Notice of Pre-AIA or AIA Status
1. The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Notice to Applicant
2. The following is a Non-Final, first Office Action responsive to Application Serial Number: 18901299 filed on 09/30/2024.
Claims 1-20 are pending in the current application and have been rejected below.
Claim interpretation
3. 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.
4. Use of the word “means” (or “step for”) in a claim with functional language creates a rebuttable presumption that the claim element is to be treated in accordance with 35 U.S.C. 112(f). The presumption that 35 U.S.C. 112(f) is invoked is rebutted when the function is recited with sufficient structure, material, or acts within the claim itself to entirely perform the recited function.
Absence of the word “means” (or “step for”) in a claim creates a rebuttable presumption that the claim element is not to be treated in accordance with 35 U.S.C. 112(f). The presumption that 35 U.S.C. 112(f) is not invoked is rebutted when the claim element recites function but fails to recite sufficiently definite structure, material or acts to perform that function.
Claim elements in this application that use the word “means” (or “step for”) are presumed to invoke 35 U.S.C. 112(f) except as otherwise indicated in an Office action. Similarly, claim elements that do not use the word “means” (or “step for”) are presumed not to invoke 35 U.S.C. 112(f) except as otherwise indicated in an Office action.
5. Here, in Claim 1, Claim limitation: “an input configured to access one or more data sources” has been interpreted under 35 U.S.C. 112(f), because it uses generic placeholder "an input configured to”, coupled with functional language "access”, without reciting sufficient structure to achieve the function. Furthermore, the generic placeholder is not preceded by structural modifiers. Since the claim limitations invoke 35 U.S.C. 112(f), Claim 1 has been interpreted to cover the corresponding structure described in the specification that achieves the claimed functions, and equivalents thereof. A review of the figures and specification shows that the corresponding structure is disclosed as Input 221 at Figure 2 and paragraph 44 of the Specification, which is interpreted as a software interface.
If applicant does not intend to have the claim limitation(s) treated under 35 U.S.C. 112(f), applicant may amend the claim(s) so that it/they will clearly not invoke 35 U.S.C. 112(f), or present a sufficient showing that the claim recites/recite sufficient structure, material, or acts for performing the claimed function to preclude application of 35 U.S.C. 112(f).
For more information, see MPEP §2173 et seq. and Supplementary Examination Guidelines for Determining Compliance With 35 U.S.C. 112 and for Treatment of Related Issues in Patent Applications, 76 FR 7162, 7167 (Feb. 9, 2011). See also MPEP §2181.
Claim Rejections - 35 USC § 101
6. 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.
7. Claims 1-20 rejected under 35 U.S.C. 101 because, although they are drawn to statutory categories of system (machine) or method (process), they are also directed to a judicial exception (an abstract idea) without significantly more.
8. At Step 2A Prong One of the subject matter eligibility analysis, Claim 11 recites A method comprises the steps of: identifying .. a target entity; performing .. a peer selection for the target entity by applying an optimal set of filters comprising industry, geographic region, time period, revenue, and EBITDA margin; generating .. a target summary comprising at least a profit improvement opportunity and a working capital opportunity; generating .. the profit improvement opportunity comprising analytics by EBITDA, cost of goods sold (COGS) and selling, general and administrative expenses (SG&A); generating .. the working capital opportunity comprising analytics by Days Sales Outstanding (DSO), Days Payables Outstanding (DPO) and Days of Inventory Outstanding (DIO); generating .. an opportunity strategy for the profit improvement opportunity and the working capital opportunity; and executing .. the opportunity strategy for the target entity, which, under Broadest Reasonable Interpretation in light of the Specification, is an abstract idea of Certain Methods of Organizing Human Activity, particularly fundamental economic principles or practices (including mitigating risk); commercial or legal interactions (including agreements in the form of contracts; legal obligations; marketing or sales activities or behaviors; business relations); managing personal behavior or relationships or interactions between people, (including social activities, teaching, and following rules or instructions) because identifying a target entity, performing a peer selection for the target entity and generating a profit improvement opportunity using analysis of EBITDA, cost of goods sold (COGS) and selling, general and administrative expenses (SG&A) is a business practice for mitigating risk, involving commercial or legal interactions and interactions between people. Furthermore, it is also an abstract idea of Mental Processes - concepts performed in the human mind (including an observation, evaluation, judgment, opinion), because identifying a target entity, performing a peer selection for the target entity and generating a profit improvement opportunity based on financial analysis are processes that, under Broadest Reasonable Interpretation, can be performed in the mind since they involve evaluation, judgement or observation. Claim 1 recites a similar abstract idea.
