DETAILED ACTION
1. 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 .
2. Status of Application and Claims
Claims 1-20 pending.
This office action is being issued in response to the Applicant's filing on 5/03/2024.
3. Claim Interpretation
The subject matter of a properly construed claim is defined by the terms that limit its scope when given their broadest reasonable interpretation. see MPEP §2013(I)(C). Specifically, the “broadest reasonable construction ‘in light of the specification as it would be interpreted by one of ordinary skill in the art.’” See MPEP §2111, citing Phillips v. AWH Corp., 75 USPQ2d 1321, 1329 (Fed. Cir. 2005). However, “[t]hough understanding the claim language may be aided by explanations contained in the written description, it is important not to import into claim limitations that are not part of the claim.” See MPEP §2111.01, citing Superguide Corp. v. DirecTV Enterprises, Inc., 69 USPQ2d 1865, 1868 (Fed. Cir. 2004). Construing claims broadly during prosecution is not unfair to the applicant, because the applicant has the opportunity to amend the claims to obtain more precise claim coverage. See MPEP §2111, citing In re Yamamoto, 222 USPQ 934, 936 (Fed. Cir. 1984).
As a general matter, grammar and the plain meaning of terms as understood by one having ordinary skill in the art used in a claim will dictate whether, and to what extent, the language limits the claim scope. See MPEP §2013(I)(C). Language that suggests or makes a feature or step optional but does not require that feature or step does not limit the scope of a claim under the broadest reasonable claim interpretation. See MPEP §2013(I)(C).
As such, claim limitations that contain statement(s) such as “if, may, might, can, could” are treated as containing optional language. See MPEP §2013(I)(C). As matter of linguistic precision, optional claim elements do not narrow claim limitations, since they can always be omitted. See MPEP §2013(I)(C).
Similarly, a method step exercised or triggered upon the satisfaction of a condition, where there remains the possibility that the condition was not satisfied under the broadest reasonable interpretation, is an optional claim limitation. see MPEP §2111.04(II). As the Applicant does not address what happens should the optional claim limitations fail, Examiner assumes that nothing happens (i.e., the method stops). An alternate interpretation is that merely the claim limitations based upon the condition are not triggered or performed.
In addition, when a claim requires selection of an element from a list of alternatives, the prior art teaches the element if one of the alternatives is taught by the prior art. See MPEP §2143.03, citing Fresenius USA, Inc. v. Baxter Int’l, Inc., 582 F.3d 1288, 1298 (Fed. Cir. 2009);
Language in a method or system claim that states only the intended use or intended result, but does not result in a manipulative difference in the steps of the method claim nor a structural difference between the system claim and the prior art, fails to distinguish the claims from the prior art. In other words, if the prior art structure is capable of performing the intended use, then it meets the claim.
The following types of claim language may raise a question as to its limiting effect (this list is not exhaustive):
Statements of intended use or field of use, including statements of purpose or intended use in the preamble. See MPEP §2111.02;
Clauses such as “adapted to”, “adapted for”, “wherein”, and “whereby.” See MPEP §2111.04;
Contingent limitations. See MPEP §2111.04(II);
Printed matter. See MPEP §2111.05; and
Functional language associated with a claim term. See MPEP §2181.
As such, while all claim limitations have been considered and all words in the claims have been considered in judging the patentability of the claimed invention, the following italicized, underlined and emboldened language is interpreted as not further limiting the scope of the claimed invention.
Additionally, the following italicized, underlined and emboldened language is not necessarily an exhaustive list of claim language that is interpreted as not further limiting the scope of the claimed invention. Applicant should review all claims for additional claim interpretation issues.
Claim 2 recites a method wherein the visual coding is color coding, and wherein colors are assigned to each delta data point based upon the position of the raw data point in one of the quadrants on the graph, and wherein the color assigned to the delta data point is displayed in the summary visual display.
