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 .
Status of Claims
This action is in reply to the amendments and remarks filed on February 23, 2026.
Claims 1 and 9 are currently amended.
Claims 1-12 are currently pending and have been examined.
Applicant’s remarks and arguments are addressed below.
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55 in the parent application 17/411680.
Claim Rejections - 35 USC § 112(b)
The following is a quotation of 35 U.S.C. § 112(b):
(B) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. § 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 3 and 11 are rejected under 35 U.S.C. § 112(b) or 35 U.S.C. § 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor, or for pre-AIA the applicant regards as the invention. Specifically, these claims recite wherein the decedent in respect of whom a decedent record is created is a living individual, and the system is being used in estate preplanning, yet independent Claims 1 and 9, as now amended, recite wherein the user creating the decedent record is distinct from the decedent in respect of whom the record is created and Applicant appears to believe that independent Claims 1 and 9 require that the “decedent” be deceased at the time of the account’s creation (see, e.g., Remarks pages 18-19). Thus, it is not particularly pointed out or distinctly claimed how a “decedent” record can both be created for a living individual who is not deceased, or how the system can be used in estate preplanning if the account must be created by someone other than the person for whom the estate planning is done. Because Claims 3 and 11 are not particularly pointed out in light of Applicant’s amendments and Applicant’s apparent interpretation of the claims, they must be rejected under § 112(b).
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 1-12 are rejected under 35 U.S.C. § 101 because the claimed invention is directed to non-statutory subject matter. When considering subject matter eligibility under 35 U.S.C. § 101, there are multiple steps that may need to be assessed. First, in step 1 it must be determined whether the claim is directed to one of the four statutory categories of invention, i.e., process, machine, manufacture, or composition of matter. If the claim does fall within one of the statutory categories, it must then be determined in step 2A prong 1 whether the claim is directed to a judicial exception (i.e., law of nature, natural phenomenon, and abstract idea). If the claim is directed toward a judicial exception, it must then be determined in step 2A prong 2 whether the judicial exception is integrated into a practical application. Finally, if the judicial exception is not integrated into a practical application, it must additionally be determined in step 2B whether the claim recites “significantly more” than the abstract idea. See “2019 Revised Patent Subject Matter Eligibility Guidance,” 84 Fed. Reg. (4): 50-57 (Jan. 7, 2019).
In the instant case, Claims 1-8 are directed toward a method, i.e., process and Claims 9-12 are directed toward a system, i.e., a “server” comprising a processor and memory is considered a “system” for the purposes of § 101 step analysis. Thus, each of the claims falls within one of the four statutory categories as required by step 1. Nevertheless, the claims are directed toward the judicial exception of an abstract idea in step 2A prong 1. Both independent Claims 1 and 9 recite a method of providing self-service assistance to a user in performing documentary estate administration tasks. Administering and documenting the estate of an individual is a method of organizing human activity, specifically one involving legal interactions. See MPEP § 2106.04(a)(2)(II)(B). Because the instant invention is assisting individuals with preparing their (or someone else’s) estate, which is a legal task that must be performed legally and pursuant to a whole set of legal rubrics, the invention is reciting a certain method of organizing human activities, specifically legal interactions.
Finding the claims to be directed toward an abstract idea, however, is not the end of the inquiry. Rather, the next step is to determine whether the judicial exception is integrated into a practical application (step 2A prong 2). The revised guidance provides exemplary considerations that are indicative that an additional element or combination of elements may have integrated the exception into a practical application: 1) an additional element reflecting an improvement in the functioning of a computer or an improvement to another technology or technical field, 2) an additional element that implements the judicial exception with a particular machine or manufacture that is integral to the claim, 3) an additional element that effects a transformation or reduction of a particular article to a different state or thing, or 4) an additional element that applies or uses the judicial exception in some other meaningful way beyond generally linking the use of the judicial exception to a particular technological environment such that the claim as a whole is more than a drafting effort designed to monopolize the exception. See MPEP § 2106.04(d). Examples where a judicial exception has not been integrated into a practical application include: 1) use of “apply it” or the equivalent, i.e., merely using a computer to implement or perform an abstract idea, 2) an additional element that adds insignificant extra-solution activity to the judicial exception, and 3) an additional element that does no more than generally link the use of the judicial exception to a particular technological environment or field of use. See id.
