DETAILED ACTION
Notice of Pre-AIA or AIA Status
[1] The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Notice to Applicant
[2] This communication is in response to the amendment filed 11 September 2025. It is noted that this application benefits from Provisional Patent Application Serial No. 62/923,164 filed 18 October 2019. Claims 21-23 have been cancelled. Claims 1, 9-10, and 18-20 have been amended. Claims 1-20 are pending.
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.
[3] 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.
As presented by amendment, claim 1 recites “…executing, at the workflow run-time module based on the abnormal conditions, automated reruns of the workflow at the plurality of backup servers using the cluster-based fault tolerance model…”. With respect to the recited “fault tolerance model”, disclosure appears to be limited to paragraph [0013] of the Specification as originally filed. Paragraph [0013] states:
“…The present technology further provides a cluster-based fault tolerance model that allows a workload to be executed on multiple backup servers in a fail-over scenario…”
Examiner could not identify any further reference to a model or fault tolerance model. While the supportive disclosure states, generally and in an unspecified manner, that a cluster-based fault tolerance model allows the workload to be executed on multiple servers, the disclosure does not provide any description of the model and/or abnormal conditions which may trigger and implement a distribution of processes to backup servers.
Claims 10 and 19, as presented by amendment that mirrors claim 1, include the functions noted above with respect to claim 1 and are also 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.
Claims 2-9, 11-18, 20 inherit and fail to remedy the deficiencies of their respective parent claims and are also 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.
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.
[4] Previous rejection(s) of claims 1-20 under 35 U.S.C. 101 because the claimed invention is directed to non-statutory subject matter, specifically an abstract idea without significantly more has/have not been overcome by the amendments to the subject claims and is/are maintained. The revised statement of rejection presented below is necessitated by amendment and addresses the present amendments to the pending claims.
The following analysis is based on the framework for determining patent subject matter eligibility under 35 U.S.C. 101 established in the decisions of the Supreme Court in Mayo Collaborative Services v. Prometheus Labs., Incorporated and Alice Corporation Pty. Ltd. v. CLS Bank International, et al. (See MPEP 2106 subsection III and 2106.03-2106.05). Claim(s) 1-20 as a whole is/are determined to be directed to an abstract idea (See MPEP 2106 subsection III and 2106.03-2106.05). The rationale for this determination is explained below:
Abstract ideas are excluded from patent eligibility based on a concern that monopolization of the basic tools of scientific and technological work might serve to impede, rather than promote, innovation. Still, inventions that integrate the building blocks of human ingenuity into something more by applying the abstract idea in a meaningful way are patent eligible (See MPEP 2106.04).
Consistent with the findings of the Supreme Court in Mayo Collaborative Services v. Prometheus Labs., Incorporated and Alice Corporation Pty. Ltd. v. CLS Bank International, et al. ineligible abstract ideas are defined in groups, namely: (1) Mathematical Concepts (e.g., mathematical relationships, mathematical formulas or equations, and mathematical calculations; (2) Mental Processes (e.g., concepts performed or performable in the human mind including observations, evaluations, judgements, or opinions) (See MPEP 2106.04(a).
Eligibility Step 1: Four Categories of Statutory Subject Matter (See MPEP 2106.03): Independent claims 1, 10, and 19 are directed to a method and systems and are reasonably understood to be properly directed to one of the four recognized statutory classes of invention designated by 35 U.S.C. 101; namely, a process or method, a machine or apparatus, an article of manufacture, or a composition of matter. While the claims, generally, are directed to recognized statutory classes of invention, each of method/process, system/apparatus claims, and computer-readable media/articles of manufacture are subject to additional analysis as defined by the Courts to determine whether the particularly claimed subject matter is patent-eligible with respect to these further requirements. In the case of the instant application, each of claims 1, 10, and 19 are determined to be directed to ineligible subject matter based on the following analysis/guidance:
Eligibility Step 2A prong 1: (See MPEP 2106.04): In reference to claim 1, the claimed invention is directed to non-statutory subject matter because the claim(s) as a whole, considering all claim elements both individually and in combination, do/does not amount to significantly more than an abstract idea. The claim(s) is/are directed to ineligible processes limited to functions performable by Human Mental Processing including observation, evaluation, and judgement (See MPEP 2106.04 (a)(2)
The below identified steps of claim 1 are directed to ineligible processes limited to functions performable by Human Mental Processing and/or or by a human using pen and paper (See CyberSource Corp v. Retail Decisions, Inc., 654 F.3d 1366, 1373 (Fed. Cir. 2011). Mental processes or concepts performed in the human mind including observation and evaluation are considered to be ineligible abstract ideas. If a claim limitation, under its broadest reasonable interpretation, covers performance of the limitation in the mind but for a recitation of generic computer components, then the claim is still to be grouped as a mental process unless the limitation cannot practically be performed in the human mind (See MPEP 2106.04(a)(2)).
