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 .
Detailed Action
This action is in response to the application filed on 5/10/224
Priority
Acknowledgment is made of applicant's claim for prior priority date of U.S. Provisional Patent Application 63/465,363 filed on 05/10/2023
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.
All claims 1-20 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more.
The claims are directed to a system, method, or product, which are/is one of the statutory categories of invention. (Step 1: YES).
The Examiner has identified independent method Claim 1 (herein called the Primary Independent Claim) as the claim that represents the claimed invention for analysis and is similar to independent product Claim 11 (herein called Additional Independent Claims). The Primary Independent Claim recites the limitations of:
A computer-implemented method for determining whether a company adheres to environmental, social, and governance (ESG) or other sustainability criteria (“ESG factors”) of an investor or investment fund, the method comprising: receiving, by a processor, one or more ESG factors specified by the investor or investment fund via a user interface; querying, by the processor, one or more databases to retrieve company-specific data by mapping the one or more ESG factors to data identifiers associated with the company; generating, by the processor, an evaluation report by analyzing the retrieved company-specific data to determine a degree of adherence to the ESG criteria; and transmitting, by a communication module, the evaluation report to an external device or a storage medium.
These limitations, under their broadest reasonable interpretation, cover performance of the limitation as “Certain Methods of Organizing Human Activity”. The limitation of at least “transmitting the evaluation report” recites a fundamental economic practice. If a claim limitation, under its broadest reasonable interpretation, covers performance of the limitation as a fundamental economic practice, then it falls within the “Certain Methods of Organizing Human Activity” grouping of abstract ideas. Accordingly, the claim recites an abstract idea.
The limitation of at least “by the processor” in the Primary Independent Claim is just applying generic computer components to the recited abstract limitations. The recitation of generic computer components in a claim does not necessarily preclude that claim from reciting an abstract idea. The Additional Independent Claims are also abstract for similar reasons. (Step 2A-Prong 1: YES. The claims recite an abstract idea)
This judicial exception is not integrated into a practical application. The examiner did not find any additional elements that would cause further analysis. The computer hardware/software is/are recited at a high-level of generality (i.e., as a generic processor performing a generic computer function) such that it amounts no more than mere instructions to apply the exception using a generic computer component. Accordingly, these additional elements, when considered separately and as an ordered combination, do not integrate the abstract idea into a practical application because they do not impose any meaningful limits on practicing the abstract idea and are at a high level of generality. Therefore, all the independent claims are directed to an abstract idea without a practical application. (Step 2A-Prong 2: NO. The additional claimed elements are not integrated into a practical application)
The claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception because, when considered separately and as an ordered combination, they do not add significantly more (also known as an “inventive concept”) to the exception. As discussed above with respect to integration of the abstract idea into a practical application, the additional element of using a computer hardware and software per se amounts to no more than mere instructions to apply the exception using a generic computer component. Mere instructions to apply an exception using a generic computer component cannot provide an inventive concept. See MPEP 2106.05(f) where applying a computer as a tool is not indicative of significantly more as well as MPEP 2106.05(d). Accordingly, these additional elements, do not change the outcome of the analysis, when considered separately and as an ordered combination. Thus, all independent claims are not patent eligible. (Step 2B: NO. The claims do not provide significantly more)
Dependent claims further define the abstract idea that is present in their respective independent claims, and thus correspond to Certain Methods of Organizing Human Activity and hence are abstract for the reasons presented above. The dependent claims do not include any additional elements that integrate the abstract idea into a practical application or are sufficient to amount to significantly more than the judicial exception when considered both individually and as an ordered combination. Therefore, the dependent claims are directed to an abstract idea. Thus, all the claims are not patent-eligible.
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 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 listed below are rejected under 35 U.S.C. 103 as being unpatentable over Chen (U.S. Patent 11657454) in view of Peter= Peterffy (U.S. Patent 11741547)
Re claim 1 & 11: Chen discloses:
A computer-implemented method for determining whether a company adheres to environmental, social, and governance (ESG) or other sustainability criteria (“ESG factors”) of an investor or investment fund, the method comprising: (see Chen Figure 1-3)
An apparatus for determining whether a company adheres to environmental, social, and governance (ESG) or other sustainability criteria (“ESG factors”) of an investor or investment fund, comprising: a processor configured to: (see Chen Figure 1-3)
receiving, by a processor, one or more ESG factors specified by the investor or investment fund via a user interface; (see Chen Figure 3 item 102-108, Fig 4 item 112-118, Fig 2A-2B)
querying, by the processor, one or more databases to retrieve company-specific data by mapping the one or more ESG factors to data identifiers associated with the company; (see Chen Figure 3 item 104-110, Fig 4 item 112-120, Fig 2A-2B)
generating, by the processor, an evaluation report by analyzing the retrieved company-specific data to determine a degree of adherence to the ESG criteria; and (see Chen Figure 3 item 110-112, Fig 4 item 116-122, Fig 2A-2B, 22-23)
transmitting, by a communication module, the evaluation report to an external device or a storage medium. (see Chen Fig 22 item 640, 610, 500, Figure 23, item 543, 556, Figure 3 item 110-112, Fig 4 item 116-122, Fig 2A-2B)
Although Chen does explicitly not have evaluation company data, Peter claims “evaluation company data” Column 1 line 56 “evaluating and balancing a market participant's portfolio based on actionable ESG data” Figure 1-2
Therefore it would have been obvious to one of ordinary skill in the art at the effect filling date was made to modify Chen by adapting any features of Peter.
