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 .
No claim amendments were submitted, and response to Applicant’s arguments are provided below.
Claims 1-20 are currently pending and have been rejected in this Final Office Action.
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 1-20 rejected under 35 U.S.C. § 101 are directed to an abstract idea without significantly more.
The claims do not provide significantly more than the judicial exception under the subject matter eligibility two-part statutory analysis, as provided below.
Regarding Step 1,
Step 1 addresses whether the claims are directed to one of the four statutory categories of invention, i.e., process, machine, manufacture, or composition of matter according to MPEP §2106.03. Claims 1 and 11 recite a system (apparatus/machine) and method (process) respectively, which fall within one of the four statutory categories.
Regarding Step 2A [prong 1],
The claimed invention recites an abstract idea according to MPEP §2106.04. Independent claim 1, also representative of independent claims 11 for the same abstract features, is underlined below which recite the following claim limitations, as an abstract idea.
Claims 1 & 11: … solving a problem using an inventor directory comprising:
establishing a project profile based on information from a client, with the project profile including information relating to a problem to which one or more solutions is desired by the client;
providing access to the information on the problem by one or more inventors, with each inventor constituting a vetted individual determined to have a particular level of expertise in one or more fields related to the problem; and
using a link to establish communication between the client and the one or more inventors regarding solving the problem.
The underlined claim limitations, under its broadest reasonable interpretation, fall under “Certain Methods of Organizing Human Activities” grouping of abstract ideas, and includes at least managing personal behavior or relationships or interactions between people (including social activities, teaching, and following rules or instructions). See MPEP §2106.04(a)(2)(II).
But for the recitation of generic implementation of computer system components, the claimed invention merely recites a process for managing personal behavior/relationships or interactions between people because the claimed steps recite establishing a project profile based on information from a client, with the project profile including information relating to a problem to which one or more solutions is desired by the client; providing access to the information on the problem by one or more inventors, with each inventor constituting a vetted individual determined to have a particular level of expertise in one or more fields related to the problem; and using a link to establish communication between the client and the one or more inventors regarding solving the problem. Accordingly, since the claimed invention describes a process that falls under “Certain Methods of Organizing Human Activities” grouping, the claimed invention recites an abstract idea.
Regarding Step 2A [prong 2],
The judicial exception is not integrated into a practical application according to MPEP §2106.04(d). Claims 1 and 11 include the following additional elements:
A Directory System and a first database containing information;
A second database containing information;
A (communicative data) link to establish communication;
In particular, the additional elements cited above beyond the abstract idea are recited at a high-level of generality and simply equivalent to a generic recitation and basic functionality that amount to no more than mere instructions to apply the judicial exception using generic computer technology components.
The claimed invention merely provides an abstract-idea-based-solution implemented with generic computer processes and components recited at a high-level of generality (receiving, and storing) using computer instructions to implement the abstract idea on a computer, and merely “apply it” without any meaningful technological limits or any improvement to technology, technical field or improvement to the functioning of the computer itself.
Additionally, a first database containing information and a second database amounts to data gathering and selecting a particular data source and providing access to the information, and type of data to be accessed, thus does not add any meaningful limitations, and since receiving, storing and transmitting data is considered one of the most basic functions of a computer, these additional elements are deemed as insignificant extra-solution activity to the judicial exception. The legal precedent in Electric Power Group and Ultramercial cited in MPEP 2106.05(g) indicate that selecting information, based on types of information and availability of information for collection, analysis and display of information are all insignificant extra-solution activity.
Therefore, the additional elements fail to integrate the recited abstract idea into any practical application since they do not impose any non-generic meaningful limits on practicing the abstract idea. Thus, the claimed invention is directed to an abstract idea.
Regarding Step 2B,
The claimed invention does not include additional elements that are sufficient to amount to significantly more than the judicial exception. See MPEP §2106.05.
As discussed above, the claimed additional elements recited above amounts to no more than mere instructions to implement the abstract idea by adding the words “apply it” using generic computer components and functionality. See MPEP §2106.05(h). Mere instructions to apply the judicial exception using generic computer components are insufficient to provide an inventive concept. Furthermore, the claimed additional elements merely limit the abstract idea to be executed in a computer environment, thus do nothing more than generally linking the use of a judicial exception to a particular technological environment or field of use. See MPEP §2106.05(h).
