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 .
2. The following is a Non-Final Office action in response to pre-appeal filed on 02/23/2026.
Examiner notes
Examiner has cited particular columns, line numbers, references, or figures in the references applied to the claims above for the convenience of the applicant. Although the specified citations are representative of the teachings of passages and figures may apply as well. It is respectfully requested from the applicant in preparing responses to fully consider the reference in entirety, as potentially teaching all or part of the claimed invention. See MPEP § 2141.02 VI and 2123.
The examiner requests, in response to this Office action, support be shown for language added to any original claims on amendment and any new claims. That is, indicate support for newly added claim language by specifically pointing to page(s) and line number(s) in the specification and/or drawing figure(s). This will assist the examiner in prosecuting the application.
When responding to this office action, Applicant is advised to clearly point out the patentable novelty which he or she thinks the claims present, in view of the state of the art disclosed by the references cited or the objections made. He or she must also show how the amendments avoid such references or objections See 37 CFR 1.111 (c).
Response to Amendments and Arguments
With respect to the rejection of claims under 35 USC 101, applicant argues that the claimed subject matter is patent eligible because it recites a practical technical solution to a technical problem and specifies the "how" by which the solution is achieved, namely, the use of reusable software modules and a specific set of configurable application construction tools to reduce storage requirements and redundancy of the traditional manual coding. Applicant further argues eligibility and compares instant application with Enfish and Ex parte Desjardins (Pre-Appeal Brief Remarks page 2)
Examiner respectfully disagrees. Claims are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more. The claim recites analyzing, by the at least one processor, each respective criterion from among the plurality of criteria, and identifying, by the at least one processor based on a result of the analyzing, “a plurality of reusable component software modules to construct the application by virtue of the reusable software modules satisfying at least one criterion from among the plurality of criteria.
The limitation of selecting at least one of the application construction tools; and constructing the application, as drafted, is a process that, under its broadest reasonable interpretation, covers performance of the limitation in the mind but for the recitation of generic computer components. That is, other than reciting “by a processor,” nothing in the claim element precludes the step from practically being performed in the mind. For example, but for the “by a processor” analyzing, “identifying” and “selecting” in the context of this claim encompasses the user manually plurality of criteria. Similarly, the limitation of identifying the reusable component software module based on the identifying satisfying at least one criterion from among the plurality of criteria and selectin of the application construction tools, as drafted, is a process that, under its broadest reasonable interpretation, covers performance of the limitation in the mind but for the recitation of generic computer components. For example, but for the “by a processor” respective criterion from among the plurality of criteria, “identifying” in the context of this claim encompasses the a plurality of reusable component software modules to construct the application by virtue of the reusable software modules satisfying at least one criterion from among the plurality of criteria. If a claim limitation, under its broadest reasonable interpretation, covers performance of the limitation in the mind but for the recitation of generic computer components, then it falls within the “Mental Processes” grouping of abstract ideas. Accordingly, the claim recites an abstract idea.
This judicial exception is not integrated into a practical application. In particular, the claim only recites additional element – using a processor to perform both analyzing and identifying steps. The processor in both steps is recited at a high-level of generality (i.e., as a generic processor performing a generic computer function of analyzing information based on a identified reusable component) such that it amounts no more than mere instructions to apply the exception using a generic computer component. Accordingly, this additional element does not integrate the abstract idea into a practical application because it does not impose any meaningful limits on practicing the abstract idea. The claim is directed to an abstract idea.
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 element of using a processor, memory, interface configure to perform apply a business rule based on received user input; a checklist manager to display a checklist that includes information that relates to status and/or progress toward completion with respect to a task that a user is performing steps amounts to no more than mere instructions to apply the exception using a generic computer component. Mere instructions to apply an exception using a generic computer component cannot provide an inventive concept. Applicant specification par. 0015 discloses “the task to be performed may include making a determination that relates to at least one from among a commercial banking function and an investment banking function.” Further par. 0057, “one or more processors, a memory, and a communication interface, which are coupled together by a bus or other communication link, although other numbers and/or types of network devices may be used. The server devices 204(1)-204(n) in this example may process requests received from the CWAC device 202 via the communication network(s) 210 according to the HTTP-based and/or JavaScript Object Notation (JSON) protocol, for example, although other protocols may also be used. That demonstrates the well-understood, routine, conventional nature of additional elements when it describes the additional element(s) as conventional (or an equivalent term); as a commercially available product; or, in a way that shows the element is widely prevalent or in common use; These express statement in the specification support a finding that the recitations are well-understood routine, and conventional. Therefore, none of the additional elements recite an inventive concept, thus, the claimed invention is patent ineligible under 35 USC 101.
