DETAILED ACTION
Summary and Status of Claims
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
This Office Action is in response to Applicant’s reply filed 7/6/2026.
Claims 1-20 are pending.
Claims 4 and 13 are rejected under 35 U.S.C. 112(b).
Claims 1-20 are rejected under 35 U.S.C. 101.
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claim Objections
Claims 1, 4, 5, 10, 13, 14, and 19 are objected to because of the following informalities:
In claims 1, 10, and 19, in the “for each file group” limitation, “determining that a file in the file group” should be “determining that a record in the file group”.
In claims 4 and 13, a comma should be inserted after “support partial file processing”.
In claims 5 and 15, “a client device” in line 2 should be “the client device”.
Appropriate correction is required.
Claim Rejections - 35 USC § 112
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.
Claims 4 and 13 are rejected under 35 U.S.C. 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor regards as the invention.
Claim 4 recites “for each file group, and responsive to determining the client device does not support partial file processing individually assigning each record in the file group a record file ready flag based on the associated record having the record ready flag set.” It is unclear what is being claimed by this limitation. First, it is unclear if a “record file ready flag” corresponds to a “file ready flag” or a “record ready flag”. Second, assigning such flag to each record in the file group “based on the associated record having the record ready flag set” is unclear. Base claim 1 recites “evaluating content of the record to determine whether the content is ready for processing and assigning a corresponding record ready flag comprising a record valid flag or a record error flag”. In other words, each record has had its content evaluated and has a “record ready flag” set in the form of a “record valid flag” or a “record error flag”. Therefore, it is unclear what is intended with the limitation “… based on the associated record having the record ready flag set” because every record already has a record ready flag set as recited in claim 1. Clarification is required.
Claim 13 recites similar limitations and is rejected for the same reasons.
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 a judicial exception (i.e., a law of nature, a natural phenomenon, or an abstract idea) without significantly more. Determining whether claims are statutory under 35 U.S.C. 101 involves a two-step analysis. Step 1 requires a determination of whether the claims are directed to the statutory categories of invention. Step 2 requires a determination of whether the claims are directed to a judicial exception without significantly more. Step 2 is divided into two prongs, with the first prong having a part 1 and part 2. See MPEP 2106.
Claim 1
Pursuant to Step 2A, part 1, claims are analyzed to determine whether they are directed to an abstract idea. Pursuant to MPEP 2106, claims are deemed to be directed to an abstract idea if, under their broadest reasonable interpretation, they fall within one of the enumerated categories of (a) mathematical concepts, (b) certain methods of organizing human activity, and (c) mental processes. Under the broadest reasonable interpretation, the terms of the claim are presumed to have their plain meaning consistent with the specification as it would be interpreted by one of ordinary skill in the art. See MPEP 2111.
Claim 1 recites the limitations of: (1) receiving a set of files, each file of the set of files including a set of records, (2) merging each file of the set of files into a merged file comprising the sets of records, the merging comprising for each file of the set of files, generating a file identifier flag, and assigning the file identifier flag to a corresponding record (3) grouping each record in a file group based on the file identifier flag, (4) generating an appended merged file, by, for each record in the merged file: evaluating a syntax of the record to determine whether the syntax is valid or invalid and assigning a corresponding syntax flag to the record, (5) evaluating content of the record to determine whether the content is ready for processing and assigning a corresponding record ready flag comprising a record-valid flag or a record-error flag, (6) determining a partial file processing capability of a client device, (7) for each file group, and responsive to determining that the client device does not support partial file processing and in response to determining that a file in the file group has a record error flag, assigning each record in the file group the record error flag, and (8) transmitting the appended merged file to the client device.
