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 .
Status of Claims
This action is in response to remarks received 07/04/2024 for US application 2024/0135457 which claims earliest priority from 63144450, filed 02/01/2021.
Claims 2, 21 and 40 are cancelled and dependent claims 3-5 and 22-24 have been amended; independent claims 1 and 20 have also been amended.
Claims 1, 20, 39, 47, 55 and 56 being independent and claims 2-19, 21-38, 40-46 & 48-54 being dependent claims.
Claims 1, 3-20, 22-39 & 41-56 are currently pending and have been examined.
Response to Arguments
Applicant's arguments filed 07/04/2025 have been fully considered but they are not persuasive.
On pages 25-28, Applicant argues A. Step 1: Part 1: current application is not a fundamental economic practice or principle when interpreted as a whole and B. Step 1: Part 2: current application is not a commercial or legal interaction, however, the examiner respectfully disagrees. When considering the claims as a whole, the claims recite a series of steps to compute a hidden cost. The claim recites:
a server configured to control the system, the server further configured to compute the hidden cost that the user assumes when they purchase the income-producing security; (this is related to fundamental economic practice under certain methods of organizing human activity)
a user device operated by the user, the user device operably connected to the server, wherein the server is further configured to export the computed hidden cost to one or more of the user device and an intermediary authorized by the user; (This is related to commercial or legal interactions under certain methods of organizing human activity)
a system database operably connected to the server; (This is part of the additional elements and not directed toward the abstract idea)
a securities data source operably connected to the system database, the securities data source configured to provide to the system database on a regular basis securities data comprising an estimated financial distribution of a security of interest, wherein the system database is configured to receive the securities data, wherein the server is further configured to compute the hidden cost, using the securities data, using an equation:
(2)Purchaser's Hidden Cost = S * R * (Distribution Index) = S*R* where: S= the number of shares the user wants to purchase, R = the user's tax rate on investment income, D = the total distribution per share, T = the amount of elapsed time since the payment period began, and L = the total amount of time in the payment period; (This is related to commercial or legal interactions under certain methods of organizing human activity, mathematical calculation and concepts performed in the human mind under mental processes) and
storage operably connected to the server, the storage configured to store the computed hidden cost. (This is related to commercial or legal interactions under certain methods of organizing human activity)
Since all of the claimed limitations relate either mathematical concepts, certain methods of organizing human activity or mental processes, the claim as a whole relates to abstract ideas. The claims are not similar to Enfish where a specific improvement to computer functionality was taught; nor are the claims similar to McRo where the improvement allowed computers to produce accurate and realistic lip synchronization and facial expressions in animated characters that previously could only be produced by human animators. Rather, the claims are directed to the use of conventional or generic technology in a nascent but well-known environment, without any claim that the invention reflects an inventive solution to any problem presented by combining the two. There is no indication in the claims that solve a technological problem. A generic computer can be modified to compute hidden investment cost.
On pages 28-30, applicant further argues Step 2A, Prong 1: stating that the invention is not abstract, however, as mentioned above, the claims are directed to abstract ideas. The claimed invention is not innovative nor solves a technological problem. The twenty-two advantages detailed in ¶¶ [83-94] in the specifications, at most, may be a solution to a business problem in financial markets, however, are still abstract.
For the above reasoning, the claimed invention does not solve a long-standing issue in the technological field of method and system for computing a hidden investment costs, and is instead, abstract.
On pages 30-32, applicant argues that the claims integrate the judicial exception into a practical application, however, the examiner respectfully disagrees. As mentioned above, the claims at most, may recite an improvement to a business practice, however, is still abstract. Securities that only produce an income is not a technological improvement, but rather an improvement to a business practice. There is no indication of improvements in the functioning of a computer or other technology in the claims. The claims operate in a conventional and generic manner rather than solving an internet centric problem of filtering internet content as in BASCOM. The claims also differ from those seen in Enfish where a specific improvement to computer functionality was taught. The claims are directed to the use of conventional or generic technology in a nascent but well-known environment, without any claim that the invention reflects an inventive solution to any problem presented by combining the two. Any improvement or increased income claimed by the applicant is an inherent quality of applying the abstract idea using generic computer components. The current claims do not improve network efficiency and scalability and differ from the claims seen in Amdocs Limited v. Openet Telecom. Since there is no indication that the claims improve method and system for computing a hidden investment cost, the current application does not integrate the judicial exception into a practical application.