With respect to functions/steps performable by human mental processing and/or by a human using pen and paper, representative claim 1 as presented by amendment recites:
“…generating a schedule for event-based scheduling of the workflow and another schedule for time-based scheduling of the workflow…defining a task, process, and run-time requirement of work…assembling and sequencing…of the work into a workflow based on the task, process, and run-time requirements; providing…critical path management…defining… execution affinities, dependencies, and completion criteria of the workflow…scheduling…the workflow as a plurality of deployments of an automated task in a plurality of operating environments…the scheduling being based on the execution affinities, the dependencies, the completion criteria of the workflow, and one or more events…executing a workflow…comprising: receiving…a request for the work…executing… based on the request for the work…the workflow…auditing…executions of the workflow…for abnormal conditions, the auditing of workflow processes including centralized logging, archiving, rollback, and custom reporting capabilities… executing… reruns of the workflow…sending…a response to the request for the work…after the executing the workflow …”
Respectfully, absent further clarification of the processing steps performed by the recited processors/server by the recited executing the design-time and/or executing the runtime, one of ordinary skill in the art would readily understand that the functions listed above associated with the indicated execution of the design-time and/or the run-time are practicable/performable by a human using pen and paper. In particular, a human operator could reasonably be relied upon to define tasks, assemble and sequence work items based on system requirements, schedule a workflow in a plurality of environments and execute and audit the workflow. By extension, given a request and a workflow, one of ordinary skill would be capable of receiving a request and sending a response based on the running of a workflow or process in response to the request, by employing by the human mental processing (See CyberSource Corp v. Retail Decisions, Inc., 654 F.3d 1366, 1373 (Fed. Cir. 2011) (“a method that can be performed by human thought alone is merely an abstract idea and is not patent eligible under 35 U.S.C 101).
Eligibility Step 2A prong 2: (See MPEP 2106.04(d)): Under step 2A prong two, Examiners are to consider additional elements recited in the claim beyond the judicial exception and evaluate whether those additional elements integrate the exception into a practical application. Further, to be considered a recitation of an element which integrates the judicial exception into a practical application, the additional elements must apply, rely on, or use the judicial exception in a manner that imposes meaningful limits on the judicial exception, such that the claim is more than a drafting effort designed to monopolize the exception.
As presented by amendment, the technical elements identified in claim 1 are limited to: “workflow design time module”, “workflow run time module”, “workflow automation module”, “application server”, “REST API”, “operating environments including at least one of an operating system, a database system, an Enterprise Resource Planning (ERP) system and an RPA system”, “backup servers” and “request/response API”. Claim 1 further indicates, generally, that the claimed the claimed method provides a “service between RPA and RPA bot engine technology” as designated in the preamble. Claims 10 and 19, directed to systems introduce a “processor”, “memory”, and processor-executable “instructions” as engaged in a general manner in the performance of each of the recited steps/functions. With respect to these potential additional elements:
(1) The “processor”, “memory”, and “instructions” are identified as engaged in an unspecified, general manner in the performance of each of the recited steps/functions.
(2) The “workflow design time module” and “workflow run time module” are identified as executing, generally, the generation of a schedule, defining tasks, assembling work, scheduling the workflow, and executing the workflow.
(3) The “workflow automation module” is identified as interfacing, i.e., communicating or transmitting information, with the application server and “operating environments” using a web protocol.
(4) The “application server” and “backup servers” are identified as interfacing, i.e., communicating or transmitting information, with the automation module and implementing fail-over scenarios.
(5) The “REST API” and “request/response API” is identified as interfacing, i.e., communicating or transmitting information, with the automation module and receiving requests.
(6) The “service between RPA and RPA bot engine technology” statement recited in the preamble of the claim provides non-limiting and general field of use for the claimed workflow scheduling and implementation.
With respect to the above noted functions attributable to the identified additional elements, MPEP 2106.05 stipulates that: Adding the words “apply it” (or an equivalent) with the judicial exception, or mere instructions to implement an abstract idea on a computer, or merely uses a computer as a tool to perform an abstract idea – see MPEP 2106.05(f); Adding insignificant extra-solution activity to the judicial exception – see MPEP 2106.05(g); and/or Generally linking the use of the judicial exception to a particular technological environment or field of use – see MPEP 2106.05(h) serve as indications that the use of the technology recited does not indicate integration into a practical application of the judicial exception.
