DETAILED CORRESPONDENCE
The following is a Final Office Action in response to communications filed October 24, 2025. Currently, claims 1–8 are pending.
Response to Amendment/Argument
With respect to the previous rejection of claims under 35 U.S.C. 101, Applicant’s remarks have been fully considered but are not persuasive.
Applicant first asserts that, when considered in view of the August 2025 Memorandum, the rejection of record is improper because the claims cannot recite mental processes. Examiner disagrees and notes that the rejection of record does not assert that any claim elements recite mental processes. As a result, Applicant’s remarks are not commensurate with the rejection of record and are not persuasive.
Applicant next asserts that the rejection of record failed to address the recited computer-readable medium and the spreadsheet program. Examiner disagrees. As an initial matter, Examiner notes that the claims do not recite a spreadsheet program. Instead, the claims recite “a spreadsheet” and “an existing spreadsheet program instruction”. Further, with respect to the rejection of record, the computer-readable medium and the program instruction are addressed on pages 9–10 of the Non-Final Rejection issued on April 24, 2025. As a result, Applicant’s remarks are not commensurate with the rejection of record and are not persuasive.
Applicant next asserts that the rejection of record improperly relies on the “apply it” consideration and comingles the analysis of Step 2A Prong Two and Step 2B. Examiner disagrees.
MPEP 2106.07(a) sets forth the process for formulating a rejection for lack of subject matter eligibility. With respect to Step 2A Prong Two, MPEP 2106.07(a) explicitly states that a proper analysis uses “the considerations set forth in MPEP 2106.04(d), 2106.05(a)-(c) and (e)-(h).” Additionally, and as previously noted, MPEP 2106.04(d) defines the process of determining when there is an integration into a practical application under Step 2A Prong Two, and specifically identifies relevant considerations for evaluating whether additional elements integrate an abstract idea into a practical application. MPEP 2106.04(d) expressly states that limitations “merely reciting the words ‘apply it’ (or an equivalent) with the judicial exception, or merely including instructions to implement an abstract idea on a computer, or merely using a computer as a tool to perform an abstract idea, as discussed in MPEP 2106.05(f)” do not integrate a judicial exception into a practical application under Step 2A Prong Two. Finally, MPEP 2106.05(II) states that, under Step 2B, the examiner should “carry over their conclusions from Step 2A Prong Two on the considerations discussed in MPEP 2016.05(a) – (c), (e), (f) and (h)”.
Further, the August 2025 Memorandum recommends caution when asserting the “apply it” consideration because the “apply it” consideration often overlaps with the improvements consideration. More particularly, the August 2025 Memorandum recommends considering whether the claim recites only the idea of a solution or outcome, whether the claim invokes computers as a tool to perform an existing process or whether the claim purports to improve computer capabilities or existing technology, and the particularity or generality of the application of the recited judicial exception.
In view of the above, Examine maintains that, with respect to the pending claims, utilizing the “apply it” standard is an appropriate consideration under both Step 2A Prong Two and Step 2B, such that the standards of MPEP 2106.05(f) and MPEP 2106.05(h) are appropriate in each step of the evaluation. With respect to the rejection of record, Examiner maintains that the additional elements do not integrate the abstract idea into a practical application under Step 2A Prong Two because the additional elements amount to no more than mere instructions to implement the abstract idea on a computer under MPEP 2106.05(f) and do no more than generally link the use of the recited abstract idea to a particular technological environment under MPEP 2106.05(h) because the technical elements of the claim are recited at a high level of generality and do not improve computer capabilities or existing technology. As required by MPEP 2106.05(II), the rejection of record carries over the above conclusions from Step 2A Prong Two into Step 2B and further considers the additional elements in combination. Accordingly, Applicant’s remarks are not persuasive.
As an additional matter, although Examiner maintains that the considerations discussed in MPEP 2016.05(a) – (c), (e), (f) and (h) are applied in both Step 2A Prong Two and Step 2B, Examiner agrees that the considerations under Step 2A Prong Two and Step 2B are not the same. In particular, Step 2A Prong Two may identify elements that embody an insignificant extrasolution activity to the judicial exception under MPEP 2106.05(g) (See, MPEP 2106.04(d)(I)). Unlike Step 2A Prong Two, a proper Step 2B analysis must “re-evaluate any additional element or combination of elements that was considered to be insignificant extra-solution activity per MPEP 2106.05(g)” and determine “whether any additional element or combination of elements are other than what is well-understood, routine, conventional activity in the field” (See, MPEP 2106.05(II)).
