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 .
This action is in response to the communication filed on December 16, 2025.
Response to Amendment
Applicant’s amendment filed on December 16, 2025 with respect to claims 21-40 has been received, entered into the record and considered.
As a result of the amendment filed on December 16, 2025, claim 21, 25, 28, 32, 37 and 40 has been amended.
Claims 21-40 remain pending in this office action.
Double Patenting
6. The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP §§ 706.02(l)(1) - 706.02(l)(3) for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/process/file/efs/guidance/eTD-info-I.jsp.
Claims 21-40 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1-20 of U.S. Patent No. 12,008,006 B1. Although the claims at issue are not identical, they are not patentably distinct from each other because the current application 18/659193 and the patent 12,008,006 B1 both directed to versioned of datasets changes in different time retroactively. The current application just omitted some limitations from the patented claims. Such omitting does not change the scope the invention and can perform same functionality. Therefore, the current application is not patentable over the patent 12,008,006 B1.
"A later patent claim is not patentably distinct from an earlier patent claim if the later claim is obvious over, or anticipated by, the earlier claim. In re Longi, 759 F.2d at 896, 225 USPQ at 651 (affirming a holding of obviousness-type double patenting because the claims at issue were obvious over claims in four prior art patents); In re Berg, 140 F.3d at 1437, 46 USPQ2d at 1233 (Fed. Cir. 1998) (affirming a holding of obviousness-type double patenting where a patent application claim to a genus is anticipated by a patent claim to a species within that genus). " ELI LILLY AND COMPANY v BARR LABORATORIES, INC., United States Court of Appeals for the Federal Circuit, ON PETITION FOR REHEARING EN BANC (DECIDED: May 30, 2001).
Claim Rejections - 35 USC § 101
7. 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.
8. Claims 21-40 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more.
Step 1 This part of the eligibility analysis evaluates whether the claim falls within any statutory category, see MPEP 2106.03.
Step 2A Prong One This part of the eligibility analysis evaluates whether the claim recites a judicial exception. As explained in MPEP 2106.04(II) and the October 2019 Update, a claim “recites” a judicial exception when the judicial exception is “set forth” or “described” in the claim.
Step 2A Prong 2 This part of the eligibility analysis evaluates whether the claim as a whole integrates the recited judicial exception into a practical application of the exception. This evaluation is performed by (a) identifying whether there are any additional elements recited in the claim beyond the judicial exception, and (b) evaluating those additional elements individually and in combination to determine whether the claim as a whole integrates the exception into a practical application, see 2019 PEG.
Step 2B This part of the eligibility analysis evaluates whether the claim as a whole amount to significantly more than the recited exception, i.e., whether any additional element, or combination of additional elements, adds an inventive concept to the claim, see MPEP 2106.05.
Step 1 Statutory Category:
Claims 21-31 are recited as being directed to a “method”. Claims 32-39 are recited as being directed to a “system, comprising: one or more memories having instruction stored thereon”.
Claim 40 is recited as being directed to a “non-transitory computer-readable storage medium storing instructions that, when executed by one or more processor”. Thus claims 21, 32 and 40 have been identified to be directed towards the appropriate statutory category. Below is further analysis related to step 2.
Regarding claims 21, 32 and 40
Step 2A: Prong One:
Claims 21, 32 and 40 recite limitations:
comparing the first derived dataset to the second derived dataset; and
determining one or more differences between the first set of actions and the second set of actions based on the comparing, wherein the one or more differences include an action applied to the second version of the dataset being in the second set of actions and the action not in the first set of actions,
These claim limitations have been identified as reciting a “Mental Process” including observation, evaluation, judgment and opinion which may be performed in a human mind. A human being can mentally apply observation and evaluation to compare two sets of data (i.e., compare fist derived dataset to second derived dataset). Based on the comparison, a human being can determine the differences between datasets and actions taken on the datasets in his/her mind and/or with the help of physical aid such as pen and paper.
