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 .
It appears the inventor(s) filed the current application pro se (i.e., without the benefit of representation by a registered patent practitioner). While inventors named as applicants in a patent application may prosecute the application pro se, lack of familiarity with patent examination practice and procedure may result in missed opportunities in obtaining optimal protection for the invention disclosed. The inventor(s) may wish to secure the services of a registered patent practitioner to prosecute the application, because the value of a patent is largely dependent upon skilled preparation and prosecution. The Office cannot aid in selecting a patent practitioner.
A listing of registered patent practitioners is available at https://oedci.uspto.gov/OEDCI/. Applicants may also obtain a list of registered patent practitioners located in their area by writing to Mail Stop OED, Director of the U.S. Patent and Trademark Office, P.O. Box 1450, Alexandria, VA 22313-1450.
Drawings
New corrected drawings in compliance with 37 CFR 1.121(d) are required in this application because FIG. 6C and 6D of the drawings are illegible and do not comply with line uniformity, density definition requirement and the use of shading standards put forth in 37 CFR 1.84 (l) and (m):
(l) All drawings must be made by a process which will give them satisfactory reproduction characteristics. Every line, number, and letter must be durable, clean, black (except for color drawings), sufficiently dense and dark, and uniformly thick and well-defined. The weight of all lines and letters must be heavy enough to permit adequate reproduction. This requirement applies to all lines however fine, to shading, and to lines representing cut surfaces in sectional views. Lines and strokes of different thicknesses may be used in the same drawing where different thicknesses have a different meaning.
(m) Shading. The use of shading in views is encouraged if it aids in understanding the invention and if it does not reduce legibility. Shading is used to indicate the surface or shape of spherical, cylindrical, and conical elements of an object. Flat parts may also be lightly shaded. Such shading is preferred in the case of parts shown in perspective, but not for cross sections. See paragraph (h)(3) of this section. Spaced lines for shading are preferred. These lines must be thin, as few in number as practicable, and they must contrast with the rest of the drawings. As a substitute for shading, heavy lines on the shade side of objects can be used except where they superimpose on each other or obscure reference characters. Light should come from the upper left corner at an angle of 45°. Surface delineations should preferably be shown by proper shading. Solid black shading areas are not permitted, except when used to represent bar graphs or color.
Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as "amended." If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either "Replacement Sheet" or "New Sheet" pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Applicant is advised to employ the services of a competent patent draftsperson outside the Office, as the U.S. Patent and Trademark Office no longer prepares new drawings.
The Examiner further notes that due the grayscale conversion process inherent in the Office's electronic application filing system, elements of FIG. 6C and 6D are rendered partially illegible which interferes with providing a clear disclosure of the invention to the public.
Applicant may further refer to MPEP § 608.02 et seq. for further information regarding acceptability of drawings presented in a utility patent application.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1 (2-3 due to their dependencies) are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for pre-AIA the inventor(s), at the time the application was filed, had possession of the claimed invention. For instance, in In re Hayes Microcomputer Products, the written description requirement was satisfied because the specification disclosed the specific type of microcomputer used in the claimed invention as well as the necessary steps for implementing the claimed function. The disclosure was in sufficient detail such that one skilled in the art would know how to program the microprocessor to perform the necessary steps described in the specification. In re Hayes Microcomputer Prods., Inc. Patent Litigation, 982 F.2d 1527, 1533-34, 25 USPQ2d 1241, ___ (Fed. Cir. 1992). In the present applicant, claim 1 discloses “providing for a solution to systematic bias where providing is not supported in the specification as to how the applicant is “…providing…” in order to show possession of the invention at the time of filing. While one skilled in the art could have devised a way to accomplish this aspect of the invention, Applicant’s original disclosure lacks sufficient detail to explain how Applicant envisioned achieving the goal of “providing for a solution to systematic bias…”. Simply stating or re-stating the claim limitation does not provide enough support to show possession. Since these important details about how the invention operates are not disclosed, it is not readily evident that Applicant has full possession of the invention at the time of filing (i.e., the original disclosure fails to provide adequate written description to support the claimed invention as a whole). Neither the specification nor the drawings disclose in detail the specific steps or algorithm needed to perform the operation. If the specification does not provide a disclosure of the computer and algorithm in sufficient detail to demonstrate to one of ordinary skill in the art that the inventor possessed the invention including how to program the disclosed computer to perform the claimed function, a rejection under 35 U.S.C. 112a, for lack of written description must be made. For more information regarding the written description requirement, see MPEP §2161.01- §2163.07(b).
