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 .
DETAILED ACTION
This is a reply to the application filed on 10/23/2023, in which, claims 1-28 are pending. Claims 1, 11, 21, 25 are independent.
Pursuant to a Restriction requirement (mailed 8/20/24), Applicant has elected (see response filed 10/24/24), without traverse, Group I, claims 1-20.
When making claim amendments, the applicant is encouraged to consider the references in their entireties, including those portions that have not been cited by the examiner and their equivalents as they may most broadly and appropriately apply to any particular anticipated claim amendments.
Information Disclosure Statement
The information disclosure statement (IDS) submitted is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
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.
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. Claim(s) 1, 11 is/are directed to a method and system (apparatus). The claim(s) do not include additional elements that are sufficient to amount to significantly more than the judicial exception because the claimed invention is directed to a judicial exception (i.e., an abstract idea) without significantly more. Based upon consideration of all of the relevant factors with respect to the claims as a whole, claims are held to claim an unpatentable abstract idea, and are therefore rejected as ineligible subject matter under 35 U.S.C. § 101.
Inventions for a “new and useful process, machine, manufacture, or composition of matter” generally constitute patent-eligible subject matter. 35 U.S.C. § 101. However, the U.S. Supreme Court has long interpreted 35 U.S.C. § 101 to include implicit exceptions: “[l]aws of nature, natural phenomena, and abstract ideas” are not patentable. Alice Corp. v. CLS Bank Int’l, 573 U.S. 208,216 (2014).
The Supreme Court, in Alice, reiterated the two-step framework previously set forth in Mayo Collaborative Services v. Prometheus Laboratories, Inc., 566 U.S. 66 (2012), “for distinguishing patents that claim laws of nature, natural phenomena, and abstract ideas from those that claim patent-eligible applications of those concepts.” Alice Corp., 573 U.S. at 217. The first step in that analysis is to “determine whether the claims at issue are directed to one of those patent-ineligible concepts.” Id. If the claims are not directed to a patent-ineligible concept, e.g., an abstract idea, the inquiry ends. Otherwise, the inquiry proceeds to the second step where the elements of the claims are considered “individually and ‘as an ordered combination’” to determine whether there are additional elements that “‘transform the nature of the claim’ into a patent-eligible application.” Id. (quoting Mayo, 566 U.S. at 79, 78). This is “a search for an ‘inventive concept’ - i.e., an element or combination of elements that is ‘sufficient to ensure that the patent in practice amounts to significantly more than a patent upon the [ineligible concept] itself.’” Id. at 217-18 (alteration in original).
The USPTO published revised guidance on January 7, 2019, for use by USPTO personnel in evaluating subject matter eligibility under 35 U.S.C. § 101. 2019 REVISED PATENT SUBJECT MATTER ELIGIBILITY GUIDANCE, 84 Fed. Reg. 50 (Jan. 7, 2019) (the “2019 Revised Guidance”). That guidance revised the USPTO's examination procedure with respect to the first step of the Mayo/Alice framework by (1) “[p]roviding groupings of subject matter that [are] considered an abstract idea”; and (2) clarifying that a claim is not “directed to” a judicial exception if the judicial exception is integrated into a practical application of that exception. Id. at 50. 1
The first step, as set forth in the 2019 Revised Guidance (i.e., Step 2A), is, thus, a two-prong test. In Step 2A, Prong One, we look to whether the claim recites a judicial exception, e.g., one of the following three groupings of abstract ideas: (1) mathematical concepts; (2) certain methods of organizing human activity, e.g., fundamental economic principles or practices, commercial or legal interactions; and (3) mental processes. See 2019 Revised Guidance, 84 Fed. Reg. at 54; MPEP §§ 2106.04(II)(A)(l), 2106.04(a). If so, we next determine, in Step 2A, Prong Two, whether the claim as a whole integrates the recited judicial exception into a practical application of that exception, i.e., whether the additional elements recited in the claim beyond the judicial exception, apply, rely on, or use the judicial exception in a manner that imposes a meaningful limit on the judicial exception, such that the claim is more than a drafting effort designed to monopolize the judicial exception. See 2019 Revised Guidance, 84 Fed. Reg. at 54-55; MPEP §§ 2106.04(II)(A)(2), 2106.04(d). Only if the claim (1) recites a judicial exception and (2) does not integrate that exception into a practical application do we conclude that the claim is “directed to” the judicial exception, e.g., an abstract idea. See 2019 Revised Guidance, 84 Fed. Reg. at 54-55; MPEP § 2106.04(II)(A)(2).
