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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 05/13/2025 has been entered.
Response to Amendment
Amendments received on 05/13/2025 is acknowledged and entered. Claims 1-4 and 7-8 have previously been canceled. Claims 5 and 6 have been amended. New claims 9 and 10 have been entered. Claims 5-6 and 9-10 are currently pending in the application.
Continuity Information
Current application US 16/917,607 filed 12/27/2022, is a continuation-in-part of US 15/656,911, filed 07/21/2017, now abandoned.
Claim Objections
Claims 3-6 and 9-10 are objected to, because they use terms: “non-transitory”, “a non-transitory” and “said non-transitory” interchangeably, which is confusing. Inconsistent terminology, such as using "non-transitory," "a non-transitory," and "said non-transitory" interchangeably without a clear rationale, can raise concerns about claim clarity and scope. The Examiner assumes that this is a clerical error.
Further, claim 10 recites: “said non-transitory memory” in a), line 7. There is insufficient antecedent basis for this limitation in the claim.
Furthermore, claim 10 recites the term “hardware” twice, in a preamble and in a)., line 1. Applicant is reminded that the first time a limitation is introduced in a claim it should be preceded by the word “a” or “an”. Subsequent recitations of that limitation should be preceded by the word “the” or “said”.
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 5-6 and 9-10 are rejected under 35 U.S.C. 101 because the claimed invention is directed to non-statutory subject matter.
In determining whether a claim falls within an excluded category, the Examiner is guided by the Court’s two-part framework, described in Mayo and Alice. Id. at 217-18 (citing Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 75-77 (2012)); Bilski v. Kappos, 561 U.S. 593, 611 (2010); 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019), and the October 2019 Update of the 2019 Revised Guidance (Oct. 17, 2019), and 2024 Guidance Update on Patent Subject Matter Eligibility, Including on Artificial Intelligence (July 17, 2024).
Step 1
Claims are eligible for patent protection under § 101 if they are in one of the four statutory categories and not directed to a judicial exception to patentability (i.e., laws of nature, natural phenomena, and abstract ideas). Alice Corp. v. CLS Bank Int'l, 573 U. S. ____ (2014). Based on the Specification, the Examiner assumes that claims 5 and 9 appear to be directed to a hardware memory having a computer-executable instructions for structuring mortgage-backed securities into tranches of various risk designation. Accordingly, said hardware memory satisfies the requirements of a product, and, as such, is a statutory category of invention.
Claims 6 and 10 appear to be directed to a statutory category, because a series of steps for structuring mortgage-backed securities into tranches of various risk designation satisfies the requirements of a process (a series of acts).
(Step 1: Yes).
Next, the claims are analyzed to determine whether it is directed to a judicial exception.
Step 2A – Prong 1
Claims 5-6 and 9-10 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more of pooling mortgage backed securities into groups or tranches having different risk designation. The claims recite:
Claim 5. A financial product comprising: a mortgage backed security in monetary term comprising: non-transitory hardware memory of risk of principal perseverance wherein the risk comprising standard deviation of downside pricing variance of collateral assets or foreclosed-property historical performance database as tranch structure guiding rules for integration with current on the market active mortgages and/or current on the market active mortgage databases routed from server through institutions characterized per cover rates and/or down payment percentages of underlying assets comprising residential and/or commercial property with programmed self-referral module for active mortgages tranche field code population and structuring wherein percentages of down payment or cover rate of active mortgages are within bounds of standard deviation of downside asset pricing variances of designation tranche, displayed to investors and/or issuers through server the structure mortgage backed securities as product in monetary term with tranches per percentage range of down payment or cover rate;
wherein the tranche structure guiding rules comprise: a) a risk free tranche field code designation for active mortgages with down payment or cover rate percentage equal to or more than 3 standard deviation of collateral assets or historical foreclosure property final market sale prices that fall short of original asset value, b) a grade AA tranche field code designation for active mortgages with cover rate or down payment percentage less than 3 standard deviation but equal to or more than 2 standard deviation of historical collateral asset or foreclosure property final market sale prices that fall short of original asset values, c) an investment grade tranche field code designation for active mortgages with cover rate or down payment percentage less than 2 standard deviation but equal to or more than 1 standard deviation of assets downside pricing variances, d) a speculative tranche field code designation for active mortgages with cover rate or down payment percentage less than 1 standard deviation of collateral asset or foreclosure property final market sale prices that fall short of original asset values;
wherein the tranches ranged between 0.01 and 4.00 standard deviation of downside asset pricing variances besides risk free, grade AA, investment grade, and speculative tranche;
wherein the tranche field codes are subject to selected designations per rating systems besides risk free, grade AA, investment grade, and speculative tranche;
wherein the cover rates of active mortgages comprise percentage of down payment for new loans or percentage of down payment plus principal paid down for loans other than a new loan.
Claim 6. A mortgage backed security structured per risk of principal perseverance per a computer implemented method into tranches per a processor computed statistical standard deviation of downside pricing variance of assets stored with non-transitory hardware memory as structure guiding rules backed with historical mortgage property database for structure validation to be integrated with programmed self-referral software linking down payment and/or cover rate percentage of underlying assets comprising residential property and/or commercial building of current on the market active mortgages and/or current on the market active mortgage databases routed from server through institutions to automatically assign tranche code for active mortgages, tranche MBS accordingly and displayed over server in monetary term to investors and/or issuers wherein the automatically assign further comprising:
a) accessing, by a computing system equipped with a the processor and a non-transitory hardware memory of, said historical mortgage property database comprising records of collateral asset data or foreclosed- property historical performance data, wherein the data comprises original asset values and asset final market sale prices, to calculate by a module programmed to weighted average subtotal multiple bounds of standard deviation of percentages of the final market sale prices that fall short of the original asset value of a plurality of the collateral assets or foreclosed property stored as said tranche structure guiding rule with said non-transitory memory equipped for storing 30 years' pool of historical foreclosure and/or collateral assets performing data;
b) accessing, by the computing system, databases of current market active mortgage data and/or active mortgages routed from server through institutions characterized by cover rates and/or down payment percentage of active mortgages; integrating by the said self-referral software module programmed to link active mortgage down payment and/or cover rate with programmed databases linking functions, the stored tranche structure guiding rules from step (a) to automatically assign tranche code;
wherein the cover rate or down payment percentage of active mortgages are within the bounds of the standard deviation of downside asset pricing variance of the tranche structure guiding rules, populating automatically by the programmed module, active mortgages' tranche field codes, sorting the active mortgage database per populated tranche field codes, pooling tranches by the programmed modules current market active mortgages per tranche field codes, and displaying to issuers and/or investors tranches of mortgage backed securities in monetary term per percentage range of down payment and/or cover rate;
wherein the structure guiding rules comprise: 1) assigning a risk free tranche field code for active mortgages with down payment or cover rate percentage equal to or more than 3 standard deviation of collateral assets or historical foreclosure property final market sale prices that fall short of original asset value, 2) assigning a grade AA tranche field code for active mortgages with cover rate or down payment percentage less than 3 standard deviation but equal to or more than 2 standard deviation of historical collateral assets or foreclosure property final market sale prices that fall short of original asset values, 3) assigning an investment grade tranche field code for active mortgages with cover rate or down payment percentage less than 2 standard deviation but equal to or more than 1 standard deviation of asset downside pricing variances, 4) assigning a speculative tranche field code for active mortgages with cover rate or down payment percentage less than 1 standard deviation of collateral asset or foreclosure property final market sale prices that fall short of original asset values;
wherein the pooling of the tranches ranged between 0.01 and 4.00 standard deviation of downside asset pricing variances besides risk free, grade AA, investment grade, and speculative tranche;
wherein the tranche field codes are subject to selected designations per rating systems besides risk free, grade AA, investment grade, and speculative tranche;
wherein the cover rates of active mortgages comprise percentage of down payment for new loans or percentage of down payment plus principal paid down for loans other than a new loan.
