DETAILED ACTION
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 .
Priority
The later-filed application must be an application for a patent for an invention which is also disclosed in the prior application (the parent or original nonprovisional application or provisional application). The disclosure of the invention in the parent application and in the later-filed application must be sufficient to comply with the requirements of 35 U.S.C. 112(a) or the first paragraph of pre-AIA 35 U.S.C. 112, except for the best mode requirement. See Transco Products, Inc. v. Performance Contracting, Inc., 38 F.3d 551, 32 USPQ2d 1077 (Fed. Cir. 1994).
The disclosure of the prior-filed application, Application No. 18/171,008, fails to provide adequate support or enablement in the manner provided by 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph for one or more claims of this application. See the 112 rejection below with respect to claims 3 and 6.
However, Applicant’s claim for priority to App. No. 18/171,008 (issued as U.S. Patent No. 12,287,773 B2) is acknowledged. The present claims, with the exception of claims 3 and 6, have been afforded the earliest priority date of 17 February 2023, which was the priority date of parent App. No. 18/171,008.
Claim Objections
Claims 2 and 12 are objected to because of the following informalities: the claim recites “an” second schema, which should be “a”. Appropriate correction is required.
Double Patenting
Claims 1-20 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 12,287,773 B2. Although the claims at issue are not identical, they are not patentably distinct from each other.
Claims 1, 2, and 12 of the present application recite substantially the same claim limitations as independent claims 1, 2, and 12 of the issued patent, with the exception of the issued patent “receiving, from the first user, a first validation request for a first asset of the plurality of assets, the first validation request comprising an identifier for the asset function; determining a validation rule for validating the data exchange by: generating a sequence of identified search portions corresponding with the standardized schema by (1) searching text in the request to detect one or more portions corresponding with asset descriptions of the standardized schema to add to the sequence of identified search portions and (2) modifying one or more portions of the sequence of identified search portions based on a format associated with the standardized schema; generating a first validation rule portion requiring that the sequence of identified search portions conforms with a first data format definition associated with the standardized schema” (which are completely absent in the present claims);
“generating a second validation rule portion requiring that at least one attribute of the candidate asset satisfy the API validation requirement for the API database” (whereas the present claims recite “generating an API-specific validation rule portion requiring that at least one attribute of the candidate asset satisfy the API validation requirement”, which, despite not being identical language, is substantially similar);
“generating a first validation rule portion requiring that the sequence of identified search portions conforms with a first data format definition associated with the standardized schema; … performing a first validation by applying the first validation rule portion to the first set of attribute values; performing a second validation by applying the second validation rule portion to the second set of attribute values to determine whether an attribute value of the second set of attribute values is a valid input for the API database” (whereas the present claims recite “performing a validation by applying (1) a first validation rule portion to determine whether the first set of attribute values satisfies a definition associated with the standardized schema and (2) the API-specific validation rule portion to the second set of attribute values to determine whether an attribute value of the second set of attribute values is valid for the API database”, which, despite not being identical language, is substantially similar, just worded in slightly different order); and
“updating the data exchange to add the candidate asset to the data exchange based on a result of the second validation” (whereas the present claims recite “updating the data exchange database to add the candidate asset to the data exchange database based on a result of the validation”, thus, whereas the issued patent relies on the “second” out of two validations to update the data exchange, the present application relies on two validation portions (i.e., equivalent to the first and second validations of the issued patent) to update the data exchange to add the candidate asset).
Claim 4 is nearly identical to claim 6 of the issued patent (with the difference being in the issued patent “formatting the second validation rule portion based on the second data type to generate a second formatted validation rule portion; and comparing the second formatted validation rule portion to a first value of a second attribute of the second set of attribute values for the second asset type”, whereas the present claim recites “formatting the second validation rule portion based on the second data type to generate a second formatted validation rule portion, wherein generating the second validation rule portion comprises comparing the second formatted validation rule portion to a value of a second attribute of the second set of attribute values for the second asset type”.
Claims 5-6 and 9 are narrower embodiments of claim 2.
Claims 7 and 17 are identical to claims 3 and 16 of the issued patent.
Claims 8, 11, 18, and 20 are similar to claims 5 and 18 of the issued patent.
Claims 10 and 19 are similar to claims 4 and 17 of the issued patent.
Claims 13-16 are narrower embodiments of claim 12.
