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 .
Notice to Applicant
Status of Claims
Claims 1, 12, and 20 have been amended. Now, 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.
2. Claims 1-20 are 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.
Subject Matter Eligibility Criteria – Step 1:
The claims recite subject matter within a statutory category as a process (claims 1-11), an apparatus claims (claims 12-19) and as a machine (claim 20). Accordingly, claims 1-20 are all within at least one of the four statutory categories.
Subject Matter Eligibility Criteria – Step 2A – Prong One:
Regarding Prong One of Step 2A of the Alice/Mayo test, the claim limitations are to be analyzed to determine whether, under their broadest reasonable interpretation, they “recite” a judicial exception or in other words whether a judicial exception is “set forth” or “described” in the claims. MPEP 2106.04(II)(A)(1). An “abstract idea” judicial exception is subject matter that falls within at least one of the following groupings: a) certain methods of organizing human activity, b) mental processes, and/or c) mathematical concepts. MPEP 2106.04(a).
Representative independent claims 1, 12, and 20, the claims set forth a method/computer readable medium/system that include limitations that recite at least one abstract idea. Specifically, independent claim 1 recites:
detecting an initiation ….. of an insight service and based on receiving data from an insight agent………;
wherein…..on a data center,
wherein the program is initiated by an organization user……,
…….;
monitoring interactions of the organization user with the program,….to identify an engagement action, wherein the engagement action reflects a creation of an insight editing file to be associated with an insight….., wherein the insight editing file maintains metadata of the insight, wherein the insight is a finding inferred from the insight editing file and is based on data patterns within metadata of the insight;
inferring the insight from the insight editing file, wherein the inferring comprises:
generating an insight lineage graph; and
mapping the insight lineage graph to the insight editing file using metadata of the insight, wherein the mapping conveys at least one object dependency that contributed towards the insight, wherein the at least one object dependency reflects data patterns within metadata of the insight;
monitoring second interactions, of the organization user with the insight editing file, …., to identify an insight creation action, wherein the insight creation action reflects changes to the metadata of the insight within the insight editing file; and
updating, based on the insight creation action the insight lineage graph …..reflect a different object dependency that contributed towards the insight based on changes to metadata of the insight within the insight editing file.
These steps amount to functions performable in the mind or with pen and paper and are only concepts relating to organizing or analyzing information in a way that can be performed mentally or is analogous to human mental work (MPEP § 2106.04(a)(2)(III)(c)(2) citing the abstract idea grouping for mental processes in a computer environment).
Accordingly, the claim recites at least one abstract idea.
Subject Matter Eligibility Criteria – Step 2A – Prong Two:
Regarding Prong Two of Step 2A of the Alice/Mayo test, it must be determined whether the claim as a whole integrates the abstract idea into a practical application. As noted at MPEP §$2106.04(1D(A)(2), it must be determined whether any additional elements in the claim beyond the abstract idea integrate the exception into a practical application in a manner that imposes a meaningful limit on the judicial exception. The courts have indicated that additional elements merely using a computer to implement an abstract idea, adding insignificant extra solution activity, or generally linking use of a judicial exception to a particular technological environment or field of use do not integrate a judicial exception into a “practical application.” MPEP §2106.05(1(A).
In the present case, the additional limitations beyond the above-noted at least one abstract idea recited in the claim are as follows (where the bolded portions are the “additional limitations” while the underlined portions continue to represent the at least one “abstract idea”):
a machine learning based inference computer program using a processor ……..executing on a physical computing device (PCD), (using computers as mere tools to perform the abstract idea, see MPEP 2106.05(f); see spec. para. 0024, 0028, 0055, and 0098), wherein the processor executes, (using computers as mere tools to perform the abstract idea, see MPEP 2106.05(f); see spec. paragraphs 0024, 0033, 0095, and 0096), over a wide area network, (using computers as mere tools to perform the abstract idea, see MPEP 2106.05(f); see spec. paragraphs 0023, 0024, 0033, 0095, and 0096)…using a user interface, (using computers as mere tools to perform the abstract idea, see MPEP 2106.05(f); see spec. paragraphs 0024, 0033, 0095, and 0096);
A non-transitory computer readable medium (CRM) comprising computer readable program code, (using computers as mere tools to perform the abstract idea, see MPEP 2106.05(f); see spec. para. 0098), which when executed by a computer processor, (using computers as mere tools to perform the abstract idea, see MPEP 2106.05(f); see spec. paragraphs 0024, 0033, 0095, and 0096), enables the computer processor to perform a method, (using computers as mere tools to perform the abstract idea, see MPEP 2106.05(f); see spec. paragraphs 0024, 0033, 0095, and 0096);
A physical computing device, (using computers as mere tools to perform the abstract idea, see MPEP 2106.05(f); see spec. paragraphs 0095-0098 and 00100);
an insight service operatively connected to the PCD over a wide area network, and comprising a computer processor configured to perform a method, (using computers as mere tools to perform the abstract idea, see MPEP 2106.05(f); see spec. paragraphs 0021 and 0023).
