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 Status
Claims 1-19 are currently pending, with Claims 7-19 being withdrawn for being directed to a non-elected species, such that Claims 1-6 are presented for examination on the merits.
Objections
Specification
The Abstract is objected to for failure to provide sufficient information. Please include examples of digital assets being analyzed in the present invention (e.g., “. . . digital assets, such as but not limited to trademarks, patents, domain names, business names, etc., are disclosed”) A brief narrative of the disclosure as a whole is required. The abstract should describe the disclosure sufficiently to assist readers in deciding whether there is a need for consulting the full patent text for details. See MPEP § 608.01(b).
Drawings
Each sheet must include a top margin of at least 2.5 cm. (1 inch), a left side margin of at least 2.5 cm. (1 inch), a right side margin of at least 1.5 cm. (5/8 inch), and a bottom margin of at least 1.0 cm. (3/8 inch). Please confirm that all drawings comply with this requirement, including FIGS. 5, 6.
The drawings are objected to because the labels, external to objects and boxes, are shown without leader lines, and labels, internal to objects and boxes, are shown without underlining. 37 CFR 1.84(q).
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. 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.
Claims
Claim 1 appears to have two periods at the ends of the last two limitations.
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 1-6 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. More particularly, 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, MPEP § 2106; 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 MPEP § 2106, Step 1, the claimed invention, taking the broadest reasonable interpretation, recites a process (i.e., a method), machine (e.g., analyzer, etc.), article of manufacture (e.g., a non-transitory computer readable medium) or composition of matter, and as such, is patent eligible.
Under MPEP § 2106, Step 2a-prong 1, Claims 1-6 recite a judicial exception(s), including a method of organizing human activity (e.g. fundamental economic principle). More particularly, the entirety of the method steps is directed towards analyzing a digital asset, such as a domain name, business name, trademark, patent. Upon analysis, the digital asset is named, and stored so as to be searched. This is a long-standing commercial practice previously performed by humans (e.g., business owners, corporations, IP portfolio managers, etc.) manually, via mental steps, and via generic computing (e.g., having an internet webpage). For example, entrepreneurs have long selected suitable domain names, business names, patent titles and trademarks based on an analysis of the nature of the business, the patent disclosure, etc. With respect to business names, for example, entrepreneurs have looked up a desired name in the Secretary of States database and where available, paid for said name if not found in the database. As such, the inventions include an abstract idea under § 2106, 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—domain name processing engine, trademark processing engine, business name processing engine, payment engine, AI/ML engine) 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. More particularly, the extraneous limitations of Claim 1 are set forth in bold below:
A digital asset analyzer comprising:
a domain name processing engine for retrieving and processing a domain related
information;
a trademark processing engine for retrieving and processing a trademark related
information;
a business name processing engine for generating at least three business names
compatible with the domain name and trademark;
a payment processing engine for purchasing a domain name and registering a trademark upon selection of at least one of the generated business names;
an artificial intelligence (Al)/machine learning (ML) engine;
one or more processors coupled to the processing engines;
a memory coupled to the one or more processors;
one or more machine learning algorithms stored in the memory and executable by the AI/ML engines to automate the identification process of unique digital assets and name the identified digital assets, wherein the processing engines are integrated together to form a front-end integrated search engine.
