DETAILED ACTION
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 communication filed 5/15/2026.
The instant application having application No. 18/178,960 filed on March 6, 2023, claims foreign priority to Japanese application JP2022-079404 filed on May 13, 2022.
Status of the Claims
Claims 1-10 and 15-19 were previously canceled. Claims 11-14, 20, and 22 are amended, claims 23-26 are canceled, claims 27-29 are added. Accordingly, claims 11-14, 20-22, and 27-29 are currently pending in the application.
Response to Amendment
(A). Regarding 112 (b) rejections: Applicant’s amendments to claims appropriately addressed the 112 (b) rejections to claims 11-14 and 22-26, the rejections are withdrawn.
(B). Regarding 112 (a) rejections: Applicant’s amendments to claims appropriately addressed the 112 (a) rejections to claims 11-14 and 20-26, the rejections are withdrawn.
(C). Regarding 35 U.S.C. § 101 rejection: the new claims are still 101 abstract idea without significantly more, and are so rejected as set forth in the office action below.
Examiner Notes
Examiner cites particular columns, paragraphs, figures and line numbers in the references as applied to the claims below for the convenience of the applicant. Although the specified citations are representative of the teachings in the art and are applied to the specific limitations within the individual claim, other passages and figures may apply as well. It is respectfully requested that, in preparing responses, the applicant fully consider the references in their entirety as potentially teaching all or part of the claimed invention, as well as the context of the passage as taught by the prior art or disclosed by the examiner.
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
CLAIM INTERPRETATION
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Such claim limitation(s) is/are: “an output section configured to: identify …”, in claim 27, “the output section is configured to display …”, in claim 28, and “an output section configured to: identify …”, in claim 29.
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof, refer to e.g. Fig. 1, para [0023, 0192, 0196, 0198, 0200] that discloses a generic computer. According to MPEP § 2181(II)(B), a generic computer does not provide sufficient structure, an algorithm needs to be disclosed as well.
If applicant does not intend to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
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 27-29 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 pre-AIA the applicant regards as the invention.
Claim 27 recites “an output section …", the instant spec discloses generic computer as the structure, but does not disclose any algorithm, therefore, the claim is indefinite, see MPEP § 2181(II)(B). claim 28 is rejected for the same reason because it depends from claim 27, and it itself recites “the output section …”.
Claim 29 recites “an output section …”, for similar reason for the rejection of claim 27, this claim is indefinite.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 27-29 are rejected under 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for pre-AIA the inventor(s), at the time the application was filed, had possession of the claimed invention. Claim 27 recites limitations further define the system of claim 11, the limitation, “an output section configured to: identify …" invoke 112 (f) as set forth above. The spec only discloses a generic computer, see, e.g. para [0023], which is not sufficient structure without disclosing an algorithm. See MPEP § 2181(II)(B). Claim 28 is rejected for the same reason because it depends from claim 27 and the claim itself recites “the output section …”.
Claim 29 all recites “an output section configured to: identify …”, for similar reason for the rejection of claim 27, this claim is failing to comply with the written description requirement.
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 11-14, 20-22, and 27-29 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more.
With respect to claim 20, This claim is within at least one of the four categories of patent eligible subject matter as it is directed to a method claim under Step 1.
Under Prong 1, Step 2A:
However, the limitations of claim 20,
“registering, […], node data representing function nodes and edge data representing inter-function relationships based on document information;
registering node data representing a test item node and edge data representing a
registering node data representing a source code node for [[a]]source codeof software;
reading generated when a test item is executed, the execution trace information indicating a source code executed in association with the executed test item
identifying , based on the execution trace information, the test item node and the source code node corresponding to the executed source [[-]]code
identifying, based on previously registered edge data between the test [[- ]]item[[-to-]] node and the function and
indicated by the execution trace information differs from source-code information already associated in the graph database with the associated function node, updating graph information stored in the graph database so that the associated function node;is associated with the source [[-]]code nodecorresponding to the source [[-]]code indicated by the execution trace information.”
as drafted, are functions that, under its broadest reasonable interpretation, recite the abstract idea of a mental process. The limitations encompass a human mind carrying out the functions through observation, evaluation, judgment and /or opinion, or even with the aid of pen and paper. e.g. human can manually perform the registering, reading, identifying, and updating processes as defined in the claim. Thus, these limitations recite and fall within the “Mental Processes” grouping of abstract ideas under Prong 1 Step 2A.