If the claim is determined to be directed to a judicial exception under Step 2A, we next evaluate the additional elements, individually and in combination, in Step 2B, to determine whether they provide an inventive concept, i.e., whether the additional elements or combination of elements amounts to significantly more than the judicial exception itself; only then, is the claim patent eligible. See 2019 Revised Guidance, 84 Fed. Reg. at 56; MPEP § 2106.05.
Step One of the Mayo/Alice Framework (2019 Revised Guidance, Step 2A)
2019 Revised Guidance, Step 2A, Prong 1
The abstract idea to which claims 1 and 11 are directed to is mental process such as concepts performed in the human mind (including an observation, evaluation, judgement, opinion). In particular, the claims recite the following abstract concepts:
(a) “receiving an algorithm and a data set within a secure computing node” (i.e., abstract idea of collecting data/information as found abstract by the Courts in Internet Patents, Content Extraction, Digitech, CyberSource, Electric Power Group, Classen, FairWarning)
(b) “training the algorithm on the data set to generate a set of weights” (i.e., abstract idea of concepts relating to tracking/organizing/classifying data by using a mathematical algorithm at a higher level of generality to generate probability weights based on the mental process of analyzing data as found abstract by the Courts in TLI Comms, Electic Power Group, Classen, FairWarning)
(c) “determining if the algorithm originated from a trusted source” (i.e., abstract idea of mental process of analyzing data as found abstract by the Courts in TLI Comms, Digitech, SmartGene, Bancorp Servs, Electric Power Group, Classen, FariWarning, Cybersource)
(d) “performing unintentional data exfiltration analysis when the algorithm originates from the trusted source” (i.e., abstract idea of mental process of analyzing data as found abstract by the Courts in TLI Comms, Digitech, SmartGene, Bancorp Servs, Electric Power Group, Classen, FariWarning, Cybersource)
(e) “performing intentional data exfiltration analysis when the algorithm does not originate from the trusted source” (i.e., abstract idea of mental process of analyzing data as found abstract by the Courts in TLI Comms, Digitech, SmartGene, Bancorp Servs, Electric Power Group, Classen, FariWarning, Cybersource)
(f) “preventing exporting of the set of weights when an exfiltration event is determined” (i.e., abstract idea of mental process of informing, notifying, displaying the result of data processing to an entity as found abstract by the Courts in FairWarning, Content Extraction. Court has noted “merely presenting the results of abstract processes of collecting and analyzing information, without more (such as identifying a particular tool for presentation), is abstract as an ancillary part of such collection and analysis.” See e.g., Electric Power Group, 830 F.3d 1350, 1351, 1353–54)
(g) “exporting the set of weights when no exfiltration event is determined” (i.e., abstract idea of mental process of informing, notifying, displaying the result of data processing to an entity as found abstract by the Courts in FairWarning, Content Extraction. Court has noted “merely presenting the results of abstract processes of collecting and analyzing information, without more (such as identifying a particular tool for presentation), is abstract as an ancillary part of such collection and analysis.” See e.g., Electric Power Group, 830 F.3d 1350, 1351, 1353–54)
The Supreme Court and Federal Circuit have identified abstract ideas in patent claims by making comparisons to concepts found in past decisions to be judicial exceptions to eligibility. The 2019 IEG summarizes concepts the courts have considered to be abstract ideas by associating eligibility decisions with judicial descriptors (e.g., “an idea of itself,” “certain methods of organizing human activities”, “mathematical relationships and formulas”) based on common characteristics. These associations define the judicial descriptors in a manner that stays within the confines of the judicial precedent, with the understanding that these associations are not mutually exclusive, i.e., some concepts may be associated with more than one judicial descriptor.
The abstract functions of the claims in the case are claim(s) is/are directed to method and CRM of data processing to calculate probability weights (i.e., abstract idea mental process and mathematical transformation/correlation) and making a determination whether to export the weights (i.e., abstract idea of mental observation or judgment) as defined by the claimed steps above.