Claim 9. A computer programmed financial product comprising: hardware memory of standard deviation of downside pricing variance of collateral assets or foreclosed-property historical performance database as tranch structure guiding rules for integration with current on the market active mortgages and/or current on the market active mortgage databases routed from server through institutions characterized per cover rates and/or down payment percentages of underlying assets comprising residential and/or commercial property with programmed self-referral module for active mortgages tranche field code population and structuring wherein percentages of down payment or cover rate of active mortgages are within bounds of standard deviation of downside asset pricing variances of designation tranche, displayed to investors and/or issuers through server the structure mortgage backed securities as product in monetary term with tranches per percentage range of down payment or cover rate;
wherein the tranche structure guiding rules comprise: a) a risk free tranche field code designation for active mortgages with down payment or cover rate percentage equal to or more than 3 standard deviation of collateral assets or historical foreclosure property final market sale prices that fall short of original asset value, b) a grade AA tranche field code designation for active mortgages with cover rate or down payment percentage less than 3 standard deviation but equal to or more than 2 standard deviation of historical collateral asset or foreclosure property final market sale prices that fall short of original asset values, c) an investment grade tranche field code designation for active mortgages with cover rate or down payment percentage less than 2 standard deviation but equal to or more than 1 standard deviation of assets downside pricing variances, d) a speculative tranche field code designation for active mortgages with cover rate or down payment percentage less than 1 standard deviation of collateral asset or foreclosure property final market sale prices that fall short of original asset values;
wherein the tranches ranged between 0.01 and 4.00 standard deviation of downside asset pricing variances besides risk free, grade AA, investment grade, and speculative tranche;
wherein the tranche field codes are subject to selected designations per rating systems besides risk free, grade AA, investment grade, and speculative tranche;
wherein the cover rates of active mortgages comprise percentage of down payment for new loans or percentage of down payment plus principal paid down for loans other than a new loan.
Claim 10. A computer programmed financial product further structured per a computer implemented method into tranches per a processor computed standard deviation of downside pricing variance of assets stored with hardware memory as structure guiding rules backed with historical mortgage property database for structure validation to be integrated with programmed self-referral software linking down payment and/or cover rate percentage of underlying assets comprising residential property and/or commercial building of current on the market active mortgages and/or current on the market active mortgage databases routed from server through institutions to automatically assign tranche code for active mortgages, tranche MBS accordingly and displayed over server in monetary term to investors and/or issuers wherein the automatically assign further comprising:
a) accessing, by a computing system equipped with the processor and hardware memory of said historical mortgage property database comprising records of collateral asset data or foreclosed- property historical performance data, wherein the data comprises original asset values and asset final market sale prices, to calculate by a module programmed to weighted average subtotal multiple bounds of standard deviation of percentages of the final market sale prices that fall short of the original asset value of a plurality of the collateral assets or foreclosed property stored as said tranche structure guiding rule with said non-transitory memory equipped for storing 30 years' pool of historical foreclosure and/or collateral assets performing data;
b) accessing, by the computing system, databases of current market active mortgage data and/or active mortgages routed from server through institutions characterized by cover rates and/or down payment percentage of active mortgages; integrating by the said self-referral software module programmed to link active mortgage down payment and/or cover rate with programmed databases linking functions, the stored tranche structure guiding rules from step (a) to automatically assign tranche code;
wherein the cover rate or down payment percentage of active mortgages are within the bounds of the standard deviation of downside asset pricing variance of the tranche structure guiding rules, populating automatically by the programmed module, active mortgages' tranche field codes, sorting the active mortgage database per populated tranche field codes, pooling tranches by the programmed modules current market active mortgages per tranche field codes, and displaying to issuers and/or investors tranches of mortgage backed securities in monetary term per percentage range of down payment and/or cover rate;
wherein the structure guiding rules comprise: 1) assigning a risk free tranche field code for active mortgages with down payment or cover rate percentage equal to or more than 3 standard deviation of collateral assets or historical foreclosure property final market sale prices that fall short of original asset value, 2) assigning a grade AA tranche field code for active mortgages with cover rate or down payment percentage less than 3 standard deviation but equal to or more than 2 standard deviation of historical collateral assets or foreclosure property final market sale prices that fall short of original asset values, 3) assigning an investment grade tranche field code for active mortgages with cover rate or down payment percentage less than 2 standard deviation but equal to or more than 1 standard deviation of asset downside pricing variances, 4) assigning a speculative tranche field code for active mortgages with cover rate or down payment percentage less than 1 standard deviation of collateral asset or foreclosure property final market sale prices that fall short of original asset values;
wherein the pooling of the tranches ranged between 0.01 and 4.00 standard deviation of downside asset pricing variances besides risk free, grade AA, investment grade, and speculative tranche;
wherein the tranche field codes are subject to selected designations per rating systems besides risk free, grade AA, investment grade, and speculative tranche;
wherein the cover rates of active mortgages comprise percentage of down payment for new loans or percentage of down payment plus principal paid down for loans other than a new loan.
The limitation of accessing property records of collateral asset data; calculating standard deviation of percentages of the final market sale prices; accessing a database of current market active mortgage data; populating and sorting data into tranches; labeling/assigning tranche code to the tranches as, e.g., a “risk free” tranche, a “grade AA” tranche, an “investment grade” tranche, and “speculative tranche”; pooling the sorted tranches, and displaying results, as drafted, is a process that, under its broadest reasonable interpretation, covers performance of the limitation in the mind, and/or certain methods of organizing human activity but for the recitation of generic computer components (Note: the Examiner’s language (e.g. “accessing property records of collateral asset data”; “calculating standard deviation of percentages of the final market sale prices”; etc.) is an abbreviated reference to the rather detailed claim steps and is not an oversimplification of the claim language; the Examiner employing such shortcuts (that refer to more specific steps) when attempting to explain the rejection). That is, other than reciting or implying “by a processor,” nothing in the claim element precludes the step from practically being performed in the mind. For example, but for the “by a processor” language, the recited steps in the context of this claim encompass a user analyses of publicly available information regarding collateral value and sale price of a plurality of foreclosed properties and historical mortgage-backed securities (MBS) performance data, calculates a plurality of standard deviations for downside variances of percentage of the sale price fall short of the collateral value, and groups active individual mortgages into groups or tranches based on said calculated plurality of standard deviations. These steps can be performed mentally or using a pen and paper.
