DETAILED ACTION
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
Claims 1-20, as originally filed 11/18/2024, are pending and have been examined on the merits (claims 1, 9, and 17 being independent). The applicant’s claim for benefit of provisional application 62/462,636, filed 02/23/2017 has been received and acknowledged.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 11/18/2024 is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
Claim Objections
Claims 2, 10, and 18 are objected to because of the following informalities: Claim 2, 10, and 18, line 3: “provide” should be “provider”. Appropriate correction is required.
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 1-20 are rejected under 35 U.S.C. 101 because the claimed invention is directed to non-statutory subject matter without significantly more.
When considering subject matter eligibility under 35 U.S.C. 101, (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, (2a) it must then be determined whether the claim is directed to a judicial exception (i.e., law of nature, natural phenomenon, and abstract idea), and if so (2b), it must additionally be determined whether the claim is a patent-eligible application of the exception. If an abstract idea is present in the claim, any element or combination of elements in the claim must be sufficient to ensure that the claim amounts to significantly more than the abstract idea itself. Examples of abstract ideas include fundamental economic practices; certain methods of organizing human activities; an idea itself; and mathematical relationships/formulas. Alice Corporation Pty. Ltd. v. CLS Bank International, et al., 573 U.S. (2014).
The claimed invention is directed to a judicial exception (i.e. a law of nature, a natural phenomenon, or an abstract idea) without significantly more. In the instant case, the claim(s) as a whole, considering all claim elements both individually and in combination, do not amount to significantly more than an abstract idea.
Step (1): In the instant case, the claims are directed towards to a method for providing a central trust that contains a set of portable investment dataset for participants or investment providers which contains the steps of executing, generating, and modifying. The claim recites a series of steps and, therefore, is a process. The claims do fall within at least one of the four categories of patent eligible subject matter because claim 1 is direct to a method, claim 9 is direct to a non-transitory computer medium, and claim 17 is direct to a system, i.e. machines programmed to carrying out process steps, Step 1-yes.
Step (2A) Prong 1: A method for providing a central trust that contains a set of portable investment dataset for participants or investment providers is akin to the abstract idea subject matter grouping of: Certain Methods of Organizing Human Activity as fundamental economic principles or practices and commercial or legal interactions. As such, the claims include an abstract idea.
The specific limitations of the invention are (a) identified to encompass the abstract idea include: { executing, …. a mapping protocol to identify a set of attributes within a retrieved set of investment data, wherein the set of attributes correspond to one or more investment attributes of a set of accounts; generating, …. a set of portable datasets representing the set of accounts, the set of portable dataset being in a unified format compatible with a format of the set of the accounts, each portable dataset comprising one or more data fields configured to store at least one attribute of the set of attributes, wherein at least one data record within each portable dataset designates a corresponding provider…., responsive to an amount associated with at least one account represented by a corresponding portable dataset satisfying a threshold, modifying, …. one or more data fields within the corresponding portable dataset to reflect a second provider…. instead of an existing provider….}
As stated above, this abstract idea falls into the (b) subject matter grouping of: Certain Methods of Organizing Human Activity as fundamental economic principles or practices and commercial or legal interactions as executing a mapping protocol to identify a set of attributes with a set of investment data, generating a set of datasets representing the set of accounts, and modifying data fields within the corresponding the dataset.
Step (2A) Prong 2: The instant claims do not integrate the exception into a practical application because additional elements of “by at least one processor”, “computing device”, and “server” amount to simply applying the abstract idea to a computer component (e.g. “apply it”) do not apply, rely on, or use the judicial exception in a manner that that imposes a meaningful limitation on the judicial exception (i.e. generally linking the use of the judicial exception to a particular technological environment or field of use - see MPEP 2106.05(h) or apply it with the judicial exception, or mere instructions to implement an abstract idea on a computer, or merely uses a computer as a tool to perform an abstract idea - see MPEP 2106.05(f)).
The instant recited claims including additional elements (e.g., processor, computing device, server) do not improve the functioning of the computer or improve another technology or technical field nor do they recite meaningful limitations beyond generally linking the use of an abstract idea to a particular technological environment. The limitations merely use a generic computing technology (Specification paragraph [0016]: user device, analytics server, employer server, recordkeeper devices, processor, storage medium) as generally linking the use of the judicial exception to a particular technological environment or field of use - see MPEP 2106.05(h) or apply it with the judicial exception, or mere instructions to implement an abstract idea on a computer, or merely uses a computer as a tool to perform an abstract idea - see MPEP 2106.05(f)). Therefore, the claims are directed to an abstract idea
Step (2B): The claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception. As discussed above with respect to integration of the abstract idea into a practical application, the additional elements (Claims: e.g., processor, computing device, server) amount to no more than mere instructions to apply the exactly using generic computer component. The claim elements when considered separately and in an ordered combination, do not add significantly more than implementing the abstract idea.
