DETAILED CORRESPONDENCE
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 .
Acknowledgments
This Action is in response to the patent application filed on December 8, 2024. Claims 1-17 are currently pending and have been fully examined.
Claim Objections
With respect to claim 1, the claim recites “a data ingestion module adapted to receive …and subsequently stored…” (emphasis added) The word “stored” should be replaced with “store” to indicate a function performed by the data ingestion module subsequent to the receiving.
With respect to claim 2, the claim recites “wherein the first data sets include at least one performance, and/or behavioral information, including, …” The (,) after the word “information” should be removed.
With respect to claim 5, the hyphen in “data-sources” should be removed.
With respect to claim 16, the claim recites “analyzing the ingested first data sets and the plurality of second data sets.” There is insufficient antecedent basis for “the ingested first data sets” in the claim. Correction is required in order to avoid a rejection for lack of antecedent basis.
With respect to claims 16, lines 8 and 24 the period and comma after “via” (via.,) should be removed.
Note 1: Applicant is reminded that 37 C.F.R. 1.75(i) requires that claims must begin with a capital letter and end with a period (.), and periods may not be used elsewhere in the claims except for abbreviations. See MPEP § 608.01(m).
Note 2: The filed papers in this application are not “[p]resented in a form having sufficient clarity and contrast between the paper and the writing thereon to permit the direct reproduction of readily legible copies in any number by use of photographic, electrostatic, photo-offset, and microfilming processes and electronic capture by use of digital imaging and optical character recognition.” (37 CFR 1.152.)
Applicant is encouraged to ensure subsequent filings are more legible.
Claim Interpretation
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.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
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.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Such claim limitation(s) is/are:
In claim 1:
a data ingestion module adapted to receive the first data sets from the plurality of data collection units…and subsequently stored within a central repository;
a data authentication module adapted to verify and validate the origin and the integrity of collected first data sets and the plurality of second data sets,
a data analysis module adapted to analyze the ingested data sets to extract actionable insights, trends, and patterns from there and transform the ingested data into structured information with corresponding metadata…
an ontology generator module adapted to create and maintain a dynamic ontology for the ingested data sets in a real time…
In claim 7:
a data pedigree tracking submodule adapted to document a complete lifecycle of ingested data sets,
In claim 9:
the ontology generator module collaborates with human experts…
In claim 10:
a proceeds distribution sub-module adapted to distribute compensation automatically to data owner,
a rights management sub-module adapted to control data access permissions,
a regulatory compliance sub-module adapted to ensure adherence to privacy laws,
In claim 11:
a multi-tenant access control system adapted to manage a stakeholder access levels;
a data monetization module adapted to facilitate various transaction types;
a smart contract generation module adapted to automate data usage agreements;
In claim 13:
an insights generation sub-module adapted to identify patterns and trends;
a predictive analytics sub-module, adapted to forecast performance metrics,
In claim 14:
a notification module notifying the plurality of users…
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
However, the Specification lacks corresponding structures for the claim limitations. MPEP 2181(II)(C) establishes the phrase “The Supporting Disclosure Clearly Links or Associates the Disclosed Structure, Material, or Acts to the Claimed Function. The structure disclosed in the written description of the specification is the corresponding structure only if the written description of the specification or the prosecution history clearly links or associates that structure to the function recited in a means- (or step-) plus-function claim limitation under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.”
If applicant does not intend to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1-15 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
With respect to claim 1, the claim recites “a data ingestion module adapted to receive the first data sets from the plurality of data collection units…and subsequently stored within a central repository,” “a data authentication module adapted to verify and validate the origin and the integrity of collected first data sets and the plurality of second data sets,” “a data analysis module adapted to analyze the ingested data sets to extract actionable insights, trends, and patterns from there and transform the ingested data into structured information with corresponding metadata…” “an ontology generator module adapted to create and maintain a dynamic ontology for the ingested data sets in a real time…”
However, a structure and/or an algorithm for performing the functions “receiving…and subsequently stored…”, “verifying and validating,” “analyzing,” and “creating and maintaining” must be described with sufficient detail so that one of ordinary skill in the art would understand how the inventor intended the function to be performed. See MPEP §§ 2163.02 and 2181, subsection IV. Therefore, the claim lacks written description because the functional language specify a desired result but the specification does not sufficiently describe how the functions are performed.
