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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant’s submission filed on January 29th, 2026 has been entered.
Amendments
This action is in response to amendments filed January 29th, 2026, in which Claims 1, 8, and 19 are amended and Claims 5 and 12 are cancelled. The amendments have been entered, and Claims 1-4, 6--11, and 13-21 are currently pending.
Claim Rejections - 35 USC § 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Claims 1-4, 6--11, and 13-21 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more.
Claim 1 recites a system … comprising: an electronic processor, thus an article of manufacture, one of the four statutory categories of patentable subject matter. However, the claim further recites to construct a first probabilistic graphical model of possible user actions with a first software application, the first probabilistic graphical model including clusters of sequences of possible user actions with the first software application (a mental process of, e.g. constructing a Markov chain or similar model, which is just a graph with edge transition probabilities, of data relating to user actions in a software application); to construct a second probabilistic graphical model of possible user actions with a second software application, the first probabilistic graphical model including clusters of sequences of possible user actions with the second software application (similarly a mental process); to determine, for a given testcase and based on the clusters of sequences of possible user actions in the first and second probabilistic models, a first next user action following a first partial sequence of user actions in the first software application and a second next user action following a second partial sequence of user actions in the second software application (a mental process of predicting next user actions, based on the graphical models); to determine whether a difference between the first and second next user actions satisfies a threshold (a mental process); and based on determining that the difference satisfies a threshold, indicate an issue with the second software application (a mental process of determining that an issue exists). of Thus, the claim recites the abstract idea of determining a test case based on clustering sequences of user actions with a graphical model. Thus, the claim recites an abstract idea of constructing two models of user interactions with software applications, and comparing the predictions of those models to determine a potential issue with the application
The claim does not recite any additional elements which could integrate the abstract idea into a practical application, because the additional elements consist of:
an electronic processor configured to carry out the abstract idea, whereas implementing an abstract idea on generic computer components cannot integrate an abstract idea into a practical application (MPEP 2106.05(f)(2)); and
using a machine learning system including a recurrent neural network formed of a plurality of sequentially coupled long short term memory units to perform the mental process of determining a test case, whereas implementing an abstract idea on generic computer components (i.e., an LSTM neural network) cannot integrate an abstract idea into a practical application (MPEP 2106.05(f)(2), “using a computer or other machinery as a tool”)
Thus, the claim is directed towards the abstract idea of determining a test case based on clustering sequences of user actions with a graphical model.
Finally, the claim does not include any additional elements which could be significantly more than the abstract idea itself, either alone or in combination, because instructions to apply an abstract idea (e.g. elements a, and b under MPEP 2106.05(f)) cannot provide an inventive concept;, and there is no nexus between the additional elements to provide significantly more. Thus, the claim in ineligible.
Claims 2-4, 6, and 16, dependent upon Claim 1, each recite limitations, which are elements additional to the abstract idea, which only describe the particular technological environment or field of use in which the abstract idea is performed (e.g. generic details about the data which is used in or produced by the abstract idea). Specifying the particular technological environment or field of use cannot integrate an abstract idea into a practical application, nor provide significantly more than the abstract idea itself, by MPEP 2106.05(h).
Claim 7, dependent upon Claim 1, recites additional steps in the abstract idea (determining a confidence interval and mean of a cluster; to determine whether the distance of the sequence of actions is within the confidence interval; and to identify the sequence of user actions as noise when the distance of the sequence of user actions from the mean of the cluster is not within the confidence interval, each of which is accurately described as both mental process and a mathematical calculation) but no additional elements, thus no additional elements which could integrate the abstract idea into a practical application nor provide significantly more than the abstract idea itself.
Claim 15, dependent upon Claim 1, recites additional steps in the abstract idea (determine a test case from the one or more clusters) and includes an additional element which states that this is performing using the at least one machine learning system, i.e. using a computer or other machinery as a tool to perform the mental process, which by MPEP 2106.05(f)(2) can neither integrate the abstract idea into a practical application nor provide significantly more than the abstract idea itself.
Claims 8-11, 13, 14, 17, and 18 recite precisely the method performed by the systems of Claims 1-4, 6, 7, 15, and 16, respectively, and are thus rejected for reasons set forth in the rejections of those claims, respectively.
Claims 19-21 recite a program product comprising a storage device and instructions to implement precisely the method performed by the systems of Claims 1, 15, and 16, respectively, and as implementation of an abstract idea on generic computer components cannot integrate the abstract idea into a practical application
Response to Arguments
Applicant’s arguments filed January 29th, 2026 have been fully considered, but are not fully persuasive.
Applicant’s arguments regarding the 35 U.S.C. 101 rejections of the previous office action, as being directed to an abstract idea without significant more, have been fully considered, but are unpersuasive.
Applicant asserts that the claimed invention “clearly improves a technology or computer functionality,” but the example that the applicant asserts is to “identify an issue with a software application,” which is a mental process – improvements in a mental process, performed using computer or generic machine learning, remain improvements in the mental process. Mere use a common, generic machine learning model (an LSTM neural network) to perform the mental process is a case of “using a computer or other machinery as a tool” to perform the process, which by MPEP 2106.05(f) does not recite an improvement in technology.
Applicant further asserts “Claim 1 does not recite an abstract idea, such as a mental process” but does not address the mental process limitations identified in the rejection of the claim – the rejection clearly indicates how each of the limitations identified as a mental process is indeed performable in the human mind, or in the human mind with the use of pencil and paper as a memory aid (e.g., construct a first probabilistic graphical model of possible user actions with a first software application, the first probabilistic graphical model including clusters of sequences of possible user actions with the first software application is a mental process of, e.g. constructing a Markov chain or similar model, which is just a determining graph with edge transition probabilities, of data relating to user actions in a software application).
Applicant states “a human mind cannot reasonably implement ‘a neural network …’” but nowhere does the rejection state or require that a human mind could do so. The neural network is clearly identified as an additional element. It is not necessary for “each and every claim element recited in amended Claim 1” to be performable in the human mind for the claim to recite an abstract idea – only that at least one limitation do so. Any elements which do not recite an abstract idea are additional elements, which are analyzed under Step 2A Prong 2 and Step 2B of the subject matter eligibility guidance.
Applicant again asserts that the invention is an improvement in a technology, namely software testing and debugging. However, again, software is merely the technological field (i.e. the particular data) for which the mental process recited by the claim language is performed. Field of use limitations cannot provide an inventive concept by MPEP 2106.05(h) – the claim recites mental processes, where the data under analysis may be regarding the actions of a piece of software, but mere analysis of data, performable in the human mind, is not subject-matter eligible (e.g. Electric Power Group, Digitech, etc.). Any recited improvement is an improvement in “identifying” possible software errors, which is a mental process (as recited by the claim language) – and an improvement in a mental process is not patent subject matter eligible without additional elements which integrate the abstract idea into a practical application or which provide significantly more than the abstract idea itself.
Conclusion
The claims have been searched, but no prior which anticipates nor renders the independent claims obvious has been uncovered.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to BRIAN M SMITH whose telephone number is (469)295-9104. The examiner can normally be reached Monday - Friday, 8:00am - 4pm Pacific.
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/BRIAN M SMITH/Primary Examiner, Art Unit 2122
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