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 .
In view of the amendment filed on 01/20/26, the examiner has withdrawn the previous art rejections.
Claim Rejections - 35 USC §101
1. 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.
2. Claims 1-21 are rejected under 35 U.S.C. 101 because the claimed invention is directed to
non-statutory subject matter.
Subject Matter Eligibility Standard
3. The examiner contends that, under the judicial exceptions enumerated in the MPEP $
2106, to determine the patent-eligibility of an application, a two- part analysis has to
be conducted.
Part 1: it must be determined whether the claim is directed to one of the four statutory categories
of invention, i.e., process, machine, manufacture, or composition of matter. See MPEP 2106.03.
Part 2A: Prong 1: (1) Determine if the claims are directed to an abstract idea or one of the
judicial exceptions. Examples of abstract ideas referenced in Alice Corp. include:
1. Certain method of organizing human activity such as Fundamental Economic Practices,
Commercial and Legal Interactions, or Managing Personal Behavior or Relationships or
Interactions Between People.
2. A mental process.
3. Mathematical relationships/formulas.
Part 2A: Prong 2: determine if the claim as a whole integrates the judicial exception into a
practical application.
Part 2B: determine if the claim provides an inventive concept.
Analysis
4. Under Step 1 of the analysis, it is found that the claim indeed recites a series of steps and
therefore, is a process - one of the statutory categories.
Under Step 2A (Prong 1), using claim 7 as the representative claim, it is determined that apart
from generic hardware and extra-solution activity discussed in Step 2A, Prong 2 below, the claim
as a whole recites a method of organizing human activity and a mental process. For instance, the
claim language "identifying at least one asset over which an entity has control; determining, based at least in part on one or more algorithms, a risk of one or more portions of the at least one asset, the risk of at least one of the one or more portions being below a specified risk threshold; determining at least one of the one or more portions having a risk determined to be below a specified risk threshold; aggregating the one or more portions with the risk determined to be below the specified risk threshold into a secure asset of an asset-based investment product; allowing one or more interests to be obtained with respect to the asset-based investment product" is a fundamental economic practice. Fundamental economic practices fall into the category of certain methods of organizing human activity. Similarly, the above steps can be performed in the human mind. Steps that can be performed in the human mind fall into the category of a mental process. Thus, the claim recites a judicial exception, i.e., an abstract idea.
Under Step 2A (Prong 2), the examiner contends that the claim recites a combination of
additional elements including "causing the at least one portion with the risk determined to be below the specified risk threshold to be recorded to the one or more distributed ledgers; causing one or more registered shares to be recorded in the one or more distributed ledgers; causing information determined for the at least one asset to be recorded to one or more distributed ledgers; and causing one or more entries to be recorded to the one or more distributed ledgers to identify the one or more interests in the asset-based investment product." These additional elements, considered in the context of claim 7 as a whole, do not integrate the abstract idea into a practical application because they simply recite the steps of storing data using a generic computer system. In other words, these additional limitations are recited functionally without
technical or technological details on how, i.e., by what algorithm or on what basis/method, the distributed ledgers are caused to perform these steps. Distributed ledgers, with their already available basic functions, are simply being applied to the abstract idea and being used as tools in executing the claimed process. That is, they are merely ledgers of transactions being used to store transaction data. Further, the additional limitations can be reasonably characterized as reciting a patent-ineligible insignificant extra-solution activities. For instance, the steps of “causing the at least one portion with the risk determined to be below the specified risk threshold to be recorded to the one or more distributed ledgers; causing one or more registered shares to be recorded in the one or more distributed ledgers; causing information determined for the at least one asset to be recorded to one or more distributed ledgers; and causing one or more entries to be recorded to the one or more distributed ledgers to identify the one or more interests in the asset-based investment product," when considered as a whole, are mere data gathering steps considered to be insignificant extra-solution activities. See In re Bilski, 545 F.3d at 963 (characterizing data gathering steps as insignificant extra-solution activity). Lastly, the limitation “wherein the one or more registered shares are created upon withdrawal of the one or more interests” are recited to merely narrow the scope of the abstract idea. In all, these recited steps merely describe an intangible property of the data that does not affect the examiner's characterization of the additional limitations as insignificant extra-solution activities. Thus, it is determined that claim 7 is not directed to a specific asserted improvement in computer technology or otherwise integrated into a practical application and thus is directed to a judicial exception.
