AIA
Status of claims
Claims 1, 3-21 examined
Canceled 2
New 21
Amended 1 3-18 20
Response to Remarks
Applicant amendment remarks fully considered but unfortunately not fully persuasive.
Double patenting maintained
101
As to applicant argument that
No abstract idea
Examiner
See A computer-implemented system for enabling anonymous loan shopping – Mortgage Grader, 811 F.3d at 1318, 117 USPQ2d at 1695. MPEP 2106.
Why cannot be performed in the mind (remarks p10 bottom)? No support is given for that assertion.
As to applicant argument that
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Examiner
Applicant is to an abstract idea, and ‘apply it’ by computer. And machine learning doesn’t even need a machine necessarily, regression and least squares fit can be done in one’s head or with paper and pencil for small data sets.
Applicant distinguishes with Example 39 but applicant points out that example had a neural net; applicant’s claims don’t.
In asserting “no human activity that can abstractly perform the computational functions”, Applicant conflates and distorts the steps of Alice/Mayo.
Bidding process claimed is capable for being performed by a human.
ML as presently claimed is a generic element generally applied. And it’s irrefutable that ML can be done mentally with a handful or more of data points (simple linear regression is an example).
There’s no integration into a practical application. Applicant simply ‘automates’ a human process (MPEP 2106.05 a f g)
The claims’s bidding is math, mental steps, organizing human activity.
As to applicant argument that
Claim 1 requires a processor (applicant’s emphasis)
Examiner
Applicant conflates steps in by Mayo/Alice. We instead have to follow the Supreme Court.
Applicant’s bidding process is an abstract idea.
Additional elements are processor, ML but these are generic elements generally applied.
By applicant’s logic, Alice Corp v CLS and Bilski should have been 101 eligible merely thru wordsmithing to add a computer. And, says Applicant, the processor adds a meaningful limit.
As to applicant argument that
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Examiner
Applicant’s claim addresses a business problem with a business solution, albeit by computer is used to ‘apply it’, automating the business solution. MPEP 2106. Applicant didn’t improve the technical field (remarks p17) but rather simply used a computer as a tool for automation.
But as to that result, see
Alice Corp. v. CLS Bank Int’l, 573 U.S. 208 (2014)
“Such a result would make the determination of patent eligibility “depend simply on the draftsman’s art,” Flook, supra, at 593, thereby eviscerating the rule that “ ‘[l]aws of nature, natural phenomena, and abstract ideas are not patentable,’ ” Myriad, 569 U. S., at ___ (slip op., at 11).”
If Applicant were right, each of Alice Corp and Bilski would have been decided for the patent holder.
101 maintained.
ANTICIPATION DOUBLE PATENTING
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP §§ 706.02(l)(1) - 706.02(l)(3) for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/process/file/efs/guidance/eTD-info-I.jsp.
The claims are rejected on the ground of nonstatutory double patenting as unpatentable over claims of US Serial No. 18591797
Although the claims are not identical, they are not patentably distinct from each other.
It would be obvious looking at 18591797’s listing to see that as the underlying for a bid and conversely looking at 18984310 that there’d be an underlying listing for the bid and basically what it would have been composed of. Analogizing to Bilski, it would have been obvious given a put to hedge with a call and obvious given a call to hedge with a put.
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
The claimed invention is directed to a judicial exception (i.e., a law of nature, a natural phenomenon, or an abstract idea) without significantly more. The claim(s) is/are directed to one or more abstract idea(s). The claim(s) does/do not include additional elements that are sufficient to amount to significantly more than the abstract idea(s).
Step 1: (MPEP 2106.03)
The claims and dependents are directed to statutory classes (1 machine, 14 process, 20 manufacture). The claims herein are directed to subject matter which would be classified under one of the listed statutory classifications (i.e., 2019 Revised Patent Subject Matter Eligibility Guidance (hereinafter “PEG”) “PEG” Step 1=Yes).
Step 2A, Prong One: Evaluating whether the claim(s) recite(s) a judicial exception -- law of nature, natural phenomenon, abstract idea. (MPEP 2106.04).
Claim 1
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Collecting info, analyzing it, displaying certain results. Elec. Power Group (CAFC 2016)
Independent Claims all similar.
Additional elements are generally applied and generic processor, memory, computing device, machine learning.
See Carnegie Mellon Machine Learning from 1984 article attached.
CERTAIN METHODS OF ORGANIZING HUMAN ACTIVITY
MENTAL STEPS
Alice clearinghouse for bids via computer
Bilski hedge bids via computer
Here marketing bids, mental steps, math via computer
The Claims: rejected under 35 U.S.C. 101 as directed to an abstract idea (Certain Methods of Organizing Human Activity) without significantly more.
The claims are directed to CERTAIN METHODS OF ORGANIZING HUMAN BEHAVIOR.
1) managing personal behavior or relationships or interactions between people
2) fundamental economic practice and a commercial interaction
3) long-standing commercial practice. The additional elements are claimed at a high level of generality. Applicant simply computer implements a business process, solving a business problem not a technical problem.
