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 .
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.
Claims 1-20 are 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.
MPEP 2163.04 states the following:
I. STATEMENT OF REJECTION REQUIREMENTS
In rejecting a claim, the examiner must set forth express findings of fact which support the lack of written description conclusion (see MPEP § 2163 for examination guidelines pertaining to the written description requirement). These findings should:
(A) Identify the claim limitation(s) at issue; and
(B) Establish a prima facie case by providing reasons why a person skilled in the art at the time the application was filed would not have recognized that the inventor was in possession of the invention as claimed in view of the disclosure of the application as filed. A general allegation of "unpredictability in the art" is not a sufficient reason to support a rejection for lack of adequate written description. A simple statement such as "Applicant has not pointed out where the new (or amended) claim is supported, nor does there appear to be a written description of the claim limitation ‘____’ in the application as filed." may be sufficient where the claim is a new or amended claim, the support for the limitation is not apparent, and applicant has not pointed out where the limitation is supported.
See Hyatt v. Dudas, 492 F.3d 1365, 1370, 83 USPQ2d 1373, 1376 (Fed. Cir. 2007) (holding that "[MPEP] § 2163.04 [subsection] (I)(B) as written is a lawful formulation of the prima facie standard for a lack of written description rejection.")
(emphasis added).
Claim 1 recites the following:
upon determining that the first token and the third token match or that the second token and the third token match, adjust the predetermined value to indicate that the third token is a match to a token not stored in the database storing unique tokens, wherein the adjusted predetermined value indicates an increased confidence in accuracy associated with the third token.
Examiner finds: (1) Applicant has not pointed out where “upon determining that the first token and the third token match or that the second token and the third token match, adjust the predetermined value to indicate that the third token is a match to a token not stored in the database storing unique tokens, wherein the adjusted predetermined value indicates an increased confidence in accuracy associated with the third token” is supported; (2) nor does there appear to be a written description of the claim limitation ‘upon determining that the first token and the third token match or that the second token and the third token match, adjust the predetermined value to indicate that the third token is a match to a token not stored in the database storing unique tokens, wherein the adjusted predetermined value indicates an increased confidence in accuracy associated with the third token” in the application1 as filed.
As such, Examiner submits one skilled in the art at the time of filing did not have possession of “upon determining that the first token and the third token match or that the second token and the third token match, adjust the predetermined value to indicate that the third token is a match to a token not stored in the database storing unique tokens, wherein the adjusted predetermined value indicates an increased confidence in accuracy associated with the third token.”
Claims 8 and 14 are also rejected for these reasons.
The remaining dependent claims inherit the deficiencies of their respective parent claims and thus are also rejected for the reasons above.
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 USC 101 because the claimed invention is directed to an abstract idea without significantly more.
Claim 1 recites
A non-transitory, computer-readable storage medium comprising instructions recorded thereon, wherein the instructions, when executed by at least one data processor of a system, cause the system to:
store a third token in a database storing unique tokens;
upon storing the third token into the database storing unique tokens,
set a confidence value associated with the third token to a predetermined value indicating that the third token is a new token in the database storing unique tokens;
obtain a first token and a second token, wherein the first token includes first information that is data masked, wherein the second token includes second information that is data masked, wherein the first information is different from the second information;
compare the first token and the second token to determine whether the first token and the second token match;
and upon determining that the first token and the second token do not match:
obtain a third token from the database storing unique tokens, wherein the third token is unique in the database;
compare the first token and the third token to obtain a first indication of whether the first token and the third token match;
compare the second token and the third token to obtain a second indication of whether the second token and the third token match;
upon determining that the first token and the third token match or that the second token and the third token match, adjust the predetermined value to indicate that the third token is a match to a token not stored in the database storing unique tokens, wherein the adjusted predetermined value indicates an increased confidence in accuracy associated with the third token.
Examiner finds that the emphasized (bolded) portions of claim 1 above recite an abstract idea—namely, mental processes. See MPEP 2106.04(a)(2)(III):
Accordingly, the ‘mental processes’ abstract idea grouping is defined as concepts performed in the human mind, and examples of mental processes include observations, evaluations, judgments, and opinions
When read as a whole, the recited limitations are directed to using mental steps to observe, evaluate, and make judgements about electronic data. More specifically, when read as a whole, the above bolded limitations are directed to comparing pieces of data and determining whether any of the pieces of data match.
