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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 12/30/2025 has been entered.
Claims 1-12 and 14-21 remain pending in this application.
Response to Arguments
3. Applicant's arguments filed 12/30/2025 have been fully considered but they are not persuasive.
In response to Applicant’s arguments regarding the rejection of claims under 35 USC 101, the Applicants should please see the rejection below for clarification as it will substantially duplicate any response to the arguments in this section. However, the Applicant should also please note that the limitations of the claim, even when taken as an ordered combination, do not
provide steps that confine the abstract idea to a particular useful application. The newly added limitation of “tailoring recommendation of software updates to a first network element” recites an additional mental process and “ wherein the subset of configuration data indicates those of the plurality of features of the first network element to which one or more of the plurality of software updates are determined to be relevant”, as recited in the independent claims, still merely recites insignificant extra solution activity such as gathering data, which does not integrate the judicial exception into a practical application. Therefore, the recited judicial exceptions are not integrated into a practical application, and the claims are ineligible.
4. Applicant’s arguments, see pages 9-13, filed 12/30/2025, with respect to claims 1-12 and 14-21 have been fully considered and are persuasive. The rejection of the claims under 35 U.S.C. §103 has been withdrawn.
Claim Rejections - 35 USC § 112
5. The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
6. Claims 1-12 and 14-21 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 applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Independent claim 1, at line 8, recites “those”, which is not clear and has been interpreted as --a subset of--. However, appropriate correction is required. Similar independent claims 11 and 16 have a similar issue.
Claim 6 recites the limitation "the one or more of the plurality of issues" in lines 4-5. There is insufficient antecedent basis for this limitation in the claim.
Dependent claims 2-5, 7-12, 14, 15, and 17-21 do not overcome the deficiency of the base claims and, therefore, are objected for the same reasons as the base claims.
Claim Rejections - 35 USC § 101
7. 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 1-12 and 14-21 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more. The analysis specific to Claim 16 is being presented below. However, the Applicants should please note that the analysis for claim 16 is similar to that of claims 1 and 11 and therefore rejected for the same reasons.
Amended Claim 16 recites:
(a) An apparatus comprising:
(b) a processor; and
(c) a machine-readable medium having instructions stored thereon that are executable by the processor to cause the apparatus to tailor recommendation of software updates to a first network element, wherein the instructions executable by the processor to cause the apparatus to tailor recommendation of software updates to the first network element comprise instructions executable by the processor to cause the apparatus to,
(d) extract, from configuration data obtained for a first network element, a subset of the configuration data based on indications of a plurality of configuration settings affected by a plurality of software updates, wherein the subset of the configuration data indicates those of the plurality of configuration settings of the first network element to which one or more of the plurality of software updates are determined to be relevant;
(e) determine one or more configuration settings of the first network element that are enabled based on the subset of the configuration data;
(f) determine a set of the plurality of software updates that is available for the first network element based on the subset of the configuration data;
(g) analyze the subset of the configuration data and at least one of data and metadata of the set of software updates based on a plurality of heuristics, wherein the at least one of data and metadata of the set of software updates comprise, for each software update in the set of software updates, indications of one or more of the plurality of configuration settings and indications of one or more issues documented for the software update that are inferred to affect corresponding ones of the one or more configuration settings;
(h) determine one or more software updates of the set of software updates to recommend based on a result of the analysis; and
(i) indicate the one or more software updates and corresponding ones of the at least one of data and metadata of the set of software updates.