Claims 1 (2-3 due to their dependencies) are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for pre-AIA the inventor(s), at the time the application was filed, had possession of the claimed invention. For instance, in In re Hayes Microcomputer Products, the written description requirement was satisfied because the specification disclosed the specific type of microcomputer used in the claimed invention as well as the necessary steps for implementing the claimed function. The disclosure was in sufficient detail such that one skilled in the art would know how to program the microprocessor to perform the necessary steps described in the specification. In re Hayes Microcomputer Prods., Inc. Patent Litigation, 982 F.2d 1527, 1533-34, 25 USPQ2d 1241, ___ (Fed. Cir. 1992). In the present applicant, claim 1 discloses “generating an unbiased non-price-based index weight” where generating is not supported in the specification as to how the applicant is “…generating…” in order to show possession of the invention at the time of filing. While one skilled in the art could have devised a way to accomplish this aspect of the invention, Applicant’s original disclosure lacks sufficient detail to explain how Applicant envisioned achieving the goal of “generating an unbiased non-price-based index weight.” Simply stating or re-stating the claim limitation does not provide enough support to show possession. Since these important details about how the invention operates are not disclosed, it is not readily evident that Applicant has full possession of the invention at the time of filing (i.e., the original disclosure fails to provide adequate written description to support the claimed invention as a whole). Neither the specification nor the drawings disclose in detail the specific steps or algorithm needed to perform the operation. If the specification does not provide a disclosure of the computer and algorithm in sufficient detail to demonstrate to one of ordinary skill in the art that the inventor possessed the invention including how to program the disclosed computer to perform the claimed function, a rejection under 35 U.S.C. 112a, for lack of written description must be made. For more information regarding the written description requirement, see MPEP §2161.01- §2163.07(b).
Claims 1 (2-3 due to their dependencies) are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for pre-AIA the inventor(s), at the time the application was filed, had possession of the claimed invention. For instance, in In re Hayes Microcomputer Products, the written description requirement was satisfied because the specification disclosed the specific type of microcomputer used in the claimed invention as well as the necessary steps for implementing the claimed function. The disclosure was in sufficient detail such that one skilled in the art would know how to program the microprocessor to perform the necessary steps described in the specification. In re Hayes Microcomputer Prods., Inc. Patent Litigation, 982 F.2d 1527, 1533-34, 25 USPQ2d 1241, ___ (Fed. Cir. 1992). In the present applicant, claim 1 discloses “transforming obtained data objects to an unbiased non-price-based index weight” where transforming is not supported in the specification as to how the applicant is “…transforming…” in order to show possession of the invention at the time of filing. While one skilled in the art could have devised a way to accomplish this aspect of the invention, Applicant’s original disclosure lacks sufficient detail to explain how Applicant envisioned achieving the goal of “transforming obtained data objects to an unbiased non-price-based index weight.” Simply stating or re-stating the claim limitation does not provide enough support to show possession. Since these important details about how the invention operates are not disclosed, it is not readily evident that Applicant has full possession of the invention at the time of filing (i.e., the original disclosure fails to provide adequate written description to support the claimed invention as a whole). Neither the specification nor the drawings disclose in detail the specific steps or algorithm needed to perform the operation. If the specification does not provide a disclosure of the computer and algorithm in sufficient detail to demonstrate to one of ordinary skill in the art that the inventor possessed the invention including how to program the disclosed computer to perform the claimed function, a rejection under 35 U.S.C. 112a, for lack of written description must be made. For more information regarding the written description requirement, see MPEP §2161.01- §2163.07(b).
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1-3 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 1 recites the limitation "computer system" in lines 12 and 13. There is insufficient antecedent basis for this limitation in the claim.
Claim 1 recites the limitation "said computer" in line 1. There is insufficient antecedent basis for this limitation in the claim.
Claim 1 recites the limitation "said system" in line 1. There is insufficient antecedent basis for this limitation in the claim.
Claim 2 recites the limitation "computer network" in line 1. There is insufficient antecedent basis for this limitation in the claim.
Claim 3 recites the limitation "operations" in line 1. There is insufficient antecedent basis for this limitation in the claim.
Claim 1 recites the limitation "multidimensional array" in lines 7, 9, 11, and 15. There is insufficient antecedent basis for this limitation in the claim.
Claim 2 recites the limitation "multidimensional array" in line 2. There is insufficient antecedent basis for this limitation in the claim.
Claim 1 is indefinite for failing to particularly point out and distinctly claim the subject matter of “determining an adjusted size factor” such that one of ordinary skill in the art cannot determine the claims scope.
Claim 1 is indefinite for failing to particularly point out and distinctly claim the subject matter of “generating an unbiased non-price-based index weight” such that one of ordinary skill in the art cannot determine the claims scope.
Claim 1 is indefinite for failing to particularly point out and distinctly claim the subject matter of “transforming obtained data objects to an unbiased non-price-based index weight” such that one of ordinary skill in the art cannot determine the claims scope.
Where applicant acts as his or her own lexicographer to specifically define a term of a claim contrary to its ordinary meaning, the written description must clearly redefine the claim term and set forth the uncommon definition so as to put one reasonably skilled in the art on notice that the applicant intended to so redefine that claim term. Process Control Corp. v. HydReclaim Corp., 190 F.3d 1350, 1357, 52 USPQ2d 1029, 1033 (Fed. Cir. 1999). The term “universe of securities” in claim 1 and 3 is used by the claim to mean “universe of stocks,” while the accepted meaning is “all different types of securities, including stocks, bonds, derivatives, debt or rights to ownership.” The term is indefinite because the specification does not clearly redefine the term.
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 1-3 are rejected under 35 U.S.C. 101 because the claimed invention is directed to a judicial exception (abstract idea) without significantly more.