Thus, taken alone, the additional elements do not integrate the at least one abstract idea into a practical application.
Looking at the additional limitations as an ordered combination adds nothing that is not already present when looking at the elements taken individually. For instance, there is no indication that the additional elements, when considered as a whole with the limitations reciting the at least one abstract idea, reflect an improvement in the functioning of a computer or an improvement to another technology or technical field, apply or use the above-noted judicial exception to effect a particular treatment or prophylaxis for a disease or medical condition, implement/use the above-noted judicial exception with a particular machine or manufacture that is integral to the claim, effect a transformation or reduction of a particular article to a different state or thing, or apply or use the judicial exception in some other meaningful way beyond generally linking the use of the judicial exception to a particular technological environment, such that the claim as a whole does not integrate the abstract idea into a practical application of the abstract idea. MPEP §2106.05(I)(A) and §2106.04(IID(A)(2).
For these reasons, representative independent claims 12 and 20 and analogous independent claim 1 do not recite additional elements that integrate the judicial exception into a practical application. Accordingly, representative independent claims 12 and 20 and analogous independent claim 1 are directed to at least one abstract idea.
The remaining dependent claim limitations not addressed above fail to integrate the abstract idea into a practical application as set forth below:
Claims 2 and 13: The claim specifies wherein the insight creation action reflects a manual entering of a dataset within the insight editing file, and wherein amending, based on the insight creation action, the insight lineage graph to track the insight lineage for the insight, comprises: creating an insight component referencing the dataset; creating a node representative of the insight component; and amending the insight lineage graph by inserting the node therein, wherein, by inserting the node therein, the insight lineage graph transitions from a null graph to a non-null graph, which is a mental process and which does no more than generally link use of the abstract idea to a particular technological environment or field of use without altering or affecting how the use of at least one abstract idea is performed (see MPEP 2106.05(h)).
Claims 3 and 14: The claim specifies prior to monitoring the second interactions: creating, in an insight catalog and for the insight, an insight record comprising insight metadata describing the insight, which is a mental process and which does no more than generally link use of the abstract idea to a particular technological environment or field of use without altering or affecting how the use of at least one abstract idea is performed (see MPEP 2106.05(h)).
Claims 4 and 15: The claim specifies wherein amending, based on the insight creation action, the insight lineage graph to track the insight lineage for the insight, further comprises: creating, in the insight record and for the insight component, an insight component record comprising insight component metadata describing the insight component; and mapping the insight component record to the node inserted in the insight lineage graph, which is a mental process and which does no more than generally link use of the abstract idea to a particular technological environment or field of use without altering or affecting how the use of at least one abstract idea is performed (see MPEP 2106.05(h)).
Claims 5 and 16: The claim specifies wherein monitoring the second interactions, by the organization user, with the insight editing file further identifies a second creation action, wherein the second creation action reflects an applying of a data processing algorithm to the dataset to produce a processed dataset, and wherein amending, based on the insight creation action, the insight lineage graph to track the insight lineage for the insight, further comprises: creating a second insight component referencing the data processing algorithm; creating a second node representative of the second insight component; amending the insight lineage graph further by inserting the second node and a directed edge connecting the node to the second node therein; creating a third insight component referencing the processed dataset; creating a third node representative of the third insight component; and amending the insight lineage graph further by inserting the third node and a second directed edge connecting the second node to the third node therein, which is a mental process and does no more than generally link use of the abstract idea to a particular technological environment or field of use without altering or affecting how the use of at least one abstract idea is performed (see MPEP 2106.05(h)). The “applying of a data processing algorithm” merely uses the computer as a tool to perform an abstract idea (see MPEP 2106.05(f)).
