Or DETAILED ACTION
1. 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 .
2. Status of Application and Claims
Claims 1-18 are pending.
This office action is being issued in response to the Applicant's filing on 12/31/2024.
3. 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 1-18 are rejected under 35 U.S.C. § 101 because the claimed invention is directed to an abstract idea without significantly more.
STEP 1
The claimed invention falls within one of the four statutory categories of invention (i.e., process, machine, manufacture and composition of matter). See MPEP §2106.03.
STEP 2A – PRONG ONE
The claim(s) recite(s) a method and a system configured to perform a method comprising:
receiving … a report for the asset with a set of parameters relating to capitalization of cash flow, wherein the received set of parameters comprises:
a value for a debt ‘D’ for the asset;
a value for a cost of the debt ‘rd’ for the asset;
a value for a tax ‘T’ for the asset;
a value for an expected growth rate ‘eg’ for the asset;
calculating … a value for an estimated short-term adjustment 'sta' as the sum of differences in previous years; and
calculating … a value for an equivalent cash flow 'ecf’ corresponding to the received set, according to the equation:
ecf= (cfn/(1+eg))^(n-m)
wherein 'n' is a predefined representative capitalization year and 'm' is a different predefined year such that a capitalized cash flow of the representative year is calculated until the first year, and wherein:
'cfn' is the equivalent cash flow for the year 'n'; and
'cfm' is the equivalent cash flow for the year 'm'.
These limitations, as drafted, recite a method and/or a system configured to perform a method that, under its broadest reasonable interpretation, covers a series of steps instructing how to predict changes in the values of an asset, which is a fundamental economic practice, a sub-category of certain method(s) of organizing human activity, an enumerated grouping of abstract ideas. See MPEP §2106.04(a)(2)(II)(A).
Examiner notes that predicting changes in the values of an asset is mitigation of financial risk and that the mitigation of financial risk is a court-provided example of a fundamental economic practice. See MPEP §2106.04(a)(2)(II)(A), citing Alice Corp. v. CLS Bank, 573 U.S. 208, 218, 110 USPQ2d 1976, 1982 (2014).
Additionally, these limitations, as drafted, under its broadest interpretation, covers a series of steps that can be practically performed in the human mind (e.g., observations, evaluations, judgments and opinions) which are mental process, a second enumerated grouping of abstract ideas. See MPEP §2106.04(a)(2)(III).
Examiner notes that “’collecting information, analyzing it, and displaying certain results of the collection and analysis,’ where the data analysis steps are recited at a high level of generality such that they could practically be performed in the human mind” is a court-provided example of a mental process. See MPEP §2106.04(a)(2)(III)(A) citing Electric Power Group v. Alstom, SA. (Fed. Cir. 2016).
Additionally, these limitations, as drafted, recite a mathematical concept (e.g., mathematical relationships, mathematical formulas or equations, and mathematical calculations) which is an enumerated grouping of abstract ideas. See MPEP §2106.04(a)(2)(I).
Examiner notes that a mathematical formula for hedging (i.e., mitigating financial risk) is a court-provided example of a mathematical concept. See MPEP §2106.04(a)(2)(I)(B)(iv) citing Bilski v. Kappos. (2010).
Accordingly, the claimed invention recites an abstract idea.
STEP 2A – PRONG TWO
The claimed invention recites additional elements (i.e., computer elements) of a processor (Claim(s) 1 and 10) and a database (Claim(s) 10).
The claimed invention does not include additional elements that integrate the judicial exception into a practical application of the exception because the claims do not provide improvements to another technology or technical field; improvements to the functioning of the computer itself; are not applying or using a judicial exception to effect a particular treatment or prophylaxis for a disease or medical condition; are not applying the judicial exception with or by use of a particular machine; are not effecting a transformation or reduction of a particular article to a different state or thing; and are not applying the judicial exception in some other meaningful way beyond generally linking the use of the judicial exception to a particular technological environment. See MPEP §2106.04(d).
The additional elements are recited at a high-level of generality such that it amounts no more than mere instructions to apply the exception using a generic computer component. See MPEP §2106.05(f). See MPEP §2106.05(h). Accordingly, these additional element(s), when considered separately and as an ordered combination, do not integrate the abstract idea into a practical application because it does not impose any meaningful limits on practicing the abstract idea.
Accordingly, the claimed invention is directed to an abstract idea without a practical application.
STEP 2B
Upon reconsideration of the indicia noted under Step 2A in concert with the Step 2B considerations, the additional claim element(s) amounts to adding the words “apply it” (or an equivalent) with the judicial exception. See MPEP §2106.07(a)(II). The same analysis applies in Step 2B, i.e., mere instructions to apply an exception using a generic computer component cannot integrate a judicial exception into a practical application at Step 2A or provide an inventive concept in Step 2B. The claim does not provide an inventive concept significantly more than the abstract idea.
Accordingly, these additional elements, when considered separately and as an ordered combination, do not integrate the abstract idea into a practical application because they do not impose any meaningful limits on practicing the abstract idea.
DEPENDENT CLAIMS
Dependent Claim(s) 2-9 and 11-18 recite claim limitations that further define the abstract idea recited in respective independent Claim(s) 1 and 10. As such, the dependent claims are also grouped an abstract idea utilizing the same rationale as previously asserted against the independent claims.
No additional computer components other than those found in the respective independent claims is recited, thus it is presumed that the claim is further utilizing the same generically recited computer.
As such, the dependent claims do not include any additional elements that integrate the abstract idea into a practical application of the judicial exception or are sufficient to amount to significantly more than the judicial exception when considered both individually and as an ordered combination.
Accordingly, the dependent claim(s) are also not patent eligible.
Appropriate correction is requested.
4. No Prior Art Rejection
The prior art discloses predicting changes in value of an asset, wherein the method comprises receiving, by a processor, a report for the asset with a set of parameters relating to capitalization of cash flow, wherein the received set of parameters comprises a value for a debt 'D' for the asset; a value for a cost of debt 'rd' for the asset; a value for a tax 'T' for the asset; a value for the expected growth rate 'eg' for the asset; and calculating, by the processor, a value for the cash flow corresponding to received set of parameters. See Mohn – US PG Pub. 2007/0055602 – para. 70 and 77.
The prior art also discloses calculating an equivalent cash flow ‘ecf’ corresponding to the received set. See Molloy – US PG Pub. 2016/0063630 – para. 40.
However, the prior art of record does not teach or suggest calculating the equivalent cash flow ‘ecf’ using the formula of ecf= (cfn/(1+eg))^(n-m); wherein 'n' is a predefined representative capitalization year and 'm' is a different predefined year such that a capitalized cash flow of the representative year is calculated until the first year, and wherein: 'cfn' is the equivalent cash flow for the year 'n'; and 'cfm' is the equivalent cash flow for the year 'm'.
Substantially similar limitations are present in all independent claims.
No further prior art has been asserted against the claimed invention.
5. Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JASON M. BORLINGHAUS whose telephone number is (571)272-6924. The examiner can normally be reached M-F 9-5.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, RYAN D. DONLON can be reached on (571)270-3602. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Jason M. Borlinghaus/Primary Examiner, Art Unit 3692 March 5, 2026