Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
DETAILED ACTION
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on March 3, 2026 has been entered.
Status of Claims
Claims 1, 8, 15 have been amended.
Claims 9 and 16 have been cancelled.
Claims 1, 3-8, 10-15 and 17-20 are currently pending and have been examined.
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, 3-8,10-15 and 17-20 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more.
Step 1:
Claims 1, 3-7 are drawn to methods while claim(s) 8, 10-15 and 17-20 is/are drawn to an apparatus. As such, claims 1, 3-8,10-15 and 17-20 are drawn to one of the statutory categories of invention (Step 1: YES).
Step 2A - Prong One:
Claim 1 (representative of independent claim(s) 8 and 15) recites the following steps:
monitoring, wherein the monitoring includes a first query for a keyword, and wherein the keyword corresponds to at least one of a function or a service associated with an organization;
detecting, and during the monitoring, a first regulation, based on one or more words associated with the first regulation matching the keyword
querying, via a first control query, wherein the first control query includes a first identifier of the first regulation;
transmitting, based on results from the first control query, an alert to one or more client[s], wherein the one or more client[s] are associated with the keyword;
receiving, from the one or more client[s], and responsive to the transmitted alert, a confirmation message that the first regulation corresponds to the keyword;
transmitting, to the one or more client[s], and based on the confirmation message, a request for a control, wherein the control is configured to implement the first regulation;
receiving, from the one or more client[s], the control;
implementing, the first regulation using the control;
detecting, during a second monitoring, wherein the second monitoring includes a second query for the keyword, a second regulation, based on one or more words associated with the second regulation matching the keyword;
querying, via a second control query, wherein the second control query includes a second identifier of the second regulation;
identifying, and based on the second identifier of the second regulation matching the first identifier of the first regulation, the stored control-regulation pair:
implementing, the second regulation using the control of the stored control-regulation pair;
generating, a report including an identification of the second regulation and the control of the stored control-regulation pair and
providing the report for display
These steps, under its broadest reasonable interpretation, encompass a human manually (e.g., in their mind, or using paper and pen) providing regulation control (i.e., one or more concepts performed in the human mind, such as one or more observations, evaluations, judgments, opinions), but for the recitation of generic computer components. If one or more claim limitations, under their broadest reasonable interpretation, covers performance of the limitation(s) in the mind but for the recitation of generic computer components, then it falls within the "mental processes" subject matter grouping of abstract ideas.
As such, the Examiner concludes that claim 1 recites an abstract idea (Step 2A - Prong One: YES).
Independent claim(s) 8 and 15 are determined to recite an abstract idea under the same analysis.
Step 2A - Prong Two:
This judicial exception is not integrated into a practical application. The claim(s) recite the additional elements/limitations of:
one or more computing devices
a plurality of regulation databases
a control database
client devices
A system comprising: a memory; and at least one processor coupled to the memory and configured to perform operations comprising:
A non-transitory computer-readable medium having instructions stored thereon that, when executed by one or more processors,
The requirement to execute the claimed steps/functions listed above is equivalent to adding the words ''apply it'' on a generic computer and/or mere instructions to implement the abstract idea on a generic computer. This/these limitation(s) do/does not impose any meaningful limits on producing the abstract idea and therefore do/does not integrate the abstract idea into a practical application (see MPEP 2106.05(f)).
Additionally, “Step 2A - Prong 2”, the recited additional element(s) of " wherein the control is an automated computerized process" serve merely to generally link the use of the judicial exception to a particular technological environment or field of use. These limitations therefore do not integrate the abstract idea into a practical application (see MPEP 2106.05(h)).
The recited additional element(s) of “storing one or more regulations, “ “storing, by the one or more computing devices, a control-regulation pair in a control database, wherein the control-regulation pair includes the control and the first identifier of the first regulation” simply append insignificant extra solution activity to the judicial exception, (e.g., mere pre-solution activity, such as data gathering, in conjunction with an abstract idea; mere post-solution activity in conjunction with an abstract idea). The term "extra-solution activity" is understood as activities incidental to the primary process or product that are merely a nominal or tangential addition to the claim. The recited additional element(s) are deemed "extra-solution" because storing of the data is insignificant data gathering required in any implementation of the abstract idea (data is inherently required to be "stored", at least temporarily, for it to be used). Providing the report for display is insignificant post-solution activity that would be required in any implementation of the abstract idea as well. It is therefore evident that these limitations do not impose any meaningful limits on practicing the abstract idea, and therefore do/does not integrate the abstract idea into a practical application (see MPEP 2106.05(h)).
