicant argues that receiving messages and tabulating weights for votes does not fit into any of the abstract idea categories. For the reasons set forth in the 35 USC 101 rejection the examiner disagrees. What is being argued is what defines the abstract idea. The argument is not persuasive.
On page 10 the applicant argues that step 2B requires factual support in the form of evidence to establish that using a weighted consensus score together with an external record that corroborates into a single entry using cryptographic hash was not well understood routine or convention. This argument is misplaced and is a mischaracterization of how step 2B works. The applicant argues that the examiner has not provided factual support for the claimed invention being well understood, routine, and conventional, the examiner notes that no such requirement exists in the eligibility guidance. The examiner has not taken the position that anything is well understood, routine, or conventional at step 2B because nothing has been found to be an insignificant extra solution activity at the 2nd prong. Examiners do not have to prove that a claimed invention (including the elements that define the abstract idea) was well understood, routine, and conventional in a given field to find that the claims are not eligible. To do so would be injecting a prior art analysis into the eligibility inquiry. Something that is well understood, routine, and conventional is more than just known in the art, it means that something is more or less ubiquitous in a given field. There is no requirement that an examiner prove with evidence that a claimed invention, including abstract idea elements, is so well known in a given field that it rises to the level of being well understood, routine, and conventional. The rejection of record does not find anything to be an insignificant extra solution activity at the 2nd prong so there is nothing to reassess at step 2B with respect to the issue of being well understood, routine, and conventional (the Berkheimer memo). The applicant is arguing an analysis for 101 claim eligibility that does not exist as a rule for step 2B. Evidence is not required at step 2B when the issue at hand is mere computer implementation of an abstract idea. The argument is not persuasive. The 35 USC 101 rejection is being maintained in view of the amended claims.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. 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 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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DENNIS WILLIAM RUHL whose telephone number is (571)272-6808. The examiner can normally be reached M-F 7am-3:30pm.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Jessica Lemieux can be reached at 5712703445. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/DENNIS W RUHL/Primary Examiner, Art Unit 3626