Claim 1: Ineligible.
Under the broadest reasonable interpretation, the following claim terms are presumed to have their plain meaning consistent with the specification as it would be interpreted by one of ordinary skill in the art. MPEP § 2111.
Claim 1 recites “data objects.” The applicant’s specification fails to describe a “data object.” Accordingly, under broadest reasonable interpretation, data objects are defined as a structure that encapsulates data, acting as a container for storing and manipulating data.
Claim 1 recites an apparatus, which is a statutory category of invention (Step 1: YES).
The claim is analyzed to determine whether it is directed to a judicial exception. Claim 1 recites connected to the network real-time data objects associated with a universe of securities, unbiased non-price-based index weights for each given security in the universe of securities, for each given security automatically: a. obtaining size factor object data, for each given security at present time (tO), the data objects being obtained from the multidimensional rray, b. providing for a solution to systematic bias by determining an adjusted size factor at present time (tO), for each given security, the computer stores the adjusted size factor in the multidimensional array, c. generating an unbiased non-price-based index weight for the given security at present time (tO), the unbiased non-price-based index weight, for the given security, being structured and stored in the multidimensional array, automatically performs steps a. through c. for each given security, transforming obtained data objects to an unbiased non-price-based index weight for each given security, and wherein automatically in real-time updates the unbiased non-price-based index weight, for each given security, and stores the updated unbiased non-price-based index weight in the multidimensional array. These limitations, as drafted, under its broadest reasonable interpretation, covers performance via certain methods of organizing human activity and mental processes, but for the recitation of generic computer components. Under human activity, the limitations are commercial interactions. More specifically, under commercial interactions, the claims involve trading securities as between two people as a business relationship. Under mental process, the currently recited abstract idea can be performed in the human mind, or by a human using pen and paper. Accordingly, the claim recites an abstract idea. The mere recitation of generic computer components in the claims do not necessarily preclude that claim from reciting an abstract idea. (Step 2A-Prong 1: Yes. The claims recite an abstract idea).
This judicial exception is not integrated into a practical application. In particular, the claim recites the additional elements of a computer connected to a communication network, said computer obtains through one or more proprietary databases, , the computer structuring and storing obtained data objects in specifically configured internal database, a storage medium connected to said computer and having a program stored thereon, the program executed by the computer in real time computing, one or more proprietary databases, and storage medium. The additional elements are just applying generic computer components to the recited abstract limitations of trading securities between two people as in a business reltionship (MPEP 2106.05(f)). The computer components are recited at such a high-level of generality (i.e. as a generic computer components) such that it amounts to no more than mere instructions to apply the exception using generic computer components, and the claims fail to recite technological detail as to how the step of the judicial exception is accomplished. Accordingly, these additional elements, when considered separately and as an ordered combination, do not integrate the abstract idea into a practical application because they do not impose any meaningful limits on practicing the abstract idea and are at a high level of generality. (Step 2A-Prong 2: NO. The judicial exception is not integrated into a practical application).
Next, the claims are analyzed to determine if there are additional claim limitations that individually, or as an ordered combination, ensure that the claim amounts to significantly more than the abstract ideas (whether claim provides inventive concept). As discussed with respect to Step 2A2 above, the additional elements of (a computer connected to a communication network, said computer obtains through one or more proprietary databases, , the computer structuring and storing obtained data objects in specifically configured internal database, a storage medium connected to said computer and having a program stored thereon, the program executed by the computer in real time computing, one or more proprietary databases, and storage medium) in the claims amount to no more than mere instructions to apply the exception using a generic computer component. The same analysis applies here in Step 2B, i.e., mere instructions to apply an exception using a generic computer component and cannot integrate a judicial exception into a practical application at Step 2A or provide an inventive concept in Step 2B. Viewing the limitations as an ordered combination does not add anything further than looking at the limitations individually. When viewed either individually, or as an ordered combination, the additional limitations do not amount to a claim as a whole that is significantly more than the abstract idea itself. Therefore, the claims do not amount to significantly more than the recited abstract idea (Step 2B: NO; The claims do not provide significantly more, and are not patent eligible).
Claim 2 recites wherein the computer network further comprises a graphical user interface (GUI) configured to display unbiased non-price-based index weights as structured and stored in the multidimensional array in the storage medium. These limitations are also part of the abstract idea identified in claim 1, and the additional elements of the graphical user interface are as addressed in the Steps 2A2 and B in the claim 1 analysis above. Therefore, this claim is similarly rejected under the same rationale as claim 1, supra.
Claim 3 recites wherein the operations further comprise instructions to adjust the generated unbiased non-price-based index weight for each given security, in the universe of securities, by applying a non-price-based common constituent weight. These limitations are also part of the abstract idea identified in claim 1, and the additional elements of instructions are as addressed in the Steps 2A2 and B in the claim 1 analysis above. Therefore, this claim is similarly rejected under the same rationale as claim 1, supra.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to BRANDON M DUCK whose telephone number is (469)295-9049. The examiner can normally be reached 8am - 5pm.
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/BRANDON M DUCK/Examiner, Art Unit 3693