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 .
Application Status
This office action is in response to Applicant’s remarks received 03/04/2026.
Claims 1-20 are pending and have been examined.
Claim Rejections
Claims 1-20 remain rejected under 35 U.S.C. § 101 for being directed to an abstract idea without significantly more.
Acknowledgement of Issues Raised by Applicant
Applicant’s arguments with respect to the 35 U.S.C. § 101 rejections of claims 1-20 have been fully considered but are not persuasive.
Response to Arguments
35 U.S.C. § 101
With respect to the 35 U.S.C. § 101 rejections, examiner notes Applicant asserts the claims are patent eligible under 35 U.S.C. §101 and Alice/Mayo analysis per the claims not reciting an abstract idea under step 2A Prong I1. Additionally, examiner notes Applicant asserts the claims are patent eligible under 35 U.S.C. §101 and Alice/Mayo analysis per the claims providing additional elements that go beyond the judicial exception and integrate the judicial exception into a practical application under step 2A II, as the claims provide a technological solution to a technological problem2. The Examiner respectfully disagrees and maintains the claims are not patent eligible under 35 U.S.C. §101 (analysis continues below).
Examiner’s Response to Step 2A Prong I Arguments
Examiner respectfully disagrees with Applicant’s arguments drawn to step 2A Prong I3 and respectfully maintains the claims recite an abstract idea for the following reasons:
Applicant’s argument is cursory in addressing examiner’s position for step 2A prong I analysis of the instant claims, and merely states: “… Applicant’s respectfully disagree” (page 10 of Remarks), and does not provide any substantive underlying reasoning or rationale for their position. I.e., Applicant’s arguments do not specifically refute Examiner’s position in the previous non-final rejection that stress testing financial portfolios are considered abstract fundamental economic practices, or that stress testing financial portfolios are positively recited by the claims, as Applicant’s arguments instead more broadly assert the claims do not recite an abstract idea under step 2A Prong I, per merely stating “… Applicant’s respectfully disagree”, and instead draws attention to the additional elements recited by the claims. I.e., Applicant fails to provide any substantive argument specifically addressing as to why the limitations drawn to “stress testing financial portfolios” identified by examiner in their step 2A Prong I analysis are (a) not abstract, (b) not recitation of fundamental economic practices, or (c) not present within the claim limitations identified by examiner. Examiner respectfully notes Applicant’s arguments are not convincing when they fail to provide any substantive underlying reasoning or rationale outlining Applicant’s position as to why the concept of stress testing financial portfolios identified by examiner is, at least one of: (a) non-abstract, (b) not falling under either “fundamental economic practices”, and/or (c) not present within the claim limitations identified by examiner. Applicant noting that the claims requiring computer components distinct from the abstract idea identified by examiner in their step 2A Prong I analysis does not sufficiently address these particular deficiencies in the Applicant’s arguments, as "[a]n abstract idea does not become nonabstract by limiting the invention to a particular field of use or technological environment, such as the Internet [or] a computer" – see Intellectual Ventures I LLC v. Capital One Bank (USA), N.A., 792 F.3d 1363, 1366, 115 USPQ2d 1636, 1639 (Fed. Cir. 2015).
Regardless of Applicant’s asserted basis for eligibility drawn to the computer components / additional elements, Examiner fails to see how the aforementioned claim are not recitations of fundamental economic practices under step 2A Prong I. The Examiner does not contend that the claimed additional elements are abstract. However, the mere inclusion of claim limitations drawn to computer components / additional elements does not necessarily preclude the same aforementioned claims from being considered to recite an abstract idea under step 2A prong I of Alice/Mayo analysis – again, see Intellectual Ventures I LLC v. Capital One Bank (USA), N.A., 792 F.3d 1363, 1366, 115 USPQ2d 1636, 1639 (Fed. Cir. 2015), emphasis added: ("An abstract idea does not become nonabstract by limiting the invention to a particular field of use or technological environment, such as the Internet [or] a computer"). This fact is evident in light of the sequence of steps performed during the revised Alice/Mayo test – see MPEP §2106.04(II)(A) showing a visual summary of revised step 2A of the Alice/Mayo test.
Accordingly, for the reasons provided above, as well as the reasons provided in the 101 rejections further below, Applicant’s arguments drawn to step 2A Prong I are not persuasive. The examiner respectfully maintains the claims recite an abstract idea (Step 2A Prong I: Yes – the claims recite an abstract idea of stress testing financial portfolios).
