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 .
Introduction
The following is a final Office action in response to Applicant’s submission filed on 4/27/2026. Currently claims 1-10, 12-17, 19-20 are pending and claims 1, 8, and 15 are independent. Claims 1, 2, 4, 5, 8, 9, 12, 15, 19 have been amended from the previous claim set dated 10/7/2025. No claims have been added newly cancelled.
Response to Amendments
Applicant’s amendments are acknowledged and necessitated the new grounds of rejection in this Office Action. In light of the amendments, the 103 rejections have been withdrawn because none of the prior art of record, taken individually or in combination, teach the claimed invention as detailed in the independent claims, wherein the novelty of the claimed invention is in the combination of limitations and not in any single limitation. Specifically, none of the prior art discloses an IT composite services recommendation method which uses a cognitive model trained on multiple inputs, particularly hardware assets and available API’s, and the output is based on customer demand which includes functional (e.g. ability to sort merchant information) and non-functional (e.g. latency and processing time) requirements.
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 1-10, 12-17, 19-20 are rejected under 35 U.S.C. 101 because the claimed invention is directed to a judicial exception (i.e., a law of nature, a natural phenomenon, or an abstract idea), specifically an abstract idea, without significantly more. With respect to claims 1-10, 12-17, 19-20, following guidance contained within MPEP 2106, the inquiry for patent eligibility follows two steps: Step 1: Does the claimed invention fall within one of the four statutory categories of invention? Step 2A (Prong 1): Is the claim “directed to” an abstract idea? Step 2A (Prong 2): Is the claim integrated into a practical application? Step 2B: Does the claim recite additional elements that amount to “significantly more” than the abstract idea?
In accordance with these steps, the Examiner finds the following:
Step 1: Claim 1 and its dependent claims (claims 2-7) are directed to a statutory category, namely a method. Claim 8 and its dependent claims (claims 9, 10, 12-14) are directed to a statutory category, namely a system/machine. Claim 15 and its dependent claims (claims 16, 17, 19, 20) are directed to a statutory category, namely an article of manufacture.
Step 2A (Prong 1): Claims 1, 8, and 15, which are substantially similar claims to one another, are directed to the abstract idea of “Mental processes”, or more particularly, “Concepts performed in the human mind (including an observation, evaluation, judgment, opinion) (See MPEP 2106).” In this application that refers to using a computer system to evaluate and determine the best software/ information services for a business or person to use. To clarify this further, the Applicant’s disclosed invention is a conceptual system meant to perform the same function that chief technical officer might perform for a business. The abstract elements of claims 1, 8, and 15, recite in part “Receive inputs…train model…Receive demand…Determine services…Recommend selection…Recommend functional requirements…Dynamically retrain the model…”. Dependent claims 2-7, 9, 10, 12-14, 16, 17, 19, 20 add to the abstract idea the following limitations which recite in part “Training inputs comprise…Generate hierarchy…Dynamically retrain…Recommend changes…Dynamically extend model…Generate model…”. All of these additional limitations, however, only serve to further limit the abstract idea, and hence are nonetheless directed towards fundamentally the same abstract idea as independent claims 1, 8, and 15.
Step 2A (Prong 2): Independent claims 1, 8, and 15, which are substantially similar claims to one another, do not contain additional elements, either considered individually or in combination, that effectively integrate the exception into a practical application of the exception. These claims do include the limitation that recites in part “Processors…Memory…Computer readable storage device…Cognitive integration engine…Cognitive model…” which limits the claims to a networked/computer based environment, but this is insufficient with respect to integration into a practical application because it is merely applying the abstract idea to a general computer (See MPEP 2106.05(f)).
Dependent claims 4, 7, and 14 add the additional element which recites in part “text analytics artificial intelligence and machine learning models…Hardware assets…APIs…” which again limits the claims to a networked/computer based environment, which again limits the claims to a networked/computer based environment, but this is also insufficient with respect to integration into a practical application because it is merely applying the abstract idea to a general computer (See MPEP 2106.05(f)).
Additionally, dependent claims 2, 3, 5, 6, 9, 10, 12, 13, 16, 17, 19, 20 do not include any additional elements to conduct a further Step 2A (Prong 2) analysis.