The Examiner has therefore determined that the additional elements, or combination of additional elements, do not integrate the abstract idea into a practical application. Accordingly, the claim(s) is/are directed to an abstract idea (Step 2A -Prong Two: NO).
Step 2B:
The claim does not include additional elements that are sufficient to amount to significantly more than the judicial exception.
As discussed above in "Step 2A - Prong 2", the requirement to execute the claimed steps/functions listed above is equivalent to adding the words "apply it" on a generic computer and/or mere instructions to implement the abstract idea on a generic computer. These limitations therefore do not qualify as "significantly more" (see MPEP 2106.05 (f)).
As discussed above in “Step 2A - Prong 2”, the recited additional element(s) of " wherein the control is an automated computerized process" serves merely to generally link the use of the judicial exception to a particular technological environment or field of use. These limitations therefore do not qualify as “significantly more5' (see MPEP 2106.05(g, h)).
As discussed above in "Step 2A - Prong 2", the recited additional element(s) of “storing one or more regulations” and “storing, by the one or more computing devices, a control-regulation pair in a control database, wherein the control-regulation pair includes the control and the first identifier of the first regulation” simply append insignificant extra-solution activity to the judicial exception, (e.g., mere pre-solution activity, such as data gathering, in conjunction with an abstract idea; mere post-solution activity in conjunction with an abstract idea). These additional element(s), taken individually or in combination, additionally amount to well-understood, routine and conventional activities previously known to the industry, specified at a high level of generality, appended to the judicial exception. These additional elements, taken individually or in combination, are well-understood, routine and conventional to those in the field of advertising. These limitations therefore do not qualify as "significantly more'' (see MPEP 2106.5(d)).This conclusion is based on a factual determination.
Additionally, the determination that associating/storing data in a database is well understood, routine, and conventional is supported by the Versata Dev. Group, Inc. F. SAP Am., Inc., 793 F.3d 1306, 1334, 115 USPQ2d 1681, 1701 (Fed. Cir, 2015); OIP Techs., 788 F.3d at 1363, 115 USPQ2d at 1092-93), and MPEP 2106.05(d) (II), which note the well-understood, routine, conventional nature of associating/storing data in a database.
The Examiner has therefore determined that no additional element, or combination of additional claims elements is/are sufficient to ensure the claim(s) amount to significantly more than the abstract idea identified above (Step 2B: NO).
Regarding Dependent Claims:
Dependent claims 3, 5, 7, 10, 11, 12, 14, 17 and 19 fail to include any additional elements and are further part of the abstract idea as identified by the Examiner.
Dependent claims 4, 6, 13, 18 and 20 include additional limitations that are part of the abstract idea except for:
client devices
The additional elements of the dependent claims are equivalent to adding the words ''apply it'' on a generic computer and/or mere instructions to implement the abstract idea on a generic computer. Even in combination, these additional elements do not integrate the abstract idea into a practical application and do not amount to significantly more than the abstract idea itself. The claims are ineligible.
Prior Art
Examiner conducted a thorough search of the body of available prior art (see attached documents regards PTO-892 Notice of Reference Cited and PE2E Search History). Notably, Examiner discovered several patent literature documents that taught aspects of the invention, but no single disclosure taught “every element required by the claims under its broadest reasonable interpretation” [MPEP § 2131] to make a 35 USC § 102 rejection. Further, Examiner considered the individual elements of the recited claims taught across the prior art cited below, but did not find it obvious to combine such disclosures [MPEP § 2142] to make a 35 USC § 103 rejection. In particular, Crowley Yuronich, U.S. Publication No. 2019/0114358 disclosed updating the content management based on a keyword searching, Crowley Yuronich is silent with respect to a first identifier of the first regulation. Dickenson et al. U.S. Publication No. 2014/0074737 discloses matching the regulation using an identifier but does not address a control-regulation pair in a control database.
Response to Arguments
Applicant's arguments filed with respect to the rejection under 35 USC 101 have been fully considered but they are not persuasive.
