DETAILED ACTION
Notice of Pre-AIA or AIA Status
1. The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
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.
2. Claims 1-20 are rejected under 35 U.S.C. 101 because the claimed invention recites an abstract idea without significantly more. Using the limitations in claim 1 to illustrate, the claim recite(s) the limitations of: categorize, in a log, the plurality of messages according to timestamps; weight, in the log, the plurality of message according to size and/or quantity; and identify a highest message user out of the plurality of terminal devices based on the log including the categorized and weighted plurality of messages.
The limitations, as drafted, is a process that, under its broadest reasonable interpretation, covers certain methods of organizing human activity, in particular, fundamental economic practices, but for the recitation of generic computer components. The claimed invention allows for an improved exchange of information between the electronic financial exchange and subscribers which is a certain method of organizing human activity (commercial or legal interactions). The mere nominal recitation of an apparatus comprising: a memory; and a processor disposed in communication with the memory, and configured to issue a plurality of processing instructions stored in the memory that causes the apparatus to perform the claimed functions, and terminal devices do not take the claim out of the methods of organizing human activity grouping. Thus, under Eligibility Step 2A, prong one, (MPEP §2106.04(a)), the claims recite an abstract idea.
Under Eligibility Step 2A, prong two, (MPEP §2106.04(d)), this judicial exception is not integrated into a practical application. The claim recites the additional elements: receiving a plurality of messages from each of a plurality of terminal devices. The receiving steps/function is recited at a high level of generality (i.e., as a general means of receiving data). Receiving data is a form of insignificant extra-solution activity –see MPEP 2106.05(g).
The apparatus comprising a memory and a processor disposed in communication with the memory, and configured to issue a plurality of processing instructions stored in the memory that causes the apparatus to perform the claimed steps of categorizing messages in a log and weight, in the log, the plurality of messages, are also recited at a high level of generality and merely automates the categorizing and weighing steps. Each of the additional limitations is no more than mere instructions to apply the exception using generic computer components (the memory and processor). The combination of these additional elements is no more than mere instructions to apply the exception using generic computer components. Accordingly, even in combination, these additional elements do not integrate the abstract idea into a practical application because they do not impose meaningful limits on practicing the abstract idea.
Similar arguments can be extended to independent claims 10 and 14 and hence claims 10 and 14 are rejected on similar grounds as claim 1. In addition, claim 14 recites a non- transitory machine-readable medium that amount to generic computer implementation.
The claims are directed to an abstract idea.
Under Eligibility Step 2B, (MPEP §2106.05), the claim(s) does/do 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 in the claims amount to no more than mere instructions to apply the exception using generic computer components.
Mere instructions to apply an exception using generic computer components cannot provide an inventive concept.
Furthermore, under Step 2B, the additional elements found to be insignificant extra-solution activities under step 2A prong two, are re-evaluated to determine if the elements are more than what is well-understood, routine and conventional activity in the field. Here, the Specification does not provide any indication that the memory and processor disposed in communication with the memory, and configured to issue a plurality of processing instructions stored in the memory that causes the apparatus to perform the claimed functions, and the terminal devices are anything other than generic computer components and the Symantec, TLI Communications, OIP Techs, and buySafe court decisions cited in MPEP 2106.05[d][ii] indicate that the mere receiving and transmitting data over a network are well-understood, routine, and conventional functions when they are claimed in a merely generic manner (as they are here). Accordingly, a conclusion that the receiving limitations are well understood, routine, and conventional activities is supported under Berkheimer Option 2. For these reasons, there is no inventive concept. The claims are not patent eligible.
The dependent claims have been given the full two part analysis including analyzing the additional limitations both individually and in combination. The dependent claim(s) when analyzed both individually and in combination are also held to be patent ineligible under 35 U.S.C. 101 because for the same reasoning as above and the additional recited limitation(s) fail(s) to establish that the claim(s) is/are not directed to an abstract idea. Dependent claims 2-9, 11-13, 15-20 simply help to define the abstract idea. The additional limitations of the dependent claim(s) when considered individually and as an ordered combination do not amount to significantly more than the abstract idea.
