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 .
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, 4-8 are rejected under 35 U.S.C. 101 because
Under Step 2A, the claimed invention is directed to a judicial exception (i.e., a law of nature, a natural phenomenon, or an abstract idea). The claims are directed to the abstract ideas of mental steps.
The instant application discloses a series of mental processes wherein the invention focuses on comparing two strings of letters by putting the strings in a matrix comprising vectors to determine similarity and thus identify a name group for the strings. The MPEP states that the following are mental processes that can be conducted using pencil and paper: “claims to “comparing BRCA sequences and determining the existence of alterations,” where the claims cover any way of comparing BRCA sequences such that the comparison steps can practically be performed in the human mind, University of Utah Research Foundation v. Ambry Genetics, 774 F.3d 755, 763, 113 USPQ2d 1241, 1246 (Fed. Cir. 2014)” and “a claim to collecting and comparing known information (claim 1), which are steps that can be practically performed in the human mind, Classen Immunotherapies, Inc. v. Biogen IDEC, 659 F.3d 1057, 1067, 100 USPQ2d 1492, 1500 (Fed. Cir. 2011);” Here, comparisons are also being performed that can be completed using pencil and paper or a computer as a tool, wherein the invention requires a Jaccard Distance function and vector creation to be performed. The rest of the claims include using different alphabets, however such is only defining the symbols and letters used within the strings. For these reasons the claims exemplify a mental process and thus an abstract idea.
and such can be completed using pen and paper
The second prong of Step 2A, ask whether the claims recite additional elements that would integrate the abstract idea into a practical application. Here, no such practical application exists. There is no improvement made to computer technology since the claims discuss comparing user nicknames. This is not a longstanding problem in computer technology. Additionally, there is no practical application as there is no particular machine that is used to implement the claim language, but instead and as will be discussed below only generic computers are used to perform the invention. Also, there is no transformation of the machine used in the application into a different state or thing. . Lastly, the claims do not attempt to apply the abstract idea in a meaningful way beyond simply using the claimed machine.
Step 2B asks whether a claimed invention which fails Step 2A contains an inventive concepts, i.e. significantly more. Here the invention does not recite significantly more as the claim language only recites only a computer with a processor, both which are well known, common, and routine, in the art. Thus, the claims are directed to an abstract idea that lacks significantly more and thus is not patent eligible. Therefore, the abstract idea lacks significantly more to make the claims eligible patent subject matter.
Response to Arguments
Applicant's arguments filed 01/27/2026 have been fully considered but they are not persuasive. Examiner has amended claim 1 to further state that the matrix comprises of vector information and computing a Jackard Distance function between vectors containing nickname information. However, such does not overcome the 101 rejection as both the matrix creation feature and Jaccard distance calculation are both still satisfying the analyzing element of the holding in Electric Power Grid which states that collecting, analyzing, and outputting information is a mental process. Additionally, Applicant argues that under the holding of McRo the claims are patent eligible subject matter. However, unlike the invention at the heart of McRo which previously address a computer based issue, here the issue is identifying similar user names. Here, databases themselves are merely data repositories for information that was previously held in accounting books. Thus, identifying duplicate entries in an accounting book is merely a mental process, and thus when the same books are placed on a computer for performing accounting functions, the computer is merely used a tool for the given purpose. Thus, the claims are directed towards an abstract idea.
Additionally, Examiner agrees with the previous rejection that a general computer performing a Jaccard Distance function and matrix computations is still well understood and routine in the art as a computer’s given function is to perform calculations. For these reasons the claims remain rejected.
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 REGINALD A RENWICK whose telephone number is (571)270-1913. The examiner can normally be reached Monday-Friday 11am-7pm.
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REGINALD A. RENWICK
Primary Examiner
Art Unit 3714
/REGINALD A RENWICK/ Primary Examiner, Art Unit 3715
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