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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 7/30/2026 has been entered.
Claim Objections
Claim 9 and 10 is objected to because of the following informalities: “a parallel SQL query,” should be written as “the parallel SQL query.” Appropriate correction is required.
Claim 11 and 15 are objected to because of the following informalities: “for writing to in parallel,” appears to be typo. Appropriate correction is required.
Claim 17 is objected to because of the following informalities: “a set of decision tree ensembles,” in line 7, should be written as “the set of decision tree ensembles. Appropriate correction is required.
Claim 11, 12, 13, and 14 are objected to because of the following informalities: “by query server processes,” appears to be typo. Appropriate correction is required.
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 1-20 are rejected under 35 U.S.C. 101 because the claimed invention is directed to a judicial exception (abstract idea) without significantly more.
Under the broadest reasonable interpretation, the following claim terms are presumed to have their plain meaning consistent with the specification as it would be interpreted by one of ordinary skill in the art. MPEP § 2111.
The claims recite “datastructure.” Applicant has not acted as their own lexicographer in defining the claim term “datastructure”. For Applicant to be their own lexicographer, “the patentee's lexicography must, of course, appear ‘with reasonable clarity, deliberateness, and precision’ before it can affect the claim.” Renishaw PLC v. Marposs Societa' per Azioni, 158 F.3d 1243, 1249 (Fed.Cir.1998) (quoting In re Paulsen, 30 F.3d 1475, 1480 (Fed.Cir.1994)) (emphasis added). Under BRI, examiner determines datastructure as a way of formatting data so that it can be used by a computer program or other system. The “asset return metrics calculation request,” “assets parallel batch database table,” “factor simulations parallel temporary batch database table,” “factor exposures parallel temporary batch database table,” “set of multi-variate mixture” are interpreted as intended use, because it is a mere label to describe the intended use of the claimed datastructure MPEP § 2103(I)(C).
The SQL language is used to manage data, especially in a relational database management system. In parallel SQL query, computer processes work simultaneously to run an SQL statement. “Parallel SQL query” is interpreted to be a computer that transmits and receives the SQL language.
“Batch database table” is interpreted as a table used in the context of batch processing within a database system. It is a data structure in a database (computer) system generated in some unspecified way by a group or operations or SQL commands (transmitting and receiving data).
“Asset database table records” are adjectives describing “records.” A database is inferred but not positively claimed. “A claim is only limited by positively recited elements.” MPEP § 2115. Thus, asset database table records are labels.
Step 1: Does the Claim Fall within a Statutory Category? (see MPEP 2106.03)
Claim 1 and 18 recite a product (apparatus). The claim is directed to a product, which is a statutory category of invention (Step 1: YES). Claim 19 recites a system, which is a statutory category of invention (Step 1: YES). Claim 20 recites a process, which is a statutory category of invention (Step 1: YES).
Step 2A, Prong One: Is a Judicial Exception Recited? (see MPEP 2106.04(a)). Yes.
The claims are analyzed to determine whether it is directed to a judicial exception. The following claims identify the limitations that recite additional elements in bold and the abstract idea without bold. Underlined claim limitations denote newly added claim limitations:
The claims are analyzed to determine whether it is directed to a judicial exception. Claim 1, 18, 19 and 20 recite a database calculation engine apparatus, comprising: at least one memory; a component collection in the at least one memory; any of at least one processor disposed in communication with the at least one memory, the any of at least one processor executing processor-executable instructions from the component collection, storage of the component collection structured with processor-executable instructions comprising: obtain an asset return metrics calculation request datastructure, the asset return metrics calculation request datastructure structured specifying a set of assets and a set of simulated market scenarios, each simulated market scenario in the set of simulated market scenarios structured including a set of simulated market factor values corresponding to a set of market factors; determine a number of sessions utilizing for calculating asset return metrics data; determine an assets range for a session based on the determined number of sessions utilizing, the assets range comprising a set of asset database table records for the set of assets for processing by the session; create an assets parallel batch database table datastructure, the assets parallel batch database table datastructure structured including a set of asset database table records of a specified batch size from the assets range for the session; create a factor simulations parallel temporary batch database table datastructure, the factor simulations parallel temporary batch database table datastructure structured including a set of simulated market factor return values for the set of asset database table records in the assets parallel batch database table datastructure; create a factor exposures parallel temporary batch database table datastructure, the factor exposures batch database table structured including a set of factor exposure database table records matching the set of asset database table records in the assets parallel batch database table datastructure; and calculate via a parallel SQL query, expected returns for the set of asset database table records in the assets parallel batch database table datastructure, using the factor simulations parallel temporary batch database table datastructure and the factor exposures batch database table. The limitations, as drafted, under its broadest reasonable interpretation, cover performance via certain methods of organizing human activity, but for the recitation of generic computer components. Under human activity, the limitations are commercial interactions, specifically business relations. The claim limitations are also fundamental economic activities (such as trading, hedging, risk mitigation, investment analysis). The claim as-a-whole is directed to calculating expected returns for a set of assets from simulated market-factor scenarios and corresponding factor exposures. This is an economic practice; such as factor-model expected-return analysis for portfolio construction, risk-management and investment analysis. The claim does not merely “involve” the practice of “factor-model expected-return analysis for portfolio construction, risk-management and investment analysis,” it sets for the economic practice. The request datastructure specifies assets and simulated market scenarios, where later steps create matching exposure for records and computes expected returns from two data sets.
