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 .
This office action is in response to applicant’s amendment filed on 10/01/2025.
Claims 1-20 are pending and examined.
Examiner’s note: an erroneous notice of allowance was sent out on 12/05/2025, which was withdrawn from issuing by the TC2100 Director on 01/15/2026. Therefore, the prosecution of the patent application is reopened.
Claims 1, 10 and 18 recite “obtaining other solutions to said similar problem to said user problem from additional sources”. Applicant is advised to amend above to “obtaining other solutions to said similar problem to said user problem from other sources” for better clarity, because claims 1, 2, 10, 11 and 18-19 also recite “said other sources”.
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.
Claims 18-20 are 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 18 recites the limitation of “… the program instructions comprising: one or more processors, one or more computer-readable memories …”. It is not clear how software code (program instructions) can contain hardware components (processors and memories).
Claims 19-20 are rejected for being dependent on claim 18.
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 also 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.
Statutory Category: Claim 1 recites a method, comprising: receiving a request from a user for a resolution to a user problem; identifying a category, topic and/or question associated with said user problem; determining when an entry and an associated solution can be found in one or more public databases, including one associated with a cloud-based service, in a same category or with a similar topic and/or questions as that of said user problem; identifying when a solution to a similar problem has been stored in a private knowledge-based repository; identifying a source associated with said similar problem and any solutions provided from said one or more databases or said private knowledge-based repository; obtaining other solutions to said similar problem to said user problem from additional sources; providing a final solution to said user problem by incorporating information obtained from said solutions to said similar problems obtained from said one or more databases, cloud-based sites or private knowledge-based repository and said other sources; providing a plurality of additional components in said final solution when said incorporated information does not provide a complete resolution to said user problem; indexing any source of information and identified solutions in said knowledge-based repository, wherein said index includes postings with any associated questions that are not directly relevant to said solution; indexing any codebases in said knowledge-base and associating ut with said source information identified and any portion of said user request that cannot be determined; monitoring said index and different sources to determine an identified update associated with said obtained solutions that are indexed; updating said final solution accordingly at a future date based on said identified updates associated with said obtained solutions, executing said final solution to solve said user problem.
Step 2A – Prong 1: Claim 1 recites: identifying a category, topic and/or question associated with said user problem (a mental analysis and determination); identifying a category, topic and/or question associated with said user problem; determining when an entry and an associated solution can be found in one or more public databases, including one associated with a cloud-based service, in a same category or with a similar topic and/or questions as that of said user problem (a mental analysis and determination); identifying when a solution to a similar problem has been stored in a private knowledge-based repository (a mental analysis and determination); identifying a source associated with said similar problem and any solutions provided from said one or more databases or said private knowledge-based repository (a mental analysis and determination); indexing any source of information and identified solutions in said knowledge-based repository, wherein said index includes postings with any associated questions that are not directly relevant to said solution (a mental step of indexing); indexing any codebases in said knowledge-base and associating it with said source information identified and any portion of said user request that cannot be determined; monitoring said index and different sources to determine an identified update associated with said obtained solutions that are indexed (a mental step of indexing); monitoring said index and different sources to determine an identified update associated with said obtained solutions that are indexed (a mental step of monitoring and determining). These limitations as drafted, is a process that, under their broadest reasonable interpretation, covers an abstract idea of performance of the limitation in the mind or manually. That is, nothing in the claim elements precludes the steps from practically being performed mentally or using pen and paper. If a claim limitation, under its broadest reasonable interpretation, covers performance of the limitation in the mind but for the recitation of generic computer components, then it falls within the mental process grouping of abstract idea. Accordingly, the claim recites an abstract idea under step 2A prong 1.
