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
1. This Final Office action is in reply to the Applicant amendment filed on 18 February 2026.
2. Claims 1-3, 7-10, 14-17 have been amended.
3. Claims 1-20 are currently pending and have been examined.
Response to Amendment
In the previous office action, Claims 1-20 were rejected under 35 U.S.C. 101 because the claimed invention is directed to non-statutory subject matter (abstract idea). Applicants have not amended Claims 1-20 to provide statutory support and the rejection is maintained. Claims 1-20 are still rejected under 35 U.S.C. 101 as claiming the same invention as that of Claims 1-18 of prior U.S. Patent No. 11,361,268. This is a non-statutory double patenting rejection and this rejection is maintained.
Response to Arguments
Applicant’s arguments filed 18 February 2026 have been fully considered but they are not persuasive. In the remarks regarding the 35 USC § 101 rejection for Claims 1-20, Applicant argues that: (1) the claims are not directed to an abstract idea, and even if they were, they would amount to significantly more than the abstract idea. Examiner respectfully disagrees. Still commensurate to the two-part subject matter eligibility framework decision in the Federal court decision in Alice Corp. Pty. Ltd. V. CLS Bank International et al., (Alice), 2019 revised patent subject matter eligibility guidance (2019 PEG) and the October 2019 Update: Subject Matter Eligibility (“October 2019 Update), and the new “July 2024 Guidance Update on Patent Subject Matter Eligibility Examples, including on Artificial Intelligence”, and the Examiner details the maintained rejection under 35 U.S.C. 101 in the below rejection with further explanation. Applicant argues that as amended, Applicant states in examples and summarization: “…the features of amended claim 1 integrate the alleged judicial exception into a practical application of the alleged abstract idea; …because the claims recite a technical improvement to “rules orchestration and transaction approval” (see Remarks/Arguments pages 10-16). However the Examiner respectfully disagrees. The claims mention that the rule(s) is/are deployable without modifying source code and decreases production update time. Under current USPTO guidelines (the MPEP), simply stating a desirable result (like decreasing update time) or implementing an abstract rule on a computer/server (an administration circuit, data storage media, user interface) does not save the claim. The courts treat these computer components as merely invoking standard, generic technology to perform the abstract business process. It is not specifically determined how these claim limitations are providing an improvement to technology or how the administration circuit is performing the claim results. The claims are based on user input data into a generic computer system via a user interface and generating new data from pre-programmed software for the results. Therefore the claims are directed to an abstract idea. As seen in the below maintained rejection, the Examiner has provided additional reasoning under Step 2A Prong One for Certain methods of organizing human activity –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); and Mental processes – concepts performed in the human mind (including an observation, evaluation, judgment, opinion). In summary as indicated below through Steps 1-2B, the recitation of a computer (a computer/server (an administration circuit, data storage media, user interface) to perform the claim limitations amount to no more than mere instruction to apply the exception using generic computer components. Even when considered in combination, these additional elements represent mere instructions to implement an abstract idea or other exception on a computer and insignificant extra-solution activity, which do not provide an inventive concept. For at least these reasons, the rejection is maintained.
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 1-20 are rejected under 35 U.S.C. §101 because the claimed invention is directed to a judicial exception (i.e., a law of nature, natural phenomenon, or an abstract idea) because the claimed invention is directed to a judicial exception (i.e., a law of nature, natural phenomenon, or an abstract idea) without significantly more. The claims as a whole recite certain grouping of an abstract idea. The claims describe a computing system that generates a rule applicable across customer-facing applications (deployable without modifying source code to decrease update time, stored as searchable metadata); provides a user interface (UI) displaying the rule; receives a user request via the UI for an extension (temporarily suppressing/modifying the rule for a class of transactions); receives a user request via the UI to modify metadata (a rule logic override for a subset of applications); and applies this modification to the rule’s metadata. The core of the claims is directed to the management, display, overriding, and application of business rules via a computer. The courts universally classify these types of claims as falling into recognized sub-categories of abstract ideas and are analyzed in the following step process:
Step 1: Claims 1-20 are each focused to a statutory category of invention namely “method; system; non-transitory computer-readable media” sets.
