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 .
Application Status
Claims 1-19 are pending and have been examined.
Claims 1-19 are rejected under 35 U.S.C. §101 for being directed to an abstract idea without significantly more.
This action is non-final.
Acknowledgement of Issues Raised by Applicant
Applicant’s arguments with respect to the 35 U.S.C. § 101 rejection of claims 1-20 have been fully considered but are not persuasive.
Response to Arguments
With respect to 101 rejection, Examiner notes Applicant asserts the claims are patent eligible under 35 U.S.C. §101 and Alice/Mayo analysis per the claims not being directed to an abstract idea. The Examiner respectfully disagrees (analysis continues below).
With respect to Applicant’s arguments on pages 10-12 of remarks, Examiner respectfully disagrees the claims are patent eligible under step 2A for the following reasons:
Merely automating the abstract process faster or more efficient via techniques conventional to the technological environment of computers does not integrate the abstract idea into a practical application or amount to significantly more.
The limitations “at periodic intervals” are recitation of the abstract idea recited, and “outputting… [data] to a graphical user interface” amounts to the user interface being merely applied (2106.05(f)(1)).
With respect to Applicant’s argument drawn to Example 42, the Examiner respectfully disagrees. As an initial matter, with respect to USPTO Examples, the Examiner analyzes the claims under the two-part framework under Alice/Mayo. The Examples (Including Example 42) are not precedential, and the Examples provided in Office Guidance are hypothetical and intended to be illustrative only. While some of the fact patterns in the examples draw from U.S. Supreme Court and U.S. Court of Appeals for the Federal Circuit decisions, the examples do not carry the weight of court decisions. Furthermore, Examiner respectfully submits Applicant’s analogy between Example 42 and the instant claims is not persuasive, because the analogy does not address the purported improvement of “automatically generating a message whenever updated information is stored, and transmitting the message to all of the users”, which was basis of overcoming step 2A Prong II in Example 42, in addition to providing a standardized format. Specifically, the additional elements do not recite a specific improvement over prior art systems allowing multiple remote users to share standardized information in real time.
Accordingly, for the reasons provided above, as well as in the 101 rejections further below, the Examiner respectfully maintains that the claims are directed to an abstract idea under step 2A Prong II.
With respect to Applicant’s arguments drawn to the well-understood, routine and conventional rationale, Examiner respectfully disagrees and fails to find argument persuasive. See MPEP 2106.05 I: See also Synopsys, Inc. v. Mentor Graphics Corp., 839 F.3d 1138, 1151, 120 USPQ2d 1473, 1483 (Fed. Cir. 2016) ("a claim for a new abstract idea is still an abstract idea. The search for a § 101 inventive concept is thus distinct from demonstrating § 102 novelty.")
For the reasons listed above, as well as the reasons provided in 101 rejections further below, the Examiner respectfully maintains the claims do not recite and inventive concept (i.e., amount to significantly more) under step 2B and maintains the 35 U.S.C. §101 rejections. The claims are not patent eligible under 35 U.S.C. §101, when analyzed under the Alice/Mayo test.
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 an abstract idea without significantly more. Based upon consideration of all relevant factors with respect to the claims as a whole, claims 1-18 are determined to be directed to an abstract idea without significantly more. The rationale for the aforementioned determination of patent ineligibility under 35 USC §101 is explained further below:
The relevant test to determine patent eligibility under 35 U.S.C. §101 is the Alice/Mayo test (See MPEP §2106). The following analysis provided in this section results from the instant application’s claims being examined within the scope of the Alice/Mayo test framework.
With respect Step 1 of Alice/Mayo analysis, the claims are either directed to a system, method, or product of manufacture, which are statutory categories of invention (Step 1 of Alice/Mayo Test: YES).