With respect to the rejection of claims under 35 USC 101, applicant further argues that the application discloses a technical problem and solution . (Pre-Appeal Brief Remarks page 3-5)
Examiner respectfully disagrees. the receiving code information analyzing and identify, based on a result of the analysis, a plurality of reusable component software modules to construct the application by virtue of the reusable software modules satisfying at least one criterion from among the plurality of criteria that is necessary for use of the recited judicial exception, as obtained information is used in the abstract mental process of comparing and analyzing/evaluating. Executing executable code is recited at a high level of generality. Maintaining, analyzing, identifying and executing code insignificant extra-solution activity (see MPEP 2106.05(g)) and amount to mere data output (see MPEP 2106.05(g)).
Accordingly, these additional elements do not integrated the abstract idea into a practical application because they do not include additional elements that are sufficient to amount to significant more that the judicial exception. As discussed above with respect to integration of the abstract idea into a practical application, the additional elements a memory and a processor amount to no more than mere instruction to apply the judicial exception on computer (see MPEP 2106.05(f)).
With respect to the rejection of claims under 35 USC 101, applicant further argues that practical technical improvement achieved by the claimed mythology. (Pre-Appeal Brief Remarks page 5)
Examiner respectfully disagrees. The judicial exception is not integrated into a practical application. In particular, the claim recites a processor; a memory; a display; and a communication interface for maintain a plurality of application construction tools and received user input; a checklist manager to display a checklist that includes information that relates to status and/or progress toward completion with respect to a task that a user is performing. 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 a memory, display, and a processor amount to no more than mere instructions to apply the exception using generic computer components. Mere instructions to apply an exception using generic computer components cannot provide an inventive concept. The application programming interface, as discussed above, represents mere retrieving data and is insignificant extra solution activity. The "displaying" limitation, as discussed above, represents mere data output and is a nominal or tangential addition to the claim. Further, the identified plurality of reusable component software modules and other software modules are well-understood, routine and conventional.
Applicant offers no other arguments beyond arguing allowability for the reasons cited for the independent claim(s) or dependence upon said claims. These arguments are considered met.
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 1-5, 7, 9-14, 16, and 18-20 are rejected under 35 U.S.C. 101 because the claimed invention is directed to non-statutory subject matter.
Step 1: Claims 1-5, 7, and 9 are directed to computer implemented methods, claims 10-14, 16, and 18 are directed to apparatus, and claims 19-20 are directed to a medium and fall within the statutory categories. Therefore, “Are the claims to a process, machine, manufacture or composition of matter?” Yes.
Analysis of Step 2A Prong 1:
Claim 1: The claim limitations “analyzing, application by virtue of the reusable software modules satisfying at least one criterion from among the plurality of criteria;” and “selecting at least one of the application construction tools; and constructing the application;” are functions that can be reasonably carried out in the human mind with the aid of pen and paper, through observation, evaluation, judgment, opinion, thus it is reasonable to identify these limitation as reciting a mental process.