Step 2B: Independent claims 1, 8, and 15, which are substantially similar claims to one another, include additional elements, when considered both individually and as an ordered combination, which are insufficient to amount to significantly more than the judicial exception. The additional elements of these claims recite in part “Processors…Memory…Computer readable storage device…Cognitive integration engine…Cognitive model …”. These items are not significantly more because these are merely the software and/or hardware components used to implement the abstract idea (evaluate and determine the best software/ information services for a business or person to use) on a general purpose computer (See MPEP 2106.05(f)). This is exemplified in the Applicant’s specification in [0076] – “These computer readable program instructions may be provided to a processor of a general purpose computer.”
Dependent claims 4, 7, and 14 include additional elements, when considered both individually and as an ordered combination and in view of their respective independent claims, which are insufficient to amount to significantly more than the judicial exception. Specifically, dependent claims 7 and 14 include the additional element which recites in part “text analytics artificial intelligence and machine learning models… Hardware assets…APIs…” These are similar additional elements that are addressed above in claims 1, 8, and 15, and are not significantly more because these are again merely the software and/or hardware components used to implement the abstract idea (evaluate and determine the best software/ information services for a business or person to use) on a general purpose computer (See MPEP 2106.05(f)).
Additionally, dependent claims 2, 3, 5, 6, 9, 10, 12, 13, 16, 17, 19, 20 do not include any additional elements to conduct a further 2B analysis.
Accordingly, whether taken individually or as an ordered combination claims 1-10, 12-17, 19-20 are rejected under 35 USC § 101 because the claimed invention is directed to a judicial exception, an abstract idea, without significantly more.
Response to Arguments
Applicant's arguments filed 4/27/2026 have been fully considered but they are not persuasive and/or are moot in light of the new rejections addressed above.
Regarding the arguments related to the 35 USC § 101 rejections, as addressed above according to the guidance for 35 USC § 101 rejections contained within MPEP 2106, the Examiner maintains that the claimed invention is an abstract idea, without significantly more, and not integrated into a practical application.
Applicant argues that the claimed invention overcomes the 101 rejection because the invention cannot be performed within the human mind (thus not falling in one of the enumerated buckets for abstract ideas). Examiner does not find this persuasive because the claimed invention is interpreted as an evaluation and recommendation method that is merely facilitated through the use of a computer. That evaluation and recommendation can very easily be performed within the human mind and clearly falls into the enumerated bucket.
Applicant next argues that the claimed invention in an improvement to the technology, specifically identifying the dynamic retraining. This “Dynamically retraining” is broadly interpreted as the standard way of using machine learning, similar to a generic computer algorithm, and not interpreted as an improvement to the technology. Example 47 (claim 2) of the subject matter eligibility (https://www.uspto.gov/sites/default/files/documents/2024-AI-SMEUpdateExamples47-49.pdf) is seen as analogous and provides further explanation.
Regarding the 35 USC § 103 rejections and in light of the amendments, the 103 rejections have been withdrawn because none of the prior art of record, taken individually or in combination, teach the claimed invention as detailed in the independent claims, wherein the novelty of the claimed invention is in the combination of limitations and not in any single limitation. Specifically, none of the prior art discloses an IT composite services recommendation method which uses a cognitive model trained on multiple inputs, particularly hardware assets and available API’s, and the output is based on customer demand which includes functional (e.g. ability to sort merchant information) and non-functional (e.g. latency and processing time) requirements.
The closest prior art includes:
Chitrapura et al. (US 11295375 B1)
Cillis et al. (US 20180165385 A1)
Arseneault et al. (US 20220317985 A1)
Rydin et al. (US-20230153869-A1)
Russo et al. (CA-2726542-A1)
Liu et al. (US 20200372088 A1)
Banipal et al. (US 20220335302 A1)
and
Y. Zhao, et al. "Automatically Learning User Preferences for Personalized Service Composition," 2017 IEEE International Conference on Web Services (ICWS), Honolulu, HI, USA, 2017, pp. 776-783 <https://ieeexplore.ieee.org/document/8029835?
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 Michael R Koester whose telephone number is (313)446-4837. The examiner can normally be reached Monday thru Friday 8:00AM-5:00 PM EST.
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/MICHAEL R KOESTER/Examiner, Art Unit 3624
/Jerry O'Connor/Supervisory Patent Examiner,Group Art Unit 3624
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