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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 06/23/26 has been entered. Claims 1-20 are currently pending.
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).
For claims 1, 12, 16, the claim recites that the rating quotient is classifying the business as investment grade or non-investment grade. This is considered to be new matter that is not supported by the originally filed specification. While the specification does teach that the system is rating business profiles and is subsequently ranking the business profiles as being either investment grade or non-investment grade, the specification does not disclose that the rating quotient itself is classifying the business as being investment grade or non-investment grade. The specification discloses the generation of various types of performance quotients, and discloses that “using the quotient system, business profiles may be rated and subsequently ranked as a potential investment grade and non-investment grade companies.”. The specification does not disclose anything about the rating quotient and how it is arrived at (see below 112 issue) and does not teach that the rating quotient itself is classifying the business as investment or non-investment grade as is now claimed. The specification does not link the rating quotient to classification of the business as investment grade or non-investment grade. The specification discloses that businesses are rated and ranked as potential investment grade or non-investment grade with no disclosure linking this to the claimed rating quotient. The specification as originally filed does not provide support for the rating quotient classifying the business as is current being claimed.
Claims 1, 12, and 16 recite the performance of a business is rated using qualification criteria to generate a rating quotient, and that market opportunities are determined based on the performance ratings. Upon a review of the specification for guidance as to how these steps are being performed, it is noted that there is no actual discussion of how the invention is rating the performance of the business to generate a rating quotient as claimed. The specification also does not disclose how the resulting market opportunities are being determined. On pages 25-26 of the specification it is disclosed that an evaluator is used to analyze business data and to determine a rating quotient. No specifics are provided. The specification discloses on page 31:
“the system applies a rating quotient to the performing for the portions of the
business (step 910). The system develops and applies a rating quotient production system derived from a qualification criterion sourced from public and private networks. The system may rate the overall performance of the business as well as the segmented or different components of the business to provide more useful information. The system provides a quotient to the performance within business criterion of qualitative and quantitative performance indicators allowing for cognitive support and automated protections for business operations that provide data inputs and measurement data points. The system eliminated emotional, biased, non-actionable, and wishful thinking that may occur based on user interaction and decision making. Significant benefits are realized by utilizing the systematic intelligence of the data in real-time. As previously noted, weighted values may be applied to the performance information and data.”
Nothing is actually disclosed about the manner in which the rating quotient is being determined in the specification as originally filed. The term “rating quotient” is used in the specification to indicate data per se that is representative of the performance of an organization, where the term quotient is interpreted as being a magnitude or amount for a given characteristic. Page 26 teaches that the system uses a quotient system where business profiles are rated and subsequently ranked as potential investment grade or non-investment grade companies. The rating quotient is not disclosed as being the division of two numbers to arrive at a mathematical quotient. The specification does not disclose how the rating of the performance of the business is performed such that one can generate a rating quotient. Nothing specific is disclosed beyond the functional end result that is being claimed as far as analyzing business data to arrive at a rating quotient, in a non-limiting manner. This is especially important for claim 16 that recites the generation of the rating quotient as being performed by a processor executing a set of instructions. There is no disclosure as to how the processor is going about the act of rating the performance of the business to generate a rating quotient. Again, this is claimed in a purely functional manner that is reciting the function end result to be achieved, not how that functional end result is caused to occur. It is not clear how the rating quotient is arrived at. 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.
For claims 5, 14, 17, the claim has been amended to recite that the rating quotient is classifying the business by at least scoring the segments using weighting and per segment metrics. This is new matter that is not found in the originally filed specification. While the specification does disclose that data can be weighted in a general sense, the specification does not disclose that the rating quotient is classifying the business as claimed by scoring the segments using weighting and using per-segment metrics. The examiner cannot locate where this is disclosed in the specification as originally filed. The only disclosure made in the specification to weighting data are general disclosures to how data can be weighted and customized, or how weighed values can be applied to performance information and data. What has not been discloses is that the rating quotient is classifying the business by at least scoring the segments using weighting and per segment metrics. This limitation is found to be new matter.
