DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Claim Objections
Claims 1, 3-4, 7 are objected to because of the following informalities:
In Claim 1, line 2, the period in the line should be deleted; in line 3, the colon was probably meant to be a semi-colon; and in line 9, "data" was probably meant to be the data.
In Claim 3, line 1, "claim 1" should be claim 1.
In Claim 4, line 7, the colon was probably meant to be a semi-colon.
Claim 7, should probably be numbered as 6 (which is blank).
Appropriate correction is required.
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 1-5, 7 are rejected on the ground of nonstatutory double patenting as being unpatentable over Claims 1, 1, 2, 3, 4, 3 respectively of U.S. Patent No. 10,380,266. Although the claims at issue are not identical, they are not patentably distinct from each other because the respective patent claims anticipate the respective current application claims as mapped above.
Claims 1-5, 7 are rejected on the ground of nonstatutory double patenting as being unpatentable over Claims 1-3, 5-7 respectively of U.S. Patent No. 11,455,274. Although the claims at issue are not identical, they are not patentably distinct from each other because the respective patent claims anticipate the respective current application claims as mapped above.
Claims 1-5, 7 are rejected on the ground of nonstatutory double patenting as being unpatentable over Claims 7, 12, 10, 1, 3, 2 respectively of U.S. Patent No. 12,013,812. Although the claims at issue are not identical, they are not patentably distinct from each other because the respective patent claims anticipate the respective current application claims as mapped above.
Claim Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Such claim limitation(s) are: rule definition module configured to define a plurality of sets of rules, storage module configured to store the each set of rules, and function-calling module configured to call the user defined function, in Claim 4.
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
If applicant does not intend to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 2, 4-5, 7 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim limitation "the rule definition module is configured to define a plurality of set of rules", "the storage module is configured to store the each set of rules", and "the function-calling module is configured to call the user defined function" of Claim 4, invokes 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. However, the written description fails to disclose the corresponding structure, material, or acts for performing the entire claimed function and to clearly link the structure, material, or acts to the function. The specification does not either explicitly or inherently disclose any particular structure for adequately performing these claimed functions such that one of ordinary skill in the art would understand which/what structure would perform these claimed functions. Therefore, the claim is indefinite and is rejected under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph.
Applicant may:
(a) Amend the claim so that the claim limitation will no longer be interpreted as a limitation under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph;
(b) Amend the written description of the specification such that it expressly recites what structure, material, or acts perform the entire claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(c) Amend the written description of the specification such that it clearly links the structure, material, or acts disclosed therein to the function recited in the claim, without introducing any new matter (35 U.S.C. 132(a)).
If applicant is of the opinion that the written description of the specification already implicitly or inherently discloses the corresponding structure, material, or acts and clearly links them to the function so that one of ordinary skill in the art would recognize what structure, material, or acts perform the claimed function, applicant should clarify the record by either:
(a) Amending the written description of the specification such that it expressly recites the corresponding structure, material, or acts for performing the claimed function and clearly links or associates the structure, material, or acts to the claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(b) Stating on the record what the corresponding structure, material, or acts, which are implicitly or inherently set forth in the written description of the specification, perform the claimed function. For more information, see 37 CFR 1.75(d) and MPEP §§ 608.01(o) and 2181.
Additionally, Claim 4 recites the limitation "call the user defined function" at the end of the claim. It is unclear what the call is for and also amounts to as being incomplete for omitting essential elements, such omission amounting to a gap between the elements (is this a call to analyze the data in the database?). See MPEP § 2172.01. Dependent Claims 5 and 7 are also subsequently rejected.
Additionally, similar Claims 2 and 7 recites the limitations "the user-defined function is configured to operate on one or more rows in the database" and "applies the called user defined function on one or more rows in the database", respectively. It is unclear what the "operate" and "applies" would entail and also amounts to as being incomplete for omitting essential elements, such omission amounting to a gap between the elements. See MPEP § 2172.01.
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claim 4 is rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention. As described above, the disclosure does not provide adequate structure to perform the three claimed functions as delineated above. The specification does not demonstrate that the applicant made an invention that achieves the claimed functions because the invention is not described with sufficient detail such that one of ordinary skill in the art can reasonably conclude that the inventor had possession of the claimed invention.
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 1-5, 7 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more.
Step 1:
All claims are directed towards either a method or a system and thus satisfies Step 1 as falling into one of the statutory categories.
Step 2A, Prong One:
Independent Claim 1 recites (the same analysis applies to similar independent Claim 4):
defining a plurality of set of rules. wherein each set of rules corresponds to a predictive model:
this limitation, under its broadest reasonable interpretation, covers concepts that can be performed in the human mind and therefore would fall under the “Mental Processes” groupings of abstract ideas. That is a person can define rules for associated models using observation, evaluation and judgement.
and calling the user-defined function, wherein the user defined function is called to analyze data in the database. (Emphasis added).
this limitation, under its broadest reasonable interpretation, also covers concepts that can be performed in the human mind and therefore would fall under the “Mental Processes” groupings of abstract ideas. That is a person can analyze data using evaluation.