Applicant Argues: Claims 1, 8, and 15, as amended, do not recite a mental process, and each recite features for improving the functioning of a computer and/or improving a technological process of computer software execution, and are thus not directed to any alleged abstract idea…. at least the claimed features (a)-(c) cannot be practically performed in the human mind
Examiner respectfully disagrees. Examiner notes that “[c]laims can recite a mental process even if they are claimed as being performed on a computer,” and that “courts have found requiring a generic computer or nominally reciting a generic computer may still recite a mental process even though the claim limitations are not performed entirely in the human mind” (see p. 8 of the October 2019 Update: Subject Matter Eligibility). The Examiner also notes that “both product claims (e.g., computer system, computer-readable medium, etc.) and process claims may recite mental processes (see p. 8 of the October 2019 Update: Subject Matter Eligibility). Additionally, Applicant’s alleged improvement is not directed to an improvement to computer functionality/capabilities, an improvement to a computer-related technology or technological environment, and do not amount to a technology-based solution to a technology-based problem. A showing that a claim is directed to any improvement does not automatically mean a claim is patent eligible (e.g., an improved business function or an improved idea itself is not patent eligible). In this case, providing regulation control is an abstract idea, and an “improved” way of providing regulation control is, if anything, an improvement to the idea itself.
Applicant Argues: Applicant further notes that the USPTO's memorandum entitled Reminders on Evaluating Subject Matter Eligibility of Claims under 35 U.S.C. § 101 (Aug. 4, 2025) ("2025 SME Memo") provides clarifying instructions for evaluating software-related claims, including (i) limits on applying the "mental process" grouping of abstract ideas; and (ii) the distinction between claims
that recite versus those that merely involve judicial exceptions.
Examiner respectfully disagrees. While the memo discusses examples that do not recite a mental process, they example is not at all like the instant claims. The instant claims are similar to the examples of concepts that recite a mental process. For example, the instant claims are similar to Trinity Info Media, LLC v. Covalent, Inc., 72 F.4th 1355, 1362 (Fed. Cir. 2023) where a human could monitor regulation databases and identify controls that need to be implement. The implementing step is broadly cited and is not an improvement to a computer-related technology or technological environment, and do not amount to a technology-based solution to a technology-based problem.
Applicant Argues: Even if claims 1, 8, and 15 previously recited an abstract idea (which Applicant does not concede), claims 1, 8, and 15, as amended, include at least the above additional elements that integrate the alleged abstract idea into a practical application.
Examiner respectfully disagrees. The claim recites monitoring, detecting, querying, transmitting, receiving and implementing at a high level of generality (i.e., as a general means of gathering data), and amounts to mere data gathering, which is a form of insignificant extra-solution activity. The one or more computing devices that performs the generation of the report step is also recited at a high level of generality. Each of the additional limitations is no more than mere instructions to apply the exception using a generic computer component (the one or more computing devices). The combination of these additional elements is no more than mere instructions to apply the exception using a generic computer component. Accordingly, even in combination, these additional elements do not integrate the abstract idea into a practical application because they do not impose any meaningful limits on practicing the abstract idea. The claim is directed to the abstract idea.
Applicant Argues: Specification highlights how monitoring and detection of a regulation as well as implementation of a control to implement the regulation "requires a tremendous amount of manpower, time, coordination, and resources," Id, iJ[0012]. And, such conventional problems are overcome via the combination of the control database of control-regulation pairs and regulation database monitoring…
Examiner respectfully disagrees. The focus of the claims need be on an improvement in computers as tools, not just on abstract ideas that use computers as tools. (See Electric Power Group decision)
The claimed subject matter at best is using a general purpose computer as a tool, but fails to provide any improvement to said computer. The Examiner respectfully notes that the needed "improvement" in terms of patent eligibility is not one resulting from programming a generic computing device to perform a different (or even improved) function, but rather a specific and actual improvement to the machine itself is needed. Based on these findings of fact, the Examiner contends the claims are indeed directed towards an abstract idea and Applicant's arguments to the contrary are considered to be non-persuasive.
The Examiner notes that the claimed subject matter could clearly be performed by a human user via a manual and/or mental process, or with pen and paper, and performing said operations on a general-purpose computer at best ties the abstract idea(s) to an online environment. And while implementing the claimed subject matter on a computer may speed up the process, these gains in speed are at best from the capabilities of a general-purpose computer, rather than the patented method itself. See Bancorp Servs., LLC v. Sun Life Assurance Co. of Can. (U.S.), 687 F.3d 1266, 1278 (Fed Cir. 2012) ("[T]he fact that the required calculations could be performed more efficiently via a computer does not materially alter the patent eligibility of the claimed subject matter."). And as in FairWarning (FairWarning IP, LLC v.Iatric Systems, _F.3d_, 120 U.S.P.Q.2d 1293 (Fed. Cir. 2016)), the Court was clear in FairWarning that "[...] As we have explained, "the fact that the required calculations could be performed more efficiently via a computer does not materially alter the patent eligibility of the claimed subject matter." Bancorp Servs., 687 F.3d. at 1278."