At Step 2A Prong Two of the analysis, the judicial exception (abstract idea) is not integrated into a practical application because independent Claims 1 and 11, including additional elements such as an interactive user interface that communicates with one or more user devices via a communication network, a computer processor coupled to the input, the interactive user interface and the one or more data sources, via a computer processor, individually, and in combination, when viewed as a whole, are not an improvement to a computer or a technology, the claims do not apply the judicial exception with a particular machine, and the claims do not effect a transformation or reduction of a particular article to a different state or thing. Generally linking the use of the judicial exception to a particular technological environment or field of use, as in the instant claims, is not indicative of integration into a practical application - see MPEP 2106.05(h); adding the words “apply it” (or an equivalent) with the judicial exception, or mere instructions to implement an abstract idea on a computer, or merely using a computer as a tool to perform an abstract idea, as in the instant claims, is also not indicative of integration into a practical application - see MPEP 2106.05(f).
At Step 2B of the analysis, independent Claims 1 and 11 do not include any additional elements that are sufficient to amount to significantly more than the judicial exception (abstract idea), because any such additional elements such as those listed above, individually or in combination, do not recite anything that is beyond conventional and routine activity or use of computers (as evidenced by paragraphs 100-104 of the Specification in the instant Application, and court decisions such as buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1355, 112 USPQ2d 1093, 1096 (Fed. Cir. 2014) discussed at 2106.05(d) of the MPEP), do not effect a transformation or reduction of a particular article to a different state or thing, nor do they apply the judicial exception in some other meaningful way beyond generally linking the use of the judicial exception to a particular field of use or technological environment. Adding the words “apply it” (or an equivalent) with the judicial exception, or mere instructions to implement an abstract idea on a computer, or merely using a computer as a tool to perform an abstract idea (see MPEP 2106.05(f)), or generally linking the use of the judicial exception to a particular technological environment or field of use (see MPEP 2106.05(h)), as in the instant independent Claims, is not indicative of an inventive concept ("significantly more").
At Step 2A Prong One, dependent Claims 2-10 and 12-20 incorporate (and therefore recite) the abstract idea noted in the independent Claims from which they depend, and further recite extensions of that abstract idea.
At Step 2A Prong Two, dependent Claims 2-10 and 12-20 do not include any additional elements beyond those included in the list above with respect to the independent Claims from which they depend. These dependent Claims therefore do not integrate the judicial exception (abstract idea) into a practical application for the same reasons as stated above at Step 2A Prong Two for the independent Claims.
At Step 2B, dependent Claims 2-10 and 12-20 do not include any additional elements beyond those included in the list above with respect to the independent Claims from which they depend. These dependent Claims therefore do not recite anything that is sufficient to amount to significantly more than the judicial exception for the same reasons as stated above at Step 2B for the independent Claims.
Therefore, Claims 1-20 are rejected under 35 U.S.C. 101 as being directed to non-eligible subject matter. See Alice Corp. v. CLS Bank International, 573__ U.S. 2014.
Claim Rejections - 35 USC § 103
9. The following is a quotation of 35 U.S.C. 103:
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.
35 U.S.C. 103 forms the basis for all obviousness rejections set forth in this Office action.
10. Claims 1-3, 6-13 and 16-20 rejected under 35 U.S.C. 103 as being unpatentable over Heyns et al. (US Patent Publication 20110173050 A1 – hereinafter Heyns) in view of Venkata et al. (US Patent Publication 20200097879 A1 – hereinafter Venkata).
