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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 04/16/26 has been entered. 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, wherein a vote of one of the plurality of users has a different weight than a vote of another of the plurality of users;
querying an external record system for a record corroborating the completion of the task;
comparing the feedback to a confirmation threshold, wherein the feedback represents a weighted consensus score based on respective vote weights configured for the plurality of users;
recording that the conditional bequest was completed when the feedback 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, 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 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 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 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 pages 8-13 of the reply the applicant argues the 101 rejection. The applicant argues on page 8 that most of the claimed limitations have been grouped with the abstract idea. The applicant argues that elements that are not part of the abstract idea are to be evaluated at the 2nd prong and step 2B. The examiner does not disagree with this statement from the applicant; however, the claim elements noted by the examiner are what define the abstract idea and the fact that this might include a majority of the claimed elements does not render the rejection improper. If a claim substantially recites an abstract idea, then it substantially recites an abstract idea, that all depends on the claim itself. The abstract idea is not limited to the broad concept of confirming if a beneficiary has completed a task and recording confirmation such that any narrower recitation if that process is eligible because it is not broad so as to encompass the entire field of estate distribution. The specific elements that recite how the management of the conditional bequest is being accomplished, as identified by the examiner, are the elements that serve to define the abstract idea. The comments from the applicant are noted but are not persuasive to overcome the rejection.
On page 9 of the reply the applicant argues the use of the claimed network to receive the feedback, which is claiming an encrypted network (HTTPS per the specification). The applicant also argues the content of the messages. This is not persuasive. The use of the network to exchange the messages is using the Internet and an HTTPS protocol. That is an instruction for one to use a computer and the Internet to exchange data between computers and does not provide for integration or significantly more. See MPEP 2106.05(f) in this regard. Using the Internet for data communication so that messages can be sent and received is simply using the Internet as a tool to exchange messages and data. This does not amount to an inventive concept that renders the claims eligible when viewed alone or in combination with the claim as a whole. The content of the messages is part of the abstract idea so that aspect of the claimed invention does not help with the eligibility of the claims. The messages and their content are part of the abstract idea, not additional elements.
On page 9 of the reply the applicant argues that the use of a network to send a query to an external record that corroborates the completion of the task (a cross-verification step), is a technical verification step that extends beyond the online system itself. This is not persuasive because the argued cross verification step of querying a record system is part of the abstract idea. The querying of an external record system for a record is part of the abstract idea as people can do this manually. The fact that the query is done using a network that connects computers is an instruction for one to use computers connected to a network to accomplish the abstract idea. This does not render the claims eligible, see MPEP 2106.05(f).
On page 10 the applicant argues that the claim recites computing a weighted consensus score by applying vote weights to confirmation indicates received from users, with comparison to a threshold. This argument is not commensurate with the scope of the claims. The claims do not recite calculating a score by applying weights. The claims at most recite that feedback is received and the different users have different votes along with a comparison of the feedback to a confirmation threshold. The examiner notes that the claim expressly recites that the feedback represents a weighted consensus score, and that the feedback is just being received in the claim. The claim does not recite the use of weights to compute a score as the applicant argues. There is no calculation of a score by applying weights in the claim scope and the argument is not persuasive for this reason.
On page 10, the applicant argues the use of a distributed append only ledger that uses a hash, and argues that it provides for auditability. This is claiming the use of blockchain technology in its ordinary manner (blockchain stores data in an immutable manner that provides for auditability) and does not render the claims eligible for the same reasons addressed in the 35 USC 101 rejection of record. The use of a distributed leger such as the blockchain for data storage is using blockchain for what it is used for and is simply using the ledger as a tool to execute the storage step that is itself part of the abstract idea. This does not provide for anything more than using blockchain as a tool to execute the abstract idea and is a link to the particular technological environment of blockchain. See MPEP 2106.05(f), (h).
On page 10-11 the applicant argues the use of the network to transmit the instructions to the external systems. The applicant argues that this is an automated machine to machine transaction and is not a human decision. This is not persuasive. A person can call up a bank and verbally give instructions to initiate a transfer of the gift as claimed. The use of the network is simply a tool that is being used to allow for messages to be exchanged, that can otherwise be conveyed by verbal communication in person or on the phone or via paper instructions. The use of the network does not somehow mean that the claims are eligible and that a human cannot give instructions to disburse a gift. The argument is not persuasive.
On page 11 the applicant argues that the ordered combination of elements defines a technical system that provides for an improvement to computer functionality. The applicant argues that the claimed invention improves the field of manual estate administration and generic computer record keeping by providing:
(1) a distributed verification mechanism with configurable asymmetric trust weights,
(2) a tamper-evident cryptographic audit trail, and
(3) automated cross-system transaction execution triggered by verified consensus -none of which exist in manual processes or in conventional computerized record-keeping
The examiner notes that the claims do not recite a distributed verification mechanism with configurable asymmetric trust weights. This broad characterization of the claim is not very clear as to what specific element this refers to. Feedback is received and compared to a threshold but nothing else is claimed about asymmetric trust weights as argued. The argument is not persuasive.
