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
This action is responsive to the following communication: Amendment filed Oct. 30, 2025. This Action is made final.
Claims 1-19 are pending in the case. Claims 1 and 13 are independent claims.
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 1-19 are rejected under 35 U.S.C. § 101 because the claimed invention is directed to a judicial exception (i.e., an abstract idea) without “significantly more.” Claims 1-19 are directed to data model generation which is considered an abstract idea.
Step One - Abstract Idea Analysis
Exemplary Claim 1 and similar independent claim 13 recite the following abstract concepts that are found to include “abstract idea.” Dependent Claims 2-12 and 14-19 recite mathematical calculations, therefore do not recite features considered to be “significantly more,” than that identified for the respective independent claims.
The examiner notes the "improvement" cannot come from the abstract idea itself (see MPEP 2106.05(a)(II)). The examiner notes 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. The examiner is required to consider the broadest reasonable interpretation of the claim. 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). A simple machine learning model can be drawn on a piece of paper and input and output data can also be drawn in a piece of paper (see e.g., Perkins US 2022/0253647 Para [38] – “the machine learning model and/or one or more sets of inference data may be reviewed manually to evaluate the machine learning model and/or the one or more sets of inference data and/or to determine whether the one or more sets of inference data are compatible with the machine learning model.”).
The additional elements as disclosed below, e.g., reciting generic computer components, reciting limitations for a specific field of use or technological environment or reciting insignificant extra-solution activity, fail to integrate a judicial exception into a practical application. See MPEP 2106.05(h), MPEP 2106.05(f) and MPEP 2106.05(g) that fail to integrate the judicial exception(s) into practical application.
Claim 1 -
Instantiate a graph database comprising a plurality of nodes and edges, each edge connecting two nodes, a method for altering an output symbol string of a node (method of organizing human activity and/or mental process, e.g., human dictation to write words and draw the graph on a piece of paper), the method comprising:
Encode a first selected node with a node operation to be performed upon any received input symbol string; (method of organizing human activity and/or mental process of evaluation and/ judgement)
Associate a first transition table with the first selected node, the first transition table including a plurality of pairs of string segments and string operations (hereinafter, “plurality of pairs”); (method of organizing human activity and/or mental process of evaluation and/ judgement e.g., human dictation to write words and draw the table on a piece of paper see Fig. 8 of the instant application)
Upon receipt of a first input symbol string, wherein the first input symbol string includes at least one non-numeric symbol, comparing a first string segment of the first transition table with the first input symbol string; (method of organizing human activity and/or mental process of evaluation and/ judgement - human dictation to write words and draw the table - see Fig. 9-10 of the instant application)
When a match between the first string segment of the first transition table and a portion or all of the first input symbol string is detected, selecting a first string operation that is paired with the first string segment within the plurality of pairs; (method of organizing human activity and/or mental process of evaluation and/ judgement)
Derive a resultant output string at least partially on the basis of an application of the first string operation in response to matching the at least one string segment to a portion or all of the first input symbol string; and (method of organizing human activity and/or mental process of evaluation and/ judgement)
Communicate the resultant output string from the first selected node to a second node of the graph database. (method of organizing human activity and/or mental process, e.g., human dictation to write words and draw the graph on a piece of paper).
Claim 13 - (method of organizing human activity and/or mental process, e.g., human dictation to write words and draw the graph on a piece of paper), Associating a first transition table with the first selected node, the first transition table including a plurality of pairs of string segments and string operations (hereinafter, “plurality of pairs”); (method of organizing human activity and/or mental process of evaluation and/ judgement e.g., human dictation to write words and draw the table on a piece of paper see Fig. 8 of the instant application)
Reception of a first input symbol string, wherein the first input symbol string includes at least one non-alphanumeric symbol, Comparing a first string segment of the first transition table with the first input symbol string (method of organizing human activity and/or mental process of evaluation and/ judgement - human dictation to write words and draw the table - see Fig. 9-10 of the instant application); When a match between the first string element of the first transition table and a portion or all of the first input symbol string is detected, selecting a first string operation that is paired with the first string element within the plurality of pairs (method of organizing human activity and/or mental process of evaluation and/ judgement); Deriving a resultant output string at least partially on the basis of an application of the first string operation in response to matching the at least one string element to a portion or all of the first input symbol string (method of organizing human activity and/or mental process of evaluation and/ judgement); and Communicating the resultant output string from the first selected node to a second node of the first graph database, such that the output string of the first selected node becomes an input string of the second node (method of organizing human activity and/or mental process, e.g., human dictation to write words and draw the graph on a piece of paper).