Under Prong 2, Step 2A:
The judicial exception is not integrated into a practical application. The claim recites the following additional elements
“a graph database”, “a processor”,
Wherein the graph database and the processor are cited as a generic computer/software components, do not integrate the judicial exception into a practical application. Refer to MPEP 2106.05(f).
Under Step 2B:
The claim does not include additional elements that are sufficient to amount to significantly more than the judicial exception. As discussed above with respect to integration of the abstract idea into a practical application, the additional elements, the graph database and the processor are cited as a generic computer components, do not integrate the judicial exception into a practical application, and do not amount to significantly more. Refer to MPEP 2106.05(f). Accordingly, the claim does not appear to be patent eligible under 35 USC 101.
With respect to claim 11, This claim is within at least one of the four categories of patent eligible subject matter as it is directed to a system claim under Step 1.
This claim recites a system to implement the method that is disclosed in claim 20 and therefore recites the same abstract idea as claim 20, please see the office action analysis regarding claim 20.
Claim 11 recites more additional elements, i.e. “a development assistance system”, “a memory”, and “receive execution trace information generated [[by]] when a test item is executed, the execution trace information comprisinga source code executed in association with the executed test item;” that are not recited in claim 20. However, “a development assistance system”, and “a memory” are cited as generic computer components, do not integrate the judicial exception into a practical application, and do not amount to significantly more. Refer to MPEP 2106.05(f). the “receive …” is insignificant extra-solution activity which is recognized as well‐understood, routine, and conventional functions. See MPEP 2106.05(d) II, Symantec for receiving and transmitting data. Accordingly, even viewed as whole, the claim does not appear to be patent eligible under 35 USC 101.
With respect to claim 12, “wherein the processor is further configured to , when the source-code information indicated by the execution trace information differs from source-code information already associated with the identified function node in the graph database, delete edge information representing an existing edge between the identified function node and a first source code node and generate edge information representing an edge between the identified function node and a second source code node corresponding to the source code indicated by the execution trace information.” as drafted, are processes that, under its broadest reasonable interpretation, cover performance of the limitation in the mind but for the recitation of a generic computer component of a processor. That is, other than reciting “the processor” nothing in the claim elements precludes the steps from practically being performed in the mind. For example, but for “the processor” language, human can manually make the decision “when the source-code information indicated by the execution trace information differs from source-code information …”, can manually perform “delete edge information …” and “generate edge information …” processes as defined in the claim. And “the processor” is cited as generic computer component, does not integrate the judicial exception into a practical application, and does not amount to significantly more.
With respect to claim 13, “wherein the processor is further configured to:
extract, from the document information, a word or phrase representing a function and register a corresponding function node;
extract inter-function relationships from the document information and register edges representing the extracted relationships; and
register a similarity edge between two function nodes based on similarity of the extracted word or phrase.” as drafted, are processes that, under its broadest reasonable interpretation, cover performance of the limitation in the mind but for the recitation of a generic computer component of the processor. That is, other than reciting “the processor” nothing in the claim elements precludes the steps from practically being performed in the mind. For example, but for “the processor” language, human can manually perform extracting and registering of the information in the claim elements with aid of pencil and paper. And the “the processor” is cited as a generic computer component, does not integrate the judicial exception into a practical application, and does not amount to significantly more.
With respect to claim 14, “wherein similarity between first and second function nodes is determined ased on similarity [[from]]between words or phrases representing the [[(ii)]]second function nodes and similarity between respective source codes associated with the first and second function nodes.” as drafted, is a process that, under its broadest reasonable interpretation, covers performance of the limitation in the mind but for the recitation of a generic computer component of the processor. That is, other than reciting “the processor” nothing in the claim element precludes the step from practically being performed in the mind. For example, but for “the processor” language, human can manually determine similarity between two function nodes as defined in the claim. And “the processor” is cited as a generic computer component, does not integrate the judicial exception into a practical application, and does not amount to significantly more.
