DETAILED ACTION
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 .
Claims Status
Claims 4, 7, 11, 14, 16 and 18 have been cancelled.
Claims 1-3, 5-6, 8-10, 12-13, 15, 15 and 19-21 remain pending and stand rejected.
Claim Rejections - 35 USC § 112(a)
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.
Claim 21 is 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.
Regarding claim 21, claim 21 recites establishing, by the second trained machine learning model, a sensitivity function for each item and quantity, wherein the sensitivity function determines how the respective win probability is affected by variations in the one or more aggregate values from an aggregate value with highest win probability.
The subject matter of the claim (recited above) does not conform to the disclosure in such a manner in which one of ordinary skill in the art would recognize that applicant actually had possession of at the time of the invention. The most pertinent portion of the disclosure is as follows:
[0048] At step 360, the second machine learning model 156 may establish a sensitivity function for a variety of items and quantities. The sensitivity function determines how the probability of winning a request for quotation is affected by variations in aggregate value from a highest win probability aggregate value.
While the specification may literally support the claimed limitation, merely reproducing the claim limitation in the specification or pointing to an original claim does not satisfy the written description requirement where the claim itself does not convey enough information to show that the inventor had possession of the claimed invention. Elements that are essentially a "black box" will not be sufficient.
Applicant’s specification provides only literal support sans any further disclosure of the functions of establishing a sensitivity function (without disclosure of how the sensitivity function is established), and determines how the respective win probability is affected by variations in the one or more aggregate values from an aggregate value with highest win probability (instead, merely stating this is the goal without details of how this is accomplished).Moreover, whether one of ordinary skill in the art could devise a way to accomplish these functions is not relevant to the issue of whether the inventor(s) has shown possession of the claimed invention. This is because the ability to make and use the invention does not satisfy the written description requirement if details of how a function (such as the claimed updating) is performed are not disclosed.
Disclosure of function alone is little more than a wish for possession and it does not satisfy the written description requirement. [See MPEP 2163: II(3)(a)(i), Eli Lilly, 119 F.3d at 1568, 43 USPQ2d at 1406]. Moreover, a specification which does little more than outline goals applicant hopes the claimed invention achieves does not satisfy the written description requirement [see MPEP 2163: II(3)(a)(i), In re Wilder, 736 F.2d 1516, 1521, 222 USPQ 369, 372-73 (Fed. Cir. 1984)]. Lastly, the specification lacks adequate description of a “representative number of species” which may satisfy the written description requirement [see MPEP 2163: II(3)(a)(ii)].
It is noted that this is not an enablement rejection. Applicant’s failure to sufficiently describe any algorithm, steps, or procedures taken to perform the claimed functions raises questions as to whether Applicant truly had possession of this feature at the time of filing.
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 1-3, 5-6, 8-10, 12-13, 15, 17 and 19-21 are rejected under 35 U.S.C. 101 because the claimed invention is directed to a judicial exception (abstract idea) without significantly more.
Regarding claims 1-3, 5-6, 8-10, 12-13, 15, 17 and 19-21, under Step 2A claims 1-3, 5-6, 8-10, 12-13, 15, 17 and 19-21 recite a judicial exception (abstract idea) that is not integrated into a practical application and does not provide significantly more.
Under Step 2A (prong 1), and taking claim 1 as representative, claim 1 recites a method for optimizing aggregate values for a request for quotation, comprising
receiving data associated with a request for quotation for one or more items, the request for quotation including a respective quantity associated with each of the one or more items;
assigning one or more aggregate values to the request for quotation based on the one or more items and the one or more quantities and a learned association between the one or more items, the one or more quantities, and the one or more aggregate values, wherein assigning the one or more aggregate values comprises determining a baseline value for each of the one or more items and calculating the one or more aggregate values based on the baseline value; and,
assigning a respective win probability for each of the one or more aggregate values based on a learned association between the one or more aggregate values and historical data associated wins and losses of the historical requests for quotations that included at least one of the one or more items in the request for quotation, wherein the historical data associated wins and losses of the historical requests for the quotations;
generating a graph with the one or more aggregate values on an x-axis and the respective win probabilities on a y-axis;
receiving from a user a selection of the final aggregate value; and,
determining, in real-time, if a final aggregate value of the one or more aggregate values offered to the request resulted in a win or loss.
These limitations recite organizing human activity, such as by performing commercial interactions and/or fundamental economic principals or practices (see: MPEP 2106.04(a)(2)(II)). This is because claim 1 sets forth and/or describes optimizing aggregate values for a request for quotation. This represents the performance of a commercial interaction. This also describes concepts relating to the economy and commerce that represent fundamental economic practices.
