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 .
Response to Amendment
Applicant’s Response, filed 11/28/2025, amended claims 1, 2, 6-9, 13-16 & 20. Claims 1-20 are pending.
Response to Arguments
Applicant’s claim amendments and supporting arguments with respect to the § 103 rejection have been fully considered and are persuasive. The § 103 rejection of claims 1-20 has been withdrawn.
Applicant's arguments regarding the § 101 rejection have been fully considered but they are not persuasive. Specifically, Applicant argues at page 11 that “the existing output data file can be supplied in response to the new data transformation request, which is a technical improvement over conventional database processing methods.” The examiner respectfully disagrees. After the match comparison, an existing data store is used to respond to a query instead of recalculating the transformation and outputting those results. This is a redirection of output to leverage already calculated data, which is not a technical improvement and is just a matter of outputting established data once the analysis has been performed.
Applicant’s request that the three double patenting rejections be held in abeyance is acknowledged. The rejections are restated below in their original form pending further prosecution.
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.
First of Three Rejections
Claims 1, 8 & 15 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 3, 10 & 17 of U.S. Patent No. 10,037,329.
Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of the present application are broader and anticipate those of the reference patent.
Second of Three Rejections
Claims 1, 8 & 15 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 6 & 16 of U.S. Patent No. 11,169,959.
Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of the present application are broader and anticipate those of the reference patent.
Third of Three Rejections
Claims 1, 8 & 15 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 8 & 16 of U.S. Patent No. 11,681,651.
Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of the present application are broader and anticipate those of the reference patent.
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 the judicial exception of an abstract idea without significantly more.
Step 1
The claims recite a method, system, and non-transitory computer readable storage medium (claims 1, 8 & 15). These claims fall within at least one of the four categories of patentable subject matter.
Step 2A Prong One
Independent claim 1 recites “applying, by the processor, a first transformation to the source variable to generate a first output variable; wherein the lineage data includes the first transformation, the source variable, and the first output variable; determining, by the processor prior to application of any transformations to the source variable, a second transformation to be applied to the source variable to generate the second output variable; and matching, by the processor, the second transformation with first transformation using the lineage data”.
These steps perform analysis on information which has been received, which are acts of evaluating information that can be practically performed in the human mind. Thus, these steps are an abstract idea in the “mental process” grouping.
Claims 2, 5 & 6 recite limitations that are further extensions of the identified grouping. Claims 8-14 & 15-20 recite limitations which correspond to claims 1-7 & 1-6, respectively.
Step 2A Prong Two
This judicial exception is not integrated into a practical application because the combination of additional elements includes only generic computer elements which do not add a meaningful limitation to the abstract idea because they amount to simply implementing the abstract idea on a computer.
These additional elements include: processor, distributed file system, output data file, computing device, memory, and non-transitory computer readable storage medium.
Independent claim 1 recites “reading, by a processor, source data corresponding to a source variable, wherein the source data comprises a data field of a record; recording, by the processor prior to application of the first transformation to the source variable, lineage data of the first output variable; loading, by the processor, an output data file corresponding to the first output variable to a file system; receiving, by the processor, a request to generate a second output variable from the source data corresponding to the source variable; and outputting, by the processor, the output data file corresponding to the first output variable in place of generating the second output variable to eliminate duplicative transformations.”
The claim recites limitations which amount to insignificant extra-solution activity of data gathering, such as receiving input, transmitting output, and updating/modifying data.
Claims 3, 4 & 7 recite limitations that are further extensions of the identified grouping. Claims 8-14 & 15-20 recite limitations which correspond to claims 1-7 & 1-6, respectively.
Step 2B
The claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception because the recitations of generic computer components performing generic computer functions at a high level of generality do not meaningfully limit the claim. Further, the insignificant extra-solution activities of data gathering and presentation do not meaningfully limit the claim.
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 Scott A. Waldron whose telephone number is (571)272-5898. The examiner can normally be reached Monday - Friday 9:00 am - 5:00 pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Neveen Abel-Jalil can be reached at (571)270-0474. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Scott A. Waldron/Primary Examiner, Art Unit 2152 03/12/2026