With respect to claim 21, This claim is within at least one of the four categories of patent eligible subject matter as it is directed to a non-transitory computer-readable medium claim under Step 1.
This claim recites a non-transitory computer-readable medium to implement the method that is disclosed in claim 20 and therefore recites the same abstract idea as claim 20, please see the office action analysis regarding claim 20.
Claim 21 recites one more additional element, i.e. “a non-transitory computer-readable medium”, that is not recited in claim 20. However, the medium is cited as a generic computer component, does not integrate the judicial exception into a practical application, and does not amount to significantly more. Refer to MPEP 2106.05(f). Accordingly, even viewed as whole, the claim does not appear to be patent eligible under 35 USC 101.
With respect to claim 22, “wherein the graph database stores, in association with an edge between the identified function node and the source code node corresponding to the source code indicated by the execution trace information, information indicating that the association was obtained based on the execution trace information.” as drafted, is merely indicating a field of use or technological environment in which to apply a judicial exception, and does not amount to significantly more than the exception itself, and cannot integrate a judicial exception into a practical application. See MPEP § 2106.05(h).
With respect to claim 27, “further comprising an output section configured to: identify, based on information input via a user interface regarding a function to be searched for, node information on the function from the function nodes registered in the graph database; identify a source code node associated with the function node based on graph information stored in the graph database; and output information representing source code of the identified source code node.”, as drafted, is a process that, under its broadest reasonable interpretation, covers performance of the limitation in the mind but for the recitation of a generic computer component of an output section. That is, other than reciting “an output section” nothing in the claim element precludes the step from practically being performed in the mind. For example, but for “an output section” language, human can manually identify node information as defined in the claim, and can manually identify a source code node as defined in the claim. “an output section” is cited as a generic computer/software component, does not integrate the judicial exception into a practical application, and does not amount to significantly more. And “output information … ” is insignificant extra-solution activity such as transmitting data which is recognized as well‐understood, routine, and conventional functions. See MPEP 2106.05(d) II, Symantec for receiving and transmitting data.
With respect to claim 28, “wherein node information on the source code node includes storage destination information representing a destination in which the source code is stored, and the output section is configured to display information representing the source code of the identified source code node on a display device and, when the displayed information is selected, display the source code on the display device based on the storage destination information.” as drafted, is merely indicating a field of use or technological environment in which to apply a judicial exception, and does not amount to significantly more than the exception itself, and cannot integrate a judicial exception into a practical application. See MPEP § 2106.05(h). Further, the output section and display device are cited as a generic computer/software components, do not integrate the judicial exception into a practical application, and do not amount to significantly more.
With respect to claim 29, “further comprising an output section configured to: identify, based on information input via a user interface regarding a test item to be searched for, node information on the test item from the test item nodes registered in the graph database; identify a function node associated with the test item node based on graph information stored in the graph database; identify a source code node associated with the test item node based on graph information stored in the graph database; and display the test item node, the function node, and the source code node in association with one another on a display device.” as drafted, is a process that, under its broadest reasonable interpretation, covers performance of the limitation in the mind but for the recitation of a generic computer component of an output section. That is, other than reciting “an output section” and “a display device” nothing in the claim element precludes the step from practically being performed in the mind. For example, but for “an output section” language, human can manually identify node information as defined in the claim, and can manually identify a function node as defined in the claim, and can manually identify a source code node as defined in the claim. “an output section” and “a display device” are cited as a generic computer/software components, do not integrate the judicial exception into a practical application, and do not amount to significantly more. And “display … ” is insignificant extra-solution activity such as transmitting data which is recognized as well‐understood, routine, and conventional functions. See MPEP 2106.05(d) II, Symantec for receiving and transmitting data.
Response to Arguments
Applicant's arguments with respect to 101 abstract idea rejections filed 5/15/2026 have been fully considered but they are not persuasive.
At p21 second paragraph of the Remarks, Applicant argued that “… That is a specific asserted improvement in the operation of a computerized traceability tool, not a claim to mere "organizing information."”
Examiner respectfully disagrees, because, ingesting execution trace information, resolving trace-indicated source code to graph nodes, identifying associated function nodes, and updating graph information are all mental processes as human can manually perform these processes. The processor-coupled system that maintains a machine-stored graph database is merely using a computer and software as tools to implement the identified abstract idea on a computer system. The processor, database, and the computer system are cited as generic computer/software components, do not integrate the judicial exception into a practical application, and do not amount to significantly more. Thus, claims are abstract idea without significantly more.
