The present application, filed on or after 16 March 2013, is being examined under the first inventor to file provisions of the AIA .
DETAILED ACTION
This office action is in response to Applicant’s submission filed on 20 January 2026. THIS ACTION IS FINAL.
Status of Claims
Claims 1-20 are pending.
Claims 1-2, 7-10, 11-12, 14-16, 17-18, 20 are rejected under 35 U.S.C. 101 for double patenting.
Claim 1-20 are rejected under 35 U.S.C. 101 for being directed to a judicial exception (i.e., a law of nature, a natural phenomenon, or an abstract idea) without significantly more.
There is no art rejection for claims 1-20.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP §§ 706.02(l)(1) - 706.02(l)(3) for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
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Claims 1-2, 7-10, 11-12, 14-16, 17-18, 20 are rejected on the ground of nonstatutory provisional double patenting as being unpatentable over claims 1-19 of US-PATNET NO.11,966,826 B2. Although the claims at issue are not identical, they are not patentably distinct from each other because Claims 1-2, 7-9, 11-12, 14-15, 17-18 are rejected on the ground of nonstatutory provisional double patenting as being unpatentable over claims 1-19 of US-PATNET NO. 11,926,826 B2.
Instant Application:
18/051,134
US-PATENT:
11,926,826 B2
Claim 1:
A method comprising: determining one or more default protected attribute values for a prediction model trained based on training data including a plurality of training observations, each of the plurality of training observations including a respective plurality of training data values corresponding with a plurality of features, each of the plurality of training observations also including a respective target value, each of the plurality of training observations including a respective protected attribute value corresponding with a protected attribute feature; receiving via a communication interface a request to determine a designated predicted target value for a designated inference observation after determining the one or more default protected attribute values, the designated inference observation including a designated plurality of inference data values corresponding with the plurality of features; determining the designated predicted target value via a processor by applying the prediction model to the designated inference observation and a designated default protected attribute value of the one or more default protected attribute values; and storing the predicted target value on a storage device.
Claim 1:
A method of training and applying a prediction model comprising: determining a trained prediction model by training a prediction model based on training data including a plurality of training observations, each of the plurality of training observations including a respective plurality of training data values corresponding with a plurality of features, each of the plurality of training observations also including a respective target value, each of the plurality of training observations also including a respective protected attribute value corresponding with a protected attribute feature selected from the group consisting of: race, ethnicity, sex, gender, national origin, religion, disability status, age, genetic information, marital status, and receipt of public assistance, wherein determining the trained prediction model includes: determining one or more default protected attribute values for the prediction model, determining an overlap profile between the protected attribute feature and a designated feature of the plurality of features, the overlap profile indicating a respective degree of overlap among the plurality of training observations between first selected values corresponding to the protected attribute feature and second selected values corresponding to the designated feature determining based on the overlap profile that a designated one of the respective degrees of overlap indicates a positivity violation, and identifying one or more value replacement rules for correcting the positivity violation by replacing a feature value; receiving via a communication interface a request to determine a designated predicted target value for a designated inference observation after determining the one or more default protected attribute values, the designated inference observation including a designated plurality of inference data values corresponding with the plurality of features; updating the designated inference observation in memory to include a replacement data value determined based on the one or more value replacement rules and a designated default protected attribute value of the one or more default protected attribute values; determining the designated predicted target value via a processor by applying the prediction model to the updated designated inference observation including the replacement data value and the designated default protected attribute value; and storing the predicted target value on a storage device.
Claim 2
The method recited in claim 1, the method further comprising: determining via the processor a plurality of predicted target values including the designated predicted target value by applying the prediction model to the designated default protected attribute value and a plurality of inference observations including the designated inference observation, each of the plurality of inference observations including a respective plurality of inference data values corresponding with the plurality of features.
Claim 2
The method recited in claim 1, the method further comprising: determining via the processor a plurality of predicted target values including the designated predicted target value by applying the prediction model to the designated default protected attribute value and a plurality of inference observations including the designated inference observation, each of the plurality of inference observations including a respective plurality of inference data values corresponding with the plurality of features.
