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 .
Prosecution Status
Applicant’s response filed 11/13/2025 has been received and reviewed. The status of the claims is as follows:
Claims 1-20 are pending.
Claims 1-20 are rejected.
Claim Rejections - 35 USC § 112
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.
1. Claims 1-20 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 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 Claims 1, 10, 17
Each of independent claims 1, 10 and 17 recites an equivalent limitation to (emphasis added):
ingesting, by the multi-dimensional graph data structure, the history of price data via a chi-squared fit based on properties of diamonds represented in the multi-dimensional graph data structure as compared to properties of diamonds having accepted bids;
Subsequently, a weighting of diamonds in the subset with the data structure is performed, a deriving of values based on the weighting is performed, and a determining of a plurality of subsets of diamonds is then performed.
Such subject matter of the claim 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 specification does not disclose such an ingesting. No history of price data is mentioned in the specification. While the specification mentions populating a table with a “plurality of completed bids” (see [0086]), such an operation is separate from the data sampling techniques described that apply a chi-squared fit to diamond data. In fact, the sampling process that applies a chi-squared fit to diamond data is described in the specification as relative to “geological factors” related to the diamonds (see [0100]).
Therefore, the specification lacks any disclosure as to how a history of price data would be ingested via a chi-squared fit based on diamonds represented in the multi-dimensional graph data structure as compared to properties of diamonds having accepted bids, then weighting diamonds in the subset (which has been ingested based on price history), then deriving values “based on” weighting and determining a plurality of subsets of diamonds in response. While the specification may broadly reference completed bids and an ingesting process via chi-squared fit, elements that are essentially a "black box" will not be sufficient. There must be some explanation of what the specific process to perform such an operation.
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 disclose any meaningful structure/algorithm as to ingesting, by the multi-dimensional graph data structure, the history of price data via a chi-squared fit based on properties of diamonds represented in the multi-dimensional graph data structure as compared to properties of diamonds having accepted bids raises questions as to whether Applicant truly had possession of this feature at the time of filing.
Regarding Claims 2-9, 11-16, 18-20
These dependent claims inherit the deficiencies of the claims from which they depend, and are rejected on those grounds.
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.
2. Claims 1-20 are rejected under 35 U.S.C. 101 because the claimed invention is directed to a judicial exception (i.e., a law of nature, a natural phenomenon, or an abstract idea) without significantly more.
Claims 1-20 are directed to determining and packaging a sample of physical diamonds, and facilitating bidding for the physical diamonds, which is considered a commercial interaction. Commercial interactions fall within a subject matter grouping of abstract ideas which the Courts have considered ineligible (Certain methods of organizing human activity). The claims do not integrate the abstract idea into a practical application, and do not include additional elements that provide an inventive concept (are sufficient to amount to significantly more than the abstract idea).
Under step 1 of the Alice/Mayo framework, it must be considered whether the claims are directed to one of the four statutory classes of invention. In the instant case, claim 1-9 and 17-20 each recite a method and at least one step. Claims 10-16 recite a system comprising a network interface, processor, and memory. Therefore, the claims are each directed to one of the four statutory categories of invention (process, apparatus).
Under step 2A of the Alice/Mayo framework, it must be considered whether the claims are “directed to” an abstract idea. That is, whether the claims recite an abstract idea and fail to integrate the abstract idea into a practical application.
Regarding representative independent claim 17, the claim sets forth a process in which a sample of physical diamonds is determined and physical diamonds are packaged, and bidding for physical diamonds is facilitated, in the following limitations:
submitting a plurality of bids associated with a first subset of diamonds of a plurality of diamonds;
in response to a set of accepted bids, withdrawing a second subset of bids from the plurality of bids wherein the second subset of bids includes diamonds that have a threshold similarity of properties to those diamonds having accepted bids, thereby generating a history of price data corresponding to the first subset of the plurality of diamonds;
receiving a set of data describing a plurality of diamonds each having a distinctive set of properties and a corresponding grade, the set of data including the history of price data corresponding to the first subset of the plurality of diamonds, the first subset prioritizes inclusion of diamonds that have varied combinations of properties;
ingesting, by the multi-dimensional graph data structure, the history of price data via a chi-squared fit based on properties of diamonds represented in the multi-dimensional graph data structure as compared to properties of diamonds having accepted bids;
in response to said ingesting, weighting diamonds of the first subset within the multi-dimensional graph data structure;
deriving values corresponding to the plurality of diamonds that are outside of the first subset based on said weighting;
determining a plurality of subsets of diamonds from the plurality of diamonds that as a set collectively have a same combined value;
sealing the plurality of subsets of diamonds into tamper proof containers;
The above-recited limitations establish a commercial interaction to submit bids for diamonds, determining a sampling of diamonds, and sealing diamonds in tamper proof containers for provision to customers. This arrangement amounts a sales activity or behavior. Such concepts have been considered ineligible certain methods of organizing human activity by the Courts (See MPEP 2106.04(a)).
