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
Status of Claims
This Non-Final Office Action is in response to Applicant’s Request for Continued Examination (RCE) filed 02/23/2026.
In accordance with Applicant’s amendment, claims 1, 3, 8, 10, 15, and 17 are amended. Claims 1-21 are currently pending.
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 submissions filed on 02/23/2026 have been entered.
Response to Amendment
The 35 U.S.C. §103 rejection of claims 1-21 is withdrawn in response to applicant’s amendment.
Response to Arguments
Response to §101 arguments: With the exception of the arguments addressed below, Applicant's arguments (Remarks at pgs. 8-15) with respect to the §101 rejection of claims 1-21 have been considered, but are primarily directed in support of the amendments to independent claims 1, which are believed to be fully addressed in the updated §101 rejection.
In response to applicant’s suggestion that the case model definition, or parsing related thereto, involve eXtensible Markup Language (XML), which applicant notes is “an inherently computational operation,” the Examiner notes that neither structured data itself nor parsing thereof, as broadly recited in the claims, requires XML or inherent computer-based implementation. Notably, the claims are silent regarding the form of the structured data, and the portion of the Specification cited by applicant (par. [0036]) merely notes that the case model definition “may be embodied in [XML] or other structured data file.” This is open-ended language and is not reasonably considered as a special definite that confines the structured file to an inherent computer-based embodiment. Therefore, Applicant’s argument’s is unpersuasive because it relies on applying a narrower interpretation than the claim language requires by seeking to import limitations from the specification, which is impermissible. See Superguide Corp. v. DirecTV Enterprises, Inc., 358 F.3d 870, 875, 69 USPQ2d 1865, 1868 (Fed. Cir. 2004). See also, CollegeNet, Inc. v. Apply Yourself Inc., 418 F.3d 1225, 1231 (Fed. Cir. 2005) (while the specification can be examined for proper context of a claim term, limitations from the specification will not be imported into the claims). Nothing in the claims or the Specification, with the exception of the “apply it” nature of the generic computing elements, preclude the structured data file or parsing operation from falling within the realm of the “Mental Processes” abstract idea grouping, such as by human evaluation or judgment with the aid of pen and paper.
In response to applicant’s argument that “code execution is categorically non-mental” (Remarks at pg. 12), this argument lacks merit because the code recited in the claims was clearly identified and fully addressed as an additional element and not as a mental step as erroneously suggested by applicant.
In response to applicant’s reliance on the Koninklijke decision, the fact pattern in this decision, and more particularly, the claimed subject matter under consideration share virtually no similarities to the current fact pattern or Applicant’s claimed invention. In Koninklijke, while the CAFC identified an improvement to an existing technological process (error checking in data transmissions), no similar subject matter, technical field, or improvement is contemplated by Applicant’s disclosure or achieved through Applicant’s claims. Instead, Applicant’s claimed invention is directed to activities that, but for the generic computer implementation (e.g., code, recited twice in claim 1), could be performed in the human mind (e.g., observation, evaluation, judgment, or opinion), such as with the aid of pen and paper.
In response to applicant’s reliance on the CAFC’s Enfish decision and suggestion that claim 1 is similarly directed to “a specific improvement” (Remarks at pg. 14), the Examiner emphasizes that the CAFC’s Enfish decision found that the claimed solution for configuring memory according to a logical table embodied the technological solution/improvement (i.e., the self-referential table) and resulted in faster search times and smaller memory requirements, whereas Applicant’s claims merely rely on generic computer implementation to perform activity confined within the abstract idea itself, but do nothing to configure, reconfigure, manipulate, transform, or improve a computer, a database, or any technological components at all, which in contrast to the improvement in Enfish merely uses a generic computer as a tool to perform a method for organizing human activity and steps that are otherwise implementable mentally by a human, which is not analogous to the specific technical improvement discussed in Enfish.
For the reasons above along with the reasons set forth below in the updated §101 rejection, the arguments and amendments are insufficient to overcome the §101 rejection of claims 1-21.
Response to §103 arguments: Applicant's arguments (Remarks at pgs. 16-17) with respect to the §103 rejection of claims 1-21 have been reviewed, but are moot in view of withdrawal of this rejection.