The Federal Circuit has repeatedly emphasized that “the key question is ‘whether the focus of the claims is on the specific asserted improvement . . . or, instead, on a process that qualifies as an “abstract idea” for which computers are invoked merely as a tool.’” Visual Memory LLC v. Nvidia Corp., No. 2016-2254 (Fed. Cir. Aug. 15, 2017) (referring to Enfish LLC v. Microsoft Corp. et al., Appeal No. 2015-1244 (Fed. Cir. 2016)). “In this regard, [examiners] must articulate with specificity what the claims are directed to.” Thales Visionix Inc. v. U.S., 850 F.3d 1343, 1347 (Fed. Cir. 2017). Moreover, the Federal Circuit has held that “[a]dding one abstract idea . . . to another abstract idea . . . does not render the claim non-abstract.” RecogniCorp, LLC v. Nintendo Co., Ltd., 885 F.3d 1322, 1327 (Fed. Cir. 2017). Importantly, “[w]e [] assume that the techniques claimed are ‘[g]roundbreaking, innovative, or even brilliant,’ but that is not enough for eligibility.” SAP Inc. v. InvestPic, LLC, Appeal No. 2017-2081 (Fed. Cir. 2018) citing Ass’n for Molecular Pathology v. Myriad Genetics, Inc., 569 U.S. 576, 591 *2013).
Furthermore, “[t]he ‘novelty’ of any element or steps in a process, or even of the process itself, is of no relevance in determining whether the subject matter of a claim falls within the § 101 categories of possibly patentable subject matter.” Diamond v. Diehr, 450 U.S. 175, 188-89 (1981). “The fact that an identifier [or utilization of the underlying abstract idea] can be used to make a process more efficient . . . does not necessarily render an abstract idea less abstract.” Secured Mail Solutions, LLC v. Universal Wilde, Inc., Appeal No. 2016-1728 (Fed. Cir. Oct. 16, 2017). Importantly, the CAFC “ha[s] held that speed and accuracy increases stemming from the ordinary capabilities of a general purpose computer ‘do[] not materially alter the patent eligibility of the claimed subject matter.’” Intellectual Ventures I v. Erie Indemnity, Appeal No. 2017-1147 (Fed. Cir. 2017) citing Bancorp Servs., L.L.C. v. Sun Life Assurance Co. of Can. (U.S.), 687 F.3d 1266, 1278 (Fed. Cir. 2012). However, “some improvements in computer-related technology when appropriately claimed are undoubtedly not abstract, such as chip architecture, an LED display, and the like.” Enfish, 822 F.3d at 1355.
Here, the examiner finds the claims are not directed to “an improvement to computer technology," such as found in Enfish, but to the abstract idea itself.1 Examiners have been instructed to refer to the body of case law precedent in order to identify abstract ideas by way of comparison to concepts already found to be abstract. Accordingly, the examiner refers to the following cases (and their associated judicial descriptor(s)) that relate to concepts similar to the claimed concepts:
Electric Power Group2 (precedential—ineligible) – abstract idea found to be collecting information, analyzing the information, and displaying certain results, where this was found to be a certain method of organizing human activity;
SAP Inc. v. InvestPic3 (precedential—ineligible) – abstract idea found to be selecting certain information, analyzing it using mathematical techniques, and reporting or displaying the results of the analysis, where this was found to be a certain method of organizing human activity;
CyberSource4 (precedential—ineligible) – abstract idea found to be concepts relating to obtaining and comparing intangible data, where this was found to be an idea of itself;
Digitech5 (precedential—ineligible) – abstract idea found to be concepts relating to organizing information through mathematical correlations, where this was found to be an idea of itself.
