DETAILED ACTION
Response to Amendment
This Office Action is responsive to Applicant’s arguments and request for continued examination of application 18/405,400 (01/05/24) filed on 02/18/26.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1 - 20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 - 20 of U.S. Patent No. 11869099. Although the claims at issue are not identical, they are not patentably distinct from each other because both are directed to:
US Pat. App. No. 18/405,400 (as represented by claim 1)
US Pat. No. 11,869,099 (as represented by claim 1)
A method comprising:
A method comprising:
determining, by a computing device, a trend in number of references to a financial market instrument using a corpus of messages of a number of users of at least one online messaging service, each message of the corpus containing a reference to the financial market instrument;
determining, by a computing device of an online financial information provider, a trend in number of social media references to a financial market instrument using a corpus of social media posts of a number of users of at least one social media system, each social media post of the corpus containing a reference to the financial market instrument;
selecting, by the computing device, the financial market instrument using the determined trend in number of references to the financial market instrument;
identifying, by the computing device, a sentiment associated with the financial market instrument using the corpus of social media posts;
generating, by the computing device, a graphical user interface (GUI) for an online financial information provider, the GUI comprising information indicating the determined trend in number of references to the financial market instrument; and
selecting, by the computing device, the financial market instrument using the determined trend in number of social media references to the financial market instrument and the identified sentiment associated with the financial market instrument;
causing, via the computing device, the generated GUI to be displayed as a web component of the online financial information provider at at least one client computing device.
and displaying, via the computing device, information indicating the determined trend in number of social media references to the financial market instrument in a display of the online financial information provider at a number of client computing devices, the displaying comprising transmitting the information via an electronic communications network to the number of client computing devices.
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 are rejected under 35 U.S.C. 101 because the claimed invention is directed to non-statutory subject matter.
ALICE/ MAYO: TWO-PART ANALYSIS
2A. First, a determination whether the claim is directed to a judicial exception (i.e., abstract idea).
Prong 1: A determination whether the claim recites a judicial exception (i.e., abstract idea).
Groupings of abstract ideas enumerated in the 2019 Revised Patent Subject Matter Eligibility Guidance.
Mathematical concepts- mathematical relationships, mathematical formulas or equations, mathematical calculations.
Certain methods of organizing human activity- fundamental economic principles or practices (including hedging, insurance, mitigating risk); commercial or legal interactions (including agreements in the form of contracts; legal obligations; advertising, marketing or sales activities or behaviors; business relations); managing personal behavior or relationships or interactions between people (including social activities, teaching, and following rules or instructions).
Mental processes- concepts performed in the human mind (including an observation, evaluation, judgement, opinion).
Prong 2: A determination whether the judicial exception (i.e., abstract idea) is integrated into a practical application.
Considerations indicative of integration into a practical application enumerated in the 2019 Revised Patent Subject Matter Eligibility Guidance.
Improvement to the functioning of a computer, or an improvement to any other technology or technical field
Applying or using a judicial exception to effect a particular treatment or prophylaxis for a disease or medical condition
Applying the judicial exception with, or by use of a particular machine.
Effecting a transformation or reduction of a particular article to a different state or thing
Applying or using the judicial exception in some other meaningful way beyond generally linking the use of the judicial exception to a particular technological environment, such that the claim as a whole is more than a drafting effort designed to monopolize the exception
Considerations that are not indicative of integration into a practical application enumerated in the 2019 Revised Patent Subject Matter Eligibility Guidance.
Merely reciting the words “apply it” (or an equivalent) with the judicial exception, or merely including instructions to implement an abstract idea on a computer, or merely using a computer as a tool to perform an abstract idea.
Adding insignificant extra-solution activity to the judicial exception.
Generally linking the use of the judicial exception to a particular technological environment or field of use.
2B. Second, a determination whether the claim provides an inventive concept (i.e., Whether the claim(s) include additional elements, or combinations of elements, that are sufficient to amount to significantly more than the judicial exception (i.e., abstract idea)).