Step 2A – Prong 1:
The claim recites the limitations of:
(e) determine one or more configuration settings of the first network element that are enabled based on the subset of the configuration data;
(f) determine a set of the plurality of software updates that is available for the first network element based on the subset of the configuration data;
(g) analyze the subset of the configuration data and at least one of data and metadata of the set of software updates based on a plurality of heuristics, wherein the at least one of data and metadata of the set of software updates comprise, for each software update in the set of software updates, indications of one or more of the plurality of configuration settings and indications of one or more issues documented for the software update that are inferred to affect corresponding ones of the one or more configuration settings;
(h) determine one or more software updates of the set of software updates to recommend based on a result of the analysis; and
(i) indicate the one or more software updates and corresponding ones of the at least one of data and metadata of the set of software updates;
Limitations (e)-(i) are limitations that, as drafted, are processes that, under its broadest reasonable interpretations, covers performance of the limitation in the mind. That is, nothing in the claim elements precludes the step from practically being performed in the mind or with a pen and paper, i.e. “determine”, “analyze”, and “indicate” can be performed in the human mind through observation, evaluation, judgement, or opinion with the aid of pen and paper. As such, these limitations fall within the “Mental Processes” grouping of abstract ideas.
Step 2A – Prong 2:
The claim recites the additional elements recited in limitations of (a)-(c) and “a first network element”, which are all recited at a high level of generality, i.e., merely instructions to implement the abstract idea on a generic computer or merely uses a computer as a tool to perform the abstract idea. Also, the additional element recited in limitation (d) merely recites insignificant extra solution activity such as gathering data, which does not integrate the judicial exception into a practical application. See MPEP 2106.05(d). Accordingly, 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.
Step 2B:
As explained with respect to Step 2A Prong Two, the additional elements recited in limitations of (a)-(c) 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, and thus do not amount to significantly more than the judicial exception. In addition, the courts have identified functions such as gathering, displaying, updating, transmitting and storing data as well-understood, routine, conventional activity, as recited in the limitation of (d) and thus this limitation does not amount to significantly more than the judicial exception. See MPEP 2106.05(d). Therefore, none of the additional elements recite an inventive concept and the claimed invention is patent ineligible under 35 USC 101.
Additionally, claim 2 recites generating the indications of the plurality of features based on published documentation associated with each of the plurality of software updates, which also falls within the “Mental Processes” grouping of abstract ideas, as discussed above. As such, this claim fails both Step 2A prong 2 and Step 2B and is ineligible.
Additionally, claim 3 recites “wherein generating the indications of the plurality of features comprises, for each software update of the plurality of software updates, determining one or more features affected by the software update based on at least one of the published documentation and indications of a plurality of issues, wherein the one or more features affected by the software update comprise at least one of one or more features associated with a change in behavior documented in the published documentation and one or more features potentially affected by corresponding ones of the plurality of issues, wherein the plurality of issues includes the one or more issues; and determining, for each feature of the one or more features, a configuration data field that corresponds to the feature”, which all also fall within the “Mental Processes” grouping of abstract ideas, as discussed above. As such, this claim fails both Step 2A prong 2 and Step 2B and is ineligible.
Additionally, claim 4 recites wherein determining the one or more features comprises analyzing descriptions of features in the published documentation and descriptions of the plurality of issues with natural language processing to determine similarities between the descriptions of the features and the descriptions of the plurality of issues and determining that a first feature of the one or more features is potentially affected by a first issue of the plurality of issues based on a determined similarity between a description of the first feature and a description of the first issue, which also falls within the “Mental Processes” grouping of abstract ideas. As such, this claim fails both Step 2A prong 2 and Step 2B and is ineligible.
Additionally, claim 5 recites wherein the plurality of heuristics comprises heuristics for determining impact of installing a software update to a network element based on features enabled for the network element and issues that potentially affect the software update based on at least one of types of the issues, severity of the issues, likelihood of the issues, and counts of the issues, which also falls within the “Mental Processes” grouping of abstract ideas. As such, this claim fails both Step 2A prong 2 and Step 2B and is ineligible.
Additionally, claim 6 recites for each software update of the plurality of software updates, determining, based on indications of a plurality of issues documented for the software update and the one or more features enabled for the first network element, the one or more of the plurality of issues that potentially affect a corresponding one of the one or more features, which also falls within the “Mental Processes” grouping of abstract ideas. As such, this claim fails both Step 2A prong 2 and Step 2B and is ineligible.