It is clear that one would be motivated by the teaching in the prior art that would have led one of ordinary skill to modify the prior art reference or to combine prior art reference teachings to arrive at the claimed invention. Specifically, both Chen teaches Fig 3 optimizing ESG Alpha portfolio that is made up of company stock that is adapted in Peter system see Peter Figure 2 “impact score”.
Re claim 2 & 12: see claim 1 +
further comprising transforming, by the processor, one or more regulatory or industry-imposed frameworks into business and investment process workflows which comprise one or more of a screening stage, a due diligence stage, and a monitoring stage, which, together, provide the one or more regulatory or industry-imposed frameworks and data input options to collect and analyze information on ESG factors. (see Chen Figure 3 item 102-108, Fig 4 item 112-118, Fig 2A-2B)
Re claim 3 & 13: see claim 1 +
wherein querying, by the processor, the one or more databases to retrieve company specific data further comprises mapping a first instance of the one or more ESG factors specified by a first investor or investment fund to data identifiers associated with the company and mapping a second instance of the one or more ESG factors specified by a second investor or investment fund to the data identifiers associated with the company. (see Chen Figure 3 item 102-108, Fig 4 item 112-118, Fig 2A-2B)
Re claim 4 & 14: see claim 1 +
further comprising matching one or more of the company-specific data identifiers to one or more other users, including at least one of the investor, the investment fund, another company, or other parties, based on, at least one of, the ESG factors specified by the investor or investment fund or the company-specific data. (see Chen Figure 3 item 104-110, Fig 4 item 112-120, Fig 2A-2B)
Re claim 5 & 15: see claim 1 +
further comprising displaying the evaluation report on a graphical user interface (GUI) that includes interactive elements to manipulate visual indicators representing the degree of adherence to pre-determined parameters and degree of influence on business drivers including for profit and cost. (see Chen Fig 22 item 640, 610, 500, Figure 23, item 543, 556, Figure 3 item 110-112, Fig 4 item 116-122, Fig 2A-2B)
Re claim 6 & 16: see claim 1 +
wherein querying the one or more databases further comprises accessing both publicly available databases and private databases that require authentication. (see Chen column 3 lines 43-69, Figure 3 item 104-110, Fig 4 item 112-120, Fig 2A-2B)
Re claim 7 & 17: see claim 1 +
wherein generating the evaluation report further comprises performing statistical analysis of the company-specific data against benchmark data stored in the one or more databases. (see Chen Figure 3 item 110-112, Fig 4 item 116-122, Fig 2A-2B, 22-23)
Re claim 8 & 18: see claim 1 +
wherein the statistical analysis includes regression analysis to identify trends in the company-specific data over time. (see Chen Figure 3 item 110-112, Fig 4 item 116-122, Fig 2A-2B, 22-23)
Re claim 9 & 19: see claim 1 +
further comprising updating the one or more databases based on feedback received over one or more points in time from companies regarding the accuracy of the data used in the evaluation report. (see Chen Figure 3 item 110-112, Fig 4 item 116-122, Fig 2A-2B, 22-23)
Re claim 10 & 20: see claim 1 +
wherein the user interface through which the one or more ESG factors are received allows for customization of the ESG criteria by the investment fund. (see Chen Fig 22 item 556, Figure 3 item 102-108, Fig 4 item 112-118, Fig 2A-2B)
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Stoner et al., U.S. Patent 11694269, discloses a system receives a user indication of a selected climate change scenario from a remote client device a method and system for matching order routing of securities and other transaction information on a post-executions basis, such as during the confirmation and settlement phase.
Shakfeh et al., U.S. Patent 11615473, discloses a computer program products for a resilience measurement system.
Contact Information
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Kirsten Apple whose telephone number is (571)272-5588. The examiner can normally be reached on 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, Michael Anderson can be reached on (571) 270-0508. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see https://ppair-my.uspto.gov/pair/PrivatePair. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative or access to the automated information system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/KIRSTEN S APPLE/Primary Examiner, Art Unit 3693