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
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 29 December 2025 has been entered.
This Continued Examination Office Action is in reply to the Request for Continued Examination filed on 29 December 2025.
Claims 21, 24, 27 have been amended.
Claims 21-23, 25-27, 29-31 are currently pending and have been examined.
Response to Amendment
In the previous office action, Claims 21-23, 25-27, 29-31 were rejected under 35 U.S.C. 101 because the claimed invention is directed to non-statutory subject matter. Applicants have not amended Claims 21-23, 25-27, 29-31 to provide statutory support and the rejection is maintained.
Claims 21-23, 25-27, 29-31 were rejected under 35 USC 112(b) or 35 USC 112(pre-AIA ), second paragraph as being indefinite for insufficient antecedent basis. Applicants have amended these claims for proper antecedent basis and this rejection is withdrawn.
Response to Arguments
Applicants’ arguments filed 21-23, 25-27, 29-31 have been fully considered but they are not persuasive.
In the remarks regarding the 35 USC § 101 rejection for Claims 21-23, 25-27, 29-31, Applicants argue 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 with the 2019 revised patent subject matter eligibility guidance (2019 PEG), the October 2019 Update: Subject Matter Eligibility (“October 2019 Update”) and updated with the addition of new Examples 47-49 published July 2024, the claims are continued analyzed based on these new guidelines and is detailed below in the maintained rejection under 35 USC 101. Applicants state basically: “Applicants submits that the elements of the claims (individually or in combination do not fall into any of the stated non-statutory categories in the Office action. Rather they are a practical application of a computing methodology for predicting based on the at least one audit report the outcome of a compliance audit cycle to improve network security thus improving the operation of the computing system”. The Examiner disagrees in that “to improve network security” may be an improvement to a certain business-type method which would be determined from prior art but there are no specific details as to specifically how “the operation of the computing system” is technically accomplished. Merely stated this is insufficient to be considered statutory without further details from the “neural network” somewhat resembles example claim 2 from Example 47 from the updated addition of new Examples 47-49 published July 2024. The Examiner provides additional clarification for example Claim 21 as reciting the following abstract ideas:
(a) Mathematical concepts – mathematical relationships, mathematical formulas or equations, mathematical calculations (In at least recited in the claim, the use of a "feedforward recurrent neural network model with backpropagation and a cost function" to predict a "trajectory" represents a mathematical algorithm);
(b) 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) (In at least the claim involves collecting data, setting "milestones," and notifying employees/managers (human actors) to perform tasks, which is akin to a business method and is a computerized version of a business compliance workflow (managing milestones, sending notifications, checking compliance, and reporting)); and
(c) Mental processes – concepts performed in the human mind (including an observation, evaluation, judgment, opinion) (In at least, the claim makes a determination of a compliance status based on "aggregated data" and comparison with a "scored database" and evaluating milestones, comparing them to frameworks, and predicting outcomes based on data is a process that can be performed mentally or with basic analytical tools and is viewed as a method that can be performed in the human mind. 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. 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. In summary the claim uses conventional computer components (servers) to perform routine monitoring, reporting, and, and predictive calculations. If the claim does not include specific, non-routine technology that "improves the network security" itself (e.g., a new encryption method) rather than just reporting on it, and remains in the realm of abstract ideas. 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 21-23, 25-27, 29-31 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 and are analyzed in the following step process:
Step 1: Claims 21-23, 25-27, 29-31 are each focused to a statutory category of invention, namely “method; server; non-transitory computer-readable storage medium” sets.