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 claim 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, including financial transactions, demographic records, and performance analytics, 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 to generate a rating quotient, the rating quotient classifying the business as investment grade or non-investment grade;
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
For claim 12 the abstract idea is defined by the elements of:
establish a business profile for a business in response to input from one or more users,
receive business information associated with the business,
measures performance of segments of the business,
applies algorithmic qualification criteria to determines performance of the segments of the business,
rates the performance of the business to generate a rating quotient that classifies the business as investment grade or non-investment grade,
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 above limitations are reciting a process by which business information is analyzed in an effort to help support businesses, where the 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. The claimed elements that define the abstract idea can be practiced manually be people, with no technology at all.
For claim 1 the additional elements are the recitation to “a data platform” that includes one or more processors and that communicates with one or more networks, and the use of the network to receive the business data (the receiving step is part of the abstract idea, the network is the additional element) and the use of the data platform and the network for the distribution step (that is also a step that is part of the abstract idea).
For claim 12, the additional elements are the plurality of electronic devices executing a data application, and a data platform that is accessible to the electronic devices and that is claimed as performing the steps/functions that define the abstract idea.
For claim 16, the additional elements are the recited platform that is defined by a processor and memory that stores instructions to perform the steps that define the abstract idea.
For claims 1, 12, 16, the 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) (data platform, user devices, processor with memory, network) 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 that connects to a network, 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 and that includes 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 data platform that comprises computing device with a processor and memory, a network for data communication, 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. The claim does not recite any additional elements that provide for integration at the 2nd prong or that provide significantly more at step 2B. Therefore the claim(s) is/are not considered to be eligible.
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. The claims do not recite any additional elements that provide for integration at the 2nd prong or that provide significantly more at step 2B. Therefore the claims are not considered to be eligible.
For claim 5, the abstract idea is being further defined by reciting that the rating quotient is classifying the business by at least scoring the segments using weighting and per segment metrics, and where the business is a minority owned business or disadvantaged business. Using a scoring system such as a weighted summation or similar weighting system with other data to rate a business is a further embellishment of the same abstract idea that was found for claim 1. The claim does not recite any additional elements that provide for integration at the 2nd prong or that provide significantly more at step 2B. Therefore the claim(s) is/are not considered to be eligible.
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. The limitation of claim 17 reciting the scoring of segments using weighting and per segment metrics is a further embellishment of the same abstract idea that was found for claim 1. People can score a business using weights and metrics with no technology at all. The claims do not recite any additional elements that provide for integration at the 2nd prong or that provide significantly more at step 2B. Therefore the claims are not considered to be eligible.
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. The claim does not recite any additional elements that provide for integration at the 2nd prong or that provide significantly more at step 2B. Therefore the claim(s) is/are not considered to be eligible.
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. The limitation of claim 14 reciting the scoring of segments using weighting and per segment metrics is a further embellishment of the same abstract idea that was found for claim 1. People can score a business using weights and metrics with no technology at all. The claims do not recite any additional elements that provide for integration at the 2nd prong or that provide significantly more at step 2B. Therefore the claims are not considered to be eligible.
For claims 8, 20, the abstract idea is being further defined by the language of “generating a competitive ranking of a plurality of similar businesses, including the business, based on the performance ratings, and presenting the competitive ranking to the business to incentivize improvement of the performance ratings”. Ranking businesses based on performance ratings and presenting rankings to the business to incentivize improvement is a limitation that is influencing or managing the behavior of a human being in terms of rating and ranking a business and its performance. Humans can perform what is claimed because people can rank businesses and provide information to a business about their rating and ranking so as to help them improve the performance of their business. This is just reciting more about the abstract idea of the claims. The claims do not recite any additional elements that provide for integration at the 2nd prong or that provide significantly more at step 2B. Therefore the claims are not considered to be eligible.
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. The claims do not recite any additional elements that provide for integration at the 2nd prong or that provide significantly more at step 2B. Therefore the claims are not considered to be eligible.
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. The claims do not recite any additional elements that provide for integration at the 2nd prong or that provide significantly more at step 2B. Therefore the claims are not considered to be eligible.
For claim 13, the claimed one or more financial institutions and the claimed business data of financial transactions, demographic records, and performance analytics is reciting more about the abstract idea of claim 12. The claimed server for the electronic devices is claiming another instruction for one to practice the invention using generic computing technology. Claiming that the electronic devices include servers is claiming computer implementation for the abstract idea and does not represent more than a server being used as a tool to execute the abstract idea. This is not sufficient to provide for integration into a practical application or significantly more for the same reasons set forth for claim 12 with respect to the electronic devices. See MPEP 2106.05(f). The claim does not recite any additional elements that provide for integration at the 2nd prong or that provide significantly more at step 2B. Therefore the claim(s) is/are not considered to be eligible.