Examiner’s Response to Step 2A Prong II Arguments
Examiner respectfully disagrees with Applicant arguments4 that the claims are directed to an improvement to the functioning of a computer, or another technology or technical field5 and integrate the judicial exception into a practical application for the following reasons:
The additional elements “A system comprising at least one processor; and a memory coupled to the at least one processor, wherein the memory stores an account database including a (scenario) database including … [data] and instructions that when executed by the at least one processor cause the system to perform”, “…receiving, … via a user device…request…”, “…(scenario) database…” “…generating a user interface at the user device that … [provides data]”, “…receiving … via the user device…request…”, “…outputting … [data] to … the user interface of the user device” of claims 1 and 20, and the additional elements “…receiving, … via a user device…request…”, “…(scenario) database…” “…generating a user interface at the user device that … [provides data]”, “…receiving … via the user device…request…”, “…outputting … [data] to … the user interface of the user device” of claims 12 amount to no more than mere instructions to implement the abstract idea and/or merely limit the use of the abstract idea to a particular technological environment (MPEP §§ 2106.05 (f), (h)), even when considering each claim’s additional elements both separately and as an ordered combination. Stating an abstract idea while adding the words "apply it" (or an equivalent) is insufficient to impart patent eligibility under Alice. See Alice Corp. v. CLS Bank International, 573 U.S. 208, 223-24 (2014): "… Stating an abstract idea "while adding the words ‘apply it’ " is not enough for patent eligibility. … Nor is limiting the use of an abstract idea " ‘to a particular technological environment.’ … Stating an abstract idea while adding the words "apply it with a computer" simply combines those two steps, with the same deficient result”.
The claims merely invoke computers as tools to perform an abstract business process (e.g., the recited stress testing financial portfolios – see MPEP §2106.05(f)(2)). This stance is supported by at least ¶76 of Applicant specification disclosing the implementation may be carried out by a general-purpose computer. See MPEP § 2106(I), underline emphasis added: “The programmed computer or "special purpose computer" test of In re Alappat, 33 F.3d 1526, 31 USPQ2d 1545 (Fed. Cir. 1994) (i.e., the rationale that an otherwise ineligible algorithm or software could be made patent-eligible by merely adding a generic computer to the claim for the "special purpose" of executing the algorithm or software) was also superseded by the Supreme Court’s Bilski and Alice Corp. decisions …”.
Applicant’s specification and claims fail to provide sufficient details such that one of ordinary skill in the art would recognize the claimed invention as providing an improvement to the functioning of a computer or to any other technology or technical field (MPEP §§ 2106.04(d)(1) & 2106.05(a)). The use of the additional elements in carrying out the steps of the abstract idea are indistinguishable from post-hoc implementation of the additional elements conventional to computer technology.
With respect to Applicant’s argument drawn to preemption6, The additional elements amounting to mere instructions to implement a judicial exception with wholly generic computer implementation (MPEP §2106.05(f)) conventional to the technological environment of computers / computer networks does not lend support to a stance that the claims ‘amount to more than a mere drafting effort designed to monopolize the abstract idea itself’, or ‘apply the judicial exception in some meaningful way’ with ‘meaningful limitations’ (MPEP §2106.05(e)). "[W]holly generic computer implementation is not generally the sort of "additional featur[e]" that provides any "practical assurance that the process is more than a drafting effort designed to monopolize the [abstract idea] itself.”" - Alice Corp. v. CLS Bank International, 573 U.S. 208, 223-24 (2014). Arguendo, Examiner respectfully notes: “While preemption may signal patent ineligible subject matter, the absence of complete preemption does not demonstrate patent eligibility.” - Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015), in further view of Synopsys, 839 F.3d at 1151: “a claim for a new abstract idea is still an abstract idea. …”). In light of the reasons provided above in this section, Examiner respectfully maintains the claims do not provide a technological solution to a technological problem (MPEP §2106.05(a)) or apply the judicial exception in some meaningful way (MPEP §2106.05(e)).
With respect to Applicant’s arguments drawn to the utility of the abstract idea 7, examiner respectfully disagrees with the overall thrust of the argument, as the utility of the abstract idea, even if novel, is not, as a sole consideration, sufficient to indicate patent eligibility – see the following MPEP and Case law cites:
In re Comiskey, 554 F.3d 967, 979 (Fed. Cir. 2009): “The Court rejected the notion that mere recitation of a practical application of an abstract idea makes it patentable…”
MPEP § 2106 I: “…eligibility should not be evaluated based on whether the claim recites a ‘useful, concrete, and tangible result,’… eligibility should not be evaluated based on whether the claimed invention has utility, because "[u]tility is not the test for patent-eligible subject matter… "
Intellectual Ventures I LLC v. Symantec Corp., 838 F.3d 1307, 1315 (Fed. Cir. 2016) (quoting Diehr, 450 U.S. at 188–89): “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.’”
MPEP § 2106.04 II A 2: “…eligibility ‘cannot be furnished by the unpatentable law of nature (or natural phenomenon or abstract idea) itself’. … For a claim reciting a judicial exception to be eligible, the additional elements (if any) in the claim must ‘transform the nature of the claim’ into a patent-eligible application of the judicial exception, Alice Corp., 573 U.S. at 217, 110 USPQ2d at 1981, either at Prong Two or in Step 2B”.
With respect to Applicant’s supporting arguments on page 12 of Remarks, underline emphasis added: “…the pending claims include additional elements of at least a processor, a memory, a scenario database, receiving a user request via a user device, generating a user interface, and outputting data to the user interface of the user device. These additional elements provide an improvement to the technical field of risk analytics by enabling a user to interact with a user interface to analyze his or her portfolio under various simulated conditions. The pending claims allow a user to be provided with alerts in a timely manner as well as allowing a user to analyze his or her portfolio subject to various scenarios.” Examiner respectfully disagrees and fails to find Applicant argument persuasive for the following reasons:
“…Risk analytics..” are an aspect of the abstract idea recited, and not a particular technological environment.