The limitations under its broadest reasonable interpretation covers performance of the limitations in the human mind or by a human using a pen or paper including observation, evaluation and judgement. If the claim limitations under its broadest interpretation covers performance of the limitations in the mind but for the recitation of generic computer components, then it is in the mental process category unless the claim cannot practically be performed in the mind. The claim falls within the “Mental Process” grouping.
Step 2A Prong Two:
The claims further recite limitations:
obtaining a first derived dataset associated with a first set of actions, wherein the first derived dataset is determined by applying a first version of logic to a first version of a dataset;
obtaining a second derived dataset associated with a second set of actions by applying a second version of the logic to a second version of the dataset, wherein the second version of the dataset comprises added data not included in the first version of the dataset;
These claim limitations as a whole have been identified as insignificant extra-solution activity. Per MPEP 2106.05(g) “Extra-solution activity includes both pre-solution and post-solution activity. An example of pre-solution activity is a step of gathering data for use in a claimed process, e.g., a step of obtaining information about credit card transactions, which is recited as part of a claimed process of analyzing and manipulating the gathered”. Similarly, the claim limitations as a whole above appear to be gathering data in terms of obtaining first derived dataset associated with first set of actions … obtaining second derived dataset associated with a second set of actions … and do not appear to integrate the abstract idea into a practical application.
Step 2B:
The claims further recite limitations:
obtaining a first derived dataset associated with a first set of actions, wherein the first derived dataset is determined by applying a first version of logic to a first version of a dataset;
obtaining a second derived dataset associated with a second set of actions by applying a second version of the logic to a second version of the dataset, wherein the second version of the dataset comprises added data not included in the first version of the dataset;
These claim limitations as a whole have been identified as insignificant extra-solution activity. Per MPEP 2106.05(g) “Extra-solution activity includes both pre-solution and post-solution activity. An example of pre-solution activity is a step of gathering data for use in a claimed process, e.g., a step of obtaining information about credit card transactions, which is recited as part of a claimed process of analyzing and manipulating the gathered”.
Similarly, the claim limitations as a whole above appear to be gathering data in terms of obtaining first derived dataset associated with first set of actions … obtaining second derived dataset associated with a second set of actions … and do not appear to integrate the abstract idea into a practical application.
Additionally, claim 32 recites, one or more memories having instructions stored thereon;
claim 40 recites, a non-transitory computer-readable storage medium storing instructions that, when executed by one or more processors,
The claimed processor, memory and a non-transitory computer-readable storage medium appear to a recitation of a generic computer devices which is merely implementing the abstract idea within a computer environment. MPEP 2106.05(b)(I). When viewed individually and as part of an ordered combination the above identified claim limitations do not appear to integrate the abstract idea within a practical application.
Further the limitations in the dependent claims 22-31 and 33-39 are an extension of the abstract idea.
Claim Rejections - 35 USC § 103
9. 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.
10. Claims 21- 22, 25-26, 29-30, 32-33, 35-36, 38 and 40 are rejected under 35 U.S.C. 103 as being unpatentable over “Schema versioning and database conversion techniques for bi-temporal databases”, Han-Chieh Wei and Ramez Elmasri; Department of Computer Science and Engineering, The University of Texas at Arlington, 200, herein after “Han”, in view of Wang et al (US 2014/0178886 A1).
