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 .
Claim Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Such claim limitation(s) is/are:
In claim 12, applicant recites “a platform” that:
measures performance of segments of the business,
determines qualification criteria for performance of the segments of the business,
rates the performance of the business,
determines market opportunities for the business based on performance ratings for the business, and
distributes resources to the business for acceptance in response to the market opportunities
The term “platform” does not recite recognized structure to a device and is interpreted to be a generic placeholder equivalent to “means”. The generic placeholder of “platform” is coupled to functional language that is reciting a function(s) to be performed, and there is no modifying structure to the recited limitation that would prevent the limitation from invoking 112f. The claim language appears to pass the 3 prong test for determining if 112f is being invoked.
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
If applicant does not intend to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1-20 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
The first paragraph of 35 U.S.C. § 112 contains a written description requirement that is separate and distinct from the enablement requirement. AriadPharms., Inc. v. EliLilly & Co., 598 F.3d 1336, 1340 (Fed. Cir. 2010) (en banc). To satisfy the written description requirement, the specification must describe the claimed invention in sufficient detail that one skilled in the art can reasonably conclude that the inventor had possession of the claimed invention. Vas-Cath, Inc. v. Mahurkar, 935 F.2d 1555, 1562-63 (Fed. Cir.1991). Specifically, the specification must describe the claimed invention in a manner understandable to a person of ordinary skill in the art and show that the inventor actually invented the claimed invention. Vas-Cath, 935 F.2d at 1562-63; Ariad, 598 F.3d at 1351. The written description requirement of 35 U.S.C. 112, first paragraph applies to all claims including original claims that are part of the disclosure as filed. Ariad, 598 F.3d at 1349. As stated by the Federal Circuit, "[a]lthough many original claims will satisfy the written description requirement, certain claims may not." Ariad, 598 F.3d at 1349; see also LizardTech, Inc. v. Earth Res. Mapping, Inc., 424 F.3d 1336, 1343-46 (Fed.Cir. 2005); Regents of the University of Cal. v. Eli Lilly & Co., 119 F.3d 1559, 1568 (Fed. Cir. 1997). For instance, generic claim language in the original disclosure does not satisfy the written description requirement if it fails to support the scope of the genus claimed. See Ariad, 598 F.3d at 1350; Enzo Biochem, Inc. v. Gen-Probe, Inc., 323 F.3d 956, 968 (Fed. Cir. 2002) (holding that generic claim language appearing in ipsis verbis in the original specification did not satisfy the written description requirement because it failed to support the scope of the genus claimed); Fiers v. Revel, 984 F.2d 1164, 1170 (Fed. Cir. 1993) (rejecting the argument that "only similar language in the specification or original claims is necessary to satisfy the written description requirement"). In addition, original claims may fail to satisfy the written description requirement when the invention is claimed and described in functional language but the specification does not sufficiently identify how the invention achieves the claimed function. Ariad, 598 F.3d at 1349 ("[A]n adequate written description of a claimed genus requires more than a generic statement of an invention's boundaries.") (citing Eli Lilly, 119 F.3d at 1568).
The independent claims 1, 12, and 16 recite that the performance of a business is rated using qualification criteria and that market opportunities are determined based on the performance ratings. Upon a review of the specification for guidance as to how this step is being performed, it is noted that there is no actual discussion of how the invention is rating the performance of the business and how the resulting market opportunities are being determined. On page 25 of the specification it is disclosed that an evaluator is used to analyze the business data and to determine a performance quotient. However, nothing specific is disclosed beyond the functional end result that is being claimed. The applicant has not provided an adequate written description of the invention such that one of skill in the art would find that the applicant was in possession of the claimed invention.
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 3, 8, 12-15, 17, 20, are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
For claims 3, 17, there is no antecedent basis for “the rating quotient”, as none has been recited in claims 1 or 16. It is not clear what this is referring to and how the independent claims are seen as providing antecedent basis support for the claimed terminology. This renders the claim indefinite.
