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 .
Detail Action
This office action is in response to amendment filed on 4/22/2026.
Claims 1-20 are pending.
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 rejected under 35 U.S.C. 101 because the claimed invention is directed to abstract without significantly more.
Regarding claim 1 recites “A computer-implemented method” corresponding to a process (Step 1)
Claim 1 further recites the limitation of “analyzing how a software application has performed across numerous dimensions”; “comparing the performance of the software application to a plurality of modernization options;; and “comparing the performance of the software application to a plurality of modernization options; identifying a modernization option that is determined to perform better than the software application in at least one of the numerous dimensions; ” simulating implementing the modernization option to the software application including simulating personnel of the organization providing services of the organization while implementing the modernization option to the software application;” “calculating a total cost to the organization for realizing the modernization option” and “implementing the modernization option to the software application in response to the modernization option having a performance above a performance threshold” The analyzing, comparing, identifying, simulating, calculating and implementing can be reasonably carried out in the human mind with the aid of pen and paper, through observation, evaluation, judgment, opinion, thus it is reasonable to identify these limitation as reciting a mental process. The implementing is interpreted as a decision to go ahead of with one of the options without any specific technical details. Such implementation can be carried out by a generic computer. The simulation of personnel a of the organization providing services of the organization can be interpreted as replacing a salary of one staff with another and can be processed in the human mind. (Step 2A)
Claim 1 additional elements of “using historical data regarding the software application for an organization;”, “while integrating the modernization option among a suite of software applications”. And “using a neural network”
The limitation of “using historical data regarding the software application for an organization;” do nothing more than adding extra resolution activity of collecting and using data and does not transform the limitation into practical application.
The limitation of “while integrating the modernization option among a suite of software applications” appears to recite a generic computer for the calculating and does not appear to meaningfully limit the claim into practical application. For this reason, the above additional elements do not amount to significantly more than the abstract idea.
The limitation of “using a neural network” corresponds to “apply it” can does not carry extra weight to the abstract idea.
Claim 2 recites additional limitation of “the simulation uses data regarding the services and the personnel using a plurality of computing agents reporting real-time data at a plurality of remote computing devices.”
The limitation “the simulation uses data regarding the services and the personnel” is additional mental process can be performed by a human mind carrying out the function through observation, evaluation judgment and /or opinion, or even with the aid of pen and paper. The limitation of “a plurality of computing agents reporting real-time data at a plurality of remote computing devices.”, is generic computer recited at a high level and does not meaningfully transform the limitation into practical application.
Claims 3-4 do not recite mental process, however, the additional elements merely recites options in generic terms and do not appear to meaningful transform the limitation into practical application as well.
Claim 5 recites the limitation of “the simulation simulates an amount of downtime caused to other software applications of the suite of software applications.”, is consider additional mental process and does not appear to be significantly more than the abstract idea.
Claim 6 recites additional limitation of calculating the total cost to the organization for realization the modernization option by the simulation related to dates, cost threshold and priority. The additional limitation can be mentally processed in a person’s mind and is not considered significantly more than the abstract idea.
Claim 7 recited additional limitation of “scheduling executing another modernization option of another software application of the suite of software applications at date prior to the identified date”, which is considered additional mental process and is not significantly more than the abstract idea.
Claims 8-14 recite corresponding limitation of claims 1-7 with additional limitation of “A system comprising: a processor; and a memory in communication with the processor, the memory containing instructions that, when executed by the processor” the additional limitation is considered generic computer and therefore is interpreted as “applying it” and is not significantly more than the abstract idea.
Similarly, claims 15-20 recite corresponding limitation of claims 1-7 with additional limitation of “A computer program product, the computer program product comprising a computer readable storage medium having program instructions embodied therewith, the program instructions executable by a computer to cause the computer to” the additional limitation is considered generic computer and therefore is interpreted as “applying it” and is not significantly more than the abstract idea.
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
Claim(s) 1-20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Brown et al. (US 2008/0319809 Al) in view of Boulineau et al. (US 2008/0312980 Al) and further in view of Miller et al. (US 12,266,018 Bl).
Per claim 1,
Brown discloses
analyzing how a software application has performed across numerous dimensions using historical data regarding the software application for an organization; ([0022-0025], [0024], see performance of an application can be measured, monitor captures real-time and historical data; [0022], see across organizations, see passive resources corresponding to numerous dimensions.)
