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 .
Response to Amendment
The following is a FINAL Office action in reply to the Amendments and Arguments received on July 7, 2026.
Status of Claims
Claims 1, 4, 8, 11, 15, and 18 have been amended.
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 and 3-7 are drawn to methods while claim(s) 8, 10-15 and 17-20 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;
determining whether the service associated with the organization is identified for the first regulation;
transmitting, and based on results from the first control query, a first alert with a first priority when the service is not identified, and a second alert with a second priority different from the first priority when the service is identified, to one or more client[s]
receiving, from the one or more client[s], and responsive to the transmitted second alert, a confirmation message that the first regulation corresponds to the keyword;
computing, a regulation priority for the first regulation based on the confirmation message;
dynamically allocating, resources based on the regulation priority, wherein a highest priority regulation is assigned the most resources
reordering, existing tasks assigned to a first user based on the regulation priority of corresponding regulations or controls;
generating, a new automated alert to the first user indicating the existing tasks have been reordered to work on the first regulation with a higher priority first;
transmitting, and based on the confirmation message, a request for a control, wherein the control is an automated process comprising an identifier of a machine corresponding to an automated report and configured to implement the first regulation;
receiving, from the one or more client[s], the control;
implementing, the first regulation using the control;
generating, a concatenated identifier for the first regulation by combining, via concatenation, the first identifier of the first regulation, a date associated with the first regulation, and the identifier of the machine corresponding to the automated report;
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;
implementing, the second regulation using the control of the verified concatenated identifier
generating, a report including an identification of the second regulation and the control of the verified concatenated identifier;
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
client devices remote from the one or more computing devices, wherein the one or more client devices are associated with the keyword;
computing resources
computed regulation priority,
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, the concatenated identifier in a control database in association with the control” 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, “storing, by the one or more computing devices, the concatenated identifier in a control database in association with the control” 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:
one or more 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: Computing a regulation priority, dynamically allocating computing resources among competing regulations, generating a concatenated identifier from machine-specific information, and verifying that identifier against a control database are operations carried out by and within the platform, not
steps that a person could perform mentally or with pen and paper. See MPEP 2106.04(a)(2).
Examiner respectfully disagrees. First, the abstract idea was evaluated based on the removal of the technical elements were later evaluated in the Step 2A Prong II to determine if the additional elements would transform the abstract idea into patent eligible subject matter. Outside of the high level recited additional elements, the claims are directed to monitoring, detecting, querying, determining, notifying, allocating, reordering, alerting, …which amount to one or more concepts performed in the human mind, such as one or more observations, evaluations, judgments, opinions. Even the allocating of resources based on a priority is considered to be an evaluation or judgement. The generation of the identifier could also be done by pen and paper. The rejection is maintained.
Applicant Argues: The technological improvement is reflected in the claim's resource-allocation and task
Management functionality.
Examiner respectfully disagrees. While the claims do mention computing resource allocation, the claim is not recited in a such a way that this reflects a technical improvement. The claims appear to allocate manpower resources by directing the alerts to specific users based on a priority rather then true computational resources. The specification at [0039] states “RCS 102 may use the priority 126 to determine
where to allocate resources (e.g., manpower, money, computing resources, or how to rank tasks 125) so that the highest priority new regulation 126, control 114, and/or task 125 is completed first or assigned the most resources...” without detailing what actual computing resources are being allocated.
Applicant Argues: Thus, the claims improve operation of the computerized regulation-management platform through database verification and reuse of previously generated controls rather than repeatedly recreating those controls for subsequently detected regulations.
Examiner respectfully disagrees. 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, reusing controls is an abstract idea, and an “improved” way of accomplishing this is, if anything, an improvement to the idea itself. The combination of these additional elements is no more than mere instructions to apply the exception using generic computer components. 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 rejection is, therefore, maintained.
