Subject Matter Eligibility Supplement:
10. Subject Matter Eligibility: Worksheet, Example 21, Claim 2
| Official PDF » | 7 pgs; Subject Matter Eligibility worksheet for claim 2. |
10. Subject Matter Eligibility: Worksheet, Example 21, Claim 2
Example 21. Transmission Of Stock Quote Data
The following hypothetical claims and background are modeled after the technology in Google Inc. v. Simpleair, Inc., Covered Business Method Case No. CBM 2014‐00170 (Jan. 22, 2015), but are revised to emphasize certain teaching points. The patent at issue was U.S. Patent No. 7,035,914 entitled “System and Method for Transmission of Data.” In this Workshop example, claim 1 is an original claim and is later amended. Note that this Workshop example mirrors “Example 21” in the “July 2015 Update Appendix 1: Examples” (July 2015 Update Appendix 1: Examples).
I. Background (Partial Disclosure):
The invention is directed to a stock quote alert subscription service where subscribers receive customizable stock quotes on their local computers from a remote data source. At the time of the invention, stock quote subscription services over the Internet were known in the art. However, existing services experienced challenges when attempting to notify a subscriber whose computer was offline (not connected to the Internet) at the time of the alert, since many stock quotes are time sensitive. Further, many previous subscription services simply transmitted all available stock quote information to the user at a given time, which required the subscriber to sort through large amounts of data to identify relevant stock quotes, and often sent information at an inconvenient time (e.g., after the stock exchanges are closed). The stock quote alert subscription service of the present invention addresses these problems.
During enrollment to the subscription service, the subscriber provides preference information in the form of stocks of interest, stock price threshold (e.g., when the price reaches $100 per share), a destination address of a wireless device (e.g., a number for a cellular phone, pager or PDA), preferred format of the alert, and a transmission schedule indicating the time/date that alerts should be sent. The subscription service uses a transmission server to receive data from a data source and send selected data to subscribers. The transmission server includes a memory, a transmitter, and a microprocessor. The subscription service provides a stock viewer application to subscribers for installation on their individual computers. After a subscriber enrolls, the service receives stock quote information sent from a data source to the transmission server. The server filters the stock quote information based upon the subscriber preference information that is stored in memory on the server. That is, the server compares the received stock quote information to the stored stocks of interest and stock price threshold preferences to determine which stock quotes to drop and which to further process. Next, a stock quote alert is built containing the filtered stocks’ name and price information and a universal resource locator (URL) to a web page at the data source which contains further information on the stock quote. The alert is then formatted into data blocks based upon the alert format preference information. Subsequently, the formatted data blocks are transmitted to the subscriber’s wireless device in accordance with the transmission schedule. After receiving the alert, the subscriber can connect the wireless device to the subscriber’s computer. The alert causes the subscriber’s computer to auto‐launch the stock viewer application provided by the service to display the alert. When connected to the Internet, the subscriber may then click on the URL in the alert to use the stock viewer application to access more detailed information about the stock quote from the data source.
Example 21, Claim 2
AMENDED CLAIM 1 (note amended claim 1 is identical to claim 2 in “Example 21”)
1 (Amended). A method of distributing stock quotes over a network to a remote subscriber computer, the method comprising:
› providing a stock viewer application to a subscriber for installation on the remote subscriber computer;
› receiving stock quotes at a transmission server sent from a data source over the Internet, the transmission server comprising a microprocessor and a memory that stores the remote subscriber’s preferences for information format, destination address, specified stock price values, and transmission schedule, wherein the microprocessor
› filters the received stock quotes by comparing the received stock quotes to the specified stock price values;
› generates a stock quote alert from the filtered stock quotes that contains a stock name, stock price and a universal resource locator (URL), which specifies the location of the data source;
› formats the stock quote alert into data blocks according to said information format; and
› transmits the formatted stock quote alert over a wireless communication channel to a wireless device associated with a subscriber to a computer of the remote subscriber based upon the destination address and transmission schedule,
› wherein the alert activates the stock viewer application to cause the stock quote alert to display on the remote subscriber computer and to enable connection via the URL to the data source over the Internet when the wireless device is locally connected to the remote subscriber computer and the remote subscriber computer comes online.
Claim Analysis Task:
You should review the claim and content above. Then attempt to analyze the claim for subject matter eligibility. You may review the steps below and/or print out the PES Worksheet below and fill it out. At the very least, go through the official PDF supplement and make sure you understand it.
| PES Worksheet » | PES Subject Matter Eligibility Worksheet. This is a blank template you may print out and use to analyze the claim. |
The following is the same material found in the PES Worksheet above:
This worksheet can be used to assist in analyzing a claim for “Subject Matter Eligibility” (SME) under 35 U.S.C. 101 for any judicial exception (law of nature, natural phenomenon, or abstract idea) in accordance with the 2014 Interim Eligibility Guidance. As every claim must be examined individually based on the particular elements recited therein, a separate worksheet should be used to analyze each claim. The use of this worksheet is optional.
Worksheet Summary: Section I is designed to address the first activity in examination, which is to determine what applicant invented and to construe the claim in accordance with its broadest reasonable interpretation (BRI). Next, referring to the eligibility flowchart reproduced in the Quick Reference Sheet, Section II addresses Step 1 regarding the four statutory categories of invention. Section III addresses Step 2A by determining whether the claim is directed to an abstract idea. Section IV addresses Step 2B by identifying additional elements to determine if the claim amounts to significantly more than an abstract idea.
