DETAILED ACTION
This communication is a 1st action Final Rejection Office Action in response to the 2/6/2026 submission filed in Application 17/772,286.
Claim 1 and 10 have been amended. Claims 1-4, 6-13, 15-19 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 2/06/2026 with respect to the prior art have been fully considered but they are not persuasive.
Regarding the rejection under 101, the Applicant argues “The Applicant submits that the claimed system/method improves the effectiveness and efficiency of the functioning of a computer, and this is achieved in a technical manner as recited in the independent claims, including: receiving, by an input device, a product strategy input, a related outcome input for managing a lifecycle of at least one product, and data comprising a set of domain drivers for product oversight and performance of the at least one product; assigning a rating to the data for aggregating a score of each domain driver of the set of domain drivers; and determining a health-check index of the at least one product based on the analysis and rating of the data, and the score of each domain driver of the set of domain drivers. The health-check index is determined/generated in this manner using an algorithm or a machine learning model, thus advantageously enabling an AI-based product oversight system for significantly improved effectiveness and efficiency (e.g., see paras. [0051], [0058], [0062], [0064] [0084] of the specification). In contrast, conventionally, there does not exist any effective and efficient method of monitoring a lifecycle health of a product. Instead, product lifecycle health is typically determined in a non-technical manner, such as based on gut feeling or general impression, resulting in a high failure rate (e.g., see para. [0005] of the specification). Accordingly, Applicant submits that the claimed invention causes a computer to operate, to monitor lifecycle health of a product, and the claimed Al model improves the effectiveness and efficiency of that model. In this regard, Applicant submits that the claim is not directed to a judicial exception and therefore is patent eligible.”
The Examiner respectfully disagrees. As an initial matter, the independent claims do not recite the use of artificial intelligence or the use of machine learning models. Claims 4 and 13 broadly recite the use of a machine learning model. However, the broadly recited machine learning attempts to cover any solution to the identified problem with no restriction on how the result is accomplished and no description of the mechanism for accomplishing the result, which does not integrate a judicial exception into a practical application or provide significantly more because this type of recitation is equivalent to the words "apply it”. As such, the broadly recited ML model does not integrate a judicial exception into a practical application or provide significantly more.
Further, the assigning; determining; ranking; simulating; determining a risk action plan; determining a strategic action plan; monitoring and auditing strategic activities; monitoring the lifecycle of a product; capturing and evaluating product knowledge and determining an active growth strategy index steps are directed to observation and evaluation that can be performed mentally. Steps that can be performed mentally cannot also integrate the abstract idea into a practical application or provide a technical improvement. As such, the Examiner is not persuaded by the Applicant arguments that the claim is not directed to a judicial exception.
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 1-4, 6-13, 15-19 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 1-4, 6-9 are directed toward a system for product oversight. Claims 10-13, 15-19 are directed toward a methods for product oversight. 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 1 recites the abstract idea of determining risk action plans and strategic management plans which falls into the abstract idea categories of certain methods of organizing human activity and mental processes. The elements of Claim 1 that represent the Abstract idea include:
The limitations of Claim 1 that represent the Abstract idea include:
assign a rating to the data for aggregating a score of each domain driver of the set of domain drivers; determine a health-check index of the at least one product based on the analysis and rating of the data, and the score of each domain driver of the set of domain drivers, wherein the health-check index is determined at the product, portfolio, and business unit level with a view of achieving overall sustainable growth of product value from organic product strategy outcomes, further wherein the health-check index comprises at least one of a probability that a strategy concerning the at least one product will meet a timeline desired strategy outcome, and a probability that the strategy concerning the at least one product will undergo a life stage event or be subject to risk within a particular period of time;
rank the at least one product based on the health-check index of the at least one product;
predict a financial and value performance of the at least one product; and
simulate one or more investment scenarios and innovation actions for the at least one product;
a risk management device configured to determine a risk action plan based on at least one of the health-check index, the product strategy input, and the related outcome input, wherein one or more risk mitigation activities are implemented based on the risk action plan;
determine a strategic action plan based on the health-check index, wherein one or more strategic action activities are implemented based on the strategic action plan; and a monitoring device configured to continuously monitor and audit the one or more implemented strategic action activities, domain drivers, implemented risk mitigation activities, and the lifecycle of the at least one product to provide continual organic planning enhancements, and monitoring of product domain driver dynamics and product strategy activities to meet a desired output according to the received related outcome input;
wherein the monitoring device is further configured to:
monitor the lifecycle of the at least one product to see delta index changes in the health-check index of the at least one product over time;
provide a three-dimensional (3D) time-domain view across product domain driver dynamics and product strategy activities;
capture and evaluate subjective and non-subjective product knowledge; and
determine and provide at least one of an active growth strategy index, a performance feedback of the at least one product, and over performance feedback of the at least one product.