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) 1-20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Strutt et al. (20020133368) in view of NPL reference “GM financial now becomes investment grade with all four top ratings agencies”.
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. Paragraph 415 discloses that the claimed financial transaction information is received. Paragraphs 238, 973, 1018, 1028, disclose the use of customer demographics that have been received as claimed. The claimed performance analytics is satisfied by any of the performance data that indicates something about a business, such as is taught in paragraphs 266, 541, and 661. Various different types of data regarding a business (that will always depend on the type of business and what they do) is used by the system of Strutt, and satisfies the claimed business data that is received. 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. The claimed rating quotient is defined in the claim as being the act of rating the performance of a business. This is satisfied by Strutt. The claimed rating quotient is broadly recited and can be any data that expresses a quantity or amount of something. The term “rating quotient” is used in the specification to indicate data per se that is representative of the performance of an organization. This is satisfied by Strutt. Strutt additionally 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.
Also not disclosed by Strutt is that the business is classified as being investment grade or non-investment grade via the rating quotient.
With respect to the resources being distrusted to the business, 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 via one or more networks, such as when a business obtains financing they can electronically 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.
With respect to the business being classified as being investment grade or non-investment grade via the rating quotient, the NPL reference teaches that it is known in the art of business to rate a business as being an investment grade business/company if the performance of the business is such that they are considered worthy of investment as defined by a rating system. Disclosed is that it is known in the art to rate a business with a rating (Baa3 or Ba1 as examples) and that there are four rating agencies that are known to rate businesses. Higher ratings indicate investment grade companies where lower ratings indicate non-investment grade companies. The references teaches that GM h as obtained a status as being an investment grade business from all of the top four rating agencies such as DBRS, Fitch, Moody’s and Standard and Poor’s.
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 classifying the businesses as being investment grade or non-investment grade, as is known in the art, so that people are informed of the status of the business from an investment standpoint. It is well known in our system of commerce that businesses are rated by rating agencies and that high ratings indicate investment grade companies and that low ratings indicate non-investment grade companies. This would yield the predictable result of classifying the companies as being investment grade to indicate to consumers that the company can pay their debt and has good standing, as opposed to non-investment grade companies that are not in good standing and are a risky investment. This is known in the art and would have been obvious to provide to Stutt.
For claim 2, the one or more devices are satisfied by the user devices 20, see figure 2.
For claims 3, 17, 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 claims 1, 12, 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 claim 17, not disclosed is the use of a weighting to score the segments. This is claiming a scope that includes something such as a weighted summation to arrive at a rating. The examiner takes official notice of the fact that a weighted summation and the use of weights to rate things is known in the art. For decades patent examiners have been rated using a weighted summation rating system that weights the data used to arrive at a rating. This is something that is known in many different fields. 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 use of weights for the ratings so that the data used to rate a company can be weighted to reflect the importance of certain data over other data.
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 disadvantaged business is reciting non-functional descriptive material that does not serve as a limitation. Not disclosed is the use of a weighting to score the segments. This is claiming a scope that includes something such as a weighted summation to arrive at a rating. The examiner takes official notice of the fact that a weighted summation and the use of weights to rate things is known in the art. For decades patent examiners have been rated using a weighted summation rating system that weights the data used to arrive at a rating. This is something that is known in many different fields. 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 use of weights for the ratings so that the data used to rate a company can be weighted to reflect the importance of certain data over other data.
For claims 6, 18, the receipt and request for financing in Strutt satisfies the claimed limitation of debt for the claimed resources.
For claims 7, 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 claim 14, 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. Not disclosed is the use of a weighting to score the segments. This is claiming a scope that includes something such as a weighted summation to arrive at a rating. The examiner takes official notice of the fact that a weighted summation and the use of weights to rate things is known in the art. For decades patent examiners have been rated using a weighted summation rating system that weights the data used to arrive at a rating. This is something that is known in many different fields. 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 use of weights for the ratings so that the data used to rate a company can be weighted to reflect the importance of certain data over other data.
For claims 8, 20, the prior art as modified results in a competitive ranking being generated and presenting the ranking. The intended use of presenting the ranking to incentivize improvement to the ratings is not defining anything to the claimed invention other than a desired result that is to be obtained by presenting the information to a user.
