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 .
Status of Claim
This action is in reply to the action filed on 18 of June 2026.
Claims 1, 9, and 15 have been amended.
Claims 1, 4, 5, 8, 9, 12-15, and 18-20 are currently pending and are rejected as described below.
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 06/18/2026 has been entered.
Response to Amendment/Argument
35 USC § 101
Applicant asserts that claims are structured similar to the second set of claims in Weisner. With claims 1, 9 and 15, the claimed steps are using the time entry system database to perform a search for additional available members using generated division data. Applicant respectfully submits that this searching is akin to the ''new technique for prioritizing the results of a conventional search'' discussed in Weisner. Weisner, 51 F.4th at 1085-86. Applicant accordingly respectfully submits that claims 1, 9 and 15 are directed to a specific implementation of a specialized database that is a new technique for searching and generating a team, similar to the second set of claims discussed in Weisner. The examiner respectfully disagrees. The claims at issue in Weisner were found to be eligible because they were include more than merely the concept of improving computerized search results using travel histories. This is not the case in the instant application as the claims fail to integrate the abstract idea into a practical application. Applicant’s rationale for this assertion is merely based on the fact that since Weisner includes a member network, the account associated with a URL, the individual member's account associated with a mobile communication device, then adding a limitation that recites one processor programmed to generate a first graphical user interface on a first user terminal will make the claims of the instant application eligible. This would only work if eligibility analysis is determined in a vacuum and is merely reliant on claim language absent any consideration of the invention as a whole as described in the original specification as filed. In Weisner, the claims add significantly more to that abstract idea by implementing a specific solution to a problem rooted in computer technology. The additional elements recite a specific improvement over prior art systems by providing a solution to an Internet-centric problem regarding web searches, allowing for more personalized search results than conventional methods. Thus, the claim is eligible because it is not directed to the recited judicial exception. Weisner provided a technological solution to an issue rooted in computer technology. Applicant’s claims do not recite the same fact pattern, in fact it is seeking for an available member eligible to be placed on a team based on a grade satisfying a predetermined threshold and subsequently availability. Accordingly, Applicant’s arguments are not persuasive and the rejections are maintained.
Applicant asserts that similar to Bascom, the time entry system is remote from the billing quote system and cannot be modified by the user operating the billing quote system to search for and create a customized team. The claims are also similar to Bascom in that they do not preempt a broad idea; rather, they are narrowly tailored to methods of searching the time entry system database for additional team members after determining a division of work between the plurality of team members. The examiner respectfully disagrees. Applicant’s argument hinge on the idea that the billing quote system cannot be modified by the user operating the billing quote system to search for and create a customized team which is not language inherently or expressly disclosed in the claims. Therefore, applicant’s argument is moot.
Applicant asserts that the that the patentability of present claims is supported by Applicant's specification in accordance with the recent Appeals Review Panel decision in Ex parte Desjardins, Appeal 2024-000567 for U.S Application No. 16/319,040 (Sept. 26, 2025). The Appeals Review Panel cited Enfish LLC v. Microsoft Corp., 822 F.3d 1327, 1337 (Fed. Cir. 2016) as supporting an eligibility determination, saying that Enfish ''ranks among the Federal Circuit's leading cases on the eligibility of technical improvements'' and noting that the specification cited technological benefits that are consistent with the benefits cited in Enfish as evidencing patent eligibility. Here too, applicant's specification touts the technological benefits of time entry system integration and searching. For example, at paragraphs [0069] and [0074]-[0074], Applicant's specification discusses an improvement in processing efficiency and a reduction in data storage redundancy caused by enhancing and reusing the time entry system for an improved search. Examiner respectfully disagrees. While the specification may help illuminate the true focus of a claim, when analyzing patent eligibility, reliance on the specification must always yield to the claim language in identifying that focus." Id. at 766; see also Trinity Info Media, 72 F.4th at 1363 ("Our focus is on the claims, as informed by the specification."). At bottom, we must "articulate what the claims are directed to with enough specificity to ensure the step one inquiry is meaningful." Thales Visionix Inc. v. United States, 850 F.3d 1343, 1347 (Fed. Cir. 2017). Therefore, the invention remains an observation (i.e. a mental process) of determining the recommendation information corresponding to the user identifier based on skills and a mathematical calculation (i.e. a mathematical concept) of determining a scored value via a scoring model merely applied by generic computer components disclosed at a high level of generality and do not satisfy the Alice Test. Further, there is no improvement to technology at generating client billing quotes based on different types of workers (e.g. salary vs. hourly) and cost quotes base on historical data of workers who previously worked together. A human can observe and log those same data points in order to build a team based on the same variables/conditions. See Cellspin Soft, Inc. v. Fitbit, Inc., 927 F.3d 1306, 1316 (Fed. Cir. 2019) ("But the need to perform tasks automatically is not a unique technical problem."); SAP Am., Inc. v. InvestPic, LLC, 898 F.3d 1161, 1167 (Fed. Cir. 2018) ("[S]electing certain information, analyzing it using mathematical techniques, and reporting or displaying the results of the analysis" is abstract); In re Gale, 85 6 F. App 'x 887, 889 (Fed. Cir. 2021) ("We also disagree with Mr. Gale's argument that his claims are not abstract simply because they include measurements that are 'fed into a computer that repeatedly recalculates [an output]."') (citation omitted). Accordingly, the examiner determines that claims 1, 9, and 15, when considered as a whole, lacks additional elements sufficient to integrate the abstract idea into a practical application.