Brown does not, however Boulineau discloses
comparing respective performances of the software application with respect to a plurality of modernization options; ([0005]-[0017], discloses the costs associated with adopting, ongoing management, and maintenance of business application packages. [0065], see comparing alternatives)
identifying a modernization option that is determined to perform better than the software application in at least one of the numerous dimensions; (continue, [0065], discloses evaluating and comparing alternatives)
simulating implementing the modernization option to the software application including simulating personnel of the organization providing services of the organization while implementing the modernization option to the software application; ([0006]-[0015] disclose project planning and cost methodology with various models, for example [0008] COCOMO is a model that estimates cost, effort, staffing, and schedules when planning a new software development activity. Also see [0015])
calculating a total cost to the organization for realizing the modernization option based on the simulation ([0006]-[0015] disclose project planning and cost methodology with various models, for example [0008] COCOMO is a model that estimates cost, effort, staffing, and schedules when planning a new software development activity. Also see [0015])
implementing the modernization option to the software application in response to the modernization option having a performance above a performance threshold ([0024], discloses go live and support. [0077], discloses showing realized value during or after IT implementation [0192], discloses compare benchmark values and performance indicators either affect positively or negatively)
Therefore, it would have been obvious to a person of ordinary skill before the effective filing date of the invention to incorporate the teachings of Boulineau into the teachings of Brown to include the limitation disclosed by Boulineau. The modification would be obvious to one of ordinary skill in the art to want to have best choice for software implementation project as suggested by Boulineau ([0065])
Brown/ Boulineau does not specifically disclose
However, Miller discloses
simulating, using a neural network,( C22: 35-45, using neural network for determining useful plan); and the total cost below a cost threshold. (C155:15-30 discloses determine upgrade options based on initial plan budget corresponding to cost threshold.C30:45-55, see within budget)
Therefore, it would have been obvious to a person of ordinary skill before the effective filing date of the invention to incorporate the teachings of Miller into the teachings of Brown/Boulineau to include the limitation disclosed by Brown/Boulineau. The modification would be obvious to one of ordinary skill in the art to want to make choice that is fits budget of implementation project as suggested by Miller (C30:45-55)
Per claim 2, the rejection of claim 1 is incorporated.
Brown/Boulineau/Miller discloses
wherein the simulation uses data regarding the services and the personnel using (Boulineau, example [0008] COCOMO is a model that estimates cost, effort, staffing, and schedules when planning a new software development activity.) a plurality of computing agents reporting real-time data at a plurality of remote computing devices. (Brown, [0024], see performance of an application can be measured, monitor captures real-time and historical data where monitor corresponds to agents)
Per claim 3, the rejection of claim 1 is incorporated.
Brown/Boulineau/Miller discloses
wherein the modernization option includes upgrading one module of the software application. (Boulineau, [0131], ROI analysis related to parts of the IT system to develop appears corresponds to upgrading.)
Per claim 4, the rejection of claim 1 is incorporated.
Brown/Boulineau/Miller discloses
wherein the modernization option includes purchasing a different software application. (Boulineau, [0131], ROI analysis related to parts of the IT system to purchase)
Per claim 5, the rejection of claim 1 is incorporated.
Brown/Boulineau/Miller discloses
wherein the simulation simulates an amount of downtime caused to other software applications of a suite of software applications. (Boulineau, [0017], length of time an activity is performed [0130] discloses installing packaged software applications where while an application is being installed it cause downtime to other software applications because the installed application is not functioning.)
Per claim 6, the rejection of claim 1 is incorporated.
Brown/Boulineau/Miller discloses
The simulating the modernization includes:
executing a plurality of simulations in which the personnel of the organization providing services of the organization integrating the modernization option among a suite of software applications at a plurality of dates in the future, wherein the simulation is one of the plurality of simulations and wherein the simulation includes the modernization option being scheduled at an identified date of the plurality of dates; (Boulineau [0044], disclose scheduling projects with dependencies between tasks; [0146] discloses start date) and
identifying the total cost of the simulation as being below a cost threshold, wherein other simulations of the plurality of simulations had a cost above the cost threshold. (Boulineau [0151], discloses user selected threshold)
Per claim 7, the rejection of claim 1 is incorporated.
Brown/Boulineau/Miller discloses
further comprising scheduling executing another modernization option of another software application of the suite of software applications at a date prior to the identified date. (Boulineau, [0044], dependency between tasks appears to show scheduling one project prior to another.)
Per claims 8-14, see rejections of claims 1-7.
Per claims 15-20, see rejections of claims 1-5 (claims 15-19) and claims 6-7 (claim 20)
Response to Arguments
Applicant’s arguments with respect to claim(s) 1-20 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Per remark pages 14-15, Applicant argues “"identifying a modernization option that is determined to perform better than the software application in at least one of the numerous dimensions" and "implementing the modernization option to the software application in response to the modernization option having a performance above a performance threshold" (emphasis added) realizes "a modernization option that is determined to perform better than one of software applications 124" [0028].” The scope of the claim 1 (and corresponding independent claims ) generally relate to a business process of deciding a better option to implement to a modernization of software application. The limitation only recites generally “modernization” at a very high level without any specific technical merit. It practically corresponds to a process of software update/modernization at a very high level. A process of Software modernization cannot reasonable be considered technical improvement to computers.
Conclusion
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).
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 Philip Wang whose telephone number is 571-272-5934. The examiner can normally be reached on Monday – Friday 8:00AM -4:00PM. Any inquiry of general nature or relating to the status of this application should be directed to the TC2100 Group receptionist: 571-272-2100.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Lewis Bullock, can be reached at 571-272-3759. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/PHILIP WANG/Primary Examiner, Art Unit 2199
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