DETAILED ACTION
Status of Claims
The present application, filed on or after 3/16/2013, is being examined under the first inventor to file provisions of the AIA .
This action is in reply to the Remarks and Amendments filed 8/4/2025.
Claim 1 has been amended.
Claims 1-8 have been examined.
This application contains Claims 9-20 drawn to an invention nonelected in the reply filed on 5/31/2025; the election was made without traverse. A complete reply to the final rejection must include cancellation of nonelected claims or other appropriate action; see 37 CFR 1.144 and MPEP § 821.01.
(AIA ) Examiner Note
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or, a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as "configured to" or "so that"; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
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 the following:
Component 106
Component 110
Component 112
Employer/contractor component
Loan/ESPP component
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 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 1-8 are rejected under 35 U.S.C. 112(b) or (for pre-AIA ) 35 U.S.C. 112, second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor, a joint inventor, or (for pre-AIA ) the applicant regards as the invention.
The following claim features of independent claim 1 invoke 35 USC 112(f):
Component 106
Component 110
Component 112
Employer/contractor component
Loan/ESPP component
However, the written description fails to disclose the corresponding structure, material, or acts for performing the entire claimed function attributed to these features and to clearly link the structure, material, or acts to the function. Merely stating these components are general purpose processors or similar executing undisclosed “special” algorithms is not sufficient structure.
For example, the Specification at [0022] notes the following: "...As their names suggest, each of these components 106-112 may comprise specialized algorithms that handle various aspects of computations as described above in detail..." However, the specification is devoid of a disclosure of any specialized algorithms which might perform the entire claimed function(s) attributed to the aforementioned features.
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.
Additionally, claim 1 recites in part the following: “…multiplying the cash-wage field…” Respectfully, no previous mention or reference to a “cash-wage field” has been recited. It is entirely unclear to what cash-wage field the claims are intending to reference. Therefore, there is great confusion and at least the limitation lacks proper antecedent basis. For these reasons, the claim is held to be indefinite.
Additionally, claim 1 recites in part the following: “…multiplying the cash-wage field by an applicable tax coefficient…” Respectfully, the term “applicable tax coefficient” is not described in the specification. Furthermore, it is not clear on its face what “tax coefficient” may be deemed applicable in the context as recited. Although , Examiner recognizes this term coefficient in the area of tax may generally refers to some specific parameter or variable used within economic models or formulas to represent perhaps a tax rate or the degree of a tax system's progressivity, the term is not a standard term of art and does not convey any universally defined idea in US or other common tax law. Terms like "marginal tax rate" and "effective tax rate" are well-known terms of art but “tax coefficient” and “applicable tax coefficient” is not a standard recognized term of art such that the metes and bound of the present limitation would be recognized by a person of ordinary skill in the art. Because the metes and bounds are not clear the claim is held to be indefinite.
Additionally, claim 1 recites in part the following: “…the non-cash-benefit cost…” Respectfully, no previous mention or reference to a “non-cash-benefit cost” has been recited. It is entirely unclear to what non-cash-benefit cost the claims are intending to reference. Therefore, there is great confusion and at least the limitation lacks proper antecedent basis. For these reasons, the claim is held to be indefinite.
Additionally, claim 1 recites in part the following: “…re-executing step (c) …” Respectfully, no previous mention or reference to a “step (c)” has been recited. It is entirely unclear to what step the claims are intending to reference. Therefore, there is great confusion and at least the limitation lacks proper antecedent basis. For these reasons, the claim is held to be indefinite.
Additionally, claim 1 recites in part the following: “…re-executing step (c) using the updated parameter…” Respectfully, no previous mention or reference to an “updated parameter” (singular parameter) has been recited. It is entirely unclear to what parameter the claims are intending to reference. Although reference has previously been made to various other parameters (plural), including “payroll tax parameters” and “substitute W-2 tax parameters”, it is not clear that this “the updated parameter” is intended to refer to any of these previously mentioned parameters or which of these parameters it is intended to reference. Therefore, there is great confusion and at least the limitation lacks proper antecedent basis. For these reasons, the claim is held to be indefinite.
Dependent claims 2-8 inherit the deficiencies of their parent claim and are also rejected under 35 U.S.C. 112(b) or (for pre-AIA ) 35 U.S.C. 112, second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor, a joint inventor, or (for pre-AIA ) the applicant regards as the invention.