As per claim 21, Han discloses:
- a method comprising: obtaining a first derived dataset associated with a first set of actions, wherein the first derived dataset is determined by applying a first version of logic to a first version of a dataset (employee relation table at time 10 (i.e., first derived dataset associated with first action), Figure 1-2, Page 26, Example 1, applying first change (i.e., first version of logic) to first version of dataset, Fig. 12, Page 26, Example 1),
- obtaining a second version of the dataset, the second version of the dataset comprises added data not included in the first version of the dataset (Fig. 1-4, in Fig.2 part (a) second version of table (i.e., second version of dataset) obtained, this second version of table comprises Bonus data (i.e., added data) in Part (a), and Bonus 5% (i.e., added data) in part (b) in different time t1 to t12, which is not included in first version of the table in Fig. 1, (i.e., first version of dataset), see also in section 4, Specially Fig. 6, line 9-25, in page 31-32, Fig. 7 (a) –(c), Fig. 8),
- determining a second derived dataset associated with a second set of actions by applying a second version of the logic to the second version of the dataset (second version of the dataset by adding Bonus, Phone (i.e., second set of action) which is the added data not included in the first version of the dataset, Fig. 1-4, Page 26-27, Example 1), Page, 23, line 1-10, Page 24, line 6-24, Page 30, section 4),
Han does not explicitly disclose comparing the first derived dataset to the second derived dataset to determine one or more first differences between the first derived dataset and second derived dataset; and determining one or more second differences between the first set of actions and the second set of actions based on the one or more first differences, wherein the one or more differences include an action applied to the second version of the dataset being in the second set of actions and the action not in the first set of actions, wherein at least a part of the method is performed by one or more processors. However, in the same field of endeavor Wang in an analogous art disclose comparing the first derived dataset to the second derived dataset to determine one or more first differences between the first derived dataset and second derived dataset (comparing first set of result and second set of result (i.e., first derived dataset and second derived dataset), Fig. 7, item 52, 55, 56, 57, Fig. 8, item 58-63, Fig. 10, item 206, Para [0009], [0151]), determining one or more second differences between the first set of actions and the second set of actions based on the one or more first differences, wherein the one or more differences include an action applied to the second version of the dataset being in the second set of actions and the action not in the first set of actions (by comparing the first and second datasets and evaluating the differences between datasets and actions, Para [0163], [0164], [0170], [0202], [0203]), differences includes action on different sets of tissue samples (i.e., different version of dataset) which not in the first set of action or second set of action, Para [0476] – [0477], [0458]), wherein at least a part of the method is performed by one or more processors (Para [0439] – [0441], method performed by processor).
Therefore, it would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to incorporate the action and dataset comparison output and determining the difference in different action as taught by Wang as the means to determine dataset and changes (i.e., logic) in first version and second version in various first time and second times in Han, (Han Fig. 1-2, section 3 and 4, Wang, Para [0009], Fig. 7, 10). Han and Wang are analogous prior art since they both dealing with changing historical versions of datasets in various times. A person of the ordinary skill in the art would have been motivated to make aforementioned modification to improve cost effective and flexible way to access temporal data. This is because one aspect of Han publication is to use bi-temporal database to make retroactive changes in versions of dataset in various time, (Han, Page 4, line 16-20). Comparing derived output of different versions of dataset and see the difference is part of this process. However, Han doesn’t specify any particular manner in which derived output of different first and second datasets and their associated actions are compared. This would have lead one of the ordinary skill in the art to seek and recognize the multiple dataset output and associated actions comparisons as taught by Wang. wang describes identifying the effect of different actions and evaluating those action in different dataset, Wang, Fig. 7, item 57, Fig. 21, Para [0469], item 907, to reduce experimental errors as desired by Han.
As per claim 22, rejection of claim 21 is incorporated, and further Han discloses:
- wherein the added data comprise one or more retroactive changes applied to the dataset via a data pipeline, wherein the data pipeline includes the second version of the logic (retroactive and proactive update to database schema, Page, 30, section 4, line 1-20).
As per claim 25, rejection of clam 21 is incorporated and further Wang discloses:
- determining one or more modifications to the first version of the logic based on the one or more second differences between the first set of actions and the second set of actions (determining a set of changes (i.e., logic) in data set and determine differences between first and second set, Para [0163] – [0164]).
As per claim 26, rejection of claim 21 is incorporated, and further Han discloses:
- wherein the dataset comprises: a stateful dataset, the first version of the dataset comprising a state of the first version of the logic (state of a data (i.e., stateful dataset), section 2, line 1-15, example 2).
