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 .
Information Disclosure Statement
The information disclosure statement (IDS) submitted on November 3, 2025, is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
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.
Claim(s) 1-20 are rejected under 35 U.S.C. 101 because the claimed invention is not eligible for patenting. There are two criteria for determining subject matter eligibility:
(a) first, a claimed invention must fall within one of the four statutory categories of invention set forth in 35 U.S.C. 101, i.e., process, machine, manufacture, or composition of matter (Step 1); and
(b) second, a claimed invention must be directed to patent-eligible subject matter and not a judicial exception (unless the claim as a whole includes additional limitations amounting to significantly more than the exception) (Step 2).
Step 1:
Claim(s) 1-20 is/are within the four potentially eligible categories of invention (a process, a machine and an article of manufacture, respectively), satisfying Step 1 of the Subject Matter Eligibility (SME) test.
Step 2:
As per Prong One of Step 2A of the §101 eligibility analysis set forth in MPEP 2106, the Examiner notes that the claims recite abstract ideas. More specifically, independent claims 1, 7 and 13 recite:
receiving a data set relating to performance information associated with a plurality of users in managing financial instruments, wherein the performance information includes returns for the financial instruments; [mental process – observation]
normalizing the data set; [mental process – evaluation]
generating a plurality of scores for each of the plurality of users based on the normalized data set according to a scoring rule of a sport, mapping the data set to activities associated with the sport to determine statistical information for each of the plurality of users; [mental process – evaluation] and
initiating presentation of the plurality of scores and the statistical information for evaluation of the plurality of users. [mental process – presentation with pen/paper]
The claims recite data analysis steps to generate and present scores for user performance. The steps are considered mental processes as they recite observation and evaluations that can be done in the mind or with pen and paper. The claims are also to certain methods of organizing human activity as they recite concepts related to managing personal behavior or the rules one would follow to generate and present performance scores. The nominal recitation of a computer elements in claims 7 and 13 do not necessarily preclude the claim from reciting an abstract idea as evidenced by the analysis at Prong 2 of Step 2A.
Regarding Prong Two of Step 2A, a claim reciting an abstract idea must be analyzed to determine whether any additional elements in the claim integrate the judicial exception into a practical application. Limitations that are indicative of integration into a practical application include: Improvements to the functioning of a computer, or to any other technology or technical field, as discussed in MPEP 2106.05(a); Applying or using a judicial exception to effect a particular treatment or prophylaxis for disease or medical condition – see Vanda Memo; Applying the judicial exception with, or by use of, a particular machine, as discussed in MPEP 2106.05(b); Effecting a transformation or reduction of a particular article to a different state or thing, as discussed in MPEP 2106.05(c); and Applying or using the judicial exception in some other meaningful way beyond generally linking the use of the judicial exception to a particular technological environment, such that the claim as a whole is more than a drafting effort designed to monopolize the exception, as discussed in MPEP 2106.05(e) and the Vanda Memo issued in June 2018.
In this case, the independent claims do not include limitations that meet the criteria listed above, thus the abstract idea is not integrated into a practical application. Independent claim 1 does not recite any additional limitations that integrate the abstract idea into a practical application. Independent claim 7 recites a system comprising memory and processors to perform the abstract idea. This amounts to using a computer as a tool to perform the abstract idea and does not integrate the abstract idea into a practical application. Independent claim 13 recites an apparatus comprising memory and processors to perform the abstract idea. This amounts to using a computer as a tool to perform the abstract idea and does not integrate the abstract idea into a practical application.
The dependent claims further limit the abstract idea and some recite additional elements that do not integrate the abstract idea into a practical application. Dependent claims 2, 8 and 14 recite generating scores based on comparing data. As in claim 1, this is mental process. Any computer implementation, as claimed, amounts to using a computer as a tool to perform the abstract idea and does not integrate the abstract idea into a practical application. Dependent claims 3, 9 and 15 recite scoring terms referenced in claim 1. As in claim 1, this is mental process. Any computer implementation, as claimed, amounts to using a computer as a tool to perform the abstract idea and does not integrate the abstract idea into a practical application. Dependent claims 4, 10 and 16 recite presenting information as textual information which can be practically performed by pen and paper and is therefore mental process. Any computer implementation, as claimed, amounts to using a computer as a tool to perform the abstract idea and does not integrate the abstract idea into a practical application. Dependent claims 5, 11 and 17 recite determining standard deviation of the data which is an evaluation that can be practically performed by pen and paper or in the mind and is therefore mental process. Any computer implementation, as claimed, amounts to using a computer as a tool to perform the abstract idea and does not integrate the abstract idea into a practical application. Claims 6, 12 and 18 recite training a machine learning model. Given a broadest reasonable interpretation based on the specification, this training is a mathematical calculation and therefore abstract. Any computer implementation, as claimed, amounts to using a computer as a tool to perform the abstract idea and does not integrate the abstract idea into a practical application. Claim 19 recites the apparatus communicates with a mobile computing device. This amounts to using computer as a tool to perform the abstract idea. There is no integration into a practical application. Claim 20 recites the users include wealth managers, which is part of the abstract idea identified in claim 13. As in claim 13, any computer implementation, as claimed, amounts to using a computer as a tool to perform the abstract idea and does not integrate the abstract idea into a practical application.