Analysis of Step 2A Prong 2:
Claim 1: The additional elements recited in the claim do not integrate the judicial exception into a practical application. In particular, the claim recites the following additional elements – “first receiving, by the at least one processor from a user, a plurality of criteria that relate to a task to be performed by executing an application to be constructed;” and “transmitting, by the at least one processor to the user, information that relates to constructing the application by using each of the identified plurality of reusable component software modules” merely recite insignificant extra solution activity such as gathering, displaying, updating, transmitting and storing data which does not integrate the judicial exception into a practical application. See MPEP 2106.05(g). Thus, they do not integrate the judicial exception into a practical application. Further, additional elements of “ maintaining a plurality of application construction tools, comprising: a configurable forms engine programmed to generate a configurable form based on the received user input; a configurable business rules component to apply a business rule based on received user input; a checklist manager to display a checklist that includes information that relates to status and/or progress toward completion with respect to a task that a user is performing; a configurable workflow component to display a workflow modeler that includes drag-and-drop icons that are usable for constructing an application; a data dictionary component which serves as a single source of true information for all metadata for constructing an application; a configurable data services component to display data service application programming interfaces (APIs) that are designed to facilitate saving and/or retrieving data; a task manager to establish task routing, task counts, task organization for teams, and data segregation; and
Therefore, “Do the claims recite additional elements that integrate the judicial exception into a practical application? No, these additional elements do not integrate the abstract idea into a practical application and they do not impose any meaningful limits on practicing the abstract idea. The claim is directed to an abstract idea.
Analysis of Step 2B:
Claim 1: the additional elements by the at least one processor based on a result of the analyzing ... using the selected ones of the application construction tools along with a combination of the identified plurality of reusable component software modules and other software modules merely recite instructions to implement an abstract idea on a generic computer, or merely uses a generic computer or computer components as a tool to perform the abstract idea, thus does not amount to significantly more than the judicial exception under Step 2B. See MPEP 2106.05(f). For the limitation first receiving, by the at least one processor from a user, … transmitting, by the at least one processor to the user, information that relates to constructing the application by using each of the identified plurality of reusable component software modules, the courts have identified functions such as gathering, displaying, updating, transmitting and storing data as well-understood, routine, conventional activity, thus do not amount to significantly more than the judicial exception. See MPEP 2106.05(d). Applicant specification par. 0015 discloses “the task to be performed may include making a determination that relates to at least one from among a commercial banking function and an investment banking function.” That demonstrates the well-understood, routine, conventional nature of additional elements when it describes the additional element(s) as conventional (or an equivalent term); as a commercially available product; or, in a way that shows the element is widely prevalent or in common use; The additional element is identified as insignificant extra solution activity which do not fall under the gathering, displaying, updating, transmitting and storing data.
Therefore, none of the additional elements recite an inventive concept, thus, the claimed invention is patent ineligible under 35 USC 101.
Having concluded analysis within the provided framework, Claim 1 do not recite patent eligible subject matter under 35 U.S.C. § 101.
Analysis of Step 2A Prong 1:
Claim 10: The claim limitations “analyze, each respective criterion from among the plurality of criteria” , “identify, based on a result of the analysis, a plurality of reusable component software modules to construct the application by virtue of the reusable software modules satisfying at least one criterion from among the plurality of criteria;” , “selecting at least one of the application construction tools; and constructing the application;” are functions that can be reasonably carried out in the human mind with the aid of pen and paper, through observation, evaluation, judgment, opinion, thus it is reasonable to identify these limitation as reciting a mental process.
Analysis of Step 2A Prong 2:
Claim 10: The additional elements recited in the claim do not integrate the judicial exception into a practical application. In particular, the claim recites the following additional elements – “first receive from a user via the communication interface, a plurality of criteria that relate to a task to be performed by executing an application to be constructed;” and “transmit, to the user via the communication interface, information that relates to constructing the application by using each of the identified plurality of reusable component software modules;” merely recite insignificant extra solution activity such as gathering, displaying, updating, transmitting and storing data which does not integrate the judicial exception into a practical application. See MPEP 2106.05(g). Thus, they do not integrate the judicial exception into a practical application. Further, additional elements of “a processor; a memory; a display; and a communication interface coupled to each of the processor, the memory, and the display, wherein the processor is configured to: maintain a plurality of application construction tools, comprising: a configurable forms engine programmed to generate a configurable form based on the received user input;
a configurable business rules component to apply a business rule based on received user input; a checklist manager to display a checklist that includes information that relates to status and/or progress toward completion with respect to a task that a user is performing; a configurable workflow component to display a workflow modeler that includes drag-and-drop icons that are usable for constructing an application; a data dictionary component which serves as a single source of true information for all metadata for constructing an application; a configurable data services component to display data service application programming interfaces (APIs) that are designed to facilitate saving and/or retrieving data; a task manager to establish task routing, task counts, task organization for teams, and data segregation; using the selected ones of the application construction tools along with a combination of the identified plurality of reusable component software modules and other software modules.” memory and processor are recited at high level of generality and recited so generally that they represent no more than mere instruction apply the judicial exception on computer (See MPEP 2106.05(f). Therefore, “Do the claims recite additional elements that integrate the judicial exception into a practical application? No, these additional elements do not integrate the abstract idea into a practical application and they do not impose any meaningful limits on practicing the abstract idea. The claim is directed to an abstract idea.. These limitations can also be viewed nothing more than an attempt to generally link the use of judicial exception to the technology environment of a computer (see MPEP 2106.05 (h)).