Claim Rejections - 35 USC § 101
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, 4, 5, 8, 9, 12-15, and 18-20 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) without significantly more.
At Step 1 the claims fall under one of the four statutory categories. The claims are then analyzed to determine if the claims are directed to a judicial exception. MPEP §2106.04(a). In determining, whether the claims are directed to a judicial exception, the claims are analyzed to evaluate whether the claims recite a judicial exception (Prong One of Step 2A), and whether the claims recite additional elements that integrate the judicial exception into a practical application (Prong Two of Step 2A). See 2019 Revised Patent Subject Matter Eligibility Guidance (“PEG” 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50-57 (Jan. 7, 2019)).
With respect to 2A Prong 1, claim 15 recites “at least one memory configured to store member data for a plurality of available members eligible to be placed on a team, the member data relating to two or more categories including at least one of (i) cultural diversity, (ii) gender diversity, (iii) LGBT+ inclusivity, (iv) disability inclusivity, and (v) initiative and accommodation; at least one processor programmed to generating a first graphical user interface on a first user terminal that includes an input selection that enables a user to create the client billing quote based on hours worked or fixed fee; generate a second graphical user interface on the first user terminal that enables the user to create the team from the plurality of available members using a team icon and automatically disable an ability to enter certain information on the second graphical user interface based on the input selection chosen by the user; upon selection of the team icon, automatically create the team including a plurality of team members, access a time entry system used by each of the plurality of team members to record time entries, the time entry system including a database storing time entry data for a plurality of matters for each of the plurality of team members, determine division data regarding a division of work between the plurality of team members based on the time entry data for each of the plurality of team members for one or more of the matters stored in the database, and display each of the plurality of team members on the graphical user interface along with at least a work allocation for each available member; calculate a plurality of grades or scores based on the member data for team members of the team; display a ratings panel directly on the graphical user interface of the first user terminal, the ratings panel including the plurality of grades or scores; search the database of the time entry system for additional available members eligible to be placed on the team using the division data and the time entry data for the additional available team members for the one or more of the matters stored in the database; determine that a new team member of the additional members has availability to perform the work allocation assigned to an existing team member of the plurality of team members, recalculate the plurality of grades or scores using member data for the new team member in place of the existing team member, determine that the recalculated plurality of grades or scores satisfy the predetermined threshold, present the new team member on the graphical user interface of the first user terminal in place of the existing team member to facilitate meeting the predetermined threshold, the new team member not being a member of the team initially presented on the graphical user interface; display the ratings panel directly on the graphical user interface of the first user terminal with the plurality of grades or scores for the new team which satisfies the predetermined threshold; and generate the client billing quote including the plurality of grades or scores which satisfy the predetermined threshold, the user setting the predetermined threshold based on the client, and the user assigning weights to each of the two or more categories”. Claims 1 and 9 disclose similar limitations as Claim 15 as disclosed, and therefore recites an abstract idea.
More specifically, claims 1, 9, and 15 are directed to “Mental Processes” in particular “concepts performed in the human mind (including an observation, evaluation, judgment, opinion)”, “Mathematical Concepts” in particular “mathematical calculations” such as calculating a score, and “Certain Methods of Organizing Human Activity” in particular “commercial or legal interactions (including agreements in the form of contracts; legal obligations; advertising, marketing or sales activities or behaviors; business relations)” such as generating a client billing quote as discussed in MPEP §2106.04(a)(2), and in the 2019-01-08 Revised Patent Subject Matter Eligibility Guidance. Accordingly, the claims recite an abstract idea.
