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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 12/10/2025 has been entered.
Claim Status
Claims 1-20 are currently pending and are presented for examination on the merits.
Double Patenting
Claim 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 11,941694. Although the claims at issue are not identical, they are not patentably distinct from each other because the broader instant claims recite the similar limitations contained in the narrower claims of the parent application. The additional limitations added by the present amendment fail to offer an innovative concept; it merely introduces a stop determined by counter and threshold. As such, the instant claims are still obvious in light of the parent claims.
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 non-statutory 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 reLongi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Omum, 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 §§ 706.02(1)(1) - 706.02(1)(3) 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 USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The 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 e-Terminal 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/process/file/efs/guidance/eTD-info-I.jsp.
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 they recite non-patentable subject matter under MPEP § 2106, e.g., the 2019 PEG (October update). The claimed invention is directed to a judicial exception (e.g., an abstract idea, etc.) without practical application or significantly more.
More particularly, when considering subject matter eligibility under 35 U.S.C. 101, it must be determined whether the claim is directed to one of the four statutory categories of invention, i.e., process, machine, manufacture, or composition of matter. If the claim does fall within one of the statutory categories, it must then be determined whether the claim is directed to a judicial exception (i.e., law of nature, natural phenomenon, and abstract idea), and if so, it must additionally be determined whether the claim is a patent-eligible application of the exception. If an abstract idea is present in the claim, any element or combination of elements in the claim must be sufficient to ensure that the claim amounts to significantly more than the abstract idea itself. Broad categories of abstract ideas include fundamental economic practices, certain methods of organizing human activities, an idea itself, and mathematical relationships/formulas. See, generally Alice Corporation Pty. Ltd. v. CLS Bank International, et al., 573 U.S. __ (2014) (citing Mayo Collaborative Servs. v. Prometheus Labs., Inc.,132 S. Ct. 1289, 1294, 1297-98 (2012)); Federal Register notice titled 2014 Interim Guidance on Patent Subject Matter Eligibility (79 FR 74618), which is found at: http:// www. gpo.gov/fdsys/pkg/FR-2014-12-16/pdf/2014-29414.pdf; 2015 Update to the Interim Guidance; the 2019 Revised Patent Subject Matter Eligibility Guidance, Fed. Reg., Vol. 84, No. 4, January 7, 2019; and associated Office memoranda.
Under the 2019 PEG, step 2a-prong 1, claims 1-20 recite a judicial exception(s), including a method of organizing human activity (e.g. fundamental economic principle). More particularly, the claims recite inventions directed to a financial database that compiles financial transaction activity, including manipulated (pricing) data, and the use of data structure, machine codes, and shorthand to reduce record keeping/ storage requirements. It should also be noted that formula and algorithms are themselves abstract ideas. Here, the pricing data is being collected, manipulated, and stored, after being converted into a code. As such, the claimed invention is drawn towards an abstract idea(s) under the 2019 PEG, and Alice Corporation. Under step 2a-prong 2, the claims fail to recite a practical application of the exception, because the extraneous limitations (e.g., the structure—a processor, memory, data structure, etc.) merely add insignificant extra-solution activity to the judicial exception (MPEP 2106.05(g), generally link the use of the judicial exception to a particular technological environment or field of use (MPEP 2106.05(h)), and/or generally instruct an artisan to apply it (the method) across generic computing technology. A claim does not cease to be abstract for section 101 purposes simply because the claim confines the abstract idea to a particular technological environment in order to effectuate a real-world benefit. See Alice, 573 U.S. at 222; BSG Tech LLC v. BuySeasons, Inc., 899 F.3d 1281, 1287 (Fed. Cir. 2018); buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1353 (Fed. Cir. 2014). “[I]t is not enough, however, to merely improve a fundamental practice or abstract process by invoking a computer merely as a tool.” Customedia Techs., LLC v. Dish Network Corp., 951 F.3d 1359, 1364 (Fed. Cir. 2020) (citations omitted). More particularly, the claims fail to recite an improvement to the functioning of a computer or technology (under MPEP § 2106.05(a)), the use of a particular machine (under § 2106.05(b)), effect a transformation or reduction of a particular article (§ 2106.05(c)), or apply the judicial exception in some other meaningful way beyond generally linking the use of the judicial exception to a particular technological environment (§ 2106.05(e)).
