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 .
DETAILED ACTION
This Non-Final office action is in response to the application filed on July 22, 2021, the response received on March 27, 2023, the Request for Continued Examination filed on October 12, 2023, the response filed on May 7, 2024, the Request for Continued Examination filed on November 25, 2024, the response filed on June 13, 2025, and the Request for Continued Examination filed on January 2, 2026.
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 January 2, 2026 has been entered.
Claim Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
This application includes one or more claim limitations that use the word “means” or “step” but are nonetheless not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph because the claim limitation(s) recite(s) sufficient structure, materials, or acts to entirely perform the recited function. Such claim limitation(s) is/are: “means to store a component collection” and “means to process processor-executable instructions” in lines 3 and 4 of claim 24.
Because this/these claim limitation(s) is/are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are not being interpreted to cover only the corresponding structure, material, or acts described in the specification as performing the claimed function, and equivalents thereof.
If applicant intends to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to remove the structure, materials, or acts that performs the claimed function; or (2) present a sufficient showing that the claim limitation(s) does/do not recite sufficient structure, materials, or acts to perform the claimed function.
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 1-25 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more.
Claims 1-25 are directed to a system, method, or product which are/is one of the statutory categories of invention. (Step 1: YES).
The Examiner has identified independent process Claim 25 as the claim that represents the claimed invention for analysis and is similar to independent apparatus Claim 1, product Claim 23, system Claim 24. Claim 25 recites the limitations of obtain a user selection of a set of simulated market scenarios via a simulation selection interaction-interface mechanism, the set of simulated market scenarios generated using a set of multi-variate mixture data structures, each simulated market scenario in the set of simulated market scenarios structured comprising a set of simulated market factor values corresponding to a set of market factors; determine a range of unfiltered simulated market factor values for each market factor from the set of market factors, the range of unfiltered simulated market factor values for a market factor structured including a minimum simulated market factor value and a maximum simulated market factor value in the set of simulated market scenarios for the respective market factor; generate a set of market factor interaction-interface mechanisms, each market factor interaction-interface mechanism in the set of market factor interaction- interface mechanisms structured as associated with a market factor from the set of market factors and structured displaying the range of unfiltered simulated market factor values for the respective market factor; obtain a user modification to a range of allowable values of a market factor from the set of market factors via the market factor interaction-interface mechanism associated with the modified market factor; update a set of customized market factors from the set of market factors based on the user modification; determine a range of allowable values for each customized market factor from the set of customized market factors; filter the set of simulated market scenarios based on the determined ranges of allowable values for the set of customized market factors determining a set of filtered simulated market scenarios having simulated market factor values that fall within the range of allowable values for each customized market factors from the set of customized market factors; determine a range of filtered simulated market factor values for each market factor from the set of market factors, the range of filtered simulated market factor values for a market factor structured including a minimum simulated market factor value and a maximum simulated market factor value in the set of filtered simulated market scenarios for the respective market factor; and generate an updated set of market factor interaction-interface mechanisms, each updated market factor interaction-interface mechanism in the set of updated market factor interaction-interface mechanisms structured as associated with a market factor from the set of market factors and structured displaying the range of filtered simulated market factor values for the respective market factor.
These limitations, under their broadest reasonable interpretation, cover performance of the limitation as mathematical concepts. Portfolio simulation and optimizing recites mathematical relationships. If a claim limitation, under its broadest reasonable interpretation, covers performance of the limitation as a mathematical relationships, then it falls within the “Mathematical Concepts” grouping of abstract ideas. Accordingly, the claim recites an abstract idea. The memory and any of at least one processor in Claim 1 is just applying generic computer components to the recited abstract limitations. It is noted that no structure is recited in independent Claims 23, 24, or 25. The predefined scenario constructing in Claims 1, 23, 24, and 25 appears to be just software. Claims 1, 23, and 24 are also abstract for similar reasons. (Step 2A-Prong 1: YES. The claims are abstract)
This judicial exception is not integrated into a practical application. In particular, the claims only recite memory and any of at least one processor in Claim 1 is just applying generic computer components to the recited abstract limitations. It is noted that no structure is recited in independent Claims 23, 24, or 25. The predefined scenario constructing in Claims 1, 23, 24, and 25 appears to be just software. The computer hardware is recited at a high-level of generality (i.e., as a generic processor performing a generic computer function) such that it amounts no more than mere instructions to apply the exception using a generic computer component. 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. Therefore claims 1, 23, 24, and 25 are directed to an abstract idea without a practical application. (Step 2A-Prong 2: NO. The additional claimed elements are 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 because, when considered separately and as an ordered combination, they do not add significantly more (also known as an “inventive concept”) to the exception. As discussed above with respect to integration of the abstract idea into a practical application, the additional element of using a computer hardware amounts to no more than mere instructions to apply the exception using a generic computer component. Mere instructions to apply an exception using a generic computer component cannot provide an inventive concept. See Applicant’s specification para. [0461-0470] about implantation using general purpose or special purpose computing devices and MPEP 2106.05(f) where applying a computer as a tool is not indicative of significantly more. In addition, performing the judicial exception steps using ML merely confines the use of the abstract idea to a particular technological environment and thus fails to add an inventive concept to the claims. See MPEP 2105(h). 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. Thus claims 1, 23, 24, and 25 are not patent eligible. (Step 2B: NO. The claims do not provide significantly more)
Dependent claims 2-22 further define the abstract idea that is present in their respective independent claims 1, 23, 24, and 25 and thus correspond to Mathematical Concepts and hence are abstract for the reasons presented above. The dependent claims do not include any additional elements that integrate the abstract idea into a practical application or are sufficient to amount to significantly more than the judicial exception when considered both individually and as an ordered combination. Therefore, the claims 2-21 are directed to an abstract idea. Thus, the claims 1-25 are not patent-eligible.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/process/file/efs/guidance/eTD-info-I.jsp.