Applying these considerations to the claims in the instant application, the claims do not integrate the judicial exception into a practical application. The claims fail to recite an improvement of a computer, any improvement to a technology or technical field, any particular machine, any transformation or reduction of a particular article to a different state or thing, or any additional element that uses the judicial exception in a meaningful way. Instead, the claims are merely reciting instructions to implement the abstract idea on a computer (i.e., “software component;” “processor and memory;” “server;” “databases”), which is insufficient to provide a practical application of the claims and provide subject matter eligibility. See id. Therefore, there is no integration of the abstract idea into a practical application.
If the claims are not integrated into a judicial exception, the Examiner must consider whether there is “significantly more” recited in the claim in step 2B. See MPEP § 2106.05. There is nothing unconventional or inventive in Applicant’s claims for the purpose of analysis under step 2B, e.g., any combination of elements that provide an advance over any technological state of the art. Rather, as noted above, an abstract legal interaction is merely implemented by a general-purpose computer. Other than the limitations that are abstract for the reasons articulated above, Applicant has merely recited a generic computer that facilitates the steps of the invention. Thus, Applicant’s claims merely recite a computer to implement the abstract idea, which fails to provide “significantly more” than the abstract idea.
As the MPEP states, Examiners may consider the following three factors when determining whether the claim recites mere instructions to implement an abstract idea on a computer: 1) whether the claim recites only the idea of a solution or outcome, i.e., the claim fails to recite details of how a solution to a problem is accomplished; 2) whether the claim invokes computers or other machinery merely as a tool to perform an existing process; and 3) the particularity or generality of the application of the judicial exception. See MPEP § 2106.05(f). Applying those factors to the instant application: 1) the claims do not recite how the computer performs any of the steps other than just stating that they do it; 2) the claims invoke the computer to perform a process of estate administration that has been performed without computers and before the ubiquity of computers; and 3) the claims are general and not recited in much particularity because it can apply to any way of performing estate administration.
The dependent claims 2-8 and 10-12 are merely reciting further embellishments of the abstract idea and do not amount to anything that is significantly more than the abstract idea itself. In other words, none of the dependent claims recite an improvement to a technology or technical field or provide any meaningful limitations that, in an ordered combination provide “significantly more” or providing any integration into a practical application. Rather, the dependent claims are merely further reciting features that are just as abstract as independent Claims 1 and 9. Therefore, Claims 1-12 are directed to non-statutory subject matter and are rejected as ineligible subject matter under 35 U.S.C. § 101.
Claim Rejections - 35 USC § 103
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.
The following is a quotation of 35 U.S.C. § 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102 of this title, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied for establishing a background for determining obviousness under 35 U.S.C. § 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claims 1-12 are rejected under 35 U.S.C. § 103 as being unpatentable over Molinsky et al. (US 2020/0258177 A1, hereinafter “Molinsky”) in view of Nilson (US 2009/0030825 A1).
