DETAILED ACTION
This is a Final Office Action in response to the amendment filed 03/31/2026.
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 Claims
Claims 1-20 are currently pending in the application and have been examined.
Information Disclosure Statement
The information disclosure statements (IDS) submitted by Applicant are in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statements are being considered by the examiner.
Response to Amendment
The amendment filed 03/31/2026 has been entered.
Response to Arguments
Claim Rejections 35 U.S.C. § 101:
Applicant submits on page10 of the remarks that the claims are integrated into a practical application and recite significantly more than an abstract idea. Examiner respectfully disagrees and notes that the present claims do not integrate the judicial exception into a practical application in a matter that imposes meaningful limit to the judicial exception. Examiner notes that when determining whether a claim recites significantly more in Step 2B the analysis takes into consideration whether the claim effects a transformation or reduction of a particular article to a different state or thing. Transformation and reduction of an article ‘to a different state or thing’ is the clue to patentability of a process claim that does not include particular machines." Bilski v. Kappos, 561 U.S. 593, 658, 95 USPQ2d 1001, 1007 (2010) (quoting Gottschalk v. Benson, 409 U.S. 63, 70, 175 USPQ 673, 676 (1972)). See MPEP 2106.05(c). Furthermore, the additional elements recited in the claims merely recite the use of a generic computer to perform generic computer functions of storing and transmitting data. These generic computer functions do not integrate the abstract idea into a practical application and do not recite significantly more than the judicial exception.
Applicant submits on pages 10-12 of the remarks that the claims as amended, include a technical solution to a technical problem indicated in the as-filed specification. Further, Applicant submits that the claim recites a technical improvement to a technical problem. Examiner respectfully disagrees and notes that Applicant's claims do not include additional features or a non-conventional arrangement of the additional elements, instead relying on a general-purpose computer to perform the claimed steps. The claims as presented are merely linking the use of the judicial exception to a computer system and the additional elements recited in the claims do not provide a meaningful link of the abstract idea to a practical application.
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.
Claim(s) 1-20 is/are rejected under 35 U.S.C. 101 because the claimed invention is directed to non-patentable subject matter. The claims are directed to an abstract idea without significantly more.
With respect to claims 1-20, the independent claims (claims 1-2 and 12) are directed, in part, to a method, a non-transitory computer readable storage medium and a computing apparatus and a system to determine a total investment to develop a software. Step 1 – First pursuant to step 1 in the January 2019 Guidance, claims 1 and 3-11 are directed to a method comprising a series of steps which falls under the statutory category of a process, claim 2 is directed to a non-transitory computer-readable medium, which falls under the statutory category of an article of manufacture and claims 12-20 are directed to a computing apparatus, which falls under the statutory category of a machine. However, these claim elements are considered to be abstract ideas because they are directed to a mental process which includes observations or evaluations and a method of organizing human activity which includes business relations.
As per Step 2A - Prong 1 of the subject matter eligibility analysis, the claims are directed, in part, to determining a total resource investment to develop software…; determining a total resource investment to develop software, the computer-implemented method comprising: retrofitting a hierarchical project management software tool having a native multi- tier hierarchical structure to accommodate a desired multi-tier hierarchical structure different from the first native hierarchical structure, the hierarchical project management software tool configured to facilitate planning, tracking, and management of software development projects to track resource investments to develop the software, wherein retrofitting the hierarchical project management software tool includes: receiving, via one or more user inputs, tier assignments that specify mappings from respective desired tiers of the desired multi-tier hierarchical structure to native tiers of the native multi-tier hierarchical structure; mapping, based on the one or more user inputs, a top tier of the native multi-tier hierarchical structure to define a company, a line of business, or a plurality of activities; and mapping, based on the one or more user inputs, a second-to-top tier of the first multi-tier hierarchical structure to determine an owner of the plurality of activities; determining, via a first user input, one or more software products, wherein each of the one or more software products comprises a completed software product within a first time period, the completed software product associated with a first tier of the native multi-tier hierarchical structure; determining, via a second user input, one or more features of each of the one or more software products, wherein each of the one or more features comprises a completed software feature within a second time period, the completed software feature associated with a second tier of the native multi-tier hierarchical structure; determining, via a third user input, one or more sub-features of each of the one or more features, wherein each of the one or more sub-features comprises a completed software sub- feature within a third time period, the completed software sub-feature associated with a third tier of the native multi-tier hierarchical structure; accessing a database with data related to a plurality of professionals developing the one or more software products, the plurality of professionals associated with a fourth tier of the native multi-tier hierarchical structure; based on the data related to the plurality of professionals, determining: a first effort level associated with each of the one or more sub-features; a second effort level associated with each of the one or more features; and a third effort level associated with each of the one or more software products; and based on the determination of the first, the second, and the third effort levels, determining: a first resource investment to develop software within the third time period; a second resource investment to develop software within the second time period; and a third resource investment to develop software within the first time period, data corresponding to the first resource investment, the second resource investment, and the third resource investment being natively accessible by the hierarchical project management software tool from native tier records due to mapping of the desired multi- tier hierarchical structure to the native multi-tier hierarchical structure. If a claim limitation, under its broadest reasonable interpretation covers an observation or evaluation, then it falls under the “mental process” grouping of abstract ideas. Furthermore; if a claim limitation, under its broadest reasonable interpretation, covers business relations, then it falls within the “certain methods of organizing human activity” grouping of abstract ideas. Accordingly, the claim recites an abstract idea.