With respect Step 2A Prong I of Alice/Mayo analysis, claims 1-20 recite as a whole a method of organizing human activity because independent claims 1, 7, and 13 recite a method of (additional elements emphasized in bold are considered to be parsed from the remaining elements which are reciting the abstract idea):
1. A method for investment scoring and ranking, the method comprising:
storing … data and an investment score of one or more entities;
extracting, …, one or more features from the data;
generating, …, one or more rules, the one or more rules including one or more records, each of the one or more records corresponding to a feature and each of the one or more records defining at least a weight for the corresponding feature such that each feature represents a maximum percentage of a score;
… generating, …, a request for data regarding a new entity at periodic intervals;
receiving, … data regarding the new entity;
extracting …one or more features from the data regarding the new entity;
applying, … the one or more rules corresponding to the one or more features of the data regarding the new entity; and
outputting, …, a new investment score for the new entity based on the one or more rules …, the new investment score indicating an investment potential of the new entity.
7. …
the instructions comprising: …
instructions to store data and an investment score of one or more entities;
…instructions to extract one or more features from the data;
instructions to generate one or more rules, the one or more rules including defining at least a weight for the corresponding feature such that each feature represents a maximum percentage of a score;
Instructions to … generate a request for data regarding a new entity at periodic intervals;
instructions to receive the data regarding a new entity;
instructions to extract one or more features from the data regarding the new entity; instructions to apply the one or more rules corresponding to the one or more features of the data regarding the new entity;
and instructions to output a new investment score for the new entity based on the one or more rules …, the new investment score indicating an investment potential of the new entity.
13. … investment scoring and ranking, …comprising:
…
storing…data … of one or more entities and an investment score of one or more entities;
…
generating … one or more rules, the one or more rules including a feature and a weight for the corresponding feature such that each feature represents a maximum percentage of a score;
… generating, …, a request for data regarding a new entity;
receiving …the data… regarding a new entity; extracting … one or more features from the data regarding the new entity at periodic intervals;
applying, … the one or more rules corresponding to the one or more features of the data regarding the new entity;
and outputting,… a new investment score for the new entity based on the one or more rules …, the new investment score indicating an investment potential of the new entity.
Under broadest reasonable interpretation, these are fundamental economic principles of scoring and ranking investments corresponding to entities (e.g., companies), including steps of generating rules corresponding to scoring criteria for investable entities, further involving features extracted from data/information being used as underlying criteria for the scoring rules. Thus, the claim recites an abstract idea (Step 2A Prong I of Alice/Mayo Test: Yes, the claims recite an abstract idea).
Addressing Step 2A Prong II of Alice/Mayo analysis, this judicial exception is not integrated into a practical application. The claims as a whole merely describe how to generally apply the generic system / processing device / computer, including generic processors, computer-readable memories /storage devices, generic non-transitory computer program product, generic computer-readable storage medium, and generic instructions at a high degree of generality, such that it amounts to no more than mere instructions to implement the abstract idea by adding the words “apply it” (or an equivalent) - See MPEP 2106.05(f). Simply implementing the abstract idea on the aforementioned generic hardware is not a practical application of the abstract idea. Accordingly, when considered separately and as an ordered combination, these additional elements do not integrate the abstract idea into a practical application. The claims are directed to an abstract idea. (Step 2A Prong II of Alice/Mayo Test: NO, the additional claimed elements are not integrated into a practical application).
In order to further support Examiner’s above stance that the aforementioned additional elements are merely applied, Examiner notes that:
The following additional elements:
A system […] comprising:
one or more processors,
one or more computer-readable memories,
one or more computer-readable tangible storage devices,
and instructions stored on at least one of the one or more storage devices for execution by at least one of the one or more processors via at least one of the one or more computer-readable memories
A computer program product comprising:
a computer-readable storage medium having program instructions embodied therewith, the program instructions executable by a computer to cause the computer to perform a method, comprising:
storing, in a memory of a processing device, data
extracting, by the processing device, one or more features from the data;
generating, by the processing device [data]
applying, by the processing device […] rules
outputting, by the processing device [data] … to a graphical user interface
are merely describing generic computer components being used in a manner customary to the technological environment of computers, including generic pre-processing steps used in machine learning (e.g., feature extraction), and are indicative of the claims merely attempting to limit the use of the abstract idea to a particular technological environment (computers comprising generic hardware components, including generic feature extraction for machine learning), which is insufficient to impart patentability under Alice (Alice Corp. v. CLS Bank International, 573 U.S. 208, 223-24 (2014), emphasis added: "[…]. Stating an abstract idea "while adding the words ‘apply it’ " is not enough for patent eligibility. […]. Nor is limiting the use of an abstract idea " ‘to a particular technological environment.’ […]. Stating an abstract idea while adding the words "apply it with a computer" simply combines those two steps, with the same deficient result."). See also Intellectual Ventures I LLC v. Capital One Bank (USA), N.A., 792 F.3d 1363, 1366, 115 USPQ2d 1636, 1639 (Fed. Cir. 2015), emphasis added: "An abstract idea does not become nonabstract by limiting the invention to a particular field of use or technological environment, such as the Internet [or] a computer".