The claim recites the following limitations as an economic practice:
“Obtaining an asset-return-metrics calculation request specifying a set of assets and a set of simulated market scenarios, with each scenario containing simulated market-factor values” – This is gathering inputs that an analyst would need for factor-based expected-return calculation.
“Determining a number of sessions and an assets range for a session, with the range comprising an asset database-table record for assets to be processed” – This step includes partitioning asset books for an economic calculation, which is a step in processing a portfolio.
“Creating an assets parallel batch database table containing a batch of those asset records” - This step involves recording assets that are subject to a return calculation.
“Creating a factor-simulations parallel temporary batch table that contains simulated market-factor return values for those same asset records” - This step is recording market scenarios that drive an expected-return model.
“Creating a factor-exposures batch table whose records match the asset records – This step involves recording an assets sensitivity to factors.
“Calculating, through a parallel SQL query, expected returns for asset records using the simulations table the exposures table” – This step involves performing the economic calculation.
Altogether, the claims organize financial information (such as assets, factors, and exposures) and apply a conventional economic relationship (such as expected return as a function of factor outcomes). Accordingly, the claim recites an abstract idea. The mere recitation of generic computer components in the claims do not necessarily preclude that claim from reciting an abstract idea. (Step 2A-Prong 1: Yes. The claims recite an abstract idea).
Step 2A, Prong Two: Is the Abstract Idea Integrated into a Practical Application? (see MPEP 2106.04(d)). No.
The above judicial exception is not integrated into a practical application. In particular, the claim recites the additional elements of database calculation engine apparatus, memory, component collection, processor, processor-executable instructions, parallel SQL query, data calculation engine processor-readable, non-transient medium, database calculation engine processor-implemented system, asset return metrics calculation request datastructure, asset parallel batch database table datastructure, set of asset database table records, factor simulations parallel temporary batch database table datastructure, asset database table records, factor exposures parallel temporary batch database table datastructure, and factor exposures batch database table. The additional elements of database calculation engine apparatus, memory, component collection, processor, processor-executable instructions, parallel SQL query, data calculation engine processor-readable, non-transient medium, database calculation engine processor-implemented system, asset return metrics calculation request datastructure, asset parallel batch database table datastructure, set of asset database table records, factor simulations parallel temporary batch database table datastructure, asset database table records, factor exposures parallel temporary batch database table datastructure, and factor exposures batch database table, are just applying generic computer components to the recited abstract limitations (MPEP 2106.05(f)). The computer components are recited at such a high-level of generality (i.e. as a generic computer components) such that it amounts to no more than mere instructions to apply the exception using generic computer components. 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 and are at a high level of generality. (Step 2A-Prong 2: NO. The judicial exception is not integrated into a practical application).
Step 2B: Does the Claim Provide an Inventive Concept? (see MPEP 2106.05). No.