With respect to claim 7, the claim recites “a data pedigree tracking submodule adapted to document a complete lifecycle of ingested data sets.”
However, a structure and/or an algorithm for performing the functions “documenting,” must be described with sufficient detail so that one of ordinary skill in the art would understand how the inventor intended the function to be performed. See MPEP §§ 2163.02 and 2181, subsection IV. Therefore, the claim lacks written description because the functional language specify a desired result but the specification does not sufficiently describe how the functions are performed.
With respect to claim 9, the claim recites “the ontology generator module collaborates with human experts….”
However, a structure and/or an algorithm for performing the functions “collaborating,” must be described with sufficient detail so that one of ordinary skill in the art would understand how the inventor intended the function to be performed. See MPEP §§ 2163.02 and 2181, subsection IV. Therefore, the claim lacks written description because the functional language specify a desired result but the specification does not sufficiently describe how the functions are performed.
With respect to claim 10, the claim recites “a proceeds distribution sub-module adapted to distribute compensation automatically to data owner,” “a rights management sub-module adapted to control data access permissions,” and “a regulatory compliance sub-module adapted to ensure adherence to privacy laws.”
However, a structure and/or an algorithm for performing the functions “distributing” “controlling,” and “insuring” must be described with sufficient detail so that one of ordinary skill in the art would understand how the inventor intended the function to be performed. See MPEP §§ 2163.02 and 2181, subsection IV. Therefore, the claim lacks written description because the functional language specify a desired result but the specification does not sufficiently describe how the functions are performed.
With respect to claim 11, the claim recites “a multi-tenant access control system adapted to manage a stakeholder access levels,” “a data monetization module adapted to facilitate various transaction types,” and “a smart contract generation module adapted to automate data usage agreements.”
However, a structure and/or an algorithm for performing the functions “managing,” “facilitating” and “automating” must be described with sufficient detail so that one of ordinary skill in the art would understand how the inventor intended the function to be performed. See MPEP §§ 2163.02 and 2181, subsection IV. Therefore, the claim lacks written description because the functional language specify a desired result but the specification does not sufficiently describe how the functions are performed.
With respect to claim 13, the claim recites “an insights generation sub-module adapted to identify patterns and trends,” and “a predictive analytics sub-module, adapted to forecast performance metrics.”
However, a structure and/or an algorithm for performing the functions “identifying,” and “forecasting” must be described with sufficient detail so that one of ordinary skill in the art would understand how the inventor intended the function to be performed. See MPEP §§ 2163.02 and 2181, subsection IV. Therefore, the claim lacks written description because the functional language specify a desired result but the specification does not sufficiently describe how the functions are performed.
With respect to claim 14, the claim recites “a notification module notifying the plurality of users...”
However, a structure and/or an algorithm for performing the function “notifying” must be described with sufficient detail so that one of ordinary skill in the art would understand how the inventor intended the function to be performed. See MPEP §§ 2163.02 and 2181, subsection IV. Therefore, the claim lacks written description because the functional language specify a desired result but the specification does not sufficiently describe how the functions are performed.
Dependent claims 2-15 are also rejected for incorporating the limitations of rejected claim 1.
Dependent claim 12 is also rejected for incorporating the limitations of rejected claim 11.