Considerations indicative of an inventive concept (aka “significantly more”) enumerated in the 2019 Revised Patent Subject Matter Eligibility Guidance.
Improvement to the functioning of a computer, or an improvement to any other technology or technical field
Applying the judicial exception with, or by use of a particular machine.
Effecting a transformation or reduction of a particular article to a different state or thing
Applying or using the judicial exception in some other meaningful way beyond generally linking the use of the judicial exception to a particular technological environment, such that the claim as a whole is more than a drafting effort designed to monopolize the exception NOTE: The only consideration that does not overlap with the considerations indicative of integration into a practical application associated with step 2A: Prong 2.
Considerations that are not indicative of an inventive concept (aka “significantly more”) enumerated in the 2019 Revised Patent Subject Matter Eligibility Guidance.
Merely reciting the words “apply it” (or an equivalent) with the judicial exception, or merely including instructions to implement an abstract idea on a computer, or merely using a computer as a tool to perform an abstract idea.
Adding insignificant extra-solution activity to the judicial exception.
Generally linking the use of the judicial exception to a particular technological environment or field of use.
Simply appending well-understood, routine, conventional activities previously known to the industry, specified at a high level of generality, to the judicial exception. NOTE: The only consideration that does not overlap with the considerations that are not indicative of integration into a practical application associated with step 2A: Prong 2.
See also, 2010 Revised Patent Subject Matter Eligibility Guidance; Federal Register; Vol. 84, No. 4; Monday, January 7, 2019
Claims 1 - 20 is/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.
1: Statutory Category
Applicant’s claimed invention, as described in independent claim 1, is/are directed to a process (i.e. a method).
2(A): The claim(s) are directed to a judicial exception (i.e., an abstract idea).
PRONG 1: The claim(s) recite a judicial exception (i.e., an abstract idea).
Certain Method of Organizing Human Activity
The claim as a whole recites a method of organizing human activity. The claimed invention involves determining a trend in number of references to a financial market instrument using a corpus of messages of a number of users of at least one online messaging service, each message of the corpus containing a reference to the financial market instrument; selecting the financial market instrument using the determined trend in number of references to the financial market instrument;
generating a graphical user interface (GUI) for an online financial information provider, the GUI comprising information indicating the determined trend in number of references to the financial market instrument; and causing the generated GUI to be displayed, which is a fundamental economic principles or practices (identifying financial market trends); commercial or legal interactions (identifying financial market trends); and managing personal behavior or relationships or interactions between people (determining, selecting, generating, causing ….. the generated GUI to be displayed, etc.).
The mere nominal recitation of technology (e.g., “computing device”) does not take the claim out of the method of organizing human activity grouping. Thus, the claim recites an abstract idea.
Mental Processes
The claim recites limitations directed to determining a trend in number of references to a financial market instrument using a corpus of messages of a number of users of at least one online messaging service, each message of the corpus containing a reference to the financial market instrument; selecting the financial market instrument using the determined trend in number of references to the financial market instrument; generating a graphical user interface (GUI) for an online financial information provider, the GUI comprising information indicating the determined trend in number of references to the financial market instrument; and causing the generated GUI to be displayed.
The limitation(s), as drafted, is/are a process that, under it’s broadest reasonable interpretation, covers performance of the limitation(s) in the mind. Although the claim refers to a “computing device”, nothing in the claim precludes the steps from practically being performed in the mind. For example, the claim encompasses a user manually determining a trend in number of references to a financial market instrument using a corpus of messages of a number of users of at least one online messaging service, each message of the corpus containing a reference to the financial market instrument; selecting the financial market instrument using the determined trend in number of references to the financial market instrument; generating a graphical user interface (GUI) for an online financial information provider, the GUI comprising information indicating the determined trend in number of references to the financial market instrument; and causing the generated GUI to be displayed. NOTE: (a) The claim is exclusively from the perspective of the “computing device”. (b) Although the body of the claim refers to “at least one client computing device”, the invention is not claimed from the perspective “at least one client computing device”. The “at least one client computing device” merely interact with the entity (i.e., “computing device”) performing the positively recited steps or acts.