With respect to the claimed instructions, Examiner notes MPEP §2106(I), underline emphasis added:
“The programmed computer or "special purpose computer" test of In re Alappat, 33 F.3d 1526, 31 USPQ2d 1545 (Fed. Cir. 1994) (i.e., the rationale that an otherwise ineligible algorithm or software could be made patent-eligible by merely adding a generic computer to the claim for the "special purpose" of executing the algorithm or software) was also superseded by the Supreme Court’s Bilski and Alice Corp. decisions. Eon Corp. IP Holdings LLC v. AT&T Mobility LLC, 785 F.3d 616, 623, 114 USPQ2d 1711, 1715 (Fed. Cir. 2015) ("[W]e note that Alappat has been superseded by Bilski, 561 U.S. at 605–06, and Alice Corp. v. CLS Bank Int’l, 573 U.S. 208, 110 USPQ2d 1976 (2014)"); Intellectual Ventures I LLC v. Capital One Bank (USA), N.A., 792 F.3d 1363, 1366, 115 USPQ2d 1636, 1639 (Fed. Cir. 2015) ("An abstract idea does not become nonabstract by limiting the invention to a particular field of use or technological environment, such as the Internet [or] a computer")”.
Addressing Step 2B of Alice/Mayo analysis, the claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception. As previously discussed, the claims as a whole merely describe how to generally apply the generic system / processing device / computer, including generic processors, computer-readable memories /storage devices, generic computer program product, generic non-transitory computer-readable storage medium, and generic instructions at a high degree of generality, such that it amounts to no more than mere instructions to implement the abstract idea by adding the words “apply it” (or an equivalent) - See MPEP 2106.05(f). In light of the generality of the additional elements, considered both alone and as an ordered combination, and the generality by which the additional elements out the recited abstract idea, the Examiner respectfully submits the focus of the claims is not on an improvement in computers as tools, but rather on an abstract idea that uses computers as tools. Accordingly, even when considered as an ordered combination, the additional elements represent mere instructions to apply the judicial exception (MPEP §2106.05(f)). Mere instructions to apply an exception cannot provide an inventive concept in step 2B of Alice/Mayo analysis. Accordingly, when considered separately and as an ordered combination, nothing in the claim adds significantly more (i.e. an inventive concept) to the abstract idea. Thus, independent claims 1, 7, and 13 are not patent eligible. (Step 2B of Mayo/Alice Test: NO, the claims do not amount to significantly more).
With respect to the dependent claims, they have been given the full analysis including analyzing the additional limitations both individually and as an ordered combination. The dependent claims, when analyzed both individually and in combination, are also held to be patent ineligible under 35 U.S.C. 101 because of the same reasoning above and because the additional limitations recited fail to establish that the claims integrate the judicial exception into a practical application or amount to significantly more. The additional limitations of the dependent claims, when considered individually and as an ordered combination, do not recite additional elements outside of the abstract idea that integrate the judicial exception into a practical application, and do not amount to significantly more than the abstract idea (see analysis continuing below).
Dependent claims 3, 4, 6, 9, 10, 12, 15, 16, and 18, when analyzed both individually and in combination, are also held to be patent ineligible under 35 U.S.C. 101 because of the same reasoning as above and because the additional limitations recited fail to establish that the claims are not directed to an abstract idea. The additional limitations of the dependent claims, when considered individually and as an ordered combination, do not recite additional elements outside of the abstract idea that integrate the judicial exception into a practical application, and do not amount to significantly more than the abstract idea, as the claims do not recite any further additional elements outside of the abstract idea, and also do not indicate that the previously mentioned additional elements are successfully integrated / amounting to significantly more, either alone or in combination. For these reasons dependent claims 3, 4, 9, 10, 12, 15, 16, and 18 are also not patent eligible.