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 1-21 are rejected under 35 U.S.C. 101 because the claimed invention is directed to non-patentable subject matter. The claims are directed to an abstract idea without significantly more.
Claims 1-21 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more. The judicial exception is not integrated into a practical application. The claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception. The eligibility analysis in support of these findings is provided below, in accordance with the subject matter eligibility guidance set forth in MPEP 2106.
With respect to Step 1 of the eligibility inquiry (as explained in MPEP 2106.03), it is first noted that the claimed method (claims 1-7), system (claims 8-14), and non-transitory computer readable medium (claims 15-21) are each directed to a potentially eligible category of subject matter (i.e., process, machine, and article of manufacture). Accordingly, claims 1-21 satisfy Step 1 of the eligibility inquiry.
With respect to Step 2A Prong One of the eligibility inquiry (as explained in MPEP 2106.04), it is next noted that the claims recite an abstract idea that falls under “Mental Processes” abstract idea grouping by reciting activities that can be performed in the human mind (e.g., observation, evaluation, judgment, or opinion). The limitations reciting the abstract idea, as set forth in independent claim 1 are identified in bold text below, whereas the additional elements are presented in plain text and are separately evaluated under Step 2A Prong Two and Step 2B:
loading a case model definition including a structured data defining a plurality of nodes arranged according to a first hierarchy, each node associated with a hierarchical level in the first hierarchy, wherein the case model definition includes an alteration rule, the alteration rule comprising a trigger including a condition and an associated configuration definition comprising code for modifying an existing case model instance, the modifying comprising reconfiguration of a hierarchy of the existing case model instance (The “loading” step, as recited in claim 1, is disembodied because the step does not recite “how” or by what means the loading is implemented and therefore this step describes mental activity such as by observation, evaluation, judgment, or opinion and/or with the aid of pen and paper. Notably, the “loading” is not recited as being loaded into a computer, memory, database, working memory, RAM, or the like, but instead the “loading” is open-ended and lacking any discernible technical details of how the loading is implemented, e.g., loaded into a processor. Even if interpreted as being implemented by a computer/processor, such as in claims 8/15, this step at most would be considered insignificant extra-solution data gathering activity (e.g., receiving, outputting, or inputting a case model definition), which is not enough to amount to a practical application (MPEP 2106.05(g)), and such extra-solution activity has also been recognized as well-understood, routine, and conventional, and thus insufficient to add significantly more to the abstract idea. See MPEP 2106.05(d) - 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 (utilizing an intermediary computer to forward information); TLI Communications LLC v. AV Auto. LLC, 823 F.3d 607, 610, 118 USPQ2d 1744, 1745 (Fed. Cir. 2016) (using a telephone for image transmission); OIP Techs., Inc., v. Amazon.com, Inc., 788 F.3d 1359, 1363, 115 USPQ2d 1090, 1093 (Fed. Cir. 2015) (sending messages 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));
creating a first case model instance based on parsing the structured data defining the plurality of nodes included in the case model definition, wherein the first case model instance comprises a first set of nodes, each of the first set of nodes comprising a first data object associated with a corresponding one of the plurality of nodes of the case model definition and wherein the first data objects are arranged according to the first hierarchy defined in the case model definition (The “creating” step is disembodied because the step does not recite “how” or by what means the first case model is created and therefore this step could be implemented as mental activity such as by observation, evaluation, judgment, or opinion and/or with the aid of pen and paper, e.g., a model instance represented on paper as a tree/hierarchy of nodes, links, etc., some of the nodes labeled as first data objects);
creating a second case model instance based on parsing the structured data defining the plurality of nodes included in the case model definition without modifying the case model definition, wherein the second case model instance comprises a second set of nodes comprising a second data object, each of the second set of nodes associated with the corresponding one of the plurality of nodes of the case model definition and the second data objects are arranged according to the first hierarchy defined in the case model definition (The “creating” step is disembodied because the step does not recite “how” or by what means the second case model instance is created and therefore this step could be implemented as mental activity such as by observation, evaluation, judgment, or opinion and/or with the aid of pen and paper, e.g., a model instance represented on paper as a tree/hierarchy of nodes, links, etc., some of the nodes labeled as second data objects);