Here, the rejection of record does not assert that any of the additional elements embody an insignificant extrasolution activity to the judicial exception under MPEP 2106.05(g) under Step 2A Prong Two. As a result, the only difference between the Step 2A Prong Two analysis and the Step 2B analysis includes a determination as to “whether any additional element or combination of elements are other than what is well-understood, routine, conventional activity in the field,” and the rejection determines that looking at the additional elements as an ordered combination adds nothing that is not already present when considering the additional elements individually. Accordingly, Applicant’s remarks are not persuasive.
Applicant next asserts that the claims provide a technical solution to a technical problem and embody improvements in computer capabilities because the claims provide a method for how a computer can perform an analysis that computers were previously incapable of performing. Examiner disagrees.
Examiner maintains that the claimed computer elements, including the recited medium and computer, are generically recited such that the computer elements amount to no more than mere instructions to implement the abstract idea on a computer under MPEP 2106.05(f). Further, paragraphs 31–32 and 35–36 of the filed Specification broadly disclose the terms “computer” and computer “medium” and neither limit the claimed “computer” or “medium” to any particular implementation nor describe any associated technical improvements. Similarly, paragraph 87 of Applicant’s Specification indicates that the recited spreadsheet and the associated embedded functionality may be embodied as a known, commercial spreadsheet product, i.e., Microsoft Excel, and the Specification does not disclose any improvements in Microsoft Excel or any related technology. As a result, when considered in view of the claims as a whole, the additional computer elements of the pending claims do not integrate the abstract idea into a practical application because the claimed computer elements are merely used as a tool to perform the recited abstract idea.
To the extent that Applicant asserts that computers could not previously produce the recited financial statements in an automated fashion, Examiner disagrees. Examiner submits that any improvements in the recited elements reside in the abstract claim elements. More specifically, the alleged improvements in generating financial statements and calculating a return valuation are business and/or mathematical improvements that are recited in the abstract claim elements (“generating multiple financial statements” and “calculating a return valuation”) and are defined by certain methods of organizing human activity and/or mathematical concepts, as explained below. Further, the additional elements are limited to conventional computing components (Spec. ¶¶ 31–32 and 35–36) that are utilized in a conventional fashion as a tool to perform the recited financial operations and calculations. As a result, Examiner maintains that the claims do not embody any improvements to the technology because the computing elements are implemented conventionally and are merely used as a tool to perform the recited abstract idea. Accordingly, Applicant’s argument is not persuasive.
Accordingly, the previous rejection is maintained and reasserted below.
Priority
Applicant’s claim for the benefit of a prior-filed application under 35 U.S.C. 119(e) or under 35 U.S.C. 120, 121, 365(c), or 386(c) is acknowledged. Applicant has not complied with one or more conditions for receiving the benefit of an earlier filing date under 35 U.S.C. 119(e) as follows:
The later-filed application must be an application for a patent for an invention which is also disclosed in the prior application (the parent or original nonprovisional application or provisional application). The disclosure of the invention in the parent application and in the later-filed application must be sufficient to comply with the requirements of 35 U.S.C. 112(a) or the first paragraph of pre-AIA 35 U.S.C. 112, except for the best mode requirement. See Transco Products, Inc. v. Performance Contracting, Inc., 38 F.3d 551, 32 USPQ2d 1077 (Fed. Cir. 1994)
The disclosure of the prior-filed applications, Application No. 62/364,526 and Application No. 62/394,526, fails to provide adequate support or enablement in the manner provided by 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph for one or more claims of this application. Specifically, Application No. 62/364,526 and Application No. 62/394,526 fail to disclose the equations recited in claims 1–3. As a result, pending claims 1–3 have not been granted priority to the filing date of Application No. 62/364,526 or Application No. 62/394,526.
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 1–8 are rejected under 35 U.S.C. 101 because the claimed invention is directed to non-statutory subject matter. Specifically, claims 1–8 are directed to an abstract idea without additional elements amounting to significantly more than the abstract idea.