11. As per Claim 1, Heyns teaches:
The system comprises: an input configured to access one or more data sources that store and manage target … public data [HEYNS reads on: Abstract (A holistic method of developing a strategic planning solution for a business organization); Fig. 3A (BASED ON PUBLICLY AVAILABLE HISTORICAL FINANCIAL INFORMATION); Fig. 4 (Finance and Performance Management, input, Target Company); para 19 (The VT tools includes a database containing data from thousands of companies)]; …
… identify, via the computer processor, a target entity [HEYNS reads on: Fig. 4, as above; Fig. 9 (1. Select target Company and Companies for Comparison purposes)];
perform, via the computer processor, a peer selection for the target entity by applying an optimal set of filters comprising industry, geographic region, time period, revenue, and EBITDA margin [HEYNS reads on: Fig. 3A, as above; Fig. 3B (FUTURE CASH FLOWS ARE BASED ON PUBLICLY AVAILABLE HISTORICAL FINANCIAL STATEMENTS – historical is time period); Fig. 4 (industry; country is geographic region; Comparison Companies); Fig. 5A (Revenue Growth, EBITDA Margin); Fig. 9 (1. Select target Company and Companies for Comparison purposes); Fig. 20 (SECTION, net Revenue); para 49 (budget cycle, annually, periodicity is time period); para 59 (net revenue)];
generate, via the computer processor, a target summary comprising at least a profit improvement opportunity and a working capital opportunity [HEYNS reads on: Fig. 5B (Working Capital Effectiveness); para 20 (identifying opportunities to increase value); para 66 (calculations of a stock's expected value based on the cash flow that the company is expected to generate is a target summary comprising at least a profit improvement opportunity; growth in invested capital is working capital opportunity); para 67];
generate, via the computer processor, the profit improvement opportunity comprising analytics by EBITDA, cost of goods sold (COGS) and selling, general and administrative expenses (SG&A) [HEYNS reads on: Fig. 5A (Sales, General & Administrative Expense (SG&A) as a % of Sales, EBITDA Margin); Fig. 5B (Working Capital Effectiveness); Figs. 12, 15 (Raw Materials – CGS, Non-Raw Materials – CGS is cost of goods sold (COGS))];
generate, via the computer processor, the working capital opportunity comprising analytics by Days Sales Outstanding (DSO), Days Payables Outstanding (DPO) and Days of Inventory Outstanding (DIO) [HEYNS reads on: Fig. 5B (Working Capital Effectiveness, Days Sales Outstanding, Day Supply of Inventory, Days Payables Outstanding)];
generate, via the computer processor, an opportunity strategy for the profit improvement opportunity and the working capital opportunity [HEYNS reads on: para 20 (identifying opportunities to increase value); para 75 (improve strategy formulation; Once the accuracy of a company's forecasts have been improved, increased market valuation can be accomplished)]; and
execute, via the computer processor, the opportunity strategy for the target entity [HEYNS reads on: para 69 (A user can test one, two, three, or more of these various strategies and determine the expected resulting changes in cash flow)].
Although Heyns teaches an interactive user interface that communicates .. via a communication network; and a computer processor at Figure 3A (WEB ENABLED is a communication network), Figure 4 (input interface) and paragraph 61 (network, computer, server) for example, it does not explicitly teach, but Venkata teaches:
… proprietary financial data [VENKATA reads on: para 100 (proprietary information)] and …
… an interactive user interface that communicates with one or more user devices via a communication network; and a computer processor coupled to the input, the interactive user interface and the one or more data sources, the computer processor [VENKATA reads on: Fig. 7 (user devices 702, 704, interactive user interface 706, Network 710, Server 712, Data Repository 714, 716); Fig. 8 (Client Device 804, 806, Network 810, Web UI 814); Fig. 9 (Computer System 900); para 95] further configured to: …
At the time of filing, it would have been obvious to a person of ordinary skill in the art to have modified Heyns to incorporate the teachings of Venkata in the same field of endeavor of business analysis to include proprietary financial data, an interactive user interface that communicates with one or more user devices via a communication network; and a computer processor coupled to the input, the interactive user interface and the one or more data sources, the computer processor. The motivation for doing this would have been to improve the business analysis of Heyns by efficiently identifying new opportunities. See Venkata, Abstract, "Described herein are systems and techniques for identifying at-risk opportunities and generating a recommendation that can be used by the representatives to help salvage the opportunities. Historical information as well as machine learning algorithms are used to identify the failing opportunities by classifying new and currently in-pursuit opportunities using information from past opportunities to identify which of the new and in-pursuit opportunities might be at risk. Distances between opportunities are estimated based on local neighborhoods determined by relevant variables influencing those opportunities in the local neighborhood. The shortest distance between at risk opportunities and winning opportunities can be identified and utilized to generate the recommendation based on the relevant variables for the shortest path. In some embodiments, an ordered list of actions or changes to actions needed for a successful disposition of the opportunity may be generated and provided to the representative ".