The computer is merely a platform on which the abstract idea is implemented. Simply executing an abstract concept on a computer does not render a computer “specialized,” nor does it transform a patent-ineligible claim into a patent-eligible one. See Bancorp Servs., LLC v. Sun Life Assurance Co. of Can., 687 F.3d 1266, 1280 (Fed. Cir. 2012). There are no improvements to another technology or technical field, no improvements to the functioning of the computer itself, transformation or reduction of a particular article to a different state or thing or any other meaningful limitations beyond generally linking the use of an abstract idea to a particular technological environment as a result of performing the claimed method. Also, the addition of merely novel or non-routine components to the claimed idea does not necessarily turn an abstraction into something concrete (See Ultramercial, Inc. v. Hulu, LLC, _ F.3d_, 2014 WL 5904902, (Fed. Cir. Nov. 14, 2014). Hence, the claims do not recite significantly more than an abstract idea. In conclusion, merely “linking/applying” the exception using generic computer components does not constitute ‘significantly more’ than the abstract idea. (MPEP 2106.05 (f) (h)). Therefore, the claims are not patent eligible under 35 USC 101.
Dependent claims 2-8, 10-16, and 18-20 when analyzed as a whole and in an ordered combination are held to be patent ineligible under 35 U.S.C. 101 because the additional recited limitation(s) fail(s) to establish that the claim(s) is/are not directed to an abstract idea, as detailed below. The additional recited limitations in the dependent claims only refine the abstract idea.
For instance, in claims 2, 10 and 18, the step of “… generate and store files in a second format that is compatible with the unified format and incompatible with a second format used by the existing provider…” (i.e., generating and storing files), in claims 3, 11, and 19, the step of “… wherein at least one mapped attribute of the set of attributes is in a second format that is incompatible with the unified format.” (i.e., determining format), in claims 4, 12 and 20, the step of “…wherein the modifying is performed without liquidation of assets of the at least one account.” (i.e., updating an account), in claims 5 and 13, the step of “… transferring, … the amount from an account of the first provider … to an account of the second provider...” (i.e., transferring fund), in claims 6 and 14, the step of “… generating, …. a payout value associated with at least one account.” (i.e., generating a payout amount), in claims 7 and 15, the step of “… generating…. a liquidation value associated with at least one account.” (i.e., generating a liquidation value), and in claims 8 and 16, the step of “… wherein the threshold corresponds to a credit worthiness.” (i.e., determining a credit worthiness) are all processes that, under its broadest reasonable interpretation, covers performance of a fundamental economic practice but for the recitation of a generic computer component. Transferring fund between entities, determining a payout value, and liquidating value associated with an account is a most fundamental commercial process.
This is an abstract concept with nothing more and is also considered mere instructions to apply an exception akin to a commonplace business method or mathematical algorithm being applied on a general purpose computer, Alice Corp. Pty. Ltd.; Gottschalk and Versata Dev. Group, Inc.; see MPEP 2106.05(f)(2).
In dependent claims 2-8, 10-16, and 18-20, the step claimed are rejected under the same analysis and rationale as the independent claims 1, 9, and 17 above. Merely claiming the same process for transferring fund between entities, determining a payout value, and liquidating value associated with an account does not change the abstract idea without an inventive concept or significantly more. Clearly, the additional recited limitations in the dependent claims only refine the abstract idea further. Further refinement of an abstract idea does not convert an abstract idea into something concrete.
Therefore, claims 1-20 are rejected under 35 U.S.C. 101 as being directed to non-statutory subject matter.
Prior Art
Examiner has not found the reference to teach all particulars of the claims and therefore, no prior art rejection can be made on the claims 1-20.
Conclusion
The prior art made of record but not relied upon herein but pertinent to Applicant’s disclosure is listed in the enclosed PTO-892.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to YONG S PARK whose telephone number is (571)272-8349. The examiner can normally be reached M-F 9:00-5:00 PM, EST.
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, Bennett M. Sigmond can be reached on (303)297-4411. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free).
If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/YONGSIK PARK/Examiner, Art Unit 3694
April 1, 2026
/BENNETT M SIGMOND/Supervisory Patent Examiner, Art Unit 3694