Viewing the claim limitations as an ordered combination does not add anything further than looking at the claim limitations individually. When viewed either individually, or as an ordered combination, the additional limitations do not amount to a claim as a whole that is significantly more than the abstract idea. Accordingly, claim(s) 1-20 is/are ineligible.
Response to Arguments
3. Applicant's arguments filed 6/29/2026 have been fully considered but they are not persuasive.
On page 7 of the Remarks, Applicants contend that the claims are not abstract and instead are directed to a novel and patentable system/method for lessening the computational load and/or network load of a messaging system through supplementing the messaging system. The argument is not convincing. Novelty is a question of whether the claimed invention is new. Inventiveness in the Alice/Mayo framework is the search for “an element or combination of elements that is sufficient to ensure that the patent in practice amounts to significantly more than a patent upon the [ineligible concept] itself.” Alice, 134 S. Ct. at 2355. The inventiveness inquiry of §101 should therefore not be confused with the separate novelty inquiry of §102 or obviousness inquiry of § 103. A novel and nonobvious claim directed to a purely abstract idea is, nonetheless, patent-ineligible. See Mayo, 132 S. Ct. at 1304.
On page 9 of the Remarks, Applicants argue that under step 2A, the claims are not directed to an abstract idea and do not preempt the use of the abstract idea.
The argument is not persuasive.
That the claims do not preempt all forms of abstraction or may be limited to weighting in a log, the plurality of message[SIC] according to size and/or quantity; and identifying a highest message user out of the plurality of terminal devices based on the log including the categorized and weighted plurality of messages, does not make them any less abstract. See OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1362-63 (Fed. Cir. 2015) (“And that the claims do not preempt all price optimization or may be limited to price optimization in the e-commerce setting do not make them any less abstract.”).
On pages 9-10 of the Remarks, Applicants contend that the claims are not directed to an abstract idea and under PTO guidance do not fall into one of the groupings of abstract ideas. The Examiner respectfully disagrees.
The Patent Office has issued guidance about this framework. -See MPEP§ 2106 (9th ed. Rev. 10.2019, rev. June 2020), in particular, Sections 2103 through 2106.07(c). As indicated in the MPEP § 2106, to decide whether a claim is directed to an abstract idea, we evaluate whether the claim (1) recites one of the abstract ideas listed in the Revised Guidance (“Prong One”) and (2) fails to integrate the recited abstract idea into a practical application (“Prong Two”).
Beginning with Prong One, step 2A of the eligibility analysis, we must determine whether the claims at issue are directed to one of those patent-ineligible concepts. One of the subject matter groupings identified as an abstract idea in the Guidance is “[certain methods of organizing human activity—fundamental economic principles or practices (including . . . mitigating risk, insurance); commercial. . . interactions (including agreements in the form of contracts; . . . sales activities or behaviors; business relations); managing personal behavior or relationships or interactions between people (including . . . following rules or instructions)].” See MPEP 2106.04(a).
Here, apart from the recited systems, i.e., a memory and a processor disposed in communication with the memory, the processor configured to issue a plurality of processing instructions stored in the memory executing the claimed functions, and a terminal device, claim 1 recites abstract ideas in the category of “methods of organizing human activity.” In the 101 analysis in the rejection above, the Examiner identifies and considers each of the underlying steps for the claims as a basis for describing and explaining the recited abstract idea. For example, the Examiner identifies the underlying steps of claim 1—i.e., the “receiving,” “categorizing,” “weighting,” “and identifying,”—and explains that they describe the concept of improved exchange of information between the electronic financial exchange and subscribers by monitoring message traffic between exchange data providers and subscriber terminals, i.e., commercial interactions (certain methods of organizing human activity). The Examiner’s approach here is consistent with USPTO guidance.
