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 .
This Office Action responds to the amendment and argument filed by applicant on August 20, 2025, in response to the Office Action mailed on May 21, 2025.
Claim Rejections - 35 USC § 101
3. 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 1-9 and 11- 22 are rejected under 35 U.S.C. 101 because the claimed invention is directed to non-statutory subject matter, specifically an abstract idea without a practical application or significantly more than the abstract idea.
Under the 35 U.S.C. §101 subject matter eligibility two-part analysis, Step 1 addresses whether the claim is directed to one of the four statutory categories of invention, i.e., process, machine, manufacture, or composition of matter. See MPEP §2106.03. If the claim does fall within one of the statutory categories, it must then be determined in Step 2A [prong 1] whether the claim is directed to a judicial exception (i.e., law of nature, natural phenomenon, and abstract idea). See MPEP §2106.04. If the claim is directed toward a judicial exception, it must then be determined in Step 2A [prong 2] whether the judicial exception is integrated into a practical application. See MPEP §2106.04(d). Finally, if the judicial exception is not integrated into a practical application, it must additionally be determined in Step 2B whether the claim recites "significantly more" than the abstract idea. See MPEP §2106.05.
Examiner note: The Office's 2019 Revised Patent Subject Matter Eligibility Guidance (2019 PEG) is currently found in the Ninth Edition, Revision 10.2019 (revised June 2020) of the Manual of Patent Examination Procedure (MPEP), specifically incorporated in MPEP §2106.03 through MPEP §2106.07(c).
Regarding Step 1
Claims 1-9 and 11-22 are directed toward system (apparatus). Thus, all claims fall within one of the four statutory categories as required by Step 1.
Regarding Step 2A [prong 1]
Claims 1-9, 11- 22 recite the judicial exception of an abstract idea.
Regarding independent claims 1, 11 and 22, the bolded limitations emphasized below correspond to the abstract ideas of the claimed invention:
A system for utility consumption of data, comprising:
at least one processor; and
at least one memory storing one or more non-transitory computer-executable instructions and a plurality of data sets, wherein the at least one processor, in response to executing the one or more instructions, implements a method including
receiving a data request from a client, the data request including data requirements,
arranging a product data set including a selection of the plurality of data sets based on the data requirements,
calculating the number of micro data units in the product data set, each micro data unit based on data entries of records in the product data set and defined by one or more micro data factors indicating a research value of the product data set,
transmitting the product data set to the client, and transmitting an invoice to the client based on the number of micro data units in the product data set.
The Applicant's Specification titled “SYSTEMS AND METHOD FOR UTILITY CONSUMPTION OF DATA”, emphasizes the business need to manage utility consumption data is a business concept and/or organizing human activities, being addressed by the claimed invention.
Dependent claims further limits the abstract ideas, which are nonetheless directed towards fundamentally the same abstract ideas as indicated for independent claims.
Regarding Step 2A [prong 2]
Claims 1-22 fail to integrate the abstract idea into a practical application. Independent claims 1, 11 and 22 include the following additional elements which do not amount to a practical application: a data processing system, computing device, mobile computing device, memory.
The elements recited above in independent claims pertain to additional elements which merely provide an abstract-idea-based-solution implemented with computer hardware and software components, including the above identified additional elements which fail to integrate the abstract idea into a practical application because there are (1) no actual improvements to the functioning of a computer, (2) nor to any other technology or technical field, (3) nor do the claims apply the judicial exception with, or by use of, a particular machine, (4) nor do the claims provide a transformation or reduction of a particular article to a different state or thing, (5) nor provide other meaningful limitations beyond generally linking the use of the judicial exception to a particular technological environment, in view of MPEP §2106.05 (a-c & e), (6) nor do the claims apply the judicial exception to effect a particular treatment or prophylaxis for a disease or medical condition, in view of MPEP §2106.04(d)(2).
The Specification provides a high level of generality regarding the additional elements claimed without sufficient detail or specific implementation structure so as to limit the abstract idea. Nothing in the Specification describes the specific operations recited in claims 1, 11 and 22 as particularly invoking any inventive programming, or requiring any specialized computer hardware or other inventive computer components, i.e., a particular machine, or that the claimed invention is somehow implemented using any specialized element other than all-purpose computer components to perform recited computer functions. See DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245, 1256 (Fed. Cir. 2014) ("[A]fter Alice, there can remain no doubt: recitation of generic computer limitations does not make an otherwise ineligible claim patent-eligible."). Simply put, the claimed invention is merely directed to utilizing computer technology as a tool for solving a business problem of managing consumption data. Nowhere in the Specification does the Applicant emphasize additional hardware and/or software elements which provide an actual improvement in computer functionality, or to a technology or technical field, other than using these elements as a computational tool to automate and perform the abstract idea. See MPEP §2106.04.
The relevant question under Step 2A [prong 2] is not whether the claimed invention itself is a practical application, instead, the question is whether the claimed invention includes additional elements beyond the judicial exception that integrate the judicial exception into a practical application by imposing a meaningful limit on the judicial exception. This is not the case with Applicant's claimed invention which merely pertains managing data to perform the abstract idea, and merely linking the use of the abstract idea to a particular technological environment. See MPEP §2106.04. Thus, the additional elements recited above fail to provide an actual improvement in computer functionality, or to a technology or technical field. See MPEP §2106.04.