Specifically, regarding calculating multiple bounds of standard deviation of percentages of the final market sale prices; sorting data into tranches utilizing structure guiding rules (“if – then” logical functions); and pooling the sorted tranches limitations - i.e. the utilizing statistical tools to process the data and to output the estimated values - said functions could be performed by a human using mental steps or basic critical thinking, which are types of activities that have been found by the courts to represent abstract ideas (e.g., mental comparison regarding a sample or test subject to a control or target data in Ambry, Myriad CAFC, or the diagnosing an abnormal condition by performing clinical tests and thinking about the results in In re Grams, 888 F.2d 835 (Fed. Cir. 1989) (Grams)). In Grams, the recited functions require obtaining data or patient information (from sensors), and analyze that data to ascertain the existence and identity of an abnormality or estimated responses, and possible causes thereof. While said functions are performed by a computer, they are in essence a mathematical algorithm, in that they represent "[a] procedure for solving a given type of mathematical problem." Gottschalk v. Benson, 409 U.S. 63, 65, 93 S.Ct. 253, 254, 34 L.Ed.2d 273 (1972). Moreover, the Federal Circuit has held, “without additional limitations, a process that employs mathematical algorithms to manipulate existing information to generate additional information is not patent eligible.” Digitech Image Techs., LLC v. Elecs. for Imaging, Inc., 758 F.3d 1344, 1351 (Fed. Cir. 2014). Here, the claimed subject matter is directed to the abstract idea of manipulating existing information (e.g., foreclosed-property historical performance database) to generate additional information (e.g., change order of individual mortgages per updated tranche field code into pool of tranches). See id. Further, “analyzing information by steps people go through in their minds, or by mathematical algorithms, without more, [are] essentially mental processes within the abstract-idea category.” Elec. Power, 830 F.3d at 1354; see also Synopsys, Inc. v. Mentor Graphics Corp., 839 F.3d 1138, 1146 (Fed. Cir. 2016). “[T]he fact that the required calculations could be performed more efficiently via a computer does not materially alter the patent eligibility of the claimed subject matter.” Bancorp Servs., L.L.C. v. Sun Life Assurance Co. of Can. (U.S.), 687 F.3d 1266, 1278 (Fed. Cir. 2012). Furthermore, the Supreme Court has concluded “if a claim is directed essentially to a method of calculating, using a mathematical formula, even if the solution is for a specific purpose, the claimed method is [patent-ineligible subject matter].” Parker v. Flook, 437 U.S. 584, 595 (1978) (quoting In re Rickman, 563 F.2d 1026, 1030 (CCPA 1977).
As per accessing, storing and displaying data limitations, it has been held that “As many cases make clear, even if a process of collecting and analyzing information is ‘limited to particular content’ or a particular ‘source,’ that limitation does not make the collection and analysis other than abstract.” SAP Am., Inc. v. InvestPic, LLC, 898 F.3d 1161, 1168 (Fed. Cir. 2018) (citation omitted); see also In re Jobin, 811 F. App’x 633, 637 (Fed. Cir. 2020) (claims to collecting, organizing, grouping, and storing data using techniques such as conducting a survey or crowdsourcing recited a method of organizing human activity, which is a hallmark of abstract ideas).
It is also similar to other abstract ideas held to be non-statutory by the courts (see Intellectual Ventures I LLC v. Capital One Bank (USA), 792 F.3d 1363 (Fed. Cir. 2015) - tailoring sales information presented to a user based on, e.g., user data or time data, similar because at another level of abstraction the claims could be characterized as tailoring market-related information presented to a user based on, e.g., user data or historical performance data; Electric Power Grp., LLC v. Alstom S.A., 830 F.3d 1350 (Fed. Cir. 2016) - process of gathering and analyzing information of a specified content, then displaying the results, similar because at another level of abstraction the claims could be characterized as process of gathering and analyzing information of financial activity, then displaying the results; buySAFE, Inc. v. Google, Inc., 765 F.3d 1350 (Fed. Cir. 2014)—creating a contractual relationship; similar because this also characterizes the invention at another level of abstraction. Also, Credit Acceptance Corp. v. Westlake Services; - System and Method for providing financing; Capital Dynamics v. Cambridge Associates, LLC; - Modeling and benchmarking private equity assets).
All these cases describe the significant aspects of the claimed invention, albeit at another level of abstraction. See Apple, Inc. v. Ameranth, Inc., 842 F.3d 1229, 1240-41 (Fed. Cir. 2016) ("An abstract idea can generally be described at different levels of abstraction. As the Board has done, the claimed abstract idea could be described as generating menus on a computer, or generating a second menu from a first menu and sending the second menu to another location. It could be described in other ways, including, as indicated in the specification, taking orders from restaurant customers on a computer.").
Therefore, if a claim limitation, under its broadest reasonable interpretation, covers performance of the limitation in the mind but for the recitation of generic computer components, then it falls within the “Mental Processes”, and/or “Certain Methods of Organizing Human Activity” grouping of abstract ideas. Accordingly, claims 5-6 and 9-10 each recite an abstract idea. (Step 2A – Prong 1: Yes).
Step 2A – Prong 2
In Prong Two, the Examiner determines whether claim 1, as a whole, recites additional elements that integrate the judicial exception into a practical application of the exception, i.e., whether the additional elements apply, rely on, or use the judicial exception in a manner that imposes a meaningful limit on the judicial exception, such that the claim is no more than a drafting effort designed to monopolize the judicial exception. See Guidance, 84 Fed. Reg. at 54-55. If the additional elements do not integrate the judicial exception into a practical application, then the claim is directed to the judicial exception. See id., 84 Fed. Reg. at 54. “An additional element [that] reflects an improvement in the functioning of a computer, or an improvement to other technology or technical field” is indicative of integrating a judicial exception into a practical application. See Guidance, 84 Fed. Reg. at 55.
