DETAILED ACTION
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 § 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.
2. Claims 1-20 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.
Claims 1, 8 and 15 recite:
“computing…wherein the first part is a term indicating a distance close to a real trade value of the bond at the time when the trade was executed…penalizes corresponding data source for predicting a price for the bond that is far from the real trade value of the bond at the time when the trade is executed.”
The limitations of “a distance close to a real value of the bond” and “a price for the bond that is far from the real trade value” create ambiguity in the claims. The Specification does not clearly define “a distance close to a real trade value” and “a price for a bond that is far from the real trade value” rendering the claim indefinite. One skilled in the art would not be able to determine the specific values for “close to a value” and “far from a value” based on the disclosure. - See MPEP 2173.05(c).
The remaining limitations are rejected due to the dependency to claims 1, 8, and 15.
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.
3. Claims 1-20 are rejected under 35 U.S.C. 101 because the claimed invention recites an abstract idea without significantly more.
Using the limitations in claim 1 to illustrate, the claim recite(s) the limitations of: implementing a pricing data sources combining module (PDSCM), wherein PDSCM includes a generating module, a receiving module, a computing module, and an updating module wherein each module being called via a corresponding application programming interface, and wherein the PDSCM is configured to execute interactions among the modules to combine multiple pricing data sources for computing the fair market value of the bond …, generating, by calling the generating module, a table where all weight vectors associated with the pricing prediction value of the bond at the given time received from said plurality of data sources are included therein; receiving, by calling the receiving module, weight vectors as input corresponding to the bond from the table; computing, by calling the computing module, a loss function for each of said plurality of data sources individually, wherein each loss function includes a first part and a second part, wherein the first part is a term indicating a distance close to a real trade value of the bond at the time when the trade was executed, and the second part indicates a profit and loss proxy that penalizes corresponding data source for predicting a price for the bond that is far from the real trade value of the bond at the time when the trade was executed; computing, by calling the computing module, a fair market value of the bond based on the loss function; and dynamically updating, by calling the updating module, the weight vectors over time by penalizing pricing data sources that are not performing well using a multiplicative weight update based on a loss function….
The limitations, as drafted, is a process that, under its broadest reasonable interpretation, covers certain methods of organizing human activity, in particular, fundamental economic practices but for the recitation of generic computer components.
The claimed invention allows for computing a fair market value of a bond which is a certain method of organizing human activity (fundamental economic practices) . The mere nominal recitation of a pricing data sources combining device (PDSCD), a cloud based network environment, at least one processor, and a communications interface do not take the claim out of the methods of organizing human activity grouping. Thus, under Eligibility Step 2A, prong one, (MPEP §2106.04(a)), the claims recite an abstract idea.
Under Eligibility Step 2A, prong two, (MPEP §2106.04(d)), this judicial exception is not integrated into a practical application. The claim recites the additional elements:
establishing a communication link between a plurality of data sources and at least one processor via a communication interface, wherein each of said plurality of data sources provides a pricing prediction value of a bond at a given time, and
Establishing a communication link wherein each of said plurality of data sources provide a pricing prediction value step/function are recited at a high level of generality (i.e., as a general means of receiving and transmitting data over a network). Receiving and transmitting data over a network are forms of insignificant extra-solution activity –see MPEP 2106.05(g).
The pricing data sources combining device (PDSCD), a cloud based network environment, at least one processor, and a communications interface are recited at a high level of generality and merely automates the generating and computing steps. Each of the additional limitations is no more than mere instructions to apply the exception using generic computer components (the device, network environment, processor and communication interface). The combination of these additional elements is no more than mere instructions to apply the exception using generic computer components.
Accordingly, even in combination, these additional elements do not integrate the abstract idea into a practical application because they do not impose meaningful limits on practicing the abstract idea.
Similar arguments can be extended to independent claims 8 and 15 and hence claims 8 and 15 are rejected on similar grounds as claim 1. In addition, claim 8 recites system comprising a processor and a memory operatively connected to the processor via a communication interface, the memory storing computer readable instructions, when executed, causes the processor to perform the claimed functions and claim 15 recites a non-transitory computer-readable medium configured to store instructions that when executed, cause the processor to perform the claimed steps that amount to generic computer implementation.
The claims are directed to an abstract idea.
Under Eligibility Step 2B, (MPEP §2106.05), the claim(s) does/do not include additional elements that are sufficient to amount to significantly more than the judicial exception. As discussed above with respect to integration of the abstract idea into a practical application, the additional elements in the claims amount to no more than mere instructions to apply the exception using generic computer components. Mere instructions to apply an exception using generic computer components cannot provide an inventive concept.