For claims 8, 20, it is not clear what it means to recite “gamifying the performance ratings”. The performance ratings are just static data in the form of a rating. To gamify means that one is making an activity more like a game in order to make it more engaging or enjoyable. Keeping that in mind, what does it mean to gamify a rating? This dose not appear to make any sense and is considered to be indefinite. One can gamify an activity but it is not clear what it means to gamify a rating. Prior art cannot be applied to this claim due to it indefiniteness. The specification does not provide any further guidance that makes it clear what this language is trying to claim.
For claim 12, due to the claim invoking 112f, the specification must contain an algorithm that sets forth the steps that are being taken to accomplish the recited functions. This has not been done. Claim 12 recites that the performance of a business is rated using qualification criteria and that market opportunities are determined based on the performance ratings. Upon a review of the specification for guidance as to how this step is being performed, it is noted that there is no actual discussion of how the invention is rating the performance of the business and how the resulting market opportunities are being determined; therefore, no algorithm has been set forth and this renders the scope of the claim indefinite. The written description fails to disclose the corresponding structure, material, or acts for performing the entire claimed function and to clearly link the structure, material, or acts to the function. Therefore, the claim is indefinite and is rejected under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph.
Applicant may:
(a) Amend the claim so that the claim limitation will no longer be interpreted as a limitation under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph;
(b) Amend the written description of the specification such that it expressly recites what structure, material, or acts perform the entire claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(c) Amend the written description of the specification such that it clearly links the structure, material, or acts disclosed therein to the function recited in the claim, without introducing any new matter (35 U.S.C. 132(a)).
If applicant is of the opinion that the written description of the specification already implicitly or inherently discloses the corresponding structure, material, or acts and clearly links them to the function so that one of ordinary skill in the art would recognize what structure, material, or acts perform the claimed function, applicant should clarify the record by either:
(a) Amending the written description of the specification such that it expressly recites the corresponding structure, material, or acts for performing the claimed function and clearly links or associates the structure, material, or acts to the claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(b) Stating on the record what the corresponding structure, material, or acts, which are implicitly or inherently set forth in the written description of the specification, perform the claimed function. For more information, see 37 CFR 1.75(d) and MPEP §§ 608.01(o) and 2181.
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.
The claims recite a method, a system, and a platform that comprises a processor and memory to store instructions; therefore, the claims pass step 1 of the eligibility analysis.
For step 2A, the claim(s) recite(s) an abstract idea of analyzing business information to rate the performance of a business so that market opportunities can be offered, such as education or training or grants (see claim 6 that is evidence of the scope of the claim in this regard).
Using claim 1 as a representative example that is applicable to claims 12 and 16, the abstract idea is defined by the elements of:
generating a business profile for a business;
connecting a business profile to a platform;
receiving business information from live and historical sources for the business profile;
measuring performance of segments of the business;
determining qualification criteria for performance of the segments of the business;
rating the performance of the business utilizing the qualification criteria;
determining market opportunities for the business based on performance ratings for the business; and
distributing resources to the business for acceptance in response to the market opportunities
The above limitations are reciting a process by which business information is analyzed to help support businesses such that received business information is analyzed, performance of the business is being measured and rated so that market opportunities can be offered to the business. This is claiming the concept of operations research by analyzing the performance of a business so that improvements can be made and so that investment opportunities may materialize. This is considered to be a certain method of organizing human activities type of abstract idea that is reciting a commercial interaction. Businesses analyze their operations to improve, and this known in the field as being “operations research”. Additionally, the claimed steps are fully capable of being performed by people, so the claim is reciting human activity. A person can receive a profile for a business and can analyze the received information to arrive at a rating and so that market opportunities can be offered. Absent the recitation to using a platform for claim 1 for connecting the business profile, the remainder of the method steps are not tied to any technology at all and can be practiced manually be people, with no technology at all.
For claim 1 the additional elements are the recitation to “a platform”, which has been treated as being the use of some kind of generic computing device.
For claim 12, the additional elements are the plurality of electronic devices executing the data application, and a platform that is accessible to the electronic devices.
For claim 16, the additional elements are the recited processor and memory that stores instructions to perform the steps that define the abstract idea.
