DETAILED ACTION
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 (RCE) 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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 has been entered.
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 1-23 rejected under 35 U.S.C. § 101 are directed to an abstract idea without significantly more.
The claims do not provide significantly more than the judicial exception under the subject matter eligibility two-part statutory analysis, as provided below.
Regarding Step 1,
Step 1 addresses whether the claims are directed to one of the four statutory categories of invention, i.e., process, machine, manufacture, or composition of matter according to MPEP §2106.03. Claim 1 is directed a method (process), Claim 8 is directed to a non-transitory computer-readable medium, and Claim 15 is directed to a system (machine), which all fall within one of the four statutory categories.
Regarding Step 2A [prong 1],
Step 2A [prong 1] addresses whether the claims are recite a judicial exception (i.e., law of nature, natural phenomenon, and abstract idea). See MPEP §2106.04. Concepts determined to be abstract ideas, and thus patent ineligible, include certain methods of organizing human activity, such as fundamental economic practices (Alice, 573 U.S. at 219–20; Bilski, 561 U.S. at 611); mathematical formulas (Parker v. Flook, 437 U.S. 584, 594–95 (1978)); and mental processes (Gottschalk v. Benson, 409 U.S. 63, 67 (1972)). The claimed invention recites an abstract idea according to MPEP §2106.04.
Independent claim 1, also representative of independent claims 8 & 15 for the same abstract features, provides the abstract idea of dynamically and collaboratively managing enterprise career capital, comprising:
accessing raw profile information for a member of an enterprise;
accessing a first profile and identifying career track relevant elements ("CTR-elements") of information from the raw profile information based on first reference profiles included in the first profile repository;
incorporating first CTR-elements associated with the member into a first active profile for the member,
accessing and identifying career action data based on a first active career track of the first active profile and the first CTR-elements, the career action data including positions and development offerings for the enterprise; and
integrating the career action data into manager and member versions of the first active profile based on the first CTR-elements and a visibility setting for the first active profile,
wherein the manager version is accessible by a manager of the member and omits first information included in the member version, wherein the member version is accessible by the member and omits second information included in the manager version, and wherein the member and manager both work for the same organization;
displaying the manager version in relation to a career track that meets a threshold similarity to the first CTR-elements of the first active profile, wherein the career track is one of multiple career tracks displayed based on the threshold similarity and first CTR-elements; and
displaying the member version to the member in relation to the career track and a second career track, wherein at least one of the multiple career tracks visible to the manager is hidden from the member.
Further abstract features is provided below with the following limitations emphasized that correspond to the abstract ideas of the claimed invention:
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The Specification emphasizes that “large commercial entities attempting to implement company-wide initiatives to reduce inefficiencies, revamp information technology ("IT") systems, change respective working cultures, implement new management strategies, or other such projects” therefore the business problem mentioned pertains to “Having visibility into which current employees possess the needed skill sets, certifications, registrations, and/or training is a challenge for large organizations” (Specification; [0002-0004]). Consistent with the Specification, the underlined recited limitations encompass gathering member/employee information of an enterprise and identifying career action information based on a career track of the member profile for positions and development of the enterprise/company which fall within “Certain Methods of Organizing Human Activities” grouping of abstract ideas since the steps relate to commercial or legal interactions including agreements in the form of contracts, advertising, marketing/sales activities, and business relations and also relates to managing personal behavior/relationships or interactions between company/enterprise and employee/members and following certain rules/instructions for providing different versions of the member profiles to managers and members of the enterprise/company. See MPEP §2106.04(a)(2)(II).
Alternatively, the recited limitations could be considered as a mental process abstract idea category as they related to gathering and analyzing information based on observation, evaluation, judgement and opinion. For example, the steps can be accomplished either verbally or writing down with the aid of pen & paper, and/or can certainly be accomplished based on forming a judgement or opinion about evaluating qualified service providers that identifying and integrating career action information based on an active career track of the member profile, comparing time thresholds, and updating an enterprise record in the in the mind or with the aid of pen/paper for determining different versions for manager and members of the enterprise.
The Courts generally treat collecting information as well as analyzing information by steps people go through in their minds and/or by pen & paper as essentially mental processes within the abstract-idea category. See FairWarning IP, LLC v. Latric Systems, Inc., 839 F.3d 1089, 1093
(Fed. Cir. 2016). The focus of the claims are on “selecting certain information, analyzing it, and
reporting or displaying the results of the analysis. That is all abstract.” (SAP America, Inc. v. Investpic, LLC, 898 F.3d 1161, 1167 (Fed. Cir. 2018)). See also Electric Power Group, LLC v. Alstom S.A., 830 F.3d 1350 (Fed. Cir. 2016) where collecting information, analyzing it, and displaying results from certain results of the collection and analysis was held to be an abstract idea.
