DETAILED ACTION
This communication is a Final Rejection Office Action in response to the 4/14/2026 submission filed in Application 17/589,289.
Claims 20, 27, 35 have been amended. Claims 22-26, 28-34, 36-39 have been cancelled. Claims 40-56 are new. Claims 20, 27, 35, 40-56 are now presented.
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Response to Arguments
Applicant's arguments filed 4/14/2026 have been fully considered but they are not persuasive.
The Examiner points the Applicant to the instant rejection that explains why the newly presented claims are rejected under 101.
Further, the Applicant argues “With reference to the above criteria for evaluating subject matter eligibility, the Assignee respectfully submits that amended independent claim 20, when evaluated as a whole, recites an improvement over existing technology for issue tracking systems by providing for real-time, dynamic modification of underlying data in direct response to UI element selection, rather than requiring intermediate processing layers or manual data entry steps at multiple different user interfaces, facilitating reducing computational overhead within the computer system. Additionally, amended independent claim 20 further recites an improvement over existing technology by providing for storage of the "first set of issues including the first set of issue data" in a "local cache of the client device," providing reduced-latency delivery of one or more issues of the first set of issues, and the corresponding issue data, in response to a user request. (Emphasis added). Storing the first set of issues and the first set of issue data in the local cache of the client device further improves the functioning of the computer system by reducing network traffic as the first set of issues and the issue data does not have to be retrieved, via the network, from a storage location remote to the client device.”
The Examiner respectfully disagrees that storing issues in a local cache is a technical improvement. The Examiner cited several references that establish that this elements is well0known and conventional.
Claim Objections
Claim 52 objected to because of the following informalities: there are (2) claim 52s. Appropriate correction is required.
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 20, 27, 35, 40-56 are rejected under 35 U.S.C. 101 because the claimed invention is directed to non-statutory subject matter.
When considering subject matter eligibility under 35 U.S.C. 101, in step 1 it must be determined whether the claim is directed to one of the four statutory categories of invention, i.e., process, machine, manufacture, or composition of matter. If the claim does fall within one of the statutory categories, in step 2A prong 1 it must then be determined whether the claim is recite a judicial exception (i.e., law of nature, natural phenomenon, and abstract idea). If the claim recites a judicial exception, under step 2A prong 2 it must additionally be determined whether the recites additional elements that integrate the judicial exception into a practical application. If a claim does not integrate the Abstract idea into a practical application, under step 2B it must then be determined if the claim provides an inventive concept.
In the Instant case, Claims 20, 27, 35, 40-56 are directed toward methods for generating a graphical user interface of an issue tracking system. As such, each of the Claims is directed to one of the four statutory categories of invention.
MPEP 2106.04 II. A. explains that in step 2A prong 1 Examiners are to determine whether a claim recites a judicial exception. MPEP 2106.04(a) explains that:
To facilitate examination, the Office has set forth an approach to identifying abstract ideas that distills the relevant case law into enumerated groupings of abstract ideas. The enumerated groupings are firmly rooted in Supreme Court precedent as well as Federal Circuit decisions interpreting that precedent, as is explained in MPEP § 2106.04(a)(2). This approach represents a shift from the former case-comparison approach that required examiners to rely on individual judicial cases when determining whether a claim recites an abstract idea. By grouping the abstract ideas, the examiners’ focus has been shifted from relying on individual cases to generally applying the wide body of case law spanning all technologies and claim types.
The enumerated groupings of abstract ideas are defined as:
1) Mathematical concepts – mathematical relationships, mathematical formulas or equations, mathematical calculations (see MPEP § 2106.04(a)(2), subsection I);
2) Certain methods of organizing human activity – fundamental economic principles or practices (including hedging, insurance, mitigating risk); commercial or legal interactions (including agreements in the form of contracts; legal obligations; advertising, marketing or sales activities or behaviors; business relations); managing personal behavior or relationships or interactions between people (including social activities, teaching, and following rules or instructions) (see MPEP § 2106.04(a)(2), subsection II); and
3) Mental processes – concepts performed in the human mind (including an observation, evaluation, judgment, opinion) (see MPEP § 2106.04(a)(2), subsection III).
As per step 2A prong 1 of the eligibility analysis, claim 20 is directed to the abstract idea of identifying a particular issue type associated with the first issue based on the retrieved first issue data; in response to the particular issue type corresponding to a feature request issue category: and identifying, from an object registry and based on the first issue data, an object corresponding to a predefined service or product which falls into the abstract idea category mental processes.