The mere nominal recitation of technology (e.g., “computing device”) does not take the claim limitation out of the mental processes grouping. This/these limitation(s) recite a mental process. Thus, the claim recites an abstract idea.
PRONG 2: The judicial exception (i.e., an abstract idea). Is not integrated into a practical application.
The claim recites the combination of additional elements of the steps being performed “by a computing device.” The claim recites the combination of additional elements of the “computing device” causing the generated GUI to be displayed “as a web component of the online financial information provider at at least one client computing device”. The additional element(s) is/ are recited at a high level of generality (i.e., as a generic computer being used as a tool to perform the generic computer functions of (a) data processing (e.g., “determining”, “selecting”, “generating”, etc. step(s) as claimed); and (b) data display (e.g., “causing ….. the generated GUI to be displayed”, etc. step(s) as claimed)). The additional element(s) is/ are recited at a high level of generality (i.e., as general means of gathering financial market data), and amounts to mere data gathering, which is a form of insignificant extra-solution activity. The language is no more than mere instructions to apply the exception using generic computer components. Accordingly, the additional element(s) does not integrate the abstract idea into a practical application because it does not impose any meaningful limitations on practicing the abstract idea. The claim is directed to an abstract idea.
Since the claim(s) recite a judicial exception and fails to integrate the judicial exception into a practical application, the claim(s) is/are “directed to” the judicial exception. Thus, the claim(s) must be reviewed under the second step of the Alice/ Mayo analysis to determine whether the abstract idea has been applied in an eligible manner.
2(B): The claims do not provide an inventive concept (i.e., The claim(s) do not include additional elements, or combinations of elements, that are sufficient to amount to significantly more than the judicial exception (i.e., abstract idea)).
As discussed with respect to Step 2A Prong Two, the additional element(s) in the claim amounts to no more than mere instructions to apply the exception using a generic computer component. The same analysis applies here in 2B, i.e., mere instructions to apply an exception using a generic computer component cannot integrate a judicial exception into a practical application at Step 2A or provide an inventive concept in Step 2B.
Furthermore, the additional element(s) under STEP 2A Prong 2 have been evaluated in STEP 2B to determine if it is more than what is well-understood, routine conventional activity in the field. Applicant’s specification as filed 01/05/24 does not provide any indication there is anything other than generic, off-the-shelf computer components, see at least Fig. 5, 6, para. [0031] [0048] [0049] [0050] [0051] [0054] [0055] [0056] [0057]. Furthermore, the prosecution history of the instant application provides Shvadron, US Pub. No. 2010/0257117 operating in a similar environment, suggesting performing tasks such as (a) data processing (e.g., “determining”, “selecting”, “generating”, etc. step(s) as claimed); and (b) data display (e.g., “causing ….. the generated GUI to be displayed”, etc. step(s) as claimed) are well understood, routine and conventional. Shvadron, abstract, [0016] [0017] [0018] [0022] [0025] [0027] [0029] [0031] [0033] [0036] [0037] [0038] [0042] [0045] [0051] [0056] [0060] [0061] [0068] [0069] [0070] [0072] [0074] [0086] [0116] [0134] [0138] [0140] [0141] [0144] [0145] [0147] [0148]. Furthermore, the courts have recognized that computer functions or tasks analogous to those claimed by applicant such as (a) data processing (e.g., “determining”, “selecting”, “generating”, etc. step(s) as claimed); and (b) data display (e.g., “causing ….. the generated GUI to be displayed”, etc. step(s) as claimed) are well understood, routine and conventional. Similarly, the courts have recognized “over a network” communications (e.g., using the Internet to gather data; sending messages or information over a network) are well understood, routine and conventional. Flook, Bancorp court decisions cited in MPEP § 2106.05(D) (ii) indicate performing repetitive calculations is a well-understood, routine, and conventional function when it is claimed in a merely generic manner (as here). SAP America Inc. v. Investpic, LLC, 890 F.3d 1016 USPQ2d 1638 (Fed Cir. 2018) (displaying and disseminating financial information) and Intellectual Ventures 1 LLC v. Capital One Bank (USA) (advanced internet interface providing user display access of customized web pages) indicate displaying information is a well-understood, routine, and conventional function when it is claimed in a merely generic manner (as here). Symantec, TLI, OIP Techs and buySAFE court decisions cited in MPEP § 2106.05(D) (ii) indicate that mere collection or receipt of data over a network is a well-understood, routine, and conventional function when it is claimed in a merely generic manner (as here). Accordingly, a conclusion that the additional elements are well-understood, routine, conventional activity is supported under Berkheimer. For these reasons, there is no inventive concept in the claim, and thus the claim is ineligible.