Claim 1. Molinsky teaches: A method of providing self-service assistance to a user in documentary estate administration tasks (see at least the Abstract), using a server (see at least Figure 1 feature 12 and Figure 2 feature 30 and ¶s 20-21 teaching at least one server that is used to provide the self-service assistance with documentary estate administration tasks) comprising:
a processor and memory (see at least Figures 1 and 2 and ¶s 20-21 teaching processors 16 and memories 20, 22, and 24);
a network interface for communication with user client devices each having a user interface (see, e.g., Figures 1 and 2 teaching networks between different user terminals 14, which have interfaces as further taught, e.g., in ¶ 22);
an estate administration software component for executing the steps of the method (see, e.g., ¶s 27-29 teaching software implementation of the computer code by execution by a processor);
a form database containing form records each corresponding to a form for completion for a decedent and comprising at least the following values (see, e.g., ¶ 42 and Figure 6 teaching obtaining a will template 78 and allowing the user to enter the required information; alternatively, note feature 68 of Figure 4 teaching a table that is used to fill data regarding estate planning or will preparation or funeral planning, noting further that feature 68 also appears in Figure 5 regarding estate planning and Figure 7 regarding funeral planning):
i. a jurisdictional filter value corresponding to the decedent’s residential jurisdiction in respect of which the form is to be used, selected from a list of standardized jurisdictional values, wherein the jurisdictional filter value is stored in each form as a standardized data field configured for automated comparison against the residential jurisdiction stored in a decedent record (this limitation is addressed below);
ii. any non-jurisdictional filter values corresponding to other decedent data which further limit the applicability of the corresponding form to a particular decedent (see, e.g., ¶ 34 teaching the user entering information such as name, address, phone number, email address, birth date, and other information that is then, as taught in, e.g., ¶s 40 and 42, used to automatically fill out templates);
iii. rendering data for the rendering of the form for display or download from the server to a client device (see, e.g., ¶s 39-42 teaching display of estate planning documents, templates, and values to the user); and
iv. field indicators, mapping any additional decedent data inputs required from a user or calculations required to render the form (see ¶s 34-35 and 39-42 teaching automatically populating fields if available but otherwise leaving fields open for the user to input); and
a decedent database containing decedent records each corresponding to a decedent in respect of whom the system can assist in estate administration, wherein the user creating the decedent record is distinct from the decedent in respect of whom the record is created and wherein the decedent database comprises at least the following values (see, e.g., ¶s 32, 34, 40, 46, and 50 teaching database 38 into which the user’s data is entered and stored and utilized to populate the data in the planning and management services 56, 58, and 60; regarding wherein the user creating the decedent record is distinct from the decedent in respect of whom the record is created, this feature is further addressed below):
i. identification of the decedent (see ¶s 34-35 teaching entering name);
ii. residential jurisdiction of the decedent selected from the list of standardized jurisdictional values (see ¶s 34-35 teaching entering address, though noting that this is further addressed below); and
iii. additional decedent data values corresponding to the decedent and their estate (see ¶s 34-35 teaching entering information such as phone number, number of dependents, marital status, financial information, et al.);
said method comprising, using the server and the estate administration software component:
a. creating a decedent record in respect of a decedent on receipt of a request to do from a user client device by (see, e.g., ¶ 34 teaching a user using a computer device to create a profile or log in to an account and update their profile):
a. serving a data entry interface to the user interface of the user client device in which the user can complete a user interview by entering captured decedent data values corresponding to at least (see ¶s 34-35 teaching entering information such as phone number, number of dependents, marital status, financial information, et al.):
i. identification of the decedent (see ¶s 34-35 teaching entering name, which is updated in the user’s profile 40 and stored in the database 38);
ii. The residential jurisdiction of the decedent selected from the list of standardized jurisdictional values (see ¶s 34-35 teaching entering user’s address, which is updated in the user’s profile 40 and stored in the database 38, though Examiner notes that this is further addressed below); and
iii. Any additional decedent data values corresponding to the decedent and their estate (see ¶s 34-35 teaching entering information such as phone number, number of dependents, marital status, financial information, et al., which is updated in the user’s profile 40 and stored in the database 38); and
b. on user completion of the interview, receiving transmitted the captured decedent data values from the user client device at the server and creating and storing a decedent record in the decedent database storing the captured decedent data (see, e.g., ¶ 34 teaching that after the user enters the data that creates his or her profile the data are stored in database 38); in a form rendering step, rendering forms from the form database to a user client device in respect of a requested decedent when requested by (see, e.g., ¶ 35 teaching mapping fields from the user profile 40 with similar fields of the advance life planning and management services 56, 58, and 60): conducting a matching step comprising:
i. capturing identifying information of the requested decedent from the user client device (see, e.g., ¶ 35 teaching mapping fields from the user profile 40 with similar fields of the advance life planning and management services 56, 58, and 60);
ii. matching the identifying information of the requested decedent to a decedent record in the decedent database, being the selected decedent record (see, e.g., ¶ 35 teaching mapping fields from the user profile 40 with similar fields of the advance life planning and management services 56, 58, and 60);