Dependent claims 4, 5, 8, 12-14, and 18-20 further recite abstract idea(s) contained within the independent claims, and do not contribute to significant more or enable practical application. Thus, the dependent claims are rejected under 101 based on the same rationale as the independent claims.
Under Prong Two of Step 2A of the Alice/Mayo test, the examiner acknowledges that Claims 1, 9, and 15 recite additional elements yet the additional elements do not integrate the abstract idea into a practical application. In order for the judicial exception to be “integrated into a practical application”, an additional element or a combination of additional elements in the claim “will apply, rely on, or use the judicial exception in a manner that imposes a meaningful limit on the judicial exception, such that the claim is more than a drafting effort designed to monopolize the judicial exception.” PEG, 84 Fed. Reg. 54 (Jan. 7, 2019). The courts have identified examples in which a judicial exception has not been integrated into a practical application when “an additional element does no more than generally link the use of a judicial exception to a particular technological environment or field of use.” PEG, 84 Fed. Reg. 55 (Jan. 7, 2019); MPEP § 2106.05(h). The claims are directed to an abstract idea.
In particular, claims 1, 9, and 15 recite additional elements boldened and underlined above. These are generic computer components recited as performing generic computer functions that are mere instructions to apply an exception, because it does no more than merely invoke computers or machinery as a tool to perform an existing process. Further, the remaining additional element italicized above reflect insignificant extra solution activities to the judicial exception. Accordingly, these additional elements do not integrate the abstract idea into a practical application. The claim is directed to an abstract idea.
With respect to step 2B, claims 1, 9, and 15 do not include additional elements that are sufficient to amount to significantly more than the judicial exception because the additional elements when considered both individually and as an ordered combination do not amount to significantly more than the abstract idea. These are generic computer component recited as performing generic computer functions that are mere instructions to apply an exception, because it does no more than merely invoke computers or machinery as a tool to perform an existing process, as evidenced by at least ¶58 “As illustrated, each of the plurality of user terminals 14 includes one or more user input device 38, a display 40, a peripheral interface 42, one or more other output device 44, and a network interface 46 in communication with the terminal processor 30. The user input device 38 can include any mechanism for providing a user input to the terminal processor 30, for example, a keyboard, a mouse, a touch screen, a microphone and/or suitable voice recognition application, or another input mechanism. The display 40 can include any conventional display mechanism such as a cathode ray tube (CRT), a flat panel display, a touch screen, or another display mechanism. Thus, as can be understood, the user input device 38 and/or the display 40 and/or any other suitable element can be considered a GUI 25. The peripheral interface 42 can include the hardware, firmware, and/or other software necessary for communication with various peripheral devices, such as media drives (e.g., magnetic disk or optical disk drives), other processing devices, or another input source used as described herein. Likewise, the other output device 44 can optionally include similar media drive mechanisms, other processing devices or other output destinations capable of providing information to a user of the user terminal l 4, such as speakers, LEDs, tactile outputs, etc. The network interface 46 can comprise hardware, firmware and/or software that allows the terminal processor 30 to communicate with other devices via wired or wireless networks 16, whether local or wide area, private or public. For example, such networks 16 can include the World Wide Web or Internet, or private enterprise networks, or the like.”
As a result, claims 1, 9, and 15 do not include additional elements, when recited alone or in combination, that amount to significantly more than the above-identified judicial exception (the abstract idea). Thus, taken alone, the additional elements do not amount to significantly more than the above-identified judicial exception (the abstract idea). Looking at the limitations as an ordered combination adds nothing that is not already present when looking at the elements taken individually. Further, additional elements for displaying scores and storing data (italicized and underscored above) do not amount to significantly more than the abstract idea because the elements reflect insignificant extra solution activities to the judicial exception that are well-understood, routine, and conventional data retrieval and transmission functions in view of MPEP 2106.05(d)(II).
Claims 4, 5, 8, 12-14, and 18-20 do not disclose additional elements, further narrowing the abstract ideas of the independent claims and thus not practically integrated under prong 2A as part of a practical application or under 2B not significantly more for the same reasons and rationale as above.
After considering all claim elements, both individually and in combination, Examiner has determined that the claims are directed to the above abstract ideas and do not amount to significantly more. See Alice Corporation Pty. Ltd. v. CLS Bank International, No. 13–298.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MATHEUS R STIVALETTI whose telephone number is (571)272-5758. The examiner can normally be reached on M-F 8:30-5:30.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Rutao Wu can be reached on (571)272-6045. The fax phone number for the organization where this application or proceeding is assigned is 571-273-1822.
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/MATHEUS RIBEIRO STIVALETTI/Primary Examiner, Art Unit 3623 08/14/2025
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