DETAILED ACTION
This Non-Final Office action is in response to Applicant’s filing 07/15/2024. Claims 1, 2, and 20-23 are pending. The effective filing date of the claimed invention is 06/01/2018.
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 .
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 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.
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Such claim limitations are:
“a user interface module” (claims 1, 20, 22, line 5), “a schema management module” (claims 1, 20, 22, line 7), “a participation aggregation module” (claims 1, 20, 22, line 11), and “a validation engine” (claims 2, 21, 23, line 3).
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
If applicant does not intend to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
Claim Rejections - 35 USC § 112
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.
Claim 1, 2, 20-23 (where claim 23 is labelled as claim 21 (New), on page 5 of claim amendments) 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.
For claims 1 (and similarly claims 20 and 22), Applicant recites the following limitation with a lack of proper antecedent basis:
Claim 1, line 6, “participant data”; claim 1, line 10, “participant data”; claim 1, line 14, “a participant” and “participant data.”
This lack of proper antecedent basis renders the claim(s) indefinite as the scope of the claim is unclear and unascertainable with such indefiniteness. Appropriate correction is required.
For claim 23 - This claim is wrongly numbered and therefore is rendered indefinite. Appropriate correction is required. See the 23rd claim labelled as:
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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, 2, and 20-23 are rejected under 35 U.S.C. 101 because the claims are directed to abstract idea.
Step 1 – Claims 1, 2, and 20-23 are apparatus/system claims, and therefore satisfy step 1.
Step 2A, Prong 1 – Exemplary claim 1 (and similarly claims 20, 22) recites the following abstract idea:
receive participant data and store it as participant data in the memory (see e.g. MPEP 2106.04(a)(2)(III)(A) citing Elec. Pwr Grp; and MPEP 2106.04(a)(2)(III)(C)(3) citing Mortgage Grader);
receive input via the user interface module, the schema management module comprising rules for determining withholding amounts for payments due to a participant in view of applicable schema data and participant data stored in the memory (see e.g. MPEP 2106.04(a)(2)(III)(A) citing Elec. Pwr Grp; and MPEP 2106.04(a)(2)(III)(C)(3) citing Mortgage Grader); and
receive input via the user interface module, the participation aggregation module comprising rules for determining whether to permit or defer payments due to the participant in view of aggregated payments due to a participant as reflected in participant data stored in the memory (see e.g. MPEP 2106.04(a)(2)(III)(A) citing Elec. Pwr Grp; and MPEP 2106.04(a)(2)(III)(C)(3) citing Mortgage Grader; see also MPEP 2106.04(a)(2)(III)(C)(2) citing Fairwarning).
When these abstract idea limitations are viewed alone and in combination the examiner finds claim 1 (and 20, 22) to recite abstract idea.
Step 2A, Prong 2 – Claim 1 (and 20, 22) is not found to integrate the abstract idea with practical application. Claim 1 recites the additional elements of a processor, a memory coupled to processor, and the various modules that are configured to implement the abstract idea. The examiner finds the processor and memory to fall under the “apply it” rationale, as set forth in MPEP 2106.05(f) (“Thus, for example, claims that amount to nothing more than an instruction to apply the abstract idea using a generic computer do not render an abstract idea eligible. Alice Corp., 573 U.S. at 223, 110 USPQ2d at 1983. See also 573 U.S. at 224, 110 USPQ2d at 1984 (warning against a § 101 analysis that turns on “the draftsman’s art”).”). For the various modules, first the examiner refers to Applicant’s Specification to determine claim construction of said modules. See Applicant’s Spec at [0034] “These modules/engine may be implemented primarily by specially-configured software including microprocessor-executable instructions stored in the memory 118 of the Clinical Data Processing System 100.” In other words, the modules are software modules that are configured as set forth in the algorithm(s) of the Specifications. The examiner finds these modules to fall under the “apply it” rationale, as the Fed. Cir. In Mortgage Grader found of the modules, “Instead, the claims "add" only generic computer components such as an "interface," "network," and "database." These generic computer components do not satisfy the inventive concept [1325] requirement. See Intellectual Ventures I LLC v. Capital One Bank (USA), 792 F.3d 1363, 1370 (Fed.Cir.2015) ("[T]he interactive interface limitation is a generic computer element."); buySAFE, 765 F.3d at 1355 (sending information over network is "not even arguably inventive"); Accenture Global Servs. GmbH v. Guidewire Software, Inc., 728 F.3d 1336, 1344 (Fed.Cir.2013) (database components did not make claims patent-eligible). "[A]fter Alice, there can remain no doubt: recitation of generic computer limitations does not make an otherwise ineligible claim patent-eligible. The bare fact that a computer exists in the physical rather than purely conceptual realm is beside the point." DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245, 1256 (Fed.Cir.2014) (internal citations and quotation marks omitted).” Mortgage Grader, section A of opinion. Accordingly, when viewed alone and in ordered combination, the claimed additional elements are found to be directed to abstract idea.