iii. scanning all of the form records stored within the form database to identify any matched form records in which (see, e.g., ¶ 35 teaching mapping fields from the user profile 40 with similar fields of the advance life planning and management services 56, 58, and 60):
1. the residential jurisdiction stored in the selected decedent record matches the jurisdictional filter value stored in the form record (see, e.g., ¶ 35 teaching mapping fields from the user profile 40 with similar fields of the advance life planning and management services 56, 58, and 60, noting that as taught in that paragraph and in ¶ 34 one of the inputs can be address, though Examiner notes that this is further addressed below); and
2. any non-jurisdictional filter values stored in the form record are matched to decedent data values stored in the selected decedent record (see, e.g., ¶ 35 teaching mapping fields from the user profile 40 with similar fields of the advance life planning and management services 56, 58, and 60);
c. presenting the details of matched form records to the user interface of the user client device in a selection interface and permitting the user to select at least one of the matched form records for rendering, being selected form records (see, e.g., ¶s 40-43 teaching generating forms for estate planning, last will and trust preparation, or funeral planning with the data from the user’s profile and from database 38 as taught in ¶ 35 when it notes that fields from the user profile 40 are mapped with similar fields of the advance life planning and management services 56, 58, and 60); and
d. for each selected form record:
i. using the rendering data and field indicators stored in the selected form record along with the decedent data stored in the selected decedent record to render a completed version of the form corresponding to the selected form record adapted to the decedent data stored in the selected decedent record (see, e.g., ¶s 40-43 teaching the user completing the various forms to perform estate planning, create a last will and testament, or plan a funeral on the user interface); and
ii. making the completed version of said form available to the user for use via the user interface of the user device (see, e.g., ¶ 42 noting that the user completes the preparation and views the will on the display);
wherein only applicable forms based upon the residential jurisdiction and any other non- jurisdictional filter values of a particular decedent will be offered or rendered by the system in respect of the decedent (this limitation is further addressed below).
As noted above, while Molinsky teaches a set of forms that guides a user through the estate settlement process, Molinsky fails to expressly teach that the user must select a jurisdiction that affects what forms or parts of the forms are then presented to the user including wherein the jurisdictional filter value is stored in each form as a standardized data field configured for automated comparison against the residential jurisdiction stored in a decedent record. Nevertheless, such a feature is taught in analogous prior art. Nilson, for example, teaches that the user of the form can select a jurisdiction, such as via a drop-down menu, that will affect the calculations and the content of the forms presented to the user based on the varying laws and regulations of that particular jurisdiction (see, e.g., Figure 9 feature 909 teaching the drop-down menu selecting the jurisdiction of Pennsylvania; see also ¶ 144; see further ¶ 7 teaching that every American jurisdiction has its own body of laws that are used to determine the ownership of intestate property subject to its control; regarding wherein the jurisdictional filter value is stored in each form as a standardized data field configured for automated comparison against the residential jurisdiction stored in a decedent record, Examiner notes that Nilson ¶s 18-22 teaches how selecting various different jurisdictions leads to automated comparisons regarding which forms and which data will needed to be collected, which is what this limitation means in light of Applicant’s specification paragraphs 67-68). Molinsky also fails to expressly teach the limitation of wherein the user creating the decedent record is distinct from the decedent in respect of whom the record is created. Instead, as noted above, Molinsky teaches that the user can create his or her own record before death as a means of estate planning (see at least Figures 5-7 and ¶s 40-43 teaching that a user can, before death, perform estate planning, prepare a last will and testament, and perform funeral planning). Nevertheless, Nilson teaches that the user creating the record for determining intestate division of a decedent’s estate can be a user distinct from the decedent (see, e.g., Figures 9-11 teaching that the data that are inputted are done so for a person with an actual “date of death” that is entered in the form, in this case Sept. 6, 2008). Nilson is analogous to the instant application and Molinsky because it relates to estate planning and distribution of a decedent’s property (see, e.g., Nilson ¶s 5-7).
Therefore, it would have been obvious to one of ordinary skill in the art as of the effective filing date to apply the known techniques of requiring the user to select a drop-down button of the applicable jurisdiction as well as that the user can be different from the decedent (both as disclosed by Nilson) to the known method and system of guiding a user through the process of estate planning or intestate division of property on a computer (as disclosed by Molinsky). One of ordinary skill in the art would have been motivated to apply the known technique of requiring the user to select a drop-down button of the applicable jurisdiction because every American jurisdiction has its own body of laws that are used to determine the ownership of intestate property subject to its control and thus one must select the appropriate jurisdiction to get the correctly applicable law (see Nilson ¶ 7). One of ordinary skill in the art would have been motivated to apply the known technique of the user being different from the decedent because the invention can then operate even when there is not a will provided by the decedent and thus can help the family member appointed as the estate’s representative, who may be unfamiliar with the process (see Nilson ¶s 6-8).