As indicated above, the claims are directed to similar concepts.6 Therefore, the claims are found to be directed to abstract idea. Similar to the case law cited above, the examiner finds the abstract idea to include at least the judicial descriptor(s) of: certain methods of organizing human activity, an idea of ‘itself’, mathematical relationships/formulas.7
Regarding preemption, the examiner notes that “[w]hile preemption may signal ineligible subject matter, the absence of complete preemption does not demonstrate patent eligibility.” Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015). “Where a patent’s claims are deemed only to disclose patent ineligible subject matter under the Mayo framework, as they are in this [application], preemption concerns are fully addressed and made moot.” Id.
Step Two - Significantly More Analysis
“[A]fter determining that a claim is directed to a judicial exception, ‘we then ask, [w]hat else is there in the claims before us?’” MPEP 2106.05 (emphasis in MPEP) citing Mayo, 566 U.S. at 78. For step two, the examiner must “determine whether the claims do significantly more than simply describe [the] abstract method” and thus transform the abstract idea into patent-eligible subject matter. Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709 (Fed. Cir. 2014).
A primary consideration when determining whether a claim recites “significantly more” than abstract idea is whether the additional element(s) are well-understood, routine, conventional activities previously known to the industry. See MPEP 2105(d). “If the additional element (or combination of elements) is a specific limitation other than what is well-understood, routine and conventional in the field, for instance because it is an unconventional step that confines the claim to a particular useful application of the judicial exception, then this consideration favors eligibility. If, however, the additional element (or combination of elements) is no more than well-understood, routine, conventional activities previously known to the industry, which is recited at a high level of generality, then this consideration does not favor eligibility.” Id.
The Federal Circuit has held that “[w]hether something is well-understood, routine, and conventional to a skilled artisan at the time of the patent is a factual determination.” Bahr, Robert (April 19, 2018). Changes in Examination Procedure Pertaining to Subject Matter Elgiibility, Recent Subject Matter Eligibility Decision (Berkheimer v. HP, Inc.) citing Berkheimer at 1369. “As set forth in MPEP 2106.05(d)(I), an examiner should conclude that an element (or combination of elements) represents well-understood, routine, conventional activity only when the examiner can readily conclude that the element(s) is widely prevalent or in common use in the relevant industry. This memo[] clarifies that such a conclusion must be based upon a factual determination that is supported as discussed in section III [of the memo].” Berkheimer Memo at 3 (emphasis in memo).
Generally, “[i]f a patent uses generic computer components to implement an invention, it fails to recite an inventive concept under Alice step two.” West View Research v. Audi, CAFC Appeal Nos. 2016-1947-51 (Fed. Cir. 04/19/2017) citing Mortg. Grader, Inc. v. First Choice Loan Servs. Inc., 811 F.3d 1314, 1324–25 (Fed. Cir. 2016) (explaining that “generic computer components such as an ‘interface,’ ‘network,’ and ‘database’ . . . do not satisfy the inventive concept requirement”; but see Bascom (finding that an inventive concept may be found in the non-conventional and non-generic arrangement of the generic computer components, i.e., the installation of a filtering tool at a specific location, remote from the end-users, with customizable filtering features specific to each end user). “What is needed is an inventive concept in the non-abstract application realm.” SAP Inc. v. InvestPic, LLV, Appeal No. 2017-2081 (Fed. Cir. 2018).
Accordingly, the examiner has searched the claim(s) to determine whether there are any “additional features” in the claims that constitute “inventive concept,” thereby rendering the claims eligible for patenting even if they are directed to an abstract idea. Alice, 134 S. Ct. 2347 (2014). Those “additional features” must be more than “well understood, routine, conventional activity.” See Alice. To note, “under the Mayo/Alice framework, a claim directed to a newly discovered . . . abstract idea[] cannot rely on the novelty of that discovery for the inventive concept necessary for patent eligibility.” Genetic Techs. Ltd v. Merial LLC, 818 F.3d 1369, 1376 (Fed. Cir. 2016); Diamond v. Diehr, 450 U.S. 175, 188-89 (1981).
