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 .
DETAILED ACTION
This communication is in response to the application filed on 05 June 2025. Claims 1-20 are currently pending. The rejections are as stated below.
Information Disclosure Statement
The Information Disclosure Statements (IDS) submitted in this application on 05 June 2025 is in compliance with the provisions of 37 CFR 1.97. Accordingly, the IDS is being considered by the examiner. The initialed copies of the1449 are enclosed herewith.
Double Patenting
The non-statutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A non-statutory double patenting rejection is appropriate where the claims at issue are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); and In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on a non-statutory double patenting ground provided the reference application or patent either is shown to be commonly owned with this application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
Effective January 1, 1994, a registered attorney or agent of record may sign a terminal disclaimer. A terminal disclaimer signed by the assignee must fully comply with 37 CFR 3.73(b).
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Claims 1-20 are rejected on the ground of non-statutory double patenting as being unpatentable over claims 1-20 of Patent No. US 12354172 B1 and claims 1-20 of Patent No. US 11593890 B1. Although the conflicting claims at issue are not identical, they are not patentably distinct from each other, because the claimed limitations from the present application and US Patents ‘172 and ‘890 above are significantly similar and the claimed features seem to be identical with various obvious alternate steps. The current invention and Patent No. US 12354172 B1 and claims 1-20 of Patent No. US 11593890 B1 are drawn to a method and system for validating electronic distribution transactions from retirement accounts and have overlapping limitations. All limitations of the instant claims are substantially covered in claims 1-20 of Patent No. US 12354172 B1 and claims 1-20 of Patent No. US 11593890 B1. However, certain language has been removed from the issued Patents. Therefore, the omission of an element with a corresponding loss of function is an obvious expedient. See In re Karlson, 136 USPQ 184 and Ex parte Rainu, 168 USPQ 375.
For these reasons, the claims of the instant application are not identical to claims 1-20 of Patent No. US 12354172 B1 and claims 1-20 of Patent No. US 11593890 B1, but they are not patently distinct.
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. In particular, claims are directed to a judicial exception (abstract idea) without significantly more.
The instant claims are rejected under 35 USC 101 in view of The Decision in Alice Corporation Ply. Ltd. v. CLS Bank International, et al. in a unanimous decision, the Supreme Court held that the patent claims in Alice Corporation Pty. Ltd. v. CLS Bank International, et al. ("Alice Corp. ") are not patent-eligible under 35 U.S.C. § 101.
Claim 1 (exemplary) recites a series of steps for validating electronic distribution transactions from retirement accounts.
The claim is directed to a process, which is a statutory category of invention.
The claim is then analyzed to determine whether it is directed to a judicial exception.
Independent method claim 1, recites the limitations of obtain account information associated with a request for an account distribution, wherein the account information comprises at least a state of residence and date of birth of a user; generate, based at least in part on the account information and a tax service, for tax withholding requirements specific to the account distribution; communicate to the tax service, wherein the tax service is configured to maintain tax withholding rules pertaining to state tax withholding requirements based on scenario-specific distributions; receive, from the tax service in response information indicative of the tax withholding requirements specific to the account information and based upon the request; enable the user to view and modify one or more of a distribution amount and a state tax withholding amount; display based on a state of residence parameter, supplemental interface elements, wherein the supplemental interface elements are in addition to the interface elements enabling modification of the distribution amount associated with the request, wherein the supplemental interface elements comprise state-specific withholding requirements associated with legal compliance required of the user, enable user-acknowledgement of a user's compliance with legal requirements, wherein the user-acknowledgement is required for the request for the account distribution to be validated or fulfilled; receive a user's acknowledgement of the user's compliance with the state-specific withholding requirements; and execute, based on data from the tax service, the tax withholding rules to fulfill the account distribution minus the state tax withholding amount indicated by the tax withholding rules.
These limitations, as drafted, are processes that, under its broadest reasonable interpretation, covers performance of the limitations via transactional activities/interactions (such as a fundamental economic concept or managing interactions between people), but for the recitation of generic computer components, nothing in the claim precludes the limitations from practically being performed by a method of organizing human activity which includes commercial or legal interactions (including agreements in the form of contracts; legal obligations; advertising, marketing, or sales activities or behaviors; business relations). These limitations are directed to an abstract idea because they are commercial or legal interactions/activities (receiving from a tax service scenario-specific withholding requirements, presenting those requirements to the user, validating entered withholding amounts, and blocking fulfillment if rules are violated). If a claim limitation covers commercial or legal interactions but for the recitation of generic computer components, then it falls within the "Certain Methods of Organizing Activity" grouping of abstract ideas. See MPEP § 2106.04(a)(2).
Accordingly, independent claim 1 recites an abstract idea.