As per claim 29, rejection of claim 21 is incorporated, and further Han discloses:
- receiving a first user input identifying the first version of the dataset and the first version of the logic via a user interface, the first user input enabling selection of the first version of the dataset from a data store and selection of the first version of the logic from a logic store, wherein data stored in the data store is immutable such that a modification to the dataset causes a new version of the dataset to be generated without affecting a prior version of the dataset (receiving input identifying a particular version and generating new version by modifying identified version, Page 24, line 6-20, section 4, page 30, Fig. 1-12),
- receiving, via the user interface, a second user input identifying the second version of the dataset and the second version of the logic (modified version or another derived version (i.e., second version) of the one or more data set, Page 27, section 3, Page 30, section 4, Fig. 1-12).
As per claim 30, rejection of clam 21 is incorporated and further Han discloses:
- determining a first action of the first set of actions performed in connection with the first derived dataset (adding phone to the table (i.e., performed first set of action) Fig. 3, which is in connection with derived version of schema table in Fig. 1-4, Page 26-27, Example 1),
- determining a second action of the second set of actions performed in connection with the first derived dataset ((adding bonus to the table (i.e., performed second set of action) Fig. 3, which is in connection with derived version of schema table in Fig. 1-4, Page 26-27, Example 1).
As per claims 32-33, 35-36 and 38,
Claims 32-33, 35-36 and 38 are system claims corresponding to method claims 21-22, 25-26 and 29-30 respectively and rejected under the same reason set forth to the rejection of claims 32-33, 35-36 and 38 above.
As per claim 40,
Claim 40 is the computer readable medium claim corresponding to method claim 21 respectfully and rejected under the same reason set forth to the rejection of claim 21 above.
11. Claims 23-24, 27-28, 34 and 37 are rejected under 35 U.S.C. 103 as being unpatentable over “Schema versioning and database conversion techniques for bi-temporal databases”, Han-Chieh Wei and Ramez Elmasri; Department of Computer Science and Engineering, The University of Texas at Arlington, 200, herein after “Han”, in view of Wang et al (US 2014/0178886 A1), as applied to claim 21 and 32 above and further in view of Dye et al (US 2018/0285976 A1).
As per claim 23, rejection of claim 21 is incorporated, and further Han discloses:
- determining one or more performed actions in connection with the first derived dataset (adding phone to the table (i.e., performed action) Fig. 3, which is in connection with derived version of schema table in Fig. 1-4, Page 26-27, Example 1),
Combined method of Han and Wang does not explicitly disclose determining whether the one or more performed actions correspond to one or more suggested actions based on the first derived dataset. However, in the same field of endeavor Dye in an analogous art disclose determining whether the one or more performed actions correspond to one or more suggested actions based on the first derived dataset (recommended action based on changes (i.e., derived dataset) of a customer insurance coverage (i.e., suggested action based on derived dataset), Fig. 3, item 304, Para [0021]).
Therefore, it would have been obvious to a person of the ordinary skill in the art before the effective filing date of the claimed invention to combine the teaching of Han, as previously modified with Wang, with the teaching of Dye by modifying Han/Wang such that suggesting user to take appropriate action when a change in the previous or stored data is changed. The motivation for doing so would be detecting more specific information from a data provider in an efficient manner, (Dye, Para [0010]).
As per claim 24, rejection of claim 21 is incorporated,
Combined method of Han and Wang does not explicitly disclose the first set of actions comprises a first set of suggested actions; and the second set of actions comprises a second set of suggested actions. However, in the same field of endeavor Dye in an analogous art disclose the first set of actions comprises a first set of suggested actions; and the second set of actions comprises a second set of suggested actions (set of action (i.e., changes to the data in the data sources) and provide one or more recommendations (i.e., first and second recommendation), Para [0021], Fig. 3).
Therefore, it would have been obvious to a person of the ordinary skill in the art before the effective filing date of the claimed invention to combine the teaching of Han, as previously modified with Wang, with the teaching of Dye by modifying Han/Wang such that suggesting user to take appropriate action when a change in the previous or stored data is changed. The motivation for doing so would be detecting more specific information from a data provider in an efficient manner, (Dye, Para [0010]).