Under part 2b, the extraneous limitations of the independent and dependent claims, taken individually and as a whole, do not amount to significantly more than the abstract idea itself. The limitations, directed towards storing a machine code for a range of price change fail to offer significantly more. It has long been known that short hand or codes save time and space. Plus, as previously stated, brokers have long tracked parameters of financial instruments, such as price, and have manually stored manipulations of same, such as delta or change in price value. Moreover, the claims do not effect an improvement to another technology or technical field; the claims do not amount to an improvement to the functioning of a computer itself; and the claims do not move beyond a general link of the use of an abstract idea to a particular technological environment. Viewing the limitations as an ordered combination does not add anything further than looking at the limitations individually. Under Alice, merely applying or executing the abstract idea on one or more generic processor (e.g., a processor comprising a generic database; a generic element (NIC) for providing website access, etc.; a generic element for receiving user input; and a generic display on the computer, in any of their forms) to carry out the abstract idea more efficiently fails to cure patent ineligibility. See, e.g., Content Extraction, 776 F.3d at 1347 (claims reciting a “scanner” are nevertheless directed to an abstract idea); Mortg. Grader, Inc. v. First Choice Loan Serv. Inc., 811 F.3d 1314, 1324-25 (Fed. Cir. 2016) (claims reciting an “interface,” “network,” and a “database” are nevertheless directed to an abstract idea). In the present case, the specification provides that the system 100 may be implemented across generic computing technology (see, specification, e.g., [0024-32]).
Courts have recognized the following computer functions to be well‐understood, routine, and conventional functions when they are claimed in a merely generic manner: performing repetitive calculations, receiving, processing, and storing data, electronically scanning or extracting data from a physical document, electronic recordkeeping, automating mental tasks, and receiving or transmitting data over a network, e.g., using the Internet to gather data, MPEP 2106.05(d), wherein the italicized tasks are particularly germane to the instant invention.
Claim Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application (Claim 20) that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
Because these claim limitation(s) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, they are being interpreted to cover the corresponding structure shown in FIGS. 1-8 and described in the specification as performing the claimed function, and equivalents thereof.
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. § 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102 of this title, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
a. Determining the scope and contents of the prior art.
b. Ascertaining the differences between the prior art and the claims at issue.
c. Resolving the level of ordinary skill in the pertinent art.
d. Considering objective evidence present in the application indicating obviousness or nonobviousness.
This application currently names joint inventors. In considering patentability of the claims under pre-AIA 35 U.S.C. 103(a), the examiner presumes that the subject matter of the various claims was commonly owned at the time any inventions covered therein were made absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and invention dates of each claim that was not commonly owned at the time a later invention was made in order for the examiner to consider the applicability of pre-AIA 35 U.S.C. 103(c) and potential pre-AIA 35 U.S.C. 102(e), (f) or (g) prior art under pre-AIA 35 U.S.C. 103(a).
Claims 1-20 are rejected under 35 U.S.C. § 103 as being unpatentable over US 2008/0262976 to Gvelesiani, in view of US 2005/0288872 to Old et al.
With respect to Claims 1, 12, and 20, Gvelesiani teaches a system (FIG. 1), a method (FIGS. 2-5), a product including a non-transitory computer readable media ([0027]), and method of compressing data associated with a financial product (Abstract) comprising: determining, by a processor, a price change value for an object over a specific time interval (e.g., times t(m,1) through t(m,N)),
the specific interval identified via a specific interval machine code (FIGS. 2A-G; [0015-16];[0021];[0029];[0049]); establishing, by the processor and in a memory, a data structure the data structure including machine-coded categories each identified via a respective category machine code ([0033], teaches the use of a datastructure):
The MPIS data repository 315 is preferably implemented for scalability reasons as a database system rather than as one or more text files, however any method for storing such information may be used. In addition, many of the modules may be implemented as stored procedures operating in the context of a data repository (e.g., a database management system), or methods attached to financial instrument "objects," although other techniques are equally effective.
each machine-coded category corresponding to a respective change size range FIGS. 2A-G; [0015-16];[0021];[0029];[0049]); determining, by the processor, a specific change size range for the specific value change; determining, by the processor and based on the specific change size range, to place the specific value change in a specific machine-coded category from among the machine- coded categories of the data structure (FIGS. 2A-G; [0015-16];[0021];[0029];[0049]); committing, by the processor, the specific value change to the specific machine-coded category by concatenating the specific interval machine code with a specific category machine code corresponding to the specific machine-coded category to generate a specific value change code (FIGS. 2A-G; [0015-16];[0021];[0029];[0049]); storing the specific value change code within the data structure, thereby compressing value change data by storing change size range data in lieu of individual change size data (FIGS. 2A-G; [0015-16];[0021];[0029];[0049]). Gvelesiani fails to expressly teach the verbiage of the claimed limitations, but verbatim disclosure is not required. Moreover, it is obvious to try where a limited number of known solutions exits (including nomenclature). See, KSR Interntational. It would have been obvious to one of ordinary skill in the art to modify Gvelsesiani to reach the instant limitations as recited.
Gvelesiani fails to expressly teach, but Old teaches determining a stop condition by incrementing, at the end of a data frame of the data structure, a counter in the memory and determining if, after incrementing the counter the counter has exceeded a threshold value. ([0073];[0095]). As discussed in Old, compression may be used to “minimize storage”, and giving more latitude as to the range of values from which the initial threshold value may be chosen. ([0071];[0073];[0103]) As such, it would have been obvious to one of ordinary skill in the art to modify Gvelesiani to employ threshold determined by a counter and stop, in the process of compressing price change data, so as to further minimize storage.