Furthermore, under Step 2B, the additional elements found to be insignificant extra-solution activities under step 2A prong two, are re-evaluated to determine if the elements are more than what is well-understood, routine and conventional activity in the field. Here, the Specification does not provide any indication that the processor, communication interface, and memory storing instructions which when executed by the processor perform the claimed steps are anything other than generic computer components and the Symantec, TLI Communications, OIP Techs, and buySafe court decisions cited in MPEP 2106.05[d][ii] indicate that the mere receiving and transmitting data over a network are well-understood, routine, and conventional functions when they are claimed in a merely generic manner (as they are here). Accordingly, a conclusion that the establishing communications link between data sources via a communication interface limitation is a well understood, routine, and conventional activity is supported under Berkheimer Option 2. For these reasons, there is no inventive concept. The claims are not patent eligible.
The dependent claims have been given the full two part analysis including analyzing the additional limitations both individually and in combination. The dependent claim(s) when analyzed both individually and in combination are also held to be patent ineligible under 35 U.S.C. 101 because for the same reasoning as above and the additional recited limitation(s) fail(s) to establish that the claim(s) is/are not directed to an abstract idea. Dependent claims 2-7, 9-14, 16-20 simply help to define the abstract idea. The additional limitations of the dependent claim(s) when considered individually and as an ordered combination do not amount to significantly more than the abstract idea.
Viewing the claim limitations as an ordered combination does not add anything further than looking at the claim limitations individually. When viewed either individually, or as an ordered combination, the additional limitations do not amount to a claim as a whole that is significantly more than the abstract idea. Accordingly, claim(s) 1-20 is/are ineligible.
Response to Arguments
4. In response to the amendments of claims 1, 8, and 15, the Examiner withdraws the claim objections.
The remaining arguments have been fully considered but they are not persuasive.
On page 13 of the Remarks, Applicant contends that the claims are not directed to an abstract idea and does not fall into the certain method of organizing human activity (fundamental economic practice) grouping of abstract ideas. The Examiner respectfully disagrees.
The Patent Office has issued guidance about this framework. -See MPEP§ 2106 (9th ed. Rev. 10.2019, rev. June 2020), in particular, Sections 2103 through 2106.07(c). As indicated in the MPEP § 2106, to decide whether a claim is directed to an abstract idea, we evaluate whether the claim (1) recites one of the abstract ideas listed in the Revised Guidance (“Prong One”) and (2) fails to integrate the recited abstract idea into a practical application (“Prong Two”).
Beginning with Prong One, step 2A of the eligibility analysis, we must determine whether the claims at issue are directed to one of those patent-ineligible concepts. One of the subject matter groupings identified as an abstract idea in the Guidance is “[certain methods of organizing human activity—fundamental economic principles or practices (including . . . mitigating risk, insurance); commercial. . . interactions (including agreements in the form of contracts; . . . sales activities or behaviors; business relations); managing personal behavior or relationships or interactions between people (including . . . following rules or instructions)].” See MPEP 2106.04(a).
Here, apart from the recited systems, i.e., a device (PDSCD), a cloud based network environment, at least one processor, and a communications interface claim 1 recites abstract ideas in the category of “methods of organizing human activity.”
In the 101 analysis in the rejection above, the Examiner identifies and considers each of the underlying steps for the claims as a basis for describing and explaining the recited abstract idea. For example, the Examiner identifies the underlying steps of claim 1 —i.e., the “implementing,” “executing interactions,” “establishing,” “generating,” “receiving,” “computing,” and “dynamically updating,”—and explains that they describe the concept of computing a fair market value of a bond, i.e., a fundamental economic principle or practice. The Examiner' s approach here is consistent with USPTO guidance.
Applicant argues that the limitations define a specific technological implementation and data processing technique including claimed operations of iterative, time dependent weight updates using a convex loss function and a multiplicative update rule, not a mental process or a method of organizing human activity. The argument is not convincing because applying mathematical formulas or concepts to a data processing technique using generic computer components does not result in an improvement in technology or technical field, rather the claimed invention amounts to an improvement in a business process.
On page 14 of the Remarks, Applicant argues that the claims recite elements or a combination of elements which “integrate the exception into a practical application of the exception” because the claims recite “concrete data structures and stateful operations, not mere data gathering and transmission.” Applicant further argues that the claims recite a specific algorithmic improvement including a two-part loss function and directional penalty and a multiplicative weight update rule. The arguments are not convincing.
