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 .
Applicant’s Reply
Applicant's response of 06/23/26 has been entered. The examiner will address applicant's remarks at the end of this office action. Currently claims 1-8, 11-32 are pending.
Election/Restrictions
The applicant has amended claim 1 to delete the original claimed invention and has added language claiming a patentably distinct invention from that originally claimed. The entire claimed invention has been canceled and replaced with a new invention, and as the applicant argued in the traversal of the 101 rejection, the previous analysis under 35 USC 101 has no application to the pending claims due to the amendment. Claim 11 has also been amended to be reciting a patentably distinct invention from that originally claimed. Then focus of the claims in terms of the claimed invention is different from that originally presented.
Newly amended claims 1-8, 11-19, and newly added claims 20-30 are directed to an invention that is independent or distinct from the invention originally claimed for the following reasons:
The original claims were directed to the evaluation of a profitability across segments and cohorts that required specific steps of using curves and determining profitability by comparing curves to each other and determining profitability based on comparing payback velocity and inactivity velocity and based on when the curve reaches one before the inactivity curve reaches zero. This represents a specific subcombination being claimed. The currently amended and/or newly added claims noted above no longer recite this invention but are now directed to real time control of distributed operational data across heterogenous systems, with the claimed steps being totally different than that originally claimed, which represents a different subcombination that is usable together with the originally filed claimed invention, or it outright just a different invention. The previously recited process and system to determine profitability was using the claimed curves and computing inactivity velocity, payback velocity, etc., but none of that is claimed anymore. Had the amended and newly added claims been presented originally with the originally filed claims a restriction/election of species requirement would have been set forth due to the divergence of the claimed subject matter and the different search each invention requires. The claimed invention as set forth in the amended and newly added claims requires a different search than the originally filed claims, and the relevant prior art for the claimed invention would be different than that of the first non-final office action (cited art, relevant art).
Since applicant has received an action on the merits for the originally presented invention, this invention has been constructively elected by original presentation for prosecution on the merits. Accordingly, claims 1-8, 11-30 are withdrawn from consideration as being directed to a non-elected invention. See 37 CFR 1.142(b) and MPEP § 821.03.
Newly added claims 31-32 have been examined on the merits because claims 31 and 32 are reciting the originally elected invention of the originally filed claims.
To preserve a right to petition, the reply to this action must distinctly and specifically point out supposed errors in the restriction requirement. Otherwise, the election shall be treated as a final election without traverse. Traversal must be timely. Failure to timely traverse the requirement will result in the loss of right to petition under 37 CFR 1.144. If claims are subsequently added, applicant must indicate which of the subsequently added claims are readable upon the elected invention.
Should applicant traverse on the ground that the inventions are not patentably distinct, applicant should submit evidence or identify such evidence now of record showing the inventions to be obvious variants or clearly admit on the record that this is the case. In either instance, if the examiner finds one of the inventions unpatentable over the prior art, the evidence or admission may be used in a rejection under 35 U.S.C. 103 or pre-AIA 35 U.S.C. 103(a) of the other invention.
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 31, 32, are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more.
The claims recite a system; therefore, the claims pass step 1 of the eligibility analysis.
For step 2A, the claim(s) recite(s) an abstract idea of determining profitability across different segments of cohorts and users. The act of determining the profitability is claiming a fundamental economic practice that is a certain method of organizing human activities type of abstract idea.
