DETAILED ACTION
1. 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 .
2. Status of Applicant and Claims
Claims 1-5, 7, 8, 10-18 and 20-23 are pending.
Claims 1, 8 and 15 were amended or newly added in the Applicant’s filing on 1/27/2026.
This office action is being issued in response to the Applicant's filing on 1/27/2026.
Examiner notes that the claims submitted after final rejection on 11/21/2025 were not accepted in the advisory action issued on 12/10/2025. However, the claims submitted on 1/27/2026 operate as if the claims of 11/21/2025 were accepted (i.e., no additions or deletions pertaining to the amendments of 11/21/2025 are indicated). Only new amendments (i.e., new as of 1/27/2026) indicate additions and deletions to the claimed amendments.
3. 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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 1/27/2026 has been entered.
4. Claim Interpretation
The subject matter of a properly construed claim is defined by the terms that limit its scope when given their broadest reasonable interpretation. see MPEP §2013(I)(C). Specifically, the “broadest reasonable construction ‘in light of the specification as it would be interpreted by one of ordinary skill in the art.’” See MPEP §2111, citing Phillips v. AWH Corp., 75 USPQ2d 1321, 1329 (Fed. Cir. 2005). However, “[t]hough understanding the claim language may be aided by explanations contained in the written description, it is important not to import into claim limitations that are not part of the claim.” See MPEP §2111.01, citing Superguide Corp. v. DirecTV Enterprises, Inc., 69 USPQ2d 1865, 1868 (Fed. Cir. 2004). Construing claims broadly during prosecution is not unfair to the applicant, because the applicant has the opportunity to amend the claims to obtain more precise claim coverage. See MPEP §2111, citing In re Yamamoto, 222 USPQ 934, 936 (Fed. Cir. 1984).
As a general matter, grammar and the plain meaning of terms as understood by one having ordinary skill in the art used in a claim will dictate whether, and to what extent, the language limits the claim scope. See MPEP §2013(I)(C). Language that suggests or makes a feature or step optional but does not require that feature or step does not limit the scope of a claim under the broadest reasonable claim interpretation. See MPEP §2013(I)(C).
As such, claim limitations that contain statement(s) such as “if, may, might, can, could” are treated as containing optional language. See MPEP §2013(I)(C). As matter of linguistic precision, optional claim elements do not narrow claim limitations, since they can always be omitted. See MPEP §2013(I)(C).
Similarly, a method step exercised or triggered upon the satisfaction of a condition, where there remains the possibility that the condition was not satisfied under the broadest reasonable interpretation, is an optional claim limitation. see MPEP §2111.04(II). As the Applicant does not address what happens should the optional claim limitations fail, Examiner assumes that nothing happens (i.e., the method stops). An alternate interpretation is that merely the claim limitations based upon the condition are not triggered or performed.
In addition, when a claim requires selection of an element from a list of alternatives, the prior art teaches the element if one of the alternatives is taught by the prior art. See MPEP §2143.03, citing Fresenius USA, Inc. v. Baxter Int’l, Inc., 582 F.3d 1288, 1298 (Fed. Cir. 2009);
Language in a method or system claim that states only the intended use or intended result, but does not result in a manipulative difference in the steps of the method claim nor a structural difference between the system claim and the prior art, fails to distinguish the claims from the prior art. In other words, if the prior art structure is capable of performing the intended use, then it meets the claim.
The following types of claim language may raise a question as to its limiting effect (this list is not exhaustive):
Statements of intended use or field of use, including statements of purpose or intended use in the preamble. See MPEP §2111.02;
Clauses such as “adapted to”, “adapted for”, “wherein”, and “whereby.” See MPEP §2111.04;
Contingent limitations. See MPEP §2111.04(II);
Printed matter. See MPEP §2111.05; and
Functional language associated with a claim term. See MPEP §2181.
As such, while all claim limitations have been considered and all words in the claims have been considered in judging the patentability of the claimed invention, the following italicized, underlined and emboldened language is interpreted as not further limiting the scope of the claimed invention.
