DETAILED ACTION
In the response filed February 27, 2026, the Applicant amended claims 1, 4, 7, 15, and 19; canceled claims 5 and 18; and added claims 21 and 22. Claims 1-4, 6-17, and 19-22 are pending in the current application.
Notice of 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 .
Response to Arguments
Applicant’s arguments for claims 1-4, 6-17, and 19-22 with respect to the 35 U.S.C. 101 rejection have been considered but are unpersuasive. Applicant argues that the amended claims are not directed to a judicial exception. Examiner respectfully disagrees. As discussed below the steps that are focused on prediction, under broadest reasonable interpretation, describe or set-forth predicting a value for a specific financial transaction, which amounts to commercial or legal interactions (including agreements in the form of contracts; legal obligations; advertising, marketing or sales activities or behaviors; business relations). These limitations therefore fall within the “certain methods of organizing human activity” subject matter grouping of abstract ideas. In addition, the steps that are focused on scaling and normalizing variables, under broadest reasonable interpretation, also describe or set-forth combining scaled and normalized series of independent variables into a composite variable, which amounts to mathematical relationships and mathematical calculations. These limitations therefore fall within the “mathematical concepts” subject matter grouping of abstract ideas.
Applicant argues that the claims are patent eligible as they integrate a judicial exception into a practical application. Examiner respectfully disagrees. The claim amendments referred to by Applicant are claim limitations that are elements of the abstract idea as described above. Applicant argues that the claims in McRO are similar to the claims of the present invention. Examiner respectfully disagrees. None of the claims in the cited three cases have anything to do with “predictive analytics.” The examiner notes that the concepts in McRO are entirely different from that of the instant application, and thus cannot be relied upon as a prima facie basis for patent eligibility simply because Applicant purports their invention is similar. Turning to the instant invention, it is clear that the claims are merely drawn to a method of predicting a value for a specific financial transaction that is performed via generic computer technology.
Applicant argues that the claims reflect an improvement in the functioning of a computer and an improvement to other technology or technical field. Examiner respectfully disagrees. The specific problem (predicting a value for a specific financial transaction) is not a problem specifically arising in the technical field of computer-implemented business methods. The steps do not facilitate an improved functioning of a generic computer that would make the same calculations and determinations in the same way as any generic computer. The fact that the performing of the calculation is executed on a networked system does not somehow automatically make problem unique to the realm of computer networks. The fact that the determinations are made by a generic computer processor does not somehow automatically make the solution necessarily rooted in computer technology. The instant claims merely limit the use of the abstract idea to a particular environment - that being a computer environment. This same problem would exist in non-computer environments, and the same solution would be appropriate – the claims here are merely detecting and receiving data. Stripped of the generic computer elements recited in the claims, the problem and solution would remain intact. Limitations that link the use of a judicial exception to a particular technological environment or field of use do not qualify as "significantly more," and do not transform the judicial exception into patent-eligible subject matter.
Furthermore, although the claims recite a specific sequence of computer-implemented functions, and although the specification suggests certain functions may be advantageous for various reasons (e.g., business reasons), the Examiner has determined that the ordered combination of claim elements (i.e., the claims as a whole) are not directed to an improvement to computer functionality/capabilities, an improvement to a computer-related technology or technological environment, and do not amount to a technology-based solution to a technology-based problem.
Applicant argues that the amended claims are patent eligible as they provide an inventive concept that are not well-understood, routine, and conventional. Examiner respectfully disagrees. There was a determination in the previous Office action that the claims do not amount to significantly more but no declaration that the limitations are not well-understood, routine, or conventional. Here, the requirement to execute the claimed steps/functions using “a computing system,” “a processor of the computing system,” and “a database of the computing system,… wherein the database is organized in a first format,” “using a series of models… wherein at least one of the models comprises multivariate adaptive regression splines;” (claims 1, 4, and 15); "a system comprising: one or more processors; and one or more non-transitory memories” (claim 15), is equivalent to adding the words “apply it” on a generic computer and/or mere instructions to implement the abstract idea on a generic computer. These limitations do not impose any meaningful limits on practicing the abstract idea, and therefore do/does not integrate the abstract idea into a practical application. See § MPEP 2106.05(f). Viewing the additional limitations in combination also shows that they fail to ensure the claims amount to significantly more than the abstract idea. When considered as an ordered combination, the additional components of the claims add nothing that is not already present when considered separately, and thus simply append the abstract idea with words equivalent to “apply it” on a generic computer and/or mere instructions to implement the abstract idea on a generic computer. When considered as an ordered combination, the additional components of the claims add nothing that is not already present when considered separately. Applicant’s arguments remain unpersuasive. The 35 U.S.C. 101 rejection is hereby maintained.