Dependent claim 2 - 8 is rejected as ineligible subject matter under 35 U.S.C. 101 based on a rationale similar to the claims from which they depend.
Alice Corp. also establishes that the same analysis should be used for all categories of claims (e.g., product and process claims). Therefore, independent non-transitory computer-readable storage medium claim 9 and independent system claim 16 is/are also rejected as ineligible subject matter under 35 U.S.C. 101 for substantially the same reasons as the method claims (claims 1 - 8). The component(s) (e.g., (a) “non-transitory computer-readable storage medium”, “processor”, etc. described in independent non-transitory computer-readable storage medium claim 9; and (b) “processor”, “non-transitory storage medium”, etc. described in independent system claim 16), add nothing of substance to the underlying abstract idea. At best, the product (non-transitory computer-readable storage medium; system) recited in the claim(s) are merely providing an environment to implement the abstract idea.
Dependent claims 10 - 15 and 17 - 20 rejected as ineligible subject matter under 35 U.S.C. 101 based on a rationale similar to the claims from which they depend.
Response to Arguments
Double Patenting
Applicant's arguments have been fully considered but they are not persuasive. No terminal disclaimer has been filed.
101
Applicant's arguments have been fully considered but they are not persuasive.
(1)Applicant argues the claim(s) do not recite a judicial exception (i.e., an abstract idea).
Applicant’s claimed invention is directed to an abstract idea.
Certain Method of Organizing Human Activity
The claimed invention is directed to certain methods of organizing human activity.
Fundamental economic principles or practices relate to the economy and commerce. The claimed invention encompasses fundamental economic principles or practices as it relates to placing an order based on displayed market information (e.g., identifying financial market trends). This interpretation is consistent with the prosecution history of the instant application.
For example, para. [0002] [0003] of applicant’s specification as filed 03/05/25 states:
[0002] The present application relates to analyzing social data, such as without limitation tweets, comment streams, user comments, etc., to identify a financial market trend, and more particularly to analyzing social data to identify a social data trend for purposes of analyzing a financial market trend, a trend associated with a trade, investment, and/or exchange, such as may occur in connection with a stock, bond, commodity, currency, derivative, index or other instrument, e.g., financial market instrument, of value.
[0003] Financial investors can use trends, e.g., trading trends, to identify investment opportunities, or lack thereof. For example, an investor might elect to invest, e.g., in a stock, mutual fund, bond, index, etc., if the investor believes that the item’s price is about to, or has begun, trending upward; and conversely, the investor might elect to sell the item if the item is about to, or has begun, trending downward. Some conventional approaches use current and historic objective information, e.g., volume of trades, price, price volatility, etc.,, to make predictions.
See also, at least claims 1, 9 and 16 as filed 10/07/25.
