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 .
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.
Claims 1-3, 5-20 are 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.
Referring to claims 1, 11, and 20, and consequently their dependent claims, it is unclear where original support lies for “using the updated machine-learning based model to determine a computer code change that, when implemented by the computer system, remedies the outage to the computer system caused by an incoming incident record, thereby improving the operation of the computer system.” Examiner has not found original support for a change that “when implemented… remedies… thereby improving the operation of the computer system.” The closest such implementation was found as “implementation” of code that is “manually” generated (paragraph 67), but that code does not appear to be the claimed “code change”. Further, paragraph 48 indicates that an identification can be made for which code needs to be changed to fix the issue (branch, file, class, module), but does not say HOW such a change is implemented (e.g., the specific code that would replace the identified code). Claim language similar to paragraph 48 could read, “determine a computer code [not a specific change that is necessarily implementable] that when changed [not necessarily by the computer system, e.g. it could be manually implemented] could fix the issue caused by an incoming incident record, thereby improving the operation of the computer system.” Notably, paragraph 48 identifies what part to change to fix, but that is a first step and no specific change is identified that would necessarily fix, thereby making it ”could fix” not “would fix”.
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 1-3, 5-20 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more.
At step 1, if no statutory category rejection was given above, then the claims have been determined to have a statutory category.
At step 2a, prong one, referring to claim 1, there is recited a method, performed by a generic computer, of clustering records using a machine-learning based model (which identifies, tags, and clusters in “real-time” using a threshold), creating a problem record and populating it, linking the clustered records to the problem record, providing a notification of the problem record, receiving a resolution for the problem record, updating the machine-learning based model, and generating code that “when implemented” by the generic computer remedies. Restated as emphasized, “A method for identifying and handling incidents using a machine-learning based model, the method comprising, performing by one or more processors, operations including: clustering a sub-group of incident records from among a plurality of incident records using the machine-learning based model based on a rolling time window and a number of incident records in the sub-group of incident records, wherein the machine-learning based model is configured to cluster the incident records based on identifying incidents, tagging changes in a computer system corresponding to the incidents, and clustering the incident records in real-time based on a threshold, wherein each of the incident records is a record of an outage of the computer system; creating a problem record based on the clustered incident records; populating the problem record with information related to the clustered incident records; linking the clustered incident records to the problem record; providing a notification that the problem record has been created; receiving a resolution for the problem record; updating, based on the resolution, the machine-learning based model to learn an association between extracted features of the resolution and extracted features of the clustered incident records; and using the updated machine-learning based model to determine a computer code change that, when implemented by the computer system, remedies the outage to the computer system caused by an incoming incident record, thereby improving the operation of the computer system.”
The limitations of clustering, creating, populating, linking, notifying, receiving, updating, and generating code, as crafted, are processes that, under its broadest reasonable interpretation, covers performance of the limitation in the mind but for the recitation of additional elements that do not integrate the judicial exception into a practical application. That is, nothing in the claims as noted precludes the step from practically being performed in the mind, possibly with the aid pen and paper. For example, these steps perform steps of observation, evaluation, judgment, or opinion.
If a claim limitation, under its broadest reasonable interpretation, covers performance of the limitation in the mind but for the recitation of additional elements that do not integrate the judicial exception into a practical application, then it falls within the "Mental Processes" grouping of abstract ideas. Accordingly, the claim recites an abstract idea.
At step 2a, prong two, this judicial exception is not integrated into a practical application. In particular the claim additionally recites a generic computer (including the generic computer that is the “machine” of “machine learning”, “real-time”, processor, and memory) and impliedly recites a generic application step (“when implemented”). The modifying of code performs an implementing operation representing insignificant extra-solution activity, similar to "apply it", that is necessary for use of the recited judicial exception as the implementation operation is an insignificant application of the abstract mental process of observation, evaluation, judgment, or opinion. See MPEP 2106.05(f) and (g).
Even when viewed in combination, the additional elements in this claim do no more than automate the mental processes a person may use to perform, using the computer components as a tool.
Accordingly, these additional elements do not integrate the abstract idea into a practical application because they do not impose any meaningful limits on practicing the abstract idea. The claim is directed to an abstract idea.
