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 .
Procedural Summary
This is responsive to the claims filed 1/25/2023.
Claims 1-11 are pending per the preliminary amendment filed 1/25/2023.
The Drawings filed 4/19/2023 are noted.
Claim Interpretation
Where claims recite “and/or” limitations, (e.g., “A and/or B”) they are construed as requiring element A alone, element B alone, or elements A and B taken together.1 While not indefinite, in the Gross decision, the PTAB suggested that the preferred verbiage of such limitations is “at least on of A and B”.
Drawings
The drawings are objected to because portions of Fig. 1 are illegible even when zoomed significantly. Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.”
If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Claim Rejections - 35 USC § 112
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 1-11 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.
The Claims are replete with indefinite limitations:
The preamble refers to a system but then recites a method. Then claim 11 recites a method but refers to a system. Examiner construes the claims as drawn to system claims.
Claim 1 recites “personality/behavioral traits”. It is unclear what Applicant is claiming because these 2 words have different meanings per Webster’s dictionary. Examiner construes this as requiring personality traits.
Claim 1 recites “derived through by”. This is unclear and construed as “derived from”.
Claim 1 recites “said UCCCEEE”, which lacks antecedent basis.
Claim 1 recites “(all combinations….responses)”. It is unclear if Applicant is attempting to narrow the scope of the limitation. Examiner has not given weight to this clause.
Claim 1 contains sentences culminating with periods. A claim cannot contain multiple periods.
The above-list shows several instances of indefinite limitations; this list is not exhaustive. See MPEP 608.01(m) for proper formatting of claims.
Applicant is encouraged to review patented applications in the similar art for examples of proper claim drafting.
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 non-statutory subject matter.
Step 1:
The claims are drawn to system and process claims.
Thus, initially, under Step 1 of the analysis, it is noted that the claims are directed towards eligible categories of subject matter
Step 2A:
Prong 1: Does the Claim recite an Abstract idea, Law of Nature, or Natural Phenomenon?
Claim 1 for example is drawn to analyzing personality traits and calculating a digital quotient. Claim 1 recites no structural elements (i.e., no GUI) for performing this process. It merely recites a list of intended consequence of what the apparatus supposedly does.
Calculation of a digital quotient represents is an abstract idea falling under the certain methods of organizing human activities.2 To the extent that the calculation is entirely based on mathematical equations and formulae, this also represents an abstract mathematical concept.
Prong 2: Does the Claim recite additional elements that integrate the exception into a practical application of the exception?
The claims recite no structural or electronic devices to implement the abstract idea. To the extent the claims recite a processing step (“natural language processing”), this does not represent an improvement to the functioning of a computer, or to any other technology or technical field, (MPEP 2106.05(a)).
Nor does it apply the exception using a particular machine, (MPEP 2106.05(b)). Furthermore, it does not effect a transformation. (MPEP 2106.05(c)). Rather, this additional limitation at best amount to an instruction to “apply” the judicial exception using a yet-to-be-claimed computer as a tool to perform the abstract idea.
Step 2B:
Under Step 2B, the claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception because no additional structure or GUI is even claimed.
Regarding the Berkheimer decision, the references cited on the attached 892 show a GUI to calculate a quotient. Since there are no additional elements claimed they cannot amount to significantly more than the above-identified judicial exception (the abstract idea).
Looking at the limitations as an ordered combination adds nothing that is not already present when looking at the elements taken individually. There is no indication that the combination of elements improves the functioning of a computer or improves any other technology. Their collective functions merely provide an abstract process.
Moreover, the claims do not recite improvements to another technology or technical field. Nor, do the claims improve the functioning of the underlying computer itself. Furthermore, they do not effect a transformation of a particular article to a different state or thing: the underlying computing elements remain the same.
Concerning preemption, the Federal Circuit has said in Ariosa Diagnostics, Inc., V. Sequenom, Inc., (Fed Cir. June 12, 2015):
The Supreme Court has made clear that the principle of preemption is the basis for the judicial exceptions to patentability. Alice, 134 S. Ct at 2354 (“We have described the concern that drives this exclusionary principal as one of pre-emption”). For this reason, questions on preemption are inherent in and resolved by the § 101 analysis. The concern is that “patent law not inhibit further discovery by improperly tying up the future use of these building blocks of human ingenuity.” Id. (internal quotations omitted). In other words, patent claims should not prevent the use of the basic building blocks of technology—abstract ideas, naturally occurring phenomena, and natural laws. While preemption may signal patent ineligible subject matter, the absence of complete preemption does not demonstrate patent eligibility. In this case, Sequenom’s attempt to limit the breadth of the claims by showing alternative uses of cffDNA outside of the scope of the claims does not change the conclusion that the claims are directed to patent ineligible subject matter. Where a patent’s claims are deemed only to disclose patent ineligible subject matter under the Mayo framework, as they are in this case, preemption concerns are fully addressed and made moot. (Emphasis added.)
For these reasons, it appears that the claims are not patent-eligible under 35 USC §101.
Conclusion
Additional Relevant References: See 892
Any inquiry concerning this communication or earlier communications from the examiner should be directed to OMKAR A DEODHAR whose telephone number is (571)272-1647. The examiner can normally be reached on M-F, generally 9am-5:30 pm.
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, David Lewis can be reached on 571-272-7673. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see https://ppair-my.uspto.gov/pair/PrivatePair. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative or access to the automated information system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/OMKAR A DEODHAR/Primary Examiner, Art Unit 3715
1 Ex Parte Gross, App. 11/565/441, (PTAB 2014)
2 See MPEP 2106 Patent Subject Matter Eligibility [R-10.2019]