Claims 6: The claim specifies wherein amending, based on the insight creation action, the insight lineage graph to track the insight lineage for the insight, further comprises: creating, in the insight record and for the second insight component, a second insight component record comprising second insight component metadata describing the second insight component; mapping the second insight component record to the second node inserted in the insight lineage graph; creating, in the insight record and for the third insight component, a third insight component record comprising third insight component metadata describing the third insight component; and mapping the third insight component record to the third node inserted in the insight lineage graph, which is a mental process and which uses the computer as a tool to perform the abstract idea (see MPEP 2106.05(f)).
Claims 7 and 17: The claim recites wherein monitoring the second interactions, by the organization user, with the insight editing file further identifies a third creation action, wherein the third creation action reflects an importing of a second processed dataset representing a second insight, and wherein amending, based on the insight creation action, the insight lineage graph to track the insight lineage for the insight, further comprises: obtaining a second insight lineage graph associated with the second insight; and amending the insight lineage graph further by inserting the second insight lineage graph therein, which is a mental process and which uses the computer as a tool to perform the abstract idea (see MPEP 2106.05(f)).
Claim 8: The claim recites wherein amending, based on the insight creation action, the insight lineage graph to track the insight lineage for the insight, further comprises: identifying, in the insight catalog, a second insight record for the second insight; identifying, in the second insight record, a set of fourth insight component records for a set of fourth insight components, respectively, wherein the set of fourth insight components each contributed to a creation of the second insight; and appending, to the insight record, the set of fourth insight component records each comprising fourth component metadata describing a fourth insight component in the set of insight components, which is a mental process and which uses the computer as a tool to perform an abstract idea (see MPEP 2106.05(f)).
Claims 9 and 18: The claim specifies wherein monitoring the second interactions, by the organization user, with the insight editing file further identifies a fourth creation action, wherein the fourth creation action reflects an applying of a second data processing algorithm to the processed dataset and the second processed dataset to produce a third processed dataset representing the insight, and wherein amending, based on the insight creation action, the insight lineage graph to track the insight lineage for the insight, further comprises: identifying, from a set of fourth nodes forming the second insight lineage graph, a fourth node representative of the second processed dataset; creating a fifth insight component referencing the second data processing algorithm; creating a fifth node representative of the fifth insight component; amending the insight lineage graph further by inserting the fifth node, a third directed edge connecting the third node to the fifth node, and a fourth directed edge connecting the fourth node to the fifth node therein; creating a sixth insight component referencing the third processed dataset; creating a sixth node representative of the sixth insight component; and amending the insight lineage graph further by inserting the sixth node and a fifth directed edge connecting the fifth node to the sixth node therein, which is a mental process and which uses the computer as a tool to perform an abstract idea (see MPEP 2106.05(f)). The “data processing algorithm” merely uses the computer as a tool to perform an abstract idea (see MPEP 2106.05(f)).
Claim 10: The claim specifies wherein amending, based on the insight creation action, the insight lineage graph to track the insight lineage for the insight, further comprises: creating, in the insight record and for the fifth insight component, a fifth insight component record comprising fifth insight component metadata describing the fifth insight component; mapping the fifth insight component record to the fifth node inserted in the insight lineage graph; creating, in the insight record and for the sixth insight component, a sixth insight component record comprising sixth insight component metadata describing the sixth insight component; and mapping the sixth insight component record to the sixth node inserted in the insight lineage graph, which is a mental process and which uses the computer as a tool to perform an abstract idea (see MPEP 2106.05(f)).
Claims 11 and 19: The claim specifies wherein monitoring the interactions, by the organization user, with the insight editing program further identifies a second engagement action, and wherein the second engagement action reflects an editing of a second insight editing file associated with a second insight, which is a mental process and which uses the computer as a tool to perform an abstract idea (see MPEP 2106.05(f)).
Thus, when the above additional limitations are considered as a whole along with the limitations directed to the at least one abstract idea, the at least one abstract idea is not integrated into a practical application. Therefore, the claims are directed to at least one abstract idea.