Under Step 2B, it is determined that, taken alone, the additional elements in the claim amounts to
no more than mere instructions to apply the exception using a generic computer processor- - that
is, mere instructions to apply a generic computer processor to the abstract idea. The only
hardware or additional elements beyond the abstract idea of claim 7 are the generically recited
"distributed ledgers." The specification does not point to sufficient evidence that these
components are anything other than well-understood, routine, and conventional hardware
components or systems being used in their ordinary manner. Thus, applying an exception using a
generic computer processor cannot integrate a judicial exception into a practical application or
provide an inventive concept. And looking at the limitations as an ordered combination of
elements add nothing that is not already present when looking at the elements taken individually.
There is no indication that the combination of elements improves the functioning of a computer
or improves any other technology. Accordingly, the examiner concludes that there are no
meaningful limitations in the claim that transform the judicial exception into a patent eligible
application such that the claim amounts to significantly more than the judicial exception itself.
The examiner contends that the 'novelty' of any element or steps in a process, or even of the
process itself, is of no relevance in determining whether the subject matter of a claim falls within
the § 101 categories of possibly patentable subject matter." Diamond V. Diehr, 450 U.S. 175,
188- 89 (1981)." A novel and nonobvious claim directed to a purely abstract idea is,
nonetheless, patent ineligible. See Mayo, 566 U.S. at 90." Specifically, an improvement to an
abstract idea cannot be a basis for determining that the claim recites significantly more than an
abstract idea. Furthermore, relying on a "processor" to "perform routine tasks more quickly or
more accurately is insufficient to render a claim patent eligible." OJP Techs., Inc. V.
Amazon.com, Inc., 7788 F.3d 1359, 1363 (Fed. Cir. 2015). Accordingly, the examiner concludes
that the claim does not recite additional elements that amount to significantly more than the
judicial exception within the meaning of the 2019 Guidance. Note: The analysis above applies to
all statutory categories of invention. As such, the independent claims otherwise styled as a
computer-readable medium encoded to perform specific tasks, machine or manufacture, for
example, would be subject to the same analysis. Furthermore, the limitations in the dependent
claims are thus subject to the same analysis as in claim 7 and are rejected using the same
rationale as in claim 7 above. More specifically, dependent claims 2, 6, 8, 15, and 18-19 do not
recite additional elements but merely further narrow the scope of the abstract idea. However,
dependent claims 3-5, 9-12, and 16-17 recite additional elements, but these additional elements
comprise the analyses of data, which is nothing but the automation of mental tasks. See Benson,
Bancorp and Cyberphone. Also see Electric Power, 830 F.3d at 1354 ("[W]e have treated
analyzing information by steps people go through in their minds, or by mathematical algorithms,
without more, as essentially mental processes"). Lastly, dependent claim 14 recites
additional elements, but they are mere data gathering steps considered to be insignificant extra-
solution activities. See In re Bilski, 545 F.3d at 963 (characterizing data gathering steps as
insignificant extra-solution activity).
Response to Arguments
Applicant's arguments filed on 01/20/2026 have been fully considered but they are not persuasive.
Regarding the argument that the final office action violates Berkheimer, the examiner did not rely upon 2106.05(d) considerations. Instead the examiner stated the additional elements of the claim were mere instructions to implement an abstract idea or other exception on a computer. As explained by the Supreme Court, in order to make a claim directed to a judicial exception patent-eligible, the additional element or combination of elements must do "‘more than simply stat[e] the [judicial exception] while adding the words ‘apply it’". Alice Corp. v. CLS Bank, 573 U.S. 208, 221, 110 USPQ2d 1976, 1982-83 (2014) (quoting Mayo Collaborative Servs. V. Prometheus Labs., Inc., 566 U.S. 66, 72, 101 USPQ2d 1961, 1965). Thus, for example, claims that amount to nothing more than an instruction to apply the abstract idea using a generic computer do not render an abstract idea eligible. Alice Corp., 573 U.S. at 223, 110 USPQ2d at 1983. See also 573 U.S. at 224, 110 USPQ2d at 1984 (warning against a § 101 analysis that turns on "the draftsman’s art").