With respect to Step 2A Prong One of the framework, claim 1 recites an abstract idea. Claim 1 recites elements directed to “performing a valuation analysis…”; “determining any two values …”; “determining one value …”; “using the determined values to solve for an undetermined value …”; “using the four values to provide a valuation …”; “generating multiple financial statements …”; “calculating a return valuation …”; “wherein the comparative return measure is … computed …”; “wherein the point–in–time initial cost is computed … “; “wherein the operating performance of the investment over time is computed …”; “wherein the future sale price is computed …”; “wherein the future salvage value is computed …“; and “wherein the generated financial statements are identical …”.
The elements above recite mathematical concepts and certain methods of organizing human activity. Specifically, the claimed elements expressly recite mathematical concepts because the elements recite mathematical calculations and algorithms to perform the valuation analysis, determine values, solve for a missing value, calculate a return valuation, and provide a valuation. The elements further recite certain methods of organizing human activity related to fundamental economic principles or practices because the claimed elements recite steps for generating financial statements based on a series of financial determinations. As a result, claim 1 recites an abstract idea under Step 2A Prong One.
Examiner notes that claims 2 and 3 include substantially similar claim elements. As a result, claims 2 and 3 recite an abstract idea under Step 2A Prong One for the same reasons as stated above with respect to claim 1. Similarly, claims 4–8 recite an abstract idea for the same reasons as stated above with respect to claim 1. Specifically, the elements of claims 4–8 further describe the abstract functions presented in claim 1 and recite mathematical concepts and certain methods of organizing human activity under Step 2A Prong One for the same reasons as stated above.
With respect to Step 2A Prong Two of the framework, claim 1 does not include additional elements that integrate the abstract idea into a practical application. Claim 1 recites additional elements, including a computer readable medium, a computer, and an element for embedding operations within a program instruction. When considered in view of the claim as a whole, the claimed computer elements do not integrate the abstract idea into a practical application because the computer elements are generic computing components that amount to no more than mere instructions to implement the abstract idea on a computer under MPEP 2106.05(f), and the element for embedding operations within a program instruction does no more than generally link the use of the recited abstract idea to a particular technological environment under MPEP 2106.05(h). As a result, claim 1 does not include additional elements that integrate the abstract idea into a practical application.
As noted above, claims 2 and 3 include substantially similar limitations to those presented with respect to claim 1. As a result, claims 2 and 3 do not include additional elements that integrate the abstract idea into a practical application under Step 2A Prong Two for the same reasons as stated above with respect to claim 1.
Claims 4–8, which depend from claims 1–3, do not include any additional elements beyond those recited with respect to claims 1–3. As a result, claims 4–8 do not include additional elements that integrate the abstract idea into a practical application under Step 2A Prong Two for the same reasons as stated above.
With respect to Step 2B of the framework, claim 1 does not include additional elements amounting to significantly more than the abstract idea. As noted above, claim 1 recites additional elements, including a computer readable medium, a computer, and an element for embedding operations within a program instruction. The claimed computer elements do not amount to significantly more than the abstract idea because the computer elements are generic computing components that amount to no more than mere instructions to implement the abstract idea on a computer under MPEP 2106.05(f), and the element for embedding operations within a program instruction does no more than generally link the use of the recited abstract idea to a particular technological environment under MPEP 2106.05(h). Further, looking at the additional elements as an ordered combination adds nothing that is not already present when considering the additional elements individually. As a result, claim 1 does not include additional elements amounting to significantly more than the abstract idea under Step 2B.
As noted above, claims 2 and 3 include substantially similar limitations to those presented with respect to claim 1. As a result, claims 2 and 3 do not include additional elements amounting to significantly more than the abstract idea under Step 2B for the same reasons as stated above with respect to claim 1.
Claims 4–8, which depend from claims 1–3, do not include any additional elements beyond those recited with respect to claims 1–3. As a result, claims 4–8 do not include additional elements amounting to significantly more than the abstract idea under Step 2B for the same reasons as stated above.
Therefore, the claims are directed to an abstract idea without additional elements amounting to significantly more than the abstract idea. Accordingly, claims 1–8 are rejected under 35 U.S.C. 101 as being directed to non-statutory subject matter.
Allowable Subject Matter
Claims 1–8 are allowable over the prior art of record. Specifically, the prior art of record, either alone or in any combination, does not expressly disclose the equations recited in claims 1–3.
Conclusion
THIS ACTION IS MADE FINAL. 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 WILLIAM S BROCKINGTON III whose telephone number is (571)270–3400. The examiner can normally be reached on M–F, 8am–5pm, EST.
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/WILLIAM S BROCKINGTON III/Primary Examiner, Art Unit 3623