This judicial exception is not integrated into a practical application (2nd prong of eligibility test for step 2A) because the additional elements of the claim when considered individually and in combination, amount to the use of computing device(s) (platform, user devices, processor with memory) that are being used as a tool to execute the abstract idea, see MPEP 2106.05(f). The claim is simply instructing one to practice the abstract idea by using a generically recited platform, user device, and/or with a processor with memory to perform steps that define the abstract idea. This does not amount to more than a mere instruction to implement the abstract idea on a computer connected via a network with a user device. This is indicative of the fact that the claim has not integrated the abstract idea into a practical application and therefore the claim is found to be directed to the abstract idea identified by the examiner.
For step 2B, the claim(s) does/do not include additional elements that are sufficient to amount to significantly more than the judicial exception because they do not amount to more than simply instructing one to practice the abstract idea by using a generically recited computing device with a processor and memory, and/or a user device to perform steps that define the abstract idea. This does not render the claims as being eligible. See MPEP 2106.05(f). The rationale set forth for the 2nd prong of the eligibility test above is also applicable to step 2B in this regard so no further comments are necessary. This is consistent with the PEG found in the MPEP 2106.
For claim 2, the claimed registering of the profile is considered to be reciting more about the same abstract idea of claim 1. The association (registration) of a device to a business profile is part of the abstract idea.
For claims 3, 17, the presentation of financing options is considered to be part of the abstract idea, as far as this is an economic concept that simply serves to further define the abstract idea of claim 1.
For claims 4, 18, the business data , what it represents, and the fact it comes from different sources is part of the abstract idea of the claim. This is just describing information per se that is part of the abstract idea.
For claim 5, describing the business as being minority owned or disadvantaged is simply describing the business in subjective terms and is part of the abstract idea. Every business would arguably say that they are disadvantaged and this is not defining anything further to the claimed method.
For claim 6, the market opportunities that includes education/training, grants, debt, and equity, are all elements that serve to define more about the abstract idea. This is just the offerings that are being made to the business and includes offering a loan. This is part of the abstract idea of the claims.
For claims 7, 14, 19, the presentation of information through a dashboard is taken as being a further embellishment of the abstract idea. This can be the presentation on paper in the form of a dashboard.
For claims 8, 20, the claimed gamifying the performance ratings is the act of making something more engaging to incentive participation, which is a further embellishment of the same abstract idea as found for claim 1.
For claims 9, 15, the listing of the business on an exchange for inventors to buy and sell stock is itself reciting a fundamental economic practice, that is listing companies for a public offering where the buying and sale of shares of companies occurs, such as is done on Wall Street. This is an abstract idea in and of itself.
For claims 10, 11 the presenting of suggestions or applying for a number of grants is considered to be more about the same abstract idea. A person can perform the claimed steps/functions.
For claim 13, the claimed servers of one or more financial institutions is reciting another instruction for one to practice the invention using generic computing technology. This is not sufficient to provide for integration into a practical application or significantly more for the same reasons set forth for claim 12. See MPEP 2106.05(f).
Therefore, for the above reasons, claims 1-20 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more.
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
Claim(s) 1-7, 9-19 is/are rejected under 35 U.S.C. 103 as being unpatentable over Strutt et al. (20020133368).
For claims 1, 12, 16, Strutt discloses a system and method for analyzing business information to assess the performance of a business and/or its organizations. This is disclosed as being done so that business’ can make informed decisions about how to run their organization. See paragraphs 002, 009, 013 for a general overview of the invention of Stutt. Strutt teaches the claimed use of a business profile that is generated and connected to a platform. The system (platform) is 100 and is computer implemented such that the business profile information is connected to the platform. The claimed business profile is the information that is used to define the business and its operations, for example see paragraph 165 where a sales analysis tool is disclosed that analyzes information about a business. The information of the business that is being analyzed is considered to satisfy the claimed business profile because the information about the business and its operations defines a profile of the business. This includes receiving information about the business from information sources as claimed. The naming of the sources does not define anything to the step of receiving the business information. The claimed measuring of the performance of segments of the business is taught by Strutt because Strutt is measuring many different types of variables about a business to provide performance measures and ratings (rankings). For example, see paragraph 054 where it is disclosed that the system measures the performance of an organization. Also see paragraph 166 where a sales performance analysis is disclosed. Paragraphs 171, 172, 173, 179 disclose that the output of the system includes information such as rankings for sales offices, or rankings for sales representatives, or rankings for sales across offices. Strutt teaches that the performance of an organization (a business) is measured and used to rank various aspects or variables of a business and its operation. This satisfies the claimed measuring of performance and rating the performance. Strutt teaches that the analysis provides businesses with information needed to make informed decisions, which is considered to satisfy the broadly recited determining market opportunities for the business.