Furthermore, it would have been obvious to one of ordinary skill in the art as of the effective filing date to apply the known techniques of requiring the user to select a drop-down button of the applicable jurisdiction as well as that the user can be different from the decedent (both as disclosed by Nilson) to the known method and system of guiding a user through the process of estate planning or intestate division of property on a computer (as disclosed by Molinsky), because the claimed invention is merely applying a known technique to a known method ready for improvement to yield predictable results. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007). In other words, all of the claimed elements were known in the prior art and one skilled in the art could have combined the elements as claimed by known methods with no change in their respective functions, and the combination would have yielded nothing more than predictable results to one of ordinary skill in the art at the time of the invention (i.e., predictable results are obtained by applying the known techniques of requiring the user to select a drop-down button of the applicable jurisdiction as well as that the user can be different from the decedent to the known method and system of guiding a user through the process of estate planning or intestate division of property on a computer, because predictably an additional user input that affects the format of the estate administration results, such as limiting the template to one that is compliant with the particular jurisdiction’s laws, can be placed to make sure the analyzed results are correct, and that any user can utilize such automated planning and legal guidance whether before or after death). See also MPEP § 2143(I)(D).
Regarding Claim 9, this claim is a system claim but otherwise recites the same limitations as Claim 1. Thus, the rejection of Claim 1 above relying on the combination of Molinsky and Nilson to render the claim obvious is incorporated herein and serves to reject Claim 9. Similarly coextensive dependent claims will be treated together below for the sake of brevity.
Claims 2 and 10. The combination of Molinsky and Nilson teach the limitations of Claims 1 and 9. Nilson further teaches: The method of Claim 1 wherein the decedent in respect of whom a decedent record is created is deceased (see, e.g., Figures 9-11 teaching that the data that are inputted are done so for a person with an actual “date of death” that is entered in the form, in this case Sept. 6, 2008). The rationale for combining Nilson with Molinsky is provided in the rejection of Claim 1 above.
Claims 3 and 11. The combination of Molinsky and Nilson teach the limitations of Claims 1 and 9. Molinsky further teaches: The method of Claim 1 wherein the decedent in respect of whom a decedent record is created is a living individual, and the system is being used in estate preplanning (see at least Figures 5-7 and ¶s 40-43 teaching that a user can, before death, perform estate planning, prepare a last will and testament, and perform funeral planning).
Claim 4. The combination of Molinsky and Nilson teach the limitations of Claim 1. Molinsky further teaches: The method of Claim 1 wherein the completed version of a form is adapted in rendering to include or exclude sections thereof based on the contents of the selected decedent record (see, e.g., ¶ 26 teaching that the database may include data fields specific to a user profile 40).
Claim 5. The combination of Molinsky and Nilson teach the limitations of Claim 1. Molinsky further teaches: The method of Claim 1 wherein the non-jurisdictional filter values used to limit the selection of forms in respect of a particular decedent are selected from the group of: age, income, date of death, jurisdiction of birth, date of birth, residential address, cause of death, family status, marital status, vendor account number or status, government program registration or eligibility, or vendor subscription status (see, e.g., ¶s 34-35 teaching birth date, marital status, number of dependents, address, et al. among the inputted data).
Claim 6. The combination of Molinsky and Nilson teach the limitations of Claim 1. Molinsky further teaches: The method of Claim 1 wherein at least one field indicator in a form record includes details of a calculation to determine a calculated value based upon decedent data in the selected decedent record, and the rendering of the related form when the form record is a matched form record includes executing the necessary calculation for the calculated value for use in the rendered form (see, e.g., ¶s 40-41 teaching calculating the user’s assets, liabilities, and net worth based upon the user’s data, which can be matched data obtained from databases).