Claim 7
The method recited in claim 1, wherein the prediction model is a regression model that includes a plurality of regression coefficients corresponding with the plurality of features, a designated one or more of the plurality of regression coefficients corresponding with the protected attribute feature, wherein applying the prediction model to the inference observation involves determining a constant term based on the designated default protected attribute value and the designated one or more regression coefficients.
Claim 3:
he method recited in claim 1, wherein the prediction model is a regression model that includes a plurality of regression coefficients corresponding with the plurality of features, a designated one or more of the plurality of regression coefficients corresponding with the protected attribute feature, wherein applying the prediction model to the inference observation involves determining a constant term based on the designated default protected attribute value and the designated one or more regression coefficients.
Claim 8:
The method recited in claim 1, wherein the prediction model is a neural network that includes a plurality of neurons corresponding with the plurality of features, a designated one of the plurality of neurons corresponding with the protected attribute feature, wherein applying the prediction model to the inference observation involves determining a constant value for the designated neuron based on the designated default protected attribute value.
Claim 4:
The method recited in claim 1, wherein the prediction model is a neural network that includes a plurality of neurons corresponding with the plurality of features, a designated one of the plurality of neurons corresponding with the protected attribute feature, wherein applying the prediction model to the inference observation involves determining a constant value for the designated neuron based on the designated default protected attribute value.
Claim 9:
The method recited in claim 1, wherein the prediction model is selected from the group consisting of: a tree-based model, a neural network model, and a gradient boosting model.
Claim 5:
The method recited in claim 1, wherein the prediction model is selected from the group consisting of: a tree-based model, a neural network model, and a gradient boosting model.
Claim 10
Claim 1
Claims 11-12, 14-16, 17-18, 20 cover substantially similar claim elements as claims 1-2, 7-10, and therefore is rejected as detailed above under substantially similar rationale.
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.
Judicial Exception
Claims 1-20 of the claimed invention are directed to a judicial exception, an abstract idea, without significantly more.
Regarding claims 1-16,
(Independent Claims) With regards to claim 1 / 11, the claim recites a process / product, which falls into one of the statutory categories.
2A – Prong 1: Claim 1 / 11, in part, recites “determining one or more default protected attribute values for a prediction model trained based on training data including a plurality of training observations, each of the plurality of training observations including a respective plurality of training data values corresponding with a plurality of features, each of the plurality of training observations also including a respective target value, each of the plurality of training observations including a respective protected attribute value corresponding with a protected attribute feature; … determining the designated predicted target value … by applying the prediction model to the designated inference observation and a designated default protected attribute value of the one or more default protected attribute values” (mental process and/or math concept), as drafted, is a process that, under its broadest reasonable interpretation, covers performance of the limitation in the mind but for the recitation of generic computer components. That is, other than reciting a computing device, nothing in the claim element precludes the step from practically being performed in the mind. For example, but for the language about generic computer components, “determining”, in the limitation citied above encompasses evaluation model based on observed data which is based on observation, evaluation, judgement, and/or opinion, that could be performed by human using paper / pen / calculator. If a claim limitation, under its broadest reasonable interpretation, covers performance of the limitation in the mind but for the recitation of generic computer components, then it falls within the “Mental Processes” grouping of abstract ideas. Accordingly, the claim recites an abstract idea.
2A – Prong 2: This judicial exception is not integrated into a practical application. In particular, the claim recites the additional elements of (a) generic computer elements (like computer, a processor coupled to a memory, computer executing instruction from non-transitory computer readable medium) (merely uses a computer as a tool to perform an abstract idea (MPEP 2106.05(f))).; (b) “receiving via a communication interface a request to determine a designated predicted target value for a designated inference observation after determining the one or more default protected attribute values, the designated inference observation including a designated plurality of inference data values corresponding with the plurality of features”, “storing the predicted target value on a storage device” (insignificant extra-solution activity (MPEP2106.05(g) and/or WURC (MPEP2106.05(d)(II))). For (a), these computer components are recited at a high-level of generality (i.e., as a generic processor performing a generic computer function) which is mere instructions to implement an abstract idea on a computer, or merely uses a computer as a tool to perform an abstract idea, as discussed in MPEP 2106.05(f). For (b), these steps are recited at a high level of generality and amounts to extra-solution activity of receiving data i.e. pre-solution activity of gathering data for use in the claimed process as described in MPEP.2106.05(g). The courts have found limitations directed to obtaining information electronically, recited at a high level of generality, to be well-understood, routine, and conventional (see MPEP 2106.05(d)(II), “receiving or transmitting data over a network”, "electronic record keeping," and "storing and retrieving information in memory"). Accordingly, these additional elements do not integrate the abstract idea into a practical application because it does not impose any meaningful limits on practicing the abstract idea. The claim is directed to an abstract idea.