Additionally, claim 7 recites wherein the indications of the plurality of issues comprise an indication of a first software bug associated with the software update that potentially affects a first feature of the one or more features for the first network element, wherein determining the one or more of the plurality of issues that potentially affect a corresponding one of the one or more features comprises determining based on the one or more features that the first feature is enabled for the first network element, wherein the one or more issues documented for the first software update that potentially affect a corresponding one of the one or more features comprise the first software bug, which also falls within the “Mental Processes” grouping of abstract ideas. As such, this claim fails both Step 2A prong 2 and Step 2B and is ineligible.
Additionally, claim 8 recites scoring each of the set of software updates based on analyzing the subset of configuration data and the indications of impact based on the plurality of heuristics, wherein scoring each of the plurality of software updates comprises, for each software update of the set of software updates, determining a score indicating impact of installing the software update based on the one or more issues, wherein the result of analyzing the subset of configuration data and the indications of impact based on the plurality of heuristics comprises scores determined for the set of software updates, wherein selecting the one or more software updates for the set of software updates is based on the scores determined for the set of software updates, which also falls within the “Mental Processes” grouping of abstract ideas. As such, this claim fails both Step 2A prong 2 and Step 2B and is ineligible.
Additionally, claim 9 recites wherein the one or more issues documented for each software update in the set of software updates comprise at least one of one or more software bugs that potentially affect the software update, one or more vulnerabilities, and one or more issues reported in customer support tickets, which also falls within the “Mental Processes” grouping of abstract ideas. As such, this claim fails both Step 2A prong 2 and Step 2B and is ineligible.
Additionally, claim 10 recites determining, for at least a first software update of the set of software updates, one or more issues that would be avoided based on installation of the first software update, wherein the recommendation also indicates the one or more issues that would be avoided, which also falls within the “Mental Processes” grouping of abstract ideas. As such, this claim fails both Step 2A prong 2 and Step 2B and is ineligible.
Additionally, claim 12 recites wherein the program code further comprises instructions to generate the at least one of the data and metadata of the set of software updates based on documentation published for each of the set of software updates, which merely recites insignificant extra solution activity such as gathering data, which does not integrate the judicial exception into a practical application. As such, this claim fails both Step 2A prong 2 and Step 2B and is ineligible.
Additionally, claim 14 recites wherein the indications of the plurality of issues comprise an indication of a first software bug that potentially affects a first feature, wherein the instructions to determine the one or more of the subset of enabled features that are potentially affected by corresponding ones of the plurality of issues comprise instructions to determine based on the plurality of enabled features that the first feature is enabled for the first network element, which also falls within the “Mental Processes” grouping of abstract ideas. As such, this claim fails both Step 2A prong 2 and Step 2B and is ineligible.
Additionally, claim 15 recites wherein the program code further comprises instructions to determine, for each software update in the set of software updates, a score indicating impact of installing the software update based on analysis of corresponding ones of the at least one of the data and metadata and the subset of configuration data, wherein the instructions to select the one or more software updates to recommend based on the result of the analysis comprise instructions to select the one or more software updates based on scores determined for the set of software updates, which also falls within the “Mental Processes” grouping of abstract ideas with additional elements which are all recited at a high level of generality, i.e., merely instructions to implement the abstract idea on a generic computer or merely uses a computer as a tool to perform the abstract idea. As such, this claim fails both Step 2A prong 2 and Step 2B and is ineligible.
Additionally, claim 17 recites instructions executable by the processor to cause the apparatus to generate the indications of the plurality of configuration settings affected by the plurality of software updates based on published documentation of the plurality of software updates, wherein the instructions executable by the processor to cause the apparatus to generate the indications of the plurality of configuration settings comprise instructions executable by the processor to cause the apparatus to, determine one or more features affected by the plurality of software updates based on at least one of the published documentation and the indications of a plurality of issues documented for the plurality of software updates and determine, for each feature of the one or more features, a configuration data field that corresponds to the feature, which also falls within the “Mental Processes” grouping of abstract ideas with additional elements which are all recited at a high level of generality, i.e., merely instructions to implement the abstract idea on a generic computer or merely uses a computer as a tool to perform the abstract idea. As such, this claim fails both Step 2A prong 2 and Step 2B and is ineligible.
