DETAILED ACTION
Notice of Pre-AIA or AIA Status
[1] The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Notice to Applicant
[2] This communication is in response to the amendment filed 13 April 2026. It is noted that this application is a Continuation of United States Patent Application Serial No. 17/514,366 filed 29 October 2021, now United States Patent No. 11,494,740. Claims 1-20, 22, 32, 36, and 39 have been cancelled. Claims 21, 23, 25, and 40 have been amended. Claim 41 has been added. Claims 21, 23-31, 33-35, 37-38, 40, and 41 are pending.
Response to Remarks/Amendment
[3] Applicant's remarks filed 13 April 2026 have been fully considered but they are not persuasive. The remarks will be addressed below in the order in which they appear in the noted response.
[i] In response to rejection(s) of claim(s) 21, 23-31, 33-35, and 37-40 (now claims 21, 23-31, 33-35, 37-38, 40, and 41 as presented by amendment) under 35 U.S.C. 101 as being directed to non-statutory subject matter as set forth in the previous Office Action mailed 14 January 2026, Applicant provides the following remarks:
“…The additional elements recite a specific improvement over prior art systems by executing an operation on a third-party application based on a condition for activation of a predictive trigger being satisfied and according to a current status being continuous. This improved computing system enables the system to automatically update third-party applications which provides a specific improvement over prior database systems that do not include the claim elements of claim 21. The claim elements of claim 21 recite a combination of additional elements that improves data access and evaluation associated with secure organizational data in order to promptly cause an action to be performed. Additionally, the third-
party application does not need access to all of the organization data, nor does the third-party
data need to monitor changes in the data objects in order to determine the activation of a trigger.
This reduces computations resources required by the third-party applications to monitor the
activation of the triggers based on the received rules… "
In response, Examiner respectfully disagrees. With respect to considerations under Eligibility Step 2A prong 2: (See MPEP 2106.04(d)):
As presented by amendment, additional technical elements of claim 35 that potentially integrate the claimed ineligible subject matter into a practical application of the claimed subject are limited to: “one or more computing devices”, “predictive trigger”, and “third-party application”. Claim 35 further indicates, generally, that the claimed method is “computer-implemented” as designated in the preamble. Claims 21 and 40, directed to a system and computer-readable storage medium introduce a “one or more processors”, “one or more databases”, and processor-executable “instructions” as engaged in a general manner in the performance of each of the recited steps/functions. With respect to these potential additional elements:
(1) The “one or more computing devices”, “one or more processors”, and “instructions” are identified as engaged in an unspecified, general manner in the performance of each of the recited steps/functions.
(2) The “one or more databases” is/are identified as storing organizational data including an object graph.
(3) The “third-party application” is identified as executing an action responsive to the predictive trigger.
(4) As presented by amendment, the “predictive trigger” is identified as being “associated with a timeline marker utilized to project a current status forward…”, “…determining, based on a dependency map, a dependency between the condition for activation of the predictive trigger and a first data object from the plurality of data objects; detecting a change in the first data object that indicates the activation of the predictive trigger….”, and that the action of the third-party application is “…based on the condition for activation of the predictive trigger being satisfied and according to the current status being continuous…”.
With respect to the recited timeline marker and the third-party application execution being responsive to the conditions for the predictive trigger being met and the “…current status being continuous…”, Examiner respectfully submits that, at least as presently claimed, the timeline marker is limited to being merely associated with the predictive trigger, and doesn’t convey any further function other than a general association. Similarly, the executing of the action of the third-party application being conditional on the trigger and a current status being continuous fails to convey any particular technical function beyond the general existence of a triggering event and an unspecified status being continuous (see rejection under 35 U.S.C. 112 below).
NOTE: For Applicant’s benefit – Examiner notes that amendments to clarify that the timeline marker provides an interface mechanism to set a predictive trigger to activate at a time window represented by the placement of the marker on the timeline, i.e., establishing a programmatic setting for the predictive trigger, could serve to assist in overcoming the maintained rejection under 35 U.S.C. 101. Applicant is encouraged to contact the Examiner to discuss amendments to this effect to advance the application.
