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 .
Withdrawal of Final Office Action
Based on interview of 8/5/26 the previous office action has been withdraw in order to further clarify the record. A new final rejection is attached.
Response to Amendment
Applicant's arguments filed 6/8/26 have been fully considered but they are not persuasive.
Response to Arguments
In re pgs. 8-12 the applicant argues the USC 101 rejection.
In response, it is well-settled that collecting and analyzing information by steps people go through in their minds or by mathematical algorithms, without more, are mental processes in the abstract-idea category. Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1353-54 (Fed. Cir. 2016); see SAP Am., Inc. v. InvestPic, LLC, 898 F.3d 1161, 1167 (Fed. Cir. 2018) ("[S]electing certain information, analyzing it using mathematical techniques, and reporting or displaying the results of the analysis" is abstract); Intellectual Ventures I LLC v. Cap. One Fin. Corp., 850 F.3d 1332, 1341 (Fed. Cir. 2017) ("Organizing, displaying, and manipulating data of particular documents" is abstract.); FairWarning IP, LLC v. Iatric Sys., Inc., 839 F.3d 1089, 1096-97 (Fed. Cir. 2016) (compiling and combining disparate data sources to generate a full picture of a user's activity, identity, frequency of activity, and the like in a computer environment to detect potential fraud does not differentiate a process from ordinary mental processes); In re Killian, 45 F.4th 1373, 1379 (Fed. Cir. 2022) ("These steps can be performed by a human, using 'observation, evaluation, judgment, [and] opinion,' because they involve making determinations and identifications, which are mental tasks humans routinely do").
The claims amount to data analysis/manipulation and using some form of AI as a tool. The transformation of data, or the mere "manipulation of basic mathematical constructs [i.e.,] the paradigmatic 'abstract idea,"' is not a transformation sufficient to integrate a judicial exception into a practical application. CyberSource v. Retail Decisions, 654 F.3d 1366, 1372 n.2 (Fed. Cir. 2011) (quoting In re Warmerdam, 33 F.3d 1354, 1355, 1360 (Fed. Cir. 1994)).
Although the claims may specify an improvement they are only improving the abstract idea not a computer.
"The courts consider a mental process (thinking) that "can be performed in the human mind, or by a human using a pen and paper" to be an abstract idea." MPEP § 2106.04(a)(2).III. "Accordingly, the "mental processes" abstract idea grouping is defined as concepts performed in the human mind, and examples of mental processes include observations, evaluations, judgments, and opinions." Id. For the purposes of this abstract idea, "[t]he courts do not distinguish between mental processes that are performed entirely in the human mind and mental processes that require a human to use a physical aid (e.g., pen and paper or a slide rule) to perform the claim limitation."
In re pgs. 12-14 the applicant argues the claims amount to an improvement.
Regarding b. technical improvements
MPEP 2106.05(a) states, "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 present disclosure provides the requisite detail.
MPEP 2106.05(a) also states, "After the examiner has consulted the specification and
determined that the disclosed invention improves technology, the claim must be evaluated to ensure the claim itself reflects the disclosed improvement in technology."
Applicant would need to be clear about any improvement specified in the disclosure and the improvement should be specified in the claim language as well; one should be able to point to the disclosure and say this part of the claim language is explicitly referring to the part of the disclosure that is discussing the improvement, unless of course, the improvement clearly specifically in the claims. The specification needs to include sufficient details such that one of ordinary skill in the art recognizes the claimed invention as providing an improvement. The claim needs to include the components or steps of the invention that provide the improvement described in the specification. The improvement can't be in the abstract idea itself, there has to be an additional element which integrates the abstract idea into a practical application; even a better way of performing mathematical concepts is still a mathematical concept. Applicant discloses various hardware and software of the claimed invention as being standard and conventional in the art and does not disclose transforming/converting a generic computing machine into a special purpose machine. In short, first the specification should be evaluated to determine if the disclosure provides 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. Second, if the specification sets forth an improvement in technology, the claim must be evaluated to ensure that the claim itself reflects the disclosed improvement. That is, the claim includes the components or steps of the invention that provide the improvement described in the specification. The claim itself does not need to explicitly recite the improvement described in the specification (e.g., "thereby increasing the bandwidth of the channel"). - See MPEP 2106.05(d)(1). Abstract concepts include: observation, evaluation, judgement, and opinion. See Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 71 (2012) (quoting Gottschalk v. Benson, 409 U.S. 63, 67 (1972) ("'[M]ental processes and abstract intellectual concepts are not patentable, as they are the basic tools of scientific and technological work"'). It is the examiner’s position that applicant’s claims do no more than merely invoking generic computer components merely as a tool in which the computer instructions apply the judicial exception. MPEP § 2106.05(f): Mere Instructions to Apply an Exception.
