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In view of the amendment filed on 04/23/26, the examiner has withdrawn the previous art rejection.
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 1-20 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 1 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 mental process and a certain method of organizing human activity. For instance, the claimed steps “obtaining…usage data associated with a plurality of data sets over a predetermined period of time; determining…a correlation between one data point in a plurality of data points in a plurality of data points associated with each data set within the usage data and an established usage baseline…; utilizing…a trained machine learning module to dynamically generate aa usage score for the plurality of data sets based on the correlation between the data point and the established usage baseline to form a prediction of usage data; automatically modifying…a particular data set of the plurality of data sets to form a modified data set…; determining a value proportional to an accumulation of a plurality of transactions within a particular type of transaction associated with the plurality of data sets; and automatically reducing a number of additional authentication steps proportional to the value of the plurality of transactions” are steps that can be performed in the human mind. Any steps that can be performed in the human mind fall into the category of a mental process. Similarly, “obtaining…usage data associated with a plurality of data sets over a predetermined period of time; determining…a correlation between one data point in a plurality of data points in a plurality of data points associated with each data set within the usage data and an established usage baseline…; utilizing…a trained machine learning module to dynamically generate aa usage score for the plurality of data sets based on the correlation between the data point and the established usage baseline to form a prediction of usage data; automatically modifying…a particular data set of the plurality of data sets to form a modified data set…; determining a value proportional to an accumulation of a plurality of transactions within a particular type of transaction associated with the plurality of data sets; and automatically reducing a number of additional authentication steps proportional to the value of the plurality of transactions” are commercial or legal interactions and fundamental economic principles or practices. Commercial or legal interactions and fundamental economic principles or practices fall into the category of a certain method of organizing human activity. Thus, the claim recites a judicial exception, i.e., an abstract idea.
Under Step 2A (Prong 2), the examiner contends that the claim recites additional elements beyond the abstract ideas, above: processor (as recited in claim 1), computer memory and a first computing device (as recited in claim 19); dynamically retraining…the trained machine learning module after an expiration of the predetermined period of time with the usage score.” These additional elements; particularly, the processor (as recited in claim 1), computer memory and a first computing device (as recited in claim 19) do not integrate the abstract idea into a practical application because they are merely being applied to the abstract idea and used as tools for executing the abstract idea. Further, the limitation” dynamically retraining…the trained machine learning module after an expiration of the predetermined period of time with the usage score” is an insignificant extra-solution activity, because every machine learning module has to be trained. Thus, it is determined the claim 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 element 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 element beyond the abstract idea of claim 1 is the generically recited “processor, computing device and computer memory.” The specification does not point to sufficient evidence that any of these components are anything other than well-understood, routine, and conventional hardware components or systems being used in their ordinary manner. The specification substantiates this, for instance at para 0041. 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 1 and are rejected using the same rationale as in claim 1 above. More specifically, dependent claims 2-4, 6-11, 13-14, 17 do not recite additional elements but merely further narrow the scope of the abstract idea. However, dependent claims 5, 12, 16, 18 and 20 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”).
Response to Arguments
Applicant's arguments filed on 04/23/26 have been fully considered but they are not persuasive.
In response to applicant’s argument that the claim is not directed to an abstract idea, citing Enfish, Core Wireless, McRo, Finjan and Ex Parte Desjardins, the examiner disagrees. The claim as a whole recites a mental process and a certain method of organizing human activity. For instance, the claimed steps “obtaining…usage data associated with a plurality of data sets over a predetermined period of time; determining…a correlation between one data point in a plurality of data points in a plurality of data points associated with each data set within the usage data and an established usage baseline…; utilizing…a trained machine learning module to dynamically generate aa usage score for the plurality of data sets based on the correlation between the data point and the established usage baseline to form a prediction of usage data; automatically modifying…a particular data set of the plurality of data sets to form a modified data set…; determining a value proportional to an accumulation of a plurality of transactions within a particular type of transaction associated with the plurality of data sets; and automatically reducing a number of additional authentication steps proportional to the value of the plurality of transactions” are steps that can be performed in the human mind. Any steps that can be performed in the human mind fall into the category of a mental process. Similarly, “obtaining…usage data associated with a plurality of data sets over a predetermined period of time; determining…a correlation between one data point in a plurality of data points in a plurality of data points associated with each data set within the usage data and an established usage baseline…; utilizing…a trained machine learning module to dynamically generate aa usage score for the plurality of data sets based on the correlation between the data point and the established usage baseline to form a prediction of usage data; automatically modifying…a particular data set of the plurality of data sets to form a modified data set…; determining a value proportional to an accumulation of a plurality of transactions within a particular type of transaction associated with the plurality of data sets; and automatically reducing a number of additional authentication steps proportional to the value of the plurality of transactions” are commercial or legal interactions and fundamental economic principles or practices. Commercial or legal interactions and fundamental economic principles or practices fall into the category of a certain method of organizing human activity. Thus, the claim recites a judicial exception, i.e., an abstract idea.
