Notice of Pre-AIA or AIA Status
The present application is being examined under the pre-AIA first to invent provisions.
DETAILED ACTION
This communication is in response to Applicant’s amendment filed 04 November 2025. Claims 1-11 were previously pending. Claims 12-14 have been added. Claims 1-14 are currently pending. The rejections are as stated below.
Double Patenting
The non-statutory 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 non-statutory double patenting rejection is appropriate where the claims at issue 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); and 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 a non-statutory double patenting ground provided the reference application or patent either is shown to be commonly owned with this application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
Effective January 1, 1994, a registered attorney or agent of record may sign a terminal disclaimer. A terminal disclaimer signed by the assignee must fully comply with 37 CFR 3.73(b).
The USPTO internet Web site contains terminal disclaimer forms which may be used. Please visit http://www.uspto.gov/forms/. The filing date of the application will determine what form should be used. A web-based e-Terminal Disclaimer may be filled out completely online using web-screens. An e-Terminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about e-Terminal Disclaimers, refer to http://www.uspto.gov/patents/process/file/efs/guidance/eTD-info-I.jsp.
Claims 1-14 are rejected on the ground of non-statutory obviousness-type double patenting as being unpatentable over claims 1-5 of US 11,449,941 B2. Although the conflicting claims are not identical, they are not patentably distinct from each other because they recite means or steps that are substantially the same and that would have been obvious to one of ordinary skill in the art.
Claims 1-14 essentially repeat all the features listed in the Patent listed above, with the exception of removing several claim limitations. Therefore, the omission of an element with a corresponding loss of function is an obvious expedient. See In re Karlson, 136 USPQ 184 and Ex parte Rainu, 168 USPQ 375.
For these reasons, claims 1-14 of the instant application are not identical to claims 1-5 of US 11,449,941 B2, but they are not patently distinct.
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 1-14 are rejected under 35 U.S.C. 101 because the claimed invention is directed to non-statutory subject matter. In particular, claims are directed to a judicial exception (abstract idea) without significantly more.
Analysis has been updated based on the new 2019 Patent Eligibility Guidance (2019 PEG).
The claims are directed to a method and systems, which are statutory categories of invention.
Under Step 2A, Prong One, the claims are directed to an abstract idea of administrating a customizable annuity product through conducting algorithms or mathematical formulas on a computer. The claims recite the steps of generate an indication of an account value of a customizable fixed annuity product, and indications of a plurality of investment sleeves, wherein each investment sleeve indication includes, in a screen area, an indication of one of a plurality of indices to which the investment sleeve is correlated, and which enable selection of a number of investment sleeves of the customizable fixed annuity product present each of the indices to which one of the investment sleeves may be correlated for selection; and enable adjustment of weight settings indicative of weights of investment sleeves, wherein, responsive to a user attempt to set a weight for one of the plurality of investment sleaves to a value greater than a predetermined maximum weight based on an index to which the one of the plurality of investment sleeves is correlated, display a warning dialog box, and to enable generation of a further sleeve, enforce one or more restrictions on combinations of an index to which the generated further sleeve is correlated and an index to which one of the plurality of investment sleeves is correlated; receive, via one or more requests, user input data indicative of user input, from a plurality of users, wherein, the user input data indicates for each of the plurality of investment sleeves of each of the products, an index to which the investment sleeve is correlated, wherein a different index is correlated with each of at least two of the investment sleeves: and for each of the investment sleeves, a user determined weight associated with the investment sleeve relative to others of the plurality of investment sleeves: and funds from the customizable fixed annuity product are not invested in the indices to which the investment sleeves are correlated; store information related to the customizable fixed annuity product, wherein the information related to the customizable fixed annuity product includes: a yield limiting parameter, a loss limiting parameter, wherein the loss limiting parameter indicates a guaranteed minimum rate of return; for each of the investment sleeves, the index to which the investment sleeve is correlated, according to the user input data; and for each of the investment sleeves, the weight associated with the investment sleeve, according to the user input data; read the information related to the customizable fixed annuity product; generate based on said read information, a time window segmented into a plurality of credit period intervals, defining an accumulation window, in which the purchaser of the customizable fixed annuity product is enabled to pay additional premiums; and