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). That is to say, the claims are not directed to a new software or computer, but rather employs pre-existing software to do what’s been previously done, albeit less efficiently or slower. “[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 additional elements offered by the dependent claims either further delineate the abstract idea, add further abstract idea(s), adds insignificant extra-solution activity, or further instruct the artisan to apply it (the abstract idea(s)) across generic computing technology. The claims as a whole, do not amount to significantly more than the abstract idea itself. This is because no one claim effects an improvement to another technology or technical field, an improvement to the functioning of a computer itself, or move beyond a general link of the use of the 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 structure or executing the abstract idea on one or more generic computer system (e.g., a computer system 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). Moreover, merely reciting steps that can be performed in the human mind is not patent eligible (see, e.g., Classen Immunotherapies, Inc. v. Biogen IDEC, 659 F.3d 1057, 1067 (Fed. Cir. 2011) (collecting and comparing data are mental steps); Braemar Mfg. LLC v. ScottCare Corp., 816 F. App’x 465, 470 (“Claims that “merely collect, classify, or otherwise filter data” are ineligible for patent under § 101.”); CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1372-72 (Fed. Cir. 2011) (comparing a collected list of credit card numbers to transactions to identify different cards and user names used from the same IP address to detect fraud can be performed entirely in the human mind including the logical reasoning.)) “The requirements that the machine learning model be “iteratively trained’ or dynamically adjusted in Machine Learning Training patents do[es] not represent a technological improvement.” Recentive Analytics, 134 F 4th at 1212. Claim language reciting the machine learning model at a high level of generality without any specificity of how the machine learning model is trained or processes the data. The machine learning model is merely used as a tool to implement the abstract idea. Id. at 1213 (claims recite ineligible subject matter where “the only thing the claims disclose about the use of machine learning is that machine learning is used in a new environment”).
Lastly, 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 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 1-6 are rejected under 35 U.S.C. § 103 as being unpatentable over US 2017/0011446 to Reinsberg et al., alone.
With respect to Claim 1, Reinsberg teaches a digital asset analyzer ([0051-52];FIG. 1; [0153]) comprising: a domain name processing engine for retrieving and processing a domain related information ([0051-52];FIG. 1; [0153]); a trademark processing engine for retrieving and processing a trademark related information ([0122];[0149-50];[0153-54];[0160]); a business name processing engine for generating at least three business names compatible with the domain name and trademark ([0153-54]); a payment processing engine for purchasing a domain name and registering a trademark upon selection of at least one of the generated business names (FIG. 23, recommending attorney for trademarking is facilitating payment to obtain a trademark; [0160], “engage”; Table 1, “Customer account Information”;[0095];[0157]; FIG. 6); an artificial intelligence (Al)/machine learning (ML) engine ([0126-27]); one or more processors coupled to the processing engines ([0003];[0061]); a memory coupled to the one or more processors ([0003]); one or more machine learning algorithms ([0062]) stored in the memory and executable by the AI/ML engines to automate the identification process of unique digital assets and name the identified digital assets ([0111], model; [0126-27]), wherein the processing engines are integrated together to form a front-end integrated search engine ([0120];[0154]).
Reinsberg teaches an equivalent system operable to perform the method recited in the instant invention, but does not use the same verbiage, such as “a payment processing engine,” etc., however, the applied reference(s) need not use the same terminology, or disclose the limitations verbatim. Reinsberg teaches a different set of models/engines collectively referred to as “suggestion engine module 108”, which is operable to perform the digital asset analysis of the present invention. The set of enginges are a simple substitute for the recited set. See, KSR international Co. v. Teleflex Inc. (obvious to integrate or separate). As such, it would have been obvious to one of ordinary skill in the art to modify Reinsberg to include the specified verbiage and specific set of engines recited.
With respect to Claim 2, Reinsberg teaches wherein the front-end integrated search engine processes an input query from a user only after categorizing the user into at least one of pre-defined scenarios ([0046-47];[0052];[0103], profile attributes).
With respect to Claim 3, Reinsberg teaches wherein the pre-defined scenarios comprise at least one of a digital entrepreneur with existing business, domain name and trademark; existing business with domain name but no trademark; existing business with trademark but no domain name; new business without business name, domain name and trademark; new business with business name, trademark but no domain name; and new business with business name, domain name but no trademark ([0062];[0078], nascent business).
With respect to Claim 4, Reinsberg teaches wherein the payment processing engine further comprises a registration module to perform registration process of a selected trademark and domain name ([0148-49]).
With respect to Claim 5, Reinsberg teaches wherein the business name compatible domain name and trademark are obtained and registered by using the single front-end integrated search engine of the digital asset analyzer ([0148-49];[0160]).
With respect to Claim 6, Reinsberg teaches wherein available business name, domain name and trademark are searched in different databases of the processing engines and collective information is used to generate new name suggestions ([0003], teaching a “domain name strategy suggestion module”; [0148-49];[0154];[0160]).
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.
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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.
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/WILLIAM J JACOB/ Examiner, Art Unit 3696