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 .
DETAILED ACTION
Status of Claims
This action is in reply to the communication filed on 11/11/2025
Claims 1-20 are currently pending and have been examined.
Response to Applicant’s Arguments
Applicant’s amendments and arguments filed on 11/11/2025 have been fully considered and discussed in the next section. Applicant is reminded that the claims must be given its broadest, reasonable interpretation.
Examiner is hereby correcting the record. Examiner inadvertently, rejected claims of Application No 16024061 in place of the current claims of Application No 17187761, as thus, previous issued Non-Final office Action is hereby withdrawn.
With regard to the drawing objection with regard to item 37 of fig 1, Applicant submitted replacement sheets of the drawing. Therefore, the drawing objection with regard to Fig 1 is withdrawn.
With regard to claims 1-20 rejection under 35 USC §101:
Applicant argues that “the invention is not a vague or abstract idea but rather the invention is about systematically convert an existing customer’s business information system based on COTS, by transformation system aka Master’s CIATSFABI into a target version (latest or earlier version chosen by customer) supported by Manufacturer of software and for the industry, also called transformed system aka Customer’s CIATSFABI. In claims, it is mentioned "CIATSFABI combines artificial intelligence including robotic process automation for program-based transformation automation and cognitive computing through data-driven predictive transformation automation scenarios including exception handling in a single operating environment using the same sets of data - existing customer system to be a self-evolving Cognitive Intelligent Autonomous Transformation System which will be the target version;". RPA (Robotic Process Automation) does process automation for program-based transformation automation using structured data (e.g. sales transactions for a business and customers), unstructured data (e.g. opinion of shopping experience (subjective information), news articles, interviews/recordings from different sources (Facebook, twitter, Instagram) and semi-structured data (e.g. email data, where each message may have the structured data of the sender, recipient, and subject fields while also having the unstructured data of the body ). Cognitive computing through data driven predictive transformation automation scenarios including exception handling also uses same sets of data i.e. , structured data , unstructured data and semi -structured data (page 25/50)”.
Examiner disagrees. Convert an existing customer’s business information into a target version (latest or earlier version chosen by customer) supported by Manufacturer of software and for the industry using structured data (e.g. sales transactions for a business and customers), unstructured data (e.g. opinion of shopping experience (subjective information), news articles, interviews/recordings from different sources (Facebook, twitter, Instagram) and semi-structured data (e.g. email data, where each message may have the structured data of the sender, recipient, and subject fields while also having the unstructured data of the body ) and /or Cognitive computing through data driven predictive transformation automation scenarios including exception handling also uses same sets of data i.e. , structured data , unstructured data and semi -structured data is directed to analyzing data and determining results based on the analysis.
Since analyzing data is part of the abstract idea itself, any improvement obtained by automating the analyzing of the data in an improvement to the abstract idea which is an improvement in ineligible subject matters (see SAP v. Investpic: Page 2, line 22 through Page 3, line 13 - Even assuming that the algorithms claimed are groundbreaking, innovative or even brilliant, the claims are ineligible because their innovation is an innovation in ineligible subject matter because they are nothing but a series of mathematical algorithms based on selected information and the presentation of the results of those algorithms. Thus, the advance lies entirely in the realm of abstract ideas, with no plausible alleged innovation in the non-abstract application realm. An advance of this nature is ineligible for patenting; and Page 10, lines 18-24 - Even if a process of collecting and analyzing information is limited to particular content, or a particular source, that limitations does not make the collection and analysis other than abstract.
As such, the claims as drafted, falls within the “Certain Method of Organizing Human Activity” grouping of abstract ideas as it relates to commercial interactions of advertising, marketing, or sales activities or behaviors; business relations, because the merely gather data, analyze the data, determine results based upon the analysis, generate tailored content based on the results, and transmit the tailored content. Accordingly, the claim recites an abstract idea (i.e. MPEP Revised Step 2A Prong One=Yes).
The recitation of "CIATSFABI combines artificial intelligence including robotic process automation does no more than apply or link the use of the recited judicial exception to a particular technological environment/field of use.
That is the use of CIATSFABI combines artificial intelligence including robotic process automation fails to (a) improve another technology or technical field and (b) improve the functioning of the computer itself and (c) applies the abstract idea with or by use of, a particular machine, which is a generic computer performing generic computer functions and are not seen to recite an improvement to another technology or technical field, an improvement to the functioning of the computer itself.