The Examiner determined that this judicial exception is not integrated into a practical application, because there are no meaningful limitations that transform the exception into a patent eligible application. In particular, the claims recite or imply an additional elements – using a processor to perform the steps of accessing property records of collateral asset data; calculating standard deviation of percentages of the final market sale prices; accessing a database of current market active mortgage data; populating and sorting data into tranches; labeling/assigning tranche code to the tranches as, e.g., a “risk free” tranche, a “grade AA” tranche, an “investment grade” tranche, and “speculative tranche”; pooling the sorted tranches, and displaying results. However, the processor in each step is recited or implied at a high level of generality, i.e., as a generic processor performing a generic computer functions or processing data, including accessing database, receiving, storing, comparing, combining and outputting data. This generic processor limitation is nor more than mere instructions to apply the exception using a generic computer component. The processor that performs the recited steps is merely automates these steps which can be done mentally. Thus, while the additional elements have and execute instructions to perform the abstract idea itself, this also does not serve to integrate the abstract idea into a practical application as it merely amounts to instructions to "apply it." The claims only manipulate abstract data elements into another form; they do not set forth improvements to another technological field or the functioning of the computer itself and instead use computer elements as tools in a conventional way to improve the functioning of the abstract idea identified above. Looking at the limitations as an ordered combination adds nothing that is not already present when looking at the elements taken individually. There is no indication that the combination of elements improves the functioning of a computer or improves any other technology, and the Specification does not disclose any algorithm which could show any improvement over existing well-known software tools. Thus, their collective functions merely provide conventional computer implementation. None of the additional elements recited "offers a meaningful limitation beyond generally linking 'the use of the [method] to a particular technological environment,' that is, implementation via computers." Alice Corp., slip op. at 16 (citing Bilski v. Kappos, 561 U.S. 610, 611 (U.S. 2010)). The recited steps do not control or improve operation of a machine (MPEP 2106.05(a)), do not effect a transformation or reduction of a particular article to a different state or thing (MPEP 2106.05(c)), and do not apply the judicial exception with, or by use a particular machine (MPEP 2106.05(b)), but, instead, require retrieving, processing and outputting data.
As per accessing, storing and displaying data limitations, these recitations amount to mere data gathering, are insignificant post-solution or extra-solution components, and represent nominal recitation of technology. Insignificant "post-solution” or “extra-solution" activity means activity that is not central to the purpose of the method invented by the applicant. However, “(c) Whether its involvement is extra-solution activity or a field-of-use, i.e., the extent to which (or how) the machine or apparatus imposes meaningful limits on the execution of the claimed method steps. Use of a machine or apparatus that contributes only nominally or insignificantly to the execution of the claimed method (e.g., in a data gathering step or in a field-of-use limitation) would weigh against eligibility”. See Bilski, 138 S. Ct. at 3230 (citing Parker v. Flook, 437 U.S. 584, 590, 198 USPQ 193, ___ (1978)). Thus, claim drafting strategies that attempt to circumvent the basic exceptions to § 101 using, for example, highly stylized language, hollow field-of-use limitations, or the recitation of token post-solution activity should not be credited. See Bilski, 130 S. Ct. at 3230. Accordingly, even in combination, 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. Therefore, the claim is directed to an abstract idea. (Step 2A – Prong 2: No).
Step 2B
If a claim has been determined to be directed to a judicial exception under revised Step 2A, examiners should then evaluate the additional elements individually and in combination under Step 2B to determine whether the provide an inventive concept (i.e., whether the additional elements amount to significantly more than the exception itself).
The Examiner determined that the claim does 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 element of using a processor to perform the recited functions amount to no more than mere instructions to apply the exception using a generic computer component. The claim is now re-evaluated in Step 2B to determine if it is more than what is well-understood, routine, conventional activity in the field.
The recited steps would require a processor and memory in order to perform basic computer functions of receiving information, storing the information in a database, retrieving information from the database, comparing data, and outputting said information. These components are not explicitly recited and therefore must be construed at the highest level of generality. Based on the Specification, the invention utilizes a generic processor and a conventional memory, which can be found in mobile devices or desktop computers, and the functions performed by said generic computer elements are basic functions of a computer - performing a mathematical operation, receiving, storing, comparing and outputting data - have recognized by the courts as routine and conventional activity. Specifically, regarding the recited functions, MPEP 2106.05(d)(II) defines said functions as routine and conventional, or as insignificant extra-solution activity:
i. Receiving or transmitting data over a network, e.g., using the Internet to gather data, Symantec, 838 F.3d at 1321, 120 USPQ2d at 1362 (utilizing an intermediary computer to forward information); TLI Communications LLC v. AV Auto. LLC, 823 F.3d 607, 610, 118 USPQ2d 1744, 1745 (Fed. Cir. 2016) (using a telephone for image transmission); OIP Techs., Inc., v. Amazon.com, Inc., 788 F.3d 1359, 1363, 115 USPQ2d 1090, 1093 (Fed. Cir. 2015) (sending messages over a network); buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1355, 112 USPQ2d 1093, 1096 (Fed. Cir. 2014) (computer receives and sends information over a network); but see DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245, 1258, 113 USPQ2d 1097, 1106 (Fed. Cir. 2014) (“Unlike the claims in Ultramercial, the claims at issue here specify how interactions with the Internet are manipulated to yield a desired result‐‐a result that overrides the routine and conventional sequence of events ordinarily triggered by the click of a hyperlink.” (emphasis added));
ii. Performing repetitive calculations, Flook, 437 U.S. at 594, 198 USPQ2d at 199 (recomputing or readjusting alarm limit values); Bancorp Services v. Sun Life, 687 F.3d 1266, 1278, 103 USPQ2d 1425, 1433 (Fed. Cir. 2012) (“The computer required by some of Bancorp’s claims is employed only for its most basic function, the performance of repetitive calculations, and as such does not impose meaningful limits on the scope of those claims.”); collecting and comparing known information in Classen 659 F.3d 1057, 100 U.S.P.Q.2d 1492 (Fed. Cir. 2011)
iii. Electronic recordkeeping, Alice Corp., 134 S. Ct. at 2359, 110 USPQ2d at 1984 (creating and maintaining “shadow accounts”); Ultramercial, 772 F.3d at 716, 112 USPQ2d at 1755 (updating an activity log);
iv. Storing and retrieving information in memory, Versata Dev. Group, Inc. v. SAP Am., Inc., 793 F.3d 1306, 1334, 115 USPQ2d 1681, 1701 (Fed. Cir. 2015); OIP Techs., 788 F.3d at 1363, 115 USPQ2d at 1092-93;
v. Electronically scanning or extracting data from a physical document, Content Extraction and Transmission, LLC v. Wells Fargo Bank, 776 F.3d 1343, 1348, 113 USPQ2d 1354, 1358 (Fed. Cir. 2014) (optical character recognition); and
vi. A web browser’s back and forward button functionality, Internet Patent Corp. v. Active Network, Inc., 790 F.3d 1343, 1348, 115 USPQ2d 1414, 1418 (Fed. Cir. 2015).
Thus, the background of the current application does not provide any indication that the processor is anything other than a generic, off-the-shelf computer component, and the Symantec, TLI, and OIP Techs. court decisions cited in MPEP 2106.05(d)(II) indicate that mere collection or receipt of data over a network is a well‐understood, routine, and conventional function when it is claimed in a merely generic manner (as it is here).