Courts consider a mental process if it “can be performed in the human mind, or by a human using a pen and paper.” The mental process grouping covers concepts performed in the human mind, including observation, evaluation, judgment, and opinion. MPEP 2016(a)(2)(III). Limitations can also be deemed insignificant extra-solution activity (IESA). The term "extra-solution activity" can be understood as activities incidental to the primary process or product that are merely a nominal or tangential addition to the claim. Extra-solution activity includes both pre-solution and post-solution activity. An example of pre-solution activity is a step of gathering data for use in a claimed process, e.g., a step of obtaining information about credit card transactions, which is recited as part of a claimed process of analyzing and manipulating the gathered information by a series of steps in order to detect whether the transactions were fraudulent. An example of post-solution activity is an element that is not integrated into the claim as a whole, e.g., a printer that is used to output a report of fraudulent transactions, which is recited in a claim to a computer programmed to analyze and manipulate information about credit card transactions in order to detect whether the transactions were fraudulent. MPEP 2106.05(g).
Limitation (1) is directed to IESA in the form of receiving data. Limitation (2) is directed to a mental step that can be performed by a person with the aid of pen and paper. For example, a person can take two files and combine their contents to create a merged file and labeling each record in the merged file with some identifier to indicate which original file they are associated with. These are simple mental process steps involving evaluation and judgment. Limitation (3) is directed to a mental step that can be performed by a person with pen and paper. The step merely requires grouping records based on their file identifier, which is a mental step of observation and evaluation of organizing records that can be performed by a person with the aid of pen and paper. Limitation (4) is directed to performing steps on each record of a merged file to generate the appended merged file. The first step includes evaluating a syntax of a record to determine whether the syntax is valid or invalid and assigning a corresponding flag to the record. This step include mental processes of evaluation and determination, which can be performed by a person in the mind and assignment of flags, which can be performed by a person with the aid of pen and paper. Limitation (5) is directed to the second step of generating the appended merged file by performing a step of evaluating content of the record to determine whether the content is ready for processing and assigning a corresponding record ready flag. Like the prior limitation, limitation (5) is directed to mental process steps for the same reasons. Limitation (6) is directed to a mental step of determining whether a client device has partial file processing capability, which involve mental steps of evaluation and judgment. Limitation (7) is directed to mental steps of evaluation of records to determine if a record has a record error flag and in response, assigning all records in the file group the record error flag. These are mental steps that a person can perform with the aid of pen and paper. Limitation (8) is directed to IESA of transmission of data over a network.
For at least these reasons, claim 1 is directed to an abstract idea categorized under mental processes.
Pursuant to Step 2A, part 2, claims are analyzed to determine whether the claim as a whole integrates the recited judicial exception into a practical application of the exception. This evaluation is performed by (1) identifying whether there are any additional elements recited in the claim beyond the judicial exception, and (2) evaluating those additional elements individually and in combination to determine whether the claim as a whole integrates the exception into a practical application. See MPEP 2106.04(d). One way to determine integration into a practical application is when the claimed invention improves the functioning of a computer or improves another technology or technical field. To evaluate an improvement to a computer or technical field, the specification must set forth an improvement in technology and the claim itself must reflect the disclosed improvement. See MPEP 2106.04(d)(1).
In this case, as explained above, claim 1 merely recites an abstract idea categorized under mental processes. Limitations (1) and (8) are directed to IESA and cannot integrate the abstract idea into a practical application. Limitation (2) is directed to a mental step that can be performed by a person with the aid of pen and paper. The limitation does not provide specific steps of how the merging is performed and includes steps that would be impossible or impractical for a person to perform. The limitation merely recites “merging” at a high level of generality and the broadest reasonable interpretation encompasses any mode of combining two or more files together. Limitations (2) and (3) further include generating a file identifier to assign to corresponding records associated with the file and grouping records into file groups based on the file identifier. However, such grouping and sorting information is recognized by the courts as being well understood, routine, and conventional. MPEP 2106.05(d)(II). Accordingly, it does not sufficiently demonstrate an improvement to the technology. Limitations (4) and (5) are directed to mental steps to generated an appended merged file and include steps of evaluation and determination but do not recite specific steps of how either of these steps are performed that would be impossible or impractical for a person to perform. Additionally, the limitations also do not recite specific steps that would demonstrate an improvement to the technology. The additional limitations of assigning flags based on the result of the determining step is recited at a high level with no details as to how the assignment is performed that would provide an improvement. Accordingly, as a whole, limitations (4) and (5), cannot provide an improvement and consequently does not integrate the abstract idea into a practical application. Limitation (6) is directed to mental step of determination that merely requires observation and evaluation and does not recite specific limitations that would make it impossible or impractical for a person to perform in the mind. Limitation (7) is directed to mental steps of assigning flags based on observed and evaluated flags of a record in a file group. It does not recite specific steps of how the determining nor the assignment is performed that would adequately demonstrate some asserted improvement to the relevant technology. Even when considered as a whole, limitations (1) through (9) do not adequately demonstrate an asserted improvement and merely recite steps for labeling and organizing records based on mental observations and evaluations without recited sufficient specificity with regards to the improved methods of performing such actions.