For claim 31, the abstract idea is defined by the elements of:
determining a profitability for a plurality of user cohorts, comprising:
compute an inactivity curve for each of the plurality of user cohorts, the inactivity curve defined as one minus a retention curve representing a fraction of users active over time;
compute a user inactivity velocity as a rate of change of the inactivity curve over time;
compute a return curve representing cumulative revenue relative to acquisition cost for each of the plurality of user cohorts;
compute a payback curve defined as a reciprocal of the return curve;
compute a financial return velocity as a rate of change of the payback curve over time;
determine a profitability for each of the plurality of user cohorts based on: (i) whether the financial return velocity exceeds the user inactivity velocity, and (ii) whether the return curve reaches one before the inactivity curve reaches one
The above limitations are reciting a process by which profitability is being evaluated. Profitably is the act of making a profit. Any business that is operating and/or individuals as citizens is/are known to evaluate their profitability because they have to make a profit to stay in business and/or to keep a roof over their head. The reasoning behind that is that if you continue to lose money operating a business and never make a profit, or never make any money working and are not profitable from an individual standpoint, the business and/or the individual will fail. For claim 31, the claimed steps are reciting a number of computing steps and a profitability determining step, all of which can be done by people manually and/or mentally. The claimed steps of computing an inactivity curve, a user inactivity velocity, a return curve, a payback curve, and a financial return curve are steps that can be performed by people. People can generate the claimed curves (the curves are graphs) using pen and paper. Humans can make computations about the curves and can compare curves with other curves to make judgements or evaluations so that a person can determine the profitability as claimed. Determining profitability by the claimed process of is an fundamental economic practice that is reciting a certain method of organizing human activities type of abstract idea. A person can perform the claimed determining step mentally, which is just comparing data to make a conclusion of when the payback velocity exceeds the inactivity velocity and whether the return curve reaches one before the inactivity curve reaches zero. The above noted claim elements that are defining the abstract idea represent a certain method of organizing human activities type of abstract idea that is a fundamental economic practice of evaluating profitability.
For claim 31, the additional elements of the claim are the recited one or more processors and one or more storage media with instructions to perform the recited steps/functions. Also an additional element is the language reciting a data transmission: “transmit the machine-readable profitability signal in real time to at least one downstream operational or decision-making module, the at least one downstream operational or decision-making module comprising at least one of a product module, a marketing module, or a finance module, each configured to consume the machine- readable profitability signal for operational decision-making.” The claimed language reciting the product module or the marketing module, etc., and how they are configured are not reciting anything to the claimed invention. The only active function recited is the processor being able to transmit a signal in real time to a downstream module, which is claiming a data transmission to another computer. For claim 31, the noted judicial exception is not integrated into a practical application (2nd prong of eligibility test for step 2A) because the additional elements of the claim when considered individually and in combination with the claim as a whole, amount to the use of a computing device (one or more processors, one or more storage media with instructions) that is being merely used as a tool to execute the abstract idea (see MPEP 2106.05(f)), in combination with a post solution activity of sending a data transmission to another computer. In regards to the processor and the storage media that can transmit a signal to another module (another computer), this is simply instructing one to practice the abstract idea by using a generically recited computing device with a processor and memory to perform steps that define the abstract idea. This does not amount to more than a mere instruction to implement the abstract idea on a computer that can communicate data with other computers. The claims use the processor(s) and the storage media as a tool to execute the abstract idea. With respect to the post solution activity of sending a data transmission to another computer (transmit the signal in real time to at least one….module), this is claiming an insignificant extra solution activity that is just sending the profitability result to another computer. Outputting data that is being calculated/determined or sending it to another computer so a person can see the result, is an inherent result of making the calculation/determination in the first place and does not represent a meaningful limit on the claim scope. See MPEP 2106.05(g) in this regard. As explained by the Supreme Court, the addition of insignificant extra-solution activity does not amount to an inventive concept, particularly when the activity is well-understood or conventional. Parker v. Flook, 437 U.S. 584, 588-89, 198 USPQ 193, 196 (1978). In Flook, the Court reasoned that "[t]he notion that post-solution activity, no matter how conventional or obvious in itself, can transform an unpatentable principle into a patentable process exalts form over substance. A competent draftsman could attach some form of post-solution activity to almost any mathematical formula". 437 U.S. at 590; 198 USPQ at 197; Id. (holding that step of adjusting an alarm limit variable to a figure computed according to a mathematical formula was "post-solution activity"). See also Mayo Collaborative Servs. v. Prometheus Labs. Inc., 566 U.S. 66, 79, 101 USPQ2d 1961, 1968 (2012) (additional element of measuring metabolites of a drug administered to a patient was insignificant extra-solution activity). In this case, simply adding a function/step to the processor being able to transmit the profitability signal to another module (such as another computer or another computer program) does not amount to a meaningful limit in the claim scope. This is because the data transmission is reciting an insignificant extra solution activity that in combination with the processor and the storage media and the claim as a whole, does not provide for integration into a practical application (see MPEP 32106.05(f), (g). Claim 31 has not integrated the abstract idea into a practical application and is found to be directed to the abstract idea identified by the examiner.