At step 2b, claim 1 does not include additional elements that are sufficient to amount to significantly more than the judicial exception. As discussed above with respect to integration of the abstract idea into a practical application, the additional elements of a generic computer and modifying code amount to no more than mere instructions to apply the exception using generic computer components. Mere instructions to apply an exception using generic computer components cannot provide an inventive concept.
With respect to the generic computer, the courts have found limitations directed to generic computers, recited at a high level of generality, to be well-understood, routine, and conventional. See MPEP2106.05(d), for example TLI Communications, Flook, Alice Corp, and Versata.
With respect to “implementing” code, see for example rollback, as shown in US 20120290715 paragraph 8, US 20190384291 paragraph 33, US 20210342257 paragraph 10, and US 20200310769 paragraph 9.
Considering the additional elements individually and in combination and the claim as a whole, the additional elements do not provide significantly more than the abstract idea. The claim is not patent eligible.
Further referring to claims 2-3, 5-10, the claims further describe data and data analysis.
Referring to claims 11-20, see rejection of claims 1-3, 5-10 above.
Response to Arguments
Applicant's arguments filed 23 January 2026 have been fully considered but they are not persuasive.
Regarding Applicant’s argument (page 10-11) requesting confirmation of Applicant’s understanding of the law and whether the claims improve computer technology, Applicant is again invited to reread the rejection upon which these responses are based. Examiner agrees that it is not necessarily these statements that would be sustained, but the rejection itself. Regarding the alleged improvement in technology (and how this determination was arrived at through law and procedure), see below (and above).
Regarding Applicant’s argument (page 12) that a particular section of the MPEP does not require significantly more, examiner notes that this is regarding step 2A prong two analysis, which requires a determination of integration, which does require analysis similar to what is done in 2b, albeit without the consideration of what is well understood, routine, and conventional. This includes whether additional elements are extrasolution or significantly more.
Regarding Applicant’s argument (page 12) that claim 1 improves the functioning of a computer in accord with MPEP2106.04d1, Applicant may have noticed from that same section,
Step 2A Prong Two is similar to Step 2B in that both analyses involve evaluating a set of judicial considerations to determine if the claim is eligible. See MPEP §§ 2106.05(a) through (h) for the list of considerations that are evaluated at Step 2B. Although most of these considerations overlap (i.e., they are evaluated in both Step 2A Prong Two and Step 2B), Step 2A specifically excludes consideration of whether the additional elements represent well-understood, routine, conventional activity. Accordingly, in Step 2A Prong Two, examiners should ensure that they give weight to all additional elements, whether or not they are conventional, when evaluating whether a judicial exception has been integrated into a practical application. Additional elements that represent well-understood, routine, conventional activity may integrate a recited judicial exception into a practical application.
The concepts Applicant refers to in alleging improvement to a computer include “using” information and “determining” a code change, both clearly steps of observation, evaluation, judgment, or opinion, themselves judicial exceptions.
From MPEP2106.05a, Applicant should also note that it was said that the judicial exception alone cannot provide the improvement but that the improvement could be provided by one or more additional elements. Here, the additional elements are a generic computer and (at best) an “apply it” type step. While it is true that these are all in service of a computer, again, it is regarding a computer, and not the computer itself that is improved.
Examiner asks, “for what is a patent being applied for in claim 1?” Looking at claim 1, it is a “method” for identifying, that method being performed by “one or more processors”. The claim is being made to the operations of the method itself, and the method is only regarding information derived from a computer and it is only a determination that is made regarding that computer. The computer (claimed as a “computer system”) itself is never itself operated except as a source of information (presumably, however, transfer of data is unclaimed) and as a target for an “apply it” it type step. These are insignificant and extra-solution.
It is only through an attempt to overcome the eligibility rejection that Applicant even adds “thereby improving the operation of the computer system”, and this is questionably even originally supported.
Regarding Applicant’s argument (page 13) that the computer is not merely used as a tool because there is no application of the claim outside of a computer, again, the computer (“computer system”) merely serves as a source of information and a target for a generic “apply it” step. The invention itself is only significantly directed to the process of data analysis and determination, and only insignificantly inclusive of additional elements that do not, considered individually and as a whole, integrate the invention into practical application.
Regarding the “one or more processors” themselves, these are clearly only generic computers being invoked as a tool to implement the process.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to GABRIEL L CHU whose telephone number is (571)272-3656. The examiner can normally be reached weekdays 8 am to 5 pm.
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/GABRIEL CHU/ Primary Examiner, Art Unit 2114