Subject Matter Eligibility Criteria – Step 2B:
Regarding Step 2B of the Alice/Mayo test, representative independent claims 1, 12, and 20 do not include additional elements (considered both individually and as an ordered combination) that are sufficient to amount to significantly more than the judicial exception for reasons the same as those discussed above with respect to determining that the claim does not integrate the abstract idea into a practical application.
The claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception. As discussed above with respect to discussion of integration of the abstract idea into a practical application, the additional elements amount to no more than mere instructions to apply an exception, add insignificant extra-solution activity to the abstract idea, and generally link the abstract idea to a particular technological environment or field of use.
Each additional element under Step 2A, Prong 2 is analyzed in light of the specification’s explanation of the additional element’s structure. The claimed invention’s additional elements do not have sufficient structure in the specification to be considered a not well-understood, routine, and conventional use of generic computer components. Note that the specification can support the conventionality of generic computer components if “the additional elements are sufficiently well-known that the specification does not need to describe the particulars of such additional elements to satisfy 35 U.S.C. § 112(a)” (Berkheimer in III. Impact on Examination Procedure, A. Formulating Rejections, 1. on p. 3).
Dependent claims recite additional subject matter which, as discussed above with respect to integration of the abstract idea into a practical application, amount to invoking computers as a tool to perform the abstract idea. Dependent claims recite additional subject matter which amount to limitations consistent with the additional elements in the independent claims (such as claims 2-11 and 13-19, Each of these elements is only recited as a tool for performing steps of the abstract idea, such as the use of the storage mediums to store data and the computer and data processing devices to apply the algorithm. These additional elements therefore only amount to mere instructions to perform the abstract idea using a computer and are not sufficient to amount to significantly more than the abstract idea (MPEP 2016.05(f) see for additional guidance on the “mere instructions to apply an exception”), claims 5, 9, 16, and 18 (applying of a processing algorithm), e.g., receiving or transmitting data over a network, Symantec, MPEP 2106.05(d)(II)(i); claims 2-11 and 13-19 (generating, mapping and monitoring data) e.g., storing and retrieving information in memory, Versata Dev. Group, MPEP 2106.05(d)(II)(iv)). Looking at the limitations as an ordered combination adds nothing that is not already present when looking at the elements 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 conventional computer implementation.
Therefore, whether taken individually or as an ordered combination, claims 1-20 are nonetheless rejected under 35 U.S.C. 101 as being directed to non-statutory subject matter.
Response to Arguments
3. Applicant's arguments filed September 12, 2025 have been fully considered but they are not persuasive.
Applicant argues that the claims are not directed to a judicial exception and that the claims are analogous to the claims at issue in the 2019 Revised Patent Subject Matter Eligibility Guidance (2019 PEG) (see "Subject Matter Eligibility Examples: Abstract Ideas" Example 37 Claims 1 and 2)), and that the claims are integrated into a practical application.
In response, Examiner respectfully disagrees. Examiner finds the claims recite concepts which are now described in the 2019 PEG as mental process. The steps of the claim limitations outlined above in the 35 U.S.C. 101 rejection are comprised of generic computer elements to perform an existing business process. Examiner finds the claims recite mere instructions to implement the abstract idea on a computer and uses the computer as a tool to perform the abstract idea without reciting any improvements to a technology, technological process or computer-related technology. Regarding, the steps that Applicant points to (“monitoring interactions, of the organization user with the program, using the processor to identify an engagement action, wherein the engagement action reflects a creation of an insight editing file to be associated with an insight using a user interface (UI) of the program, wherein the insight editing file maintains metadata of the insight, wherein the insight is a finding inferred from the insight editing file and is based on data patterns within metadata of the insight...
ii. inferring the insight from the insight editing file, wherein the inferring comprises:
a. generating an insight lineage graph ...
b. mapping the insight lineage graph to the insight editing file
using metadata of the insight, wherein the mapping conveys at least one object dependency that contributed towards the insight, wherein the at least one object dependency reflects data patterns within metadata of the insight...
iii. updating, based on the insight creation action, the insight lineage graph using the processor to reflect a different object dependency that contributed towards the insight based on changes to metadata of the insight within the insight editing file”) are merely narrowing the abstract idea to a particular technological environment, which has been found to be ineffective to render an abstract idea eligible. The structural elements of the present application (i.e. a machine learning based inference computer program using a processor, a physical computing device (PCD), a wide area network, a user interface, a non-transitory computer readable medium (CRM) comprising computer readable program code, a computer processor, an insight service operatively connected to the PCD over a wide area network, and comprising a computer processor configured to perform a method, etc.) are used as tools to perform an existing business process and does not improve upon a technology, technological field or computer-related technology.