Analysis of Step 2B:
Claim 10: Those above identified additional elements do not amount to significantly more than the judicial exception since they merely define instructions to implement an abstract idea on a generic computer, or merely uses a generic computer component as a tool to perform an abstract idea, thus do not provide any inventive concept to the claimed invention. See MPEP 2106.05(f). The limitation of displaying and communication, the courts have identified functions such as gathering, displaying, updating, transmitting and storing data as well-understood, routine, conventional activity, thus do not amount to significantly more than the judicial exception. See MPEP 2106.05(d). Applicant specification par. 0015 discloses “the task to be performed may include making a determination that relates to at least one from among a commercial banking function and an investment banking function.” Further par. 0057, “one or more processors, a memory, and a communication interface, which are coupled together by a bus or other communication link, although other numbers and/or types of network devices may be used. The server devices 204(1)-204(n) in this example may process requests received from the CWAC device 202 via the communication network(s) 210 according to the HTTP-based and/or JavaScript Object Notation (JSON) protocol, for example, although other protocols may also be used. That demonstrates the well-understood, routine, conventional nature of additional elements when it describes the additional element(s) as conventional (or an equivalent term); as a commercially available product; or, in a way that shows the element is widely prevalent or in common use; These express statement in the specification support a finding that the recitations are well-understood routine, and conventional. See MPEP 2106(a)(III). Therefore, none of the additional elements recite an inventive concept, thus, the claimed invention is patent ineligible under 35 USC 101.
Having concluded analysis within the provided framework, Claim 10 do not recite patent eligible subject matter under 35 U.S.C. § 101.
Analysis of Step 2A Prong 1:
Claim 19: The claim limitations “analyze each respective criterion from among the plurality of criteria;” , “identify, based on a result of the analysis, a plurality of reusable component software modules to construct the application by virtue of the reusable software modules satisfying at least one criterion from among the plurality of criteria;” and “select at least one of the application construction tools; and construct the application;” are functions that can be reasonably carried out in the human mind with the aid of pen and paper, through observation, evaluation, judgment, opinion, thus it is reasonable to identify these limitation as reciting a mental process.
Analysis of Step 2A Prong 2:
Claim 19: The additional elements recited in the claim do not integrate the judicial exception into a practical application. In particular, the claim recites the following additional elements – “receive, from a user, a plurality of criteria that relate to a task to be performed by executing an application to be constructed;” and “transmit, to the user, information that relates to constructing the application by using each of the identified at least one reusable component software modules;” merely recite insignificant extra solution activity such as gathering, displaying, updating, transmitting and storing data which does not integrate the judicial exception into a practical application. See MPEP 2106.05(g). Thus, they do not integrate the judicial exception into a practical application. Further, additional elements of “A non-transitory computer readable storage medium storing instructions for facilitating a construction of an application, the storage medium comprising executable code which, when executed by a processor, causes the processor to: maintain a plurality of application construction tools, comprising: a configurable forms engine programmed to generate a configurable form based on the received user input; a configurable business rules component to apply a business rule based on received user input; a checklist manager to display a checklist that includes information that relates to status and/or progress toward completion with respect to a task that a user is performing; a configurable workflow component to display a workflow modeler that includes drag-and-drop icons that are usable for constructing an application; a data dictionary component which serves as a single source of true information for all metadata for constructing an application; a configurable data services component to display data service application programming interfaces (APIs) that are designed to facilitate saving and/or retrieving data; a task manager to establish task routing, task counts, task organization for teams, and data segregation;
using the selected ones of the application construction tools along with a combination of the identified plurality of reusable component software modules and other software modules.” merely recite instructions to implement an abstract idea on a generic computer, or merely uses a generic computer or computer components as a tool to perform the abstract idea, thus is not a practical application under Prong 2. See MPEP 2106.05(f). These limitations can also be viewed nothing more than an attempt to generally link the use of judicial exception to the technology environment of a computer (see MPEP 2106.05 (h)).