Taking each element individually, Examiner provides the following analysis:
Bolded Abstract Idea Claim Elements
Examiner analysis of bolded abstract idea elements considered individually
A non-transitory, computer-readable storage medium comprising instructions recorded thereon, wherein the instructions, when executed by at least one data processor of a system, cause the system to:
store a third token in a database storing unique tokens;
upon storing the third token into the database storing unique tokens,
set a confidence value associated with the third token to a predetermined value indicating that the third token is a new token in the database storing unique tokens;
This element merely requires an evaluation and/or judgment on the part of a human as to what value to set as the confidence value.
obtain a first token and a second token, wherein the first token includes first information that is data masked, wherein the second token includes second information that is data masked, wherein the first information is different from the second information;
compare the first token and the second token to determine whether the first token and the second token match;
This element merely requires observation and evaluation of the two tokens and an evaluation/judgment as to whether they match.
and upon determining that the first token and the second token do not match:
This element merely requires observation and evaluation of the two tokens (1st and 2nd) and an evaluation/judgment as to whether they match.
obtain a third token from the database storing unique tokens, wherein the third token is unique in the database;
compare the first token and the third token to obtain a first indication of whether the first token and the third token match;
This element merely requires observation and evaluation of the two tokens (1st and 3rd) and an evaluation/judgment as to whether they match. Examiner finds “to obtain a first indication of whether the first token and the third token match” has no patentable weight because it does not cause any steps to be performed.
compare the second token and the third token to obtain a second indication of whether the second token and the third token match;
This element merely requires observation and evaluation of the two tokens (2nd and 3rd) and an evaluation/judgment as to whether they match. Examiner finds “to obtain a second indication of whether the second token and the third token match” has no patentable weight because it does not cause any steps to be performed.
upon determining that the first token and the third token match or that the second token and the third token match,
Again, this element merely requires observation and evaluation the three tokens and an evaluation/judgment as to whether the 1st and 3rd or the 2nd and 3rd match.
adjust the predetermined value to indicate that the third token is a match to a token not stored in the database storing unique tokens,
This element merely requires evaluation and judgment as to what number to adjust the value to.
wherein the adjusted predetermined value indicates an increased confidence in accuracy associated with the third token.
This element merely requires an evaluation/judgment as how to adjust the predetermined value as it relates to confidence in accuracy associated with the third token.
Turning to the additional elements, Examiner provides the following analysis:
Additional Elements
Analysis of italicized element and whether they integrate the exception and whether they recite an inventive concept.
MPEP citation
A non-transitory, computer-readable storage medium comprising instructions recorded thereon, wherein the instructions, when executed by at least one data processor of a system, cause the system to:
This element recites mere instructions to apply the exception. It does not integrate the exception and does not recite an inventive concept.
2106.05(f)
store a third token in a database storing unique tokens;
This element recites mere data gathering and thus recites insignificant extra solution activity. It does not integrate the exception
This element recites a well-understood, routing, and conventional (WURC) computer function (storing and retrieving information in memory) and thus does not recite an inventive concept.
2106.05(h)
2106.05(d)(II)
upon storing the third token into the database storing unique tokens,
This element recites mere data gathering and thus recites insignificant extra solution activity. It does not integrate the exception
This element recites a well-understood, routing, and conventional (WURC) computer function (storing and retrieving information in memory) and thus does not recite an inventive concept.
2106.05(h)
2106.05(d)(II)
set a confidence value associated with the third token to a predetermined value indicating that the third token is a new token in the database storing unique tokens;
obtain a first token and a second token, wherein the first token includes first information that is data masked, wherein the second token includes second information that is data masked, wherein the first information is different from the second information;
This element recites mere data gathering and thus recites insignificant extra solution activity. It does not integrate the exception
This element recites a well-understood, routing, and conventional (WURC) computer function (storing and retrieving information in memory) and thus does not recite an inventive concept.
2106.05(h)
2106.05(d)(II)
compare the first token and the second token to determine whether the first token and the second token match;
and upon determining that the first token and the second token do not match:
obtain a third token from the database storing unique tokens, wherein the third token is unique in the database;
This element recites mere data gathering and thus recites insignificant extra solution activity. It does not integrate the exception
This element recites a well-understood, routing, and conventional (WURC) computer function (storing and retrieving information in memory) and thus does not recite an inventive concept.