With regard to Example 37 claim 2, the claim does not recite any of the judicial exceptions enumerated in the 2019 PEG. For instance, the claim in this example does not recite a mental process because the claim, under its broadest reasonable interpretation, does not cover performance in the mind but for the recitation of generic computer components. For example, the “determining step” now requires action by a processor that cannot be practically applied in the mind. In particular, the claimed step of determining the amount of use of each icon by tracking how much memory has been allocated to each application associated with each icon over a predetermined period of time is not practically performed in the human mind, at least because it requires a processor accessing computer memory indicative of application usage. The claims in the instant application do not determine the use of memory or track how much memory is allocated to each application associated with an icon over a predetermined period of time. The instant application does not actually terminate/shutdown the program using the User Interface (UI), as written the claims merely make a determination and based on the determination a graph is generated. These claims are in no way analogous to Example 37 claim 2.
With regard to Example 37, claim 1, this claim was found to be eligible because the additional elements recite a specific manner of automatically displaying icons to the user based on usage which provides a specific improvement over prior systems, resulting in an improved user interface for electronic devices. The present application does not claim a particular improvement in the manner of automatically displaying icons to a user based on usage and is not analogous to Example 37 claim 1.
Questions of preemption are inherent in the two-part framework from Alice Corp. and Mayo (incorporated in the 2014 IEG as Steps 2A and 2B), and are resolved by using this framework to distinguish between preemptive claims, and "those that integrate the building blocks into something more…the latter pose no comparable risk of pre-emption, and therefore remain eligible". This framework found that the claims do tie up the exception. (See the 35 U.S.C. 101 rejection above).
The claims do not integrate the abstract idea into a practical application, and does not include additional elements that provide an inventive concept (are sufficient to amount to significantly more than the abstract idea). (Digitech Image Tech., LLC v. Electronics for Imaging, Inc. (Fed. Cir. 2014)). The claims do not recite any unconventional computer functions. The structural elements as claimed are for mere convenience and the recited claim elements constitute a mental process, which are still considered an abstract idea under the 2019 PEG. As a result, there are no meaningful limitations in the claim that transform the exception into a patent eligible application such that the claim amounts to significantly more than the exception itself, and the claims are properly rejected under 35 U.S.C. 101 as being directed to non-statutory subject matter. The claim is silent on any computer operation and specific technological implementation that would move the claim beyond a general link to a technological environment.
Applicant further argues that the claims amount to significantly more than that which the examiner contends is abstract.
In response, Examiner respectfully disagrees. Applicant further asserts that the claims are not directed to an abstract idea without significantly more because the claims are directed to a practical application of an abstract idea. However, in order for an alleged application of an abstract idea to be considered eligible, it must amount to significantly more than the abstract idea (i.e., pass step 2B of the Mayo test). As shown in the rejection above, the application of the abstract idea recited merely applies the idea in a generic computer environment (a computing system and the physical client device) using generic computer functions (detecting, monitoring, inferring, generating, mapping, monitoring, and updating). Accordingly, it does not amount to significantly more, and the application of the abstract idea is therefore not eligible.
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.
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Service delivery platform (US 20070150480 A1) teaches managing the delivery of a variety of services to customers or subscribers. Exemplary services that may be managed using the service delivery platform include telecommunication services such as cable, wire line and wireless services.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Amber A. Misiaszek whose telephone number is (571) 270-1362. The examiner can normally be reached on M-Th 7:30-5, F 7:30-4, every other Friday Off.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Fonya Long can be reached on 571-270-5096. The fax phone numbers for the organization where this application or proceeding is assigned are (571) 273-8300.
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/AMBER A MISIASZEK/Primary Examiner, Art Unit 3682