With respect to dependent claims 2, 8, and 14, the additional limitations, when considered individually and as an ordered combination, do not recite additional elements outside of the abstract idea that integrate the judicial exception into a practical application, and do not amount to significantly more than the abstract idea. The claims fail to establish that the previously mentioned additional elements are successfully integrated / amounting to significantly more, either alone or in combination, and the claims merely utilizes the generic machine learning model (trained using data to generate rules) at a high degree of generality, such that it amounts to no more than mere instructions to implement the abstract idea by adding the words “apply it” (or an equivalent) – see MPEP §2106.05(f). Examiner notes MPEP 2106.05(f)(1) – MPEP 2106.05(f)(3) are relevant, as the machine learning model is claimed at a high degree of generality, and is merely used to generate rules drawn to the abstract idea at a high degree of generality, so as to achieve a result rooted in one of the abstract ideas recited (determining an investment score based on rules generated). The machine learning model generating rules and being trained on data including scores is indicative of the claims merely attempting to limit the use of the abstract idea to a particular technological environment, which is insufficient to impart patent eligibility under Alice (Alice Corp. v. CLS Bank International, 573 U.S. 208, 223-24 (2014), emphasis added: "[…]. Stating an abstract idea "while adding the words ‘apply it’ " is not enough for patent eligibility. […]. Nor is limiting the use of an abstract idea " ‘to a particular technological environment.’ […]. Stating an abstract idea while adding the words "apply it with a computer" simply combines those two steps, with the same deficient result."). Accordingly, in view of the claims failing to establish that the aforementioned additional elements are successfully integrated / amounting to significantly more, either alone or in combination, dependent claims 2, 8, and 14 are also not patent eligible subject matter.
With respect to dependent claims 5, 11, and 17, the additional limitations, when considered individually and as an ordered combination, do not recite additional elements outside of the abstract idea that integrate the judicial exception into a practical application, and do not amount to significantly more than the abstract idea. The claims fail to establish that the previously mentioned additional elements are successfully integrated / amounting to significantly more, either alone or in combination, and the claims merely utilizes the generic virtual dataset implementations at a high degree of generality, such that it amounts to no more than mere instructions to implement the abstract idea by adding the words “apply it” (or an equivalent) – see MPEP §2106.05(f). Accordingly, in view of the claims failing to establish that the aforementioned additional elements are successfully integrated / amounting to significantly more, either alone or in combination, dependent claims 5, 11, and 17 are also not patent eligible subject matter.
With respect to dependent claim 19, the additional limitations, when considered individually and as an ordered combination, do not recite additional elements outside of the abstract idea that integrate the judicial exception into a practical application, and do not amount to significantly more than the abstract idea. The claims fail to establish that the previously mentioned additional elements are successfully integrated / amounting to significantly more, either alone or in combination, and the claims merely utilizes the generic processing device at a high degree of generality, such that it amounts to no more than mere instructions to implement the abstract idea by adding the words “apply it” (or an equivalent) – see MPEP §2106.05(f). Accordingly, in view of the claim failing to establish that the aforementioned additional elements are successfully integrated / amounting to significantly more, either alone or in combination, dependent claim 19 is also not patent eligible subject matter.