Allowing a user to “…analyze his or her portfolio under various simulated conditions…” is an aspect of the abstract idea recited and not indicative of a technological solution to a technological problem. At best, a computer providing means for portfolio analysis and alerts to a user for their portfolio is a technological solution to an abstract business problem, which is insufficient to indicate a technological solution to a technological problem – see MPEP 2106.05(a) II: “… it is important to keep in mind that an improvement in the abstract idea itself (e.g. a recited fundamental economic concept) is not an improvement in technology … Merely adding generic computer components to perform the method is not sufficient.”
Even though the claims include a processor, memory, database, and user device / user interface, the additional elements pertaining to the aforementioned hardware/software components claimed amount to gathering and analyzing information using techniques conventional to computer technology, which is not sufficient to indicate an improvement to technology – See MPEP §§2106.05(a) & 2106.05(a) II citing TLI Communications, 823 F.3d at 612-13, 118 USPQ2d at 1747-48: “Examples that the courts have indicated may not be sufficient to show an improvement to technology include: … Gathering and analyzing information using conventional techniques and displaying the result …”. I.e., the manner by which the claims’ additional elements are used is indistinguishable from mere addition of general-purpose computers added post-hoc to the abstract idea recited,
Accordingly, for the reasons provided above, as well as in the 101 rejections further below, the Examiner respectfully maintains that the claims do not integrate the judicial exception into a practical application (Step 2A Prong II of Alice/Mayo Test: NO, the additional elements do not integrate the judicial exception into a practical application), as the focus of the claims is not an improvement in computers as tools, but rather on an abstract idea of stress testing financial portfolios that uses computers as tools. Considered both separately and as an ordered combination, the additional elements of the claims do no more than represent computers performing functions that correspond to (,i.e., implement,) the acts of the abstract of stress testing financial portfolios within a particular technological environment, and do not provide details such that one of ordinary skill in the art would recognize the claims as reflecting an improvement to the functioning of a computer or any other technology or technical field.
Accordingly, in view of the analysis performed with respect to steps 2A Prong I and 2A Prong II, the examiner respectfully maintains the claims are directed to an abstract idea under step 2A (Step 2A: The claims are directed to an abstract idea of stress testing financial portfolios).
Hence, for the reasons listed above, as well as the reasons provided in 101 rejections further below, the Examiner respectfully disagrees with Applicant arguments and maintains the claims do not integrate the judicial exception into a practical application under step 2A II. Similarly, for the reasons provided below in the 101 rejections, the examiner respectfully maintains the claims do not provide an inventive concept8 under step 2B of Alice/Mayo analysis. The claims are not patent eligible under 35 U.S.C. §101, when analyzed under the Alice/Mayo test.
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 an abstract idea without significantly more.
As an initial matter, the relevant test is the Alice/Mayo test9. The following analysis provided in this section results from the instant application’s claims being examined within the scope of the Alice/Mayo test framework.
When analyzed under step 1 of the Alice/Mayo test10, claims 1-20 are directed to either a system or a method. Therefore, each of the claims are directed to one of the four statutory categories of invention (Step 1 of Alice/Mayo Test: YES).
In light of step 2A Alice/Mayo analysis performed on the instant claims11, claims 1-20 have been determined to be directed to an abstract idea of stress testing financial portfolios. The rationales for the aforementioned determination are explained further below.
When analyzed under prong I of revised step 2A, claims 1-20 each recite a method of organizing human activity,12 because independent claims 1, 12, and 20 recite:
“1. … a plurality of accounts, each account of the plurality of accounts including account parameters, a scenario … including a set of scenarios, each scenario of the set of scenarios including a set of rules to apply to account parameters to determine adjusted account parameters based on the respective scenario, and … perform,
receiving, from a first user …, a request including a first scenario of the set of scenarios and in response to the receiving the request including the first scenario,
identifying a first set of rules from the scenario [set] … corresponding to the first scenario, wherein the request indicates a first account of the plurality of accounts, the first account being an account of the first user,
obtaining first account parameters of the first account,
adjusting the first account parameters based on the first set of rules,
calculating a first set of outcome metrics of the first account based on the adjusted account parameters,
outputting the first set of outcome metrics,
sending an alert to the first user in response to an outcome metric to which at least one threshold corresponds, from among the first set of outcome metrics, exceeding the at least one threshold, and
… provide… a plot of a profit or loss for each outcome metric of the first set of outcome metrics and a total line representing an aggregate profit or loss of the first set of outcome metrics in a first graph,
receiving, from the first user …, a request for hypothetical metrics and in response to the receiving the request for the hypothetical metrics,
identifying a first parameter of the first account parameters identified in the request,
adjusting the first parameter based on a requested account adjustment parameter, the requested account adjustment parameter being a change to the first parameter, wherein the change is independent of any scenario of the set of scenarios,
calculating a second set of outcome metrics based on the adjusted first parameter, and
outputting the second set of outcome metrics to … user ….”