The mental steps don’t need a computer.
Here, the innovative concept is an abstract idea using additional elements which are generic and generally applied. These additional elements do not add significantly more.
Step 2A, Prong Two: Identifying whether there are any additional elements recited in the claim beyond the judicial exception(s); and then evaluating those additional elements individually and in combination to determine whether they integrate the exception into a practical application. Prong Two distinguishes claims that are "directed to" the recited judicial exception from claims that are not "directed to" the recited judicial exception. (MPEP 2106.04).
The claim says one is to take the idea and “apply it” with generic elements generally applied.
This judicial exception is not integrated into a practical application. In particular, the claim only recites an additional elements – e.g. to perform data gathering, math, mental steps. The additional elements e.g. is recited at a high-level of generality (i.e., as a generic processor performing a generic computer function of ranking information based on a determined amount of use) such that it amounts no more than mere instructions to apply the exception using a generic computer component. Accordingly, this additional element does not integrate the abstract idea into a practical application because it does not impose any meaningful limits on practicing the abstract idea. The additional elements add MPEP 2106.05 is “iii. Mere automation of manual processes”. See (MPEP 21056.05 “vi. Instructions to display two sets of information on a computer display in a non-interfering manner”).
Dependent claims
2 – 13, 15-19 21 -- the idea
Step 2B: Identifying whether there are any additional elements (features/limitations/steps) recited in the claim beyond the judicial exception(s), and then evaluating those additional elements individually and in combination to determine whether they contribute an inventive concept (i.e., amount to significantly more than the judicial exception(s)). (MPEP 2106.05)
The claim does not include additional elements that are sufficient to amount to significantly more than the judicial exception. As discussed above with respect to integration of the abstract idea into a practical application, the additional elements amount to no more than mere instructions to apply the exception using a generic computer component. See (MPEP 21056.05 “vi. Instructions to display two sets of information on a computer display in a non-interfering manner”). Mere instructions to apply an exception using a generic computer component cannot provide an inventive concept. The claim is not patent eligible.
The additional elements are not sufficient to amount to significantly more than the judicial exception because the claims do not provide improvements to another technology or technical field, improvements to the functioning of the computer itself, and do not provide meaningful limitations beyond general linking the use of an abstract idea to a particular technological environment. The limitations (those beyond the abstract idea) do not improve the technical field that the abstract idea limitations invoke. Moreover, these generic limitations do not constitute significantly more because they are simply an attempt to limit the abstract idea to a particular technological environment, not meaningful limitations beyond generally linking the use of an abstract idea to a particular technological environment. See Alice Corp p 16 of slip op. noting that none of the hardware recited "offers a meaningful limitation beyond generally linking ‘the use of the [method] to a particular technological environment', that is implementation via computers" (citing Bilski 561 US at 610).
Here, the claims neither improve the technological infrastructure nor provide particular solutions to challenges. Rather, in ordered combination the claim limitations spell out the steps of budgeting (Int. Ventures v. Cap One Bank ‘137 patent) using generic technology (storage, computer, medium, processor – stated at a high level of generality Fig 8-9 and corresponding text). In addition to these indisputably generic features, Applicant did not invent any of those features, and the claims do not recite them in a manner that produces generic use of these known features. DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245, 1258 (Fed. Cir. 2014). When viewed as an ordered combination, the proposed claims recite no more than the sort of generic computer components employed in a customary manner that we have held insufficient to transform the abstract idea into a patent-eligible invention. Intellectual Ventures I LLC v. Symantec Corp., 838 F.3d 1307, 1321 (Fed. Cir. 2016).
During prosecution, applicant has an opportunity and a duty to amend ambiguous claims to clearly and precisely define the metes and bounds of the claimed invention The claim places the public on notice of the scope of the patentee’s right to exclude See, eg, Johnson & Johnston Assoc Inc v RE Serv Co, 285 F3d 1046, 1052, 62 USPQ2d 1225, 1228 (Fed Cir 2002) (en banc) As stated in Halliburton Energy Servs, Inc v M-I LLC, 514 F3d 1244, 1255, 85 USPQ2d 1654, 1663 (CAFC 2008):
“We note that the patent drafter is in the best position to resolve the ambiguity in the patent claims, and it is highly desirable that patent examiners demand that applicants do so in appropriate circumstances so that the patent can be amended during prosecution rather than attempting to resolve the ambiguity in litigation”
POC
Pertinent prior art cited by not relied upon:
Smith US20220253874
Any inquiry concerning this communication or earlier communications from the examiner should be directed to BREFFNI X BAGGOT whose telephone number is (571)272-7154. The examiner can normally be reached M-F 8a-10a, 12p-6p.
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BREFFNI BAGGOT
Primary Examiner
Art Unit 3621
/BREFFNI BAGGOT/Primary Examiner, Art Unit 3621
Prosecution Insights