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. The claimed business data has been addressed with claim 12 and is taught by Strutt.
Response to arguments
The traversal of the 112a rejection is not found to be persuasive. On page 6 of the reply the applicant argues that the claims have been amended to recite that the rating quotient classifies the business as investment grade or non-investment grade. This is not persuasive because the argued language has been found to be new matter and because the specification does not teach how the rating quotient it arrived at. The applicant appears to have taken some liberties with the original disclosure in this regard. The claims appear to include new matter and the issue of how the applicant is generating the rating quotient remains unresolved. How is this being done? Where does the specification disclose how the rating quotient is arrived at? Simply disclosing that the system includes an evaluator that evaluates qualification data (very broad term that can mean almost anything) to classifying a business as investment grade or non-investment grade does not convey possession as this is a genus that is not disclosing how the claimed invention is achieving the claimed result. The examiner is just trying to understand how the rating quotient is arrived at where the specification does not seem to provide any teaching of how, and the applicant has not clarified how this is being done and where a teaching can be found in the specification. The argument that one of ordinary skill in the art (112a is a standard of “skilled in the art”) can use any conventional scoring system and could implement the invention without undue experimentation is not persuasive and is arguing enablement as opposed to written description. The issue at hand is how the applicant is doing what is claimed, which is the possession requirement of 112a. For enablement, even though the manner by which the rating quotient is generated is not claimed, one of skill in the art could eventually figure out a way to do what is claimed without undue experimentation, but that does not absolve the applicant/inventors of their responsibility to disclose how the invention achieves the claimed result. Just because an invention may be enabled does not mean that it also necessarily satisfies the written description requirement of 112a. The 112a rejection is being maintained.
The traversal of the 112b is persuasive and the rejection has been overcome in view of the amendment to the claims.
The traversal of the 35 USC 101 rejection is not persuasive. On page 8 of the reply the applicant argues that the claims recite a particular network implemented sequence with the applicant summarizing the claimed invention and the functions that are recited. The applicant concludes by alleging that the claims define a specific technological arrangement. This is not persuasive and is little more than a general allegation that the claims are somehow eligible. The fact that the claims use a data platform or electronic devices and use a network for data communication is a link to computers to perform the abstract idea, which does not render the claims eligible. At step 2A, the claims recite a judicial exception in the form of an abstract idea. The technology of the claim is not part of step 2A as that is addressed at the 2nd prong and step 2B.
On page 8 of the reply the applicant argues that the claims are integrated into a practical application. The applicant argues that the claims recite an ordered combination that affects an automated network mediated pipeline that ingests business data over a network, computes segment level rating quotient classifications and that distributes resources to businesses. This characterization of the claims is not tied to the actual claim language. It is not clear what is meant by arguing that the claims are effecting an automated network mediated pipeline. What does this even mean? What is the automated network mediated pipeline that is recited in the claims? None is found. The argument that the claims ingest business data to compute rating quotients and distribute resources is arguing the elements that define the abstract idea. The claims do nothing more than to simply instruct one to practice the abstract idea using generic computers, which is the same as reciting “apply it” on a generic computer. The argument is not persuasive.
On page 9 of the reply the applicant argues step 2B. The applicant generally alleges that the claimed elements are not well understood, routine, or conventional and argues that the examiner has not provide factual evidence to establish that the claimed invention is well understood, routine, and conventional. For the argument that the examiner has not provided factual support for the claimed invention being well understood, routine, and conventional, the examiner notes that no such requirement exists in the eligibility guidance. The examiner has not taken the position that anything is well understood, routine, or conventional at step 2B because nothing has been found to be an insignificant extra solution activity at the 2nd prong. Examiners do not have to prove that a claimed invention was well understood, routine, and conventional in a given field to find that the claims are not eligible. To do so would be injecting a prior art analysis into the eligibility inquiry. Something that is well understood, routine, and conventional is more than just known in the art, it means that something is more or less ubiquitous in a given field. There is no requirement that an examiner prove with evidence that a claimed invention is so well known in a given field that it rises to the level of being well understood, routine, and conventional. The rejection of record does not find anything to be an insignificant extra solution activity at the 2nd prong so there is nothing to reassess at step 2B with respect to the issue of being well understood, routine, and conventional (the Berkheimer memo). The argument is not persuasive.