Step 2A: Prong One: Claims 1-20 recite limitations that set forth the abstract idea(s), namely, the claims as a whole encompass processing information by:
“generating, by an administration circuit of the rules orchestrator computing system, a rule applicable across a plurality of customer-facing computer applications, the rule being deployable without modifying source code of the plurality of the customer-facing computer applications, wherein being deployable without modifying source code decreases production update time of the rule for at least one of a rule message, a severity, or an override, and wherein the rule comprises an instance of metadata related to the rule and stored on a data storage media associated with the rules orchestrator computing system, the metadata searchable by filtering on a desired customer-facing computer application from the plurality of customer-facing computer applications;
providing, by a user interface circuit of the rules orchestrator computing system, an interface to a computing device operated by a user of the system, wherein the interface is structured to display the rule;
receiving, by the administration circuit of the rules orchestrator computing system, an extension request from the user via the interface, the extension request including a rule extension configured to temporarily suppress or modify the rule for a particular class of transactions;
receiving, by the administration circuit of the rules orchestrator computing system, a request from the user via the interface, the request including a modification to the meta data of the rule, wherein the modification comprises a rule logic override related to modifying a user-selected subset of customer-facing computer applications from the plurality of customer- facing computer applications; and
applying, by the administration circuit, the modification to the metadata of the rule for the user- selected subset of customer-facing computer applications based on the request;
maintaining, by the administration circuit, an audit trail of the modification to the metadata of the rule, the audit trail comprising a date, time, and user information of the user associated with the modification to the meta data of the rule;
transmitting, by the administration circuit to a rules engine, a rules request to determine compliance of a particular transaction based on one or more rules;
receiving, by the administration circuit from the rules engine, results based on the rules request, the results indicating that the particular transaction does not comply with the one or more rules;
in response to receiving the results, determining, by the administration circuit, whether the particular transaction is associated with a transaction waiver that suppresses a requirement to comply with the one or more rules, the transaction waiver comprising at least one of a comment or a reason for rule suppression;
and in response to the particular transaction being associated with the transaction waiver, approving, by the administration circuit, purchase of the particular transaction”
The claims as a whole still recite certain groupings under the categories:
Certain methods of organizing human activity – fundamental economic principles or practices; 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). The claims are directed to managing business rules, permissions, extensions, and overrides across different customer applications. Organizing, modifying, and applying business policies or transaction rules is an administrative and business-oriented task.
Mental processes – concepts performed in the human mind (including an observation, evaluation, judgment, opinion). The generation, viewing, and modification of a rule logic override in a user interface is analogous to processes that could be performed entirely in the human mind or with pen and paper.
The claims mention that the rule is deployable without modifying source code and decreases production update time. Under current USPTO guidelines (the MPEP), simply stating a desirable result (like decreasing update time) or implementing an abstract rule on a computer/server (an administration circuit, data storage media, user interface) does not save the claim. The courts treat these computer components as merely invoking standard, generic technology to perform the abstract business process. Therefore the claims are directed to an abstract idea. The subject matter belongs under the judicial exception categories of fundamental economic/business practices and mental processes/data manipulation. See MPEP § 2106.04(a) II C. Hence, the claims are ineligible under Step 2A Prong one. Furthermore, the dependent claims are merely directed to the particulars of the abstract idea and likewise do not add significantly more to the above-identified judicial exception.