The claimed invention encompasses commercial or legal interactions. The claimed invention relates to placing an order based on displayed market information (e.g., identifying financial market trends). Placing an order based on displayed market information, in the instant scenario, pertains to agreements in the form of “sales activities or behaviors”, and “business relations”.
The claimed invention encompasses managing personal behavior or relationships or interactions (e.g., determining, selecting, generating, causing ….. the generated GUI to be displayed, etc.).
See also, MPEP §2106.04(a)(2)(II).
Mental Processes
The claimed invention is directed to mental processes. The claimed invention encompasses observations, evaluations, judgements and opinions (e.g., “determining ….. a trend in number of references to a financial market instrument using a corpus of messages of a number of users of at least one online messaging service, each message of the corpus containing a reference to the financial market instrument;
selecting ….. the financial market instrument using the determined trend in number of references to the financial market instrument; generating ….. a graphical user interface (GUI) for an online financial information provider, the GUI comprising information indicating the determined trend in number of references to the financial market instrument;”) which are examples of mental processes.
Contrary to applicant’s arguments, the courts do not distinguish between mental processes that are performed entirely in the human mind and mental processes that require a human to use a physical aid. Similarly, the courts do not distinguish between claims that recite mental processes performed by humans and claims that recite mental processes performed on a computer. Although claims 1 - 20 suggest the steps or acts occur on a computer (i.e., “computing device” in method claims 1 - 8; “non-transitory computer-readable storage medium”, “processor associated with a computing device” in non-transitory computer-readable storage medium claims 9 - 15; “processor”, “non-transitory storage medium” in system claims 16 - 20), nothing forecloses applicant’s claimed invention from being performed by a human and thus applicant’s claimed invention is still directed to a mental process. With respect to applicant’s arguments about the “computing device”/ “system” and “at least one client computing device”, these devices are serving as proxies for human operators (e.g., investors) that may perform similar functions.
See also, MPEP §2106.04(a)(2)(III).
(2)Applicant argues the judicial exception (i.e., an abstract idea) is integrated into a practical application.
Applicant suggests the claimed invention presents a “practical application” because it (a) provides a technical solution to a technical problem (e.g., “Rather, the claims are directed to a specific technical solution to a specific technical problem: the technical challenge of making online social network message data available in a meaningful, relevant format to online financial information website users.” See pg. 8 of applicant’s arguments/ remarks as filed 02/18/26); and (b) provides improvements in the functioning of a computer, or to any other technology or technical field (e.g., “The claims provide a specific improvement to the functioning of computer systems and to the technical field of social networking message data usage in web component generation and display.”. See pg. 9 of applicant’s arguments/ remarks as filed 02/18/26. “….. the claims improve computer capabilities by making social network message data available in a meaningful, relevant format to online financial information website users.” See pg. 11 of applicant’s arguments/ remarks as filed 02/18/26.). The Examiner disagrees.
Applicant’s arguments suggesting the claimed invention (a) provides a technical solution to a technical problem; and (b) provides improvements in the functioning of a computer, or to any other technology or technical field suggests the applicant believes the technical aspects of the invention are substantial. There exists alternative perspectives however.
With respect to applicant’s “solution”/ “improvements”. Placing an order based on displayed market information (e.g., identifying financial market trends) is directed to the underlying abstract idea, not the functioning of the computer itself. What applicant is really arguing is the use of a computer as a tool or the benefits of automation itself.
Adding the words “apply it” (or an equivalent) with the judicial exception is not
not indicative of integration into a practical application. See also, MPEP § 2106.05(f). Merely using a computer as a tool to perform an abstract idea; and mere instructions to implement an abstract idea on a computer are not indicative of integration into a practical application. See also, MPEP §2106.05(f).