Claim 17 does recite additional elements:
recording each tamper proof container to a blockchain data structure
This additional element merely amounts to the general application of the abstract idea to a technological environment (“to a blockchain data structure”) and insignificant post solution activity (recording). The specification makes clear the general-purpose nature of the technological environment. Paragraphs [0112] - [0118] indicate that while exemplary general-purpose systems may be specific for descriptive purposes, any elements or combinations of elements capable of implementing the claimed invention are acceptable. That is, the technology used to implement the invention is not specific or integral to the claim.
Therefore, considered both individually and as an ordered combination, the additional elements do no more than generally link the use of the abstract idea to a particular technological environment or field of use. That is, given the generality with which the additional limitations are recited, the limitations do not implement the abstract idea with, or use the abstract idea in conjunction with, a particular machine or manufacture that is integral to the claim. Additionally, the claims do not reflect an improvement in the functioning of a computer, or an improvement to other technology or technical field, do not effect a transformation or reduction of a particular article to a different state or thing; and do not apply or use the abstract idea in some other meaningful way beyond generally linking the use of the abstract idea to a particular technological environment, such that the claim as a whole is more than a drafting effort designed to monopolize the abstract idea. Accordingly, the Examiner concludes that the claim fails to integrate the abstract idea into a practical application, and is therefore “directed to” the abstract idea.
Under step 2B of the Alice/Mayo framework, it must finally be considered whether the claim includes any additional element or combination of elements that provide an inventive concept (i.e., whether the additional element or elements are sufficient to amount to significantly more than the abstract idea). In the instant case, the additional elements (recited above) simply append well-understood, routine, conventional activities previously known to the industry, specified at a high level of generality, to the judicial exception. Electronic recordkeeping has been repeatedly considered well-understood, routine, and conventional activity by the Courts (See MPEP 2106.05(d)). Accordingly, the Examiner asserts that the additional elements, considered both individually, and as an ordered combination, do not provide an inventive concept, and the claim is ineligible for patent.
Claims 1-3 are similar in scope to claim 17 and ineligible for similar reasons.
Regarding Claim 10
Claim 10 sets forth a similar (though broader) abstract idea to claim 17, but does set forth further additional elements:
a network interface configured to
a processor
a memory including instructions that when executed cause the processor to
These additional elements merely amount to the general application of the abstract idea to a technological environment. The specification makes clear the general-purpose nature of the technological environment. Paragraphs [0112] - [0118] indicate that while exemplary general-purpose systems may be specific for descriptive purposes, any elements or combinations of elements capable of implementing the claimed invention are acceptable. That is, the technology used to implement the invention is not specific or integral to the claim.
Therefore, considered both individually and as an ordered combination, the additional elements do no more than generally link the use of the abstract idea to a particular technological environment or field of use. That is, given the generality with which the additional limitations are recited, the limitations do not implement the abstract idea with, or use the abstract idea in conjunction with, a particular machine or manufacture that is integral to the claim. Additionally, the claims do not reflect an improvement in the functioning of a computer, or an improvement to other technology or technical field, do not effect a transformation or reduction of a particular article to a different state or thing; and do not apply or use the abstract idea in some other meaningful way beyond generally linking the use of the abstract idea to a particular technological environment, such that the claim as a whole is more than a drafting effort designed to monopolize the abstract idea. Accordingly, the Examiner concludes that the claim fails to integrate the abstract idea into a practical application, and is therefore “directed to” the abstract idea.
Under step 2B of the Alice/Mayo framework, it must finally be considered whether the claim includes any additional element or combination of elements that provide an inventive concept (i.e., whether the additional element or elements are sufficient to amount to significantly more than the abstract idea). In the instant case, the additional elements (recited above) simply append well-understood, routine, conventional activities previously known to the industry, specified at a high level of generality, to the judicial exception. Communicating information has been repeatedly considered well-understood, routine, and conventional activity by the Courts (See MPEP 2106.05(d)). Accordingly, the Examiner asserts that the additional elements, considered both individually, and as an ordered combination, do not provide an inventive concept, and the claim is ineligible for patent.