Each of the above noted limitations states a result (e.g., requests are received, tasks are defined, work is assembled into a workflow, affinities and dependencies are defined, workflows are executed and audited and reruns are executed etc. as associated with a respective “API” or “design-time or run-time”. Beyond the general statement that design-time and run-time are executed using an API, the limitations provide no further clarification with respect to the functions performed by the “processors” and “servers” in executing the recited design-time and run-time in producing the claimed result. A recitation of “by a design-time” or “using an API”, absent clarification of particular processing steps executed by the underlying technology to produce the result are reasonably understood to be an equivalent of “apply it”. The technology as engaged is solely identified as storing and retrieving information, performing tasks that are otherwise performable in the human mind (e.g., defining tasks, scheduling work items etc.), and sending and receiving information over a network (See MPEP 2106.05(f)).
Accordingly, claim 1 is reasonably understood to be conducting organizing work into defined workflows standard, and formally manually performed process of organizing work into defined workflows using the generic devices as tools to perform the abstract idea. The identified functions of the recited additional elements reasonably constitute a general linking of the abstract idea to a generic technological environment, e.g., generic devices capable of sending and receiving information over a network. The claimed determining organizing work into defined workflows benefits from the inherent efficiencies gained by data transmission, data storage, and information display capacities of generic computing devices, but fails to present an additional element(s) which practical integrates the judicial exception into a practical application of the judicial exception.
Eligibility Step 2B: (See MPEP 2106.05): Analysis under step 2B is further subject to the Revised Examination Procedure responsive to the Subject Matter Eligibility Decision in Berkheimer v. HP, Inc. issued by the United States Patent and Trademark Office (19 April 2018). Examiner respectfully submits that the recited uses of the underlying computer technology constitute well-known, routine, and conventional uses of generic computers operating in a network environment. In support of Examiner’s conclusion that the recited functions/role of the computer as presented in the present form of the claims constitutes known and conventional uses of generic computing technology, Examiner provides the following:
In reference to the Specification as originally filed, Examiner notes paragraphs [0034]-[0039]. In the noted disclosure, the Specification provides listings of generic computing systems, e.g., a general computing platform including exemplary servers, network configurations and various processor configuration which are identified as capable and interchangeable for performing the disclosed processes. The disclosure does not identify any particular modifications to the underlying hardware elements required to perform the inventive methods and functions. Accordingly, it is reasonably understood that this disclosure indicates that the hardware elements and network configurations suitable for performing the inventive methods are limited to commercially available systems at the time of the invention. Absent further clarification, it is reasonably understood that any modifications/improvements to the underlying technology attributable to the inventive method/system are limited to improvements realized by the disclosed computer-executable routines and the associated processes performed.
While the above noted disclosure serves to provide sufficient explanation of technical elements required to perform the inventive method using available computing technology, the disclosure does not appear to identify any particular modifications or inventive configurations of the underlying hardware elements required to perform the inventive methods and functions. Accordingly, it is reasonably understood that the disclosure indicates that the hardware elements and network configurations suitable for performing the inventive methods are limited to commercially available systems at the time of the invention. Further, absent further clarification, it is reasonably understood that any modifications/improvements to the underlying technology attributable to the inventive method/system are limited to improvements realized by the disclosed computer-executable routines and the associated processes performed.
While Examiner acknowledges that the limitations of claim 1 are computer-implemented, generally, Examiner respectfully submits that, in aggregate (e.g., “as a whole”) they do not amount to significantly more than the abstract idea/ineligible subject matter to which the claimed invention is primarily directed.
While utilizing a computer, the claimed invention is not rooted in computer technology nor does it improve the performance of the underlying computer technology. The computer-implemented features of the claimed invention noted above are reasonably limited to: (1) receiving and sending data via a computer network (e.g., requests/responses, interfacing, i.e., communicating or transmitting information); (2) storing and retrieving information and data from a generic computer memory (e.g., workflow definitions etc.); and (3) performing repetitive calculations and/or mental observations using the obtaining information/data (e.g., generation of a schedule, defining tasks, assembling work, scheduling the workflow). The above listed computer-implemented functions are distinguished from the generic data storage, retrieval, transmission, and data manipulation/processing capacities of the generic systems identified in the Specification solely by the recited identification of particular data elements that are of utility to a user performing the specific method of organizing work into defined workflows. In summary, the computer of the instant invention is facilitating non-technical aims, i.e., organizing work into defined workflows, because it has been programmed to store, retrieve, and transmit specific data elements and/or instructions that is/are of utility to the user. The non-technical functions of organizing work into defined workflows benefit from the use of computer technology, but fail to improve the underlying technology.