The elements of Claim 20 that represent the Abstract idea include:
identifying, from an object registry, a set of objects corresponding to respective predefined services or products, each of the set of objects associated with at least one issue; and
associating, in a data storage communicatively coupled to the issue tracking system, at least one object of the subset of the set of objects corresponding to the selected at least one selectable object element with the first issue; and
MPEP 2106.04(a)(2) states:
The courts consider a mental process (thinking) that "can be performed in the human mind, or by a human using a pen and paper" to be an abstract idea. CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1372, 99 USPQ2d 1690, 1695 (Fed. Cir. 2011). As the Federal Circuit explained, "methods which can be performed mentally, or which are the equivalent of human mental work, are unpatentable abstract ideas the ‘basic tools of scientific and technological work’ that are open to all.’" 654 F.3d at 1371, 99 USPQ2d at 1694 (citing Gottschalk v. Benson, 409 U.S. 63, 175 USPQ 673 (1972)). See also Mayo Collaborative Servs. v. Prometheus Labs. Inc., 566 U.S. 66, 71, 101 USPQ2d 1961, 1965 (2012) ("‘[M]ental processes[] and abstract intellectual concepts are not patentable, as they are the basic tools of scientific and technological work’" (quoting Benson, 409 U.S. at 67, 175 USPQ at 675)); Parker v. Flook, 437 U.S. 584, 589, 198 USPQ 193, 197 (1978) (same).
Accordingly, the "mental processes" abstract idea grouping is defined as concepts performed in the human mind, and examples of mental processes include observations, evaluations, judgments, and opinions
In the instant case, the identifying and associating steps cover the performance of the limitations in the mind but for the recitation of generic computer components. These steps are directed toward to observations, evaluations.
Under step 2A prong 2 the examiner must then determine if the recited abstract idea is integrated into a practical application. MPEP 2106.04 states:
Limitations the courts have found indicative that an additional element (or combination of elements) may have integrated the exception into a practical application include:
• An improvement in the functioning of a computer, or an improvement to other technology or technical field, as discussed in MPEP §§ 2106.04(d)(1) and 2106.05(a);
• Applying or using a judicial exception to effect a particular treatment or prophylaxis for a disease or medical condition, as discussed in MPEP § 2106.04(d)(2);
• Implementing a judicial exception with, or using a judicial exception in conjunction with, a particular machine or manufacture that is integral to the claim, as discussed in MPEP § 2106.05(b);
• Effecting a transformation or reduction of a particular article to a different state or thing, as discussed in MPEP § 2106.05(c); and
• 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, as discussed in MPEP § 2106.05(e)
The courts have also identified limitations that did not integrate a judicial exception into a practical application:
• Merely reciting the words "apply it" (or an equivalent) with the judicial exception, or merely including instructions to implement an abstract idea on a computer, or merely using a computer as a tool to perform an abstract idea, as discussed in MPEP § 2106.05(f);
• Adding insignificant extra-solution activity to the judicial exception, as discussed in MPEP § 2106.05(g); and
• Generally linking the use of a judicial exception to a particular technological environment or field of use, as discussed in MPEP § 2106.05(h).
In the instant case, this judicial exception is not integrated into a practical application. In particular, Claim 20 recites the additional elements of:
A method for generating a graphical user interface of an issue tracking system, the method comprising:
in response to receiving, from a client device, an indication of a first user input corresponding to a first request to display an issue creation user interface for creating a first issue, causing display, via a display of the client device, of the issue creation user interface comprising:
an issue summary entry region;
an associated object selectable drop-down menu element; and
an issue creation selectable element; and
in response to receiving, from the client device, an indication of a second user input corresponding to selection of the associated object selectable drop-down menu element:
causing display, in the issue creation user interface, in an associated object drop- down menu extending from at least a portion of the associated object selectable drop-down menu element, of a set of selectable object elements corresponding to a subset of the set of objects; and
in response to receiving, from the client device, an indication of a third user input corresponding to selection of at least one selectable object element of the set of selectable object elements:
in response to receiving, from the client device, an indication of a fourth user input corresponding to selection of the issue creation selectable element, causing creation of the first issue based at least on the selection of the at least one selectable object element;
in response to receiving, from the client device, an indication of a fifth user input corresponding to a second request to display the first issue of the issue tracking system:
retrieving, from the data storage:
first issue data associated with the first issue and including an indication of the association between the at least one object and the first issue; and
a first set of issues including a first set of issue data associated with the first set of issues, the first set of issues associated with the at least one object; and
causing to be stored, in a local cache of the client device, the first set of issues including the first set of issue data; and
causing display of an issue details graphical user interface via the display of the client device, the issue details graphical user interface comprising:
at least a first portion of the first issue data associated with the first issue; and
an indication of the at least one object.