Additionally, the following italicized, underlined and emboldened language is not necessarily an exhaustive list of claim language that is interpreted as not further limiting the scope of the claimed invention. Applicant should review all claims for additional claim interpretation issues.
Claim 1 recites a method comprising:
converting, by the computer based system, the ungrouped data elements to a common data structure to reduce database synchronization errors;
improving, by the computer based system, integrity of stored data based on the converting;
Method claims are defined by the method steps being actively performed (i.e., converting data elements to a common data structure), not the benefits to be derived by performance of the method steps or the motivation behind performing the method steps (i.e., to reduce database synchronization errors and improve integrity of stored data).
Examiner notes that “database synchronization” is the process of keeping data synchronized (i.e., consistent) between multiple databases. However, the method only recites utilizing a singular database and does not recite synchronizing databases.
Claims 8 and 15 have similar issues.
Claim 1 recites a method comprising:
providing, by the computer based system, a full copy of the ungrouped data elements in the common data structure to each node within a network;
increasing, by the computer based system and based on the providing the full copy, reliability and fault tolerance while reducing downtime due to localized network outages and hardware failures;
Method claims are defined by the method steps being actively performed (i.e., providing a copy to each node within a network), not the benefits to be derived by performance of the method steps or the motivation behind performing the method steps (i.e., provision of a full copy increases reliability and fault tolerance, and reduces downtime).
Claims 8 and 15 have similar issues.
Claim 1 recites a method comprising:
broadcasting, by the computer based system, messages from each node to all connected peers to quickly detect a missing block and propagate a request for the missing block to other nodes in the network;
Method claims are defined by the method steps being actively performed (i.e., broadcasting messages from each node), not the benefits to be derived by performance of the method steps or the motivation behind performing the method steps (i.e., to quickly detect a missing block and propagate a request for the missing block to other nodes in the network).
Claims 8 and 15 have similar issues.
Claim 1 recites a method comprising:
broadcasting, by the computer based system, messages from each node to all connected peers to quickly detect a missing block and propagate a request for the missing block to other nodes in the network;
The broadest reasonable interpretation of a method (or process) claim having contingent limitations requires only those steps that must be performed and does not include steps that are not required to be performed because the condition(s) precedent is not met. See MPEP §2111.04(II).
Usage of the term and/or phrase “to quickly detect a missing block” in Claim 1 suggests that there remains the possibility that the contingent limitations (i.e., propagate a request for the missing block) are not performed as the condition(s) precedent is not met (i.e., no missing block is detected). Therefore, the claim limitations based upon the condition are optional claim limitations. As a matter of linguistic precision, optional claim limitations do not narrow the scope of the invention, since they can always be omitted. See MPEP §2111.04(II).
As the Applicant does not address what happens should the optional claim limitation(s) fail, Examiner assumes that nothing happens (i.e., the method stops). An alternate interpretation is that merely the claim limitations based upon the condition are not triggered or performed.
Claim 1 recites a method comprising:
placing, by the computer based system, frequently used files on separate file systems;
reducing, by the computer based system, in and out bottlenecks based on the placing of the frequently used files;
Method claims are defined by the method steps being actively performed (i.e., placing frequently used files on separate file systems), not the benefits to be derived by performance of the method steps or the motivation behind performing the method steps (i.e., to reduce reducing, by the computer based system, in and out bottlenecks based on the placing of the frequently used files).
Claims 8 and 15 have similar issues.
5. 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 1-5, 7, 8, 10-18 and 20-23 are rejected under 35 U.S.C. § 101 because the claimed invention is directed to an abstract idea without significantly more.
STEP 1
The claimed invention falls within one of the four statutory categories of invention (i.e., process, machine, manufacture and composition of matter). See MPEP §2106.03.
