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 .
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 04/06/2026 has been entered.
Response to Arguments
Applicant's arguments filed 04/06/2026 have been fully considered but they are not persuasive. Regarding arguments on pages 8-9 of the Remarks, Examiner notes that many of the argued limitations are not characterized as abstract, but as being mere extrasolution activity, insufficient to integrate the abstract ideas into a practical application or constitute significantly more. For example, the rendering the summary for display is not a mental process, but the mere displaying of data is insufficient to integrate the abstract idea into a practical application.
Regarding arguments on pages 9-10 of the Remarks, Examiner notes that the extracting data objects and generating a summary have been characterized as abstract ideas. Examining the additional elements, the steps include storing the summary, receiving a member event indication, retrieving the summary, and displaying the summary. Storing and retrieving data, receiving data, and displaying data are all considered mere extrasolution activity. These steps alone do not appear to improve the functioning of a computer or technology/technical field. Rather, the steps appear to simply move the data that was determined by the abstract idea.
Applicant’s arguments with respect to claim(s) 1, 4-8, 11-15, and 18-20 have been considered but are moot because the prior art rejection has been withdrawn.
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 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. Using the subject matter eligibility test from page 74621 of the Federal Register Notice titled “2014 Interim Guidance on Patent Subject Matter Eligibility,” a two-step process is performed. Under step 1, the claims are analyzed to determine if the claim is directed to a process, machine, article of manufacture, or composition of matter. In this case, claims 1-7 are directed to an apparatus, which is a machine or article of manufacture; claims 8-14 are directed to a method, which is a process, and claims 15-20 are directed to a computer program product, which is a machine or an article of manufacture. Step 2A (part 1 of the Mayo test), using the guidance from pages 50-57 of the Federal Register Vol. 84 No. 4 from Monday, January 7, 2019, requires applying a two-prong inquiry. In Prong One, examiners evaluate whether the claim recites a judicial exception, determining if the claim is directed to a law of nature, a natural phenomenon, or an abstract idea. In this case, claim 1 recites extracting communication data objects, and generating a summary, which are mental processes. In Prong Two, examiners evaluate whether the judicial exception is integrated into a practical application that imposes a meaningful limit on the judicial exception. In this case, sending, storing, and receiving data is mere extrasolution activity, while use of processor, memory, computer-readable media, and a machine learning model are generic computing components, and none of the above integrate the abstract ideas into a practical application.
Step 2B (part 2 of the Mayo test) requires analyzing the claims to determine if they recite additional elements that amount to significantly more than the judicial exception. In this case, the claims do not include additional elements that are sufficient to amount to significantly more than the abstract idea itself.
Regarding claims 1, 8, and 15, extracting communication data objects and generating a summary are mental processes, which is an abstract idea. For example, a human could review communications and identify channels with high severity levels, determine data objects, and generate a summary based on the objects. Additional limitations of sending, storing, receiving, and displaying data are mere extrasolution activity, while use of processor, memory, computer-readable media, and a machine learning model are generic computing components, and none of the above integrate the abstract ideas into a practical application, or constitute significantly more.
Regarding claims 2, 4-6, 9, 11-13, 16, and 18-20, the limitations are further clarifications of the above abstract ideas.
Regarding claims 3, 10, and 17, retrieving data is mere extrasolution activity, and does not integrate the abstract ideas into a practical application or constitute significantly more.
Regarding claims 7, and 14, preprocessing the data and generating the summary are mental processes, which is an abstract idea without integration into a practical application and without significantly more.
The limitations of the claims, taken alone, 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 individually. Applicable case law cited in the Federal Register includes, but is not limited to: Alice Corp., 134 S. Ct. at 2355-56, Digitech Image Tech., LLC v. Electronics for Imaging, Inc., 758 F.3d 1344 (Fed. Cir. 2014), Benson, 409 U.S. at 63.
See "Preliminary Examination Instructions in view of the Supreme Court Decision in Alice Corporation Pty. Ltd. v. CLS Bank International, et al.," dated June 25, 2014, and the Federal Register notice titled "2014 Interim Guidance on Patent Subject Matter Eligibility" (79 FR 74618).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. US 2016/0127282 A1 Fig. 6, para [0140] teaches messages only being visible to certain users in a channel.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to BRYAN S BLANKENAGEL whose telephone number is (571)270-0685. The examiner can normally be reached 8:00am-5:30pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Richemond Dorvil can be reached at 571-272-7602. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/BRYAN S BLANKENAGEL/Primary Examiner, Art Unit 2658
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