With respect to the argued audit trail, this feature is a result of using blockchain technology and is not a technological improvement that renders the claims as improving the function of a computer. The argument is not persuasive.
With respect to the cross system transaction execution triggered by verified consensus, this is broadly arguing the abstract idea of the claims, which is not persuasive. The argument that what is claimed does not exist in the prior art is not relevant to the 101 inquiry as novelty or non-obviousness over prior art does not equate to eligibility as a rule. The argument is not persuasive.
On pages 11-12 the applicant argues that the claims recite limitations that are not well understood, routine, and conventional. The applicant argues that because there is no prior art rejection of the claims, that means that the claimed invention is not well understood, routine, and conventional; consequently, the claims must be found eligible. This is not persuasive. The assumption that a lack of a prior art rejection equates to a claimed element(s) not being well understood, routine, and conventional such that it would render a claim eligible is disagreed with by the examiner. The applicant cannot just allege that the claims are not well understood, routine, and conventional to shift the burden to the examiner to prove otherwise when that is not even an issue in the rejection of record. The rejection of record that makes no mention of a claimed element being an insignificant extra solution activity that would require evidence at step 2B. Examiners do not have to prove with evidence that claimed elements are well understood, routine, or conventional in a given field as part of step 2B in all instances. This part of the eligibility analysis only occurs when an element(s) is found to be an insignificant extra solution activity at the 2nd prong, which is not the case with the pending claims. To requires Examiners to prove that a claimed invention was well understood, routine, and conventional in a given field would be injecting a prior art analysis into the eligibility inquiry that does not exist. 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 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 argument is not persuasive.
Also, as was set forth in buySAFE, Inc. v. Google, Inc. (Fed. Cir. 2014), the court stated that:
"abstract ideas, no matter how groundbreaking, innovative, or even brilliant, are outside what the statute means by "new and useful process, machine, manufacture, or composition of matter", and reference is made to Myriad by the court for this position. Also stated in buySAFE is "In defining the excluded categories, the Court has ruled that the exclusion applies if a claim involves a natural law or phenomenon or abstract idea, even if the particular natural law or phenomenon or abstract idea at issue is narrow. Mayo, 132 S. Ct. at 1303. The Court in Mayo rejected the contention that the very narrow scope of the natural law at issue was a reason to find patent eligibility, explaining the point with reference to both natural laws and one kind of abstract idea, namely, mathematical concepts.
From SAP AMERICA, INC., Plaintiff-Appellee v. INVESTPIC, LLC:
We affirm. We may assume that the techniques claimed are “[g]roundbreaking, innovative, or even brilliant,” but that is not enough for eligibility. Ass’n for Molecular Pathology v. Myriad Genetics, Inc., 569 U.S. 576, 591 (2013); accord buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1352 (Fed. Cir. 2014). Nor is it enough for subject-matter eligibility that claimed techniques be novel and nonobvious in light of prior art, passing muster under 35 U.S.C. §§ 102 and 103. See Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 89–90 (2012); Synopsys, Inc. v. Mentor Graphics Corp., 839 F.3d 1138, 1151 (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.”); Intellectual Ventures I LLC v. Symantec Corp., 838 F.3d 1307, 1315 (Fed. Cir. 2016) (same for obviousness) (Symantec). The claims here are ineligible because their innovation is an innovation in ineligible subject matter. Their subject is nothing but a series of mathematical calculations based on selected information and the presentation of the results of those calculations (in the plot of a probability distribution function). No matter how much of an advance in the finance field the claims recite, the advance lies entirely in the realm of abstract ideas, with no plausibly alleged innovation in the nonabstract application realm. An advance of that nature is ineligible for patenting.
Therefore, the argument is not persuasive that due to a lack of a prior art rejection for the claims, the claimed invention must be considered as not being well understood, routine, and conventional and then must be eligible for that reason. Numerous abstract ideas that are not well understood, routine, and conventional by applicant’s standard (no prior art rejection) have been found by the courts to be abstract ideas that are not eligible for patenting because novelty or non-obviousness over prior art does not equate to eligibility. A lack of a prior art rejection does not equate to eligibility and is not evidence that the claimed invention is not well understood, routine, and conventional (more then just known in the art, ubiquitous) as this term is defined in the eligibility analysis of MPEP 2106.
On page 12 the applicant argues that the claims are not just automating what a human executor does because a human execute does not compute a weighted consensus score (not claimed), does not use a distributed ledger, and does not transmit electronic messages. This is not persuasive. The use of the computers, the network, and the distributed ledger amounts to the use of computers connected by a network and blockchain technology for data storage. The issue of what a human executor does is not relevant to the claims because again, lack of a prior art rejection does not equate to eligibility. The claimed elements in combination with the claim as a whole do not provided for integration or significantly more for all of the above reasons and for reasons set forth in the 35 USC 101 rejection of record.
Conclusion
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.
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/DENNIS W RUHL/Primary Examiner, Art Unit 3626
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