2106.05(g)
2106.05(d)(II)
compare the first token and the third token to obtain a first indication of whether the first token and the third token match;
This element merely requires observation and evaluation of the two tokens (1st and 3rd) and an evaluation/judgment as to whether they match. Examiner finds “to obtain a first indication of whether the first token and the third token match” has no patentable weight because it does not cause any steps to be performed.
2106.05(g)
2106.05(d)(II)
compare the second token and the third token to obtain a second indication of whether the second token and the third token match;
This element merely requires observation and evaluation of the two tokens (2nd and 3rd) and an evaluation/judgment as to whether they match. Examiner finds “to obtain a second indication of whether the second token and the third token match” has no patentable weight because it does not cause any steps to be performed.
upon determining that the first token and the third token match or that the second token and the third token match,
Again, this element merely requires observation and evaluation the three tokens and an evaluation/judgment to the 1st and 3rd or the 2nd and 3rd match.
adjust the predetermined value to indicate that the third token is a match to a token not stored in the database storing unique tokens,
wherein the adjusted predetermined value indicates an increased confidence in accuracy associated with the third token.
This element merely requires an evaluation/judgment as how to adjust the predetermined value as it relates to confidence in accuracy associated with the third token.
The additional elements above “[a]dd nothing … that is not already present when the steps are considered separately’”. MPEP 2106.05 (I)(B)(quoting Alice).
It is the Examiner’s position that claim 1 is nothing more than an drafting effort that attempts to monopolize the abstract idea of “comparing pieces of data and determining whether any of the pieces of data match” without significantly more.
Examiner additionally finds deduplication is a mental process that merely requires observation and evaluation data and an evaluation/judgment of the data to determine whether it contains duplicative data.
Examiner additionally finds consolidating data is a mental process that merely requires observation and evaluation of the data and an evaluation/judgment as to whether the data contains identical pieces of data.
As such, when the claim elements are considered as a whole and individually, claim 1 recites an abstract idea without significantly more.
Claim 8 and claim 14 are also rejected for the reasons given above for claim 1.
Dependent claims 2-7 are rejected under 35 USC 101 for the reasons indicated below.
Claim
Bold = abstract idea
Italics = additional element
Analysis
MPEP
2. . . .upon determining that the first token and the third token match and that the second token and the third token match, determine that the first token and the second token match;
This element, again, merely requires observation and evaluation of the 3 tokens and an evaluation/judgment as to which ones match.
2106.04(a)(2)(III)
create a composite token including the first information and the second information,
This element is nothing more than a human evaluation and judgment. It merely requires taking two data items that are the same and combining them into one data item. Examiner finds this can be practically performed in the human mind with the aid of pen and paper.
2106.04(a)(2)(III)
wherein the first information and the second information are data masked;
“Masked” data can be observed and evaluated by a human. When read broadly in light of the specification, it is not limited to data that cannot be observed or evaluated by the human mind. See, specification at para. 21. For example, hashed data values can be observed and evaluated by a human.
2106.04(a)(2)(III)
and reduce memory footprint associated with the database by storing in the database an indication that the composite token is created.
This element recites insignificant extra solution activity (mere data gathering) and recites a WURC computer function (storing and retrieving information in memory). It does not integrate the exception or recite an inventive concept.
Examiner finds this element is a drafting effort that attempts to monopolize the abstract idea of determining whether two piece of data match. Reducing a memory footprint by storing less data in memory is not an improvement to computer technology at the time of filing. See MPEP 2106.05(a)(1) cited in right panel.
2106.05(g)
2106.05(d)(II)
2106.05(a)(I)
Examples that the courts have indicated may not be sufficient to show an improvement in computer functionality:
Providing historical usage information to users while they are inputting data, in order to improve the quality and organization of information added to a database, because "an improvement to the information stored by a database is not equivalent to an improvement in the database’s functionality," BSG Tech LLC v. Buyseasons, Inc., 899 F.3d 1281, 1287-88, 127 USPQ2d 1688, 1693-94 (Fed. Cir. 2018);
(emphasis added).
3. . . . determine whether the composite token is included in the database;
Determining whether something exists in an organized collection of information (i.e. a database) merely requires human observation and/or evaluation.