Examples that the courts have indicated may not be sufficient to show an improvement in computer-functionality:
i. Generating restaurant menus with functionally claimed features, Ameranth, 842 F.3d at 1245, 120 USPQ2d at 1857;
ii. Accelerating a process of analyzing audit log data when the increased speed comes solely from the capabilities of a general-purpose computer, FairWarning IP, LLC v. Iatric Sys., 839 F.3d 1089, 1095, 120 USPQ2d 1293, 1296 (Fed. Cir. 2016);
iii. Mere automation of manual processes, such as using a generic computer to process an application for financing a purchase, Credit Acceptance Corp. v. Westlake Services, 859 F.3d 1044, 1055, 123 USPQ2d 1100, 1108-09 (Fed. Cir. 2017) or speeding up a loan-application process by enabling borrowers to avoid physically going to or calling each lender and filling out a loan application, LendingTree, LLC v. Zillow, Inc., 656 Fed. App'x 991, 996-97 (Fed. Cir. 2016) (non-precedential);
iv. Recording, transmitting, and archiving digital images by use of conventional or generic technology in a nascent but well-known environment, without any assertion that the invention reflects an inventive solution to any problem presented by combining a camera and a cellular telephone, TLI Communications, 823 F.3d at 611-12, 118 USPQ2d at 1747;
v. Affixing a barcode to a mail object in order to more reliably identify the sender and speed up mail processing, without any limitations specifying the technical details of the barcode or how it is generated or processed, Secured Mail Solutions, LLC v. Universal Wilde, Inc., 873 F.3d 905, 910-11, 124 USPQ2d 1502, 1505-06 (Fed. Cir. 2017);
vi. Instructions to display two sets of information on a computer display in a non-interfering manner, without any limitations specifying how to achieve the desired result, Interval Licensing LLC v. AOL, Inc., 896 F.3d 1335, 1344-45, 127 USPQ2d 1553, 1559-60 (Fed. Cir. 2018);
vii. Providing historical usage information to users while they are inputting data, in order to improve the quality and organization of information added to a database, because “an improvement to the information stored by a database is not equivalent to an improvement in the database’s functionality,” BSG Tech LLC v. Buyseasons, Inc., 899 F.3d 1281, 1287-88, 127 USPQ2d 1688, 1693-94 (Fed. Cir. 2018); and
viii. Arranging transactional information on a graphical user interface in a manner that assists traders in processing information more quickly, Trading Technologies v. IBG LLC, 921 F.3d 1084, 1093-94, 2019 USPQ2d 138290 (Fed. Cir. 2019). MPEP 2106.05(a)
In re pg. 14 the applicant argues the claimed invention provides improved accuracy.
In response, the claims amount to data analysis/manipulation and using some form of AI as a tool. The transformation of data, or the mere "manipulation of basic mathematical constructs [i.e.,] the paradigmatic 'abstract idea,"' is not a transformation sufficient to integrate a judicial exception into a practical application. CyberSource v. Retail Decisions, 654 F.3d 1366, 1372 n.2 (Fed. Cir. 2011) (quoting In re Warmerdam, 33 F.3d 1354, 1355, 1360 (Fed. Cir. 1994)).
Claiming AI on a high level (in this case there no AI claimed other than using the term “model”) can amount to using a black box without specifying any real details of how the AI operates or what’s in the black box. The claims need to specify the technical details of the AI.
Although the claims may specify an improvement they are only improving the abstract idea not a computer.
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 1-8, 20-22, 24-26, 28, 120-121 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more.
Step 1: claims 1-9, 20-22, 24-28, 120-121 are directed to either a process, machine, manufacture or composition of matter.