At p21 last to p22 second paragraphs of the Remarks, Applicant argued that “I. The Current Rejection Does Not Track the Claims Now Pending”.
Examiner respectfully disagrees, because, as set forth in the office action above, the amended claims are analyzed and rejected under 35 USC 101, these arguments are moot.
At p22 last to p25 first paragraphs of the Remarks, Applicant argued that “II. The Pending Claims Are Not "Directed To" a Mental Process Under Step 2A, Prong One”. Particularly, at p22 last to p23 first paragraph of the Remarks, Applicant argued that “… Those are not claims to a human opinion, judgment, or categorization. They are claims to a specific machine-implemented graph-maintenance workflow driven by software execution traces.”
Examiner respectfully disagrees, because, as explained above, and as set forth in the office action, the registering function nodes, test-item nodes, …, identifying graph nodes …, identifying a function node …, and updating graph information …, are mental processes as human can manually perform these processes. Although these processes are not untethered to technology, the cited processor and the graph database are cited as generic computer/software components, do not integrate the judicial exception into a practical application, and do not amount to significantly more. The receiving execution trace information … is insignificant extra-solution activity such as receiving data which is recognized as well‐understood, routine, and conventional functions. See MPEP 2106.05(d) II, Symantec for receiving and transmitting data.
At p23 second paragraph of the Remarks, Applicant argued that “… These are computer-centric operations performed on machine-maintained graph data structures using execution traces generated by test execution; they are not merely the automation of a fundamental human practice.”
Examiner respectfully disagrees, because, as explained above, and as set forth in the office action, although there is a technical workflow, the processes in the workflow are mental processes without significantly more. The registering function nodes, test-item nodes, …, identifying the test item nodes …, registering and updating graph information … , analyzing acquired information, extracting and comparing data, and updating graph database, are mental processes as human can manually perform these processes. The system and the database are cited as generic computer/software components, do not integrate the judicial exception into a practical application, and do not amount to significantly more. The reading execution trace …, and acquiring execution trace information are insignificant extra-solution activity such as retrieving data which is recognized as well‐understood, routine, and conventional functions. See MPEP 2106.05(d) II, Versata Dev. Group, Inc. v. SAP Am., Inc. for retrieving and storing data.
At p24 first paragraph of the Remarks, Applicant cited court cases and argued that “… The amended claims here fit that side of the line. They do not claim the result "improve traceability" at a high level. They claim a specific architecture and sequence: maintain software artifacts as graph nodes and edges, …, and update stored graph information when runtime evidence conflicts with the preexisting association.”
Examiner respectfully disagrees, because, Enfish, LLC v. Microsoft corp. and McRO, Inc. v. Bandai Namco Games America Inc. cited by the Applicant are not applicable here. For Enfish, its self-referential data table was a data table of the memory controller of the computer itself and thus the improvement was to the computer itself. For McRO, the animation is not automation of a manual task, the improved animation
process can not be performed by human. Because no evidence that previous animation process is the same as that in McRo. The instant claims do not recite any feature similar to those of Enfish and/or McRO. The sequence of processes in the instant claims, i.e. “maintain software artifacts as graph nodes and edges, use execution-trace information generated during testing, resolve trace-indicated source code and test-item nodes, identify an associated function node via previously registered graph relationships, and update stored graph information when runtime evidence conflicts with the preexisting association.” are mental processes as human can manually perform these processes.
At p24 last to p25 first paragraph of the Remarks, Applicant argued that “The Office also states that a human could "manually" create a graph and perform the claimed steps with pen and paper. Office Action, 5-7. That characterization is too generalized to be a proper Step 2A analysis. Under the claims as amended, the processor must maintain and update a machine-stored graph database in response to execution trace information generated when a test item is executed, and must modify stored graph associations to reflect runtime-derived source-code information. A hypothetical human abstraction of isolated claim verbs does not answer the real inquiry, which is what the claims are directed to as a whole. The claims as a whole are directed to a computer-implemented traceability-correction mechanism rooted in software execution and graph-data maintenance, not to a mental process. See Al Visualize, Inc. v. Nuance Commc'ns, Inc., 97 F.4th 1371, 1378 (Fed. Cir. 2024); Enfish, 822 F.3d at 1335.”
