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 10/30/25 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 of the online system, 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;
receiving feedback from the plurality of users as messages exchanged over a secure channel and associated with authenticated 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;
when the conditional bequest is associated with an external record, automatically obtain a[n] record corroborating the completion of the task; NOTE: this limitation is
optional because when the bequest is not associated with an external record this step does not occur, so the BRI of the claim does not include this step
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 an immutable ledger, 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 claim 1 the additional elements are the recitation to the processor subsystem and memory with instructions to perform the recited steps that define the abstract idea, calling the messages “electronic”, calling the instructions “electronic”, an external system that the instructions are sent to, calling the notification “electronic”. The use of a network interface to an external record system is not technically required under the BRI of the claim but has been treated for completeness anyway.
Claim 13 recites an electronic online system, calling the messages “electronic”, calling the instructions “electronic”, an external system that the instructions are sent to, calling the notification “electronic”. The use of a network interface to an external record system is not technically required under the BRI of the claim but has been treated for completeness anyway.
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 a network such as the Internet to perform steps that define the abstract idea. The recitation to the messages and the notification being electronic is an 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. This does not provide for integration into a practical application. The claimed additional elements 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), all being generically recited, and 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.
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, 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 that is connected to a network such as the Internet to perform steps that define the abstract idea. The recitation to the messages and the notification being electronic is an instruction for one to use a computer for the exchange of messages and notifications that themselves are part of the abstract idea. This is just generally linking the execution of the abstract idea to a particular technological environment that is the use of computers. The rationale set forth for the 2nd prong of the eligibility test above is also applicable to step 2B in this regard so no further comments are necessary. The additional elements do not amount to significantly more.
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.
The applicant argues on page 7 of the reply that the claims are integrated into a practical application, and the applicant summarizes 4 aspects of the claims that are considered to be render the claims eligible. The argued elements of receiving of feedback as messages, maintaining and updating a task as claimed, appending a ledger with a record, and sending instructions to initiate a transfer of the gift are elements that are further defining the abstract idea of the claims. The fact that the feedback is received as an electronic message over a network and the sending of the instructions to one of the claimed systems are elements that define an instruction for one to practice the abstract idea using computers connected by a network and does not provide for integration into a practical application. This is just using computers as a tool to perform the abstract idea. With respect to the argued RESTful interface for the receiving of the feedback limitation, the examiner notes that no interface is recited in the claims. The argument is not commensurate with the scope of the claims because what is being argued is not claimed.
The applicant argues that the claimed steps cannot be performed by people and are not directed to an alleged juridical exception. This is not persuasive and is more of a general allegation than a reasoned argument for eligibility. The claimed steps/functions identified by the examiner as defining the abstract idea are simply claimed as being implemented by computers. This does not provide for integration or significantly more, see MPEP 2106.05(f).
The applicant argues that the claims are improving computer/network technology and transaction automation. The applicant argues that a structured authenticated network messaging with the claimed content is an improvement to how computers ingest, normalize, and process data. This is not persuasive because all that is claimed is the receipt of feedback as electronic messages. The “over a secure channel” element is part of the abstract idea and itself does not result in any improvement to technology. There is no authenticated network messaging claimed so that aspect of the argument is not commensurate with the scope of the claims. The claims simply recite that the messages are “associated with an authenticated user account”, which is descriptive language that does not define anything to the messages or the receipt of the messages. There is nothing claimed that is an improvement to how computers ingest, normalize (this is also not claimed) and process data. This is a general allegation at beast that is also an argument that is not commensurate with the scope of the claims.
The applicant argues that the claims recite a tamper evident append only audit via an immutable ledger. The examiner notes that the claims do not recite a tamper evident append only audit of a ledger as has been argued or any audit at all. The claims recite appending a record to an immutable ledger but nothing about the argued audit and append only functionality. The argument is not commensurate with the scope of the claims.
The applicant argues that automatic machine to machine initiation of asset transfers makes the claims eligible. This is not persuasive because the use of computers to exchange messages and to send instructions to initiate a transfer of the gift is just an instruction for one to use a computer to perform the steps that defines the abstract idea and does not render the claims eligible, for the reasons set forth in the 101 rejection of record.
The applicant argues that the argued elements collectively amount to more than generally linking the judicial exception to a particular technological environment by improving computer/network functionality and automating transactions. This is not persuasive because as addressed above, the claims are doing nothing more than to link the execution of the abstract idea to computer implementation. The result of the claims is the sending of an instruction to transfer a gift to a person and does not serve to improve computer or network functionality. The argument is not persuasive
The applicant argues the amended claims on page 9 and argues that the immutable ledger is integral to the systems operation and is used to ensure auditability and technical execution of transfers. The applicant argues that this is not insignificant extra solution activities. This is not persuasive because as the claim is currently written, the immutable ledger is part of the abstract idea and there is no audit of any kind occurring in the claim scope. The argument is not commensurate with the scope of the claims. The appending of a ledger with a record is part of the abstract idea. Using a leger to record an entry is not an improvement to technology as the applicant argues.
The applicant argues on pages 9-10 that the claims recite significantly more. The applicant argues that the examiner has not cited any evidence to show that the claimed elements numbered 1-3 on page 9 are well understood, routine, and conventional in estate/conditional bequest management. This is not persuasive and is not addressing the rejection of record that makes no mention of anything 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 as this only happens 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. The argued elements of votes having different weights and a weighted consensus, appending an immutable ledger (just a ledger as the word immutable does not convey any structure or functionality to the ledger), and generating and sending an instruction to initiate a transfer of a gift are all elements that are part of the abstract idea and do not amount to significantly more. The argument is not persuasive.
The argument on page 10 that the claims recite a non-conventional arrangement of claim elements is not persuasive. The claims are simply linking the execution of the abstract idea to computer implementation which does not provide an inventive concept to the claims. The 101 rejection is being maintained because the amendment does not render the claims eligible and because the arguments are not persuasive.
The traversal of the prior art rejection under 35 USC 103 is persuasive in view of the amended claims. The claims in total recite subject matter that is not taught or suggested by the cited prior art of record. Reasons for allowance will be set forth upon all claims being allowable and upon the claims reciting eligible subject matter.
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
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