Step 2B – The examiner does not find claim 1 (and 20 22) to include significantly more. The additional element analysis from Step 2A, Prong 2 is equally applicable under Step 2B. Another consideration when determining whether a claim recites significantly more than a judicial exception is whether the additional element(s) are well-understood, routine, conventional activities previously known to the industry. This consideration is only evaluated in Step 2B of the eligibility analysis. See MPEP 2106.05(d).
For the limitations relating to receiving and transmitting data, see MPEP 2106.05(d)(II)(“i. Receiving or transmitting data over a network, e.g., using the Internet to gather data, Symantec, 838 F.3d at 1321, 120 USPQ2d at 1362 (utilizing an intermediary computer to forward information); TLI Communications LLC v. AV Auto. LLC, 823 F.3d 607, 610, 118 USPQ2d 1744, 1745 (Fed. Cir. 2016) (using a telephone for image transmission); OIP Techs., Inc., v. Amazon.com, Inc., 788 F.3d 1359, 1363, 115 USPQ2d 1090, 1093 (Fed. Cir. 2015) (sending messages over a network); buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1355, 112 USPQ2d 1093, 1096 (Fed. Cir. 2014) (computer receives and sends information over a network); but see DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245, 1258, 113 USPQ2d 1097, 1106 (Fed. Cir. 2014) (“Unlike the claims in Ultramercial, the claims at issue here specify how interactions with the Internet are manipulated to yield a desired result‐‐a result that overrides the routine and conventional sequence of events ordinarily triggered by the click of a hyperlink.” (emphasis added)).”
For the limitations relating to storing/retrieving data, see MPEP 2106.05(d)(II)(“ iv. Storing and retrieving information in memory, Versata Dev. Group, Inc. v. SAP Am., Inc., 793 F.3d 1306, 1334, 115 USPQ2d 1681, 1701 (Fed. Cir. 2015); OIP Techs., 788 F.3d at 1363, 115 USPQ2d at 1092-93.”
Accordingly, the examiner refers to the above examiners where the claimed computer functions have been recognized by the Fed. Cir. As being well-understood, routine, and conventional functions. The examiner finds claim 1 (and 20, 22) to be directed to abstract idea.
Dependent claims – Claim 2 (and 21, 23) recites more abstract of identifying data and transmitting data. See above, citing Elec. Pwr. Grp. Claim 2 recite the “validation engine,” which, like the other modules, are not found to change the outcome and render the claim eligible. See the findings is Step 2B relating to WURC of transmitting data messages between devices. Accordingly, the dependent claims 2, 21, 23 are found to be directed to abstract idea.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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, 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 for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claims 1, 20, 22 are rejected under 35 U.S.C. 103 as being unpatentable over U.S. Pat. Pub. No. 2014/0236619 to Samar et al. (“Samar”) in view of Dept. of Treasury, IRS (Dec. 19, 2016). (Circular E), Employer’s Tax Guide for use in 2017 (hereinafter “Circular E”).