receiving an event associated with the first case model instance (The “receiving” step is disembodied because the step does not recite “how” or by what means the receiving is implemented and therefore this step could be implemented as mental activity such as by observation, evaluation, judgment, or opinion and/or with the aid of pen and paper. Even if implemented by a computer/processor such as in claims 8/15, this step is considered insignificant extra-solution data gathering activity, which is not enough to amount to a practical application (MPEP 2106.05(g)), and such extra-solution data gathering activity has also been recognized as well-understood, routine, and conventional, and thus insufficient to add significantly more to the abstract idea. See MPEP 2106.05(d) - 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 (utilizing an intermediary computer to forward information); TLI Communications LLC v. AV Auto. LLC, 823 F.3d 607, 610, 118 USPQ2d 1744, 1745 (Fed. Cir. 2016) (using a telephone for image transmission); OIP Techs., Inc., v. Amazon.com, Inc., 788 F.3d 1359, 1363, 115 USPQ2d 1090, 1093 (Fed. Cir. 2015) (sending messages 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));
determining the first case model instance is associated with the alteration rule based on the alteration rule being included in the case model definition that was used to create the first case model instance (The “determining” step is disembodied because the step does not recite “how” or by what means the determining is implemented and therefore this step could be implemented as mental activity such as by observation, evaluation, judgment, or opinion and/or with the aid of pen and paper);
comparing the event to the condition of the trigger of the alteration rule (The “comparing” step is disembodied because the step does not recite “how” or by what means the comparing is implemented and therefore this step could be implemented as mental activity such as by observation, evaluation, judgment, or opinion and/or with the aid of pen and paper); and
based on the event meeting the condition of the trigger of the alteration rule and based on the alteration rule being associated with the first case model instance, dynamically reconfiguring, without modifying the case model definition, the first data objects of the first set of nodes of the first case model instance using the code of the configuration definition of the alternation rule such that the first data objects of the first set of nodes of the first case model instance are arranged according to a second hierarchy while the second data objects of the second set of nodes of the second case model instance remain configured according to the first hierarchy defined in the case model definition (The “dynamically reconfiguring” step is disembodied because the step does not recite “how” or by what means the reconfiguring is implemented and therefore it could be implemented as mental activity such as by observation, evaluation, judgment, or opinion and/or with the aid of pen and paper).
Independent claims 8 and 15 recite similar limitations as those set forth in claim 1 as discussed above, and have therefore been determined to recite the same abstract idea as claim 1.
With respect to Step 2A Prong Two of the eligibility inquiry (as explained in MPEP 2106.04(d)), the judicial exception is not integrated into a practical application. Independent claims 1, 8, and 15 include the additional elements of code (claims 1/8/15), a processor, a non-transitory computer readable storage medium (claim 8), and non-transitory computer readable medium (claim 15) and loading (when computer-implemented in claims 8/15). The additional elements have been evaluated, but fail to integrate the abstract idea into a practical application because they amount to using generic computing elements or instructions/software (code) to perform the abstract idea, similar to adding the words “apply it” (or an equivalent), which merely serves to link the use of the judicial exception to a particular technological environment (network computing environment). See MPEP 2106.05(f) and 2106.05(h). Even if the loading or receiving steps are interpreted as additional elements, these activities at most amount to insignificant extra-solution activity, which is not indicative of a practical application, as noted in MPEP 2106.05(g). In addition, these limitations fail to provide an improvement to the functioning of a computer or to any other technology or technical field, fail to apply the exception with a particular machine, fail to apply the judicial exception to effect a particular treatment or prophylaxis for a disease or medical condition, fail to effect a transformation of a particular article to a different state or thing, and fail to apply/use the abstract idea in a meaningful way beyond generally linking the use of the judicial exception to a particular technological environment.
Accordingly, because the Step 2A Prong One and Prong Two analysis resulted in the conclusion that the claims are directed to an abstract idea, additional analysis under Step 2B of the eligibility inquiry must be conducted in order to determine whether any claim element or combination of elements amount to significantly more than the judicial exception.