Further, the claim does not involve a non-conventional and non-generic arrangement of known, conventional pieces, as asserted, by receiving information from an external source of data. The receiving of data from an external source over a network, such as via the Internet, can fairly be characterized as insignificant extra-solution activity that does not receive patentable weight. See Bilski, 545 F.3d 943, 963 (Fed. Cir. 2008) (en banc), aff’d sub nom Bilski v. Kappos, 561 U.S. 593 (2010) (characterizing data gathering steps as insignificant extra-solution activity). Similar to Content Extraction, 776 F.3d at 1347; Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 715 (Fed. Cir. 2014): “And we have recognized that merely presenting the results of abstract processes of collecting and analyzing information, without more (such as identifying a particular tool for presentation), is abstract as an ancillary part of such collection and analysis.” Here, the claims are clearly focused on the combination of those abstract-idea processes. The advance they purport to make is a process of gathering and analyzing information of a specified content, then displaying the results, and not any particular asserted inventive technology for performing those functions. They are therefore directed to an abstract idea. As such, the additional elements, considered individually and in combination with the other claim elements, do not make the claim as a whole significantly more than the abstract idea itself.
Accordingly, a conclusion that the collecting step is well-understood, routine, conventional activity is supported under Berkheimer Option 2. Mere instructions to apply an exception using a generic computer component cannot provide an inventive concept.
Also, the Examiner did not find “significantly more” by using a particular machine, through specific limitations that are not well-understood, routine, and conventional, and by going beyond linking the abstract idea to a particular technological environment. The claimed steps do not require a particular machine. The operations of receiving, storing, analyzing, and outputting data are primitive computer operations found in any computer system. See In re Katz Interactive Call Processing Patent Litig., 639 F.3d 1303, 1316 (Fed. Cir. 2011) (“Absent a possible narrower construction of the required hardware, the recited functions can be achieved by any general-purpose computer without special programming.”).
Similar to Electric Power Group v Alstom S.A. (Fed Cir, 2015-1778, 8/1/2016) (Power Group), claim’ invocation of computers, networks, and displays does not transform the claimed subject matter into patent-eligible applications. Claims 5-6 and 9-10 do not require any nonconventional computer, network, or display components, or even a “non-conventional and non-generic arrangement of known, conventional pieces,” but merely call for performance of the claimed information collection, analysis, and display functions on a set of generic computer components and display devices. Nothing in the claims, understood in light of the specification, requires anything other than off-the-shelf, conventional computer, network, and display technology for gathering, processing and presenting the desired information. Analogous to Power Group, the claims do not even require a new source or type of information, or new techniques for analyzing it; the Specification does not disclose any algorithm which could show any improvement over existing well-known software tools. The Specification explicitly states that a publicly accessible historical information is accessed and processed using statistic standard deviations, and does not mention any specific formula or algorithm for conducting said calculations. As a result, the claims do not require an arguably inventive set of components or methods, such as measurement devices or techniques that would generate new data, and does not invoke any assertedly inventive programming. Merely requiring the selection and manipulation of information - to provide a “humanly comprehensible” amount of information useful for users - by itself does not transform the otherwise-abstract processes of information collection and analysis into patent eligible subject matter. Merely obtaining and selecting information, by content or source, for collection, analysis, and display does nothing significant to differentiate a process from ordinary mental processes, whose implicit exclusion from § 101 undergirds the information-based category of abstract ideas. Therefore, the recited steps represent implementing the abstract idea on a generic computer, or “reciting a commonplace business method aimed at processing business information despite being applied on a general-purpose computer” Versata, p. 53; Ultramerical, pp. 11-12.
Further, the recited functions do not improve the functioning computers itself, including of the processor(s) or the network elements. There are no physical improvements in the claim, like a faster processor or more efficient memory, and there is no operational improvement, like mathematical computation that improve the functioning of the computer. Applicant did not invent a new type of computer, but, like everyone else, programs her computer to perform functions. The Supreme Court in Alice indicated that an abstract claim might be statutory if it improved another technology or the computer processing itself. Using a (programmed) computer to implement a common business practice does neither. The Federal Circuit has recognized that "an invocation of already-available computers that are not themselves plausibly asserted to be an advance, for use in carrying out improved mathematical calculations, amounts to a recitation of what is 'well-understood, routine, [and] conventional.'" SAP Am., Inc. v. InvestPic, LLC, 890 F.3d 1016, 1023 (Fed. Cir. 2018) (alteration in original) (citing Mayo v. Prometheus, 566 U.S. 66, 73 (2012)). Apart from the instructions to implement the abstract idea, they only serve to perform well-understood functions (e.g., receiving, storing, retrieving, comparing and outputting data - see the Specification above as well as Alice Corp.; Intellectual Ventures I LLC v. Symantec Corp., 838 F.3d 1307 (Fed. Cir. 2016); and Versata Dev. Group, Inc. v. SAP Am., Inc., 793 F.3d 1306, 1334 (Fed. Cir. 2015) covering the well-known nature of these computer functions). Looking at the limitations as an ordered combination adds nothing that is not already present when looking at the elements taken individually. There is no indication that the combination of elements improves the functioning of a computer or improves any other technology. Their collective functions merely provide conventional computer implementation. “However, it is not apparent how appellant’s programmed digital computer can produce any synergistic result. Instead, the computer will simply do the job it is instructed to do. Where is there any surprising or unexpected result? The unlikelihood of any such result is merely one more reason why patents should not be granted in situations where the only novelty is in the programming of general purpose digital computers. See Sakraida v. Ag. Pro, Inc., 425 U.S. 273 [ 96 S.Ct. 1532, 47 L.Ed.2d 784], 189 USPQ 449 (1976) and A P Tea Co. V. Supermarket Corp., 340 U.S. 147 [ 71 S.Ct. 127, 95 L.Ed. 162], 87 USPQ 303 (1950).
For example, in comparison to the decision in Enfish, LLC v. Microsoft Corporation, et al. (Enfish), claims 5-6 and 9-10 do not provide specific improvements in computer capabilities. In Enfish, Court found that claims are directed to a specific improvement to the way computers operate, - a particular database technique - in how computers could carry out one of their basic functions of storage and retrieval of data which increased the speed of computer operation. The present case is different: the focus of the claims is not on such an improvement in computers as tools, but on certain independently abstract ideas that use computers as tools. There is no technological improvement described in the current application; the recited steps of accessing property records of collateral asset data; calculating standard deviation of percentages of the final market sale prices; accessing a database of current market active mortgage data; populating and sorting data into tranches, e.g. a “risk free” tranche, a “grade AA” tranche, an “investment grade” trance, and “speculative tranche”; pooling the sorted tranches, and displaying results, do not improve the functioning of computers itself, including of the processor(s) or the network elements; do not recite physical improvements in the claim, like a faster processor or more efficient memory; and do not provide operational improvement, like mathematical computation that improve the functioning of the computer. The claimed invention merely utilizes conventional computing and network elements for transmitting, processing and storing data. The conclusion that claims 5-6 and 9-10 of the instant invention are not directed to an improvement of an existing technology is bolstered by the Specification teachings that the claimed invention achieves other benefits, such as: “[0039] Currently MBS are stripped or pooled in tranche per prepayment risk. Advantages of pooling assets per principal at risk will broader range of investors with perseverance of capital as main concern. Verifiable database available to investors decompose the risk and increase the transparency for the products. These data available to investors are objective and verifiable; therefore, will enhance confident and liquidity for the secondary MBS market.”