The claims do not include limitations beyond generally linking the use of the abstract idea to a particular technological environment. When considered individually and in combination, the system/software claim elements only contribute generic recitations of technical elements to the claims. It is readily apparent, for example, that the claim is not directed to any specific improvements of these elements. The invention is not directed to a technical improvement. When the claims are considered individually and as a whole, the additional elements noted above appear to merely apply the abstract concept to a technical environment in a very general sense.
Lastly and in accordance with Step 2B, the claim does not include additional elements that are sufficient to amount to significantly more than the judicial exception. As discussed above with respect to integration of the abstract idea into a practical application, and when considered individually and in combination, the additional elements amount to no more than mere instruction to apply the exception using generic computer component. Mere instruction to apply an exception using generic computer components cannot provide an inventive concept.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
Claim(s) 1-5, 7-11, 13-17, 19 and 20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Silvera et al, US 2008/0040206.
As per claim 1, Silvera et al discloses a method comprising: receiving a data set relating to performance information associated with a plurality of users in managing financial instruments, wherein the performance information includes returns for the financial instruments; ([0019-0021] – system monitoring performance of certain tasks by agents against a defined set of metrics that are linked to financial aspects concerning the agents over a given period in time; [0048-0050])
normalizing the data set; ([0051] – normalized comparison of performance)
generating a plurality of scores for each of the plurality of users based on the normalized data set according to a scoring rule, mapping the data set determine statistical information for each of the plurality of users; ([0006] – defining a performance metric that relates to a goal of an organization. Performance levels are then defined for the performance metric. The performance levels are associated with an achievement level that an agent's performance with respect to the metric must meet to have their performance classified within a performance level; [0021] - performance statistics; [0041] – performance levels defined to represent a relative level of performance for an agent for the metric defined) and
initiating presentation of the plurality of scores and the statistical information for evaluation of the plurality of users ([0063-0065] – interfaces provide access to performance levels and allows to access performance of a group of agents).
Silvera et al discloses optimizing performance of employees, contractors and other agents employed to perform tasks on behalf of a company, business organization or other entity and providing a performance level defined as fellow threshold, threshold, target and stretch, but specifying at [0041] - the number of levels as well as the labels applied to the levels is a matter of preference and any number of levels referred to with any label may be defined. Silvera et al does not expressly teach the specific data relating to sports, activities associated with the sport; however, these differences are only found in the non-functional descriptive material and are not functionally involved in the steps recited nor do they alter the recited structural elements. The recited method steps would be performed the same regardless of the specific data. Further, the structural elements remain the same regardless of the specific data. Thus, this descriptive material will not distinguish the claimed invention from the prior art in terms of patentability, see In re Gulack, 703 F.2d 1381, 1385, 217 USPQ 401, 404 (Fed. Cir. 1983); In re Lowry, 32 F.3d 1579, 32 USPQ2d 1031 (Fed. Cir. 1994); MPEP [WP TypographicSymbols font/0x27] 2106.
As per claims 7 and 13, Silvera et al discloses the system comprising memory and processors and apparatus comprising processor and memory [0070-0071].
As per claim 2, Silvera et al discloses the method of claim 1, further comprising: comparing the normalized data set with a target data set, wherein the plurality of scores are based on the comparison ([0008, 0051] - provides for evaluating different groups of agents in a normalized way. That is, since all of the agents are evaluated using the same performance levels (e.g., below threshold, threshold, target and stretch), a normalized comparison can be made to determine which groups are performing better relative to other groups).
As per claims 8 and 14, Silvera et al discloses the system comprising memory and processors and apparatus comprising processor and memory [0070-0071].
As per claim 3, Silvera et al discloses the method of claim 2 and the performance levels and the number of levels as well as the labels applied to the levels is a matter of preference and any number of levels referred to with any label may be defined [0041], but fails to explicitly disclose wherein the sport is golf and the scoring rule relates to scoring terms including par, birdy, eagle, bogey, double bogey, and triple bogey; however, these differences are only found in the non-functional descriptive material and are not functionally involved in the steps recited nor do they alter the recited structural elements. The recited method steps would be performed the same regardless of the specific data. Further, the structural elements remain the same regardless of the specific data. Thus, this descriptive material will not distinguish the claimed invention from the prior art in terms of patentability, see In re Gulack, 703 F.2d 1381, 1385, 217 USPQ 401, 404 (Fed. Cir. 1983); In re Lowry, 32 F.3d 1579, 32 USPQ2d 1031 (Fed. Cir. 1994); MPEP [WP TypographicSymbols font/0x27] 2106.
As per claims 9 and 15, Silvera et al discloses the system comprising memory and processors and apparatus comprising processor and memory [0070-0071].