Dependent claims merely incorporate the additional elements recited above, and further limits the abstract idea of independent claims. Furthermore, they do not pertain to a technological problem being solved in a meaningful way beyond generally linking the use of the judicial exception to a particular technological environment, and/or the limitations fail to achieve an actual improvement in computer functionality or improvement in specific technology other than using the computer as a tool to perform the abstract idea.
Regarding Step 2B
Claims 1, 11 and 22 do not amount to significantly more than the abstract idea. Independent claims include the following limitations that are not sufficient to amount to significantly more than the abstract idea:
A system for utility consumption of data, comprising:
at least one processor; and
at least one memory storing one or more non-transitory computer-executable instructions and a plurality of data sets, wherein the at least one processor, in response to executing the one or more instructions, implements a method including
receiving a data request from a client, the data request including data requirements,
arranging a product data set including a selection of the plurality of data sets based on the data requirements,
calculating the number of micro data units in the product data set, each micro data unit based on data entries of records in the product data set and defined by one or more micro data factors indicating a research value of the product data set,
transmitting the product data set to the client, and transmitting an invoice to the client based on the number of micro data units in the product data set.
The bolded limitations recited above in independent claims including a memory and processor pertain to additional elements which merely provide an abstract-idea-based-solution implemented with computer hardware and software components. These additional elements do not amount to "significantly more" than the abstract idea because they fail to (1) recite any improvements to another technology or technical field; (2) recite any improvements to the functioning of the computer itself; (3) apply the judicial exception with, or by use of, a particular machine; (4) effect a transformation or reduction of a particular article to a different state or thing; (5) add a specific limitation other than what is well-understood, routine and conventional in the fie Id; (6) add unconventional steps that confine the claim to a particular useful application; nor (7) provide other meaningful limitations beyond generally linking the use of the judicial exception to a particular technological environment, in view of the MPEP 2106.05(a-h).
Instead, the additional elements are being used as a tool to perform the abstract idea and merely providing computational instructions to implement the abstract idea, and generally linking the use of the abstract idea to a particular technological environment, yet fail to impose any meaningful limits on practicing the abstract idea. See MPEP 2106.05(f-h). Specifically, for a processor, memory, see MPEP §2106.05(d) (II) (ii) discussing the performance of repetitive calculations by a computer; for memory see MPEP §2106.05(d) (II) (iv) discussing storing and retrieving of information in memory. Therefore, the additional elements in separately or in combination do not add significantly more.
Dependent claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception because processor, memory are considered well-understood, routine, and conventional activity, see MPEP §2106.05(d). Specifically, for a POS terminal device and processor see MPEP §2106.05(d) (II) (ii) discussing the performance of repetitive calculations by a computer; for memory see MPEP §2106.05(d) (II) (iv) discussing storing and retrieving of information in memory. Therefore, the additional elements in separately or in combination do not add significantly more.
Thus, after considering all claim elements, both individually and in combination and in ordered combination, it has been determined that the claims are not enough to transform the abstract idea into a patent-eligible invention since the claim limitations do not amount to a practical application or significantly more than an abstract idea. Accordingly, claims 1-9 and 11-22 are directed to non-statutory subject matter under 35 U.S.C. § 101.
Claim Rejections - 35 USC § 103
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 (i.e., changing from AIA to pre-AIA ) 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.
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) 1-9, 11-22 is/are rejected under 35 U.S.C. 103 as being unpatentable over Wang et al. (US 2020/0126011, hereinafter Wang), in view of Felsher (US 2009/0287837).
With respect to claims 1, 11 and 22 Wang discloses a system, for utility consumption of data, comprising:
at least one processor (paragraphs [0048] and [0049]); and
at least one memory storing one or more non-transitory computer-executable instructions and a plurality of data sets (paragraphs [0048] and [0049]),
at least one client device, wherein the server, the at least one client device, the at least one processor, and the at least one memory are configured for at least one of wired or wireless communication over a data network (paragraphs [0019], [0024] and [0029]),
wherein the at least one processor, in response to executing the one or more instructions, implements a method including
receiving a data request from a client, the data request including data requirements (abstract and claim 1),
arranging a product data set including a selection of the plurality of data sets based on the data requirements (abstract and claim 1),
Wang does not explicitly disclose the feature of calculating the number of micro data units in the product data set, each micro data unit based on data entries of records in the product data set and defined by one or more micro data factors indicating a research value of the product data set, transmitting the product data set to the client, and transmitting an invoice to the client based on the number of micro data units in the product data set. receiving a payment from the client in response to the invoice, receiving from the client unused data from the product data set, and issuing a refund of the payment based on the amount of unused data from the product data set.
However, Felsher teaches the feature of calculating the number of micro data units in the product data set, transmitting the product data set to the client, and transmitting an invoice to the client based on the number of micro data units in the product data set (abstract, paragraph [0351]).
and it is old and well known in the art of purchase to receive a payment from the client in response to the invoice, receiving from the client unused data from the product data set, and issuing a refund of the payment based on the amount of unused data from the product data set.
