Obviousness

Obviousness Analysis under 35 U.S.C. § 103

A determination of obviousness under 35 U.S.C. § 103 requires analyzing whether the differences between the claimed invention and the prior art are such that the invention as a whole would have been obvious to a Person Having Ordinary Skill in the Art (PHOSITA) at the time of the invention. The analysis must identify a reason that would have prompted a PHOSITA to combine the teachings of the prior art references to arrive at the claimed invention with a reasonable expectation of success.

For the subject matter of US patent 12,353,917, a PHOSITA would likely be an individual with a bachelor's degree in computer science or a related discipline, coupled with two to three years of professional experience in developing software applications for the financial technology (FinTech), estate planning, or enterprise resource management sectors. This person would be proficient in database management, user interface design, and the implementation of rule-based systems.

Based on the illustrative prior art provided, the claims of the '917 patent appear to be obvious over several combinations of references.

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Combination 1: U.S. Patent 9,876,543 ('543) in view of U.S. Patent Application Publication 2022/0123456 ('456)

This combination renders the independent claims of the '917 patent obvious.

1. The Teachings of the '543 Patent: The '543 patent serves as a strong primary reference, as it describes a system squarely in the financial planning domain. It teaches a method that includes:

• Ingesting a client's existing financial documents, which corresponds to the "resource documents" of the '917 patent.
• Generating a series of questions to clarify goals, which corresponds to "generating one or more prompts."
• Receiving answers from the client or advisor, corresponding to "receiving one or more responses."
• Applying predefined financial rules like tax laws, which corresponds to the "rule data."
• Generating interactive charts and graphs to show potential estate distribution, which corresponds to "generating one or more visualizations of the distribution of the one or more assets."

2. The Teachings of the '456 Publication: The '456 publication, while in the IT management field, teaches a structurally identical process for allocating computing resources. It describes reading IT policies ("resource documents"), prompting an administrator for project parameters ("prompts" and "responses"), applying policy constraints ("rules"), and displaying the allocated servers and accounts ("assets") on a graphical dashboard ("visualization").

3. Motivation to Combine: At the time of the invention (priority date November 29, 2023), it was well-understood that a person's or entity's "assets" were no longer limited to traditional financial instruments. Digital assets, including computing hardware, software licenses, and cloud-based resources, constitute a significant and complex part of modern estates and resource portfolios.

A PHOSITA, tasked with improving the financial planning system of the '543 patent, would be motivated to expand its capabilities to create a more comprehensive, holistic asset management tool. The market demand for a unified platform that can manage both financial and digital assets would be a powerful driver. The '456 publication provides the explicit teaching of how to apply the same fundamental prompt-rule-visualize methodology to IT resources. A PHOSITA would recognize that the '456 publication's method for handling IT assets is a known technique that could be readily applied to the analogous problem of managing digital assets within the financial planning framework of the '543 patent.

The combination would be a predictable integration of known technologies to meet a clear market need. The '917 patent specification itself supports this view by broadly defining "assets" to include "one or more computing devices" and "one or more software assets," confirming that the application of this process to IT resources was within the scope contemplated by the inventors and, therefore, by a PHOSITA. There would be a reasonable expectation of success, as the underlying logic of the systems is the same, merely adapted to a different, albeit related, type of asset data.

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Combination 2: "E-Z Trust Planner" Software in view of U.S. Patent Application Publication 2022/0123456 ('456)

This combination provides an alternative, equally strong argument for obviousness.

1. The Teachings of "E-Z Trust Planner": The "E-Z Trust Planner" software, being a publicly sold product before the '917 patent's priority date, is dispositive prior art. Its documented workflow teaches:

• Parsing a client's will or trust documents ("resource documents").
• Presenting a guided questionnaire to fill in missing details ("generating prompts" and "receiving responses").
• Applying relevant state and federal estate tax laws ("rule data").
• Generating flowcharts and summary tables ("visualizations") showing the estate distribution.

This commercial product discloses every major step of the method claimed in the '917 patent within the specific context of estate planning.

2. Motivation to Combine with the '456 Publication: Assuming, for the sake of argument, that the "E-Z Trust Planner" was primarily focused on traditional estate assets like property and securities, the motivation to combine it with the teachings of the '456 publication remains the same as in the previous combination. To maintain a competitive edge and serve clients with significant digital footprints, the developers of a product like "E-Z Trust Planner" would have been motivated to extend their software to manage the disposition of digital and IT-related assets.

The '456 publication teaches a known method for the rule-based allocation and visualization of precisely these types of assets. A PHOSITA would have found it obvious to integrate the IT resource management technique from '456 into the existing legal and financial framework of "E-Z Trust Planner." This would be a straightforward extension of the software's functionality, applying a known solution from a parallel technical field to solve a known problem (the management of digital assets in estate planning). This combination would have yielded the invention claimed in US 12,353,917 with a high expectation of success.