Therefore, “Do the claims recite additional elements that integrate the judicial exception into a practical application? No, these additional elements do not integrate the abstract idea into a practical application and they do not impose any meaningful limits on practicing the abstract idea. The claim is directed to an abstract idea.
Analysis of Step 2B:
Claim 19: Those above identified additional elements do not amount to significantly more than the judicial exception since they merely define instructions to implement an abstract idea on a generic computer, or merely uses a generic computer component as a tool to perform an abstract idea, thus do not provide any inventive concept to the claimed invention. See MPEP 2106.05(f). The limitation of displaying and communication, the courts have identified functions such as gathering, displaying, updating, transmitting and storing data as well-understood, routine, conventional activity, thus do not amount to significantly more than the judicial exception. See MPEP 2106.05(d). Applicant specification par. 0015 discloses “the task to be performed may include making a determination that relates to at least one from among a commercial banking function and an investment banking function.” Further par. 0057, “one or more processors, a memory, and a communication interface, which are coupled together by a bus or other communication link, although other numbers and/or types of network devices may be used. The server devices 204(1)-204(n) in this example may process requests received from the CWAC device 202 via the communication network(s) 210 according to the HTTP-based and/or JavaScript Object Notation (JSON) protocol, for example, although other protocols may also be used. That demonstrates the well-understood, routine, conventional nature of additional elements when it describes the additional element(s) as conventional (or an equivalent term); as a commercially available product; or, in a way that shows the element is widely prevalent or in common use; These express statement in the specification support a finding that the recitations are well-understood routine, and conventional. Therefore, none of the additional elements recite an inventive concept, thus, the claimed invention is patent ineligible under 35 USC 101.
Having concluded analysis within the provided framework, Claim 19 do not recite patent eligible subject matter under 35 U.S.C. § 101.
As to claims 2-5, 7, 11-16 and 20 the features of these claims do not add any additional elements integrating the abstract idea into a practical application or amounting to significantly more at least because the use of a “the selecting comprises selecting the configurable forms engine in response to the receiving” , “the selecting comprises selecting the data dictionary component in response to the receiving;” , “receiving and retrieving via the GUI,” and “the selecting comprises selecting the configurable business rules component in response to the receiving;”, that to perform steps and outputting the results amounts to nothing more than the use generic computing components to perform the abstract idea. See M.P.E.P. § 2106.05(f). Note too that GUI interface for communication and display are also well-understood, routine and conventional.
Note that reevaluation of the extra-solution activity steps per step 2B of the 2019 Patent Subject Matter Eligibility Guidance does not indicate that these elements are anything more than what is well-understood, routine and conventional in the field. Courts have recognized that receiving data/information over a network via GUI is well-understood, routine and conventional. See M.P.E.P. § 2106.05(d)(II). Further courts have recognized that selecting a particular data source or type of data to be manipulated: Selecting information, based on types of information and availability of information in a power-grid environment, for collection, analysis and display, Electric Power Group, LLC v. Alstom S.A., 830 F.3d 1350, 1354-55, 119 USPQ2d 1739, 1742 (Fed. Cir. 2016);
As to claim 9 and 18 the features of “performed includes making a determination that relates to at least one from among a commercial banking function and an investment banking function.” these claims do not indicate an integration of the abstract idea into a practical application or amount to significantly more than the abstract idea for the reasons set forth above with respect to claims 1, 10 and 19.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Mohammad Kabir whose telephone number is (571)270-13411. The examiner can normally be reached on M-F, 8:00 am - 5:00 pm. If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Sam Sough can be reached on (571) 272-6799. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300. Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see http://pair-direct.uspto.gov. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative or access to the automated information system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/Mohammad Kabir/
Examiner, Art Unit 2192
/S. SOUGH/SPE, Art Unit 2192
Prosecution Insights