Regarding Claim 11
Claim 10 sets forth:
a tamper proof container in which a given subset of the plurality of subsets is sealed therein; and
the instructions further comprising recording each tamper proof container to a blockchain data structure.
While the recitation of a tamper proof container is not part of the abstract idea, it represents an additional limitation to which the abstract idea of packaging a physical diamond for purchase, which is a commercial interaction. Given the high-level recitation of this additional limitation, it does no more than generally link the use of the abstract idea to a particular technological environment. As such, it does not integrate the abstract idea into a practical application, and does not provide an inventive concept. Accordingly, the claim does not confer eligibility on the claimed invention and is ineligible for similar reasons to claim 10.
The recitation of recording each tamper proof container to a blockchain data structure is parallel to the “recording” limitation in claims 2 and 17. Accordingly, it is merely insignificant post solution activity that is well-understood, routine, and conventional activity and does not provide an inventive concept.
Regarding Claims 4-9, 12-16, 18-20
These dependent claims merely embellish the abstract idea of claims 1, 10, and 17, and do not confer eligibility on the claimed invention.
Allowable Subject Matter
Claims 1-20 would be allowable if amended to overcome the 35 USC 112 and 35 USC 101 rejections above, without broadening their scope.
Response to Arguments
Applicant’s argument with respect to the 35 USC 112 rejection have been fully considered, but they are not persuasive. Applicant asserts, with regard to the disclosure of “history of price data”:
Applicant would like to draw the Examiner's attention to paragraph [0089] of the Specification, which discloses that "the market maker system can access a database or table that stores, for a plurality of diamonds, a rating of each diamond according to each of multiple properties and a bid value for that diamond with a timestamp... The platform develops a dynamic value for each possible diamond based on existing diamond bids." Said another way, the system can access a table that stores ratings for multiple diamonds, wherein the ratings can include multiple properties as well as bid values associated with the multiple diamonds, where the bid values are accompanied by timestamps indicating when the bids were placed. This provides direct support for "the set of data including a history of price data corresponding to a first subset of the plurality of diamonds."
The Examiner respectfully disagrees. A person of ordinary skill in the art would have recognized that a “price” and a “bid value” are two distinct parameters. A price is required payment usually set by a seller, and a bid value is an amount offered for payment by a potential buyer. While these parameters can be directly related, data elements representing each are not equivalent. Accordingly, the Examiner maintains that the specification does not discloses a “history of price data”.
Even assuming, arguendo, that bid values with associated timestamps were equivalent to the claimed “history of price data”, applicant’s assertion that paragraph [0089] of the specification shows possession as ingesting such data via a chi-squared fit based on properties of diamonds represented in the multi-dimensional graph data structure as compared to properties of diamonds having accepted bids is not persuasive. To that point, applicant asserts:
Further, paragraph [0089] provides that: "[t]hose diamonds closer to a given location in the multi-dimensional space are weighted more heavily as affecting the bid value for that space. Diamonds having a recorded bid value more recently based on time stamp have a greater weighed effect on the multi-dimensional space." Such disclosure, combined with paragraph [0098], which discloses that "the sample should have a Chi- Squared fit of 95% for each of the geological factors," provides direct support for "ingesting, by the multi-dimensional graph data structure, the history of price data via a chi-squared fit based on properties of diamonds represented in the multi-dimensional graph data structure." More specifically, the history of price data associated with the plurality of diamonds are ingested by the multi-dimensional graph data structure such that the sample of the plurality of diamonds have a predetermined chi-squared fit for each of the geological factors.
However, during the sampling process described in [0097]-[0111], the ingestion of data is not performed via chi-squared fit, but is performed in response to chi-squared fit analysis of a given sample of diamonds based on the intrinsic characteristics of diamonds within that sample (i.e., geological factors) and extrinsic physical factors (i.e., manufacturing factors). The sampling process is used in order to acquire a valid sample (i.e subset) of diamonds to be bid on, and the chi-squared analysis does not take into account any bidding, price, or other financial values.
For these reasons, the rejection is maintained.