STEP 2A – PRONG ONE
The claim(s) recite(s) a method, a system comprising computer readable code, wherein the code is configured, to perform a method and a computer readable medium comprising instructions to perform a method comprising:
comparing, …, the currency pair to an exchange exclusion table to determine an excluded exchange set;
removing, … using a filtering …, the excluded exchange set from the initial exchange set to generate a prefiltered exchange set comprising a plurality of exchanges associated with the currency pair;
calculating, …, a total prefilter trade volume of an historical trade data set based on a time window;
associating, …, the historical trade data set with the prefiltered exchange set;
calculating, …, a composition percentage of the total prefilter volume for each exchange of the prefiltered exchange set;
applying, … based on the composition percentage, a first filtering function to the prefiltered exchange set to generate a first filtered exchange set;
normalizing, …, the first filtered exchange set based on the total prefilter trade volume to generate a first normalized exchange set;
generating, …, a first weighting function based on the first normalized exchange set;
receiving, …, a real time data set associated with the first normalized exchange set;
associating, …, the real time data set that comprises a plurality of real time data feeds with each exchange of the first normalized exchange set;
applying, …, the first weighting function to the real time data set to generate an index price for the currency pair;
identifying, … for an account associated with the currency pair, at least one of manipulated feeds or unreliable feeds in the real time data set;
storing, …, data from the at least one of manipulated feeds or unreliable feeds in … as ungrouped data elements formatted as ungrouped data elements;
formatting, …, the ungrouped data elements as …;
converting, …, the ungrouped data elements to a common data structure …;
improving … integrity of stored data based on the converting the ungrouped data elements to a common data structure …;
providing, …, a full copy of the ungrouped data elements in the common data structure to each [entity];
increasing, … based on the providing the full copy, reliability and fault tolerance while reducing downtime …;
broadcasting, …, messages about a missing [data] in the ungrouped data elements from each [entity] to all connected [entities] which results in the detection of the missing [data];
propagating, .., a request for the missing [entity] to other [entities]
…
placing, …, frequently used files on separate file …;
reducing, …, in and out bottlenecks based on the placing of the frequently used files;
accessing, …, the data from the at least one of manipulated feeds or unreliable feeds, based on the reducing the in and out bottlenecks;
designating, …, the data from the at least one of manipulated feeds or unreliable feeds as key fields in a plurality of related data tables;
searching, …, for the data based on the designating the data;
linking, by the computer based system, the plurality of related data tables based on the type of the data from the at least one of manipulated feeds or unreliable feeds in the key fields;
sorting, …, the plurality of related data tables according to a known order;
accessing, … and based on the sorting and a simplified lookup process, the data from the at least one of manipulated feeds or unreliable feeds;
obtaining, … the data from the at least one of manipulated feeds or unreliable feeds …;
removing, … using the filtering … for the account associated with the currency pair, access to at least one of the manipulated feeds or the unreliable feeds to the real time data set to create a filtered real time data set, based on the identifying at least one of the manipulated feeds or the unreliable feeds;
re-calculating, …, the first weighting function based on the filtered real time data set to create a second weighting function;
applying, …, the second weighting function to the filtered real time data set to generate a revised index price for the currency pair; [and]
displaying, …, the revised index price for the currency pair.
These limitations, as drafted, recite a method and/or a system configured to perform a method that, under its broadest reasonable interpretation, covers a series of steps instructing how to generate a financial index which is a fundamental economic practice, a sub-category of certain method(s) of organizing human activity, an enumerated grouping of abstract ideas. See MPEP §2106.04(a)(2)(II)(A).
Additionally, these limitations, as drafted, recite a method and/or a system configured to perform a method that, under its broadest reasonable interpretation, covers a series of to reduce utilization of manipulated and/or unreliable data in financial analysis which is a fundamental economic practice, a sub-category of certain method(s) of organizing human activity, an enumerated grouping of abstract ideas. See MPEP §2106.04(a)(2)(II)(A).