Method claims are defined by the method steps being actively performed (i.e., assigning colors), not method steps performed in the past (i.e., colors are assigned). Claiming method steps in the past tense can be interpreted as the method steps performed in the past are outside the scope of the claimed method. Alternatively stated, the scope of the claimed method are the active method steps which are building off a pre-existing state. The method steps performed for creation of the pre-existing state are outside the scope of the claimed invention.
Claim 6 has similar issues.
Claim 14 recites a method comprising displaying a first key relating to the first metric, a second key relating to the second metric, a third key relating to the third metric, and a fourth key relating to the fourth metric, where each of the first, second, third, and fourth keys defines color-coding of the delta data points.
Claim elements pertain to nonfunctional descriptive material and are not functionally involved in the steps recited. Thus, this descriptive material will not distinguish the claimed invention from the prior art in terms of patentability. See MPEP §2111.05 (III).
Claim 20 has similar issues.
4. 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 the claimed invention is directed to an abstract idea without significantly more.
STEP 1
The claimed invention falls within one of the four statutory categories of invention (i.e., process, machine, manufacture and composition of matter). See MPEP §2106.03.
STEP 2A – PRONG ONE
The claim(s) recite(s) method(s) and a computer-readable medium that causes a processor to perform a method comprising:
providing a group of datasets;
gathering raw data points relating to performance of each dataset in a first metric, wherein the first metric is an investment metric; comparing the performance of the raw data points of each dataset in the first metric against a benchmark;
plotting the performance of the raw data points in the first metric against the benchmark on a graph, wherein the graph comprises quadrants, each quadrant representing a different set of values;
developing a delta data point for each raw data point in the first metric by assigning a comparative value to the performance of each raw data point in the first metric based on a position of the raw data point in one of the quadrants on the graph;
gathering raw data points relating to performance of each dataset in a second metric, wherein the second metric is an investment metric;
comparing the performance of the raw data points of each data set in the second metric against the benchmark;
plotting the performance of the raw data points in the second metric against the benchmark on a graph, wherein the graph comprises quadrants, each quadrant representing a different set of values;
developing a delta data point for each raw data point in the second metric by assigning a comparative value to the performance of each raw data point in the second metric based on a position of the raw data point in a quadrant on the graph;
creating a summary visual display; and
presenting, in the summary visual display, the comparative values of the raw data points by displaying the delta data points in each of the first metric and the second metric using visual coding of cells.
These limitations, as drafted, recite a method and/or a system configured to perform a method that, under its broadest reasonable interpretation, covers a series of steps instructing how to perform investment analysis, which is a fundamental economic practice, a sub-category of certain method(s) of organizing human activity, an enumerated grouping of abstract ideas. See MPEP §2106.04(a)(2)(II)(A).
Additionally, these limitations, as drafted, under its broadest interpretation, covers a series of steps that can be practically performed in the human mind (e.g., observations, evaluations, judgments and opinions) which are mental process, a second enumerated grouping of abstract ideas. See MPEP §2106.04(a)(2)(III).
Examiner notes that “’collecting information, analyzing it, and displaying certain results of the collection and analysis,’ where the data analysis steps are recited at a high level of generality such that they could practically be performed in the human mind” is a mental process. See MPEP §2106.04(a)(2)(III)(A) citing Electric Power Group v. Alstom, SA. (Fed. Cir. 2016).
Accordingly, the claimed invention recites an abstract idea.
STEP 2A – PRONG TWO
The claimed invention of Claim 15 (i.e., the computer-readable medium claim) does not recite additional elements (i.e., computer elements) outside those recited in the preamble. The preamble of Claim 15 recites that the method is performed utilizing the additional elements of a computer-readable medium and a processor.
However, a preamble is generally not accorded any patentable weight where it merely recites the purpose of a process or the intended use of a structure, and where the body of the claim does not depend on the preamble for completeness but, instead, the process steps or structural limitations are able to stand alone. see In re Hirao, 190 USPQ 15 (CCPA 1976); Kropa v. Robie, 88 USPQ 478, 481 (CCPA 1951).
The claimed invention of Claims 1 and 17 (i.e., the method claims) do not recite any additional elements (i.e., computer elements).