For at least these reasons, claim 1 does not integrate the judicial exception into a practical application.
Pursuant to Step 2B, claims are analyzed to determine whether the claim as a whole amounts to significantly more than the recited exception i.e., whether any additional element, or combination of additional elements, adds an inventive concept to the claim. See MPEP 2106.05. In this case, claim 1 does not recite limitations that amount to significantly more than the abstract idea. Limitations (2) through (7), as discussed above, are directed to mental steps that are recited with insufficient specificity, which fails to amount to significantly more than the abstract idea. At Step 2B, the evaluation of the insignificant extra-solution activity consideration takes into account whether or not the extra-solution activity is well understood, routine, and conventional in the field. See MPEP 2106.05(g). Here, limitations (1) and (8) are directed to IESA of receiving or transmitting data over a network, e.g., using the Internet to gather data, which is well understood, routine, and conventional. See MPEP 2106.05(d), subsection II. Even when considered in combination, these additional elements represent mere instructions to implement an abstract idea or other exception on a computer and insignificant extra-solution activity, which do not provide an inventive concept. For at least these reasons, claim 1 is nonstatutory because they are directed to a judicial exception without significantly more.
Claim 2
Pursuant to step 2A, part 1, claim 2 depends on claim 1 and therefore recites the same abstract idea. Pursuant to step 2A, part 2, claim 2 recites the additional limitations of (1) storing in a quarantine repository, each record including an invalid syntax flag or a record-error flag and (2) generating a signal associated with an alert indicating one or more records in the quarantine repository. Limitation (1) is directed to IESA in the form of sorting information (i.e., records based on flags) and storing data in memory. The limitation is recited at a high level and does not recipe specifics of how the storing is performed in a manner that adequately demonstrates an improvement. Limitation (2) is directed to a mental step of generating a signal alert, which can be performed by a person with the aid of pen and paper. For example, a person can write a note or send an email or even make a phone call. All these options fall within the broadest reasonable interpretation of “generating a signal.” The limitation does not recite specifics that demonstrate an improvement to the field of technology. Therefore, these additional limitations do not integrate the abstract idea into a practical application. Pursuant to step 2B, for at least the same reasons explained, these additional limitations do not provide an inventive concept. For at least these reasons, claim 2 is directed to a judicial exception without significantly more.
Claim 3
Pursuant to step 2A, part 1, claim 3 depends on claim 2 and therefore recites the same abstract idea. Pursuant to step 2A, part 2, claim 3 recites the additional limitations of (1) receiving a modified record corresponding to a selected record including an invalid syntax flag or record-error flag and (2) overwriting an entry within the selected record with an entry in the modified record. Limitation (1) is directed to IESA of receiving data (i.e., a modified record). Limitation (2) is directed to IESA of storing data. Both limitations recite the receiving and overwriting at a high level and neither recite specific steps that provide more than IESA. Therefore, these additional limitations do not integrate the abstract idea into a practical application. Pursuant to step 2B, for at least the same reasons explained, these additional limitations do not provide an inventive concept. For at least these reasons, claim 3 is directed to a judicial exception without significantly more.