Examiner notes that reducing utilization of manipulated and/or financial data in financial analysis, thereby improving the accurateness of said financial analysis, is mitigation of financial risk and that the mitigation of financial risk is a court-provided example of a fundamental economic practice. See MPEP §2106.04(a)(2)(II)(A), citing Alice Corp. v. CLS Bank. (2014).
Additionally, these limitations, as drafted, under its broadest interpretation, covers a series of steps that can be practically performed in the human mind (e.g., observations, evaluations, judgments and opinions) which are mental process, a second enumerated grouping of abstract ideas. See MPEP §2106.04(a)(2)(III).
Examiner notes that “’collecting information, analyzing it, and displaying certain results of the collection and analysis,’ where the data analysis steps are recited at a high level of generality such that they could practically be performed in the human mind” is a mental process. See MPEP §2106.04(a)(2)(III)(A) citing Electric Power Group v. Alstom, SA. (Fed. Cir. 2016).
Accordingly, the claimed invention recites an abstract idea.
STEP 2A – PRONG TWO
The claimed invention recites additional elements (i.e., computer elements) of a computer-based system (Claim(s) 1, 8 and 15), module(s) (Claim(s) 1, 8 and 15), (electronic) data feed(s) (Claim(s) 1, 8 and 15), a database (Claim(s) 1, 8 and 15), formatting data as block(s) of binary via a fixed memory offset using at least one of fixed storage allocation, circular queue techniques, paged memory or least recently used (Claim(s) 1, 8 and 15), node(s) on a network(Claim(s) 1, 8 and 15), peer(s) (Claim(s) 1, 8 and 15), a processor (Claim(s) 8), a memory (Claim(s) 8), and computer-readable code (Claim(s) 8).
The claimed invention does not include additional elements that integrate the judicial exception into a practical application of the exception because the claims do not provide improvements to another technology or technical field; improvements to the functioning of the computer itself; are not applying or using a judicial exception to effect a particular treatment or prophylaxis for a disease or medical condition; are not applying the judicial exception with or by use of a particular machine; are not effecting a transformation or reduction of a particular article to a different state or thing; and are not applying the judicial exception in some other meaningful way beyond generally linking the use of the judicial exception to a particular technological environment. See MPEP §2106.04(d).
The additional elements are recited at a high-level of generality such that it amounts no more than mere instructions to apply the exception using a generic computer component. See MPEP §2106.05(f). Alternately, the additional elements amount to no more than generally linking the exception to a particular technological environment or field of use. See MPEP §2106.05(h). Accordingly, these additional element(s), when considered separately and as an ordered combination, do not integrate the abstract idea into a practical application because it does not impose any meaningful limits on practicing the abstract idea.
Accordingly, the claimed invention is directed to an abstract idea without a practical application.
STEP 2B
Upon reconsideration of the indicia noted under Step 2A in concert with the Step 2B considerations, the additional claim element(s) amounts to (i) adding the words “apply it” (or an equivalent) with the judicial exception, or mere instructions to implement an abstract idea on a computer, (ii) adding insignificant extra-solution activity to the judicial exception, and/or (iii) generally linking the use of judicial exception to a particular technological environment or field of use. See MPEP §2106.07(a)(II). The same analysis applies in Step 2B, i.e., mere instructions to apply an exception using a generic computer component cannot integrate a judicial exception into a practical application at Step 2A or provide an inventive concept in Step 2B. The claim does not provide an inventive concept significantly more than the abstract idea.
Accordingly, these additional elements, when considered separately and as an ordered combination, do not integrate the abstract idea into a practical application because they do not impose any meaningful limits on practicing the abstract idea.
DEPENDENT CLAIMS
Dependent Claim(s) 2-5, 7, 10-14, 16-18 and 20-23 recite claim limitations that further define the abstract idea recited in respective independent Claim(s) 1, 8 and 15. As such, the dependent claims are also grouped an abstract idea utilizing the same rationale as previously asserted against the independent claims.
No additional computer components other than those found in the respective independent claims is recited, thus it is presumed that the claim is further utilizing the same generically recited computer.