Accordingly, under step 2A (prong 1) claim 1 recites an abstract idea because claim 1 recites limitations that fall within the “Certain methods of organizing human activity” grouping of abstract ideas.
Under Step 2A (prong 2), the abstract idea is not integrated into a practical application. The Examiner acknowledges that representative claim 1 does recite additional elements, including:
using a first trained machine learning model,
using a second trained machine learning model,
historical data retrieved from an electronic database,
transmitting he graph with the one or more aggregate values and the respective probabilities associated with each of the one or more aggregate values to an electronic database; and
transmitting he graph with the one or more aggregate values and the respective win probabilities associated with each of the one or more aggregate values to a graphical user interface implemented in a user device, and,
[receiving a selection] via the graphical user interface,
updating at least one of the first trained machine learning model or the second trained machine learning model based on the selection of the final aggregate value; and
storing, in the electronic database, a record associated with the request for quotation, wherein the record comprises: the selection of the final aggregate value, the transmitted aggregate values and the respective win probabilities.
Although reciting these additional elements, taken alone or in combination these elements are not sufficient to integrate the abstract idea into a practical application. This is because the additional elements of claim 1 are recited at a high level of generality (i.e. as generic computing hardware) such that they amount to nothing more than the mere instructions to implement or apply the abstract idea on generic computing hardware (or, merely uses a computer as a tool to perform an abstract idea). This is further underscored by Applicant’s own disclosure, which describes generic processors, code, and machine learning models (see: 0017-0018, 0051). Further, the additional elements do no more than generally link the use of a judicial exception to a particular technological environment or field of use (such as the Internet or computing networks).
Secondly, the additional elements are insufficient to integrate the abstract idea into a practical application because the claim fails to (i) reflect an improvement in the functioning of a computer, or an improvement to other technology or technical field, (ii) implement the judicial exception with, or use the judicial exception in conjunction with, a particular machine or manufacture that is integral to the claim, (iii) effect a transformation or reduction of a particular article to a different state or thing, or (iv) applies or uses the judicial exception in some other meaningful way beyond generally linking the use of the judicial exception to a particular technological environment.
In addition to the above, the limitations of transmitting the respective aggregate values and the respective probabilities to an electronic database and/or GUI, and storing, in the electronic database, a record associated with the request for quotation, wherein the record comprises: the selection of the final aggregate value, the transmitted aggregate values and the respective win probabilities represent little more than extra-solution activity (e.g. data gathering and output, storing data) that contributes only nominally or insignificantly to the execution of the claimed method (see: MPEP 2106.05(g)).
In view of the above, under Step 2A (prong 2), claim 1 does not integrate the recited exception into a practical application.
Under Step 2B, examiners should evaluate additional elements individually and in combination to determine whether they provide an inventive concept (i.e., whether the additional elements amount to significantly more than the exception itself). In this case, the claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception.
Returning to representative claim 8, taken individually or as a whole the additional elements of claim 1 do not provide an inventive concept (i.e. they do not amount to “significantly more” than the exception itself). As discussed above with respect to the integration of the abstract idea into a practical application, the additional elements used to perform the claimed process amount to no more than the mere instructions to apply the exception using a generic computer and/or no more than a general link to a technological environment.
Furthermore, the additional elements fail to provide significantly more also because the claim simply appends well-understood, routine, conventional activities previously known to the industry, specified at a high level of generality, to the judicial exception. For example, the additional elements of claim 1 utilize operations the courts have held to be well-understood, routine, and conventional (see: MPEP 2106.05(d)(II)), including at least:
receiving or transmitting data over a network,
storing or retrieving information from memory,
electronic recordkeeping,
presenting data
Even considered as an ordered combination (as a whole), the additional elements of claim 1 do not add anything further than when they are considered individually.
In view of the above, representative claim 1 does not provide an inventive concept (“significantly more”) under Step 2B, and is therefore ineligible for patenting.
Regarding dependent claims 2-3, 5-6 and 21, dependent claims 2-3, 5-6 and 21 recite more complexities descriptive of the abstract idea itself, and at least inherit the abstract idea of claim 1.
Furthermore, certain dependent claims recite additional abstract ideas, such as claims 3 and 5-6, which recite mathematical concepts in the form of mathematical relationships, formulas or calculations (e.g., multiplying the optimal value by a respective quantity, summing optimal values, calculating a win probability, generating a graph with aggregate values).