Claim 4
Pursuant to step 2A, part 1, claim 4 depends on claim 1 and therefore recites the same abstract idea. Pursuant to step 2A, part 2, claim 4 recites the additional limitations of for each file group, and responsive to determining the client device does not support partial file processing individually assigning each record in the file group a record file ready flag based on the associated record having the record ready flag set. The additional limitations are directed to a mental steps of determining whether a client supports file processing and mental process steps of assigning flags based on evaluations of existing flags, which can be performed by a person with the aid of pen and paper. The limitation does not recite specifics as to how the determination is made that would make it impossible or impractical for a person to perform or how the assigning of flags are performed that would make it impossible or impractical for a person to perform. The limitation accordingly does not recite sufficient specifics that would adequately demonstrate an improvement. Therefore, these additional limitations do not integrate the abstract idea into a practical application. Pursuant to step 2B, for at least the same reasons explained, these additional limitations do not provide an inventive concept. For at least these reasons, claim 4 is directed to a judicial exception without significantly more.
Claim 5
Pursuant to step 2A, part 1, claim 5 depends on claim 1 and therefore recites the same abstract idea. Pursuant to step 2A, part 2, claim 5 recites the additional limitations of (1) wherein determining the partial file processing capability of the client device comprises: receiving, from the client device, a message indicating the file processing capabilities of the client device. Limitation (1) is directed to IESA of receiving data in the form of a message. Accordingly, these additional limitations do not integrate the abstract idea into a practical application. Pursuant to step 2B, for at least the same reasons explained, these additional limitations do not provide an inventive concept. For at least these reasons, claim 5 is directed to a judicial exception without significantly more.
Claim 6
Pursuant to step 2A, part 1, claim 6 depends on claim 1 and therefore recites the same abstract idea. Pursuant to step 2A, part 2, claim 6 recites the additional limitations of (1) wherein each record of the set of records includes a set of entries, (2) wherein evaluating content of the record comprises: identifying, for each entry of the set of entries, a corresponding field, the corresponding field including a non-key field or a key field, (3) for each entry with a corresponding key field, validating the corresponding key field, and (4) in response to determining the corresponding key field is invalid, assigning a record-error flag to a corresponding record. Limitation (1) is directed to IESA in the form of specifying the type of data to be manipulated. Limitation (2) is directed to a mental step of evaluation, which includes identifying. These steps include steps of evaluation and judgment, which can be performed by a person in the mind. Limitation (3) recites a mental step of validation, which would include steps of evaluation and judgment, which can be performed by a person in the mind. Lastly, limitation (4) is directed to a mental step of assigning, which can be performed by a person with the aid of pen and paper. None of the limitations recite additional, specific steps that would adequately demonstrate an asserted improvement to the technology. The steps are recited at a high level with no specific steps that are sufficient to integrate the abstract idea. Therefore, these additional limitations do not integrate the abstract idea into a practical application. Pursuant to step 2B, for at least the same reasons explained, these additional limitations do not provide an inventive concept. For at least these reasons, claim 6 is directed to a judicial exception without significantly more.
Claim 7
Pursuant to step 2A, part 1, claim 7 depends on claim 6 and therefore recites the same abstract idea. Pursuant to step 2A, part 2, claim 7 recites the additional limitations of (1) for each entry with a corresponding non-key field, validating the corresponding non-key field and (2) in response to determining the corresponding key field is invalid, assigning a soft-error flag to the corresponding record. Limitation (1) is directed to a mental step of validating, which can be performed by a person in the mind with steps of evaluation and judgment. Limitation (2) is directed to a mental step of assigning, which can be performed by a person with the aid of pen and paper. For example, marking down a soft error flag for a record that’s determined to have an invalid key field. Both limitations recite the respective steps at a high level and neither limitation recites specifics of how each are performed to adequately demonstrate an improvement to the technology. Therefore, these additional limitations do not integrate the abstract idea into a practical application. Pursuant to step 2B, for at least the same reasons explained, these additional limitations do not provide an inventive concept. For at least these reasons, claim 7 is directed to a judicial exception without significantly more.
