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 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.
In January, 2019 (updated October 2019), the USPTO released new examination guidelines setting forth a two-step inquiry for determining whether a claim is directed to non-statutory subject matter. According to the guidelines, a claim is directed to non-statutory subject matter if:
STEP 1: the claim does not fall within one of the four statutory categories of invention (process, machine, manufacture or composition of matter), or
STEP 2: the claim recites a judicial exception, e.g., an abstract idea, without reciting additional elements that amount to significantly more than the judicial exception, as determined using the following analysis:
STEP 2A (PRONG 1): Does the claim recite an abstract idea, law of nature, or natural phenomenon?
STEP 2A (PRONG 2): Does the claim recite additional elements that integrate the judicial exception into a practical application?
STEP 2B: Does the claim recite additional elements that amount to significantly more than the judicial exception?
Using the two-step inquiry, it is clear that the claims are directed toward non-statutory subject matter, as shown below:
STEP 1: Do the claims fall within one of the statutory categories? Yes. All claims fall within a statutory category under § 101.
Claim 1: Process (method).
Claims 16: Manufacture (non-transitory computer-readable storage device/software program product).
Claim 20: Apparatus.
STEP 2A (PRONG 1): Is the claim directed to a law of nature, a natural phenomenon or an abstract idea? Yes, the claims are directed to an abstract idea.
With regard to STEP 2A (PRONG 1), the guidelines provide three groupings of subject matter that are considered abstract ideas:
Mathematical concepts – Mathematical concept of partitioning a dataset into training and testing subsets across multiple iterations.;
Mental Process – organizing, partitioning and allocating.
Claims 1-20 are a mathematical concepts, that is mathematical relationships, mathematical formulas or equations, mathematical calculations and, therefore, an abstract idea. With regard to independent claims 1, 16, and 20, the method/computer-readable media (or computer implemented functionality) recites the steps of:
These limitations, under their broadest reasonable interpretation, cover applying mathematical algorithms and/or calculations. The use of a computer or processing device include no more than applying the exception using a generic computer or computer component. The limitations are not directed to an improvement in the computer itself or a computer component and therefore cannot provide an inventive concept.
To distinguish ineligible claims that merely recite a judicial exception from eligible claims that require an implementation of judicial exception, the Supreme Court uses a two-step framework: Step One (Step 2A), determine whether the claims at issue are directed to one of those patent-ineligible concepts; and Step Two (Step 2B), if so, ask “what else is there in the claims?’ to determine whether the additional elements transform the nature of the claim into a patent eligible application.
STEP 2A (PRONG 2): Does the claim recite additional elements that integrate the judicial exception into a practical application? No, the claim does not recite additional elements that integrate the judicial exception into a practical application.
With regard to STEP 2A (prong 2), whether the claim recites additional elements that integrate the judicial exception into a practical application, the guidelines provide the following exemplary considerations that are indicative that an additional element (or combination of elements) may have integrated the judicial exception into a practical application:
an additional element reflects an improvement in the functioning of a computer, or an improvement to other technology or technical field;
an additional element that applies or uses a judicial exception to effect a particular treatment or prophylaxis for a disease or medical condition;
an additional element implements a judicial exception with, or uses a judicial exception in conjunction with, a particular machine or manufacture that is integral to the claim;
an additional element effects a transformation or reduction of a particular article to a different state or thing; and
an additional element applies or uses the judicial exception in some other meaningful way beyond generally linking the use of the judicial exception to a particular technological environment, such that the claim as a whole is more than a drafting effort designed to monopolize the exception.
While the guidelines further state that the exemplary considerations are not an exhaustive list and that there may be other examples of integrating the exception into a practical application, the guidelines also list examples in which a judicial exception has not been integrated into a practical application:
an additional element merely recites the words “apply it” (or an equivalent) with the judicial exception, or merely includes instructions to implement an abstract idea on a computer, or merely uses a computer as a tool to perform an abstract idea;
an additional element adds insignificant extra-solution activity to the judicial exception; and
an additional element does no more than generally link the use of a judicial exception to a particular technological environment or field of use.
The claims do not integrate the mathematical concept into a practical application. There are no technical improvements and generic tools are used for performing the mathematical logic.
STEP 2B: Does the claim recite additional elements that amount to significantly more than the judicial exception? No, the claim does not recite additional elements that amount to significantly more than the judicial exception.
With regard to STEP 2B, whether the claims recite additional elements that provide significantly more than the recited judicial exception, the guidelines specify that the pre-guideline procedure is still in effect. Specifically, that examiners should continue to consider whether an additional element or combination of elements:
adds a specific limitation or combination of limitations that are not well-understood, routine, conventional activity in the field, which is indicative that an inventive concept may be present; or
simply appends well-understood, routine, conventional activities previously known to the industry, specified at a high level of generality, to the judicial exception, which is indicative that an inventive concept may not be present.
The following computer functions have been recognized as well‐understood, routine, and conventional functions when they are claimed in a merely generic manner (e.g., at a high level of generality): receiving or transmitting data over a network. See MPEP 2106.05(d)(II).