The claims are next analyzed to determine if there are additional claim limitations that individually, or as an ordered combination, ensure that the claim amounts to significantly more than the abstract ideas (whether claim provides inventive concept). As discussed with respect to Step 2A2 above, the additional elements of (database calculation engine apparatus, memory, component collection, processor, processor-executable instructions, parallel SQL query, data calculation engine processor-readable, non-transient medium, database calculation engine processor-implemented system, asset return metrics calculation request datastructure, asset parallel batch database table datastructure, set of asset database table records, factor simulations parallel temporary batch database table datastructure, asset database table records, factor exposures parallel temporary batch database table datastructure, and factor exposures batch database table) in the claims amount to no more than mere instructions to apply the exception using a generic computer component. The same analysis applies here 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. Viewing the limitations as an ordered combination does not add anything further than looking at the limitations individually. When viewed either individually, or as an ordered combination, the additional limitations do not amount to a claim as a whole that is significantly more than the abstract idea itself. Therefore, the claims do not amount to significantly more than the recited abstract idea (Step 2B: NO; The claims do not provide significantly more, and are not patent eligible).
Claim 2 recites, further, comprising: Attorney Docket No.: Fidelity0726CP1295the set of simulated market factor values for a simulated market scenario is configured as generated using a set of deep learning neural networks. These limitations are also part of the abstract idea identified in claim 10, and the additional elements of deep learning neural networks are generally linking the use of the judicial exception to a particular technological environment or field of use, for the particular technology of machine learning (MPEP 2106.05(h)), and the claim fails to recite technological detail as to how the step of the judicial exception is accomplished. 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 and are at a high level of generality. (Step 2A-Prong 2: NO. The judicial exception is not integrated into a practical application). Further, the additional element of predetermined neural network in the claim amounts to no more than mere instructions generally linking the use of machine learning to judicial exception. The same analysis applies here in Step 2B, i.e., mere instructions generally linking the use of machine learning or artificial intelligence to judicial exception cannot integrate a judicial exception into a practical application at Step 2A or provide an inventive concept in Step 2B. Viewing the limitations as an ordered combination does not add anything further than looking at the limitations individually. When viewed either individually, or as an ordered combination, the additional limitations do not amount to a claim as a whole that is significantly more than the abstract idea itself. Therefore, the claims do not amount to significantly more than the recited abstract idea (Step 2B: NO; The claims do not provide significantly more, and are not patent eligible).
Claim 3 recites further, comprising: the set of simulated market factor values for a simulated market scenario is configured as generated using a set of multi-variate mixture datastructures. These limitations are also part of the abstract idea identified in claim 1, and the additional elements of set of multi-variate mixture datastructures are addressed in the Steps 2A2 and B as just applying generic computer components to the recited abstract limitations (MPEP 2106.05(f)) as in the claim 1 analysis above. Therefore, this claim is similarly rejected under the same rationale as claim 1, supra.
Claim 4 recites further, comprising: the processor-executable instructions structured as: filter, asset database table records associated with the set of assets, based on available factor exposure database table records, using a SQL statement. These limitations are also part of the abstract idea identified in claim 1, and the additional elements of Sasset database table records and factor exposure database table records are addressed in the Steps 2A2 and B as just applying generic computer components to the recited abstract limitations (MPEP 2106.05(f)) as in the claim 1 analysis above. Therefore, this claim is similarly rejected under the same rationale as claim 1, supra.
Claim 5 recites further, comprising: the processor-executable instructions structured as: filter, simulated market scenario database table records associated with the set of simulated market scenarios, based on a subset of market factors from the set of market factors to which the filtered asset database table records have exposure, using a SQL statement. These limitations are also part of the abstract idea identified in claim 1, and the additional elements of simulated market scenario database table records and filtered asset database table records are addressed in the Steps 2A2 and B as just applying generic computer components to the recited abstract limitations (MPEP 2106.05(f)) as in the claim 1 analysis above. Therefore, this claim is similarly rejected under the same rationale as claim 1, supra.
Claim 6 recites, further, comprising: the number of sessions utilizing for calculating asset return metrics data is determined based on the number of available server processors and a specified degree of parallelism per session. These limitations are also part of the abstract idea identified in claim 1, and the additional elements of server processors are addressed in the Steps 2A2 and B as just applying generic computer components to the recited abstract limitations (MPEP 2106.05(f)) as in the claim 1 analysis above. Therefore, this claim is similarly rejected under the same rationale as claim 1, supra.