As per claim 27, rejection of claim 26 is incorporated,
Combined method of Han and Wang does not explicitly disclose wherein the state of the first version of the logic comprises one or more alerts that had already been generated prior to a first time, wherein the first derived dataset comprises one or more additional alerts to be generated, and wherein the first derived dataset excludes the one or more alerts that had already been generated prior to the first time. However, in the same field of endeavor Dye in an analogous art disclose wherein the state of the first version of the logic comprises one or more alerts that had already been generated prior to a first time, wherein the first derived dataset comprises one or more additional alerts to be generated, and wherein the first derived dataset excludes the one or more alerts that had already been generated prior to the first time (notifying the customer (i.e., generating alert) when source data changes or updated (i.e., first version of the logic), Para [0021], Fig. 3).
Therefore, it would have been obvious to a person of the ordinary skill in the art before the effective filing date of the claimed invention to combine the teaching of Han, as previously modified with Wang, with the teaching of Dye by modifying Han/Wang such that suggesting user to take appropriate action when a change in the previous or stored data is changed. The motivation for doing so would be detecting more specific information from a data provider in an efficient manner, (Dye, Para [0010]).
As per claim 28, rejection of claim 21 is incorporated,
Combined method of Han and Wang does not explicitly disclose generating an alert comprising a notification of the one or more second differences between the first set of actions and the second set of actions. However, in the same field of endeavor Dye in an analogous art disclose generating an alert comprising a notification of the one or more second differences between the first set of actions and the second set of actions (triggering alert when a change is detected, Para [0021], [0028]).
Therefore, it would have been obvious to a person of the ordinary skill in the art before the effective filing date of the claimed invention to combine the teaching of Han, as previously modified with Wang, with the teaching of Dye by modifying Han/Wang such that suggesting user to take appropriate action when a change in the previous or stored data is changed. The motivation for doing so would be detecting more specific information from a data provider in an efficient manner, (Dye, Para [0010]).
As per claims 34 and 37,
claims 34 and 37are system claims corresponding to method claims 23-24 and 28 respectively and rejected under the same reason set forth to the rejection of claims 23-24 and 28 above.
12. Claims 31 and 39 are rejected under 35 U.S.C. 103 as being unpatentable over “Schema versioning and database conversion techniques for bi-temporal databases”, Han-Chieh Wei and Ramez Elmasri; Department of Computer Science and Engineering, The University of Texas at Arlington, 200, herein after “Han”, in view of Wang et al (US 2014/0178886 A1), as applied to claim 21 and 32 above and further in view of Schneider et al (US 10,956,132 B1).
As per claim 31, rejection of claim 21 is incorporated,
Combined method of Han and Wang does not explicitly disclose displaying, via a graphical user interface (GUI), a first graphical representation of a first scenario that provides an association between the first version of the datasets, the first version of the logic and the first derived dataset, the first graphical representation comprising a first graph that includes a first node representing the first version of the dataset, and a second node representing the first derived dataset; and displaying via the GUI, a second graphical representation of a second scenario that provides an association between the second version of the dataset, the second version of the logic and the second derived dataset, the second graphical representation comprising a second graph that includes a third node representing the second version of the dataset, and a fourth node representing the second derived dataset. However, in the same field of endeavor Schneider in an analogous art disclose displaying, via a graphical user interface (GUI), a first graphical representation of a first scenario that provides an association between the first version of the datasets, the first version of the logic and the first derived dataset, the first graphical representation comprising a first graph that includes a first node representing the first version of the dataset, and a second node representing the first derived dataset (association between first and derived version in a tree structure with node, Page 48, Page 49, Fig. 16-17), displaying via the GUI, a second graphical representation of a second scenario that provides an association between the second version of the dataset, the second version of the logic and the second derived dataset, the second graphical representation comprising a second graph that includes a third node representing the second version of the dataset, and a fourth node representing the second derived dataset (association between different versions of dataset in a tree structure with plurality of nodes, Page 48, Page 49, Fig. 16-17).