Claim 8
Pursuant to step 2A, part 1, claim 8 depends on claim 6 and therefore recites the same abstract idea. Pursuant to step 2A, part 2, claim 8 recites the additional limitations of wherein the set of entries for each file includes one or more of: a broker number, Securities (CUSIP) ID, account number, or customer account number. The additional limitations are directed to IESA in the form of merely specifying the fields of the data that is being processed or manipulated. Therefore, these additional limitations do not integrate the abstract idea into a practical application. Pursuant to step 2B, for at least the same reasons explained, these additional limitations do not provide an inventive concept. For at least these reasons, claim 8 is directed to a judicial exception without significantly more.
Claim 9
Pursuant to step 2A, part 1, claim 9 depends on claim 8 and therefore recites the same abstract idea. Pursuant to step 2A, part 2, claim 9 recites the additional limitations of wherein validating the corresponding key field includes assigning a record error flag to the corresponding record in response to determining one or more of: each of the broker number, CUSIP ID and customer account number are null, or each of the account number and customer account number are null. The additional limitations are directed to mental steps of validating and assigning of a record error flag, which can be performed by a person in the mind or with the aid of pen and paper. The limitations are recited at a high level and do not recite specifics of how either is performed that sufficiently demonstrate an asserted improvement to the technology. Therefore, these additional limitations do not integrate the abstract idea into a practical application. Pursuant to step 2B, for at least the same reasons explained, these additional limitations do not provide an inventive concept. For at least these reasons, claim 9 is directed to a judicial exception without significantly more.
Claims 10-19 recite essentially the same subject matter as claims 1-9, respectively, in the form of a method. Therefore, they are rejected for the same reasons. Claims 10-19 recite the additional components of processors, which are recited at a high level of generality and is essentially a generic processor. Therefore, they do not provide meaningful limits on the abstract idea capable of integrating it and also do not provide an inventive step.
Claim 20 recites essentially the same subject matter as claim 1 in the form of non-transitory computer readable medium. Therefore, they are rejected for the same reasons. Claim 20 recites the additional components of the non-transitory computer readable medium and processors, which are recited at a high level of generality and are essentially a generic components. Therefore, they do not provide meaningful limits on the abstract idea capable of integrating it and also do not provide an inventive step.
Claims 1-20 are therefore not drawn to eligible subject matter as they are directed to an abstract idea without significantly more.
To expedite a complete examination of the instant application, the claims rejected under 35 U.S.C. 101 (nonstatutory) above are further rejected as set forth below in anticipation of applicant amending these claims to overcome the rejection.
Response to Amendment
Drawings
Applicant’s amendment to the drawings to address missing labels is acknowledged. Consequently, objection to the drawings is withdrawn.
Objection to claims 7 and 17 for Minor Informalities
Applicant’s amendment to claims 7 and 17 to address the minor informalities is acknowledged. Consequently, the objection to claims 7 and 17 is withdrawn.
Response to Arguments
Rejection of claims 1-20 under 35 U.S.C. 101
Applicant’s arguments in regards to the rejections to claims 1-20 under 35 U.S.C. 101, have been fully considered but they are not persuasive. Applicant alleges the claims are eligible because (1) they recite operations not practically capable of being performed in the human mind and (2) the claims recites a practical application amounting to significantly more than the alleged judicial exception. Remarks at 12.
Examiner is required to give claim limitations their broadest reasonable interpretation in light of the specification. However, limitations from the specification are not read into the claims. MPEP 2111.