MPEP 2106.04(a)(2) II. states:
The phrase "methods of organizing human activity" is used to describe concepts relating to:
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, and business relations); and
managing personal behavior or relationships or interactions between people, (including social activities, teaching, and following rules or instructions).
The Supreme Court has identified a number of concepts falling within the "certain methods of organizing human activity" grouping as abstract ideas. In particular, in Alice, the Court concluded that the use of a third party to mediate settlement risk is a ‘‘fundamental economic practice’’ and thus an abstract idea. 573 U.S. at 219–20, 110 USPQ2d at 1982. In addition, the Court in Alice described the concept of risk hedging identified as an abstract idea in Bilski as ‘‘a method of organizing human activity’’. Id. Previously, in Bilski, the Court concluded that hedging is a ‘‘fundamental economic practice’’ and therefore an abstract idea. 561 U.S. at 611–612, 95 USPQ2d at 1010.
The instant claims are directed to managing the lifecycle of a product by determining risk action plans and strategic action plans based on product strategy and domain drivers and providing a three-dimensional (3D) time-domain view across product domain driver dynamics and product strategy activities which is a fundamental business practice.
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 claim recites mental processes including observation, evaluation, judgment, opinion. For example, the steps of assigning a rating to the data for aggregating a score; determine a health-check index of the at least one product; ranking the at least one product based on the health-check index; predict a financial and value performance of the at least one product; simulate one or more investment scenarios and innovation actions for the at least one at least one product; determine a risk action plan and determine a strategic action plan; monitor the lifecycle of the at least one product; providing a three-dimensional (3D) time-domain view across product domain driver dynamics and product strategy activities capture and evaluate subjective and non-subjective product knowledge; determine and provide at least one of an active growth strategy index, a performance feedback of the at least one product, and over performance feedback of the at least one product are drawn to observation and evaluation that can be performed mentally of with a human using a pen and paper. The claims do not state how the three-dimensional (3D) time-domain view is provided. A human can provide this view via a pen and paper. As such, the claim recites at least one abstract idea.
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 11 recites the additional elements of:
A product oversight system comprising:
an input device configured to receive a product strategy input, a related outcome input for managing a lifecycle of at least one product, and data comprising a set of domain drivers for product oversight and performance of the at least one product;
a processing device configured to:
a strategic management device configured to perform the abstract idea;
providing a view of the data
However, the processor device and the strategic management device are recited at a high-level of generality (i.e., as a generic processor performing a generic computer functions) such that it amounts no more than mere instructions to apply the exception using a generic computer component. Further MPEP 2105.05(g) explains that data gathering and data output can be considered pre-solution activity and post-solution activity. See MPEP 2106.05(g) that states:
An example of pre-solution activity is a step of gathering data for use in a claimed process, e.g., a step of obtaining information about credit card transactions, which is recited as part of a claimed process of analyzing and manipulating the gathered information by a series of steps in order to detect whether the transactions were fraudulent. An example of post-solution activity is an element that is not integrated into the claim as a whole, e.g., a printer that is used to output a report of fraudulent transactions, which is recited in a claim to a computer programmed to analyze and manipulate information about credit card transactions in order to detect whether the transactions were fraudulent.
In the instant case, the input device to receive product information amounts to mere data gathering which is incidental to the primary process in a similar way that obtaining information about credit card transactions to be analyzed was incidental to the primary process explained above. Further the providing of data is considered post-solution activity that is not integrated into the claim as a whole.
Viewing the generic data gathering and output in combination with the generic processing device does not add more than when viewing the elements individually. Accordingly, the additional elements do not integrate the abstract idea into a practical application because it does not impose any meaningful limits on practicing the abstract idea.
In step 2B, the examiner must be 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). As discussed with respect to Step 2A Prong Two, the processing devices recited in the claim amounts to no more than mere instructions to apply the exception using a generic computer component. The same analysis applies here in 2B, i.e., mere instructions to apply an exception on a generic computer cannot integrate a judicial exception into a practical application at Step 2A or provide an inventive concept in Step 2B. Further, the receipt or location data is recited broadly in the claims.