The claimed invention does not include additional elements that integrate the judicial exception into a practical application of the exception because the claims do not provide improvements to another technology or technical field; improvements to the functioning of the computer itself; are not applying or using a judicial exception to effect a particular treatment or prophylaxis for a disease or medical condition; are not applying the judicial exception with or by use of a particular machine; are not effecting a transformation or reduction of a particular article to a different state or thing; and are not applying the judicial exception in some other meaningful way beyond generally linking the use of the judicial exception to a particular technological environment. See MPEP §2106.04(d).
The additional elements are recited at a high-level of generality such that it amounts no more than mere instructions to apply the exception using a generic computer component. See MPEP §2106.05(f). Alternately, the additional elements amount to no more than generally linking the exception to a particular technological environment or field of use. See MPEP §2106.05(h). Accordingly, these additional element(s), when considered separately and as an ordered combination, do not integrate the abstract idea into a practical application because it does not impose any meaningful limits on practicing the abstract idea.
Accordingly, the claimed invention is directed to an abstract idea without a practical application.
STEP 2B
Upon reconsideration of the indicia noted under Step 2A in concert with the Step 2B considerations, the additional claim element(s) amounts to (i) adding the words “apply it” (or an equivalent) with the judicial exception, or mere instructions to implement an abstract idea on a computer, (ii) adding insignificant extra-solution activity to the judicial exception, and/or (iii) generally linking the use of judicial exception to a particular technological environment or field of use. See MPEP §2106.07(a)(II). The same analysis applies in Step 2B, i.e., mere instructions to apply an exception using a generic computer component cannot integrate a judicial exception into a practical application at Step 2A or provide an inventive concept in Step 2B. The claim does not provide an inventive concept significantly more than the abstract idea.
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.
DEPENDENT CLAIMS
Dependent Claim(s) 2-14, 16 and 18-20 recite claim limitations that further define the abstract idea recited in respective independent Claim(s) 1, 15 and 17. As such, the dependent claims are also grouped an abstract idea utilizing the same rationale as previously asserted against the independent claims.
No additional computer components other than those found in the respective independent claims is recited, thus it is presumed that the claim is further utilizing the same generically recited computer.
As such, the dependent claims do not include any additional elements that integrate the abstract idea into a practical application of the judicial exception or are sufficient to amount to significantly more than the judicial exception when considered both individually and as an ordered combination.
Accordingly, the dependent claim(s) are also not patent eligible.
Appropriate correction is requested.
5. 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, 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 1-3 and 6-20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Poulter (US PG Pub. 2003/0212621) in view of Sawafta (US PG Pub. 2004/0010515).
Regarding Claim 1, Lowell discloses a method for a method for generating and displaying analytics:
providing a group of datasets. (see para. 42, 46, 58 and 65-71);
gathering data points relating to performance of each dataset in each of a first metric (quality), wherein the first metric is an investment metric. (see abstract);
comparing the performance of the raw data points of each dataset in the first metric (quality) against a benchmark (see para. 26 and 162);
plotting the performance of the raw data points in the first metric against the benchmark on a graph, wherein the graph comprises quadrants, each quadrant representing a different set of values. (see fig. 5; para. 195);
developing a delta data point (relative quality) in by assigning a comparative value (relative quality) to the performance of each raw data point in each of the first metric (quality) based on a position of the data point in one of the quadrants on the graph. (see abstract; para. 60);
gathering raw data points relating to performance of each dataset in each of a second metric (value), wherein the second metric is an investment metric. (see abstract);
comparing the performance of the raw data points of each dataset in the second metric (value) against a benchmark (see para. 26);
plotting the performance of the raw data points in the second metric against the benchmark on a graph, wherein the graph comprises quadrants, each quadrant representing a different set of values. (see fig. 5; para. 195);
developing a delta data point (relative value) in by assigning a comparative value (relative value) to the performance of each raw data point in each of the second metric (value) based on a position of the data point in one of the quadrants on the graph. (see abstract; para. 60);
creating a summary visual display. (see fig. 5);
presenting the datasets in the summary visual display, the comparative values of the raw data points by displaying the delta data points in each of the first metric and the second metric. (see fig. 5).