Not expressly taught by Strutt is that resources are distrusted to the business. With respect to the language reciting “for acceptance in response to the market opportunities” is reciting intended use language of the distributing step and does not define anything to the claim. The examiner notes that in paragraphs 313, 374, 376 that Strutt discloses and recognizes that business’ use financing. Paragraph 374 teaches that financing is being requested.
While not disclosed, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to provide Strutt with the ability to distribute resources to the business such as when a business obtains financing they can disperse the funds to various parts of the business to improve operations. Performing analysis of the performance of a business and disturbing resources in a broad and non-limiting manner is something that would have been obvious to one of ordinary skill in the art.
For claim 2, the one or more devices are satisfied by the user devices 20, see figure 2.
For claims 3, 17, as best understood by the examiner due to 112b indefiniteness concerns, the presenting of financing options to the business is satisfied by the above obviousness rejection. It follows that if financing is requested by a business, the financing operations are going to be presented. Flowing from what was stated for claim 1, it would have been obvious to one of ordinary skill in the art to present the financing options to the business so they can make a decision of whether or not they want to take the offer.
For claims 4, 18, the business data is just data and reciting where it came from as far as from being from different sources does not further define anything to the business data itself. Strutt teaches many different types of business data that comes from different sources, and satisfies what is claimed.
For claim 5, the business is not part of the claim scope. Defining the business as a minority owned business or a disadvantages business is reciting non-functional descriptive material that does not serve as a limitation.
For claim 6, the receipt and request for financing in Strutt satisfies the claimed limitation of debt.
For claims 7, 14, 19, the claimed dashboard is considered to be satisfied by the user interface of Strutt that displays the results of the business analysis, for example see figure 26. The display that shows the results of the analysis is a dashboard.
For claims 9, 15, while not disclosed by Strutt, the examiner takes official notice of the stock market and the fact that companies offer stock for sale to individual investors. The applicant is claiming that the business is listed for investors to buy and sell stock. It would have been obvious to one of ordinary skill in the art to provide the business’ in Strutt with listings on the stock exchange so that investors can buy and sell stock in the various businesses.
For claim 10, not disclosed by Strutt expressly is that suggestions are presented. The intended use being to qualify for capital investment. It would have been obvious to one of ordinary skill in the art to provide the business in Strutt with suggestions, which is why the analysis is occurring in the first place, namely to analyze the business and made adjustments as necessary based on performance results. This would yield the predictable result of helping the business grow and prosper.
For claim 11, not expressly disclosed is the claimed applying for grants. A grant is well known in the art as being free money given to a business to help the business grow and expand. The examiner takes official notice of such. It would have been obvious to one of ordinary skill in the art to provide the business’ in Strutt with the ability to apply for a grant to help their business. This would yield the predictable result of helping the business grow and prosper.
For claim 13, defining the electronic devices as servers is still just defining an electronic device(s), which is satisfied by Strutt. The recitation to the association of the serves to a financial institution is noted, but is not defining anything to the system or method itself and is directed to non-functional descriptive material.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Bowen (20040260588) teaches a system and method that analyzes business information to measure performance. See paragraph 024, 037, 041 as examples.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DENNIS WILLIAM RUHL whose telephone number is (571)272-6808. The examiner can normally be reached M-F 7am-3:30pm.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Jessica Lemieux can be reached on 5712703445. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/DENNIS W RUHL/ Primary Examiner, Art Unit 3626