With respect to applicant’s arguments regarding “transformation”, applicant appears to argue that the “article” is the “social media post content” and that it is transformed to “a determined trend in number of social media references” (i.e., “determining, by a computing device, a trend in number of references to a financial market instrument using a corpus of messages of a number of users of at least one online messaging service, each message of the corpus containing a reference to the financial market instrument;” as claimed). See pg. 10 of applicant’s arguments/ remarks as filed 02/18/26. This is not the type of “transformation of a particular article to a different state or thing” contemplated however. This is a transformation of an intangible concept such as data processing. In fact, applicant acknowledges the claimed invention relates to “data processing”. See pgs. 8 and 13 of applicant’s arguments/ remarks as filed 02/18/26. See also, MPEP §2106.05(c).
Many of the features applicant relies upon are “insignificant”. For example, the limitations are not significant as to impose meaningful limitations on the claim such that it is not nominally or tangentially related to the invention (e.g., “causing, via the computing device, the generated GUI to be displayed as a web component of the online financial information provider at at least one client computing device.”). Applicant’s claimed invention is exclusively directed to the “computing device”/ “system”. Although applicant appears to argue the significance of the intended use/ result of the display at another, unclaimed device (i.e., “at least one client computing device”) and is therefore nominally or tangentially related to the claimed invention at best.
Adding insignificant extra-solution activity to the judicial exception is not indicative of integration into a practical application. See also, MPEP §2106.05 (g).
Collecting information; analyzing it (e.g., “determining, by a computing device, a trend in number of references to a financial market instrument using a corpus of messages of a number of users of at least one online messaging service, each message of the corpus containing a reference to the financial market instrument; selecting, by the computing device, the financial market instrument using the determined trend in number of references to the financial market instrument; generating, by the computing device, a graphical user interface (GUI) for an online financial information provider, the GUI comprising information indicating the determined trend in number of references to the financial market instrument;”); and displaying certain results of the collection and analysis (e.g., “causing, via the computing device, the generated GUI to be displayed as a web component of the online financial information provider at at least one client computing device.”) merely indicates a field of use or technical environment in which to apply the judicial exception.
Generally linking the use of the judicial exception to a particular technological environment or field of use is not indicative of integration into a practical application. See also, MPEP §2106.05 (h).
(3)Applicant argues the claimed invention provides an inventive concept (i.e., The claim(s) include additional elements, or combinations of elements, that are sufficient to amount to significantly more than the judicial exception (i.e., abstract idea)). Applicant argues the claimed invention is not “well-understood, routine, and conventional”. Applicant argues the claimed invention is “unconventional”. Applicant argues Berkheimer.
As discussed with respect to Step 2A Prong Two, the additional element(s) in the claim amounts to no more than mere instructions to apply the exception using a generic computer component. The same analysis applies here in 2B, i.e., mere instructions to apply an exception using a generic computer component cannot integrate a judicial exception into a practical application at Step 2A or provide an inventive concept in Step 2B.