Step 2A: Prong One: Claims 21-23, 25-27, 29-31 recite limitations that set forth the abstract ideas, namely, the claims as a whole recite the claimed invention is directed to an abstract idea without significantly more. The claims recite steps for, generally a system/method for determining software compliance scores, predicting trajectories, and sending compliance tasks based on:
“determining, by at least one processor, a software compliance status score based on aggregated data, retrieved from one or more servers a plurality of metrics associated with the software compliance status score and comparing it with a plurality of scored database of compliance audit cycle of a similar organization;
predicting, with at least one artificial intelligence module, the at least one artificial intelligence module structured as a feedforward recurrent neural network model with backpropagation and a cost function, an input layer node size of the recurrent neural network model determined by the aggregated data and plurality of metrics associated with the software compliance status score, a middle layer at least equal to the node size of the input layer and an output layer at least equal to the node size of the input layer, an optimal compliance trajectory having at least one milestone based on, a plurality of compliance protocol standards comprising at least one cybersecurity compliance framework selected from any of NIST 800-171, CMMC, ISO 270001, HIPAA, GDPR/CCPA the determined software compliance status score and the scored database of compliance audit cycle of the similar organization;
establishing, a time interval based on the optimal compliance trajectory and the at least one milestone based on the plurality of compliance protocol standards comprising at least one cybersecurity compliance framework;
sending, the at least one milestone-based on the plurality of compliance protocol standards comprising at least one cybersecurity compliance framework and the established time interval to an employee and an employee’s manager;
retrieving, at the expiration of the time interval, the at least one milestone based on the plurality of compliance protocol standards comprising at least one cybersecurity compliance framework sent to the employee;
evaluating, the at least one milestone based on the plurality of compliance protocol standards comprising at least one cybersecurity compliance framework sent to the employee;
generating, based on the evaluation of the at least one milestone, and further based on a policy training check, a software compliance check retrieved from on or more servers at least one audit report that determines the outcome of a compliance audit cycle to improve network security;
predicting, based on the at least one audit report the outcome of a compliance audit cycle to improve network security”
The claims as a whole recite certain groupings under the categories:
(a) Mathematical concepts – mathematical relationships, mathematical formulas or equations, mathematical calculations (In at least recited in the claim, the use of a "feedforward recurrent neural network model with backpropagation and a cost function" to predict a "trajectory" represents a mathematical algorithm);
(b) 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) (In at least the claim involves collecting data, setting "milestones," and notifying employees/managers (human actors) to perform tasks, which is akin to a business method and is a computerized version of a business compliance workflow (managing milestones, sending notifications, checking compliance, and reporting)); and
(c) Mental processes – concepts performed in the human mind (including an observation, evaluation, judgment, opinion) (In at least, the claim makes a determination of a compliance status based on "aggregated data" and comparison with a "scored database" and evaluating milestones, comparing them to frameworks, and predicting outcomes based on data is a process that can be performed mentally or with basic analytical tools and is viewed as a method that can be performed in the human mind. 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. 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.
Prong Two: Claims 21-23, 25-27, 29-31: 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; server; non-transitory computer readable media storing instructions; module; one or more servers; etc.) that are cited at a high level of generality and are merely invoked as a tool to perform the abstract idea. Merely automating a manual compliance process by ("determining; predicting; establishing; sending; retrieving, evaluating; reporting; generating; predicting", etc.) using general-purpose servers is generally considered insufficient to transform an abstract idea into patent-eligible subject matter. Simply implementing an abstract idea on a computer is not a practical application of the abstract idea. 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 21-23, 25-27, 29-31 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; server; non-transitory computer readable media storing instructions; module; one or more servers; 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. Merely automating a manual compliance process ("determining; predicting; establishing; sending; retrieving, evaluating; reporting; generating; predicting", etc.) using general-purpose servers is generally considered insufficient to transform an abstract idea into patent-eligible subject matter. 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 3, 4, 16, 31-46) 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. “module 103” 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 21-23, 25-27, 29-31 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.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
The terms “NIST 800-171, CMMC, ISO 270001, HIPAA, GDPR/CCPA” in independent Claims 21, 24, 27 are relative terms which renders the claim indefinite. The terms “NIST 800-171, CMMC, ISO 270001, HIPAA, GDPR/CCPA” are not defined by the claims, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. Clarification is required.
Conclusion
The prior art made of record and not relied upon is considered pertinent to Applicant's disclosure:
Vasev et al. (WO 2022/245244 A1)
Kaspa) (US 2021/0374564)
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