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 Non-Final office action is in response to the application filed on March 12, 2024, the amendments to the claims filed on September 2, 2025, and the Request for Continued Examination filed on January 2, 2026.
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on January 2, 2026 has been entered.
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 1-9 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more.
Claims 1-9 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 device Claim 1 as the claim that represents the claimed invention for analysis and is similar to independent product Claim 8. Claim 1 recites the limitations of processing circuitry configured to store a prediction model for predicting a future investment trust value, the prediction model being generated by machine learning based on training data comprising sets of input data, which comprises population distribution data regarding a population distribution around each of a plurality of real estate properties in which a real estate investment trust invests, the population distribution data being obtained by the investment trust value prediction device, on the basis of a plurality of mobile terminal that is capable of mobile communication and carried by each of a plurality of people, and an investment trust value indicating a value of the real estate investment trust; acquire the input data; and output the future investment trust value obtained by applying the acquired input data to the stored prediction model to a display, a function of the investment trust value prediction device or another device, wherein the processing circuitry is further configured to generate and train the prediction model to predict investment trust values at a future time by performing the machine learning such that the sets of input data of the training data comprises the input data at a certain point in time and the investment trust value after a predetermined period from the certain point in time, the processing circuitry is configured to acquire the input data at one point in time, and the processing circuitry is configured to output the investment trust value after the predetermined period from the one point in time, the investment value being obtained by applying the acquired input data at the one point in time to the prediction model.
These limitations, under their broadest reasonable interpretation, cover performance of the limitation as certain methods of organizing human activity. An investment trust value prediction device 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 processing circuitry, plurality of mobile terminals, display, investment trust value prediction device/another device of Claims 1 and 8 is just applying generic computer components to the recited abstract limitations. The prediction model and machine learning in Claims 1 and 8 to be just software. Claim 8 is also abstract for similar reasons. (Step 2A-Prong 1: YES. The claims are abstract)
This judicial exception is not integrated into a practical application. In particular, the claims only recite processing circuitry, plurality of mobile terminals, display, investment trust value prediction device/another device of Claims 1 and 8 and the prediction model and machine learning in Claims 1 and 8. The computer hardware is 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. Therefore, claims 1 and 8 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 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 Applicant’s specification para. [0017, 0077-0087] about implementation using general purpose or special purpose computing devices and MPEP 2106.05(f) where applying a computer as a tool is not indicative of significantly more. Even assuming there was a technical problem, the claims, as written, fail to recite the details of how a technical solution to the technical problem was accomplished. If there was a technical problem (e.g., existing technology was incapable of performing the claimed functions) then the claims should recite the details of the technical solution (e.g., how existing technology was improved to overcome this inability). However, the claims, as written, provide no such details and merely recite that the claimed functions (i.e., the outcome) are being performed. In addition, performing the judicial exception steps using IRL merely confines the use of the abstract idea to a particular technological environment and thus fails to add an inventive concept to the claims. See MPEP 2105(h). 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. Thus claims 1 and 8 are not patent eligible. (Step 2B: NO. The claims do not provide significantly more)
Dependent claims 4-7 and 9 further define the abstract idea that is present in their respective independent claims 1 and 8 and thus correspond to Certain Methods of Organizing Human Activity and hence are abstract for the reasons presented above. Claims 4 and 9 further define the input and output data; Claims 5-7 further define the generation of the learning model. 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 claims 4-7 and 9 are directed to an abstract idea. Thus, the claims 1-9 are not patent-eligible.
Response to Arguments
Applicant's arguments filed January 2, 2026 have been fully considered but they are not persuasive.
Applicant’s arguments regarding the 35 USC 101 rejection of record (Remarks, pages 6-11), have been fully considered, however they are not persuasive. Specifically, applicant’s argue that, “in the existing technological environment for predicting an investment trust value indicating the value of a real estate investment trust, the REIT securities prices are merely used, but are not used to predict the REIT securities prices” and that amended claim 1 recites, “that the prediction model is generated by machine learning while also reciting features regarding the training process that are an improvement to the process of machine learning” (Remarks, pages 7-9). However, in the claimed invention, the computer has not been improved. The non-technological process that the software is performing may have been improved but, according to Alice, improving the process without any technological innovation is not statutory. The computer still operates according to its known and standard capabilities. Therefore, the focus of the claims is not on such an improvement in computers as tools, but on certain independently abstract ideas that use computers as tools.
Applicant's arguments try to establish eligibility through Office Examples (Remarks, pages 9-10), are not persuasive. Specifically, the Office Examples are meant to be for training purposes and do not have the force of legal precedent. Further, Example 47 is directed towards the use of specifically trained ANNs to detect anomalies and is found to integrate the abstract idea into a practical application because:
“The claimed invention reflects this improvement in the technical field of network intrusion detection. Steps (d)-(f) provide for improved network security using the information from the detection to enhance security by taking proactive measures to remediate the danger by detecting the source address associated with the potentially malicious packets. Specifically, the claim reflects the improvement in step (d), dropping potentially malicious packets in step (e), and blocking future traffic from the source address in step (f). These steps reflect the improvement 12 described in the background. Thus, the claim as a whole integrates the judicial exception into a practical application such that the claim is not directed to the judicial exception.
The current claims do not improve the functioning of a computer or technical filed of network intrusion. Instead, the instant claims perform the abstract idea of predicting an investment trust value. Therefore, Example 47 does not apply.
Applicant’s arguments regarding Ex Parte Guillame Desjardins et al. (Remarks, pages 10-11) have been considered, however they are not persuasive. Applicant's arguments fail to comply with 37 CFR 1.111(b) because they amount to a general allegation that the claims define a patentable invention without specifically pointing out how the language of the claims is not abstract.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to LINDSAY M MAGUIRE whose telephone number is (571)272-6039. The examiner can normally be reached Monday to Friday 8:30 to 5:00.
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Lindsay Maguire
2/20/26
/LINDSAY M MAGUIRE/Primary Examiner, Art Unit 3619