Therefore, the current application’ solution to the problem of broadening the range of investors and increasing the transparency for the products is not technological, but “business solution”, or “entrepreneurial.” Accordingly, claims 5-6 and 9-10 do not provide a specific means or method that improves the relevant technology, but, instead, is directed to a result or effect that itself is the abstract idea and merely invoke generic processes and machinery.
Furthermore, there is no transformation recited in the claim as understood in view of 35 USC 101. The functions of accessing property records of collateral asset data; calculating standard deviation of percentages of the final market sale prices; accessing a database of current market active mortgage data; populating and sorting data into tranches; labeling/assigning tranche code to the tranches as, e.g., a “risk free” tranche, a “grade AA” tranche, an “investment grade” tranche, and “speculative tranche”; pooling the sorted tranches, and displaying results merely represent abstract ideas which cannot meet the transformation test because they are not physical objects or substances. Bilski, 545 F.3d at 963. Said steps is nothing more than mere manipulation or reorganization of data, which does not satisfy the transformation prong. Again, it is noted that the underlying idea of the recited steps could be performed via pen and paper or in a person's mind. Moreover, “We agree with the district court that the claimed process manipulates data to organize it in a logical way such that additional fraud tests may be performed. The mere manipulation or reorganization of data, however, does not satisfy the transformation prong.” and “Abele made clear that the basic character of a process claim drawn to an abstract idea is not changed by claiming only its performance by computers, or by claiming the process embodied in program instructions on a computer readable medium. Thus, merely claiming a software implementation of a purely mental process that could otherwise be performed without the use of a computer does not satisfy the machine prong of the machine-or-transformation test”. CyberSource, 659 F.3d 1057, 100 U.S.P.Q.2d 1492 (Fed. Cir. 2011)
For these same reasons, the claims are not directed to a solution to a “technological problem” as was the case in Diamond v. Diehr, 450 U.S. 175 (1981). See OIP Techs., 788 F.3d at 1364, nor do the claims attempt to solve “a challenge particular to the Internet.” DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245, 1256–57 (Fed. Cir. 2014); cf. Intellectual Ventures I, 792 F.3d at 1371 (because the patent claims at issue did not “address problems unique to the Internet, . . . DDR has no applicability.”).
Therefore, the claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception, because, when considered separately and in combination, the claims do not add significantly more to the exception.
Therefore, considered separately and as an ordered combination, the claim elements do not provide an improvement to another technology or technical field; do not provide an improvement to the functioning of the computer itself; do not apply the judicial exception by use of a particular machine; do not effect a transformation or reduce a particular article to a different state or thing; and do not add a specific limitation other than what is well-understood, routine and conventional in the operation of a generic computer. None of the hardware recited "offers a meaningful limitation beyond generally linking 'the use of the [method] to a particular technological environment,' that is, implementation via computers." Id., slip op. at 16 (citing Bilski v. Kappos, 561 U.S. 610, 611 (U.S. 2010)). As per “non-transitory hardware memory…”, “a computer implemented method…” and “a) accessing, by a computing system equipped with a processor and non-transitory memory,” recitations, these limitations do not add significantly more because they are simply an attempt to limit the abstract idea to a particular technological environment, that is, implementation via computers." Id., slip op. at 16 (citing Bilski v. Kappos, 561 U.S. 610, 611 (U.S. 2010)). Limiting the claims to the particular technological environment of electronic commerce and/or statistical calculations is, without more, insufficient to transform the claim into patent-eligible applications of the abstract idea at their core.
Accordingly, claims 5-6 and 9-10 are not directed to significantly more than the exception itself, and is not eligible subject matter under § 101. (Step 2B: No).
Response to Arguments
Applicant's arguments filed 05/13/2025 have been fully considered but they are not persuasive.
Regarding the Berkheimer argument, the Examiner maintains the claimed invention would require a processor and memory in order to perform basic computer functions of receiving information, storing the information in a database, retrieving information from the database, comparing data, and outputting said information. These components are not explicitly recited and therefore must be construed at the highest level of generality. Based on the Specification, the invention utilizes a generic processor and a conventional memory, which can be found in mobile devices or desktop computers, and the functions performed by said generic computer elements are basic functions of a computer - performing a mathematical operation, receiving, storing, comparing and outputting data - have recognized by the courts as routine and conventional activity. Specifically, regarding the recited functions, MPEP 2106.05(d)(II) defines said functions as routine and conventional, or as insignificant extra-solution activity:
i. Receiving or transmitting data over a network, e.g., using the Internet to gather data, Symantec, 838 F.3d at 1321, 120 USPQ2d at 1362 (utilizing an intermediary computer to forward information); TLI Communications LLC v. AV Auto. LLC, 823 F.3d 607, 610, 118 USPQ2d 1744, 1745 (Fed. Cir. 2016) (using a telephone for image transmission); OIP Techs., Inc., v. Amazon.com, Inc., 788 F.3d 1359, 1363, 115 USPQ2d 1090, 1093 (Fed. Cir. 2015) (sending messages over a network); buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1355, 112 USPQ2d 1093, 1096 (Fed. Cir. 2014) (computer receives and sends information over a network); but see DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245, 1258, 113 USPQ2d 1097, 1106 (Fed. Cir. 2014) (“Unlike the claims in Ultramercial, the claims at issue here specify how interactions with the Internet are manipulated to yield a desired result‐‐a result that overrides the routine and conventional sequence of events ordinarily triggered by the click of a hyperlink.” (emphasis added));
ii. Performing repetitive calculations, Flook, 437 U.S. at 594, 198 USPQ2d at 199 (recomputing or readjusting alarm limit values); Bancorp Services v. Sun Life, 687 F.3d 1266, 1278, 103 USPQ2d 1425, 1433 (Fed. Cir. 2012) (“The computer required by some of Bancorp’s claims is employed only for its most basic function, the performance of repetitive calculations, and as such does not impose meaningful limits on the scope of those claims.”); collecting and comparing known information in Classen 659 F.3d 1057, 100 U.S.P.Q.2d 1492 (Fed. Cir. 2011)
iii. Electronic recordkeeping, Alice Corp., 134 S. Ct. at 2359, 110 USPQ2d at 1984 (creating and maintaining “shadow accounts”); Ultramercial, 772 F.3d at 716, 112 USPQ2d at 1755 (updating an activity log);
iv. Storing and retrieving information in memory, Versata Dev. Group, Inc. v. SAP Am., Inc., 793 F.3d 1306, 1334, 115 USPQ2d 1681, 1701 (Fed. Cir. 2015); OIP Techs., 788 F.3d at 1363, 115 USPQ2d at 1092-93;
v. Electronically scanning or extracting data from a physical document, Content Extraction and Transmission, LLC v. Wells Fargo Bank, 776 F.3d 1343, 1348, 113 USPQ2d 1354, 1358 (Fed. Cir. 2014) (optical character recognition); and
vi. A web browser’s back and forward button functionality, Internet Patent Corp. v. Active Network, Inc., 790 F.3d 1343, 1348, 115 USPQ2d 1414, 1418 (Fed. Cir. 2015).