Applicants allege that the claimed invention recites specific steps/operations which accomplish a desired result as in Finjan v. Blue Coat Sys. The argument is not convincing. Finjan v. Blue Coat Sys. address a problem concerning virus scans that generates a security profile identifying both hostile and potentially hostile operations in the realm of computer technology. The claims in the instant application are not directed to virus scans and are not akin to those found in Finjan. The claimed invention is directed to solving a problem that is financial in nature and recite an abstract idea.
The applicant argues that the claimed invention is similar to the claims found in Bascom. The Examiner respectfully disagrees. In Bascom, the court found that the claims were directed to an abstract idea under step one, id. at 1347-49. Under step two, the court found that the limitation of the claims, taken individually, recited a generic computer, network, and Internet components which were not inventive themselves, id. at 1349-52. However, the court found that the ordered combination of these limitations provided the requisite inventive concept, id. The claimed and described inventive concept was the “installation of a filtering tool at a specific location, remote from the end-users, with customizable filtering features specific to each end user,” id. at 1350. The design permitted the filtering tool to have “both the benefits of a filter on a local computer and the benefits of a filter on the [Internet Service Provider] server.” Id. This was not customary or generic, and the claims did not preempt all ways of filtering content on the Internet—instead, the patent claimed and explained how a particular arrangement of elements was a “technical improvement over prior art ways of filtering such content,” id.
The court thus distinguished ineligible “abstract-idea-based solutions[s] implemented with generic technical components in a conventional way” from the eligible “technology-based solution” and software based invention[] that improve[s] the performance of the computer system itself,” id. at 1351 (citation omitted). The claims in the instant application do not require an arguably inventive distribution of functionality within a network. The claims in this application specify exchanging information between the electronic financial exchange and subscribers but they do not include any requirement for performing the claimed functions of receiving, categorizing, weighting and identifying by use of anything but entirely conventional, generic technology.
On pages 13-14 of the Remarks, Applicants argue that the claims amount to significantly more than the judicial exception. The argument is not convincing because
the additional elements in the claims amount to no more than mere instructions to apply the exception using generic computer components and simply appending well-understood, routine and conventional activities previously known to the industry, specified at a high level of generality to the judicial exception.-see MPEP 2106.05(d)(f).
Mere instructions to apply an exception using generic computer components and simply appending well-understood, routine, conventional activities cannot provide an inventive concept.
On page 15 of the Remarks, Applicants argue that the NFOA does not provide sufficient evidence to show that the receiving and transmitting limitations are well understood, routine or conventional activities as required in the Berkheimer Memo. The Examiner respectfully disagrees with this argument.
The Federal Circuit in Berkheimer made clear that “not every § 101 determination contains genuine disputes over the underlying facts material to the § 101 inquiry.” Berkheimer v. HP Inc., 881 F.3d 1360, 1368 (Fed. Cir. 2018). In fact, the Federal Circuit in Berkheimer did not require evidentiary support for independent claim 1 because “[t]he limitations [of claim 1] amount to no more than performing the abstract idea of parsing and comparing data with conventional computer components.” Id. at 1370.
In addition, under Step 2B, the additional elements found to be insignificant extra-solution activities under step 2A prong two, were re-evaluated to determine if the elements are more than what is well-understood, routine and conventional activity in the field. As indicated in the rejection above, the Symantec, TLI Communications, OIP Techs, and buySafe court decisions cited in MPEP 2106.05[d][ii] indicate that the mere receiving and transmitting data over a network are well-understood, routine, and conventional functions when they are claimed in a merely generic manner (as they are here). Accordingly, a conclusion that the receiving limitations are well understood, routine, and conventional activities is supported under Berkheimer Option 2. For these reasons, there is no inventive concept. The claims are not patent eligible.
Conclusion
4. THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ELDA MILEF whose telephone number is (571)272-8124. The examiner can normally be reached Monday-Thursday 6:30am-3:30pm; Friday 7am-12pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Bennett Sigmond can be reached at (303)297-4411. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ELDA G MILEF/Primary Examiner, Art Unit 3694
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