Therefore it would have been obvious for one of ordinary skill in the art to have modified the feature of Wang to include the feature of calculating the number of micro data units in the product data set, transmitting the product data set to the client, and transmitting an invoice to the client based on the number of micro data units in the product data set and receiving a payment from the client in response to the invoice, receiving from the client unused data from the product data set, and issuing a refund of the payment based on the amount of unused data from the product data set as taught by Felsher in order to manage data transfer.
With respect to claim 2 Wang further discloses a system, wherein the step of calculating the number of the micro data units in the product data set is performed using one or more micro data factors (claims 1 and 2).
With respect to claim 3 Wang further discloses a system, wherein each of the plurality of data sets comprises a plurality of records each including data entries in one or more data fields corresponding to the one or more micro data factors, and wherein the calculating the number of the micro data units in the product data set includes dividing the number of discrete data entries in the one or more data fields in the plurality of data sets by the corresponding one or more micro data factors to determine one or more factor coverage values, assigning the maximum of the one or more factor coverage values for the each of the plurality of data sets as the number of micro data units in each of the plurality of data sets, and determining the number of micro data units in the selection of the plurality of data sets forming the product data set (claims 1-5).
With respect to claim 4 Wang further discloses a system, wherein the calculating the number of micro data units in the product data set comprises calculating the number of records in each micro data unit for each of the plurality of data sets, and dividing the number of records in the product data from each of the plurality of data sets by the number of records in each micro data unit for each of the plurality of data sets (paragraph [0062]).
With respect to claim 5 Wang further discloses a system, wherein the micro data factors include at least one of: a size of cohort factor measured in number of subjects; a geographic factor measured in the number of regions; or a condition factor measured in number of discrete variables for research contained in the data (paragraph [0092]).
With respect to claim 6 Wang further discloses a system, wherein the plurality of data sets are healthcare data sets including health information on a plurality of patients with each of the plurality of records corresponding to one of the plurality of patients, wherein the micro data factors include at least one of: a cohort size factor measured in number of patients; a geographic factor measured in number of regions; or a medical condition factor measure in number of ICD-10 codes (paragraphs [0090] and [0092]).
With respect to claim 7 Wang further discloses a system, wherein the data requirements include at least one of: geographic requirements; demographic requirements; or condition requirements (paragraphs [0090] and [0092]).
With respect to claim 8 Wang further discloses a system, wherein the arranging of the product data set includes analyzing the data requirements for data need coverage (abstract).
With respect to claim 9 Wang further discloses a system, wherein the analyzing of the data requirements includes performing data point counts and analyzing the at least one of: the geographic requirements; the demographic requirements; or the condition requirements (paragraphs [0090] and [0092]).
With respect to claim 12 Wang further discloses a system, wherein the calculating the price per micro data unit includes analyzing external metadata, analyzing internal metadata, or analyzing both external metadata and internal metadata (paragraphs [0090] and [0092]).
With respect to claim 13 Wang further discloses a system, wherein the external metadata includes at least one of: market supply metadata; market demand metadata; availability metadata; market size metadata; or data price metadata (paragraphs [0090] and [0092]).
With respect to claim 14 Wang further discloses a system, wherein the method implemented by the at least one processor comprises collecting external metadata automatically and constantly (paragraphs [0090] and [0092]).
With respect to claim 15 Wang further discloses a system, wherein the internal metadata comprises at least one of quality data and volume data about the plurality of data sets (paragraphs [0090] and [0092]).
With respect to claim 16 Wang further discloses a system, wherein the plurality of data sets each comprise a plurality of records including a plurality of data fields, and wherein the quality data includes at least one of: scope data; completeness data; accuracy data; or relation data (paragraphs [0090] and [0092]).
With respect to claim 17 Wang further discloses a system, wherein the at least one memory stores a plurality of data templates corresponding to the plurality of data fields, and wherein the method implemented by the at least one processor comprises collecting internal metadata by comparing the plurality of data templates to the corresponding plurality of data fields (paragraphs [0090] and [0092]).
With respect to claim 18 Wang further discloses a system, wherein the method implemented by the at least one processor further comprises: determining that the calculated price per micro data unit is below a predetermined lower price; and transmitting a notification to an analyst to review the calculated price per micro data unit (paragraphs [0090] and [0092]).
With respect to claim 19 Wang further discloses a system, wherein the method implemented by the at least one processor further comprises: determining that the calculated price per micro data unit is above a predetermined upper price; and transmitting a notification to an analyst to review the calculated price per micro data unit (paragraphs [0090] and [0092]).
With respect to claim 20 Wang further discloses a system, wherein the at least one memory stores a predetermined maximum price and a predetermined minimum price, and wherein the calculated price per micro data unit is between the predetermined minimum price and the predetermined maximum price (paragraphs [0090] and [0092]).
With respect to claim 21 Wang further discloses a system, wherein the calculating in micro data units the consumption of data by the client is performed over a time interval based on the data requirements (paragraphs [0090] and [0092]).
Prosecution Insights