This judicial exception is not integrated into a practical application. In particular, the claim 1 recites additional elements such as “receiving a request from a user for a resolution to a user problem” and “obtaining other solutions to said similar problem to said user problem from additional sources”. Examiner would like to point out that with the broad reasonable interpretation, these elements amount to mere data gathering for the mental process, which do not impose any meaningful limits on practicing the mental process (insignificant additional element). Accordingly, this additional element does not integrate the abstract idea into a practical application because it does not impose any meaningful limits on practicing the abstract idea. The claim is directed to insignificant additional elements under Step 2B.
This judicial exception is not integrated into a practical application. In particular, the claim 1 recites additional elements such as “providing a final solution to said user problem by incorporating information obtained from said solutions to said similar problems obtained from said repository and said other sources”, “providing a plurality of additional components in said final solution when said incorporated information does not provide a complete resolution to said user problem”. Examiner would like to point out that with the broad reasonable interpretation, these elements amount to mere data output (giving a result of a mental analysis and determination) for the mental process, which do not impose any meaningful limits on practicing the mental process (insignificant additional element). This is also a Well-Understood, Routine, Conventional (WURC) Activity, as evidenced in Marimuthu (US patent 9189317, abstract, claim 9; providing a solution to a user’s problem). Accordingly, this additional element does not integrate the abstract idea into a practical application because it does not impose any meaningful limits on practicing the abstract idea. The claim is directed to insignificant additional elements under Step 2B.
This judicial exception is not integrated into a practical application. In particular, the claim 1 recites additional elements such as “updating said final solution accordingly at a future date based on said identified updates associated with said obtained solutions”. Examiner would like to point out that with the broad reasonable interpretation, this element amounts to saving data, which is a Well-Understood, Routine, Conventional (WURC) Activity, as evidenced in Marimuthu (US patent 9189317, abstract, the repository of the set of known issues is updated to include the detected problem as a new known issue and a corresponding solution to the detected problem). Accordingly, these additional elements do not integrate the abstract idea into a practical application because it does not impose any meaningful limits on practicing the abstract idea. The claim is directed to an abstract idea under Prong II step 2B.
This judicial exception is not integrated into a practical application. In particular, the claim 1 recites additional elements such as “executing said final solution to solve said user problem”. Examiner would like to point out that with the broad reasonable interpretation, this element amounts to applying a solution to solve a user problem, which is a Well-Understood, Routine, Conventional (WURC) Activity, as evidenced in Marimuthu (US patent 9189317, abstract, applying a corresponding solution to a detected problem). Accordingly, these additional elements do not integrate the abstract idea into a practical application because it does not impose any meaningful limits on practicing the abstract idea. The claim is directed to an abstract idea under Prong II step 2B.
Dependent claims 2-9 do not include additional elements that are sufficient to amount to significantly more than the judicial exception. The additional element of dependent claims 2-9 add more context to the claims (such as what other sources include, or what information is incorporated in a final solution), or a Well-Understood, Routine, Conventional (WURC) extra solution activities (such as uploading a solution to a repository, storing a solution or a problem in a repository, which are insignificant additional elements). Therefore, these claims are not patent eligible.
Independent claim 10 (a computer system with processor and memory to perform a method similar to claim 1) with dependent claims 11-17 are rejected under the similar rational as claims 1-9. The additional elements in the claim amounts to no more than generic hardware component with instructions to apply the exception, which cannot integrate a judicial exception into a practical application or provide an inventive concept.
Independent claim 18 (a storage medium storing instructions to perform a method similar to claim 1) with dependent claims 19-20 is rejected under the similar rational as claims 1-9. The additional elements in the claim amounts to no more than mere instructions to apply the exception. Mere instructions stored in a computer readable medium to apply an exception cannot integrate a judicial exception into a practical application or provide an inventive concept.
Response to Arguments
Applicant’s arguments filed on 10/01/2025 have been fully considered. However, they are not persuasive.