generate a loop that tests demands to exercise modifications to attributes of said customizable fixed annuity product with the end of each of said plurality of credit periods within said accumulation window; receive an indication at the end of each credit period interval for the customizable fixed annuity product, to compute an updated account value for the customizable fixed annuity product, wherein the updated account value is determined by generating messages; receiving one or mare response messages responsive to the one or more messages, the one or more response messages including value data for each of the indices to which the investment sleeves are correlated; determining, based in part on data in the received one or more response messages, for each of the investment sleeves, a percentage change in value for the index to which the investment sleeves is correlated during the credit period; determining, for each of the investment sleeves, a weighted percentage change for the investment sleeve, determining a total percentage change for the investment sleeves, wherein the total percentage change is a sum of the weighted percentage changes for the investment sleeves: applying the determined total percentage change io the account value associated with the customizable fixed annuity product at a beginning of the credit period to determine a preliminary new account value; and determining whether either one of the yield limiting parameter and the loss limiting parameter is applicable, and responsive to determining that one of the yield limiting parameter and the loss limiting parameter is applicable, adjusting the preliminary new account value to determine the updated account value, and, responsive to determining that neither of the yield limiting parameter and the loss limiting parameter is applicable, determining that the updated account value is the preliminary account value: storing the updated account value for the customizable fixed annuity product; the instructions further determine one or more transactions responsive to received user allocations, and to transmit messages having data indicative of instructions to execute the transactions; wherein prior to purchase of the customizable fixed annuity product; enable selection of a number of investment sleeves of the customizable fixed annuity product; present each of the indices to which one of the investment sleeves may be correlated for selection; receive user selections of the indices to which each of the investment sleeves is to be correlated; receive user selections of weight settings indicative of weights of the investment sleeves; and, subsequent to receipt of the user selections of the indices and weight settings for the investment sleeves, present an agreement for purchase of a corresponding customizable fixed annuity product for entry by a customer.
The limitations as drafted, are a process that, under its broadest reasonable interpretation, covers performance of a certain method of organizing a human activity but for the recitation of generic computer components. That is, other than reciting “a web site module configured to generate graphical user interfaces, including links and user interface elements, at least one communication interface, one or more wired or wireless networks, one or more remote client devices, web browser modules; a database stored on one or more computer-readable media, at least one computer processor, a memory device in communication with the computer processor, a programming loop, a financial data server system, an electronic trading platform” nothing in the claim element precludes the step from practically being performed in the mind or by a human analog. For example, but for the “by the at least one computer processor” and via the graphical user interface language, adjustments of weight settings, determining yield parameters, determining percentage changes in the context of this claim encompasses the user manually determining a yield, rate of returns, percentage changes of investment sleeves, changes in account values covers the performance of a human activity in the financial practice realm. Similarly, the limitation of adjusting weights and selecting number of investment sleeves, adjusting new account values, determining yield parameters, as drafted, is a process that, under its broadest reasonable interpretation, covers performance of the limitation by a human investment analyst or financial professional but for the recitation of generic computer components.
Determining a rate of return, yields, and adjusting financial products and percentage weights of investment in different securities or sleeves to measure performance of the investments in order to re-balance, optimize them to either improve performance or mitigate risk of losses in the future or to achieve a financial goals is consistent with a commercial interaction between two parties such as a financial advisor advising a client on how the client’s portfolio is performing and what actions can be taken to protect the investment or increase returns. This also includes a fundamental economic principle of mitigating risk, or hedging based on performance of investments. If a claim limitation, under its broadest reasonable interpretation, covers performance of certain methods of organizing human activity or performance of the limitations within the mind, but for the recitation of generic computer components, then it falls within the “Mental Processes” or “Certain Methods of Organizing Human Activities” grouping of abstract ideas. Accordingly, the claim recites an abstract idea.