“12. A method comprising:
receiving, from a first user …, a request including a first scenario of a set of scenarios and in response to the receiving the request including the first scenario,
identifying a first set of rules from a scenario database corresponding to the first scenario, wherein:
the request indicates a first account of a plurality of accounts, the first account being an account of the first user,
each account of the plurality of accounts includes account parameters, and
each scenario of the set of scenarios includes a set of rules to apply to account parameters to determine adjusted account parameters based on the respective scenario,
obtaining first account parameters of the first account,
adjusting the first account parameters based on the first set of rules;
calculating a first set of outcome metrics of the first account based on the adjusted account parameters,
outputting the first set of outcome metrics
sending an alert to the first user in response to an outcome metric to which at least one threshold corresponds, from among the first set of outcome metrics, exceeding the at least one threshold,
… provide… a plot of a profit or loss for each outcome metric of the first set of outcome metrics and a total line representing an aggregate profit or loss of the first set of outcome metrics in a first graph,
receiving, from the first user …, a request for hypothetical metrics; and
in response to the receiving the request for the hypothetical metrics,
identifying a first parameter of the first account parameters identified in the request,
adjusting the first parameter based on a requested account adjustment parameter, the requested account adjustment parameter being a change to the first parameter, wherein the change is independent of any scenario of the set of scenarios,
calculating a second set of outcome metrics based on the adjusted first parameter, and
outputting the second set of outcome metrics to … user ….”
“20. … a plurality of accounts, each account of the plurality of accounts including account parameters, a scenario database including a set of scenarios, each scenario of the set of scenarios including a set of rules to apply to account parameters to determine adjusted account parameters based on the respective scenario, and instructions that when executed by the at least one processor cause the system to perform,
receiving, from a first user …, a request including a first scenario of the set of scenarios and in response to the receiving the request including the first scenario,
identifying a first set of rules from the scenario database corresponding to the first scenario, wherein the request indicates a first account of the plurality of accounts, the first account being an account of the first user,
obtaining first account parameters of the first account,
adjusting the first account parameters based on the first set of rules,
calculating a first set of outcome metrics of the first account based on the adjusted account parameters,
outputting the first set of outcome metrics,
sending an alert to the first user in response to an outcome metric to which at least one threshold corresponds, from among the first set of outcome metrics, exceeding the at least one threshold,
… provide… a plot of a profit or loss for each outcome metric of the first set of outcome metrics and a total line representing an aggregate profit or loss of the first set of outcome metrics in a first graph, and
updating the first graph to include at least one of a plot of a probability and severity distribution or a display of one or more outcome metrics, the outcome metrics including an absolute threshold value, a possible value range, or a margin call, and
receiving, from the first user via the user device, a request for hypothetical metrics and in response to the receiving the request for the hypothetical metrics,
identifying a first parameter of the first account parameters identified in the request,
adjusting the first parameter based on a requested account adjustment parameter, the requested account adjustment parameter being a change to the first parameter, wherein the change is independent of any scenario of the set of scenarios,
calculating a second set of outcome metrics based on the adjusted first parameter, and
outputting the second set of outcome metrics to the … user ….”
Under broadest reasonable interpretation consistent with the specification13, the above claim limitations of independent claims 1, 12, and 20 each recite commercial and/or legal interactions of stress testing financial portfolios from a financial account holder, including steps of (A) receiving a request for a stress test scenario, (B) identifying rules associated with the stress test scenario, (C) obtaining and adjusting account parameters (e.g., portfolio parameters) based on the rules, (D) calculating financial outcome metrics for the account based on the adjusted account parameters, (E) sending an alert to the user in response to outcome metrics exceeding a threshold, (F) generating one or more plots of a profit or loss for each outcome metric and a total line representing aggregate profit/loss, (G) receiving a request for hypothetical metrics, involving identifying, adjusting, and calculating corresponding to parameters, and (H) providing metrics to a user. Furthermore, Examiner notes the limitations drawn to sending an alert may correspond to fundamental economic practices of mitigating risk. (Step 2A Prong I of Alice/Mayo Test: Yes, the claims recite an abstract idea).
The aforementioned determination made under step 2A Prong I of Alice/Mayo analysis is supported by the following14:
Applicant specification’s ¶3 of “Background” section suggests the claimed invention is generally drawn to analyzing accounts and investments according to various risk factors.
Applicant’s specification discloses the claimed scenarios correspond to stress tests of financial markets (¶¶42-45, 50).
At least ¶¶6, 11, 27 44, 45, 50 indicate the account corresponds to a set of investments (e.g., a portfolio).
Applicant’s specification discloses the claimed account parameters may correspond to a change in investment (¶28), and include parameters such as account value, present investments, types of investments, etc. (¶34).
The claimed outcome metrics correspond to financial metrics, as also indicated by at least ¶¶34-38.
Case law precedent indicates that the specificity of the abstract idea does not make an abstract idea any less abstract – see the following:
Intellectual Ventures I LLC v. Symantec Corp., 838 F.3d 1307, 1321 (Fed. Cir. 2016): “A narrow claim directed to an abstract idea, however, is not necessarily patent-eligible …”.
Synopsys, Inc. v. Mentor Graphics Corp, 839 F.3d at 1151 (Fed. Cir. 2016): “… a claim for a new abstract idea is still an abstract idea”.