The present claims, as a whole, and individual limitations, are reciting abstract concept of data collection, categorization to calculate probability weights and making a determination whether to prevent/export the weights. As such the claims are analogous to FairWarning, 839 F.3d at 1093-94 (concluding claims directed to "collecting and analyzing information to detect misuse and notifying a user when misuse is detected" to be mental processes within the abstract-idea category); Electric Power Group; and TLI Comms. Note that merely using well-known and commonly used data processing algorithm of machine learning in a generic and superficial manner to categorize the data does not convert a known abstract idea (i.e., data categorization) into an eligible subject matter. See, Bancorp Servs., L.L. C. v. Sun Life Assur. Co. of Canada (U.S.), 687 F.3d 1266, 1277-78 (Fed. Cir. 2012). Looking at the steps of the claims, for each of the claims, data is simply being collected, analyzed, converted using mathematical algorithm to calculate probability weights which was ruled abstract in:
a. Collecting and comparing known information (Classen);
b. Comparing information regarding a sample or test subject to a control or target data (Ambry/Myriad CAFC);
c. Collecting and analyzing information to detect misuse and notifying a user when misuse is detected (FairWarning);
d. Data recognition and storage (Content Extraction);
e. Obtaining and comparing intangible data (Cybersource);
f. Collecting information, analyzing it, and displaying certain results of the collection and analysis (Electric Power Group);
g. Organizing and manipulating information through mathematical correlations (Digitech);
h. Virus Screening (Int. Ventures v. Symantec ‘610 patent);
i. A mathematical formula for calculating parameters indicating an abnormal condition (Grams);
j. Collecting, selecting, categorizing, analysis, and display results of the analysis (Electric Power Group);
Furthermore, the invention is nothing more than data collecting, categorizing, organizing with mathematical operations/correlations being performed on the data to predict a weight as described in the claims that can be performed mentally (or with a pen and piece of paper). The steps are similar to concepts and ideas that have been identified as abstract by the courts. For example, collecting information, analyzing it, and displaying certain results of the collection and analysis (Electric Power Group); a mathematical formula for calculating parameters indicating an abnormal condition (Grams); collecting and analyzing information to detect misuse and notifying a user when misuse is detected (FairWarning); and obtaining and comparing intangible data (Cybersource). While the specific facts of the case differ from these cases, the claims are still directed to collecting and categorizing data to predict a risk score. Further, each and every step can be performed mentally and with pen and paper. A computer is not necessary to generate, receive and correlate/compare data. Even further still, any steps that deal with generating, receiving, analyzing are insignificant, extra solution activity because receiving, analyzing and transmitting data, analyzing and processing collected data to derive weights, and making a decision whether to export weights are all well-known in the computer network security arts.
2019 Revised Guidance, Step 2A, Prong 2
The 2019 Revised Guidance sets forth a non-exhaustive listing of considerations indicative that an additional element or combination of elements may have integrated a recited judicial exception into a practical application. See 2019 Revised Guidance, 84 Fed. Reg. at 55; MPEP § 2106.04(d). In particular, the Guidance describes that an additional element may have integrated the judicial exception into a practical application if, inter alia, the additional element reflects an improvement in the functioning of a computer or an improvement to other technology or a technical field. Id. At the same time, the Guidance makes clear that 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; or only generally linking the use of the judicial exception to a particular technological environment or field are not sufficient to integrate the judicial exception into a practical application. Id.