Additionally, re-evaluating the insignificant extra-solution activities listed above, it is determined that they are also well-understood, routine, and conventional, as well. See MPEP 2106.05(d). The legal precedent in Ultramercial, Versata, Symantec, TLI, and OIP Techs court decisions cited in MPEP 2106.05(d)(II) indicate that storing and retrieving information in memory, as well as receipt and transmission of information over a computer network, and updating an activity log are a well-understood, routine, and conventional functions claimed in a generic manner, as is the case here. See also Trading Techs. Int’l, Inc. v. IBG LLC, 921 F.3d 1084, 1093 (Fed. Cir. 2019) (data gathering and displaying are well-understood, routine, and conventional activities) and also buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1355 (Fed. Cir. 2014) (“That a computer receives and sends the information over a network—with no further specification—is not even arguably inventive”).
Considered as an ordered combination, the additional elements are claimed at a high-level of generality and add nothing that is not already present when the steps are considered separately. The sequence of the claimed limitations is equally generic and otherwise held to be abstract since the combination of these additional elements is no more than mere instructions to apply the judicial exception using generic computer components operating in their ordinary and generic capacities of what is typically expected of computers storing and updating data, and receiving and transmitting data between generic computer devices. The claimed invention is not patent eligible because the additional elements are merely invoked as tools to execute the abstract idea and thus are insufficient to amount to an inventive concept significantly more than the judicial exception.
As for dependent claims 2-10 and 12-20 they merely further narrow and reiterate the same abstract ideas for storing and updating data, and receiving and transmitting data using generic data storage and transmittal techniques with the same additional elements as recited above which provide nothing more than applying the abstract idea using generic computer technology components. Furthermore dependent claims comprise the following additional elements:
a computer app (application)
a network server, a personal computer (PC), a mobile phone, a tablet device, a personal digital assistant (PDA), a smart phone, a computer kiosk or a laptop
a host server
These additional elements do not provide any improvement to technology, technical field or improvement to the functioning of the computer itself, and at best simply applying the abstract idea executed in a general-purpose computer environment. Therefore the dependent claims are also directed to ineligible subject matter since they do not provide significantly more than the abstract idea itself.
Thus, after considering all claim elements in Claims 1-20 both individually and as an ordered combination, it has been determined that the claimed invention as a whole, is not enough to transform the abstract idea into a patent-eligible invention since nothing in the claim limitations provide significantly more than the abstract idea under 35 U.S.C. § 101.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of pre-AIA 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(b) the invention was patented or described in a printed publication in this or a foreign country or in public use or on sale in this country, more than one year prior to the date of application for patent in the United States.
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale or otherwise available to the public before the effective filing date of the claimed invention.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1-20 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by WALKER (US 20060235793).
Regarding Claims 1 and 11,
Walker discloses:
A directory system and method for problem solving (Abstract, and Summary and [0022] locating and matching remote qualified experts to clients who need their expertise) comprising:
a first database containing information on inventors, each inventor constituting a vetted individual determined to have a particular level of expertise in one or more fields (Abstract; a database for storing expert qualifications, [0279-0280] testing of experts by central controller 200 to verify competence, including peer review of expert, [0022] allows for a user to search a database of experts [inventor] by certain characteristics and may optionally communicate with those experts, wherein inventor is a label for an expert, [0028] expertise is verified); a second database containing information on at least one client (Fig. 2; Data storage 250; expert database 255, end user database 260 and Fig. 3);
a project established by the at least one client, with the project relating to a problem to which one or more solutions is desired by the at least one client ([0025] allows the user to produce a job request or project suitable for consideration by an expert. The job request includes a full description of the job or project to be performed, a range of money the user is willing to spend, and any other information necessary to respond to the request); and
a link configured to establish communication between the at least one client and one or more of the inventors regarding solving the problem ([0022-0029] Providing a real-time connection between the client and the expert during which negotiations can take place or during which advice or judgement can passed between the parties, [0149] online messaging system real-time text-based communications link between the expert [inventor] and the end user).
Regarding Claims 2 and 12,
Walker discloses: wherein each inventor is vetted and must have one or more pending patent applications or issued patents under their name in order to be considered to have the particular level of expertise in the one or more fields ([0177] verifying integrity of expert, [0181] expert’s identity is verified, [0279-0280] testing of experts by central controller 200 to verify competence, including peer review of expert, [0026-0028] expertise is verified by providing detailed qualifications in one or more areas of expertise along with third party references, [0110] expert is certified qualifications by Lexis/Nexis, [0031] journal articles are provided to consider expert’s expertise, wherein Examiner notes that the expert (inventor) having certain type of documents such as published public issued patent application documents that are publicly available are non-functional printed matter that fails to distinguish over the prior art teaching which is equivalent to searching expert qualifications of expertise such as academic papers and research disclosed in the art, therefore the level of expertise is covered).
