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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 10/22/2025 has been entered.
Response to Arguments
Applicant's arguments filed 10/22/2025 have been fully considered, but they are not fully persuasive. The Examiner analyzed the specification and was unable to find any support/language to suggest an Examiner’s amendment in order to overcome the 35 USC § 101. Thus, the 35 USC § 112 and 101 rejection of claims 1-17 are applied in light of Applicant's amendment.
The Applicant argues “This is a technical problem that requires a technical solution. As previously stated, this can be performed in many ways, such as by using a look-up table or a translation table and then applying the change to the data to reach a standardized system of measure. These steps are specific technical problems that are faced because a computer / processor coupled with software are used to perform that claimed steps. As such, the pending claims are not directed to an abstract concept, but rather to a system and method implemented on a computer that must include the recited steps to allow the software to function properly to achieve the recited functionality.” (Remarks 10/22/2025)
In response, the Examiner respectfully disagrees. The claimed subject matter, is directed to an abstract idea by reciting concepts performed in the human mind (including an observation, evaluation, judgment, opinion), which falls into the “Mental Process” group; and by reciting mathematical relationships, mathematical formulas or equations, mathematical calculations which falls into the “Mathematical concepts” within the enumerated groupings of abstract ideas set forth in the 2019 PEG. The mere nominal recitation of a generic computer does not take the claim limitation out of mathematical concepts or the mental processes grouping. Thus, the claim recites a mental process for performing mathematical concepts.
A claim that recites a mathematical calculation, when the claim is given its broadest reasonable interpretation in light of the specification, will be considered as falling within the "mathematical concepts" grouping. A mathematical calculation is a mathematical operation (such as multiplication) or an act of calculating using mathematical methods to determine a variable or number, e.g., performing an arithmetic operation such as exponentiation.
Nevertheless, even assuming arguendo that these steps are not considered as part of the abstract idea for a mental process, these steps at most amount to mathematical calculations, which have been recognized as abstract and thus insufficient to render the claims as non-abstract. “Adding one abstract idea (math) to another abstract idea” (mental process) “does not render the claim non-abstract.” See RecogniCorp, LLC v. Nintendo Co., 855 F.3d 1322, 1326-27, 122 USPQ2d 1377, 1379-80 (Fed. Cir. 2017) (claim reciting multiple abstract ideas, i.e., the manipulation of information through a series of mental steps and a mathematical calculation, was held directed to an abstract idea and thus subjected to further analysis in part two of the Alice/Mayo test).
The claimed subject matter is merely claims a method for calculating and analyzing information regarding productivity growth. Although it may be intended to be performed in a digital environment, the claimed subject matter (as currently claimed in the independent claim) speaks to the calculating and analyzing (modeling and projecting) data. Such steps are not tied to the technological realm, but rather utilizing technology to perform the abstract idea(s) (mathematical concepts).Additionally, the claimed subject matter can also be categorized as a Mental Process as it recites concepts performed in the human mind (observation and evaluation). The steps of calculating data, training/updating models, and generating a model can be performed by a human (mental process/pen and paper). The practice of calculating information and constructing models with set parameters and timelines can be performed without computers, and thus are not tied to technology nor improving technology.
The solution mentioned in the amended limitation is not implemented/integrated into technology and thus not an improvement to the technical field. Firstly, the formatting step is not found in the specification (see 112(a) rejection), and thus lacks support. Secondly, formatting the entity data to be useable with the software is a broad limitation. The claim fails to add any meaningful limitations that may consider this step a practical application or a technical solution. Gathering data from a plurality of sources is not an improvement to technology, nor is it a meaningful limitation that goes beyond the functions of general-purpose computing systems.
The steps relied upon by the Applicant as recited does not improve upon another technology, the functioning of the computer itself, or allow the computer to perform a function not previously performable by a computer. The claims do not mention to any use of a specialized computer and/or processor. The Applicant is using generic computing components (processors) to perform in a generic/expected way (obtaining and analyzing data). The abstract idea is not particular to a technological environment, but is merely being applied to a computer realm. The process of calculating and analyzing data specifically gross margins, and performing additional analysis can be done without a computer, and thus the claims are not “necessarily rooted", but rather they are utilizing computer technology to perform the abstract idea. The Examiner does not recognize any elements of the Applicant's claims and/or specification that would improve or allow the computer to perform a function(s) not previously performable by the computer, or improve the functioning of the computer itself. It is insufficient to indicate that the claims are novel and non-obvious, and thus contain “something more.” Just because the components may perform a specialized function does not mean that that the computer components are specialized. As such the application of the abstract idea of collecting and analyzing data regarding productivity growth, and performing correlation analysis is insufficient to demonstrate an improvement to the technology.