Therefore, it would have been obvious to a person of the ordinary skill in the art before the effective filing date of the claimed invention to combine the teaching of Han, as previously modified with Wang, with the teaching of Schneider by modifying Han/Wang such that versions of data are displayed as a graph with nodes. The motivation for doing so would be detecting a dataset and transform it with the new set of data for optimization and cost minimization, (Schneider, column 15, line 40-50).
As per claim 39,
Claim 39 is the system claims corresponding to method claim 31 respectively and rejected under the same reason set forth to the rejection of claim 31 above.
Response to Arguments
13. Applicant’s arguments, filed on December 16, 2025 with respect to the rejection(s) of claim 21-40 have been fully considered but they are not deemed to be persuasive.
In response to applicant’s argument in page 8-12, regarding 101 rejections, applicant argued that amended claims are directed to patent-eligible subject matter. Applicant also argued that, amended claim 21 is directed to a technical solution to solve the technical problem of how to analyze and operate on datasets … claim not recite a mental process when they do not contain limitations that can practically be performed in the human mind, for instance when the human mind is not equipped to perform the claim limitations …
Examiner disagree and respectfully response that, claim 21, under Step 2A Prong One, Does the claim recite an abstract idea law of nature or natural phenomenon? Yes.
Claim 21, 32 and 40 recites, obtaining a first derived dataset associated with a first set of actions, wherein the first derived dataset is determined by applying a first version of logic to a first version of a dataset; obtaining a second version of the dataset, the second version of the dataset comprises added data not included in the first version of the dataset; determining a second derived dataset associated with a second set of actions by applying a second version of the logic to the second version of the dataset, comparing the first derived dataset to the second derived dataset to determine one or more first differences between the first derived dataset and the second derived dataset; and determining one or more second differences between the first set of actions and the second set of actions based on the one or more first differences, wherein the one or more second differences include an action applied to the second version of the dataset being in the second set of actions and the action not in the first set of actions.
As claim texts drafted by a set of very minimal limitations (or elements) of each of the five claim categories, obtaining a first derived dataset associated with a first set of actions; obtaining a second version of the dataset; determining a second derived dataset associated with a second set of actions; comparing the first derived dataset to the second derived dataset; determining one or more second differences, are merely a process that, under its broadest reasonable interpretation, covers mental processes – concepts performed in the human mind (including an observation, evaluation, judgment, opinion), but for the recitation of processing unit, memory and a computer readable medium which are explicitly generic computing components, including:
“obtaining a first derived dataset associated with a first set of actions, wherein the first derived dataset is determined by applying a first version of logic to a first version of a dataset”, as drafted, is a process that, under its broadest reasonable interpretation, covers performance of the limitation in the mind. For example, a user can have a dataset with last month’s sales data for a product (first initial dataset), and a dataset with this month sales data for the same product (second initial dataset). Say, for example, user did some interaction (such as addition or insertion) with the first dataset and some interaction with the second dataset (i.e., logic applied to both of these datasets, (i.e., first version of logic)) and a derived dataset came out after the interaction (i.e., first derived dataset). A user can perform this kind of interaction or operation with their data or dataset using his/her mind or with the aid of pen and paper, including observation, evaluation and judgement. Therefore, obtaining a first derived dataset associated with a first set of actions, wherein the first derived dataset is determined by applying a first version of logic to a first version of a dataset, is a mental process.
Similarly, obtaining a second version of the dataset, the second version of the dataset comprises added data not included in the first version of the dataset; as drafted, is a process that, under its broadest reasonable interpretation, covers performance of the limitation in the mind. For example, a user can use the dataset with last month’s sales data for a product, which include added or inserted data (second version of last month data), and a dataset with this month sales data for the same product which include added or inserted data (second version of this month dataset), keep in mind, added or inserted data or updated or modified data was not in first version of data. A user can perform this kind of interaction or operation with their data or dataset using his/her mind or with the aid of pen and paper, including observation, evaluation and judgement. Therefore, obtaining a second version of the dataset, the second version of the dataset comprises added data not included in the first version of the dataset, is a mental process.