However, at least as presently constructed, the computer-implemented features of the claimed invention noted above are reasonably limited to: (1) receiving and sending data via a computer network (e.g., organizational data); (2) storing and retrieving information and data from a generic computer memory (e.g., organizational data, rules, dependencies, triggering conditions and actions); and (3) performing repetitive calculations and/or mental observations using the obtaining information/data (e.g., analyzing rules and dependencies among data objects). The above listed computer-implemented functions are distinguished from the generic data storage, retrieval, transmission, and data manipulation and processing capacities of the generic systems identified in the Specification solely by the recited identification of particular data elements that are of utility to a user performing the specific method of analyzing organizational data in the form of an object graph and determining dependencies among objects. In summary, the computer of the instant invention is facilitating non-technical aims, i.e., analyzing organizational data in the form of an object graph and determining dependencies among objects, because it has been programmed to store, retrieve, and transmit specific data elements and/or instructions that is/are of utility to the user. The non-technical functions of analyzing organizational data in the form of an object graph and determining dependencies among objects benefit from the use of computer technology, but fail to improve the underlying technology.
In support, the courts have previously found that utilization of a computer to receive or transmit data and communications over a network and/or employing generic computer memory and processor capacities store and retrieve information from a computer memory are insufficient computer-implemented functions to establish that an otherwise unpatentable judicial exception (e.g. abstract idea) is patent eligible. With respect to the determinations of the Courts regarding using a computer for sending and receiving data or information over a computer network and storing and retrieving information from computer memory, see at least: receiving or transmitting data over a network, e.g., using the Internet to gather data, Symantec, 838 F.3d at 1321, 120 USPQ2d at 1362; sending messages over a network OIP Techs., Inc., v. Amazon.com, Inc., 788 F.3d 1359, 1363, 115 USPQ2d 1090, 1093 (Fed. Cir. 2015) (sending messages over a network); receiving and sending information over a network buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1355, 112 USPQ2d 1093, 1096 (Fed. Cir. 2014) (computer receives and sends information over a network); storing and retrieving information in memory, Versata Dev. Group, Inc. v. SAP Am., Inc., 793 F.3d 1306, 1334, 115 USPQ2d 1681, 1701 (Fed. Cir. 2015); OIP Techs., 788 F.3d at 1363, 115 USPQ2d at 1092-93 and see performing repetitive calculations, Flook, 437 U.S. at 594, 198 USPQ2d at 199; and Bancorp Services v. Sun Life, 687 F.3d 1266, 1278, 103 USPQ2d 1425, 1433 (Fed. Cir. 2012) with respect to the performance of repetitive calculations does not impose meaningful limits on the scope of the claims.
[ii] Applicant’s remaining remarks in response to previous rejection(s) of claim(s) 21, 23-31, 33-35, and 37-40 (now claims 21, 23-31, 33-35, 37-38, 40, and 41 as presented by amendment) under 35 U.S.C. 101 as being directed to non-statutory subject matter as set forth in the previous Office Action mailed 14 January 2026 are reasonably considered to have been fully addressed in the context of the revised rejection of the claims presented above responsive to the amendments to the subject claims and in consideration of the framework for determining patent subject matter eligibility under 35 U.S.C. 101 established in the decisions of the Supreme Court in Mayo Collaborative Services v. Prometheus Labs., Incorporated and Alice Corporation Pty. Ltd. v. CLS Bank International, et al. (See MPEP 2106 subsection III and 2106.03-2106.05).
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.
[4] Claims 21, 23-31, 33-35, 37-38, 40, and 41 rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
As presented by amendment, each of claims 21, 35, and 40 substantially recites:
“…executing an action on a third-party application utilizing at least some of the organizational data based on the condition for activation of the predictive trigger being satisfied and according to the current status being continuous…”. The recitation of “the current status” lacks antecedent basis and is further indefinite as there are no prior listed conditions in which a status is established such that the conditions for executing the action are not clear.
Dependent claims 23-31, 33-34, 37-38, and 41 inherit and fail to remedy the deficiencies of their respective parent claims through dependency and are also rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
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.
[5] Previous rejection(s) of claims 21, 23-31, 33-35, and 37-40 (now claims 21, 23-31, 33-35, 37-38, 40, and 41 as presented by amendment) under 35 U.S.C. 101 because the claimed invention is directed to non-statutory subject matter, specifically an abstract idea absent significantly more, has/have not been overcome by the amendments to the subject claims and is/are maintained. The statement of rejection below is reiterated as presented in the previous Office Action mailed 14 January 2026. The present amendments and remarks are addressed above under “Response to Remarks/Amendment”.