Claim 7 recites further, comprising: the assets batch database table, the factor simulations batch database table, and the factor exposures batch database table are temporary database tables. These limitations are also part of the abstract idea identified in claim 1, and the additional elements of assets batch database table, the factor simulations batch database table, the factor exposures batch database table and temporary database tables are addressed in the Steps 2A2 and B as just applying generic computer components to the recited abstract limitations (MPEP 2106.05(f)) as in the claim 1 analysis above. Therefore, this claim is similarly rejected under the same rationale as claim 1, supra.
Claim 8 recites, further, comprising: the processor-executable instructions structured as: filter, at least one of call schedule database table records and put schedule database table records based on the filtered asset database table records. These limitations are also part of the abstract idea identified in claim 1, and the additional elements of call schedule database table records and put schedule database table records and the filtered asset database table record are addressed in the Steps 2A2 and B as just applying generic computer components to the recited abstract limitations (MPEP 2106.05(f)) as in the claim 1 analysis above. Therefore, this claim is similarly rejected under the same rationale as claim 1, supra.
Claim 9 recites further, comprising: the processor-executable instructions structured as: adjust, via a parallel SQL query, the calculated expected returns for the set of asset database table records in the assets batch database table, based on at least one of the filtered call schedule database table records and the filtered put schedule database table records. These limitations are also part of the abstract idea identified in claim 1, and the additional elements of parallel SQL are addressed in the Steps 2A2 and B as just applying generic computer components to the recited abstract limitations (MPEP 2106.05(f)) as in the claim 1 analysis above. Therefore, this claim is similarly rejected under the same rationale as claim 1, supra.
Claim 10 recites comprising: the processor-executable instructions structured as: transpose, the calculated expected returns for the set of asset database table records in the assets batch database table into a wide array format; and Attorney Docket No.: Fidelity0726CP1296 write, via a parallel SQL query, the transposed expected returns to an asset simulation wide table. These limitations are also part of the abstract idea identified in claim 1, and the additional elements of parallel SQL are addressed in the Steps 2A2 and B as just applying generic computer components to the recited abstract limitations (MPEP 2106.05(f)) as in the claim 1 analysis above. Therefore, this claim is similarly rejected under the same rationale as claim 1, supra.
Claim 11 recites further, comprising: the asset simulation wide table formatted facilitating calculation of portfolio return metrics; and the asset simulation wide table structured for writing to in parallel by query server processes from a plurality of utilized sessions. These limitations are also part of the abstract idea identified in claim 1, and the additional elements of query server are addressed in the Steps 2A2 and B as just applying generic computer components to the recited abstract limitations (MPEP 2106.05(f)) as in the claim 1 analysis above. Therefore, this claim is similarly rejected under the same rationale as claim 1, supra.
Claim 12 recites further, comprising: the processor-executable instructions structured as: calculate, via a parallel SQL query, an asset return metric based on the calculated expected returns for the set of asset database table records in the assets batch database table; transpose, the calculated asset return metric for the set of asset database table records in the assets batch database table into a wide array format; and write, via a parallel SQL query, the transposed asset return metric to an asset simulation wide table. These limitations are also part of the abstract idea identified in claim 1, and the additional elements of parallel SQL are addressed in the Steps 2A2 and B as just applying generic computer components to the recited abstract limitations (MPEP 2106.05(f)) as in the claim 1 analysis above. Therefore, this claim is similarly rejected under the same rationale as claim 1, supra.
Claim 13 recites, further, comprising: the processor-executable instructions structured as: write, via a parallel SQL query, the calculated expected returns to an asset measure table. These limitations are also part of the abstract idea identified in claim 1, and the additional elements of parallel SQL are addressed in the Steps 2A2 and B as just applying generic computer components to the recited abstract limitations (MPEP 2106.05(f)) as in the claim 1 analysis above. Therefore, this claim is similarly rejected under the same rationale as claim 1, supra.