As such, claims 2-3, 5-6 and 21 are understood to recite an abstract idea under step 2A (prong 1) for at least similar reasons as discussed above, and because they set forth further abstract ideas (e.g., mathematical concepts).
Under prong 2 of step 2A, the additional elements of dependent claims 2-3, 5-6 and 21 also do not integrate the abstract idea into a practical application, considered both individually or as a whole. More specifically, claims 2-7 and 21 utilize similar additional elements as recited in claim 1, while setting forth additional transmitting limitations. As with claim 1, the additional elements of 2-3, 5-6 and 21 are recited only at a high level of generality (i.e. as generic computing hardware) such that they amount to nothing more than the mere instructions to implement or apply the abstract idea on generic computing hardware (or, merely uses a computer as a tool to perform an abstract idea). This includes the use of a “sensitivity function” in performing further operations of the abstract idea. Further, the additional elements do no more than generally link the use of a judicial exception to a particular technological environment or field of use (such as the Internet or computing networks).
Lastly, under step 2B, claims 2-3, 5-6 and 21 also fail to result in “significantly more” than the abstract idea under step 2B. This is again because the claims merely apply the exception on generic computing hardware, generally link the exception to a technological environment, and append well-understood, routine, conventional activities previously known to the industry, specified at a high level of generality, to the judicial exception.
Even when viewed as an ordered combination (as a whole), the additional elements of the dependent claims do not add anything further than when they are considered individually.
In view of the above, claims 2-3, 5-6 and 21 do not provide an inventive concept (“significantly more”) under Step 2B, and are therefore ineligible for patenting.
Regarding claims 8-10 and 12-13 (system) and claims 15, 17 and 19-20 (non-transitory computer readable medium), claims 8-10 and 12-13 and claims 15, 17 and 19-20 recite at least substantially similar concepts and elements as recited in claims 1-3, 5-6 and 21 such that similar analysis of the claims would be readily apparent to one of ordinary skill in the art. Acknowledgement is also made of the express recitation of one or more processors (e.g., 8-10 and 12-13) and the executable instructions (by a processor) of claims 15, 17 and 19-20. The elements, which are recited only at a high level of generality, are analyzed in accordance with the findings above under Step 2A (Prong 2) and Step 2B. Accordingly, claims 8-10 and 12-13 and claims 15, 17 and 19-20 are rejected under at least similar rationale.
Subject Matter Allowable Over the Prior Art
Claims 1-3, 5-6, 8-10, 12-13, 15, 15 and 19-21 are rejected on other grounds but allowable over the prior art. Applicant has amended claims 1, 8 and 15 to include subject matter from allowable dependent claims 7 and 14, including the intervening language of claims 4 and 11. The claims are allowable over the prior art as discussed on page 22 of the Non-Final Action mailed 1/28/2026.
Response to Arguments
I. Applicant’s arguments made with respect to the rejection under 35 USC 112(a) have been fully considered but are persuasive in view of the accompanying amendment. Although the amendment cures certain deficiencies the Examiner maintains that Applicant’s specification provides only literal support sans any further disclosure of the functions of establishing a sensitivity function (without disclosure of how the sensitivity function is established), and determines how the respective win probability is affected by variations in the one or more aggregate values from an aggregate value with highest win probability (instead, merely stating this is the goal without details of how this is accomplished). Applicant arguments do not provide further explanation, but only broadly allege the amendment overcomes the previous rejection. Accordingly, the rejection has been maintained as updated below.
II. Applicant’s arguments made with respect to the rejection under 35 USC 103 have been fully considered and are persuasive in view of the accompanying amendment. Notably, the amendment incorporates subject matter from claim 4 and 11 (intervening claims) and claims 7 and 14 (previously indicated as allowable over the prior art).
III. Applicant’s arguments made with respect to the rejection under 35 USC 101 have been fully considered but are not persuasive.
Applicant initially argues that the claims are not directed to an abstract idea because, under Prong One, they do not recite a judicial exception. Applicant is reminded that Step 2A is a two-prong inquiry, in which examiners determine in Prong One whether a claim recites a judicial exception, and if so, then determine in Prong Two if the recited judicial exception is integrated into a practical application of that exception. n Prong One examiners evaluate whether the claim recites a judicial exception, i.e. whether a law of nature, natural phenomenon, or abstract idea is set forth or described in the claim.