Claim 7. The combination of Molinsky and Nilson teach the limitations of Claim 1. Nilson further teaches: The method of Claim 1 wherein the estate administration software component is programmed to administer an adaptive interview, whereby the nature of the questions asked and the decedent data captured from the user is adapted based upon values entered by the user to alter the questions presented and asked and decedent data captured (see, e.g., ¶ 16 teaching that different variables are arranged hierarchically according to the order of priority in which the data must be examined; see also, e.g., ¶s 18-22 providing examples of changing the questions asked after the jurisdiction is selected). The rationale for combining Nilson with Molinsky is provided in the rejection of Claim 1 above.
Claims 8 and 12. The combination of Molinsky and Nilson teach the limitations of Claims 1 and 9. That combination further teaches: The method of Claim 1 wherein:
a. the server further comprises:
i. an authority database containing at least one authority record corresponding to a network-connected authority system requiring data updates on death of a decedent, each authority record comprising at least any necessary authentication information to enable communication between the server and the authority system via the network connection (see, e.g., Molinsky ¶ 48 teaching the computer scanning Internet and other network data for data indicative of death of the user and then seeking to confirm that event, e.g., by contacting a survivor or a beneficiary); and
ii. a requirements database containing at least one requirement record corresponding to a form or decedent data to be filed with an authority system in respect of a decedent, each requirement record comprising at least (see Molinsky ¶ 48 teaching, upon confirmation of death, disbursing the funeral services fund and accessing the funeral planning service plans):
1. a link to the authority record of the corresponding authority (see Molinsky ¶ 48 teaching, upon confirmation of death, disbursing the funeral services fund and accessing the funeral planning service plans);
2. a jurisdictional filter value corresponding to the decedent’s residential jurisdiction in respect of which the requirement record is to be activated, selected from the list of standardized jurisdictional values (see Nilson Figure 9 feature 909);
3. any non-jurisdictional filter values corresponding to other decedent data which further limit the activation of the requirement record in respect of a particular decedent (see Molinsky ¶ 48 teaching, upon confirmation of death, disbursing the funeral services fund and accessing the funeral planning service plans); and
4. details of any required decedent data and format to be transmitted to the linked authority system on activation of the requirement record (see Molinsky ¶ 48 teaching finding out about the user’s reported death and reaching out for confirmation to a survivor or beneficiary and, upon confirmation of death, disbursing the funeral services fund and accessing the funeral planning service plans);
b. the method further comprises an authority filing step following the form rendering step comprising:
i. scanning the requirement records stored within the requirements database to identify any matched requirement records wherein (see, e.g., Molinsky ¶ 48 teaching the computer scanning Internet and other network data for data indicative of death of the user and then seeking to confirm that event, e.g., by contacting a survivor or a beneficiary):
1. the residential jurisdiction stored in the selected decedent record matches the jurisdictional filter value stored in the requirement record (see Nilson Figure 9 feature 909); and
2. any non-jurisdictional filter values stored in the requirement record are matched to decedent data values in the selected decedent record (see Molinsky ¶ 48 teaching finding out about the user’s reported death from, e.g., scanning the Internet and matching a reported name with the name of the user and reaching out for confirmation to a survivor or beneficiary and, upon confirmation of death, disbursing the funeral services fund and accessing the funeral planning service plans);
d. presenting the details of matched requirement records to the user interface of the user client device, from which the user can indicate a transmission selection for the matched requirement records selected for rendering, being selected requirement records (see Molinsky ¶ 48 teaching finding out about the user’s reported death from, e.g., scanning the Internet and matching a reported name with the name of the user and reaching out for confirmation to a survivor or beneficiary and, upon confirmation of death, disbursing the funeral services fund and accessing the funeral planning service plans; see further ¶ 47 teaching, utilizing the funeral planning service 60, notifying those on the list of those he or she wishes to be notified and automatically notifying those people); and
e. for each selected requirement record:
i. using the decedent data stored in the selected decedent record, assembling a filing packet of the required decedent data and format to be transmitted identified in the selected requirement record (see Molinsky ¶ 48 teaching, upon confirmation of death, disbursing the funeral services fund and accessing the funeral planning service plans and ¶ 49 teaching providing the money to the licensed funeral director; see further ¶ 47 teaching, utilizing the funeral planning service 60, notifying those on the list of those he or she wishes to be notified and automatically notifying those people);
ii. opening a transmission session to the authority system identified in the linked authority record using the stored authentication information therefrom (see Molinsky ¶ 48 teaching, upon confirmation of death, disbursing the funeral services fund and accessing the funeral planning service plans and ¶ 49 teaching providing the money to the licensed funeral director; see further ¶ 47 teaching, utilizing the funeral planning service 60, notifying those on the list of those he or she wishes to be notified and automatically notifying those people);
iii. transmitting the filing packet to the authority system within the transmission session (see Molinsky ¶ 48 teaching, upon confirmation of death, disbursing the funeral services fund and accessing the funeral planning service plans and ¶ 49 teaching providing the money to the licensed funeral director; see further ¶ 47 teaching, utilizing the funeral planning service 60, notifying those on the list of those he or she wishes to be notified and automatically notifying those people); and
iv. closing the transmission session (see Molinsky ¶ 48 teaching, upon confirmation of death, disbursing the funeral services fund and accessing the funeral planning service plans and ¶ 49 teaching providing the money to the licensed funeral director; see further ¶ 47 teaching, utilizing the funeral planning service 60, notifying those on the list of those he or she wishes to be notified and automatically notifying those people).