Indeed, the identified improvements recited by Applicant are really, at best improvements to the performance of the abstract idea (e.g., improvements made in the underlying business method (systematically convert an existing customer’s business information system based on COTS, by transformation system into a target version (latest or earlier version chosen by customer)) and not in the operations of any additional elements or technology.
As such, the examiner finds that any improvement obtained by practicing the claimed invention is an improvement to a business process. Second, under Step 2a, Prong 2, the improvement to a technology or technological field must be rooted in the additional element. Additional elements are those elements outside of the identified abstract idea itself. In the instant case the only additional elements “CIATSFABI combines artificial intelligence including robotic process automation”, are generic computer components. Thus, any improvement obtained by practicing the abstract idea, is an improvement obtained by practicing the abstract idea and not rooting in the additional elements upon which the abstract idea is applied. Improvements of this nature are not patent eligible (see SAP v. Investpic: Page 2, line 22 through Page 3, line 13 - Even assuming that the algorithms claimed are groundbreaking, innovative or even brilliant, the claims are ineligible because their innovation is an innovation in ineligible subject matter because there are nothing but a series of mathematical algorithms based on selected information and the presentation of the results of those algorithms. Thus, the advance lies entirely in the realm of abstract ideas, with no plausible alleged innovation in the non-abstract application realm. An advance of this nature is ineligible for patenting; and Page 10, lines 18-24 - Even if a process of collecting and analyzing information is limited to particular content, or a particular source, that limitations does not make the collection and analysis other than abstract.). Therefore, the claim rejection of claims 1-20 under 35 USC § 101 is addressed below.
Drawing Objection
The drawings are objected to as failing to comply with 37 CFR 1.84(p)(5) because they include the following reference character(s) not mentioned in the description: items of Figure 1 to Figure 9 . Corrected drawing sheets in compliance with 37 CFR 1.121(d), or amendment to the specification to add the reference character(s) in the description in compliance with 37 CFR 1.121(b) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Specification Objection
The specification is objected to as failing to provide proper antecedent basis for the claimed subject matter. See 37 CFR 1.75(d)(1) and MPEP § 608.01(o). Correction of the following is required: items of Figure 1 to Figure 9 are not shown and numbered accordingly in the specification. The specification does not show how the items of Figure 1 , for instance interact with each other to produce the claimed features. Same analysis is applied to the items listed in figure 2 to figure 9. Appropriate correction is required.
Claim objection
Claims 1-3, 5-6, 8,10-11,13-14 are objected to because of the following informalities:
There is insufficient antecedent basis for the following limitations:
Claim 1 recites the following terms, “ the same sets of data”; “ the target version”; “ the industry”; “ the existing system data” ; “ the system”; “ the proposed”; “ the customer’s target system”;
Claim 5 recites the term “ the automation opportunity”; “ the current application” ; “ the best practices; “ the same industry”;
Claim 6 recites the limitation of “ the new”; “the best “ “ the same industry”;
Claim 8 recites the term “ the company”;
Claim 10 recites the terms “ the industry”; “ the specific”;
Claim 11 recites the terms “ the gaps”; “ the same”;
Claim 13 recites the terms “the internal”; “ the company”;
Claim 14 recites the term “ the customer”;
Lacking antecedent basis means that Applicant has referred to a structure using “the” or “said” without first introducing the structure as being part of the claim or has referred to a structure using “a” when the structure has been previously introduced. Claims are written starting from a blank slate regardless of what has been disclosed in the written description of the invention. Thus if a structure such as “the target version” in claim 1 exists in the invention, Applicant must first recite in the claims that there is “a target version” without using the word “the” or “said” (if the recitation is not plural, the recitation should be proceeded with the word “a’). Appropriate correction and/or clarification is required.
Claim 1 recites the term “ vs”; “IT team”
Claim 2 recites the term “aka”, “&”; “ C level executives”. Applicant needs to define what the acronym stands for prior to using it. For example, Applicant can state for short Message Service (SMS) and then use the acronym SMS.
Claims 3 and 13 recite the term “&”. Applicant needs to define what the acronym stands for prior to using it. For example, Applicant can state for short Message Service (SMS) and then use the acronym SMS.