Claim 14 recites further, comprising: the processor-executable instructions structured as: calculate, via a parallel SQL query, an asset return metric based on the calculated expected returns for the set of asset database table records in the assets batch database table; and write, via a parallel SQL query, the calculated asset return metric to an asset measure table. These limitations are also part of the abstract idea identified in claim 1, and the additional elements of parallel SQL are addressed in the Steps 2A2 and B as just applying generic computer components to the recited abstract limitations (MPEP 2106.05(f)) as in the claim 1 analysis above. Therefore, this claim is similarly rejected under the same rationale as claim 1, supra.
Claim 15 recites further, comprising: the asset measure table formatted facilitating calculation of security return metrics; and the asset measure table structured for writing to in parallel by query server processes from a plurality of utilized sessions. These limitations are also part of the abstract idea identified in claim 1, and the additional elements of query server are addressed in the Steps 2A2 and B as just applying generic computer components to the recited abstract limitations (MPEP 2106.05(f)) as in the claim 1 analysis above. Therefore, this claim is similarly rejected under the same rationale as claim 1, supra.
Claim 16 recites further, comprising: the set of simulated market factor values for a simulated market scenario is configured as generated using a set of deep learning neural networks and using a set of multi-variate mixture datastructures. These limitations are also part of the abstract idea identified in claim 10, and the additional elements of deep learning neural networks are generally linking the use of the judicial exception to a particular technological environment or field of use, for the particular technology of machine learning (MPEP 2106.05(h)), and the claim fails to recite technological detail as to how the step of the judicial exception is accomplished. 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 and are at a high level of generality. (Step 2A-Prong 2: NO. The judicial exception is not integrated into a practical application). Further, the additional element of predetermined neural network in the claim amounts to no more than mere instructions generally linking the use of machine learning to judicial exception. The same analysis applies here in Step 2B, i.e., mere instructions generally linking the use of machine learning or artificial intelligence to judicial exception cannot integrate a judicial exception into a practical application at Step 2A or provide an inventive concept in Step 2B. Viewing the limitations as an ordered combination does not add anything further than looking at the limitations individually. When viewed either individually, or as an ordered combination, the additional limitations do not amount to a claim as a whole that is significantly more than the abstract idea itself. Therefore, the claims do not amount to significantly more than the recited abstract idea (Step 2B: NO; The claims do not provide significantly more, and are not patent eligible).
Claim 17 recites further, comprising: Attorney Docket No.: Fidelity0726CP1297 each expected return configured as calculated for an asset during a simulated market scenario using: the respective asset's conditional Beta during the respective simulated market scenario, determined using a set of decision tree ensembles, trained estimating conditional Beta of the respective asset, based on a first subset of the set of simulated market factor values, and the respective asset's conditional default probability during the respective simulated market scenario, determined using a set of decision tree ensembles, trained estimating conditional default probability of the respective asset, based on a second subset of the set of simulated market factor values. These limitations are also part of the abstract idea identified in claim 1, and is similarly rejected under the same rationale as claim 1, supra.
Response to Arguments
Applicant's arguments filed 7/30/2026 have been fully considered but they are not persuasive.
Applicant argues the Kim Memorandum. Examiner notes that throughout past response rejections dealing with the current application, Examiner has clearly outlined why the currently recited claim limitations are (1) abstract, (2) judicial exception recited, (3) the abstract idea is integrated into a practical application, and (4) the claims do not provide an inventive concept.
In accordance with the Kim Memorandum, the limitations, as drafted, under its broadest reasonable interpretation, cover performance via certain methods of organizing human activity, but for the recitation of generic computer components. Under human activity, the limitations are commercial interactions, specifically business relations. The claim limitations are also fundamental economic activities (such as trading, hedging, risk mitigation, investment analysis). The claim as-a-whole is directed to calculating expected returns for a set of assets from simulated market-factor scenarios and corresponding factor exposures. This is an economic practice; such as factor-model expected-return analysis for portfolio construction, risk-management and investment analysis. The claim does not merely “involve” the practice of “factor-model expected-return analysis for portfolio construction, risk-management and investment analysis,” it sets for the economic practice. The request datastructure specifies assets and simulated market scenarios, where later steps create matching exposure for records and computes expected returns from two data sets.