With respect to Claims 8, Gvelesiani teaches where each category machine code has an identical code length. [0022]
With respect to Claims 9, Gvelesiani teaches where the identical code length is different from a code length used for a machine code that indicates that no value change occurred within an interval. FIG. 2c; [0022]
With respect to Claims 10, and 19, Gvelesiani teaches where each category machine code includes a binary code. FIG. 1; [0015]
With respect to Claims 11, Gvelesiani teaches where each category machine code whether the corresponding machine-coded category includes positive ranges or negative ranges. (FIG. 1, up and down teaches positive and negative ranges)
Claims 2-7, and 13-18 are rejected under 35 U.S.C. § 103 as being unpatentable over US 2008/0262976 to Gvelesiani, in view of Old, and further in view of US 2013/0204832 to Juola et al.
With respect to Claim 2-6, 13-17, Gvelesiani teaches receiving a request for a validation of a transaction including the object, the transaction occurring within the specific interval; accessing, by the processor, the data structure to analyze a duration spanning multiple intervals including the specific interval ([0021];[0049];FIGS. 2A-G). Gvelesiani fails to expressly teach, but Juola teaches determining, by the processor, that occupancy in the specific machine coded category of the data structure is below a defined threshold for the duration; determining, by the processor and based on the below-threshold occupancy, that the specific value change includes an abnormal value change; and flagging, by the processor and based on determining that the specific value change includes the abnormal value change, the specific interval without providing the validation. ([0008], determining abnormality is taught by teaching use of standard of deviation to measure “significance of the trend”) Juola discusses the use of pattern recognition and triggering in a scientific method. [0004] As such, it would have been obvious to one of ordinary skill in the art to modify Gvelesiani to use threshold based determinations of abnormal value change.
With respect to Claims 7, and 18, Gvelesiani teaches initiating, responsive to the flagging, a recheck of the transaction. ([0036], repeating a loop teaches a recheck of a determination)
Response to remarks
Applicant’s remarks submitted on 12/10/2025 have been fully considered, but are not persuasive where objections/rejections are maintained. The amendment to the claims primarily adds further limitation reciting determination of a stop condition by incrementing a counter until exceeding a threshold. The Double Patenting rejection is traversed in the remarks; however, said traversal is not persuasive, because the differences in the claims sets of the instant and parent application remain patentably insignificant. The introduction of a stop determined by counter and threshold is conventional, and known in the state of the art at the time. The amendment fails to overcome the § 101 rejection. Incrementing a counter until a threshold is reached to determine a stop condition fails to offer an innovative concept. (See, the prior art references of record, including Old). As per § 103, Old has been added to teach the added limitation, such that Applicant’s remarks directed towards the prior combination is moot. It is noted that a combination claim combining two or more dependent claims to recite the application of the independent method to determining an abnormality has not been presented. The technical solution directed to a streamlined determination of abnormalities argued by Applicant is not recited in the independent claims. Contour IP Holdings distinguishes from the instant amendment because determining a stop using counter and threshold is conventional as opposed to an innovative specific way of achieving results. Structure such as “financial database” are recited at a high level and described in the specification generically ([21-23]).
As previously stated, the § 101 rejection is maintained because the claims remain directed to an abstract idea (e.g., categorizing data, and using shorthand or a “compression” code to group data and save space and resources) without practical application. It is appreciated that the use of shorthand or compression always results in less storage requirements; however, the mere linkage to a particular environment of this prior-known tool is insufficient to cure patent ineligibility. The use of concatenated codes to determine anomalies in the change in price and save resources and space fails to effect a practical application. Applicant’s assertions (e.g., changing how the processor operates, etc.) is not persuasive. A technical solution that improves the functioning of a computer or technology is not presented; rather a computer-implemented business method is recited in non-transitory computer-readable media and system of means embodiments, wherein the structure is recited in a general sense. Cases such as Finjan, Bascom, and DDR Holding are distinguishable, because the instant case does not involve a technical solution (e.g., an innovative filtering configuration, etc.) or change in matter. As per the prior art rejection, the § 103 rejections are maintained. Old has been added to teach determination of a stop condition based on the use of a counter and threshold. Gvelesiani teaches one of ordinary skill in the art, armed with the state of the art at the time, each and every limitation of the claim as recited. Gvelesiani (applied in the header of the rejection of all claims) teaches a range determination, which would teach one of ordinary skill in the art determining a stop condition or range value determination (via mental steps), and also changing a range value. Please note that the applied reference(s) need not use the same terminology, or disclose the limitation verbatim, and also that the entirety of a prior art reference is to be applied to the respective claim(s), such that the pinpoint citations above are exemplary and provided for Applicant’s benefit; other locations within the applied reference(s) may further support the rejection. MPEP 2141.02(VI).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to WILLIAM J JACOB whose telephone number is (571)270-3082. The examiner can normally be reached on M-F 8:00-5:00, alternating Fri. off.
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, Matthew Gart can be reached on 5712723955. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see http://pair-direct.uspto.gov. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative or access to the automated information system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/WILLIAM J JACOB/Examiner, Art Unit 3696