Examiner respectfully disagrees, because, as explained above, and as set forth in the office action, maintaining and updating graph in response to execution trace information generated when a test item is executed, and modifying graph association to reflect runtime-derived source-code information are mental processes as human can manually perform these processes. The processor and the graph database are merely used as tools to implement the identified abstract idea. Thus, even viewed as a whole, the claims do not appear to be patent eligible under 35 USC 101.
At p25 second to p27 first paragraphs of the Remarks, Applicant argued that “III. Even If the Claims Were Considered to Recite an Abstract Idea, They Are Integrated Into a Practical Application Under Step 2A, Prong Two”. Particularly at p25 last to p26 first paragraph of the Remarks, Applicant argued that “That is the case here. The present claims are not limited to collecting and displaying information. They require a graph database storing software-artifact nodes and edges, a processor coupled to that graph database, and a runtime-driven correction workflow that changes the stored graph relationships to reflect actual software behavior observed during test execution. Present Application, 44-52, 61-63, 137-139. The resulting graph is not merely a record of human thought; it is the operative data structure through which the system maintains and corrects traceability relationships among software documentation, tests, and source code. That is a practical application in the technical field of software-development support systems.”
Examiner respectfully disagrees, because, as explained above, and as set forth in the office action above, the graph database and the processor are cited as generic computer/software components, do not integrate the judicial exception into a practical application, and do not amount to significantly more. The runtime-driven correction workflow that changes the stored graph relationship to reflect actual software behavior observed during test execution is mental process as human can manually change the stored graph relationship. Thus the claims recite abstract idea of mental processes, and the additional elements do not integrate the judicial exception into a practical application.
At p26 second paragraph of the Remarks, Applicant argued that “The Office asserts that updating a machine-stored graph is merely "storing data" and therefore insignificant extra-solution activity. Office Action, 6-7. Respectfully, that overgeneralizes the claims and ignores their operative structure. The update of graph information is not a post-solution appendage; it is the core of the claimed improvement. …. It is part of the practical application itself, not extra-solution activity. Present Application, 63,137-139.”
Examiner respectfully disagrees, because, updating a graph is mental process as human can manually perform the updating. Storing graph into a database is insignificantly extra-solution activity such as retrieving and storing data which is recognized as well‐understood, routine, and conventional functions. See MPEP 2106.05(d) II, Versata Dev. Group, Inc. v. SAP Am., Inc. for retrieving and storing data. As explained above, the claims recite abstract idea of mental processes, and the additional elements do not integrate the judicial exception into a practical application.
At p26 last to p27 first paragraph of the Remarks, Applicant argued that “Claims 27-29 reinforce that practical application. They recite output-section operations that query the graph database to identify functions, test items, and associated source-code nodes and then output or display the results in specific ways, including use of storage destination information to display source code based on the stored destination. …. That is further evidence of integration into a practical application.”
Examiner respectfully disagrees, because, as set forth in the office action above, the output section and software-development interface are cited as a generic computer/software components, do not integrate the judicial exception into a practical application, and do not amount to significantly more. querying the graph database is insignificant extra-solution activity such as retrieving data which is recognized as well‐understood, routine, and conventional functions. See MPEP 2106.05(d) II, Versata Dev. Group, Inc. v. SAP Am., Inc. for retrieving and storing data. Output and/or display the result or source code is insignificant extra-solution activity such as transmitting data which is recognized as well‐understood, routine, and conventional functions. See MPEP 2106.05(d) II, Symantec for receiving and transmitting data. The storage destination information is merely indicating a field of use or technological environment in which to apply a judicial exception, and does not amount to significantly more than the exception itself, and cannot integrate a judicial exception into a practical application. See MPEP § 2106.05(h). Thus, these additional elements do not integrate the judicial exception into a practical application.