Thus, the background of the current application does not provide any indication that the processor is anything other than a generic, off-the-shelf computer component, and the Symantec, TLI, and OIP Techs. court decisions cited in MPEP 2106.05(d)(II) indicate that mere collection or receipt of data over a network is a well‐understood, routine, and conventional function when it is claimed in a merely generic manner (as it is here).
Further, the claim does not involve a non-conventional and non-generic arrangement of known, conventional pieces, as asserted, by receiving information from an external source of data. The receiving of data from an external source over a network, such as via the Internet, can fairly be characterized as insignificant extra-solution activity that does not receive patentable weight. See Bilski, 545 F.3d 943, 963 (Fed. Cir. 2008) (en banc), aff’d sub nom Bilski v. Kappos, 561 U.S. 593 (2010) (characterizing data gathering steps as insignificant extra-solution activity). Similar to Content Extraction, 776 F.3d at 1347; Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 715 (Fed. Cir. 2014): “And we have recognized that merely presenting the results of abstract processes of collecting and analyzing information, without more (such as identifying a particular tool for presentation), is abstract as an ancillary part of such collection and analysis.” Here, the claims are clearly focused on the combination of those abstract-idea processes. The advance they purport to make is a process of gathering and analyzing information of a specified content, then displaying the results, and not any particular asserted inventive technology for performing those functions. They are therefore directed to an abstract idea. As such, the additional elements, considered individually and in combination with the other claim elements, do not make the claim as a whole significantly more than the abstract idea itself. Accordingly, a conclusion that the collecting step is well-understood, routine, conventional activity is supported under Berkheimer Option 2. Mere instructions to apply an exception using a generic computer component cannot provide an inventive concept.
Regarding the argument “Citing repetitive 101 as abstract idea without combination of rejection 112 or without combination of 102 and 103 should be avoided per MPEP 2103.01 III examiners should avoid focusing on only issues of patent-eligibility under 35 U.S.C. 101”, the Examiner noted that regardless of 35 U.S.C. 101 issue, a complete examination was executed for every claim under each of the other patentability requirements: 35 U.S.C. 102, 103, 112, and 101 (utility, inventorship and double patenting) and non-statutory double patenting. MPEP § 2103. This had been fully and repeatably addressed throughout prosecution of the application, e.g. during the Interview on March 26, 2025 (Please see Interview summary of 04/01/2025 filed after Interview on March 26, 2025)
Regarding the Applicant’s argument of “no known product commercially available per specific structure and no one taught processes’, it is noted that 35 USC 101 rejections are not evaluated in light of 35 USC 102 or 103. “Novelty and non-obviousness have no bearing on whether a claim recites an abstract idea. The Federal Circuit has made this clear - rejecting an argument substantially similar to Appellants’ in Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 715 (Fed. Cir. 2014) “Even newly discovered judicial exceptions are still exceptions, despite their novelty”. Ultramerical, 10: “We do not agree with Ultramerical that the addition of merely novel or non-routine components to the claimed idea necessarily turns an abstraction into something concrete. Examiner noted that said argument had been fully and repeatably addressed in Final Office action of 02/14/2023, Non Final Office action of 09/18/2023, Advisory Actions of 03/08/2023, 03/30/2023, 05/09/2023, 06/13/2023, 04/08/2025, and Interview Summary of 04/06/2023.
Regarding the argument that “a piece of paper and paper could not possibly crawl through the server that humans could not possibly mentally crawl through a mass pool of servers to fetch ongoing payments from all these institutions and real time mentally displayed on NYMEX market for all these institutions”, Examiner noted that the recited limitations represent mental processes, e.g., accessing property records of collateral asset data; calculating standard deviation of percentages of the final market sale prices; accessing a database of current market active mortgage data; populating and sorting data into tranches; labeling/assigning tranche code to the tranches, etc., as recited in claims 5-6 and 9-10, remain unpatentable even when automated to reduce the burden on the user of what once could have been done with pen and paper. CyberSource Corp. at 1375 (“That purely mental processes can be unpatentable, even when performed by a computer, was precisely the holding of the Supreme Court in Gottschalk v. Benson, [409 U.S. 63 (1972)].”).
Regarding the argument that issued patent 7883004 cited and attached under RCE is the exact preamble of application 16/917607, Examiner noted that said patent is irrelevant, because the patent discloses a product - a gift card made of cardstock or plastic, which can be folded to create a 3D object. Nevertheless, regarding any other issued patents Applicant may consider similar to her application, the issuance of other patents in the same field of technology is not a ground for challenging the rejection of a subsequent application. Each application is examined on its own merits for compliance with pertinent statutory requirements. See In re McDaniel, 293 F.3d 1379, 1387 (Fed. Cir. 2002) (“It is well settled that the prosecution of one patent application does not affect the prosecution of an unrelated application.”); In re Gyurik, 596 F.2d 1012, 1018-19 n.15 (CCPA 1979) (“Each case is determined on its own merits. In reviewing specific rejections of specific claims, this court does not consider allowed claims in other applications or patents.”); In re Wertheim, 541 F.2d 257, 264 (CCPA 1976) (“[I]t is immaturial in ex parte prosecution whether the same or similar claims have been allowed to others.”). Therefore, there is no principle of estoppel which is applicable to statutory rejections made by patent examiners of the USPTO. The decision making of the same, or a previous patent examiner is never permanently binding on any patent examiner and does not estop the application of any statutory rejection which can be made by a patent examiner. This has been explained to Applicant numerous times during the prosecution of the case
Applicant argues that claims at issue are patent eligible similar to Fed Cir 2016 841 fad. 1288 Amdocs Ltd. v Openet Telecom, Inc., and 2014 DDR Holdings LLC v Hotel.com of automated transforming webpage as statutory patentable subject matter per court ruling.