Applicant Argues: Claim 1 recites a specific technological solution for computerized regulation management that includes: (i) keyword-based monitoring of regulation databases; (ii) service-based filtering and priority-specific alert generation; (iii) machine-computed regulation priorities; (iv) dynamic allocation of computing resources; (v) automated task reordering and notification generation; (vi) generation and storage of a concatenated regulation-control identifier derived from regulation specific and machine-specific information; and (vii) database verification and reuse of previously implemented controls.
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."
The generation of the concatenated regulation control identifier is not a technically based improvement and can be done by pen and paper. The allocation of computing resources is so broadly cited that one reasonably skilled in the art could interpret the addition of more computer workstations for more employees to be assigned to a prioritized control could satisfy the disclosure and would more be more accurately described as allocation of manpower.
Based on these findings of fact, the examiner considers applicant's argument to be non-persuasive.
Applicant Argues: The claimed solution is rooted in computer technology and addresses a problem arising within the platform, specifically redundant processing and inefficient resource allocation across a distributed computing environment. See DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245, 1257 (Fed. Cir. 2014); McRO, Inc. v. Bandai Namco Games Am. Inc., 837 F.3d 1299, 1314-16 (Fed. Cir. 2016).
Examiner respectfully disagrees. Examiner notes the following excerpt from DDR Holdings (pages 22-23 of Opinion):
"We caution, however, that not all claims purporting to address Internet-centric challenges are eligible for patent. For example, in our recently-decided Ultramercial opinion, the patentee argued that its claims were "directed to a specific method of advertising and content distribution that was previously unknown and never employed on the Internet before." 2014 WL 5904902, at *3. But this alone could not render its claims patent-eligible. In particular, we found the claims to merely recite the abstract idea of "offering media content in exchange for viewing an advertisement," along with "routine additional steps such as updating an activity log, requiring a request from the consumer to view the ad, restrictions on public access, and use of the Internet." Id. at *5.
The '399 patent's claims are different enough in substance from those in Ultramercial because they do not broadly and generically claim "use of the Internet" to perform an abstract business practice (with insignificant added activity). Unlike the claims in Ultramercial, the claims at issue here specific how interactions with the Internet are manipulated to yield a desired result - a result that overrides the routine and conventional sequence of events ordinarily triggered by the click of a hyperlink. Instead of the computer network operating in its normal, expected manner by sending the website visitor to the third-party website that appears to be connected with the clicked advertisement, the claimed system generates and directs the visitor to the above-described hybrid web page that presents product information from the third-party and visual "look and feel" elements from the host website."
Based on even the DDR Holdings decision, it is clear that even if the claims address a problem arising within the platform (as purported by Applicant), the claims are not necessarily patent eligible. The Applicant has failed to provide evidence on how the instant claims are rooted in technology such that the routine and conventional sequence of events is manipulated to yield a desired result. In fact, similar to the Ultramercial decision cited by the court, the instant claims appear to offer nothing more than a generic online (i.e. Internet-based) system to perform its abstract business practice.
Moreover, the Examiner reiterates that prioritizing regulation control based on a keyword does not constitute an actual improvement in computing resource processing speed contrary to Applicant's assertions.
As such, the Examiner considers Applicant's argument to be non-persuasive.
Applicant Argues: Even if claim 1 were deemed to recite an abstract idea, the claim recites significantly more under step 2B. The inventive concept lies in the ordered combination of: monitoring regulation databases using keyword-based filtering; generating service-based priority alerts; computing regulation. priorities; dynamically allocating computing resources based on those priorities; reordering tasks based on machine-computed priorities; generating automated notifications reflecting the reordered state; generating and storing a concatenated identifier derived from a regulation identifier, regulation date, and machine identifier; verifying previously addressed regulations using stored identifier information; and reusing previously implemented controls for subsequently detected regulations.
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. 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.
Conclusion
THIS ACTION IS MADE FINAL. 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.
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. Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice. If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Jessica Lemieux can be reached at (571) 270-3445. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300. Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/RASHIDA R SHORTER/Primary Examiner, Art Unit 3626
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