The following analysis is based on the framework for determining patent subject matter eligibility under 35 U.S.C. 101 established in the decisions of the Supreme Court in Mayo Collaborative Services v. Prometheus Labs., Incorporated and Alice Corporation Pty. Ltd. v. CLS Bank International, et al. (See MPEP 2106 subsection III and 2106.03-2106.05) and the 2024 Guidance Update on Patent Subject Matter Eligibility, Including Artificial Intelligence (2024 AI SME Update) published in the Federal Register, 17 July 2024. Claim(s) 21, 23-31, 33-35, 37-38, 40, and 41 as a whole is/are determined to be directed to an abstract idea. The rationale for this determination is explained below:
Abstract ideas are excluded from patent eligibility based on a concern that monopolization of the basic tools of scientific and technological work might serve to impede, rather than promote, innovation. Still, inventions that integrate the building blocks of human ingenuity into something more by applying the abstract idea in a meaningful way are patent eligible (See MPEP 2106.04).
Consistent with the findings of the Supreme Court in Mayo Collaborative Services v. Prometheus Labs., Incorporated and Alice Corporation Pty. Ltd. v. CLS Bank International, et al. ineligible abstract ideas are defined in groups, namely: (1) Mathematical Concepts (e.g., mathematical relationships, mathematical formulas or equations, and mathematical calculations; (2) Mental Processes (e.g., concepts performed or performable in the human mind including observations, evaluations, judgements, or opinions); and (3) Certain Methods of Organizing Human Activity. Groupings of Certain Methods of Organizing Human Activity include three sub-categories within the group, namely: (1) fundamental economic principles or practices; (2) commercial or legal interactions (e.g., agreements in the form of contracts, legal obligations, advertising, marketing or sales activities or behaviors, and business relations); (3) managing personal behavior or relationships or interactions between people (e.g., social activities, teaching, and following rules or instructions) (See MPEP 2106.04(a).
Eligibility Step 1: Four Categories of Statutory Subject Matter (See MPEP 2106.03): Independent claims 21, 35, and 40 are directed to a method, a system, and non-transitory computer-readable storage medium and are reasonably understood to be properly directed to one of the four recognized statutory classes of invention designated by 35 U.S.C. 101; namely, a process or method, a machine or apparatus, an article of manufacture, or a composition of matter. While the claims, generally, are directed to recognized statutory classes of invention, each of method/process, system/apparatus claims, and computer-readable media/articles of manufacture are subject to additional analysis as defined by the Courts to determine whether the particularly claimed subject matter is patent-eligible with respect to these further requirements. In the case of the instant application, each of claims 21, 35, and 40 are determined to be directed to ineligible subject matter based on the following analysis/guidance:
Eligibility Step 2A prong 1 (See MPEP 2106.04): In reference to claim 35, the claimed invention is directed to non-statutory subject matter because the claim(s) as a whole, considering all claim elements both individually and in combination, do/does not amount to significantly more than an abstract idea. The claim(s) is/are directed to the abstract idea of analyzing organizational data in the form of an object graph and determining dependencies among objects and assessing whether particular actions and trigger conditions have been met before updating a dependency graph, which is reasonably considered to be method performable by human Mental Processing and/or or by a human using pen and paper (See CyberSource Corp v. Retail Decisions, Inc., 654 F.3d 1366, 1373 (Fed. Cir. 2011).
Inventions directed to processes performable by Mental Processing are recognized patent ineligible subject matter as defined by the above noted USPTO Policy and Examination Guidance and as informed by the decision of the Court in Alice Corporation Pty. Ltd. v. CLS Bank International, et al. Mental processes or concepts performed in the human mind including observation and evaluation are considered to be ineligible abstract ideas. If a claim limitation, under its broadest reasonable interpretation, covers performance of the limitation in the mind but for a recitation of generic computer components, then the claim is still to be grouped as a mental process unless the limitation cannot practically be performed in the human mind (See MPEP 2106.04(a)(2).