Under Step 2A, Prong Two, the judicial exception is not integrated into a practical application. In particular, the claim only recites additional elements of – using a computer processor, memory device, communication interface, a graphical user interface, a web site module (web site module is further configured to, prior to purchase of the customizable fixed annuity product, generate a graphical user interface including links and user interface elements to (a) enable selection via the graphical user interface of a number of investment sleeves of the customizable fixed annuity product; (b) present each of the indices to which one of the investment sleeves may be correlated for selection via the graphical user interface; (c) receive user selections of the indices to which each of the investment sleeves is to be correlated; (d) receive user selections of weight settings indicative of weights of the investment sleeves; and, subsequent to receipt via the graphical user interface of the user selections of the indices and weight settings for the investment sleeves, present via the graphical user interface an agreement for purchase of a corresponding customizable fixed annuity product for entry by a customer via the user interface) to perform the steps of the claim. The screen area, web site module, adjustment, links, and user interface elements, performing the steps of permitting adjustment, permitting selection, presenting indices, and being further operative to enforce one or more restrictions are all conducted at a high level of generality, where the result or outcome of using the elements is claimed, rather than their contribution to improving the computer, or graphical user interface itself. The processor in both steps is recited at a high-level of generality (i.e., as a generic processor performing a generic computer function of determining various values based on executing calculations, such that it amounts no more than generally linking the abstract idea to a technical environment. An interface “permitting” a user to perform a data entering or data gathering step, does not integrate the abstract idea into a practical application. Additionally, the use of links does not solve a technical problem with the interface or with the links. Here the links being activated only during certain periods of time is not a technical improvement, rather linking the abstract idea of enforcing terms of a contract with the investment firms. See specification paragraph 49. For example, if modifications to an insurance or investment account may only be allowed during certain time periods. This is not a technical problem, rather an issue of compliance with a legal obligation or terms of a financial obligation. Specification 49: “may restrict user selection in other ways as required by the insurance company”. The links, accordingly, do not meaningfully limit the claims, rather limit the abstract idea to the internet (hyperlink) field of use.
The generation of a graphical user interface that includes links and other user elements. These elements and links are descriptive of content on the interface and do are not created to solve a technical problem. The ability of a user to select indices and enter weights are interpreted as data entry or data collection (e.g. “receive user selection”). Data collection is not integrating the abstract idea into a practical application. See MPEP 2106.05 (d) and (g).
The ability to enter data into an interface (permitting adjustments via the graphical user interface) does not integrate the abstract idea into a practical application because it does not impose any meaningful limits on practicing the abstract idea, rather an attempt to generally link the abstract idea to an interface or a data collection mechanism at a high level of generality. The addition of such an interface, processor, memory, communication interface and link elements are interpreted as incidental recited in a manner that does not alter or affect how the investments are managed. The determination of yields, rate of returns, and adjustments based on financial computations, are not altered by the interface or processor. The interface is not interpreted as being integrated into the claim as a whole, rather a means to limit the judicial exception to a technological environment.
Thus, the limitations are interpreted as a Field of Use and links the abstract idea to a technical environment and does not amount to significantly more as evidenced by MPEP 2106.05(h).
The ability to permit selection via a graphical user interface, presenting choices on a graphical user interface that can be selected, permitting adjustments of weight settings indicative of weights of the investment sleeves via the graphical user interface add nothing more than the use of a generic interface to display elements to allow data associated with the elements to be entered, collected and transmitted do not integrate the abstract idea into a practical application.
A selection field displayed on an interface of a user device is no more than accepting data through a data entry means (data collection or data gathering) and transmitting the data through the interface. There is no improved functionality directly related to the graphical user interface’s structure that resolves a specifically identified problem in the prior state of the art. Rather the steps are interpreted as limiting the abstract idea to a technical environment in a generic manner.
The additional limitations of receiving from the financial data server system one or more response messages response to the one or more query message, the one or more response messages including value data for each of the indices to which the investment sleeves are correlated, simply describes what the data includes, and does not limit the claim in a meaningful way so as to integrate the abstract idea into a practical application.
The interface selection fields are similar to what the Courts describe as an example of a limitation that does no more than generally link a judicial exception to a particular technological environment (Affinity Labs of Texas v. DirecTV, LLC, 838 F.3d 1253, 120 USPQ2d 1201 (Fed. Cir. 2016)). In Affinity Labs, the claim recited a broadcast system in which a cellular telephone located outside the range of a regional broadcaster (1) requests and receives network-based content from the broadcaster via a streaming signal, (2) is configured to wirelessly download an application for performing those functions, and (3) contains a display that allows the user to select particular content. 838 F.3d at 1255-56, 120 USPQ2d at 1202. The court identified the claimed concept of providing out-of-region access to regional broadcast content as an abstract idea, and noted that the additional elements limited the wireless delivery of regional broadcast content to cellular telephones (as opposed to any and all electronic devices such as televisions, cable boxes, computers, or the like). 838 F.3d at 1258-59, 120 USPQ2d at 1204. Although the additional elements did limit the use of the abstract idea, the court explained that this type of limitation merely confines the use of the abstract idea to a particular technological environment (cellular telephones) and thus fails to add an inventive concept to the claims. 838 F.3d at 1259, 120 USPQ2d at 1204.