Claim Rejection- 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 U.S.C.101 because the claimed invention is directed to a judicial exception subject matter, specifically an abstract idea. The analysis for this determination is explained below:
Step 1, determine whether the claim is directed to one of the four statutory categories of invention, i.e., process, machine, manufacture, or composition of matter. In this case, Step 1, determine whether the claim is directed to one of the four statutory categories of invention, i.e., process, machine, manufacture, or composition of matter.
In this case, claim(s) 1-20 are directed a machine (i.e. an apparatus). The claimed invention is directed to at least one judicial exception (i.e a law of nature, a natural phenomenon, or an abstract idea) without significantly more. The analysis is as follows:
Claim 1, as exemplary, recites the limitations of: “ process automation for program-based transformation automation and cognitive computing through data- driven predictive transformation automation scenarios including exception handling in a single operating environment using the same sets of data - existing customer system to be a self-evolving Cognitive Intelligent Autonomous Transformation which will be the target version; data preparation module reads from configuration database of current business system; transforms to recommended version supported for the industry and company while protecting all existing configuration, master, transaction, historical data and features of current system, converting data where needed; interacts with customer using customer's inputs to iteratively design and prototype transformed target, converting the existing data where necessary, that works with this version; transforms in series of iterations - starting with Basic transformation based on customer selection of Quick win and Advanced transformation based on customer selection of complexity desired - moderate or complex or futuristic; monitors progress of transformation of both the system and data, real- time; continuously improves transformation based on predictive automated transformation scenarios and exceptions supported; continuously improves transformation based on predefined scenarios and Custom scenarios supported; produces actionable reports, checklists, roadmaps and gaps on existing initiatives vs proposed initiatives, generated for existing and proposed; produces actionable reports at every stage of transformation evolution of the proposed transformed target; produces actionable reports on gaps to assist customer decide to approve transformation to new system; produces actionable reports on strategic, tactical and operational execution; cognitive intelligent automation and workflow-based exception handling; supports hosting for customer specific transformed target or on-premise where possible; continuously monitors internal and external events which triggers reports to assist top management; proposed will be actualized by IT team following their own policies, procedures and change management and fine-tuned will be the customer's target; synchronized and fine-tuned with Customer's transformed target to assist in future iteration and quality of proposed transformed target.
The limitations as detailed above, as drafted, falls within the “Certain Method of Organizing Human Activity” grouping of abstract ideas as it relates to commercial interactions of advertising, marketing, or sales activities or behaviors; business relations, because the merely gather data, analyze the data, determine results based upon the analysis, generate tailored content based on the results, and transmit the tailored content. Accordingly, the claim recites an abstract idea (i.e. MPEP Revised Step 2A Prong One=Yes).
This judicial exception is not integrated into a practical application because the claim only recites the additional elements of “ CIATSFABI system comprising an existing customer business information system based on Commercial off Shelf application (COTS); Artificial intelligence (Al), Robotic Process Automation (RPA), Internet of Things (loT), Machine Learning (ML), Natural language processing (NLP), Speech and image recognition, Deep Learning (DL) using neural networks (NN), In-memory computing; deep-Learning using neural networks; module and cloud application; Al Machine Learning through deep-Learning using neural networks, python programming, TensorFlow and Keras”. The additional technical elements above are recited at a high-level of generality (i.e. as a generic processor performing a generic computer function of processing, communicating and displaying) such that it amounts to no more than mere instructions to apply the exception using a generic computer component. The claim(s) does/do not include additional elements that are sufficient to amount to significantly more than the judicial exception because the additional technical elements above do not integrate the abstract idea/judicial exception into a practical application because it does not impose any meaningful limits on practicing the abstract idea. More specifically, the additional elements fail to include (1) improvements to the functioning of a computer or to any other technology or technical field (see MPEP 2106.05(a)), (2) applying or using a judicial exception to effect a particular treatment or prophylaxis for a disease or medical condition (see Vanda memo), (3) applying the judicial exception with, or by use of, a particular machine (see MPEP 2106.05(b)), (4) effecting a transformation or reduction of a particular article to a different state or thing (see MPEP 2106.05(c)), or (5) 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 (see MPEP 2106.05(e) and Vanda memo).
Rather, the limitations merely add 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)), or generally link the use of the judicial exception to a particular technological environment or field of use (see MPEP 2106.05(h)).