Examiner notes that the rationale for combining Nilson with Molinsky is provided in the rejection of Claim 1 above.
Response to Arguments
Applicant’s arguments have been fully considered. In the remarks, Applicant specifically addresses the following:
Claim Objections:
Claims 1-12 were objected to. Applicant’s amendments have addressed the objections and rendered all of them moot. The objections have been withdrawn.
Claim Rejections - 35 U.S.C. § 101:
Claims 1-12 were rejected under § 101 as being directed toward the judicial exception of an abstract idea without any integration into a practical application or significantly more. Applicant first argues that the Examiner characterized “the claims at an impermissibly high level of abstraction” (see Remarks pages 15-16). Examiner notes that Applicant has not provided any argument regarding why the claims are not, in fact, directed toward the legal interactions regarding settling a decedent’s financial assets (i.e., the execution of a will or the settlement of the estate’s property according to intestate laws). All of Applicant’s references to various database and software components are features that are addressed in the § 101 rejection in steps 2A prong 2 and step 2B.
Applicant next argues that the claims integrate the abstract idea into a practical application in step 2A prong 2 (see Remarks pages 16-17). Specifically, Applicant argues that various form records, standardized lists of jurisdictions, and automated rendering of the forms integrate the abstract legal interaction into a practical application. This argument is not persuasive. Instead, Examiner asserts that Applicant’s invention is merely using a general-purpose computer as a tool to implement the abstract idea. Using a “standardized jurisdictional filter” is merely using the computer to perform the abstract legal process of determining which state’s laws apply to the distribution of the property, which is a necessary legal pre-requisite for performing many of the further legal determinations. Various databases and forms and rendering of forms is merely the computer-based version of performing the pre-computer analog of applying the specific facts of a particular decedent estate’s property to the various laws that would apply to it. There is no improvement to any computer or any other technical field or technology. Thus, the claims do not integrate the abstract legal interaction into any practical application.
Likewise, Applicant argues that the claims’ computer architecture provides “significantly more” than the abstract idea in step 2B (see Remarks pages 17-18). This argument is not persuasive. Applicant argues that “the claimed combination is not conventional,” yet Applicant has not referred to anything that could not be placed on a general-purpose computer to perform the legal interaction. As stated in the paragraph above, Examiner asserts that Applicant’s invention is merely using a general-purpose computer as a tool to implement the abstract idea. Using a “standardized jurisdictional filter” is merely using the computer to perform the abstract legal process of determining which state’s laws apply to the distribution of the property, which is a necessary legal pre-requisite for performing many of the further legal determinations. Various databases and forms and rendering of forms is merely the computer-based version of performing the pre-computer analog of applying the specific facts of a particular decedent estate’s property to the various laws that would apply to it. There is no improvement to any computer or any other technical field or technology. Thus, the claims do not provide “significantly more” than the abstract idea. The § 101 rejection is maintained.