Under Step 2B, the claims do not recite any limitations that qualify as significantly more than the abstract idea. The claims recite the additional features of a web site module, a communication interface, graphical user interfaces, wired or wireless networks. The interfaces, processors, processing system, communication interface configured to transmit information over the wired or wireless networks are recited at a high level of generality, performing generic functions in a generic manner. The interfaces displaying data, the web site displaying a web page are functions that the elements normally perform. Transmitting information by a communications interface has been found as routine, and conventional of a communications interface or network adapter.
A web site module configured to generate graphical user interfaces including, on a single screen…links and user interface elements, active only during selected intervals, to generate options for selection of an alternative index, to permit adjustment of weight settings, the user interface element…to permit generation of a further sleeve; at least one communication interface configured to; transmit, via one or more wired or wireless networks, the graphical user interfaces, to one or more remote client devices, for display on web browser modules; are interpreted as generically displaying data such as links and other interface elements.
The additional limitations of generating an interface for a user to enter weights and select indices (enter indices) is no more than using the interface as a tool or apply an exception to a computer. 2106.05(f).
Displaying a link is interpreted as displaying data, which is recited at a high level of generality, is a interpreted as limiting the abstract idea to a field of use (such as a website or webpage) also (see MPEP 2106.05(f) generating a second menu from a first menu (Apple v Ameranth); a display that allows a user to select content (Affinity Labs) is provided as evidence that allowing selections and displaying data is a normal function of a display. To receive, via one or more HTTP POST requests is interpreted as routine data gathering and transmittal, founds not to be significantly more by the courts (Ultramercial); (Electric Power Group).
The ability to permit selection via a graphical user interface, presenting choices on a graphical user interface that can be selected, permitting adjustments of weight settings indicative of weights of the investment sleeves via the graphical user interface add nothing more than the use of a generic interface to display elements to allow data associated with the elements to be entered, collected and transmitted for processing by a generic computer in a generic manner.
The limitation is interpreted as a Field of Use and links the abstract idea to a technical environment and does not amount to significantly more as evidenced by MPEP 2106.05(h).
A selection field displayed on an interface of a user device is no more than accepting data through a data entry means and transmitting the data through the interface. There is no improved functionality directly related to the graphical user interface’s structure that resolves a specifically identified problem in the prior state of the art. Rather the steps are interpreted as limiting the abstract idea to a technical environment in a generic manner.
The additional limitations of receiving from the financial data server system one or more response messages response to the one or more query message, the one or more response messages including value data for each of the indices to which the investment sleeves are correlated, simply describes what the data includes, and does not limit the claim in a meaningful way so as to amount to significantly more.
The instant claims here, contain a display that allows the user to select weights, therefore is analogous to what the Courts find as a field of use.
Storing information does not add any meaningful limitations to the claims. The type of data store is also not interpreted as significantly more.
Generic computer components recited as performing generic computer functions that amount to no more than implementing the abstract idea with a computerized system and generally linking them to a technical environment. The use of generic computer components to transmit information through an unspecified interface does not impose any meaningful limit on the computer implementation of the abstract idea. Thus, taken alone, the additional elements do not amount to significantly more than the above-identified judicial exception (the abstract idea). Looking at the limitations as an ordered combination adds nothing that is not already present when looking at the elements taken individually. There is no indication that the combination of elements improves the functioning of a computer or improves any other technology.
The claimed invention does not recite improvement to another technology or another technical field or the server.
The claimed invention does not recite any improvement to the functioning of the computer system itself.
There is no recitation of any limitation that is interpreted as significantly more in the dependent claims. While these claims may have a narrower scope than the representative claims, no dependent claim contains an “inventive concept” that transforms the corresponding claim into a patent-eligible application of the otherwise ineligible abstract idea. For example, describing what the stored information comprises, does not render the claim statutory.