In support, the courts have previously found that utilization of a computer to receive or transmit data and communications over a network and/or employing generic computer memory and processor capacities store and retrieve information from a computer memory are insufficient computer-implemented functions to establish that an otherwise unpatentable judicial exception (e.g. abstract idea) is patent eligible. With respect to the determinations of the Courts regarding using a computer for sending and receiving data or information over a computer network and storing and retrieving information from computer memory, see at least: receiving or transmitting data over a network, e.g., using the Internet to gather data, Symantec, 838 F.3d at 1321, 120 USPQ2d at 1362; sending messages over a network OIP Techs., Inc., v. Amazon.com, Inc., 788 F.3d 1359, 1363, 115 USPQ2d 1090, 1093 (Fed. Cir. 2015) (sending messages over a network); receiving and sending information over a network buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1355, 112 USPQ2d 1093, 1096 (Fed. Cir. 2014) (computer receives and sends information over a network); storing and retrieving information in memory, Versata Dev. Group, Inc. v. SAP Am., Inc., 793 F.3d 1306, 1334, 115 USPQ2d 1681, 1701 (Fed. Cir. 2015); OIP Techs., 788 F.3d at 1363, 115 USPQ2d at 1092-93 and see performing repetitive calculations, Flook, 437 U.S. at 594, 198 USPQ2d at 199; and Bancorp Services v. Sun Life, 687 F.3d 1266, 1278, 103 USPQ2d 1425, 1433 (Fed. Cir. 2012) with respect to the performance of repetitive calculations does not impose meaningful limits on the scope of the claims.
Independent claims 10 and 19, directed to an apparatus/system and computer-executable instructions stored on computer-readable media for performing the method steps are rejected for substantially the same reasons, in that the generically recited computer components in the apparatus/system and computer readable media claims add nothing of substance to the underlying abstract idea.
Dependent claims 2-9, 11-18, and 20, when analyzed as a whole are held to be ineligible subject matter and are rejected under 35 U.S.C. 101 because the additional recited limitation(s) fail(s) to establish that the claimed invention is not directed to an abstract idea.
Allowable Subject Matter
[5] Claims 1-20 would be allowable if rewritten or amended to overcome the rejection(s) under 35 U.S.C. 112(a) and 35 U.S.C. 101 as set forth in this Office action.
Subject Matter Overcoming the Art of Record
[6] The prior art of record neither anticipates nor supports a conclusion of obviousness with respect to the allowable subject matter of claims 1, 10, and 19.
The most closely applicable prior art of record is referred to in the Office Action mailed 15 August 2024 as Iyer et al. (United States Patent Application Publication No. 2021/0110345) et al. Iyer et al. disclose and RPA workflow designer which enables the generation of a sequence of activities into an RPA workflow (Iyer et al.; paragraphs [0069]-[0074]; See at least adding sequences of activities to workflow). Iyer further specifies generating a sequence of activities to be executed by defined robots where the activities have triggering conditions including event triggers (Iyer et al.; paragraph [0036]; See at least triggering of robotic activities in the workflow based on user events.
While Iyer et al. is similar to the instant application in many respects, there are clear patentable distinctions, Iyer et al. fail to disclose or otherwise render obvious at least “…scheduling the workflow in a plurality of operating environments interfacing with the workflow automation module…the plurality of operating environments across multiple operating systems in physical, virtual, and cloud environments…implementing fail-over scenarios for the workflow using a cluster-based fault tolerance model on a plurality of backup servers for the application server…”
Response to Remarks/Amendment
[7] Applicant's remarks filed 11 September 2025 have been fully considered and are addressed as follows:
[i] Applicant’s remarks in response to previous rejection(s) of claim(s) 1-20 under 35 U.S.C. 101 as being directed to non-statutory subject matter as set forth in the previous Office Action mailed 16 June 2025 are reasonably considered to have been fully addressed in the context of the revised rejection of the claims presented above responsive to the amendments to the subject claims and in consideration of the framework for determining patent subject matter eligibility under 35 U.S.C. 101 established in the decisions of the Supreme Court in Mayo Collaborative Services v. Prometheus Labs., Incorporated and Alice Corporation Pty. Ltd. v. CLS Bank International, et al. (See MPEP 2106 subsection III and 2106.03-2106.05). Additionally, Applicant substantially rehashes arguments previously presented in the prior response. These arguments are addressed in accordance with Examiner’s response in the prior Office Action(s) mailed 16 June 2025, 30 January 2025, and 15 August 2025, incorporated in their entirety in response.
Conclusion
[8] The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Cited PATENT Literature:
Mejias, HELATHCARE WORKFLOW SYSTEM, United States Patent Application Publication No. 2017/0372442, paragraphs [0069]-[0070] [0076]-[0078]: Relevant Teachings: Mejias discloses process automation which includes scheduling across multiple robotic operators and provides for specialized configuring of the workflow to accommodate disparate environmental states.
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 ROBERT D RINES whose telephone number is (571)272-5585. The examiner can normally be reached M-F 9am - 5pm.
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/ROBERT D RINES/Primary Examiner, Art Unit 3625