2B Analysis: The claim does not include additional elements that are sufficient to amount to significantly more than the judicial exception. As discussed above, the additional element of generic computer element is mere application of judiciary exception (MPEP2106.05(f)). The additional element of “receiving via a communication interface a request to determine a designated predicted target value for a designated inference observation after determining the one or more default protected attribute values, the designated inference observation including a designated plurality of inference data values corresponding with the plurality of features”, “storing the predicted target value on a storage device” is insignificant extra-solution activity (MPEP2106.05(g) and/or WURC (MPEP2106.05(d)(II)). Hence the additional elements do not add anything significant to the abstract idea. The claim is not patent eligible.
(Dependent claims)
Claims 2-10 / 12-16 are dependent on claim 1 / 11 and include all the limitations of claim 1 / 11. Therefore, claims 2-10 / 12-16 recite the same abstract ideas.
With regards to claim 2 / 12, the claim recites “determining … a plurality of predicted target values including the designated predicted target value by applying the prediction model to the designated default protected attribute value and a plurality of inference observations including the designated inference observation, each of the plurality of inference observations including a respective plurality of inference data values corresponding with the plurality of features“, which is further limitation on model data processing, and does not include additional elements that are sufficient to amount to significantly more than the judicial exception because the additional elements when considered both individually and as an ordered combination do not amount to significantly more than the abstract idea. The claim is not patent eligible.
With regards to claim 3 / 13 , the claim recites “determining a plurality of evaluation metric values indicating performance of the prediction model for each of a plurality of candidate default protected attribute values, wherein the one or more default protected attribute values are determined at least in part based on the plurality of evaluation metrics “, which is further limitation on model data processing, and does not include additional elements that are sufficient to amount to significantly more than the judicial exception because the additional elements when considered both individually and as an ordered combination do not amount to significantly more than the abstract idea. The claim is not patent eligible.
With regards to claim 4 / 14, the claim recites “wherein determining the one or more default protected attribute values involves determining an overlap profile between the protected attribute feature and a designated feature of the plurality of features, the overlap profile indicating a respective degree of overlap among the plurality of training observations between first selected values corresponding to the protected attribute feature and second selected values corresponding to the designated feature “, which is further limitation on model data processing, and does not include additional elements that are sufficient to amount to significantly more than the judicial exception because the additional elements when considered both individually and as an ordered combination do not amount to significantly more than the abstract idea. The claim is not patent eligible.
With regards to claim 5, the claim recites “determining based on the overlap profile that a designated one of the respective degrees of overlap indicates a positivity violation; and identifying one or more value replacement rules for correcting the positivity violation by replacing a feature value or a protected attribute value“, which is further limitation on model data processing, and does not include additional elements that are sufficient to amount to significantly more than the judicial exception because the additional elements when considered both individually and as an ordered combination do not amount to significantly more than the abstract idea. The claim is not patent eligible.
With regards to claim 6, the claim recites “the method further comprising: determining a replacement data value based on the one or more value replacement rules; and replacing an original feature value or a protected attribute value in the inference observation with the replacement data value“, which is further limitation on model data processing, and does not include additional elements that are sufficient to amount to significantly more than the judicial exception because the additional elements when considered both individually and as an ordered combination do not amount to significantly more than the abstract idea. The claim is not patent eligible.
With regards to claim 7, the claim recites “wherein the prediction model is a regression model that includes a plurality of regression coefficients corresponding with the plurality of features, a designated one or more of the plurality of regression coefficients corresponding with the protected attribute feature, wherein applying the prediction model to the inference observation involves determining a constant term based on the designated default protected attribute value and the designated one or more regression coefficients “, which is further limitation on model processing, and does not include additional elements that are sufficient to amount to significantly more than the judicial exception because the additional elements when considered both individually and as an ordered combination do not amount to significantly more than the abstract idea. The claim is not patent eligible.
