DETAILED ACTION
Status of the Claims
The following is a Final Office Action in response to amendments and remarks filed 13 October 2025.
Claims 4-5 and 19-20 have been amended.
Claims 4-9 and 16-20 are pending and have been examined.
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 Arguments
Applicant's arguments with respect to the §112 rejection have been fully considered, and in light of the amendments, are persuasive. As such, the rejection has been withdrawn.
Applicant argues that the 35 U.S.C. 101 rejection under the Alice Corp. vs. CLS Bank Int’l be withdrawn; however the Examiner respectfully disagrees. As an initial note, the arguments are not compliant under 37 CFR 1.111(b) as they amount to a mere allegation of patent eligibility based upon a bare assertion of improvement. The Examiner respectfully does not find the assertion persuasive because a bare assertion of an improvement without the detail necessary to be apparent is not sufficient to show an improvement (MPEP 2106.04(d)(1) (discussing MPEP 2106.05(a)). That is, the Examiner does not find any evidence that the claimed aspects are any improvement over conventional systems. This argument appears to be whether or not the use of computer or computing components for increased speed and efficiency is an improvement; however the Examiner respectfully disagrees. Nor, in addressing the second step of Alice, does claiming the improved speed or efficiency inherent with applying the abstract idea on a computer provide a sufficient inventive concept. See Bancorp Servs., LLC v. Sun Life Assurance Co. of Can., 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.”); CLS Bank, Int’l v. Alice Corp., 717 F.3d 1269, 1286 (Fed. Cir. 2013) (en banc) aff’d, 134 S. Ct. 2347 (2014) (“[S]imply appending generic computer functionality to lend speed or efficiency to the performance of an otherwise abstract concept does not meaningfully limit claim scope for purposes of patent eligibility.” (citations omitted)).
Applicant next argues that the generation of the “map path” amounts to significantly more; however the Examiner respectfully disagrees. Here, the “map path” is quite literally the organizing of human activities as a post solution output. The Examiner notes that organizing/scheduling tasks based upon some sort of metric/priority as a map/visual output is a function that has occurred regardless of traditional business analog (to-do lists, flowcharts, Gnatt charts, workflow process visualizations). Next, the claims are not directed to a practical application of the concept. The claims do not result in improvements to the functioning of a computer or to any other technology or technical field. They do not effect a particular treatment for a disease. They are not applied with or by a particular machine. They do not effect a transformation or reduction of a particular article to a different state or thing. And they are not applied in some other meaningful way beyond generally linking the use of the judicial exception (i.e., converting billable hour data into another productivity measurement and generate a map path of a work plan) to a particular technological environment (i.e., with the use of computers or generic computing components). Here, again as noted in the previous rejection, mere instructions to apply an exception using a generic computer component cannot provide an inventive concept - MPEP 2016.05(f). The claims recitation of the “machine learning process” only generally linking the use of the judicial exception to a particular technological environment or field of use – see MPEP 2106.05(h). The claim(s) is/are not patent eligible.
The claims recitation of the “adaptive algorithm” and “machine learning process” only generally linking the use of the judicial exception to a particular technological environment or field of use – see MPEP 2106.05(h). Here, Applicant specifically relies upon the “machine learning process” however this element does not direct the abstract idea to a practical application as merely reciting using a machine learning process is simply attempting to limit the technical environment or apply it or applying a known technology to perform the abstract idea. Using a machine learning process and present a result is well-understood, routine, and conventional activities, and are not directed to an improvement to a technology or technical field as the claims are directed to merely using these known technologies in a known manner to present information simultaneously. Similar cases the courts have identified as being well-understood, routine, and conventional include: Mere automation of manual processes, such as using a generic computer to process an application for financing a purchase, Credit Acceptance Corp. v. Westlake Services, 859 F.3d 1044, 1055, 123 USPQ2d 1100, 1108-09 (Fed. Cir. 2017) or speeding up a loan application process by enabling borrowers to avoid physically going to or calling each lender and filling out a loan application, LendingTree, LLC v. Zillow, Inc., 656 Fed. App'x 991, 996-97 (Fed. Cir. 2016) (nonprecedential); Recording, transmitting, and archiving digital images by use of conventional or generic technology in a nascent but well-known environment, without any assertion that the invention reflects an inventive solution to any problem presented by combining a camera and a cellular telephone, TLI Communications, 823 F.3d at 611-12, 118 USPQ2d at 1747; Instructions to display two sets of information on a computer display in a non-interfering manner, without any limitations specifying how to achieve the desired result, Interval Licensing LLC v. AOL, Inc., 896 F.3d 1335, 1344-45, 127 USPQ2d 1553, 1559-60 (Fed. Cir. 2018); and Receiving or transmitting data over a network, e.g., using the Internet to gather data, Symantec, 838 F.3d at 1321, 120 USPQ2d at 1362 (utilizing an intermediary computer to forward information); TLI Communications LLC v. AV Auto. LLC, 823 F.3d 607, 610, 118 USPQ2d 1744, 1745 (Fed. Cir. 2016) (using a telephone for image transmission); OIP Techs., Inc., v. Amazon.com, Inc., 788 F.3d 1359, 1363, 115 USPQ2d 1090, 1093 (Fed. Cir. 2015) (sending messages over a network); buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1355, 112 USPQ2d 1093, 1096 (Fed. Cir. 2014) (computer receives and sends information over a network); but see DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245, 1258, 113 USPQ2d 1097, 1106 (Fed. Cir. 2014) ("Unlike the claims in Ultramercial, the claims at issue here specify 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." The Examiner also notes that while the specification may discuss sophisticated techniques and advanced functions such as machine learning, it is the claims that are deemed eligible or ineligible under §101. Here, the claims are more of a generalized guideline of how to arrange a software model to implement the overarching abstract idea. The claim(s) is/are not patent eligible. As such the arguments are not persuasive and the rejection not withdrawn.