On page 9 of the reply the applicant argues that people cannot receive business information from live and historical sources as if people have never spoken to each other to provide information from one to another. The argued use of the networks and platform does not preclude a finding that the claims are reciting an abstract idea so the argument that the claims are using a computer which means that people cannot perform what is claimed is not persuasive and misses the point. The elements that define the abstract idea can be performed by people. The fact that the claim recites the use of a platform and a network or that uses electronic devices does not mean that a human being cannot also perform the recited functions. Just adding a computer to a claim does not mean that the claim cannot be found to be reciting functions that people can perform. The argument is not persuasive.
The claims recite what recite what the system/platform does stepwise, but not recite how the system/platform is involved in executing the claimed step such that it cannot be performed by a person or would amount to more than a general link to computer implementation for the abstract idea.
In terms of using computers to perform a judicial exception, this issue was addressed in Bancorp Services LLC v. Sun Life Assurance Company of Canada (Fed. Circuit 2012), where the court stated:
“Modern computer technology offers immense capabilities and a broad range of utilities, much of which embodies significant advances that reside firmly in the category of patent-eligible subject matter. At its most basic, how-ever, a “computer” is “an automatic electronic device for performing mathematical or logical operations.” 3 Oxford English Dictionary 640 (2d ed. 1989). As the Supreme Court has explained, “[a] digital computer . . . operates on data expressed in digits, solving a problem by doing arithmetic as a person would do it by head and hand.” Benson, 409 U.S. at 65. Indeed, prior to the information age, a “computer” was not a machine at all; rather, it was a job title: “a person employed to make calculations.” Oxford English Dictionary, supra. Those meanings conveniently illustrate the interchangeability of certain mental processes and basic digital computation, and help explain why the use of a computer in an otherwise patent-ineligible process for no more than its most basic function—making calculations or computations—fails to circumvent the prohibition against patenting abstract ideas and mental processes. As we have explained, “[s]imply adding a ‘computer aided’ limitation to a claim covering an abstract concept, without more, is insufficient to render the claim patent eligible.” Dealertrack, Inc. v. Huber, 674 F.3d 1315, 1333 (Fed. Cir. 2012).
To salvage an otherwise patent-ineligible process, a computer must be integral to the claimed invention, facilitating the process in a way that a person making calculations or computations could not. See SiRF Tech., Inc. v. Int’l Trade Comm’n, 601 F.3d 1319, 1333 (Fed. Cir. 2010) (“In order for the addition of a machine to impose a meaningful limit on the scope of a claim, it must play a significant part in permitting the claimed method to be performed, rather than function solely as an obvious mechanism for permitting a solution to be achieved more quickly, i.e., through the utilization of a computer for performing calculations.”). Thus, as we held in Fort Properties, Inc. v. American Master Lease LLC, the limitation “using a computer” in an otherwise abstract concept did not “‘play a significant part in permitting the claimed method to be performed,’” 671 F.3d 1317, 1323 (Fed. Cir. 2012) (quoting Dealertrack, 674 F.3d at 1333), and thus did not “impose meaningful limits on the claim’s scope,” id. (quoting CyberSource, 654 F.3d at 1375). The computer required by some of Bancorp’s claims is employed only for its most basic function, the performance of repetitive calculations, and as such does not impose meaningful limits on the scope of those claims. See Benson, 409 U.S. at 67 (invalidating as patent-ineligible claimed processes that “can be carried out in existing computers long in use, no new machinery being necessary,” and “can also be performed without a computer”).
The claims simply are using a platform and a network as the mechanism by which the abstract idea is to be performed and is not reciting anything that is not capable of being performed by a person. The argument that people cannot perform what is claimed due to the claimed network and platform and electronic devices is not persuasive for the above reasons. The 101 rejection is being maintained.
The traversal of the prior art rejection on pages 9-10 is not persuasive and is considered to be moot based on the new grounds of rejection that is applied to the claims in response to the amendment. The applicant argues that it would not be obvious to distribute resources to the businesses as claimed in Strutt. The applicant argues that the examiner conflates a business internally spending its own funds with the claimed step. This is not persuasive. A business obtaining financing and obtaining funds reads on the claimed disbursement of resources for the business as the claim language is broad and the resource can be anything. The applicant also argues that the rejection is conclusionary and lacks an articulated reasoning with a rationale underpinning for an obviousness rejection. This is not persuasive. The rejection states that 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. The reasoning that is provided is “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 via one or more networks, such as when a business obtains financing they can electronically 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.”. The reason one provides resources to a business is to help the business with whatever they need in terms of a resource, such as financing. The argument that there is no rationale to provide resources to a business in Strutt is not persuasive.