12. As per Claim 2, Heyns in view of Venkata teaches:
The system of claim 1, wherein the peer selection [as above, Claim 1] is further based on
Heyns further teaches:
… public data [HEYNS, as above, Claim 1].
Heyns does not explicitly teach but Venkata further teaches:
… one or more prior engagements [VENKATA reads on: para 32 (historical information about opportunities including closing information is one or more prior engagements); para 37] and …
At the time of filing, it would have been obvious to a person of ordinary skill in the art to have modified Heyns in view of Venkata to incorporate the further teachings of Venkata in the same field of endeavor of business analysis to include one or more prior engagements. The motivation for doing this would have been to improve the business analysis of Heyns in view of Venkata by efficiently analyzing opportunities.
13. As per Claim 3, Heyns in view of Venkata teaches:
The system of claim 1, wherein the profit improvement opportunity comprises one or more COGS opportunity [as above, Claim 1] that is further based on
Heyns further teaches:
direct labor and direct material [HEYNS reads on: para 73 (the cost of raw materials, the cost of labor including overtime)].
14. As per Claim 6, Heyns in view of Venkata teaches:
The system of claim 1, wherein the profit improvement opportunity [as above, Claim 1] comprises
Heyns further teaches:
Cost Breakdown that is further based on COGS material and labor, SG&A labor and shared expenses [HEYNS reads on: Fig. 15 (Raw Materials – CGS, Non-Raw Materials – CGS is COGS material and labor), General Administrative expense is SG&A labor and shared expenses].
15. As per Claim 7, Heyns in view of Venkata teaches:
The system of claim 1, wherein the working capital opportunity [as above, Claim 1] is based on
Heyns further teaches:
revenue, industry and peers available [HEYNS reads on: Fig. 3A (HOW HAS THE TARGET COMPANY PERFORMED HISTORICALLY AGAINST PEER COMPANIES?, ENABLES FAST GRAPHICAL COMPARATIVE FINANCIAL ANALYSIS BETWEEN A TARGET COMPANY AND A NUMBER OF ITS PEERS); Figs. 5A, 9, as above, Claim 1; para 59, as above, Claim 1].
16. As per Claim 8, Heyns in view of Venkata teaches:
The system of claim 1, wherein the working capital opportunity comprises at least one Days Sales Outstanding (DSO) opportunity [as above, Claim 1] that further comprises
Heyns further teaches:
external opportunity, internal opportunity, and peer comparison [HEYNS reads on: Fig. 3A (peer comparison), as above, Claim 7; para 19 (increasing brand name recognition is external opportunity); para 51 (reducing the calendar time and labor as measured by person-hours needed for an organization to arrive at a budget is internal opportunity)].
17. As per Claim 9, Heyns in view of Venkata teaches:
The system of claim 1, wherein the working capital opportunity comprises at least one Days Payables Outstanding (DPO) opportunity [as above, Claim 1] that further comprises
Heyns further teaches:
external opportunity, internal opportunity, and peer comparison [HEYNS, as above, Claim 8].
18. As per Claim 10, Heyns in view of Venkata teaches:
The system of claim 1, wherein the working capital opportunity comprises at least one Days of Inventory Outstanding (DIO) opportunity [as above, Claim 1] that further comprises
Heyns further teaches:
external opportunity, internal opportunity, and peer comparison [HEYNS, as above, Claim 8].
19. As per Claim 11, Heyns teaches:
A method [HEYNS reads on: Abstract (A holistic method of developing a strategic planning solution for a business organization)] comprises the steps of:
The remainder of the claim rejected under the same rationale as Claim 1 above.
20. As per Claim 12, Heyns in view of Venkata teaches:
The method of claim 11, wherein the peer selection [as above, Claim 11] is further based on
The remainder of the claim rejected under the same rationale as Claim 2 above.
21. As per Claim 13, Heyns in view of Venkata teaches:
The method of claim 11, wherein the profit improvement opportunity comprises one or more COGS opportunity [as above, Claim 11] that is further based on
The remainder of the claim rejected under the same rationale as Claim 3 above.
22. As per Claim 16, Heyns in view of Venkata teaches:
The method of claim 11, wherein the profit improvement opportunity [as above, Claim 11] comprises
The remainder of the claim rejected under the same rationale as Claim 6 above.
23. As per Claim 17, Heyns in view of Venkata teaches:
The method of claim 11, wherein the working capital opportunity [as above, Claim 11] is based on
The remainder of the claim rejected under the same rationale as Claim 7 above.