In regards to argument (1), Applicant argues the claim limitations cannot be performed in the human mind because the claim recite operations analogous to manipulating computer data structures, which is analogous to the claims in Synopsys and Research Corp. Remarks at 13. Examiner respectfully disagrees. The claim merely recites files containing records that are merged without any recitation defining exactly how the files and records are merged into a merged file. Further, the limitations directed to assigning file identifier flags and grouping records by source file association based on the file identifier flags are steps that a person can practically perform with the aid of pen and paper. The broadest reasonable interpretation of the limitations merely requires that a set of files contains two files and each file of the set of files contains two records. A person can easily review and perform the recited limitations to evaluate syntax or formatting of a record and to evaluate a record’s content. Applicant further argues the claims recite controlling downstream record processing based on client device capabilities and detected record errors, however the claim limitations merely recite making a determination of a client device’s capabilities and performing assignment of flags accordingly, which are mental process steps as discussed in the rejection above. None of the recited limitations contain additional limitations that would make them impossible or impractical for a person to perform in the mind with the aid of pen and paper. In response to Applicant’s argument that the claims recite a multi-step manipulation of data, particular of computer data structures, the limitations merely recite records with identifiers and flags but does not recite any particular elements that sufficiently demonstrate an alleged data structure. For at least these reasons, contrary to Applicant’s arguments, the claims recite limitations that are practically performed in the mind of a person with the aid of pen and paper.
In regards to argument (2), Applicant argues the claims are eligible for improving the functionality of computing networks. Remarks at 14. Applicant reasons the claims are analogous to those in DDR, BASCOM, and Amdocs because the claims recite technical improvements to network data management by reciting particular rules for handling and distributing records across a network in a manner that can adapt to the capabilities of downstream client devices while ensuring minimal loss in data during transmission. Remarks at 16. Applicant further points to the specification at paras. 0002, 0058, 0069, and 0083. Remarks at 16-17. In response to Applicant’s argument that the claims are analogous to DDR, BASCOM, and Amdocs, Examiner respectfully disagrees. Applicant points in particular to Amdocs, but the instant claims are not analogous to the claims. The court in Amdocs noted the claim necessarily required the system described in the specification. However, the instant claims do not recite particular limitations that, when given their broadest reasonable interpretation, necessarily require aspects from the specification. While the specification at Applicant’s cited paragraphs describe improvements and solutions, the claim limitations do not adequately recite specifics to demonstrate asserted improvements and solutions discussed in the specification. MPEP 2106.04(d)(1). For at least these reasons, the claims do not recite limitations that taken individually, or as a whole, are sufficient to integrate the abstract idea into a practical application nor amount to significantly more than the abstract idea.
Applicant does not present additional arguments with regards to any particular claims. Therefore, Examiner asserts they are also patent ineligible for at least the reasons explained above. Consequently, the rejection to claims 1-20 under 35 U.S.C. 101 is maintained.
Rejection of claims 1-4, 6-13, and 15-20 under 35 U.S.C. 103
Applicant’s arguments in regards to the rejections to claims 1-4, 6-13, and 15-20 under 35 U.S.C. 103, have been fully considered and they are persuasive. The amendments incorporate limitations that were previously indicated as being directed to allowable subject matter.
Consequently, the rejection to claims 1-4, 6-13, and 15-20 under 35 U.S.C. 103 is withdrawn.
Additional Prior Art
Additional relevant prior art are listed on the attached PTO-892 form. Some examples are:
Dupey (US Patent Pub 2019/0050424) discloses a system and method for applications providing a feature to validate address data and using flags to indicate when entry fields are valid or invalid.
Joyce et al. (US Patent Pub 2021/0263900) discloses a system and method for generating rules for data processing values of data fields from semantic labels of the data fields and using data quality rules to ensure data is valid.
Clarence et al. (US Patent Pub 2025/0298781) discloses a system and method for table data storage with auditable data changes.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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 extension fee 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 date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Examiner Michael Le whose telephone number is 571-272-7970 and fax number is 571-273-7970. The examiner can normally be reached Mon-Fri 9:30 AM – 6 PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Tony Mahmoudi can be reached on 571-272-4078. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/MICHAEL LE/Examiner, Art Unit 2163
/TONY MAHMOUDI/Supervisory Patent Examiner, Art Unit 2163
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