Claims 1-25 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-25 of copending Application No. 17/383,310 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the claims while not being word for word identical are substantially similar.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Response to Arguments
Applicant's arguments filed January 2, 2022 have been fully considered but they are not persuasive.
Applicant’s arguments regarding the 35 USC 101 rejection of record (Remarks, pages 12-61), are acknowledged, however they are not persuasive. Specifically, applicant’s arguments on pages 17-29 are a majority of copy and paste from the MPEP and various USPTO memos and fail to actually set forth any particular arguments that are based on the actual claim language. Therefore, those arguments are not persuasive.
Applicant’s arguments citing the Kim memorandum and Desjardins decision (Remarks, pages 13-16), are acknowledged, however they are not persuasive. Specifically, applicant’s arguments Applicant's arguments fail to comply with 37 CFR 1.111(b) because they amount to a general allegation that the claims define a patentable invention without specifically pointing out how the language of the claims overcomes the rejection of record.
Applicant’s arguments that the claim elements are not abstract (Remarks, pages 30-39) and that those elements are similar to the ones found statutory in CoreWireless and DDR, are acknowledged, however they are not persuasive. Specifically, in Core Wireless the court found that, “Although the generic idea of summarizing information certainly existed prior to the invention, these claims are directed to a particular manner of summarizing and presenting information in electronic devices. … These limitations disclose a specific manner of displaying a limited set of information to the user, rather than using conventional user interface methods to display a generic index on a computer. Like the improved systems claimed in Enfish, Thales, Visual Memory, and Finjan, these claims recite a specific improvement over prior systems, resulting in an improved user interface for electronic devices.” However 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. Elec. Power, 2016 WL4073318, at *4.
The claims in DDR were rooted in computer technology because they modified the way the internet functioned to address a problem that was created by the invention of the internet. DDR dealt with a problem unique to the Internet whereby owners of one web site did not want to redirect users away to a different web site. The claimed solution in DDR created a hybrid web page incorporating look and feel elements from the host web site with commerce objects from the third-party web site. This feature, which was neither a generic computer function nor a conventional network operation, qualified as an inventive concept. But Applicant’s claims do not address redirecting problems unique to the Internet and do not use hybrid web sites. So DDR has no applicability.
Applicant’s arguments that the claims amount to significantly more (Remarks, pages 28-50) are acknowledged, however they are not persuasive. Specifically, the claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception when considered separately and as an ordered combination. The additional element of using a computer hardware amounts to no more than mere instructions to apply the exception using a generic computer component, which cannot provide an inventive concept. Therefore, these additional elements, when considered separately and as an ordered combination, do not integrate the abstract idea into a practical application since they do not impose any meaningful limits on practicing the abstract idea.
Applicant’s arguments that the claims are analogous to those found statutory in Bascom, (Remarks, pages 39-50), are not found persuasive. In Bascom, the court held that the inventive concept consisted of installing a filtering tool at a specific location, remote from the end-users, with customizable filtering features specific to each end user. However, the current claims to do not perform any such filtering action (or its equivalent) that is location specific and user specific. Further, the claims fail to set forth a specific combination of elements in specific locations but rather disclose known components functioning in their known capacity in their known locations. Hence, Bascom does not apply here.
Regarding applicant's assertion that the claims satisfy the machine or transformation test and that the examiner must perform one in the analysis of the claims, (Remarks, pages 51-61), the examiner notes that Mayo/Alice framework is presently the sole test performed by the Office for determining patent eligible subject matter.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to LINDSAY M MAGUIRE whose telephone number is (571)272-6039. The examiner can normally be reached Monday to Friday 8:30 to 5:00.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Anita Coupe can be reached on (571) 270-3614. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
Lindsay Maguire
1/21/26
/LINDSAY M MAGUIRE/Primary Examiner, Art Unit 3693