Step 2A, Prong Two:
Claim 1 recites the additional element(s) of (the same analysis applies to similar independent Claim 4):
storing the each set of rules corresponding to the predictive model in a library, wherein the each set of rules corresponding to the predictive model is stored as a user-defined function in the library;
this limitation is considered as adding insignificant extra-solution activity (storing data) to the judicial exception - see MPEP 2106.05(g). Accordingly, this additional element does not integrate the abstract idea into a practical application because it does not impose any meaningful limits on practicing the abstract idea. The claims are therefore directed to an abstract idea.
Step 2B:
The claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception. As pointed out above, the additional element(s) amounts to simply appending well-understood, routine, conventional activities previously known to the industry, specified at a high level of generality, to the judicial exception - see MPEP 2106.05(d). The claims are therefore not patent eligible.
Dependent Claims 2 and 7 are also considered as adding insignificant extra-solution activity (under Step 2A, Prong 2) to the judicial exception - see MPEP 2106.05(g), and subsequently as simply appending well-understood, routine, conventional activities (under Step 2B, data manipulations/operations) previously known to the industry, specified at a high level of generality, to the judicial exception - see MPEP 2106.05(d).
Dependent Claims 3 and 5 are also considered as adding insignificant extra-solution activity (under Step 2A, Prong 2) to the judicial exception - see MPEP 2106.05(g), and subsequently as simply appending well-understood, routine, conventional activities (under Step 2B, call to user defined functions for data processing) previously known to the industry, specified at a high level of generality, to the judicial exception - see MPEP 2106.05(d).
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 (i.e., changing from AIA to pre-AIA ) 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.
Claims 1-5, 7 are rejected under 35 U.S.C. 103 as being unpatentable over Simoudis, US 5,692,107, in view of George, US 2013/0238548 A1.
Regarding Claim 1, Simoudis teaches:
A method for analyzing data in a database, the method comprising (C4, L35-44: analyzing data in a database using a data analysis module):
defining a plurality of set of rules. wherein each set of rules corresponds to a predictive model (C2, L34-35: A predictive model, based on a set of generated rules):
storing the each set of rules corresponding to the predictive model in a library (C2, L26-27; C5, L40-41: the predictive models are stored in a repository).
Simoudis may not have explicitly taught:
wherein the each set of rules corresponding to the predictive model is stored as a user-defined function in the library;
and calling the user-defined function, wherein the user defined function is called to analyze data in the database. (Emphasis added).
However, George shows (Abstract; paragraphs 8, 10: wherein user defined functions and calling of user defined functions in an analytical data processing framework is discussed and used).
It would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to use the teachings of George with that of Simoudis for having the each set of rules corresponding to the predictive model stored as a user-defined function in the library; and calling the user-defined function, wherein the user defined function is called to analyze data in the database.
The ordinary artisan would have been motivated to modify Simoudis in the manner set forth above for the purposes of integrating user defined functions into an analytical data processing framework such that the user defined function operates on a partition set to produce a function output [George: Abstract].
Regarding Claim 2, George further teaches:
The method as claimed in claim 1 wherein the user-defined function is configured to operate on one or more rows in the database (paragraphs 15, 24-27: wherein as described, processing can be done on one or more rows of the database).
Regarding Claim 3, George further teaches:
The method as claimed in claim1 wherein the user-defined function is called via a standard sequel language (paragraphs 2, 10, 41-42: wherein as described, a call to a user defined function is identified in a structured query language. Structured query language, or SQL, being the same as the standard sequel language).
Claims 4-5, 7 are similar to Claims 1, 3 and 2 respectively and are rejected under the same rationale as stated above for those claims.
Examiner's Note:
The Examiner cites particular pages, sections, columns, line numbers, and/or paragraphs in the references as applied to the claims above for the convenience of the applicant. Although the specified citations are representative of the teachings in the art and are applied to the specific limitations within the individual claim, other passages and figures may apply as well. It is respectfully requested that, in preparing responses, the applicant fully consider the references in its entirety as potentially teaching all or part of the claimed invention, as well as the context of the passage as taught by the prior art or disclosed by the examiner and the additional related prior arts made of record that are considered pertinent to applicant's disclosure to further show the general state of the art. The Examiner's interpretations in parenthesis are provided with the cited references to assist the applicants to better understand how the examiner interprets the prior art to read on the claims. Such comments are entirely consistent with the intent and spirit of compact prosecution.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. See PTO-892 for the relevant and pertinent prior art relating to this application where for example O'Flaherty, US 6954758 B1, teaches dynamically building predictive models within a computer implemented business analysis environment.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DAVE MISIR whose telephone number is (571)272-5243. The examiner can normally be reached M-R 8-5 pm, F some hours.
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, Abdullah Al Kawsar can be reached at 5712703169. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/DAVE MISIR/Primary Examiner, Art Unit 2127
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