With respect to claim 1:
2A Prong 1:
identifying, among the genetically related individuals not yet considered as the closest relative and not yet excluded from the formed pedigrees, a closest relative of an individual already in the formed pedigrees, wherein the closest relative is identified based on a degree of consanguinity between the closest relative and the individual already in the formed pedigrees (abstract idea of analyzing data using data to make a decision amounts to a mental process);
applying pairwise IBD data and pairwise age data of the closest relative and the individual already in the formed pedigrees to a probabilistic relationship model to obtain various likelihoods of various relationships between the closest relative and the individual already in the formed pedigrees (abstract idea of analyzing data and/or mathematical concepts. Mental process- a human-mind with pen and paper can generate/determine data or a mental process of modeling with assistance of pen and paper);
selecting one or more of the potential relationships between the closest relative and the individual already in the formed pedigrees that have relationship likelihoods meeting a relationship criterion, and adding each of the one or more of the potential relationships to the formed pedigrees already formed to grow the formed pedigrees into one or more growing pedigrees (mental process – user can manually perform raw thinking in their head as a first stage and then using paper and pen to perform mathematical operation; a human-mind with pen and paper can generate/determine data);
Selecting one or more of the growing pedigrees that have pedigree likelihoods meeting a pedigree criterion as the formed pedigrees (mental process – user can manually perform raw thinking in their head as a first stage and then using paper and pen to assist in making a decision; a human-mind with pen and paper can generate/determine data);
generating a pedigree graph using relationship data of the pedigree having a highest pedigree likelihood(Abstract idea of analyzing data. Mental process. A human- mind with pen and paper can generate/determine data).
2A Prong 2: This judicial exception is not integrated into a practical application.
Additional elements:
Computer system, processor, system memory, (computer component is recited at a high level of generality and amounts to no more than mere instructions to apply the exception using a generic computer component);
causing display of the pedigree graph on a display device, wherein the pedigree graph includes nodes representing individuals of the pedigree having the highest pedigree likelihood, and wherein each child node of the nodes is connected to a respective pair of parent nodes of the nodes (insignificant extra solution and under 2B Berkheimer from MPEP 2106.05(d)(II)).
2B: The claim does not include additional elements that are sufficient to amount to significantly more than the judicial exception.
Additional elements:
Computer system, processor, system memory, (computer component is recited at a high level of generality and amounts to no more than mere instructions to apply the exception using a generic computer component);
causing display of the pedigree graph on a display device, wherein the pedigree graph includes nodes representing individuals of the pedigree having the highest pedigree likelihood, and wherein each child node of the nodes is connected to a respective pair of parent nodes of the nodes (insignificant extra solution and under 2B Berkheimer from MPEP 2106.05(d)(II)).
Displaying on an interface: Presenting offers and gathering statistics, OIP Techs., 788 F.3d at 1362-63, 115 USPQ2d at 1092-93.
The claims are not patent eligible.
2. (Original) The method of claim 1, wherein the pairwise IBD data comprise a length of IBD segments (further expand mental process user can analyze data and/or perform modeling).
3. (Original) The method of claim 2, wherein the lengths of IBD segments comprise a length of full IBD segments and/or a length of half IBD segments(further expand mental process user can analyze data and/or perform modeling).
4. (Currently Amended) The method of claim 1, wherein the pairwise IBD data comprise a number of IBD segments(further expand mental process user can analyze data and/or perform modeling).
5. (Original) The method of claim 4, wherein the number of IBD segments comprise a number of full IBD segments and/or a number of half IBD segments (further expand mental process user can analyze data and/or perform modeling).
6. (Currently Amended) The method of claim 1, wherein the probabilistic relationship model is a machine-learning model (further expand mental process user can analyze data and/or perform modeling; machine learning model -adding the words “apply it” (or an equivalent) with the judicial exception, or mere instructions to implement an abstract idea on a computer, or merely uses a computer as a tool to perform an abstract idea - see MPEP 2106.05(f)).
7. (Currently Amended) The method of claim 1, wherein the probabilistic relationship model models the probability distribution of the pairwise IBD data for each relationship and/or the probability distribution of the pairwise age data for each relationship as a Gaussian distribution, a Poisson distribution, or an exponential distribution (additional element considered to be generally linking the use of the judicial exception to a particular technological environment or field of use – see MPEP 2106.05(h)).