Thus, the claim is “directed to” an abstract idea (i.e. MPEP Step 2A Prong Two=Yes)
When considering Step 2B of the Alice/Mayo test, the claim(s) does/do not include additional elements that are sufficient to amount to significantly more than the judicial exception because the claims do not amount to significantly more than the abstract idea.
More specifically, as discussed above with respect to integration of the abstract idea into a practical application, the additional elements of using the additional elements of “ CIATSFABI system comprising an existing customer business information system based on Commercial off Shelf application (COTS); Artificial intelligence (Al), Robotic Process Automation (RPA), Internet of Things (loT), Machine Learning (ML), Natural language processing (NLP), Speech and image recognition, Deep Learning (DL) using neural networks (NN), In-memory computing; deep-Learning using neural networks; module and cloud application; Al Machine Learning through deep-Learning using neural networks, python programming, TensorFlow and Keras” to perform the claimed functions amounts to no more than mere instructions to apply the exception using a generic computer component.
“Generic computer implementation” is insufficient to transform a patent-ineligible abstract idea into a patent-eligible invention (See Affinity Labs, _F.3d_, 120 U.S.P.Q.2d 1201 (Fed. Cir. 2016), citing Alice, 134 S. Ct. at 2352, 2357) and more generally, “simply appending conventional steps specified at a high level of generality” to an abstract idea does not make that idea patentable (See Affinity Labs, _F.3d_, 120 U.S.P.Q.2d 1201 (Fed. Cir. 2016), citing Mayo, 132 S. Ct. at 1300). Moreover, “the use of generic computer elements like a microprocessor or user interface do not alone transform an otherwise abstract idea into patent-eligible subject matter (See FairWarning, 120 U.S.P.Q.2d. 1293, citing DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245, 1256 (Fed. Cir. 2014)). As such, the additional elements of the claim do not add a meaningful limitation to the abstract idea because they would be generic computer functions in any computer implementation. Thus, taken alone, the additional elements do not amount to significantly more than the above-identified judicial exception (the abstract idea). Looking at the limitations as an ordered combination adds nothing that is not already present when looking at the elements taken individually. There is no indication that the combination of elements improves the functioning of the computer or improves any other technology. Their collective functions merely provide generic computer implementation.
The Examiner notes simply implementing an abstract concept on a computer, without meaningful limitations to that concept, does not transform a patent-ineligible claim into a patent-eligible one (See Accenture, 728 F.3d 1336, 108 U.S.P.Q.2d 1173 (Fed. Cir. 2013), citing Bancorp, 687 F.3d at 1280), limiting the application of an abstract idea to one field of use does not necessarily guard against preempting all uses of the abstract idea (See Accenture, 728 F.3d 1336, 108 U.S.P.Q.2d 1173 (Fed. Cir. 2013), citing Bilski, 130 S. Ct. at 3231), and further the prohibition against patenting an abstract principle “cannot be circumvented by attempting to limit the use of the [principle] to a particular technological environment” (See Accenture, 728 F.3d 1336, 108 U.S.P.Q.2d 1173 (Fed. Cir. 2013), citing Flook, 437 U.S. at 584), and finally merely limiting the field of use of the abstract idea to a particular existing technological environment does not render the claims any less abstract (See Affinity Labs, _F.3d_, 120 U.S.P.Q.2d 1201 (Fed. Cir. 2016), citing Alice, 134 S. Ct. at 2358; Mayo, 132 S. Ct. at 1294; Bilski v. Kappos, 561 U.S. 593, 612 (2010); Content Extraction & Transmission LLC v. Wells Fargo Bank, Nat’l Ass’n, 776 F.3d 1343, 1348 (Fed. Cir. 2014); buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1355 (Fed. Cir. 2014).
Applicant herein only requires a general purpose computers communicating over a general purpose network; therefore, there does not appear to be any alteration or modification to the generic activities indicated, and they are also therefore recognized as insignificant activity with respect to eligibility.
Thus, taken individually and in combination, the additional elements do not amount to significantly more than the above-identified judicial exception (the abstract idea) (i.e.MPEP Step 2B=No).
For the same reason these elements are not sufficient to provide an inventive concept. For these reasons, there is no inventive concept in the claim, and thus the claim is not patent eligible.