Applicant’s remarks with respect to the prior art have been fully considered, and in light of the amendments, are persuasive. As such, the rejections have been withdrawn.
Claim Objections
Claim 4 is objected to because of the following informalities: The claim recites the term “auto-generating” which should be the fully recited term of “automatically generating” to establish proper metes and bounds of the claim. Appropriate correction is required.
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 4-9 and 16-20 is/are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more. The claims are directed to a process (an act, or series of acts or steps), a machine (a concrete thing, consisting of parts, or of certain devices and combination of devices), and a manufacture (an article produced from raw or prepared materials by giving these materials new forms, qualities, properties, or combinations, whether by hand labor or by machinery). Thus, each of the claims falls within one of the four statutory categories (Step 1). However, the claim(s) recite(s) converting billable hour data into another productivity measurement and generate a map path of a work plan based upon priorities and patterns which is an abstract idea of organizing human activities as well as the abstract idea of performing computations in accordance with a mathematical formula on that data.
The limitations of:
In claim 4 “execute at least one adaptive algorithm comprising at least one machine learning process to facilitate a conversion the one or more billable hour metrics into one or more deliverable-based metrics to establish at least one point value system, wherein the conversion includes; performing a ranking of priorities based on one or more provider inputs, assigning one or more points based on at least one quantitative and qualitative parameters of the deliverable-based metrics, and actively monitoring utilization of the at least one point value system to identify patterns of occurrence and frequency, and, in response to identifying a pattern, suggesting an alteration to a point value associated with a deliverable; and..., wherein the at least one provider comprises the primary user of the productivity measurement system and at least one interface configured to display a checklist of tasks for a project, a point value associated with each task, and a point goal for a predetermined time interval; and generate at least one map path from an initial state of the at least one provider to one or more predetermined goals by auto-generating a work plan for a scope of services, the map path providing a quantifiable measure of progress toward the predetermined goals using the assigned points and at least one provider, wherein the at least one provider comprises the primary user of the productivity measurement system”
In claim 19 “importing... one or more billable hour metrics from at least one program of at least one provider; and converting by...at least one adaptive algorithm comprising at least one machine learning process, the one or more billable hour metrics to one or more deliverable-based metrics wherein said conversion includes: performing an analysis of responses to one or more queries to identify goals and priorities of the provider assigning one or more points to a deliverable based on at least one quantitative and qualitative parameters of the deliverable-based metrics, the parameters including at least one of worker effort, task urgency, task completion time, task complexity, or worker expertise; and actively monitoring, via the at least one machine learning process, utilization of the point value system and suggesting alterations to a point value associated with a task in response to identifying patterns of occurrence and frequency for the task, thereby providing a responsive and adaptive pricing and productivity model; via at least one algorithm generate a plurality of interactive user interfaces for display and use by at least one provider... a current project and an associated point value and to receive an adjustment to a project request; in response to receiving the adjustment, updating the associated point value for the current project; and generating by the at least one adaptive algorithm, at least one map path from an initial state of the at least one provider to one or more predetermined goals, wherein progress along the map path is quantified by the assigned points associated with completed deliverables”
…as drafted, is a process that, under its broadest reasonable interpretation, covers organizing human activities--fundamental economic principles or practices (including hedging, insurance, mitigating risk); commercial or legal interactions (including agreements in the form of contracts; legal obligations; advertising, marketing or sales activities or behaviors; business relations); managing personal behavior or relationships or interactions between people (including social activities, teaching, and following rules or instructions) and/or mathematical concepts—mathematical relationships, mathematical formulas or equations, mathematical calculations but for the recitation of generic computer components (Step 2A Prong 1). That is, other than reciting “A productivity measurement system, comprising: at least one computing device, wherein the at least one computing device comprises at least one storage medium and at least one processor, wherein the at least one storage medium comprises at least one algorithm that may be executed by the at least one processor to,” (or “via at least one algorithm” in claim 19) nothing in the claim element precludes the step from the methods of organizing human interactions grouping or from the mathematical concept grouping. For example, but for the “A productivity measurement system, comprising: at least one computing device, wherein the at least one computing device comprises at least one storage medium and at least one processor, wherein the at least one storage medium comprises at least one algorithm that may be executed by the at least one processor to,” (or “A computer-implemented method...by at least one processor...via at least one algorithm” in claim 19)” language, “execute,” “performing,” “assigning,” “actively monitoring,” “generate,” and “generate” in the context of this claim encompasses the user manually creating some sort of time and accounting system based upon converted billable hours which is business relation/fundamental economic practice/commercial or legal interaction/managing personal behavior or mathematical concept of implementing an algorithm. However, if possible, the Examiner should consider the limitations together as a single abstract idea rather than as a plurality of separate abstract ideas to be analyzed individually. “For example, in a claim that includes a series of steps that recite mental steps as well as a mathematical calculation, an examiner should identify the claim as reciting both a mental process and a mathematical concept for Step 2A, Prong One to make the analysis clear on the record.” MPEP 2106.04, subsection II.B. Under such circumstances, however, the Supreme Court has treated such claims in the same manner as claims reciting a single judicial exception. Id. (discussing Bilski v. Kappos, 561 U.S. 593 (2010)). Here, the limitations are considered together as a single abstract idea for further analysis. If a claim limitation, under its broadest reasonable interpretation, covers performance of the limitations as a mathematical concept, while some of the limitations may be performed in the mind after certain limitations are performed, but for the recitation of generic computer components, then it falls within the grouping of abstract ideas. (Step 2A, Prong One: YES). Accordingly, the claim(s) recite(s) an abstract idea.