Poulter does not explicitly teach a method comprising utilizing cells. However, Poulter discloses a method wherein the summary visual display presents the comparative values of the data points in each metric using a table. (see fig. 3 and 4). A cell is the intersection of a row and a column in table. Poulter also discloses using visual coding of cells (color coding of boxes). (see para. 5).
Regardless, Sawafta discloses a method comprising:
creating a summary visual display; and
presenting in the summary visual display, the comparative values of the raw data points by displaying the data points in each of the first metric and second metric using visual coding of cells. (see fig. 2E; para. 74-75, 177 and 178).
It would have been obvious to one of ordinary skill at the effective filing date of the claimed invention to have modified Poulter by incorporating cells and visual coding, as disclosed by Sawfta, as such elements are standard and conventional elements utilized in the visual display of data.
Regarding Claim 2, Poulter discloses a method wherein the visual coding is color coding, and wherein the color assigned to the delta point is displayed in the summary visual display. (see para. 5; Claim 11).
Poutler does not explicitly teach a method, wherein colors are assigned to each delta data point based upon the position of the raw data point in one of the quadrants on the graph, although Poutler discloses a method wherein colors are assigned to each delta data point in the summary visual display based upon its value and its value is based upon raw data point value, and the position of the raw data point in the one of the quadrants on the graph is based the raw data point value.
As such, it would have been obvious to one of ordinary skill in the art at the effective filing date of the invention to modify Poulter and Sawfta to correlate the color-coding of the cells in a table and the data points on the graph, as suggested by Poulter, as the data in either format references the same computations and/or underlying values.
Regarding Claim 3, Poulter discloses a method of wherein the summary visual display comprises a table identifying the datasets and ranking the datasets based on performance in the first metric and the second metric. (see fig. 3 and 4).
Regarding Claim 6, Poulter discloses a method comprising:
gathering raw data points relating to performance of each dataset in each of a third metric (e.g., profitability, financial strength, interim results, estimate momentum, P/E to Growth, or P/E Estimate). (see fig. 3-4);
comparing the performance of the raw data points of each dataset in the third metric against the benchmark (average). (see fig. 3-4; para. 167 and 177);
developing a delta data point for each raw data point in the third metric by assigning a comparative value to the performance of each data point in the third metric based on whether the raw data point met the benchmark, beat the benchmark or was below the benchmark.(see fig. 3-4; para. 96-106, 167 and 177);
wherein the summary table presents a ranking of overall performance of each of the dataset based on the comparative value of each delta point in the first metric, the second metric, and the third metric. (see fig. 3-4).
Regarding Claim 7, Poulter discloses a method wherein the third metric is one of multi-year data trends (e.g., eight-year average return, 5-year projected growth, 5-year average return) and Alpha & Sharpe. (see para. 78-79, 99-104 and 179-187).
Regarding Claim 8, such claim recites substantially similar limitations as claimed in previously rejected claims (i.e., Claims 2 and 6 in combination) and, therefore, would have been obvious based upon previously rejected claims.
Regarding Claim 9, Poulter discloses a method wherein each dataset is attributable to an individual investment, an investment fund, or a fund manager. (see para. 194).
Regarding Claim 10, Poulter discloses a method, wherein the summary visual display includes a statistical values portion (e.g., standard deviation) and an analytics portion (e.g., raw). (see fig. 3).
Regarding Claim 11, Poulter discloses a method wherein the raw data points are gathered from a portfolio analytics report (earning estimates and media reported results). (see para. 134).