The dependent claims 2-20appears to merely further limit the abstract idea of Certain methods of organizing Human Activity” as it relates to commercial interactions of advertising, marketing, or sales activities or behaviors; business relations), which is considered part of the abstract idea and therefore only further limit the abstract idea (i.e. MPEP Step 2A Prong One=Yes), does/do not include any new additional elements that are sufficient to amount to significantly more than the judicial exception, and as such are “directed to” said abstract idea (i.e. MPEP Step 2A Prong Two=Yes); and do not add significantly more than the idea (i.e. MPEP Step 2B=No). Thus, the dependent claims further narrows the abstract idea and/or recite additional elements previously rejected in the independent claim 1.
Accordingly, the claim fails to recite any improvements to another technology or technical field, improvements to the functioning of the computer itself, use of a particular machine, effecting a transformation or reduction of a particular article to a different state or thing, adding unconventional steps that confine the claim to a particular useful application, and/or meaningful limitations beyond generally linking the use of an abstract idea to a particular environment. See 84 Fed. Reg. 55. Viewed individually or as a whole, these additional claim element(s) do not provide meaningful limitation(s) to transform the abstract idea into a patent eligible application of the abstract idea such that the claim(s) amounts to significantly more than the abstract idea itself.
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.
The examiner has reviewed the applicant’s specification, the requirements for possession in the MPEP and the “Supplementary Examination Guidelines for Determining Compliance with 35 U.S.C. and for Treatment of Related Issues in Patent Applications” issued on January 21, 2011 and determined that the applicant’s specification does not support possession of the genus presented in the claims as currently presented.
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 pre-AIA the inventor(s), at the time the application was filed, had possession of the claimed invention. As to claims 1-20, the specification does not describe the invention in sufficient detail to enable one of ordinary skill in the art to recognize that the inventor invented what is claimed. The test for sufficiency is whether the disclosure of the application relied upon reasonably conveys to those skilled in the art that the inventor had possession of the claimed subject matter as of the filing date.
The scope of the invention presented in the independent claims is broad enough to encompass any commercial off shelf application and / or program and the ability to support any commercial off shelf application and / or program.
The specification does not describe in sufficient species performing the process for
a specific species of a "CIATSFABI system architecture supports Artificial intelligence (Al), Robotic Process Automation (RPA), Internet of Things (loT), Machine Learning (ML), Natural language processing (NLP), Speech and image recognition, Deep Learning (DL) using neural networks (NN), In-memory computing".
The specification does not have a species of a "CIATSFABI combines artificial intelligence including robotic process automation for program-based transformation automation and cognitive computing through data- driven predictive transformation automation scenarios including exception handling in a single operating environment using the same sets of data - existing customer system to be a self-evolving Cognitive Intelligent Autonomous Transformation System which will be the target version". There is not a specific algorithm for doing either of these claimed genus steps. As such, the disclosure does not support of single species of this being done, much less sufficient species to prove the applicant had in their possession the claimed genus. In fact Applicant's disclosure indicates that the applicant only has in their possession an invention in which the industry must be the oil and gas industry and the invention works with only the SAP COTS package on page 4 of his specification. While the applicant asserts on page 4 that the current invention is able to work with the SAP COTS in the oil and gas industry, the specification does not disclose a specific example or algorithm for performing the claimed invention using the SAP COTS in the oil and gas industries. As such, it is clear that the applicant's disclosure fails to satisfy the written description requirement under 35 USC 112(a).
Furthermore, the applicant’s specification fails to disclose any species, much less sufficient species, that describe the use of the utility function to perform either of these claimed genus steps. Without specific examples in the specification of how these genus steps are used to support Artificial intelligence (Al), Robotic Process Automation (RPA), Internet of Things (loT), Machine Learning (ML), Natural language processing (NLP), Speech and image recognition, Deep Learning (DL) using neural networks (NN), In-memory computing, and / or specific examples of utility function to perform either of these claimed genus steps in CIATSFABI system architecture. Applicant’s specification also fails to disclose any species, much less sufficient species, that describe the use of the utility function to perform CIATSFABI combines artificial intelligence including robotic process automation for program-based transformation automation and cognitive computing through data- driven predictive transformation automation scenarios including exception handling in a single operating environment using the same sets of data - existing customer system to be a self-evolving Cognitive Intelligent Autonomous Transformation System which will be the target version and/ or CIATSFABI supports machine learning, robotic process automation, artificial intelligence, deep learning using customized neural networks, Internet of Things, Block-chain, In-memory computing, Big Data Analytics, image recognition, speech recognition, cognitive intelligent automation and workflow-based exception handling. Furthermore, Applicant’s specification fails to disclose any species, much less sufficient species, that describe the use of the utility function to perform CIATSFABI continuously improves transformation based on predefined Al Machine Learning scenarios and Custom Al Machine Learning t scenarios supported through deep-Learning using neural networks, python programming, TensorFlow and Keras.