Additionally, when analyzed under prong I of revised step 2A15, claims 1-20 recite mental processes because independent claims 1, 12, and 20 each recite claim limitations drawn to:
“1. … provide… a plot of a profit or loss for each outcome metric of the first set of outcome metrics and a total line representing an aggregate profit or loss of the first set of outcome metrics in a first graph …”
“12. … … provide… a plot of a profit or loss for each outcome metric of the first set of outcome metrics and a total line representing an aggregate profit or loss of the first set of outcome metrics in a first graph,
“20. … provide… a plot of a profit or loss for each outcome metric of the first set of outcome metrics and a total line representing an aggregate profit or loss of the first set of outcome metrics in a first graph, and updating the first graph to include at least one of a plot of a probability and severity distribution or a display of one or more outcome metrics, the outcome metrics including an absolute threshold value, a possible value range, or a margin call …”
Under broadest reasonable interpretation consistent with the specification, the above claim limitations are recitation of mental processes of, (A) providing a plot of profit/loss and a total line representing profit/loss in a first graph based on outcome metrics, and, in the case of claim 20, (B) updating the graph to include a plot of probability and severity distribution …, of which are used in conveying metrics corresponding to the stress testing of financial portfolios. Hence, independent claims 1, 12, and 20 each recite an additional abstract idea when analyzed under Step 2A Prong I of the Alice/Mayo test. Adding one abstract idea (e.g., the aforementioned mathematical calculations) to another (e.g., the claimed stress testing of financial portfolios) does not render a claim non-abstract – see MPEP § 2106.04 II A 2 citing RecogniCorp, LLC v. Nintendo Co. 855 F.3d 1322.
Prior to step 2A Prong II Alice/Mayo analysis, Examiner notes the following preliminary matter:
Consistent with guidance set forth in MPEP §2106.04 II B16, Examiner, under step 2A Prong II and step 2B analysis, treats the identified abstract ideas of claims 1-20 as a single abstract idea of ‘stress testing of financial portfolios’, as the mental process identified in step 2A prong I is merely in furtherance of conveying metrics corresponding to stress testing of financial portfolios.
This judicial exception recited in independent claims 1, 12, and 20 is not integrated into a practical application because, when analyzed under prong II of revised step 2A of the Alice/Mayo test17:
The additional elements “A system comprising at least one processor; and a memory coupled to the at least one processor, wherein the memory stores an account database including a (scenario) database including … [data] and instructions that when executed by the at least one processor cause the system to perform”, “…receiving, … via a user device…request…”, “…(scenario) database…” “…generating a user interface at the user device that … [provides data]”, “…receiving … via the user device…request…”, “…outputting … [data] to … the user interface of the user device” of claims 1 and 20, and the additional elements “…receiving, … via a user device…request…”, “…(scenario) database…” “…generating a user interface at the user device that … [provides data]”, “…receiving … via the user device…request…”, “…outputting … [data] to … the user interface of the user device” of claims 12 amount to no more than mere instructions to implement the abstract idea and/or merely limit the use of the abstract idea to a particular technological environment (MPEP §§ 2106.05 (f), (h)), even when considering each claim’s additional elements both separately and as an ordered combination. Stating an abstract idea while adding the words "apply it" (or an equivalent) is insufficient to impart patent eligibility under Alice. See Alice Corp. v. CLS Bank International, 573 U.S. 208, 223-24 (2014): "… Stating an abstract idea "while adding the words ‘apply it’ " is not enough for patent eligibility. … Nor is limiting the use of an abstract idea " ‘to a particular technological environment.’ … Stating an abstract idea while adding the words "apply it with a computer" simply combines those two steps, with the same deficient result”.
The claims merely invoke computers as tools to perform an abstract business process (e.g., the recited stress testing financial portfolios – see MPEP §2106.05(f)(2)). This stance is supported by Applicant specification’s seemingly acknowledging the claimed computer components may include those of general-purpose computers18, and the claims describing the “…system…”, “…one or more processors…”, “…memory…”, “…user device…”, “…user interface of the user device” at a high degree of generality, such that the aforementioned are indistinguishable from general purpose computers and associated elements thereof. For example, Examiner notes that nearly every general-purpose computer generic to computer technology (e.g., the “system”) includes processors and/or memory which can generally send / receive data, and output calculations. Furthermore, the Applicant’s specification does not provide any technical descriptions of the system that could be reasonably construed as providing functional and/or structural characteristics distinguishable from that of a generic computer processor. Therefore, the processing circuitry is understood to correspond to generic computer components that are so well-known in the art that it does not require additional delineation. Accordingly, even when considered as an ordered combination, the claims’ additional elements are indistinguishable from mere addition of general-purpose computers added to the abstract idea ‘after the fact’ / ‘post-hoc’, which is insufficient to indicate improvements to computer functionality19.
The Applicant’s claims fail to provide sufficient details such that one of ordinary skill in the art would recognize the claimed invention as providing an improvement to the functioning of a computer or to any other technology or technical field (MPEP §§2106.04(d)(1) & 2106.05(a)).