With regards to claim 8 / 15, the claim recites “wherein the prediction model is a neural network that includes a plurality of neurons corresponding with the plurality of features, a designated one of the plurality of neurons corresponding with the protected attribute feature, wherein applying the prediction model to the inference observation involves determining a constant value for the designated neuron based on the designated default protected attribute value “, which is further limitation on model data processing, and does not include additional elements that are sufficient to amount to significantly more than the judicial exception because the additional elements when considered both individually and as an ordered combination do not amount to significantly more than the abstract idea. The claim is not patent eligible.
With regards to claim 9, the claim recites “wherein the prediction model is selected from the group consisting of: a tree-based model, a neural network model, and a gradient boosting model “, which is further limitation on model data processing, and does not include additional elements that are sufficient to amount to significantly more than the judicial exception because the additional elements when considered both individually and as an ordered combination do not amount to significantly more than the abstract idea. The claim is not patent eligible.
With regards to claim 10 / 16, the claim recites “wherein each of the training observations corresponds to a respective individual, and wherein the protected attribute is selected from the group consisting of: race, ethnicity, sex, gender, national origin, religion, disability status, age, genetic information, marital status, and receipt of public assistance “, which is further limitation on model data processing, and does not include additional elements that are sufficient to amount to significantly more than the judicial exception because the additional elements when considered both individually and as an ordered combination do not amount to significantly more than the abstract idea. The claim is not patent eligible.
Regarding claims 17-20,
(Independent Claims) With regards to claim 17, the claim recites a process, which falls into one of the statutory categories.
2A – Prong 1: Claim 17, in part, recites “determining one or more default protected attribute values for a prediction model trained based on training data including a plurality of training observations, each of the plurality of training observations including a respective plurality of training data values corresponding with a plurality of features, each of the plurality of training observations also including a respective target value, each of the plurality of training observations including a respective protected attribute value corresponding with a protected attribute feature; … determining … a designated predicted target value by applying the prediction model to a designated inference observation including a plurality of inference data values corresponding with a second plurality of features, wherein the second plurality of features excludes the protected attribute” (mental process and/or math concept), as drafted, is a process that, under its broadest reasonable interpretation, covers performance of the limitation in the mind but for the recitation of generic computer components. That is, other than reciting a computing device, nothing in the claim element precludes the step from practically being performed in the mind. For example, but for the language about generic computer components, “determining”, in the limitation citied above encompasses evaluation model based on observed data which is based on observation, evaluation, judgement, and/or opinion, that could be performed by human using paper / pen / calculator. If a claim limitation, under its broadest reasonable interpretation, covers performance of the limitation in the mind but for the recitation of generic computer components, then it falls within the “Mental Processes” grouping of abstract ideas. Accordingly, the claim recites an abstract idea.
2A – Prong 2: This judicial exception is not integrated into a practical application. In particular, the claim recites the additional elements of (a) generic computer elements (like computer, a processor coupled to a memory, computer executing instruction from non-transitory computer readable medium) (merely uses a computer as a tool to perform an abstract idea (MPEP 2106.05(f))).; (b) “receiving via a communication interface a request to determine a designated predicted target value for a designated inference observation after determining the one or more default protected attribute values, the designated inference observation including a designated plurality of inference data values corresponding with the plurality of features”, “storing the predicted target value on a storage device” (insignificant extra-solution activity (MPEP2106.05(g) and/or WURC (MPEP2106.05(d)(II))). For (a), these computer components are recited at a high-level of generality (i.e., as a generic processor performing a generic computer function) which is mere instructions to implement an abstract idea on a computer, or merely uses a computer as a tool to perform an abstract idea, as discussed in MPEP 2106.05(f). For (b), these steps are recited at a high level of generality and amounts to extra-solution activity of receiving data i.e. pre-solution activity of gathering data for use in the claimed process as described in MPEP.2106.05(g). The courts have found limitations directed to obtaining information electronically, recited at a high level of generality, to be well-understood, routine, and conventional (see MPEP 2106.05(d)(II), “receiving or transmitting data over a network”, "electronic record keeping," and "storing and retrieving information in memory"). Accordingly, these additional elements do not integrate the abstract idea into a practical application because it does not impose any meaningful limits on practicing the abstract idea. The claim is directed to an abstract idea.