The following is a quotation 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 35 U.S.C. 112 (pre-AIA ), first paragraph:
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 1-8 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 claims contain 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(s), at the time the application was filed, had possession of the claimed invention.
Claim 1 has been amended to recite limitations directed towards the following: “…executing, by component (106), a compensation simulation generation algorithm that: (i) substitutes W-2 tax parameters into a pay-matrix to build a first compensation-arrangement object: (ii) substitutes 1099 self-employment-tax parameters into the pay-matrix to build a second compensation-arrangement object: and (iii) stores both objects in server memory; for each stored compensation-arrangement object, (i) multiplying the cash-wage field by an applicable tax coefficient to obtain an estimated tax amount, (ii) adding the non-cash-benefit cost to the tax amount to compute an employer-cost value, and (iii) subtracting the tax amount from the cash-wage field to compute an estimated worker-net-pay value;” for which there is no support in the original disclosure. These limitations are considered impermissible new matter.
Examiner notes, the Remarks of counsel do not mention where support may be found in the original disclosure for any of the amendments including the features in question. Respectfully, the Examiner does not find support anywhere in the original disclosure for this feature as now claimed.
Respectfully, the entire original disclosure is found to be devoid of a disclosure of a “simulation generation algorithm” contemplated as performing the functionality now attributed to such algorithm. Indeed, the entire original disclosure is also silent in regards to the newly introduced “pay matrix” and “compensation-arrangement object”, “cash-wage field”, and “tax coefficient”.
For example, the Specification (e.g. at [0023]-[0026]) teaches that it is the employer (i.e. a person) who "designs" [generates] compensation structures [compensation arrangements?] and not a server or “component”; i.e. the invention makes calculators, in the form of software, available for use via a server and these calculators are used by a human actor to facilitate a human making a decision about what compensation structures [compensation arrangements?] should be offered to an employee [worker].
See at least Specification at [0023], teaching the following: "...The system 100 also comprises employer devices 114a-c used by managers and other administrative personnel of a company or other employer to access the server 102 and application 104. There, these users enter information and manipulate algorithms and variables to make determinations about offering different types compensation to different job types, and whether the job type should be employee, contractor, or either."
and per [0026]: "Each of the employee/contractor component 106, the healthcare component 108, the tax component 110, and the loan/ESPP component 112 may be manipulated as the employer is designing compensation structures."
Examiner finds no portion of the original disclosure (claims, specification, or drawings) which appear to contemplate the scope of the features in question as now claimed. Therefore, applicant fails to have support for this new limitation. Accordingly, the claims are improperly directed to impermissible new matter.
A similar finding is made regarding the following newly recited limitations:
subscribing to real-time event streams comprising (i) worker GPS updates, (ii) employer workload metrics, and (iii) external tax-law feeds, and, when a subscribed event exceeds a stored tolerance, re-executing step (c) using the updated parameter; partitioning, by a payroll-concurrency rules engine, a payroll-period timestamp list into non-overlapping W-2 and 1099 buckets, computing distinct withholdings for each bucket, and instantiating separate payment instructions; calculating, by component (112), a pay-shortfall value equal to the difference between the worker-net-pay value after a classification change and a historic average net-pay value, and when the shortfall is positive, generating a loan-offer record whose principal equals the shortfall multiplied by an employer-defined ratio and whose term and interest rate are read from a risk-parameter table;
There is no support in the original disclosure for the aforementioned limitations. These limitations are considered impermissible new matter.
Applicant’s entire original disclosure is devoid of any discussion regarding subscriptions or “subscribing” to event streams. The Original disclosure does not contemplate subscriptions nor the step of "when a subscribed event exceeds a stored tolerance, re-executing step(C) using the updated parameter".
A similar finding is made regarding the following newly recited limitations:
scoring each compensation-arrangement object with a cost-penalty metric and a preference-match metric, sorting the objects by the metrics, and selecting the highest-ranked object as an optimized arrangement; generating a unified compensation summary that lists (i) the cash-wage amount, (ii) the non-cash-benefit values, (iii) the withholding or self-employment-tax amounts for each classification bucket, (iv) Line-of-credit loan-offer terms and (v) Weighted aggregate utility; transmitting the unified compensation summary to at least one employer device and at least one worker device (116a-c) via a network interface;
There is no support in the original disclosure for the aforementioned limitations. These limitations are considered impermissible new matter.