At p27 second to p29 first paragraphs of the Remarks, Applicant argued that “IV. The Claims Also Recite "Significantly More" Under Step 2B”. Particularly, at p27 last to p28 first paragraph of the Remarks, Applicant argued that “The current claims require a particular combination of elements and operations: a single graph database storing nodes and edges for multiple types of software artifacts; … That ordered combination is far more specific than a generic instruction to compare information and store the result.”
Examiner respectfully disagrees, because, although the combination of the claim elements is specific, each element is either mental process, generic computer/software component, or insignificant extra-solution activity. These elements do not amount to significantly more.
At p28 second paragraph of the Remarks, Applicant argued that “The dependent claims add further structure. Claim 12 requires deleting edge information representing an existing edge and generating edge information representing a different edge when the execution-trace-derived source-code information differs from the prior association, which mirrors the detailed graph-correction flow in the specification. Present Application, 11 137-139. Claim 22 requires the graph database to store, in association with the updated edge, information indicating that the association was obtained from execution trace information, thereby preserving provenance within the machine-maintained graph structure. Present Application, 11 52, 63, 137-139. Claims 27-29 recite specific graph-query and source-code-output operations tied to user-input function or test-item
searches. Present Application, 11 149-156. Considered as an ordered whole, these claims recite concrete technological mechanisms, not a token computer environment wrapped around an abstraction.”
Examiner respectfully disagrees, because, deleting edge information of claim 12 is mental process as human can manually perform the task. Storing data/information of claim 22 is insignificant extra-solution activity and is recognized as well‐understood, routine, and conventional functions. See MPEP 2106.05(d) II, Versata Dev. Group, Inc. v. SAP Am., Inc. for retrieving and storing data. Graph-query is like reading/retrieving data which is insignificant extra-solution activity and is recognized as well‐understood, routine, and conventional functions. See MPEP 2106.05(d) II, Versata Dev. Group, Inc. v. SAP Am., Inc. for retrieving and storing data. Source-code-output is like transmitting data which is recognized as well‐understood, routine, and conventional functions. See MPEP 2106.05(d) II, Symantec for receiving and transmitting data. These claim elements are either mental processes or insignificant extra-solution activities, even viewed as whole, they do not amount to significantly more.
At p28 last to p29 first paragraph of the Remarks, Applicant argued that “The Office also suggests that Enfish, McRO, and Finjan are inapplicable. Office Action, 6-7. Applicant does not rely on those decisions for a one-to-one factual match. Rather, the cases are relevant for the governing principle that claims are eligible where they are directed to a specific improvement in computer functionality or to a specific rule-constrained technological implementation, rather than to a result-oriented abstraction. In Finjan, Inc. U. Blue Coat Systems, Inc., for example, the court emphasized the significance of a non-generic data structure carrying functional, security-relevant semantics. Finjan, Inc. U. Blue Coat Sys., Inc., 879 F.3d 1299, 1303-05 (Fed. Cir. 2018). Here, the amended claims likewise recite a specific graph-based architecture and a specific execution-trace-driven correction workflow that constrains how the development assistance system stores and updates artifact relationships.”
Examiner respectfully disagrees, because, like Enfish and McRO, Finjan case is also not applicable here. For Finjan, the “behavior-based” approach to virus scanning is distinguished from traditional, “code-matching” virus scans that are limited to recognizing the presence of previously-identified viruses, typically by comparing the code in a downloadable to a database of known suspicious code. The instant claims do not recite ant feature similar to those of Finjan. As explained above, following 2019 PEG guide lines, these claim elements are either mental processes or insignificant extra-solution activities, even viewed as whole, they do not amount to significantly more.
At p29 second to p32 first paragraphs of the Remarks, Applicant argued that “V. Additional Support from Precedential PTAB Guidance: Ex parte Desjardins”. Particularly, at p30 second paragraph of the Remarks, Applicant argued “That reasoning applies here. The pending claims are not directed merely to abstract "association" or "comparison." Rather, they recite a specific graph-based software-development system in which a processor coupled to a single graph database registers distinct software-artifact node types and edge types, …. Those limitations reflect the disclosed technological improvement: relationships between functions and source code that were not extracted earlier are complemented and corrected based on actual software operation, thereby improving computerized traceability among software documentation, tests, and source code. ...”