2B Analysis: The claim does not include additional elements that are sufficient to amount to significantly more than the judicial exception. As discussed above, the additional element of generic computer element is mere application of judiciary exception (MPEP2106.05(f)). The additional element of “receiving via a communication interface a request to determine a designated predicted target value for a designated inference observation after determining the one or more default protected attribute values, the designated inference observation including a designated plurality of inference data values corresponding with the plurality of features”, “storing the predicted target value on a storage device” is insignificant extra-solution activity (MPEP2106.05(g) and/or WURC (MPEP2106.05(d)(II)). Hence the additional elements do not add anything significant to the abstract idea. The claim is not patent eligible.
(Dependent claims)
Claims 18-20 are dependent on claim 17 and include all the limitations of claim 17. Therefore, claims 18-20 recite the same abstract ideas.
With regards to claim 18, the claim recites “determining … a plurality of predicted target values including the designated predicted target value by applying the prediction model to a plurality of inference observations including the designated inference observation, each of the plurality of inference observations including a respective plurality of inference data values corresponding with the second plurality of features “, which is further limitation on model data processing, and does not include additional elements that are sufficient to amount to significantly more than the judicial exception because the additional elements when considered both individually and as an ordered combination do not amount to significantly more than the abstract idea. The claim is not patent eligible.
With regards to claim 19 , the claim recites “wherein the prediction model is a regression model that includes a plurality of regression coefficients, some or all of the plurality of regression coefficients corresponding with the first plurality of features, wherein the plurality of regression coefficients includes a designated one or more coefficients corresponding with the protected attribute, and wherein the designated one or more coefficients are omitted from the regression model when determining the predicted target value “, which is further limitation on model data processing, and does not include additional elements that are sufficient to amount to significantly more than the judicial exception because the additional elements when considered both individually and as an ordered combination do not amount to significantly more than the abstract idea. The claim is not patent eligible.
With regards to claim 20 , the claim recites “wherein each of the training observations corresponds to a respective individual, and wherein the protected attribute is selected from the group consisting of: race, ethnicity, sex, gender, sexual orientation, national origin, religion, disability status, age, genetic information, marital status, and receipt of public assistance“, which is further limitation on model data processing, and does not include additional elements that are sufficient to amount to significantly more than the judicial exception because the additional elements when considered both individually and as an ordered combination do not amount to significantly more than the abstract idea. The claim is not patent eligible.
Response to Argument
Applicant’s arguments filed 20 January 2026 has been fully considered but they are not fully persuasive.
Regarding 101 rejections,
1)Applicant argued that (p.8) …
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Examiner replies: As stated above by Applicant, the process claimed involve math, which is an abstract idea. Based on BRI, the math calculation involved can be performed by human with possible aid of paper / pen / calculator, as the claim does not specify what type of calculation and why it’s not feasible for human to calculate. Human can us abstract data processing model to make prediction as statisticians have been doing.
2) Applicant argued that (p.8) …
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Examiner replies: As stated above, the invention claimed include abstract idea of mental process / math in the elements claimed. Also as stated in the 101 rejection section, the additional elements are insignificant extra-solution activity (“receiving via a communication interface a request …”), WURC (“storing the predicted target value …”), and mere use computer to implement the abstract idea. There is no additional element showing integration into a practical application or adding something significantly more to the abstract idea. The 101 rejection is maintained.
3) To overcome the issues, suggest Applicant to include additional inventive concept elements into claims: (1) to show integration into a practical application; and/or (2) to show a specific physical implementation that is not WURC; (3) that is not practical for human mind to process and not WURC.
Conclusion
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 mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to TSU-CHANG LEE whose telephone number is 571-272-3567. The fax number is 571-273-3567.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Omar Fernandez Rivas, can be reached 571-272-2589.
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/TSU-CHANG LEE/
Primary Examiner, Art Unit 2128