Regarding Claims 3 and 13,
Walker discloses: wherein the one or more patent applications must have been filed with any national, regional or international patent office ([0026] access and interrogate outside databases of known experts who might be qualified to handle the job request. This outside database search could be done using conventional paper-based directories, the user is notified of each expert's interest and is offered the opportunity to review the expert's qualifications prior to the Exchange sending out the full job request, wherein Examiner notes that the expert (inventor) having certain type of documents/printed matter/text such as published public issued patent application documents that are publicly available are non-functional printed matter that fails to distinguish over the prior art teaching which is equivalent to searching expert qualifications of expertise such as academic papers and research disclosed in the art, therefore the level of expertise is covered. The type of patent applications filed based on Nonfunctional printed matter does not distinguish claimed product from an otherwise identical prior art product).
Regarding Claims 4 and 15,
Walker discloses: wherein the link includes a computer app used by both the at least one client and the one or more inventors ([0149] online messaging system real-time text-based communications link between the expert [inventor] and the end user).
Regarding Claims 5 and 16,
Walker discloses: wherein the computer app is on at least one of a network server, a personal computer (PC), a mobile phone, a tablet device, a personal digital assistant (PDA), a smart phone, a computer kiosk or a laptop (Fig. 1 user and expert computers; [0149] online messaging system real-time text-based communications link between the expert [inventor] and the end user).
Regarding Claims 6,
Walker discloses: wherein the system includes a network server storing the first and second databases, and a host server configured to enable the communication between the at least one client and the one or more inventors (Fig. 2; Data storage 250; expert database 255, end user database 260 and Fig. 3, [0025] on-line Exchange located at a remote server, Fig. 3 central controller server distributed over a number of servers, [0086] webserver).
Regarding Claims 7 & 18, Walker discloses: wherein the at least one client is a local, state or federal government agency, a non-profit organization or a for-profit organization (Fig. 1 user and expert computers, [0119] end users can include small businesses, [0022] client can be any type of user or organization, [0020] clients and users can include businessmen, government officials, academics and ordinary consumers, [0110] example, a big six accounting firm can use the controller system to automate the verification of experts,).
Regarding Claim 8,
Walker discloses: wherein the information on the first database includes an inventor profile having a personal summary statement, created by a respective one of the inventors, highlighting information related to the inventor's expertise (Fig. 2; Data storage 250; expert database 255, end user database 260, and Fig. 3, [0088] expert database 255 and expert profile 155, [0031] searching for one with the most relevant expertise, the user can look for experts in a particular subject, or with a given amount of experience, and also review a complete profile of the expert, including journal articles or samples of previous client work, see also [0021]).
Regarding Claim 9,
Walker discloses: wherein the information on the second database includes a client profile having a summary statement, created by a respective client, highlighting the client's interests and objectives in relation to the project (Fig. 2; Data storage 250; expert database 255, end user database 260 and Fig. 3, [0089] end user client database 260, end user client profile 150, [0031] searching for one with the most relevant expertise, the user can look for experts in a particular subject, or with a given amount of experience, and also review a complete profile of the expert, including journal articles or samples of previous client work).
Regarding Claims 10 & 17,
Walker discloses: wherein the link is configured to establish communication between the at least one client and the one or more of the inventors regarding establishing a contract detailing compensation and/or expectations on the part of the at least one client and/or the one or more of the inventors for the project and profile ([0023] allow clients and experts to verify information that is accessible or communicated as part of practicing the invention. Another object of the present invention is to verify the clients or expert's identity and the client's ability to pay for services, also bid on services or to reach an agreement regarding a transaction for such services as the parties may desire. Another object of the present invention is to provide a method for clients to verify the quality of expert answers, and allow the expert to be paid for services upon delivery of work contracted for while practicing the invention, [0006] assisting in the negotiation of a consulting contract, [0034] once the expert responds to the request, the user's account is immediately debited for the expert's fee, [0042] a viable "expert service market" by enabling both users and experts to bid on services. An electronic auction can be implemented which allows users to bid for an expert's time, experts to bid on user requests, and users and experts to negotiate on the price of services. Such services could be sold on a prepaid basis where the expert agreed to provide a certain number of hours of real-time consulting).
Regarding Claims 14,
Walker discloses: further comprising receiving a nomination, through the inventor directory system, in vetting the individual ([0042] To confirm quality of the expertise, the Exchange forwards the request and the response to another qualified expert for review. This peer review either accepts [nomination] or rejects the response, and [0280] FIG. 34 describes a peer review process [nomination] of the expert, see also [0022]).