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(I)(1) – 706.02(I)(3) for applications not subject to examination under the firs 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 will determine what form 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.
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.
Claim 3 is 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.
The claim recites “wherein retrieving the API validation requirement comprises retrieving a set of requestor functions, and wherein applying the second validation rule portion comprises determining whether at least a portion of the candidate asset indicates at least one requestor function of the set of requestor functions.” The specification only recites one instance of “requestor function”, which is in paragraph [0054], which states “The specific schema may also define the functionality of the digital asset, such as providing requestor functions for requesting weather data for a particular location, timeframe, and similar parameters”. However, Specification, [0054] also states that schemas include “fields, data formats for each attribute or field…”, as well as “other properties that provide structure or functionality to data stored in a database”; thus, Applicant is erroneously assuming that the field corresponds to a “requestor function”, when the “requestor function” may fall under “other properties that provide structure or functionality to data stored in a database”. Therefore, claim 3, which treats a “requestor function” as a “field” (thus substituting the steps taken with respect to “fields” with a “requestor function”), erroneously combines elements that were not previously disclosed.
Therefore, there is a lack of support for the limitations claimed by claim 3.
Claim 6 is 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.
The claim recites “wherein retrieving the API validation requirement comprises retrieving a requirement associated with location-related data type”.
This indicates that there may be, for example, multiple data related to location. However, this does not appear to be the case. See, e.g., Specification, [0054], where “a digital asset for accessing and using weather data may have a specific schema with data attributes such as requested location for weather data…The specific schema may also define the functionality of the digital asset, such as providing requestor functions for requesting weather data for a particular location”. As seen, there is only support for “location data”, but not “location-related data type” as claimed.
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.
Claim 6 is 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.
The claim recites “wherein retrieving the API validation requirement comprises retrieving a requirement associated with location-related data type”.
The closest paragraph appears to be, e.g., Specification, [0054], which states “a digital asset for accessing and using weather data may have a specific schema with data attributes such as requested location for weather data…The specific schema may also define the functionality of the digital asset, such as providing requestor functions for requesting weather data for a particular location”. It is unclear from the Specification what is meant by “location-related data type”, as there does not appear to be additional data types (e.g., such as of the nature of latitude/longitude, or other data types), or whether it intended to mean data associated to location-data, or perhaps some other meaning.
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 claims are directed to a judicial exception (i.e., an abstract idea) without significantly more.
Independent claims 1, 2, and 12 recite generating validation rules requiring that at least one attribute of the candidate asset satisfy the validation requirement, performing a validation by applying a first validation rule portion to determine whether the first set of attribute values satisfies a definition associated with the standardized schema, and applying the second validation rule portion to the second set of attributes to determine whether an attribute value of the second set of attribute values is valid for the API database. Dependent claim 3 recites determining whether at least a portion of the candidate asset indicates (some attribute, i.e., “at least one requestor function of the set of requestor functions”). Dependent claims 5 and 16 recite determining the second validation rule portion based on (some attribute, i.e., “asset identifiers associated with the user credential”). Such steps encompass an evaluation, observation, and/or judgment, which falls under the “Mental Processes” grouping of abstract ideas.
Furthermore, the independent claims recite receiving a request to update a data exchange database by adding a candidate asset comprising a first set of attribute values conforming to a standardized schema and a second set of attribute values conforming to an asset-specific schema, and updating the data exchange database to add the candidate asset to the data exchange database based on a result of the validation (of the first and second sets of attribute values). Such steps fall under the “Certain methods of organizing human activity”, e.g., commercial or legal interactions and/or managing personal behavior or relationships or interactions between people.
Dependent claim 4 recites determining a first/second data type for the schema specific to a first/second asset type of the plurality of asset types, formatting the second validation rule portion based on the first/second data type to generate a first/second validation rule portion; and comparing the first/second formatted validation rule portion to a first value of a first/second attribute of the second set of attributes for the first/second asset type. Similarly, dependent claims 10 and 19 recite determining a respective relevance ranking for a plurality of content related to the result of the first validation rule portion. Such steps encompass an evaluation, observation, and/or judgment, which falls under the “Mental Processes” grouping of abstract ideas.
Dependent claims 7 and 17 recite receiving a plurality of content published to the second API based on the result of the validation, and filtering the plurality of content using a first user content subscription setting for the user. Similarly, dependent claims 10 and 19 recite publishing content of the plurality of content based on the relevance ranking. Such steps fall under the “Certain methods of organizing human activity”, e.g., managing personal behavior or relationships or interactions between people.