Additionally, claim 18 recites wherein the plurality of heuristics comprises heuristics for determining impact of installing software updates, wherein the instructions executable by the processor to cause the apparatus to analyze the subset of the configuration data and the at least one of the data and metadata of the set of software updates based on the plurality of heuristics comprise instructions executable by the processor for each software update in the set of software updates, determine that the one or more issues from a plurality of issues are relevant to the first network element based on a determination that the one or more issues potentially affect corresponding ones of the one or more settings, which also falls within the “Mental Processes” grouping of abstract ideas with additional elements which are all recited at a high level of generality, i.e., merely instructions to implement the abstract idea on a generic computer or merely uses a computer as a tool to perform the abstract idea. As such, this claim fails both Step 2A prong 2 and Step 2B and is ineligible.
Additionally, claim 19 recites wherein the indications of the plurality of issues comprise an indication of a first software bug that potentially affects a first feature of the first network element, wherein the instructions executable by the processor to cause the apparatus to determine that the one or more issues are relevant to the first network element comprise instructions executable by the processor to cause the apparatus to determine that the first feature is enabled for the first network element based on the determined one or more configuration settings enabled for the first network element, which also falls within the “Mental Processes” grouping of abstract ideas with additional elements which are all recited at a high level of generality, i.e., merely instructions to implement the abstract idea on a generic computer or merely uses a computer as a tool to perform the abstract idea. As such, this claim fails both Step 2A prong 2 and Step 2B and is ineligible.
Additionally, claim 20 recites the apparatus of claim 16 further comprising instructions executable by the processor to cause the apparatus to score each of the set of software updates based on the analysis, wherein the instructions executable by the processor to cause the apparatus to score each of the plurality of software updates comprise instructions executable by the processor to cause the apparatus to, for each software update of the set of software updates, determine a score indicating impact of installing the software update on the first network element, wherein the instructions executable by the processor to cause the apparatus to determine of the one or more software updates to recommend for the first network element based on the result of the analysis comprise the instructions executable by the processor to cause the apparatus to determine the one or more software updates to recommend based on scores determined for the set of software updates., which also falls within the “Mental Processes” grouping of abstract ideas with additional elements which are all recited at a high level of generality, i.e., merely instructions to implement the abstract idea on a generic computer or merely uses a computer as a tool to perform the abstract idea. As such, this claim fails both Step 2A prong 2 and Step 2B and is ineligible.
Additionally, claim 21 recites wherein the instructions to generate the at least one of the data and metadata of the set of software updates based on the documentation published for each of the set of software updates comprise instructions to, for each software update in the set of software updates and corresponding published documentation, which merely recites insignificant extra solution activity such as gathering data, which does not integrate the judicial exception into a practical application. “Determine one or more features affected by the software update based on at least one of the published documentation and indications of the plurality of issues, wherein the one or more features comprise at least one of one or more features associated with a change in behavior documented in the published documentation and one or more features potentially affected by corresponding ones of the plurality of issues” and “determine, for each feature of the one or more features, a configuration data field that corresponds to the feature”, all also fall within the “Mental Processes” grouping of abstract ideas. “The instructions” are recited at a high level of generality, i.e., merely instructions to implement the abstract idea on a generic computer or merely uses a computer as a tool to perform the abstract idea. As such, this claim fails both Step 2A prong 2 and Step 2B and is ineligible.
Conclusion
8. Any inquiry concerning this communication or earlier communications from the examiner should be directed to CHENECA SMITH whose telephone number is (571)270-1651. The examiner can normally be reached Mon-Fri 8:00AM-4:30PM EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Hyung S 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.
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/CHENECA SMITH/Examiner, Art Unit 2192
/S. Sough/SPE, Art Unit 2192