As such, the dependent claims do not include any additional elements that integrate the abstract idea into a practical application of the judicial exception or are sufficient to amount to significantly more than the judicial exception when considered both individually and as an ordered combination.
Accordingly, the dependent claim(s) are also not patent eligible.
Appropriate correction is requested.
6. Claim Rejections - 35 USC § 112(a)
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.
Claims 1-5, 7, 8, 10-18 and 20-23 are 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 applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Claims 1, 8 and 15 recite “improving” but the algorithm or steps/procedure for performing the computer function are not explained at all or are not explained in sufficient detail.
For example, Claim 1 recites a method comprising:
converting, by the computer based system, the ungrouped data elements to a common data structure to reduce database synchronization errors;
improving, by the computer based system, integrity of stored data based on the converting;
The claims, as written, recites two method steps … converting ungrouped data elements to a common data and improving the integrity of stored data. However, the specification indicates that this actually one method step, the integrity of stored data is improved via converting the ungrouped data elements to a common data structure. See para. 96. That improving the integrity of stored data is the benefit or consequence of the active method step of converting the ungrouped data elements to a common data structure, not that improving the integrity of stored data is a method step in and of itself.
Examiner notes that there are numerous instances in the claims, as written, wherein the benefits to be derived from performance of a method step or a system function are recited as being an additional method step or an additional system function.
Claims 1, 8 and 15 recite “providing” but the algorithm or steps/procedure for performing the computer function are not explained at all or are not explained in sufficient detail.
For example, Claim 1 recites a method comprising:
providing, by the computer based system, a full copy of the data to each node to increase reliability and fault tolerance while reducing downtime due to localized network outages and hardware failures;
Does providing mean that the computer based system is actively transmitting a full copy of the data to each node? Or does providing just mean that the data resides on the computer based system, thereby providing potential access to said data?
Claims 8 and 15 have similar issues.
Appropriate correction is requested.
7. Claim Rejections - 35 USC § 112(b)
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1-5, 7, 8, 10-18 and 20-23 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 1 recites a method comprising:
placing, by the computer based system, frequently used files on separate file systems;
reducing, by the computer based system, in and out bottlenecks based on the placing of the frequently used files;
Claim 1, as written, contain terms that are subjective or determinations of whether the claim limitations are satisfied are subjective. Specifically, said claims contain terminology such as “frequently used files.” Claims are indefinite in circumstances where a claim contains a term that is completely dependent on a person’s subjective opinion. See MPEP §2173.05(b)(IV). As such, claims containing the cited claim limitations are rejected under §112, 2nd paragraph.
Claims 8 and 15 have similar issues.
Appropriate correction is requested.
8. No Prior Art Rejection
Applicant’s amended claims have overcome the prior art of record. No further prior art has been asserted against the claimed invention.
9. Response to Arguments
Applicant's arguments filed 1/27/2026 have been fully considered but they are not persuasive.
§101 Rejection
Step 2A Prong One
Applicant argues that the claimed invention does not recite a mental process and, as such, satisfies Step 2A Prong One of the §101 Guidelines. See Arguments, pp. 15-17.
Specifically, the Applicant argues:
As part of the process for executing real time trades, Applicant asserts that a human cannot practically scan millions of data packets, a human cannot practically remove the malicious data items and a human cannot practically create a new filtered data file. The claimed invention scans the communication (e.g., data feed) for malicious items (e.g., manipulations and unreliable data), flags the malicious items in the data feeds (e.g., identifies in the real time data set), continues to scan until no more malicious items are found (e.g., continues identifying), removes the malicious items (e.g., removing the feeds) and creates a new data file (e.g., a filtered real time data set). See Arguments, p. 16.
The Examiner respectfully disagrees.
As a preliminary matter, Examiner notes that the claimed invention, as written, does not recite executing any trades, processing millions of data packets, or continuously scanning until no more malicious items are found.