However, the client device that functions to receive input including requests to display an issue creation user interface comprising entry regions and drop down elements and selectable user interface elements that data retrieval and data display amount to generally linking the abstract idea to a particular technological environment. For example, the abstract idea of object identification an association is linked to the particular technological environment of a user interface with interface element that result in the performance of the recited abstract functions.
Further, the retrieving of data, and the extracting of data under the broadest reasonable interpretation, amount to mere data gathering which the MPEP says is insignificant extra solution activity (see MPEP 2106.05(g).
Further, the interface that displays the retrieved data amounts to displaying the result of mental observations amount. MPEP 2106(g)states that outputting information amounts to insignificant post solution activity.
Further, storing data in a local cache also amount to insignificant post solution activity (see MPEP 2106.05(g).
Viewing the data gathering, data storage and data display in combination with the particular technological environment of a user interface with interface element that result in the performance of the recited abstract functions does not add anything further than looking at the limitations individually. When viewed either individually, or as an ordered combination, the additional limitations do not amount to a claim as a whole that is significantly more than the abstract idea.
In step 2B, the Examiner must determine whether the claim adds a specific limitation other than what is well-understood, routine, conventional activity in the field - see MPEP 2106.05(d).
Nothing in the claim indicates that the obtaining and extracting of information is anything other than conventional. See MPEP 2106.05(d) that states “Receiving or transmitting data over a network, e.g., using the Internet to gather data is conventional when claimed in a merely generic manner (see Symantec, 838 F.3d at 1321, 120 USPQ2d at 1362 (utilizing an intermediary computer to forward information); TLI Communications LLC v. AV Auto. LLC, 823 F.3d 607, 610, 118 USPQ2d 1744, 1745 (Fed. Cir. 2016) (using a telephone for image transmission); OIP Techs., Inc., v. Amazon.com, Inc., 788 F.3d 1359, 1363, 115 USPQ2d 1090, 1093 (Fed. Cir. 2015) (sending messages 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).
Further, the cited art established the recited display is well-known and conventional. See Pechacek (US 2020//0101773 A1) Fig. 7; Singh (US 2019/0102719 A1) Fig. 8B; Burton (2019/0026106 A1) para. 17 and Chang (US 9703680 B1) Fig. 6. This references establish that the recited display is well known and conventional.
Further, Shanker (US 20230014435 A1 para. 51); Gazmin (US 20200057773 A1 para. 60); Howard (US 20170250992 A1 para. 33); Wu (US 20130151655 A1 para. 64). This references establish that the use of a local cache is well known and conventional.
Viewing the data gathering, data storage and data display in combination with the particular technological environment of a user interface with interface element that result in the performance of the recited abstract functions does not add anything further than looking at the limitations individually. When viewed either individually, or as an ordered combination, the additional limitations do not amount to an inventive concept.
Further Claims 40-45 further limit the abstract idea of an observations that can be performed mentally that were already rejected in claim 20 but fail to remedy the deficiencies of the parent claim as they do not impose any limitations that amount to significantly more than the abstract idea itself. Further, claim 40-45 also recite elements that further describe the interface that amounts to a general link to a particular technological environment. However, these claims do not provide an integration into a practical application or an inventive concept.
Accordingly, the Examiner concludes that there are no meaningful limitations in claims 20, 40-45 that transform the judicial exception into a patent eligible application such that the claim amounts to significantly more than the judicial exception itself.
Claims 27, 46-51 and 35, 52-56 recite similar limitations to those recited in claims 20, 40-45 and are rejected for similar reasons.
Conclusion
THIS ACTION IS MADE FINAL. 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 DEIRDRE D HATCHER whose telephone number is (571)270-5321. The examiner can normally be reached Monday-Friday 8-4:30.
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/DEIRDRE D HATCHER/Primary Examiner, Art Unit 3625
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