The claim recites the following limitations as an economic practice:
“Obtaining an asset-return-metrics calculation request specifying a set of assets and a set of simulated market scenarios, with each scenario containing simulated market-factor values” – This is gathering inputs that an analyst would need for factor-based expected-return calculation.
“Determining a number of sessions and an assets range for a session, with the range comprising an asset database-table record for assets to be processed” – This step includes partitioning asset books for an economic calculation, which is a step in processing a portfolio.
“Creating an assets parallel batch database table containing a batch of those asset records” - This step involves recording assets that are subject to a return calculation.
“Creating a factor-simulations parallel temporary batch table that contains simulated market-factor return values for those same asset records” - This step is recording market scenarios that drive an expected-return model.
“Creating a factor-exposures batch table whose records match the asset records – This step involves recording an assets sensitivity to factors.
“Calculating, through a parallel SQL query, expected returns for asset records using the simulations table the exposures table” – This step involves performing the economic calculation.
Altogether, the claims organize financial information (such as assets, factors, and exposures) and apply a conventional economic relationship (such as expected return as a function of factor outcomes). Accordingly, the claim recites an abstract idea. The mere recitation of generic computer components in the claims do not necessarily preclude that claim from reciting an abstract idea.
Applicant argues Desjardins. Examiner notes that the Ex Parte Desjardins decision (as well as the Director Squires’ memo) stressed the specification of application 16/319040, in that the specification was curing a deficiency in the way that normal AI functions, and their specific way of training the AI had an improvement in the AI; the decision had nothing to do with the data itself. In the currently recited claims, the “invention” is in the data itself, and it is using AI at a “high level” which amounts to “apply it,” where there is no curing any technical problem with the way AI functions, and is just using a different set of data. Thus, the application (and currently recited claims) are more like Recentive, than Ex Parte Desjardins. The claims in Desjardins recited a particular technolical solution (in artificial intelligence), whereas the attached claims recite a trader creating matching batch tables and running a generic parallel SQL query (database).
In response to Applicant argument in paragraph (47-48), Examiner notes pages the highlighted claim limitations on pages 4-8 of the current rejection. The parallel SQL query, the factor-simulations batch table and the factor-exposures batch table are additional elements, and not the judicial exception itself.
Applicant argues that the Examiner must provide 4 bases of factual determination to the contrary of Applicants “significantly more” (Applicant arguments, para. 43). Examienr disagrees.
Furthermore, Applicant's argument that the rejection lacks Berkheimer evidence is not persuasive. Such evidence is only required to support a conclusion that an additional element is well-understood, routine, conventional activity. Here, the rejection does not assert well-understood, routine, conventional activity and instead identifies the additional elements drawn to the database as adding the words “apply it” (or an equivalent) with the judicial exception, or mere instructions to implement an abstract idea on a computer. MPEP 2106.05(f). Because the evaluation in Step 2B is not a weighing test, it is not important how the elements are characterized or how many considerations apply from the list of considerations set forth in MPEP 2106.05. It is important to evaluate the significance of the additional elements relative to the invention, and to keep in mind the ultimate question of whether the additional elements encompass an inventive concept.
In Berkenheimer, the patent in question was considered a technical improvement over existing technologies because it specifically addressed and solved inefficiencies in digital asset management systems. The decision highlighted that, for software, the specification must describe how a specific, non-conventional technical improvement is achieved, rather than merely stating that it is efficient. Unlike the currently recited claim limitations, the claimed invention in Berkenheimer (related to digital asset management) was described in the specification as improving computer operation efficiency, reducing redundancy in storage, and enabling "one-to-many" editing. Further, unlike the currently recited claim limitations, the court identified that the claims required a specific "parsing" process that created a "multi-part object structure," which was not merely a generic use of a computer, thus creating a potential, non-conventional improvement over prior art.
Applicant also argues (Para. 45+), that Examiner must consider the machine-or-transformation test of Bilski as evidence of “significantly more.” While the machine-or-transformation test is an important clue to eligibility, it should not be used as a separate test for eligibility. MPEP 2106 (I). Step 2B does not require Bilski per se, rather, it considers the limitations individually and as an ordered combination to determine if the claimed invention amount to “significantly more” than the abstract idea. In this case, it does not. MPEP 2106.05(b) clearly says “("[I]n Mayo, the Supreme Court emphasized that satisfying the machine-or-transformation test, by itself, is not sufficient to render a claim patent-eligible, as not all transformations or machine implementations infuse an otherwise ineligible claim with an 'inventive concept.'").