With respect to dependent claim 20, the additional limitations, when considered individually and as an ordered combination, do not recite additional elements outside of the abstract idea that integrate the judicial exception into a practical application, and do not amount to significantly more than the abstract idea. The claims fail to establish that the previously mentioned additional elements are successfully integrated / amounting to significantly more, either alone or in combination. The additional elements “inputting, into the processing device via a graphic user interface” amounts to merely using a computer as a tool, and merely limits the use of the abstract idea to a particular technological environment. Accordingly, in view of the claim failing to establish that the aforementioned additional elements are successfully integrated / amounting to significantly more, either alone or in combination, dependent claim 19 is also not patent eligible subject matter.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure:
US 20080021750 A1 (Masuyama). Figs. 50, 53, and 54 are relevant. See also ¶¶494, 509,
Non-Patent Literature, “Web 2.0 Environmental Scanning and Adaptive Decision Support for Business Mergers and Acquisitions” (Lau), disclosing a software implemented system (Adaptive Business Intelligence for Mergers and Acquisitions - ABIMA), which allows for mergers and acquisitions (M&A) “target scoring” – see Introduction section on pages 1240 and 1241. Fig. 1 on page 1243 shows the system architecture of the ABIMA software, which includes a due diligence scorecard which provides target rankings to a front-end for recommendations and user feedback.
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Fig. 2 of Lau also shows a front-end GUI view of the due diligence scorecard, which includes weights of categories (Financial Strength, Sociocultural Fitness, etc.), ranging from 0 to 11.
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Page 1244, item “2.” of Lau discloses the system crawls online data sources (e.g., online financial news, RSS feeds, EDGAR database, search engines etc.) that are pertinent to the acquirer (user) and the potential targets of an M&A query. Item “3.” On page 1244 of Lau also discloses Reuters as a potential proprietary data source. Item “10.” On page 1245 of Lau the scorecard assesses a potential industrial sector by considering the most important M&A factors, and provides aggregated scores for the potential M&A targets, so as to generate a single ranked list of firms (if user desires such a format). Page 1253, under disclosed equations of Lau, discloses that a weighted combination of various financial metrics for target ranking is a common practice during due diligence inquiries.
United States Patent Application Publication No. US 20230325859 A1 (Fleming), disclosing techniques of screening and scoring entities (e.g., companies) - ¶19. ¶9 discloses they system may be used to determine data associated with a potential investment entity that a purchasing entity may be interested in acquiring. At least Fig. 1 is relevant in showing a list of companies with a total score, and screening options (e.g., filtering options) involving ‘greater than’ operators operating on data corresponding to the companies (e.g., Annual Rev):
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United States Patent Publication No. US 10600029 B2 (Wang), disclosing graphical user interfaces with criteria-based entity (e.g., company) scoring and ranking (title, Col 1, lines 5-9). Fig. 3 in further view of Col 9, line 39 – Col 10 line 54 discloses the entity scores may be determined via a machine learning model. Examiner notes the scoring and ranking of Wang is suggested to be used for professionals seeking employment with startup companies, rather than viewing the company itself as a financial security to invest into or buy-out in an M&A process – see BACKGROUND Section.
United States Patent Application Publication No. US 20140025442 A1 (Goodson), disclosing an “entity performance analysis” engine (title). At least ¶5 discloses quantitative tools may be used for analytically informing investment decisions. At least Figs. 2A, 2B, 3, and 4 are relevant.
United States Patent Application Publication No. US 20080294539 A1 (Bassuk), disclosing construction of an index for defining a universe of companies, using filter criteria provided by a user (abstract). At least Figs. 1, 3A and 3B are relevant.
United States Patent Application Publication No. US 20180114128 A1 (Libert), disclosing a machine learning based composite classification for investor decisions (abstract). At least ¶¶41, 88 of Libert are relevant. ¶41 discloses rules (criteria) that act as rules for classifying business entities. ¶88 discloses that points are weighted for each business model to form a composite business model score.
The following prior art pertinent to claims 5, 11, and 17:
Non-Patent Literature “SQL Views” to W3 Schools (W3). W3 discloses a technique to generate a virtual table (i.e., virtual dataset implement[ation]) via query language commands. W3 fairly suggests the SQL views advantageously allow for utilization data from multiple tables in a database without having to generate new hard copies of the data, thus advantageously saving space on a database. Examiner interprets “a virtual dataset” as including a collection of data that is not stored in long term memory, and/or gathered and collated from one or more disparate datasets stored in long term memory (e.g., database).
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/M.A.M./Examiner, Art Unit 3692 /MATTHEW S GART/Supervisory Patent Examiner, Art Unit 3696
1 Examiner notes actual weights are not entered into the snapshot of the GUI.