I. What did the applicant invent?
Write out what they invented and establish the broadest reasonable interpretation (BRI) of the claim.
II. Does the claimed invention fall within one of the four statutory categories of invention? This is Step 1 where they are deciding if the claimed invention is a process, machine, manufacture, or composition of matter.
A. If yes, continue with the SME analysis.
B. If no then the claim is rejected due to the fact that it is non-statutory subject matter. The claimed invention is not one of the four statutory categories. Make a rejection of the claim as being drawn to non-statutory subject matter.
If the claim could be amended to fall within one of the statutory categories, it is recommended to continue with the SME analysis under that assumption. Make the assumption clear in the record if a rejection is ultimately made under Step 2, and consider suggesting a potential amendment to applicant that would result in the claim being drawn to a statutory category.
If no amendment is possible, conclude the SME analysis and continue with examination under each of the other patentability requirements.
III. Is the claim directed to an abstract idea (Step 2A)?
Courts have found certain concepts to be “abstract ideas”, for example fundamental economic practices, certain methods of organizing human activity, ideas themselves (standing alone), or mathematical relationships/formulae. Identify the claim limitation(s) that correspond to the abstract idea, and explain how such is similar to concepts previously held by the courts to be abstract. A claim is “directed” to an abstract idea when the abstract idea is recited (i.e., set forth or described) in the claim.
Choose one of the following:
A. No, the claim does not recite a concept that is similar to those found by the courts to be abstract. Conclude SME analysis and continue with examination under each of the other patentability requirements. If needed, the record can be clarified by providing remarks in the Office action regarding interpretation of the claim (for example: the broadest reasonable interpretation of the claim is not directed to an abstract idea.)
B. Yes, but the streamlined analysis is appropriate as the eligibility is self-evident, and a full eligibility analysis is not needed. Applicant’s claimed invention, explained in Section I above, is not focused on the abstract idea, and the claim clearly does not attempt to tie up an abstract idea such that others cannot practice it. (Refer to the February 2015 Training Slides for information and examples of a streamlined analysis.) Conclude SME analysis and continue with examination under each of the other patentability requirements.
C. Yes, identify the limitation(s) in the claim that recite(s) the abstract idea and explain why the recited subject matter is an abstract idea. After identifying the abstract idea, continue with SME analysis.
The limitation(s) in the claim that set(s) forth or describe(s) the abstract idea is (are):
The reason(s) that the limitation(s) are considered an abstract idea is
(are):
IV. Does the claim as a whole amount to significantly more than the abstract idea (Step 2B)?
A. Are there any additional elements (features/limitations/step) recited in the claim beyond the abstract idea identified above?
1. No, there are no other elements in the claim in addition to the abstract idea. Conclude SME analysis by making a § 101 rejection and continue with examination under each of the other patentability requirements.
Are there elements in the disclosure that could be added to the claim that may make it eligible? Identify those elements and consider suggesting them to applicant:
2. Yes, the claim elements (features/limitations/steps) in addition to the abstract idea are:
Continue with the SME analysis by evaluating the significance of the additional elements.
B. Evaluate the significance of the additional elements. Identifying additional elements and evaluating their significance involves the search for an “inventive concept” in the claim. It can be helpful to keep in mind what applicant invented (identified in Section I above) and how that relates to the additional elements to evaluate their significance.
Consider all of the identified additional elements individually and in combination to determine whether the claim as a whole amounts to significantly more than the abstract idea identified above. Reasons supporting the significance of the additional elements can include one or more of the following:
- improves another technology or technical field
- improves the functioning of a computer itself
- applies the abstract idea with, or by use of, a particular machine
- not a generic computer performing generic computer functions
- not adding the words “apply it” or words equivalent to “apply the abstract idea”
- not mere instructions to implement an abstract idea on a computer
- effects a transformation or reduction of a particular article to a different state or thing
- adds a specific limitation other than what is well-understood, routine and
conventional in the field
- not appending well-understood, routine, and conventional activities previously known to the industry, specified at a high level of generality
- not a generic computer performing generic computer functions
- adds unconventional steps that confine the claim to a particular useful application
- not adding insignificant extrasolution activity, such as mere data gathering
- adds meaningful limitations that amount to more than generally linking the use of the abstract idea to a particular technological environment
Complete (1) or (2) below:
1. Yes, the additional elements, taken individually or as a combination, result in the claim amounting to significantly more than the abstract idea because:
If any elements, individually or as a combination, amount to the claim reciting significantly more than the abstract idea, conclude SME analysis and continue with examination under each of the other patentability requirements. If needed, the record can be clarified by providing remarks in the Office action regarding interpretation of the claim (for example: the claim recites the abstract idea of “x”, but amounts to significantly more than the idea itself with the additional element “y” because “abc”.)
2. No, the additional elements, taken individually and as a combination, do not result in the claim amounting to significantly more than the abstract idea because:
If no elements, taken individually and as a combination, amount to the claim reciting significantly more than the abstract idea, conclude the SME analysis by making a 35 U.S.C. 101 rejection and continue with examination under each of the other patentability requirements.
Are there elements in the disclosure that could be added to the claim that may make it eligible? Identify those elements and consider suggesting them to applicant:
Review Official PDF Supplement
After attempting the determine subject matter eligibility on your own, make sure you review the Official PDF.
| Official PDF » | 7 pgs; Subject Matter Eligibility worksheet for claim 2. |