Applicant's citation of Enfish is unpersuasive because the claims at issue in Enfish are readily distinguishable over the instant claims. In Enfish the claims were held to be patent-eligible because the claimed solution was directed to improvements in computer technology with database software designed as a "self-referential" table. The patent claims here do not address improvements in computer technology with database software designed as a "self-referential" table, so Enfish is not applicable. In contrast, the instant claims also provide a generically computer-implemented solution to a communication/business-related or economic problem.
Further, applicant's citation of Core Wireless is unpersuasive because the claims at issue in Core Wireless are readily distinguishable over the instant claims. Core Wireless claims are directed to an improved user interface for computing devices. The claims recite that the summary window “is displayed while the one or more applications are in an un-launched state,” a requirement that the device applications exist in a particular state. These limitations disclose a specific manner of displaying a limited set of information to the user, rather than using conventional user interface methods to display a generic index on a computer. There is no such improvement in the claimed display interface.
Further still, Applicant's citation of McRo is unpersuasive because the claims at issue in McRo are readily distinguishable over the instant claims. The claims in McRo were directed to the creation of something physical—namely, the display of “lip synchronization and facial expressions” of animated characters on screens for viewing by human eyes. Id. at 1313. The claimed improvement was to how the physical display operated (to produce better quality images), unlike (what is present here) a claimed electronic device with no improved display mechanism. The claims in McRO thus were not abstract in the sense that is dispositive here - they had the specificity required to transform a claim from one claiming only a result to one claiming a way of achieving it. In McRo, the claimed rules transforms a traditionally subjective process performed by humans into a mathematically automated process executed on computers. The human process and computer process in McRO produced a similar result but do so in fundamentally different ways. It is the incorporation of the claimed rules, not the use of the computer that improves the existing technological process by allowing the automation of further tasks. In contrast, the present claims do not provide improved rules and “merely implement an old practice in a new environment.
Applicant's citation of Finjan is unpersuasive because the claims at issue in Finjan are readily distinguishable over the instant claims. It is held that the claims in Finjan are directed to a behavior-based virus scanning which employs a new kind of file that enables a computer security system to do things it could not do before including “accumulating and utilizing newly available, behavior-based information about potential threats.” 2018 WL 341882 at *4 (Fed. Cir. Jan. 10, 2018). The claimed behavior-based scans, in contrast to prior art systems which searched for matching code, enabled more “nuanced virus filtering” in analyzing whether “a downloadable’s code . . . performs potentially dangerous or unwanted operations.” Id. at *3. Finjan’s claims, compared to the present claims, constitute non-abstract improvements in functionality, rather than the abstract idea of computer security. The claims in Finjan are not similar to the claims in the pending application.
Lastly, applicant's citation of Ex Parte Desjardins is unpersuasive because the claims at issue in Ex Parte Desjardins are readily distinguishable over the instant claims. The claims in Ex Parte Desjardins are directed to a method of training a machine learning algorithm on a series of tasks. The pending claims, however, is not directed to a specific improvement to machine learning technology. Rather the machine learning module is simply being trained by a conventional processor to carry out the claimed abstract steps.
The examiner further contends that a generic processor is used to implement the claimed steps, and there is no indication that claim improves the functioning of the processor, makes it operate more efficiently, or solves a technological problem with a solution rooted in computer technology.
In response to applicant’s argument that the additional elements recite significantly more than the use of generic hardware, the examiner disagrees. The examiner contends that the additional elements in the claim amount 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 element beyond the abstract idea of claim 1 is the generically recited “processor, computing device and computer memory.” The specification does not point to sufficient evidence that any of these components are anything other than well-understood, routine, and conventional hardware components or systems being used in their ordinary manner. The specification substantiates this, for instance at para 0041. 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.
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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