The judicial exception alone cannot provide the improvement under Alice/Mayo analysis, and an improvement in the abstract idea itself is not a technological solution to a technological problem (MPEP §§ 2106.05 (a), (a) II). See the following:
MPEP 2106.05(a) II: “… it is important to keep in mind that an improvement in the abstract idea itself (e.g. a recited fundamental economic concept) is not an improvement in technology … Merely adding generic computer components to perform the method is not sufficient.”
Intellectual Ventures I LLC v. Capital One Bank (USA), 792 F.3d 1363, 1370 (Fed. Cir. 2015): “... our precedent is clear that merely adding computer functionality to increase the speed or efficiency of the process does not confer patent eligibility on an otherwise abstract idea.”
Customedia Techs. V. Dish Network Corp., 951 F.3d 1359, (Fed. Cir. 2020): “We have held that ‘claiming the improved speed or efficiency inherent with applying the abstract idea on a computer’ was insufficient to render the claims patent eligible as an improvement to computer functionality”.
In conjunction with the previous supporting rationales, MPEP § 2106.05(a) II shows that merely gathering, analyzing, and displaying results using techniques conventional to computer technology is not indicative of a technical solution to a technical problem. See MPEP § 2106.05(a): “Examples that the courts have indicated may not be sufficient to show an improvement to technology include: […] iii. Gathering and analyzing information using conventional techniques and displaying the result, TLI Communications, 823 F.3d at 612-13, 118 USPQ2d at 1747-48;”
In light of the above rationales provided for step 2A Prong II analysis, the Examiner respectfully submits the focus of the claims is not on an improvement in computers as tools, but rather on an abstract idea that uses computers as tools. Considered both separately and as an ordered combination, the additional elements of the independent claims do not integrate the abstract idea into a practical application, as they do no more than represent computers performing functions that correspond to (,i.e., implement,) the acts of the abstract stress testing financial portfolios within a particular technological environment, and do not provide details such that one of ordinary skill in the art would recognize the claims as reflecting an improvement to the functioning of a computer or any other technology or technical field. (Step 2A Prong II of Alice/Mayo Test: NO, the additional elements do not integrate the judicial exception into a practical application). Accordingly, claims 1, 12, and 20 are determined to be directed to an abstract idea.
When analyzed under step 2B20, claims 1, 12, and 20 do not include additional elements that are sufficient to amount to significantly more than the judicial exception. Claims 1, 12, and 20, each when viewed as a whole, do not include elements amounting to significantly more, as their additional elements, each viewed both individually and as an ordered combination, amount to no more than mere instructions to implement the abstract stress testing financial portfolios concept within a particular technological environment – see MPEP §§ 2106.05 (f), (h) and Alice Corp. v. CLS Bank International, 573 U.S. 208, 223-24 (2014). Even though claims 1, 12, and 20 utilize a system and user device comprising a user interface, the manner by which the claims’ additional elements are used is indistinguishable from mere addition of general-purpose computers added post-hoc to the abstract idea recited. Nothing in the claims indicate specific steps undertaken by the computer elements that are beyond conventional functionality of generic client-server architectures being used at a high degree of generality, excepting the abstract idea it is merely used as a tool for – the claimed computer implementation itself is wholly generic when viewed in light of the technological environment of computers and computer networking. Accordingly, when considered both separately and as an ordered combination, none of the elements of the independent claims add significantly more to the abstract idea itself (i.e., an inventive concept), as merely employing computers as tools to automate and/or implement the abstract idea cannot provide significantly more than the judicial exception itself – see BSG Tech LLC vs. BuySeasons, Inc., 899 F.3d 1281, 1290 (Fed. Cir. 2018): “It has been clear since Alice that a Claimed invention’s use of the ineligible concept to which it is directed cannot supply the inventive concept that renders the invention ‘significantly more’ than that ineligible concept”.
Hence, independent claims 1, 12, and 20 are not patent eligible.
In order to further support the aforementioned determinations that the aforementioned additional elements are merely applied and do not provide improvements to the functioning of a computer or to any other technology or technical field under steps 2A Prong II and 2B, Examiner notes the following evidentiary support21:
The following bolded additional elements
A system comprising:
at least one processor;
and a memory coupled to the at least one processor,
wherein the memory stores an account database including … a (scenario) database including … [data] … and instructions that when executed by the at least one processor cause the system to perform,
receiving, … via a user device … [request]
(scenario) database
generating a user interface at the user device that [provides data]
receiving, … via a user device … [request]
outputting … [data] to … the user interface of the (user) device
are merely describing the generic system being used in a manner conventional to the technological environment of computers / computer networking, and merely attempts to limit the use of the abstract idea to a particular technological environment (computers, including generic computer device and user device with user interface), which is insufficient to impart patentability under Alice (See Alice Corp. v. CLS Bank International, 573 U.S. 208, 223-24 (2014): "Neither stating an abstract idea "while adding the words 'apply it,' [...], nor limiting the use of an abstract idea "'to a particular technological environment'", [...] is enough for patent eligibility. Stating an abstract idea while adding the words "apply it with a computer" simply combines those two steps, with the same deficient result"). See also Intellectual Ventures I LLC v. Capital One Bank (USA), N.A., 792 F.3d 1363, 1366, 115 USPQ2d 1636, 1639 (Fed. Cir. 2015) ("An abstract idea does not become nonabstract by limiting the invention to a particular field of use or technological environment, such as the Internet [or] a computer").