Regarding Claim 19,
Walker discloses: further comprising establishing an inventor profile on the inventor directory system for each of the one or more inventors, with the inventor profile including a personal summary statement, created by a respective one of the inventors, highlighting the inventor's skills, strengths and experience (Fig. 2; Data storage 250; expert database 255, end user database 260 and Fig. 3, [0031] searching for one with the most relevant expertise, the user can look for experts in a particular subject, or with a given amount of experience, qualifications and also review a complete profile of the expert, including journal articles or samples of previous client work, see also [0021]).
Regarding Claim 20,
Walker discloses: wherein establishing a project profile includes a summary statement, created by a respective client, highlighting the client's interests and objectives in relation to the project (Fig. 2; Data storage 250; expert database 255, end user database 260 and Fig. 3, [0031] searching for one with the most relevant expertise, the user can look for experts in a particular subject, or with a given amount of experience, and also review a complete profile of the expert, including journal articles or samples of previous client work, see also [0021]).
Response to Arguments
Applicant’s arguments have been considered however they are found to be unpersuasive.
101 Rejection of all Claims
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Examiner respectfully disagrees. Applicant admits that “conventional computers will have databases” however the type of data being “vetted inventors” is not a technological improvement on database technology nor it is solving a technical problem rooted in database technology itself. The database is merely being used as a tool, generically to store vetted inventor data. Applicant further argues that “establishing an inventor directory database of vetted inventors is not known so is clearly non-generic…without a doubt integrating this non-generic aspect into a practical application” is unpersuasive. Whether establishing a database with certain type of data is well-known or not has nothing to do with 35 USC 101. Applicant is confusing novelty with subject matter eligibility. Furthermore, creating or establishing a database using generic database techniques and storing inventor data has no functional distinction as opposed to storing other types of data in a database. Applicant has provided pure assertion and conclusory statements without presenting any evidence. According to MPEP 716.01(c) “Arguments presented by the applicant cannot take the place of evidence in the record.” In re Schulze, 346 F.2d 600, 602, 145 USPQ 716, 718 (CCPA 1965) and In re De Blauwe, 736 F.2d 699, 705, 222 USPQ 191, 196 (Fed. Cir. 1984). Opinions and arguments must be factual, not just allegations, and the Applicant has failed to provide any probative value based on the nature of the claim, opposing evidence, and factual support. Therefore, Applicant’s argument is moot.
102 Rejection of all Claims
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Applicant’s arguments are unpersuasive. Walker discloses consulting experts that are vetted with a particular level of expertise since in order to be considered an expert a they must meet a level of expertise and competence that is required. Walker discloses testing and verifying the experts and allowing a user to search for vetted experts with certain competency and expertise qualifications in Fig. 2-3; expert database 255, and [0279-0280] testing of experts by central controller 200 to verify competence, including peer review of expert, [0028] expertise is verified, [0022] allows for a user to search a database of experts [inventor] by certain characteristics and may optionally communicate with those experts, wherein inventor is an individual expert and merely considered a label for an expert. In other words, an inventor is an expert in his/her field therefore, Applicant’s argument is moot because the type of data being labeled as an “expert” or “inventor” is merely a name or label in a database and does not hold any patentable weight since from the perspective of a computer storing data in a databased it does not inherently or explicitly alter the functionality of the database, whether vetted experts are stored or vetted inventors are stored in the same database. Applicant’s claimed invention fails to provide the functional distinction in order to preclude a vetted expert database.
Conclusion
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 extension fee 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 date of this final action.
The relevant prior art made of record not relied upon but considered pertinent to applicant's disclosure can be found in the current and/or previous PTO-892 Notice of References Cited.
“Social Architecture for Identifying Experts”, IPCOM000199671D; 2010-09-14; https://ip.com/IPCOM/000199671
F. Metze, C. Bauckhage, T. Alpcan, K. Dobbrott and C. Clemens, "The "Spree" Expert Finding System," International Conference on Semantic Computing (ICSC 2007), Irvine, CA, 2007, pp. 551-558, doi: 10.1109/ICSC.2007.38.
C. Lin, H. Zhou, Z. Huang and W. Wang, "REC: A Novel Model to Rank Experts in Communities," 2008 The Ninth International Conference on Web-Age Information Management, Zhangjiajie, China, 2008, pp. 301-308, doi: 10.1109/WAIM.2008.103.
Any inquiry concerning this communication or earlier communications from the Examiner should be directed to LAURA YESILDAG whose direct telephone number is (571) 270-5066 and work schedule is generally Monday-Friday, from 9:00 AM - 5:00 PM ET.
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For more information about the USPTO Patent Center, please access https://patentcenter.uspto.gov/ The Patent Center is available to all users for electronic filing and management of patent applications and can be contacted for questions at 1-866-217-9197 or 571-272-4100.
/LAURA YESILDAG/Primary Examiner, Art Unit 3629