With respect to functions/steps performable by human mental processing and/or by a human using pen and paper, representative claim 21 recites: “…accessing…organizational data associated with the organization, wherein the organizational data comprises an object graph data structure comprising a plurality of data objects associated with the organizational data, and wherein the organizational data includes employee records having a plurality of attributes…”, “…receiving a rule, the rule having a condition for activation of a first trigger, and wherein the rule is associated with an attribute from the plurality of attributes of the employee records…”, “…determining, based on a dependency map, a dependency between the rule and a first data object from the plurality of data objects…”, “…determining that the condition for the activation of the first trigger is satisfied based on a detected change in the first data object…”, and “…performing an action associated with the activation of the first trigger based on the determination that the condition for the activation of the first trigger has been satisfied…”.
Respectfully, absent further clarification of the processing steps executed by the recited “computing device” and the general indication that the method is “computer-implemented”, one of ordinary skill in the art would readily understand that assessing a graph of data and observing depicted dependencies are practicable/performable by a human using pen and paper. By extension, given input information and an associated trigger, one of ordinary skill would be capable of determining whether the input information meets triggering criteria and whether an associated action should be performed by employing by the human mental processing (See CyberSource Corp v. Retail Decisions, Inc., 654 F.3d 1366, 1373 (Fed. Cir. 2011) (“a method that can be performed by human thought alone is merely an abstract idea and is not patent eligible under 35 U.S.C 101).
Eligibility Step 2A prong 2 (See MPEP 2106.04(d)): Under step 2A prong two, Examiners are to consider additional elements recited in the claim beyond the judicial exception and evaluate whether those additional elements integrate the exception into a practical application. Further, to be considered a recitation of an element which integrates the judicial exception into a practical application, the additional elements must apply, rely on, or use the judicial exception in a manner that imposes meaningful limits on the judicial exception, such that the claim is more than a drafting effort designed to monopolize the exception.
Additional elements of claim 21 that potentially integrate the exception include the “one or more computing devices”. Claim 21 further indicates, generally, that the claimed method is “computer-implemented” as designated in the preamble. With respect to these potential additional elements, the claimed “one or more computing devices” is identified as accessing organizational data.
With respect to the above noted functions attributable to the identified additional elements, MPEP 2106.05 stipulates that: Adding the words “apply it” (or an equivalent) with the judicial exception, or mere instructions to implement an abstract idea on a computer, or merely uses a computer as a tool to perform an abstract idea – see MPEP 2106.05(f) and/or Generally linking the use of the judicial exception to a particular technological environment or field of use – see MPEP 2106.05(h) serve as indications that the use of the technology recited does not indicate integration into a practical application of the judicial exception.
Each of the above noted limitations states a result (e.g., data/graph is accessed, dependencies are analyzed, and actions are performed.) as associated with a respective “computing device” or are generally identified as “computer-implemented”. Beyond the general statement that the method is computer-implemented and the accessing of data is performed by a computing device, the limitations provide no further clarification with respect to the functions performed in producing the claimed result. A recitation of “computer-implemented” or “by a computing device”, absent clarification of particular processing steps executed by the underlying technology to produce the result are reasonably understood to be an equivalent of “apply it”. The technology as engaged is solely identified as storing and retrieving information, performing tasks that are otherwise performable in the human mind (e.g., analyzing dependencies presented in a graph), and sending and receiving information over a network (See MPEP 2106.05(f)).
Accordingly, claim 21 is reasonably understood to be conducting standard, and formally manually performed process of analyzing organizational data in the form of an object graph and determining dependencies among objects using the generic devices as tools to perform the abstract idea. The identified functions of the recited additional elements reasonably constitute a general linking of the abstract idea to a generic technological environment, e.g., generic devices capable of accessing stored information over a computer network. The claimed analyzing organizational data in the form of an object graph and determining dependencies among objects benefits from the inherent efficiencies gained by data transmission, data storage, and information display capacities of generic computing devices, but fails to present an additional element(s) which practical integrates the judicial exception into a practical application of the judicial exception.