With respect to Step 2B of the eligibility inquiry (as explained in MPEP 2106.05), it has been determined that the claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception. Independent claims 1, 8, and 15 include the additional elements of code (claims 1/8/15), a processor, a non-transitory computer readable storage medium (claim 8), and non-transitory computer readable medium (claim 15), and loading (when computer-implemented in claims 8/15). These additional elements have been evaluated, but fail to add significantly more to the claims because they amount to using generic computing elements or instructions/software (code) to perform the abstract idea (See Spec. at par. [0088], noting for example that “Embodiments of the technology may be implemented on a computing system. Any combination of mobile, desktop, server, embedded, or other types of hardware may be used”), which merely serves to tie the abstract idea to a particular technological environment (network computing environment), similar to adding the words “apply it” (or an equivalent), which merely serves to link the use of the judicial exception to a particular technological environment (generic computing environment) and does not amount to significantly more than the abstract idea itself. See, e.g., Alice Corp., 134 S. Ct. 2347, 110 USPQ2d 1976; Versata Dev. Group, Inc. v. SAP Am., Inc., 793 F.3d 1306, 1334, 115 USPQ2d 1681, 1701 (Fed. Cir. 2015).
Even if the loading or receiving steps are interpreted as additional elements, these activities at most amount to insignificant extra-solution data gathering or output activity, which has been recognized as well-understood, routine, and conventional, and thus insufficient to add significantly more to the abstract idea. See MPEP 2106.05(d) - 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 (utilizing an intermediary computer to forward information); TLI Communications LLC v. AV Auto. LLC, 823 F.3d 607, 610, 118 USPQ2d 1744, 1745 (Fed. Cir. 2016) (using a telephone for image transmission); OIP Techs., Inc., v. Amazon.com, Inc., 788 F.3d 1359, 1363, 115 USPQ2d 1090, 1093 (Fed. Cir. 2015) (sending messages 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).
In addition, when taken as an ordered combination, the ordered combination adds nothing that is not already present as when the elements are taken individually. There is no indication that the combination of elements integrate the abstract idea into a practical application. Their collective functions merely provide generic computer implementation. Therefore, when viewed as a whole, these additional claim elements do not provide meaningful limitations to transform the abstract idea into a practical application of the abstract idea or that, as an ordered combination, amount to significantly more than the abstract idea itself.
Dependent claims 2-7, 9-14, and 16-21 recite the same abstract idea(s) as recited in the independent claims, and have been determined to recite further details/steps falling under the “Mental Processes” abstract idea grouping discussed above, accompanied at most by the same generic computer implementation as independent claims 8/15, which fails to amount to a practical application or significantly more for the reasons discussed above. The ordered combination of elements in the dependent claims (including the limitations inherited from the parent claim(s)) add nothing that is not already present as when the elements are taken individually. There is no indication that the combination of elements improves the functioning of a computer or improves any other technology. Their collective functions merely provide generic computer implementation. Accordingly, the subject matter encompassed by the dependent claims fails to amount to a practical application or significantly more than the abstract idea itself.
Allowable over the prior art
Claims 1-21 are allowable over the prior art. The closest prior art reference of record, Reddy et al. (US Patent No. 9,922,059), is directed to computer implemented a case management system and techniques, including behavior versioning. Reddy et al. and the other prior art of record teach several features of claims 1/8/15, including for example: loading a case model definition including a structured data defining a plurality of nodes arranged according to a first hierarchy, each node associated with a hierarchical level in the first hierarchy, wherein the case model definition includes an alteration rule, the alteration rule comprising a trigger including a condition and an associated configuration definition comprising code for modifying an existing case model instance (Reddy et al. at col. 3 lines 1-33 and col. 6 lines 46 – col. 7 line 22); creating a first case model…, wherein the first case model instance comprises a first set of nodes, each of the first set of nodes comprising a first data object associated with a corresponding one of the plurality of nodes of the case model definition and wherein the first data objects are arranged according to the first hierarchy defined in the case model definition (Reddy et al. at Abstract, col. 3 lines 1-33, col. 4 lines 43-47, col. 7 lines 1-22, Figs. 7-8, and claim 1); creating a second case model instance…without modifying the case model definition, wherein the second case model instance comprises a second set of nodes, each of the second set of nodes comprising a second data object associated with the corresponding one of the plurality of nodes of the case model definition and wherein the second data objects are arranged according to the first hierarchy defined in the case model definition (Reddy et al. at Abstract, col. 3 lines 1-33, col. 