Similarly, determining a second derived dataset associated with a second set of actions by applying a second version of the logic to the second version of the dataset, as drafted, is a process that, under its broadest reasonable interpretation, covers performance of the limitation in the mind. For example, a user can have a dataset with last month’s sales data for a product (first initial dataset), and a dataset with this month sales data for the same product (second initial dataset). Say, for example, user did some additional or different interaction (such as more addition or insertion) with the first dataset and some interaction with the second dataset (i.e., second logic applied to both of these datasets, (i.e., second version of logic)) and a derived dataset came out after the additional or different interaction (i.e., second derived dataset). A user can perform this kind of additional or different interaction or operation with their data or dataset using his/her mind or with the aid of pen and paper, including observation, evaluation and judgement. Therefore, determining a second derived dataset associated with a second set of actions by applying a second version of the logic to the second version of the dataset, is a mental process.
Similarly, comparing the first derived dataset to the second derived dataset to determine one or more first differences between the first derived dataset and the second derived dataset; as drafted, is a process that, under its broadest reasonable interpretation, covers performance of the limitation in the mind. For example, a user can look at both sets of data before addition or modification or deletion and after addition or modification or deletion, and see the differences to their data or dataset using his/her mind or with the aid of pen and paper, including observation, evaluation and judgement. Therefore, comparing the first derived dataset to the second derived dataset to determine one or more first differences between the first derived dataset and the second derived dataset, is a mental process.
Similarly, determining one or more second differences between the first set of actions and the second set of actions based on the one or more first differences, wherein the one or more second differences include an action applied to the second version of the dataset being in the second set of actions and the action not in the first set of actions, as drafted, is a process that, under its broadest reasonable interpretation, covers performance of the limitation in the mind. For example, a user can look at as many sets of data or as many versions of data, as their desire, before addition or modification or deletion and after addition or modification or deletion, and see the differences to their data or dataset using his/her mind or with the aid of pen and paper, including observation, evaluation and judgement. Therefore, determining one or more second differences between the first set of actions and the second set of actions based on the one or more first differences, wherein the one or more second differences include an action applied to the second version of the dataset being in the second set of actions and the action not in the first set of actions, is a mental process.
In response to applicant’s argument in regards to Step 2A, Prong Two, applicants argued that, amended claim 21 recites specific improvements to the technical field of a scenario management system for analyzing and operating on datasets that may be changed retroactively, enabling the application of chosen logic to the chosen dataset, and allowing comparison of outputs across scenarios, which shows a specific improvement over prior art system.
Examiner disagree, and reposefully response that, b) In analyzing under step 2A Prong Two, Does the claim recite additional elements that integrate the judicial exception into a practical application? NO.
This judicial exception is not integrated into a practical application. In particular, the claim only recites additional elements – “wherein at least a part of the method is performed by one or more processors”, “one or more memories having instructions stored thereon; and one or more processors configured to execute the instructions”, and “non-transitory computer readable storage medium storing instructions that, when executed by one or more processors, cause the one or more processors to perform operations”. The additional components are generic computer components even being recited as additional limitations, however, do not preclude the claims from reciting an abstract idea. For instance, as the above detailed analysis on the minimal limitations as abstract ideas that can be performed mentally in mind by human, without reciting any “additional element” to integrate the judicial exception into a practical application.
The processes of receiving necessities for performing an action and providing indication of completed such that it amounts no more than mere instructions to apply the exception using a generic computer component, processing unit(s), memory and computer readable medium for the processes. That is, the limitations represent well-understood, routine, conventional activity (See MPEP 2106.05(g) or 2106.05(d) for receiving or transmitting data over a network, e.g. see Intellectual Ventures v. Symantec; Storing and retrieving information in memory: Versata; Analyzing data: Genetic Techs; Determining: OIP Techs; Electronic recordkeeping: Alice Corp). Accordingly, even considering all the elements as additional elements do not integrate the abstract idea into a practical application because it does not impose any meaningful limits on practicing the abstract idea. As such, the claim is directed to an abstract idea.