Examiner respectfully disagrees, because, as explained above, the graph-based software-development system, the processor and the graph database are cited as generic computer/software components. Registering …, identifying…, updating …, are mental processes as human can manually perform these tasks. Receiving… is insignificant extra-solution activity. Thus, these elements do not integrate the judicial exception into a practical application, i.e. do not reflect technological improvement, and do not constitute an inventive concept.
At p30 last to p31 first paragraph of the Remarks, Applicant argued “Like the claims found eligible in Desjardins, the present claims reflect a disclosed improvement in the operation of the claimed computer-implemented system itself, … Here, too, the claims reflect the disclosed improvement itself: the graph database is not incidental, and the graph update is not mere post-solution storage. ... Under Desjardins, that is the proper level of analysis.”
Examiner respectfully disagrees, because, Desjardins case is not applicable here. For Desjardins, training a machine learning model to learn new tasks while protecting knowledge about previous tasks to overcome the problem of “catastrophic forgetting” encountered in continual learning systems reflects the improvement. The instant claims do not recite any feature similar to those of Desjardins. As explained above, even viewed as a whole, these elements do not integrate the judicial exception into a practical application, i.e. do not reflect technological improvement, and do not constitute an inventive concept.
At p31 second paragraph of the Remarks, Applicant argued that “Desjardins is especially instructive because it also reaffirmed that the Office should focus on whether the claim reflects the disclosed improvement, not merely whether the specification recites benefits in the abstract. …. The present claims do exactly that. …. Thus, even if some sub-aspect of the claims could be characterized as involving comparison or association, the claims as a whole are not "directed to" an abstract idea; they integrate any such concept into a practical application under Step 2A, Prong Two. See Ex parte Desjardins, Appeal 2024-000567, at 7-10 (P.T.A.B. Nov. 4, 2025) (precedential).”
Examiner respectfully disagrees, because, as explained above, following the 2019 PEG guide lines, the processes/elements do not integrate the judicial exception into a practical application, i.e. do not reflect technological improvement, and do not constitute an inventive concept.
At p32 first paragraph of the Remarks, Applicant argued that “This is particularly so because, as in Desjardins, the present case no longer turns on prior art. The Office has already withdrawn the art rejection, and the present § 101 rejection is therefore functioning as the sole obstacle to claims that are otherwise novel and nonobvious on the current record. Office Action, 1. Desjardins cautions against using § 101 at an unduly generalized level where the claim reflects a concrete technological implementation and where the traditional patentability provisions remain the appropriate tools for defining proper scope. Ex parte Desjardins, Appeal 2024-000567, at 9-10 (P.T.A.B. Nov. 4, 2025) (precedential). That guidance strongly supports withdrawal of the present § 101 rejection.”
Examiner respectfully disagrees, because, art rejections and 101 abstract idea rejections are independent of each other. The 101 rejections of the office action follow the 2019 PEG guide lines, the additional elements do not integrate the judicial exception into a practical application and do not constitute an inventive concept.
At p32 last to p33 first paragraph of the Remarks, Applicant argued “VI. The Examiner's Own Framing Further Shows Why the Current Rejection Should Be Withdrawn”. “The Office expressly states that it withdrew the art rejection, while maintaining only the § 101 rejection against the then-pending claims. …. Where, as here, the prior-art rejection has been withdrawn and the claims are specifically directed to a disclosed technical implementation, § 101 should not be used to collapse that implementation into an abstract "mental process" by describing it only at the level of verbs such as "register," "read," or "compare." That is precisely the kind of overgeneralization criticized by Desjardins, and it is inconsistent with the Federal Circuit's repeated instruction to examine the character of the claims as a whole. AI Visualize, 97 F.4th at 1378; Enfish, 822 F.3d at 1335; Ex parte Desjardins, Appeal 2024-000567, at 9-10 (P.T.A.B. Nov. 4, 2025) (precedential).”
Examiner respectfully disagrees, because, as explained above, art rejections and 101 abstract idea rejections are independent of each other. Following 2019 PEG guide lines, the amended claims are still abstract idea without significantly more, the 101 abstract idea rejections are maintained.
The arguments in section VII. Conclusion at p33 second to p34 first paragraphs of the Remarks are already addressed/explained above in various paragraphs.
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.
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/ZENGPU WEI/
Examiner, Art Unit 2197
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