As noted by the Applicant, claims that recite limitations “that cannot practically be performed in the human mind” are not mental processes. See MPEP §2106.04(a)(2)(III)(A). For example, a limitation that cannot be practically performed in the human mind is “detecting suspicious activity by using network monitors and analyzing network packets” and “rendering a halftone image of a digital image by comparing, pixel by pixel, the digital image against a blue noise mask, where the method required the manipulation of computer data structures (e.g., the pixels of a digital image and a two-dimensional array known as a mask) and the output of a modified computer data structure.” See MPEP §2106.04(a)(2)(III)(A). The examples provided require a computer. A computer is inherent to the underlying process (e.g., there is no network traffic, data packets or pixels without a computer). This is not the case with the claimed invention.
As noted by the Applicant, Claim 1 recites an invention that scans the communication (e.g., data feed) for malicious items (e.g., manipulations and unreliable data), flags the malicious items in the data feeds (e.g., identifies in the real time data set), continues to scan until no more malicious items are found (e.g., continues identifying), removes the malicious items (e.g., removing the feeds) and creates a new data file (e.g., a filtered real time data set).
A human being can scan the communication (e.g., incoming prices from NYC, Chicago and LA) for malicious items (e.g., incorrect or suspicious prices), flag the malicious items in the data feeds (e.g., notice that the low price from NYC is a weird outlier compared to the prices from Chicago and LA), continue to scan until no more malicious items are found (e.g., continues identifying), remove the malicious items (e.g., exclude the NYC price outlier from NYC in our pricing) and create a new data file (e.g., a price based on the Chicago and LA prices, excluding NYC outlier price).
A computer is not inherent to the underlying process and, as such, the claims recite a process that can practically be performed in the human mind.
Additionally, utilizing a computer to perform a mental process does not negate a finding that the claimed invention recites a mental process.
As stated in MPEP § 2106.04(a)(2)(III)(C) recites:
In evaluating whether a claim that requires a computer recites a mental process, examiners should carefully consider the broadest reasonable interpretation of the claim in light of the specification. For instance, examiners should review the specification to determine if the claimed invention is described as a concept that is performed in the human mind and applicant is merely claiming that concept performed 1) on a generic computer, or 2) in a computer environment, or 3) is merely using a computer as a tool to perform the concept. In these situations, the claim is considered to recite a mental process.
The claimed invention recites a mental process even though the claimed invention recites that the mental process is being performed on a computer. The claims merely recite that the “concept is performed 1) on a generic computer, or 2) in a computer environment, or 3) is merely using a computer as a tool to perform the concept.”
Applicant further argues:
In particular, the claimed invention involves significant data volumes, processing speed and algorithmic complexity with computer executed operations and technical aspects at non-human implementation and scale. See Argument, p. 15.
The Examiner respectfully.
While a mental process performed on a computer system may be performed faster, more efficiently or on a larger scale, that does not does not negate a finding that the claimed invention recites a mental process.
On this point, FairWarning IP, LLC v. Iatric System, Inc. (Fed. Cir. 2016) stated:
At the same time, we note that, in viewing the facts in FairWarning's favor, the inability for the human mind to perform each claim step does not alone confer patentability. As we have explained, “the 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., 687 F.3d at 1278. See FairWarning IP, LLC v. Iatric System, Inc., 120 USPQ2d 1293, 1296 (Fed. Cir. 2016) - emphasis added.
FairWarning appears to argue that, under a correct construction, the district court would have understood the term audit log data to “exist[] in the computer environment after at least one of [the] transactions or activities … are executed in the computer environment by an authorized user.” Id. at 30 (emphases omitted). The implication of this construction, FairWarning argues, would be that “the ′500 patent is necessarily rooted in computer technology.” Id. But this is the same argument we dismissed above, cloaked as claim construction. Simply requiring computer implementation of an otherwise abstract-idea process, as in FairWarning would require of the claim, does not make the claims patent eligible. See FairWarning IP, LLC v. Iatric System, Inc., 120 USPQ2d 1293, 1299 (Fed. Cir. 2016) – emphasis added.