c) In analyzing under step 2B, does the claim recite additional elements that amount to significantly more than the judicial exception? NO
The claims 21, 32 and 40 does not include additional elements that are sufficient to amount to significantly more than the judicial exception. As discussed above with respect to integration of the abstract idea into a practical application, there is simply no additional elements adding to the already analyzed very few minimal steps of performing action. The steps, represent well-understood, routine, conventional activity previously known to the industry and are specified at a high level of generality, and in the context of the limitations reciting performing action that can be practically performed in the human mind and may be considered to fall within the mental process and mathematical concepts groupings.
As such, the limitations represent well-understood, routine, conventional activity (See MPEP 2106.05(g) or 2106.05(d) for receiving or transmitting data over a network, e.g. see Intellectual Ventures v. Symantec; Storing and retrieving information in memory: Versata; Analyzing data: Genetic Techs; Determining: OIP Techs; Electronic recordkeeping: Alice Corp). The claims are not patent eligible.
Therefore, examiner maintain 101 abstract idea rejection for claim 21, 32 and 40.
In response to applicant’s argument in page 13-14, regarding 103 rejections, applicant argued that Wang does not disclose "determining one or more second differences between the first set of actions and the second set of actions based on the one or more first differences [determined by comparing the first derived dataset to the second derived dataset] ... the one or more second differences include an action applied to the second version of the dataset," as recited in claim 21.
Examiner disagree, and respectfully response that, Wang teaches determining one or more second differences between the first set of actions and the second set of actions based on the one or more first differences, wherein the one or more differences include an action applied to the second version of the dataset being in the second set of actions and the action not in the first set of actions in Para [0163], [0164], [0170], [0202], [0203], by comparing the first and second datasets and evaluating the differences between datasets and actions, differences includes action on different sets of tissue samples (i.e., different version of dataset) which not in the first set of action or second set of action, Para [0476] – [0477], [0458].
Examiner broadest reasonable interpretation: Fig. 7, item 57 teaches evaluating the effect of the action on the subject based on the set of changes between the first and second sets of results. Here, Wang teaches evaluating the effect of action on the set of changes (i.e., differences between more than one actions). When a user or a person evaluate two or more sets of data sample or two or more set of data result, that user obviously see the differences in action and results on those datasets or data sample. See also in Fig. 8, item 58-63, Fig. 11A, 12A, Fig. 21, item 901-907, Para [0009].
Beside Wang, Dye reference cited for dependent claim also reasonably teaches this argues limitation. According to applicant’s specification Para [0021], [0052] and [0053] applicants described at hand dataset, which is used to apply logic to determine suggested action or notification. This at hand dataset change or update retroactively (note: retroactive data is a past or previous or historical data which can change many times as needed). Accordingly, Dye also teaches changes to a party’s or customer insurance profile (i.e., dataset) which changes retroactively as need or as required, (Para [0029] – [0030], Fig. 3. Examiner broadest reasonable interpretation: Whenever a change made to the customer profile, a second or third version of data is created and what ever changes is made to the profile (i.e., first action, second action) can evaluate or compare with different version and different action (i.e., logic). For example, adding a new child to their existing coverage will be an action taken to first dataset where new child is not in the first dataset (i.e., existing coverage). (Para [0022], [0041]), or elimination of a coverage will be another action to the profile or initial dataset, and the customer can determine the differences (i.e., first difference, second difference based on the action taken, such as addition elimination) in their quote.
Therefore, examiner firmly believe that, Han in view of Wang or Dye alone or in combination reasonably teaches the argued limitation and claim 21, 32 and 40 as claimed.
Conclusion
13. THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Contact Information
14. Any inquiry concerning this communication or earlier communications from the examiner should be directed to MOHAMMED R UDDIN whose telephone number is (571)270-3138. The examiner can normally be reached M-F: 9:00 AM-5:00 PM.
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/MOHAMMED R UDDIN/Primary Examiner, Art Unit 2167