For claim 31, for step 2B, the claim(s) does/do not include additional elements that are sufficient to amount to significantly more than the judicial exception when considered individually and in combination with the claim as a whole because they do not amount to the use of a computing device (processor(s), storage media), that is/are being used as a tool to execute the abstract idea, see MPEP 2106.05(f), in combination with the well understood, routine, and conventional act of making a data transmission to output the profitability result. The claim is simply instructing one to practice the abstract idea by using a generically recited computing device with a processor and storage media to perform steps that define the abstract idea, where a data transmission can be made. This does not amount to more than a mere instruction to implement the abstract idea on a computer, see MPEP 2106.05(f). The rationale set forth for the 2nd prong of the eligibility test above is also applicable to the analysis at step 2B in this regard. With respect to the data transmission of the profitability to another module, this is considered to be an insignificant post solution activity is something that is well understood, routine, and conventional in the computing field and does not represent significantly more alone or when taken in combination with the claim as a whole. MPEP 2106.05(d)(II), and the cases cited therein, including Intellectual Ventures I, LLC v. Symantec Corp., 838 F.3d 1307, 1321 (Fed. Cir. 2016), TLI Communications LLC v. AV Auto. LLC, 823 F.3d 607, 610 (Fed. Cir. 2016), and OIP Techs., Inc., v. Amazon.com, Inc., 788 F.3d 1359, 1363 (Fed. Cir. 2015), indicate that mere collection or receipt of data over a network is a well‐understood, routine, and conventional function when it is claimed in a merely generic manner (as it is here). Further, the Federal Circuit in Trading Techs. Int’l v. IBG LLC, 921 F.3d 1084, 1093 (Fed. Cir. 2019), and Intellectual Ventures I LLC v. Erie Indemnity Co., 850 F.3d 1315, 1331 (Fed. Cir. 2017), for example, indicated that the mere displaying of data is a well understood, routine, and conventional function. These citations satisfy the Berkheimer evidence that is required at step 2B. The sending of the data transmission that is the profitability results is a well understood, routine, and conventional activity that in combination with the processor(s) and the storage media and in view of the claimed invention as a whole, does not amount to reciting significantly more. Claim 31 does not recite significantly more and is not found to be eligible.
For claim 32, the abstract idea is being further defined by the language of:
wherein the return curve is expressed as at least one of an ROI curve, a ROAS curve, a recoup curve, or a cash flow curve, and wherein the inactivity curve is alternatively referred to as a churn curve, a disengagement curve, or a drop-off curve
Claiming what the curves are expressed as, and what the inactivity curve can alternatively be called, are elements that serve to define more about the same abstract idea of claim 31. No further additional element is claimed for consideration other than those already addressed for claim 31. Therefore, claim 32 does not recite any additional elements that provide for integration at the 2nd prong or that provide significantly more at step 2B. Therefore claim 32 is also not found to be eligible.
Therefore, for the above reasons claims 31, 32 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more.
Response to arguments
The traversal of the 35 USC 101 rejection is not persuasive.
The applicant has argued claims 1 and 11 as amended. The applicant argues that the previous analysis of the claims has no application to the claims. The applicant argues the previous analysis of the office action has no basis as applied to the amended claims. The argued claims 1 and 11 have been withdrawn as being directed to a non-elected invention, as is set forth in this office action. The argument that the previous rejection has no basis to the amended claims and/or cannot be applied to the pending claims highlights the fact that the claimed invention has changed and is not the same as was originally presented. The independent claims 1 and 11 have been withdrawn and the arguments are therefore considered to be moot.
For claim 31 that is claiming the invention that was elected by original presentation, there is no argument for the examiner to consider. The applicant argues claims 1 and 11 in the reply and the specific language of those claims. On page 16 of the reply the applicant relies on the arguments for claims 1 and 11 for the eligibility of claim 31. This is not persuasive because the claimed invention of claims 1 and 11 is not the same as and does not correspond to anything that is recited in claim 31. The reasoning that has been argued for claims 1 and 11 does not apply to claim 31 because claims 1 and 11 are reciting a different invention and the language relied upon is not found in claim 31.
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 nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DENNIS WILLIAM RUHL whose telephone number is (571)272-6808. The examiner can normally be reached M-F 7am-3:30pm.
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, Jessica Lemieux can be reached at 5712703445. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/DENNIS W RUHL/Primary Examiner, Art Unit 3626
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