The claims do not recite an inventive concept that is significantly more than the mathematical concept. The use of processors and CRM provides only a generic environment for the mathematical concepts to take place.
Partitioning data into training and test tests is routine practice in statistics. Similarly in claims 5, 6, and 12 the use of variance is just mathematical.
Accordingly, the claims do not recite any additional elements sufficient to amount to “significantly more” than the abstract idea itself. See Berkheimer v. HP Inc., 881 F.3d 1360 (Fed. Cir. 2018); SAP America, Inc. v. InvestPic, LLC, 898 F.3d 1161 (Fed. Cir. 2018).
Thus, since claims 1, 16, and 20 are: (a) directed toward an abstract idea, (b) does not recite additional elements that integrate the judicial exception into a practical application, and (c) does not recite additional elements that amount to significantly more than the judicial exception, it is clear that claims 1, 17, and 18 are directed towards non-statutory subject matter.
Further, dependent claims 2–15 and 17-19 further limit the abstract idea without integrating the abstract idea into practical application or adding significantly more. Each of the claimed limitations either expand upon or add either 1) new mathematical process and 2) mental process.
Double Patenting
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 § 2146 et seq. 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 filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual 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/apply/applying-online/eterminal-disclaimer.
Claims 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-15 of U.S. Patent No. 12014026. Although the claims at issue are not identical, they are not patentably distinct from each other because the present claims recite small variations of the parent claims.
Regarding claims 1-2, see parent claim 1.
Regarding claim 3, see parent claim 3.
Regarding claim 4, see parent claim 4.
Regarding claim 5, see parent claim 1 and 7.
Regarding claim 6, see parent claim 1.
Regarding claim 7, see parent claim 5.
Regarding claim 8, see parent claim 6.
Regarding claim 9, see parent claim 7.
Regarding claim 10, see parent claim 8.
Regarding claim 11, see parent claim 9.
Regarding claim 12, see parent claim 10.
Regarding claim 13, see parent claim 11.
Regarding claim 14, see parent claim 12.
Regarding claim 15, see parent claim 13.
Regarding claims 16-17, see parent claim 14.
Regarding claim 18, see parent claim 3, 4 and 14.
Regarding claim 19, see parent claim 14.
Regarding claim 20, see parent claim 15.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claim(s) 1-2, 7, 10, 13, and 16-17 are rejected under 35 U.S.C. 102a1 as being anticipated by Kohavi (“The Power of Decision Tables”).
Regarding claim 1, Kohavi teaches a method comprising the steps of: obtaining a plurality of sets of training and test data packages (see section 3.1, k fold cross validation splits the data)
wherein each set of the plurality of sets comprises a plurality of data items that are common to all sets of the plurality of sets (section 3.1, induction algorithm); and
dividing the plurality of data items for each set into test data and training data, wherein (section 3.1, unseen fold which serves as a test set):
the test data for each set comprises a subset of one or more data items from the plurality of data items (section 3.1, k fold cross validation splits),
wherein the test data for each set is allocated as test data for only that set of the plurality of sets (section 3.2, test on that fold); and
the training data for each set comprises the remainder of the data items for that set, excluding the test data for that set (section 3.1, each time is trained on k-1 folds and section 3.2, we train on a full dataset then delete the instances in one fold).
Regarding claim 2, section 3.1 states that it is repeated which processed.
Regarding claim 7, see section 3.2, deleting.
Regarding claim 10, see section 3.1, k times, each time it is train on k-1 folds and the generated….).
Regarding claim 13, see section 3.1. Data that is used is retrieved.
Regarding claim 16, see the rejection of claim 1.
Regarding claim 17 see the rejection of claim 2.
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.
Claim(s) 4, 9, 11, 14 and 15 are rejected under 35 U.S.C. 103 as being unpatentable over Kohavi in view of Krallman (20160021512).
Regarding claim 4, Krallman teaches random selection in par. 105.
It would have been obvious prior to the effective filing date of the invention to one of ordinary skill in the art to include in Kohavi the ability to randomly select as taught by Krallman to assign data in a convenient manner.
Regarding claim 9, see pars. 37-38 of Krallman, zones.
Regarding claim 11, see par. 105 of Krallman and section 3.1 of Kohavi.
Regarding claim 14, see par. 54 and 105 of Krallman.
Regarding claim 15, see section 3.1 of Kohavi and par. 54 and 105-106 of Krallman.
Allowable Subject Matter
Claims 3, 5-6, 8, 12, and 18-19 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims. The 101 and double patenting rejections would have to be overcome.
Claim 20 would be allowable if the 101 and double patenting rejection is overcome.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to HADI AKHAVANNIK whose telephone number is (571)272-8622. The examiner can normally be reached 9 AM - 5 PM Monday to Friday.
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, Henok Shiferaw can be reached at (571) 272-4637. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/HADI AKHAVANNIK/ Primary Examiner, Art Unit 2676