In light of the above evidentiary support (items “a.” above), the aforementioned additional elements drawn to computers (e.g., system and user device with user interface) are not sufficient to show an improvement to any technology or other technical field at Steps 2A Prong Two and 2B, as the additional elements, viewed both individually and as an ordered combination, amount to gathering and analyzing information using techniques conventional to both computer technology – See MPEP §§2106.05(a) & 2106.05(a) II citing TLI Communications, 823 F.3d at 612-13, 118 USPQ2d at 1747-48: “Examples that the courts have indicated may not be sufficient to show an improvement to technology include: … Gathering and analyzing information using conventional techniques and displaying the result … ”.
As evidenced by the above, the additional elements generally corresponding to the computer components are not indicative of improvements to the functioning of a computer or to any other technology or technical field under either step 2A Prong II or step 2B, and instead are indicative of the system being merely applied as a tool to carry out the abstract idea (MPEP 2106.05(f)). Even though claims 1, 12, and 20 utilize computer components, nothing in the claims indicate specific steps undertaken by the computers / systems that are beyond conventional functionality of generic computers / computer components being used at a high degree of generality, excepting the abstract idea they are merely used as a tool for. Accordingly, the claimed computer implementation itself is wholly generic, when considered in light of the technological environment of computers.
With respect to the dependent claims, they have each been given the full Alice/Mayo analysis, including analyzing the additional elements both individually and as an ordered combination (if any). The dependent claims are also held patent ineligible under 35 U.S.C. § 101 because of the same reasoning as above, and because the claim limitations of the dependent claims fail to establish that the claims are integrated into a practical application or amount to significantly more. The rationales for the aforementioned determinations are explained further below.
With respect to dependent claims 3, 6-8, 11, 14, and 16-19, their limitations each fail to provide any further additional elements outside the abstract idea, and only further specify abstract details corresponding to the stress testing financial portfolios concept. Furthermore, their limitations do not indicate that the previously mentioned additional elements of their respective parent claims successfully integrate the judicial exception into a practical application or amount to significantly more than the judicial exception itself, either individually or as an ordered combination. Accordingly, claims 3, 6-8, 11, 14, and 16-19 do not integrate the judicial exception into a practical application or amount to significantly more than the judicial exception. Therefore, dependent claims 3, 6-8, 11, 14, and 16-19 are also not patent eligible.
With respect to dependent claims 2 and 13, the additional limitations, when considered individually and as an ordered combination, do not recite additional elements outside of the abstract idea that integrate the judicial exception into a practical application or amount to significantly more than the abstract idea. The claims fail to establish that the previously mentioned additional elements are successfully integrated / amounting to significantly more, either alone or in combination, and the additional elements “the memory stores a … database” and “…storing a …. database” do no more than represent the use of computers as tools to perform the abstract idea and merely limits the use of the abstract idea to a particular technological environment (MPEP §§ 2106.05(f) & 2106.05(h)). Accordingly, when considered as a whole, these claims do not improve the functioning of a computer, or to any other technology or technical field, do not integrate the judicial exception into a practical application, and do not amount to significantly more. Therefore, dependent claims 2 and 13 are also not patent eligible subject matter.
With respect to dependent claims 4 and 15, the additional limitations, when considered individually and as an ordered combination, do not recite additional elements outside of the abstract idea that integrate the judicial exception into a practical application or amount to significantly more than the abstract idea. The claims fail to establish that the previously mentioned additional elements are successfully integrated / amounting to significantly more, either alone or in combination, and the additional elements “…a … database including … [data]”, and “…storing a plurality of … [data] in a … database” do no more than represent the use of computers as tools to perform the abstract idea and merely limits the use of the abstract idea to a particular technological environment (MPEP §§ 2106.05(f) & 2106.05(h)). Accordingly, when considered as a whole, these claims do not improve the functioning of a computer, or to any other technology or technical field, do not integrate the judicial exception into a practical application, and do not amount to significantly more. Therefore, dependent claims 4 and 15 are also not patent eligible subject matter.
With respect to dependent claim 5, it further recites details of the abstract idea per reciting limitations “…in response to the request indicating an alert check: … selecting a set of accounts from the plurality of accounts, wherein the set of accounts are identified in the request; and for each account of the set of accounts, calculating a first outcome metric, identifying a threshold stored … and in response to the first outcome metric being beyond the first threshold, generating and sending a first alert”. The additional elements, “…wherein the instructions when executed by the at least one processor cause the system to perform…”, and “…stored in the (threshold) database” do no more than represent the use of computers as tools to perform the abstract idea and/or merely limit the use of the abstract idea to a particular technological environment (MPEP §§ 2106.05(f) & 2106.05(h)). Accordingly, when considered as a whole, these claims do not improve the functioning of a computer, or to any other technology or technical field, do not integrate the judicial exception into a practical application, and do not amount to significantly more. Therefore, dependent claim 5 is also not patent eligible.