Examiner Note
37 C.F.R. 1.52 (a)(1)(v) Language, paper, writing, margins, read-only optical disc specifications. (a) Papers that are to become a part of the permanent United States Patent and Trademark Office records in the file of a patent application, or a reexamination or supplemental examination proceeding.
All papers, other than drawings, that are submitted on paper or by facsimile transmission, and are to become a part of the permanent United States Patent and Trademark Office records in the file of a patent application or reexamination or supplemental examination proceeding, must be on sheets of paper that are the same size, not permanently bound together, and:
(v) Presented in a form having sufficient clarity and contrast between the paper and the writing thereon to permit the direct reproduction of readily legible copies in any number by use of photographic, electrostatic, photo-offset, and microfilming processes and electronic capture by use of digital imaging and optical character recognition.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claim 17 is rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for pre-AIA the inventor(s), at the time the application was filed, had possession of the claimed invention. The limitation of a “formatting the entity data to be useable with the software” is not properly described in the application as filed. The limitation of a “formatting the entity data to be useable with the software” is not described in the Applicants specification, nor it was it originally defined in the claim set. Because of this deficiency, the Examiner has concluded that the term “runtime” is a presentation of new matter and has interpreted the limitation to describe the time at or during which a program is run, or the prioritization of work. Applicant is advised to point out in the original disclosure where the claimed subject matter appears otherwise the new subject matter should be removed from the claims.
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 1-17 are rejected under 35 U.S.C. 101 because the claimed invention is directed to non-patentable subject matter. The claims are directed to an abstract idea without significantly more.
Claims 1-17 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more. The judicial exception is not integrated into a practical application. The claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception. The eligibility analysis in support of these findings is provided below, in accordance with the “2019 Revised Patent Subject Matter Eligibility Guidance” (published on 1/7/2019 in Fed. Register, Vol. 84, No. 4 at pgs. 50-57, hereinafter referred to as the “2019 PEG”).
With respect to Step 1 of the eligibility inquiry (as explained in MPEP 2106), it is first noted that the method (claims 1-7), computer program product (claim 17), and system (claims 8-16) are directed to potentially eligible categories of subject matter (i.e., process, machine, and article of manufacture respectively). Thus, Step 1 is satisfied.
With respect to Step 2, and in particular Step 2A Prong One of 2019 PEG, it is next noted that the claims recite an abstract idea by reciting concepts performed in the human mind (including an observation, evaluation, judgment, opinion), which falls into the “Mental Process” group; and by reciting mathematical relationships, mathematical formulas or equations, mathematical calculations which falls into the “Mathematical concepts” within the enumerated groupings of abstract ideas set forth in the 2019 PEG. The mere nominal recitation of a generic computer does not take the claim limitation out of mathematical concepts or the mental processes grouping. Thus, the claim recites a mental process for performing mathematical concepts.
The limitations reciting the abstract idea(s) (Mental process and mathematical concepts), as set forth in exemplary claim 1, are:
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Independent claims 8 and 17 recite the system for performing the method of independent claim 1 without adding significantly more. Thus, the same rationale/analysis is applied.
With respect to Step 2A Prong Two of the 2019 PEG, the judicial exception is not integrated into a practical application. The additional elements are directed to on a non-transitory computer readable medium… a graphical user interface… formatting the entity data to be useable with the software; A system comprising; a processor; and a non-transitory computer readable medium that contains instructions that are readable by the processor to cause the processor to perform the operations of…; A system comprising; a processor; and a non-transitory computer readable medium that contains instructions that are readable by the processor to cause the processor to perform the operations of (as recited in claims 1, 8, and 17). However, these elements fail to integrate the abstract idea into a practical application because they fail to provide an improvement to the functioning of a computer or to any other technology or technical field, fail to apply the exception with a particular machine, fail to apply the judicial exception to effect a particular treatment or prophylaxis for a disease or medical condition, fail to effect a transformation of a particular article to a different state or thing, and fail to apply/use the abstract idea in a meaningful way beyond generally linking the use of the judicial exception to a particular technological environment.
Accordingly, because the Step 2A Prong One and Prong Two analysis resulted in the conclusion that the claims are directed to an abstract idea, additional analysis under Step 2B of the eligibility inquiry must be conducted in order to determine whether any claim element or combination of elements amount to significantly more than the judicial exception.