As per claim 4, Silvera et al discloses the method of claim 3, further comprising: presenting the statistical information as textual information ([0021, 0080] – statistical performance information and associated performance levels) but fails to expressly disclose fairway average and handicap; however, these differences are only found in the non-functional descriptive material and are not functionally involved in the steps recited nor do they alter the recited structural elements. The recited method steps would be performed the same regardless of the specific data. Further, the structural elements remain the same regardless of the specific data. Thus, this descriptive material will not distinguish the claimed invention from the prior art in terms of patentability, see In re Gulack, 703 F.2d 1381, 1385, 217 USPQ 401, 404 (Fed. Cir. 1983); In re Lowry, 32 F.3d 1579, 32 USPQ2d 1031 (Fed. Cir. 1994); MPEP [WP TypographicSymbols font/0x27] 2106.
As per claims 10 and 16, Silvera et al discloses the system comprising memory and processors and apparatus comprising processor and memory [0070-0071].
As per claim 5, Silvera et al discloses the method of claim 1, further comprising: determining standard deviation of the data set from the target set, wherein the plurality of scores are based on the determined standard deviation ([0008 0049] - invention can be used to compare, in a normalized manner, resulting performance across disparate agent roles that may have very different performance metrics and achievement levels.
As per claims 11 and 17, Silvera et al discloses the system comprising memory and processors and apparatus comprising processor and memory [0070-0071].
As per claim 19, Silvera et al discloses the apparatus of claim 13, wherein the apparatus is further configured to communicate with a mobile computing device over a communication network, the mobile computing device being configured to present the plurality of scores and the statistical information for evaluation of the plurality of users ([0060-0061] – communications network renders the performance optimization website).
As per claim 20, Silvera et al discloses the apparatus of claim 13, and monitoring performance of employees, contractors and other agents employed to perform tasks on behalf of a company, business organization or other entity, but fails to explicitly disclose wherein the plurality of users include wealth managers. However, this limitation merely recites an intended use of the invention. A recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim. In a claim drawn to a process of making, the intended use must result in a manipulative difference as compared to the prior art. See In re Casey, 152 USPQ 235 (CCPA 1967) and In re Otto, 136 USPQ 458, 459 (CCPA 1963). The claimed recitations of intended use neither result in a structural difference between the claimed invention and the prior art nor in a manipulative difference as compared to the prior art; therefore, the claimed invention is not deemed to be patentably distinct over the prior art.
Claim(s) 6, 12 and 18 is/are rejected under 35 U.S.C. 103 as being unpatentable over Silvera et al, US 2008/0040206, in view of Anamandra et al, US 2023/0131009.
As per claim 6, Silvera et al discloses the method of claim 1, but fails to explicitly disclose training a machine learning model based on the plurality of scores to generate subsequent scores for each of the plurality of users. Anamandra et al discloses a machine learning based performance prediction ([0038] - machine learning models trained to predict declines in employee performance. The trained machine learning models may be applied to a variety of data corresponding to the leading indicators of employee burnout including, for example, productivity data, personal data, human resource data, information technology data, and contextual data). It would have been obvious to one of ordinary skill in the art at the time of the invention to include in the system of Silvera et al the ability to predict performance levels with machine learning as taught by Anamandra et al since the claimed invention is merely a combination of old elements and in the combination each element merely would have performed the same function as it did separately, and one of ordinary skill in the art would have recognized that the results of the combination were predictable.
As per claims 12 and 18, Silvera et al discloses the system comprising memory and processors and apparatus comprising processor and memory [0070-0071].
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Williams et al, US 2015/0242793 - SYSTEMS AND METHODS FOR AUTO-OPTIMIZATION OF GAMIFICATION MECHANICS FOR WORKFORCE MOTIVATION - receive performance metrics for the employee from internal systems, or via third party systems. The performance metrics may be employed to update the gamification mechanics by optimizing weights for each action in a fitness function. Effectiveness predictions for future actions are generated using these optimized weights
Cooper, US 2006/0233349 - Graphical Tool, System, And Method For Visualizing Agent Performance - user-interface includes a display of performance metrics indicative of a performance level of a contact center agent, a display of at least one performance threshold, the performance level of the agent being displayed in relation to the performance threshold, and a visual indication of the performance threshold being associated with at least one contribution level of the contact center agent to a contact center
Cohen et al, US 2003/0149613 - Computer-implemented System And Method For Performance Assessment - optimization program is used to optimize the overall performance rating of the performers by adjusting a set of weights constrained by the business logic rules. The overall performance rating is used to assess the performance of the performers
Buhring et al, WO 2007/089606 - Computer-implemented Displaying Method For Showing Performance Information To Agent Involves Displaying Graphical Representation Comprising Agent Performance Level To Agent - agent performance level is determined by comparing an agent performance with multiple achievement values associated with one performance level. Information identifying the agent is received in response to the receiving, retrieving performance information for the agent
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JOHNNA LOFTIS whose telephone number is (571)272-6736. The examiner can normally be reached M-F 7:00am-3:30pm.
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JOHNNA LOFTIS
Primary Examiner
Art Unit 3625
/JOHNNA R LOFTIS/ Primary Examiner, Art Unit 3625