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1-17 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
With respect to claim 1, the claim recitations “a data ingestion module adapted to receive the first data sets from the plurality of data collection units…and subsequently stored within a central repository,” “a data authentication module adapted to verify and validate the origin and the integrity of collected first data sets and the plurality of second data sets,” “a data analysis module adapted to analyze the ingested data sets to extract actionable insights, trends, and patterns from there and transform the ingested data into structured information with corresponding metadata…” “an ontology generator module adapted to create and maintain a dynamic ontology for the ingested data sets in a real time…” invoke 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. However, the written description fails to disclose the corresponding structure, material, or acts for performing the entire claimed functions and to clearly link the structure, material, or acts to the function. Therefore, the claim is indefinite and is rejected under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph.
Applicant may:
(a) Amend the claim so that the claim limitation will no longer be interpreted as a limitation under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph;
(b) Amend the written description of the specification such that it expressly recites what structure, material, or acts perform the entire claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(c) Amend the written description of the specification such that it clearly links the structure, material, or acts disclosed therein to the function recited in the claim, without introducing any new matter (35 U.S.C. 132(a)).
If applicant is of the opinion that the written description of the specification already implicitly or inherently discloses the corresponding structure, material, or acts and clearly links them to the function so that one of ordinary skill in the art would recognize what structure, material, or acts perform the claimed function, applicant should clarify the record by either:
(a) Amending the written description of the specification such that it expressly recites the corresponding structure, material, or acts for performing the claimed function and clearly links or associates the structure, material, or acts to the claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(b) Stating on the record what the corresponding structure, material, or acts, which are implicitly or inherently set forth in the written description of the specification, perform the claimed function. For more information, see 37 CFR 1.75(d) and MPEP §§ 608.01(o) and 2181.
With respect to claim 7, the claim recitation “a data pedigree tracking submodule adapted to document a complete lifecycle of ingested data sets,” invoke 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. However, the written description fails to disclose the corresponding structure, material, or acts for performing the entire claimed functions and to clearly link the structure, material, or acts to the function. Therefore, the claim is indefinite and is rejected under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph.
Applicant may:
(a) Amend the claim so that the claim limitation will no longer be interpreted as a limitation under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph;
(b) Amend the written description of the specification such that it expressly recites what structure, material, or acts perform the entire claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(c) Amend the written description of the specification such that it clearly links the structure, material, or acts disclosed therein to the function recited in the claim, without introducing any new matter (35 U.S.C. 132(a)).
If applicant is of the opinion that the written description of the specification already implicitly or inherently discloses the corresponding structure, material, or acts and clearly links them to the function so that one of ordinary skill in the art would recognize what structure, material, or acts perform the claimed function, applicant should clarify the record by either:
(a) Amending the written description of the specification such that it expressly recites the corresponding structure, material, or acts for performing the claimed function and clearly links or associates the structure, material, or acts to the claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(b) Stating on the record what the corresponding structure, material, or acts, which are implicitly or inherently set forth in the written description of the specification, perform the claimed function. For more information, see 37 CFR 1.75(d) and MPEP §§ 608.01(o) and 2181.
With respect to claim 9, the claim recitation “the ontology generator module collaborates with human experts….” invoke 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. However, the written description fails to disclose the corresponding structure, material, or acts for performing the entire claimed functions and to clearly link the structure, material, or acts to the function. Therefore, the claim is indefinite and is rejected under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph.
Applicant may:
(a) Amend the claim so that the claim limitation will no longer be interpreted as a limitation under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph;
(b) Amend the written description of the specification such that it expressly recites what structure, material, or acts perform the entire claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(c) Amend the written description of the specification such that it clearly links the structure, material, or acts disclosed therein to the function recited in the claim, without introducing any new matter (35 U.S.C. 132(a)).
If applicant is of the opinion that the written description of the specification already implicitly or inherently discloses the corresponding structure, material, or acts and clearly links them to the function so that one of ordinary skill in the art would recognize what structure, material, or acts perform the claimed function, applicant should clarify the record by either:
(a) Amending the written description of the specification such that it expressly recites the corresponding structure, material, or acts for performing the claimed function and clearly links or associates the structure, material, or acts to the claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(b) Stating on the record what the corresponding structure, material, or acts, which are implicitly or inherently set forth in the written description of the specification, perform the claimed function. For more information, see 37 CFR 1.75(d) and MPEP §§ 608.01(o) and 2181.