Next, the claim is analyzed to determine if it is integrated into a practical application. The claim recites additional limitation of a communication interface, at least one processor, and at least one memory including computer program code, an account information database, an application programming interface (API), an API call and an indicator to perform the steps. The processor in the steps is recited at a high level of generality, i.e., as a generic computer performing a generic computer function of processing data (see Applicant’s specification ¶¶ 0047 and 0050). This generic computer limitations are no more than mere instructions to apply the exception using generic computer component. Also, these limitations are an attempt to limit the abstract idea to a particular technological environment. Accordingly, these additional elements do not integrate the abstract idea into a practical application because they do not impose any meaningful limits on practicing the abstract idea. See MPEP 2106.04(d). The claim is directed to the abstract idea.
Next, the claim is analyzed to determine if there are additional claim limitations that individually, or as an ordered combination, ensure that the claim amounts to significantly more than the abstract ideas (whether claim provides inventive concept). As discussed above, the recitation of the claimed limitations amounts to mere instructions to implement the abstract idea on a processor (using the computer as a tool to implement the abstract idea). Taking the additional elements individually and in combination, the processor at each step of the process performs purely generic computer functions. As such, there is no inventive concept sufficient to transform the claimed subject matter into a patent-eligible application. The same analysis applies here, i.e., mere instructions to apply an exception using a generic computer component cannot integrate a judicial exception into a practical application at or provide an inventive concept. See MPEP 2106.05(f).
Viewing the limitations as an ordered combination does not add anything further than looking at the limitations individually. When viewed either individually, or as an ordered combination, the additional limitations do not amount to a claim as a whole that is significantly more than the abstract idea itself. Therefore, the claim does not amount to significantly more than the recited abstract idea. Therefore, the claim is not patent eligible.
The analysis above applies to the statutory category of invention of claims 1, 13 and 20. Furthermore, dependent claims 2-12 and 14-19 do not add limitations that meaningfully limit the abstract idea.
Dependent claims 2-12 and 14-19, recite the additional limitations of
manipulate a portion of the account information to determine a value for a parameter of the API call for generation of the API call based at least in part on the account information and parameters of the API of the tax service, parse the address to manipulate the portion of the account information to determine the value for the state of residence parameter of the API call, calculate an age based on the date of birth to manipulate the portion of the account information to determine the value for the age parameter of the API call, generate a value for a parameter of the API call unavailable in the account information, generate the API call with an indication that an account of the user will be terminated in response to fulfillment of a retirement account distribution, generate the API call with the indication in response to detecting an amount of the retirement account distribution is equal to a total balance of the account of the user, a termination flag comprises a Boolean type field, an indication that state tax withholdings are not permitted and an indication of whether state tax withholdings are required or voluntary. These limitations further define the abstract idea and are rejected under the same rational of claim 1.
The claims merely amounts to the application or instructions to apply the abstract idea on a generic processor, and is considered to amount to nothing more than requiring a generic computer to merely carry out the abstract idea itself.
The dependent claims do not impart patent eligibility to the abstract idea of the independent claims. Therefore, none of the dependent claims alone or as an ordered combination add limitations that qualify as integrating the abstract idea into a practical application.
The dependent claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception because the additional elements are simply steps performed by a generic computer.
Accordingly, claims 1-20 are rejected as ineligible for patenting under 35 U.S.C. 101 based upon the same analysis.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Becker et al. (US 8732057 B1) disclose “A self-service distribution system and method to request a withdrawal of funds from tax-deferred accounts (i.e., a distribution), such as individual retirement accounts (IRAs). The system may retrieve information about a participant's age and type of account from which a distribution is requested. A series of checks defined by rules and regulations that apply to tax-deferred accounts may be run against participant and account information retrieved by the system. A sequence of user interfaces may present information and warnings, such as tax consequences of the distribution, to the guide the participant. The participant may request distributions having a certain frequency, amount, and timing through the presented user interfaces. After all of the information is entered to initiate the distribution, a verification page is presented such that the participant may confirm the enter information is correct. Upon submitting the request, a confirmation is presented”.
Coopersmith (US 20080189224 A1) discloses “a computerized system and method for determining retirement withdrawals and results in an improved plan for withdrawing income from a variety of wealth sources over a user-specified time horizon beginning currently and ending during retirement. The method determines a withdrawal amount from each wealth source for each year of a fixed planning horizon. The method uses a primary optimization model to translate fixed and discretionary data into a maximum accumulated wealth and generate an annual withdrawal plan that provides the withdrawal amount from each wealth source for each year of the fixed planning horizon. The method provides for modification of the discretionary data if the initial output of the primary optimization model does not result in a feasible withdrawal plan”.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Hani Kazimi whose telephone number is (571) 272-6745. The examiner can normally be reached Monday-Friday from 8:30 AM to 5:00 PM.
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Respectfully Submitted
/HANI M KAZIMI/
Primary Examiner, Art Unit 3691
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