8. (Currently Amended) The method of claim 1, further comprising:
storing into a database or retrieving from a database relationship data of a pedigree having the highest pedigree likelihood among the growing pedigrees selected in (lg) (the receiving/storing steps are considered to be extra-solution activity in Step 2A Prong 2, and thus it is re-evaluated in Step 2B to determine if it is more than what is well-understood, routine, conventional activity in the field. The court decisions cited in MPEP 2106.05(d)(II) indicate that merely Receiving or transmitting data over a network, e.g., using the Internet to gather data, Symantec, 838 F.3d at 1321, 120 USPQ2d at 1362 (utilizing an intermediary computer to forward information). Thereby, a conclusion that the claimed storing step is well-understood, routine, conventional activity is supported under Berkheimer. The claim is not patent eligible).
9. (Original) The method of claim 8, further comprising:
a) generating a pedigree graph using the relationship data of the pedigree having the highest pedigree likelihood (mental process of modeling with assistance of pen and paper); and
b) displaying the pedigree graph on a display device (computer component is recited at a high level of generality and amounts to no more than mere instructions to apply the exception using a generic computer component).
20. (Currently Amended) The method of claim 1, wherein pairwise IBD data between two individuals are used to determine how closely related the two individuals are (further expand mental process user can analyze data and/or perform modeling).
21. (Currently Amended) The method of claim 1, wherein the relationship criterion is a ratio of an instant relationship likelihood over a maximum relationship likelihood being larger than a value c (mental process – user can manually perform raw thinking in their head as a first stage and then using paper and pen to perform mathematical operation).
22. (Currently Amended) The method of claim 1, wherein the pedigree criterion is a ratio of an instant pedigree likelihood over a maximum pedigree likelihood being larger than a specific value d (mental process – user can manually perform raw thinking in their head as a first stage and then using paper and pen to perform mathematical operation).
24. (Currently Amended) The method of claim 1, further comprising:
b) identifying two pedigrees from among a plurality of pedigrees constructed using operations (1a)-(1 h), the two pedigrees being a genealogically closest pair of pedigrees among all pairs in the plurality pedigrees (further expand mental process user can analyze data and/or perform modeling).
25. (Original) The method of claim 24, wherein in operation (24c) a genealogical similarity between two pedigrees that are the genealogically closest pair of pedigrees is measured as a union over all IBD segments shared between an individual in a first pedigree in the genealogically closest pair of pedigrees and an individual in a second pedigree in the genealogically closest pair of pedigrees (further expand mental process user can analyze data and/or perform modeling).
26. (Currently Amended) The method of claim 24, further comprising:
c) combining the two pedigrees identified in operation (24c) into a combined pedigree (mental process – user can manually perform raw thinking in their head as a first stage and then using paper and pen to perform mathematical operation).
28. (Original) The method of claim 26, wherein in operation (26d) the two pedigrees are combined by:
a) identifying a first set of individuals in a first pedigree who share IBD with individuals in a second pedigree;
b) identifying a second set of individuals in the second pedigree who share IBD with individuals in the first pedigree;
c) identifying a common ancestor of the first set of individuals;
d) identifying a common ancestor of the second set of individuals;
e) inferring a degree of relatedness between the common ancestor of the first set and the common ancestor of the second set; and
f) connecting the two common ancestors by an inferred degree of relatedness between the common ancestors (Abstract ideas of analyzing data. Mental processes. A human-mind with pen and paper can generate/determine data).
120. (New) The method of claim 1, wherein each respective pair of the parent nodes is rendered in a different color (Abstract idea of analyzing data. Mental process. A human- mind with pen and paper can determine what data/color to use).
121. (New) The method of claim 1, wherein all of the parent nodes represent direct ancestors of an individual, and wherein the individual is represented by a focal node that is a child node of a pair of the parent nodes (insignificant extra solution and under 2B Berkheimer from MPEP 2106.05(d)(II)).
Conclusion
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DAVID R VINCENT whose telephone number is (571)272-3080. The examiner can normally be reached ~Mon-Fri 12-8:30.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Alexey Shmatov can be reached at 5712703428. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/DAVID R VINCENT/Primary Examiner, Art Unit 2123