With respect to claim 10, the claim recitations “a proceeds distribution sub-module adapted to distribute compensation automatically to data owner,” “a rights management sub-module adapted to control data access permissions,” and “a regulatory compliance sub-module adapted to ensure adherence to privacy laws,” invoke 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. However, the written description fails to disclose the corresponding structure, material, or acts for performing the entire claimed functions and to clearly link the structure, material, or acts to the function. Therefore, the claim is indefinite and is rejected under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph.
Applicant may:
(a) Amend the claim so that the claim limitation will no longer be interpreted as a limitation under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph;
(b) Amend the written description of the specification such that it expressly recites what structure, material, or acts perform the entire claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(c) Amend the written description of the specification such that it clearly links the structure, material, or acts disclosed therein to the function recited in the claim, without introducing any new matter (35 U.S.C. 132(a)).
If applicant is of the opinion that the written description of the specification already implicitly or inherently discloses the corresponding structure, material, or acts and clearly links them to the function so that one of ordinary skill in the art would recognize what structure, material, or acts perform the claimed function, applicant should clarify the record by either:
(a) Amending the written description of the specification such that it expressly recites the corresponding structure, material, or acts for performing the claimed function and clearly links or associates the structure, material, or acts to the claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(b) Stating on the record what the corresponding structure, material, or acts, which are implicitly or inherently set forth in the written description of the specification, perform the claimed function. For more information, see 37 CFR 1.75(d) and MPEP §§ 608.01(o) and 2181.
With respect to claim 11, the claim recitations “a multi-tenant access control system adapted to manage a stakeholder access levels,” “a data monetization module adapted to facilitate various transaction types,” and “a smart contract generation module adapted to automate data usage agreements,” invoke 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. However, the written description fails to disclose the corresponding structure, material, or acts for performing the entire claimed functions and to clearly link the structure, material, or acts to the function. Therefore, the claim is indefinite and is rejected under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph.
Applicant may:
(a) Amend the claim so that the claim limitation will no longer be interpreted as a limitation under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph;
(b) Amend the written description of the specification such that it expressly recites what structure, material, or acts perform the entire claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(c) Amend the written description of the specification such that it clearly links the structure, material, or acts disclosed therein to the function recited in the claim, without introducing any new matter (35 U.S.C. 132(a)).
If applicant is of the opinion that the written description of the specification already implicitly or inherently discloses the corresponding structure, material, or acts and clearly links them to the function so that one of ordinary skill in the art would recognize what structure, material, or acts perform the claimed function, applicant should clarify the record by either:
(a) Amending the written description of the specification such that it expressly recites the corresponding structure, material, or acts for performing the claimed function and clearly links or associates the structure, material, or acts to the claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(b) Stating on the record what the corresponding structure, material, or acts, which are implicitly or inherently set forth in the written description of the specification, perform the claimed function. For more information, see 37 CFR 1.75(d) and MPEP §§ 608.01(o) and 2181.
With respect to claim 13, the claim recitations “an insights generation sub-module adapted to identify patterns and trends,” and “a predictive analytics sub-module, adapted to forecast performance metrics,” invoke 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. However, the written description fails to disclose the corresponding structure, material, or acts for performing the entire claimed functions and to clearly link the structure, material, or acts to the function. Therefore, the claim is indefinite and is rejected under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph.
Applicant may:
(a) Amend the claim so that the claim limitation will no longer be interpreted as a limitation under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph;
(b) Amend the written description of the specification such that it expressly recites what structure, material, or acts perform the entire claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(c) Amend the written description of the specification such that it clearly links the structure, material, or acts disclosed therein to the function recited in the claim, without introducing any new matter (35 U.S.C. 132(a)).