As per Step 2A - Prong 2 of the subject matter eligibility analysis, this judicial exception is not integrated into a practical application. In particular, the claim recites the additional elements: software tool; a non-transitory computer-readable storage medium; processor; a computing apparatus; a memory. These additional element in both steps are recited at a high-level of generality (i.e., as a generic device performing a generic computer function of receiving and storing data) such that these elements amount no more than mere instructions to apply the exception using a generic computer component. Examiner looks to Applicant’s specification in at least figure 2 and related text and [0040-0041] to understand that the invention may be implemented in a generic environment that “In some embodiments, the processor 310 illustrated in FIG. 3 may be substantially any electronic device that may be capable of processing, receiving, and/or transmitting the instructions 314 that may be included in, permanently or temporarily saved on, and/or accessed by the computer-readable medium 312. In aspects, the processor 310 may be implemented using one or more processors (e.g., a central processing unit (CPU), a graphic processing unit (GPU)), and/or other circuitry, where the other circuitry may include as at least one or more of an application specific integrated circuit (ASIC), a field programmable gate array (FPGA), a microprocessor, a microcomputer, and/or the like. In some embodiments, the computer-readable medium 312 illustrated in FIG. 3 may be and/or include any suitable data storage media, such as volatile memory and/or non-volatile memory. Examples of volatile memory may include a random-access memory (RAM), such as a static RAM (SRAM), a dynamic RAM (DRAM), or a combination thereof. Examples of non- volatile memory may include a read-only memory (ROM), a flash memory (e.g., NAND flash memory, NOR flash memory), a magnetic storage medium, an optical medium, a ferroelectric RAM (FeRAM), a resistive RAM (RRAM), and so forth. Moreover, the computer-readable medium 312 does not include transitory propagating signals or carrier waves.” Accordingly, these additional elements do not integrate the abstract idea into a practical application because they are mere instructions to implement the abstract idea on a computer.
As per Step 2B of the subject matter eligibility analysis, the claim does not include additional elements that are sufficient to amount to significantly more than the judicial exception. The additional elements are mere instructions to apply the abstract idea on a computer. When considered individually, these claim elements only contribute generic recitations of technical elements to the claims. It is readily apparent, for example, that the claim is not directed to any specific improvements of these elements and the invention is not directed to a technical improvement. When the claims are considered individually and as a whole, the additional elements noted above, appear to merely apply the abstract concept to a technical environment in a very general sense – i.e. a generic computer receives information from another generic computer, processes the information and then sends information back. In addition, when taken as an ordered combination, the ordered combination adds nothing that is not already present as when the elements are taken individually. Their collective functions merely provide generic computer implementation. Therefore, when viewed as a whole, these additional claim elements do not provide meaningful limitations to transform the abstract idea into a practical application of the abstract idea or that amount to significantly more than the abstract idea itself. The most significant elements of the claims, that is the elements that really outline the inventive elements of the claims, are set forth in the elements identified as an abstract idea. The fact that the generic computing devices are facilitating the abstract concept is not enough to confer statutory subject matter eligibility.
The dependent claims further refine the abstract idea. These claims do not provide a meaningful linking to the judicial exception. Rather, these claims offer further descriptive limitations of elements found in the independent claims and addressed above – such as by describing the nature and content of the data that is received/sent. While these descriptive elements may provide further helpful context for the claimed invention these elements do not serve to confer subject matter eligibility to the invention since their individual and combined significance is still not significantly more than the abstract concepts at the core of the claimed invention.
Allowable Subject Matter
Claims 1-20 are allowable over prior art but have other pending rejections as indicated above.
The claims would be allowable if rewritten or amended to overcome the rejection(s) set forth in this Office Action.
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 FRANCIS Z SANTIAGO-MERCED whose telephone number is (571)270-5562. The examiner can normally be reached M-F 7am-4:30pm EST.
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/FRANCIS Z. SANTIAGO MERCED/Examiner, Art Unit 3625
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