With regard to claims 1, 20, and 22, Samar discloses the claimed clinical data processing system (see abstract, [0006]) comprising:
a processor (see e.g. [0100] The one or more processors may be part of one or multiple general-purpose computers.); a memory operatively coupled to the processor, the memory storing code comprising executable instructions (e.g. [0100], published claim 1) providing:
a user interface module configured to receive participant data and store it as participant data in the memory (see e.g. Fig. 6 [0030-33]);
a schema management module configured to receive input via the user interface module, the schema management module comprising rules for determining withholding amounts for payments due to a participant in view of applicable schema data and participant data stored in the memory (Samar discloses rules-based compensation guidelines used to evaluate either payment requests conform to predefined criteria, at e.g. abstract, “The payment requests are processed at the software application, and payments that conform to predefined compensation guidelines for the clinical study are approved.”; [0006], published claim 1, Fig. 10; see e.g. Fig. 11, where withholdings of payment can be selected such that the Taxi, for instance, is not paid for and the rule is that everything checked is paid for, and everything not checked is not paid for ); and
a participation aggregation module configured to receive input via the user interface module, the participation aggregation module comprising rules for determining whether to permit or defer payments due to the participant in view of aggregated payments due to a participant as reflected in participant data stored in the memory (see e.g. Fig. 11, where the “rules” are that the user must selected the Study from the drop down such as “Travel Demo” and then select “Milestone” from the other dropdown, and then based on the selections of the user, and the checking/unchecking aggregation, the payments are permitted or deferred, accordingly; Samar discloses tracking participant history, applying rules to approve/deny payment requests, and preventing payment when rules are violated).
Samar does not explicitly disclose tax-specific withholding rules, or determination of withholding amounts based on tax schema data (e.g. TIN status, IRS withholding requirement).
Circular E teaches at e.g. Page 5 Income Tax Withholding, see page 5, “Employer Responsibilities”; page 13, employee’s SSN is known and input into system, page 19 withholding amount calculation based on specific individual situation of employee and SSN,W2 that it would have been obvious to one of ordinary skill in the tax art to include rules for withholding tied to payee TIN status/conditions; and further teaches withholding amount determination and permit/defer based on compliance/trigger conditions. Circular E directly teaches rules for determining withholding amounts, and based on schema data (tax rules) and participant data (TIN status). Therefore, it would have been obvious to one of ordinary skill in the tax withholding art before the effective filing date of the claimed invention to modify Samar to include such withholding rules based on participant data stored in the system. Circular E expressly states that withholding obligations exist to ensure tax compliance when making payments, and that automated systems may be used to apply these rules consistently across payees (e.g. page 44). The benefits are further shown in Circular E, page 9, explaining that the publication helps employers stay compliant with the tax withholdings of employees, as explained throughout Circular E.
Claim(s) 2, 21, and 23 are rejected under 35 U.S.C. 103 as being unpatentable over Samar, Circular E, and further in view of IRS (2013) Online TIN matching Program Publication 2108A, Revised January 2013 (hereinafter “TIN Matching”).
With regard to claims 2, 21, and 23, Samar and Circular E do not teach the TIN matching. TIN Matching teaches at e.g. page 3, 5, 6, 9, etc. that it would have been obvious in the withholding art to include such TIN matching as shown at page 5 where TIN is identified, and then further transmitted to IRS for TIN validation, and then receives a message from IRS indicating that the TIN is valid, not valid, or the like, as shown in page 6. This is all performed over computers and over the internet as shown in page 9. Therefore, it would have been obvious to one of ordinary skill in the withholdings art to include such TIN matching, as shown in TIN Matching, where the motivation comes from TIN Matching, page 3, “The matching details provided to participating payors, and their authorized agents, will help avoid TIN (Taxpayer Identification Number) errors and reduce the number of backup withholding notice required under Section 3406(a)(1)(B) of the Internal Revenue Code.”
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Peter Ludwig whose telephone number is (571)270-5599. The examiner can normally be reached Mon-Fri 9-5.
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/PETER LUDWIG/ Primary Examiner, Art Unit 3627