Regarding the Amdocs argument, the Examiner notes that in Amdocs the “enhancement”, or “in a distributed fashion” and the “close to the source” of network information requirements is realized due to the distributed, remote enhancement that provided an unconventional result—reduced data flows and the possibility of smaller databases, - “An architecture providing a technological solution to a technological problem (massive data flows requiring huge databases).” Contrary to Amdocs, the claims at issue do not provide a technological solution to a technological problem. As stated in the Specification “[0039] Currently MBS are stripped or pooled in tranche per prepayment risk. Advantages of pooling assets per principal at risk will broader range of investors with perseverance of capital as main concern. Verifiable database available to investors decompose the risk and increase the transparency for the products. These data available to investors are objective and verifiable; therefore, will enhance confident and liquidity for the secondary MBS market.” Thus, the current application’ solution to the problem of broadening the range of investors and increasing the transparency for the products is not technological, but “business solution”, or “entrepreneurial.” Accordingly, claims 5-6 and 9-10 do not provide a specific means or method that improves the relevant technology, but, instead, is directed to a result or effect that itself is the abstract idea and merely invoke generic processes and machinery.
Regarding the DDR argument, the Examiner notes that in DDR, the claim includes additional elements of "1) stor[ing] 'visually perceptible elements' corresponding to numerous host Web sites in a database, with each of the host Web sites displaying at least one link associated with a product or service of a third-party merchant, 2) on activation of this link by a Web site visitor, automatically identif[ying] the host, and 3) instruct[ing] an Internet web server of an 'outsource provider' to construct and serve to the visitor a new, hybrid Web page that merges content associated with the products of the third-party merchant with the stored 'visually perceptible elements' from the identified host Web site." The court held that, unlike in Ultramercial, the claim does not generically recite "use the Internet" to perform a business practice, but instead recites a specific way to automate the creation of a composite Web page by an outsource provider that incorporates elements from multiple sources in order to solve a problem faced by Web sites on the Internet. Contrary to DDR, claims 5-6 and 9-10 are drawn to the application of principles outside of the scientific realm -- such as principles related to commercial or business interaction. While the claims are set within an electronic commerce environment, claims 5-6 and 9-10 address a business challenge that is not particular to the Internet. As stated in the Specification “[0039] Currently MBS are stripped or pooled in tranche per prepayment risk. Advantages of pooling assets per principal at risk will broader range of investors with perseverance of capital as main concern. Verifiable database available to investors decompose the risk and increase the transparency for the products. These data available to investors are objective and verifiable; therefore, will enhance confident and liquidity for the secondary MBS market.” Thus, the current application’ solution to the problem of broadening the range of investors and increasing the transparency for the products is not a problem unique to computer technologies, and said claims are drawn to the application of principles outside of the scientific realm -- such as principles related to commercial or business interaction.
Regarding the Bigio, 381 F.3d 1320, 1325 argument, in which claims are directed to “Anatomically Correct Hairbrush" for brushing scalp hair, Applicant did not provide any reason why she cited the case. So as the case appears to be irrelevant for the current application, the argument is moot.
Regarding the Klein 647 F.3d 1343 (Fed. Cir.2011) argument, in which claims are directed to a device used for preparing nectar for bird and butterfly feeders, Applicant did not provide any reason why she cited the case. So as the case appears to be irrelevant for the current application, the argument is moot.
Regarding the argument that “the rule in determining whether a claim recites significantly more than judicial exceptions are no longer relevant for a product that people buy and sell with real world usage” the Examiner respectfully notes that MPEP 2106.05 does not support said statement.
Further, in conducting eligibility analysis of the claims, the Examiner is guided by the Court’s two-part framework, described in Mayo and Alice. Id. at 217-18 (citing Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 75-77 (2012)); Bilski v. Kappos, 561 U.S. 593, 611 (2010); 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019); the October 2019 Update of the 2019 Revised Guidance (Oct. 17, 2019), and 2024 Guidance Update on Patent Subject Matter Eligibility, Including on Artificial Intelligence (July 17, 2024).
Furthermore, in accordance with MPEP 2106.5, additional elements were evaluated to determine whether they amount to an inventive concept, and were evaluated considering them both individually and in combination to ensure that they amount to significantly more than the judicial exception itself. The Examiner determined that, considered separately and as an ordered combination, the claims’ elements do not provide an improvement to another technology or technical field; do not provide an improvement to the functioning of the computer itself; do not apply the judicial exception by use of a particular machine; do not effect a transformation or reduce a particular article to a different state or thing; and do not add a specific limitation other than what is well-understood, routine and conventional in the operation of a generic computer. None of the hardware recited "offers a meaningful limitation beyond generally linking 'the use of the [method] to a particular technological environment,' that is, implementation via computers." Id., slip op. at 16 (citing Bilski v. Kappos, 561 U.S. 610, 611 (U.S. 2010)).
Regarding the argument that that none of the court cases cited taught the exact processes combined as a whole or structure of the same financial product, the Examiner respectfully maintains that court has explained that when determining whether a claim is directed to an abstract idea, “the decisional mechanism courts now apply is to examine earlier cases in which a similar or parallel descriptive nature can be seen—what prior cases were about, and which way they were decided.” Amdocs (Israel) Ltd. v. Openet Telecom, Inc., 841 F.3d 1288, 1294 (Fed. Cir. 2016). Here, the Examiner applies this decisional mechanism, and compares the concept to which the present claims are directed to the abstract idea of hedging in Bilski; … and other cases (See the discussion). While obviously there are differences between the cases, they are not relied upon for "precedential value". Rather, they are relied upon to show that the claims share certain characteristics in that they are all directed to methods of organizing human activities and basic commercial practices. None of the differences remove the instant claim from the abstract realm. See, also, Apple, Inc. v. Ameranth, Inc., 842 F.3d 1229, 1240 (Fed. Cir. 2016) (“An abstract idea can generally be described at different levels of abstraction.”).
In response to Applicant’s request to help write claims to overcome claim rejections under 35 USC 101, Examiner noted that the disclosure of Applicant’s application has been thoroughly reviewed for allowable subject matter multiple times not only by the Examiner, but by multiple employees familiar with 35 USC 101 as it applies to the current application. Finding no disclosure for which to base patent eligibility on (i.e. 35 USC 101), the Examiner must maintain the 35 USC 101 rejection and has followed guidance in the MPEP regarding proposing an allowable claim. This information has been conveyed to Applicant multiple times. Please, see Petition Decision of 04/11/2024, Advisory Action 04/08/2025.
Citations of pertinent art
The prior art search has been conducted. The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Doney - US 2017/0213289 A1 – discloses pooling mortgage-backed securities into tranches based on risk assessment.
Weinreb - US 2007/0162365 A1 - discloses pooling mortgage-backed securities into tranches based on risk assessment.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Igor Borissov whose telephone number is 571-272-6801. If attempts to reach the examiner by telephone are unsuccessful, the examiner's supervisor Kambiz Abdi can be reached on 571-272-6702. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/IGOR N BORISSOV/Primary Examiner, Art Unit 3685 6/18/2025