Regarding Claim 12, Poulter discloses a method comprising:
gathering raw data points relating to performance of each dataset in each of a third metric and a fourth metric (e.g., profitability, financial strength, interim results, estimate momentum, P/E to Growth, P/E Estimate). (see fig. 3-4);
comparing the performance of the data points of each dataset in the third metric against the benchmark (average). (see fig. 3-4; para. 167 and 177);
developing a delta data point for each raw data point in the third metric by assigning a comparative value to the performance of each raw data point in the third metric based on whether the raw data point of one dataset met the benchmark, beat the benchmark, or was below the benchmark. (see fig. 3-4; para. 167 and 177);
comparing the performance of the data points of each dataset in the fourth metric against the benchmark. (see fig. 3-4; para. 167 and 177);
developing a delta data point for each raw data point in the fourth metric by assigning a comparative value to the performance of each raw data point in the fourth metric by comparing the performance of each raw data point in the third metric based on whether the raw data point met the benchmark, beat the benchmark, or was below the benchmark. (see fig. 3-4; para. 167 and 177); and
presenting, in the summary visual display, the comparative values of raw data points in each of the third and fourth metric by displaying the delta data points using visual coding. (see fig. 3-4).
Regarding Claim 13, such claim recites substantially similar limitations as claimed in previously rejected claims (i.e., Claims 8 and 12 in combination) and, therefore, would have been obvious based upon previously rejected claims.
Regarding Claim 14, Poulter does not teach a method comprising displaying a first key relating to the first metric, a second key relating to the second metric, a third key relating to the third metric, and a fourth key relating to the fourth metric, where each of the first, second, third, and fourth keys defines color-coding of the delta data points.
Sawafta discloses a method comprising displaying a first key (legend) relating to the first metric, a second key (legend) relating to the second metric, a third key (legend) relating to the third metric, and a fourth key (legend) relating to the fourth metric, where each of the first, second, third, and fourth keys (legends) defines color-coding of the delta data points. (see para. 178 and 183).
It would have been obvious to one of ordinary skill in the art at the effective filing date of the invention to modify Poulter and Sawafta to incorporate a color-coding key, as disclosed by Sawafta, thereby allowing a user to decipher and understand the color-coding utilized.
Regarding Claims 15-20, such claim recites substantially similar limitations as claimed in previously rejected claims and, therefore, would have been obvious based upon previously rejected claims.
Claim(s) 4 is/are rejected under 35 U.S.C. 103 as being unpatentable over Poulter and Sawafta, as applied to Claim 1 above, and further in view of Lowell (US PG Pub. 2004/0249687).
Regarding Claim 4, Poulter discloses a method wherein the summary visual display comprises a ranking of each investment fund (see para. 40) based upon aggregate value of outperformance or underperformance (of a benchmark). (see para. 96-106).
Poulter does not teach a method wherein the summary visual display comprises a top-down ranking (i.e., highest rank at top and lowest rank at bottom).
Lowell discloses a method wherein the summary visual display comprises a top-down ranking of each investment fund (e.g., upper quintile vs. non-upper quintile) upon aggregate value of outperformance or underperformance. (see para. 10 and 27-30).
It would have been obvious to one of ordinary skill at the effective filing date of the claimed invention to have modified Poulter and Sawafta by incorporating a top-down listing of information, as disclosed by Lowell, as such elements are standard and conventional elements utilized in the visual display of data.
Claim(s) 5 is/are rejected under 35 U.S.C. 103 as being unpatentable over Poulter and Sawafta, as applied to Claim 1 above, and further in view of Coates (US PG Pub. 2007/0033129).
Regarding Claim 5, Poulter discloses a method wherein the first metric is risk/return (return composite) and wherein the second metric pertains to return relative to the market. (see para. 59 and 96-106).
Poulter does not explicitly teach a method wherein the second metric is an up-down capture (i.e., whether an investment outperformed a benchmark during periods of market strength or weakness).
Coates discloses a method wherein the second metric is an up-down capture. (see para. 154).
It would have been obvious to one of ordinary skill at the effective filing date of the claimed invention to have modified Poulter and Sawafta by incorporating an up-down capture metric, as disclosed by Coates, as up-down capture metrics are a standard and conventional financial metric by which to judge an investment.
6. Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JASON M. BORLINGHAUS whose telephone number is (571)272-6924. The examiner can normally be reached M-F 9-5.
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, RYAN D. DONLON can be reached on (571)270-3602. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Jason M. Borlinghaus/Primary Examiner, Art Unit 3692 January 10, 2026