Dependent claims 8 and 18 recite selecting a first validation algorithm based on the second schema; and processing the second set of attribute values using the first validation algorithm. Similarly, dependent claims 11 and 20 recite selecting a first validation algorithm (i.e., process) based on the schema specific to the respective asset of the plurality of asset types. Such steps encompass an evaluation, observation, and/or judgment, which falls under the “Mental Processes” grouping of abstract ideas.
Dependent claim 14 recites determining a combined value by combining a first value of the second set of attribute values with a second value of the second set of attribute values. Such a step encompass an evaluation, observation, and/or judgment, which falls under the “Mental Processes” grouping of abstract ideas.
Because the claims cover performance of the limitation in the mind but for the recitation of generic computer components, the claims fall within the “Mental Processes” and “Certain Methods of Organizing Human Activity” groupings of abstract ideas. Accordingly, the claims recite an abstract idea.
The judicial exception is not integrated into a practical application of the idea. The claims recite various computing hardware components (processor, non-transitory, computer-readable medium, memory), which are recited at a high level of generality and recited so generically that they represent no more than mere instructions to apply the judicial exception on a computer (see MPEP 2106.05(f)). These limitations can also be viewed as nothing more than an attempt to generally link the use of the judicial exception to the technological environment of a computer (see MPEP 2106.05(h)).
Independent claims 1, 2, and 12, dependent claims 3, 5-7, 9, and 13-17 recite receiving, retrieving, and updating stored data steps. Dependent claims 10 and 19 recite “publishing” (i.e., transmitting / storing, possibly displaying, steps). Such steps are nothing more than insignificant extra-solution activities.
The claims throughout recite that the various steps, e.g., the determination, comparing, selecting, validation, formatting steps, may be based on certain types of information. However, such limitations are nothing more than insignificant field-of-use limitations, describing the context rather than a particular manner of achieving the result, as such limitations do not further explain how—by what particular technical computing process—the computer performs the recited abstract ideas, as detailed above. Attempting to limit the claims to such types of information can also be performed in the mind of a person, e.g., the types of constraints can be taken into consideration by a person when performing the various mental tasks/processes described.
Similarly, attempting to limit the claims to certain types of information for retrieving (which falls within the abstract idea of “filtering” data), thus amounts to also insignificant field-of-use limitations, describing the context rather than a particular manner of achieving the results.
Thus, attempting to limit the claims to “algorithms” for performing the validations (e.g., as seen in claims 8, 11, 18, and 20) or “APIs” (as seen in claims 1-2, 7, 12, and 17), are nothing more than attempts to limit the claims to a particular technological environment—namely, implementation via computers. However, there is nothing confining the claims to a particular manner by which the computer itself would carry out the recited abstract ideas.
Accordingly, these additional elements do not integrate the abstract idea into a practical application because they do not impose any meaningful limits on practicing the abstract idea.
Nor do the claims include additional elements that are sufficient to amount to significantly more than the judicial exception. As discussed above with respect to the integration of the abstract idea into a practical application, the additional elements reciting the use of various computing hardware components 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.
Receiving, transmitting, displaying, retrieving, and updating stored data steps are well-understood, routine, and conventional activities. See MPEP 2106.05(d)(II) (“Receiving or transmitting data over a network, e.g., using the Internet to gather data” with regards to the receiving and transmitting steps; “Presenting offers and gathering statistics” with regards to the displaying step; “Storing and retrieving information in memory” with regards to the retrieving steps; “Electronic recordkeeping” with regards to the updating steps).
Thus, even as an ordered combination, the claims do not recite any limitations that amount to significantly more than the judicial exception. The various mental task/process steps are recited at a high level of generality, and not a specific means for confining the claims to a particular manner by which a computer would carry out the claimed invention, other than simply considering certain types of information that are involved in the analysis, which is the majority of the limitations. However, merely confining the claims to such types of information does little more than attempt to limit the claims to a particular field-of-use, describing the context rather than a particular manner of achieving the result. Additionally, as noted earlier, humans are capable of performing such constraint-based decision-making processes, and thus such limitations are not confined to the realm or computers as well, when taking the claims as a whole. Rather, the claims merely claim the resulting goal/effect, rather than a particular manner of the computer achieving such steps beyond what can be practically performed in the mind of a person.