With respect to dependent claim 9, it further recites details of the abstract idea per reciting limitations “… receiving, from the first user …, a request to adjust user settings of an alert, and in response to the receiving the request to adjust the user settings of the alert, obtaining, from the first user …, first input for adjusting user settings of a metric alert to a user threshold, alerting the first user by sending the metric alert to the user … in response to a metric passing the user threshold prior to the metric passing an entity threshold, and outputting the metric alert”. The additional elements, “…wherein the instructions when executed by the at least one processor further cause the system to perform…”, “…via the user device…” and “…obtaining…via the user device…”, and “…in response to the first user logging in to the first account.” do no more than represent the use of computers as tools to perform the abstract idea and/or merely limit the use of the abstract idea to a particular technological environment (MPEP §§ 2106.05(f) & 2106.05(h)). Accordingly, when considered as a whole, these claims do not improve the functioning of a computer, or to any other technology or technical field, do not integrate the judicial exception into a practical application, and do not amount to significantly more. Therefore, dependent claim 9 is also not patent eligible.
In order to further support the stance that claims 5 and 9 (corresponding to the two paragraphs above) are not patent eligible, and merely limit the use of the abstract idea to a particular technological environment, examiner notes United States Patent Application Publication No. US 20170285882 A1 (Hidinger) disclosing in ¶¶20, 32, that computer notification software and ‘GUI elements … they control’ (constituting a “notification surface”) are both known and in use, generally. Hidinger discloses that “typical” versions of these elements constituting the “notification surface” execute in response to events such as login in computing systems: “[¶20] … As discussed in the Background, a variety of notification surfaces are known and in use. … The term “notification surface” as used herein refers to pieces of executable software on a computing device and the graphical user interface (GUI) elements that they generate and control. [¶32] … A typical notification surface will begin executing at boot time, login, etc…”.
With respect to dependent claim 10, it further recites details of the abstract idea per reciting limitations “… provide… a plot of a profit or loss for each outcome metric of the second set of outcome metrics and a total line representing an aggregate profit or loss of the second set of outcome metrics in a second graph, and the first graph and the second graph are output…”. The additional element, “…wherein the user interface at the user device further provides … [graphical data] … to different windows of the user interface”, does no more than represent the use of computers as tools to perform the abstract idea and/or merely limit the use of the abstract idea to a particular technological environment (MPEP §§ 2106.05(f) & 2106.05(h)). Accordingly, when considered as a whole, these claims do not improve the functioning of a computer, or to any other technology or technical field, do not integrate the judicial exception into a practical application, and do not amount to significantly more. Therefore, dependent claim 10 is also not patent eligible.
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.
The following prior art made of record and not relied upon is considered pertinent to applicant's disclosure:
United States Patent Application Publication No. US 20190294633 A1 (Dembo). At least Figs. 11, 12, 31A, 31B, and 70 are pertinent.
United States Patent Publication No. US 10453142 B2 (Mun). At least Fig. 40 is relevant.
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/M.A.M./Examiner, Art Unit 3696
/MATTHEW S GART/Supervisory Patent Examiner, Art Unit 3696
1 See pages 10-11 of Remarks.
2 See page 12 of Remarks.
3 Page 9 of Remarks.
4 Pages 11-12 of Remarks.
5 I.e., a technological solution to a technological problem.
6 Page 11 of Remarks.
7 Page 11 of Remarks: “assuming arguendo that the claims are directed to an
abstract idea, the aforementioned features are certainly a "practical application" of the
alleged abstract [idea] …”.
8 I.e., “significantly more” than the judicial exception.
9 See MPEP § 2106 I.
10 See MPEP §§ 2106.03 I, II.
11 See MPEP §§ 2106.04 I, II, (d) I.
12 See MPEP § 2106.04(a)(2) II
13 See MPEP § 2111.
14 MPEP §2106.07, underline emphasis added: “When evaluating a claimed invention for compliance with the substantive law on eligibility, examiners should review the record as a whole (e.g., the specification, claims, the prosecution history, and any relevant case law precedent or prior art) before reaching a conclusion with regard to whether the claimed invention sets forth patent eligible subject matter.”
15 MPEP §§ 2106.04(a), 2106.04 II A 1
16MPEP §2106.04 II B, underline emphasis added: “For example, in a claim that includes a series of steps that recite mental steps as well as a mathematical calculation, an examiner should identify the claim as reciting both a mental process and a mathematical concept for Step 2A Prong One to make the analysis clear on the record. However, if possible, the examiner should consider the limitations together as a single abstract idea for Step 2A Prong Two and Step 2B ... rather than as a plurality of separate abstract ideas to be analyzed individually.”
18 See ¶76 of Applicant Specification: “…The apparatuses and methods described in this application may be partially or fully implemented … by configuring a general-purpose computer to execute one or more particular functions embodied in computer programs.”
19 See MPEP §§ 2106.05(f)(2) & 2106.05(a) I.
20 See MPEP § 2106.05.
21 MPEP §2106.07, underline emphasis added: “When evaluating a claimed invention for compliance with the substantive law on eligibility, examiners should review the record as a whole (e.g., the specification, claims, the prosecution history, and any relevant case law precedent or prior art) before reaching a conclusion with regard to whether the claimed invention sets forth patent eligible subject matter.”
Prosecution Insights