In response to applicant’s argument that claim 1 is patent eligible under prog 1 of Step 2A, the examiner disagrees. The examiner contends that the claim as a whole recites a method of organizing human activity and a mental process. For instance, the claim language "identifying at least one asset over which an entity has control; determining, based at least in part on one or more algorithms, a risk of one or more portions of the at least one asset, the risk of at least one of the one or more portions being below a specified risk threshold; determining at least one of the one or more portions having a risk determined to be below a specified risk threshold; aggregating the one or more portions with the risk determined to be below the specified risk threshold into a secure asset of an asset-based investment product; allowing one or more interests to be obtained with respect to the asset-based investment product" is a fundamental economic practice. Fundamental economic practices fall into the category of certain methods of organizing human activity. Similarly, the above steps can be performed in the human mind. Steps that can be performed in the human mind fall into the category of a mental process. Thus, the claim recites a judicial exception, i.e., an abstract idea.
In response to applicant’s argument that the claim is also patent eligible under the practical application basis, the examiner disagrees. The examiner contends that the claim recites a combination of additional elements including "causing the at least one portion with the risk determined to be below the specified risk threshold to be recorded to the one or more distributed ledgers; causing one or more registered shares to be recorded in the one or more distributed ledgers; causing information determined for the at least one asset to be recorded to one or more distributed ledgers; and causing one or more entries to be recorded to the one or more distributed ledgers to identify the one or more interests in the asset-based investment product." These additional elements, considered in the context of claim 7 as a whole, do not integrate the abstract idea into a practical application because they simply recite the steps of storing data using a generic computer system. In other words, these additional limitations are recited functionally without technical or technological details on how, i.e., by what algorithm or on what basis/method, the distributed ledgers are caused to perform these steps. Distributed ledgers, with their already available basic functions, are simply being applied to the abstract idea and being used as tools in executing the claimed process. That is, they are merely ledgers of transactions being used to store transaction data. Further, the additional limitations can be reasonably characterized as reciting a patent-ineligible insignificant extra-solution activities. For instance, the steps of “causing the at least one portion with the risk determined to be below the specified risk threshold to be recorded to the one or more distributed ledgers; causing one or more registered shares to be recorded in the one or more distributed ledgers; causing information determined for the at least one asset to be recorded to one or more distributed ledgers; and causing one or more entries to be recorded to the one or more distributed ledgers to identify the one or more interests in the asset-based investment product," when considered as a whole, are mere data gathering steps considered to be insignificant extra-solution activities. See In re Bilski, 545 F.3d at 963 (characterizing data gathering steps as insignificant extra-solution activity). Lastly, the limitation “wherein the one or more registered shares are created upon withdrawal of the one or more interests” are recited to merely narrow the scope of the abstract idea. In all, these recited steps merely describe an intangible property of the data that does not affect the examiner's characterization of the additional limitations as insignificant extra-solution activities. Thus, it is determined that claim 7 is not directed to a specific asserted improvement in computer technology or otherwise integrated into a practical application and thus is directed to a judicial exception.
Applicant's citation of Bascom is unpersuasive, as the claims at issue in Bascom are readily distinguishable over the instant claims. In Bascom the claims were held to be patent-eligible because the claimed solution focused upon the specific asserted improvement in filtering technology by providing individually customizable filtering at a remote ISP server by taking advantage of the technical capability of certain communication networks. The invention in Bascom was a technological solution to a technological problem, using an improved filtering technology rather than using conventional filtering technology. In contrast, again, the instant claims provide a generically computer-implemented solution to a business-related or economic problem, and are incomparable to the claims at issue in Bascom.
Conclusion
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 OJO O OYEBISI whose telephone number is (571)272-8298. The examiner can normally be reached on Monday-Friday, 9am-7pm. 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, Christine Behncke can be reached at 571-272-8103. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300. Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see https://ppair-my.uspto.gov/pair/PrivatePair. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative or access to the automated information system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/OJO O OYEBISI/Primary Examiner, Art Unit 3695
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