Furthermore, the additional element(s) under STEP 2A Prong 2 have been evaluated in STEP 2B to determine if it is more than what is well-understood, routine conventional activity in the field. Applicant’s specification as filed 01/05/24 does not provide any indication there is anything other than generic, off-the-shelf computer components, see at least Fig. 5, 6, para. [0031] [0048] [0049] [0050] [0051] [0054] [0055] [0056] [0057]. Furthermore, the prosecution history of the instant application provides Shvadron, US Pub. No. 2010/0257117 operating in a similar environment, suggesting performing tasks such as (a) data processing (e.g., “determining”, “selecting”, “generating”, etc. step(s) as claimed); and (b) data display (e.g., “causing ….. the generated GUI to be displayed”, etc. step(s) as claimed) are well understood, routine and conventional. Shvadron, abstract, [0016] [0017] [0018] [0022] [0025] [0027] [0029] [0031] [0033] [0036] [0037] [0038] [0042] [0045] [0051] [0056] [0060] [0061] [0068] [0069] [0070] [0072] [0074] [0086] [0116] [0134] [0138] [0140] [0141] [0144] [0145] [0147] [0148]. Furthermore, the courts have recognized that computer functions or tasks analogous to those claimed by applicant such as (a) data processing (e.g., “determining”, “selecting”, “generating”, etc. step(s) as claimed); and (b) data display (e.g., “causing ….. the generated GUI to be displayed”, etc. step(s) as claimed) are well understood, routine and conventional. Similarly, the courts have recognized “over a network” communications (e.g., using the Internet to gather data; sending messages or information over a network) are well understood, routine and conventional. Flook, Bancorp court decisions cited in MPEP § 2106.05(D) (ii) indicate performing repetitive calculations is a well-understood, routine, and conventional function when it is claimed in a merely generic manner (as here). SAP America Inc. v. Investpic, LLC, 890 F.3d 1016 USPQ2d 1638 (Fed Cir. 2018) (displaying and disseminating financial information) and Intellectual Ventures 1 LLC v. Capital One Bank (USA) (advanced internet interface providing user display access of customized web pages) indicate displaying information is a well-understood, routine, and conventional function when it is claimed in a merely generic manner (as here). Symantec, TLI, OIP Techs and buySAFE court decisions cited in MPEP § 2106.05(D) (ii) indicate that mere collection or receipt of data over a network is a well-understood, routine, and conventional function when it is claimed in a merely generic manner (as here). Accordingly, a conclusion that the additional elements are well-understood, routine, conventional activity is supported under Berkheimer. For these reasons, there is no inventive concept in the claim, and thus the claim is ineligible.
Dependent claim 2 - 8 is rejected as ineligible subject matter under 35 U.S.C. 101 based on a rationale similar to the claims from which they depend.
Alice Corp. also establishes that the same analysis should be used for all categories of claims (e.g., product and process claims). Therefore, independent non-transitory computer-readable storage medium claim 9 and independent system claim 16 is/are also rejected as ineligible subject matter under 35 U.S.C. 101 for substantially the same reasons as the method claims (claims 1 - 8). The component(s) (e.g., (a) “non-transitory computer-readable storage medium”, “processor”, etc. described in independent non-transitory computer-readable storage medium claim 9; and (b) “processor”, “non-transitory storage medium”, etc. described in independent system claim 16), add nothing of substance to the underlying abstract idea. At best, the product (non-transitory computer-readable storage medium; system) recited in the claim(s) are merely providing an environment to implement the abstract idea.
Dependent claims 10 - 15 and 17 - 20 rejected as ineligible subject matter under 35 U.S.C. 101 based on a rationale similar to the claims from which they depend.
(4) Applicant argues “non-conventional and non-generic arrangement of known, conventional pieces”. Applicant argues “unconventional information”.
An important aspect of the courts finding with respect to the inventive concept in Bascom was that it was a “non-conventional non-generic arrangement of known conventional, pieces” (i.e., In contrast to the “then-known filtering tools”, Bascom’s claimed invention installed filters at the ISP server.). Applicant’s claimed invention is not comparable to Bascom.
First, applicant’s claimed invention is well-understood, routine conventional. As noted above, applicant’s specification as filed 01/05/24 does not provide any indication that the “computing device”/ “system” is anything other than a generic, off-the-shelf computer component. Furthermore, the prosecution history of the instant application provides Shvadron, US Pub. No. 2010/0257117 operating in a similar environment, suggesting performing tasks such as (a) data processing (e.g., “determining”, “selecting”, “generating”, etc. step(s) as claimed); and (b) data display (e.g., “causing ….. the generated GUI to be displayed”, etc. step(s) as claimed) are well understood, routine and conventional. Furthermore, the courts have recognized that computer functions or tasks analogous to those claimed by applicant such as (a) data processing (e.g., “determining”, “selecting”, “generating”, etc. step(s) as claimed); and (b) data display (e.g., “causing ….. the generated GUI to be displayed”, etc. step(s) as claimed) are well understood, routine and conventional. Flook, Bancorp court decisions cited in MPEP § 2106.05(D) (ii) indicate performing repetitive calculations is a well-understood, routine, and conventional function when it is claimed in a merely generic manner (as here). SAP America Inc. v. Investpic, LLC, 890 F.3d 1016 USPQ2d 1638 (Fed Cir. 2018) (displaying and disseminating financial information) and Intellectual Ventures 1 LLC v. Capital One Bank (USA) (advanced internet interface providing user display access of customized web pages) indicate displaying information is a well-understood, routine, and conventional function when it is claimed in a merely generic manner (as here).