Generally, a claim that merely describes an “effect or result dissociated from any method by which [it] is accomplished” is not directed to patent-eligible subject matter (Internet Patents Corp. v. Active Network, Inc., 790 F.3d 1343, 1348 (Fed. Cir. 2015)). See also Intellectual Ventures, 838 F.3d 1307, 1316 (Fed. Cir. 2016) (quoting Internet Patents Corp.), where the court found claims directed to email filtering to be abstract and patent ineligible when there is “no restriction on how the result is accomplished…[and] [t]he mechanism…is not described.”
The courts have established that a desired goal (i.e., a “result or effect”), absent structural or procedural means for achieving that goal, is an abstract idea. In this case, the claims are directed to an abstract idea for failing to describe how—whether by particular process or structure—the goal is accomplished. Even with the additional elements, the claim limitations fail to restrict how the goal is accomplished. Claims that fail to recite how a desired goal is accomplished do not recite an inventive concept, and thus do not qualify as patent eligible subject matter.
Thus, for at least the aforementioned reasons, the claims are rejected under 35 U.S.C. 101 for being directed to a judicial exception.
Prior Art
The claims would be allowable over the prior art of record if the 35 U.S.C. 112, 101, and non-statutory double patenting rejections were overcome. No prior art rejection is hereby presented, as no prior art was found to teach, suggest, or otherwise render obvious the combination of the independent claim limitations.
Relevant prior arts of record, other than those cited in the Information Disclosure Statement filed by Applicant on 29 October 2025, were:
Sirdevan et al. (“Sirdevan”) (US 2009/0119416 A1): disclosed transforming each input record separately in which each input record can utilize a different template which enables communication with a larger and more diverse set of parties (Sirdevan, [0052]). The template (e.g., validation template) is determined for the inbound data on a per record basis by interrogating the data. Thus entities can mix data protocols (e.g., formats, standards, etc.) in a data stream. Since this mixing could require multiple templates across the data stream, the transformation and exchange server 720 looks into the inbound data and determines which template to use and while processing, it will change to a different template when the data type or data structure changes. For example, the first three records of input data are determined to require a first template and the next four records of input data are determined to require a second template different from the first template (Sirdevan, [0085]). Thus, Sirdevan is similar to the claimed invention, e.g., the claimed limitation involving the candidate asset comprising a first set of attribute values conforming to a first schema (instead of the claimed “standardized” schema), and a second set of attribute values conforming to a second schema (e.g., as opposed to the claimed “asset-specific” schema), and the claimed limitation regarding performing a validation by applying a first validation rule portion to determine whether the first set of attribute values satisfies a definition associated with the first schema, and a (second) validation rule portion to the set of attribute values to determine whether an attribute value of the second set of attribute values is valid for the database. Sirdevan further discloses storing the input record to an output record, which may then be used by a storage analysis module to process and store (at least some of) the fields (see, e.g., Sirdevan, [0092-0095]). Thus, Sirdevan appears to overlap with the claimed “updating the database with the candidate asset based on a result of the validation” and elements of claim 4.
Dean et al. (“Dean”) (US 2004/0098294 A1): disclosed performing primary and secondary validations specified by the catalog and template (see, e.g., Dean, [Abstract] and [0017-0018]. Thus, these appear to be similar to the claimed “standardized” schema and “asset-specific” schema.
Nadig et al. (“Nadig”) (US 2018/0121260 A1): disclosed a variability schema that can define additional properties to apply to data fields enumerated in a data object used by the workflow variant, where the variability schema can include processing rules that define a valid (or invalid) string input for a data field defined in a data object, e.g., as a set of regular expressions that define the format of a string stored in data store 140 and used by the API, minimum and maximum values for numerical data, etc. (Nadig, [0034]). A variability schema may have additional specific processing rules for determining the validity of a value, e.g., a VAT number (Nadig, [0037]). This would seem to overlap with the claimed limitation “generating a second validation rule portion requiring that at least one attribute of the candidate asset satisfy the API validation requirement” (in claims 2 and 15, similar language can be found in claim 1).
However, none of the prior art appeared to teach, suggest, or otherwise render obvious the combination of the independent claims’ limitations. The dependent claims would be allowable over the prior art of record for at least by virtue of their dependency on their respective independent claims.
Conclusion
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/IRENE BAKER/Primary Examiner, Art Unit 2154
13 May 2026
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