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 1-4, 6-17, and 19-22 are rejected under 35 U.S.C. 101 because the claimed invention is directed to a judicial exception (i.e., a law of nature, a natural phenomenon, or an abstract idea) without significantly more.
Step 1: Claims 1-4 and 6-14 are drawn to processes and 15-17 and 19-22 are drawn to a machine, each of which is within the four statutory categories (e.g., a process, a machine). (Step 1: YES).
Step 2A – Prong One:
In prong one of step 2A, the claims are analyzed to evaluate whether they recite a judicial exception.
Claim 1 (representative of claim 15) recites/describes the following steps:
“receiving,…a series of independent variables that represent attributes of a specific financial transaction;”
“receiving,…, data from an external data source, wherein the external data source is organized in a second format and the second format is different from the first format;”
“extracting the data from the second format of the external data source;”
“transforming the extracted data into the first format from the second format;”
“predicting a value for the specific financial transaction …operating on the weighted assembled scaled and normalized series of independent variables, the at least one composite variable, and the extracted data in the first format…; and
“storing the value …”
Claim 4 (further narrows the abstract idea recited in claim 1) recites/describes the following steps:
“receiving,…a series of independent variables that represent attributes of a specific commercial real estate property;”
“receiving,…, data from an external data source, wherein the external data source is organized in a second format and the second format is different from the first format;”
“extracting the data from the second format of the external data source;”
“transforming the extracted data into the first format from the second format;”
“predicting a rental rate for the specific commercial real estate property …using the weighted assembled scaled and normalized series of independent variables and the weighted extracted data in the first format; and”
“storing the rental rate …”
These steps, under broadest reasonable interpretation, describe or set-forth predicting a value for a specific financial transaction, which amounts to commercial or legal interactions (including agreements in the form of contracts; legal obligations; advertising, marketing or sales activities or behaviors; business relations). These limitations therefore fall within the “certain methods of organizing human activity” subject matter grouping of abstract ideas.
Claim 1 (representative of claim 15) recites/describes the following steps:
“scaling and normalizing, … the series of independent variables;”
“assembling the scaled and normalized series of independent variables…, ”
“combining at least two independent variables of the scaled and normalized series of independent variables into at least one composite variable;”
“applying …weightings to the assembled scaled and normalized series of independent variables and the at least one composite variable, and the extracted data in the first format;”
Claim 4 (further narrows the abstract idea recited in claim 1) recites/describes the following steps:
“scaling and normalizing, … the series of independent variables;”
“assembling the scaled and normalized series of independent variables…”
“determining an importance of each independent variable of the scaled and normalized series of independent variables using data relative to past results from industry data and from portfolio data from a user, wherein the importance of each independent variable is measured relative to other independent variables of the scaled and normalized series of independent variables;”
“applying weightings to the assembled scaled and normalized series of independent variables and the extracted data in the first format, wherein the weightings are determined using the importance of each independent variable of the scaled and normalized series of independent variables;”
These steps, under broadest reasonable interpretation, also describe or set-forth combining scaled and normalized serios of independent variables into a composite variable, which amounts to mathematical relationships and mathematical calculations. These limitations therefore fall within the “mathematical concepts” subject matter grouping of abstract ideas.
As such, the Examiner concludes that claim 1 recites an abstract idea (Step 2A – Prong One: YES).
Each of the depending claims 2, 3, 6-14, 16-19, and 20-22, likewise recite/describe these steps (by incorporation - and therefore also recite limitations that fall within this subject matter grouping of abstract ideas), and these claims are therefore determined to recite an abstract idea under the same analysis. Any elements recited in a dependent claim that are not specifically identified/addressed by the Examiner under step 2A (prong two) or step 2B of this analysis shall be understood to be an additional part of the abstract idea recited by that particular claim.