Applicant’s entire original disclosure is devoid of any discussion regarding “Scoring” much less “scoring” a “compensation arrangement object”, which itself has not been previously discussed nor disclosed in the original disclosure. There is also no mention of a “cost-penalty metric” nor is there mention of a “unified compensation summary”, etc.
Examiner’s Note
Adhering to the guidelines of MPEP 2173.06(II), the Examiner acknowledges that all words in a claim must be considered in judging the patentability of a claim against the prior art. In re Wilson, 424 F.2d 1382, 165 USPQ 494 (CCPA 1970). The fact that terms may be indefinite does not make the claim obvious over the prior art. However, when the terms of a claim are considered to be indefinite, at least two approaches to the examination of an indefinite claim relative to the prior art are possible.
First, where the degree of uncertainty is not great, and where the claim is subject to more than one interpretation and at least one interpretation would render the claim unpatentable over the prior art, an appropriate course of action would be for the examiner to enter two rejections: (A) a rejection based on indefiniteness under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph; and (B) a rejection over the prior art based on the interpretation of the claims which renders the prior art applicable. See, e.g., Ex parte Ionescu, 222 USPQ 537 (Bd. App. 1984). When making a rejection over prior art in these circumstances, it is important for the examiner to point out how the claim is being interpreted.
Second, where there is a great deal of confusion and uncertainty as to the proper interpretation of the limitations of a claim, it would not be proper to reject such a claim on the basis of prior art. As stated in In re Steele, 305 F.2d 859, 134 USPQ 292 (CCPA 1962), a rejection under 35 U.S.C. 103 should not be based on considerable speculation about the meaning of terms employed in a claim or assumptions that must be made as to the scope of the claims.
In the present set of claims (filed 8/4/2025), a great deal of confusion and uncertainty as to the proper interpretation of the limitations of claims 1-8 exists. Therefore, a rejection under 35 U.S.C. 103 and 35 USC 101 is not made regarding these claims, because, as shown in the 35 USC § 112 rejections, speculation and conjecture must be utilized by the Office and the artisan inasmuch as the claims do not adequately reflect what the disclosed invention is under the second paragraph of 35 USC § 112. Again, see In re Steele, 305 F.2d 859, 862 (CCPA 1962) (A prior art rejection cannot be sustained if the hypothetical person of ordinary skill in the art would have to make speculative assumptions concerning the meaning of claim language.) The Examiner finds the same conclusion logically follows for analysis under 35 USC 101; i.e. analysis and rejection cannot be sustained if the hypothetical person of ordinary skill in the art would have to make great speculative assumptions concerning the meaning of claim language.
Response to Arguments
Applicant amended claim 1 on 8/4/2025. Applicant's arguments (hereinafter “Remarks”) also filed 8/4/2025, have been fully considered but are moot in view of the new grounds of rejection necessitated by applicant’s amendments. Note the new 35 USC 112(a) and 112(b) rejections provided supra.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
The following prior art is made of record although not relied upon as it is considered pertinent to applicant's disclosure:
US Publication 2021/0240787 A1 to Miguel, relating to systems and methods that rely on machine learning to recommend employment opportunities. Per at least [0103], Miguel teaches, e.g.: “…More advanced features could analyze the available data for the worker—combined with data from other, similar workers—and proactively make recommendations for where, when, and what work would optimize income, identify compensation model trends that might indicate one source becoming more or less lucrative, provide a comprehensive report on tax-related data—such as mileage—that would identify tax-benefits for the worker, recommend other income sources that might be of interest for the worker, etc. The worker could provide scheduling information and location preference to further improve recommendations or these types of factors could be predicted by the recommender based on historic and other information for the worker (i.e. historic times of work and home location)…”
US Publication 2016/0225081 A1 to Hecht, relates to a system and method of supplying and repaying loaned funds provided to an employee participating in a contribution based Employee Stock Option Plan. In particular, the present invention relates to a method and system for enabling an employee to contribute more funds into his/her Employee Stock Option Plan in order to benefit from employer discounted stock price by offering a line of credit up to the vested contribution and benefit amount for the employee to originate against.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MICHAEL J SITTNER whose telephone number is (571)270-3984. The examiner can normally be reached M-F; ~9:30-6:30. 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, Waseem Ashraf can be reached on (571) 270-3948. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Michael J Sittner/
Primary Examiner, Art Unit 3621