It is impossible to conclude that the applicant has invented a sufficient number of species support a claim that the applicant had possession of the functionally-defined genus. As per the “Supplementary Examination Guidelines for Determining Compliance with 35 U.S.C. and for Treatment of Related Issues in Patent Applications” issued on January 21, 2011 and MPEP 2161.01, the first paragraph of § 112 contains a written description requirement that is separate and distinct from the enablement requirement.
To satisfy the written description requirement, the specification must describe the claimed invention in sufficient detail that one skilled in the art can reasonably conclude that the inventor had possession of the claimed invention. Specifically, the specification must describe the claimed invention in a manner understandable to a person of ordinary skill in the art and show that the inventor actually invented the claimed invention. The written description requirement of § 112, ¶ 1 applies to all claims including original claims that are part of the disclosure as filed. Claims may fail to satisfy the written description requirement when the invention is claimed and described in functional language but the specification does not sufficiently identify how the invention achieves the claimed function.
The problem is especially acute with genus claims that use functional language to define the boundaries of a claimed genus. In such a case, the functional claim may simply claim a desired result, and may do so without describing species that achieve that result. But the specification must demonstrate that the applicant has made a generic invention that achieves the claimed result and do so by showing that the applicant has invented species sufficient to support a claim to the functionally-defined genus. The level of detail required to satisfy the written description requirement varies depending on the nature and scope of the claims and on the complexity and predictability of the relevant technology. Computer-implemented inventions are often disclosed and claimed in terms of their functionality. This is because writing computer programming code for software to perform specific functions is normally within the skill of the art once those functions have been adequately disclosed. Nevertheless, for computer-implemented inventions, the determination of the sufficiency of disclosure will require an inquiry into both the sufficiency of the disclosed hardware as well as the disclosed software due to the interrelationship and interdependence of computer hardware and software. When examining computer-implemented functional claims, examiners should determine whether the specification discloses the computer and the algorithm (e.g., the necessary steps and/or flowcharts) that perform the claimed function in sufficient detail such that one of ordinary skill in the art can reasonably conclude that the inventor invented the claimed subject matter.
Specifically, if one skilled in the art would know how to program the disclosed computer to perform the necessary steps described in the specification to achieve the claimed function and the inventor was in possession of that knowledge, the written description requirement would be satisfied. If the specification does not provide a disclosure of the computer and algorithm in sufficient detail to demonstrate to one of ordinary skill in the art that the inventor possessed the invention including how to program the disclosed computer to perform the claimed function, a rejection under § 112, ¶ 1 for lack of written description must be made. In the instant case, the claimed invention fails to satisfy the written description requirement because the invention is a genus claim and described in functional language but the specification does not sufficiently identify how the invention achieves the claimed function because genus claims that use functional language to define the boundaries of a claimed genus. The claims simply claim a desired result, and do so without describing species that achieve that result. There is no indication in the specification that demonstrates that the applicant invented species sufficient to support a claim to the functionally-defined genus. As such, the specification provides no showing that the applicant has invented species sufficient to support a claim to the functionally-defined genus. There are no specific examples of how the claimed genus described using functional language would be used to obtain the desired result given a single species. There are no algorithms or flow charts that describe the specific details necessary for implementation of the claimed invention using a single species of the claimed genus. Hence, it is clear that the specification fails to satisfy the written description because it does not sufficiently identify how the invention achieves the claimed functions. An adequate written description of a claimed genus requires more than the generic statement of the inventions boundaries as presented in the applicant’s specification.
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1-20 are rejected under 35 U.S.C. §112(b) or 35 U.S.C. §112 (pre-AIA ), second paragraph, as failing to set forth the subject matter which the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the applicant regards as the invention.