The recited steps do not involve any activities that cannot be practically accomplished by the human mind and/or via pen & paper. Furthermore, “the fact that the required calculations could be performed more efficiently via a computer does not materially alter the patent eligibility of the claimed subject matter.” See FairWarning, 839 F.3d at 1098. The Courts have established that even if the recitation of generic computer components are present, the claim can still be considered a mental process if it covers performance in the mind using observation, evaluation, and judgment and/or utilizing pen & paper, as is the case here. See CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1371 (Fed. Cir. 2011) (“That purely mental processes can be unpatentable, even when performed by a computer, was precisely the holding of the Supreme Court in Gottschalk v. Benson”).
Dependent claims 2-7, 9-14 and 16-23 merely reiterate the same abstract ideas with further embellishments, such as determining history information for the member, which are nonetheless directed towards fundamentally the same abstract ideas as indicated above.
Regarding Step 2A [prong 2],
Step 2A [prong 2] addresses whether the judicial exception is integrated into a practical application. See MPEP §2106.04(d).
Claims 1-23 fail to integrate the abstract idea into a practical application. Claims 1, 8, and 15 include the following italicized identified additional elements which do not amount to a practical application:
Claim 1 (and Claims 8 and 15). A method [claim 1], non-transitory computer-readable medium [claim 8] and system [claim 15] for dynamically and collaboratively managing enterprise career capital, comprising: a memory storage including a non-transitory computer-readable medium comprising instructions; and a computing device including a hardware-based processor that executes the instructions to carry out stages comprising:
accessing raw profile information for a member of an enterprise with a career capital management agent (CCM agent) a system server;
identifying career track relevant elements ("CTR-elements") of information within the raw profile information based on first reference profiles included in a first profile repository;
incorporating first CTR-elements associated with the member into a first active profile for the member, the first active profile stored in at least one of the system server and an enterprise server;
displaying…..on a graphical user interface ("GUI") in a manager/employee view
generating a profile data….(outputting data)
transmitting profile data…
storing updated record…
receiving a request to display…receive updated career action data…
The underlined additional elements of the limitations recited above in independent claims 1, 8, 15 merely provide an abstract-idea-based-solution implemented with computer hardware and software components, including a computer system, a memory storage including a non-transitory computer-readable medium comprising (software) instructions; and a computing device including a hardware-based processor that executes the (software) instructions, a repository (database) and a system server and an external (software) service , and a graphical user interface ("GUI") recited at a high-level of generality which fail to integrate the abstract idea into a practical application because there are (1) no actual improvements to the functioning of a computer, (2) nor to any other technology or technical field, (3) nor do the claims apply the judicial exception with, or by use of, a particular machine, (4) nor do the claims provide a transformation or reduction of a particular article to a different state or thing, (5) nor provide other meaningful limitations beyond generally linking the use of the judicial exception to a particular technological environment, in view of MPEP §2106.05 (a-c & e), (6) nor do the claims apply the judicial exception to effect a particular treatment or prophylaxis for a disease or medical condition, in view of MPEP §2106.04(d)(2).
In this case, the claims merely involve automated steps executed by a computer processing device at a high-level of generality with no technical improvement to the functioning of the computer elements or processor itself. See also Credit Acceptance Corp. v. Westlake Servs., 859 F.3d 1044, 1055 (Fed. Cir. 2017) (holding that “mere automation of manual processes using generic computers does not constitute a patentable improvement”). The additional elements recited above fail to provide an actual improvement in computer functionality, or to a technology or technical field. See MPEP §2106.05(a & e). Furthermore, “the fact that the required calculations could be performed more efficiently via a computer does not materially alter the patent eligibility of the claimed subject matter.” See FairWarning, 839 F.3d at 1098.
The Supreme Court made clear in Alice that the mere recitation of generic computer limitations does not make an otherwise ineligible claim patent-eligible. See Alice, 573 U.S. at 223. See Intellectual Ventures I LLC v. Capital One Bank (USA), 792 F.3d 1363, 1366 (Fed. Cir. 2015) (“An abstract idea does not become non-abstract by limiting the invention to a particular field of use or technological environment, such as the Internet [or] a computer”). Use of a computer or other machinery in its ordinary capacity for economic or other tasks (e.g., to receive, store, or transmit data) or simply adding a general purpose computer or computer components after the fact to an abstract idea does not integrate a judicial exception into a practical application (Affinity Labs v. DirecTV, 838 F.3d 1253, 1262, 120 USPQ2d 1201, 1207 (Fed. Cir. 2016)).