24. As per Claim 18, Heyns in view of Venkata teaches:
The method of claim 11, wherein the working capital opportunity comprises at least one Days Sales Outstanding (DSO) opportunity [as above, Claim 11] that further comprises
The remainder of the claim rejected under the same rationale as Claim 8 above.
25. As per Claim 19, Heyns in view of Venkata teaches:
The method of claim 11, wherein the working capital opportunity comprises at least one Days Payables Outstanding (DPO) opportunity [as above, Claim 11] that further comprises
The remainder of the claim rejected under the same rationale as Claim 9 above.
26. As per Claim 20, Heyns in view of Venkata teaches:
The method of claim 11, wherein the working capital opportunity comprises at least one Days of Inventory Outstanding (DIO) opportunity [as above, Claim 11] that further comprises
The remainder of the claim rejected under the same rationale as Claim 10 above.
27. Claims 4, 5, 14 and 15 rejected under 35 U.S.C. 103 as being unpatentable over Heyns in view of Venkata in further view of Ballow et al. (US Patent Publication 20050209946 A1 – hereinafter Ballow).
28. As per Claim 4, Heyns in view of Venkata teaches:
The system of claim 1, wherein the profit improvement opportunity comprises one or more SG&A opportunity that [as above, Claim 1] is further based on
Heyns further teaches:
selling and marketing expenses, general and administrative expenses [HEYNS reads on: Fig. 5A, as above, Claim 1; para 67 (SG&A costs,); ] and
Heyns in view of Venkata does not explicitly teach but Ballow teaches:
indirect personal expenses [BALLOW reads on: para 61 (indirect selling expenses is indirect personal expenses)].
At the time of filing, it would have been obvious to a person of ordinary skill in the art to have modified Heyns in view of Venkata to incorporate the teachings of Ballow in the same field of endeavor of business analysis to include indirect personal expenses. The motivation for doing this would have been to improve the business analysis of Heyns in view of Venkata by efficiently analyzing expenses. See Ballow, Abstract, “A method for assessing the performance of a company is provided. The method may include receiving financial data about the company and determining a future value of the company”.
29. As per Claim 5, Heyns in view of Venkata teaches:
The system of claim 1, wherein the analytics by EBITDA [as above, Claim 1] further comprises
Heyns further teaches:
revenue, .. depreciation and amortization [HEYNS reads on: Fig. 5A, (Revenue Growth); para 59 (net revenue); para 66 (depreciation and amortization)].
Heyns in view of Venkata does not explicitly teach but Ballow teaches:
… total cost [BALLOW reads on: Fig. 5A (Total Return to Shareholders Statement, Non-Interest bearing Current Liabilities)], …
At the time of filing, it would have been obvious to a person of ordinary skill in the art to have modified Heyns in view of Venkata to incorporate the teachings of Ballow in the same field of endeavor of business analysis to include total cost. The motivation for doing this would have been to improve the business analysis of Heyns in view of Venkata by efficiently analyzing costs.
30. As per Claim 14, Heyns in view of Venkata teaches:
The method of claim 11, wherein the profit improvement opportunity comprises one or more SG&A opportunity [as above, Claim 11] that is further based on
The remainder of the claim rejected under the same rationale as Claim 4 above.
31. As per Claim 15, Heyns in view of Venkata teaches:
The method of claim 11, wherein the analytics by EBITDA [as above, Claim 11] further comprises
The remainder of the claim rejected under the same rationale as Claim 5 above.
Conclusion
32. The prior art made of record and not relied upon is considered pertinent to applicant’s disclosure.
Adhikari (US Patent Publication 20040158479 A1) describes a system and method for valuation of an entity using an interactive mode enabling a user to modify the input elements to determine how the modified elements affect the financial output of the valuation.
Ostergard (US Patent Publication 20050273404 A1) describes a system and method for automatically analyzing an organization's financial data to evaluate various factors influencing that organization's stock value.
33. Any inquiry concerning this communication or earlier communications from the examiner should be directed to SARJIT S BAINS whose telephone number is (571)270-0317. The examiner can normally be reached M-F 9:30am-6:00pm.
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, Wu Rutao can be reached on (571)272-6045. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/SARJIT S BAINS/Examiner, Art Unit 3623 /RUTAO WU/Supervisory Patent Examiner, Art Unit 3623
Prosecution Insights