Step 2A – Prong Two:
The claims recite the additional elements/limitations of: “a computing system,” “a processor of the computing system,” and “a database of the computing system,… wherein the database is organized in a first format,” “using a series of models… wherein at least one of the models comprises multivariate adaptive regression splines;” (claims 1, 4, and 15); "a system comprising: one or more processors; and one or more non-transitory memories” (claim 15).
The requirement to execute the claimed steps/functions using “a computing system,” “a processor of the computing system,” and “a database of the computing system,… wherein the database is organized in a first format,” “using a series of models… wherein at least one of the models comprises multivariate adaptive regression splines;” (claims 1, 4, and 15); "a system comprising: one or more processors; and one or more non-transitory memories” (claim 15), is equivalent to adding the words “apply it” on a generic computer and/or mere instructions to implement the abstract idea on a generic computer. These limitations do not impose any meaningful limits on practicing the abstract idea, and therefore do/does not integrate the abstract idea into a practical application. See § MPEP 2106.05(f).
Remaining dependent claims 2, 7-13, 16, and 18-22, either recite the same additional elements as noted above or fail to recite any additional elements (in which case, note prong one analysis as set forth above – those claims are further part of the abstract idea as identified by the Examiner for each respective dependent claim).
The Examiner has therefore determined that the additional elements, or combination of additional elements, do not integrate the abstract idea into a practical application. Accordingly, the claims are directed to an abstract idea (Step 2A – Prong two: NO).
Step 2B:
As discussed above in “Step 2A – Prong 2,” the requirement to execute the claimed steps/functions using “a computing system,” “a processor of the computing system,” and “a database of the computing system,… wherein the database is organized in a first format,” “using a series of models… wherein at least one of the models comprises multivariate adaptive regression splines;” (claims 1, 4, and 15); "a system comprising: one or more processors; and one or more non-transitory memories” (claim 15), is equivalent to adding the words “apply it” on a generic computer and/or mere instructions to implement the abstract idea on a generic computer. These limitations therefore do not qualify as “significantly more.” See MPEP § 2106.05(f).
Viewing the additional limitations in combination also shows that they fail to ensure the claims amount to significantly more than the abstract idea. When considered as an ordered combination, the additional components of the claims add nothing that is not already present when considered separately, and thus simply append the abstract idea with words equivalent to “apply it” on a generic computer and/or mere instructions to implement the abstract idea on a generic computer. When considered as an ordered combination, the additional components of the claims add nothing that is not already present when considered separately.
Remaining dependent claims 2, 7-13, 16, and 18-22, either recite the same additional elements as noted above or fail to recite any additional elements (in which case, note prong one analysis as set forth above – those claims are further part of the abstract idea as identified by the Examiner for each respective dependent claim).
The Examiner has therefore determined that no additional element, or combination of additional claims elements is/are sufficient to ensure the claims amount to significantly more than the abstract idea identified above (Step 2B: NO).
Examiner notes claims 3, 6, 14, and 17, are considered to be directed to eligible subject matter.
Allowable Subject Matter
Claims 3, 6, 14, and 17, 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.
Claims 1, 2, 4, 7-13, 15, 16, and 18-22, would be allowable subject matter if revised and amended to overcome the rejections under 35 U.S.C. 101 as set forth in this Office action.
As per claim 1 (representative of claims 4 and 15), the closest prior art of record taken either individually or in combination with other prior art of record fails to teach or suggest “scaling and normalizing, by a processor of the computing system, the series of independent variables; assembling the scaled and normalized series of independent variables in a database of the computing system, wherein the database is organized in a first format; receiving, at the computing system, data from an external data source, wherein the external data source is organized in a second format and the second format is different from the first format; extracting the data from the second format of the external data source; transforming the extracted data into the first format from the second format; combining at least two independent variables of the scaled and normalized series of independent variables into at least one composite variable; applying, by the processor, weightings to the assembled scaled and normalized series of independent variables, the at least one composite variable, and the extracted data in the first format; predicting a value for the specific financial transaction using a series of parametric models operating on the weighted assembled scaled and normalized series of independent variables, the at least one composite variable, and the extracted data in the first format, wherein at least one of the models comprises multivariate adaptive regression splines;” This combination of functions/features would not have been obvious to a PHOSITA in view of the prior art.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Patrick Kim whose telephone number is (571)272-8619. The examiner can normally be reached Monday - Friday, 9AM - 5PM EST.
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/Patrick Kim/Examiner, Art Unit 3629
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