Applicant’s arguments with respect to the 35 USC 101 rejection have been fully considered, but they are not persuasive. Applicant initially argues that the claims integrate any judicial exception into a practical application because the claims recite “additional elements that provide an improved, efficient sampling method for generation of a physical diamond package by introducing a multi- dimensional graph data structure of diamonds…Specifically, claim 1 introduces a multi-dimensional graph data structure that is tailored to the unique properties of diamonds. The multi-dimensional graph data structure is introduced to address the technical challenge that diamonds possess a high degree of variability across multiple measurable properties, which complicates classification and grouping using conventional data structures.” Such an argument is not persuasive because the asserted improvements, “technical challenge”, and purported solution thereof are entirely abstract themselves. A “multi-dimensional graph structure” is an abstract data structure that is disembodied from any specific technological implementation. There is no disclosure in the specification or detail in the claim as to how such a structure functions with regard to data processing in a memory (or other technological implementation). Instead, only computational processes are described. Merely applying computational processes to abstract data structures in order to classify and group items that have a high variability across properties does not amount to a technical improvement, or to a technical solution to a problem necessary rooted in any technical field.
Applicant further asserts that:
By ingesting the history of price data via a chi-squared fit based on various properties of diamonds represented in the multi-dimensional graph data structure as compared to properties of diamonds having accepted bids, the multi-dimensional graph data structure enables computational weighting and analysis of multiple diamonds and successful derivation of values corresponding to the multiple diamonds. Following weighting and derivation of values, the multiple diamonds are divided into a plurality of subsets of diamonds each subset having the same combined value. The determination of the plurality of subsets is based on a target diamond and thresholds associated with properties of diamonds based on a number of measurable steps variance from the target diamond. See Specification at para. [0092]. Diamonds whose values are undetermined are evaluated by applying a scalar to a current value of the target diamond depending on the amount of variation. The determination of subsets is a technical solution that leverages the multi-dimensional graph data structure to partition diamonds into equivalent subsets based on aggregate computed values.
Although the individual diamonds may differ in properties and value, each subset is constructed to have an equivalent total value, allowing the subsets to be interchangeable. This approach directly addresses the challenge of diamond non- fungibility by ensuring that each group of diamonds can be treated as having the same worth, thereby facilitating efficient and equitable package generation and commercial interactions.
As above, applicant’s assertions here do not describe any technical problems or solutions in any particular technological field, but merely describes computational and sampling solutions in a commercial context (diamond non-fungibility). The Examiner re-emphasizes that the problems and solutions presented by applicant are abstract themselves, and are not applied to technology in any particular, meaningful manner. Accordingly, these arguments are not persuasive.
Applicant further argues that:
Specifically, claim 1 provides an improvement to the technical field of data-driven commodity package generation within the diamond industry. Traditional methods for grouping diamonds often fail to account for multi-dimensional nature of properties associated with diamonds. The resulting variability in pricing of the diamonds can lead to inefficiencies and inaccuracies in package creation. Claim 1 introduces a multi- dimensional graph data structure that models diamonds according to their distinctive properties and historical price (bid) data. After placing the diamonds within the multi- dimensional graph data structure, chi-squared fitting based on the distinctive properties of diamonds is performed to more accurately weight and value the diamonds. The steps in claim 1 enable the derivation of values for diamonds outside the initial subset and creation of subsequent subsets with equal combined value, directly addressing the technical challenge of diamond non-fungibility.
Importantly, the multi-dimensional data structure employs novel data science techniques that improve the field of data structure imputation and value estimation. Rather than requiring exhaustive data collection for every individual diamond, the system leverages the relationships within the multi-dimensional data structure to efficiently impute values for diamonds with incomplete data. This is achieved by defining property thresholds and measurable steps and applying dynamically computed scalars based on diamonds with accepted bids to estimate the value of each diamond in a subset. See Specification at para. [0093]. By leveraging the multi-dimensional graph data structure and statistical technique of chi-squared fitting, the steps in claim 1 enhances efficiency and reliability of generating fungible diamond packages, representing an improvement in the field of data-driven commodity package generation within the diamond industry.
In response, the Examiner asserts that “data-driven commodity package generation within the diamond industry” is clearly a commercial field, and not a technical field. The Examiner is aware of no judicial precedence for an improvement to a commercial field rendering an otherwise ineligible claim eligible. Similar to above, applicant does not describe any technical improvement any particular technological field, but merely describes computational and sampling improvements in a commercial context. These improvements asserted by applicant are abstract themselves, and are not applied to technology in any particular, meaningful manner. Accordingly, the arguments are not persuasive.
For the above reasons, applicant’s arguments are not persuasive, and the claims are held to be ineligible.
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 MICHAEL A MISIASZEK whose telephone number is (571)272-6961. The examiner can normally be reached Monday-Thursday. 8:00 AM - 5:30 PM.
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, Jeffrey Smith can be reached at 571272-6763. 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.
/MICHAEL MISIASZEK/Primary Examiner, Art Unit 3688