4 lines 43-47, claim 1, and Figs. 7-8); receiving an event associated with the first case model instance (Reddy et al. at col. 9 lines 50-67). However, Reddy et al. and the other prior art of record do not teach or render obvious the claimed method for providing dynamic case instances in a case management system, the method comprising: loading a case model definition including structured data defining a plurality of nodes arranged according to a first hierarchy, each node associated with a hierarchical level in the first hierarchy, wherein the case model definition includes an alteration rule, the alteration rule comprising a trigger including a condition and an associated configuration definition comprising code for modifying an existing case model instance, the modifying comprising reconfiguration of a hierarchy of the existing case model instance; creating a first case model instance based on parsing the structured data defining the plurality of nodes included in the case model definition, wherein the first case model instance comprises a first set of nodes, each of the first set of nodes comprising a first data object associated with a corresponding one of the plurality of nodes of the case model definition and wherein the first data objects are arranged according to the first hierarchy defined in the case model definition; creating a second case model instance based on parsing the structured data defining the plurality of nodes included in the case model definition without modifying the case model definition, wherein the second case model instance comprises a second set of nodes, each of the second set of nodes comprising a second data object associated with the corresponding one of the plurality of nodes of the case model definition and wherein the second data objects are arranged according to the first hierarchy defined in the case model definition; receiving an event associated with the first case model instance; determining the first case model instance is associated with the alteration rule based on the alteration rule being included in the case model definition that was used to create the first case model instance; comparing the event to the condition of the trigger of the alteration rule; and based on the event meeting the condition of the trigger of the alteration rule and based on the alteration rule being associated with the first case model instance, dynamically reconfiguring, without modifying the case model definition, the first data objects of the first set of nodes of the first case model instance using the code of the configuration definition of the alteration rule such that the first data objects of the first set of nodes of the first case model instance are arranged according to a second hierarchy while the second data objects of the second set of nodes of the second case model instance remain configured according to the first hierarchy defined in the case model definition, as recited and arranged in independent claim 1 and as similarly encompassed by independent claims 8/15, thereby rendering independent claims 1/8/15 and their respective dependent claims as allowable over the prior art. Claims 1-21 are not allowed, however, because they stand rejected under 35 USC §101, as discussed above.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure:
Van Rotterdam et al. (US Patent No. 9,405,929): discloses hierarchical permission modeling in case management systems, including dynamic framework reflecting ad hoc actions and different instances of the case model (at least col. 7 lines 56-65).
Spinola et al. (US 2009/0171897): disclose case management features, including a change log storing changes made to a case and to facilitate tracking and review, e.g., adding/deleting tasks (pars. 17 and 31-33) and generating a structure hierarchy corresponding to a case and its objects (Fig. 4).
Grossman et al. (US 2020/0349482): discloses techniques for workflow analysis and design task optimization, including modifying a sequence of edges and nodes representing a workflow object (par. 180).
S. Scheit et al., "Automated Event Driven Dynamic Case Management," 2016 IEEE 20th International Enterprise Distributed Object Computing Workshop (EDOCW), Vienna, Austria, 2016, pp. 1-10: discloses case management applications and challenges, including adapted rules that override generic versions, and a rule engine that can apply rules in a situational context with specific data in the case altering rules evaluation, the rules categorized by their underlying triggering logic.
L. Osuszek et al., "Knowledge management and decision support in adaptive case management platforms," 2015 Federated Conference on Computer Science and Information Systems (FedCSIS), Lodz, Poland, 2015, pp. 1539-1549: discloses adaptive case management framework, including features enabling full visibility and control of each specific case, whether handled be predefined rules or an ad hoc process or combination thereof.
Any inquiry of a general nature or relating to the status of this application or concerning this communication or earlier communications from the Examiner should be directed to Timothy A. Padot whose telephone number is 571.270.1252. The Examiner can normally be reached on Monday-Friday, 8:30 - 5:30. If attempts to reach the examiner by telephone are unsuccessful, the Examiner’s supervisor, Brian Epstein can be reached at 571.270.5389. The fax phone number for the organization where this application or proceeding is assigned is 571- 273-8300.
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/TIMOTHY PADOT/
Primary Examiner, Art Unit 3625
07/24/2026
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