DETAILED ACTION
This communication is a Non-Final Rejection Office Action in response to the 10/21/2025 submission filed in Application 17/589,289.
Claims 20-22, 27, 29-31, 35-37 have been amended. Claims 20-39 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 .
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 10/21/2025 has been entered.
Response to Arguments
Applicant's arguments filed 10/21/2025 have been fully considered but they are not persuasive.
Regarding the rejection under 101 the Applicant argues “the claim as a whole, as supported by the specification, includes an improvement to a computer capability and a technical field by displaying, for a user, different types of issues based on the issues being associated with a common object. This improvement to the computer capability and technical field allows the user to quickly see what issues may be related to the selected issue even if the related issues are of a different type than the selected issue (e.g., incidents, change requests). This facilitates rapid and efficient review, by the user, of disparate issue types when evaluating a given issue within the issue tracking system.”
The Examiner respectfully disagrees. Displaying related data in the manner claimed is not a technical improvement. 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 at least a portion of the first issue data; data associated with the object and a set of graphical indicia corresponding to the selected subset of issues amounts to displaying the result of mental observations amount. MPEP 2106(g)states that outputting information amounts to insignificant post solution activity.
Regarding the rejection under 101 the Applicant argues “the Assignees respectfully submits that the pending Office has not established, by a preponderance evidence that claim 20 is directed to patent ineligible material under 35 U.S.C. § 101. In the present Office Action, the Examiner rejected independent claim 20 under 35 U.S.C. § 101 at least because independent claim 20 was found to allegedly include a judicial exception that was not integrated into a practical application under step 2A prong 2. However, the Assignee respectfully submits that the Examiner failed to analyze the claim as a whole, as required by the 2024 Guidance Update, when determining whether the alleged judicial exceptions were integrated into a practical application and therefore did not establish, by a preponderance of evidence, that claim 20 was directed to patent ineligible material under 35 U.S.C. § 101. In particular, the Assignee respectfully further submits that the Examiner failed to consider that displaying "issue data associated with the first issue [of a first type]", "data associated with the . . object", and "a set of graphical indicia corresponding to the . .. subset of issues [of a second type different than the first type]" provides an improvement to the computer capability and technical field that allows the user to quickly see what issues may be related to the selected issue even if the related issues are of a different type than the selected issue (e.g., incidents, change requests). Therefore, the Assignee respectfully submits that independent claim 20 integrates the judicial exception into a practical application and is directed to patent eligible subject matter.”
The Examiner respectfully disagrees. The Examiner has analyzed the claim as a whole and found that the additional elements in combination with the recited abstract idea doses not integrate the abstract idea into a practical application.
Regarding the rejection under 101 the Applicant argues “As amended, independent claim 20 recites specific improvements to an issue tracking system that permit a user to rapidly determine whether objects (e.g., predefined services or products that may be the subject of issues and incidents) are associated with a displayed issue (via the displayed first group of graphical indicia), what object(s) is associated with the displayed issue, and that facilitate presenting, to the user, a second group of graphical indicia corresponding to a second subset of issues associated with one of the first set of graphical indicia selected by the user. This may facilitate optimizing network resources by reducing a quantity of external systems that must be opened and running on the client device to obtain desired information for a given issue (e.g., which objects are associated with one or more issues). Thus, amended independent claim 20 provides an inventive concept under Step 2B, and is therefore patent eligible.””
The Examiner respectfully disagrees. The display or related information in response to selecting user interface elements does not optimize network resources by reducing a quantity of external systems. The display of information and then the display of related information merely amounts to insignificant data display. There is not recited technical ipro9vemnt in the claims.
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.
Claim 22, 29, 30, 31, 36, 37 rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention. The claims have been amended to recite causing display to cease. The Examiner fails to find support for this in the originally filed specification. The Examiner request the Applicant point to the areas in the specification that support these amendments.
Claim 35-39 rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention. The claims have been amended to recite “retrieving, from a second data storage different from the first data storage, a set of issues associated with the object”. The Examiner fails to find support for recited different data storages in the originally filed specification. The Applicant has pointed to para. 30-31. However this paragraphs seem to disclose “server environment 110 may include multiple data storage applications.”. However, the specification does not disclose the user of different data storages in the manner claimed. The Claims the depend from claim 35 fail to cure the deficiencies of the parent and are also rejection.
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 20-39 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 20-39 are directed toward a 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:
Receiving requests, a request to display a first issue of the issue tracking system:
identifying a first issue type associated with the first issue based on the retrieved first issue data;
in response to the first issue type corresponding to a feature request issue category:
identifying, from an object registry and based on the first issue data, a first object corresponding to a predefined service or product;
selecting a first subset of issues from the first set of issues, the first subset of issues selected based on the first subset of issues having an being associated with a second issue type corresponding to an incident issue category; and
receiving, a request to display a second issue of the first subset of issues, the request to display the second issue corresponding to an input;
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 selecting 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 1 recites the additional elements of:
receiving requests from the client device
retrieving, from a data storage communicatively coupled to the issue tracking system, first issue data associated with the first issue;
retrieving, from the data storage and based on the first object, 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 first object;
storing, in a cache associated with the issue tracking system, the first set of issues including the first set of issue data;
causing display of the graphical user interface on the client device, the graphical user interface comprising:
at least a first portion of the first issue data associated with the first issue;
first data associated with the first object;
a set of graphical indicia corresponding to the first subset of issues; and
retrieving, from the first set of issue data stored in the cache, second issue data associated with the second issue; and
causing an update to the display of the graphical user interface on the client device, the updated display of the graphical user interface comprising:
at least a second portion of the second issue data associated with the second issue;
the first data associated with the first object; and a second set of graphical indicia corresponding to a second subset of the first subset of issues.
However, 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 at least a portion of the first issue data; data associated with the object and a set of graphical indicia corresponding to the selected subset of issues amounts to displaying the result of mental observations amount. MPEP 2106(g)states that outputting information amounts to insignificant post solution activity.
Viewing the data gathering in combination with the recited display 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 Claims 21-26 further limit the abstract idea of an observation 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 21 and 22 recite suppressing the display of information. However, not displaying information does not amount to a technical improvement to displays.
Accordingly, the Examiner concludes that there are no meaningful limitations in claims 20-26 that transform the judicial exception into a patent eligible application such that the claim amounts to significantly more than the judicial exception itself.
The analysis above applies to all statutory categories of invention. Claims 27-39 recite similar limitation to those recited in claims 20-26 are rejected for the same rational.
Conclusion
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/DEIRDRE D HATCHER/ Primary Examiner, Art Unit 3625