2106.04(a)(2)(III)
upon determining that the composite token is not included in the database,
Determining whether something exists in an organized collection of information (i.e. a database) merely requires human observation and/or evaluation.
2106.04(a)(2)(III)
add the composite token to the database;
This element recites insignificant extra solution activity (mere data gathering) and recites a WURC computer function (storing and retrieving information in memory; electronic recordkeeping). It does not integrate the exception or recite an inventive concept.
2106.05(g)
2106.05(d)(II)
and upon determining that the composite token is included in the database, increase a confidence value associated with the composite token, wherein the confidence value indicates an accuracy associated with the composite token.
Determining whether something exists in an organized collection of information (i.e. a database) merely requires human observation and/or evaluation. Increasing a confidence value merely requires human evaluation and judgment.
2106.04(a)(2)(III)
4. The non-transitory, computer-readable storage medium of claim 1, comprising instructions to create the database by: determining whether the first token is included in the database; and upon determining the first token is not included in the database,
Determining whether something exists in an organized collection of information (i.e. a database) merely requires human observation and/or evaluation.
2106.04(a)(2)(III)
adding the first token to the database.
This element recites insignificant extra solution activity (mere data gathering) and recites a WURC computer function (storing and retrieving information in memory; electronic recordkeeping). It does not integrate the exception or recite an inventive concept.
2106.05(g)
2106.05(d)(II)
5. The non-transitory, computer-readable storage medium of claim 1, comprising instructions to create the database by: obtaining a token from a trusted source;
This element recites insignificant extra solution activity (mere data gathering) and recites a WURC computer function (storing and retrieving information in memory; electronic recordkeeping). It does not integrate the exception or recite an inventive concept.
2106.05(g)
2106.05(d)(II)
and determining whether the token is included in the database;
Determining whether something exists in an organized collection of information (i.e. a database) merely requires human observation and/or evaluation.
2106.04(a)(2)(III)
and upon determining the token is not included in the database,
Determining whether something exists in an organized collection of information (i.e. a database) merely requires human observation and/or evaluation. Increasing a confidence value merely requires human evaluation and judgment.
2106.04(a)(2)(III)
adding the token to the database.
This element recites insignificant extra solution activity (mere data gathering) and recites a WURC computer function (storing and retrieving information in memory; electronic recordkeeping). It does not integrate the exception or recite an inventive concept.
2106.05(g)
2106.05(d)(II)
6. The non-transitory, computer-readable storage medium of claim 1, wherein instructions to compare the tokens comprise instructions to:
compare the tokens using A-B matching, deterministic matching, or probabilistic matching.
Comparing data using “A-B matching, deterministic matching, or probabilistic matching” can be practically performed in the human mind with the aid of pen and paper. It merely requires observation of the tokens and an evaluation/judgment as to whether they match.
2106.04(a)(2)(III)
7. The non-transitory, computer-readable storage medium of claim 1, comprising instructions to:
obtain the first information; and
This element recites insignificant extra solution activity (mere data gathering) and recites a WURC computer function (storing and retrieving information in memory). It does not integrate the exception or recite an inventive concept.
2106.05(g)
2106.05(d)(II)
obfuscate the first information by hashing and/or encryption to obtain the first information that is data masked.
This element generally links the abstract idea to the field of use of encryption/hashing. It does not integrate the exception and does not recite an inventive concept.
2106.05(h)
Claims 9-13 and 15-20 are rejected for the same reasons given above for claims 2-7.
The additional elements above “[a]dd nothing … that is not already present when the steps are considered separately’”. MPEP 2106.05 (I)(B)(quoting Alice). Again, Examiner finds the elements above are nothing more than drafting efforts that attempt to monopolize the abstract idea of “comparing pieces of data and determining whether any of the pieces of data match” without significantly more.
As such, when the claim elements above are considered as a whole and individually, claims recite an abstract idea without significantly more.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ALBERT M PHILLIPS, III whose telephone number is (571)270-3256. The examiner can normally be reached 10a-6:30pm EST M-F.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Ann J Lo can be reached at (571) 272-9767. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/ALBERT M PHILLIPS, III/ Primary Examiner, Art Unit 2159
1 Because this application is a continuation application, the presumption that the claims are part of the original disclosure (i.e. the specification filed on 11/24/2020) does not apply.
Prosecution Insights