Under the 2019 PEG, Step 2A, prong two, integration into a practical application requires an additional element(s) or a combination of additional elements in the claim to apply, rely on, or use the judicial exception in a manner that imposes a meaningful limit on the judicial exception, such that the claim is more than a drafting effort designed to monopolize the exception. Limitations that are not indicative of integration into a practical application are those that are mere instructions to implement an abstract idea on a computer, or merely uses a computer as a tool to perform an abstract idea.-see MPEP 2106.05(f).
Furthermore, in determining whether a claim integrates a judicial exception into a practical application, a determination is made of whether the claimed invention pertains to an improvement in the functioning of the computer itself or any other technology or technical field (i.e., a technological solution to a technological problem). Here, the claims recite generic computer components, i.e., a device (PDSCD), a cloud based network environment, at least one processor, and a communications interface. The device (PDSCD), a cloud based network environment, at least one processor, and a communications interface are recited at a high level of generality and are recited as performing generic computer functions customarily used in computer applications.
The focus of the claims is not on an improvement to the identified additional elements as tools, but on the abstract ideas that use the additional elements as tools. The use of generic computer components to carry out the abstract idea does not impose any meaningful limit on the computer implementation of the abstract idea.
On page 15 of the Remarks, Applicant contends that the claims explicitly require: "dynamically updating... by penalizing pricing data sources that are not performing well... using a multiplicative weight update based on a loss function that is convex and robust to outliers, thereby improving accuracy..." and constitutes a technical improvement to real-time bond pricing system specifically improving accuracy and robustness.
This argument is not persuasive because the argued improvement in accuracy and robustness comes from the capabilities of a general-purpose computer that includes a processor, rather than the claimed method itself. See Bancorp Servs., L.L.C. v. Sun Life Assurance Co. of Can. (U.S.), 687 F.3d 1266, 1278 (Fed. Cir. 2012)(“[T]he fact that the required calculations could be performed more efficiently via a computer does not materially alter the patent eligibility of the claimed subject matter.”).
Regarding the argument that the claims of the instant invention are similar to the features recited in the claims at issue in Enfish, the claims in Enfish were not simply adding conventional computer components to well-known business practices; mathematical formulas performed on any general purpose computer; or generalized steps performed on a computer using conventional computer activity. The patent claims here are not directed to a specific implementation to a solution to a problem in the software arts of improving the way a computer stores and retrieves data in memory through use of a specific data structure. In Enfish, the claims at issue focused not on asserted advances in uses to which existing computer capabilities could be put, but on a specific improvement—a particular database technique—in how computer could carry out one of their basic functions of storage and retrieval of data. Enfish, 822 F.3d at 1335-36. The present case is different: 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.
Applicants argue that the claims at issue are analogous to eligible subject matter in McRO. The argument is not persuasive.
In McRO, the claimed process used a combined order of specific rules that rendered information in a specific format that was applied to create a sequence of synchronized, animated characters. McRO, 837 F.3d at 1315. Notably, the recited process automatically animated characters using particular information and techniques—an improvement over manual three-dimensional animation techniques that was not directed to an abstract idea. Id, at 1316.
Unlike in McRO, the recited method and system for computing a fair market value of a bond is not a rule-based improvement of a technological process. The claims here are not directed to a specific implementation to a solution to a problem in the software arts of improving computer animation through the use of specific rules to set morph weights and transition parameters between phonemes. The McRO court indicated that it was the incorporation of the particular claimed rules in computer animation that “improved [the] existing technological process.” The claims at issue in McRO described a specific way (use of particular rules to set morph weights and transitions through phonemes) to solve the problem of producing accurate and realistic lip synchronization and facial expressions in animated characters.
In contrast, Applicants’ claims address computing a fair market value of a bond. The claims in McRO were directed to an improvement in the operation of the computer at a task, rather than applying a computer to perform generic data manipulation steps, as in the claims of the instant application. See id, at 1314.
Applicant alleges that under Step 2B, the claims recite significantly more than the judicial exception because the claims introduce a specific adaptive control mechanism for weighting distributed data sources which fundamentally changes how pricing is computed and therefore is not a well-understood and conventional activity. The argument is not convincing because the claimed invention uses generic computer components in their ordinary capacity. The claimed invention amounts to mere instructions to implement an abstract idea on a computer, or merely uses a computer as a tool to perform an abstract idea.
Mere instructions to apply an exception using generic computer components cannot provide an inventive concept.
The claims are not patent eligible under 35 USC §101.
Conclusion
5. THIS ACTION IS MADE FINAL. 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 ELDA MILEF whose telephone number is (571)272-8124. The examiner can normally be reached Monday-Thursday 6:30am-3:30pm; Friday 7am-12pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Bennett Sigmond can be reached at (303)297-4411. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ELDA G MILEF/Primary Examiner, Art Unit 3694
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