Second, applicant’s claimed invention does not provide “non-conventional non-generic arrangement of known conventional, pieces.” As noted above, applicant’s claimed invention does not provide a “distributed” architecture that renders to the claimed invention “unconventional”. Applicant’s claimed invention is directed to a conventional computer network. Furthermore, all processing and decision making in the claimed invention is done exclusively by a single computer (i.e. “computing device”/ “system”). In other words, there is no real distribution of tasks in the claimed invention.
Lastly, the notion of “unconventional information” is a variation of the “data processing” argument discussed earlier. As discussed earlier, “data processing” is not indicative of integration into a practical application. Furthermore, “data processing” is not “unconventional”. Placing an order based on displayed market information (e.g., identifying financial market trends) is directed to the underlying abstract idea
(5) Applicant argues consideration of claims as “a whole”.
All elements of applicant’s claimed invention were considered and applicant’s claimed invention has been considered as a whole. In particular, the elements directed to the judicial exception (i.e., abstract idea) were considered under PRONG 1. See at least pgs. 7 - 8 of the Office action above. The combination of additional elements were considered under PRONG 2. See at least pgs. 8 - 9 of the Office action above.
(6) Applicant argues Enfish and McRo.
Applicant appears to suggest the claimed invention is indicative of integration into a practical application because it technical improvement/ McRo and computer-based improvement/ Enfish. See pg. 10 of applicant’s arguments/ remarks as filed 02/18/26. Examiner disagrees.
Applicant’s claim invention is not indicative of integration into a practical application. Applicant’s claimed invention amounts to mere instructions to implement an abstract on a computer or merely uses the computer as a tool to perform the abstract idea. See also, MPEP § 2106.05(f). Furthermore, the nominal or tangential recitation of technology (e.g., (a) “computing device”/ “system”. See at least claims 1 - 20) is merely adding insignificant extra-solution solution activity to the judicial exception. See also, MPEP § 2106.05(g). Applicant’s claimed invention generally links the use of the judicial exception to a particular technical environment or field of use. See also, MPEP § 2106.05(h).
(7) Applicant argues Ex Parte Desjardins, Appeal No. 2024-000567. Applicant argues Ex Parte Carmody, Appeal No. 2025-002843.
Desjardins and Carmody are not relevant to the facts of the instant application.
First, Desjardins and Carmody are particularly relevant to evaluating claims related to machine learning or artificial intelligence. Applicant’s claimed invention is not directed to artificial intelligence (AI) and/or machine learning.
Second, Desjardins suggests eligibility determinations should turn on whether “the claims are directed to an improvement to computer functionality versus being directed to an abstract idea”. (See Desjardins, pg. 8). Carmody similarly follows guidance set forth in Desjardins. The alleged “improvements” applicant argues related to “making social network message data available in a meaningful, relevant format to online financial information website users”. See pgs. 8, 10 and 12 of applicant’s arguments/ remarks as filed 02/18/26) are directed to the benefits of automation itself.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant’s disclosure and relates to analyzing social network data to identify a financial market trend.
US 20120072368 A1
US 20060080162 A1
US 6236980 B1
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SARA CHANDLER HAMILTON
Primary Examiner
Art Unit 3695
/SARA C HAMILTON/Primary Examiner, Art Unit 3695
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