The elements of the instant process, when taken alone, each execute in a manner routinely and conventionally expected of these elements. The elements of the instant process, when taken in combination, together do not offer substantially more than the sum of the functions of the elements when each is taken alone. That is, the elements involved in the recited process undertake their roles in performance of their activities according to their generic functionalities which are well-understood, routine and conventional. The elements together execute in routinely and conventionally accepted coordinated manners and interact with their partner elements to achieve an overall outcome which, similarly, is merely the combined and coordinated execution of generic computer functionalities which are well-understood, routine and conventional activities previously known to the industry.
The claim as a whole, does not amount to significantly more than the abstract idea itself. The claim does not effect an improvement to another technology or technical field; the claim does not amount to an improvement to the functioning of a computer itself; and the claim does not move beyond a general link of the use of an abstract idea to a particular technological environment.
The claims are not directed to a computer-based solution for solving a computer-based problem.
Accordingly, the claims do not recite meaningful limitations that transform the judicial exception into a patent eligible application such that the claim amounts to significantly more than the judicial exception itself.
The analysis above applies to the statutory category of invention of claims 1, 6 and 9. Furthermore, dependent claims 2-5, 7, 8, 10 and 11-14 do not add limitations that meaningfully limit the abstract idea. The dependent claims do not impart patent eligibility to the abstract idea of the independent claims. Therefore, none of the dependent claims alone or as an ordered combination add limitations that qualify as integrating the abstract idea into a practical application.
Lastly, dependent claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception because the additional elements are simply steps performed by a generic computer. The claim merely amounts to the application or instructions to apply the abstract idea on a processor, and is considered to amount to nothing more than requiring a generic server to merely carry out the abstract idea itself.
Accordingly, claims 1-14 are rejected as ineligible for patenting under 35 U.S.C. 101 based upon the same analysis.
Response to Arguments
The non-statutory double patenting rejection is maintained, since Applicant requested that the double patenting rejection be held in abeyance until the claimed invention is deemed allowable.
Applicant's arguments with respect to 35 USC § 101 directed to non-statutory subject matter have been fully considered but they are not persuasive.
Examiner respectfully disagrees. Claims 1-14 are rejected under 35 U.S.C. 101 because the claimed invention is directed to a judicial exception (abstract idea) without significantly more.
The proposed amendments do not overcome the 35 U.S.C. 101 rejection. Applicant amended the claims to include newly added claims 12-14. However, the same updated analysis based on the new 2019 Patent Eligibility Guidance (2019 PEG) applies to the newly added claims 12-14 as discussed above.
The claims generally link the abstract idea and the gathering of information and determining an output based on analyzing the gathered information. The claims apply the abstract idea on the computer system at a high-level of generality such that it amounts to no more than mere instructions to apply the exception using a generic computer component. The claims are directed to an abstract idea.
Applicant argues in substance that the claims are not directed to a fundamental economic practice such as hedging or investment management.
Examiner respectfully disagrees, as mentioned above, the claims are directed to an abstract idea of administrating a customizable annuity product through conducting algorithms or mathematical formulas on a computer (see Applicant claims and spec. [0005-0006]. Furthermore, the analysis above with respect to (Step 2A, Prong One) clearly explains the reasons why the claim limitations fall within both “mental process” and “Certain methods of organizing human activity” Therefore, it seems reasonable for the Examiner to group the abstract idea under “mental process” and “Certain methods of organizing human activity” as enumerated in Section I of the 2019 PEG.
Under the 2019 PEG, Step 2A, prong two, integration into a practical application requires an additional element(s) or a combination of additional elements in the claim to apply, rely on, or use the judicial exception in a manner that imposes a meaningful limit on the judicial exception, such that the claim is more than a drafting effort designed to monopolize the exception. Limitations that are not indicative of integration into a practical application are those that are 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). The instant claims do not attempt to solve an unconventional technological solution. Using the processor as a tool to implement the abstract idea and the way the information is processed and displayed does not make it less abstract. The claimed use of computer elements recited at a high level of generality is an attempt to limit the abstract idea to a particular technological environment. Accordingly, these additional elements do not integrate the abstract idea into a practical application because they do not impose any meaningful limits on practicing the abstract idea.