On pages 33-34, applicant argues Step 2B: that the invention provides inventive concept that is “Significantly More” than the judicial exception, however, the examiner respectfully disagrees. The claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception. As discussed above with respect to integration of the abstract idea into a practical application, the additional elements of using generic computer processors with memory suitably programmed communicating over a generic network to perform the limitation steps amounts no more than adding the words “apply it” (or an equivalent) with the judicial exception, or mere instructions to implement an abstract idea on a computer, or merely uses a computer as a tool to perform the abstract idea, see MPEP 2106.05(f) and generally linking the use of the judicial exception to a particular technological environment or field of use, see MPEP 2106.05(h).
As mentioned above in Step 2A: Prong 2, the claims operate in a conventional and generic manner rather than solving an internet centric problem of filtering internet content as in BASCOM. The claims also differ from those seen in Rapid Litigation Management Ltd. V. CellzDirect, Inc since the not recite a concrete practical process. Using generic computing components in their ordinary capacity (in a conventional way) to compute a hidden cost is simply leveraging generic computing elements to perform the abstract idea of computing a hidden cost using an equation, i.e. business activity and mathematical equation, without significantly more. For the above reasoning, the claimed invention does not solve a long-standing problem in financial markets.
Computing hidden investment costs totaling billions of dollars worldwide may be an improvement to a business problem but is still abstract. This case may have been allowed in the Japanese Patent Office, however, the current claims are examined under different guidelines. Since there is no indication of an improvement to other technology or technical field, the claims do not recite a practical application or significantly more than the abstract idea.
For the above reasoning, claims 1, 3-20, 22-39 and 41-56 are not patent eligible.
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, 3-20, 22-39 & 41-56 rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more. The claims do fall within at least one of the four categories of patent eligible subject matter because claims 1, 55 & 56 are directed to a system and claims 39 & 47 are directed to a method; Step 1-yes.
The claims recite the series of steps instructing how to compute a hidden cost, which is a fundamental economic practice (i.e. business activity); thus, grouped as a certain method of organizing human interactions. This judicial exception is not integrated into a practical application because the additional elements are recited at a high-level of generality and do not add meaningful limitation to the abstract idea because they amount to simply implement the abstract idea in a technological computer environment. The claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception because mere instructions to apply the exception in a generic computer component cannot integrate a judicial exception into a practical application in Step 2A or provide an inventive concept in Step 2B.
Under Step 2A, prong 1, representative claim 1 recites a series of steps instructing how to compute a hidden cost (i.e. business activity), which is a fundamental economic practice; thus, grouped as a certain method of organizing human activity. The claim as a whole and the limitations in combination recite this abstract idea. Specifically, the limitations of representative claim 1, bolded below, recite the abstract idea as follows.
A system for computing a hidden cost that a user assumes when they purchase an income-producing security, comprising:
a server configured to control the system, the server further configured to compute the hidden cost that the user assumes when they purchase the income-producing security;
a user device operated by the user, the user device operably connected to the server, wherein the server is further configured to export the computed hidden cost to one or more of the user device and an intermediary authorized by the user;
a system database operably connected to the server;
a securities data source operably connected to the system database, the securities data source configured to provide to the system database on a regular basis securities data comprising an estimated financial distribution of a security of interest, wherein the system database is configured to receive the securities data, wherein the server is further configured to compute the hidden cost, using the securities data, using an equation:
(2)Purchaser's Hidden Cost = S * R * (Distribution Index) = S*R* where: S= the number of shares the user wants to purchase, R = the user's tax rate on investment income, D = the total distribution per share, T = the amount of elapsed time since the payment period began, and L = the total amount of time in the payment period; and storage operably connected to the server, the storage configured to store the computed hidden cost.