As in FairWarning, computer implementation of an otherwise abstract idea (i.e., reducing utilization of manipulated and/or unreliable data in financial analysis) does not make the claimed invention patent eligible.
Similar to FairWarning, the claimed invention appears to be "merely implement[ing] an old practice in a new environment" by updating the practice to a new computerized environment, and thus is patent-ineligible subject matter. See FairWarning, 120 USPQ2d 1293, 1269 (Fed. Cir. 2016).
Examiner notes that the claimed invention also recites a fundamental economic practice, a subcategory of certain methods of organizing human activities, which is distinct and separate from the mental processes grouping. No argument was asserted against the fundamental economic practice classification.
Step 2A Prong Two
Applicant argues that the claimed invention recites a practical application, specifically “an improvement in the functioning of a computer, or an improvement to other technology or technical field,” and, as such, satisfies Step 2A Prong Two of the §101 Guidelines. See Arguments, pp. 15-17.
Specifically, the Applicant argues:
The improvements to other technologies include, for example, identifying manipulated feeds, identifying unreliable feeds, reducing database synchronization errors, increasing reliability, increasing fault tolerance, reducing downtime, detecting missing blocks, optimizing database performance, reducing bottlenecks, linking data tables, removing access to feeds, selecting exchange sets, filtering exchange sets, etc. Additionally, the claimed invention recites specific steps and data flows that improve the functionality of the systems, so Applicant respectfully asserts that the claimed invention cannot be oversimplified into the "apply it" rationale. See Arguments, pp. 15-16.
The Examiner respectfully disagrees.
MPEP §2106.05(a) recites:
If it is asserted that the invention improves upon conventional functioning of a computer, or upon conventional technology or technological processes, a technical explanation as to how to implement the invention should be present in the specification. That is, the disclosure must provide sufficient details such that one of ordinary skill in the art would recognize the claimed invention as providing an improvement. The specification need not explicitly set forth the improvement, but it must describe the invention such that the improvement would be apparent to one of ordinary skill in the art. Conversely, if the specification explicitly sets forth an improvement but in a conclusory manner (i.e., a bare assertion of an improvement without the detail necessary to be apparent to a person of ordinary skill in the art), the examiner should not determine the claim improves technology. – emphasis added.
However, the specification does not provide any evidence that the claimed invention results in an improvement to the functioning of a computer, an improvement to conventional technology or technological processes, or is addressing a technology-based problem.
Additionally, the specification does not provide any evidence that there is even a technical (i.e., technology-based) problem to be solved. For example, the specification does not provide any evidence that existing technology was incapable of performing the claimed functions but for the claimed technical solution.
Stated in an alternative manner, benefits can be derived from the claimed computer features but the claimed invention has not improved computers by making the claimed computer features possible. The specification does not provide any evidence that the claimed computer features are not pre-existing computer features.
For example, if the claimed invention is “reducing database synchronization errors,” then the specification should provide sufficient details such that one of ordinary skill in the art would recognize the claimed invention as providing an improvement.
However, the specification only recites:
In various embodiments, the system may also reduce database synchronization errors by providing a common data structure, thus at least partially improving the integrity of stored data. The system also offers increased reliability and fault tolerance over traditional databases (e.g., relational databases, distributed databases, etc.) as each node operates with a full copy of the stored data, thus at least partially reducing downtime due to localized network outages and hardware failures. See para. 96.
If database synchronization is improved by converting data into a common data structure, then any computer that converts data into a common data structure has improved database synchronization. The specification does provide sufficient details such that one of ordinary skill in the art would recognize the claimed invention as providing an improvement by addressing the inability of computer systems to convert data into a common data structure.