Eligibility Step 2B (MPEP 2106.05): Analysis under step 2B is further subject to the Revised Examination Procedure responsive to the Subject Matter Eligibility Decision in Berkheimer v. HP, Inc. issued by the United States Patent and Trademark Office (19 April 2018). Examiner respectfully submits that the recited uses of the underlying computer technology constitute well-known, routine, and conventional uses of generic computers operating in a network environment. In support of Examiner’s conclusion that the recited functions/role of the computer as presented in the present form of the claims constitutes known and conventional uses of generic computing technology, Examiner provides the following:
In reference to the Specification as Published in USPGPUB 2023/0138870, Examiner notes paragraphs [0047]-[0053]. In the noted disclosure, the Specification provides listings of generic computing systems, e.g., a general computing platform including exemplary servers, network configurations and various processor configuration which are identified as capable and interchangeable for performing the disclosed processes. The disclosure does not identify any particular modifications to the underlying hardware elements required to perform the inventive methods and functions. Accordingly, it is reasonably understood that this disclosure indicates that the hardware elements and network configurations suitable for performing the inventive methods are limited to commercially available systems at the time of the invention. Absent further clarification, it is reasonably understood that any modifications/improvements to the underlying technology attributable to the inventive method/system are limited to improvements realized by the disclosed computer-executable routines and the associated processes performed.
While the above noted disclosure serves to provide sufficient explanation of technical elements required to perform the inventive method using available computing technology, the disclosure does not appear to identify any particular modifications or inventive configurations of the underlying hardware elements required to perform the inventive methods and functions. Accordingly, it is reasonably understood that the disclosure indicates that the hardware elements and network configurations suitable for performing the inventive methods are limited to commercially available systems at the time of the invention. Further, absent further clarification, it is reasonably understood that any modifications/improvements to the underlying technology attributable to the inventive method/system are limited to improvements realized by the disclosed computer-executable routines and the associated processes performed.
With respect to the executable routines, the claims specify that the above identified generic computing structures are programmed/configured to: (1) access data; (2) analyze rules and dependencies between data objects; and (3) determine whether triggering condition for an action have been met. While Examiner acknowledges that the noted limitations are computer-implemented, Examiner respectfully submits that, in aggregate (e.g., “as a whole”) they do not amount to significantly more than the abstract idea/ineligible subject matter to which the claimed invention is primarily directed.
While utilizing a computer, the claimed invention is not rooted in computer technology nor does it improve the performance of the underlying computer technology. The computer-implemented features of the claimed invention noted above are reasonably limited to: (1) receiving and sending data via a computer network (e.g., organizational data); (2) storing and retrieving information and data from a generic computer memory (e.g., organizational data, rules, dependencies, triggering conditions and actions); and (3) performing repetitive calculations and/or mental observations using the obtaining information/data (e.g., analyzing rules and dependencies among data objects). The above listed computer-implemented functions are distinguished from the generic data storage, retrieval, transmission, and data manipulation and processing capacities of the generic systems identified in the Specification solely by the recited identification of particular data elements that are of utility to a user performing the specific method of analyzing organizational data in the form of an object graph and determining dependencies among objects. In summary, the computer of the instant invention is facilitating non-technical aims, i.e., analyzing organizational data in the form of an object graph and determining dependencies among objects, because it has been programmed to store, retrieve, and transmit specific data elements and/or instructions that is/are of utility to the user. The non-technical functions of analyzing organizational data in the form of an object graph and determining dependencies among objects benefit from the use of computer technology, but fail to improve the underlying technology.
In support, the courts have previously found that utilization of a computer to receive or transmit data and communications over a network and/or employing generic computer memory and processor capacities store and retrieve information from a computer memory are insufficient computer-implemented functions to establish that an otherwise unpatentable judicial exception (e.g. abstract idea) is patent eligible. With respect to the determinations of the Courts regarding using a computer for sending and receiving data or information over a computer network and storing and retrieving information from computer memory, see at least: receiving or transmitting data over a network, e.g., using the Internet to gather data, Symantec, 838 F.3d at 1321, 120 USPQ2d at 1362; sending messages over a network OIP Techs., Inc., v. Amazon.com, Inc., 788 F.3d 1359, 1363, 115 USPQ2d 1090, 1093 (Fed. Cir. 2015) (sending messages over a network); receiving and sending information over a network buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1355, 112 USPQ2d 1093, 1096 (Fed. Cir. 2014) (computer receives and sends information over a network); storing and retrieving information in memory, Versata Dev. Group, Inc. v. SAP Am., Inc., 793 F.3d 1306, 1334, 115 USPQ2d 1681, 1701 (Fed. Cir. 2015); OIP Techs., 788 F.3d at 1363, 115 USPQ2d at 1092-93 and see performing repetitive calculations, Flook, 437 U.S. at 594, 198 USPQ2d at 199; and Bancorp Services v. Sun Life, 687 F.3d 1266, 1278, 103 USPQ2d 1425, 1433 (Fed. Cir. 2012) with respect to the performance of repetitive calculations does not impose meaningful limits on the scope of the claims.