Prong Two: Claims 1-20: With regard to this step of the analysis (as explained in MPEP § 2106.04(d)), the judicial exception is not integrated into a practical application. Therefore, the claims contain computer components (“processor; memory; non-transitory computer-readable media”, etc.) (e.g., see Applicants’ published Specification ¶'s 18-32) that are cited at a high level of generality and are merely invoked as a tool to perform the abstract idea. Simply implementing an abstract idea on a computer is not a practical application of the abstract idea. The claims mention that the rule is deployable without modifying source code and decreases production update time. Under current USPTO guidelines (the MPEP), simply stating a desirable result (like decreasing update time) or implementing an abstract rule on a computer/server (an administration circuit, data storage media, user interface) does not save the claim. The courts treat these computer components as merely invoking standard, generic technology to perform the abstract business process. It is notable that mere physicality or tangibility of an additional element or elements is not a relevant consideration in Step 2A Prong Two. As the Supreme Court explained in Alice Corp., mere physical or tangible implementation of an exception does not guarantee eligibility. Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 573 U.S. 208, 224, 110 USPQ2d 1976, 1983-84 (2014) (“The fact that a computer ‘necessarily exist[s] in the physical, rather than purely conceptual, realm,’ is beside the point”). See also Genetic Technologies Ltd. v. Merial LLC, 818 F.3d 1369, 1377, 118 USPQ2d 1541, 1547 (Fed. Cir. 2016) (steps of DNA amplification and analysis are not “sufficient” to render claim 1 patent eligible merely because they are physical steps). Conversely, the presence of a non-physical or intangible additional element does not doom the claims, because tangibility is not necessary for eligibility under the Alice/Mayo test. Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 118 USPQ2d 1684 (Fed. Cir. 2016) (“that the improvement is not defined by reference to ‘physical’ components does not doom the claims”). See also McRO, Inc. v. Bandai Namco Games Am. Inc., 837 F.3d 1299, 1315, 120 USPQ2d 1091, 1102 (Fed. Cir. 2016), (holding that a process producing an intangible result (a sequence of synchronized, animated characters) was eligible because it improved an existing technological process). Furthermore, the dependent claims are merely directed to the particulars of the abstract idea and likewise do not add significantly more to the above-identified judicial exception. The limitations of the claims do not transform the abstract idea that they recite into patent-eligible subject matter because the claims simply instruct the practitioner to implement the abstract idea using generally-recited computer components, and furthermore do not amount to an improvement to a computer or any other technology, and thus are ineligible. See MPEP § 2106.05(f) (h).
Step 2B: As explained in MPEP § 2106.05, Claims 1-20 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 nor recites additional elements that integrate the judicial exception into a practical application. The additional elements of “processor; memory; non-transitory computer-readable media”, etc. are generically-recited computer-related elements that amount to a mere instruction to “apply it” (the abstract idea) on the computer-related elements (see MPEP § 2106.05 (f) – Mere Instructions to Apply an Exception). These additional elements in the claims are recited at a high level of generality and are merely limiting the field of use of the judicial exception (see MPEP §2106.05 (h) – Field of Use and Technological Environment). There is no indication that the combination of elements improves the function of a computer or improves any other technology. Furthermore, the dependent claims are merely directed to the particulars of the abstract idea and likewise do not add significantly more to the above-identified judicial exception. The limitations of the claims do not transform the abstract idea that they recite into patent-eligible subject matter because the claims simply instruct the practitioner to implement the abstract idea using generally-recited computer components, and furthermore do not amount to an improvement to a computer or any other technology, and thus are ineligible.
Examiner interprets that the steps of the claimed invention both individually and as an ordered combination result in Mere Instructions to Apply a Judicial Exception (see MPEP §2106.05 (f)). These claims recite only the idea of a solution or outcome with no restriction on how the result is accomplished and no description of the mechanism used for accomplishing the result. Here, the claims utilize a computer or other machinery (e.g., see Applicants’ published Specification ¶'s 18-32) regarding using existing computer processors as well as program products comprising machine-readable media for carrying or having machine-executable instructions or data structures stored. “computer system 100” in its ordinary capacity for performing tasks (e.g., to receive, analyze, transmit and display data) and/or use computer components after the fact to an abstract idea (e.g., a fundamental economic practice and certain methods of organization human activities) and does not provide significantly more. See Affinity Labs v. DirecTV, 838 F.3d 1253, 1262, 120 USPQ2d 1201, 1207 (Fed. Cir. 2016)). Software implementations are accomplished with standard programming techniques with logic to perform connection steps, processing steps, comparison steps and decisions steps. These claims are directed to being a commonplace business method being applied on a general-purpose computer (see Alice Corp. Pty, Ltd. V. CLS Bank Int' l, 134 S. Ct. 2347, 1357, 110 USPQ2d 1976, 1983 (2014)); Versata Dev. Group, Inc., v. SAP Am., Inc., 793 D.3d 1306, 1334, 115 USPQ2d 1681, 1701 (Fed. Cir. 2015)) and require the use of software such as via a server to tailor information and provide it to the user on a generic computer. Based on all these, Examiner finds that when viewed either individually or in combination, these additional claim element(s) do not provide meaningful limitation(s) that raise to the high standards of eligibility to transform the abstract idea(s) into a patent eligible application of the abstract idea(s) such that the claim(s) amounts to significantly more than the abstract idea(s) itself. Accordingly, Claims 1-20 are rejected under 35 U.S.C. §101 because the claimed invention is directed to a judicial exception (i.e. abstract idea exception) without significantly more.