Per 101 rejection, applicant first argued (page 9-11) that “applicant respectfully traverses the rejection in view of the current amendments and asserts that the invention provides an improvement in computer-related technology as well as an improvement to at least the field of cloud computing and error correction using multiple networks and cloud-computing”, “Such claim recitations as presently presented cannot practically be performed in the human mind. Accordingly, the Applicant respectfully submits that the Applicant's recitations could not possibly be construed as mental processes executed outside of a computer architecture in light of the Office's discussion of Claim 2 of Example 37, and therefore cannot possibly define a non-technical improvement. The Applicant respectfully submits that the human mind is not equipped to execute the recitations as presently presented in the independent claims to overcome those deficiencies that are exclusively associated with computer technology that is well beyond unassisted human capabilities, which clearly indicates the exclusion of mental processes from the Applicant's recitations”. The examiner respectfully disagrees. Claim 1 contains steps of a mental process. The examiner respectfully points out that a mental process, which is performed using a general-purpose/generic computing device can still be considered as a mental process, and to be subject to 101 abstract idea rejection, see MPEP 2106.04(a)(2).
C. A Claim That Requires a Computer May Still Recite a Mental Process
Claims can recite a mental process even if they are claimed as being performed on a computer. The Supreme Court recognized this in Benson, determining that a mathematical algorithm for converting binary coded decimal to pure binary within a computer’s shift register was an abstract idea. The Court concluded that the algorithm could be performed purely mentally even though the claimed procedures “can be carried out in existing computers long in use, no new machinery being necessary.” 409 U.S at 67, 175 USPQ at 675. See also Mortgage Grader, 811 F.3d at 1324, 117 USPQ2d at 1699 (concluding that concept of “anonymous loan shopping” recited in a computer system claim is an abstract idea because it could be “performed by humans without a computer”).
In evaluating whether a claim that requires a computer recites a mental process, examiners should carefully consider the broadest reasonable interpretation of the claim in light of the specification. For instance, examiners should review the specification to determine if the claimed invention is described as a concept that is performed in the human mind and applicant is merely claiming that concept performed 1) on a generic computer, or 2) in a computer environment, or 3) is merely using a computer as a tool to perform the concept. In these situations, the claim is considered to recite a mental process.
1. Performing a mental process on a generic computer. An example of a case identifying a mental process performed on a generic computer as an abstract idea is Voter Verified, Inc. v. Election Systems & Software, LLC, 887 F.3d 1376, 1385, 126 USPQ2d 1498, 1504 (Fed. Cir. 2018). In this case, the Federal Circuit relied upon the specification in explaining that the claimed steps of voting, verifying the vote, and submitting the vote for tabulation are “human cognitive actions” that humans have performed for hundreds of years. The claims therefore recited an abstract idea, despite the fact that the claimed voting steps were performed on a computer. 887 F.3d at 1385, 126 USPQ2d at 1504. Another example is Versata, in which the patentee claimed a system and method for determining a price of a product offered to a purchasing organization that was implemented using general purpose computer hardware. 793 F.3d at 1312-13, 1331, 115 USPQ2d at 1685, 1699. The Federal Circuit acknowledged that the claims were performed on a generic computer, but still described the claims as “directed to the abstract idea of determining a price, using organizational and product group hierarchies, in the same way that the claims in Alice were directed to the abstract idea of intermediated settlement, and the claims in Bilski were directed to the abstract idea of risk hedging.” 793 F.3d at 1333; 115 USPQ2d at 1700-01.
2. Performing a mental process in a computer environment. An example of a case identifying a mental process performed in a computer environment as an abstract idea is Symantec Corp., 838 F.3d at 1316-18, 120 USPQ2d at 1360. In this case, the Federal Circuit relied upon the specification when explaining that the claimed electronic post office, which recited limitations describing how the system would receive, screen and distribute email on a computer network, was analogous to how a person decides whether to read or dispose of a particular piece of mail and that “with the exception of generic computer-implemented steps, there is nothing in the claims themselves that foreclose them from being performed by a human, mentally or with pen and paper”. 838 F.3d at 1318, 120 USPQ2d at 1360. Another example is FairWarning IP, LLC v. Iatric Sys., Inc., 839 F.3d 1089, 120 USPQ2d 1293 (Fed. Cir. 2016). The patentee in FairWarning claimed a system and method of detecting fraud and/or misuse in a computer environment, in which information regarding accesses of a patient’s personal health information was analyzed according to one of several rules (i.e., related to accesses in excess of a specific volume, accesses during a pre-determined time interval, or accesses by a specific user) to determine if the activity indicates improper access. 839 F.3d. at 1092, 120 USPQ2d at 1294. The court determined that these claims were directed to a mental process of detecting misuse, and that the claimed rules here were “the same questions (though perhaps phrased with different words) that humans in analogous situations detecting fraud have asked for decades, if not centuries.” 839 F.3d. at 1094-95, 120 USPQ2d at 1296.