Viewed as a whole, these additional claim element(s) do not provide meaningful limitation(s) to transform the abstract idea into a patent eligible application of the abstract idea such that the claim(s) amounts to significantly more than the abstract idea itself. Therefore, the claim(s) are rejected under 35 U.S.C. 101 as being directed to non-statutory subject matter.
In accordance with all relevant considerations and aligned with previous findings of the courts, the technical elements imparted on the method that would potentially provide a basis for meeting a “significantly more” threshold for establishing patent eligibility for an otherwise abstract concept by the use of computer technology fail to amount to significantly more than the abstract idea itself.
Independent claims 21 and 40, directed to an apparatus/system and computer-executable instructions stored on computer-readable media for performing the method steps are rejected for substantially the same reasons, in that the generically recited computer components in the apparatus/system and computer readable media claims add nothing of substance to the underlying abstract idea.
Dependent claims 23-31, 33-34, 37-38, and 41 when analyzed as a whole are held to be ineligible subject matter and are rejected under 35 U.S.C. 101 because the additional recited limitation(s) fail(s) to establish that the claimed invention is not directed to an abstract idea.
Claim Rejections - 35 USC § 103
[6] Previous rejection(s) of caims 21, 23-31, 33-35, and 37-40 under 35 U.S.C. 103 as being unpatentable over Rogynskyy et al. (United States Patent Application Publication No. 2020/0372075) in view of Scholtz et al. (United States Patent Application Publication No. 2020/0005174), and further in view of Eliyahu et al. (United States Patent Application Publication No. 2023/0236880) has/have been overcome by the amendments to the subject claims and is/are withdrawn.
Allowable Subject Matter
[7] Claims 21, 23-31, 33-35, 37-38, 40, and 41 would be allowable if rewritten or amended to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, and under 35 U.S.C. 101 set forth in this Office action.
Double Patenting
[8] The nonstatutory 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 nonstatutory 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); 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 nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
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).
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based e-Terminal Disclaimer may be filled out completely online using web-screens. An e-Terminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about e-Terminal Disclaimers, refer to www.uspto.gov/patents/process/file/efs/guidance/eTD-info-I.jsp.
Claims 21, 23-35, and 37-40 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 11,494,740. Although the claims at issue are not identical, they are not patentably distinct from each other because The current invention and issued patent 11,494,740 are drawn to methods, systems, and computer-executable instructions stored on statutory computer-readable media for determining and presented employee absences to supervisors based on organizational relationships. Further, the distinctions between the claims of the instant application and the ‘740 patent are limited to a rewording of common features and to omissions of elements recited in the claims of the ‘740 application. The claims from all applications above are significantly similar and the claimed features seem to be identical with various obvious alternate method.
Examiner further notes that the omission of an element with a corresponding loss of function is an obvious expedient. See In re Karlson, 136 USPQ 184 and Ex parte Rainu, 168 USPQ 375.
Conclusion
[9] The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Cited NON-PATENT Literature:
Paganelli et al., A RESTful Rule Management Framework for Internet of Things Applications, 2020-01-01, IEEE Access (Volume: 8, 2020, Page(s): 217987-218001)
Cited PATENT Literature:
De Ridder et al., SOLUTION GRAPH FOR MANAGING CONTENT IN A MULTI-STAGE PROJECT, United States Patent Application Publication No. 2021/0201345, paragraphs [0029]-[0032]: Relevant Teachings: De Ridder discloses a system/method that includes steps/functions managing entities for an organization using a knowledge graph.
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, 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).
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/ROBERT D RINES/Primary Examiner, Art Unit 3625
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