At best, the additional elements executing the steps merely pertain to using the computer components/additional elements as a tool to perform the recited abstract idea. Automating the recited claimed features using a computer does not qualify an otherwise unpatentable abstract idea as patent eligible since the computer is merely performing generic computer functions (i.e., receiving and sending information) such that it amounts to no more than mere instructions to implement the abstract idea recited above by adding the words “apply it” (or an equivalent) with the judicial exception, or providing nothing more than generally linking the use of the abstract to a particular technological environment or field of use. See MPEP 2106.05(f & h).
Alternately, the steps of accessing/receiving raw profile information with a system server and first reference profiles included/stored in a first profile repository/database, the first active profile stored in the system server and accessing the server, and displaying on a graphical user interface, are considered to be mere data gathering and transmitting over a computer network, which is insignificant extra-solution activity, see MPEP 2106.05(g). Storing, receiving and displaying, sending data by the computer/system using a computer network is considered one of the most basic functions of a computer. The recited additional elements do not impose any meaningful limits on practicing the abstract idea since they amount to no more than mere instructions at a high-level of generality to apply the judicial exception using a generic computer.
Dependent claims 2-7, 9-14 and 16-23 merely reiterate the same abstract ideas using the same additional elements as recited above for gathering and transmitting data, without imposing any meaningful limits or any further practical application. Claims 4, 11 and 18 further recite a GUI as an additional element which is merely using the additional element for receiving data input and displaying data output as a tool to perform the recited abstract idea without further imposing any meaningful limits or any further practical application. The claims are not rooted in improving GUI technology, nor do they provide any specialized computer hardware or particular machine, or invoke any inventive programming to improve GUI technology.
Therefore, the additional elements recited in the claimed invention individually, and even in combination, fail to integrate the recited judicial exception into any practical application since they do not impose any meaningful limits on practicing the abstract idea, and fail to integrate the judicial exception into any practical application.
Regarding Step 2B,
Step 2B addresses whether the claims recite "significantly more" than the abstract idea. See MPEP §2106.05.
Claims 1-23 do not amount to significantly more than the abstract idea. The additional elements recited above are insufficient to amount to significantly more than the judicial exception because they fail to (1) recite any improvements to another technology or technical field; (2) recite any improvements to the functioning of the computer itself; (3) apply the judicial exception with, or by use of, a particular machine; (4) effect a transformation or reduction of a particular article to a different state or thing; (5) add a specific limitation other than what is well-understood, routine and conventional in the field; (6) add unconventional steps that confine the claim to a particular useful application; nor (7) provide other meaningful limitations beyond generally linking the use of the judicial exception to a particular technological environment, in view of the MPEP 2106.05(a-h).
Instead, the computer is being used as a tool to perform the abstract idea. Automating the recited claimed features using a computer does not qualify an otherwise unpatentable abstract idea as patent eligible since it amounts to no more than mere instructions to implement the abstract idea recited above by adding the words “apply it” (or an equivalent) with the judicial exception, or providing nothing more than generally linking the use of the abstract to a particular technological environment or field of use. See MPEP 2106.05(f & h). For the same reasons, the recited elements are insufficient to provide an inventive concept and fail to impose any meaningful limits on practicing the abstract idea. See buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1355 (Fed. Cir. 2014) (“That a computer receives and sends the information over a network—with no further specification—is not even arguably inventive”).
Additionally, re-evaluating the insignificant steps as insignificant extra-solution activity, these elements are also determined to be well-understood, routine, and conventional. See MPEP 2106.05(d). The legal precedent in Symantec, TLI and OIP Techs. court decisions cited in MPEP 2106.05(d)(II) indicated that receipt and transmission of information over a computer network are a well-understood, routine, and conventional functions when claimed in a generic manner, as is the case here. See also Trading Techs. Int’l, Inc. v. IBG LLC, 921 F.3d 1084, 1093 (Fed. Cir. 2019) (data gathering and displaying are well-understood, routine, and conventional activities).
Dependent claims 2-7, 9-14 and 16-20 merely reiterate the same abstract ideas using the same additional elements as recited above for gathering and transmitting data, without imposing any meaningful limits. Claims 4, 11 and 18 further recite a GUI as an additional element which is merely using the additional element for receiving data input and displaying data output as a tool and/or generally linking the abstract idea to a technical environment/field of use to perform the recited abstract idea without improving GUI technology or significantly more than the abstract idea. Claims 21-23 contain the same additional elements of a generic GUI, and enterprise server, using the additional element for receiving data input and displaying data output as a tool and/or generally linking the abstract idea to a technical environment/field of use to perform the recited abstract idea without improving GUI technology or significantly more than the abstract idea.