The applicant argues that the claims require a rating quotient which is not disclosed by Strutt. This is not persuasive and is based on the amended language of the claim that is reciting the rating quotient as classifying the business as investment grade or non-investment grade. This is new matter and the current rejection of record addresses this via a newly cited NPL reference that establishes the obviousness of classifying a business as being investment grade or non-investment grade. This renders the argument moot.
The comment from the applicant that the rejection maps the rating quotient to sales rankings is not persuasive. 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. The claimed rating quotient is defined in the claim as being the act of rating the performance of a business. This is satisfied by Strutt. The claimed rating quotient is broadly recited and can be any data that expresses a quantity or amount of something. The term “rating quotient” is used in the specification to indicate data per se that is representative of the performance of an organization. This is satisfied by Strutt. The examiner did not state that the rating quotient is a sales ranking as has been argued.
The applicant also argues that Strutt does not teach the ordered combination. The applicant then summarizes what is claimed in claims 1 and 12 with a general allegation that Stutt does not teach or suggest what is claimed and that culminates in resource distribution to the business. The examiner notes that the rejection of record is a 103 rejection and that Strutt has not been relied upon for a teaching of classifying the business as being investment grade or non-investment grade. The distribution of the resources is considered to be obvious and the general allegation (more of a statement of disagreement with the examiner) is not persuasive to overcome the rejection.
For claims 3, 17, the applicant argues that the rejection does not address the providing of financing options as claimed. The applicant argues that the examiner’s logic is circular in that if a business is seeking financing and requests financing, it does not follow that financing options will be provided. This is not persuasive. When one is seeking financing, the terms and conditions of the financing are inherently going to be provided so that the business seeking the financial assistance knows what the deal is. The argument that this is not addressed in the office action is not persuasive.
For claims 9, 15, the applicant addresses the taking of official notice by the examiner but never actually traverses the subject matter the examiner took official notice of and has not stated that they are in disagreement with the noticed fact. A traverse is a formal written denial or statement of disagreement with the factual allegation made by the examiner by way of official notice, which has not been done. The applicant states that evidence of stock markets may be notorious, which is far from a traversal of the official notice. The claims recite that the business is listed on an exchange for investors to buy and trade stocks of the business. The examiner took official notice of the stock market exchange where stocks are bought and sold (traded). This fact has not been challenged. The applicant is traversing the taking of official notice for a motivation to integrate exchange-listing or grant-application functionality into Strutt's analysis tool; that motivation is the contested issue and requires articulated reasoning supported by evidence.” In reply the examiner notes that the motivation one has to list a business to buy and sell stock is to make money as is well known in the art. 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. The motivation being the ability to buy and sell stock. The traversal of not persuasive and the noticed fact is considered to be fact for the record.
For claim 11, the applicant states that they are requesting evidentiary support to maintain the official notice, as was argued for claims 9 and 15. The examiner took official notice of the fact that grants exist and provided reasoning as to why this is obvious to provide Stutt with the ability to apply for a grant for the business(the method claim does not link the grants application to the data platform in any manner). The applicant has not traversed the official notice in any manner by stating that grants are not known in the art. A traverse is a formal written denial or statement of disagreement with the factual allegation made by the examiner by way of official notice, which has not been done. The applicant is just generally alleging that the official notice is not proper by requesting evidence be provided that provides a motivation to combine with Strutt. The applicant has not actually stated that they are in disagreement with the official notice such that it would amount to a traversal. The traversal of not persuasive and the noticed fact is considered to be fact for the record.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
NPL reference “Updated Investor Bulletin: The ABCs of Credit Ratings” teaches how credit ratings work for companies and teaches the classification into investment grade and non-investment grade companies. This is relevant to the claimed invention.
NPL reference “How does the stock market work” discloses the stock market and teaches how it works. This is relevant to the official notice of the existence of the stock market and listing companies to buy and trade stock.
NPL reference “13 Places to Find Small-Business Grants for 2017 and 2018” teaches that business grants exist and is relevant to the taking of official notice by the examiner.
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 at 5712703445. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/DENNIS W RUHL/ Primary Examiner, Art Unit 3626
Prosecution Insights