The claim(s) are narrative in form and replete with indefinite language. The structure which goes to make up the device must be clearly and positively specified. The structure must be organized and correlated in such a manner as to present a complete operative device. The claim(s) must be in one sentence form only. Note the format of the claims in the patent(s) cited.
Claim 1 is indefinite because it recites cognitive intelligent autonomous transformation system for Actionable business intelligence (CIATSFABI) comprising : An existing customer business information system based on Commercial off self application (COTS); CIATSFABI system architecture “…”. It is unclear what is required to be part of CIATSFABI because the claim appears to define CIATSFABI by referring to itself (CIATSFABI). In Addition, it is unclear whether the existing customer business information system is required because CIATSFABI is completely defined by referring to itself. Appropriate correction and/or clarification is required.
Claim 1 is also indefinite because it recites “cognitive intelligent autonomous transformation system for Actionable business intelligence (CIATSFABI) comprising: ... CIATSFABI system architecture supports...; CIATSFABI combines ...; CIATSFABI’s data preparation module reads ...; CIATSFAB transforms ...; [etc].” It is unclear how the recitations that start with CIATSFABI relates to claim 1. For example, are these recitations providing further limitations to an already introduced element CIATSFABI? If that is the case, the claims can be amended to recite “wherein CIATSFABI combines’ (etc.) to make the function of the recitation more clear. Appropriate correction and/or clarification is required.
Claim 1 is also indefinite because it recites “CIATSFABI system architecture supports Artificial Intelligence (Al), Robotic Process Automation (RPA), Internet of Things (IOT), ...” (emphasis added). It is unclear what is mean by “supports”. Does supports require that Al, RPA, and IOT is actually present in CIATSFABI or merely that Al, RPA, and IOT could be added to CIATSFABI somehow. Appropriate correction and/or clarification is required.
Claim 1 is also indefinite because it recites “exception handling in a single operating environment using the same sets of data” (emphasis added). It is unclear what sets are data are being referred to or how they are the same. Appropriate correction and/or clarification is required.
Claim 1 is also indefinite because it recites “existing customer system to be a self-evolving cognitive intelligent autonomous transformation system.” It is unclear how the “existing customer system” relates to “An existing customer business information system” previously recited. For example, is claim 1 referring to the same customer system or are two customer systems being required. Appropriate correction and/or clarification is required.
Claim 1 is also indefinite because it recites “which will be the target version’. It is unclear to what “which” is referring, and therefore it is unclear what is to be the target version. Appropriate correction and/or clarification is required.
Claim 1 is also indefinite because it recites “current business system”. It is unclear how the “current business system” relates to the “existing customer business information system” previously recited. Appropriate correction and/or clarification is required.
Claim 1 is also indefinite because it recites “CIATSFABI transforms”. It is unclear what transforms. If the CIATSFABI itself transforms, then it may be better to say that CIATSFABI is capable of transforming. On the other hand, if the existing customer business information system is being transformed, then this should be explicitly stated in the claim. Appropriate correction and/or clarification is required.
Claim 1 is also indefinite because it recites “converting data where needed’. It is unclear converting data Is positively required if, for example, converting were not needed. Appropriate correction and/or clarification is required.
Claim 1 is also indefinite because it recites selection of “Quick win”. It is unclear what means or referred to. Appropriate correction and/ or clarification is required.
Claim 1 is also indefinite because it recites “CAITSFABI monitors progress of transformation of both the system and data.” It is not clear what system or data is being referred to. For example, is it the “existing customer business information system” or the “cognitive intelligent autonomous transformation system”? Appropriate correction and/or clarification is required.
As stated above, there are many more instances of indefinite language which are too numerous to individually mention. Applicant is advised to provide correction and/or clarification for dependent claims 2-20 as well.
Examiner notes:
It appears the inventor(s) filed the current application pro se (i.e., without the benefit of representation by a registered patent practitioner). While inventors named as applicants in a patent application may prosecute the application pro se, lack of familiarity with patent examination practice and procedure may result in missed opportunities in obtaining optimal protection for the invention disclosed. The inventor(s) may wish to secure the services of a registered patent practitioner to prosecute the application, because the value of a patent is largely dependent upon skilled preparation and prosecution. The Office cannot aid in selecting a patent practitioner.
A listing of registered patent practitioners is available at https://oedci.uspto.gov/OEDCI/. Applicants may also obtain a list of registered patent practitioners located in their area by writing to Mail Stop OED, Director of the U.S. Patent and Trademark Office, P.O. Box 1450, Alexandria, VA 22313-1450.