The focus of the claims in the present case is not on an improvement in computers as tools, but on certain independently abstract ideas that use computers as tools. The claims here are not directed to a specific improvement to computer functionality. Rather, they are directed to the use of generic technology in a well-known environment, without any claim that the invention reflects an inventive solution to any computer specific problem.
The courts found that “… if a patent’s recitation of a computer amounts to a mere instruction to ‘implement[t]’ an abstract idea ‘on . . . a computer,’ that addition cannot impart patent eligibility.” Alice Corp., 134 S.Ct. at 2358. The claimed invention does not indicate that specialized computer hardware is necessary to implement the claimed systems, similar to the claims at issue in Alice Corp. See Alice Corp., 134 S.Ct. at 2360 (determining that the hardware recited in the claims was “purely functional and generic,” and did not “offer [] a meaningful limitation beyond generally linking the use of the [method] to a particular technological environment, that is, implementation via computers”).
A claim may be found to be eligible if it integrates a judicial exception into a practical application as cited by Applicant. However, examiner notes that "claiming the improved efficiency/accuracy inherent with applying the abstract idea on a computer" does not provide an inventive concept (see MPEP §2106.05(f)(2).) Claiming improved data processing efficiency inherent with applying any improvement to the judicial exception itself on a computer does not provide an inventive concept. The claims do not integrate the judicial exception into a practical application.
In response to the Enfish argument, the claims here are unlike the claims in Enfish. In Enfish, the claims at issue focused not on asserted advances in uses to which existing computer capabilities could be put, but on a specific improvement-a particular database technique-in how computers could carry out one of their basic functions of storage and retrieval of data. In Enfish v. Microsoft, the United States Court of Appeals for the Federal Circuit decision… that “the self-referential table recited in the claims on appeal is a specific type of data structure designed to improve the way a computer stores and retrieves data in memory” which is “directed to a specific implementation of a solution to a problem in the software arts.” See also details in re TLI Communication LLC.
Applicant’s citation of McRo is non-persuasive because the claims at issue in McRo are readily distinguishable over the instant claims.
In McRO, the Federal Circuit held the claimed methods of automatic lip synchronization and facial expression animation using computer-implemented rules patent eligible under 35 U.S.C. § 101, because they were not directed to an abstract idea. The basis for the McRO court's decision was that the claims were directed to an improvement in computer-related technology (allowing computers to produce "accurate and realistic lip synchronization and facial expressions in animated characters" that previously could only be produced by human animators), and thus did not recite a concept similar to previously identified abstract ideas. In McRO, timing phonemes in milliseconds represents both the problem being solved and the inventive solution. On the other hand, timing in the instant application represents nothing more than a sequence of events that occur time – a feature common to most process/method patent applications. The timing is not critical to accomplishing the process. For example, a few second delay in a network transmission will not materially affect the outcome of the ordered combination of method steps. Timing is not a problem introduced by the technology itself or arising in the realm of computer networks that the instant application seeks to solve...”
In Core Wireless Licensing 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 “a computing device being configured to display on the screen a main menu listing at least a first application, and additionally being configured to display on the screen an application summary window that can be reached directly from the main menu, wherein the application summary window displays a limited list of at least one function offered within the first application, each function in the list being selectable to launch the first application and initiate the selected function, and wherein the application summary window is displayed while the application is in an un-launched state.”. 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.” In the instant invention, 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. Thus, if a patent’s recitation of a computer amounts to a mere instruction to “implemen[t]” an abstract idea “on ... a computer,” that addition cannot impart patent eligibility. This conclusion accords with the preemption concern that undergirds our § 101 jurisprudence. Given the ubiquity of computers, wholly generic computer implementation is not generally the sort of “additional featur[e]” that provides any “practical assurance that the process is more than a drafting effort designed to monopolize the [abstract idea] itself.”
In contrast, the instant claims provide a generically computer-implemented solution to a business-related or economic problem and are thus incomparable to the claims at issue in Enfish, McRO and core wireless. 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. The claims here are not directed to a specific improvement to computer functionality nor an inventive solution to any computer specific problem.