3. Using a computer as a tool to perform a mental process. An example of a case in which a computer was used as a tool to perform a mental process is Mortgage Grader, 811 F.3d. at 1324, 117 USPQ2d at 1699. The patentee in Mortgage Grader claimed a computer-implemented system for enabling borrowers to anonymously shop for loan packages offered by a plurality of lenders, comprising a database that stores loan package data from the lenders, and a computer system providing an interface and a grading module. The interface prompts a borrower to enter personal information, which the grading module uses to calculate the borrower’s credit grading, and allows the borrower to identify and compare loan packages in the database using the credit grading. 811 F.3d. at 1318, 117 USPQ2d at 1695. The Federal Circuit determined that these claims were directed to the concept of “anonymous loan shopping”, which was a concept that could be “performed by humans without a computer.” 811 F.3d. at 1324, 117 USPQ2d at 1699. Another example is Berkheimer v. HP, Inc., 881 F.3d 1360, 125 USPQ2d 1649 (Fed. Cir. 2018), in which the patentee claimed methods for parsing and evaluating data using a computer processing system. The Federal Circuit determined that these claims were directed to mental processes of parsing and comparing data, because the steps were recited at a high level of generality and merely used computers as a tool to perform the processes. 881 F.3d at 1366, 125 USPQ2d at 1652-53.
Applicant then argued (page 13) that “Applicant’s claimed invention is not simply directed to an abstract idea falling within the category of “Certain Methods of Organizing Human Activity.” When the recitations of the claimed invention are viewed as a whole in light of the specification, it is clear that the claimed invention is directed to provide a practical application that includes a technical solution to overcome issues associated with overuse of computer resources when automatically mapping medical codes to extracted information from text in a narrative form”. The examiner respectfully disagrees. The claim 1 recited mental steps that can be performed in a human mind, see the 101 rejection below (Step 2A – Prong 1 analysis). It is not clear how the claimed invention is different from the existing technology. In another word, which steps in the claimed invention solve the problem of overuse of computer resources in the field of information retrieval.
Applicant then argued (page 14) “As such, the claims are directed to patent-eligible subject matter under McRO. Accordingly, Applicant respectfully submits that the claimed invention should be considered a practical application of the alleged abstract idea, and therefore is patent eligible”. The examiner respectfully disagrees. Applicant’s invention discloses gathering similar solutions to a user problem from a plurality of databases and presenting combined solutions to the user. This is a known practice in the field of the art, as evidenced in the cited prior art (see the 103 rejection issued in the office action 11/26/2024). Thus, applicant’s claimed invention does not improve the current computer technology.
Applicant also argued (page 14) that the claimed invention amounts to significantly more than the alleged judicial exception. The examiner respectfully disagrees. The various steps in the claim invention (such as receiving a user request, searching through databases, retrieving solutions from databases, presenting combined solutions to a user) are considered as Well-Understood, Routine, Conventional activities in the field of the art, as evidenced in the cited prior art (see the 103 rejection issued in the office action 11/26/2024). Therefore, the examiner believes the claimed invention does not amount to significantly more than the judicial exception.
The examiner is available for a phone interview with applicant for further discussion.
Conclusion
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/HANG PAN/Primary Examiner, Art Unit 2193