If applicant is of the opinion that the written description of the specification already implicitly or inherently discloses the corresponding structure, material, or acts and clearly links them to the function so that one of ordinary skill in the art would recognize what structure, material, or acts perform the claimed function, applicant should clarify the record by either:
(a) Amending the written description of the specification such that it expressly recites the corresponding structure, material, or acts for performing the claimed function and clearly links or associates the structure, material, or acts to the claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(b) Stating on the record what the corresponding structure, material, or acts, which are implicitly or inherently set forth in the written description of the specification, perform the claimed function. For more information, see 37 CFR 1.75(d) and MPEP §§ 608.01(o) and 2181.
With respect to claim 14, the claim recitation “a notification module notifying the plurality of users...” invokes 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. However, the written description fails to disclose the corresponding structure, material, or acts for performing the entire claimed functions and to clearly link the structure, material, or acts to the function. Therefore, the claim is indefinite and is rejected under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph.
Applicant may:
(a) Amend the claim so that the claim limitation will no longer be interpreted as a limitation under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph;
(b) Amend the written description of the specification such that it expressly recites what structure, material, or acts perform the entire claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(c) Amend the written description of the specification such that it clearly links the structure, material, or acts disclosed therein to the function recited in the claim, without introducing any new matter (35 U.S.C. 132(a)).
If applicant is of the opinion that the written description of the specification already implicitly or inherently discloses the corresponding structure, material, or acts and clearly links them to the function so that one of ordinary skill in the art would recognize what structure, material, or acts perform the claimed function, applicant should clarify the record by either:
(a) Amending the written description of the specification such that it expressly recites the corresponding structure, material, or acts for performing the claimed function and clearly links or associates the structure, material, or acts to the claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(b) Stating on the record what the corresponding structure, material, or acts, which are implicitly or inherently set forth in the written description of the specification, perform the claimed function. For more information, see 37 CFR 1.75(d) and MPEP §§ 608.01(o) and 2181.
Dependent claims 2-15 are also rejected for incorporating the limitations of rejected claim 1.
Dependent claim 12 is also rejected for incorporating the limitations of rejected claim 11.
With respect to claim 1, the claim recites “one or more databases, operatively coupled to the one or more processors that when executed cause the one or more processors to perform operations…”
This makes the scope of the claim unclear because the claim recitation asserts that the one or more databases, which are known to be a type of storage, are being executed, and when executed perform actions. It is not clear how a database is executed by a processor. However, it is actually computer program/instructions stored in memory (or on the database) that are executed to perform operations. Therefore, the scope of the claim is unclear and one of ordinary skill in the art would not be reasonably appraised of the scope of the claim.
With respect to claim 1, the claim recites “…when executed cause the one or more processors to perform operations comprising: a plurality of data-collection units… a back-end server… a data exchange platform…”
This makes the scope of the claim unclear because the claim recitation asserts that the operations performed by the one or more processors are “data collection units” “a back-end server” and “a data exchange platform.” However, it makes no sense to refer to structural entities such as data collection units, servers or platforms as “operations.”
In addition, the scope of the claim is unclear because the relation between the “one or more processors” and the other recited components such as “a plurality of data-collection units” “a back-end server” and “a data exchange platform” is not understood from the claim limitations. For example, it is not clear whether the one or more processors, the plurality of data collection unites, and the back-end server are separate components or some are parts of the others. (e.g., one or more processors parts of the server and/or the data collection units.)
Therefore, the scope of the claim is unclear and one of ordinary skill in the art would not be reasonably appraised of the scope of the claim.
With respect to claim 6, the claim recites: “wherein the first and second communication medium include 5G, private 5G, 6G, Wi-Fi, BLT and beacons, WiFi-6, LPWA, Peer to Peer, Audio, Voice, Alexa, Siri, Google Voice, POS, and Scanners.” Here, as discussed in MPEP 2173.05(u), the trademarks “Alexa,” “Siri,” “Google Voice” are used in a claim as a limitation to identify or describe a particular service (the “communication medium”) and the claim does not comply with the requirements of the 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph. Ex parte Simpson, 218 USPQ 1020 (Bd. App. 1982). The claim scope is uncertain since the trademark or trade name cannot be used properly to identify any particular service, but is used as an identification of a source or origin, in this case the company that provides the communication medium. Thus, the use of trademarks “Alexa,” “Siri,” “Google Voice” in the claim to identify or describe a service not only renders the claim indefinite, but also constitutes an improper use of the trademark or trade name.