With respect to Step 2B of the eligibility inquiry, it has been determined that the claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception. The additional limitation(s) is/are directed to: on a non-transitory computer readable medium… a graphical user interface…; A system comprising; a processor; and a non-transitory computer readable medium that contains instructions that are readable by the processor to cause the processor to perform the operations of…; A system comprising; a processor; and a non-transitory computer readable medium that contains instructions that are readable by the processor to cause the processor to perform the operations of (as recited in claims 1, 8, and 17) for implementing the claim steps/functions. These elements have been considered, but merely serve to tie the invention to a particular operating environment (i.e., computer-based implementation), though at a very high level of generality and without imposing meaningful limitation on the scope of the claim.
In addition, Applicant’s Specification (paragraph [0125]) describes generic off-the-shelf computer-based elements for implementing the claimed invention, and which does not amount to significantly more than the abstract idea, which is not enough to transform an abstract idea into eligible subject matter. Such generic, high-level, and nominal involvement of a computer or computer-based elements for carrying out the invention merely serves to tie the abstract idea to a particular technological environment, which is not enough to render the claims patent-eligible, as noted at pg. 74624 of Federal Register/Vol. 79, No. 241, citing Alice, which in turn cites Mayo. See, e.g., 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).
In addition, when taken as an ordered combination, the ordered combination adds nothing that is not already present as when the elements are taken individually. There is no indication that the combination of elements integrate the abstract idea into a practical application. Their collective functions merely provide conventional computer implementation. Therefore, when viewed as a whole, these additional claim elements do not provide meaningful limitations to transform the abstract idea into a practical application of the abstract idea or that the ordered combination amounts to significantly more than the abstract idea itself. Further, the courts have found the presentation of data to be a well-understood, routine, conventional activity, OIP Techs., 788 F.3d at 1362-63, 115 USPQ2d at 1092-93 (see MPEP 2106.05(d)).
The dependent claims (2-7 and 9-16) are directed to the same abstract idea as recited in the independent claims, and merely incorporate additional details that narrow the abstract idea via additional details of the abstract idea. For example claims 2-7 “acquiring benchmark data; comparing the benchmark data to entity data; calculating a magnitude for each variance between the entity data and benchmark data; and sorting the magnitudes from a least magnitude to a greatest magnitude; wherein entity requirements are based on selecting an area of improvement corresponding to the greatest magnitude; acquiring benchmark data; wherein benchmark data further comprises, industry data sector data, and niche data; wherein the industry data corresponds to a same industry of the entity data; wherein the sector data corresponds to a same sector of the entity data; and wherein the niche data corresponds to a same niche of the entity data; comparing the benchmark data to entity data; calculating a magnitude for each variance between the entity data and industry data; sorting the magnitudes from a least magnitude to a greatest magnitude; wherein entity requirements are based on selecting an area of improvement corresponding to the greatest magnitude; comparing the benchmark data to entity data; calculating a magnitude for each variance between the entity data and sector data; sorting the magnitudes from a least magnitude to a greatest magnitude; wherein entity requirements are based on selecting an area of improvement corresponding to the greatest magnitude; comparing the benchmark data to entity data; calculating a magnitude for each variance between the entity data and niche data; sorting the magnitudes from a least magnitude to a greatest magnitude; wherein entity requirements are based on selecting an area of improvement corresponding to the greatest magnitude; wherein entity requirements are based on receiving a user input”, without additional elements that integrate the abstract idea into a practical application and without additional elements that amount to significantly more to the claims. The remaining dependent claims (9-16) recite the system for performing the method of claims 2-7. Thus, the same rationale/analysis is applied. Thus, all dependent claims have been fully considered, however, these claims are similarly directed to the abstract idea itself, without integrating it into a practical application and with, at most, a general purpose computer that serves to tie the idea to a particular technological environment, which does not add significantly more to the claims.
The ordered combination of elements in the dependent claims (including the limitations inherited from the parent claim(s)) add nothing that is not already present as when the elements are 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. Accordingly, the subject matter encompassed by the dependent claims fails to amount to significantly more than the abstract idea itself.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure:
Smith, Michael W. Methods And Systems For Evaluation Of Business Performance .U.S. PGPub 20040068431 The present invention relates to the measurement of business performance. More specifically, the present invention relates to methods and systems for evaluating business performance that are applicable to any business. The methods and systems of the present invention employ both financial and non-financial measures in evaluating the performance of a business, thereby providing a more accurate evaluation of business performance.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Arif Ullah, whose telephone number is (571) 270-0161. The examiner can normally be reached from Monday to Friday between 9 AM and 5:30 PM.
If any attempt to reach the examiner by telephone is unsuccessful, the examiner’s supervisor, Beth Boswell, can be reached at (571) 272-6737. The fax telephone numbers for this group are either (571) 273-8300 or (703) 872-9326 (for official communications including After Final communications labeled “Box AF”).
/Arif Ullah/Primary Examiner, Art Unit 3625
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