Applicants arguments in Paragraph 46-53 are addressed in the above rejection.
Applicant argues (Para. 57+), that the currently recited claims are more technical in nature that BASCOM and Berkheimer. Examiner disagrees. BASCOM relates to translating multiple filters attached to client side devices to a single filter on the server side device to filter information request based on requestor’s profile. The steps in the current claim are purely a business interaction with several claim limitations attached by intended use language that facilitate no technical improvement, and that can be achieve on a face-to-face level or over the telephone or over generic network environment. This is purely a commercial interaction under the certain methods of organizing human activity. In Berkenheimer, the patent in question was considered a technical improvement over existing technologies because it specifically addressed and solved inefficiencies in digital asset management systems. The decision highlighted that, for software, the specification must describe how a specific, non-conventional technical improvement is achieved, rather than merely stating that it is efficient. Unlike the currently recited claim limitations, the claimed invention in Berkenheimer (related to digital asset management) was described in the specification as improving computer operation efficiency, reducing redundancy in storage, and enabling "one-to-many" editing. Further, unlike the currently recited claim limitations, the court identified that the claims required a specific "parsing" process that created a "multi-part object structure," which was not merely a generic use of a computer, thus creating a potential, non-conventional improvement over prior art.
Applicant argues in Para. 58, that the Applicant specification notes “network efficiency” in Specification Para. 512, 111, 444, and 477, and processing efficiency (Applicant argument, Para. 59). Ex Parte Smith was eligible because they added a timer to transactions in order to handicap electronic transactions and be fair with physical transactions. Simply changing trading decisions is not an improvement to computer functionality, such as specific UI improvements and improved data management, or a solution to a technical problem. Technical details must be in the claim and the specification. For a trading method to be patent-eligible under USPTO Section 101, merely "improving computational resources" is not enough to overcome the abstract idea exception established in Alice Corp. v. CLS Bank International. The claim must specify a concrete, technological improvement to the computer's functionality, rather than simply implementing a conventional trading practice on a generic computer. There is nothing recited in the claims (from additional elements to abstract idea, to anything ordered in the claims) that specifies a concrete, technological improvement to the computer’s functionality.
Applicant also argues (Applicant arguments, Para. 63-66), that Examiner provides no factual evidence (Berkheimer evidence) is not persuasive. Such evidence is only required to support a conclusion that an additional element is well-understood, routine, conventional activity. Here, the rejection does not assert well-understood, routine, conventional activity and instead identifies the additional elements drawn to the database as adding the words “apply it” (or an equivalent) with the judicial exception, or mere instructions to implement an abstract idea on a computer. MPEP 2106.05(f). Because the evaluation in Step 2B is not a weighing test, it is not important how the elements are characterized or how many considerations apply from the list of considerations set forth in MPEP 2106.05. It is important to evaluate the significance of the additional elements relative to the invention, and to keep in mind the ultimate question of whether the additional elements encompass an inventive concept. Additional elements in the rejection are well noted in the above rejection.
Applicant also argues (Applicant arguments, Para. 67+), that Examiner must consider the machine-or-transformation test of Bilski as evidence of “significantly more.” While the machine-or-transformation test is an important clue to eligibility, it should not be used as a separate test for eligibility. MPEP 2106 (I). Step 2B does not require Bilski per se, rather, it considers the limitations individually and as an ordered combination to determine if the claimed invention amount to “significantly more” than the abstract idea. In this case, it does not. MPEP 2106.05(b) clearly says “("[I]n Mayo, the Supreme Court emphasized that satisfying the machine-or-transformation test, by itself, is not sufficient to render a claim patent-eligible, as not all transformations or machine implementations infuse an otherwise ineligible claim with an 'inventive concept.'").
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to BRANDON M DUCK whose telephone number is (469)295-9049. The examiner can normally be reached 8am - 5pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Michael Anderson can be reached at 571-270-0508. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/BRANDON M DUCK/Examiner, Art Unit 3693
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