The Examiner maintains that, even in light of recited additional elements, the claims recite an abstract idea because they set forth and describe optimizing aggregate values for a request for quotation, which falls clearly into the category of ‘certain methods of organizing human activity’ because it recites marketing or sales activities or behaviors and/or fundamental economic practices. This is evidenced by the limitations emphasized in the rejection above. The presence of additional elements – even trained machine learning models – does not negate that the finding under Prong One is that the claims do recite an abstract idea.
Turning to Applicant’s arguments regarding Prong Two the Examiner disagrees. In Example 47, eligible claim 3 was contrasted with ineligible claim 2. Notably, claim 3 was also determined to recite an abstract idea but also recites key additional elements not found in claim 2: “(d) detecting a source address associated with the one or more malicious network packets,” “(e) dropping the one or more malicious network packets,” and “(f) blocking future traffic from the source address.”. These elements, viewed in conjunction with the disclosure, performs detection of network intrusions and takes real-time remedial actions, including dropping suspicious packets and blocking traffic from suspicious source addresses. The background section further explained that the disclosed system enhances security by acting in real time to proactively prevent network intrusions. The claimed invention in claim 3 reflected this improvement in the technical field of network intrusion detection. Steps (d)-(f) provide for improved network security using the information from the detection to enhance security by taking proactive measures to remediate the danger by detecting the source address associated with the potentially malicious packets. Thus, Example 47 emphasized an improvement to the technical field of network security in finding claim 3 eligible.
As written, the claimed invention improves an abstract commercial process for optimizing aggregate values for a request for quotation. Improvements to the abstract idea are not tantamount to improving the computer itself or another technology or technical field. Notably, the claims are not limited to any particular application like network security, or another “technical field”, and instead relate to any problem of RFQ pricing.
Despite the use of a trained machine learning models, the claims lack detail of the underlying technical processes related specifically to the machine learning technology and the trained models are merely used as a tool to perform the abstract idea. The requirement for the model to be updated (retrained) with new data does not represent an improvement to the computer itself or another technology or technical field (e.g., machine learning). Instead, the process for updating as claimed merely uses or applies the machine learning model(s) to the abstract commercial process in order to expedite processing quotation data and improve the abstract idea itself. The only thing the claims disclose about the use of machine learning is that machine learning is used in a new environment - optimizing aggregate values for a request for quotation.
The claimed methods are not rendered patent eligible by the fact that (using existing machine learning technology) they perform a commercial task previously undertaken by humans with greater speed and efficiency than could previously be achieved. The claims purport to solve problems specifically in optimizing aggregate values for an RFQ, not in the technical field of machine learning. The requirements that the machine learning model be “updated” does not represent a technological improvement: Iterative training using selected training material and dynamic adjustments based on real-time changes are incident to the very nature of machine learning. The claims – at best - recite only the idea of a solution or outcome i.e., the claim fails to recite details of how a solution to a problem is accomplished and claim only the improved speed or efficiency inherent with applying the abstract idea on a computer. Patents that do no more than claim the application of generic machine learning to new data environments, without disclosing improvements to the machine learning itself, do not move claims from ineligible to eligible.
With further respect to the claimed graph generation, the Examiner underscores that this limitation describes part of the abstract idea and does not represent an additional element. The “dual channel transmission” is recited without restriction, and represents nothing more than transmitting data to a database of GUI.
While the instant claims apply machine learning techniques, they apply it to improve the abstract idea itself, and do not resemble the fact patter of Example 47 or other court decisions that found claims eligible because they improved the functioning of the computer itself or another technology or technical field.
Similar logic discussed with respect to Prong Two is also applied to the arguments under Step 2B. The Examiner reiterates that the alleged benefits of “dynamic and adaptive optimization that responds to changing market conditions and customer behavior without manual calibration” is indeed an improvement to the abstract commercial process applied on generic computers. This remains the case even when the claims are considered as an ordered combination. Accordingly, the rejection has been maintained as updated above.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure:
PTO form 892-U discusses utilization of competitor bid prices for RFQ bidding strategies in supply chain management (see: abstract, Section 4.1-4.2)
Applicant's amendment necessitated the changes to the 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).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to WILLIAM J ALLEN whose telephone number is (571)272-1443. The examiner can normally be reached Monday-Friday, 8:00-4:00.
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, Anita Coupe can be reached at 571-270-3614. 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.
WILLIAM J. ALLEN
Primary Examiner
Art Unit 3625
/WILLIAM J ALLEN/ Primary Examiner, Art Unit 3619
Prosecution Insights