Additionally, MPEP §2106.05(f)(1) recites:
Whether the claim recites only the idea of a solution or outcome i.e., the claim fails to recite details of how a solution to a problem is accomplished. The recitation of claim limitations that attempt to cover any solution to an identified problem with no restriction on how the result is accomplished and no description of the mechanism for accomplishing the result, does not integrate a judicial exception into a practical application or provide significantly more because this type of recitation is equivalent to the words “apply it”. See Electric Power Group, LLC v. Alstom, S.A., 830 F.3d 1350, 1356, 119 USPQ2d 1739, 1743-44 (Fed. Cir. 2016); Intellectual Ventures I v. Symantec, 838 F.3d 1307, 1327, 120 USPQ2d 1353, 1366 (Fed. Cir. 2016); Internet Patents Corp. v. Active Network, Inc., 790 F.3d 1343, 1348, 115 USPQ2d 1414, 1417 (Fed. Cir. 2015). In contrast, claiming a particular solution to a problem or a particular way to achieve a desired outcome may integrate the judicial exception into a practical application or provide significantly more. See Electric Power, 830 F.3d at 1356, 119 USPQ2d at 1743 – emphasis added.
Even assuming there was a technical problem, the claims, as written, fail to recite the details of how a technical solution to the technical problem was accomplished.
If there was a technical problem (e.g., existing technology was incapable of performing the claimed functions) then the claims should recite the details of the technical solution (e.g., how existing technology was improved to overcome this inability). However, the claims, as written, provide no such details and merely recite that the claimed functions (i.e., the outcome) are being performed.
For example, if the claimed invention is “optimizing database performance,” the claimed invention should recite the details of how the database performance is optimized. However, the claims merely recite that the database is optimized via tuning.
Examiner asserts that the claimed invention is analogous to Electric Power Group LLC v. Alstom SA (Fed. Cir. 2016) which stated:
The claims here are unlike the claims in Enfish. There, we relied on the distinction made in Alice between, on one hand, computer-functionality improvements and, on the other, uses of existing computers as tools in aid of processes focused on “abstract ideas” (in Alice, as in so many other § 101 cases, the abstract ideas being the creation and manipulation of legal obligations such as contracts involved in fundamental economic practices). Enfish, 822 F.3d at 1335-36; see Alice, 134 S. Ct. at 2358-59. That distinction, the Supreme Court recognized, has common-sense force even if it may present line-drawing challenges because of the programmable nature of ordinary existing computers. In Enfish, we applied the distinction to reject the § 101 challenge at stage one because the claims at issue focused not on asserted advances in uses to which existing computer capabilities could be put, but on a specific improvement—a particular database technique—in how computers could carry out one of their basic functions of storage and retrieval of data. Enfish, 822 F.3d at 1335-36; see Bascom, 2016 U.S. App. LEXIS 11687, 2016 WL 3514158, at *5; cf. Alice, 134 S. Ct. at 2360 (noting basic storage function of generic computer). 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. see Electric Power Group LLC v. Alstom SA, 119 USPQ2d 1739, 1742 (Fed. Cir. 2016) – emphasis added.
The claimed invention is not an improvement to computer technology or computer functionality. Rather, the claimed invention is applying a computer’s existing capabilities (i.e., computer’s existing features) to implement a particular abstract idea. As in Electric Power Group, the focus of the claimed invention is not on an improvement in computers as tools but on improving an abstract idea (i.e., generate a financial index) that uses computers as tools.
MPEP §2106.04(d) recites:
The courts have also identified limitations that did not integrate a judicial exception into a practical application:
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); [and]
Generally linking the use of a judicial exception to a particular technological environment or field of use, as discussed in MPEP § 2106.05(h).
Examiner asserts that the additional elements amount to merely (1) including instructions to implement an abstract idea on a computer, or merely using a computer as a tool to perform an abstract idea, or alternatively, (2) merely links the use of a judicial exception to a particular technological environment or field of use.
10. Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JASON M. BORLINGHAUS whose telephone number is (571)272-6924. The examiner can normally be reached M-F 9-5.
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/Jason M. Borlinghaus/Primary Examiner, Art Unit 3692 February 27, 2026