Applicant further cites Berkheimer, presuming that Examiner took the position that the claims describe well-understood, routine and conventional activities. Examiner respectfully disagrees. Examiner did not indicate that the claims describe well-understood, routine and conventional activities in the 101 rejection in this particular case. Rather, Examiner identified the focus of the invention, and determined that it is directed to an abstract idea and the use conventional “off the shelf” computer to implement the abstract idea.
Furthermore, Examiner relies on what the courts have recognized, or those of ordinary skill in the art would recognize, as elements that describe well-understood, routine, and conventional activity in particular fields. For example, 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); TLI Communications LLC v. AV Auto. LLC, 823 F.3d 607, 610, 118 USPQ2d 1744, 1745 (Fed. Cir. 2016) (using a telephone for image transmission); OIP Techs., Inc., v. Amazon.com, Inc., 788 F.3d 1359, 1363, 115 USPQ2d 1090, 1093 (Fed. Cir. 2015) (sending messages over a network); buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1355, 112 USPQ2d 1093, 1096 (Fed. Cir. 2014) (computer receives and sends information over a network); but see DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245, 1258, 113 USPQ2d 1097, 1106 (Fed. Cir. 2014) (“Unlike the claims in Ultramercial, the claims at issue here specify how interactions with the Internet are manipulated to yield a desired result‐‐a result that overrides the routine and conventional sequence of events ordinarily triggered by the click of a hyperlink.” (emphasis added)). In this case, the use of computers and networks is described at a high level of generality, or as an insignificant extra-solution activity that cannot be considered as an improvement to network/computer technology.
In the instant case, the claims’ invocation of processors, networks, and databases does not transform the claimed subject matter into patent-eligible applications. The claims at issue do not require any nonconventional computer, network, or database components, or even a “non-conventional and non-generic arrangement of known, conventional pieces,” but merely call for performance of the claimed management of rehypothecated collateral allocations “on a set of generic computer components”. Bascom, 2016 WL 3514158, at *6–7.
Applicant’s citation of Amdocs is non-persuasive because the claims at issue in Amdocs are readily distinguishable over the instant claims. In Amdocs the courts construed “enhance” as being dependent upon the invention’s distributed architecture. 761 F.3d at 1338–40 (quoting ’065 patent at 7:51–57, 10:45–50, 7:7–8). “… We construed “enhance” as meaning “to apply a number of field enhancements in a distributed fashion.” The enhancing limitation depends not only on the invention’s distributed architecture, but also depends upon the network devices and gatherers—even though these may be generic—working together in a distributed manner. The patent explains that field enhancements are defined by network service providers for each field in which the network service provider wants to collect data. ’065 patent at 12:43–47. “A field enhancement specifies how the data obtained from the trigger of the enhancement procedure is processed before it is placed in a single field in the central database 175.” Id. at 11:2–5.”
The claims as a whole do not include additional elements that are sufficient to amount to significantly more than the judicial exception because the additional elements are generic computer components claimed to perform their basic functions. The processor is a general-purpose processor that performs general-purpose functions. The recitation of the claimed limitations amounts to mere instructions to implement the abstract idea on a computer (using the processor as a tool to implement the abstract idea). Taking the additional elements individually and in combination, each step of the process performs purely generic computer functions. As such, there is no inventive concept sufficient to transform the claimed subject matter into a patent-eligible application. The claim does not amount to significantly more than the abstract idea itself. The claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception because the additional elements are simply a generic recitation of a computer processor performing its generic computer functions. Accordingly, claims are ineligible.
Dependent claims 2-5, 7, 8, and 10-14 do not resolve the issues raised in the independent claims. The dependent claims do not add limitations that meaningfully limit the abstract idea.
The dependent claims do not impart patent eligibility to the abstract idea of the independent claims. The claims merely amount to the application or instructions to apply the abstract idea on a processor, and is considered to amount to nothing more than requiring a generic processor to merely carry out the abstract idea itself. Therefore, none of the dependent claims alone or as an ordered combination add limitations that qualify as significantly more than the abstract idea.
Accordingly, claims 1-14 are rejected as ineligible for patenting under 35 U.S.C. 101.
For these reasons the rejection under 35 USC § 101 directed to non-statutory subject matter set forth in this office action is maintained.
Conclusion
Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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 extension fee 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 date of this final action.
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Respectfully Submitted
/HANI M KAZIMI/
Primary Examiner, Art Unit 3691