Additionally, the Specification describes the additional computer system in general terms, without describing the particulars, the claim limitations may be broadly but reasonably construed as reciting generic computer components. The claimed generic additional elements individually operate in their ordinary and generic capacities and there is nothing in the Applicant’s Specification to indicate that the operations recited require any specialized hardware or inventive computer components or that the claimed invention is implemented using other than generic computer components to perform generic computer functions, e.g., receiving, processing and sending information. Indeed, the Federal Circuit, in accordance with Alice, has “repeatedly recognized the absence of a genuine dispute as to eligibility” where claims have been defended as involving an inventive concept based “merely on the idea of using existing computers or the Internet to carry out conventional processes, with no alteration of computer functionality.” Berkheimer, 890 F.3d at 1373. See also Elec. Power Grp., 830 F.3d at 1355 (gathering, sending, monitoring, analyzing, selecting, and presenting information does not transform the abstract process into a patent eligible invention); Alice, 573 U.S. at 226 (“Nearly every computer will include a ‘communications controller’ and ‘data storage unit’ capable of performing the basic calculation, storage, and transmission functions required by the method claims.”).
Considered as an ordered combination, the additional elements add nothing that is not already present when the steps are considered separately. The sequence of the claimed limitations is equally generic and otherwise held to be abstract. See Elec. Power Grp., 830 F.3d at 1354– 56 (holding that the sequence of gathering, analyzing, and displaying in real-time was abstract); Bozeman, 955 F.3d at 980–91 (holding that sequence of receiving, storing, receiving, and determining data and sending data based on the results of the determining did not transform the abstract idea into a patent-eligible invention).
Thus, after considering all claim elements, both individually and as an ordered combination, it has been determined that the claim as a whole, is not enough to transform the abstract idea into a patent-eligible invention since the claim limitations do not amount to a practical application and significantly more than an abstract idea under 35 U.S.C. § 101.
Response to Amendment and Arguments
Regarding Applicant’s arguments under 35 USC 101, the Examiner reiterates and incorporates the Patent Board affirming Examiner’s 101 rejection regarding the claimed invention. Examiner asserts that none of the amendments provide a practical application beyond generically implementing the abstract idea with the use of generic high-level computer networking technology. The fact that different instances of the GUI can be displayed has nothing to do with improving the GUI technology, rather it is data-dependent. When the particular user data is determined, either employee or manager display versions are outputted. Being accessible to different types of users, is not an improvement to display technology since the data-driven accessibility of the GUI is not an actual improvement to the GUI, and replicating another GUI version based on the user type being an employee or manager, is not sufficient to integrate the abstract idea into a practical application.
The following additional relevant prior art listed below is considered in view of the amendment, however the additional relevant prior art neither teaches nor suggests all of the specific claimed limitations, as a whole, either alone or in combination.
US 20020055870 System for human capital management ensures that Job Requests and Applicant Profiles use the same terminology. Applicants can maintain their skills-set and look for and find their next career opportunity. They will receive assistance and information regarding career and industry trends. Support for multiple profiles is built-in, as are inactive, testing and live modes. These modes allow for more accurate profile construction, as the user may see results of a specific profile as it is weighed against the inventions skills-set and then make any necessary modifications.
US 20160034588 System for maintaining a database of user profiles based, respectively, on user interaction with third-party systems. The invention includes the processes of: accessing a unique user profile associated with a unique user; automatically collecting, by an agent module executing on a processor associated with a first system, data associated with the unique user based at least in part on the unique user's interaction with a system unassociated with the first system.
US 20130282605 System and Method for User Profile Creation and Access Control to create a user profile module for creating a user-owned user profile including sensitive information; receive a plurality of privacy settings to control access to the user-owned user profile; match the user-owned user profile with one or more interested parties based on a commonality of interest; and in dependence upon the plurality of privacy settings received, and confirmation of permission to access, provide access to the user-owned user profile to the one or more interested parties. The user profiles are entirely user-owned and the owner of a user profile has full control over access to the user profile by one or more third parties based on a plurality of privacy settings.
Conclusion
Any inquiry concerning this communication or earlier communications from the Examiner should be directed to LAURA YESILDAG whose direct telephone number is (571) 270-5066 and work schedule is generally Monday-Friday, from 9:00 AM - 5:00 PM ET. If attempts to reach the Examiner are unsuccessful for any urgent matter that needs immediate attention, the Examiner’s Supervisor, LYNDA JASMIN, can be reached at (571) 272-6782.
Examiner interviews can be requested by telephone or are available using the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
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/LAURA YESILDAG/Primary Examiner, Art Unit 3629