In Addition, the examiner notes that the services “Alexa,” “Siri,” and “Google Voice” are voice assistances service but are not themselves a “communication medium” in the same way that technologies like 5G or Wi-Fi are considered as communication mediums.
Dependent claims 2-15 are also rejected for incorporating the limitations of rejected claim 1.
With respect to claim 16, the claim recites “receiving a first data set from one or more users …” The claim further recites “establishing a communicable connection to transfer the received first data sets…comprising: receiving the first data sets…”
This makes the scope of the claim unclear, because it is not clear how establishing a connection comprises receiving data sets that have been previously received in the previous claim recitation. In other words, according to the claim recitations, the first data set are received before a communicable connection is established. Are the data sets received twice, once prior to establishing and for a second time after establishing? Therefore, the scope of the claim is unclear and one of ordinary skill in the art would not be reasonably appraised of the scope of the claim.
With respect to claim 16, the claim recites “characterized in that, when a third party requests access to a user's performance data, a smart contract is automatically executed that validates the request, facilitates secure data transfer to the third party, and subsequently provides compensation to the corresponding user.” Claim 16 is a method claim and it is not clear the claim limitation starting with “characterized in that…” refers to which part of the claim recitations, and that what is the thing that is “characterized.” Therefore, the scope of the claim is unclear and one of ordinary skill in the art would not be reasonably appraised of the scope of the claim.
Dependent claim 17 is also rejected for incorporating the limitations of rejected claim 16.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
The following is a quotation of pre-AIA 35 U.S.C. 103(a) which forms the basis for all obviousness rejections set forth in this Office action:
(a) A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. Patentability shall not be negatived by the manner in which the invention was made.
The factual inquiries set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claims 1-6 and 16 are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Reiley (US Patent Publication No. 2013/0326406,) in view of Faris (US Patent No. 6,677,858.)
With respect to claims 1 and 16, Reiley teach:
receiving a first data set from one or more users, wherein the received first data set pertaining to at least one performance, and/or behavioral information of the one or more of the plurality of users; (users behavior data is collected: [0044]-[0045])
establishing a communicable connection to transfer the received first data sets via a first communication medium, comprising: (communication to a content providing engine: FIG. 1, [0043])
The examiner notes that the claim recitation “to transfer the received first data sets…” indicates intended use of a communication medium and therefore does not further limit the scope of the claim.
receiving the first data sets, and a plurality of second data sets from a plurality of data sources and subsequently storing them within a central repository; (user behavioral data and content data (second data sets) are received and recorded in database 110: FIG. 2, [0053]-[0054])
analyzing the ingested first data sets and the plurality of second data sets to extract actionable insights, trends, and patterns from there and transform the ingested data into structured information with corresponding metadata including but not limited to event, location, time, and individual identity; (behavioral data is analyzed to determine trends and behavioral patterns: [0053]-[0054], [0059], [0073], using metadata including event time, date, identity, to generate personalized highlights(structured information):[0047], [0059])
The examiner notes that the claim recitation “to extract …and transform…” indicates intended use of the analyzing and therefore does not further limit the scope of the claim.
creating and maintaining a dynamic ontology for the ingested first data sets and the plurality of second data sets, wherein the structured information is categorized and contextualized in accordance with the dynamic ontology; (personalized content is generated based on behavioral analysis:{0052]-[0053], [0061]-[0062]
The examiner notes that a definition for a “dynamic ontology” is not provided in the claims or in the Specification and therefore, the personalized content is interpreted as such. In addition, the examiner notes that the claim recitation “the structured information is categorized and contextualized …” indicates intended not-positively recited limitations and therefore does not further limit the scope of the claim, because the functions “categorizing” and “contextualizing” are not positively recited.
establishing a communicable connection via., a second communication medium to receive contextualized data; (various communication mediums are used: [0037]-[0038])
The examiner notes that the claim recitation “to receive contextualized data” indicates intended use of a communication medium and therefore does not further limit the scope of the claim.