This judicial exception is not integrated into a practical application (Step 2A Prong Two). The “import/importing” steps are simply an insignificant extrasolution data gathering activity; the “generate a plurality of interactive user interfaces for display and use by at least one provider” and “generate a plurality of interactive user interfaces for display and use by at least one provider”is/are simply a post solution output of some sort of display. Next, the claims only recite one additional element – using at least one processor to perform the steps. The processor in the steps is recited at a high-level of generality (i.e., as a generic processor performing a generic computer function of simply arithmetic based upon collected data) such that it amounts no more than mere instructions to apply the exception using a generic computer component. Specifically the claims amount to nothing more than an instruction to apply the abstract idea using a generic computer or invoking computers as tools by adding the words “apply it” (or an equivalent) with the judicial exception, or mere instructions to implement an abstract idea on a computer, or merely uses a computer as a tool to perform an abstract idea - see MPEP 2106.04(d)(I) discussing MPEP 2106.05(f). The recitation of “at least one machine learning process” in the limitations also merely indicates a field of use or technological environment in which the judicial exception is performed. Although the additional element “at least one machine learning process” limits the identified judicial exceptions, this type of limitation merely confines the use of the abstract idea to a particular technological environment (machine learning) and thus fails to add an inventive concept to the claims. See MPEP 2106.05(h). Accordingly, the combination of these additional elements 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, even when considered as a whole (Step 2A Prong Two: NO).
The claim does not include a combination of additional elements that are sufficient to amount to significantly more than the judicial exception (Step 2B). Method claim 19 is devoid of structure whatsoever and thus does not amount to significantly more. As discussed above with respect to integration of the abstract idea into a practical application (Step 2A Prong 2), the combination of additional elements of using at least one processor to perform the 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. Reevaluating here in step 2B, the “import/importing;” the “generate a plurality of interactive user interfaces for display and use by at least one provider” and “generate a plurality of interactive user interfaces for display and use by at least one provider” step(s) which are insignificant extrasolution activities are also determined to be well-understood, routine and conventional activity in the field. The Symantec, TLI, and OIP Techs court decisions in MPEP 2106.05(d)(II) indicate that the mere receipt or transmission of data over a network is well-understood, routine, and conventional function when it is claimed in a merely generic manner (as is here). Therefore, when considering the additional elements alone, and in combination, there is no inventive concept in the claim. As such, the claim(s) is/are not patent eligible, even when considered as a whole (Step 2B: NO).
Claims 5-9, 16-18, and 20 are dependent on claims 4 and 19 and include all the limitations of claims 4 and 19. Therefore, claims 5-9, 16-18, and 20 recite the same abstract idea of “converting billable hour data into another productivity measurement and generate a map path of a work plan based upon priorities and patterns.” The claim(s) recite(s) the additional limitation(s) further limiting the users, clients, and types of data (metrics) which is still directed towards the abstract idea previously identified and is not an inventive concept that meaningfully limits the abstract idea. Again, as discussed with respect to claims 4 and 19, the claims are simply limitations which are no more than mere instructions to apply the exception using a computer or with computing components. Accordingly, the additional element(s) does not integrate the abstract idea into a practical application because it does not impose any meaningful limits on practicing the abstract idea. Even when considered as a whole, the claims do not integrate the judicial exception into a practical application at Step 2A or provide an inventive concept in Step 2B.
Claims 4-9 and 16-20 are therefore not eligible subject matter, even when considered as a whole.
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 ANDREW B WHITAKER whose telephone number is (571)270-7563. The examiner can normally be reached on M-F, 8am-5pm, EST.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Lynda Jasmin can be reached on (571) 272-6782. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ANDREW B WHITAKER/Primary Examiner, Art Unit 3629