Claim Rejections - Prior Art:
Regarding the application of the prior art to the claims, Applicant makes three main arguments. The first argument is that primary reference Molinsky fails to teach the independent claims, which as now amended require the user creating the decedent record being “distinct from the decedent in respect of whom the record is created” (see Remarks pages 19-20). Applicant then goes on to argue that Molinsky cannot be used because the rejection’s “mapping of MOLINSKY’s user profile to the claimed decedent record conflates two fundamentally different systems serving fundamentally different purposes, and it is not supported by MOLINSKY’s disclosure” (see Remarks page 20, capitalization in the original). This argument does not make sense in light of Applicant’s own disclosure, including the original claims and especially Claims 3 and 11 as still pending. These claims recite wherein the decedent in respect of whom a decedent record is created is a living individual, and the system is being used in estate preplanning, and thus Applicant’s own invention can be utilized for estate preplanning (as Molinsky does). Contrast Claims 3 and 11 with Claims 2 and 10, which recite wherein the decedent in respect of whom a decedent record is created is deceased. Thus, Applicant’s own invention contemplates that the decedent record can be created by the decedent before he or she dies as a matter of estate planning (Claims 3 and 11 and, e.g., as in Molinsky) or after the decedent dies by another person (Claims 2 and 10 and, e.g., as in secondary reference Nilson). Thus, any argument that Molinsky cannot be used because it is a “fundamentally different service … serving [a] fundamentally different purpose[]” belies Applicant’s own disclosures and raises the issue of how Claims 3 and 11 should be interpreted in light of the amendments to Claims 1 and 9 as well as Claims 2 and 10.
Applicant’s second argument is that Molinsky does not teach a form database with stored filter values or an automated multi-criteria scan of form records against decedent data (see Remarks page 20). Essentially, Applicant is arguing that Molinsky does not teach “jurisdictional filter values” (see id.), which Examiner concedes. This argument is not persuasive because it is essentially attacking the § 103 rejection in a piecemeal manner. In response to Applicant’s arguments against the references individually, one cannot show non-obviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986). Applicant’s arguments fail to account for Nilson’s teachings regarding jurisdictional and non-jurisdictional filter values stored within form records (see, e.g., Nilson ¶s 18-22 teaching how selecting the jurisdictional filter affects which other non-jurisdictional filters are utilized to collect the appropriate forms and ask the user the appropriate questions). Thus, this argument is not persuasive.
Applicant’s third argument is that Nilson does not supply the missing teaching and that the proposed combination is improper (see Remarks pages 20-21). First, Applicant argues that “Nilson operates in a completely different technical context” (see Remarks page 21). This argument is not persuasive because, as noted in the first argument above, Applicant’s own invention operates in both an estate planning and post-death decedent context. This argument is also not persuasive because there is nothing technical about the contexts of Molinsky and Nilson: they both seek to utilize basic web browsers to collect information regarding a person’s wealth and properties (whether alive or dead) and generate follow-up questions seeking to achieve the best or appropriate legal distribution of that property. Thus, Molinsky and Nilson are combinable. Second, Applicant argues that Examiner’s characterization of Nilson “overstates its disclosure” (see Remarks page 21), yet fails to explain in any way how the citations to Nilson fail to teach a standardized jurisdictional filter. Thus, this argument is not persuasive. Finally, Applicant argues that “the motivation to combine is not adequately established” (see Remarks page 21), stating that it is based on “hindsight-driven reasoning” and that it would merely apply intestate distribution laws rather than some system that matches records and scans forms. This argument is also not persuasive because Examiner provided motivations to combine based on the teachings of the references themselves and the predictability of their being combinable as both being web-based browsers that collected data and asked further questions about wealth and estates based on the previous responses. Thus, Applicant’s arguments have been considered but are not considered persuasive. The § 103 rejection is maintained.
Conclusion
The prior art made of record and not relied upon is considered pertinent to Applicant’s disclosure: Levin et al., US 2015/0254794 A1; Rajagopalan et al., US 2016/0260187 A1; Breitweiser et al., US 11,544,807 B1.
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 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 date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JAN P MINCARELLI whose telephone number is (571)270-5909. The examiner can normally be reached on Monday through Friday, 8:00 AM to 4:30 PM Eastern Time.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Nathan C. Uber, can be reached at (571)270-3923. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JAN P MINCARELLI/
Primary Examiner, Art Unit 3626
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