Reiley does not explicitly teach; however, Faris teaches:
verifying and validating the origin and the integrity of collected first data sets and the plurality of second data sets; (verifying authenticity of the collected data: (Col. 79 ll. 12-25, the collected data is human performance data: Col. 11 ll. 1-16)
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to incorporate validating collected performance data, as taught by Faris, into the data personalization system by analyzing behavior data and deriving trends in data, as taught by Reiley, in order to ensure authenticity of collected data prior to data analysis.
Reiley and Faris do not explicitly teach:
characterized in that, when a third party requests access to a user's performance data, a smart contract is automatically executed that validates the request, facilitates secure data transfer to the third party, and subsequently provides compensation to the corresponding user.
However, the “characterizing” limitation does not positively recite a further step of the claimed method or limit another positively recited step, and therefore does not distinguish the claim from the prior art.
With respect to claim 2, Reiley and Faris teach the limitations of claim 1.
Moreover, Riley teaches:
wherein the first data sets include at least one performance, and/or behavioral information, ([0044])
Reiley and Faris do not explicitly teach:
information including, user age, position, performance, level, playtime, projected potential level, experience, number of games played, number of minutes played, experience in domestic/national leagues, and contract situation.
However, claim recitation indicates non-functional descriptive material that merely describes data and therefore does not further limit the scope of the claim.
With respect to claim 3, Reiley and Faris teach the limitations of claim 1.
Moreover, Riley teaches:
wherein the plurality of data collection units includes but is not limited to IoT sensors, edge devices, cell phones, wearable devices, cameras, sports-specific monitoring equipment for real-time metrics capture, smart city sensors, venues, kiosks, POS, VR, AR, XR, MR, and digital signage. (data collected by client devices: [0043], [0063])
With respect to claim 4, Reiley and Faris teach the limitations of claim 1.
Moreover, Riley teaches:
wherein the second data sets include user historical data, biometric data, fan engagement data, tracking data, and team performance data. (history data: [0049], tracker data: [0055])
The examiner notes that the claim recitation indicates non-functional descriptive material that merely describes data and therefore does not further limit the scope of the claim.
With respect to claim 5, Reiley and Faris teach the limitations of claim 1.
Moreover, Riley teaches:
wherein the plurality of data sources includes, various user information database selected from but not limited to historical performance databases, user profiles databases, team profiles databases, social media databases and any other third party data-sources. (user profile: [0045], [0051])
The examiner notes that the claim recitation indicates non-functional descriptive material that merely describes data and therefore does not further limit the scope of the claim.
With respect to claim 6, Reiley and Faris teach the limitations of claim 1.
Moreover, Riley teaches:
wherein the first and second communication medium include 5G, private 5G, 6G, Wi-Fi, BLT and beacons, WiFi-6, LPWA, Peer to Peer, Audio, Voice, Alexa, Siri, Google Voice, POS, and Scanners. (audio/video communication: [0043])
Rejection of Dependent Claims 7-15 and 17.
The examiner notes that based on the 112 issues, prior art is not applied to claims 7-15 and 17. However, this is not necessarily an indication that the claims are allowable over the prior art because the 112 issues prevented a thorough and complete prior art search. Upon a resolution of the 112, including unclarity issues, a modified search will be required.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Miyake (US 2024/0259416,) teaches analyzing user behavior data to determine patterns.
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/SIMA ASGARI/Examiner, Art Unit 3698
/PATRICK MCATEE/Supervisory Patent Examiner, Art Unit 3698