As an example, the Federal Circuit has indicated that “inventive concept” can be found where the claims indicate the technological steps that are undertaken to overcome the stated problem(s) identified in Applicant’s originally-filed Specification. See Trading Techs. Inc. v. CQG, Inc., No. 2016-1616 (Fed. Cir. 2017); but see IV v. Erie Indemnity, No. 2016-1128 (Fed. Cir. March 7, 2017)(“The claims are not focused on how usage of the XML tags alters the database in a way that leads to an improvement in technology of computer databases, as in Enfish.”)(emphasis in original) and IV. v. Capital One, Nos. 2016-1077 (Fed. Cir. March 7, 2017)(“Indeed, the claim language here provides only a result-oriented solution, with insufficient detail for how a computer accomplishes it. Our law demands more. See Elec. Power Grp., 830 F.3d 1356 (Fed. Cir. 2016) (cautioning against claims ‘so result focused, so functional, as to effectively cover any solution to an identified problem.’)”). Furthermore, “[a]bstraction is avoided or overcome when a proposed new application or computer-implemented function is not simply the generalized use of a computer as a tool to conduct a known or obvious process, but instead is an improvement to the capability of the system as a whole.” Trading Techs. Int’l, Inc. v. CQG, Inc., No. 2016-1616 (Fed. Cir. 2017) (emphasis added).
In the search for inventive concept, the Berkheimer memo describes “an additional element (or combination of elements) is not well-understood, routine or conventional unless the examiner finds, and expressly supports a rejection in writing with, one or more of the following:
1. A citation to an express statement in the specification or to a statement made by an applicant during prosecution that demonstrates the well-understood, routine, conventional nature of the additional element(s).
2. A citation to one or more of the court decisions discussed in the MPEP as noting the well-understood, routine, conventional nature of the additional element(s).
3. A citation to a publication that demonstrates the well-understood, routine, conventional nature of the additional element(s).
4. A statement that the examiner is taking official notice of the well-understood, routine, conventional nature of the additional element(s).
See Berkheimer memo at 3-4.
In accordance with this guidance, the examiner refers to the following generically-recited computer elements with their associated functions (and associated factual finding(s)), which are considered to be routine, conventional, and well-understood:
Generic Computer Component(s) – computer implemented method... being performed by one or more processors and training/ without retraining, by a network device, a machine learning classifier using a training set of data points that includes a user data point (see Zibuschka, Koh, and LaFever).
In sum, the examiner finds that the claims "are directed to the use of conventional or generic technology in a nascent but well-known environment, without any claim that the invention reflects an inventive solution to any problem presented by combining the two.” In re TLI Communications LLC, No. 2015-1372 (May 17, 2016). Similar to the claims in SAP v. InvestPic, “[t]he claims here are ineligible because their innovation is an innovation in ineligible subject matter.” Appeal No. 2017-2081 (Fed. Cir. 2018). In other words, “the advance lies entirely in the realm of abstract ideas, with no plausibly alleged innovation in the non-abstract application realm.” Id. Accordingly, when considered individually and in ordered combination, the examiner finds the claims to be directed to in-eligible subject matter.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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 PEIYONG WENG whose telephone number is (571)270-1660. The examiner can normally be reached on Mon.-Fri. 8 am to 5 pm.
If attempts to reach the examiner by telephone are unsuccessful, the examiner's supervisor, Matthew Ell, can be reached on (571) 270-3264. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/PEI YONG WENG/Primary Examiner, Art Unit 2141
1 See Electric Power Group, LLC. V. Alstom, case no. 2015-1778 (Fed. Cir. August 1, 2016) (“The present case is different: the focus of the claims is not on such an improvement in computers as tools, but on certain independent abstract ideas that use computers as tools.”).
2 830 F.3d 1350, 119 U.S.P.Q.2d 1739 (Fed. Cir. 2016).
3 Appeal No. 2017-2081 (Fed. Cir. 2018).
4 654 F.3d 1366, 99 U.S.P.Q.2d 1690 (Fed. Cir. 2011).
5 758 F.3d 1344, 111 U.S.P.Q.2d 1717 (Fed. Cir. 2014).
6 “[The examiner] need not define the outer limits of ‘abstract idea,’ or at this stage exclude the possibility that any particular inventive means are to be found somewhere in the claims, to conclude that these claims focus on an abstract idea—and hence require stage two analysis under § 101.” Electric Power Group, LLC. V. Alstom, case no. 2015-1778 (Fed. Cir. August 1, 2016).
7 As stated in the July 2015 Update: Subject Matter Eligibility, “These associations define the judicial descriptors in a manner that stays within the confines of the judicial precedent, with the understanding that these associations are not mutually exclusive, i.e., some concepts may be associated with more than one judicial descriptor.”