MPEP 2106.05(d) states receiving or transmitting data over a network, e.g., using the Internet to gather data is conventional when claimed generically (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)). As such, the broadly claimed input device configured to receive a product data is considered well-known and conventional as established by the MPEP and relevant case law.
Further, the Examiner takes official notice that providing the result of an analysis is well-known and conventional.
Viewing the generic data gathering and display in combination with the generic processing device does not add more than when viewing the elements individually. Accordingly, the additional elements do not provide an inventive concept.
Further, Claims 2-4, 6-9 further limit the mental processes and methods of human activity already rejected in the parent claim, but fail to remedy the deficiencies of the parent claim as they do not impose any additional elements that amount to significantly more than the abstract idea itself.
Further, claims 4 recites the additional elements of a machine learning model. However, the use of a machine learning model is indicative of adding the words “apply it” (or an equivalent) with the judicial exception. MPEP 2106.05(f) states:
When determining whether a claim simply recites a judicial exception with the words "apply it" (or an equivalent), such as mere instructions to implement an abstract idea on a computer, examiners may consider the following:
(1) Whether the claim recites only the idea of a solution or outcome i.e., the claim fails to recite details of how a solution to a problem is accomplished. The recitation of claim limitations that attempt to cover any solution to an identified problem with no restriction on how the result is accomplished and no description of the mechanism for accomplishing the result, does not integrate a judicial exception into a practical application or provide significantly more because this type of recitation is equivalent to the words "apply it". See Electric Power Group, LLC v. Alstom, S.A., 830 F.3d 1350, 1356, 119 USPQ2d 1739, 1743-44 (Fed. Cir. 2016); Intellectual Ventures I v. Symantec, 838 F.3d 1307, 1327, 120 USPQ2d 1353, 1366 (Fed. Cir. 2016); Internet Patents Corp. v. Active Network, Inc., 790 F.3d 1343, 1348, 115 USPQ2d 1414, 1417 (Fed. Cir. 2015). In contrast, claiming a particular solution to a problem or a particular way to achieve a desired outcome may integrate the judicial exception into a practical application or provide significantly more. See Electric Power, 830 F.3d at 1356, 119 USPQ2d at 1743.
By way of example, in Intellectual Ventures I v. Capital One Fin. Corp., 850 F.3d 1332, 121 USPQ2d 1940 (Fed. Cir. 2017), the steps in the claims described "the creation of a dynamic document based upon ‘management record types’ and ‘primary record types.’" 850 F.3d at 1339-40; 121 USPQ2d at 1945-46. The claims were found to be directed to the abstract idea of "collecting, displaying, and manipulating data." 850 F.3d at 1340; 121 USPQ2d at 1946. In addition to the abstract idea, the claims also recited the additional element of modifying the underlying XML document in response to modifications made in the dynamic document. 850 F.3d at 1342; 121 USPQ2d at 1947-48. Although the claims purported to modify the underlying XML document in response to modifications made in the dynamic document, nothing in the claims indicated what specific steps were undertaken other than merely using the abstract idea in the context of XML documents. The court thus held the claims ineligible, because the additional limitations provided only a result-oriented solution and lacked details as to how the computer performed the modifications, which was equivalent to the words "apply it". 850 F.3d at 1341-42; 121 USPQ2d at 1947-48 (citing Electric Power Group., 830 F.3d at 1356, 1356, USPQ2d at 1743-44 (cautioning against claims "so result focused, so functional, as to effectively cover any solution to an identified problem")).
In the instant case, the additional elements of the broadly recited machine learning attempts to cover any solution to the identified problem with no restriction on how the result is accomplished and no description of the mechanism for accomplishing the result, which does not integrate a judicial exception into a practical application or provide significantly more because this type of recitation is equivalent to the words "apply it”. As such, the broadly recited ML model does not integrate a judicial exception into a practical application or provide significantly more.
Accordingly, the Examiner concludes that there are no meaningful limitations in claims 1-4, 6-9 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. The presentment of claim 1 otherwise styled as a method, computer program product or system, for example, would be subject to the same analysis. As such, claims 10-13, 15-19 are also rejected.
Conclusion
This is a RCE of applicant's earlier Application No. 17/772,286. All claims are identical to, patentably indistinct from, or have unity of invention with the invention claimed in the earlier application (that is, restriction (including lack of unity) would not be proper) and could have been finally rejected on the grounds and art of record in the next Office action if they had been entered in the earlier application. Accordingly, THIS ACTION IS MADE FINAL even though it is a first action in this case. See MPEP § 706.07(b). 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.
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/DEIRDRE D HATCHER/Primary Examiner, Art Unit 3625