Based on these findings of fact, the examiner considers applicant's argument to be non-persuasive.
Applicant Argues: the claims are analogous to claim 3 in the USPTO's Example 47, indicated as being subject matter eligible. See July 2024 Subject Matter Eligibility Examples, Example 47, pp. 2-13. Claim 3 in Example 47 relates to training of an artificial neural network to, in real-time, detect malicious packets in network traffic data and block future traffic from the source of the malicious packets. Id
Examiner respectfully disagrees. The instant claims do not possess the same eligibility features of Example 47 Claim 3. First, Example 47 Claim 3 recites an abstract idea in steps, (a)-(d). The claim is transformed at step (e) which converts the masked clusters into N separate speech signals in time domain, and step (f), which extracts spectral features from only one target source Sd of the N separate signals from the output of step (e) and generates a sequence of words from the spectral features to produce a transcript. A similar transformation does not occur in instant claims. The instant claims gather data and provide a report for display. Similar to Example 47 Claim 1, the instant claims invoke generic computing functions merely as a tool for executing the recited mental process rather than purporting to improve the technology or a computer. See MPEP 2106.05(f). Therefore, the limitation represents no more than mere instructions to apply the judicial exception on a computer. It can also be viewed as nothing more than an attempt to generally link the use of the judicial exception to the technological environment of computers.
Applicant Argues: Applicant further notes that the USPTO's memorandum entitled Advance notice of change the MPEP in light of Ex Parte Desjardins (Dec. 5, 2025) ("Desjardins Memo") provides notice of revisions to the MPEP.
Examiner respectfully disagrees. The instant claims are not at all like the claims address in the Ex Parte Desjardins memo. The instant claims are directed to querying for a keyword to identify a regulation and broadly citing the implementation of the regulation. The claims further recite generating a report that identifies the match.
Applicant Argues: Similarly, in the present application, the Specification identifies improvements as to how regulation control systems operate, particularly (1) computational resource savings via control reuse/re-implementation, (2) streamlined regulation compliances processes without inefficient or wasteful computational resource expenditure, and (3) ensured regulation capture via specific keyword monitoring of a plurality of databases, as described above.
Examiner respectfully disagrees. In response to applicant's argument that the Specification identifies improvements as to how regulation control systems operate, particularly (1) computational resource savings via control reuse/re-implementation, (2) streamlined regulation compliances processes without inefficient or wasteful computational resource expenditure, a recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim.
Applicant Argues: The independent claims recite additional features that recite an inventive concept, which amount to significantly more than any alleged abstract idea. An inventive concept can be found in the non-conventional and non-generic arrangement of known, conventional pieces.
The Examiner notes that this claim of significantly more is not representative of an "actual" improvement to the technology itself, but at best is an improvement to the business method or abstract idea itself. In fact. Applicant can provide no tangible findings that there was actually anything different and/or improved in the instant system compared to prior "conventional systems", other than a mere allegation and unsubstantiated, conclusory statement that the instant invention improves existing systems. However, the Examiner respectfully notes that the features of the claimed invention do not represent an improvement, it is merely performing operations with a device. The Applicant cannot point to anything that was specifically done either in the claimed subject matter, the specification, or provided reasoning to show how this is significantly more or provides an improvement to the technology of the conventional system implementation. Moreover, the Examiner respectfully notes that the needed "improvement" in terms of patent eligibility is not one resulting from programming a generic processor to perform a different (or even improved) function, but rather a specific and actual improvement to the machine itself is needed. Based on these findings of fact, the Examiner contends the claims are indeed directed towards an abstract idea and Applicant's arguments to the contrary are considered to be non-persuasive.
Applicant Argues: the claimed steps go beyond conventional methods for implementing regulations by utilizing a keyword-based regulation database querying mechanism and a control database to efficiently detect relevant regulations and minimize transmission of unnecessary alerts to client devices. These steps represent a sequence of steps that address unique technical problems caused by regulations constantly being created, modified, and re-interpreted.
Examiner respectfully disagrees. Other than Applicant’s a general allegation of going beyond conventional methods for implementing regulations and solving unique technical problems, Examiner has not found support for these claims and are considered to be at best an improvement to the business method or abstract idea itself.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to RASHIDA R SHORTER whose telephone number is (571)272-9345. The examiner can normally be reached Monday- Friday from 9am- 530pm.
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/RASHIDA R SHORTER/Primary Examiner, Art Unit 3626