The claimed limitations, identified above, recite a system that, under the broadest reasonable interpretation, covers performance of a fundamental economic practice and commercial or legal interaction, but for the recitation of generic computer components. That is, other than the mere nominal recitation of “a server”, “database”, “user device”, “intermediary”” and “storage” in claims 1, 20, 39 & 47, and “a server”, “a user device”, “a network”, “a systems database”, “a securities data source” and “storage” in claims 55 & 56, there is nothing in the claim element which takes the steps out of the methods of organizing human activity abstract idea groupings and mathematical concepts such as mathematical formulas. Thus, the independent claims recite an abstract idea.
Under step 2A, prong 2, this judicial exception is not integrated into a practical application. In particular, the claim only recites using generic, commercially available, off-the-shelf computing devices, i.e. processors suitably programmed communicating over a generic network, to perform the steps of computing, sending, communicating, providing, storing, and transmitting. The computer components are recited at a high-level of generality (i.e., as generic processors with memory suitably programmed communicating information over a generic network, see at least FIG. 1 and paragraphs [0032]-[0034] of the specification) such that it amounts no more than adding the words “apply it” (or an equivalent) with the judicial exception, or mere instructions to implement an abstract idea on a computer, or merely uses a computer as a tool to perform the abstract idea, see MPEP 2106.05(f) and generally linking the use of the judicial exception to a particular technological environment or field of use, see MPEP 2106.05(h). Accordingly, the additional elements claimed do not integrate the abstract idea into a practical application because they do not impose any meaningful limits on practicing the abstract idea. Claims 1, 20, 39, 47, 55 and 56 are directed to an abstract idea.
Under step 2B, the claim does not include additional elements that are sufficient to amount to significantly more than the judicial exception. As discussed above with respect to integration of the abstract idea into a practical application, the additional elements of using generic computer processors with memory suitably programmed communicating over a generic network to perform the limitation steps amounts no more than adding the words “apply it” (or an equivalent) with the judicial exception, or mere instructions to implement an abstract idea on a computer, or merely uses a computer as a tool to perform the abstract idea, see MPEP 2106.05(f) and generally linking the use of the judicial exception to a particular technological environment or field of use, see MPEP 2106.05(h). Claims 1, 20, 39, 47, 55 and 56 are not patent eligible.
Applicant has leveraged generic computing elements to perform the abstract idea of computing a hidden cost using a mathematical equation, i.e. business activity and mathematical equation, without significantly more.
Dependent claims 3-19, 22-38, 41-46 & 48-54 when analyzed as a whole and in an ordered combination are held to be patent ineligible under 35 U.S.C. 101 because the additional recited limitations fail to establish that the claims are not directed to an abstract idea, as detailed below. The additional recited limitations in the dependent claims only refine the abstract idea.
The dependent claims recite a user device to be used in the abstract idea, wherein the user device is a generic computing device comprising a generic network and computing components. There is no technical implementation details as how this takes place and can therefore be performed manually. As such, the dependent claims only refine the abstract idea further and further refinement of an abstract idea does not convert an abstract idea into something concrete.
The claims merely amount to the application or instructions to apply the abstract idea (i.e. a series of steps instructing how to compute a hidden cost, i.e. business activity) on one or more computer, and are considered to amount to nothing more than requiring a generic computer system (e.g. processors suitably and communicating over a network) to merely carry out the abstract idea itself. As such, the claims when considered as a whole, are nothing more than the instructions to implement the abstract idea (i.e. a series of steps instructing how to compute a hidden cost, i.e. business activity) in a particular, albeit well-understood, routine and conventional technological environment.
Accordingly, the Examiner concludes that there are no meaningful limitations in the claims that transform the judicial exception into a patent eligible application such that the claims amount to significantly more than the judicial exception itself or integrate the judicial exception into a practical application.
Conclusion
THIS ACTION IS MADE FINAL. 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 TONY P KANAAN whose telephone number is (571)272-2481. The examiner can normally be reached Monday- Friday 7:30am - 3:30 pm EST.
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/T.P.K./Examiner, Art Unit 3696
/MATTHEW S GART/Supervisory Patent Examiner, Art Unit 3696