Double Patenting
Claims 1-20 are rejected under 35 U.S.C. 101 as claiming the same invention as that of Claims 1-18 of prior U.S. Patent No. 11,361,268. This is a non-statutory double patenting rejection.
The non-statutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A non-statutory obviousness-type double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); and In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on a non-statutory double patenting ground provided the conflicting application or patent either is shown to be commonly owned with this application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. Effective January 1, 1994, a registered attorney or agent of record may sign a terminal disclaimer. A terminal disclaimer signed by the assignee must fully comply with 37 CFR 3.73(b).
Claims 1-20 are rejected on the ground of non-statutory double patenting over Claims 1-18 of prior U.S. Patent No. 11,361,268 since the claims, if allowed, would improperly extend the "right to exclude" already granted in the patent. The subject matter claimed in the instant application is fully disclosed in the patent and is covered by the patent since the patent and the application are claiming common subject matter, as follows: In the instant application, Claims 1-20 recite:
“generating, by an administration circuit of the rules orchestrator computing system, a rule applicable across a plurality of customer-facing computer applications, the rule being deployable without modifying source code of the plurality of the customer-facing computer applications, wherein being deployable without modifying source code decreases production update time of the rule for at least one of a rule message, a severity, or an override, and wherein the rule comprises an instance of metadata related to the rule and stored on a data storage media associated with the rules orchestrator computing system, the metadata searchable by filtering on a desired customer-facing computer application from the plurality of customer-facing computer applications;
providing, by a user interface circuit of the rules orchestrator computing system, an interface to a computing device operated by a user of the system, wherein the interface is structured to display the rule;
receiving, by the administration circuit of the rules orchestrator computing system, an extension request from the user via the interface, the extension request including a rule extension configured to temporarily suppress or modify the rule for a particular class of transactions;
receiving, by the administration circuit of the rules orchestrator computing system, a request from the user via the interface, the request including a modification to the meta data of the rule, wherein the modification comprises a rule logic override related to modifying a user-selected subset of customer-facing computer applications from the plurality of customer- facing computer applications; and
applying, by the administration circuit, the modification to the metadata of the rule for the user- selected subset of customer-facing computer applications based on the request;
maintaining, by the administration circuit, an audit trail of the modification to the metadata of the rule, the audit trail comprising a date, time, and user information of the user associated with the modification to the meta data of the rule;
transmitting, by the administration circuit to a rules engine, a rules request to determine compliance of a particular transaction based on one or more rules;
receiving, by the administration circuit from the rules engine, results based on the rules request, the results indicating that the particular transaction does not comply with the one or more rules;
in response to receiving the results, determining, by the administration circuit, whether the particular transaction is associated with a transaction waiver that suppresses a requirement to comply with the one or more rules, the transaction waiver comprising at least one of a comment or a reason for rule suppression;
and in response to the particular transaction being associated with the transaction waiver, approving, by the administration circuit, purchase of the particular transaction”
which is the same or substantially the same as the limitations recited in Claims 1-18 of prior U.S. Patent No. 11,361,268.
Conclusion
The prior art made of record and not relied upon is considered pertinent to Applicant's disclosure:
Kemper et al. (US 2004/0215555)
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 extension fee 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 date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to THOMAS L MANSFIELD whose telephone number is (571)270-1904. The examiner can normally be reached M-Thurs, alt. Fri. (9-6).
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THOMAS L. MANSFIELD
Examiner
Art Unit 3623
/THOMAS L MANSFIELD/Primary Examiner, Art Unit 3624
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