The abstract functions of the claims in the case are claim(s) is/are directed to method and CRM of data processing to calculate probability weights (i.e., abstract idea mental process and mathematical transformation/correlation) and making a determination whether to export the weights (i.e., abstract idea of mental observation or judgment) as defined by the claimed steps. The claims do not require an arguably inventive set of components, methods, or algorithms. The recitation of a machine learning model to manipulate the information describes a solution merely at the level of a generic black box to calculate probability weights. The abstract idea is implemented using generic computing elements (“computers, programs, medium”) and an off the shelf, generic machine learning (mathematical statistical algorithm) model that do not integrate a practical application of the abstract idea in the claims (step 2A, prong 2). Accordingly, even in combination, these additional generic computing elements do not integrate the abstract idea into a practical application because they do not impose any meaningful limits on practicing the abstract idea. The claims recite a mental process and mathematical concepts, i.e., an abstract idea, and that the additional elements recited in the claim beyond the abstract idea are no more than generic computer components used as tools to perform the recited abstract idea and insignificant extra-solution activity. As such, they do not integrate the abstract idea into a practical application. See Alice Corp., 573 U.S. at 223-24 ("[W]holly generic computer implementation is not generally the sort of ‘additional featur[ e]’ that provides any ‘practical assurance that the process is more than a drafting effort designed to monopolize the [abstract idea] itself.’” (quoting Mayo, 566 U.S. at 77)); 2019 Revised Guidance, 84 Fed. Reg. at 55 (identifying “an additional element adds insignificant extra-solution activity to the judicial exception” and “an additional element does no more than generally link the use of a judicial exception to a particular technological environment or field of use” as examples in which a judicial exception has not been integrated into a practical application).
Step Two of the Mayo/Alice Framework (2019 Revised Guidance, Step 2B)
The relevant question under Step 2B is whether claim includes an additional element or combination of elements adds specific limitations beyond the judicial exception that are not “well-understood, routine, conventional activity” in the field or simply appends well-understood, routine, conventional activities previously known to the industry to the judicial exception. Here, the additional elements of claim beyond the abstract idea, namely, a “computer system”, “algorithm”, “program product” is a conventional computing equipment and algorithm used in a well-understood, routine, and conventional manner. These additional elements do not provide an inventive concept; rather, they simply append well-understood, routine, conventional activities previously known to the industry to the judicial exception.
Applying the test to the claims in the application, the structural elements of the claims, which include a computer when taken in combination with the functional elements claim(s) is/are directed to method/CRM data processing to calculate probability weights and making a determination whether to export the weights, together do not offer “significantly more” than the abstract idea itself because the claims do not recite an improvement to another technology or technical field, an improvement to the functioning of any computer itself, or provide meaningful limitations beyond generally linking an abstract idea to a particular technological environment (a general purpose computer and/or environment of the user). When considered as an ordered combination, the Examiner does not find any combination of the additional elements that amounts to more than the sum of the parts. The Examiner finds that the individual elements of the claims are performing their intended roles and functions. In most cases, the additional elements are applied merely to carry out data processing, as discussed above, fall under well-understood, routine, and conventional functions of generic computers – in our common day-to-day interactions. Note: Applicant’s disclosure states a generic 3rd party vendor provided hardware and software is used to execute the algorithms (¶56-¶61); note also cited art of record discloses processors; devices, programs, shift registers for shifting bits left/right, flip-flops in performing mathematical operations such as exponentiation operations (see, e.g., US 20210360010 A1: Fig. 10, ¶122-¶130). Therefore, the claimed interactions of the various generically recited methods / devices lacks an unconventional step that confines the claim to a particular useful application in the sense that the result is equivalent to purely mental activity, e.g., data categorization to predict a weight.
Dependent claims do not add an inventive step to the abstract idea of the independent claims and are therefore rejected based on the aforementioned rationale discussed in the rejection.
Dependent claims 2-10 and 11-20, pertain to making mental observations/judgments/analysis/comparisons (e.g., “wherein the determining if the algorithm is originating from the trusted source includes assessing a reputation for an algorithm developer”; “wherein the unintentional data exfiltration analysis includes weight profiling and data scrubbing”; “wherein the data scrubbing includes comparing the set of weights against the data set”; “wherein the intentional data exfiltration analysis includes performing at least one of a differential privacy methodology, a post fact analysis, a data duplication or distillation analysis, a data injection analysis and a weight profiling analysis”, and so forth) without adding any inventive concept or using an unconventional computing element or improving the underlying computer technology.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure:
US 20210360010 A1
US 20240184885 A1
US 20230334145 A1
US 20230229786 A1
US 20230044294 A1
US 20230044102 A1
US 20210141940 A1
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/SYED A ZAIDI/Primary Examiner, Art Unit 2432
1 The MANUAL OF PATENT EXAMINING PROCEDURE (“MPEP”) incorporates the revised guidance and subsequent updates at § 2106 (9th ed. Rev. 10.2019, rev. June 2020).