Applicant is advised to review all submitted claims, because the claim(s) are narrative in form and replete with indefinite language. The structure which goes to make up the device must be clearly and positively specified. The structure must be organized and correlated in such a manner as to present a complete operative device. The claim(s) must be in one sentence form only. Note the format of the claims in the patent(s) cited.
Applicant is advised in response to this Office Action, Applicant is required to submit an amendment set of claims addressing all issued rejection and/ or objection. The amendment to the claims filed on 11/11/2025 does not comply with the requirements of 37 CFR 1.121(c) because Applicant’s response failure to provide a clean copy of an amended claims and/ or failure to provide a marked up version of the amended claims . Amendments to the claims filed on or after July 30, 2003 must comply with 37 CFR 1.121(c) which states:
(c) Claims. Amendments to a claim must be made by rewriting the entire claim with all changes (e.g., additions and deletions) as indicated in this subsection, except when the claim is being canceled. Each amendment document that includes a change to an existing claim, cancellation of an existing claim or addition of a new claim, must include a complete listing of all claims ever presented, including the text of all pending and withdrawn claims, in the application. The claim listing, including the text of the claims, in the amendment document will serve to replace all prior versions of the claims, in the application. In the claim listing, the status of every claim must be indicated after its claim number by using one of the following identifiers in a parenthetical expression: (Original), (Currently amended), (Canceled), (Withdrawn), (Previously presented), (New), and (Not entered).
(1) Claim listing. All of the claims presented in a claim listing shall be presented in ascending numerical order. Consecutive claims having the same status of “canceled” or “not entered” may be aggregated into one statement (e.g., Claims 1–5 (canceled)). The claim listing shall commence on a separate sheet of the amendment document and the sheet(s) that contain the text of any part of the claims shall not contain any other part of the amendment.
(2) When claim text with markings is required. All claims being currently amended in an amendment paper shall be presented in the claim listing, indicate a status of “currently amended,” and be submitted with markings to indicate the changes that have been made relative to the immediate prior version of the claims. The text of any added subject matter must be shown by underlining the added text. The text of any deleted matter must be shown by strike-through except that double brackets placed before and after the deleted characters may be used to show deletion of five or fewer consecutive characters. The text of any deleted subject matter must be shown by being placed within double brackets if strike-through cannot be easily perceived. Only claims having the status of “currently amended,” or “withdrawn” if also being amended, shall include markings. If a withdrawn claim is currently amended, its status in the claim listing may be identified as “withdrawn—currently amended.”
(3) When claim text in clean version is required. The text of all pending claims not being currently amended shall be presented in the claim listing in clean version, i.e., without any markings in the presentation of text. The presentation of a clean version of any claim having the status of “original,” “withdrawn” or “previously presented” will constitute an assertion that it has not been changed relative to the immediate prior version, except to omit markings that may have been present in the immediate prior version of the claims of the status of “withdrawn” or “previously presented.” Any claim added by amendment must be indicated with the status of “new” and presented in clean version, i.e., without any underlining.
(4) When claim text shall not be presented; canceling a claim.
(i) No claim text shall be presented for any claim in the claim listing with the status of “canceled” or “not entered.”
(ii) Cancellation of a claim shall be effected by an instruction to cancel a particular claim number. Identifying the status of a claim in the claim listing as “canceled” will constitute an instruction to cancel the claim.
(5) Reinstatement of previously canceled claim. A claim which was previously canceled may be reinstated only by adding the claim as a “new” claim with a new claim number.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant’s disclosure.
Kumar US Pub No:20060080159 A1, teaches method , program and system for the implementation of cognitive business processes in a sales enterprise
RAJAN Us Pub No 20170061353 A1, teaches enterprise skills development using cognitive computing.
Yasmin, US Pub No: 20060277156 A1, teaches apparatus and method for integrating enterprise market planning processes and information systems with enterprise resource planning processes and information system in emerging brand companies.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Affaf Ahmed whose telephone number is 571-270-1835. The examiner can normally be reached on [M- R 8-6 pm ].
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Ilana Spar can be reached at 571-270-7537. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/AFAF OSMAN BILAL AHMED/Primary Examiner, Art Unit 3622